Appeals Court Deals Setback to Reebok in Patent Case

May 8, 2004

The U.S. Court of Appeals for the Federal Circuit has vacated a lower court’s summary judgment ruling for Reebok International, Ltd. in a patent infringement case, finding that the maker of athletic shoes and apparel had failed to demonstrate a “lack of a genuine issue of material fact.”
The central argument considered by the appeals court was “whether the individual pods (in a foot-support structure) may be framed as an infringing structure or whether the DMX (R) 10 cushioning technology (promoted by Reebok) is so undifferentiated and continuous that it cannot be arbitrarily divided into sub-elements.”
The plaintiff in the case was Dr. Robert F. Weiss, a board certified podiatrist, who had obtained two patents on inventions in the field of “modified corrective human foot support,” which were intended “primarily for sports shoes such as running and jogging shoes.” Weiss’ invention was especially applicable as a support for the fifth, or pinky toe. According to the complaint he filed against Reebok, “the primary object of the invention [is] to provide support, which will provide a forward thrust and stability at the fifth ray without excessive pronation.”
Reebok also had its own foot-support invention, called the DMX (R) Series 2000 Cushioning Technology. This foot-support structure included ten air-filled pods.
In his complaint, Dr. Weiss alleged that he communicated with Reebok regarding his inventions in 1987. Ten years later, when Reebok introduced its DMX (R) 10 cushioning technology, Dr. Weiss began gearing up for a lawsuit, which was ultimately filed in 2000.
Before discovery could be completed, Reebok moved for summary judgment of noninfringement in its favor. The company’s key argument was that “all ten pods of the DMX (R) 10 cushioning technology had to be considered as a unitary whole. Citing Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 797 (Fed. Cir. 1990).”
By contrast, Dr. Weiss argued that “the infringement analysis should ignore pods one and eight and focus instead on pods two and seven. … (A)ssuming that the presence of pods one and eight prevented pods two and seven from infringing violated the basic principle of patent law ‘that the mere presence of an additional element not called for by the claims of the patents in suit does not render an otherwise infringing product non-infringing’ when the claims in suit are written in a “comprising” format.
The appeals court wrote that “although the parties’ motions had clearly framed their differing views on the nature of the proper infringement analysis for the claims’ structural limitations, Reebok’s argument during a subsequent hearing on the summary judgment motion repeatedly raised a new argument focusing on the functional limitations of Dr. Weiss’ patent claims. Reebok argued that its DMX (R) 10 cushioning technology did not infringe because the claims required the first and/or fifth toe to be able to bend or curl over the end of its support and because the Reebok devices purportedly did not allow such curl-over. In response, Dr. Weiss’ counsel repeatedly stated at the hearing that Reebok’s summary judgment motion had addressed only the structure of the toe-support means and that function was not within the scope of the subject matter of the motion.”
Nevertheless, the district court granted summary judgment, finding that the “curl-over function was a claim limitation and that it did not read on the accused device.”
Dr. Weiss appealed.
The instant court pointed out that “while summary judgment may be granted on legal grounds other than those advanced by the parties if the record is sufficiently developed. See Broderick Wood Prods. Co. v. United States, 195 F.2d 433, 436 (10th Cir.1952),” a court “should be cautious in this situation inasmuch as there is a greater possibility of error when the opposing party, who may be able to demonstrate that a genuine issue exists, has not done so because the facts relating to the particular legal principles urged by the movant were not in issue. Therefore, the court normally should give the parties notice when it intends to rely on a legal doctrine or precedents other than those briefed and argued by the litigants. 10A Charles A. Wright, Arthur Miller and Mary Kay Kane, Federal Practice and Procedure: Civil § 2725, at 440 (1998); see also Fed. Deposit Ins. Corp. v. Grupo Girod Corp., 869 F.2d 15, 17 n. 10 (1st Cir. 1989) [*12] (finding a genuine issue of material fact and noting that the district court “did not notify the litigants of its intention to rely on the” doctrine relied on by the district court); Ware v. Trailer Mart, Inc., 623 F.2d 1150, 1154 (6th Cir. 1980) (vacating the trial court’s grant of summary judgment because a genuine issue of material fact existed and because “the trial court neither exercised caution nor notified the parties of its intention to base summary judgment on” the grounds on which the trial court ruled).”
Thus, the court found that the district court erred in granting summary judgment of noninfringement based on the absence of any evidence in the record that the curl-over limitation in the claims read on the accused shoes.
“Reebok has the burden of proof in its own summary judgment motion to demonstrate the lack of a genuine issue of material fact, and there is no evidence in the record demonstrating that toes cannot curl over in the accused shoes, other than Reebok’s own conclusory assertions.”
“Additionally, even if we were to treat Reebok’s assertions as sufficient evidence in the record for a reasonable jury to arrive at the conclusion that toes in the accused shoes cannot curl over, Dr. Weiss has not had ample opportunity for discovery to demonstrate otherwise.
“In the instant case, discovery was stayed pending resolution of Reebok’s summary judgment motion that was narrowly focused on the structural aspects of a means-plus-function limitation, and Dr. Weiss should be granted the time that all litigants receive to gather relevant evidence, here evidence that the accused shoes can perform the claimed functions.
“The district court did not notify Dr. Weiss that it would rule on the basis of a functional limitation beyond the scope of the summary judgment motion filed by Reebok. Based on the current factual record and the procedural posture in which the case was resolved in the district court, to affirm would be to wrongly deprive Dr. Weiss of his day in court.” Dr. Robert F. Weiss, et al. v. Reebok Int., LTD., Inc., 02-1471
Fed. Cir., 3/9/04


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