Summary Judgment on Noninfringement without Markman Hearing
There was no Markman hearing by the lower court, and the plaintiffs unsuccessfully urged the appellate court to adopt a claim construction that allowed other parts of the shoe—not just the insert or immovable insert portion—to meet claim limitations. According to Chief Circuit Judge Michel,
1. An orthotic device for preventing hyperpronation of a human foot comprising a
deep rigid heel seat to cup the calcaneus, said heel cup being medially offset
and laterally tilted by a sufficient amount to maintain the calcaneus in approximately 5 degrees of varus . . . .
2. A footwear product having as an element thereof an orthotic device as claimed in claim 1.
We begin our analysis with the usage of the term "orthotic device" in the
patent claims. The term appears in claims 1 and 2 of the patent, and there is a
"presumption that the same terms appearing in different portions of the claims
should be given the same meaning unless it is clear from the specification and
prosecution history that the terms have different meanings at different portions
of the claims." Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318
(Fed. Cir. 2001). Using plaintiffs’ proposed definition of "orthotic device",
claim 1 would cover both an insert alone and a shoe built to have the shape of
the interior of the insert. If the phrase "orthotic device" is interpreted
consistently throughout the patent, then plaintiffs’ proposed definition will
only hold if, substituting either of the two proffered meanings in place of the
phrase "orthotic device", claim 2 makes sense.
Claim 2 specifies "[a] footwear product having as an element thereof an orthotic device as claimed in claim 1." ’052 patent, col. 6, ll. 41-42. Defining "orthotic device" as "insert or immovable insert portion", as suggested by defendants, claim 2 would read: "[a] footwear product having as an element thereof an [insert or immovable
insert portion] as claimed in claim 1." This construction is logical. Defining
"orthotic device" as a "shoe built to have the shape of the interior of the
insert", as suggested by plaintiffs, claim 2 would read: "[a] footwear product
having as an element thereof [a shoe built to have the shape of the interior of
the insert] as claimed in claim 1." Obviously, a "shoe built to have the shape
of the interior of the insert" cannot be considered "an element" of a footwear
product. Thus, the latter definition of "orthotic device" renders claim 2
nonsensical. Accordingly, plaintiffs’ proposed construction cannot be correct.
The appellate court went on to conclude that the "heel seat" of the removable insert or immovable insert portion must itself be "rigid," not rigid only in conjunction with the rear of the upper of the shoe, and not merely semi-rigid.
Here, the patentee’s usage of the phrase "semi-rigid material" in the
specification, when referring to the material to be used in the manufacture of
the orthotic device generally, is insufficient to disclaim the requirement in
claim 1 that the material used to construct the "heel seat" be "rigid".
Moreover, the application’s file history, the other place in which an
inventor may lay out a special definition of a claim term, id., does not contain
any evidence to support the plaintiffs’ proposed alternative definition of
"rigid". When the application that matured into the ’052 patent was submitted,
claim 1 did not include the term "rigid" in reference to the "heel seat". The
Patent and Trademark Office ("PTO") rejected plaintiffs’ application, ruling the
invention would have been obvious in light of certain prior art. The applicants
argued against this rejection, and eventually added certain amendatory language
to claim 1 in an attempt to overcome the rejection. However, the patent examiner
still objected and agreed to issue the ’052 patent only if the plaintiffs would
adopt additional limitations suggested in an Examiner’s Amendment, including the
Plaintiffs argue that because the patent examiner did not
explain his rationale for requiring the term "rigid" in the Examiner’s
Amendment, the court has no basis from which to infer that the addition of this
term is intended to limit the claimed invention to a "rigid" heel seat. This
argument is unpersuasive. The Examiner Interview Summary Record clearly states
that the plaintiffs "agreed to amend claim 1 as in attached [Examiner’s
Amendment] to overcome the previous rejection." The prosecution history reveals
that claim 1 was rejected in conjunction with claim 6; although claim 6 did not
issue as part of the ’052 patent, it contained language relevant to claim 1 in
that it specified "a deep heel seat to cup the calcaneus . . . the heelcup being
more rigid than the flanges." The examiner originally rejected both claims as
unpatentable in view of an article by Jay, U.S. Patent No. 4,232,457 ("Mosher")
and U.S. Patent No. 4,446,633 ("Scheinhaus"). Mosher discloses a flexible
orthotic insert, and the patent examiner explained that "it is inherent in the
structure of Jay that the heel cup is more rigid than the flanges as claimed".
This alone provides a reasonable basis from which a court could conclude that
the amendment was related to avoiding the prior art.
However, we need not rely on this circumstantial evidence. The Supreme Court,
in discussing a situation where the PTO record did not reveal the reason for a
claim amendment, has stated that "[w]here no explanation is established, . . .
the court should presume that the PTO had a substantial reason related to
patentability for including the limiting element added by amendment."
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 32-33 (1997). The
Court explained that this presumption "gives proper deference to the role of
claims in defining an invention and providing public notice, and to the primacy
of the PTO in ensuring that the claims allowed cover only subject matter that is
properly patentable in a proffered patent application." Id. at 33-34. If the
additional limitation of rigidity in the Examiner’s Amendment was improper or
unnecessary, plaintiffs should have raised this issue by appeal before the PTO.
They did not.
The patentee, of course, is only entitled to protection of the
claims as issued, not as filed. As this court held in Unique Concepts, Inc. v.
Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991), where a patent specification
includes a description lacking a feature, but the claim recites that feature,
the language of the claim controls. In that case, the claim excludes the
described embodiment, which is deemed dedicated to the public. Id. at 1562-63.
Even interpreting the specification language to permit semi-rigid material
elsewhere, the language of claim 1 requires that the heel seat portion of the
orthotic device be "rigid". Thus, plaintiff surrendered coverage of orthotic
devices with semi-rigid heel seats. Given plaintiffs’ admission that the heel
seat in the immovable insert portion of the accused shoe is only semi-rigid, the
district court properly granted summary judgment of non-infringement on this
The district court also held that no material factual dispute existed regarding the limitation "heel cup being medially offset and laterally tilted by a sufficient amount to maintain the calcaneus in approximately 5 degrees of varus". Schoenhaus, 351 F. Supp. 2d at 324. The parties disagree over whether expert testimony offered by the plaintiffs on this point in summary judgment papers is admissible, and whether certain language in the specification allows other parts of the shoe to provide the requisite five degrees of rotation. Because we have determined that the claim limitation requiring a rigid heel seat does not read on the immovable insert portion of the accused shoe, we need not determine whether a material factual dispute exists on these issues.