Akeva v. Adidas (Fed. Cir. 2006, NON-PRECEDENTIAL)
Akeva’s patent covers shoes with a rear sole “secured” to the heel of the shoe. The patent is clear that the rear sole may be detachable or rotatable. In order to capture Adidas’s activity, Akeva also argued that “secured” could mean permanently secured. The court disagreed with that claim construction based on the language of the specification:
the language of the ‘471 specification specifically states that the invention of the ‘471 patent is an athletic shoe with a detachable heel: “However, in a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated with conventional soles and provides enhanced cushioning and/or spring.”.
Once again describing the “present invention” resulted in the specification serving to limit the scope of the claim terms. The truth is, however, the seeming requirement of a detachable sole pervades the patent and, in CAFC terminology, was “the scoop of the invention.” The “field of the invention,” for instance, was written “as athletic shoes with interchangeable/detachable rear soles.”
As could be expected, the boilerplate language at the end of the specification was deemed worthless even though the language asserts that the specification is not limiting in any way.
The court did find this case distinguishable from others because the detachable sole is “not one of several features, it is the primary feature of the invention.”
Brevity is the sole (!) of wit.
Bradley Ganz, “The Federal Circuit got it right: this guy pitched his invention as a removable sole, and in my opinion the alleged construction was an after thought fueled by an overzealous attorney and/or inventor.”
In the context of patent applications, the risk with “pitching” one feature at the expense of other features is that courts may conclude that the pitched feature is key to the invention. Consequently, the courts may bend over backwards to import the pitched feature into the claims.
For example, in Inpro II Licensing v. T-Mobile USA, Inc., (Fed. Cir. May 11, 2006), the inventor pitched the speed of his parallel communication between his personal digital assistant (PDA) and a host computer. He later determined that his inventive thumbwheel was much more valuable. While the claim recited a generic host interface, the Federal Circuit limited his claims to a direct parallel host interface — thus excluding all PDAs that used serial communication with a host. The sad thing is that the thumbwheel is not insignificant (anyone with a BlackBerry can attest to that) and wasn’t an afterthought given it was discussed in detail.
These cases illustrate that, if you state particular features are part of “the invention” and pitch them as valuable, you’ve got a good chance that you’ll be stuck with the features no matter what the claims say.
I just wonder whether infringement was the sole difficulty in this case.
I am sure that counsel were the soul of discretion.
The number of jokes you can make on this theme is limitless.
I was patent counsel for adidas and met this inventor years before this suit was filed. The Federal Circuit got it right: this guy pitched his invention as a removable sole, and in my opinion the alleged construction was an after thought fueled by an overzealous attorney and/or inventor.
This disclosure need not be read linearly in the traditional left-to-right method of reading English; any two or more words, numbers, or symbols contained herein may be read in any sequence, and any or all such sequences may be construed as my invention.
Zeak Vestiua proposed the following language “However, in a departure from typical shoes, the shoe of the present invention may include a heel structure having a rear sole that may be detachable. This rear sole may alleviate heel wear problems associated with typical soles and may provide enhanced cushioning and/or spring.”
Using permissive language (e.g., may) is certainly an improvement. The problem is that anytime you refer to “the invention” you still run the risk that the Federal Circuit *may* screw you.
If you’re going to hype a particular feature in a patent application, you’ll want to expressly state that it’s optional. Paul Cole’s suggestion comes close (and probably is sufficient): “The invention comprises the following features in combination, each feature being optional.”
My only issues with Paul’s suggestion are (1) that it still uses the phrase “the invention” and (2) that, by focusing on the word “combination,” one could interpret it to mean that the invention must combine at least two of the features that follow, but that any two would suffice given that each is optional.
“A shoe characterized in that it has a detachable heel subject to the proviso that the heel may be permanently attached well fits the above pattern (I was tempted to say fits it like a glove on the ground that since In re Bigio the CAFC probably could not tell the difference between a shoe and a glove since they are both usually made of leather and fit human extremities).”
If it doesn’t fit, you must aquit – no infringement.
Here is Paul Cole’s copyrighted universal statement of invention (beware all imitations):
“The invention comprises the following features in combination, each feature being optional.”
The inspiration came from a surrealist work of the 1930’s which was a blank canvas entitled: “Still life showing a knife without the handle, the blade of which is also missing.”
A shoe characterized in that it has a detachable heel subject to the proviso that the heel may be permanently attached well fits the above pattern (I was tempted to say fits it like a glove on the ground that since In re Bigio the CAFC probably could not tell the difference between a shoe and a glove since they are both usually made of leather and fit human extremities).
Now that’s what I call boilerplate.
Here’s some non-legalese boilerplate for y’all:
I am fully entitled to other embodiments, particularly those that are not actual embodiments and are really just obvious ideas that I considered worth less than the ink required to print, but now think I deserve because a competitor read my patent and arrogantly assumed they were clear to do something about which I was entirely silent
Has stretching the meaning of a claim limitation well past the central idea of the disclosure ever won a patent suit?
If permanently securing the heel was an option in the inventor’s mind, is it unreasonable to expect even just a short sentence to that effect?
I wonder how this suit ever got beyond fanciful client-attorney conversation.
Yes, yes, I know that sometimes inventors don’t appreciate the full scope of their own inventions, but come on, a shoe guy forgets to consider a permanently secured heel like the ones we’re all wearing right now?
Respondent Zeak Vestiua explains how it’s done. The specification should list as essential the features: shoe, heel structure, rear sole, and no more. All else is optional. The UK and EPO requires an Applicant to put his specification into strict conformity with the claims, in order to reduce legal uncertainty as to scope of protection after issue. Not a bad idea really.
When a patent gets litigated in England, it is “squeeze arguments” that are usually decisive. If, says Adidas, the claim means “X” it is wide enough, but caught by the art. If it means (narrower) “Y” it is valid but not infringed. Either way, Akeva loses. End of story. Of course it helps despatch of infringement cases that validity is decided by the same specialist judge, in the same proceedings, and on the preponderance of evidence. Seems to me that this is a more business-like way than an ivory tower “presumption of validity”. From UK, we read with rapt fascination cases like Akeva, and commentaries on them. Thank you Dennis.
The CAFC posted an Errata. “Scoop” was changed to “Scope”.
However, following is an even more devastating error in the opinion:
On page 7 the opinion states twice that the ‘300 patent contains a “less equivocal” disclaimer than of Scimed. What the opinion really wants to say is that the ‘300 Patent is “less unequivocal” or perhaps “more equivocal”.
Boilerplate, worthless? What kind of a message is that to send to the young and impressionable out there?
Why would Akeva even argue that “secured” could mean permanently secured? Adidas had a rear sole secured to the heel of the shoe and that was covered by the language of the claim. End of story.
Like a fish going after a baited piece of cheese, Akeva apparently took Adidas’s bait and was reeled in all the way through the Federal Circuit. The court probably was pissed about the length and language of the patent and figured if Akeva wanted to hang itself by letting others improperly frame the argument, the court wasn’t going to step in and prevent it, especially after what Akeva did to that poor patent examiner at the patent office and everyone else who had wade through the Akeva patent.
I can only assume that the “scoop” of the invention was a typo meant to be “scope” of the invention. This is not the first typo this blog has caught in a Rader claim construction opinion involving sporting goods.
link to patentlyo.com
This is what the patent had:
“However, in a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated with conventional soles and provides enhanced cushioning and/or spring.”
This is how I may have modified it:
“However, in a departure from typical shoes, the shoe of the present invention may include a heel structure having a rear sole that may be detachable. This rear sole may alleviate heel wear problems associated with typical soles and may provide enhanced cushioning and/or spring.”
Notice how I removed the subjective terms “radical”, “significantly”, and “conventional,” reworded everything to be wishy-washy (e.g., “may” instead of “is”), and moved the “detachable” from its modifying position before the term “rear sole” to someplace else.
And for the client, who had to pay the attorney to write the claims, as well as the extra (about) $2000 for small entity fees at that time.
‘300 Patent…239 claims!?! Give me (us) a break. I have pity for the examiner who had to wade through this morass.
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