Maxwell v. Baker, Inc.

86 F.3d 1098 (1996)

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Nature of the Case

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Facts

Maxwell (P) invented a system for connecting shoes that do not have eyelets. P secured tabs along the inside of each shoe and connected the shoes with a filament threaded through a loop or hole in each tab. By securing the tabs inside the shoe, she preserved the integrity and appearance of the shoes. P received the '060 patent on November 25, 1986. P instructed Target, a licensee, to mark the patent number on all shoes incorporating the system. Target failed. P notified Target’s manufacturers and Target agreed to comply fully by November 1987. After November 1987, P notified Target whenever she found errors with the markings and repeatedly requested corrections. D sells and distributes shoes through leased footwear departments in retail stores. D purchases the shoes it sells from independent manufacturers. Between the mid-1980s and 1990, D instructed its manufacturers to connect shoes together for sale using a fabric loop inserted under a shoe's sock lining. In June 1990, P notified D's in-house counsel that she believed that D infringed the '060 patent. In response, D designed two alternate shoe connection systems. A 'counter pocket' version and a 'top line' version. P sued D alleging infringement of the '060 patent. A jury returned a special verdict finding that the '060 patent was valid; D infringed claims 1, 2, and 3 of the patent; and D's infringement was willful after June 1990, when it received actual notice of the '060 patent. The jury also determined that P complied with the marking requirements of §287(a) as of November 1987. It awarded over $1.5 million in damages based on its determination that a reasonable royalty was $.05 per pair of shoes with D selling 31 million infringing pairs of shoes. The jury awarded an additional $1.5 million based on its determination that P was damaged in excess of the $.05 royalty. D filed for JMOL and a motion for a new trial arguing did not infringe either literally or by equivalence, the marking date fixed by the jury was not supported by substantial evidence, the amount of damages awarded in excess of the reasonable royalty award was not supported by any evidence, and the '060 patent was invalid based on prior inventorship. The court denied the motions and trebled the damages for sales for the willful infringement period. It entered an injunction preventing D from making, using, or selling any shoes connected with a system covered by the patent. D appealed.