by Dennis Crouch – Note, the prevailing party here (Merck & Co.) is represented in this case by MBHB Partner Dan Boehnen. MBHB is a major sponsor of Patently-O.
ProFoot v. Merck & Co. (Fed. Cir. 2016)
This case offers a straightforward narrowing claim construction analysis involving the ProFoot’s patented method of fitting shoe inserts. U.S. Patent No. 6,845,568. The decision also lays traps for prosecutors hoping for implicitly broad claims.
After a narrowing claim construction, the plaintiff stipulated that Merck’s Dr. Scholl’s process did not infringe and the case was dismissed. On appeal, the Federal Circuit has affirmed in a nonprecedential opinion.
The claim construction process looks to provide additional meaning and context to the expressly stated claims. The approach is to look for how a personal of ordinary skill in the art at the time of the application filing date would have interpreted the claim language. In this process, Phillips v. AWH indicates that the primary sources for interpretation are the intrinsic documents: the patent document (the single best guide) and the prosecution history (a helpful additional resource). When appealed, the Federal Circuit reviews claim construction determinations de novo while giving deference to underlying factual findings.
Here, the claimed insert-fitting method include use of a “neutralizer” that is used to place a customer’s ankle in a “neutral position.” Following the Markman process, the district court construed the “neutralizer” according to how it was described in the specification — requiring a housing, protractor, and angular-adjustable foot plate. On appeal, ProFoot argued that the district court improperly imported elements of the specification to limit the claims and that the claimed neutralizer does not require those specific components. Rather, according to ProFoot, a neutralizer should be defined based upon its functional ability rather than any particular physical elements.
On appeal, the Federal Circuit rejected ProFoot’s broad-construction argument — holding that “when read in the context of the [asserted] patent, this term requires a device that includes these components.” To reach this conclusion the court started with claim language that require a user to step on the neutralizer (claim 1 requires “place right foot on a neutralizer”) and to use the neutralizer to measure an angle. Looking to the specification, the court found that the patentee had described “only two embodiments of the neutralizer” – and both embodiments required all of the components found in the claim construction in ways that are consistent with the requirements of the claims.
Although the appellate panel found that evidence from the specification was sufficient to support the district court ruling, it also noted that the prosecution history of the parent application offered additional support. The prosecution history story goes as follows: the claimed neutralizer was not found in the originally filed claim set but was added during prosecution with an express claim requirement that the neutralizer include the physical elements (housing, protractor, etc.). Although the physical components are not included in the child application, the court noted that the patentee never indicated that it intended the child-patent neutralizer to be any different from the parent-patent neutralizer. ProFoot made the claim-differentiation argument here – the child application does not include the express limitations that are included in the parent and therefore should be seen as broader. The court rejected that argument as not providing any further information as to what the inventor understood “neutralizer” to include. I the inventor had thought the word should be interpreted differently in the two cases “he could have said so explicitly or revised the [asserted] patent to include other, broader embodiments of the neutralizer.”
One question that I have here involves the court’s use of prosecution history as providing “evidence of the inventor’s understanding of neutralizer.” The court has previously held that inventor’s understanding of claim meaning is not directly relevant to claim construction. Rather, the focus is on the objective meaning understood by someone of ordinary skill in the art.
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ProFoot’s Claim 1.
A method of fitting an individual with right and left foot inserts which place the ankles of the individual in a neutral position comprising the steps of:
for creating a right foot insert, having the individual place the right foot on a neutralizer while elevating the left foot off of the neutralizer;
using the neutralizer to determine the angle necessary to place the right ankle in a neutral position;
providing an insert having an angle which represents the neutral state for the right ankle;
for creating a left foot insert, having the individual place the left foot on a neutralizer while elevating the right foot off of the neutralizer;
using the neutralizer to determine the angle necessary to place the left ankle in a neutral position; and
providing an insert having an angle which represents the neutral state for the left ankle.