Intellectual Property - Laurence P. Colton, Nigamnarayan Acharya, and Michael J. Bootcheck

• Publication year: 2005

Intellectual Propertyby Laurence P. Colton^* Nigamnarayan Acharya^** and Michael J. Bootcheck^***

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, 2004 to December 31, 2004. 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 the areas of law. While the cited cases often have multiple issues, the authors have reported only on the more relevant or interesting issues.

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. Trademarklaw 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 are litigated in the United States federal courts. As such, this Article will focus on cases selected from the federal courts with precedent in Georgia courts.

II. Patent Cases

A. Claim Construction

The claims of a patent are the equivalent of the metes and bounds of the patent—the scope of coverage or protection of the patent. Claims are construed using a number of factors, and the terms within a claim are given their ordinary meaning in the field of the invention or the art unless the patent applicant, through the patent or the prosecution history of the patent application in the United States Patent and Trademark Office ("USPTO"), chooses to be his own lexicographer.⁴ Because the scope of a claim often can be determinative in a patent infringement action, many cases in the field of patent law are often appealed on the issue of claim construction—what the terms of the claims mean or protect.

For example, in Norian Corp. v. Stryker Corp. ,⁵ the Federal Circuit⁶ held that, although the term "consisting of"⁷ in a claim limits the claimed invention, it does not limit aspects unrelated to the invention.⁸ Norian Corp. ("Norian") alleged that Stryker Corp.'s ("Stryker") BoneSource® kit, which had a sodium phosphate element, a mixture of tetracalcium phosphate element, and instructions for using the kit anda spatula, infringed on the claims of the patents-in-suit. The claim⁹ in the relevant patent claimed it contained a kit "consisting of"¹⁰ at least one calcium source, at least one phosphoric acid source free of uncom-bined water, and a solution consisting of water and a sodium phosphate.¹¹ Stryker argued that the inclusion of the spatula rendered the kit outside the scope of the claims.¹² The court determined that the spatula was not part of the invention because the term "kit" only limited the specified chemicals and, as such, Stryker infringed the claims.¹³

In Chef America, Inc. v. Lamb-Weston, Inc.,¹⁴ the Federal Circuit held that claims may be construed as used by the patentee even if the result is nonsensical.¹⁵ The only issue on appeal in this case was whether the claim limitation '"heating the resulting batter-coated dough to a temperature in the range of about 400oF to 850°F"' specified the temperature at which the dough was to be heated (i.e., the temperature of the oven), or to which the dough itself was to be heated, meaning the batter would be burned to a crisp.¹⁶ Interestingly, the court concluded that the patentee's use of the term "at" in specific instances in the specification (e.g., in examples) and the term "to" in the claims showed that the patentee intentionally used the term "to" rather than "at."¹⁷ As such, the court held that the terms must be given the meanings used by the patentee and not those redrafted in later documents, irrespective of an unusable product or a nonsensical result.¹⁸

In Microsoft Corp. v. Multi-Tech Systems, Inc.,¹⁹ the Federal Circuit held that the claims were restricted by the patent specification andremarks made during the prosecution of the patent.²⁰ The patent holder, Multi-Tech Systems, Inc. ("Multi-Tech"), stipulated at the Markman hearing²¹ that no infringement existed literally or under the doctrine of equivalents, under a claim construction in which an allegedly infringing network system conducted transmission through a packet-switched network, as opposed to a standard telephone line. Only the claims in one of the three patents-in-suit explicitly stated that the transmission of data packets between a local site and a remote site must occur over a telephone line, and only the "Summary of the Invention"²² denned the invention narrowly for use over telephone lines. Further, Multi-Tech made a statement during the prosecution of one of the patents-in-suit, which occurred after the first of the three patents issued, defining the communication protocol for the patented invention as over the telephone lines.²³ As a result, the patent disclaimed the use of a packet-switched network, and therefore, use of a packet-switched network did not infringe the patents-in-law suit.²⁴

In Irdeto Access, Inc. v. Echostar Satellite Corp.,²⁵ the Federal Circuit held that absent an accepted meaning in the art, a court must define a claim term only as broadly as provided for in the patent itself.²⁶ Irdeto Access, Inc. ("Irdeto") patented a system for "controlling the broadcast of digital information signals by using three layers or tiers of complementary encryption and decryption keys—'service keys,' 'group keys,' and 'box keys.'"²⁷ Irdeto defined several words in its patent specification that had no meaning in the art and explicitly argued to the USPTO examiner that it could be its own lexicographer. Echostar Satellite Corp. ("Echostar") argued that it did not infringe the claims because the term "group," as defined by Irdeto, was something less than all members and EchoStar's device applied to all members.²⁸ Irdeto countered that "group" had a broader ordinary meaning and that, absent a "clear disclaimer" or words of "manifest exclusion," the heavy presumption of ordinary meaning must apply.²⁹ Specifically, Irdeto argued that '"[a]group may be as small as a single individual or it may be substantially larger."'³⁰ The court stated that the burden of a precise definition falls on the applicant and that when there is no meaning for a term in the art a court will construe and limit a claim by its definition in the specification.³¹ Thus, the Federal Circuit held Irdeto to the more limited definition of "group" as defined in the specification.³²

In C.R. Bard, Inc. v. United States Surgical Corp.,³³ the Federal Circuit affirmed the district court's finding of non-infringement.³⁴ In this suit, C.R. Bard, Inc. ("Bard") asserted patent infringement against United States Surgical Corp., based on a patent for a device to repair hernias. The dispute related to whether proper claim construction required an infringing device to have "pleats" even though the claim did not specifically include the term "pleats."³⁵ Relying on Texas Digital Systems, Inc. v. Telegenix, Inc.,³⁶ Bard argued that dictionary definitions should override or trump the intrinsic record.³⁷ The court noted that the "Summary of the Invention" section of the patent stated "'[t]he present invention is an implantable prosthesis . . . [that] includes a pleated surface.'"³⁸ Further, the "Abstract" section of the patent described "'[a]n implantable prosthesis including a conical mesh plug having a pleated surface which conforms to the contours of the defect being repaired.'"³⁹ The court also noted that a review of the prosecution history and a re-examination of the patent indicated that Barddistinguished its device over the prior art because its device had pleats.⁴⁰

In In re Crish,⁴¹ the Federal Circuit affirmed the USPTO Board of Patent Appeals and Interferences⁴² and the examiner's rejection of a patent application's claims on anticipation grounds.⁴³ At issue in the case were claims that included two "transition" terms—"comprising" and "consists."⁴⁴ The court stated that "it is well-established that 'comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim."⁴⁵ Regarding the context of the claims, the court noted that although the claims included the closed-ended transition term "contains," the claims were not precluded from covering additional nucleotides because the open-ended transition term "comprising" was also included in the claims relative to nucleotides.⁴⁶

In Honeywell International, Inc. v. Hamilton Sundstrand Corp. ,⁴⁷ the Federal Circuit held that

the fact that the scope of the rewritten claim has remained unchanged will not preclude the application of prosecution history estoppel if, by canceling the original independent claim and rewriting the dependent claims into independent form, the scope of subject matter claimed in the independent claim has been narrowed to secure the patent.⁴⁸

Specifically, a patent applicant is deemed to have "surrendered" aspects of the patent coverage when claims are amended during the patent application prosecution; the surrendered subject matter is "denned by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation."⁴⁹ Judge Newman dissented and noted that the court held the act of restating a dependent claim in independent form as a "narrowing amendment" in terms of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,⁵⁰ even though the claim was never rejected or otherwise amended.⁵¹ Thus, the court advanced a far-reaching, new rule that an element or limitation...