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Efforts to terminate infringement after notice of patent doesn't avoid damages

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Federal Circuit vacated a district court's grant of summary judgment of non-infringement of a patent on the basis of claim construction.  Specifically, the district court had improperly imported limitations from nonasserted claims into the asserted claims, resulting in an unduly narrow claim construction.  

The court also vacated the district court's grant of summary judgment of no liability for damages for infringement.  The patentee had not marked articles with the patent number, and upon notice of the patent, the alleged infringer immediately took steps to redesign the accused products.  However, the redesign took over six months to complete.  The district court held that because the accused infringer took reasonable steps to cease infringement immediately upon notice, damages were unavailable.  The Federal Circuit disagreed, and noted there is no exception for liability when an accused infringer is "expeditious" in its efforts to cease infringing after notice is given, so the court remanded for a determination of damages if the patents are determined to be valid.  

More detail of DSW, Inc. v. Shoe Pavilion, Inc. after the jump.

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Full post as published by FileWrapper on August 21, 2008 (boomark / email).