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USFC2006-1090-03
{62FC17D7-FB28-4C77-859E-13A86226A88D}
{70873}
{32-060516:083548}
{050806}
APPELLEE'S
BRIEF
I
I
WEST/CPS
06-1090
I
UNITED
STATES
COURT
OF APPEALS
AKEVA
I
I
FOR THE FEDERAL
L.L.C,
Plaintiff-Appellant,
• xHE 1"r-u="'V.
I
ADIDAS-SALOMON
AG,
Defendant,
I
I
and
ADIDAS
AMERICA,
INC.,
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I
Defendant-Appellee.
APPEAL
MIDDLE
I
(336) 607-7300
STATES
DISTRICT
COURT
FOR THE
OF NORTH CAROLINA
IN CASE NO. I:03-CV-01207,
JUDGE WILLIAM L. OSTEEN, SR.
OF DEFENDANT-APPELLEE
NC 27101
LLP
ADIDAS
AMERICA,
INC.
Douglas J. Kline
Richard B. Myrus
William A. Meunier
GOODWIN
PROCTER
LLP
53 State Street
Boston,
MA 02109
(617) 570-1000
May 8, 2006
I
THE UNITED
James H. Kelly, Jr.
KILPATRICK
STOCKTON
1001 West Fourth Street
Winston-Salem,
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FROM
DISTRICT
BRIEF
I
CIRCUIT
Attomeys
for Defendant-Appellee
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!
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!
CERTIFICATE
OF INTEREST
Counsel for the appellee adidas America, Inc. certifies the following
if applicable;
use extra sheets if necessary):
1. The full name of every party or amicus represented by me is:
adidas America, Inc.
(use "None"
2. The name of the real party in interest (if the party named
real party in interest) represented
by me is:
adidas America, Inc.
in the caption
3. All parent
that own 10 percent
corporations
and any publicly
held companies
more of the stock of the party or amicus curiae represented
adidas North America, Inc.; adidas-Salomon
AG
4. [] There
is no such corporation
as listed in paragraph
5. The names of all law firms and the partners
party or amicus
now represented
is not the
or
by me are:
3.
or associates
that appeared
by me in the trial court or agency
for the
or are expected
to appear in this court are:
Goodwin Procter LLP, Testa, Hurwitz & Thibeault LLP, Kilpatrick Stockton LLP;
Douglas J. Kline, Richard B. Myrus, William A. Meunier,
Keith A. Zullow, James
H. Kell7, Jr., Steven Gardner, J. Jason Link, Brian M. Gaff, Stephen D. Whetstone
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5/8/06
Date
Signature
of counsel
Douglas J. Kline
Printed name of counsel
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tq/r.A
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TABLE
OF CONTENTS
CASES
....................................................................
STATEMENT
OF RELATED
v
STATEMENT
OF THE ISSUES ..............................................................................
1
STATEMENT
OF THE CASE
...............................................................................
2
STATEMENT
OF THE FACTS ...............................................................................
5
I
I
I.
The Patents-In-Suit
..............................................................................
5
A.
The '471 Patent ..........................................................................
5
B.
The '300 Patent ..........................................................................
8
I
I
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II.
SUMMARY
ARGUMENT
I
I
I
1.
The Secured
Rear Sole ...................................................
10
2.
The Flexible
Region
13
The District
Court's
And Plate ......................................
Claim Construction
OF THE ARGUMENT
I
.............................
.....................................................................
..........................................................................................................
I.
Claim Construction
II.
The District Court Correctly
Construed "Secured"
In The '471 Patent ...........................................
A.
Standard
.............................................................
B.
16
18
22
22
24
The '471 Patent Disclaims
Rear Soles That Are Not Detachable
I
Rulings
.......................................
Akeva Has Failed To Identify Any
Basis For Reversing The District Court's
Construction
Of"Secured"
In The '471 Patent
l.
I
Akeva
Misstates
The District
Of"Secured"
......................
24
28
The Basis For
Court's Construction
In The '471 Patent ...................................
28
I
2.
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I
Akeva's
Reliance
On Liebel-Flarsheim
Is Misplaced...
30
I
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I
Akeva's New Argument Fails To
Refute The '471 Patent's Disclaimer
.
All Shoes Lacking
III.
I
The '300 Patent Disclaims
That Are Permanently
B.
C.
Akeva's
o
I
I
I
I
I
Locked
In Place ...................................
But Permanently
Attached
Rear Sole ..............
Argument
O.
IV.
34
37
Is Baseless..
40
Akeva's
Two Invention
Theory
......................
40
Akeva Has Failed To Identify Any Statement
In The '300 Patent Contradicting
Its
Express Disclaimer Of All Shoes Lacking
A Means For Selectively
Locking
The Rear Sole Into Different Positions ..........................
CONCLUSION
I
I
Rear Soles
"More Than One Invention"
Support
I
34
The ' 126 Patent Does Not
l.
I
I
31
The '300 Patent Discloses
An Adjustable
I
I
Rear Sole ..................
The District Court Correctly Construed
"Secured"
In The '300 Patent ............................................................
A.
I
I
A Detachable
Of
The District Court's Construction
Is
Correct Even Absent The '300 Patent's
Disclaimer
adidas Also Is Entitled To Judgment Of
Non-Infringement
Of The '300 Patent Because
The Accused Shoes Lack The Claimed "Flexible
42
...............
45
Plate" ...................
49
.......................................................................................................
52
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TABLE
Cases
Astrazeneca
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OF AUTHORITIES
AB v. Mutual
384 F.3d
Phaml.
Co.,
1333 (Fed. Cir. 2004) ...................................................................
Bell Atlantic Network Services, Inc. v. Covad Commc'ns
Group, Inc.,
262 F.3d 1258 (Fed. Cir. 2001) ................................................................
45,46,52
C.R. Bard, Inc. v. United States Surgical Corp.,
388 F.3d 858 (Fed. Cir. 2004) ............................................................................
26
CSS Fitness,
288 F.3d
19
Inc. v. Brunswick Corp.,
1359 (Fed. Cir. 2002) ..........................................................................
Curtiss-Wright
Flow Control Corp. v. Velan, Inc.,
348 F.3d 1374 (Fed. Cir. 2006) ................................................................
Laitram Corp. v. Morehouse
Indus., Inc.,
143 F.3d 1456 (Fed. Cir. 1998) ..........................................................................
Liebel-Flarsheim
Co. v. Medrad, Inc.,
358 F.3d 898 (Fed. Cir. 2004) .......................................................................
Markman
v. Westview
Instruments,
517 U.S. 370, 116 S.Ct. 1384 (1996) .................................................................
Markman v. Westview Instruments,
Inc.,
52 F.3d 967 (Fed. Cir. 1995) .........................................................................
Microsoft Corp. v. Multi-Tech
Sys., Inc.,
357 F.3d 1340 (Fed. Cir. 2004) ..........................................................................
Nystrom v. Trex Co.,
424 F.3d 1136 (Fed. Cir. 2005) ................................................................
On Demand
Machine
47,48,52
41
30,31
Inc.,
Corp. v. Ingrain
23
23,41
41
48,49,52
Indus., Inc.,
442 F.3d 1331, 2006 U.S. App. LEXIS
7889 (Fed. Cir. 2006) ...............
I
iii
I
passim
24,48,52
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I
!
I
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) ...................................................................
Renishaw PLC v. Marposs Societa' Per Azioni,
158 F.3d 1243 (Fed. Cir. 1998) ..........................................................................
Cardiovascular
22
I
SciMed
242 F.3d 1337 (Fed. Cir. 2001) ...................................................................
passim
I
Texas Digital Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193 (Fed. Cir. 2002) ...................................................................
passim
Vitronics Corp. v. Conceptronic,
Inc.,
90 F.3d 1576 (Fed. Cir. 1996) .....................................................................
passim
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Life Sys., Inc. v. Advanced
passim
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iv
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Sys., Inc.,
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STATEMENT
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CASES
No other appeal in or from this action has previously
other appellate
Counsel
directly
I
OF RELATED
been before
this or any
court.
is unaware
of any other case, in this or any other court, known
affect by this Court's
decision
in this appeal.
to be
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STATEMENT
1.
Whether
the district
U.S. Patent No. 6,662,471
where
the '471 patent
OF THE ISSUES
court correctly
(the '471 patent)
expressly
construed
as requiring
the asserted
a detachable
limits the scope of its invention
claims
of
rear sole
to shoes having
such a sole:
The present
invention
relates
generally
to multi-purpose
athletic
shoes
and, more particularly,
to athletic shoes with
interchangeabledetachable
rear soles that provide extended and
more versatile life and better performance
in terms of cushioning
and
spring.
I
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[I]n a radical
departure
I
I
shoes, the shoe of the
present invention incorporates
a heel structure, including a
detachable
rear sole, that significantly
alleviates heel wear problems
associated with conventional
shoes and provides enhanced cushioning
and/or
spring.
2.
Whether
U.S. Patent
selectively
the district
No. 6,604,300
locked
scope of its invention
into different
court correctly
(the '300 patent)
in different
positions
to shoes having
construed
as requiring
the asserted
claims
selectively
locking
upper of the shoe.
the invention
where the '300 patent expressly
a means for selectively
includes
the rear sole relative
of
a rear sole that can be
locking
limits the
the rear sole
positions:
In all embodiments,
I
from conventional
mechanical
means for
to the rear sole support
and
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3.
Whether
infringement
I
I
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of the '300 patent
asserted
defines
a "flexible
central
portion
plate"
I
locked
adidas
requires
relative
Inc. is a U.S. company
other things, produces
well known
adidas and Reebok
footwear
run by David
patents
that are assigned
and has never licensed
alleges that various
shoe heel technology.
this Court's
to Akeva.
having
and (c) Akeva
concedes
and apparel
Akeva,
to licensing
adidas shoe models
Group
under the
L.L.C. ("Akeva")
a portfolio
is
of Meschan's
has never sold any products
infringe
clearly
The district
which holds that "[w]here
a particular
two Akeva patents:
each of which concerns
court held that each patent
does not include
a
the threat of litigation.
from the scope of its claims.
decision,
(b) the '300 patent
CASE
Appellant
without
(a) each
piece of material
footwear
Akeva
of a
plate."
and U.S. Patent No. 6,604,300,
The district
shoe features
SciMed
devoted
any of its patents
U.S. Patent No. 6,662,471
particular
trademarks.
because:
within the adidas-Salomon
and distributes
F. Meschan
plate,"
to its periphery,
OF THE
of non-
requirement
positions
a "flexible
shoes lack such a "flexible
that, among
a company
of the patent's
and removable
STATEMENT
adidas America,
to judgment
in different
as a separate
that is elevated
that the accused
Inc. is entitled
independent
claim of the '300 patent
clear that the invention
I
America,
rear sole that can be selectively
Akeva
I
adidas
disclaims
court relied on
the specification
feature,
that feature
makes
is deemed
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to be outside
Advanced
the reach
Cardiovascular
(A0022,
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of the patent."
Opinion
This is true even if the claim language,
enough
to encompass
quoting
SciMed,
patent
Life Svs., Inc. v.
the feature
And Order (5/17/05
on its own, "might
in question."
(A0021,
Order)at
be considered
5/17/05
22).
broad
Order at 21,
242 F.3d at 1341).
The district
from its subject
SciMed
Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
May 17, 2005 Memorandum
court
matter
disclaims
shoes
limits its invention
I
I
of the claims
ruled
that each of the patents-in-suit
all shoes
without
lacking
a particular
detachable
to shoes having
rear
"a detachable
type
soles
expressly
disclaims
of rear sole.
because
The '471
it unequivocally
rear sole":
The present invention relates generally to multi-purpose
athletic shoes
and, more particularly,
to athletic shoes with
interchangeabledetachable
rear soles that provide extended and
more versatile life and better performance
in terms of cushioning
and
spring.
[I]n a radical
departure
from conventional
shoes, the shoe of the
present invention incorporates
a heel structure, including, a
detachable
rear sole, that significantly
alleviates heel wear problems
associated with conventional
shoes and provides enhanced cushioning
and/or spring.
(A0173-t74,
A0026-28,
'471 patent
5/17/05
at col. 1, 11.13-17;
Order at 26-28).
col. 4, 11.56-61
As a result, the district
(emphasis
added);
court construed
the
I
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'471 patent
Likewise,
having
its invention
I
court
to shoes
I
(A0026-27,
that the '300
patent
5/17/05
Order
ruled
fixed in position
because
a "mechanical
disclaims
all shoes
the patent
expressly
means
for selectively
positions:
the invention includes mechanical means for
the rear sole relative to the rear sole support and
upper of the shoe.
(A0128,
'300 patent
construed
the '300 patent
different
positions.
Following
reconsideration
intervening
August
at col. 7, 11.17-20)
claims
(A0020-25,
the district
court's
decision.
and evidence
then agreed to the district
October
added).
arguments
_The district
Akeva
concerning
court
into
sought
the Federal
court considered
Akeva's
its claim constructions.
And Order (8/26/05
court entering judgment
Circuit's
new
(A0052,
Order) at 1). Akeva
of no infringement
28, 2005 Final Order And Judgment
i 415 F.3d 1303 (Fed. Cir. 2005).
the district
a rear sole that can be locked
claim constructions,
Opinion
Thus,
Order at 20-25).
but did not change
26, 2005 Memorandum
(A0071-72,
5/17/05
and also submitted
_
(emphasis
as requiring
i
I
rear sole.
incorporating
the rear sole" into different
arguments
I
I
the district
In all embodiments,
selectively
locking
I
I
I
a detachable
a rear sole that is permanently
locking
I
I
I
I
as requiring
at 26-27).
limits
I
claims
for adidas.
(Final Judgment)
at 1-2).
I
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I
I
STATEMENT
I.
The Patents-In-Suit
A.
The '471 Patent
The '471 patent,
December
I
I
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I
shoes.
In its Summary
athletic
shoe having
'471 patent
below
l
!
i
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I
I
I
entitled "Athletic
of Invention,
a rear sole that is detachable,
of the upper."
invention
particularly,
col. 4, 11.56-61;
patent,
claim
A0179,
were designed
to overcome
In known
athletic
(A0173,
athletic
added).
that "[t]he
rear soles."
According
to the '471
rear soles"
disadvantages:
shoes, "the heel typically
shoe, thus requiring
wears
out much faster than
replacement
the bulk of the shoe is still in satisfactory
'471 patent
at col. 1, 11.
shoes and, more
shoes with interchangeable/detachable
the rest of the athletic
even though
'471 patent
Field Of Invention,
to multi-purpose
the following
claim of the
"a rear sole secured
shoes with interchangeabledetachable
"athletic
as an
1).
'471 patent at col. 1, 11. 13-17) (emphasis
the disclosed
its invention
other things,
under the heading
relates generally
to athletic
among
its accused
and each asserted
(E.___.,A0173-74,
The '471 patent explains,
(A0173,
the '471 patent defines
calls for a shoe that features,
a portion
present
Shoe With Heel Structure," issued on
16, 2003, more than a year after adidas began marketing
13-17; col. 3, 11.14-15;
!
I
OF THE FACTS
at col. 1, 11.36-39).
of an entire shoe
condition."
I
I
I
Known
cannot
detachable
be used with athletic
l
utilized
I
I
mechanism
I
Because
I
I
amount
different
affecting
the cushioning
shoe's
preferences
shoe industry's
an athletic
rear soles."
concludes
heel elements
materials
to devise
a
to each other without
and other desired
cannot
provided
properties
of the
independent
vary or customize
by a particular
and activities.
lack of"awareness
shoe can be changed
(A0173,
that the foregoing
'471 patent
dramatically
(A0173,
of the rest
the
shoe to account
'471 patent
for
at col.
the '471 patent touts a shoe having
I
rear sole support:"
disadvantages
result from the
of the fact that the use and function
if it is simply
at col. 2, 11.50-54).
I
I
difficult
heel cannot be replaced
of spring or firmness
weights,
"the soft, resilient
'471 patent at col. 2, 11.4-20).
an athletic
The '471 patent
athletic
!
securing
for dress shoes
2, 11.32-61).
I
I
I
shoes because
shoe soles make it extremely
for detachably
(A0173,
rigid heels designed
of the shoe, users and manufacturers
I
I
I
in athletic
adversely
shoe."
and replaceable
given interchangeable
To overcome
"a rear sole [that] is detachably
these problems,
secured
[I]n a radical departure from conventional
shoes, the shoe of the
present invention incorporates
a heel structure, including a detachable
rear sole, that significantly
alleviates
of
heel wear problems
associated
to the
i
i
i
with conventional
spring.
(A0174, '471 patent
!
I
soles and provides
enhanced
cushioning
at col. 3, 11. 14-15; col. 4, 11.56-61)
The '471 patent
depicts
an embodiment
(emphasis
of this detachable
and/or
added).
rear sole in Figure
1:
An embodiment
!
I
of the heel structure
is shown
in Figs
1 and 2 and
includes a rear sole support 26 attached to the heel region of the upper
22, a rear sole 28 detachably
secured to the rear sole support 26, a
mounting
member 60 for detachably
securing the rear sole 28 to the
rear sole support 26, and locking members 90 for preventing
rotation
of the rear sole 28 relative to the rear sole support 26 during use.
!
I
%
_
!
•
-28
!
i
I
I
I
2,
(A0174-175,
'471
at Fig.
1
1; col. 4, 1. 62 - col. 5, 1. 1) (emphasis
added).
In a preferred
I
patent
FIG.
member,
depicted
embodiment,
below
the detachable
in Fig. 21.
rear sole 300 is a U-shaped
I
I
I
I
I
I
I
FIG.
(A0166,
A0177-178,
'471 patent at Fig. 21; col. 10, 1.63 - col. 11, 1. 10).
The '300 Patent
B.
Like the '471 patent,
the '300 patent
began marketing
its accused
Improved
and it discloses
I
selectively
I
II. 17-20).
I
21
Sole,"
be locked
shoes.
into different
issued more than a year after adidas
The patent
an athletic
positions.
is entitled
shoe having
"Athletic
Shoe With
a rear sole that can
(E.____.,
A0128,
'300 patent
at col. 7,
I
I
I
I
I
The '300 patent
designed
advocates
to overcome
that the disclosed
the following
disadvantages
rear sole" was
associated
with typical
athletic
shoes:
In typical
I
athletic
shoes, the heel region (i.e., the rear sole) wears out
faster than the rest of the shoe.
However,
because
with the entire shoe, the worn out heel cannot
I
I
Instead,
the whole
shoe must be replaced,
the rear sole is integral
be independently
even though
worn out and the rest of the shoe is still in satisfactory
I
(A0125,
I
I
'300 patent
After repeated
to provide
Because
for the user-
condition.
loses its cushioning
is supposed
effect.
(A0125,
at col. 1, 11.44-64).
an athletic
shoe's
rear sole or its cushioning
I
I
only the heel is
use, the heel area of the sole - which
rear sole cannot be replaced
the rest of the shoe, a user cannot
I
replaced.
at col. 1,11.2-42).
typical
cushioning
_300 patent
I
I
customize
or "spring"
or modify
properties.
independent
of
the height of the
(A0125,
'300 patent
col. 1, 1.66 - col. 2, 1.12).
To overcome
I
rotated
into different
I
position
(in which
these problems,
positions,
the '300 patent
thereby
the ground-engaging
allowing
portion
9
I
"improved
touts a rear sole that can be
the heel to be rotated out of one
of the rear sole is worn out) and
at
I
i
into a new position
i
new) to increase
the longevity
i
128, '300 patent,
at col. 4, 1.43 -col.
i
In the preferred
detachable
i
specific
i
embodiment,
and designed
and variable
I
i
(in which
1.
As illustrated
disclosed
portion
of the detachably
secured
the adjustably
characteristics.
The Secured
in the below
of the rear sole is like
rear sole.
(E.___.,A0126-
5, I. 20; col. 6, 11.46 - 52; col. 7, 11. 17-20).
positionable
to accept and use different
in the '300 patent
sole support
the ground-engaging
(E._., AI028,
rear sole also is
"flexible
members"
'300 patent
having
at col. 7, 11.35-50).
Rear Sole
Figure
includes
1 from the specification,
a shoe upper
140, and a rear sole 150. (A0126,
120, a forward
the shoe 100
sole 160, a rear
'300 patent at col. 3, 11.34-36).
I
FIG. 1
I
I
i
I
,oo
H :,o
The specification
"attached
to upper
11.51-53,
63-65).
describes
that the forward
120 in a conventional
As a result, the forward
sole 160 and rear sole support
manner."
'300 patent
sole and the rear sole support
10
I
(A0126,
140 are
at col. 3,
are
I
I
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I
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I
I
I
integral
to, and cannot
patent
be detached
from, the claimed
shoe.
(See, e._&.,A0126,
'300
at col. 3, 11.51-65).
In contrast,
the '300 patent discloses
rear sole support
so that the rear sole can be selectively
positions:
"[i]n all embodiments,
selectively
locking
shoe."
(A0128,
that the rear sole must be secured
the invention
the rear sole relative
'300 patent
includes
into different
mechanical
to the rear sole support
at col. 7, 11.17-20.
col. 4, 1.43 - col. 5, 1.20; col. 6, 11.46-52).
the rear sole so that it can be placed
locked
into different
explains
positions
means
for
and upper of the
See also A0126-127,
The '300 patent
to the
extends
'300 patent
at
that securing
the life of the
rear sole:
I
I
I
I
I
I
I
I
I
[The rear sole] may be moved
to a plurality
with a means
provided to allow the user to secure the rear sole at each desired
position.
After a period of use, outsole 154 [of rear sole 150] will
exhibit a wear pattern at the point in which the heel first contacts the
ground, when the user is running, for example.
Excessive wear
normally occurs at this point, and at midsole [] generally above this
point, degrading the performance
of the rear sole. When the user
determines
that the wear in this area is significant, the user can rotate
the rear sole so that the worn portion will no longer be in the location
of the user's first heel strike.
(A0127,
'300 patent at col. 6, 11.46-59 (emphasis
'300 patent
at col. 4, 11.52-66;
The foregoing
achieved
by "securing"
permanently
locking
added).
See also A0126-127,
col. 6, 11.7-15).
ability to selectively
lock the rear sole into position
the rear sole to the rear sole support,
it in place in the conventional
11
I
of positions
manner.
is
rather than
(A0127,
'300 patent
at
I
I
I
I
I
col. 6, 11.46-59).
embodiment,
protruding
allowing
the rear sole is secured
the rear sole to "be removed,
" (A0127,
rear sole support
knobs
2 of the '300 patent illustrates
165 engage
that, in the preferred
to the rear sole support
from the rear sole to engage
support ....
I
I
Figure
openings
using knobs
in the rear sole support,
repositioned,
and/or locked
'300 patent at col. 5, 11. 14-20 ("To secure
140, rear sole 150 is simply
corresponding
openings
I
I
press-fitted
to the rear sole
rear sole 150 to
into recess
145.") (emphasis
thereby
146 until
added)).
FIG. 2
I
I
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I
,62 s8
I
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I
Consistent
patent
with the foregoing
calls for a shoe having,
heel region
of the upper."
among
description,
claim of the '300
other things, a "rear sole secured
(E._._., A0134,
'300 patent at claim 93).
I
I
I
each asserted
12
below
the
I
I
2.
I
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I
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In a preferred
I
I
embodiment
is positioned
above the rear sole,"
spring
in the user's
According
gait."
I
I
And Plate
of the '300 patent's
rear sole of the '300 patent
(A0128,
is combined
member
or plate."
(A0128,
example,
Figure
and another
2 of the '300 patent,
as a separate
shown
flexible
or "plate,"
[] that
extra
col. 8, 11.30-31).
of this region:
that is "a separate
(emphasis
above, illustrates
member,
region
to provide
embodiments
'300 patent at col. 7, 11.63-65)
flexible
added).
For
the embodiment
200:
of
As shown in Fig. 2, flexible member 200 can be in the form of a plate
supported at its peripheral region by an upward facing top surface of
rear sole support 140. In this embodiment,
the member, or plate 200,
is positioned between the rear sole 150 and the heel portion of upper
120.
(A0128,
'300 patent at col. 7, 1.66 - col. 8, 1.3).
According
of the flexible
provided
to the specification,
region allows
the separate
a user selectively
nature of the plate embodiment
to vary the amount
of spring
for by the rear heel of the shoe:
of the flexible
member
allows
the use of several
different types of flexible members of varying stiffness or
composition
and, therefore, can be adapted according to the weight of
the runner, the ability of the runner, the type of exercise involved, or
the amount of cushioning
and/or spring desired in the heel of the shoe.
(A0128,
'300 patent
at col. 8, 11. 17-23).
13
I
with a "flexible
there are different
to the rear sole support
region
the adjustably
'300 patent at col. 7, 11.45-47;
one that is integral
the flexible
invention,
and "acts like a trampoline
to the '300 patent,
The removability
I
Region
positionable
I
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I
The Flexible
I
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I
Whether
integral
spring to the user's
portion
which
gait because,
that is capable
the central
or removable,
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I
I
I
I
I
I
as defined
of being repeatedly
portion
state (in which the central
I
I
each flexible
is elevated
portion
throughout
the patent,
bent from a normal
relative
to the plate's
provides
it has a central
unflexed
periphery.)
is bent downward),
without
the central
of the flexible
state (in
into a flexed
permanently
deforming:
In each of the embodiments
portion
member
is raised relative to its outer perimeter so that when placed in the shoe,
the interior portion in its normal state does not touch the rear sole
support and/or rear sole. As a result, the interior of the flexible
member will flex in response to the user's stride without first, if ever,
contacting the rear sole support
at col. 12, 11.34-41).
and/or rear sole.
In each of these embodiments,..,
the interior
(A0130,
portion
'300 patent
of the flexible
member is elevated relative to its periphery when the flexible member
is positioned in the shoe in its normal position.
(A0129, '300 patent at
col. 10, U. 20-24).
[The] flexible region 200...
is positioned above the rear sole and has
a central portion that in its normal unflexed state is spaced upwardly
from the portion of the shoe (rear sole support, or rear sole)
immediately
below it. (A0128, '300 patent at col. 7, 11.45-50).
[T]he middle of the flexible member can flex under the weight of the
user without being impeded by rear sole 150. Flexible member 200
thus acts like a trampoline to provide extra spring in the user's gait...
(A0128,
'300 patent
at col. 8, II. 28-33).
I
14
I
region or member
I
I
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I
I
I
I
I
I
I
I
Thus,
defined
each flexible
as having
heel of the user.
region,
an interior
member,
portion
This is achieved
surface
of the flexible
dome.
An example
member
and plate disclosed
that is raised and extends
in two different
is convex,
ways.
i.e., shaped
of this type of flexible
member
in the patent
upwardly
is
toward
the
In the first, the top
like the top outer surface
is shown in the patent's
of a
Figure
4:
As shown in Fig. 4, flexible member 500 has a concave under surface
502 (when viewed from its bottom) and an opposing convex upper
surface, and is circular in shape. As a result, the interior portion of the
flexible member 500 is elevated relative to its peripheral portion and
is positioned
shoe.
(A0129,
'300 patent
below
the rear sole of the user when supported
in the
at col. 10, 11.33-38).
FIG. 4
I
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I
I
I
I
/
5OO
In the other type of flexible
direction,
"[t]lexible
member,
the top surface
and thus forms an arch, rather than a convex
member
530 shown
in Fig. 7 is identical
15
curves up in only one
dome shape.
in structure
For example,
to flexible
member
I
I
520 shown
in Fig. 6 except
I
one direction."
(A0129,
that it is not convex
in shape, but rather curved
in only
'300 patent at col. 10, 11.48-51).
II
FIG. 7
Iii
I
I
I
I
I
I
Consistent
patent
calls for a shoe having,
characteristics,
description,
among
each asserted
other things,
which vary from claim to claim.
a "flexible
claim of the '300
plate"
(E.__., A0134,
with various
'300 patent
at claim
93).
II.
The District
The parties
5/17/05
Claim
in Phillips
on dictionary
requires
definitions"
2 415 F.3d
to someone
a review
Rulings
claim construction
v. AWH Corp. 2 The district
and arguments
would have meant
Construction
and argued
Order at 12). In contrast,
constructions
which]
Court's
first briefed
en banc decision
relies heavily
I
I
with the foregoing
prior to this Court's
court found that "Akeva
and "not the written description."
the district court found that adidas'
focused
skilled
"on the 'objective
proposed
test' of what the claims
in the art at the time of the invention[,
of the claim language,
1303 (Fed. Cir. 2005).
16
(A0012,
the specification,
and the
I
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I
prosecution
support."
I
I
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I
I
I
I
I
I
I
I
5/17/05
The district
rejected
adidas'
analysis.
Digital
"dictionary
advocated
Thus,
(A0020-23,
5/17/05
court construed
"secured"
(A0025-28,
disclaimer
sole into different
patent
5/17/05
claims
positions.
as requiring
(A0015-25,
Akeva
sought
of
the strict Texas
- advocated
by Akeva but since rejected
definitions
for most of the claim terms.
approach,
however,
subject matter,
the district
Consistent
subject
that the
matter.
with this rule of construction
a detachable
a detachable
Order at 25-28).
with the '300
Likewise,
consistent
court construed
a rear sole that can selectively
and
rear sole, the district
in the '471 patent claims as requiring
the district
in
court
this Court requires
that disclaimed
of all shoes lacking
5/17/05
locking
"secured"
rear
the rear
in the '300
be locked
into different
Order at 15-25).
reconsideration
and also filed an additional
of the district court's
brief to address
I
I
the correctness
of any shoe lacking a means for selectively
positions,
would
before Phillip__s_
initial ruling applied
so as to exclude
Order at 20-23).
disclaimer
and confirmed
court's
a patent disclaims
be construed
the '471 patent's
sole.
the district
the Texas Digital
that where
claims
by Akeva
broad dictionary
Even applying
recognized
ruled on claim construction
first" methodology
Phillip___fi
- and adopted
than Akeva
Order at 13).
court initially
the approach
patent's
I
but with more focus on the specification
(A0013,
patent's
I
history,
17
this Court's
"secured"
Phillips
constructions
decision.
Despite
I
I
I
that
failure
to identify
I
certain
types
I
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I
the district
such
I
I
I
I
I
I
I
claim
for the first time
A0771,
Mere.
In Support
not change
court
its claim
refuting
law.
that
adidas
Of Mot.
does
constructions
A0060-63,
'471
good
law.
disclaimers
identified
Instead,
of
no
Akeva
(E.___., A0758,
Reconsideration
Final
"secured"
(1) Akeva
Of The Court's
Order
CI.
court
Judgment
entered
at 1-2).
OF
Akeva
THE
This
then
the district
final judgment
but did
to identify
and (2) SciMed
at 4, 9-12).
under
and evidence
failed
in the patents-in-suit
the patents-in-suit
and the district
any
remains
conceded
court's
claim
of noninfringement
appeal
for
followed.
ARGUMENT
Patent:
Akeva's
arguments
because
the '471
"detachably
secured"
specification
reveals
that there
patent
a special
was no disclaimer
and claims
miss the point.
definition
in a parent
The
issue
of"secured;"
I
I
their
Akeva's
at 25), Akeva
new arguments
because:
8/26/05
not infringe
(A0071-72,
phrase
Order
was no longer
Akeva's
SUMMARY
The
refuting
or Phillip_fi briefing.
For Partial
considered
the disclaimers
(A0055,
construction,
adidas.
SciMed
had noted
Order).
The district
good
that
expressly
5/17/05
in its reconsideration
argued
evidence
ruling
in the patents-in-suit
(e.__., A0025,
statements
Construction
construction
any statements
of rear soles
refuting
I
I
I
court's
18
of the ordinary
patent
application
is not whether
rather,
meaning
the issue
of
use the
the '471
is whether
I
I
I
I
I
the '471 specification
lacking
I
I
court correctly
the specification
recognized,
the Court
may limit claim scope,
way that applies to the '471 patent:
may reveal an intentional disclaimer, or disavowal, of claim scope by
the inventor.
In that instance as well, the inventor has dictated the
correct claim scope, and the inventor's intention, as expressed in the
specification,
is regarded as dispositive.
SciMed Life Sys. v.
Advanced Cardiovascular
Svs., Inc., 242 F.3d 1337, 1343044 (Fed.
Cir. 2001).
Phillip__s, 415 F.3d at 1316 (emphasis
Order
The district
disclaimer
court correctly
(A0055,
A0059-63,
or disavowal
ruled that the '471 patent
8/26/05
the '471 patent:
a detachable
embodiments
I
detachable.
the tbregoing
specification
from its claim scope of any shoes lacking
(1) defines
sole; (2) touts that that the invention
features
added).
at 4, 8-12).
I
the invention
is superior
of the supposed
(A0025-28,
disclaimer
invention
5/17/05
requires
that feature
Order at 25-28).
reveals
a detachable
a detachable
unlike prior art shoes,
or suggest
a
rear
rear
it
any
a rear sole that is not
Under this Court's
that the '471 patent
19
as having
because,
rear sole; and (3) tails to disclose
I
I
from its scope of all shoes
[O]ur cases recognize that the specification
may reveal a special
definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess.
In such cases, the inventor's
lexicography
governs. CSS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366 (Fed. Cir. 2002). In other cases, the specification
sole because
I
I
or disavowal
As the district
two ways in which
and it is the second
I
!
I
a disclaimer
rear sole.
in Phillips_ identified
I
I
I
a detachable
reveals
claims cannot
precedent,
cover any shoe
I
I
I
I
I
having
a non-detachable
be considered
A0025-27,
district
I
I
I
I
I
I
I
I
I
I
broad enough
5/17/05
claims
to encompass
the feature
Order at 21, 25-27, _
court therefore
'471 patent
I
I
rear sole, "even if the claim language,
correctly
followed
and "secured"
in question.'"
SciMed,
242 F.3d at 1341).
SciMed and Phillios
as requiring
(A0021,
a detachable
The
in construing
the
rear sole.
The '300 Patent:
A statement
in a patent
invention"
include
disclaimer
of all subject
specification
a particular
element
matter
that "all embodiments
constitutes
a "broad
lacking that element.
This Court has held that such "all embodiments"
disclaimer
of subject
Falling
squarely
specifically
requires
mechanical
means
support
added).
within
that "[i]n all embodiments,
and upper of the shoe."
The district
its subject
locking
(A0128,
court thus correctly
matter any shoe omitting
shoe with a rear sole permanently
Phillip_fi, 415 F.3d at 1316;
is "a clear case of
could have been considered
rule, the '300 patent
the invention
includes
the rear sole relative
a
to the rear sole
'300 patent at col. 7, 11. 17-21) (emphasis
ruled that the '300 patent
this essential
locked
242 F.3d at 1344.
Id____.
this claim construction
for selectively
of the present
and unequivocal"
SciMed,
language
matter that, absent the disclaimer,
to fall within the scope of the invention."
23-25).
selective
in position.
SciMed,
I
2O
I
on its own, 'might
locking
(A0023-24,
242 F.3d at 1344.
disclaims
from
means,
i.e__=,
any
5/17/05
Order at
I
I
I
I
I
In response
argued
I
I
I
I
two
movable
rear sole,
and another
•
I
I
Akeva's
Akeva
so-called
has failed
patentee
•
Akeva
states
•
that
locking
means;
Akeva
has failed
embodiment
locking
The
patent's
fixed
SciMed
initial
inventions:
because
one in which
previously
"second"
theory
any section
is more
to identify
than
because,
one invention
"in all embodiments,
the '300
patent
of the '300
The
among
patent
where
patent
the
Court
other
described
the invention"
Akeva
have
invention.
of the '300
any portion
ruling,
"all embodiments"
unidentified
invention
to identify
construction
is inapplicable
should
reasons:
the
therein;
contradicting
must
have
a selective
and
to identify
in the '300
any disclosed
patent
that does
district
court
to mean
in position."
disclaimer,
therefore
"selectively
(A0025,
5/17/05
the district
reviewing
the intrinsic
"'secured"
as used
correctly
"second
not feature
record
in the '300
court's
construed
invention"
or any
the required
Order
at 25).
claim
as a whole,
patent
"secured"
or permanently
fastened,
Indeed,
construction
one skilled
claims
I
21
I
claim
selective
means.
claims
patent's
court's
that there
has failed
requirement
I
I
I
that
discloses
I
I
for the first time
allegedly
reject
I
to the district
to mean
in the '300
but not permanently
regardless
is correct
of the '300
because,
in the art would
"selectively
locked
understand
into
its
I
I
I
position"
accused
I
i
to the district
court's
shoes also do not infringe
the claimed
having
a central
integral
"flexible
portion
flexible
part of the accused
portion
I
I
I.
Claim
relative
of"secured,"
adidas'
claims of the '300 patent
As defined
and removable
as a matter
in the '300
piece of material
to its periphery.
plate in the accused
that is positioned
Construction
The claims
Akeva
concedes,
adidas shoes (1) is an
be removed
below - not elevated
or replaced;
and (2) has
above - its periphery.
Standard
of a patent
set forth the metes and bounds
of the patentee's
"property":
Ultimately,
the interpretation
be determined
and confirmed
to be given a term can only
with a full understanding
of
what the inventors actually invented and intended to
envelop with the claim. The construction
that stays true
to the claim language and most naturally aligns with the
patent's description
of the invention will be, in the end,
the correct construction.
I
Renishaw
PLC v. Marposs
1998) (internal
citations
Societa'
Per Azioni,
omitted).
I
.-)-_
I
throughout
ARGUMENT
I
I
I
uses "secured"
construction
plate."
is a separate
shoe that cannot
I
I
"flexible
that is elevated
that the alleged
an interior
plate"
correct
the asserted
they lack the claimed
patent,
however,
consistently
specification.
In addition
of law because
I
I
that is how the patentee
the '300 patent's
I
I
because
158 F.3d
1243,
1250 (Fed.
Cir.
I
I
I
I
I
The meaning
Court to decide.
S.Ct.
Markman
1384, 1387 (1996).
apply an objective
of the invention,
I
I
I
I
I
(3) the patent's
prosecution
construction
according
construction
focus should
I
'is always
dispositive;
(quoting
this lawsuit
restricts
be on the specification,
highly relevant
this Court rejected
According
not dictionary
to the claim construction
it is the single best guide to the meaning
Vitronics,
definitions,
90 F.3d at 1582).
23
which,
the strict Texas
this case:
the role of the specification
Phillip__fi,415 F.3d at 1320.
bases for claim
focus of the claim
relied throughout
I
I
that the foregoing
in favor of broad dictionary
upon which Akeva
I
construction."
skill in the art, at the time
Inc., 52 F.3d 967, 986 (Fed. Cir. 1995).
In Phillips., however,
in our view, improperly
of a claim term, Courts
the term to mean based on:
should be the initial and primary
analysis.
approach
the meaning
history.
throughout
should be ignored
to Akeva,
Inc., 517 U.S. 370, 372, 116
and
Instruments,
has argued
of law for the
itself;
specification;
v. Westview
Instruments,
what one of ordinary
would have understood
(2) the patent's
Markman
claim term is a question
When construing
test to determine
I
I
I
patent
v. Westview
(1) the claim language
Akeva
I
I
of a disputed
"That approach,
in claim
to this Court,
definitions:
analysis.
the primary
"the specification
Usually,
of a disputed
it is
term.'"
Id. 1315
I
I
I
I
I
In Phillip_fi, the Court also stressed
confirming
that the disclaimers
approvingly,
_
disclaimer,
I
I
I
I
expressed
I
I
I
I
I
I
I
patents
had dictated
the correct
good law,
are dispositive.
may reveal
Citing
an intentional
In that instance
claim scope, and the inventor's
is regarded
as dispositive."
SciMed
as well,
intention,
as
Phillip_fi, 415 F.3d at
1316.
In addition,
"when
a specification's
the scope of the invention
as the advantage
disavow
explicitly
disclaimer
is clearly
scope."
of the invention,
On Demand
Inc., 442 F.3d 1331, 2006 U.S. App. LEXIS
2006);
Astrazeneca
AB v. Mutual
need not be explicit:
stated in the specification,
and distinction
a different
or disavowal
Indus.,
Pharm.
Machine
and is
it is not necessary
to
Corp. v. In,ram
7889 at "17-18
(Fed. Cir.
Co., 384 F.3d 1333, 1340 (Fed. Cir.
2004).
II.
The District Court Correctly
Construed
"Secured"
In The '471 Patent
A.
The '471 Patent Disclaims
Rear Soles That Are Not Detachable
The district
shoe having
invention
court correctly
a detachable
as "including
ruled that the '471 patent
rear sole by consistently
a detachable
limits its invention
and expressly
rear sole" and distinguishing
I
24
I
remains
of claim scope by the inventor.
in the specification,
described
I
in Akeva's
held that "the specification
or disavowal,
the inventor
that SciMed
defining
to a
the
the prior art on
I
I
I
I
I
the grounds
utilize
detachable
rear soles.
174, '471 patent
11.56-61).
•
I
I
I
I
that the prior art shoes have many disadvantages
For example,
"The present
I
I
I
invention
relates generally
rear soles that provide
extended
is "no apparent
of an athletic
"[I]n a radical
invention
departure
incorporates
that significantly
conventional
(A0173-174,
I
61; A0026-27,
I
specification
I
by the inventor."
Astrazeneca,
5/17/05
industry
to multi-purpose
athletic
life and better
of the fact that the use and
shoe can be changed
dramatically
if it is simply
rear soles."
from conventional
a heel structure,
alleviates
shoes, the shoe of the present
including
heel wear problems
enhanced
a detachable
associated
cushioning
Order at 26-27) (emphasis
"an intentional
added).
disclaimer,
384 F.3d at 1340 ("[w]here
the general
25
with
col. 4, 11.56-
The '471 patent
or disavowal,
See Philli.p__s_,
415 F.3d at 1316; SciMed,
rear sole,
and/or spring."
at col. 1, 11. 13-17; col. 2.11. 12-31, 48-54;
thus reveals
shoes
and spring."
awareness
I
I
col. 3, 11. 14-17; col. 4,
and more versatile
shoes and provides
'471 patent
A0173-
shoes with interchangeabledetachable
in terms of cushioning
given interchangeable
•
Order at 26-28;
to
to the '471 patent:
to athletic
function
I
I
according
and, more particularly,
There
5/17/05
at col. 1, 11. 13-17; col. 2.11. 12-31, 48-54;
performance
•
(E._._.,A0026-28,
due to their failure
of claim scope
242 F.3d at 1341-44;
summary
or description
of the
I
I
I
I
I
I
I
I
I
invention
describes
that lack that same feature,
products");
865-66
I
I
I
I
I
I
the correct
regarded
a specification
scope,
other products...
of these other
States Surgical
Corp., 388 F.3d 858,
"lumens."
SciMed,
arrangements
coaxial
two lumens
limited
lumens.
lumens
a detachable
because
rear sole.
a catheter
featuring
The parties
SciMed
the SciMed
Id___.;
two passageways,
did not expressly
district
the district
the specification
specify
or
and
that the claimed
were
the specification
to a catheter
with coaxial
claim construction:
to disclaim
26
lumens
court found that the claims
court's
In
agreed that only two
and did not cover dual lumens because
Id___.
This Court affirmed
the
rear sole,
holding.
were know in the art: dual (adjacent)
the claims
is
384 F.3d at 1340.
limited the scope of the invention
court, we interpret
in the specification,
Accordingly,
within this Court's
242 F.3d at 1339.
were coaxial,
of the patents-in-suit
Astrazeneca
claimed
Id____.
Although
to coaxial
as requiring
falls squarely
of two lumens
lumens.
has dictated
from its scope any shoe lacking a detachable
242 F.3d at 1341-44;
the patent-in-suit
"the inventor
as expressed
415 F.3d at 1316.
must be construed
The '471 patent
such a disclaimer,
I
I
and criticizes
as a clear disavowal
intention,
Phillips,
has disclaimed
the '471 claims
SciMed,
includes
and the inventor's
as dispositive."
'471 patent
district
this operates
see also C.R. Bard, Inc. v. United
Where
I
of the invention..,
(Fed. Cir. 2004).
SciMed,
I
a feature
the dual lumen
"Like the
I
I
I
I
I
configuration
lumen
and to limit the scope of the asserted
structures
....
catheters
with coaxial
lumens."
Id__:.
at 1340.
In its analysis,
I
I
I
I
explaining
I
I
I
construe
read a limitation
claims
with coaxial
to read only on
with dual or side-by-side
the patentee's
argument
that the district
of the written description
into the claims,
that
Id___.
at 1340-41.
patents-in-suit
description
Applying
disclaimed
"define[s]
distinguish[es]
this rule of claim construction,
all catheters
'the invention'
as "including
the grounds
coaxial
as employing
lumens
a coaxial
because
lumen
the written
structure
and
Id. at 1343.
The same is true here:
invention
lacking
the Court found that the
the prior art in part on the ground that [the prior art] used a dual
structure."
the '471 patent specification
a detachable
rear soles.
consistently
rear sole" and distinguishes
that the prior art shoes have many disadvantages
utilize detachable
12-31,48-54;
(A0173-174,
'471 patent
col. 3, 11. 14-17; col. 4, 11.56-61;
I
27
I
the asserted
and not on catheters
the Court rejected
to catheters
[w]here the specification
makes clear that the invention does not
include a particular feature, that feature is deemed to be outside the
reach of the claims of the patent, even though the language of the
claims, read without reference to the specification,
might be
considered
broad enough to encompass the feature in question.
lumen
I
lumens,
court had improperly
I
I
I
I
We therefore
claims
defines
the
the prior art on
due to their failure
to
at col. 1, 11. 13-17; col. 2, 11.
A0026-27,
5/17/05
Order at 26-27).
I
I
I
Accordingly,
the district
court correctly
its subject
matter any shoe having
I
construed
"secured"
I
28).
Phillips,
as requiring
415 F.3d at 1316;
ruled that the '471 patent
a non-detachable
a detachable
SciMed,
disclaims
from
rear sole and correctly
rear sole.
(A0028,
242 F.3d at 1341-44;
5/17/05
Order
Astrazeneca,
at
384
F.3d at 1340.
I
B.
Akeva
I
Below,
claim
court's
Akeva's
construction
argument
I
principal
1.
against the district
is not good law.
Akeva's
appeal
Instead of addressing
rear soles, Akeva
I
construction,
arguing
I
specification
disclaimed
Now unable
SciMed
'471 patent
to make that
and the district
However,
the district
its construction
In The '471 Patent
SciMed and the '471 patent's
misstates
that the district
the ordinary
of non-
court's
court found that the '471 patent's
meaning
of"secured."
court made no such finding.
of"secured"
disclaimers
the basis for the district
on the '471 patent's
I
28
I
ignores
court's
Akeva Misstates The Basis For
The District Court's
Construction
Of "Secured"
detachable
I
Any
analysis.
I
I
argument
was that SciMed
in light of Phillips,
I
I
To Identify
Basis For Reversing The District Court's
Construction
Of "Secured"
In The '471 Patent
I
I
Has Failed
(Akeva
Rather, the district
disclaimer
at 23-29).
court based
from the scope of its
I
I
I
claims
meaning
I
I
of any shoe that lacks a detachable
The district
court correctly
from the scope of its claimed
the '471 patent:
ruled that the '471 patent
invention
(1) defines
all shoes lacking
the invention
rear sole; (2) touts that that the disclosed
I
shoes, it features
I
embodiments
I
detachably
explained
I
of the ordinary
of "secured."
because
I
heel, not on a disclaimer
a detachably
of the supposed
secured.
meaning
I
claims
I
language,
I
in question.'"
from covering
(A0021,
5/17/05
because,
Order at 25-28).
secured
unlike prior art
any
The district
court then
of claim scope (not a disclaimer
this Court's
be considered
A0025-27,
a detachably
that feature a rear sole that is not
precedent
a shoe that lacks a detachable
on its own, 'might
as having
rear sole
rear sole; and (3) fails to disclose
of this disclaimer
of"secured'),
disclaims
a detachable
shoe is superior
invention
(A0025-28,
that because
ordinary
secured
expressly
precludes
the '471 patent
rear sole, "even if the claim
broad enough
5/17/05
of the
to encompass
Order at 21, 25-27, _
the feature
SciMed,
242 F.3d at 1341).
I
Akeva's
I
"secured"
I
phrase
I
arguments
because
"detachably
not whether
is whether
that there was no disclaimer
the '471 patent
secured"
the '471 patent
the '471 patent
and claims in a parent patent
disclaims
disclaims
the ordinary
meaning
from its invention
29
meaning
application
miss the point. (E.__., Akeva at 23-29).
I
I
of the ordinary
of
use the
The issue is
of"secured;"
all shoes lacking
the issue
a
I
I
I
I
detachable
court
rear
therefore
"secured"
The
correctly
2.
Unable
I
focuses
I
898 (Fed.
Akeva's
to dispute
(Akeva
a specific
embodiment
holds
element
disclosed
at 25-29).
that
I
In Liebel-Flarsheim,
I
use in various
medical
applications.
patent-in-suit
included
a particular
contain
I
iniectors
that
lacked
I
suit did not define
I
art injectors
limited
a pressure
to injectors
nonetheless
with
pressure
described
While
jacket
error
and
or disavowal
as inferior.
that
F.3d
to
the district
F.3d
at 906-07.
injector
for
described
in the
the patent
did not
from
its scope
For example,
of
the patent-in-
or characterize
prior
Id___.
at 906-07.
argued
that the scope
jackets
solely
30
claims
a power
jacket
358
is inapposite.
358
jacket),
a pressure
Inc.,
instead
in every
embodiment
Id__:at 906-08.
I
I
is present
(a pressure
as including
Akeva
a patent's
and claimed
every
feature
jacket.
a pressure
to construe
Liebel-Flarsheim,
a disclaimer
the invention
patent,
however,
construction
and avoided.
suggesting
the claims
Co. v. Medrad,
that element
a claim
the patent-in-suit
that lacked
The defendant
I
addressed
any language
to the '471
it is improper
in the patent,
expressly
and the district
Is Misplaced
LiebeI-Flarsheim,
because
court
I
On Liebel-Flarsheim
in Liebel-Flarsheim
merely
shoes,
and Phillip_s to construe
applicability
I
here
all such
rear sole.
Reliance
decision
Cir. 2004).
disclaims
SciMed
SciMed's
Liebel-Flarsheim
require
patent
a detachable
on this Court's
I
'471
followed
as requiring
I
I
sole.
because
of the claims
the patent
should
failed
to
be
I
I
I
I
I
disclose
any embodiments
rejected
that argument
Flarsheim
patent
characterization
claim construction
I
the '471 patent
clearly
I
I
Indeed,
features
claims
disclaims
court's
rear sole.
as requiring
from its subject
the district
lacking
here - the Liebel-
a pressure
here because,
decision,
the district
court expressly
Rather, the district
a detachable
jacket.
rejected
contrary
Id___.
at
Akeva's
to Akeva's
court did not base its
described
in the '417
court correctly
rear sole because
matter all shoes lacking
the '471 patent
a detachable
characterization
construed
rear sole.
of its ruling:
positioned rear sole by express language in the '300 patent and of a
permanently
attached rear sole by express language in the '471 patent.
(A0060-61,
8/26/05
Order at 9-10) (internal
citations
omitted).
Akeva's New Argument Fails To
Refute The '471 Patent's Disclaimer
All Shoes Lacking
Akeva does not dispute
A Detachable
that the '47l
disclaimers:
31
I
patents
Circuit
Akeva argues in its Philli_
brief that the court's ruling improperly
limited the patent's scope to one or more embodiments
described in
the specification.
However, Plaintiff mischaracterizes
the nature of
the Court's ruling. The court did not find any implicit limitation of
the term "secured" based on a lack of information about other possible
forms, but rather tbund an explicit disavowal of a permanently
I
I
embodiments
Id___.
The Federal
solely on the fact that each embodiment
a detachable
3.
I
jacket.
- unlike the Akeva
is thus inapplicable
of the district
patent
I
I
a pressure
907-08.
I
I
I
because
did not disavow
Liebel-Flarsheim
I
I
that lacked
Of
Rear Sole
patent includes
the following
I
I
•
"The present
I
I
•
I
to athletic
rear soles that provide
extended
invention
I
I
conventional
(A0173-174,
at 26-27)
patent
argues
shoes,
it features
I
embodiments
I
detachable.
Akeva
I
lacking
(emphasis
alleviates
added).
a detachable
of the supposed
nonetheless
I
patent
I
be used without
I
such description.
describes
structure,
enhanced
a detachable
associated
cushioning
shoe is superior
invention
rear
sole,
with
and/or
spring."
A0026-27,
5/17/05
that the '471
because,
unlike
prior art
feature
any
that feature a rear sole that is not
that the '471
patent
does not disclaim
for the first time on appeal
of the invention
rear sole.
I
32
I
including
rear sole or that the '471 patent fails to disclose
rear sole, arguing
the detachable
life and better
Akeva also does not dispute
contends
that another
shoes
shoes, the shoe of the present
heel wear problems
inventive
athletic
and spring."
at col. 1, 11. 13-17; col. 4, 11.56-61;
that the disclosed
a detachable
a heel
shoes and provides
'471 patent
Order
and more versatile
from conventional
incorporates
that significantly
I
I
departure
to multi-purpose
shoes with interchangeabledetachable
in terms of cushioning
"[I]n a radical
I
relates generally
and, more particularly,
performance
I
invention
- a U-shaped
The '471 patent,
shoes
that the '471
member
however,
- can
includes
no
I
I
I
I
I
Akeva
that it suggests
detachable
U-shaped
member,
I
I
I
I
depicting
plate, U-shaped
rather,
flexible
I
I
a "flexible
shoe.
a
plate," which
plate 80 and a U-shaped
cited by Akeva
member,
it indicates
'471 patent
member
400).
does not indicate
or anything
is a different
that the detachable
and distinct
at Fig. 24,
Moreover,
that any element
else) can be used without
a
the portion
(flexible
the detachable
rear
rear sole can be used with or without
a
plate:
(A0178,
'471 patent
Indeed,
include
11.56-61;
the '471 patent
A0026-27,
Akeva
specification
indicates
repeatedly
5/17/05
added);
and can be
Akeva
sets forth that the disclosed
rear sole. (A0173-174,
also argues
Again,
rear sole configurations,
plate.
at col. 12, 11.61-65 (emphasis
a detachable
rear sole.
'471 patent
at 9, 21, 25, 30invention
must
at col. 1, II. 13-17; col. 4,
Order at 26-27).
that the boilerplate
that the U-shaped
the cited portion
language
member
33
at the end of the '471
can be used without
of the specification
I
I
arguing
can be used with or without
(See, e.__., A0169,
with any of the above-described
used with or without the flexible
31).
I
I
member
wrongly
[T]he rear sole support/locking
member combination
shown in FIGS.
2 and 17 [i.e., examples of the disclosed means for detachably
fastening the rear sole to the shoe's upper] can be used in conjunction
I
I
I
of the disclosed
a flexible
U-shaped
of the '471 patent,
In fact, the quote relied on by Akeva does not even concern
it concerns
of the specification
sole;
the specification
that the disclosed
rear sole.
component
I
mischaracterizes
includes
a detachable
no such statement,
I
I
I
but merely
I
I
I
I
I
I
I
I
of one embodiment
without departing from the scope or spirit of the invention and that
certain features of one embodiment
may be used interehangeably
in
other embodiments .... Thus, it is intended that the present invention
cover all possible combinations
of the features shown in the different
embodiments,
as well as modifications
and variations of this
invention,
provided
they come within the scope of the claims
and their
equivalents.
(A0178-179,
'471 patent
30-31).
Nothing
without
the supposedly
at col. 12, 1.56 - col. 13, 1.5 (emphasis
in the foregoing
inventive
the language
contemplates
embodiment
of the invention,
indisputably
feature
requires
disclosed
embodiments
rear sole.
all embodiments
rear sole.
that eliminated
within
the scope of the claims
Ill.
The District
member
at
although
in another
invention
because
the specification
rear sole, any modification
the detachable
Akeva
can be used
To the contrary,
of the disclosed
Moreover,
added);
of the
rear sole would not "come
and their equivalents."
Court Correctly
A. The '300 Patent
Disclaims
That Are Permanently
mechanical
detachable
the use of a detachable
The '300 patent
that a U-shaped
using a feature of one embodiment
a detachable
expressly
suggests
specifies
means for selectively
Construed
"Secured"
In The '300 Patent
Rear Soles
Locked
In Place
that "[i]n all embodiments,
locking
the invention
the rear sole relative
34
I
can be used in other
It will be apparent to those skilled in the art that various modifications
and variations can be made in the state of the present invention
I
I
I
that features
embodiments:
I
I
I
I
suggests
includes
to the rear sole
a
I
I
support
and upper of the shoe."
I
5/17/05
Order
I
embodiments"
I
I
I
I
I
being
(emphasis
language
is a clear disclaimer.
According
added).
here is confirmed
invention
integral
'300 patent
at 23-24)
The disclaimer
its disclosed
(A0128,
to the '300 patent,
This Court has held that such "all
SciMed,
sole."
(A0125,
its invention
integral
rear soles that must be replaced
A0125,
'300 patent
I
I
I
(A0127,
'300 patent
is superior
at col. 6, I1.46-59
at col. 4, 11.52-66;
The '300 patent's
distinguish
I
squarely
to prior art shoes with
in its invention:
its invention
within SciMed.
the present
invention"
(emphasis
of positions
with a means
added).
See also A0126-127,
col. 6, 11.7-15).
express
"all embodiments"
disclaimer
over prior art shoes with non-adjustable
In SciMed,
feature
the patent recited
a coaxial
and its attempts
to
rear soles brings
that "all embodiments
lumen configuration.
35
I
at col. 1, 11. 15-43).
as soon as the rear sole wears out (e.__.,
at col. 1, 11. 15-43), because
'300 patent
I
I
to distinguish
provided to allow the user to secure the rear sole at each desired
position.
After a period of use, outsole 154 [of rear sole 150] will
exhibit a wear pattern at the point in which the heel first contacts the
ground, when the user is running, for example.
Excessive wear
normally occurs at this point, and at midsole [] generally above this
point, degrading the performance
of the rear sole. When the user
determines
that the wear in this area is significant,
the user can rotate
the rear sole so that the worn portion will no longer be in the location
of the user's first heel strike.
'300 patent
I
attempt
over prior art shoes "with the rear sole
[The rear sole] may be moved to a plurality
I
I
242 F.3d at 1343.
by the '300 patent's
as an improvement
with the forward
at col. 7, II. 17-21; A0023-24,
SciMed,
it
of
242 F.3d at
I
I
I
1343.
specification,"
I
I
I
requiring
Id____.
at 1343-44
(emphasis
In addition,
I
I
of a disclaimer:
the Court found that the SciMed
confirmed
because
attempt
it lacked the necessary
to paint the
coaxial
lumen
the disclaimer:
configuration,
because earlier in the patent the patentee had
distinguished
the dual lumen configuration
used in the prior art
devices as having disadvantages
that the coaxial lumens used in the
patented
invention
Id__._.
at 1344 (emphasis
Consistent
patent
disclaims
from its subject
means,
district
court therefore
(A0025,
added).
with the foregoing,
locking
"selectively
had overcome.
court correctly
construed
ruled that the '300
matter any shoes that omit the required
i.e., any shoes with a rear sole permanently
or permanently
5/17/05
the district
"secured"
fastened,
Order at 25).
selective
locked in position.
in the '300 patent's
but not permanently
36
I
patent's
Moreover, there is no suggestion that the patentee made that ["all
embodiments"]
statement unaware of the alternative
dual lumen
I
I
of the
added).
dual lumen prior art as inferior
I
I
I
portion
scope of the claim language.
configuration
I
I
a finding
to be "the most compelling
The words "all embodiments
of the present invention" are broad and
unequivocal.
It is difficult to imagine how the patentees could have
been clearer in making the point that the coaxial lumen configuration
was a necessa_., element of eve_ variant of the claimed invention ....
This is therefore a clear case of disclaimer of subject matter that,
absent the disclaimer, could have been considered to fall within the
I
I
I
The Court found this language
claims
to mean
fixed into position."
The
I
I
In doing so, the district
I
Like in SciMed, the '300 Patent's specification
discusses only a rear
sole that is movable.
None of the language cited by Akeva refutes the
notion that the rear sole must be moveable.
Akeva refers to the
I
I
statement that the 'flexible region..,
can be used with permanently
attached rear soles." This statement excludes only the detachability
feature, one which the court does not read into the claim term, and
does not address the movability of the rear sole. Likewise, the
remainder of Akeva's arguments are addressed to the notion of
I
detachability.
Akeva has cited no statement in the '300 Patent's
specification,
and the court has found none, that would contemplate
rear sole that is permanently
locked into position.
I
I
I
(A0025,
5/17/05
Akeva
Order at 25) (emphasis
contends
has failed to address
I
I
I
I
court noted that:
Akeva's
appeal
the explicit
that the district
the tbregoing
does it identify
disclaimer
locked
sole that is permanently
I
The '300 Patent
argues
citations
claim construction
basis for the Court's
any statement
is incorrect,
in the '300 patent
positions
omitted).
construction.
of the invention"
into different
locked
An Adjustable
Akeva
court's
that "all embodiments
that can be selectively
B.
added and internal
a
but
Nowhere
(1) contradicting
feature
a rear sole
or (2) contemplating
a rear
into position.
Discloses
But Permanently
that the district
court's
Attached
"secured"
Rear Sole
construction
for the '300
I
I
patent
I
district court's interpretation defines a structure that is not depicted in the '300
I
is incorrect
because,
according
rear sole that is both permanently
patent.
(E._., Akeva at 21).
to Akeva,
attached
Akeva
the '300 patent does not depict a
and adjustable
is wrong,
37
I
in
however,
and, therefore,
because
the
(1) contrary
to the
I
I
I
I
I
foundation
require
patent
I
I
I
'300
I
I
disclose
a rear sole that
First,
Akeva's
argument
patent
construed
place,
I
I
I
the '300
regardless
is disclosed
Akeva's
can be locked
district
court
the rear sole is rotated
5/17/05
explains
(Id.;
Order
at 20).
that "the
A0128,
'300
that
permanent
the district
in the
court
locked
in
or permanently
attachment
construction
the '300
is not a
and whether
that
patent
into different
For example,
patent
does
not disclose
a rear
feature
the '300
patent
not be removable
patent
7, 11.42-43).
separating
Akeva
to the district
court,
"Figure
38
specification's
but only
As the
in
(A0020,
unambiguously
rotatably
positionable."
also explains
that "the
the rear sole support,"
3 shows
sole
embodiments
but not detachable.
The patent
it from
is incorrect.
in fact disclose
positions,
rear sole may
at col.
does
but is not detachable
I
I
Rather,
"secured"
sole that is not permanently
claim
the '300
without
argued
and adjustable.
of the district
is also detachable
positions
sole may be rotated
itself
attached
did not construe
Thus,
not
is irrelevant.
into different
found,
a rear
at 25).
argument
correctly
court
does
if it did, the '300
on a mischaracterization
court's
patent
construction
and (2) even
permanently
the rear sole
Order
claim
and adjustable.
as requiring
the district
in the '300
Second,
attached
5/17/05
under
is both
is based
of whether
court's
attached;
The district
patent
(A0025,
element
which
I
construction.
as permanently
attached.
that
the district
does
claim
claim
I
I
argument,
a rear sole that is permanently
court's
I
for Akeva's
and,
as
a rear sole that can be
rear
I
i
I
I
rotated
without
A0127,
detaching
'300 patent
For Partial
Reconsideration
I
I
that can be moved
I
While
I
I
i
I
from the '300 patent confirms
into different
positions
at 20; A0100,
Mem. In Support
Cl. Construction
of Mot.
Order).
that it discloses
(such as through
the above discussion
is directed
towards
rotation),
a rear sole
but not
a rear sole that rotates
rear sole is rotatable or removable.
For example,
sole, e.g., the center area, may remain stationary,
a portion of the rear
while the periphery
of the ground-engaging
surface or outsole rotates andor
As another example, the rear sole may not be removable
rotatably positionable.
(A0128,
'300 patent
Akeva's
construction.
at col. 7, II. 35-44) (emphasis
argument
Although
Akeva proposes
soles that are permanently
does not describe
rotated
added)).
locked
that "secured"
into place,
with the district
into different
court's
described
construction
I
39
locked
claim
to cover rear
that the '300 patent
into place.
and the '300 patent's
in the '300 patent depicts
positions.
be construed
it is undisputed
any rear soles that are permanently
every embodiment
is detachable.
but only
also makes no sense in light of its own proposed
I
I
A0762,
Order
from the shoe:
consistent
I
Of The Court's
5/17/05
or- separates in its entirety, it is specifically contemplated
that the
same benefits of this invention can be achieved if only a portion of the
I
I
I
I
" (A0020,
at Fig. 3 and col. 6, 11.58-63;
Other language
detached
the rear sole ....
Rather,
disclaimer,
a rear sole that can be
I
I
C.
I
Akeva's
discloses
I
!
another to which
I
two inventions,
identify any evidence
•
Akeva
applies and
this "two invention"
theory
invention:
where the
described
of the '300 patent
the invention"
Akeva has failed to identify any disclosed
embodiment
therein;
contradicting
its
must have a selective
in the '300 patent
"second
invention"
that does not feature a selective
or any
locking
means.
The '126 Patent
Support
Although
by claims
I
I
language
means; and
I
!
"second"
that "in all embodiments,
allegedly
Order, and Akeva is unable to
has failed to identify any portion
1.
I
the '300 patent
states that there is more than one invention
locking
•
of this so-called
Is Baseless
Akeva has failed to identify any section of the '300 patent
patentee
•
because
one to which the "all embodiments"
prior to the district court's Claim Construction
I
I
is inapplicable
Argument
it does not. Akeva never presented
requirement
I
I
I
Than One Invention"
Akeva argues that SciMed
I
!
I
"More
Akeva
sole and not a flexible
Akeva's
repeatedly
in earlier patents
Does Not
Two Invention
argues
in which
that its two invention
it allegedly
plate, it attempts
Theory
claimed
to identify
theory
is supported
only a positionable
only one such claim:
rear
claim 19
of the 'l 26 patent. However, Akeva's argument that claim 19 of the '126 patent is
40
I
I
I
I
I
I
I
I
I
I
I
I
I
somehow
relevant
baseless.
(Akevaat
bearing
on whether
feature
an adjustable
the ' 126 patent
I
i
interpretation
has consistently
the '300 patent
rear sole.
merely
claimed
describes
in the '300 patent
confirms
that Akeva
an adjustable
is
rear sole has no
a second invention
To the contrary,
that does not
to the extent relevant,
considered
the adjustable
claim
19 of
rear sole as
part of its invention.
Second,
claim
19 of the '126 patent
'126 patents
have materially
of a patent's
specification.
construction
of the '126 patent's
in the '300 patent,
relevant
F.3d
application
"specification
Indus.,
histories
Markman,
claims
the two patents
specification.
1340, 1349-50
different
is not relevant
specifications.
to be relevant
must, among
See, e.__., Microsoft
is identical
claims
Accordingly,
for all three patents");
Sys., Inc., 357
the prosecution
patents
Laitram
patents,
which shared a common
another).
41
of claims
share the same
of an earlier
because
the
Corp. v. Morehouse
Inc.i 143 F.3d 1456, 1460 n.2 (Fed. Cir. 1998) (applying
of two sibling
for the correct
to the construction
other things,
in later related
the '300 and
must be read in light
Corp. v. Multi-Tech
(Fed. Cir. 2004) (considering
in construing
here because
Claims
52 F.3d at 979.
I
I
of"secured"
18).
First, that Akeva
patent
I
I
to the Court's
written
the prosecution
description,
to one
I
I
I
I
I
I
I
I
I
The '300 patent
' 126 patent.
For example,
does not state that "in all embodiments
mechanical
means for selectively
support
I
the Court relied in construing
locking
and upper of the shoe."
disclosures,
claim
of "secured"
explicit
Akeva
identifies
locked
the '300
of a flexible
the adjustable
has no bearing
on several
theory, but these sections
can be adjustably
addition
the two patents
region
express
includes
to the rear sole
have different
on the correct
ignoring
into different
patent
sections
construction
the '300 patent's
disclosed
invention:
42
invention
In fact, contrary
that the alleged
second
or plate to the rear sole - is a preferred
rear sole invention
to support
nor
of all shoes lacking a rear sole that
positions.
specifies
of the '300 patent
neither identify a second
disclaimer
I
I
The
suggests.
and relies
the '300 patent's
position,
the '300 patent claims.
the invention
and does not justify
from the
Akeva Has Failed To Identify Any Statement
In The '300 Patent Contradicting
Its
Express Disclaimer
Of All Shoes Lacking
A Means For Selectively Locking
The Rear Sole Into Different Positions
its two invention
current
as Akeva
from that of the
the disclaimer
the rear sole relative
Because
19 of the 'i 26 patent
in the '300 patent
disclaimer
materially
the ' 126 patent does not include
'126 patent
contradict
I
I
differs
on which
I
I
I
however,
'300 patent
2.
I
I
specification,
in the patent,
to Akeva's
invention
embodiment
- the
not a second,
of
separate
I
I
While
I
I
sole support,
(A1028,
or rear sole) immediately
'300 patent
Akeva
that the patent
at col. 7, 11.35-50)
has cited no portion
discloses
the '300 patent's
statement
rear sole support
embodiments
I
I
rear sole to be adjustably
recitation
express
a rear sole that
I
means
I
upper of the shoe."
(A0128,
The '300 patent's
For example,
at 36).
disclosed
separate
However,
states that
Akeva
relies on
into other
it is undisputed
in the '300 patent allows
positions.
invention
Accordingly,
argument
the invention
the rear sole relative
the
this
or contradict
includes
the
a mechanical
to the rear sole support
and
'300 patent at col. 7, 11.17-20).
description
attached
where the patentee
region may be incorporated
into different
Akeva's
locking
added).
(Akeva
that "In all embodiments,
for selectively
with "permanently
as well."
locked
it.
inventions.
embodiment"
does not support
disclaimer
(emphasis
that the "flexible
that each "rear sole support
below
of the '300 patent
two independent
I
I
I
towards
present
invention
includes a flexible region 200 that is positioned
above the rear sole and has a central portion that in its normal
unflexed state is spaced upwardly from the portion of the shoe (rear
I
I
is directed
rear sole, e.g., the center area, may remain stationary
while the
periphery
of the ground-engaging
surface or outsole rotates and/or is
detachable.
As another example, the rear sole may not be removable
but only rotatably positionable.
In the preferred
embodiment
of the invention, the shoe of the
I
I
I
discussion
rotates or separates in its entirety, it is specifically
contemplated
that
the same benefits of this invention can be achieved if only a portion of
the rear sole is rotatable or removable.
For example, a portion of the
I
I
I
the above
that the disclosed
rear soles"
likewise
43
flexible
region can be used
does not support
Akeva's
two
I
I
I
invention
theory.
not address
I
discussed
I
I
selectively
attached
I
locking
(Akeva
whether
above,
at 38).
it can be selectively
a rear sole is permanently
locked
the '300 patent discloses
locked
into position,
and can be selectively
however,
Whether
disclose
or suggest
positions.
and can be
rear soles that are permanently
into position.
The '300 patent
does not,
any rear sole that lacks a means for selectively
the rear sole into different
positions.
As the district
court correctly
I
I
While the specification
does not disavow permanent
attachment,
does contain an express statement that disclaims a rear sole
I
and upper of the shoe.'
I
None of the language cited by Akeva refutes the notion that the rear
sole must be movable.
Akeva refers to the statement that the 'flexible
I
I
I
I
region..,
can be used with permanently
attached rear soles.' This
statement excludes only the detachability
feature, one which the court
does not read into the claim term, and does not address the movability
of the rear sole. Likewise, the remainder of Akeva's arguments are
addressed to the notion of detachability.
Akeva has cited no statement
in the '300 Patent's specification,
and the court has found none, that
(A0020,
contemplate
A0025,
Likewise,
I
summary
I
inventions.
I
invention
a rear sole that is permanently
5/17/05
Order at 20, 25) (emphasis
although
of invention,
Akeva
locked into place.
in original).
relies on the '300 patent's
these sections
of the patent
Rather,
they describe
the preferred
described
in the patent:
"[i]n the preferred
44
I
it
permanently
fixed in place. The written description specifically
states
that "[i]n all embodiments,
the invention includes a mechanical
means
for selectively locking the rear sole relative to the rear sole support
would
does
As
rear soles that are detachable
and it discloses
locked
into different
attached
abstract
and
omit any reference
embodiment
to two
of the one
embodiment
of the
ruled:
I
I
I
I
I
I
I
invention,
the shoe of the present
(A1028,
'300 patent
abstract
or summary
requirement
preferred
I
I
selectively
if the
locking
'300
patent
a flexible
200."
Nothing
in the
express
invention
- including
the
region or plate - the shoe must
locking
locked
In Phillips,
given
did not disclaim
this
because,
understand
the rear sole."
(A0128,
Court
to a claim
held
all shoes
positions,
"secured"
lacking
the district
in light of the intrinsic
that
"the
term that differs
In such cases, the inventor's
The Court
Disclaimer
record
a means
court's
for
claim
as a whole,
one
as used in the '300
patent
claims
to
specification
reveal
a special
into position."
governs."
also held that any such special
definition
that a patentee
I
used in the specification.
I
throughout
can specially
the entire patent
define
may
from the meaning
lexicography
I
I
of the present
the rear sole into different
still is correct
mean "selectively
1316.
the patent's
means for selectively
in the art would
possess.
added).
region
at col. 7, 11. 17-20).
construction
definition
(emphasis
a flexible
The District Court's
Construction
Is
Correct Even Absent The '300 Patent's
Even
skilled
I
featuring
includes
contradicts
that in all embodiments
'300 patent
D.
I
I
of invention
"a mechanical
I
I
I
at col. 7, 11.35-50)
embodiment
include
invention
a term though
it would
otherwise
Phillip_s., 415 F.3d at
need
the manner
not be explicit,
in which
the term is
Id___.
at 1320-21. "[W]hen a patentee uses a claim term
specification,
in a manner
45
consistent
with only a single
I
I
I
I
meaning,
he has
Services,
Inc. v. Covad
2001 ), quoting
I
I
I
I
defines
shoe.
by implication
'by
In particular,
Group,
rear sole support
into different
patent,
Inc., 262 F.3d
positions.
'300 patent
11.30-31;
the invention
col. 4, 11.43-45;
I
defines
I
one of several possible
"securing"
•
press-fitted
Cir.
and
the heel region to the disclosed
removed
includes
depicted
mechanical
to the rear sole support
to
and locked
in the '300
and locked into different
means
positions:
for selectively
and upper of the shoe."
See also A0125-127,
identifies
this means for selectively
means"
as "securing"
and the process
the rear sole.
'300 patent
locking
of selectively
For example,
the rear sole as the act of selectively
"To secure
1271 (Fed.
at col. 2,
col. 5, 11. 14-20; col. 6, 11.46-52).
as the "securing
rear sole into position
1258,
Network
that the rear sole 150 is "secured"
removed
at col. 7, 11. 17-20.
The '300 patent
Atlantic
the specification
In each of the shoe embodiments
the rear sole relative
(A0128,
throughout
140 so that the rear sole can be selectively
the rear sole can be selectively
locking
Bell
90 F.3d at 1582.
the '300 patent discloses
into position
locking
the rear sole
locking
the
the '300 patent
the rear sole into
positions:
rear sole 150 to rear sole support
into
recess
146
until
I
I
implication.'"
what it means to "secure"
I
I
I
term
Commc'ns
Vitronics,
"[i]n all embodiments,
I
I
that
The '300 patent uses the word "secured"
I
I
defined
46
knobs
140, rear sole 150 is simply
165
engage
corresponding
I
I
openings
I
rear sole
I
support
"[The
I
I
I
I
I
I
position."
(A0127,
I
"secured"
of"secure,"
locked
that "the specification
Vitronics,
to a plurality
to secure
ways
in which
the
locked
to the rear sole
'300 patent
at col. 5, 11. 14-
the
of positions
rear
at col. 6, 11.49-51)
sole
(See, e.__., A0126,
Accordingly,
consistent
one skilled
[u]sually...
of a disputed
term,'"
90 F.3d at 1582), the district
at each
desired
added).
locking
the rear
131, '300 patent,
with the '300
in the art would understand
into position."
....
with a means
(emphasis
the means for selectively
Thus,
applying
is dispositive;
Phillis,
court correctly
the Phillips.
it is the
415 F.3d at 1321
construed
even absent its disclaimer.
Flow Control
construction
thus falls under this Court's
decision
in Curtiss-
Corp. v. Velan, Inc., 348 F.3d 1374 (Fed. Cir. Feb. 15, 2006).
I
I
and/or
(A0127,
member."
col. 13, 11.31-40).
The "secured"
Wright
user
defines
as the "securing
single best guide to the meaning
(quoting
mechanical
repositioned,
'300 patent
to mean "selectively
holding
I
I
the
the '300 patent
use and definition
Court's
150 into the shoe at any
added).
to allow
at col. 3, 11.18-22;
rear sole
is one of several
rear sole] may be moved
sole into position
"secured"
of locking
or other part of the shoe."
provided
Likewise,
patent's
positions
can be removed,
20) (emphasis
I
I
This manner
one of several
I
I
145.
47
I
I
I
In Curtiss,
I
manner
I
I
I
I
I
the district
"adjustable"
to mean
or means
the district
without
describes
that
requires
I
I
I
I
I
The
rear
context
same
sole as being
process
support
F.3d
I
limited
I
definition
I
Cir. 2005)
fixed
fixing
2006
U.S.
context
App.
consistent
of its invention);
Nvstrom
(construing
"board"
uses "board"
consistently
with
as limited
into position
(construing
wood
48
decking
cut from
material
the
the
that
would
find no
On Demand,
"customer'
as
use of the term
Co., 424 F.3d
to wood
I
I
a construction
specification's
v. Trex
describes
Id.._:at 1378°79;
at *17-18
no support
describes
and consistently
patent.
held
"a structure
finds
the '300
7889
to describe
this Court
Id.._:at 1379.
of the '300
of adjustable
and without
specification."
fixed
that
of the specification."
the adjustment,
not selectively
customer
meaning
to include
patent
place,
holding
operation,"
of 'adjustable'
into position
LEXIS
by any time,
"consistently,
during
to perform
to construe
reversed,
the context
the rear sole as "securing,"
a rear sole that was
to a retail
specification
Because
Court
on the ordinary
that occurs
patent
selectively
in the overall
1331,
of the..,
is not limited
of the patent
of the valve
definition
This
within
construction
is true here.
of selectively
encompassed
emphasis
of that term
broad
that
Id_.__.
at 1378.
the adjustment
court's
dictionary
in a manner
the specification
dismantling
in the overall
a broad
too much
grounding
Because
that the district
"changed
"places
adequate
exception,
applied
of adjustment."
court
Id___.
at 1378.
court
1136,
1143-44
a log because
cut from
and
(Fed.
the
a log).
442
I
I
IV.
adidas Also Is Entitled To Judgment Of
Non-Infringement
Of The '300 Patent Because
The Accused Shoes Lack The Claimed "Flexible
I
I
I
I
In addition to the district
accused
shoes also do not infringe
they lack the claimed
requires,
I
I
I
I
93).
court's
among
court's
a explicit
5/17/05
definition
Order at 28-32).
"flexible
plate"
in the '300 specification.
Applying
as "a smooth,
5/17/05
Order
has now rejected
I
with our rulings
of a disputed
defines
term,'
the district
at claim
the now
definitions
(A0028-32,
court construed
thin piece of metal or
that is admittedly
in the '300 patent,
which
at odds with the
are neither
smooth
at 28-30).
the dictionary-type
of "flexible
of claim language
that the specification
approach
plate."
by the
As stated in Phillips,
be express,
is
is 'the single best guide to the
'acts as a dictionary
terms used in the claims or when it defines
49
followed
in the specification
and that the specification
I
I
on dictionary
flat, and relatively
a construction
court in its initial construction
meaning
expressly
that is bendable,"
that any definition
Texas Digital,
usually
nor flat. (A0028-30,
inconsistent
it followed
plate"
I
I
analysis,
claims
'300 patent
of"flexible
plates described
"requiring
(E.___.,A0134,
heavily
only kind of flexible
I
'300 patent
relying
I
district
plate."
adidas'
of the '300 patent because
approach,
other material
I
of"secured,"
Each of the asserted
a "flexible
I
Phillips
claims
initial claim construction
strict Texas Digital
absent
construction
the asserted
plate."
other things,
In the district
rejected
"flexible
correct
Plate"
terms by
when it
I
I
I
implication."
According
I
I
I
I
Because
the district
claim construction
definition,
despite
analysis,
resulting
it improperly
in an "unduly
the clear restriction
Applying
single
court did not have the benefit
I
I
I
cause the
_'
holding
"flexible
plate."
Here, "flexible
plate"
patent,
a "flexible
member"
plate"
expansive"
that is separate
orplate."
(A0128,
In addition,
member,"
construction
of a disputed
of material
of "flexible
usually
term,'"
specification.
id., quoting
fact that accused
as a type of the disclosed
from, and can be removed
plate"
"is dispositive;
is a term coined by the patentee,
is defined
its initial
started with a broad dictionary
that the specification
best guide to the meaning
the claimed
of Phillig_fi during
placed on the term in the '300 patent
region 200 can be incorporated
I
90 F.3d at 1582).
Id. at 1321.
I
I
I
Vitronics,
to the Court:
F.3d at 1582, there is no question
I
(quoting
implicitly limits that definition, the error will systematically
construction
of the claim to be unduly expansive.
I
I
415 F.3d at 1320-21
The problem is that if the district court starts with the broad dictionary
definition in every case and fails to fully appreciate how the specification
I
I
Phillips,
it is the
Vitronics,
90
adidas shoes lack
and, in the '300
"flexible
from, the shoe:
into the shoe or can be a separate
region or
"[t]he flexible
flexible
member
'300 patent at col. 7, II. 63-65).
a "flexible
and the '300 patent
plate"
is a type of "flexible
consistently
region"
and "flexible
uses these three terms to refer to a heel
50
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element
that is not flat (as a plate is defined
portion
that is raised above
its peripheral
in dictionaries),
portions
but which
its unflexed
has a central
state:
In each of the embodiments
the central portion of the flexible member
is raised relative to its outer perimeter so that when placed in the shoe,
the interior portion in its normal state does not touch the rear sole
support and/or rear sole. As a result, the interior of the flexible
member will flex in response to the user's stride without first, if ever,
contacting the rear sole support and/or rear sole. (A0130, '300 patent
at col. 12, 11.34-41).
In each of these embodiments,..,
the interior portion of the flexible
member is elevated relative to its periphery when the flexible member
is positioned
in the shoe in its normal
col. 10, 11.20-24).
position.
(A0129,
'300 patent
at
[The] flexible region 200...
is positioned above the rear sole and has
a central portion that in its normal unflexed state is spaced upwardly
from the portion of the shoe (rear sole support, or rear sole)
immediately
below it. (A0128, '300 patent at col. 7, 11.45-50).
[T]he middle of the flexible member can flex under the weight of the
user without being impeded by rear sole 150. Flexible member 200
thus acts like a trampoline
to provide extra spring in the user's gait...
(A0128,
'300 patent
Accordingly,
term, "flexible
material
periphery.
at col. 8, 11.28-33).
consistent
plate"
with Phillip,_fi and the '300 patent's
should be construed
that in its normal
state has a central portion
(See, e._g:.,A0125-130,
col. 7, I. 63 -col.
as a separate
'300 patent,
8, 1.3; col. 8, ll. 25-34;
and removable
that is elevated
at col. 2, 11.35-43;
col. 9, ll. 24-29:
51
definition
of the
piece of
relative
to its
col. 7, 11.45-54;
col. 10, ll. 12-32; col. 12,
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11.30-42).
Phillips,
On Demand,
442 F.3d
424 F.3d at 1143-44;
Akeva
shoes (1) is an integral
replaced;
above
Summ.
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Bell Atlantic,
part of the accused
J.; A2023-24,
Resp. To adidas'
judgment
(A2011-12,
portion
that is positioned
A2015,
shoes lack the claimed
"flexible
"secured."
CONCLUSION
be affirmed.
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adidas'
Ph.D.; A2043-44,
52
accused
be removed
below -not
Br. In Support
plate."
or
elevated
Of Its Mot. For
Akeva's
there is no genuine
of the '300 patent regardless
below should
N',/strom,
plate in adidas'
adidas shoes that cannot
Mots. For Summ. J.). Accordingly,
The judgment
7889 at '17-18;
flexible
Decl. Of Keith R. Williams,
of no infringement
348 F.3d at 1378-79;
262 F.3d at 1271;
that the alleged
and (2) has an interior
- its periphery.
Curtiss-Wright,
1331, 2006 U.S. App. LEXIS
does not dispute
thai the accused
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415 F.3d at 1320-21;
dispute
Thus, adidas is entitled
of the construction
to
of
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Respectfully
ADIDAS
AMERICA,
INC.
By its attorneys,
v
J)_Y..Kline
S_J 3-./Z/_ e/_,_
/
Douglas
Richard B. Myrus
William A. Meunier
GOODWIN PROCTER
53 State Street
LLP
Boston, MA 02109
Phone: (617) 570-1000
Fax: (617) 532-1231
James H. Kelly, Jr.
KILPATRICK
STOCKTON
1001 West Fourth Street
Winston-Salem,
(336) 607-7300
Attorneys
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submitted,
53
LLP
NC 27101
for Defendant-Appellee
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PROOF
OF SERVICE
I certify that on May 8, 2006, the original and eleven copies of the foregoing
BRIEF OF DEFENDANT-APPELLEE
ADIDAS
AMERICA,
INC. were filed
with the Court by hand delivery
Clerk
to:
U.S. Court of Appeal for the Federal
717 Madison Place, NW
Washington,
DC 21439.
I certify that on May 8, 2006, two copies of the foregoing BRIEF OF
DEFENDANT-APPELLEE
ADIDAS AMERICA,
INC. were served on the
following
by Federal
Express
Overnight
Delivery
addressed
Scott A. Schaaf,
Esq.
Tuggle, Duggins
P.O. Box 2888
& Meschan,
Greensboro,
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as follows:
P.A.
NC 27402-2888
Dirk D. Thomas, Esq.
Robins Kaplan Miller & Ciresi L.L.P.
1801 K St., N.W.
Suite 1200
Washington,
D.C.
20006
One of the Attorneys
I
Circuit
for adidas America,
Inc.
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CERTIFICATE
OF COMPLIANCE
This brief complies
Appellate
Procedure
with the type-volume
32(a)(7)(B).
parts of the brief exempted
WITH
TYPE-VOLUME
limitation
The brief contains
by Federal
of Federal
12,034 words,
Rule of Appellate
LIMITATION
Rule of
excluding
Procedure
32(a)(7)(B)(iii).
I
Date:
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May 8, 2006
Douglas J. Kline
One of the Attorneys for DefendantAppellee adidas America, Inc.
the