Profoot, Inc. v. Merck & Co., Inc.
663 F. App'x 928
| Fed. Cir. | 2016Background
- ProFoot owns U.S. Patent No. 6,845,568, which claims a method of fitting custom foot inserts using a device called a “neutralizer” to place each ankle in a "neutral position."
- The patent emphasizes determining the neutral position while the athlete stands on one foot and describes a special device (the neutralizer) used to determine an angle for the insert.
- The specification discloses only two embodiments of the neutralizer, each describing a housing, a protractor, and an angularly adjustable plate capable of supporting the foot; the abstract likewise describes those components.
- The district court construed “neutralizer” as “a device that has a housing, a protractor, and an angularly adjustable plate capable of supporting the foot” and construed “neutral position” as the subtalar joint’s relaxed position due to lack of pronation or supination.
- After claim construction, the parties stipulated to judgment of noninfringement in favor of Merck; ProFoot appealed the construction of “neutralizer” and “neutral position.”
- The Federal Circuit reviewed claim construction de novo (with Teva principles for subsidiary facts) and affirmed the district court’s construction of “neutralizer,” finding the intrinsic record (claims, specification, and parent prosecution history) supported the specific-component construction; because that construction precluded infringement, the court did not address “neutral position.”
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of “neutralizer” | Term should be broad: any measuring device; claims don’t require specific components | Intrinsic record supports a neutralizer with housing, protractor, and angularly adjustable plate; Merck noninfringes under that construction | Affirmed: “neutralizer” construed to include housing, protractor, and angularly adjustable plate capable of supporting the foot |
| Construction of “neutral position” | Broader construction may be warranted (not fully argued because outcome turns on neutralizer) | District court’s construction (subtalar joint relaxed position due to lack of pronation/supination) | Not reached (no need to decide because noninfringement under neutralizer construction) |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction; de novo review of ultimate construction with clear-error review of subsidiary facts)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims read in view of the specification; specification is highly relevant)
- GPNE Corp. v. Apple Inc., 830 F.3d 1365 (Fed. Cir. 2016) (consistent characterization in specification can limit claim term meaning)
- VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014) (use of specification to characterize claim terms)
- ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368 (Fed. Cir. 2009) (specification can limit claim scope when it characterizes terms consistently)
- Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359 (Fed. Cir. 2016) (meaning of a claim term is its meaning in the context of the patent)
- Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307 (Fed. Cir. 2007) (prosecution statements in a familial application can be relevant to claim construction)
- Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (prosecution disclaimer in a parent application may bind continuations for the same limitation)