Intellectual Property - Laurence P. Colton and Nigam J. Acharya

• Publication year: 2002

Intellectual Propertyby Laurence P. Colton and

Nigam J. Acharya**

I. Introduction

This Article surveys case law developments in the area of intellectual property, including patents, copyrights and trademarks, in Georgia during the nineteen month period from June 1, 2000 to December 31, 2001.¹ The Authors have not attempted to include all cases that touch upon intellectual property, but instead have selected some decisions that are of more significance or interest.

Intellectual property law comprises several discrete yet overlapping areas of law. The three primary areas are patent,² trademark,³ and copyright law.⁴ Secondary areas include trade secret, trade dress, and know-how. Patent and copyright law are provided for in the United States Constitution⁵ and thus the cases regarding these two areas are based on federal law and are gleaned from the United States federal courts. Trademark law has both federal⁶ and state aspects and thus the cases regarding this area are based on federal or state law, or both, and, for purposes of this Article, are gleaned from the United States federal courts and the Georgia state courts. Further, because the Court of Appeals for the Eleventh Circuit covers Georgia, Florida, and Alabama, and because its decisions are applicable to Georgia, some cases from Florida and Alabama that have been appealed to the Eleventh Circuit are included. Likewise, some United States Supreme Court decisions and some decisions of the United States Court of Appeals for the Federal Circuit ("Federal Circuit") (which decides all patent law appeals from the district courts) that affect intellectual property law in Georgia are included in this Article.

The past nineteen months have been active in the intellectual property arena. Seminal cases were decided in the area, and the courts spent much time applying these cases. In patent law, the scope of issued patents was made more definite in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.¹ In trademark law, the scope of punitive damages was explored in Cooper Industries v. Leatherman Tool Group, Inc.⁸ and Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc.⁹ In copyright law, the scope of parody and fair use was made less ambiguous in the "Gone With The Wind—The Wind Done Gone" case.¹⁰ In trade dress law, the relationship between patented features and trade dress features was compared in TrafFix Devices, Inc. v. Marketing Displays, Inc.¹¹ Overall, this was an exciting time in the field that will have implications to the law, practitioners, and owners for some time to come.

II. Patent Cases

Prosecution history is an important concept in patent law. Briefly, a patent's scope is determined by a number of things, one of which is the prosecution history. How the prosecution history is applied to the scope of the patent has been the subject of many cases. However, a recent case has set relatively bright line limits and is creating much discussion among the courts and practitioners alike. Following the decision in this seminal case, the courts have decided several more cases to fine-tune how prosecution history limits the scope of a patent.

In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,¹² which is now under review by the Supreme Court after arguments were made in January 2002, the Federal Circuit, sitting en banc, held that amendments¹³ to pending patent claims during prosecution for '"a substantial reason related to patentability'" create prosecution history estoppel.¹⁴ The Federal Circuit held that "a substantial reason related to patentability" is not limited to overcoming prior art under 35 U.S.C. Sec. 102 (novelty) and section 103 (nonobviousness), but includes other reasons related to the statutory requirements for a patent.¹⁵ Therefore, unlike in the past, amendments under section 101 (usefulness) and section 112 (defmiteness) likely now also will give rise to prosecution history estoppel.¹⁶ Importantly, the Federal Circuit held that the application of prosecution history estoppel results in no range of equivalents¹⁷ being available for the amended claim element.¹⁸ Before Festo there were two lines of cases defining the application of prosecution history, namely a line of cases¹⁹ that viewed prosecution history as a "flexible bar" to the doctrine of equivalents and a line of cases that viewed prosecution history as a strict surrender or complete bar²⁰ of any range equivalents.²¹ In Festo the Federal Circuit follows the latter line of cases holding that an amendment results in a complete bar to any range of equivalents.²²

The opinion in Festo is premised on the principle that an issued patent with its prosecution history must serve as notice to the public as to the scope of the patent.²³ The Federal Circuit held that preserving the notice function of the claims and preventing patent holders from recapturing under the doctrine of equivalents subject matter that was surrendered before the United States Patent and Trademark Office ("PTO") could only be accomplished through a complete bar on equivalents.²⁴ The Federal Circuit noted: "Under the flexible bar approach, . . . the exact range of equivalents when prosecution history estoppel applies [was] virtually unascertainable, with only the prior art marking the outer limits of the claim's scope."²⁵ This reasoning created a '"zone of uncertainty,'" which discouraged invention.²⁶ In contrast, the Federal Circuit noted that a complete bar lends certainty to the process of determining the scope of protection afforded by a patent as both the public and the patentee know that once an element of a claim is narrowed by amendment for a reason related to patentability, that element's scope of coverage will not extend beyond its literal terms.²⁷ Further, the Federal Circuit noted that "[w]ith a complete bar, neither the public nor the patentee is required to pay the transaction costs of litigation in order to determine the exact scope of subject matter the patentee abandoned when the patentee amended the claim."²⁸

After deciding Festo, the Federal Circuit proceeded to decide a number of other cases on prosecution history estoppel and how an amendment to a claim affects the scope of the claim. As can be seen in the following cases, claim amendments narrowed the scope of the patent in some, while in other cases, claim amendments had no effect on the scope of the patent.

In Talbert Fuel Systems Patents Co. v. Unocal Corp.,²⁹ the Federal Circuit granted summary judgment to Unocal after construing the patent claims so that the temperature range claimed was not entitled to any range of equivalents.³⁰ Talbert's patent was for reduced emissions gasoline having a final boiling point of 345^2F.31 Talbert argued that the word "final" does not appear in the claims, that the gasoline can have a higher boiling point, and that a pure boil above or below the claimed range can depend on the refinery cut.³¹ Despite these assertions, however, the Federal Circuit held that Talbert's emphasis during the prosecution was that 345³² F was the "final boiling point" for standard carbureted gasoline.³³ This estopped Talbert from asserting a broader range, because the range was amended into the claim.³⁴ Further, the Federal Circuit ignored Talbert's argument that the amendment was not introduced for patentability reasons because the prior art "teaches away from [the claimed] fuel."³⁵

In Interactive Pictures Corp. v. Infinite Pictures, Inc.³⁶ the Federal Circuit held that an amendment of claim did not preclude subsequent assertion of infringement by equivalents.³⁷ In Interactive, although the patent holder amended a patent claim for an image viewing system by changing "output signals" to "output transform calculation signals,"³⁸ the Federal Circuit held that such an amendment did not narrow the claim.³⁹ As the claim was not narrowed, the amendment did not preclude the subsequent assertion of infringement by equivalents.⁴⁰ Specifically, the Federal Circuit held that the amendment merely clarified the claim, "[making] express what had been implicit in the claim as originally worded."⁴¹

In Intermatic Inc. v. Lamson & Sessions Co.⁴² the Federal Circuit held that the patent holder could not obtain any range of equivalents with respect to a limitation that was added to a re-examined claim⁴³ and the bar to equivalency extended to all claims that originally contained the amended limitation.⁴⁴ Specifically, the patent was for a weatherproof electrical outlet cover that contained amended claims for a device with an insert that served to fill a void between a base plate and an electrical outlet, where the limitation had been added to avoid prior art.⁴⁵ Importantly, "arguments made to distinguish prior art . . .

[were] retroactively applied to limit the scope of a claim limitation as of the issue date of the patent, not the date those arguments were made."⁴⁶ Thus, from this holding, an amendment of a broader claim bars access to any scope of equivalency as to the unamended narrower claim.⁴⁷

Citing Festo the Federal Circuit decided several, additional cases holding that some amendments preclude a range of equivalents,⁴⁸ while other amendments do not affect the range of equivalents.⁴⁹ One consequence of the Festo complete bar holding may be that the district court will immediately turn to the prosecution history to quickly resolve patent infringement actions.

In an interesting and related decision, the Federal Circuit in Ballard Medical Products v. Allegiance Healthcare Corp.⁵⁰ held that the district court's reference to prosecution history estoppel, even though not conventionally referred to, in connection with a literal infringement claim did not warrant reversal.⁵¹ In construing patent claims, the Federal Circuit held that a court might hold one issue, such as prosecution history, to be dispositive.⁵² Specifically, when a patentee advises the examiner (and the public after patent issuance) that a particular structure is not within the patentee's...