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Hockerson-Halberstadt, Inc., Plaintiff/counterclaim Defendant- and American Sporting Goods Corp., Counterclaim v. Avia Group International, Inc., Defendant/counterclaimant-Appellee, and Reebok International, Ltd.

Citations: 222 F.3d 951; 55 U.S.P.Q. 2d (BNA) 1487; 2000 U.S. App. LEXIS 18139Docket: 99-1505

Court: Court of Appeals for the Federal Circuit; July 27, 2000; Federal Appellate Court

Narrative Opinion Summary

In this patent infringement case, Hockerson-Halberstadt, Inc. (HHI) brought action against Avia Group International, Inc. (Avia) alleging infringement of U.S. Patent No. 4,259,792, which pertains to a specific athletic shoe design. The patent describes a heel with a central longitudinal groove that creates peripheral fins, aimed at improved impact cushioning. The district court's claim construction played a pivotal role, leading HHI to stipulate non-infringement and dismiss its claims, while Avia withdrew its counterclaims. The final judgment, which HHI appealed, was centered on the interpretation of 'central longitudinal groove.' The appellate court reviewed this de novo, affirming the district court's construction based on intrinsic evidence, including the patent's language and prosecution history. During patent prosecution, adjustments were made to distinguish the design from prior art by emphasizing a narrower groove. The court found that the inventor's prosecution history statements, which limited the groove's width, were binding and essential to the patent's public notice function. Consequently, the appellate court affirmed the district court's judgment, maintaining the interpretation that the groove width could not exceed the combined width of the fins, with each party bearing its own costs.

Legal Issues Addressed

Claim Construction in Patent Infringement

Application: The court reviews the district court's claim construction de novo, focusing on intrinsic evidence such as claim language, written description, and prosecution history, while extrinsic evidence is used only to understand technology and must not contradict intrinsic evidence.

Reasoning: Claim construction is a legal issue reviewed de novo, requiring analysis of intrinsic evidence from the patent record, including claim language, written description, and prosecution history.

Effect of Prosecution History on Claim Interpretation

Application: The prosecution history demonstrated that the inventor disclaimed certain interpretations of 'groove,' binding the inventor to a specific, narrower meaning different from prior art.

Reasoning: Statements made during prosecution bind the inventor to a specific claim term meaning.

Intrinsic Evidence in Patent Interpretation

Application: The court determined that the intrinsic evidence, including the patent's written description and prosecution history, supports a specific interpretation of the patent claim terms concerning the 'central longitudinal groove.'

Reasoning: A court may not use extrinsic evidence for claim construction if the meaning of a claim is clear from intrinsic evidence.

Public Notice Function of Prosecution History

Application: The court emphasized the public notice role of prosecution history, indicating that the inventor's statements on groove width are essential for competitors to understand the patent's scope.

Reasoning: HHI's argument seeks to eliminate the inventor's prior disavowal regarding the meaning of a claim term, which undermines the public notice function of prosecution history.