Wilson Sporting Goods Co. v. Hillerich & Bradsby

Decision Date23 March 2006
Docket NumberNo. 05-1103.,05-1103.
Citation442 F.3d 1322
PartiesWILSON SPORTING GOODS COMPANY, Plaintiff-Appellant, v. HILLERICH & BRADSBY CO., Defendant-Appellee.
CourtU.S. Court of Appeals — Federal Circuit

Michael R. Levinson, Seyfarth Shaw LLP, of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief was Louis S. Chronowski. Of counsel on the brief was Jeffery A. Key, Key & Associates, of Chicago, Illinois.

Charles A. Laff, Michael Best & Friedrich LLP, of Chicago, Illinois, argued for defendant-appellee. With him on the brief was Martin L. Stern. Of counsel on the brief was Manotti L. Jenkins, Katten Muchin Rosenman LLP, of Chicago, Illinois.

Before LOURIE, RADER, and BRYSON, Circuit Judge.

RADER, Circuit Judge.

In a stipulated Rule 54 judgment, the United States District Court for the Northern District of Illinois dismissed with prejudice Wilson's contentions that softball and baseball bats sold by Hillerich & Bradsby (H & B) infringed claims 1, 15, and 18 of U.S. Patent No. 5,415,398 (granted May 16, 1995) (the '398 patent). In this judgment, the court also granted H & B's declaratory judgment action that its bats do not infringe the '398 patent, but dismissed H & B's cause of action for declaratory judgment of invalidity of the '398 patent, and awarded costs, exclusive of attorney fees, to H & B. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., No. 00-CV-6517 (N.D. Ill. Oct. 27, 2004)(Final Judgment Order). Wilson appeals the court's construction of claim terms in claims 1, 15, and 18. Because the district court did not correctly construe these claims, this court vacates and remands.

I.

The '398 patent claims a softball bat that incorporates interior structural members to improve its impact response. See '398 patent, col. 1, ll. 8-11. The primary feature of the invention is an insert within the body of the bat that improves the bat's hitting properties. Figures 2 and 3 of the '398 patent depict one embodiment of the disclosed invention:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

As depicted, element 26 is "a narrow, uniform gap . . . between the insert 18 and the inner wall of the impact portion 12. The gap extends uniformly around the insert . . . and along the length of the insert between the first and second ends 20 and 22 thereof." '398 patent, col. 2, l. 66 — col. 3, l. 2. The insert is separated from the tubular frame by a gap except at its ends, where the insert and the frame were adjoined. Upon impact with a ball, the outer wall 11 and the insert 18 jointly act as a spring, which elastically deflects and stores energy from the impact with the ball. As the bat and insert rebound, energy from the initial deflection returns to the ball. According to the specification, the inventive bat transfers power from the bat to the ball better than competing bats because of the "leaf-spring" action of the double walls. Distribution of the impact force between the outer wall and the insert also permits use of a thinner outer wall, thus lightening the bat. See '398 patent, col. 3, ll. 16-65.

Because the disputed claims contain significant differences, this opinion quotes all of those claims. Claim 1 of the '398 patent reads as follows:

1. A bat, comprising:

a hollow tubular bat frame having a circular cross-section; and

an insert positioned within the frame, the insert having a circular cross-section, the insert having first and second ends adjoining the tubular frame, the insert being separated from the tubular frame by a gap forming at least part of an annular shape along a central portion between said first and second ends, the frame elastically deflectable across the gap to operably engage the insert along a portion of the insert between the insert first and second ends.

15. In a hollow bat having a small diameter handle portion and a large-diameter impact portion, an improvement comprising an internal structure insert defining an annular gap with an inside wall of the impact portion of the bat and the impact portion elastically deflectable to close a portion of the annular gap and operably engage the insert.

18. A bat, comprising:

a hollow tubular bat frame having a small-diameter handle portion and a large-diameter impact portion having a circular cross-section with an inner and outer diameter;

at least one insert having a substantially circular cross-section with an outer diameter less than the inner diameter of the frame impact portion, the insert being held within the impact portion; and

the impact portion being inwardly elastically deflectable such to establish a tight interference fit between the insert and the impact portion.

(emphases added to disputed terms). The claims differ in that the "gap" forms "at least part of an annular shape" in claim 1; the "gap" is "annular" in claim 15; and the "gap" does not appear at all in claim 18. Although "gap" does not appear in claim 18, the claim term "a tight interference fit" implies some sort of space between the frame and the insert. Further, claim 1 describes the insert as having "a circular cross-section;" as "defining an annular gap" in claim 15, and as having a "substantially circular cross-section" in claim 18.

In its Markman hearing, the trial court construed, inter alia, the terms "gap" and "insert." The trial court determined that "gap" in all claims meant "a single continuous space or void between the interior of the frame and the exterior of the insert great enough to allow for deflection across the gap." Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., No. 00-CV-6517, slip op. at 10, 2003 WL 21911241 (N.D. Ill. Aug. 7, 2003) (Order), 10. That definition precluded any contact between the bat frame and the insert at any point along the length of the insert before impact. The trial court construed "insert" in all claims to mean a "rigid, circular, hollow tube having an outer diameter less than the inner diameter of the tubular frame impact portion." Order, at 12.

Based on those claim constructions, the parties dispute the meaning of both terms. Specifically, the parties dispute the application of a single definition of "gap" to claims 1 and 18, and the preclusion of any contact before impact in the definition of "gap." On the term "insert," the parties similarly dispute the application of the trial court's definition to all contested claims, and the inclusion of "rigid" and "hollow tube" within that definition.

II.

The United States Court of Appeals for the Federal Circuit reviews procedural matters that are not unique to patent issues under the law of the particular regional circuit court where appeals from the district court would normally lie. Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1575 (Fed.Cir.1984), overruled on other grounds, Richardson-Merrell, Inc. v. Koller, 472 U.S. 424, 432, 105 S.Ct. 2757, 86 L.Ed.2d 340 (1985). When parties have stipulated to a judgment, the United States Court of Appeals for the Seventh Circuit interprets the stipulation to mean that the facts are not in dispute. Hess v. Hartford Life & Acc. Ins. Co., 274 F.3d 456, 461 (7th Cir. 2001); cf. Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1371 (Fed.Cir.2006) ("A trial court's decision based upon stipulated facts resembles, in significant respects, a decision on the administrative record, which we have recently concluded is not akin to summary judgment."). The Seventh Circuit treats a stipulated judgment as "more akin to a bench trial than to a summary judgment ruling." Hess, 274 F.3d at 461 (citing May v. Evansville-Vanderburgh Sch. Corp., 787 F.2d 1105, 1115-16 (7th Cir. 1986) (where parties agree to a judgment on stipulated facts, "[i]n effect the judge is asked to decide the case as if there had been a bench trial in which the evidence was the depositions and other materials gathered in pretrial discovery")). Thus, as the Seventh Circuit would do after a bench trial, this court reviews the district court's legal conclusions de novo and any factual inferences for clear error. Id. (citing Johnson v. West, 218 F.3d 725, 729 (7th Cir.2000)).

Furthermore, patent infringement analysis involves two steps: claim construction, and application of the construed claim to the accused process or product. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). This court reviews the first step, claim construction, without deference. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). The second step, application of the claim to the accused product to determine infringement, is a question of fact. See Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1282 (Fed.Cir.1986). In the context of summary judgment, this court reviews de novo the district court's determination that there is no genuine issue as to any material fact regarding infringement. MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1373 (Fed.Cir.2005).

With limited statutory exceptions that do not apply to this case, see 28 U.S.C. § 1292(c) and (d), this court reviews only final judgments. 28 U.S.C. § 1295 (2000). A final judgment, by definition, ends the litigation on the merits. Catlin v. United States, 324 U.S. 229, 233, 65 S.Ct. 631, 89 L.Ed. 911 (1945). Patent litigation is the patentee's remedy for infringement. 35 U.S.C. § 281. Thus, final judgment in a patent case will usually produce a judgment of infringement or non-infringement. This court reviews claim construction only as necessary to reach that final judgment on an infringement cause of action. Therefore, in reviewing claim construction in the context of infringement, the legal function of giving meaning to claim terms always takes place in the context of a specific accused infringing device or process. While a trial court should certainly not prejudge the ultimate infringement analysis by...

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