Intellectual Property - Laurence P. Colton and Nigamnarayan Acharya

• Publication year: 2006

Intellectual Propertyby Laurence P. Colton^* and Nigamnarayan Acharya^**

I. Introduction

This Article surveys case law developments in the area of intellectual property, including patents, copyrights, and trademarks, relevant to Georgia during the period from January 1, 2005 to December 31, 2005. Intellectual property law comprises several discrete yet overlapping areas of law. The four primary areas of intellectual property law are patent law, trademark law, copyright law, and trade secret law.¹ Because patent law and copyright law are provided for in the united States constitution,² these cases are based on federal law and are litigated in federal courts. Trademark law and trade secret law have both federal³ and state aspects, and the cases regarding these areas are based on federal or state law. However, the more interesting cases often are litigated in the United States federal courts.

The authors have not attempted to include all cases that touch upon intellectual property, but instead have selected decisions that are of more significance or interest, or that may indicate a particular direction in these areas of law. While the cited cases often have multiple issues, the authors have reported only on the more relevant or interesting intellectual property issues. As such, this Article will focus on developments selected from the federal courts that are controlling or binding on Georgia federal courts.

II. Patent Cases

A. Claim Construction

Patent claims, at least in the United States, are usually in the form of a series of numbered expressions that follow the description of the invention in a patent or patent application. Patent claims define, in technical or scientific terms coupled with legal terms, the protection conferred by a patent and are often paramount in both examination proceedings and in litigation.

In cases involving patent infringement, the claims must first be construed to determine the metes and bounds of the patent, that is, the scope of coverage or protection of the patent.⁴ Patent claims are construed using a number of factors, and a patent applicant can be her own lexicographer by defining terms in the patent, or by looking to the prosecution history of the patent application in the United States Patent and Trademark Office (the "USPTO"). As will be seen, claims construction has been a dynamic area over the last year.

For example, in Phillips v. AWH Corp.,⁵ the United States Court of Appeals for the Federal Circuit, in an en banc decision, redefined the law of claims interpretation to focus more on intrinsic evidence than on extrinsic evidence.⁶ The patent-in-suit was directed to "vandalism-resistant walls," and the main claim recited the limitation "internal steel baffles," which the district court and the three judge panel of the Federal Circuit interpreted to mean baffles (for deflecting bullets) at an angle other than ninety degrees.⁷ In reversing this claim interpretation, the en banc Federal Circuit stated that the claims should be construed as understood by a person with ordinary skill in the art of the patent application itself.⁸ From the patent specification, the court found that the term would have been interpreted as a baffle at any angle, including ninety degrees.⁹

In redefining claim interpretation, the Federal Circuit rejected the approach used in Texas Digital Systems v. Telegenix¹⁰ and its progeny.¹¹ The court noted that the Texas Digital approach relied "too much . . . on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history."¹² The court further noted that the Texas Digital approach "focus[ed] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent," which resulted in an abstraction.¹³ Specifically, extensive reliance on extrinsic evidence in claim construction divorces the meaning of the claim elements from what the claim means to one of ordinary skill in the art.¹⁴

By shifting the focus of claim interpretation to intrinsic evidence, the specification and the prosecution history became paramount.¹⁵ In fact, the court noted that under 35 U.S.C. Sec. 112,¹⁶ the specification should guide claim construction because section 112 provides a "statutory directive that the inventor provide a 'full' and 'exact' description of the claimed invention. . . ."¹⁷ Further, the court indicated that a focus on intrinsic evidence can help prevent the importation of unclaimed elements into the claims.¹⁸ In the end, the court understood and recognized that "there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature."¹⁹

In Norian Corp. v. Stryker Corp.,²⁰ the Federal Circuit held that while the word "'a' generally means 'one or more' in open-ended claims containing the transitional phrase 'comprising,' . . . [the] general rule does not apply when the specification or the prosecution history shows that the term was used in its singular sense."²¹ Specifically, the term "a sodium phosphate" in the patent claim²² for a kit for preparing calcium phosphate compositions to be used as "bone cements" was construed by the district court as limited to a single sodium phosphate and not other phosphates.²³ The court found that such a narrow claim construction was supported by three factors: (1) the claim was amended to use the closed transitional phrase "consisting of" from the open ended "comprising"; (2) the listed examples in the specification used multiple types of sodium phosphate and did not disclose other non-sodium phosphates or multiple phosphates; and (3) "[t]he prosecuting attorney advised the examiner that the amendment 'limit[ed] the claimed kit to one in which the solution is made of water and a single solute, where the solute is either a sodium phosphate or a sodium carbonate, which solute is completely dissolved in the water.'"²⁴ In its decision, the court noted that the patentee would have used the "at least one" language, as the patentee did with other elements in the claim, if the claim was intended to cover a kit with more than one type of sodium phosphate.²⁵

In LizardTech, Inc. v. Earth Resource Mapping, Inc.,²⁶ the Federal Circuit held that a single embodiment of the invention included in the patent specification may not always support a generic claim construction under which an entire genus of the invention would be protected.²⁷ In a patent directed to a seamless wavelet transform ("DWT") for allowing digital images to be greatly compressed with very little loss of information, the relevant claims in suit were directed to the general element of a seamless DWT without any limitation to how the seamless DWT was achieved.²⁸ The specification of the patent disclosed a single embodiment in which the seamless DWT was achieved via maintaining updated sums, while the defendant was using an alternative process to achieve a seamless DWT that did not involve maintaining updated sums.²⁹ The court held that the relevant claims could not be construed generically beyond the disclosed embodiment as "a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by 'maintaining updating sums of DWT coefficients.'"³⁰

In Tap Pharmaceutical Products, Inc. v. OWL Pharmaceuticals, L.L.C.,³¹ the Federal Circuit held that statements made during the prosecution of a foreign patent application for the same invention may not create estoppel in the United States.³² The claims of the patent-in-suit were directed to a compound "comprising a copolymer . . . of lactic acid and . . . of glycolic acid," which the defendants contended only covered copolymers produced from lactic acid and glyocolic acid as starting materials.³³ In construing the claims to encompass copolymers "produced by any method," the court found that the specification disclosed the copolymer broadly, even though the specification only provided examples of copolymers made from lactic and glycolic acid.³⁴ Further, the Federal Circuit dismissed the patentee's statement made during the prosecution of a related European patent application in the European Patent Office that the invention did not include compounds from lactide and glycolide, noting that the patentee did not make these statements in front of the USPTO.³⁵

From these representative cases, it can be seen that the Federal Circuit is relying more now than before on the patent specification to interpret the breadth and scope of the claims. It is becoming even more imperative for the patent practitioner to include as many possible alternatives for the invention elements as possible, or at least disclose the invention in the broadest language possible when drafting a patent application.

B. Standing for Declaratory Judgments

A declaratory judgment is a judgment issued by a court in a civil action that declares the rights and obligations of a party in a dispute. However, a declaratory judgment does not result in any award of damages to any party to the case; rather, a declaratory judgment typically is requested when a party is threatened with a lawsuit, but the threatened lawsuit has not been filed. In patent cases, a declaratory judgment usually is ordered to declare that a patent is invalid or not infringed by the requesting party.

Because federal courts cannot grant advisory opinions under Article III of the United States Constitution,³⁶ an actual case or controversy, that is, standing, must exist to obtain a declaratory judgment. Over the last year, there have been several cases examining the standing issue for issuing a declaratory judgment in the patent context.³⁷ Not surprisingly, the United States Supreme Court now has agreed to...