K-2 Corp. v. Salomon S.A.

Citation191 F.3d 1356,52 USPQ2d 1001
Decision Date13 September 1999
Docket NumberK-2
Parties(Fed. Cir. 1999) CORPORATION, Plaintiff-Appellant, v. SALOMON S.A. and SALOMON/NORTH AMERICA, INC., Defendants-Appellees. 98-1552 DECIDED:
CourtU.S. Court of Appeals — Federal Circuit

Paul L. Gardner, Chrintensen O'Connor Johnson & Kindness PLLC, of Seattle, Washington, argued for plaintiff-appellant. With him on the brief were James R. Uhlir and Lawrence D. Graham.

Steven E. Lipman, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, Virginia, argued for defendants-appellees. With him on the brief was James J. Kulbaski.

Before CLEVENGER, RADER, and GAJARSA, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by Circuit Judge RADER.

CLEVENGER, Circuit Judge.

K-2 Corporation appeals the summary judgment of noninfringement granted in favor of Salomon S.A. and Salomon/North America, Inc., by the United States District Court for the Western District of Washington. See K-2 Corp. v. Salomon S.A., 50 USPQ2d 1054 (W.D. Wash. 1998). The district court, after construing the disputed claim terms in K-2's reexamined United States Patent No. 5,437,466, determined that no reasonable jury could find that the accused product--Salomon's model "TR" in-line skate--infringed the asserted patent either literally or under the doctrine of equivalents. See id. at 1057. Because we conclude that the district court correctly interpreted the relevant claim language and properly determined that the doctrine of equivalents could not be used to reach the accused device, we affirm.

I
A

K-2 Corporation ("K-2") is the owner of reexamined U.S. Patent No. 5,437,466 ("the '466 patent"), issued August 1, 1995, entitled "In-Line Roller Skate." The '466 patent is generally directed to an in-line skate that has a soft, pliable inner "bootie" or "shoe" surrounded in certain areas by molded plastic or straps affixed to the base of the skate. This arrangement allows the wearer's foot to breathe and offers a substantially lighter skate while retaining structural stiffness required for performance. [Tabular or Graphical Material Omitted]

Figure 1, '466 Patent

Claims 1, 5, and 6 of the '466 patent are the only claims at issue in this case. Representative claim 1 recites five major claimed components, as set forth in brief form below with the key limitation underlined:

1. In an in-line roller skate having an upper shoe portion and a lower frame portion . . . a non-rigid shoe portion adapted to receive and substantially enclose the entire foot of the skater . . . support means positioned adjacent selected areas of said non-rigid shoe portion for providing support to aid the skater in maintaining said in-line roller skate in a substantially vertical position . . . and a base portion, . . .

said non-rigid shoe portion being permanently affixed to said base portion at least at said toe area and said heel area for substantially preventing movement therebetween at least in a horizontal plane, wherein at least a portion of said non-rigid shoe portion extends continuously from said base portion to at least the top of said ankle support cuff.

Claims 5 and 6 contain what the parties agree is equivalent language with respect to the key limitation:

5. . . .

said non-rigid shoe portion being permanently interconnected with said base portion at least at said toe area and said heel area for substantially preventing movement therebetween at least in a horizontal plane . . .

6. . . .

said non-[rigid] upper portion being non-removably affixed to said rigid base adjacent both said heel and toe portions of said base for substantially preventing movement therebetween at least in a horizontal plane . . .

Salomon S.A. and Salomon North America (collectively, "Salomon") make and sell an in-line skate, designated as model TR, that includes a soft inner bootie surrounded by a rigid plastic structure ("the TR skate"). The TR skate's inner bootie is fastened to the lower, rigid portion of the skate by the use of rivets and a screw in the toe area and by a removable hex-head screw in the heel area. The parties agree that the dispositive issue in this case is whether the use of a removable screw in the heel area of the TR skate can meet the "permanently affixed" limitation found in claims 1, 5, and 6 of the '466 patent.

[Tabular or Graphical Material Omitted]

Salomon's TR Skate: Bootie/Base Attachment Detail

B

In April 1998, K-2 sued Salomon for infringement of the '466 patent. On cross-motions for summary judgment, the district court rejected K-2's arguments that the disputed "permanently affixed" claim limitation should be construed to be synonymous with "affixed," "secured," or "firmly held," and instead held that the ordinary meaning of "permanently affixed" could not encompass the removable screw used in the heel area of the TR skate. See K-2 Corp. v. Salomon S.A., 50 USPQ2d 1054, 1056 (W.D. Wash. 1998). The court determined that because the TR skate was missing an element of the '466 patent claims, it could not, as a matter of law, literally infringe those claims. See id.

The district court also held that the TR skate could not, as a matter of law, infringe under the doctrine of equivalents because of prosecution history estoppel. See id. at 1057. The court concluded that in amending the relevant claims during prosecution and examination to add the "permanently affixed" limitation and the heel and toe locations of the fastening, K-2 had relinquished coverage of in-line skates that did not have a bootie permanently affixed at both the heel and the toe. See id. The court further noted that the relevant prosecution history suggested that K-2 amended the claim to avoid a prior art reference, U.S. Patent No. 5,331,752 to Johnson ("the Johnson reference"), that discloses an in-line skate in which the bootie is removable and affixed at the toe and mid-foot. See id. The district court concluded that K-2's relinquishment of such subject matter prevented it from now asserting that the heel screw of Salomon's TR skate was equivalent to the "permanently affixed" limitation of the '466 claims. Summary judgment of noninfringement was granted in favor of Salomon. See id.

K-2 appeals that decision, vesting this court with jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

II

We review the grant of summary judgment de novo. See Conroy v. Reebok Int l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed. Cir. 1994). In doing so, we must keep in mind that summary judgment is appropriate only if there is no genuine issue of material fact. See Fed. R. Civ. P. 56(c). To this end, the court must draw all reasonable factual inferences in favor of the nonmovant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

An infringement analysis is a two-step process in which the court first determines, as a matter of law, the correct claim scope, and then compares the properly construed claim to the accused device to determine, as a matter of fact, whether all of the claim limitations are present in the accused device, either literally or by a substantial equivalent. See Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1247-48, 48 USPQ2d 1117, 1120 (Fed. Cir. 1998); General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981, 41 USPQ2d 1440, 1442 (Fed. Cir. 1997); Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1141, 42 USPQ2d 1589, 1952 (Fed. Cir. 1997). See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172-73 (Fed. Cir. 1998) (en banc).

Because the relevant aspects of the accused device's structure and operation are undisputed in this case, the question of whether Salomon's TR skate literally infringes the asserted claims of the '466 patent turns on the interpretation of those claims. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578, 37 USPQ2d 1365, 1370 (Fed. Cir. 1996) ("Where, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over [claim interpretation], the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment.").

We begin, of course, with the language of the claims. See Renishaw, 158 F.3d at 1248, 48 USPQ2d at 1120; Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed. Cir. 1997); Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed. Cir. 1995). The general rule is that terms in the claim are to be given their ordinary and accustomed meaning. See Johnson Worldwide Assoc., Inc. v. Zebco Corp, 175 F.3d 985, 989, 50 USPQ2d 1607, 1610 (Fed. Cir. 1999); Renishaw, 158 F.3d at 1249, 48 USPQ2d at 1121; York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996). That is, the ordinary and accustomed meaning of a disputed claim term is presumed to be the correct one, see Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610, subject to the following. First, a different meaning clearly and deliberately set forth in the intrinsic materials--the written description or the prosecution history--will control. See id.; In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); Intellical, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992); Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 888-89, 221 USPQ2d 1025 (Fed. Cir. 1984). Second, if the ordinary and accustomed meaning of a disputed term would deprive the claim of clarity, then further reference must be made to the intrinsic--or in some cases, extrinsic--evidence to ascertain the proper meaning. See Johnson Worldwide, 175 F.3d at 990, 50 USPQ2d at 1610-11. In either case, a party...

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