Athletic Alternatives, Inc. v. Prince Mfg., Inc., 95-1045
| Decision Date | 11 January 1996 |
| Docket Number | No. 95-1045,95-1045 |
| Citation | 73 F.3d 1573,37 USPQ2d 1365 |
| Parties | ATHLETIC ALTERNATIVES, INC., Plaintiff-Appellant, v. PRINCE MANUFACTURING, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Scott E. Boehm, Copple, Chamberlin & Boehm, P.C., Phoenix, Arizona, argued for plaintiff-appellant.
Robert B. Smith, White & Case, New York City, argued for defendant-appellee. With him on the brief was Cecilia O'Brien Lofters. Also on the brief was Mark I. Harrison, Bryan Cave, Phoenix, Arizona.
Before MICHEL, Circuit Judge, NIES, Senior Circuit Judge, * and CLEVENGER, Circuit Judge.
Opinion for the court filed by Circuit Judge MICHEL. Opinion concurring in the result filed by Senior Circuit Judge NIES.
Athletic Alternatives, Inc. ("AAI") appeals from the June 29, 1994 order of the U.S. District Court for the District of Arizona, No. CIV-92-176-PHX-RGS (SLV), granting summary judgment of noninfringement in favor of Prince Manufacturing, Inc. ("Prince"). 1 Because AAI cannot lawfully prevail on its infringement allegations against Prince when the asserted patent claim is correctly construed, we affirm.
AAI designs athletic products, including string systems for sports rackets, and Prince manufactures and distributes tennis rackets. In February 1990, after entering into a confidentiality agreement, the parties began a collaborative effort to develop a commercially available tennis racket with splayed strings, i.e., with string ends anchored to the racket frame alternately above and below its central plane. AAI had already conceived of and applied for a patent covering its prototype "Redemption Stringing System" in August 1988, and it shared the prototype with Prince under the confidentiality agreement. During the course of their collaboration, Prince and AAI shared other designs and ideas but ultimately failed to reach a mutually satisfactory licensing agreement.
Prince abandoned work on AAI's prototype in favor of an alternative splayed string system. In February 1991, it placed a racket with this system on the market under the model name "Vortex." The sides of the Vortex frame include strings splayed from the central plane at two, and only two, distinct offset distances: a distance of 2 millimeters at the upper and lower corners, and a distance AAI, meanwhile, continued to prosecute its splayed string system patent application. As originally filed, the application contained 19 claims, the first of which broadly claimed "[a] sports racket ... wherein at least some of [the] ends of [the] string segments are successively and alternately secured to [the] frame at locations a distance d subi in front of and behind [the] central plane." Claim 5 of the application, depending from Claim 1, recited a racket "wherein d subi is uniform for all strings." Claim 7, also drafted in dependent form, recited a racket "wherein [the] distance d subi ... varies continuously between minimums as small as about zero for the lateral strings near the tip and the heel portions of said frame, and a maximum of up to about 1/2 inch for the ends of the lateral string segments through the center of the side portions of [the] frame." This language, unlike that of Claim 1, closely tracked the specification's description of the preferred embodiment. 2
of 4.5 millimeters along the sides of the frame.
In a May 1989 office action, the examiner rejected, inter alia, Claims 1 through 5 and objected to Claim 7. Specifically, the examiner rejected Claims 1 and 5 as anticipated by British Patent No. 223,151 to Lewis ("Lewis"). Like AAI's Claim 5, Lewis discloses a racket in which all the string ends are offset from the central plane by a uniform distance. Having rejected Claim 1, the independent claim from which it ultimately depended, the examiner objected to Claim 7. At the same time, however, the examiner indicated that Claim 7 contained patentable subject matter and thus "would be allowable if rewritten in independent form."
In response to this office action, AAI filed a set of amendments to the application in October 1989. First, AAI canceled Claim 1 in favor of a new Claim 20, reciting "[a] sports racket ... where [the offset] distance d subi varies between a minimum distance for the first and last string ends in [the] sequence [of adjacent string ends] and a maximum distance for a string end between [the] first and last string ends in [the] sequence." After noting that it "rewrote Claim 1 to more succinctly define the present invention ... [in] Claim 20", AAI explained the responsiveness of the new claim to the rejection on Lewis as follows:
Lewis is primarily concerned with the problem of splitting of wooden frames where all holes are located in the center plane of the frame. Another objective is to stabilize the frame against twisting. He places the holes somewhat away from and alternately above and below the center plane. Consequently, the stringing surface superficially resembles the present string suspension arrangement. However, we do not believe that the degree of splay or separation is sufficient to achieve the present effect of improved performance and feel of the string surface. Moreover, the Lewis racket is structurally different in that it maintains the same [s]play (d subi ) all the way around.
Claim 1 has now been rewritten and resubmitted as Claim 20 to positively recite the feature of the splay (d subi ), varying between a minimum and a maximum for a series of adjacent parallel strings, to thus clearly distinguish over Lewis.
In other words, according to this portion of the record, AAI drafted Claim 20 in a manner calculated to retain as much of the scope of Claim 1 as possible while still avoiding the Lewis reference.
Consistent with the examiner's suggestion, AAI also redrafted Claim 7 in independent form and submitted it as Claim 21. It recited "[a] sports racket ... wherein [the] distance d subi ... varies continuously between minimums as small as about zero for the ends of laterial [sic, lateral] strings near the tip and heel portions of [the] frame, and maximum of up to about 1/2-inch for the ends of lateral string segments near the center of [the] side portion of [the] frame." As with Claim 7, the language of Claim 21 closely tracks that of the specification's description of the preferred embodiment. Claim 21 thus The examiner's Interview Summary Record indicates that the parties discussed proposed Claims 20 and 21 during a personal interview on November 16, 1989. In sharp contrast to the explanation AAI offered with the amendments that it filed, the summary notes that AAI's "[a]ttorney explained how cl. 20 is directed to [the] preferred embodiment and how [its] recitation distinguishes over [the] cited references." This notation calls into serious doubt the premise that AAI drafted Claim 20 with the sole purpose of overcoming the Lewis-based rejection of Claim 1.
differed from Claim 20 in two ways: first, with respect to the limitation directed to the pattern of splay, Claim 20 recited an offset distance that "varies between" minimum and maximum values, whereas Claim 21 recited an offset distance that "varies continuously between" such values (emphasis added); second, Claim 21 recited particular numerical values for the minimum and maximum offset distances, whereas Claim 20 did not. Finally, AAI added a new claim that, like the rejected Claim 1, broadly covered any pattern of splayed string ends. 3
After reviewing the submitted amendments, the examiner rejected Claims 20 through 22 in the final office action of January 29, 1990. Specifically, the examiner concluded that all three claims would have been obvious from Lewis in view of U.S. Patent No. 4,664,380 to Kuebler. AAI contested the rejection, arguing that the Kuebler patent, directed to improving the stiffness of racket frames, teaches nothing at all about splayed string ends and reiterating that "Lewis ... exhibits splay, but uniform splay all the way around the racket frame." According to AAI, its "previous amendment ... introduced the structural limitations of variously specifying the non-uniform splay characteristics which clearly differentiate the present invention from the 1924 wooden tennis racket art represented by the Lewis reference." The examiner nevertheless adhered to his final rejection of the claims by notice dated April 17, 1990.
AAI appealed the final rejection to the Board of Patent Appeals. Consistent with the Interview Summary Record discussed above, and in contrast to the supporting explanation filed with the amendments, AAI implied in its appeal brief that Claims 20 and 21 had the same scope with respect to the claimed pattern of splay. First, early in its appeal brief, AAI noted that "Claims 20 and 21 represent independent claims based on rewritten dependent claim[ ] 7 ... which [was] formerly held to be allowable if rewritten in independent form." Second, in explaining the nature of the invention, AAI stated that "[i]n the preferred embodiment, best seen in Fig. 4a, the distance d subi varies between minima for the first and last lateral strings near the tip section 12 and heel section 13, respectively, and a maximum in the central region of the lateral section of the frame." (Emphasis added). AAI thus described the preferred embodiment as a pattern in which the offset distance "varies between" a minimum and a maximum without using the intervening modifier "continuously." Finally, AAI affirmed that "Claim 20 requires the distance d subi (the degree of splay) to vary between a minimum ... and a maximum," and that "Claim 21 ... recites the same element of varying splay of the ends of lateral string segments." (Emphasis added). After further communication between AAI and the examiner, as well as an amendment deleting Claim 22, the examiner withdrew the final rejection and issued a Notice of Allowability in December 1990.
AAI was accordingly granted U.S. Patent No....
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