Rothman v. Target Corp.
| Decision Date | 13 February 2009 |
| Docket Number | No. 2008-1375.,2008-1375. |
| Citation | 556 F.3d 1310 |
| Parties | Line ROTHMAN and Glamourmom LLC, Plaintiffs-Appellants, v. TARGET CORP., Kohl's Department Stores, Inc., J.C. Penney Company, Inc., Redcats USA, L.P. (doing business as Lane Bryant Catalog), Elizabeth Lange LLC (doing business as Liz Lange Maternity), and Leading Lady, Defendants-Appellees, and Motherswear International, Defendant-Appellee, and Federated Department Stores, Macy's Department Stores, Inc., K-Mart Corp., and Sears Holding Corporation, Defendants. |
| Court | U.S. Court of Appeals — Federal Circuit |
John F. Sweeney, Morgan & Finnegan, LLP, of New York, NY, argued for plaintiffs-appellants.
R. Terrance Rader, Rader, Fishman & Grauer PLLC, of Bloomfield Hills, MI, argued for all defendants-appellees. With him on the brief were Charles W. Bradley, Kristin L. Murphy, and James F. Kamp.
Robert J. Schoenberg, Riker, Danzig, Scherer, Hyland & Perretti LLP, of Morristown, NJ, for defendant-appellee Motherwear International, Inc.
Before RADER, FRIEDMAN, and BRYSON, Circuit Judges.
By jury verdict, the United States District Court for the District of New Jersey found claims 1, 5, and 12 of U.S. Patent No. 6,855,029 ("the '029 patent") invalid. In addition, the jury declined to find infringement by appellee Motherwear International ("Motherwear"). The jury also found the '029 patent unenforceable due to inequitable conduct. The district court sustained the jury's verdict on all counts, denying Ms. Rothman's and Glamourmom LLC's ("Glamourmom's") motions for judgment as a matter of law ("JMOL") and awarded costs to Appellees. Rothman v. Target Corp., Civ. No. 05-4829, slip op. at *1-2, 2008 WL 1995129 ("Final Judgment Order"). Because the district court erred in upholding the jury's inequitable conduct finding, this court affirms-in-part and reverses-in-part.
The '029 patent claims a nursing garment "with invisible breast support for nursing mothers." '029 patent col.1 ll.52-55 (filed June 30, 2003). The specification teaches a garment with a smooth appearance and no outer cups that conceals a fully-supportive nursing bra. Id. at col.1 ll.61-62, col.2 ll.5-6. The preferred embodiment of Ms. Rothman's invention, depicted in Figures 2, 3, and 4, below, is a tank top or undershirt with a built-in nursing bra.
The critical components of the visible, external portion of the nursing garment are the "external nursing flaps" 3. These external nursing flaps extend upwards from the front section of the "stretch body wrap" 10A and "are attached to the internal nursing flaps 8A and to the shoulder straps 5 to give a smooth single garment appearance." Id. at col.3 ll.10-14.
The concealed nursing bra derives its structure from "the elastic chest band 15, the soft cup frame 2, the internal nursing flaps 8A, and the back piece of fabric 8B." Id. at col.3 ll.21-24. The only external aspects of the nursing bra are the shoulder straps 5, and, in some embodiments, the fasteners 1 and 4. Id. at col.3 ll.8-10, 28-29.
As shown in Figure 2, the wearer separates fasteners 1 and 4 and folds down the internal and external nursing flaps 8A and 3 to access the breast for nursing. Id. at col.3 ll.39-44. After nursing, the wearer simply reattaches the flaps. Id.
Claim 1 is representative of the three independent claims at issue in this appeal:
1. A nursing garment comprising:
a shoulder strap having a front end and a back end;
an elastic chest band having a front section and a back section;
a soft cup frame having a base and a top, said soft cup frame attached at said base thereof to said front section of said elastic chest band and attached at the top thereof to said front end of said shoulder strap;
a back piece having a base edge thereof attached to said back section of said elastic band and a top edge thereof attached to said back end of said shoulder strap;
an internal nursing flap having a base and a top, said base thereof attached to said base of said soft cup frame;
a first fastener attached to said top of said internal nursing flap, and a second fastener attached to the front end of said shoulder strap, said first fastener adapted to fasten said top of said internal nursing flap to said second fastener; and,
an elastic stretch fabric body having a top front edge attached to said top of said internal nursing flap and a rear top edge attached to said back end of said shoulder strap.
Id. at col.3 ll.45-67.
A fledgling inventor, Ms. Rothman developed her garment to fill a perceived gap in market offerings. After the birth of her first child in March 2000, Ms. Rothman sought out a nursing garment that would conceal her stomach while providing easy nursing access and full breast support. Unable to locate anything more elaborate than "just basically nursing bras," Ms. Rothman undertook the task of designing her own garment.
Ms. Rothman's inventive process lasted "a couple of days [to] a couple of weeks." Then, one day, with her design in mind and her husband watching their child, she set to work in the family kitchen and stitched together her prototype. As starting materials, Ms. Rothman used an off-the-shelf Jockey tank top with a built-in shelf bra and an off-the-shelf Olga nursing bra. She combined these products, additional fabric, fasteners, and other sewing materials to arrive at her prototype. Applying the language of the '029 patent claims to her prototype, Ms. Rothman acknowledges that the Jockey tank top contributed the "back piece," "internal nursing flap," and "elastic stretch fabric body" set forth in claim 1. Ms. Rothman relied on the Olga nursing bra to serve as the "soft cup frame."
On July 12, 2000, several weeks after completing her invention, Ms. Rothman mailed herself a letter describing her invention. The letter explains that the "Topless Topnotch Nursing Top" "has a built in bra that opens up with a snap to release the cup for nursing." The letter then describes the purpose and function of the garment:
The name Topless is because you need to wear only one top whereas before with the same cover you needed to wear a nursing bra and a top over it that could stretch under the breast to open the bra. So it makes the woman feel free and topless.
Eager to secure protection for her garment, Ms. Rothman contacted patent attorney Allan Jacobson to file a patent application. Mr. Jacobson filed a provisional patent application for Ms. Rothman's garment on October 6, 2000, and a PCT application on October 3, 2001. During this time, Ms. Rothman and her husband, Michael Rothman, formed Glamourmom to produce, market, and sell her design. The '029 patent issued on February 15, 2005.
On October 7, 2005, Glamourmom filed this lawsuit alleging infringement of the '029 patent by Appellees' products. Appellees denied these infringement allegations and countered that claims 1, 5, and 12—the independent claims of the '029 patent—were invalid due to anticipation and obviousness. Appellees also alleged prior inventorship by Leading Lady employee Haidee Johnstone and inequitable conduct during prosecution of the '029 patent.
On January 22, 2007, the district court held a Markman hearing to construe the claims of the '029 patent. The district court entered its Markman Order on March 5, 2007. A ten-day jury trial ensued with closing statements made on November 2, 2007. The jury returned its verdict on November 5, 2007. In that verdict, the jury concluded that each of Appellees' accused products—with the exception of those made by Motherwear— infringed the '029 patent. The jury also found the '029 patent invalid. In particular, the jury determined that U.S. Patent No. 4,648,404 to Clark, U.S. Patent No. 6,282,719 to Vera, and Leading Lady garment styles 460 and 438 anticipated the '029 patent. The jury further found the '029 patent obvious in light of the prior art. Appellees also prevailed on their inventorship and inequitable conduct defenses.
After trial, Glamourmom renewed its motions for JMOL that the '029 patent is not anticipated or obvious, and that it is indeed infringed by the Motherwear products. Glamourmom also renewed its motions for JMOL that Ms. Johnstone did not make the invention of the '029 patent before Ms. Rothman, and that no inequitable conduct occurred during prosecution of the '029 patent. The district court denied each of these motions and awarded costs to Appellees. Glamourmom now appeals the denial of each of its five motions for JMOL. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
This court reviews the District of New Jersey's denial of a motion for JMOL by applying the standard enunciated by the United States Court of Appeals for the Third Circuit. Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1341 (Fed. Cir.2008). Under Third Circuit law, this court exercises "plenary review over a district court's rulings on motions for JMOL, applying the same standard as the district court." Id. Accordingly, this court may only grant a motion for JMOL where the non-moving party has benefited from a full hearing on the issue during a jury trial, and where a reasonable jury would not have a legally sufficient evidentiary basis to find for the non-moving party on that issue. See Fed.R.Civ.P. 50(a). This court "may not weigh the evidence, determine the credibility of witnesses, or substitute [its] version of the facts for the jury's version." Agrizap, 520 F.3d at 1342.
In this case, Glamourmom's unsuccessful challenge to the obviousness verdict renders superfluous its additional validity and infringement arguments. Accordingly this court limits its discussion to that primary validity issue.
In considering the district court's denial of Glamourmom's motion for JMOL of nonobviousness, "`[t]his court reviews [the] jury's conclusions on obviousness, a question of law, without deference, and the underlying findings of...
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