Fed Cir Confirms That 28 USC 1659 Stays District Court Cases Until Completion of Appeal in The Parallel ITC Proceeding In re Princo Corp. Date: May 4, 2007 Panel: Bryson, Linn, Dyk Author: Dyk District court:S.D.N.Y. Trial judge: Brieant (on petition for rehearing) Summary: Fed Cir denies Phillips’s petition for rehearing of a previous mandamus grant directing the district court to stay the case pursuant to 28 U.S.C. 1659. In re Princo Corp., 478 F.3d 1345 (Fed. Cir. 2007). Pointing to similar language in 19 U.S.C. 1337, Phillips argued in its rehearing petition that the Fed Cir erred in construing the “becomes final” language in section 1659 to require finality on appeal, rather than finality only at the International Trade Commission level. The Fed Cir reasoned that the context and legislative histories of these two statutory sections indicate that their respective “becomes final” language have different meanings and different purposes. Accordingly, the Fed Cir “conclude[s] that § 1337 is not designed to define finality for purposes of § 1659 and that finality in the latter section has a different meaning, namely that a Commission proceeding does not ‘become final’ until all appeals are exhausted.” Slip op. at 4.
KEY WORDS: PETITION FOR REHEARING, MANDAMUS, INTERNATIONAL TRADE COMMISSION, STATUTORY INTERPRETATION, FINALITY
Plain Language and Stated Function of Claims Impose Additional, Unstated Limitation and Restricts Scope To Disclosed Embodiment Foremost in Packaging Sys., Inc. v. Cold Chain Techs., Inc. Date: May 2, 2007 Panel: Newman, Friedman, Prost Author: Friedman District court:C.D. Cal. Trial judge: Selna Summary: Fed Cir affirms summary judgment of noninfringement based on a correct claim construction. The patent relates to insulated shipping containers designed to carry items, such as pharmaceuticals and human tissues, that must be transported at specific temperatures. The first set of claims requires an “insulated block being adapted to slidably engage the coolant cavity, thereby the coolant and the insulated block together substantially filling the coolant cavity.” Based on the claim language “together substantially filling” and the stated function of the blocks, the Fed Cir concluded that the insulated blocks must extend into the coolant cavities when the cover is placed on the container. The second set of claims requires “a configuration for minimizing air spaces within the cavities,” which can be achieved only by having the insulated blocks of the cover extend into the coolant cavities. Although the claims involve different language, the Fed Cir essentially limited the two sets of claims to the disclosed embodiment shown in Figure 1 of the patent. Because the accused device’s insulated blocks merely cover the opening without extending into the coolant cavity, there was no infringement.
KEY WORDS: CONSTRUCTION (NARROW), FIGURES, INFRINGEMENT (NO).
Legal Documents Are Copyrightable, But Ownership May A Problem; Revival Of The Reasonable Competitor Standard For Argument-Based Estoppel Pods, Inc. v Porta Stor, Inc. Date: April 27, 2007 Panel: Lourie, Dyk, O’Malley Author: Dyk District court: M.D.Fl. Trial judge: Pizzo Summary: Fed Cir reverses JMOL of (i) literal infringement arising from incorrect construction, (ii) infringement by equivalents as barred by argument-based estoppel, and (iii) copyright infringement; but affirms on remaining issues. The patent-in-suit relates to an apparatus and method for lifting a storage container from the ground onto a transport vehicle. Appellate jurisdiction: Although Porta properly filed a notice of appeal on the original judgment, it failed to file a notice of appeal on a later amended judgment in which the district court doubled damages and entered an injunction. Applying FRAP 4(a)(2) liberally, the Fed Cir held that the premature notice applied to the amended judgment. But the Fed Cir ruled that Porta lacked standing to appeal the jury’s finding of violation of the state unfair competition claim, because there was no judgment awarding damages or imposing an injunction on this specific issue (even though there was a jury verdict) and thus no basis for Porta to be “aggrieved by the district court’s judgment.” Literal infringement: Asserted claim 29 contains the terms “carrier frame” and “around.” Looking at claim 1 where the term “carrier frame” is specifically described as a four-sided or rectangular-shaped carrier frame surrounding the container on all sides, the Fed Cir held that the same term in claims 1 and 29 have the same meaning, based on the presumption that identical terms have the same meaning, the patentee did not point to any evidence of a different meaning, and the intrinsic evidence supports this reading. As to “around,” the court gave the term its ordinary meaning, based on a Webster’s dictionary, and required that the carrier frame be on all sides of the container. Because the accused device is U-shaped with an open-ended carrier frame, there was no literal infringement. Doctrine of equivalents: The patent could not cover the accused device under the Doctrine of Equivalents based on arguments made during prosecution. Specifically, the patentee offered separate bases for distinguishing an asserted prior art references, thus “clearly and unmistakably” limiting the claims to a rectangular frame and surrendering coverage of any non-rectangular frames. Because a “competitor would reasonably believe that PODS had surrendered any claim to a frame that was not rectangular or four-sided in shape,” the patentee could not assert that a U-shaped device was an equivalent. Slip op. at 15. Although the arguments related only to one claim, the Fed Cir extended the estoppel to other asserted claims because “once an argument is made regarding a claim term so as to create an estoppel, the estoppel will apply to that term in other claims.” Id. Copyright: Applying regional circuit law and interpreting Supreme Court precedent on “work made for hire,” the Fed Cir ruled that PODS did not own and was not a joint owner of the copyright over its rental agreement, because trial testimony established that an outside lawyer co-authored or was the sole author of the rental agreement. Because “[m]ere participation in, contributions to, and review of the work of an independent contractor by PODS employees would not necessarily create a joint work,” a reasonable jury could have found against PODS, thus requiring remand for a new trial. The Fed Cir, however, indicated in a footnote that legal documents may be copyrightable.
KEY WORDS: COPYRIGHT OWNERSHIP, “WORK MADE FOR HIRE,” DOCTRINE OF EQUIVALENTS (NO), ARGUMENT-BASED ESTOPPEL, CLAIM CONSTRUCTION (NARROW), INFRINGEMENT (NO)