CD Cal decision in DSW blistered by CAFC; Shoe Pavilion loses

Defendant-appellee Shoe Pavilion, represented by Venable, did not fare well at the CAFC, as the judgment of CD Ca was vacated and remanded.

Of claim construction: The district court erroneously imported the 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 CAFC cited Intervet Am., Inc. v. Kee-Vet Labs, Inc., 887 F.2d
1050, 1053 (Fed. Cir. 1989) (“[T]his court has consistently adhered to the proposition
that courts cannot alter what the patentee has chosen to claim as his invention, that
limitations appearing in the specification will not be read into claims, and that
interpreting what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’”

Additionally: We therefore disagree with the
trial court’s decision to intermingle its validity and construction analyses and as a result
read into claims 4-6 the Track and Roller Limitation of claims 1-3. See Phillips v. AWH
Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (“[W]e have limited the maxim [of
construing a claim to preserve its validity] to cases in which ‘the court concludes, after
applying all the available tools of claim construction, that the claim is still ambiguous.’”
(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004))).

Also: In sum, the trial court did not construe or clarify the meaning of actual words in
claims 4-6, but improperly read into them a new limitation not required by the claim
language, specification, or prosecution history. Because claims 4-6 are unambiguous,
contain limitations other than the disputed claim term, and are directed to a method for
using an apparatus, not to its structure or assembly, it was improper for the trial court to
import limitations from the apparatus and system claims into the method claims.

On damages, the CAFC also criticized CD Cal -->

The district court misapplied the standard expressed by the Supreme Court in
Wine Railway, which held that under the predecessor statute to the notice provision of
35 U.S.C. § 287, a patentee who failed to mark his patented article with the appropriate
patent number could only recover damages for infringement occurring after actual
notice was provided the infringer. Wine Ry., 297 U.S. at 393-94. This court has applied
Wine Railway in the current context of Section 287. Tex. Digital Sys., Inc. v. Telegenix,
Inc., 308 F.3d 1193, 1219 (Fed. Cir. 2002). The purpose of the notice requirement is to
provide “protection against deception by unmarked patented articles.” Wine Ry., 297
U.S. at 398. The idea is to prevent innocent infringement. Motorola, Inc. v. United
States, 729 F.2d 765, 772 (Fed. Cir. 1984).

Wine Railway provides no support for the trial court’s summary judgment on
damages. The issue here is whether Shoe Pavilion is liable for damages to DSW for
infringement occurring subsequent to receipt of actual notice, and Wine Railway flatly
states that a patentee may indeed recover damages for infringement that continues
after actual notice is provided. Wine Ry., 297 U.S. at 393-94. 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. See In re Seagate
Tech., Inc., 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc)