A federal judge in the Middle District of North Carolina concluded this summer that sportswear manufacturer adidas infringed on the patent of Akeva, an athletic shoes manufacturer.
Specifically, Akeeva won on two patent charges against adidas. The first patent was for an improved shoe sole, and the second was for an improved heel structure. Akeva claimed inventor David F. Maschan designed the patents and then assigned them to Akeva. Adidas had argued that in creating a design similar to Akeva, it had not infringed on Akeva’s patent, because Akeva misinterpreted the description of the patent claim.
Patent infringement, codified in 35 U.S.C. § 271, includes manufacturing, selling, or offering to sell a patent without authority during the time of the patent. Federal Circuit precedent required the district court to follow a standard two-part test in determining adidas’ patent infringement. The first part of the test required the district court to determine the meaning and scope of the patent’s claims as a matter of law. The second part of the test required the District court to compare the two manufacturers’ claims under the second prong.
In the present case, the district court struggled with the first step in the patent infringement determination. In order to determine the scope of the patents, the district court had to decide which manufacturer interpreted the patents’ language most closely following the Federal Circuit’s recent decisions.
The meaning given to the inventor’s terms in the claim description of the patent filing will control the scope of the patent. Since terms often can be interpreted in several ways, many patent infringement suits arise from varying interpretations of the same term by different manufacturers. A competitor, such as adidas, may interpret a patent claim differently than the patent owner and manufacture a similar product without believing to have infringed on the patent. In this suit, adidas had manufactured a product similar to Akeva’s shoe, claiming to have interpreted several terms of Akeva’s patent claim differently.
adidas disputed Akeva’s interpretation of the terms “secured,” “flexible plate,” “concave,” “opening,” and “curve” for the sole patent and “oriented toward the back of the shoe” and “element” for the patented heel structure. adidas argued that the patents’ terms should be interpreted as an expert would read them, not as an ordinary lay person would.
Both parties looked to a different part of the patent to support their interpretations. The patent filing, the document filed by the patent’s inventor, contains several subsections. The U.S. Patent Office requires inventors filing a patent to follow the invention’s description with a series of claims and specifications. The claims represent the subject-matter claimed by the patent and the scope of the protection granted by the patent. The specifications represent the identifying materials for the patent.
Akeva and adidas disputed how the district court should analyze claim construction. adidas argued that an expert’s definition of the terms should be used over Akeva’s argument for an ordinary plain meaning interpretation. In arguing that the terms should follow an expert’s definition, adidas requested the district court focus on the specification portion of the claim. Akeva argued that the district court should focus on the claim itself to define the claim’s terms by their ordinary meaning.
The district court found that Akeva’s ordinary meaning analysis prevailed.
Courts have historically struggled with what definition should be assigned to terms in the patent claim and from which subsection of the patent they should be taken. The district court found both manufacturers’ arguments persuasive. Both arguments were supported by Federal Circuit precedent.
According to the district court, “over the years, the Federal Circuit has taken two approaches to claim construction: one focused on the claim language and a second focused on the specification that is more likely to read limits into claims.” Still the district court believed that “the court’s most recent decisions appear to be shifting away from a specification-based approach and back to a claims-based approach.”
Since Akeva relied on the ordinary language of the claim, its approach was more in line with recent Federal Circuit decisions, and thus prevailed over the more antiquated theory adidas used.
Federal Circuit precedent required that the district court use three sources of intrinsic evidence to determine the patent claim’s meaning under the first part of the two-part test. The district court first used the inventor’s description of the claim. The district court must presume that the words used by the inventor in the claim carry the ordinary meaning attributed by an expert in the filed. Akeva and adidas argued whether the ordinary meaning or expert element should be more persuasive. Once the district court determines the ordinary meaning, the district court must review the entire patent filing to ensure that the remainder of the patent filing also uses the words in their ordinary meaning. The district court will review two other subsections of the patent for variations, the patent specification and the patent prosecution history. Patent prosecution history is the recorded proceedings of the U.S. Patent Office and the patent’s inventor to determine the scope of the patent.
Only if intrinsic evidence—the descriptions found within the patent filing—were insufficient for resolving ambiguity of a disputed term, would the district court be entitled to review extrinsic evidence.
Akeva L.L.C. v. adidas; M.D.NC; 1:03CV01207; 5/17/05
Attorneys of record: (for plaintiff) Demetrius T. Lockett, Alston & Bird, Atlanta, Ga; Patrick J. Flinn, Alston & Bird, Atlanta, Ga; Scott Andrew Schaaf, Tuggle Duggins & Meschan, P.A., Greensboro, NC. (for defendant) James H. Kelly, Jr., Kilpatrick Stockton, L.L.P., Winston-Salem, NC; James Jason Link, Kilpatrick Stockton, L.L.P., Winston-Salem, NC; John Steven Gardner, Kilpatrick Stockton, L.L.P., Winston-Salem, NC; Keith A. Zullow, Goodwin Proctor LLP, New York, NY; William A. Meunier, Goodwin Proctor LLP Exchange Place, Boston, MA