Federal Circuit Interprets Another "Permanently Secured" Patent Element

Akeva LLC v. Adidas/Salomon (06-1090) - Non Precedential

Akeva sued Adidas for infringement of certain claims of two of its patents: U.S. Patent No. 6,662,471 (the '471 patent) and U.S. Patent No. 6,604,300 (the '300 patent). These patents describe improvements to athletic shoe heels, where the specifications of both patents describe a "flexible member" improvement that can be incorporated in rear soles that are detachable, or rotatable, or permanently secured. The district court construed these patents as covering shoes with rotatable or detachable rear soles only.

Akeva argued that the ordinary meaning of the claim should be given to the term and that the ordinary meaning would encompass permanent, removable, and rotatable soles to athletic shoes. However, after reviewing the specification, the Federal Circuit found no evidence that permanent soles were covered by the claims:

No embodiments, however, of the '471 patent include permanently attached heels. Of course, the absence of an embodiment does not necessarily exclude that embodiment from the scoop of the invention. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). But here, the specification when read as a whole clearly demonstrates that the scoop of the invention is athletic shoes with detachable heels which may include an optional flexible plate . . . Akeva cites Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004), in which the court found no disclaimer where the specification states the invention "includes" some feature where it is only one of several features described as significant or important. However, this case is distinguishable because the detachable sole of the '471 patent is not one of several features, it is the primary feature of the invention.

The '300 patent specification stated that "[t]he flexible region also need not be used only in conjunction with a detachable rear sole, but can be used with permanently attached rear soles as well." However, the Federal Circuit discounted this passage, stating that, when read in the context of the rest of the specification, the teachings disclaimed permanently attached rear soles that do not at least rotate.

Akeva also tried to avail itself of Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004) to have the Federal Circuit consider prosecution of an earlier patent to construe later-used claim terms. However the court balked on this proposition: "[i]n those cases, the patents had the same specification. Here, the '126 patent on which Akeva relies has a different disclosure than the '300 patent."

Affirmed

271 Blog Note: For similar Federal Circuit cases that encountered considerable complications on these types of terms, see

Dorel v. Graco - stuggling with the term "removably attached"

K2 Corp v. Salomon S.A. - same problem with "permanently affixed" (see Managing IP article titled "Rulings construe claim portions out of context" here)