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Asics America Corp. v. Akeva L.L.C.

United States District Court, M.D. North Carolina

March 29, 2019

ASICS AMERICA CORPORATION, Plaintiff/Counterclaim Defendant,
v.
AKEVA L.L.C., Defendant/Counterclaim Plaintiff,
v.
NIKE, INC.; ADIDAS AMERICA, INC.; NEW BALANCE ATHLETIC SHOE, INC.; and PUMA NORTH AMERICA, INC., Third Party Defendants.

          MEMORANDUM OPINION, ORDER, AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE

          JOI ELIZABETH PEAKE UNITED STATES MAGISTRATE JUDGE.

         This case involves the alleged infringement of certain of Akeva L.L.C.'s patents related to the heels of athletic shoes. The matter came before the Court for a claim construction hearing and for a hearing on a Motion for Summary Judgment of Non-Infringement or Invalidity. The Court stayed the case to allow for further mediation and settlement discussions, and to allow for filing of supplemental briefing following the hearing. The stay was extended to allow for finalizing of settlement. Most of the claims have now been settled, and the only claims remaining are the third party claims between Akeva as Counterclaim Plaintiff and Nike, Inc. and adidas America, Inc. as Counterclaim Defendants. For the reasons that follow, the Court will recommend construction of the disputed claim term “rear sole secured” in the '126 patent, and will then recommend that Counterclaim Defendants' Motion for Summary Judgment [Doc. #298, #304] be granted and that this action be dismissed.

         I. BACKGROUND

         This action was originally filed by Asics America Corporation against Akeva seeking a declaratory judgment that its athletic shoes did not infringe ten patents belonging to Akeva, and also seeking a declaratory judgment that these Akeva patents are invalid. Akeva then counterclaimed for patent infringement against Asics, and added patent infringement claims against Nike, Adidas, New Balance Athletic Shoe, Inc., and Puma North America, Inc. These newly-added parties then counterclaimed against Akeva seeking a declaration of non-infringement of the Akeva patents and a declaration of invalidity of these patents. Following discovery, the Parties narrowed their claims to five asserted Akeva patents: the '126 patent, the '269 patent, the '130 patent, the '350 patent, and the '099 patent. As noted above, many of the parties have settled, and the only claims remaining are Akeva's claims of patent infringement against Nike and Adidas and the corresponding claim by Nike and Adidas for declaratory judgment of non-infringement and invalidity of Akeva's patents. The primary dispute in this case is whether Akeva's patents cover shoes with conventional heels (permanently fixed in position) or whether the patents cover only shoes with a heel that is detachable or that rotates. In an earlier action in this district (1:03CV1207), Akeva brought a patent infringement action against Adidas alleging infringement of another, related patent. In that case, the Court construed two Akeva patents (the '300 and '471 patents) to cover only shoes with rotatable or detachable rear soles. Akeva L.L.C. v. adidas America, Inc., No. 1:03CV1207, 2005 WL 6225278 (M.D. N.C. May 17, 2005), as supplemented, 365 F.Supp. 559 (M.D. N.C. 2005). In that case, the Court described the dispute as follows:

[T]he patent discloses a rear sole “secured” below the heel region of the shoe. The heel region incorporates a flexible plate that is supported at its periphery, has a void beneath its interior area, and is capable of deflection at its interior. Generally speaking, the flexible plate acts like a trampoline, cushioning the impact of the wearer's heel and providing extra spring. The '300 Patent claims several variations on this theme. Central to one of the disputes is a feature wherein the heel can be separated from the rest of the shoe by the wearer, allowing a new heel to be attached in its place. This allows the wearer to replace the heel when it becomes worn or when the wearer needs different cushioning and spring properties for a different activity, such as playing basketball rather than running. There is also a feature that allows the heel to be rotated by the wearer so that the fast-wearing, ground-engaging portion located at the very back of the heel is no longer ground-engaging, thereby giving the heel a longer life. The parties disagree whether the “spirit” of the invention should be the flexible plate, as Plaintiff contends, or the removability and rotatability of the heel, as Defendant argues.

Id. at *1. Following a claim construction hearing, the Court construed the '300 patent's claim terms' reference to a rear sole “secured” to mean “a rear sole selectively or permanently fastened, but not permanently fixed in position.” Id.at *10. The Federal Circuit affirmed that decision on appeal. Akeva L.L.C. v. adidas Am., Inc., 208 Fed.Appx. 861 (Fed. Cir. 2006).

         Thus, shoes with a permanently attached, non-rotatable sole do not infringe the '300 patent.

         All of the allegedly infringing shoes in that case had a conventional rear sole (not rotatable or detachable), so the determination that the '300 patent covered only soles that were not permanently fixed in position (i.e., only soles that were rotatable or detachable) meant that there was no infringement of the '300 patent.

         The '300 patent in that prior suit is related to the five patents at issue in the present suit. In simplified terms, the '126 patent is a grandparent in that line, the '300 patent from the prior suit is a descendant of the '126 patent, and the remaining patents are, in turn, descendants of the '300 patent. Akeva contends that Nike and Adidas infringed the '126 patent and also infringed the later descendant patents (the '269 patent, the '130 patent, the '350 patent, and the '099 patent, referred to collectively as the “Continuation Patents”).[1]

         The Counterclaim Defendants previously moved to dismiss Akeva's claims based on collateral estoppel, in light of the determination as to the '300 patent in the prior case. However, the Court concluded that as to the '126 patent, claim construction was required. The Court noted that the claim construction of the '300 patent in the prior suit would not control the claim construction of the '126 patent as a matter of law, since context matters when construing claim terms, and the ‘300 patent was a later continuation-in-part of the ‘126 patent. In addition, with respect to the remaining patents, all of which are continuation patents of the '300 patent, the Court concluded that there were issues beyond the scope of collateral estoppel, based on Akeva's contention that it had rescinded any disclaimers and specifically covered non-rotatable, non-detachable heels in the Continuation Patents. Those issues have now been fully briefed by the parties in the claim construction briefing and the Motion for Summary Judgment and supplemental briefing, and are further addressed below.

         II. DISCUSSION

         A. Claim Construction

         The Court's claim construction analysis is largely controlled by the Federal Circuit's decisions in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Under Markman, the Court must first determine the “meaning and scope of the patent claims asserted to be infringed.” Markman, 52 F.3d at 976. Then, the Court must compare the properly construed claims to the product that is accused of infringing. Id. The first step is a matter of law and a decision for the court. The Phillips case holds that in construing the claim of a patent, the court should begin construing a claim term by considering the plain and ordinary meaning that a person skilled in the art would understand the term to have. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. at 1313.

         Under Phillips, the Court begins with the claims themselves, which may provide “substantial guidance as to the meaning of particular claim terms. . . . To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Id. at 1314. In addition, “[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. . . . Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. . . . For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Id. at 1314-15.

         However, “[t]he claims, of course, do not stand alone. Rather, they are part of ‘a fully integrated written instrument,' consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.'” Id. at 1315 (quoting Markman, 52 F.3d at 978-79). The Federal Circuit emphasized that “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal quotation omitted). “The importance of the specification in claim construction derives from its statutory role. . . . In light of the statutory directive that the inventor provide a “full” and “exact” description of the claimed invention, the specification necessarily informs the proper construction of the claims.” Id. “[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs. . . . In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive.” Id. (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)).

         Thus, “[c]laim language governs claim interpretation” but claim terms “are construed in light of the specification” and “[t]he ordinary meaning of a term may be narrowed when interpreted in light of the specification.” Akeva, 208 Fed.Appx. at 863. In undertaking claim construction, “courts should watch the often difficult line between construing the terms in light of the specification and importing limitations from the specification.” Akeva, 365 F.Supp. at 563. “To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Phillips, 415 F.3d 1323. The Court must keep its focus on “understanding how a person of ordinary skill in the art would understand the claim terms.” Id.

         B. General Description of the Asserted Patents

         The '126 patent is the first in the line of the asserted patents and is dated October 1, 1996. The remaining patents at issue are descendants of the '126 patent. The '126 patent discloses “[a] shoe [that] includes a heel support for receiving a rotatable and replaceable rear sole to provide longer wear.” (Patent >126 [Doc. # 292-1] at 2 (Abstract).) “The shoe may also include a graphite insert supported by the heel support between the heel and the rear sole to reduce midsole compression and provide additional spring.” (Id.) Akeva contends that the scope of the patent includes shoes with a permanently attached and permanently fixed rear sole, as opposed to one that is detachable and/or rotatable.

         The '300 patent from the prior suit is a continuation-in-part of that '126 patent. As discussed above, the Federal Circuit found that the '300 patent “discloses athletic shoes with extended life by improving the rear sole such that the rear sole is rotatable, detachable, or both.” Akeva, 208 Fed.Appx. at 864. The Federal Circuit concluded that “one skilled in the art reading the specification of the '300 patent specification would understand the term ‘secured' as used in the '300 patent to mean shoes with rear soles that are secured to the shoe, but not permanently fixed.” Id. at 865.

         The remaining asserted patents are all continuation patents of the '300 patent. The '269 patent is dated October 3, 2006. It describes a shoe with “a flexible member positioned below at least a portion of the foot support region and above at least a portion of the sole.” (Patent '269 [Doc. # 292-2] at 2 (Abstract).) “[T]he flexible member deflects in use in a direction substantially perpendicular to a major longitudinal axis of the shoe, ” and thus acts like a trampoline.

         The '130 patent has an issue date of November 22, 2005. It describes a “shoe including a plate capable of being deflected in a direction substantially perpendicular to the major longitudinal axis of the shoe.” (Patent '130 [Doc. #292-5] at 2 (Abstract).) The plate “includes at least one rib integral with at least a portion of the lower surface of the plate” and a “portion of the rib is exposed to and visible from outside the shoe.” (Id.)

         The '350 patent has an issue date of June 3, 2008. It describes a shoe “having an open interior, a plate positioned between the bottom of the shoe and a portion of the upper, and at least one opening extending from the bottom of the shoe into the midsole for providing air communication with the interior of the upper.” (Patent '350 [Doc. #292-3] at 2 (Abstract).)

         Finally, the '099 patent has an issue date of June 2, 2009. It describes “[a] shoe including a heel support integrally formed of a material different from the midsole material of a rear sole for supporting the foot of a user.” (Patent '099 [Doc. #292-4] at 2 (Abstract).) The heel support includes vertical walls that include “at least one window through which at least a portion of the midsole material of the rear sole is exposed to and visible from the outside of the shoe.” (Id.)

         C. The '126 Patent's Disputed Claim Terms

         The primary disputed claim term of the '126 patent is the term “rear sole secured” which appears in multiple claims, asserted here as to Claims 25, 27, and 31. Akeva argues that the Court should give this term its plain and ordinary meaning or that it should be construed to mean “a structure including a midsole portion and a ground contacting outsole portion attached to the shoe.” Defendants, on the other hand, argue that this term should be construed to mean a “rear sole selectively or permanently fastened, but not permanently fixed into position.” The crux of this dispute is ...


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