Pods, Inc. v. Porta Stor, Inc.

• Decision Date: 27 April 2007
• Docket Number: No. 2006-1504.,2006-1504.
• Citation: 484 F.3d 1359
• Parties: PODS, INC., Plaintiff-Appellee, v. PORTA STOR, INC., Defendant-Appellant, and Christopher E. Neuguth, Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

484 F.3d 1359

PODS, INC., Plaintiff-Appellee, v. PORTA STOR, INC., Defendant-Appellant, and Christopher E. Neuguth, Defendant.

No. 2006-1504.

United States Court of Appeals, Federal Circuit.

April 27, 2007.

Richard H. An, Jenner & Block LLP, of New York, New York, argued for plaintiff-appellee. With him on the brief was Joseph Diamante.

Edward P. Dutkiewicz, of Dunedin, Florida, argued for defendant-appellant.

Before LOURIE and DYK, Circuit Judges, and O'MALLEY, District Judge.^* DYK, Circuit Judge.

DYK, Circuit Judge.

Appellant Porta Stor, Inc. ("Porta Stor") appeals a judgment in favor of appellee PODS, Inc. ("PODS") for, among other things, patent and copyright infringement. We conclude that the district court erred in its patent claim construction; that no literal infringement occurred under the correct construction; and that infringement under the doctrine of equivalents is barred by prosecution history estoppel. Therefore, we reverse the judgment of patent infringement. In addition, since we hold that a reasonable jury could have concluded that PODS did not own the asserted copyright, we reverse the district court's grant of judgment as a matter of law on copyright infringement and remand for a new trial on this issue. In other respects, we affirm.

BACKGROUND

I

PODS and Porta Stor are both storage and moving companies that operate by delivering storage containers to customers. After loading the container, the customer either uses it 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.

PODS is the assignee of United States Patent No. 6,071,062 (filed June 6, 2000) ("'062 patent"), which claims an apparatus and method for lifting a storage container from the ground onto a transport vehicle or vice versa. '062 patent col.1 ll.5-10. Claim 1 claims "[a]n apparatus for lifting, handling and transporting a container" that includes, in relevant part:

a carrier frame including right and left longitudinal elements juxtaposed with the right and left sides, respectively, of the container to be handled and transported, each longitudinal element extending between opposite first and second ends, the carrier frame having front and rear transverse elements juxtaposed with the front and rear ends, respectively, of the container to be handled and transported, each transverse element extending between opposite right and left ends, the left ends of the front and rear elements being adjacent to the first and second ends, respectively, of the left longitudinal element, and the right ends of the front and rear elements being adjacent to the first and second ends, respectively, of the right longitudinal element.

Id. col.6 l.61-col.7 l.11 (emphases added). Claim 1 also requires that "the carrier frame ... is capable of being lowered around the container." Id. col.7 ll.31-33 (emphasis added). It is undisputed that claim 1 discloses a four-sided rectangular carrier frame, with the right and left longitudinal elements defining the length of the rectangle and the front and rear elements defining its width.¹ Apparatus claim 32 is identical to claim 1 in all relevant respects.² Claim 29 claims "[a] method of lifting, handling and transporting a container on to and off from a transport vehicle." Id. col.10 ll.47-48. Two limitations of claim 29 are relevant to this appeal: "positioning a carrier frame around the container on the transport vehicle platform" and "moving and positioning the carrier frame around the container." Id. col. 10 ll.50-51, col. 11 ll.29-30.³

II

On September 16, 2004, PODS filed a complaint in the United States District Court for the Middle District of Florida, and later amended it. The amended complaint alleged that Porta Stor's apparatus for lifting, handling, and transporting storage containers—a three-sided structure with two long sides, one shorter side, and an open-end so as to form a u-shape— infringed the '062 patent. PODS also alleged copyright infringement, asserting that Porta Stor copied a rental agreement for portable storage units of which PODS was the copyright owner.

The parties consented to have the entire proceeding conducted before a magistrate judge. See 28 U.S.C. § 636(c)(1) (2006). On November 10, 2004, the district court issued a preliminary injunction barring Porta Stor from, inter alia, selling or marketing "their method and apparatus for lifting, handling, and transporting a storage container." On appeal we affirmed the grant of a preliminary injunction, finding that "the magistrate judge was correct in holding that Porta Stor's motion did not present sufficient grounds for dissolving the preliminary injunction." PODS, Inc. v. Porta Stor, Inc., 177 Fed.Appx. 73, 75 (Fed.Cir.2006).

After the final pretrial conference, the district court resolved issues of claim construction. The parties apparently agreed that the terms "carrier frame" and "around" in claims 1 and 32 required "an apparatus that uses a four-sided or rectangular-shaped carrier frame." PODS, Inc. v. Porta Stor, Inc., No. 04-CV-2101, slip op. at 2, 2006 WL 1540347 (M.D.Fla. June 5, 2006) ("Claim Construction Order"). Porta Stor argued that the terms in claim 29 should be given the same meaning. Id. at 3. Instead, 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." Id. at 4, 9. The district court apparently agreed with PODS's argument that the omission in claim 29 of the detailed description of a four-sided carrier frame found in claim 1 "presumably carries consequences" and that "the carrier frame described in claim 29 is less precise and limited." Id. at 4.

A jury trial began on June 12, 2006. At the close of the evidence, the district court granted judgment of infringement as a matter of law ("JMOL") for PODS on the patent and copyright infringement claims. It found that independent claim 29 of the '062 patent was literally infringed and that independent claims 1 and 32 (and their dependent claims) were infringed under the doctrine of equivalents. The district court also found, as a matter of law, that the '062 patent was not invalid, thus effectively rejecting Porta Stor's affirmative defenses and counterclaims of invalidity. Additionally, the district court found that the PODS rental agreement was "subject to valid copyright protection" and, since "Porta's rental agreement[] is identical to PODS' rental agreement . . . Porta by its rental agreement has infringed" PODS's copyright. The case was then submitted to the jury, which found that Porta Stor's infringement of the '062 patent was willful and awarded $1500 in damages. The jury concluded that the infringement of the copyright was not willful and awarded no copyright damages, though the court allowed damages in the statutory minimum amount of $750.

The jury also found a willful violation of the Lanham Act, 15 U.S.C. § 1125, but only awarded $1. The jury also found that Porta Stor willfully violated the Florida common law of unfair competition and awarded $15,000. Finally, the jury found a willful violation of the Florida Deceptive and Unfair Trade Practices Act, but awarded no damages.

On June 16, 2006 (the day of the jury verdict), the court entered a judgment ordering Porta Stor to pay PODS a total of $17,251. The court noted in an order accompanying the judgment that it would still consider a motion from PODS to increase the patent damages under 35 U.S.C. § 284. On August 25, 2006, the district court doubled the patent damages and entered a permanent injunction that bars Porta Stor from infringing the '062 patent. On the same day, it also awarded attorney's fees and expenses to PODS on the patent claim under 35 U.S.C. § 285 (based on willful infringement) but declined to do so on the non-patent claims.

Porta Stor appealed on July 3, 2006.

DISCUSSION

I

We have an obligation to assure ourselves of our jurisdiction before considering the merits of an appeal. See Steel Co. v. Citizens for a Better Env't, 523 U.S. 83, 94-95, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998). This case represents another example of the litigants' failure to address potential problems concerning the finality of the judgment. The district court entered a formal "Judgment in a Civil Case" on June 16, 2006, that appeared to be appealable.⁴ However, on August 25, 2006, the court also entered a permanent injunction on the patent claims. Porta Stor filed a notice of appeal on July 3, 2006, from the June 16, 2006, judgment but apparently did not file a notice of appeal from the August 25, 2006 amended judgment.

Under Federal Rule of Appellate Procedure 4(a)(2), "[a] notice of appeal filed after the court announces a decision or order—but before the entry of the judgment or order—is treated as filed on the date of and after the entry." This situation falls within the scope of Rule 4(a)(2). This provision is designed for situations in which "the unskilled litigant . . . files a notice of appeal from a decision that he reasonably but mistakenly believes to be a final judgment, while failing to file a notice of appeal from the actual final judgment." FirsTier Mortgage Co. v. Investors Mortgage Ins. Co., 498 U.S. 269, 276, 111 S.Ct. 648, 112 L.Ed.2d 743 (1991). We believe it applies equally where the formal judgment appears to be appealable even though not final. Thus, Porta Stor's premature notice of appeal should be treated as being filed on August 25, 2006, the date that the district court entered the amended judgment. We thus conclude that we have jurisdiction over this appeal.

Because Article III standing is jurisdictional, we must also consider Porta Stor's standing to bring this appeal before considering the merits. Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1367 (Fed.Cir.2003). We conclude that Porta Stor lacks...