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`EXHIBIT 1
`EXHIBIT 1
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`Case: 21-1542 Document: 110 Page: 1 Filed: 04/06/2023
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SAS INSTITUTE, INC.,
`Plaintiff-Appellant
`
`v.
`
`WORLD PROGRAMMING LIMITED,
`Defendant-Appellee
`______________________
`
`2021-1542
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Texas in No. 2:18-cv-00295-JRG, Chief
`Judge J. Rodney Gilstrap.
`______________________
`
`Decided: April 06, 2023
`______________________
`
`DALE M. CENDALI, Kirkland & Ellis LLP, New York,
`NY argued for plaintiff-appellant. Also represented by ARI
`LIPSITZ, JOSHUA L. SIMMONS; RAYMOND BENNETT, PRESSLY
`M. MILLEN, Womble Bond Dickinson (US) LLP, Raleigh,
`NC; CHRISTIAN E. MAMMEN, San Francisco, CA;
`
` JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
`DC, argued for defendant-appellee. Also represented by
`CALEB HAYES-DEATS; ELIZABETH CLARKE, EUGENE ALEXIS
`SOKOLOFF, Chicago, IL; BRADLEY WAYNE CALDWELL,
`WARREN JOSEPH MCCARTY, III, Caldwell Cassady & Curry,
`Dallas, TX.
`
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`2
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`
` ANNETTE LOUISE HURST, Orrick, Herrington & Sutcliffe
`LLP, San Francisco, CA, for amici curiae Oracle Corpora-
`tion, Mathworks, Inc. Also represented by ANDREW D.
`SILVERMAN, New York, NY.
`
` BRIDGET ASAY, Stris & Maher LLP, Montpelier, VT, for
`amici curiae Lucas Layman, Mark Sherriff, Laurie Wil-
`liams. Also represented by ELIZABETH BRANNEN, Los An-
`geles, CA.
`
` ROBERT WILLIAM CLARIDA, Reitler Kailas & Rosenblatt
`LLC, New York, NY, for amici curiae Sandra Aistars, Jon
`Garon, Hugh Hansen, J. Devlin Hartline, S. Todd Herre-
`man, Loren Mulraine, Christopher Newman, Eric Priest,
`Mark F. Schultz, Steven Tepp.
`
` NANCY E. WOLFF, Cowan, DeBaets, Abrahams & Shep-
`pard LLP, New York, NY for amici curiae American Photo-
`graphic Artists, American Society of Media Photographers,
`Authors Guild, Inc., Digital Media Licensing Association,
`Dramatists Guild of America, Romance Writers of Amer-
`ica, Songwriters Guild of America, Textbook & Academic
`Authors Association. Also represented by SARA GATES,
`Dentons US LLP, New York, NY.
`
` SARANG DAMLE, Latham & Watkins LLP, Washington,
`DC, for amicus curiae Ralph Oman. Also represented by
`TYCE R. WALTERS.
`
` MATTHEW S. HELLMAN, Jenner & Block LLP, New
`York, NY for amicus curiae Copyright Alliance. Also rep-
`resented by GIANNI P. SERVODIDIO.
`
` JEFFREY THEODORE PEARLMAN, Gould School of Law,
`University of Southern California, Los Angeles, CA, for
`amici curiae Harold Abelson, Guido van Rossum, Jon Bent-
`ley, Matthew Bishop, Joshua Bloch, Gilad Bracha, Daniel
`
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`Case: 21-1542 Document: 110 Page: 3 Filed: 04/06/2023
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`3
`
`Bricklin, Frederick Brooks, R.G.G. Cattell, David Clark,
`William Cook, Thomas H. Cormen, Miguel de Icaza, L. Pe-
`ter Deutsch, Whitfield Diffie, David L. Dill, Dawson Eng-
`ler, Bob Frankston, Neal Gafter, Erich Gamma, Andrew
`Glover, Allan Gottlieb, Robert Harper, Maurice Herlihy,
`Tom Jennings, Alan Kay, Brian Kernighan, David Klaus-
`ner, Kin Lane, Ed Lazowska, Doug Lea, Bob Lee, Harry
`Lewis, Douglas McIlory, Paul Menchini, James H. Morris,
`Peter Norvig, Martin Odersky, David Patterson, Tim Pei-
`erls, Curtis Schroeder, Robert Sedgewick, Mary Shaw, Al-
`fred Z. Spector, Michael Stonebreaker, Ivan E. Sutherland,
`Andrew Tanenbaum, Brad Templeton, Andries van Dam,
`John Villasenor, Jan Vitek, James H. Waldo, Daniel S.
`Wallach, Frank Yellin.
`
` JONATHAN BAND, Jonathan Band PLLC, Washington,
`DC, for amicus curiae Computer & Communications Indus-
`try Association. Also represented by MATTHEW SCHRUERS,
`ALEXANDRA STERNBURG, Computer & Communications In-
`dustry Association, Washington, DC.
`
` MICHAEL BARCLAY, Electronic Frontier Foundation,
`San Francisco, CA, for amicus curiae Electronic Frontier
`Foundation. Also represented by CORYNNE MCSHERRY.
`
` JOSEPH GRATZ, Durie Tangri LLP, San Francisco, CA
`for amicus curiae GitHub, Inc. Also represented by
`SAMUEL ZEITLIN.
`
` ERIK STALLMAN, Samuelson Law, Technology & Public
`Policy Clinic, University of California, Berkeley School of
`Law, Berkeley, CA, for amici curiae Timothy K. Armstrong,
`Pamela Samuelson, Clark D. Asay, Jonathan Askin, Patri-
`cia Aufderheide, Derek E. Bambauer, Ann Bartow, James
`Bessen, Mario Biagioli, James Boyle, Oren Bracha, Dan L.
`Burk, Michael A. Carrier, Michael Carroll, Bernard Chao,
`Jorge L. Contreras, Christine Haight Farley, William T.
`Gallagher, Shubha Ghosh,
`Jim Gibson,
`James
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`Case: 21-1542 Document: 110 Page: 4 Filed: 04/06/2023
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`4
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`Grimmelmann, Amy L. Landers, Edward Lee, Mark A.
`Lemley, Yvette Joy Liebesman, Lee Ann Wheelis
`Lockridge, Lydia Pallas Loren, Stephen McJohn, Mark P.
`McKenna, Michael J. Meurer, Timothy Murphy, Tyler T.
`Ochoa, Aaron Perzanowski, Cherly B. Preston, Jerome H.
`Reichman, Michael Rustad, Matthew Sag, Joshua D.
`Sarnoff, Niels Schaumann, Jason Michael Schultz, Roger
`V. Skalbeck, Elizabeth Townsend Gard, Rebecca Tushnet,
`Jennifer M. Urban. Also represented by CHARLES DUAN,
`Washington, DC.
` ______________________
`
`Before NEWMAN, REYNA, and WALLACH, Circuit Judges.
`Opinion for the court filed by Circuit Judge REYNA.
`Dissenting opinion filed by Circuit Judge NEWMAN.
`REYNA, Circuit Judge.
`SAS Institute, Inc. filed suit in the United States Dis-
`trict Court for the Eastern District of Texas alleging,
`among other claims, nonliteral copyright infringement of
`its software by World Programming Limited. Both parties
`moved for summary judgment on non-infringement and
`copyrightability. The district court decided to hold a spe-
`cial hearing to assist it in deciding the scope of protection
`provided under copyright law to the elements asserted by
`SAS. It ordered the parties to submit supplemental brief-
`ing on the issue. The district court then reached several
`determinations. The district court first concluded that SAS
`demonstrated that it possessed valid copyright registra-
`tions covering SAS’s asserted software. The district court
`then determined that World Programming provided evi-
`dence that showed the software program elements were not
`within the scope of protection under copyright law. Based
`on World Programing’s evidentiary showing, the district
`court required SAS to demonstrate that its asserted pro-
`gram elements were copyrightable. Applying the abstrac-
`tion-filtration-comparison
`test,
`the
`district
`court
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`5
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`determined that SAS failed to establish copyrightability. It
`rejected SAS’s expert’s report and dismissed the suit with
`prejudice. SAS appeals the judgment of the district court.
`We affirm.
`
`SAS SOFTWARE
`Appellant SAS Institute, Inc. (“SAS”) creates and sells
`a suite of software (“SAS System”) used for data access,
`data management, data analysis, and data presentation.
`SAS Inst. Inc. v. World Programming Ltd., 496 F. Supp. 3d
`1019, 1022 (E.D. Tex. 2020) (“EDTX Action”). The SAS
`System allows users to input user-written programs into
`the SAS System’s graphical user interface to complete an-
`alytics tasks. Id. at 1022–23. Users of the SAS System
`write commands in a programming language (the “SAS
`Language”). Id. at 1023. An earlier version of the SAS
`System is in the public domain. Id. SAS has copyright reg-
`istrations that cover various aspects of the SAS System.
`Appellant’s Br. 21; J.A. 281.
`World Programming Limited (“WPL”) created a com-
`petitor to the SAS System, the World Programming System
`(“WPS System”). EDTX Action, at 1023–24. The WPS Sys-
`tem also uses the SAS Language to allow users to run user-
`written programs to complete analytics tasks such as data
`access, data management, data analysis, and data presen-
`tation. Id.
`On July 18, 2018, SAS filed suit against WPL in the
`district court for the Eastern District of Texas. The com-
`plaint alleged a number of claims, including copyright in-
`fringement of the SAS System and SAS user manuals.
`This appeal, however, is limited to three issues. First, SAS
`argues that the district court’s copyrightability determina-
`tion is erroneous as a matter of law. Next, SAS asserts that
`the district court abused its discretion in its use of a “spe-
`cial hearing” to determine copyrightability. Finally, SAS
`argues that the district court abused its discretion when it
`rejected SAS’s expert report. As shown below, the
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`resolution of the three issues rests on the question of copy-
`rightability.
`The term “copyrightability” has different meanings. A
`commonly accepted definition, and the one herein adopted,
`is whether the specific elements of a copyrighted work that
`are asserted in a copyright infringement action fall within
`the scope of protection extended to that particular work un-
`der copyright law. The fields of computer software and
`computer programs are recognized and addressed as a “lit-
`erary work” in the U.S. Constitution and the Copyright
`Act.1
`
`U.S. CONSTITUTION AND THE COPYRIGHT ACT
`Like the Patent and the Tariff, the Copyright enjoys a
`
`provenance stretching back to the birth of this nation. Ar-
`ticle I, Section 8 of the U.S. Constitution secures “for lim-
`ited Times to Authors and Inventors the exclusive Rights
`to their respective Writings and Discoveries.” For purposes
`of this appeal, it is generally accepted that software coders
`are “authors” and that their respective works are “writ-
`ings.” See generally, Oracle America, Inc. v. Google Inc.,
`750 F.3d 1339, 1368 (Fed. Cir. 2014).
`The Copyright Act protects “original works of author-
`ship fixed in any tangible medium of expression.” 17
`U.S.C. § 102(a). To explain the scope of the term “works of
`authorship,” the Act sets forth a non-exclusive statutory
`list of categories of works of authorship covered by the Act.
`The first category on this non-exclusive list is “literary
`works.” Id. at § 102(a)(1).
`The statutory definition of “literary works” embraces
`computer programs:
`
`
`1 Copyright Act of 1976, 17 U.S.C. § 101 et seq.
`(1976).
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`“Literary works” are works, other than audio-
`visual works, expressed in words, numbers, or
`other verbal or numerical symbols or indicia, re-
`gardless of the nature of the material objects,
`such as books, periodicals, manuscripts,
`phonorecords, film, tapes, disks, or cards, in
`which they are embodied.
`17 U.S.C. § 101. Further, the House Report for the 1976
`Act explicitly includes computer programs in its definition
`of “literary works.”
`The term “literary works” does not connote any cri-
`terion of literary merit or qualitative value: it in-
`cludes . . . computer data bases, and computer
`programs to the extent that they incorporate au-
`thorship in the programmer’s expression of original
`ideas, as distinguished from the ideas themselves.
`H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), re-
`printed in 1976 U.S.C.C.A.N. 5659, 5667. As the House
`Report makes clear, copyright protection extends only to
`the expression of an idea, not to the underlying idea itself.
`Id. at 5670; see also Mazer v. Stein, 347 U.S. 201, 217 (1954)
`(“Unlike a patent, a copyright gives no exclusive right to
`the art disclosed; protection is given only to the expression
`of the idea—not the idea itself.”). Thus, whether a partic-
`ular component or element of a program is protected by a
`copyright depends on whether it qualifies as an expression
`of an idea, rather than the idea itself. Gates Rubber Co. v.
`Bando Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993)
`(citing Harper & Row Publishers, Inc. v. Nation Enters.,
`471 U.S. 539, 547 (1985)).
`Additionally, other doctrines of copyright law detail
`what elements are not protectable, including scènes à faire
`elements, material in the public domain, factual material,
`and elements under the merger doctrine. Computer Assocs.
`Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703, 706–10 (2d Cir.
`1992); Gates Rubber Co., 9 F.3d at 837.
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`With these doctrines in mind, the court is tasked with
`determining the scope of copyright protection. For com-
`puter programs, this determination often involves as-
`sessing which input and output formats of a computer
`program are copyrightable, and which are not. Eng’g Dy-
`namics, Inc. v. Structural Software, Inc., 26 F.3d 1335,
`1347 (5th Cir. 1994). The literal elements of computer pro-
`grams, for example: source and object codes, can be the sub-
`ject of copyright protection. See, e.g., Altai, 982 F.2d at 702.
`As a general matter, and to varying degrees, copyright pro-
`tection can extend beyond literal elements to nonliteral el-
`ements. Id. at 701.
`This appeal involves only nonliteral elements of the
`SAS System. The nonliteral elements of a computer pro-
`gram are those aspects that are not reduced to written
`code. Id. at 696, 701–703. These elements include the pro-
`gram architecture, structure, sequence and organization,
`operational modules, and user interface. Eng’g Dynamics,
`26 F.3d at 1341. Using a literary novel as an analogy, the
`novel’s written words would be the literal elements (e.g.,
`code) and the organization of the chapters, characters, and
`plot would be the nonliteral elements. But concluding that
`nonliteral elements of a computer program can be pro-
`tected by copyright does not end a court’s analysis: it must
`determine the scope of such protection. Altai, 982 F.2d at
`703. The scope of protection is “not constant” across all lit-
`erary works. Eng’g Dynamics, 26 F.3d at 1348. Nor is it
`necessarily constant across all elements in a single work.
`As one moves away from the literal elements to more
`general levels of a computer program, it becomes “more dif-
`ficult” to distinguish between unprotectible ideas, pro-
`cesses, methods or functions, on the one hand, and
`copyrightable expression, on the other. Id. at 1341; see also
`Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886
`F.2d 1173, 1175 (9th Cir. 1989) (“Whether a particular
`component of a program is protected by a copyright
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`depends on whether it qualifies as an ‘expression’ of an
`idea, rather than the idea itself.” (cleaned up)).
`Court decisions vary in the methods used to identify
`and analyze copyrightability for nonliteral elements of
`computer programs. Eng’g Dynamics, 26 F.3d at 1341. The
`analytical framework utilized by the courts may vary to ac-
`commodate each case’s facts. Id. at 1343.
`Various circuits, including the Second, Fifth, and
`Tenth Circuits, have adopted the abstraction-filtration-
`comparison test, or method, to determine the scope of cop-
`yright protection for computer programs, including their
`nonliteral elements. Altai, 982 F.2d at 706–11 (2d Cir.
`1992); Eng’g Dynamics, 26 F.3d at 1335 (5th Cir. 1994);
`Gates Rubber, 9 F.3d at 823, 834 (10th Cir. 1993); Com-
`puter Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220
`F.3d 396, 399–400 (5th Cir. 2000). As the name implies,
`the abstraction-filtration-comparison method
`involves
`three steps. Altai, 982 F.2d at 706. First, a court breaks
`down the allegedly infringed program into its constituent
`structural parts—abstraction. Id. This step “help[s] a
`court separate ideas [and processes] from expression and
`eliminate . . . those portions of the work that are not eligible
`for protection.” Eng’g Dynamics, 26 F.3d at 1343. Second,
`the court sifts out all non-protectable material—filtration.
`Id. at 1344–45; see also Altai, 982 F.2d at 707–08 (describ-
`ing this step as “examining the structural components at
`each level of abstraction” and “defining the scope of plain-
`tiff's copyright”). And, third, the trier of fact compares any
`remaining “core of protectable expression” with the alleg-
`edly infringing program to determine if there is in fact a
`substantial similarity—comparison. Altai, 982 F.2d at
`710–11.
`Although the underling suit is a copyright infringe-
`ment action, this appeal does not reach the final copyright
`infringement analysis, or the third step of the abstraction-
`filtration-comparison test. Rather, the focus of the appeal
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`is on the question of copyrightability and, in particular, the
`filtration step of the abstraction-filtration-comparison test.
`PROCEDURE
`SAS’s action initially involved multiple claims.2 How-
`ever, the claims of patent
`infringement, copyright
`
`
`2 This is not the first litigation between these parties
`relating to the SAS System. Around September 2009, SAS
`filed suit against WPL in the United Kingdom and in the
`United States District Court for the Eastern District of
`North Carolina (“EDNC”). Appellee’s Br. 11. In the UK
`litigation, SAS asserted copyright infringement. Id. The
`UK High Court determined that issues relating to the legal
`protection of computer programs needed interpretation of
`E.U. Law and sent those questions to the Court of Justice
`of the European Union. SAS Inst. Inc. v. World Program-
`ming Ltd., 874 F.3d 370, 376 (4th Cir. 2017). The Court
`found that neither the functionality of a computer program
`nor the format of data files is copyright protectable but re-
`production of a program protected by copyright is capable
`of constituting an infringement action. Id. Based on this
`ruling, the UK courts found that WPL did not violate Eu-
`ropean copyright law. Id. In the EDNC action, SAS as-
`serted copyright infringement, breach of license agreement
`claims for fraudulent inducement, tortious interference
`with contract, tortious interference with prospective busi-
`ness advantage, and violation of the North Carolina Unfair
`and Deceptive Trade Practices Act (UDTPA). SAS Inst.
`Inc. v. World Programming Ltd., 874 F.3d 370, 377 (4th
`Cir. 2017) (“SAS I”). The district court granted summary
`judgment “to WPL” on SAS’s claims for copyright infringe-
`ment, tortious interference with contract, and tortious in-
`terference with prospective economic advantage. Id. at
`377; see also Appellee’s Br. 13. At trial, on the issues re-
`lated to contract and tort claims, the jury found “WPL
`
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`infringement of SAS user manuals, and copyright infringe-
`ment as to the literal elements of the SAS System, were
`dismissed with prejudice by the parties’ joint stipulation.
`Only SAS’s claim for nonliteral copyright infringement of
`the SAS System remained, which is the only claim at issue
`on this appeal.
`Both SAS and WPL moved for summary judgment on
`the nonliteral copyright infringement claim. As to this
`claim, SAS does not contend that WPL copied any line of
`SAS code or any other literal element of the SAS System.
`EDTX Action, at 1022; Appellee’s Br. 45. Instead, SAS con-
`tends that WPL infringes by copying the functions or re-
`sults of its system. Id.; see Appellant’s Br. 48. More
`specifically, SAS alleges WPL copied its “Input Formats,”
`which are the fundamentals (vocabulary and syntax) used
`in the SAS System. EDTX Action, at 1022. SAS also claims
`WPL copied its “Output Designs,” which are the result of
`applying Input Formats to user data. Id.
`Addressing the parties’ cross-motions for summary
`judgment, the district court concluded that it first needed
`to determine the copyrightability of the asserted materials
`to avoid “injecting copyrightability into the jury trial and
`unavoidably making it part of the jury’s infringement anal-
`ysis.” To assist in its inquiry, the district court requested
`additional briefing and argument on a narrow question:
`what is the “core protectable expression” of the SAS System
`that WPL allegedly copied. To clarify this issue, the parties
`
`
`liable for fraudulent inducement and UDPTA violations”
`and the “total damages awarded to after trebling was
`$79,129,905.” SAS I, at 377. The Fourth Circuit affirmed
`in part and vacated the copyrightability ruling as moot.
`SAS Inst. Inc. v. World Programming Ltd., 952 F.3d 513,
`519–520, 531 (4th Cir. 2020) (“SAS II”). On remand, the
`district court dismissed SAS’s copyright claims without
`prejudice. Appellee’s Br. 13.
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`were asked to put forward competing evidence directed to
`the abstraction and filtration steps of the abstraction-fil-
`tration-comparison test.3
`After the parties submitted the requested briefing, the
`district court held a “Copyrightability Hearing.” EDTX Ac-
`tion, at 1020–21. In assessing the copyrightability of the
`nonliteral elements of the SAS System that SAS alleges
`were copied, the district court concluded that there was no
`clear guidance in the Fifth Circuit on the “burden of proof
`in the filtration analysis of copyrightability.” Id. at 1026.
`As a result, the district court elected to adopt the frame-
`work established by the Eleventh Circuit in Compulife
`Software Inc. v. Newman, 959 F.3d 1288 (11th Cir. 2020).
`Id. Within that framework, once a plaintiff establishes
`that he or she holds a “valid copyright and that the defend-
`ant engaged in factual copying,” the defendant may come
`forward with evidence that the allegedly copied material is
`in fact copyright unprotectable. Id. at 1026–27 (citing
`Compulife, 959 F.3d at 1305–06). The defendant must
`identify the “species of unprotectability” alleged and pre-
`sent supporting evidence where appropriate. Id. Once
`done, the burden of proof shifts back to the copyright holder
`
`3 The district court asked SAS to “narrow” its case
`regarding copyrightability, explaining that the case had “a
`tremendous amount of work” before it would be ready to go
`before the jury, because the jury would not fairly be able to
`compare the works. J.A. 3315–16, 13659–61; Appellee’s Br.
`18–19. The court also explained that a Rule 56 summary
`judgment motion would not be proper because, in asking
`whether there is a material question of fact, it needed first
`to address whether copyrightability exists in the asserted
`works as a matter of law. Because SAS did not show what
`identifiable protectable elements remained in the SAS Sys-
`tem, even after the court instructed SAS to do so, the court
`dismissed the case. See, e.g., Appellee’s Br. 33–34 (collect-
`ing cases).
`
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`to establish precisely which parts of its asserted work are,
`in fact, protectable. Id. (citing Compulife, 959 F.3d at
`1306).
`Applying this framework, the district court determined
`that SAS satisfied its initial burden on copyrightability by
`presenting evidence of valid copyright registrations to the
`SAS System. Id. at 1027. Next, the district court deter-
`mined that WPL satisfied its burden to show that elements
`of the SAS System were not protectable. Id.
`For example, WPL established that an earlier version
`of the SAS System, “SAS 76,” was in the public domain.
`Id.; see also S & H Computer Sys., Inc. v. SAS Inst., Inc.,
`568 F. Supp. 416, 418–19 (M.D. Tenn. 1983). WPL also
`demonstrated that many of the Input Formats and Output
`Designs in the current SAS System are identical, or nearly
`identical, to those in SAS 76, and, as such, should be fil-
`tered. EDTX Action, at 1023. WPL demonstrated that the
`SAS Language should be filtered because it is open and free
`for public use. Id. at 1027–28. WPL’s expert opined that
`the allegedly copied materials contained unprotectable
`open-source elements; factual and data elements; elements
`not original to SAS; mathematical and statistical elements;
`process, system, and method elements; well-known and
`conventional display elements, such as tables, graphs,
`plots, fonts, colors, and lines; material for which SAS is not
`the author; statistical analysis; scènes à faire elements;
`and short phrase elements. Id. at 1028. Accordingly, the
`district court found that WPL provided ample evidence to
`rebut SAS’s prima facie evidence of duly issued copyright
`registrations and required SAS to show which specific ele-
`ments of the SAS System that SAS alleged were copied are
`protectable. Id.
`The district court concluded that SAS failed to show
`that the elements WPL pointed to as unprotectable are in-
`deed entitled to protection or to show the existence and ex-
`tent of any remaining protectable expression that WPL
`copied. Id. at 1028. The district court found that SAS
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`refused to engage in the filtration step and chose instead to
`simply argue that the SAS System was “creative.” Id. at
`1027–28. On this basis, the district court found that SAS
`had not met its burden to show protectability of the as-
`serted materials. Id. at 1028.
`The district court also excluded the opinion of SAS’s ex-
`pert, Dr. James Storer, as unreliable because he did not
`filter out any of the unprotectable elements of the SAS Sys-
`tem. Id. at 1028–29. The district court reasoned that, at
`a minimum, Dr. Storer’s failure to filter out any of the un-
`protectable elements resulted in an improper comparison
`of unprotectable elements to the accused products. Id. The
`district court dismissed the case with prejudice. Id. at
`1029.
`SAS timely appealed. This Court has jurisdiction un-
`der 28 U.S.C. § 1295(a)(1).
`STANDARD OF REVIEW
`When addressing questions of copyright law, this court
`applies the law which would be applied by the relevant re-
`gional circuit—here, the Fifth Circuit. See Oracle, 750 F.3d
`at 1353 (quoting Atari Games Corp. v. Nintendo of Am.,
`Inc., 897 F.2d 1572, 1575 (Fed. Cir. 1990)). Under Fifth
`Circuit law, legal issues are reviewed de novo. In re Mid-
`S. Towing Co., 418 F.3d 526, 531 (5th Cir. 2005). Copy-
`rightability is generally treated as a legal issue, or as a le-
`gal issue that may involve subsidiary factual findings.
`Oracle, 750 F.3d at 1353 n.3 (collecting cases). Treating
`copyrightability as a question of law is consistent with case
`law. Eng’g Dynamics, 26 F.3d at 1340–41; see also Oracle,
`750 F.3d at 1353 n.3; Yankee Candle Co. v. Bridgewater
`Candle Co., 259 F.3d 25, 34 & n.5 (1st Cir. 2001); Publica-
`tions Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 478 (7th Cir.
`1996); EDTX Action, at 1022 (citing NIMMER ON COPYRIGHT
`§ 12.10). Here, neither the district court nor the parties
`dispute that copyrightability is resolved as a question of
`
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`15
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`law.4 We also note that the resolution of copyrightability
`rests on interpretation of whether the asserted materials
`are expressions that fall within the scope of copyright
`law—matters that belong to the court. See NIMMER § 12.10
`(“Reasoning from patent law, Judge Easterbrook opines
`that that [copyrightability] decision is for the judge
`alone . . . ”) (citing Pivot Point Int’l, Inc. v. Charlene Prods.
`Inc., 932 F. Supp. 220, 225 & n. 33 (N.D. Ill. 1996) (collect-
`ing cases)). On this basis, we hold that in this case the ul-
`timate issue of copyrightability can be resolved as a
`question of law that we review under a de novo standard.
`BWP Media USA, Inc. v. T & S Software Assocs., Inc., 852
`F.3d 436, 438 (5th Cir. 2017). To be clear, whether copy-
`right infringement has occurred is a factual determination
`that generally can be reached only after the legal determi-
`nation of copyrightability has been made.
`Rulings on expert-testimony admissibility are re-
`viewed in the Fifth Circuit for manifest or “plain and indis-
`putable” error. Guy v. Crown Equip. Corp., 394 F.3d 320,
`325 (5th Cir. 2004). Other evidentiary rulings are reviewed
`“for abuse of discretion.” S. Pac. Transp. Co. v. Chabert,
`973 F.2d 441, 448 (5th Cir. 1992).
`DISCUSSION
`SAS raises three main issues on appeal. First, SAS
`contends that the district court erred when it required SAS
`to prove that the elements it asserted were copied by WPL
`are entitled to copyright protection. Second, SAS argues
`that
`the district
`court erred when
`it used a
`
`4 The district court treated copyrightability as “a
`question of law for the Court.” EDTX Action, at 1022. SAS
`asserts “undisputed facts,” and WPL asserts that the dis-
`trict court’s treatment of copyrightability as a question of
`law for the court was proper and notes that SAS identifies
`“no factual disputes.” Appellant’s Br. 47–48; Appellee’s Br.
`59.
`
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`Case: 21-1542 Document: 110 Page: 16 Filed: 04/06/2023
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`SAS INSTITUTE, INC. v. WORLD PROGRAMMING LIMITED
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`“Copyrightability Hearing” to assist it reach a copyrighta-
`bility determination. Appellant’s Br. 4, 43–46. Third, SAS
`argues that the court erred in excluding the testimony of
`its technical expert. We address each issue in turn.5
`Copyrightability
`SAS contends that the district court legally erred in its
`application of the abstraction-filtration-comparison test.
`According to SAS, it satisfied its evidentiary burden once it
`demonstrated that the SAS System was covered by regis-
`tered copyrights. Further, SAS claims the district court
`erred when it shifted the burden to SAS to establish that
`its asserted elements are protected by copyright law. Ap-
`pellant’s Br. at 38–43. Alternatively, SAS argues that the
`overall selection and arrangement of the Input Format and
`Output Design was protectable. We disagree.
`We conclude that the overall analytical framework
`adopted by the district court is consistent with established
`precedent. The plaintiff in a copyright action must respond
`to any proof advanced by the defendant. EDTX Action, at
`1026. SAS’s preliminary showing that it has valid, regis-
`tered copyrights directed to aspects of the SAS System is
`not sufficient to establish that each nonliteral element of
`the SAS System is protectable. See Feist Publications, Inc.
`v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991) (“The mere
`fact that a work is copyrighted does not mean that every
`element of the work may be protected.” (emphasis added)).
`Evidence of a timely obtained copyright registration only
`creates a rebuttable presumption of copyrightability and
`validity. Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d
`45, 47 (5th Cir. 1995); see also Gen. Universal Sys., Inc. v.
`
`5 SAS also challenges the district court’s rulings on
`evidentiary issues relating to the testimony of its fact wit-
`ness, Mr. Collins. Appellant’s Br. 6–7, 59–64. In light of
`our decision regarding copyrightability, it is unnecessary
`to address these issues.
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`Lee, 379 F.3d 131, 141 (5th Cir. 2004) (per curiam) (“A cer-
`tificate of registration, if timely obtained, is prima facie ev-
`idence both that a copyright is valid and that the registrant
`owns the copyright.”).
`The district court correctly determined that, through
`evidence of valid copyright registrations, SAS established
`a required threshold of protectability. EDTX Action, at
`1027. Consequently, it became WPL’s burden to establish
`what, if any, elements of the copyrighted work are not pro-
`tected. WPL showed that at least a substantial portion of
`the allegedly infringed elements of the SAS System are not
`protectable by copyright. Id. at 1027–28. At that point, the
`district court correctly provided SAS with an opportunity
`to