Tate Access Floors v. Maxcess Technologies

• Decision Date: 01 August 2000
• Citation: 222 F.3d 958,55 USPQ2d 1513
• Parties: (Fed. Cir. 2000) TATE ACCESS FLOORS, INC. and TATE ACCESS FLOORS LEASING, INC., Plaintiffs-Cross Appellants, v. MAXCESS TECHNOLOGIES, INC., Defendant-Appellant. 99-1347, -1348 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 958

222 F.3d 958 (Fed. Cir. 2000)

TATE ACCESS FLOORS, INC. and TATE ACCESS FLOORS LEASING, INC., Plaintiffs-Cross Appellants, v. MAXCESS TECHNOLOGIES, INC., Defendant-Appellant.

99-1347, -1348

United States Court of Appeals for the Federal Circuit

DECIDED: August 1, 2000

Appealed from: United States District Court for the District of Maryland Senior Judge Joseph H. Young

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Darle M. Short, Oliff & Berridge, PLC, of Alexandria, Virginia, argued for plaintiffs-cross appellants. With him on the brief were James A. Oliff, Thomas J. Pardini, and Paul T. Bowen.

Allen M. Sokal, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendant-appellant. With him on the brief were Donald R. Dunner, Michael A. Morin, and Edna Vassilovski. Of counsel on the brief wereNagendra Setty, William H. Needle, and Bernard L. Zidar. Of counsel were James R. Burdett, and Mary Jane Saunders, Venabel, Baetjer, of Washington, DC.

Before MICHEL, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Maxcess Technologies, Inc. appeals from the decision of the United States District Court for the District of Maryland denying its combined motion for judgment as a matter of law and for a new trial, following a jury verdict in favor of Tate Access Floors, Inc. and Tate Access Floors Leasing, Inc. (collectively "Tate Access"), holding that claims 1-12 of U.S. Patent 4,625,491 are not invalid and were literally infringed. SeeTate Access Floors, Inc. v. Maxcess Techs., Inc., No. Y-97-4213 (D. Md. Mar. 5, 1999) (informal order). Tate Access cross-appeals from the district court's decision denying its motion to amend the judgment by increasing damages, its motion for attorney fees, and its motion for a permanent injunction. ¹ See id. at 1. For the reasons set forth in this opinion, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.

BACKGROUND

Tate Access's '491 patent is directed to an "elevated floor panel" with a laminate floor covering. Elevated floors, also known as "access floors," typically include an array of square floor panels that are supported at their corners by pedestals, thus providing a space underneath the floor through which wires and other equipment may be routed. See '491 patent, col. 1, ll. 12-19. Individual floor panels often have a floor covering laminated to their upper surface that provides an attractive floor appearance. See id. at col. 1, ll. 22-30. Such floor panels also generally have a separate trim strip around their border, usually of a color that contrasts with that of the laminate floor covering, that provides an aesthetically pleasing appearance and protects the edges of the floor covering from damage. See id. at col. 1, ll. 33-42.

The '491 patent contains thirteen claims, the first twelve of which are at issue. Independent claim 1 reads as follows:

1. A floor panel for elevated floors comprising a rectangular base structure adapted to be supported at its corners and providing a load surface operable to support loads thereon, a floor covering mounted on said load surface providing a decorative exposed surface layer on the side thereof opposite said load surface, said floor covering providing an inner body portion having an appearance contrasting with the appearance of said decorative surface layer, said floor covering providing a border along the edges of said panels along which said decorative surface layer is removed to expose said inner body portion and thereby provide an integral contrasting border around said decorative surface layer.

Id. at col. 4, l. 67 to col. 5, l. 11 (emphasis added). Claim 8, the only other independent claim at issue, reads as follows:

8. A floor panel comprising a rectangular support structure providing a load surface operable to support loads thereon, a layered laminated floor covering mounted on said load surface providing a single visible decorative layer along the side of said floor covering remote from said load surface, said floor covering also providing an inner layer contrasting with said decorative layer having a thickness substantially greater than the thickness of the decorative layer adjacent to said decorative layer along the side thereof facing said load surface, said floor covering providinga border extending along the edges of said panel along which the decorative layer is removed to expose said inner layer.

Id. at col. 5, l. 37 to col. 6, l. 11. Claim 12, which depends from claim 10, recites that "said inner layer is black." Id. at col. 6, ll. 24-25.

Figure 4 of the patent illustrates an embodiment of the claimed floor panel as follows:

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As illustrated in Figure 4, each floor panel 10 has a floor covering 12 that is adhesively bonded to the panel base or body 13. See id. at col. 3, ll. 18-20. The floor covering 12 has an upper surface 21 that is provided by a layer of clear resin 22. See id. at col. 3, ll. 23-24. Underneath the clear resin 22 is a decorative layer 23, four backing layers of black paper 26, 27, 28, and 29, and several layers of brown paper 31 and 32. See id. at col. 3, ll. 24-30. The edges of the floor covering 12 are "scarfed," i.e., cut away, to expose one of the backing layers 26 through 29, thereby providing an integral border or edge trim 14. See id. at col. 2, ll. 53-54; col. 3, ll. 45-48. Although the illustrated embodiment discloses backing layers 26 through 29 with a black color, the written description teaches that the backing layers 26 through 29 may be formed with other colors that are uniform and that contrast with the color of the decorative layer 23. See id. at col. 4, ll. 52-60.

The accused product, Maxcess's Duratrim floor panel, is structurally similar to the claimed invention and is depicted in the following drawing:

[Tabular or Graphical Material Omitted]

As depicted in the above drawing, the Duratrim floor panel 10 has a floor covering 12 that is mounted on the load surface of the base structure 13. The floor covering 12 has a decorative exposed layer 23, and has an inner body portion IB comprised of several backing layers of standard brown kraft paper L1 through L5. Along the edges of the floor covering 12, there is an integral contrasting border or trim 14 below the surface of the decorative layer 23 that exposes the backing layers L1 through L5, which comprise the inner body portion IB.

Tate Access filed suit against Maxcess, alleging that Maxcess's Duratrim floor panel infringed claims 1-12 of the '491 patent. During trial, the district court construed the term "inner body portion" to mean "the layers of paper which are below the top decorative layer and contrast in uniform appearance with the top decorative layer." J.A. at 28. The court construed the term "integral" to mean that "the edges are formed by the laminated floor covering without a separate border trim strip." Id. The jury returned a verdict in favor of Tate Access, concluding that the asserted claims were not shown to be invalid, and finding that they were literally infringed. See J.A. at 42-45 (special verdict form). The jury also found Maxcess's infringement to be willful, and awarded Tate Access $2,218,522 in damages for lost profits on all of Maxcess's sales. See id.

The district court denied Maxcess's subsequent motion for judgment as a matter of law that the asserted claims were not infringed and that Tate Access was not entitled to lost profits. The court also denied Tate Access's motion to amend the judgment by increasing damages, its motion for attorney fees, and its motion for a permanent injunction. Both parties appeal from the district court's decision denying their respective post-trial motions. See J.A. at 2 (informal order). We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

A. Standards of Review

Judgment as a matter of law ("JMOL") 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 a district court's denial of a motion for JMOL de novo, reapplying the JMOL standard used by the district court. See Sextant Avionique, S.A. v. Analog Devices, Inc., 172 F.3d 817, 824, 49 USPQ2d 1865, 1869 (Fed. Cir. 1999). To prevail, "an appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings." Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1358, 47 USPQ2d 1516, 1519 (Fed. Cir. 1998) (internal quotation marks omitted). On appeal, this court must consider the record evidence in the light most favorable to the non-movant, "drawing all reasonable inferences in its favor, without disturbing the jury's credibility determinations or substituting our resolutions of conflicting evidence for those of the jury." Applied Med. Resources v. U.S. Surgical, 147 F.3d 1374, 1377, 47 USPQ2d 1289, 1290 (Fed. Cir. 1998).

A determination of infringement requires a two-step analysis. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1476, 45 USPQ2d 1498, 1500 (Fed. Cir. 1998). "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Id. (quoting Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed. Cir. 1993)). "Literal infringement requires that every limitation of the patent claim be found in the accused device." General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981, 41 USPQ2d 1440, 1445 (Fed. Cir. 1997). "An accused device that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met in the...