Hillerich & Bradsby (H & B) went to bat for a declaratory judgment action against 5,415,398, owned by Wilson Sporting Goods, and got a solid hit with the trial court: noninfringement, plus costs & fees. Then it was Wilson's time at the plate in the appeals court (CAFC 05-1103). Owing to district court incompetence, this case is another log on the fire for a national patent court.
The ’398 patent claims a softball bat that incorporates interior structural members to improve its impact response. The primary feature of the invention is an insert within the body of the bat that improves the bat’s hitting properties.
There is a gap between the bat frame and insert, which makes the bat outer wall and insert jointly act like a spring, giving the bat more power. The construction also lightens the bat.
In its Markman hearing, the trial court construed, inter alia, the terms “gap” and “insert.” The trial court determined that “gap” in all claims meant “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.” Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., No. 00-CV-6517, slip op. at 10 (N.D. Ill. Aug. 7, 2003) (Order), 10. That definition precluded any contact between the bat frame and the insert at any point along the length of the insert before impact. The trial court construed “insert” in all claims to mean a “rigid, circular, hollow tube having an outer diameter less than the inner diameter of the tubular frame impact portion.” Order, at 12.
Based on those claim constructions, the parties dispute the meaning of both terms. Specifically, the parties dispute the application of a single definition of “gap” to claims 1 and 18, and the preclusion of any contact before impact in the definition of “gap.” On the term “insert,” the parties similarly dispute the application of the trial court’s definition to all contested claims, and the inclusion of “rigid” and “hollow tube” within that definition.
Lacking information about the accused product, the CAFC struggled to get a grip.
In this case, despite entry of a final judgment, neither the trial court nor the parties supplied this court with any information about the accused products. Thus, this record affords this court no opportunity to compare the accused products to the asserted claims. Accordingly, this court cannot assess the accuracy of any infringement or validity determination. Furthermore, this sparse record lacks the complete context for accurate claim construction. Thus, without a record of the accused products, this appeal assumes many attributes of a proceeding seeking an advisory opinion on the scope of the ’398 patent. This court has noted the problems of an appeal with such a limited record. Bayer AG. v. Biovail Corp., 279 F.3d 1340, 1349 (Fed. Cir. 2002) (holding that it was premature for this court to engage in its own claim construction where the district court had not performed a comprehensive claim construction based on a complete record); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1160 n.7 (Fed. Cir. 1997) (reaching a different claim construction with respect to the same patent that had been considered in a prior decision of the court involving a preliminary injunction motion).
In this case, despite entry of a final judgment, neither the trial court nor the parties supplied this court with any information about the accused products. Thus, this record affords this court no opportunity to compare the accused products to the asserted claims. Accordingly, this court cannot assess the accuracy of any infringement or validity determination. Furthermore, this sparse record lacks the complete context for accurate claim construction. Thus, without a record of the accused products, this appeal assumes many attributes of a proceeding seeking an advisory opinion on the scope of the ’398 patent. This court has noted the problems of an appeal with such a limited record. Bayer AG. v. Biovail Corp., 279 F.3d 1340, 1349 (Fed. Cir. 2002) (holding that it was premature for this court to engage in its own claim construction where the district court had not performed a comprehensive claim construction based on a complete record); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1160 n.7 (Fed. Cir. 1997) (reaching a different claim construction with respect to the same patent that had been considered in a prior decision of the court involving a preliminary injunction motion).
Despite the impediments to a full review, i.e., the sparse record, this court perceives some flaws in the trial court’s claim construction that led to the entry of the stipulated judgment of non-infringement. Accordingly, rather than merely remand for development of a complete record, this court offers some analysis to guide the trial court upon remand.
Ignoring intrinsic evidence, the trail court used the dictionary to determine "gap".
The various claims in this patent, however, contain distinctions that cast doubt on the trial 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; claim 18 has no annular requirement. Under this court’s case law, the same terms appearing in different claims in the same patent—e.g. “gap” in claims 1 and 15—should have 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); Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[C]laim terms are normally used consistently throughout the patent.”). In this case, the claims use the term “gap,” but then modify it differently to suggest differences in the geometry of the “gap” in the various claims.
The various claims in this patent, however, contain distinctions that cast doubt on the trial 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; claim 18 has no annular requirement. Under this court’s case law, the same terms appearing in different claims in the same patent—e.g. “gap” in claims 1 and 15—should have 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); Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[C]laim terms are normally used consistently throughout the patent.”). In this case, the claims use the term “gap,” but then modify it differently to suggest differences in the geometry of the “gap” in the various claims.
The appeals court likewise picked on the trial court's interpretation of "insert", particularly inserting "rigid" into the claim construction.
For instance in this case, this court is puzzled by the relevance of “rigid” in this claim construction analysis. Without the full infringement context, including some record evidence about the accused devices, this court does not fully understand the necessity for inserting “rigid” into claims without that express language.
The appeals court then constructed a muddy, self-contradictory rule of thumb for using an accused product as a basis for claim construction: don't do it, except if you don't have anything else to go on. The "except" part is really bad case law. Phillips v. AWH provided sufficient guidance as to the priority stack of evidence to employ in claim construction - just go down the evidence stack from intrinsic to extrinsic; something's going to be there to hang a claim construction hat on.
This court, of course, repeats its rule that “claims may not be construed with reference to the accused device.” NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc). As noted earlier, that rule posits that a court may not use the accused product or process as a form of extrinsic evidence to supply limitations for patent claim language. Thus, the rule forbids a court from tailoring a claim construction to fit the dimensions of the accused product or process and to reach a preconceived judgment of infringement or noninfringement. In other words, it forbids biasing the claim construction process to exclude or include specific features of the accused product or process. The rule, however, does not forbid awareness of the accused product or process to supply the parameters and scope of the infringement analysis, including its claim construction component. In other words, the “reference” rule accepted in Pall Corp., Multiform Dessicants, and Scripps Clinic does not forbid any glimpse of the accused product or process during or before claim construction. Pall Corp., 181 F.3d at 1308; Multiform Dessicants, 133 F.3d at 1478; Scripps Clinic, 927 F.2d at 1580. In light of these principles, if the litigants cannot themselves inform a trial court of the specific issues presented by the infringement inquiry—that is, issues of the breadth of the claim construction analysis and the most useful terms to facilitate that defining process—then a trial court may refer to the accused product or process for that context during the process.
Rodney D. Ryder
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