442 F.3d 1322 (Fed. Cir. 2006), 05-1103, Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.

Docket Nº:05-1103.
Citation:442 F.3d 1322
Party Name:78 U.S.P.Q.2d 1382 WILSON SPORTING GOODS COMPANY, Plaintiff-Appellant, v. HILLERICH & BRADSBY CO., Defendant-Appellee.
Case Date:March 23, 2006
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1322

442 F.3d 1322 (Fed. Cir. 2006)

78 U.S.P.Q.2d 1382

WILSON SPORTING GOODS COMPANY, Plaintiff-Appellant,

v.

HILLERICH & BRADSBY CO., Defendant-Appellee.

No. 05-1103.

United States Court of Appeals, Federal Circuit.

March 23, 2006

Appealed from: United States District Court for the Northern District of Illinois Judge Ruben Castillo

Page 1323

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.

Page 1324

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, II. 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:

[Image Omitted]

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

Page 1325

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.

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