United States: The District Court Improperly Read Into The Claims A Limitation Not Required By The Intrinsic Evidence And Improperly Concluded That Expeditious Effort To Terminate Infringing Activities Excused Liability For Infringement

Judges: Mayer (author), Schall, Linn

[Appealed from C.D. Cal., Judge Cooper]

In DSW, Inc. v. Shoe Pavilion, Inc., No. 08-1085 (Fed. Cir. Aug. 19, 2008), the Federal Circuit vacated the district court's grant of SJ of no infringement, finding that the district court erred in construing the claims, and remanded. The Court also vacated the district court's grant of SJ with respect to damages, finding that the district court erred in concluding that an accused infringer's reasonable and good-faith efforts to bring its infringing activity to a timely end after notice equated to an immediate cessation that excused liability for infringement.

DSW, Inc. and DSW Shoe Warehouse, Inc. (collectively "DSW") own U.S. Patent No. 6,948,622 ("the '622 patent"), which is directed to a system and method for storing and displaying a large stock of footwear for customer self-service. DSW also owns U.S. Patent No. D 495,172 ("the '172 patent"), a design patent claiming an ornamental design for a combined product display and stacked product container separator. DSW notified Shoe Pavilion, Inc. ("Shoe Pavilion") that its shoe display design ("First Design") infringed the '622 and '172 patents. In response, Shoe Pavilion agreed to modify its display, and within seven months after receiving notice, removed all First Design displays from its stores and introduced a modified design ("New Design"). DSW then filed suit against Shoe Pavilion, alleging that the New Design infringed claims 4-6 of the '622 patent and that it was owed damages for infringement of the '622 and '172 patents by the First Design.

Shoe Pavilion moved for SJ that its New Design did not infringe and that it owed no damages for infringement by the First Design. The district court construed the claims and based on its construction, granted SJ of no infringement with respect to the New Design. Specifically, the parties' dispute turned on whether claims 4-6 of the '622 patent encompassed only methods of displaying and storing footwear that contain track and roller mechanisms connecting display modules to a support base ("the Track and Roller Limitation"). Though the Track and Roller Limitation is present in claims 1-3, it does not appear in claims 4-6. The district court nonetheless construed claims 4-6 to include a footwear display module with vertically disposed, horizontally moveable dividers coextensive with the Track and Roller Limitation of claims 1-3, and concluded that because Shoe Pavilion's New Design lacked such a feature, it did not infringe the '622 patent. With respect to damages, the district court found that DSW was not entitled to any damages as a matter of law, because immediately upon receipt of DSW's notice of infringement, Shoe Pavilion took reasonable steps and timely removed all of the infringing shoe displays. Relying on Wine Railway Appliance Co. v. Enterprise Railway Equipment, 297 U.S. 387 (1936), the district court granted SJ to Shoe Pavilion, stating that no damages for infringement are recoverable by a plaintiff unless the infringing activity continues after notice is provided to the infringer. DSW appealed.

On appeal, the Federal Circuit found that the district court improperly read the Track and Roller Limitation of claims 1-3 into claims 4-6. The Court reasoned that absent contravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis. It noted that although the language in claims 4-6 was broad, it was not ambiguous. In addition, the Court observed that nowhere did the prosecution history show an express disclaimer by DSW of a method of displaying footwear not involving the Track and Roller Limitation. The Court also determined that although the preferred embodiment included a rolling track mechanism, other embodiments did not. The Court added that when claim language is broader than the preferred embodiment, it is well settled that claims are not to be confined to that embodiment. Accordingly, the Court concluded that the district court improperly read into claims 4-6 a new limitation not required by the claim language, specification, or prosecution history; vacated the district court's grant of SJ of noninfringement; and remanded for a new determination of infringement.

With respect to the district court's SJ decision on damages based on Wine Railway, the Federal Circuit noted that Wine Railway provided no support for the district court's decision. The Court explained that while Wine Railway held that a patentee who failed to mark his patented article could only recover damages for infringement occurring after actual notice was provided to the infringer, the issue here was whether Shoe Pavilion was liable for infringement occurring subsequent to the receipt of actual notice. The Court observed that Wine Railway "flatly states that a patentee may indeed recover damages for infringement that continues after actual notice is provided." Slip op. at 10. It added that "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." Id. It concluded that the district court therefore erred in finding that Shoe Pavilion's reasonable and good-faith efforts to bring its infringing activity to a timely end after notice equated to an immediate cessation, and that, if the '622 and '172 patents are valid, damages are owed for the time period while Shoe Pavilion phased out its First Design. Accordingly, the Court vacated the district court's grant of SJ on damages and remanded.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions