United States District Court, M.D. North Carolina
MEMORANDUM OPINION, ORDER, AND RECOMMENDATION OF
UNITED STATES MAGISTRATE JUDGE
ELIZABETH PEAKE UNITED STATES MAGISTRATE JUDGE.
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.
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).
shoes with a permanently attached, non-rotatable sole do not
infringe the '300 patent.
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.
'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
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
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.
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.
“[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)).
“[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.
General Description of the Asserted Patents
'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.
'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.
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.
'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.”
'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).)
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.)
'126 Patent's Disputed Claim Terms
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 ...