Hockerson-Halberstadt v. Avia Group Int'l

• Decision Date: 27 July 2000
• Docket Number: HOCKERSON-HALBERSTAD,INC
• Parties: (Fed. Cir. 2000) , Plaintiff/Counterclaim Defendant- Appellant, and AMERICAN SPORTING GOODS CORP., Counterclaim Defendant, v. AVIA GROUP INTERNATIONAL, INC., Defendant/Counterclaimant-Appellee, and REEBOK INTERNATIONAL, LTD., Defendant-Appellee. 99-1505 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 951

222 F.3d 951 (Fed. Cir. 2000)

HOCKERSON-HALBERSTADT, INC., Plaintiff/Counterclaim Defendant- Appellant, and AMERICAN SPORTING GOODS CORP., Counterclaim Defendant, v. AVIA GROUP INTERNATIONAL, INC., Defendant/Counterclaimant-Appellee, and REEBOK INTERNATIONAL, LTD., Defendant-Appellee.

99-1505

United States Court of Appeals for the Federal Circuit

DECIDED: July 27, 2000

Appealed from: United States District Court for the Northern District of California Senior Judge D. Lowell Jensen

Richard E. Backus, Flehr Horbach Test Albritton & Herbert LLP, of San Francisco, California, argued for plaintiff/counterclaim defendant-appellant. With him on the brief was Todd A. Lorenz.

David K.S. Cornwell, Sterne, Kessler, Goldstein & Fox, P.L.L.C., of Washington, DC, argued for defendant/counterclaimant-appellee. With him on the brief were Linda E. Alcorn, and Albert L. Ferro. Of counsel on the brief was D. Peter Harvey, Mussman & Harvey L.L.P., of San Francisco, California.

Before MAYER, Chief Judge, CLEVENGER and GAJARSA, Circuit Judges.

GAJARSA, Circuit Judge.

Hockerson-Halberstadt, Inc. ("HHI") sued Avia Group International, Inc. ("Avia") for infringement of U.S. Patent No. 4,259,792 ("the '792 patent"), covering an article of outer footwear, in the United States District Court for the Northern District of California. Following the district court's claim construction, the parties entered into a proposed order in which HHI stipulated to non-infringement and agreed to dismiss its claims with prejudice, and Avia agreed to dismiss its counterclaims without prejudice. The district court entered final judgment based on that order, and HHI appealed the court's claim construction. Because the district court correctly construed the claims, we affirm.

BACKGROUND

The '792 patent relates to the field of footwear, particularly athletic shoes, having a heel that is bisected by a central groove creating two peripheral fins. The central groove and double fin structure provides the user with a cushioning effect by distributing the downward force of footfall over a wide area of the heel. The figure below depicts a bottom view of one embodiment of the '792 patent, in which 72 and 74 are the fins and 70 is the groove.

[Tabular or Graphical Material Omitted]

Claim 1 of the '792 patent, representative of the other claims, provides as follows:

An article of outer footwear comprising [1] a footwear upper attached to a footwear base,

[2] said footwear base including a sole part and a heel part,

[3] said heel part having an upper surface on which the weight of a person's foot will press and a lower surface adapted to contact the ground, the area of the lower surface being greater than the area of the upper surface,

[4] said lower surface extending outside vertical planes passing through the upper surface at the periphery of the upper surface on both sides of the heel and behind the heel;

[5] a peripheral ridge extending upwardly from the upper surface on which the weight of the person's foot will press,

[6] said peripheral ridge being positioned to form along its inside surface an upwardly extending support for the sides and back of the person's heel,

[7] said peripheral ridge having its outer surface flaring outwardly on both sides of the heel part and behind the heel part from the top of the ridge to the lower surface of the heel part,

[8] said ridge also being attached on its inner surface to the footwear upper; and a central longitudinal groove in the underside of the heel part extending forwardly through the heel part into the underside of the sole part to divide the lower surface of the heel part into a pair of fins which are capable of bending outwardly and upwardly when the underside of the heel part strikes the ground. [numbering added]

During prosecution of the '792 patent application, the Patent and Trademark Office ("PTO") examiner rejected all the original claims under 35 U.S.C. § 103 as obvious in light of U.S. Patent No. 3,100,354 ("the Lombard patent") and U.S. Patent No. 4,128,950 ("the Bowerman patent"). In particular, the Lombard patent taught a shoe in which the "bottom width of the channel is greater than the combined width of the rims." ¹ In response to the rejection, the inventor canceled the original claims and replaced them with three new independent claims, all of which contained the term "central longitudinal groove." The inventor also made various arguments to distinguish the new claims from the prior art. In one of his arguments, the inventor submitted drawings comparing the claimed invention with a hypothetical combination of the Lombard and Bowerman patents. The drawings, with the claimed invention on the right (figures 12B and 16B) and the hypothetical combination on the left (figures 12A and 16A), depicted the following [Tabular or Graphical Material Omitted]

Pursuant to these drawings, the inventor argued that "[a]pplicant is providing a much narrower groove for a totally different purpose, namely to provide fins which can be compressed outwardly and upwardly. Such fins are not provided on the shoe of the prior art." Following these arguments, the examiner allowed the new claims, which issued as independent claims 1, 2, and 3 of the '792 patent. The inventor then assigned the '792 patent to HHI.

In 1995, HHI sued Avia for infringement of the '792 patent. Later that year, Avia sought a reexamination of the patent before the PTO, and the district court stayed the suit pending the outcome of the reexamination proceedings. ² The litigation resumed after the patent emerged from the reexamination proceedings with only a slight change to claims 1 and 3. ³ On January 8, 1999, the district court conducted a claim construction hearing and issued a written order two months later.

In its order, the district court analyzed the '792 patent and its prosecution history, and construed the term "central longitudinal groove"--the only term at issue on appeal--as being "a relatively long and narrow structure that extends longitudinally or lengthwise completely through the center so as to divide the heel part into a pair of 'fins.' The width of the central longitudinal groove must be less than the combined width of the two fins." Based on this claim construction, HHI and Avia agreed to a "Stipulation and Order of Dismissal" in which HHI stipulated to non-infringement under the district court's claim construction and agreed to dismiss its remaining claims with prejudice, and Avia agreed to dismiss its counterclaims without prejudice. Pursuant to that agreement, the district court entered a final order of non-infringement and dismissed all the remaining claims and counterclaims. This appeal followed.

DISCUSSION

The only issue on appeal is whether the district court correctly construed the term "central longitudinal groove" to require that the width of the groove must be less than the combined width of the fins. Claim construction is a question of law, seeMarkman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir. 1995) (en banc) aff'd, 517 U.S. 370 (1996), that we review de novo on appeal, see Cybor Corp. v. FAS Techs., Inc., 128 F.3d 1448, 1456, 46 USPQ 1169, 1174 (Fed Cir. 1998) (en banc). Proper claim construction entails an analysis of a patent record's intrinsic evidence--the claim language, the written description, and the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83, 39 USPQ2d 1573, 1576-77 (Fed. Cir. 1996). If the meaning of a claim is unambiguous from the intrinsic evidence, then a court may not rely on extrinsic evidence for purposes of claim construction. See Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716, 48 USPQ2d 1911, 1917 (Fed. Cir. 1998) (explaining that a court may receive extrinsic evidence to educate itself about the underlying technology, but it cannot use extrinsic evidence "to arrive at a claim construction that is clearly at odds with the claim construction mandated by the [intrinsic evidence]").

Claim construction analysis begins with the claim language itself. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971, 50 USPQ2d 1465, 1467 (Fed. Cir. 1999); Reinshaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1248, 48 USPQ2d 1117, 1120 (Fed. Cir. 1998). As a starting point, the court gives claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578, 38 USPQ2d 1126, 1129 (Fed. Cir. 1996) (stating that the court assigns a claim term the meaning "that it would be given by persons experienced in the field of invention"); Markman, 52 F.3d at 980, 34 USPQ2d at 1330. Here, the relevant claim language recites a "central longitudinal groove in the underside of the heel part extending forwardly through the heel part into the underside of the sole part to divide the lower surface of the heel part into a pair of fins." Col. 5, ll. 45-58. Thus, our analysis focuses on the word "groove" in the term "central longitudinal groove." The ordinary and accustomed meaning of "groove," as the district court correctly found, is a "relatively long and narrow structure."

The claim term's ordinary and accustomed meaning initially serves as a default meaning because the patentee may act as a lexicographer and ascribe a different, or modified, meaning to the term. See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998) (observing that an inventor, acting as a lexicographer, may bestow "a special meaning to a term in order to convey a character or property or nuance relevant to the particular invention"); Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388, 21 USPQ2d 1671, 1674 (Fed. Cir. 1994). The court, therefore, must examine a patent's specification and prosecution history to determine whether the patentee has given the term an unconventional...