Maxwell v. J. Baker, Inc.

• Citation: 86 F.3d 1098,39 USPQ2d 1001
• Decision Date: 11 June 1996
• Docket Number: 95-1293 and 95-1355,Nos. 95-1292,s. 95-1292
• Parties: , 39 U.S.P.Q.2d 1001 Susan M. MAXWELL, Plaintiff-Appellee, v. J. BAKER, INC., Defendant-Appellant, and Prange Way, Inc., Defendant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1098

86 F.3d 1098

64 USLW 2816, 39 U.S.P.Q.2d 1001

Susan M. MAXWELL, Plaintiff-Appellee, v. J. BAKER, INC., Defendant-Appellant and Prange Way, Inc., Defendant.

Nos. 95-1292, 95-1293 and 95-1355.

United States Court of Appeals Federal Circuit.

June 11, 1996.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Aug. 28, 1996.

Earl D. Reiland, Merchant, Gould, Smith, Edell, Welter & Schmidt, P.A., Minneapolis, Minnesota, argued, for plaintiff-appellee. With him on the brief were Daniel W. McDonald, and Alan G. Gorman.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued, for defendant-appellant. Of counsel were Henry C. Dinger, John C. Englander, and Dana L. McAlister, Goodwin, Procter & Hoar, Boston, Massachusetts.

Before LOURIE, Circuit Judge, SKELTON, Senior Circuit Judge, and SCHALL, Circuit Judge.

LOURIE, Circuit Judge.

J. Baker, Inc. appeals from the final judgment of the United States District Court for the District of Minnesota in which the court denied J. Baker's motion for

                judgment as a matter of law after a jury verdict of infringement of claims 1, 2, and 3 of U.S. Patent 4,624,060, owned by the inventor, Susan M. Maxwell.  Maxwell v. J. Baker, Inc., 875 F.Supp. 1371 (D.Minn.1995).   Because the court erred when it denied J. Baker's motion for judgment as a matter of law on the issue of infringement, but did not err otherwise, we affirm-in-part, reverse-in-part, vacate-in-part, and remand
                

BACKGROUND

In retail shoe stores, pairs of shoes must be kept together to prevent them from becoming disorganized and mismatched. Typically, manufacturers connect pairs of shoes using plastic filaments threaded through each shoe's eyelets. However, some shoes do not have eyelets and cannot be connected in this manner. Thus, manufacturers have resorted to other methods of keeping the shoes together such as making a hole in the side of each shoe and threading a filament through these holes. This method creates problems for retailers and manufacturers because the shoes are damaged by the process.

Maxwell, an employee at a Target retail store, recognized this problem and invented a system for connecting shoes that do not have eyelets. She secured tabs along the inside of each shoe and connected the shoes with a filament threaded through a loop or hole in each tab. By securing the tabs inside the shoe, she preserved the integrity and appearance of the shoes.

Maxwell filed a patent application entitled "System for Attaching Mated Pairs of Shoes Together," which issued as the '060 patent on November 25, 1986. Figure 2 of the patent illustrates the preferred embodiment of the invention and is shown below.

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Claim 1, with reference numbers to figure 2 added, is representative of the claims at issue: ¹

1. A system for attaching together mated pairs of shoes, which comprises in combination:

(A) a pair of shoes, each of which has an inner sole and an outer sole , each shoe also having a shoe upper with an inside surface and a top edge, each of said shoes further having a fastening tab and means for securing said tab between said inner and outer soles,

(1) said fastening tab being an integral sheet with two parts,

(2) the first of said parts comprising one end of the elongated tab extending horizontally between the inside surfaces of the outer sole and inner sole of the shoe and firmly secured thereto with said securing means,

(3) the second of said parts comprising the opposite end of the elongated tab extending from one edge of the inner sole and vertically upward along but spaced from the inside surface of the shoe upper and extending so that said opposite end remains beneath the top edge of said shoe upper,

(4) the second of said parts having an aperture in the form of a loop formed by doubling the fastening tab over on itself, and

(B) a filamentary fastening element extending through the apertures of each of said fastening tabs , the ends of the filamentary element being joined together in a closed loop;

whereby said pair of shoes is attached together by said fastening element passing through the aperture in each of said tabs so that on removal of said fastening element , said shoes separate and said tabs are not visible outside said shoe uppers [emphasis added].

J. Baker sells and distributes shoes through leased footwear departments in retail stores. Under a typical leasing arrangement, a retail store provides J. Baker with J. Baker purchases the shoes it sells from independent manufacturers. Between the mid-1980's and 1990, J. Baker instructed its manufacturers to connect shoes together for sale using a fabric loop inserted under a shoe's sock lining (the "under the sock lining" version) as shown below.

                the exclusive right to operate a shoe department within the store.   J. Baker selects the merchandise, stocks the shelves at the stores, and serves the customers.   In exchange, the retail store receives a portion of the sales receipts
                

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In June 1990, Maxwell informed J. Baker's in-house counsel that she believed that J. Baker infringed the '060 patent. In response, J. Baker designed two alternate shoe connection systems. In the "counter pocket" version, shown below, a tab was stitched into the counter pocket of the shoe between the sole and the top of the shoe.

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In the "top line" version, shown below, a tab was stitched into the top lining seam of the shoe.

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Maxwell sued J. Baker on December 12, 1990, alleging infringement of the '060 patent. After a month long trial, a jury returned a special verdict finding that the '060 patent was valid; J. Baker infringed claims 1, 2, and 3 of the patent; and J. Baker's infringement was willful after June 1990, when it received actual notice of the '060 patent. The jury also determined that Maxwell complied with the marking requirements of 35 U.S.C. § 287(a) as of November 1987. Thus, it awarded over $1.5 million in damages based on its determination that a reasonable royalty for use of Maxwell's patent was $.05 per pair of shoes and J. Baker sold 31 million infringing pairs of shoes. In addition, the jury awarded Maxwell an additional $1.5 million based on its determination that Maxwell was damaged in excess of the $.05 royalty.

J. Baker filed a motion for judgment as a matter of law and a motion for a new trial arguing, inter alia, that J. Baker did not infringe either literally or by equivalence, the marking date fixed by the jury was not supported by substantial evidence, the amount of damages awarded in excess of the reasonable royalty award was not supported by any evidence, and the '060 patent was invalid based on prior inventorship. The court denied J. Baker's motions. Maxwell, 875 F.Supp. at 1375. In addition, it awarded prejudgment interest, trebled damages for shoe sales after June 1990 based on the jury's willful infringement finding, directed an award of attorney fees, and entered an injunction preventing J. Baker from making, using, or selling any shoes connected with a system covered by the patent. Maxwell v. J. Baker, Inc., 879 F.Supp. 1007 (D.Minn.1995) (awarding prejudgment interest, enhanced damages, and attorney fees); Maxwell v. J. Baker, Inc., 879 F.Supp. 1012 (D.Minn.1995) (entering an injunction against J. Baker). J. Baker appeals.

DISCUSSION

When a party moves for JMOL in a case tried to a jury, we review the district court's decision de novo by reapplying the JMOL standard. Markman v. Westview Instruments, Inc., 52 F.3d 967, 975, 34 USPQ2d 1321, 1326 (Fed.Cir.1995), aff'd on other grounds, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996). Judgment as a matter of law against a party 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 the legal standards that the jury applied in reaching its verdict to determine whether they were correct as a matter of law.  Markman, 52 F.3d at 975, 34 USPQ2d at 1326.   We review the jury's resolution of all factual disputes for substantial evidence.  Id
                

A. Infringement

An infringement analysis requires two separate steps. First, the court must construe the claims asserted to be infringed as a matter of law in order to establish their meaning and scope. Markman v. Westview Instruments, Inc., --- U.S. ----, ----, 116 S.Ct. 1384, 1393, 134 L.Ed.2d 577, 588-89, 38 USPQ2d 1461, 1471 (1996). Second, the claims as construed are compared to the allegedly infringing device. Id. To literally infringe, the accused device must contain every limitation of the asserted claim. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535, 19 USPQ2d 1367, 1369 (Fed.Cir.1991). Even if the accused device does not literally infringe, it may infringe under the doctrine of equivalents if the differences between the claimed invention and the accused device are "insubstantial." Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517, 35 USPQ2d 1641, 1644-45 (Fed.Cir.1995) (in banc) (per curiam), cert. granted, --- U.S. ----, 116 S.Ct. 1014, 134 L.Ed.2d 95 (1996).

1. Claim Construction

Both parties agree that the key claim limitation for purposes of this appeal concerns Claim 1's requirement that a "fastening tab" extend "horizontally between the inside surfaces of the outer sole and inner sole of the shoe." Col. 3, 11. 34-36. The district court construed the claim language to require that the fastening tab extend from between the inner and outer shoe soles. Moreover, the court construed the claim to require that the fastening tab be a separate piece from any other shoe part, including the counter...