14 F.3d 1570 (Fed. Cir. 1994), 93-1281, Conroy v. Reebok Intern., Ltd.

Docket Nº:93-1281.
Citation:14 F.3d 1570
Party Name:29 U.S.P.Q.2d 1373 Robert CONROY, Plaintiff-Appellant, v. REEBOK INTERNATIONAL, LTD., Defendant-Appellee.
Case Date:January 04, 1994
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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14 F.3d 1570 (Fed. Cir. 1994)

29 U.S.P.Q.2d 1373

Robert CONROY, Plaintiff-Appellant,



No. 93-1281.

United States Court of Appeals, Federal Circuit

January 4, 1994

Rehearing and Suggestion for Rehearing In Banc Denied Feb. 15, 1994.

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[Copyrighted Material Omitted]

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Robert J. Emery, Buffalo Grove, IL, argued for plaintiff-appellant.

David K.S. Cornwell, Sterne, Kessler, Goldstein & Fox, Washington, DC, argued for defendant-appellee. With him on the brief were Tracy-Gene G. Durkin and William C. Allison, V.

Before CLEVENGER, Circuit Judge, BENNETT, Senior Circuit Judge, and SCHALL, Circuit Judge.

CLEVENGER, Circuit Judge.

Robert Conroy appeals the February 5, 1993 judgment of the United States District Court for the District of Massachusetts granting Reebok International, Ltd. (Reebok)'s motion for summary judgment of noninfringement of U.S. Patent No. 3,854,228 (the Conroy patent). Conroy v. Reebok Int'l Ltd., 27 USPQ2d 1794, 1993 WL 405479 (D.Mass.1993). We vacate and remand.


The Conroy patent, entitled "Athletic Armor and Inflatable Bag Assembly," claims air inflatable bladders used in athletic footgear to cushion and protect the feet of the wearer. The accused device is a basketball shoe, which incorporates air inflatable bladders, that Reebok manufactures and sells under the trademark THE PUMP.

On September 18, 1991, Conroy filed suit in the U.S. District Court for the Central District of Illinois alleging infringement of the Conroy patent by Reebok. Granting Reebok's motion for change of venue, the district court transferred the case to the U.S. District Court for the District of Massachusetts on February 24, 1992. On July 2, 1992, Reebok filed a motion for summary judgment of noninfringement and requested the imposition of sanctions. Before expiration of the 14-day period in which Mr. Conroy had to file his opposition to Reebok's motion pursuant to D.Mass.R. 7.1(A)(2), the district court granted motions by Mr. Conroy's attorneys to withdraw from the case in a July 13, 1992 telephone conference. At that time, the district court also extended the due date for Mr. Conroy to file his opposition, providing him with additional time in which to attempt to secure new counsel. Unable to do so, however, Mr. Conroy filed his opposition pro se on September 18, 1992. Based solely on Reebok's motion and Mr. Conroy's opposition, the district court entered summary judgment for Reebok of noninfringement of the Conroy patent and denied Reebok's request for sanctions. The only issue on appeal is the propriety of the district court's summary judgment of noninfringement.


The determination of infringement requires a two-step analysis: (1) a proper construction of the claim to determine its scope and meaning, and (2) a comparison of the properly construed claim to the accused device or process. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 3 F.3d 404, 407, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Claim construction is not an issue in this

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case. With regard to the second step of the infringement analysis, the patentee must prove that the accused device embodies every limitation in the claim, either literally or by a substantial equivalent. Id., 3 F.3d at 407, 27 USPQ2d at 1839. Moreover, the patentee has the burden of proving infringement by a preponderance of the evidence. Morton Int'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1468, 28 USPQ2d 1190, 1193 (Fed.Cir.1993).

The Conroy patent contains two independent claims, Claim 1 and Claim 4. Reebok does not deny that its accused PUMP shoe contains all but one of the limitations in the independent claims, basing its motion for summary judgment of noninfringement only on the last claim limitation in both Claim 1 and Claim 4. The only limitation at issue in Claim 1 recites:

a linking member connected at the opposite ends to the lower edge of the side foot portions so that the linking member fits against the bottom of the heel, whereby the inflatable member assumes said preset arched configuration.

The only limitation at issue in Claim 4 similarly recites:

a linking member of tubular configuration joining said spaced side foot portions to assume said preset arched configuration, said linking member of tubular configuration communicating with the air chamber formed by the side walls.

Figure 1 shows an embodiment of the Conroy air inflatable bladder, depicting the linking member as structure 72.


Figure 1

The facts regarding the structure of the accused PUMP shoe are undisputed. The air inflatable bladder of the Reebok shoe covers the top and sides of the wearer's foot and has two pairs of downward extending tabs on opposite sides of the foot that attach underneath the insole of the shoe to hold the bladder in place. Figure 2 shows the Reebok air inflatable bladder, depicting one of the accused tabs as structure 122.

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Figure 2

The parties agree that the accused PUMP shoe contains no structure which would meet literally the linking member limitation of either Claim 1 or Claim 4. While Mr. Conroy concedes that the Reebok shoe does not literally infringe the claims of his patent, he contends that the Reebok tabs constitute equivalents to the claimed linking member. Mr. Conroy thus seeks to establish infringement only under the doctrine of equivalents. Under this doctrine, an accused device infringes if it performs substantially the same function in substantially the same way to obtain substantially the same result as the claimed invention. Carroll Touch, 3 F.3d at 409, 27 USPQ2d at 1841 (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950)). The district court, however, never conducted a function-way-result equivalence analysis as set forth in Graver Tank. In granting Reebok's motion for summary judgment of noninfringement, the district court held that Mr. Conroy "present[ed] no evidence supporting a finding of infringement under the doctrine of equivalents." Conroy, 1993 WL 405479, 27 USPQ2d at 1797.

Furthermore, the district court held that "[e]ven assuming he had, [Mr. Conroy] cannot assert the range of equivalents necessary to prove infringement of his patent." Id. To reach this second alternative holding, the district court examined U.S. Patent No. 3,685,176 (the Rudy patent), entitled "Inflatable Article of Footwear," which issued on August 22, 1972 to Marion F. Rudy. Although the Rudy patent was not before the examiner as prior art during the prosecution of the Conroy patent application, Mr. Conroy does not contest its prior art effect here. In its specification, the Rudy patent states:

[i]f desired, the side portions 32 of the bladder may be disposed under the side margins 33 of the insole and suitably glued or otherwise adhered thereto. col. 5, 11. 10-12.

Figure 3 shows the Rudy air inflatable bladder, depicting the side portions relevant to this case as structure 32.

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Figure 3

Based entirely on the drawings and the side portions disclosure in the specification, the district court found that the Rudy patent disclosed "tabs ('side [portions]') attached to the sole of the boot [claimed in the Rudy patent]." Conroy, 1993 WL 405479, 27 USPQ2d at 1797. Relying on its finding that the tabs in the accused PUMP shoe were disclosed in the prior art, the district court concluded that Mr. Conroy "[could] not assert [a] range of equivalents, as a matter of law " that would encompass the tabs in the Reebok shoe. Id. (emphasis added) (citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 14 USPQ2d 1942 (Fed.Cir.), cert. denied, 498 U.S. 992, 111 S.Ct. 537, 112 L.Ed.2d 547 (1990); Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 17 USPQ2d 1806 (Fed.Cir.1991)). The district court thus entered summary judgment of noninfringement for Reebok.


This court reviews de novo a...

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