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Support for Cybor?
Using a procedural approach to claim construction, and a somewhat dubious assertion concerning its prior interpretation of the claim phrase “an insert,” the federal circuit held that the claim phrase “an insert” imposes a process limitation. More interesting still, perhaps, is a signal provided in a lengthy footnote that there are members of the court who may be prepared to defend Cybor.
Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 2006-1628 (February 6, 2008) (affirming a summary judgment of noninfringement in favor of a declaratory plaintiff) involves the use of tubular inserts to make baseball or softball bats. According to the court, the patent involved (U.S. Patent No. 5,415,398) describes inserting a tubular insert into the interior of the bat in the area where the bat normally impacts a ball. The use of an insert produces a gap between the insert and the exterior wall of the bat. This technology, according to the court’s description, “adds 'snap' to the rebound of the bat after coming into contact with a ball, and thus 'yields an improved transfer of power to the batted ball, and a heightened ‘slugging’ capacity for the bat.' Id. col.3 ll.36–47.” Slip op. at 2-3.
The disputed claims include the following:
1. A bat, comprising: a hollow tubular bat frame having a circular cross-section; and an insert positioned within the frame, the insert having a circular cross-section, the insert having first and second ends adjoining the tubular frame, the insert being separated from the tubular frame by a gap forming at least part of an annular shape along a central portion between said first and second ends, the frame elastically deflectable across the gap to operably engage the insert along a portion of the insert between the insert first and second ends.
18. A bat, comprising: a hollow tubular bat frame having a small-diameter handle portion and a large-diameter impact portion having a circular cross-section with an inner and outer diameter; at least one insert having a substantially circular cross-section with an outer diameter less than the inner diameter of the frame impact portion, the insert being held within the impact portion; and the impact portion being inwardly elastically deflectable such to establish a tight interference fit between the insert and the impact portion.
Slip op. at 4 (emphasis provided by the court). While the description provided by the court seems mostly directed to the manufacture of aluminum bats, the accused bats include carbon fiber bats that are manufactured using a layering process. The dispute concerns whether the layering process includes an insert, and if it does, whether there is a gap between the insert and the frame of the bat.
Addressing the meaning of “insert,” the district court concluded that the accused bats do not have an insert or its equivalent because “insert” means “something inserted or intended for insertion.” Slip op. at 7. The federal circuit agreed, applying a procedural methodology to understanding the claim meaning:
[N]othing in the claims or specification indicates, explicitly or implicitly, that the inventor used the term in a novel way or intended to impart a novel meaning to it. To the contrary, the claims and written description of the ’398 patent consistently use the term “insert” in the sense of its ordinary meaning as “something inserted or intended for insertion.” . . . Had the patentee, “who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting.” Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993). Moreover, the parties have presented no evidence to suggest that the term “insert” in the context of the patent has a particular meaning differing from the ordinary and customary meaning in the field of art encompassed by the ’398 patent. The term “insert” is a common term used to denote structure. To contend, however, as Wilson does, that it does not matter whether an insert is placed into a pre-existing frame or whether a frame is built around it ignores that ordinary and customary meaning, notwithstanding Wilson’s attempts to categorize the term “insert” as “purely structural.” The issue would have been different if the claims contained the language argued in Wilson’s briefs; to wit, “internal structural member,” Wilson Br. at 31, 38, or “multi-wall product,” Reply Br. at 3, but they do not. It is the language of the claims not the argument that governs.As for Wilson’s contention that the district court impermissibly imported a process limitation into a product claim, we disagree. As we have discussed, the district court merely adopted an ordinary meaning of the term “insert.” Summary Judgment Opinion at 11. That this ordinary meaning has functional attributes does not change the fact that the claim recites a structural component, albeit one possessed with certain understood characteristics.
Slip op. at 8-9. The federal circuit had previously interpreted the claim language to mean “anything put or fit into something else,” Slip op. at 7, the court seemed to find no inconsistency between its prior interpretation and its interpretation in the present matter. However, it apparently did believe that a lengthy footnote was necessary to emphasize this, as well as the merits of national stare decisis with respect to claim construction. The footnote from Slip op. at 10 is reproduced below and--a word of caution--it may be something of a frustrating read or those who think that in Phillips the federal circuit largely abandoned the goal of national uniformity potentially promised by Cybor.
We note that the claim construction we have affirmed in this case is fully consistent with the interpretation given to the same limitation in Hillerich, 442 F.3d at 1330 (“something inserted or intended for insertion”), and DeMarini, 239 F.3d at 1330 (“anything put or fit into something else”). Indeed, for us not to adopt the same claim construction in a case such as this, in which the construction of the claim term in question was a necessary predicate to the determination of a prior litigation before this court and is evident from the face of the intrinsic record without resort to expert testimony, would run counter to the Supreme Court’s guidance on stare decisis in Markman: “treating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis.” Markman, 517 U.S. at 391; see also Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take our task lightly in this regard, as we recognize the national stare decisis effect that this court’s decisions on claim construction have.”); Cybor, 138 F.3d at 1455 (noting that in Markman “the Supreme Court endorsed this court’s role in providing national uniformity to the construction of a patent claim”); Zenith Radio Corp. v. United States, 783 F.2d 184, 187 (Fed. Cir. 1986) (holding that stare decisis applied where resolution of issue was a “necessary predicate” to earlier Federal Circuit ruling).
Posted by at February 8, 2008 11:58 AM in Claim Construction, News & Commentary, Recent Cases | Permalink
