 United States Court of Appeals for the Federal Circuit

                                       2006-1504


                                      PODS, INC.,

                                                       Plaintiff-Appellee,

                                            v.

                                  PORTA STOR, INC.,

                                                       Defendant-Appellant,
                                           and

                             CHRISTOPHER E. NEUGUTH,

                                                       Defendant.



       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.

Appealed from: United States District Court for the Middle District of Florida

Judge Mark A. Pizzo
 United States Court of Appeals for the Federal Circuit

                                      2006-1504


                                     PODS, INC.,

                                                      Plaintiff-Appellee,

                                           v.


                                 PORTA STOR, INC.,

                                                      Defendant-Appellant,

                                          and

                            CHRISTOPHER E. NEUGUTH,

                                                      Defendant.




                           ___________________________

                              DECIDED: April 27, 2007
                           ___________________________


Before LOURIE and DYK, Circuit Judges, and O’MALLEY, District 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


      *
              Honorable Kathleen M. O’Malley, District Judge, United States District
Court for the Northern District of Ohio, sitting by designation.
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.


2006-1504                                    2
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


       1
              Claim 1 states in full:

       1. An apparatus for lifting, handling and transporting a container having
       right and left sides and front and rear ends, the apparatus comprising:

       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, the carrier frame further
       including a plurality of generally vertical upright members, each upright
       member extending between opposite upper and lower ends;

       bearing means attached to each upright member lower end, for ground
       bearing and relative movement of the upright members with the ground;

       elevating means for elevating and lowering the carrier frame with respect
       to the ground;

       positioning means connected to the carrier frame for moving and
       positioning the carrier frame with respect to the container, and for moving
       and positioning the carrier frame and container together with respect to a
       transport vehicle having a platform when the container is to be loaded on
       to and off from said transport vehicle;

       supporting means connected to the carrier frame and to the container for
       supporting the container to the frame; and


2006-1504                                    3
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




       means for providing hydraulic power to actuators,

       wherein the carrier frame is capable of being elevated to be moved over
       the container and is capable of being lowered around the container for
       attaching the carrier frame to the container for subsequent lifting, handling
       and transporting of the container.

’062 patent col.6 l.61—col.7 l.35.
       2
               Claim 32 is the same as claim 1, except with the following additional
limitation (also found in dependent claim 5): “the front and rear transverse elements
being selectively adjustable in length to allow expansion of the carrier frame to clear a
transport vehicle and the container for positioning and contraction of the carrier frame
into close juxtaposition with the transport vehicle and the container.” ’062 patent col.
12, ll. 13-18.
       3
               Claim 29 states in full:

       29. A method of lifting, handling and transporting a container on to and off
       from a transport vehicle having a cargo carrying platform, the method
       comprising the steps of:

       positioning a carrier frame around the container on the transport vehicle
       platform;

       releasably attaching the carrier frame to the container;

       extending rear and front upright members downward into a ground-
       engaging position;

       elevating the carrier frame with hydraulic means and container above the
       transport vehicle platform;



2006-1504                                       4
     expanding the carrier frame with hydraulic means to clear the sides of the
     transport vehicle platform;

     driving the transport vehicle out from under the carrier frame and
     container;

     lowering the carrier frame and container until the container rests upon the
     ground;

     releasing the carrier frame attachment from the container;

     activating a steering and mobility means for providing driving power and
     directional control to wheels at the lower end of the rear upright members;

     directing the movement of the carrier frame away from the container;

     elevating the carrier frame to an elevation higher than that of the transport
     vehicle platform;

     moving and positioning the carrier frame over the transport vehicle
     platform;

     deactivating the steering and mobility means;

     retracting the carrier frame with hydraulic means to align the upright
     members in close proximity to the transport vehicle platform;

     lowering the carrier frame to rest upon the transport vehicle platform;

     retracting the upright members upward away from the ground-engaging
     position so that the transport vehicle is able to transport the carrier frame;

     extending the upright members downward into a ground-engaging
     position;

     elevating the carrier frame with hydraulic means above the transport
     vehicle platform;

     expanding the carrier frame with hydraulic means to clear the sides of the
     transport vehicle platform;

     activating a steering and mobility means for providing driving power and
     directional control to wheels at the lower end of the rear upright members;



2006-1504                                  5
                                           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.



      directing the movement of the carrier frame away from the transport
      vehicle platform;

      moving and positioning the carrier frame around the container;

      lowering the carrier frame adjacent to the ground;

      releasably attaching the carrier frame to the container;

      elevating the carrier frame and container to an elevation higher than that
      of the transport vehicle platform;

      moving and positioning the carrier frame and container over the transport
      vehicle platform;

      deactivating the steering and mobility means;

      retracting the carrier frame with hydraulic means to align the upright
      members in close proximity to the transport vehicle platform;

      lowering the carrier frame and container to rest upon the transport vehicle
      platform; and

      retracting the upright members upward away from the ground-engaging
      position so that the transport vehicle is able to transport the carrier frame
      and container.

’062 patent col.10 l.47—col.11 l.47.


2006-1504                                  6
       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 (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


2006-1504                                     7
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




2006-1504                                    8
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

(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

      4
               While the judgment as to the patent claims was still subject to
enhancement of damages (and enhancement was granted on August 25), that
possibility did not bar an immediate appeal pursuant to 28 U.S.C. § 1292(c)(2), which
gives this court jurisdiction over a judgment of patent infringement that “is final except
for an accounting.” See Majorette Toys (U.S.) Inc. v. Darda, Inc. U.S.A., 798 F.2d 1390,
1391 (Fed. Cir. 1986) (“[A]n appeal in a patent case can come to this Court under §
1292(c)(2) after validity and infringement are determined but prior to determining
damages.”). The pending motion for attorney’s fees also did not render the judgment
non-appealable. See Budinich v. Becton Dickinson & Co., 486 U.S. 196, 202-03 (1988).


2006-1504                                   9
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 (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, 320 F.3d at

1367. We conclude that Porta Stor lacks standing to appeal the jury’s finding of a

violation of the Florida Deceptive and Unfair Trade Practices Act. “[T]he law is well-

settled that a party lacks standing to appeal from a judgment by which it is not

aggrieved.” See Penda Corp. v. United States, 44 F.3d 967, 971 (Fed. Cir. 1994). The

district court’s judgment in this case did not award damages, an injunction, or attorney’s

fees based on the Florida statutory claim, nor did PODS seek a declaratory judgment on

this claim. Porta Stor has identified no other basis to conclude that it was aggrieved by

the district court’s judgment, and therefore it lacks standing to appeal the jury’s verdict

on the Florida Deceptive and Unfair Trade Practices Act. See id. at 972 (“Courts…have

not recognized standing to appeal where a party does not seek reversal of the judgment

but asks only for review of unfavorable findings.”).




2006-1504                                   10
                                             II

      Addressing the merits, Porta Stor asserts that the district court erred when it

granted JMOL on the issue of patent infringement, finding infringement as a matter of

law. We review the grant or denial of JMOL without deference. Go Med. Indus. Pty.,

Ltd. v. Inmed Corp., 471 F.3d 1264, 1272 (Fed. Cir. 2006). Claim construction is a

question of law which we review without deference. Cybor Corp. v. FAS Tech., Inc.,

138 F.3d 1448, 1455 (Fed. Cir. 1998) (en banc).

                                             A

      Porta Stor argues that the district court erred in not construing the phrases

“carrier frame” and “around” in claim 29 to have the same meaning as they undisputedly

have in claim 1, namely a four-sided rectangular shaped frame that completely

surrounds the container on all four sides.

      We begin our claim construction analysis with the words of the claims

themselves. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en

banc). We are not limited to considering just the language of claim 29 because “[o]ther

claims of the patent in question, both asserted and unasserted, [are] valuable sources

of enlightenment as to the meaning of a claim term.” Id. at 1314. In this case, the term

“carrier frame” in claim 29 also appears in claim 1 where it is specifically described as

including “right and left longitudinal elements” adjacent to “front and rear transverse

elements.” ’062 patent col.6 ll.64-65, col.7 ll.1-2. The parties agree that the structure

described as a “carrier frame” in claim 1 is “a four-sided or rectangular-shaped carrier

frame” that surrounds the container on all sides. Claim Construction Order, slip op. at 2.

We apply a “presumption that the same terms appearing in different portions of the


2006-1504                                    11
claims should be given the same meaning unless it is clear from the specification and

prosecution history that the terms have different meanings at different portions of the

claims.” Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001);

see also, e.g., Phillips, 415 F.3d at 1314; Rexnord Corp. v. Laitram Corp., 274 F.3d

1336, 1342 (Fed. Cir. 2001). PODS has pointed to no evidence in the specification or

the prosecution history that the term “carrier frame” in claim 29 has any meaning other

than the uncontested meaning in claim 1.         To the contrary, the only embodiments

disclosed in the specification are four-sided. Also, as discussed in the next section,

during prosecution the Dousset prior art patent was distinguished on the ground that the

’062 patent claimed a rectangular-shaped frame, thus suggesting that all claims were

limited to a four-sided device. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d

1570, 1579 (Fed. Cir. 1995) (“[A]rguments made during prosecution regarding the

meaning of a claim term are relevant to the interpretation of that term in every claim of

the patent absent a clear indication to the contrary.”). We therefore conclude that the

term “carrier frame” in claim 29, as in claim 1, requires “a four-sided or rectangular

shape.” See Claim Construction Order, slip op. at 2.

       As PODS itself notes, in a claim that “recites a four-sided ‘carrier frame’…placing

that four-sided carrier frame ‘around the container’ would result in ‘all four sides’ of the

carrier frame being ‘around’ the container.” Appellee’s Br. at 24-25. Thus, since we

construe the term “carrier frame” in claim 29 to require a four-sided structure, we

necessarily construe the term “around” to require the frame to be on all sides of the

container. This construction is confirmed by the ordinary meaning of “around,” which in

this context is defined as “along the outer edge or boundary of…on all sides of…so as


2006-1504                                   12
to encircle or enclose…about.”       Webster’s Third New International Dictionary 120

(2002) (emphases added).

       The second step of the infringement analysis is to compare the accused device

to the patented invention (as construed) to determine infringement. PODS “conced[ed]

[that] the accused device, which embodies a u-shaped or open-ended carrier frame,

does not literally read on” claim 1 because “claim 1 describes an apparatus that uses a

four-sided or rectangular-shaped carrier frame.” Claim Construction Order, slip op. at 2-

3. Since claim 29 also describes a four-sided or rectangular-shaped carrier frame, there

can be no dispute that Porta Stor’s device does not literally infringe claim 29. Thus, the

district court’s finding of literal infringement of claim 29 was erroneous.

                                              B

       Even if “a product or process…does not literally infringe upon the express terms

of a patent claim[, it] may nonetheless be found to infringe if there is ‘equivalence’

between the elements of the accused product or process and the claimed elements of

the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,

21 (1997). The district court found infringement by equivalents of claims 1 and 32 of the

’062 patent. However, “prosecution history estoppel limits the range of equivalents

available to a patentee by preventing recapture of subject matter surrendered during

prosecution of the patent.” Southwall Techs., 54 F.3d at 1579.            “[W]here a patent

applicant sets forth multiple bases to distinguish between its invention and the cited

prior art,” “the separate arguments [can] create separate estoppels” as long as the prior

art was not distinguished based on the combination of these various grounds. Id. at

1581-83. “To invoke argument-based estoppel…the prosecution history must evince a


2006-1504                                    13
clear and unmistakable surrender of subject matter.” Conoco, Inc. v. Energy & Envtl.

Int’l, L.C., 460 F.3d 1349, 1364 (Fed. Cir. 2006) (internal quotation marks omitted).

      We conclude that arguments made by PODS during prosecution bar it from

asserting that Porta Stor’s device infringed by equivalents. During prosecution, the

examiner rejected claim 1 of the ’062 patent as obvious in light of the Dousset prior art

reference, U.S. Patent No. 3,541,598 (“’598 patent”), and another reference. [JA 45] In

response, PODS argued that “Applicants’ invention is decidedly different from the

teachings of the Dousset patent” for three reasons. First, Dousset required specially

designed containers, whereas PODS’s device was operable with any container. [JA

64-65] Second, “[a]s the Examiner acknowledges, the Dousset reference clearly lacks

the teachings of the singular rectangular-shaped frame.” J.A. at 65 (emphasis added).

Third, PODS’s invention “teaches uniformity in the handling, lifting and lowering of a

container” whereas “the Dousset reference clearly lacks combined elevating and

positioning means as thought by the present invention which allows the carrier frame to

be elevated and positioned as a rectangular-shaped frame with respect to the container,

the vehicle and the ground.” J.A. at 65 (emphasis added). The second basis PODS

offered for distinguishing Dousset, along with the reference to a rectangular shape in

the third basis, clearly and unmistakably shows that PODS limited its claims to a

rectangular-based frame and surrendered any claim to a frame that was not rectangular

or four-sided.    Since PODS offered each argument as a separate basis for

distinguishing Dousset, its rectangular-frame argument created a separate estoppel.

See Southwall Techs., 54 F.3d at 1582-83.




2006-1504                                   14
       PODS argues that it was unnecessary to distinguish Dousset on the rectangular-

shape ground since the examiner had acknowledged that Dousset “comprises two

separate end-fitted units rather than a single rectangular-shaped frame” and relied on

another reference to satisfy the rectangular frame limitation of claim 1. J.A. at 45.

However, “[c]lear assertions made during prosecution in support of patentability,

whether or not actually required to secure allowance of the claim, may also create an

estoppel,” Southwall Techs., 54 F.3d at 1583, because “[t]he relevant inquiry is whether

a competitor would reasonably believe that the applicant had surrendered the relevant

subject matter,” Conoco, 460 F.3d at 1364 (quoting Cybor, 138 F.3d at 1457). In this

case, PODS, in support of its assertion of patentability over Dousset, clearly stated that

its claimed frame was rectangular in shape. A competitor would reasonably believe that

PODS had surrendered any claim to a frame that was not rectangular or four-sided in

shape, such as Porta Stor’s three-sided, u-shaped device.

       Thus, PODS’s arguments during prosecution bar it from asserting that Porta

Stor’s device infringed claim 1 of the ’062 patent under the doctrine of equivalents.

Moreover, although the arguments distinguishing Dousset do not directly apply to claim

32, which was added after the obviousness rejection, “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.” Southwall Techs., 54 F.3d at 1584. Therefore, the district court erred in

finding claims 1 and 32 infringed under the doctrine of equivalents. 5



       5
             Although PODS has only asserted literal infringement of claim 29,
infringement by equivalents of this claim would be barred by prosecution history
estoppel for the same reason. Also, PODS does not argue that any of the Festo


2006-1504                                   15
       We have no need to consider Porta Stor’s arguments related to invalidity, since

our finding of non-infringement moots any affirmative defense of invalidity, and Porta

Stor has not argued its invalidity counterclaim on appeal.

                                             III

       Porta Stor also argues that the district court erred in granting JMOL on copyright

infringement. [BB 38] “This court applies copyright law as interpreted by the regional

circuits,” in this case the Eleventh Circuit. Amini Innovation Corp. v. Anthony Cal., Inc.,

439   F.3d   1365,   1368    (Fed.   Cir.   2006).    In     the   Eleventh   Circuit,   “[t]he

plaintiff…establishes a prima facie case of copyright infringement by proving by a

preponderance of the evidence (1) that it owns a valid copyright in the work allegedly

infringed, and (2) that the defendant copied that work.” M.G.B. Homes, Inc. v. Ameron

Homes, Inc., 903 F.2d 1486, 1490 n.7 (11th Cir. 1990) (emphasis in original) (quoting

Donald Frederick Evans & Assoc. v. Cont’l Homes, Inc., 785 F.2d 897, 903 (11th Cir.

1986)). The key issue here is ownership.

       Ownership of a copyright “vests initially in the author or authors of the work,”

which is “the party who actually creates the work, that is, the person who translates an

idea into a fixed, tangible expression entitled to copyright protection.”         17 U.S.C.

§ 201(a) (2006); see also Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737

(1989) (“CCNV”). However, the statute “carves out an important exception…for ‘works

made for hire.’ If the work is for hire, ‘the employer or other person for whom the work

was prepared is considered the author’ and owns the copyright.” CCNV, 490 U.S. at



exceptions to surrender by amendment should apply in this context. Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740-41 (2002).


2006-1504                                    16
737 (quoting 17 U.S.C. § 201(b)). Two types of works can qualify as a “work made for

hire”:

         (1) a work prepared by an employee within the scope of his or her
         employment; or
         (2) a work specially ordered or commissioned for use as a contribution to
         a collective work, as a part of a motion picture or other audiovisual work,
         as a translation, as a supplementary work, as a compilation, as an
         instructional text, as a test, as answer material for a test, or as an atlas, if
         the parties expressly agree in a written instrument signed by them that the
         work shall be considered a work made for hire.

17 U.S.C. § 101 (2006). In CCNV the Supreme Court explained that “[t]he structure of

§ 101 indicates that a work for hire can arise through one of two mutually exclusive

means, one for employees [the first prong] and one for independent contractors [the

second prong],” with the general common law of agency supplying the distinction

between employees and independent contractors. 490 U.S. at 742-43. While all works

by employees constitute “works made for hire,” “only enumerated categories” of works

by independent contractors “may be accorded work for hire status” and, even within

these categories, only if there is a written instrument designating the work as a work for

hire. Id. at 748.

         On appeal, PODS does not argue that it owned the copyright under the second

prong of § 101, that is, that it succeeded to the copyright interest of its outside counsel.

There is as well no evidence that PODS’s employees were the sole authors of the

agreement. Instead, PODS asserted that “the evidence at trial showed that PODS’

employees created the rental agreement at issue with the assistance of an outside

lawyer.” Appellee’s Br. at 48. As best we can understand PODS’s argument on appeal,

it is asserting co-ownership of a joint work. Under 17 U.S.C. § 201(a), “[t]he authors of



2006-1504                                      17
a joint work are coowners of copyright in the work.” A “joint work” is “a work prepared

by two or more authors with the intention that their contributions be merged into

inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101.

       The only evidence at trial on the issue of joint ownership was the testimony of

PODS president and CEO Peter Warhurst. On direct examination, Warhurst testified

that PODS “went back to the [outside] attorney that helped draft the original mini-

storage contract and he…modified it for the uniqueness of…the PODS business.” J.A.

at 2109 (emphases added). Likewise, when asked whether a document was “the rental

agreement that the lawyer developed with your input,” Warhurst said “[t]hat’s correct.”

Id. (emphasis added). Similarly, he testified on cross-examination as follows:

       Q: Who wrote the document for you?
       A: The, uh—the lease agreement?
       Q: Yes.
       A: I believe that it was the outside counsel that we had hired.
       ….
       Q: And the attorney who wrote the original document, Mr. Silver—
       Silverman?
       A: I believe that’s who we used at that time, yes.
       Q: He was an attorney who had had [sic] an office, he wasn’t an employee
       of PODS, was he?
       A: Correct.

J.A. at 2130-31 (emphasis added).        However, on redirect examination, Warhurst

testified as follows:

       Q: You are the president of Pods, Inc.?
       A: I am.
       Q: And…on your executive group are vice-presidents, am I correct?
       A: Yes, sir.
       Q: Would it be fair to say that all of the executive group had some
       participation in the creation of that unique rental agreement in conjunction
       with the lawyer?
       A: Uh, my staff and the lawyers worked together to create the document,
       yes, sir.


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J.A. at 2135 (emphasis added).

        Warhurst’s testimony is inconsistent as to whether the outside counsel was the

sole author or whether the outside counsel and PODS employees jointly created the

work.    It is also unclear as to the extent of the employee contributions.          Mere

participation in, contributions to, and review of the work of an independent contractor by

PODS employees would not necessarily create a joint work. See M.G.B. Homes, 903

F.2d at 1492-93 (finding no co-ownership where home builder reviewed architect’s

drawings, made suggestions and corrections, and had final approval authority). The

evidence is plainly insufficient to warrant JMOL in favor of PODS on the question of joint

ownership, and the district court erred in granting JMOL.

        The question then becomes whether to direct the award of JMOL in favor of

Porta Stor or to remand for a new trial. Despite the somewhat skimpy record as to

employee contribution, we cannot say that “a reasonable jury would not have a legally

sufficient evidentiary basis to find for [PODS] on [the copyright ownership] issue.” Fed.

R. Civ. P. 50(a)(1). A jury could have believed that the contributions of the PODS

employees were sufficiently significant to find the employees joint authors of the work.

        Thus, we conclude that the district court erred in granting JMOL on copyright

infringement and that the jury should have been permitted to determine whether PODS

had carried its burden to establish ownership of the copyright. We therefore remand the




2006-1504                                  19
case to the district court for the limited purpose of holding a new trial on the copyright

infringement issue solely on the theory of joint ownership. 6

                                      CONCLUSION

       Under the proper claim construction (requiring a four-sided, rectangular carrier

frame), there is no literal infringement of claim 29 of the ’062 patent. Since infringement

of claims 1 and 32 under the doctrine of equivalents is barred by prosecution history

estoppel, we reverse the district court’s judgment of infringement and direct it to enter a

judgment of non-infringement in favor of Porta Stor. We also reverse the district court’s

JMOL on copyright infringement and remand to the district court for a new trial limited to

the copyright infringement issue. We see no error as to the jury’s $1 verdict on the

Lanham Act claim or its $15,000 verdict on the Florida common law claim and affirm

those parts of the judgment.

       AFFIRMED-IN-PART, REVERSED-IN-PART, and REMANDED-IN-PART

                                          COSTS

       No costs.


       6
               On appeal, Porta Stor also asserts that JMOL on copyright infringement
was erroneous because legal documents are not copyrightable and the copyrighted
work was distributed to the public without a copyright notice. The mere fact that the
document has a utilitarian purpose does not render it non-copyrightable. See Arthur
Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1533 (11th Cir. 1994)
(finding architectural drawings copyrightable). As a general matter, “[t]here appear to
be no valid grounds why legal forms such as contracts, insurance policies, pleadings
and other legal documents should not be protected under the law of copyright.” Melville
B. Nimmer & David Nimmer, Nimmer on Copyright § 2.18[E] (2006). And under the
current statutory provision (in effect since 1989), notice of the copyright on the
document is permissive, not mandatory. See 17 U.S.C. § 401(a); see also Norma
Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 48 (5th Cir. 1995) (“[S]ince the Berne
Convention Implementation Act of 1988…notice is no longer a prerequisite to copyright
protection.” (internal citation omitted)).


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