Miken Composites v. Wilson Sporting Goods (CAFC 2006-1628)

Miken swung first with a declaratory judgment action, and scored noninfringement on claim construction of what constitutes an insert.

The '398 patent discloses an improved bat design including "a tubular insert 18 . . . suspended within the impact portion 12 of the tubular frame." Id. col.2 ll.44-49.

The Miken matter had been stayed at the district court pending resolution of the Hillerich appeal, involving the same claims. Wilson lost that one as well, in a ruling that won the 2006 "Koan Case Law of the Year" award, with:

Claims may not be construed with reference to the accused device. The rule, however, does not forbid awareness of the accused product or process to supply the parameters and scope of the infringement analysis, including its claim construction component.

Claim construction in Miken came down to this:

Thus, at bottom, the parties' dispute centered around whether the "internal component" of the carbon bats constitutes an "insert" and whether a "gap" is present between the bat frame and insert, if any, in both the carbon and non-carbon bats.

On appeal, Wilson attempted to eviscerate the "insert" limitation. The appeals court never falls for that trick. Draft what you intend to claim, the CAFC reminds.

Wilson contends that the "insert" limitation is purely structural, and that it does not matter whether an insert is placed into a pre-existing frame or whether a frame is built around it. Wilson argues that by holding that the carbon bats do not contain an "insert" within the meaning of the claims because the internal component is not "inserted" into anything, the district court committed the claim construction error of importing a process limitation into claims directed to a product. See Hazani v. U.S. Int'l Trade Comm'n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (distinguishing between product and product-by-process claims).

We note first that nothing in the claims or specification indicates, explicitly or implicitly, that the inventor used the term in a novel way or intended to impart a novel meaning to it. To the contrary, the claims and written description of the '398 patent consistently use the term "insert" in the sense of its ordinary meaning as "something inserted or intended for insertion." Webster's II New College Dictionary (3d ed. 2005); see also Webster's Third New International Dictionary Unabridged (1993) (defining "insert" as "something that is inserted or is for insertion"); '398 patent col.3 l.5 ("the insert is inserted into the tubular frame 11"); id. col.4 ll.24-28 ("the insert 18 is coated with the lubricant before being inserted into the tubular frame 11"). Had the patentee, "who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting." Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993).

The term "insert" is a common term used to denote structure. To contend, however, as Wilson does, that it does not matter whether an insert is placed into a pre-existing frame or whether a frame is built around it ignores that ordinary and customary meaning, notwithstanding Wilson's attempts to categorize the term "insert" as "purely structural."

As for Wilson's contention that the district court impermissibly imported a process limitation into a product claim, we disagree. As we have discussed, the district court merely adopted an ordinary meaning of the term "insert." Summary Judgment Opinion at 11. That this ordinary meaning has functional attributes does not change the fact that the claim recites a structural component, albeit one possessed with certain understood characteristics. Cf. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)...

In Nystrom, we held that the "[b]roadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in [Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)]." Nystrom, 424 F.3d at 1145-46. Based on Phillips, a claim term should not be read to encompass a broader definition "in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public--i.e., those of ordinary skill in the art--that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record." Id. at 1145. Here, Wilson has not identified any such notice in the intrinsic record of the '398 patent.

CAFC affirmed that insert means insert, plain and simple. Similarly, Wilson couldn't breach the gap to snap the claim construction of "gap" that lead to noninfringement. The CAFC found the "insert" issue dispositive. Wilson bungs it.