United States Court of Appeals for the Federal Circuit
2008-1085
DSW, INC.
and DSW SHOE WAREHOUSE, INC.,
Plaintiffs-Appellants,
v.
SHOE PAVILION, INC.,
Defendant-Appellee.
Theodore R. Remaklus, Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio,
argued for plaintiffs-appellants.
JoAnna M. Esty, Venable LLP, of Los Angeles, California, argued for defendant-
appellee.
Appealed from: United States District Court for the Central District of California
Judge Florence-Marie Cooper
United States Court of Appeals for the Federal Circuit
2008-1085
DSW, INC.
and DSW SHOE WAREHOUSE, INC.,
Plaintiffs-Appellants,
v.
SHOE PAVILION, INC.,
Defendant-Appellee.
Appeal from the United States District Court for the Central District of California in case
no. 2:06-CV-06854, Judge Florence-Marie Cooper.
__________________________
DECIDED: August 19, 2008
__________________________
Before MAYER, SCHALL and LINN, Circuit Judges.
MAYER, Circuit Judge.
DSW, Inc. and DSW Shoe Warehouse, Inc. (together “DSW”), appeal the
judgment of the United States District Court for the Central District of California, granting
summary judgment of non-infringement of U.S. Patent No. 6,948,622 (“’622 patent”) in
favor of Shoe Pavilion, Inc. (“Shoe Pavilion”), and summary judgment of no liability for
damages for past infringement of U.S. Patent No. D 495,172 (“’172 patent”) and the
’622 patent, also in favor of Shoe Pavilion. DSW Inc. v. Shoe Pavilion, Inc., No. 2:06-
CV-06854-FMC-SHx (C.D. Cal. Sept. 25, 2007) (“Summary Judgment Order”).
Because the trial court erred by (1) construing claims 4-6 of the ’622 patent to include
the track and roller configuration limitation recited in claims 1-3, and (2) misapplying
Wine Railway Appliance Co. v. Enterprise Railway Equipment, 297 U.S. 387 (1936),
with respect to damages, we vacate and remand.
Background
DSW owns the ’622 patent, which teaches a system and method for storing and
displaying a large stock of footwear for customer self-service. DSW also owns the ’172
patent, which claims an ornamental design for a combined product display and stacked
product container separator. On May 19, 2006, DSW notified Shoe Pavilion that the
then-current shoe display design (“First Design”) in five of its stores infringed DSW’s
’622 and ’172 patents. Shoe Pavilion responded to the notice, and agreed to modify its
First Design to avoid infringement. Within seven months of DSW’s notification of
infringement, Shoe Pavilion removed all First Design displays from its stores and
replaced them with a modified design (“New Design”).
On October 27, 2006, DSW filed suit against Shoe Pavilion for patent
infringement, alleging that Shoe Pavilion’s manufacture and use of its New Design
footwear displays in seven of its California stores also infringed claims 4-6 of the ’622
patent, and that Shoe Pavilion owed damages for infringement of the ’172 and ’622
patents by the First Design. Shoe Pavilion moved for summary judgment that its New
Design footwear displays did not infringe, or, in the alternative, that the ’622 patent is
invalid, and that it owed no damages for infringement by the First Design.
With respect to infringement by the New Design, the parties’ dispute turned on
whether the language in claims 4-6 1 of the ’622 patent encompasses only methods of
1
Claim 4 provides:
2008-1085 2
displaying and storing footwear that contain track and roller mechanisms connecting
display modules to a support base, as described in claims 1-3 2 (the “Track and Roller
A method of displaying and storing footwear, comprising:
stacking containers of footwear of a first style in a [sic] least one vertical
stack, one on top of the other in direct physical contact;
stacking containers of footwear of a second style in at least one vertical
stack, one on top of the other in direct physical contact, said stack
of containers of footwear of said second style being located
adjacent the stack of containers of footwear of the first style;
selectively positioning a generally vertically disposed, horizontally movably
positionable stack divider between (i) the at least one stack of
containers of the first style and (ii) the at least one stack of
containers of the second style of footwear;
displaying a sample of footwear of the first style above the at least one
stack of containers of the first style of footwear; and
displaying a sample of footwear of the second style above the at least one
stack of containers of the second style of footwear.
’622 patent col.8 ll.33-53 (emphasis added to highlight the disputed claim term).
Claim 5 provides:
The method of claim 4, further comprising:
repositioning the divider to adjust the location of a boundary between the stacks
of containers of the first and second styles of footwear.
’622 patent col.8 ll.54-57.
Claim 6 provides:
The method of claim 4, wherein selectively positioning the horizontally movably
positionable divider between the stacks of said first and second styles of
footwear comprises variably positionably supporting the divider from a
horizontally disposed support arranged generally perpendicular to the divider.
’622 patent col.8 ll.58-63.
2
Claim 1 provides:
A footwear display and stack divider module, adapted to be selectively variably
2008-1085 3
supportably positioned on a module support member which extends in a generally
horizontal direction, comprising:
a footwear display configured to support at least one style of footwear and having a
rear edge and a lateral edge;
a divider disposed adjacent said lateral edge of said display and extending
downwardly from said display, said divider defining a vertical plane; and
at least one module connection element disposed adjacent said rear edge of said
display, said module connection element configured to selectively engage the
module support member at different horizontal positions therealong;
said vertical plane being generally perpendicular to the horizontal direction of the
module support member when the module is supported thereby;
wherein the module support member comprises a track and said module connection
element includes at least one roller configured to engage the track to thereby
slidably suspend the module therefrom.
’622 patent col.7 ll.24-45 (emphasis added).
Claim 2 provides in relevant part:
A system for displaying and storing footwear, the system comprising:
at least one horizontally extending module support member; and
a plurality of display modules coupled to said module support member . . . .
wherein said module support member comprises a horizontally extending elongated
track and each said module connection element includes at least one roller
configured to engage said track to thereby slidably suspend said module
therefrom with said divider disposed in a generally vertical direction
perpendicular to the elongated module support track.
’622 patent col.7 ll.46-67-col.8 ll.1-3 (emphasis added).
Claim 3 provides in relevant part:
A cabinet for displaying and storing footwear, the cabinet comprising:
a base;
at least one vertical support member extending upwardly from said base;
at least one module support member coupled to said vertical support and spaced
from said base; and
a plurality of display modules coupled to said module support member . . . .
wherein said module support member comprises a horizontally extending elongated
track and each said module connection element includes at least one roller
configured to engage said track to slidably suspend a respective module
therefrom, with said divider disposed in a generally vertical direction
perpendicular to said track.
2008-1085 4
Limitation”). DSW argued that the trial court erred by impermissibly construing claims 4-
6 to contain the Track and Roller Limitation, notwithstanding the conspicuous absence
of claim language evincing such a limitation. Shoe Pavilion argued that DSW
disclaimed from the scope of the ’622 patent any apparatus, method or system that
does not include a track and roller mechanism in the display module. First, the original
application’s independent claims, which did not include the Track and Roller Limitation,
were rejected as reading on the prior art or as obvious under 35 U.S.C. § 103(a), and
were cancelled. Second, the application’s dependent claims, already containing, inter
alia, the Track and Roller Limitation, were objected to for relying on the rejected
independent claims, and were only approved after being amended to read as
independent claims. These amended claims issued as independent claims 1-3 of the
’622 patent. DSW simultaneously added new application claims 15-21, which issued as
claims 4-10 of the ’622 patent.
Relying on the specification and the prosecution history, the trial court agreed
with Shoe Pavilion that method claims 4-6 were not independent and separately
patentable from claims 1-3. Specifically, it found that (1) the examiner’s reasons for
allowance indicated that the Track and Roller Limitation was the seminal feature
distinguishing the ’622 patent over the prior art, (2) claims 4-6 would be invalid as
indefinite without the limitation, and (3) the specification describes the invention as a
modular footwear display and storage system, and claims 1-3 recite a footwear display
and stack divider module connected by a module support member containing the Track
’622 patent col.8 ll.4-31 (emphasis added).
2008-1085 5
and Roller Limitation. The court also noted that the preferred embodiment explicitly
includes the Track and Roller Limitation. Accordingly, the court construed claims 4-6 to
include a footwear display module with vertically disposed horizontally moveable
dividers coextensive with the Track and Roller Limitation described in claims 1-3, and
concluded that because Shoe Pavilion’s New Design lacked the rolling connection
element, it did not infringe the ’622 patent. It granted summary judgment of non-
infringement in favor of Shoe Pavilion.
With respect to damages, the district court found that DSW was not entitled to
any damages as a matter of law, because immediately upon receipt of DSW’s notice of
infringement of the ’172 and ’622 patents by the First Design, Shoe Pavilion took
reasonable steps and timely removed all of the infringing shoe displays. Citing Wine
Railway, the trial court granted summary judgment to Shoe Pavilion and stated that no
damages for infringement are recoverable by a plaintiff unless the infringing activity
continues after notice is provided to the infringer.
DSW appeals the trial court’s Summary Judgment Order with respect to Shoe
Pavilion’s infringement of the ’622 patent by the New Design, and liability for damages
for infringement by the First Design. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
Discussion
We review the trial court’s grant of summary judgment of non-infringement de
novo. Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1319 (Fed. Cir. 2002).
Summary judgment is appropriate “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any
2008-1085 6
material fact and that the movant is entitled to a judgment as a matter of law.” Fed. R.
Civ. P. 56(c). We address each of DSW’s challenges in turn.
A. Non-infringement
Infringement occurs when a properly construed claim of an issued patent covers
an accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370, 374 (1996). Claim construction is
reviewed de novo on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454
(Fed. Cir. 1998) (en banc).
The district court erroneously imported the Track and Roller Limitation directly
recited in claims 1-3 into the generally phrased “vertically disposed, horizontally
movably positionable stack divider” language of claims 4-6. First, absent contravening
evidence from the specification or prosecution history, plain and unambiguous claim
language controls the construction analysis. Northern Telecom Ltd. v. Samsung Elecs.
Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“The plain and ordinary meaning of claim
language controls, unless that meaning renders the claim unclear or is overcome by a
special definition that appears in the intrinsic record with reasonable clarity and
precision.”) (citation omitted); see also Intervet Am., Inc. v. Kee-Vet Labs, Inc., 887 F.2d
1050, 1053 (Fed. Cir. 1989) (“[T]his court has consistently adhered to the proposition
that courts cannot alter what the patentee has chosen to claim as his invention, that
limitations appearing in the specification will not be read into claims, and that
interpreting what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” (quoting E.I. Du
Pont De Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
2008-1085 7
1988))). On its face, the “horizontally movably positionable stack divider” disputed
language in claims 4-6 means that the vertically disposed stack dividers must be
capable of being moved into different horizontal positions in the footwear display.
Although broad, this claim language is not ambiguous. We therefore disagree with the
trial court’s decision to intermingle its validity and construction analyses and as a result
read into claims 4-6 the Track and Roller Limitation of claims 1-3. See Phillips v. AWH
Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (“[W]e have limited the maxim [of
construing a claim to preserve its validity] to cases in which ‘the court concludes, after
applying all the available tools of claim construction, that the claim is still ambiguous.’”
(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004))). 3
Second, as the trial court acknowledged, nowhere does the prosecution history
show an express disclaimer by DSW over a method of displaying footwear not involving
the Track and Roller Limitation. To the contrary, the examiner allowed claims 4-6
without objection, concluding that the prior art does not teach or suggest a method of
displaying at least two footwear styles using the particular stacking of containers and
stack dividers recited in independent claim 15 (issued as claim 4). In contrast, when the
examiner allowed amended claims 2, 6, and 9 (issued as claims 1-3), she explained
that the prior art does not teach or suggest a footwear display and stack divider
containing the Track and Roller Limitation. Neither the claim language nor the language
of the examiner’s statement of reasons for allowance indicate that the display method
recited in claims 4-6 is constrained by the Track and Roller Limitation. See Markman,
3
We do not offer a view on whether the proper construction of the claim
language renders the method claims at issue obvious.
2008-1085 8
52 F.3d at 980 (“Although the prosecution history can and should be used to understand
the language used in the claims, it too cannot ‘enlarge, diminish, or vary’ the limitations
in the claims.”) (citations omitted). The trial court incorrectly inferred that the word “also”
from the examiner’s statement that “[t]he prior art also does not teach . . . a method of
displaying 1st and 2nd footwear styles” implied that the latter-discussed method claims
depended on the previously-discussed apparatus claims. Indeed, the examiner’s
specific reference to claim 15 (issued as claim 4) as “independent” directly refutes such
a presumption.
Third, although the preferred embodiment includes a rolling track mechanism, the
alternate embodiments include hooks, lips, and peg holes to permit the stack dividers to
have horizontally movable positions. Moreover, when claim language is broader than
the preferred embodiment, it is well-settled that claims are not to be confined to that
embodiment. E.g., Phillips, 415 F.3d at 1323 (“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments.”).
In sum, the trial court did not construe or clarify the meaning of actual words in
claims 4-6, but improperly read into them a new limitation not required by the claim
language, specification, or prosecution history. Because claims 4-6 are unambiguous,
contain limitations other than the disputed claim term, and are directed to a method for
using an apparatus, not to its structure or assembly, it was improper for the trial court to
import limitations from the apparatus and system claims into the method claims.
Shoe Pavilion concedes that its New Design includes storage and display of
vertically stacked boxes of footwear, separated by vertically disposed dividers that may
2008-1085 9
be selectively positioned through use of a clip on a track. On remand, the trial court
should compare the properly construed ’622 patent claims to the New Design to
determine whether it infringes.
B. Damages
The district court misapplied the standard expressed by the Supreme Court in
Wine Railway, which held that under the predecessor statute to the notice provision of
35 U.S.C. § 287, a patentee who failed to mark his patented article with the appropriate
patent number could only recover damages for infringement occurring after actual
notice was provided the infringer. Wine Ry., 297 U.S. at 393-94. This court has applied
Wine Railway in the current context of Section 287. Tex. Digital Sys., Inc. v. Telegenix,
Inc., 308 F.3d 1193, 1219 (Fed. Cir. 2002). The purpose of the notice requirement is to
provide “protection against deception by unmarked patented articles.” Wine Ry., 297
U.S. at 398. The idea is to prevent innocent infringement. Motorola, Inc. v. United
States, 729 F.2d 765, 772 (Fed. Cir. 1984).
Wine Railway provides no support for the trial court’s summary judgment on
damages. The issue here is whether Shoe Pavilion is liable for damages to DSW for
infringement occurring subsequent to receipt of actual notice, and Wine Railway flatly
states that a patentee may indeed recover damages for infringement that continues
after actual notice is provided. Wine Ry., 297 U.S. at 393-94. Without a doubt, the law
offers an infringer no exception to liability for the time it takes to terminate infringing
activities, no matter how expeditious and reasonable its efforts. See In re Seagate
Tech., Inc., 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc) (“Because patent
infringement is a strict liability offense, the nature of the offense is only relevant in
2008-1085 10
determining whether enhanced damages are warranted.”). The trial court therefore
erred in concluding that Shoe Pavilion’s reasonable steps and good faith efforts to bring
its infringing activity to a timely end equated to an immediate cessation. Thus, if the
patents at issue are valid, damages are owed on the design for the 6-7 months of
continued infringement while Shoe Pavilion phased out use of the displays in its stores.
Conclusion
Accordingly, the judgment of the United States District Court for the Central
District of California is vacated, and the case is remanded for further proceedings in
accordance with this opinion.
Costs
No costs.
VACATE AND REMAND
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