Elmer v. ICC Fabricating, Inc., 94-1503

• Decision Date: 10 October 1995
• Docket Number: No. 94-1503,94-1503
• Citation: 36 USPQ2d 1417,67 F.3d 1571
• Parties: , 36 U.S.P.Q.2d 1417 William A. ELMER and HTH, Inc., Plaintiffs-Appellees, v. ICC FABRICATING, INC., Defendant-Appellant, and Take-Out Express, Inc., Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1571

67 F.3d 1571

64 USLW 2272, 36 U.S.P.Q.2d 1417

William A. ELMER and HTH, Inc., Plaintiffs-Appellees, v. ICC FABRICATING, INC., Defendant-Appellant and Take-Out Express, Inc., Defendant.

No. 94-1503.

United States Court of Appeals Federal Circuit.

Oct. 10, 1995.

Herbert L. Allen, Allen, Dyer, Doppelt, Franjola & Milbrath, P.A., Orlando, Florida, argued for plaintiffs-appellees.

Ernie L. Brooks, Brooks & Kushman P.C., Southfield, Michigan, argued for defendant-appellant. With him on the brief was Frank A. Angileri.

Before NIES, LOURIE, and CLEVENGER, Circuit Judges.

LOURIE, Circuit Judge.

ICC Fabricating, Inc. ("ICC") appeals from the judgment of the United States District Court for the Middle District of Florida entered pursuant to a jury verdict holding ICC liable to William A. Elmer and HTH, Inc. (collectively "HTH") for utility patent infringement, design patent infringement, trade dress infringement, and state common law unfair competition. The court denied ICC's post-trial motion for judgment as a matter of law ("JMOL") or, alternatively, for a new trial. Elmer v. ICC Fabricating, Inc., No. 92-379-CIV-ORL-18, 1994 WL 523888 (M.D.Fla. Aug. 1, 1994). On appeal, ICC challenges the court's order denying JMOL on the issues of utility patent validity, design patent infringement, trade dress infringement, and unfair competition. ICC does not contest the verdict of utility patent infringement. Because the jury's verdict of utility patent validity was supported by substantial evidence, but its verdicts of design patent infringement, trade dress infringement, and unfair competition were not, we affirm-in-part and reverse-in-part.

BACKGROUND

HTH is the exclusive licensee of U.S. Patents 5,084,994 and Des. 290,620, directed to vehicle-mounted advertising signs. HTH sued ICC alleging utility and design patent infringement, trade dress infringement under section 43(a) of the Lanham Act, and unfair competition under Florida common law. ICC counterclaimed for a declaration that the asserted patents are invalid. After a ten-day jury trial, the jury returned a verdict for HTH finding that claims 1, 3, 5, 6, 8-12, 16, and 17 of the '994 patent are not invalid and were infringed, the '620 design patent is not invalid and was infringed, the trade dress of HTH's "Window Wing" sign is protectable and was infringed by ICC, and that ICC violated Florida unfair competition law. ¹ Subsequently, the jury awarded HTH $240,130.00 as damages for ICC's infringement of the '994 patent, $38,900.00 as damages for ICC's infringement of the '620 patent, and $942,361.00 in damages for ICC's trade dress infringement and unfair competition. In addition, the jury found that ICC's unfair competition had been willful, wanton, or reckless and thus awarded HTH $1 million in punitive damages. Based upon the jury's findings, the court entered a permanent injunction. The court denied ICC's alternative motion for JMOL or a new trial on the ground that credible evidence introduced during trial supports the verdicts. This appeal followed.

DISCUSSION

On appeal, ICC contends that the district court erred in denying JMOL on the issues of utility patent validity, design patent infringement, trade dress infringement, and unfair competition. Judgment as a matter of law is appropriate when "a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue...." Fed.R.Civ.P. 50(a)(1). We review de novo a district court's decision on a JMOL motion by reapplying the JMOL standard. Markman v. Westview Instruments, Inc., 52 F.3d 967, 975, 34 USPQ2d 1321, 1326 (Fed.Cir.1995) (in banc). In so doing, we will not disturb a jury's factual findings unless the party moving for JMOL shows that the findings were not supported by substantial evidence. Id. We review the legal standards that the jury applied in reaching its verdict to determine whether they were correct. Id.

A. Utility Patent Validity

ICC first argues that the court erred in denying its motion for JMOL that the '994 patent is invalid under 35 U.S.C. Sec. 102(b). ICC contends that it proved by clear and convincing evidence that, more than one year before the filing date of the application that matured into the '994 patent, a sign anticipating the asserted claims was built by an individual named Kevin Billow and used publicly by his employees at a Domino's Pizza store in Farmington, Michigan. HTH responds, inter alia, that the jury reasonably could have concluded that ICC failed to establish that the prior art sign met each limitation of the asserted claims. We agree with HTH that substantial evidence supports the jury's determination that ICC did not prove the '994 patent to be invalid.

A patent is invalid if the subject matter of the claims was "in public use ... more than one year prior to the date of the application for patent in the United States." 35 U.S.C. Sec. 102(b) (1988). Section 102(b) requires that in order for prior art to invalidate a claim, it must be anticipating, i.e., contain all of the limitations of the relevant claim. However, a non-anticipating public use more than one year before the claim's effective filing date may render the claim invalid for obviousness under 35 U.S.C. Sec. 103. Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 222 USPQ 571 (Fed.Cir.1984).

In analyzing validity, "[t]he first step involves the proper interpretation of the claims. The second step involves determining whether the limitations of the claims as properly interpreted are met by the prior art." Beachcombers, Int'l, Inc. v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160, 31 USPQ2d 1653, 1658 (Fed.Cir.1994). Claim interpretation is a question of law. Markman, 52 F.3d at 979, 34 USPQ2d at 1329. Whether the alleged prior art met the claim limitations is a factual question.

Claim 1 is illustrative of the claims at issue:

1. Apparatus for displaying an advertisement above the roof of a vehicle, comprising:

a vehicle having a wide window which extends generally vertically and approximately parallel to the direction of vehicle travel;

an aerodynamic member having a leading edge, a trailing edge and side surfaces between the edges, the member having a longitudinal dimension between the edges and lateral dimensions between the side surfaces, the longitudinal dimension being substantially greater than the lateral dimensions;

means including an upstanding brace means for releasably attaching the aerodynamic member to the vehicle window with the side surfaces extending generally vertically, the attaching means including a window mount having a portion dimensioned to pass across the top and engage the vehicle window;

the upstanding brace means rigidly joined with the window mount at spaced points and joined with the aerodynamic member at spaced points so as to prevent rotation of the aerodynamic member and maintain the longitudinal dimension extending in a direction generally parallel with the direction of vehicle travel; and wherein

at least one of the side surfaces defines an area to which an advertising medium can be affixed [emphasis added].

At trial, ICC urged a narrow claim interpretation. ICC took the position that the "upstanding Consistent with this claim interpretation, ICC's own expert, Herb Furman, testified no fewer than three times that the prior art Billow sign lacked an "upstanding brace means." Furman testified that "in the Kevin Billow sign, Exhibit 24, I don't find any upstanding brace means." He later stated, "Again, the upstanding brace means ... I don't find it in the Billow sign, Exhibit 24...." He then repeated that "[i]n the Kevin Billow sign, Exhibit 24, ... I don't find any upstanding brace...." Furman's testimony was based on the fact that the braces in the Billow sign did not extend into and through the sign body. The jury reasonably could have concluded from Furman's testimony, which constitutes substantial evidence, that the Billow sign did not meet the "upstanding brace means" limitation and thus did not anticipate the claims. See Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.Cir.1986) ("[A]bsence from the [prior art] reference of any claimed element negates anticipation."), cert. denied, 479 U.S. 1034, 107 S.Ct. 882, 93 L.Ed.2d 836 (1987). ² ICC's contrary position on appeal does not change the record below, including the testimony that ICC itself produced.

brace means" recited in the asserted claims is limited, pursuant to 35 U.S.C. Sec. 112, p 6, to the structure disclosed in the specification of the '994 patent, namely, a vertical brace that extends into and through the sign body. The '994 patent does not describe any other brace structure or suggest any possible equivalent structure.

Furthermore, ICC does not point to any evidence in the record showing that the asserted claims would have been obvious over the Billow sign to one of ordinary skill in the relevant art at the time of the '994 invention. Thus, we have no basis to question the jury's rejection of ICC's Sec. 102/103 invalidity counterclaim. Accordingly, because the jury's validity determination was supported by substantial evidence, we affirm the district court's denial of ICC's motion for JMOL.

B. Design Patent Infringement

ICC next argues that the court erred in denying its motion for JMOL that it did not infringe the '620 design patent. Figure 1 of the '620 patent illustrates HTH's patented design:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

ICC's sign, alleged to infringe the '620 patent, has the following ornamental appearance:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

----------

Illustrative of the prior art is a sign having the following ornamental appearance:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

----------

ICC contends that the '620 patented design differs from the prior art...