Federal Circuit Finds Term “Rigid” Does Not Encompass Semi-Rigid Devices

In Schoenhaus v. Genesco, Inc., 78 USPQ2d 1252 (Fed Cir. 2006), the Federal Circuit affirmed a district court decision of granting a summary judgment of non-infringement of Schoenhaus’ U.S. Patent No. 5,174,052 (the ‘052 patent) based on the absence of a claimed element from the accused product. 

The claimed invention of the ‘052 patent is directed to an orthotic device for preventing hyperpronation of a human foot.  During the prosecution of this patent, the inventors approached the defendants attempting to arrange a license agreement.  After the signing of a confidential disclosure agreement, the defendant entered negotiations with the inventors for 2-1/2 years, but ultimately withdrew from the negotiations. About 8 years later, in 2002, the inventors discovered that the defendants were selling a line of footwear which they believed to infringe the claims of the ‘052 patent.  The inventors filed suits against the defendants alleging infringement of the ‘052 patent, as well as misappropriation of trade secrets and unjust enrichment.  The defendants filed a counterclaim of invalidity. 

On January 10, 2005, the district court granted a summary judgment of non-infringement.  The inventors appealed.

The claims of the ‘052 patent are directed to an orthotic shoe device designed to prevent flattening of the foot arch.  Genesco’s accused footwear had a rear heel portion of the upper of the shoe to provide support, rather than only an insert.  The issue on appeal was whether the claimed “orthotic device” was limited to a discrete insert that was removable or immovable from a shoe, or whether the term encompassed other parts of a shoe.

During trial, the Plaintiffs attempted to define the use of the term “ridged” in the patent to mean “semi-ridged” in hopes of making the claims broad enough to cover the allegedly infringing footwear.  However, the Federal Circuit noted the specification of the ‘052 patent refers to the term “semi-ridged” as a material to be used in the manufacture of the orthotic insert, instead of the resulting product itself.  The Federal Circuit also noted that there was no support for the term “ridged” in the file history.  Therefore, the Federal Circuit concluded that “rigid” could not include “semi-rigid.” The Federal Circuit reasoned that if one was to substitute each proposed construction for the claimed “orthotic device,” this term could only encompass an “insert or immovable insert portion” because an illogical and inconsistent construction would result if the term read on any part of the shoe.  Accordingly, the Federal Circuit affirmed the district court’s decision.

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