Intellectual Property - Laurence P. Colton and Nigamnarayan Acharya

• Jurisdiction: United States,Federal
• Publication year: 2003
• Citation: Vol. 54 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 in Georgia during the period from January 1, 2002 to December 31, 2002. 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, trademark, and copyright law.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 precedent-setting cases generally are from the U.S. federal courts, and as such, this Article will focus on the cases from the federal courts. Further, because the United States Court of Appeals for the Eleventh Circuit covers Georgia and its decisions are applicable to Georgia, some cases from Florida and Alabama (the other two states in the Eleventh Circuit) that have been appealed to the Eleventh Circuit are included. The United States Supreme Court decisions and some United States Federal Circuit Court of Appeals decisions (which decide appeals from the U.S. district courts based on patent law) that affect intellectual property law in Georgia also are included.

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 of the patent. As such, claim construction is one of the important concepts in patent law because the scope of a claim can often be determinative in a patent infringement action. As a result, many of the appellate cases in the field of patent law are focused on claim construction. While claim construction is determined from a number of factors, the more interesting cases this year have focused on the use of a patent's specification, the main descriptive body of the patent, to interpret the claim elements.

A claimed element that has not been mentioned in the patent specification can be valid.⁴ In All Dental Prodx, L.L.C. v. Advantage Dental Products, Inc.,⁵ the Federal Circuit held that the failure of a specification to specifically mention a claim limitation that later appears in the claim is not fatal if a person skilled in art (patent law's "reasonable person" standard) would recognize, upon reading the specification, that the new language reflects what the specification shows has been invented.⁶ Specifically, the patent claims, which concerned a method for making a custom dental impression tray and recited the step of "heating an original unidentified mass" of thermoplastic material, were not invalid for failure to satisfy the written description requirement, even though the original specification did not include the phrase "original unidentified mass."⁷ Although there is no mention of the starting material's shape or form in the specification, the Federal Circuit reasoned that the specification made it clear that the invention did not involve heating a mass having an identifiable form or shape.⁸

A patent claim should not be construed to cover only a single embodiment disclosed in a patent specification.⁹ In Teleflex, Inc. v. Ficosa North America Corp.,¹⁰ the Federal Circuit held that a claim is not limited to the single embodiment disclosed in the specification and is to be given its ordinary meaning unless the applicant expressly imparts a unique meaning or deviates from the ordinary meaning.¹¹ After distinguishing Teleflex from previous precedent,¹² the court noted that there was a "heavy presumption" that a claim term or limitation takes on its ordinary meaning (claim terms generally should be defined as in the dictionary, unless the applicant states otherwise) and that this presumption is not overcome by simply pointing to the preferred embodiment disclosed in the patent.¹³ Importantly, the court stated that the number of embodiments disclosed in the specification is not determinative of the meaning of disputed claim limitations.¹⁴

Further, a claim is not limited to the preferred embodiment that is required to be disclosed in the patent application.¹⁵ In Beckson Marine, Inc. v. NFM, Inc.,¹⁶ the Federal Circuit held that the term "sloping drain groove" claimed in the patent for a boat port light was not limited to a long, narrow drain groove depicted as a preferred embodiment in the specification because the ordinary meaning of "groove" is not necessarily limited to a long U-shaped channel.¹⁷ Even though the patent's figures showed only a single embodiment of the "sloping drain groove," the court reasoned that the specification's use of the broad term "draining structures" suggests that the applicant did not mean to limit the term "groove" to a specific width or length, and because the specification did not require long and narrow grooves at any point, such a limitation is properly construed to mean a more general sloping, artificial channel for flowing water.¹⁸

The patent specification, however, can be used to narrow claims.¹⁹ In Bionx Implants, Inc. v. Linvatec Corp.,²⁰ the Federal Circuit held that the term "rigid," as used in claims for a surgical suturing device, was properly construed to mean that the device is "sufficiently rigid" to be pushed directly through certain human tissue because the written description made it clear that, to be rigid within the meaning of the claims, a suture must be sturdy enough to be "pushed" through the tissue to be repaired.²¹ Further, the inventor emphasized the definition for "rigid" during the prosecution of claims (the give and take between the applicant and the United States Patent and Trademark Office during the patent application stage), thus, distinguishing the claimed suture over the prior art by emphasizing that it was rigid enough to be pushed through uncut tissue without the use of a needle.²²

The patent specification controls the interpretation of the terms in the claim.²³ In Pickholtz v. Rainbow Technologies, Inc.,²⁴ the Federal Circuit reversed the district court's holding that the term "computer," as used in the claims of the patent, was directed to a software protection method and was not synonymous the with term "computer system" in the patent's specification.²⁵ The appeals court found that there was nothing in the specification to indicate that these terms had different meanings and that the patentee did not distinguish his invention from prior art on the basis of any difference between "computer" and "computer system" because the claim term "computer" must include at least some peripherals.²⁶ The court noted that ordinarily it does not regard extra words as surplusage, but in this case the words were used as synonyms.²⁷

The claims of a design patent, which protect the ornamental features of a functional invention, are construed by assessing the entire patent, including all of the figures.²⁸ In Contessa Food Products, Inc. v.

Conagra, Inc.,²⁹ the Federal Circuit held that all of the ornamental features illustrated in the patent figures in a design patent must be considered in evaluating the infringement of a design patent.³⁰ In accordance with the "ordinary observer" test, the patented design must be viewed in its entirety and is defined by the patent drawings, not by a single feature of the claimed design.³¹ In Contessa the determination of whether a design patent for a serving tray holding frozen shrimp was infringed required a consideration of the patent figures showing the underside of the tray, as well as those patent figures showing the arrangement of the shrimp on the tray, because an ordinary observer analysis must encompass the ornamental features of all of the figures in the patent.³²

B. Doctrine of Equivalents

After claim construction, the scope of a patent and its claims is determined in part by the Doctrine of Equivalents. The Doctrine of Equivalents provides that a patent should not be limited strictly to the exact structures or steps in the patent, but that the inventor is entitled to a certain range of equivalents of these structures or steps. While the scope of equivalents is determined by a number of factors and principles, like in any area of law, the patent's prosecution history can have a crucial role in the ultimate scope of equivalents. The prosecution history is the written record of the give and take between the applicant and the United States Patent and Trademark Office ("USPTO") during the patent application stage. How the prosecution history defines the scope of a patent or the scope of equivalents under the Doctrine of Equivalents has been in constant flux. While it appears that the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.³³ breathed life into the Doctrine of Equivalents, it also appears that the general trend is now towards limiting the role of the Doctrine of Equivalents.

In Festo the Supreme Court unanimously reversed the Federal Circuit's holding that amending a claim during the prosecution of a patent application will eliminate the application of the Doctrine of Equivalents to the amended limitation.³⁴ More particularly, in Festo, the Supreme Court held that while a narrowing amendment that adds limitations to a claim made to satisfy any requirement of the United

States Patent Act³⁵ may give rise to prosecution history estoppel, such an amendment does not act as a complete bar to the assertion that the narrowed claim element is infringed under the Doctrine of Equiva-lents.³⁶ In reversing the Federal Circuit's holding³⁷ and affirming Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,³⁸ the Supreme Court held that a narrowing amendment...