IP UPDATE

Ownership of compilation doesn’t mean ownership of individual copyrights

by Jolie B. Schenerman | Nov 5, 2026 | Copyrights

The US Court of Appeals for the Seventh Circuit affirmed summary judgment of noninfringement, finding that ownership of a copyright in a compilation does not confer rights in its individual components and that a subsequent copyright assignment remains subject to a previously granted irrevocable oral license. Center for Gestalt Development, Inc. v. Bowman, Case No. 25-3336 (7th Cir. Oct. 26, 2026) (Scudder, Pryor, Maldanado, JJ.)

Dr. Frederick Perls, a pioneer of gestalt therapy, authored an unpublished article titled “Psychopathology of Awareness.” In 1991, his widow’s estate granted the Center for Gestalt Development exclusive rights to publish a collection of Perls’ unpublished manuscripts, including the “Psychopathology” article. The Center did not publish the collection until 2021. Meanwhile, Charles Bowman and Jean-Marie Robine published the article in a 2019 book accompanied by commentary from other gestalt therapists. In 2019 or 2020, Perls’ children, who had inherited the copyright in the article, orally authorized Bowman and Robine to use the article in exchange for royalties. In 2021, the children settled a separate lawsuit with the Center by assigning their rights in the article to the Center for the duration of the litigation. The Center sued Bowman and Robine for copyright infringement. The district court granted summary judgment in favor of Bowman and Robine, finding that the Center’s original rights extended only to the collection and that its subsequent acquisition of the article’s copyright was subject to the earlier oral license. The Center appealed.

The Seventh Circuit affirmed, explaining that the Copyright Act distinguishes between ownership of a compilation and ownership of the individual works the compilation contains. Under § 103(b), a compilation copyright protects only the original material contributed by the compiler, such as the selection, coordination, or arrangement of the underlying works. Section 201(c) further provides that copyright in an individual contribution is distinct from copyright in the collective work as a whole. Relying on the US Supreme Court’s decisions in Feist Publications, Inc. v. Rural Telephone Service Co. (1991) and New York Times Co. v. Tasini (2001), the Seventh Circuit explained that the Center’s 1991 agreement conveyed rights in the collection’s “selective curation,” not in the article standing alone. Because Bowman and Robine reproduced only the article, rather than the collection, their use did not infringe the Center’s compilation copyright.

The Seventh Circuit next addressed the Center’s acquisition of the article’s copyright in 2021. By that time, Perls’ children had already granted Bowman and Robine a nonexclusive oral license to publish the article. The Court explained that although § 204(a) of the Copyright Act, sometimes called the Statute of Frauds, requires transfers of copyright ownership to be in writing, nonexclusive licenses are exempt from that requirement under § 101. The license was also irrevocable because Bowman and Robine had paid royalties in exchange for permission to use the article. Accordingly, the Center acquired the article’s copyright subject to the existing license and could not revoke Bowman and Robine’s authorization to continue publishing it.

The Seventh Circuit also rejected the Center’s argument [...]

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Computer metadata corroborates conception

by Dexter Hamilton | Oct 29, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision finding that Google failed to establish unpatentability of challenged claims because the patent owner successfully antedated the asserted prior art reference using inventor testimony corroborated by metadata. Google LLC v. Valtrus Innovations Ltd., Case No. 2024-1945 (Fed Cir. Oct. 19, 2026) (Hughes, Cunningham, Burroughs, JJ.)

Valtrus owns a patent directed to methods for merging search results from multiple search engines. Google petitioned for inter partes review (IPR) of the patent, asserting four grounds for obviousness. Each ground relied on the same primary prior art reference, Bushee. Although Bushee was filed about five weeks before the application for Valtrus’ patent, the patent was governed by pre-America Invents Act (AIA) law. Pre-AIA 35 U.S.C. § 102(e) permitted Valtrus to antedate Bushee by establishing conception before Bushee’s filing date and reasonably continuous diligence from just before that date until Valtrus filed its patent application.

Valtrus submitted an inventor declaration, original invention disclosure documents, and associated Microsoft Word metadata to establish conception before Bushee’s filing date. The Board found that the disclosure documents and metadata corroborated the inventor’s testimony, and that Valtrus had demonstrated reasonably continuous diligence through the filing of its patent application. The Board determined that Bushee was not prior art under pre-AIA § 102(e) and that Google had failed to establish the unpatentability of any challenged claim. Google appealed.

Reviewing the Board’s legal conclusions de novo and its factual findings for substantial evidence, the Federal Circuit affirmed. Google argued that the invention disclosure documents and accompanying metadata could not independently corroborate the inventor’s testimony because both were entirely within the inventor’s control. The Federal Circuit disagreed, relying on its 2025 decision in Global Health Solutions v. Selner, which recognized that automatically generated metadata is independent of an inventor’s own statements and documents. Assuming without deciding the metadata’s authenticity, the Court explained that the Microsoft Word metadata was not authored by the inventor and contained authorship and timestamp information consistent with his asserted conception date. The Court distinguished such metadata from unwitnessed inventor-created documents, which cannot independently corroborate conception testimony, and noted Google’s acknowledgment at oral argument that corroboration need not come from a human source. Applying the rule of reason, the Court concluded that substantial evidence supported the Board’s finding that the disclosure documents and metadata corroborated the inventor’s testimony.

Google also challenged the Board’s finding that the inventor exercised reasonably continuous diligence in reducing the invention to practice. The Federal Circuit explained that although reasonable diligence must be established throughout the critical period, it need not be perfectly continuous, and evidence of activity on each day of the diligence period is unnecessary if the record provides a satisfactory explanation for any gaps. Google disputed only the approximately 11 business days between August 8 and August 27, 2001, when the patent application was filed. The Court found substantial evidence supporting diligence during that period, including the time required to mail the last inventor’s signed [...]

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Headnote to self: Third Circuit rejects fair use defense for AI training

by Hannah Hurley | Oct 15, 2026 | Copyrights

The US Court of Appeals for the Third Circuit affirmed a grant of partial summary judgment in favor of Thomson Reuters, finding that Westlaw’s editorial headnotes were copyrightable and that use of those headnotes to train an artificial intelligence (AI) legal-research platform did not constitute fair use. Characterizing the dispute as “no more than an ordinary copyright case,” the Court emphasized that its decision did not resolve broader questions concerning generative AI training. Thomson Reuters Enterprise Centre GmbH v. ROSS Intelligence Inc., Case No. 25-2153 (3d Cir. Sept. 29, 2026) (Restrepo, Montgomery-Reeves, Bove, JJ.)

Thomson Reuters operates Westlaw, a legal-research platform that provides judicial opinions accompanied by editor-written headnotes summarizing key points of law. Although judicial opinions are not copyrightable, Thomson Reuters claimed copyright protection in the headnotes, which its editors prepare under detailed guidelines requiring them to identify and summarize significant legal principles in concise standalone statements.

ROSS developed a non-generative-AI legal-research platform designed to respond to users’ legal questions by identifying relevant passages from about 10 million judicial opinions. To train its platform, ROSS retained LegalEase Solutions to prepare about 25,000 memoranda, each containing a legal question and four to six responsive judicial opinions. LegalEase used thousands of Westlaw headnotes to formulate the questions. ROSS intended to compete directly with Westlaw and marketed its platform at comparable prices.

Thomson Reuters sued ROSS for copyright infringement. The district court granted partial summary judgment, finding that 2,243 headnotes identified by Thomson Reuters’ expert were sufficiently original to warrant copyright protection and that ROSS’s use of those headnotes was not fair use. The district court certified the originality and fair use issues for interlocutory appeal.

The Third Circuit first addressed copyrightability. Applying the “extremely low” originality threshold established in the Supreme Court’s 1991 Feist Publications, Inc. v. Rural Telephone Service Co. decision, the Third Circuit concluded that the headnotes contained sufficient creativity because editors exercised judgment in selecting which legal principles to summarize and how to express them. The Third Circuit rejected ROSS’s argument that copyright protection would effectively grant Thomson Reuters a monopoly over the law, explaining that judicial opinions remained freely available. The Court also rejected ROSS’s merger doctrine argument, finding that the underlying legal principles could be expressed in many ways.

Turning to fair use, the Third Circuit considered the four statutory factors under 17 U.S.C. § 107:

As to the purpose and character of the use, the Court found ROSS’s use commercial and, at most, minimally transformative because both platforms served the same purpose, which was helping users locate relevant legal materials. Although ROSS used the headnotes to train its AI platform rather than displaying them, it could have relied on freely available judicial opinions instead. This factor weighed against fair use.
The nature of the copyrighted work weighed slightly in ROSS’s favor because the headnotes primarily conveyed factual information and legal principles. The Court noted, however, that this factor generally carries limited weight.
The amount and substantiality of the portion used weighed against fair use [...]

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Clearing the air: Impossibility is an enablement problem, not an indefiniteness problem

by Vincent Li, PhD | Oct 15, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed a judgment of patent invalidity on alternative grounds. The Court found that claims reciting a scientific impossibility were not indefinite because their scope was clear but were invalid for lack of enablement. Satius Holding, LLC v. Samsung Electronics Co., Ltd., Case No. 25-1446 (Fed. Cir. Oct. 1, 2026) (Moore, Lourie, Hughes, JJ.)

Satius sued Samsung for infringement of a patent directed to a communications apparatus that uses a coupler to match the characteristic impedance of air to that of a wireless transmitter and receiver. A representative claim recited “[a] communications apparatus for transmitting electric or electromagnetic signals over air.” The district court found the claims indefinite because transmitting electric signals over air is scientifically impossible. Satius appealed

The Federal Circuit first construed “transmitting electric . . . signals over air” to require transmission of signals through air in electric form, which the parties agreed was impossible. Satius argued that the limitation instead described converting electric signals into electromagnetic signals for transmission over air. The Court rejected that interpretation, explaining that transmitting signals over air differs from communicating signals to air. Adopting Satius’ interpretation would improperly rewrite the claims to add a conversion step.

Turning to indefiniteness, the Federal Circuit explained that “[i]ndefiniteness is not the same as impossibility.” A claim is indefinite only if it fails to inform skilled artisans of its scope with reasonable certainty. Here, the impossible limitation appeared in both the claims and specification, and its meaning was clear. The Federal Circuit therefore rejected the district court’s conclusion that scientific impossibility rendered the claims indefinite.

The Federal Circuit nevertheless affirmed invalidity for lack of enablement. Although the district court had not decided that issue, the Federal Circuit found it appropriate to do so because the relevant facts were undisputed and the parties had fully briefed the question. The specification must enable the full scope of the claimed invention. Because the claims expressly covered transmitting “electric or electromagnetic signals over air,” and transmitting electric signals over air is scientifically impossible, the specification could not enable the full claim scope. The claims therefore failed to meet the enablement requirement.

Practice note: A scientifically impossible claim limitation does not necessarily render a claim indefinite if its scope is reasonably certain. However, expressly claiming an impossible alternative can invalidate the claim for lack of enablement, even if other claimed alternatives are operable.

Saved by the bell: Class certification isn’t the time to have a mini-trial on the merits

by Cecilia Choy, PhD | Oct 8, 2026 | Technology

The US Court of Appeals for the Ninth Circuit declined to disturb a district court’s certification of damages and injunctive classes asserting violations of California’s statutory right of publicity. The Ninth Circuit rejected challenges based on predominance and adequacy. Nolen v. PeopleConnect, Inc., Case No. 24-3894 (9th Cir. Sept. 24, 2026) (Berzon, Friedland, Mendoza, JJ.)

PeopleConnect operates Classmates.com, which maintains a searchable database containing more than 450,000 yearbooks. Users may access the site as unregistered visitors, free members, or paid subscribers. The dispute centered on subscription advertisements that allegedly used individuals’ names in connection with paid membership offers. Nolen advanced two theories to obtain class certification: a “sequence theory,” under which a visitor searching for a person could encounter a subscription advertisement after registering for a free account, and a “banner theory,” under which free members could see subscription advertisements while searching the site.

Nolen alleged that PeopleConnect violated California Civil Code § 3344 by using individuals’ names without consent in connection with advertising for paid subscriptions. She argued that the alleged commercial use occurred by making individuals’ identities searchable within the advertising flow, regardless of whether a particular name had actually been searched. The district court conditionally certified damages and injunctive classes, and the Ninth Circuit granted interlocutory review under Rule 23(f).

PeopleConnect argued that predominance was lacking because the district court had misconstrued § 3344 by permitting claims based on mere searchability. The Ninth Circuit rejected that argument as an improper attempt to litigate the merits at class certification. The Court emphasized that certification is not a “mini-trial on the merits” and that the relevant question is whether the issue is susceptible to common proof, not whether the plaintiff is ultimately likely to prevail. Because the alleged connection between the use of class members’ identities and advertising presented a common factual question, the Court concluded that the district court did not abuse its discretion in finding predominance.

The Ninth Circuit also rejected PeopleConnect’s argument that damages would require individualized proof of injury. It concluded that if PeopleConnect used class members’ names in direct connection with advertising, a factfinder could reasonably infer that those names had at least some economic value. The Court distinguished between the commercial value of the names and the resulting economic injury, concluding that both issues were capable of class-wide resolution.

PeopleConnect further argued that the proposed classes included individuals who might ultimately be ineligible for relief, including persons who had consented to certain uses of their identities, were not readily identifiable, had registered as members, or had donated yearbooks, or whose names were not searchable. The Ninth Circuit concluded that these issues did not defeat certification. Some of those factors went to predominance while others implicated manageability. The Court reiterated the presumption against denying class certification based solely on manageability concerns and explained that Rule 23 does not require a plaintiff to establish an administratively feasible method for identifying every class member at the certification stage.

The Court also rejected PeopleConnect’s adequacy challenges. PeopleConnect [...]

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