Benetton Sportsystem USA, Inc. v. First Team Sports, Inc.
Docket: No. 02-1004
Court: Court of Appeals for the Federal Circuit; June 14, 2002; Federal Appellate Court
Benetton Sportsystem USA, Inc. appeals a summary judgment of noninfringement granted by the U.S. District Court for the District of New Jersey in favor of First Team Sports, Inc. concerning U.S. Patent No. 6,050,574, titled “Adjustable Fit In-Line Skate.” The patent addresses the issue of costly frequent purchases of in-line skates for growing children by introducing a skate design that can be adjusted for different foot sizes. Specifically, the invention includes a boot with a slidable toe portion and a liner featuring an extendible region to accommodate varying foot sizes.
The legal dispute primarily revolves around the construction of the patent claims related to the liner. Claims 1 and 2 describe a skate with specific structural features, including a generally inelastic heel and an extendible region between the toe and tongue. Benetton accused First Team’s product of infringement, noting its liner has both an inelastic heel and an elastic front section. The district court determined that the extendible region must be entirely located between the toe region and the tongue, leading to its conclusion that no reasonable juror could find infringement since the accused device’s extendible region overlaps with the toe region. Consequently, the court ruled there was no literal infringement of the patent claims. However, the appellate court found the district court’s claim construction to be improper, resulting in a reversal and remand of the case.
The district court determined that there was no infringement under the doctrine of equivalents based on the precedent set in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Additionally, the court ruled that the patentee's amendments to the patent claims, in light of prior art from Scholz, excluded coverage of an expandable region that was not entirely situated between the toe region and the tongue. Benetton's appeal focuses solely on the district court's claim construction.
The review of the district court's summary judgment is conducted de novo, meaning the appellate court examines the issue without deference to the lower court's conclusions. Summary judgment is warranted when no genuine material fact dispute exists, with all reasonable inferences drawn in favor of the nonmoving party. The appeal centers on the interpretation of the phrase “extendible region positioned between a toe region of the liner and the tongue.” First Team supports the district court's interpretation that the term mandates the extendible region be located entirely behind the toe region. Conversely, Benetton argues that this term should not impose such a restriction, allowing for overlap with the toe region.
Infringement analysis follows a two-step procedure: first, the court decides the correct claim scope as a matter of law, and then the fact-finder evaluates if the accused device meets the claim limitations. Claim construction begins with the language of the claims, interpreted according to their plain and ordinary meaning as understood by someone skilled in the art. Consistent terms throughout the claims are interpreted uniformly, and the court also considers the written description and drawings to ensure alignment with the ordinary meaning. Claims must be understood in context with the specification to which they belong.
The ordinary meaning of claim language is generally presumed, but may be overridden if: 1) the patentee has explicitly defined the term, or 2) the term creates ambiguity. Examination of the written description and drawings is critical to determine if the patentee has disclaimed or limited claim scope. Limitations from the specification cannot be read into the claims, and patent drawings do not confine claims to specific embodiments unless the specification explicitly states so. Consistent terminology within the written description can clarify disputed terms, as seen when different terms denote distinct concepts. The prosecution history is equally important, as statements made during patent prosecution can influence claim scope, potentially including explicit disclaimers of certain claim constructions. These disclaimers and statements can also guide courts in interpreting claims.
The district court identified two interpretations of “positioned between”: one indicating that some part of the extendible region can be located between the toe region and the tongue, and the other requiring the extendible region to be entirely between these two elements. It noted that the preferred embodiment of the liner shows a well-defined elastic extendible region bordered by the tongue and the toe region. However, the court chose not to limit its analysis based on the preferred embodiment, instead focusing on the prosecution history.
During prosecution, the patentee amended the claim language from “positioned adjacent to a toe region” to “positioned between a toe region and the tongue” to distinguish the invention from prior art, particularly the Scholz patent, which involved a stocking protector with an elastic region in the mid-foot area. The court determined that this amendment clarified the boundaries of the extendible region, establishing the tongue as the rear boundary and necessitating the toe region as the front boundary. Consequently, the court ruled that the extendible region could not extend beyond the tongue towards the heel or beyond the toe region towards the toe end.
In evaluating the accused device, which had an extendible region covering the entire front part of the shoe, the court found no distinct toe region separate from the extendible region, concluding that the extendible region could not be “between” the two defined regions. As a result, the court granted summary judgment of noninfringement. Benetton contended that the claim's requirement for an inelastic heel did not preclude an elastic toe or specify the boundary between the extendible and toe regions, arguing that the court's interpretation incorrectly excluded a liner where the entire forward part is elastic.
First Team contends that interpreting the claims to require an extendible region located forward of the tongue would effectively eliminate the significance of the term “between.” The district court highlighted that “between” can mean either an intermediate position relative to two objects or the space confined by them. While the first interpretation allows for overlap with the toe region, the latter suggests distinct separation. The court emphasized defining “between” within the patent’s context without addressing the specific meaning of “toe region.” The patent differentiates between the terms used for the toe areas of the boot and liner, using “portion” for the boot and “toe region” for the liner, implying these terms may have different meanings. The description indicates a clearly defined toe area for the boot, while the toe area of the liner is less clearly delineated. The interpretation of “toe region” is crucial for claim construction, particularly regarding its relation to the extendible region. If “toe region” is seen as separate from the extendible region, boundaries between them are necessary, aligning with the district court's analysis of “between.” Conversely, if it refers generically to where toes are located, the extendible region might fit between the toe region and the tongue. Definitions of “region” suggest an indefinite area, which could lead to varied interpretations. The preferred embodiment in the patent clearly shows the extendible section distinct from the inelastic toe, with the liner combining an inelastic toe portion and a main body connected by an expandable section around the instep.
An applicant is not obligated to describe every possible embodiment of an invention, as clarified in Rexnord case law. The distinction in language between "toe portion" and "toe region" in the patent suggests that "portion" refers to specific, separate components of an in-line skate, while "region" implies a less defined area. The patentee amended the claims to differentiate from the prior art Scholz patent, which described a sock-like structure with specific elastic and inelastic regions. The amendments included delineating the cuff as a boundary for the extendible region, but the distinction did not necessitate a precise front boundary for the toe region. The court agrees with First Team that Scholz posed a challenge but disagrees on the need for a strict forward boundary to differentiate the invention. It is established that the patentee’s amendments were sufficient to clarify the claims without over-surrendering scope, as indicated by the examiner’s remarks on allowable subject matter.
The examiner's use of "toe end" instead of "toe region" signals an understanding that the amendment introduces a rearward boundary for the "extendible region" rather than a forward one. The language implies that the accused device's elastic region covers the entire front part of the shoe. The patent language, particularly the term "portion," is defined with specific boundaries, contrasting with the more general "area," as seen in descriptions of foot areas. The interpretation of "toe region" is understood as a non-specific reference to the liner area where the toes are located, rather than a distinct section separate from the "extendible region." The prosecution history indicates no need for a fixed forward boundary for the "extendible region," and the examiner did not perceive the amendment as imposing one. Therefore, the phrase “extendible region positioned between a toe region of the liner and the tongue” is interpreted to allow for overlap or complete coverage of the "toe region" by the "extendible region." The conclusion reached is to reverse the district court's summary judgment of noninfringement and remand for further proceedings.
In dissent, Circuit Judge Newman supports the district court's interpretation that "between" implies a space limited by two objects, asserting that the extendible region cannot extend beyond the tongue toward the heel, nor beyond the toe region toward the toe end. Newman argues that the distinction between “region” and “portion” does not impact this reasoning, and he would affirm the district court's interpretation and judgment. The court expressed uncertainty regarding the exact definition of the "toe region," indicating it is not necessary to determine its precise boundaries for the case at hand.
