V-Formation, Inc. v. Benetton Group Spa

• Decision Date: 15 March 2005
• Docket Number: No. 03-1408.,03-1408.
• Citation: 401 F.3d 1307
• Parties: V-FORMATION, INC., Plaintiff-Appellant, v. BENETTON GROUP SPA, Rollerblade, Inc., Modell's Sporting Goods Co., Inc., Dick's Sporting Goods, Inc., and Dunham's Athleisure Corporation (doing business as Dunham Sports), Defendants-Appellees. and Salomon S.A., Salomon North America Inc., the Sports Authority, Inc., Princeton Ski Outlet Corp. (doing business as Princeton Ski Shops), and Paragon Sporting Goods, Inc., Defendants.
• Court: U.S. Court of Appeals — Federal Circuit

401 F.3d 1307

V-FORMATION, INC., Plaintiff-Appellant, v. BENETTON GROUP SPA, Rollerblade, Inc., Modell's Sporting Goods Co., Inc., Dick's Sporting Goods, Inc., and Dunham's Athleisure Corporation (doing business as Dunham Sports), Defendants-Appellees. and Salomon S.A., Salomon North America Inc., the Sports Authority, Inc., Princeton Ski Outlet Corp. (doing business as Princeton Ski Shops), and Paragon Sporting Goods, Inc., Defendants.

No. 03-1408.

United States Court of Appeals, Federal Circuit.

March 15, 2005.

Richard W. Hanes, Hanes & Schutz, P.C., of Colorado Springs, Colorado, argued for plaintiff-appellant. With him on the brief was Timothy J. Schutz.

Robert J. Silverman, Fish & Richardson, P.C., of Boston, Massachusetts, argued for defendants-appellees Benetton Group SPA, et al. With him on the brief were Robert E. Hillman and Lawrence K. Kolodney.

Before MAYER,¹ RADER, and PROST, Circuit Judges.

RADER, Circuit Judge.

The United States District Court for the Southern District of New York granted summary judgment of noninfringement to Benetton Group SpA (Benetton).² V-Formation, Inc. v. Benetton Group SpA, No. 01 Civ. 610(HB), 2002 WL 31619031, 2002 U.S. Dist. LEXIS 22394 (S.D.N.Y. Nov. 19, 2002). The district court determined that Benetton's category three and seven skates did not infringe V-Formation, Inc.'s (V-Formation) U.S. Patent Nos. 5,803,466 (issued Sept. 8, 1998) (the '466 patent) and 6,045,143 (issued April 4, 2000) (the '143 patent). Because the district court correctly construed the '466 patent's claim term "releasably attaching" and because no genuine issue of material fact exists regarding the toe and heel plate limitations of the '143 patent, this court affirms.

I.

U.S. Patent No. 5,873,584 (issued February 23, 1999) (the '584 patent)³ and the '466 and '143 patents, issued to Michael C. Wrike, all involve essentially the same technology: an in-line roller skate having a frame made up of several separate elements, wherein the frame sidewalls (to which the wheels are mounted) are fastened to downwardly descending flanges formed from a toe plate and a heel plate. The toe and heel plates, in turn, fasten to the bottom of a skate boot. The patents refer to the distinct, separate, and interchangeable parts as "modular[ ]" skate construction. '466 patent, col. 2, ll. 40-44. The '143 patent issued from a continuation of the application that also produced the '466 patent. Thus, the specification and drawings of both patents are the same. Figure 5 shows a cross-sectional view of an assembled skate with the toe plate fastened to the boot by rivets and the sidewalls inserted into the cavities defined by the flanges of the toe plate. These sidewalls attach to the flanges with bolts.

This appeal involves the '466 patent's requirement that releasably attaches the sidewalls to the flange pairs as well as the '143 patent's toe and heel plate limitations. Claim 1 of the '466 patent includes the "releasably attaching" language:

An in-line roller skate, comprising:

a boot having a sole surface with toe and heel portions;

a frame, comprising;

a toe plate having an upper face and a lower face, said upper face being affixed to said sole surface toe portion, and two pair of spaced apart flanges extending downwardly from said toe plate lower face, each of said flange pairs defining a cavity therebetween;

a heel plate having an upper face and a lower face, said upper face being affixed to said sole surface heel portion, and two pair of spaced apart flanges extending downwardly from said heel plate lower face, each of said flange pairs defining a cavity therebetween;

first and second downwardly extending sidewalls having front and rear upper portions, wherein said first sidewall is configured such that said rear upper portion is received into a corresponding one of said heel plate cavities and said front upper portion is received into a corresponding one of said toe plate cavities, and wherein said second sidewall is received into the other opposing said toe and heel plate cavities;

a plurality of fasteners for releasably attaching said first and second sidewalls to respective ones of said toe and heel plate flange pairs; and

a plurality of wheels rotatably mounted between said first and second sidewalls.

'466 patent, col. 9, ll. 1-30 (emphasis added). Claim 1 of the '143 patent includes the toe and heel plate limitations:

An in-line roller skate, comprising:

a boot having a sole surface with toe and heel portions; and

a frame, comprising:

a toe plate having an upper surface affixed to said sole surface toe portion and a pair of spaced apart downwardly opening cavities, each of said toe plate cavities having an inner wall and an outer wall directly attached to a lower surface of said toe plate;

a heel plate having an upper surface affixed to said sole surface heel portion and a pair of spaced apart downwardly opening cavities, each of said heel plate cavities having an inner wall and an outer wall directly attached to a lower surface of said toe plate;

separate first and second downwardly extending sidewalls having front and rear upper portions, wherein said first sidewall is configured such that said rear upper portion is received into a corresponding one of said heel plate cavities and said front upper portion is received into a corresponding one of said toe plate cavities, and wherein said second sidewall is received into the other opposing said toe and heel plate cavities;

a plurality of fasteners for securing said first and second sidewalls within respective ones of said toe and heel plate cavities, each of said fasteners extending through one of said sidewalls and a cavity inner wall; and

a plurality of wheels rotatably mounted between said first and second sidewalls.

'143 patent, col. 9, ll. 1-31 (emphases added).

On January 24, 2001, V-Formation initiated an action for infringement against Benetton for infringement of the '143, '466, and '584 patents. The original and amended complaints alleged that a number of different models of Benetton's in-line roller skates infringe claims of the patents in suit.

Benetton filed a motion for summary judgment, asserting noninfringement of the '466 and '143 patents and invalidity of the '584 patent. On September 10, 2002, the district court held a Markman hearing (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)) and oral argument on the motion for summary judgment. The district court granted Benetton's motion for summary judgment of invalidity of claims 1 and 3-11 of the '584 patent. V-Formation, Inc., 2002 WL 31619031 at *15, 2002 U.S. Dist. LEXIS 22394, at *45. In addition, the district court granted Benetton's motion for summary judgment of noninfringement for six of seven accused skate categories. Id. 2002 WL 31619031 at *15-17, 19, 2002 U.S. Dist. LEXIS at * 45-50, 60. The district court found a genuine issue of material fact about infringement of one category of Benetton's skates. Id. 2002 WL 31619031 at *19, 2002 U.S. Dist. LEXIS at 60. The district court set that issue aside for trial. V-Formation and Benetton entered into a stipulation of dismissal without prejudice as to infringement of the '143 patent by certain of Benetton's skate models. The district court dismissed those claims without prejudice. Thus, the district court entered final judgment on March 18, 2003.

II.

This court reviews a district court's grant of a motion for summary judgment without deference. Kemco Sales Inc. v. Control Papers Co., 208 F.3d 1352, 1359 (Fed.Cir.2000). This court also reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc); Markman, 52 F.3d at 979. Infringement, on the other hand, either literal or by equivalents, is a question of fact. RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1266 (Fed.Cir.2003). Thus, a district court may determine infringement on summary judgment only "when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device." Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed.Cir.2001).

CLAIM CONSTRUCTION

This court must address the meaning of the claim term "releasably attaching" in claims 1 and 9 of the '466 patent. Claims 1 and 9 state: "a plurality of fasteners for releasably attaching said first and second sidewalls to respective ones of said toe and heel plate flange pairs." '466 patent, col. 9, ll. 25-27; col. 10, ll. 16-18 (emphasis added). The district court construed the term "releasably attaching" to mean that the fasteners "must permit the sidewalls to be easily removed and replaced." V-Formation, Inc., 2002 WL 31619031 at *8, 2002 U.S. Dist. LEXIS 22394, at *24. The district court also determined that "those skilled in the art would not consider rivets ... to fall within the category of releasable fasteners." Id. 2002 WL 31619031 at *10, 2002 U.S. Dist. LEXIS at *29.

The intrinsic record in a patent case is the primary tool to supply the context for interpretation of disputed claim terms. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). This tool usually provides the technological and temporal context to enable the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of invention. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.Cir.2004); Moba v. Diamond Automation, Inc., 325 F.3d 1306, 1315 (Fed.Cir.2003) ("Moreover, as this court has repeatedly counseled, the best indicator of claim meaning is its usage in context as understood by one of skill in the art at the time of invention."); Ferguson Beauregard v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed.Cir.2003) ("The words used in the claims must be considered in context and are examined through the viewing glass of...