Intellectual Property - Laurence P. Colton and Nigamnarayan Acharya

• Jurisdiction: United States,Federal
• Publication year: 2004
• Citation: Vol. 55 No. 4

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, 2003 to December 31, 2003. The authors have not attempted to include all cases that touch upon intellectual property, but instead they have selected some decisions that are of more significance or interest or that indicate a particular direction the areas of law may take.

Intellectual property law comprises several discrete yet overlapping areas of law. The four primary areas are patent, trademark, copyright, and trade secret.¹ Patent and copyright law are provided for in the united States constitution,² and thus the cases regarding these two areas are based on federal law and are gleaned from the U.S. federal courts. While trademark law has both federal³ and state aspects and thus the cases regarding this area are based on federal or state law, the cases generally are litigated in the United States federal courts. As such, this Article will focus on the cases from the federal courts.

II. Patent Cases

A. Claim Construction

The claims of a patent are the equivalent of the metes and bounds of the protection of the patent — the scope of coverage.⁴ As the claim's scope often can be determinative in a patent infringement action, many of the appellate cases in patent law are focused on claim construction. While claim construction is determined from a number of factors, the words in the claims are given their ordinary meaning unless the applicant or the patent specification⁵ suggests otherwise. As such, in many of the court cases where claim construction is at issue, the focus is on instances in which the words in the claims are not given their ordinary meaning.

First, the prior art's⁶ definition of a term may be given weight over the dictionary definition in determining the meaning of the term.⁷ In Kumar v. Ovonic Battery Co.,⁸ the Federal Circuit reversed the district court's claim construction of a patent claim related to a rechargeable hydrogen battery, which was based completely on the dictionary definition of the term "amorphous."⁹ Defendants argued that the term "amorphous" should be construed to mean "completely amorphous" as defined by the dictionary¹⁰ and that defendants did not infringe the patent because the batteries produced under defendants' licenses did not use completely amorphous alloys.¹¹ The Federal Circuit determined that the dictionary definition suggesting a completely amorphous interpretation was restrictive because the patentee cited prior art during prosecution of the patent application in which the term "amorphous" was defined to be less than completely amorphous.¹² Thus, the definition of "amorphous" from the prior art was preferred over the dictionary definition when constructing the scope of this claim limitation.¹³

Next, the use of the terms "first" and "second," without more, in structural patent claims does not have a temporal meaning.¹⁴ In 3M Innovative Products Co. v. Avery Dennison Corp.,¹⁵ the Federal Circuit reversed the district court's claim construction, which defined the term "multiple embossed patterns" to include a limitation that the "patterns" be created sequentially based on the patentee's use of terms "first pattern" and "second pattern."¹⁶ As the patentee defined the film of its adhesive-backed film product for commercial graphics in an entirely structural manner, the court rejected the argument that use of "first" and "second" conveyed a temporal arrangement contrary to the plain language of the claims.¹⁷ The court appeared to be persuaded by the patentee's broadening of the claim language during the prosecution of the patent, which also supported a plain-meaning construction of the claim without a sequential-embossment limitation.¹⁸

One court held that terms in patent claims may be given the definition understood by persons skilled in the art¹⁹ rather than the dictionary definition.²⁰ In Merck & Co. v. Teva Pharmaceuticals USA, Inc.,²¹ the Federal Circuit affirmed the decision of the district court that Teva's generic compound ("alendronic acid") infringed on Merck's patents.²² After concluding that Merck's patent was valid, the court rejected Teva's argument that Teva's generic product did not infringe on the patent claim because the patent called for use of an "acid" while Teva's product used an "acid salt."²³ Specifically, while the patent did use the term "acid," persons skilled in the art understand that the term "acid" refers to the active agent that would be delivered in the form of a salt.²⁴ Thus, the patent inherently covered an acid salt compound.²⁵

Further, the meaning of terms in patent claims are not limited to the embodiment shown in the examples of the patent.²⁶ In Glaxo Wellcome, Inc. v. Andrx Pharmaceuticals, Inc.,²⁷ the Federal Circuit reversed the summary judgment of noninfringement, which was based on an unduly restrictive construction of the patent claims.²⁸ Andrx argued that Glaxo's patents on a sustained-release formulation of bupropion hydrochloride (the active ingredient in Wellbutrin® SR and Zyban®) and hydroxypropyl methylcellulose (HPMC) were limited to the specific examples in the patent and, because Andrx's products use a lower molecular weight bupropion hydrochloride and a lower viscosity HPMC, Andrx's products did not infringe Glaxo's patent.²⁹ While during the prosecution of the Glaxo patent the patent was restricted to the specific use of HPMC, the patent was not restricted to specific molecular weights of or viscosities of HPMC.³⁰ Therefore, the Federal Circuit found that the district court erred in limiting the claims to specific examples in the patent.³¹

Patent claims do not ordinarily import claim limitations from industry standards. In E-Pass Technologies, Inc. v. 3COM Corp.,³² the Federal Circuit reversed the district court's construction of the patentee's claims, which limited the claimed "electronic multifunction card" to industry standard dimensions.³³ The district court decided that the ordinary meaning of the term "card" should be limited to the standard credit card size as the context and object of the patent was to provide a method and device for substituting a single "electronic multifunction card" for multiple credit cards.³⁴ Reversing the district court, the Federal Circuit held that no basis existed in the ordinary meaning of the claim terms to impose industry standard dimensions because the method steps recited in the patent claims did not impose any specific dimensional requirements and the patentee inferred that such "cards" could vary in size as evidenced by the use of the terms "simple form" and "normally" when describing the dimension of credit cards.³⁵

The term "about," which is ubiquitous in patent claims, may be constructed to include a range of experimental error.³⁶ In BJ Services Co. v. Halliburton Energy Services,³⁷ the Federal Circuit held that a patent claim including the term "about" was not indefinite and encompassed a range of experimental error.³⁸ BJ Services Company's patent, directed to a method of fracturing subterranean formations to stimulate oil and gas wells, included a claim limitation to forming a base fluid by blending a guar polymer having carboxymethyl substituents and a C* value of "about 0.06" percent by weight.³⁹ In concluding that the term "about" was not indefinite and included a range of experimental error, the court found sufficient evidence that persons of ordinary skill in the art could understand the bounds of the patent claim and that the term "about" encompassed a degree of experimental error.⁴⁰

Additionally, a limitation from the specification may not be imported into the claims even if it is shown as part of a preferred embodiment and as a solution to a prior art problem.⁴¹ In Resonate Inc. v. Alteon Websystems, Inc.,⁴² the Federal Circuit vacated the district court's judgment of noninfringement that read limitations into a claim from a preferred embodiment when the claim language was broader than that embodiment.⁴³ In Resonate, the patent claim, which related to a method of routing Internet traffic, was constructed by the district court to require that the data be transmitted back to the client, bypassing the load balancer as shown in the preferred embodiment and as a solution to a prior art problem, even though the patent claim itself did not require the transmission to bypass the load balancer.⁴⁴ The Federal Circuit held that the bypass feature was not properly a limitation of the claim and that the alleged infringer, who did not have the bypass feature, could infringe the patent claim.⁴⁵

An Information Disclosure Statement ("IDS"), which contains a list submitted to the United States Patent and Trademark Office ("USPTO") of the prior art known to the applicant, does not inherently limit the patent claims.⁴⁶ In Abbott Laboratories v. Baxter Pharmaceutical Products,⁴⁷ the Federal Circuit reversed the district court's restrictive construction of the claim limitation "effective amount."⁴⁸ The patent claimed compositions and methods of preventing the degradation of a sevoflurane anesthetic by adding an "effective amount" of certain Lewis acid inhibitors.⁴⁹ The district court construed the term "effective amount" to mean greater than 130 ppm of water because an IDS filed in connection with the application disclosed a sevoflurane that included no more than 130 ppm of water.⁵⁰ In reversing the district court, the Federal Circuit noted that an IDS is not construed to be an admission that the information cited is material to the patentability of the invention and for that reason, the applicant's disclosure to the USPTO in the IDS did not itself relinquish effective amounts below 130 ppm of water.⁵¹ The Federal Circuit construed the term "effective amount" according to its ordinary and customary meaning...