Knowledge of Accused Product Provides Meaningful Context for Claim Construction
March 23, 2006
Last Month at the Federal Circuit - April 2006
Judges: Lourie, Rader (author), Bryson
In Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., No. 05-1103 (Fed. Cir. Mar. 23, 2006), the Federal Circuit vacated a district court’s claim construction relating to features of a softball bat and remanded the case for reconsideration of the disputed claim construction in light of the Federal Circuit’s opinion.
The patent at issue, U.S. Patent No. 5,415,398, (“the ’398 patent”), is owned by Wilson Sporting Goods Company (“Wilson”) and covers a softball bat containing an insert within the bat body, which improves impact response. The insert is separated from theouter bat frame by a gap, but adjoins the bat frame at its ends. Hillerich & Bradsby Company (“H&B”) brought a DJ action for noninfringement and invalidity of the ’398 patent. After the district court narrowly construed the claim terms “gap” and “insert,” the parties stipulated that the accused device did not infringe and the district court entered a stipulated Rule 54 judgment of noninfringement.
On appeal, the Federal Circuit began by explaining that “[w]hile a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction.” Slip op. at 6. The Court noted that neither the trial court nor the parties supplied it with any information about the accused products, and thus “this sparse record lacks the complete context for accurate claim construction.” Id. at 7. Despite the impediments to a full review, the Court perceived some flaws in the district court’s claim construction and thus offered some analysis to guide the district court on remand.
The Court began by examining the claim term “gap,” which the district court construed to mean the same in all claims: “a single continuous space or void between the interior of the frame and the exterior of the insert great enough to allow for deflection across the gap.” This definition precluded any contact between the bat frame and the insert at any point along the length of the insert before impact.
The Federal Circuit concluded that the various claims in the ’398 patent contain distinctions that cast doubt on the district court’s interpretation of “gap” and its conclusion that all of the disputed claims require a “single continuous space or void.” For example, claim 1 features the gap in at least part of an annular shape, claim 15 makes the gap itself annular, and claim 18 has no annular requirement. Based on these differences in the claims, the Court concluded that claims 1 and 18 recited a description of the gap that did not preclude some contact between the frame and the insert. Thus, the Court defined “gap” for the purposes of claims 1 and 18 as merely “a separation.”
The district court also construed the term “insert” to require a hollow insert. The Federal Circuit noted, however, that only claim 15 implicitly required a hollow insert by calling for a “hollow bat.” Although the preferred embodiment of the invention has a hollow insert, the Court refused to read in a hollow insert claim limitation from the specification. It concluded that “insert” may be broadly defined to encompass both hollow and solid inserts, and yet have the same meaning in all claims.
The Federal Circuit also disagreed with the district court’s interpretation that the insert must be rigid. The Court noted that the term “rigid” is only used to describe the insert in claim 3 of the ’398 patent, and the single use of the term “rigid” does not import a “rigid” limitation into other claims. Rather, it implies that the term “insert,” when used elsewhere in the ’398 patent, does not inherently carry a “rigid” limitation. Moreover, the Court noted that during prosecution, the inventor distinguished a prior art reference by adding the “rigid” limitation to claim 3, but specifically did not include the “rigid” limitation in claim 15. Therefore, the district court erred in defining “insert” in all of the claims to be “rigid.”
In conclusion, the Federal Circuit reiterated that it “lacked the full context of this infringement action and the claim construction component of infringement because the record 17 Last on appeal contains no description of the accused infringing devices.” Slip op. at 13-14. For example, the Court explained that it was puzzled by the relevance of “rigid” in the claim construction analysis. Without some record evidence about the accused devices, the Court did not fully understand the necessity for inserting “rigid” into claims without that express language. Moreover, the Court stated, it could not “assess the meaning of ‘rigid’ in the context of this invention.” Id. at 15. The Federal Circuit thus instructed the district court to reconsider its construction in light of the Court’s opinion and “in the context of a detailed examination of the alleged infringement of particular claims by the accused devices.” Id.