Patent Law

Miken Composites v. Wilson Sporting Goods (Fed. Cir. 2008)

This case involve the same patent that prompted Judge Rader’s intriguing 2006 koan:

“while a claim is not to be construed in light of the accused device,
in an infringement case,
it must inevitably be construed in context of the accused device.”

See Wilson v. Hillerich.

The Wilson patent is directed to a type of softball bat that includes a internal structural inserts that allow for a lighter and stronger bat.  On summary judgment, Miken won a declaratory judgment non-infringment. In particular, the lower court found that Miken’s bats did not contain the required “insert.” Rather the internal structural members of thte Miken composite bats were created using a successive layering process.

Product by Process: Normally, a device claim can be infringed regardless of the construction methods used.  Miken argued that in this case, the patentee’s inclusion of the “insert” claim language transformed that portion of the claim into a product-by-process.

On appeal, the CAFC agreed with Miken that the insert limitation required an element that was “put or fit into something else.” Consequently, Miken’s products cannot infringe because the accused structural members were never “inserted or intended for insertion.”

Vitiation and DOE: Even without an insert, Miken’s products are arguable equivalents of the Wilson invention. However, the issue of ‘equivalent as a whole’ is irrelevant to whether a product infringes under the doctrine of equivalents. Rather, the all elements rule requires that each element of a patent claim be infringed either literally or by an equivalent element found in the product.  Here, that means that to infringe under the DOE, Miken’s bat must have an element that is the structural and functional equivalent of an insert.  Because Wilson did not provide evidence of such an element, the CAFC affirmed the lower court’s holding of non-infringement under the DOE.