Same terms, same meanings, unless specification indicates otherwiseApril 27, 2007

In an appeal by Porta Stor, Inc. of a judgment in favor of PODS, Inc. for, among other things, patent and copyright infringement, the Federal Circuit reversed the judgment of patent infringement finding no literal infringement and finding that infringement under the doctrine of equivalents was barred by prosecution history estoppel. The court also reversed the grant of judgment as a matter of law on copyright infringement and remanded the issue for a new trial.

Both PODS and Porta Stor are storage and moving companies that operate by delivering storage containers to customers. PODS' patent-in-suit claimed an apparatus and method for lifting a storage container from the ground onto a transport vehicle or vice versa. In reversing the district court on the patent infringement count, the Federal Circuit looked to the plain meaning of the claim language itself, as well as the patent specification and prosecution history, finding different meanings to the same terms at different portions of the claims were not supported. As to the copyright infringement count, the Federal Circuit found testimony by PODS' President and CEO regarding the author or authors of the rental agreement was inconsistent and, therefore, insufficient to warrant JMOL in favor of PODS.

More details after the jump.

PODS is the assignee of U.S. Patent No. 6,701,062 ("the '062 patent") which claims an apparatus and method for lifting storage containers. These containers are the type that a customer either uses for on-site storage or requests that the container be picked up and transported to warehouse storage or a destination of the customer's choosing. Portions of claims 1 and 29 of the '062 patent are at issue, particularly the limitations of claim 29: "positioning a carrier frame around the container on the transport vehicle platform" and "moving and positioning the carrier frame around the container." Claim 1 also requires the "the carrier frame. . . is capable of being lowered around the container." The parties had agreed that the terms "carrier" and "around" in claim 1 required "an apparatus that used a four-sided or rectangular-shaped carrier frame." As for the terms in claim 29, Porta Stor argued that the terms should be given the same meaning as in claim 1; however, the district court, agreeing with PODS, construed "carrier frame" in claim 29 as "not limited to a four-sided, rectangular shaped frame and "around" to mean "on all four sides or on less than all four sides."

The Federal Circuit reversed, and applied a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear form the specification and prosecution history that the terms have different meanings at different portions of the claims. The court noted that PODS pointed to no evidence in the specification or the prosecution history that the terms had any other meanings than the uncontested meaning in claim 1 and, in fact, the only embodiments disclosed in the specification were four-sided. As a result, the claim construction was reversed.

This reversal of claim construction doomed PODS' infringement case. As a result of the revised claim construction, both claims 1 and 29 required an apparatus that uses a four-sided or rectangular-shaped carrier frame. It was undisputed that Porta Stor's device did not use such a frame, so there could be no literal infringement.

Infringement under the doctrine of equivalents also failed as a result of prosecution history estoppel. During prosecution, PODS argued, among other things, that a prior art reference cited by the examiner lacked "the teachings of the singular rectangular-shaped frame." The court held that this statement, although arguably unnecessary during prosecution, estopped PODS from claiming frames that were non-rectangular infringed under the doctrine of equivalents, because "a competitor would reasonably believe that [PODS] had surrendered the relevant subject matter." As a result, the infringement finding was reversed.

As for copyright infringement count of the rental agreement, the Federal Circuit reviewed the testimony of PODS' President and CEO, Peter Warhurst, and found his testimony was inconsistent. Specifically, during direct examination, Mr. Warhurst testified that an outside attorney helped draft the original mini-storage contract; similarly, during cross-examination, he testified that outside counsel wrote the original documents. However, on redirect, Mr. Warhurst testified that "my staff and the lawyers worked together to create the document." The Federal Circuit found the inconsistent testimony legally insufficient to warrant JMOL by the district court in favor of PODS on the question of joint author ownership and remanded the matter.

Additional issues were also addressed by the Federal Circuit related to the jury's $1 verdict on the Lanham Act claim and the jury's $15,000 verdict on the Florida common law claim – both affirmed by the Federal Circuit.

To read the full opinion in PODS, Inc. v. Porta Stor, Inc., click here.

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