Nike Inc. v. Wolverine World Wide, Inc.

• Decision Date: 05 December 1994
• Docket Number: No. 94-1181,94-1181
• Citation: 33 USPQ2d 1038,43 F.3d 644
• Parties: , 33 U.S.P.Q.2d 1038 NIKE INCORPORATED, Plaintiff-Appellant, v. WOLVERINE WORLD WIDE, INC., Brooks Shoe, Inc., and Brooks Sports, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 644

43 F.3d 644

30 Fed.R.Serv.3d 458, 33 U.S.P.Q.2d 1038

NIKE INCORPORATED, Plaintiff-Appellant, v. WOLVERINE WORLD WIDE, INC., Brooks Shoe, Inc., and Brooks Sports, Inc., Defendants-Appellees.

No. 94-1181.

United States Court of Appeals Federal Circuit.

Dec. 5, 1994.

David A. Anderson, Willian Brinks Hofer Gilson & Lione, Chicago, IL, argued, for plaintiff-appellant. With him on the brief, were James R. Sobieraj, Timothy Q. DeLaney, Earl M. Douglas and Dominic P. ZanFardino.

Ernie L. Brooks, Brooks & Kushman, P.C., Southfield, MI, argued, for defendants-appellees. With him on the brief, were John M. Halan and John E. Nemazi. Of counsel was Frank A. Angileri.

Before MICHEL, Circuit Judge, SKELTON, Senior Circuit Judge, and LOURIE, Circuit Judge.

LOURIE, Circuit Judge.

Nike Inc. ("Nike") appeals from an order of the United States District Court for the District of Oregon granting the motion of

                Wolverine World Wide, Inc., Brooks Shoe, Inc., and Brooks Sports, Inc.  (collectively "Wolverine") for summary judgment of non-infringement of U.S. Patent 4,817,304.  Nike Inc. v. Wolverine World Wide, Inc., 869 F.Supp. 808 (D.Or.1993) ("Nike ").   Nike also appeals from the district court's order granting Wolverine's motion precluding Nike from pursuing a claim of infringement under the doctrine of equivalents.  Nike Inc. v. Wolverine World Wide, Inc., No. 93-125-MA (D.Or. Oct. 18, 1993).  We affirm
                

BACKGROUND

Nike is the assignee of the '304 patent, which is directed to a shoe having an improved cushioning sole structure. Claim 1 of the patent is representative of the claims at issue and reads, in relevant part, as follows:

Footwear comprising an upper, a sole member attached to said upper, said sole member including a sealed inner member of flexible material, said inner member being inflated with a gaseous medium to form a compliant and resilient insert having spaced upper, lower, front, back and side surfaces, an elastomeric yieldable outer member encapsulating said insert about preselected portions of said insert, said preselected portions including a major portion of at least said upper or lower surface and a portion of said side surfaces, said inner and outer members functioning together to form a viscoelastic unit for attenuating shock and returning energy of foot impact. (emphasis added)

On February 2, 1993, Nike sued Wolverine for infringement of the '304 patent. Wolverine manufactures shoes that include a heel insert containing 80-90% viscous silicone liquid and the remainder air at ambient pressure. On August 6, 1993, Wolverine moved for summary judgment of non-infringement on the ground that the heel inserts used in its shoes are not "inflated with a gaseous medium," as required by the claims. Nike cross-moved for partial summary judgment "that the accused Brooks Hydroflow shoes include a 'sealed inner member' that is 'inflated with a gaseous medium'." On September 14, 1993, Wolverine moved, pursuant to Fed.R.Civ.P. 37, to bar Nike from pursuing a claim of infringement under the doctrine of equivalents because Nike had not clearly indicated the basis for that claim or provided discovery on the issue.

The district court granted Wolverine's motion and denied Nike's cross-motion, concluding that no reasonable jury could find that Wolverine's shoes literally infringe the '304 patent. The court also granted Wolverine's motion to preclude Nike from asserting a claim of infringement under the doctrine of equivalents. Nike now appeals.

DISCUSSION

Nike first challenges the district court's grant of summary judgment of non-infringement. Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77, 12 USPQ2d 1382, 1383 (Fed.Cir.1989). In other words, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). We review de novo a district court's grant of summary judgment. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

Determining whether a patent claim is infringed requires a two-step analysis: "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Carroll Touch, Inc. v. Electro Mechanical Sys., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839 (Fed.Cir.1993). Claim construction is a question of law, which we review de novo. Id. at 1577, 27 USPQ2d at 1839. In construing a claim, claim terms are given their ordinary and accustomed meaning unless examination of the specification, prosecution history, and other claims indicates that the inventor intended otherwise. See id., at 1577, 27 USPQ2d at 1840.

Nike argues that the district court misconstrued the claims of the '304 patent and thus erred in granting summary judgment of non-infringement. Specifically, Nike contends that, properly interpreted, the recited "inner member ... inflated with a gaseous medium" encompasses a heel insert containing gas at ambient pressure. We disagree.

The district court analyzed the claim language, patent specification, prosecution history, and prior art, and found no support for Nike's assertion that the claim limitation "inflated with a gaseous medium" means "containing" a gas at ambient pressure. Rather, because the specification and file history of the '304 patent do not define the term "inflated," the court first looked to the word's common meaning: "swollen or distended with gas or air; puffed out." Webster's New Twentieth Century Dictionary of the English Language 939 (2d ed. 1967). The court further noted that, according to Webster's, "swollen" means an "increase in size or volume due to internal pressure," and "distend" means "to swell out or expand from or as if from internal pressure." Nike, 869 F.Supp. at 812.

Further, as the court recognized, the '304 patent states that preferred materials and gases for use in the recited insert are described in U.S. Patents 4,183,156 and 4,219,945 to Rudy, which were incorporated by reference into the '304 patent. Col. 2, 11. 30-56 and col. 4, 11. 42-47 of the '304 patent. According to the '304 patent:

The sole structure disclosed in the '156 and '945 Rudy patents overcame the unreliability obstacle through the use of a novel membrane and gas combination. The sole structure in the '156 and '945 patents forms an inflatable insert or insole barrier member of an elastomer material having a multiplicity of preferably intercommunicating, fluid-containing chambers inflated to a relatively high pressure by a gas having a low diffusion rate through the barrier members ... the pressure remaining at or above its initial value over a period of years.

Col. 2, 11. 44-56 (emphasis added).

Thus, the '304 specification suggests using an insert that is inflated with gas to a "relatively high pressure." ¹ In fact, there is nothing in the '304 patent or its prosecution history to suggest that the term "inflated with a gaseous medium" was intended to encompass an insert containing gas at ambient pressure.

The district court determined that "the claim properly construed requires that the insert be pumped, swollen or distended with a gaseous medium and that 'inflated' would not include air which is merely contained or trapped." Nike, 869 F.Supp. at 812. We agree with the court's analysis, which is supported by the '304 patent specification, the Rudy patents referenced therein, and the plain meaning of the term "inflated." The court correctly rejected Nike's proposed claim construction. Nike cannot, in effect, rewrite its patent claims to suit its needs in this litigation.

Because Wolverine's shoes contain air at ambient pressure and are not "inflated" with air under pressure, we conclude that no reasonable jury could have found that Wolverine's shoes literally infringed any claim of the '304 patent. See Johnston, 885 F.2d at 1580, 12 USPQ2d at 1386 ("Where a claim does not read on an accused device exactly, there can be no literal infringement."). Thus, the district court properly granted summary judgment of non-infringement.

Nike also challenges the district court's October 18, 1993 order pursuant to Fed.R.Civ.P. 37 ² granting Wolverine's motion to preclude Nike from pursuing a claim of infringement under the doctrine of equivalents. We apply the law of the pertinent At an April 21, 1993 pretrial conference, the district court ordered Nike and Wolverine to provide each other with full disclosure in response to requests for discovery. The court imposed on both Nike and Wolverine "a duty to respond with everything that you have that is responsive to a reasonable request." In no uncertain terms, the court advised the parties that "if you do not fully respond and you come up with documentation later on which was responsive to that request, you will not be able to use it at trial." The court set a...