CAFC Endorses Summary Judgment of NonInfringement Without Markman Hearing

AIPLATalk169Schoenhaus v. Gensco (Fed. Cir. 2006, 05–2178).

In a claim construction decision, the Court of Appeals for the Federal Circuit (CAFC) has affirmed the lower court’s exclusion of “semi-rigid” shoe inserts from the claimed “rigid” inserts.  In the process, the court noted that “there is a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”[1]

Interestingly, it appears that there was no Markman hearing in this case.  (Pacer Report). Yet, the CAFC praised the lower court’s summary judgment decision and its embedded claim construction.[2]

January 10, 2005, the district court granted defendants’ motion for summary judgment of non-infringement. Senior Judge Louis H. Pollak did not issue a separate Markman order; rather, in a carefully-crafted summary judgment opinion, he construed two limitations of claim 1 of the patent and found as a matter of law that neither limitation was present in the accused shoes. . . .


[1] Fin Control v. OAM, 265 F.3d 1311, 1318 (Fed. Cir. 2001) (emphasis in original).
[2] Schoenhaus v. Gensco District Court Decision.

3 thoughts on “CAFC Endorses Summary Judgment of NonInfringement Without Markman Hearing

  1. 3


    I have recently come across you blog. Your area of topical focus is very interesting to me. But as a mathematician and engineer NOT a lawyer, your posts do not fill my needs. I expect that I am not alone in this. What I need is access to a blog covering patent news with a less formalistic level of description. I want something that bridges the world of lawyers with the practical world of invention. Legal discourse is dense with self-referential and specialized meaning, which is very difficult to understand unless one takes the significant time to track down the references and definitions. I understand that your stated audience is lawyers. But, with all of your knowledge and energy, I can only wish you would create a forum where you could bring alive the issues in a more approachable manner.

  2. 2


    I am finding your blog very, very useful. Great stuff and well executed! (And I appreciate the wry sense of humor injected between (and in!) the lines . . .)

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  3. 1

    My non-lawyer’s understanding is that claim construction, under current law, is a matter of law. My question for the lawyers here is: Is a Markman hearing required even when there may not be a jury trial?

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