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"Insert" Construed as "Something Intended for Insertion"

By William F. Heinze

In Miken Composites v. Wilson Sporting Goods (February 7, 2008), the Federal Circuit affirmed the lower court's construction of the term "insert" as "something inserted or intended for insertion" in claim 1 of U.S. Patent No. 5,415,398 for a layered softball bat:

1. A bat, comprising:

a hollow tubular bat frame having a circular cross-section; and

an insert positioned within the frame . . .

Litigation stemming from the enforcement of this patent had been before the Federal Circuit twice before in Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006) and DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314 (Fed. Cir. 2001).

According to the latest opinion by Circuit Judge Linn, this constrcution did not import a process limitation into a process claim:

. . . 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." The issue would have been different if the claims contained the language argued in Wilson?s briefs; to wit, "internal structural member," Wilson Br. at 31, 38, or "multi-wall product," Reply Br. at 3, but they do not. It is the language of the claims not the argument that governs.

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) (noting that structural elements can be "expressed in functional terms" and citing examples "such as ?filter,? ?brake,? ?clamp,? "screwdriver,? [and] ?lock?"). Miken further supports its argument by relying on Nystrom. We agree that Nystrom supports Miken?s position but for a reason different from the one presented. 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. Accordingly, and because we discern no claim construction error in the
district court?s treatment of the "insert" limitation, we affirm this aspect of
the judgment.

[FOOTNOTE: We note that the claim construction we have affirmed in this case is fully consistent with the interpretation given to the same limitation in Hillerich, 442 F.3d at 1330 ("something inserted or intended for insertion"), and DeMarini, 239 F.3d at 1330 ("anything put or fit into something else"). Indeed, for us not to adopt the same claim construction in a case such as this, in which the construction of the claim term in question was a necessary predicate to the determination of a prior litigation before this court and is evident from the face of the intrinsic record without resort to expert testimony, would run counter to the Supreme Court?s guidance on stare decisis in Markman: "treating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of
stare decisis." Markman, 517 U.S. at 391; see also Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) ("We do not take our task lightly in this regard, as we recognize the national stare decisis effect that this court?s decisions on claim construction have."); Cybor, 138 F.3d at 1455 (noting that in Markman "the Supreme Court endorsed this court?s role in providing national uniformity to the construction of a patent claim"); Zenith Radio Corp. v. United States, 783 F.2d 184, 187 (Fed. Cir. 1986) (holding that stare decisis applied where resolution of issue was a "necessary predicate" to earlier Federal Circuit ruling). ]

As noted by Professor Crouch, "This case involves the same patent that prompted Judge Rader?s intriguing 2006 koan" in Wilson v. Hillerich:

?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.?

Full post as published by I/P Updates on February 07, 2008 (boomark / email).