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A Claim Term Should Not Be Read to Encompass a Meaning Broader Than Its Ordinary and Customary Meaning Unless the Intrinsic Record Supports the Broader Meaning

February 06, 2008

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Last Month at the Federal Circuit - March 2008

Judges: Newman, Schall, Linn (author)

[Appealed from: D. Minn., Judge Doty]

In Miken Composites, L.L.C. v. Wilson Sporting Goods Co., No. 06-1628 (Fed. Cir. Feb. 6, 2008), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement in favor of Miken Composites, L.L.C. (“Miken”), finding that the district court did not err in its claim construction and that it correctly concluded that Miken’s bats did not infringe U.S. Patent No. 5,415,398 (“the ’398 patent”), assigned to Wilson Sporting Goods Company (“Wilson”).

The ’398 patent relates to softball and baseball bats, particularly to the use of structural members inside such bats to improve their impact response. The bat design disclosed in the ’398 patent includes a tubular insert suspended within an impact portion of the bat’s tubular frame. The insert has an outer diameter that is slightly less than the inner diameter of the impact portion, and only contacts the tubular frame at its ends. Such a construction creates a narrow, uniform gap between the insert and the inner wall of the impact portion, and provides many advantages.

Miken brought a DJ action against Wilson seeking, inter alia, a declaration that several of its bats (categorized as “carbon bats” and “non-carbon bats”) did not infringe certain claims of the ’398 patent. Wilson counterclaimed, alleging infringement of the ’398 patent. The parties’ dispute centered around two limitations in claims 1 and 18 of the ’398 patent. The first of these is the “insert” limitation found in both claims 1 and 18. Specifically, claim 1 recites a bat comprising, inter alia, a frame and “an insert positioned within the frame,” and claim 18 recites a bat comprising, inter alia, “at least one insert.” The second is the “gap” limitation expressly recited in claim 1 as a “gap forming at least part of an annular shape” between the insert and the bat frame, such that “the frame [is] elastically deflectable across the gap to operably engage the insert.” Although claim 18 does not recite a “gap” like claim 1, it does require that “the impact portion be[] inwardly elastically deflectable such to establish a tight interference fit between the insert and the impact portion.”

After the district court issued a claim construction order, Miken moved for SJ of noninfringement as to claims 1 and 18, and of invalidity as to claim 18. The district court granted Miken’s noninfringement motion, but denied its invalidity motion. The district court found that the carbon bats did not infringe claims 1 and 18 because “they do not have an insert.” Slip op. at 6. It also found that the noncarbon bats did not infringe because they do not “contain a ‘gap’ for purposes of claim 1, or a space sufficient to allow contact upon elastic deflection, for purposes of claim 18.” Id. Wilson appealed.

On appeal, the Federal Circuit first addressed the district court’s construction of the term “insert.” The district court held that the term “insert” did not possess a particular meaning in the field of art and that given its ordinary and customary meaning, “insert” meant “something inserted or intended for insertion.” Id. at 7. The Federal Circuit agreed. It noted that nothing in the claims or specification indicated, explicitly or implicitly, that the inventor used the term “insert” in a novel way or intended to impart a novel meaning to it. Rather, noted the Court, the claims and written description of the ’398 patent consistently used the term “insert” in the sense of its ordinary meaning as “something inserted or intended for insertion.” Moreover, the Court found that the parties presented no evidence suggesting that the term “insert” in the context of the ’398 patent had a particular meaning different from the ordinary and customary meaning.Although the Court noted that the term “insert” was a common term used to denote structure, it rejected Wilson’s argument that it did not matter whether an insert was placed into a pre-existing frame or whether a frame was built around it, stating that such an argument ignored the ordinary and customary meaning.

The Federal Circuit also disagreed with Wilson’s argument that the district court impermissibly imported a process limitation into a product claim. It explained that just because the “ordinary meaning has functional attributes does not change the fact that the claim recites a structural component, albeit one possessed with certain understood characteristics.” Id. at 9. The Court reiterated its holding in Nystrom v. Trex Co., 424 F.3d 1136, 1145-46 (Fed. Cir. 2005), “that the ‘broadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in [Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].’” Slip op. at 10 (alteration in original). Here, noted the Court, Wilson had not identified any such support in the intrinsic record. Accordingly, and because the Court discerned no claim construction error in the district court’s treatment of the “insert” limitation, it affirmed this aspect of the judgment.

Next, the Court addressed the district court’s construction of the “gap” limitation. The district court had adopted the Federal Circuit’s construction of “gap” from a prior case, Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006), involving the ’398 patent. Given that the district court had simply adopted the Federal Circuit’s claim construction and analysis from Hillerich, the Federal Circuit rejected Wilson’s arguments with respect to the “gap” limitation and affirmed the district court’s construction.

The Federal Circuit next addressed the district court’s grant of SJ of noninfringement with respect to the carbon bats. As for literal infringement, the Court explained that Wilson had not pointed to any evidence that established that any component of Miken’s carbon bats was ever “inserted or intended for insertion.” Thus, the Court concluded that there was no genuine issue of material fact and Miken was entitled to JMOL. With respect to Wilson’s allegation of infringement under the DOE, the Court agreed with the district court that Wilson’s evidence demonstrated, at most, the equivalency of the accused products as a whole, and that Wilson did not provide any factual basis or expert testimony to support “an objective inquiry on an element-by-element basis” with respect to the insert limitation. Slip op. at 14. The Court concluded that Wilson’s lawyer argument and generalized testimony about the accused product argument failed to create a genuine issue of material fact that would prevent the grant of SJ. Because the Court found the lack of an “insert” was dispositive, it did not address the issue regarding any existence of a “gap” in the carbon bats. Thus, it affirmed the judgment of noninfringement with respect to the carbon bats.

Finally, the Federal Circuit addressed the district court’s grant of SJ of noninfringement with respect to the noncarbon bats, which indisputably contained “inserts.” The Court agreed with the district court’s determination that the noncarbon bats did not infringe claims 1 or 18, because they did not contain a “gap” between the insert and impact portion. It explained that even when the evidence is viewed in the light most favorable to Wilson and all reasonable inferences drawn in its favor, Wilson had failed to establish a genuine issue of material fact sufficient to preclude SJ. Accordingly, it also affirmed the judgment of noninfringement with respect to the noncarbon bats.