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Elmer v. ICC Fabricating, Inc.

United States Court of Appeals for the Federal Circuit

October 10, 1995, Decided



 [***1418]  [*1573]   LOURIE, Circuit Judge.

ICC Fabricating, Inc. ("ICC") appeals from the judgment of the United States District Court for the Middle District of Florida entered pursuant to a jury verdict holding ICC liable to William A. Elmer and HTH, Inc. (collectively "HTH") for utility patent infringement, design patent infringement, trade dress infringement, and state common law unfair competition. The court denied ICC's post-trial motion for judgment as a matter of law ("JMOL") or, alternatively, for a new trial. Elmer v. ICC Fabricating, Inc., No. 92-379-CIV-ORL-18 (M.D. Fla. Aug. 1, 1994). On appeal, ICC challenges the court's order denying JMOL on the issues of utility patent validity, design patent infringement, trade [**2]  dress infringement, and unfair competition. ICC does not contest the verdict of utility patent infringement. Because the jury's verdict of utility patent validity was supported by substantial evidence, but its verdicts of design patent infringement, trade dress infringement, and unfair competition were not, we affirm-in-part and reverse-in-part.


HTH is the exclusive licensee of U.S. Patents 5,084,994 and Des. 290,620, directed to vehicle-mounted advertising signs. HTH sued ICC alleging utility and design patent infringement, trade dress infringement under section 43(a) of the Lanham Act, and unfair competition under Florida common law. ICC counterclaimed for a declaration that the asserted patents are invalid. After a ten-day jury trial, the jury returned a verdict for HTH finding that claims 1, 3, 5, 6, 8-12, 16, and 17 of the '994 patent are not invalid and were infringed, the '620 design patent is not invalid and was infringed, the trade dress of HTH's "Window Wing" sign is protectable and was infringed by ICC, and that ICC violated Florida unfair competition law. 1 Subsequently, the jury awarded HTH $ 240,130.00 as damages for ICC's infringement of the '994 patent,  [**3]  $ 38,900.00 as damages for ICC's infringement of the '620 patent, and $ 942,361.00 in damages for ICC's trade dress infringement and unfair competition. In addition, the jury found that ICC's unfair competition had been willful, wanton, or reckless and thus awarded HTH $ 1 million in punitive damages. Based upon the jury's findings, the court entered a permanent injunction. The court denied ICC's alternative motion for JMOL or a new trial on the ground that credible evidence introduced during trial supports the verdicts. This appeal followed.

 [*1574]  DISCUSSION

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67 F.3d 1571 *; 1995 U.S. App. LEXIS 28038 **; 36 U.S.P.Q.2D (BNA) 1417 ***

WILLIAM A. ELMER and HTH, INC., Plaintiffs-Appellees, v. ICC FABRICATING, INC., Defendant-Appellant, and TAKE-OUT EXPRESS, INC., Defendant.

Prior History:  [**1]  Appealed from: U.S. District Court Middle District of Florida Judge Richard B. Kellam.



patent, trade dress, features, infringement, ornamental, unfair competition, vertical, window, brace, prior art, nonfunctional, aerodynamic, appearance, mount, utility patent, upstanding, contends, designs, patent infringement, trademark, invalid, extending, damages, substantial evidence, protrusion, dimension, upper, ribs, advertising, competitors

Business & Corporate Compliance, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Trademark Law, Infringement Actions, General Overview, Civil Procedure, Trials, Judgment as Matter of Law, Patent Law, Design Patents, Unfair Competition, Federal Unfair Competition Law, Appeals, Standards of Review, De Novo Review, Bench Trials, Standards of Review, Substantial Evidence, Sufficiency of Evidence, Patent Law, Anticipation & Novelty, Elements, Nonobviousness, Elements & Tests, Statutory Bars, Public Use Bar, Claim Interpretation, Copyright Law, Copying by Defendants, Substantial Similarity, Intrinsic Tests, Intrinsic Tests, Ordinary Observer Test, Scope of Claim, Infringing Acts, Indirect Infringement, Subject Matter, Design Patents, Functionality, Ornamentality Requirement, Burdens of Proof, Subject Matter Jurisdiction, Jurisdiction Over Actions, Exclusive Jurisdiction, Subject Matter of Trademarks, Labels, Packaging & Trade Dress, Jurisdiction, False Advertising, False Designation of Origin, Elements of False Designation of Origin, Lanham Act, Nontraditional Trademarks, Color Marks, Conveyances, Elements of Trade Dress Infringement, Causes of Action Involving Trademarks, Terms Requiring Secondary Meaning, Similarity of Marks, Appearance, Meaning & Sound, Appearance