Intellectual Property - Laurence P. Colton, Nigamnarayan Acharya, Todd Williams, and Dana T. Hustins

• Publication year: 2008

Intellectual Propertyby Laurence P. Colton^* Nigamnarayan Acharya^** Todd Williams^*** and Dana T. Hustins^****

I. Introduction

This Article surveys caselaw developments in the area of intellectual property, including patents, copyrights, and trademarks, relevant to Georgia during the period from January 1, 2007 to December 31, 2007. 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 in 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 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 federal courts in Georgia.

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 both in examination proceedings in the United States Patent and Trademark Office ("USPTO") and in litigation. In cases involving patent infringement, the claims first must be construed to determine the metes and bounds of the patent, or in other words, the scope of coverage or protection of the patent.⁴

In SafeTCare Manufacturing, Inc. v. Tele-Made, Inc.,⁵ the United States Court of Appeals for the Federal Circuit, the circuit court that hears all appeals relating to interpretations of patent law irrespective of the district, applied its Phillips v. AWH Corp.⁶ precedent in construing the claims of a patent.⁷ The claim at issue recited a "pushing force" that caused a section of a hospital bed to rotate upwards. The alleged infringing hospital bed utilized a motor that exerted a pulling force that caused a similar upward rotation.⁸ The pulling force on one part of the hospital bed resulted in a pushing force on another part of the hospital bed.⁹ The Federal Circuit held that the product did not infringe the patent because the specification of the patent repeatedly described pushing forces.¹⁰ Citing its precedent in Phillips, the Federal Circuit wrote: "[W]e rely on the specification merely to understand what the patentee has claimed and disclaimed."¹¹

In Dippin' Dots, Inc. v. Mosey,¹² the Federal Circuit held that the transitional phrase "comprising the steps of" did not render open-ended the words and phrases of a claim directed to the production of spherical ice cream pellets.¹³ The patent-in-suit involved a method having six steps for freezing, storing, and serving "beads" of ice cream.¹⁴ Dippin' Dots, Inc., the owner of the patent, sued various distributors after they stopped buying ice cream from Dippin' Dots and started competing with Dippin' Dots using products from other manufacturers.¹⁵ The distributors argued that they did not infringe the step of"freezing said dripping alimentary composition into beads" because they were freezing the alimentary composition into both beads and irregular pellets.¹⁶ The court held the transitional term "comprising" did not render the element open-ended to both beads and irregular pellets, noting that comprising "'is not a weasel word with which to abrogate claim limitations.'"¹⁷

These decisions build on a trend by the United States Supreme Court and the Federal Circuit to interpret patents, and especially patent claims, more narrowly and to give greater weight to the wording chosen by the inventors.

B. Territoriality of Patents

Under strictly provincial notions of territoriality, patents remain discrete, national instruments, a classification which has been challenged in today's globally oriented economy. During 2007 the United States Supreme Court examined the territorial aspects of patent infringement in the context of 35 U.S.C. Sec. 271(f).¹⁸

In Microsoft Corp. v. AT & T Corp.,¹⁹ the Supreme Court held that Sec. 271(f) of the Patent Act does not expand the territorial scope of United States patent protection²⁰ by creating liability for exporting one or more "components" of a patented invention so that the components may be copied and the whole invention may be practiced abroad.²¹ A T & T was the assignee of the patent-in-suit covering a computer for encoding and compressing recorded speech. Microsoft's Windows® software contained code that enabled computers to compress speech in the manner covered by the patent.²² In order to avoid paying royalties to AT&T for sales abroad, Microsoft sent master versions of its Windows® software to foreign computer manufacturers who would arrange for the reproduction of the Windows® software and install the copied versions of the software onto their machines. Microsoft conceded that a computer with Microsoft Windows® software that also has the ability to encode and compress recorded speech, if installed on a computer in the United States, would infringe the patent-in-suit in the United States.²³ As such, the question before the Supreme Court was whether a foreign-installed copy of software that was developed in the United States is, for patent purposes, a "component" that is "supplied" from the United States under Sec. 271(f).²⁴

In holding that the copied software was not a "component" under Sec. 271(f), the Supreme Court interpreted the word "component" narrowly to refer only to concrete copies of a computer program, rather than to the "abstract" computer code that composes the program in some ideal sense.²⁵ The Supreme Court also relied on Deepsouth Packing Co. v. Laitram Corp.²⁶ to emphasize the territorial nature of patents and to determine that Congress would have used more expansive language if it had intended the section to operate outside the territorial limits ofthe United States.²⁷ After concluding that the "very components supplied from the United States, and not copies thereof, trigger Sec. 271(f) liability when combined abroad to form the patented invention at issue . . . [and because] the copies of Windows actually installed on the foreign computers were not themselves supplied from the United States," the Supreme Court held that Microsoft did not infringe the patent-in-suit.²⁸

C. Nonobviousness

In KSR International Co. v. Teleflex Inc. ,²⁹ one of the most important decisions relating to patent law in recent years, the Supreme Court rejected the Federal Circuit's strict application of the "teaching, suggestion, or motivation" test ("TSM test") for finding a combination of elements to be patentable over the prior art.³⁰ The patent-in-suit included a claim for a pedal mechanism in which an adjustable vehicle control pedal was connected to an electronic throttle control, both of which are known elements in the art. KSR, the alleged infringer, argued that this combination was not patentable because merely combining these two elements was obvious. KSR won at the district court level, but the district court decision was overturned by the Federal Circuit in January 2005. Applying the TSM test, the Federal Circuit held that the combination was nonobvious because the prior art did not disclose a teaching, suggestion, or motivation to combine the various parts together.³¹

In a unanimous decision, the Supreme Court rejected any notion that the concept of obviousness in patent law can be rigidly or narrowly defined, holding that "[t]he obviousness analysis cannot be confined by a formalistic conception."³² The Supreme Court looked with disfavor on the Federal Circuit's rigid application of the TSM test and reaffirmed Supreme Court precedent regarding the obviousness of patents "based on the combination of elements found in the prior art" when the combination "does no more than yield predictable results."³³ The Supreme Court noted that "[t]here is no necessary inconsistency between the idea underlying the TSM test and the [Court's general] analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry . . ., it errs."³⁴

In Aventis Pharma Deutschland GmbH v. Lupin, Ltd. ,³⁵ which was decided soon after KSR, the Federal Circuit held that a purified component was obvious over a known mixture containing the compo-nent.³⁶ The patent-in-suit³⁷ claimed the pharmaceutical compound ramipril formulated "substantially free of other isomers," which was found nonobvious by the lower court prior to the Supreme Court's KSR decision.³⁸ In reversing the district court, the Federal Circuit held that the purified form of a compound from a known mixture is prima facie obvious because a person of ordinary skill in the art would have reasoned that the mixture derived properties from the purified ingredient.³⁹ However, the court did note in dicta that a purified isomer is "not always prima facie obvious over the mixture; for example, it may not be known that the purified compound is present in or an active ingredient of the mixture."⁴⁰

The Federal Circuit, in In re ICON Health & Fitness, Inc. ,⁴¹ reiterated that references outside the patentee's field of endeavor can be used to render a patent obvious.⁴² ICON Health and Fitness ("Icon") owned a patent on a treadmill with a folding base that allowed the base to...