Plain and Unambiguous Claim Language Controls Claim Construction

DSW, Inc. v. SHOE PAVILION, INC., [2008-1085] (August 19, 2008) [MAYER, Schall, Linn] The Federal Circuit vacated and remanded summary summary judgment of non-infringement of U.S. Patent No. 6,948,622 and summary judgment of no liability for damages for past infringement of U.S. Patent No. D 495,172 and the ’622 patent.
DISCUSSION: The Federal Circuit said that infringement occurs when a properly construed claim of an issued patent covers an accused device. The Federal Circuit held that the district court erroneously imported a “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. The Federal Circuit said that absent contravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis. The Federal Circuit found no reason in the prosecution history to limit the claims. The Federal Circuit specifically noted while the preferred embodiment included the “track and roller” other embodiments did not. The Federal Circuit said that “when claim language is broader than the preferred embodiment, it is well-settled that claims are not to be confined to that embodiment.”
On the issue of damages, the district court held that plaintiff was not entitled to damages for the period after receiving actual notice of the patent, while defendant was winding down its infringement. The Federal Circuit held that this was error. The Federal Circuit noted that precedent flatly states that a patentee may indeed recover damages for infringement that continues after actual notice is provided. The Federal Circuit said that “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.” The Federal Circuit held that the trial court erred in concluding that defendant’s reasonable steps and good faith efforts to bring its infringing activity to a timely end equated to an immediate cessation, and that if the patents at issue are valid, damages are owed for the 6-7 months of continued infringement while defendant phased out its use of the displays in its stores.