Print PDF

A Claim Term Should Be Given the Same Meaning in Different Claims

March 15, 2006

Decision icon Decision

Last Month at the Federal Circuit - April 2006

Judges: Michel (author), Gajarsa, Linn

In Schoenhaus v. Genesco, Inc., No. 05-1278 (Fed. Cir. Mar. 15, 2006), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement, holding that the district court correctly construed the claim and correctly determined one of the claim limitations was not present in the accused line of footwear.

The patent-in-suit, U.S. Patent No. 5,174,052 (“the ’052 patent”), is directed to an orthotic device for preventing hyperpronation of the foot. While the patent application was pending, the parties to the suit spent two and a half years negotiating a license agreement, but ultimately, defendants Genesco, Inc. and Johnston & Murphy, Inc. (collectively “Genesco”) withdrew from negotiations. Eight years after negotiations ended, Dr. Schoenhaus discovered what he believed to be an infringing shoe line in a Johnston & Murphy store.

Dr. Schoenhaus and Mr. Richard Jay (collectively “Schoenhaus”) filed suit, alleging infringement of the ’052 patent, misappropriation of trade secrets, conversion, and unjust enrichment. In response, Genesco asserted a counterclaim of invalidity. In its decision on SJ, the district court construed two limitations of claim 1 of the ’052 patent and found as a matter of law that the limitations were not present in the accused shoes. As a result, the district court granted Genesco’s motion for SJ of noninfringement, dismissed the counterclaim of invalidity as moot, and stayed further proceedings on the state law claims pending the Federal Circuit’s review of the infringement question.

On appeal, Schoenhaus argued that the district court erred in its claim construction. The primary issue on appeal was whether the limitations of claim 1 of the ’052 patent must be found in a removable insert or immovable insert portion of a shoe, or whether other parts of the shoe construction can meet the limitations. Relying on the specification, Schoenhaus urged the latter.

In its analysis, the Federal Circuit first examined the use of the term “orthotic device” in the claims. The term appears in claims 1 and 2, 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 havedifferent meanings at different portions of the claims.’” Slip op. at 5 (citation omitted) (emphasis omitted). Because inserting Schoenhaus’s proposed definition made claim 2 nonsensical, the Federal Circuit rejected that construction. Therefore, the Court construed the term “orthotic device” to refer to a removable insert or immovable insert portion of a shoe, and any subsidiary limitations of claim 1 must be found in the insert, not another part of the shoe.

Turning to the subsidiary limitation of rigidity in claim 1, the Federal Circuit affirmed the district court’s construction that the term “rigid,” as used in “a deep rigid heel seat,” requires that the heel seat be “rigid” on its own. The Court rejected Schoenhaus’s argument that the rigidity limitation was met because the “semi-rigid” insert effectively became “rigid” when viewed together with the rear portion of the shoe upper that surrounds the heel. The Court also rejected Schoenhaus’s alternative argument that the term “rigid” should be construed to include “semi-rigid” based on the specification. The Federal Circuit acknowledged that patentees are free to act as lexicographers by defining claim terms in a patent specification or file history. However, the Court rejected Schoenhaus’s proposed definition of “rigid” because the use of the phrase “semi-rigid material” in the specification was insufficient to disclaim the requirement in claim 1 that the “heel seat” be “rigid.” In addition, the Court noted that the file history did not contain any evidence to support Schoenhaus’s proposed construction. While claim 1, as originally filed, did not include the “rigid” limitation, Schoenhaus adopted that limitation during prosecution when suggested by the examiner. The PTO record did not reveal the reason for the claim amendment; therefore, the Federal Circuit presumed that the limitation was added because of a substantial reason related to patentability. Furthermore, the Court explained that a patentee is only entitled to protection of the issued claims, not the claims as originally filed.

Because Schoenhaus admitted that the heel seat in the accused shoe was only semi-rigid, the Court held that the district court properly granted SJ of noninfringement.