*1 prices unwilling market of commer- effective date. That OPM was catalog lished or to quantities cial substantial negotiate items sold to of the modified that public.” PCA contends general provision is irrelevant. could have PCA “mar- community rated contracts were its accept refused to the new terms of the that fall under this price” ket contracts Indeed, appear contract. it does not that however, OPM, announced in exception. plan jeopardized its 1991 would have been that FAR 52.215- Register the Federal so; it had done the contract is automati- apply 5.9—would when a con- 23—section cally pro- renewed unless written notice is or “provid[es] pricing defective cost tractor days prior January vided 60 to 1 of the If the data on which the initial data.... § year. contract See 48 C.F.R. 1652.249- defective, found rate was converted is 70(a) (1990). board, therefore, The was provides remedy for the Govern- clause holding agreed correct PCA (1987). Fed.Reg. ment.” 52 PCA is the modified section 5.9 would be effective knowledge published charged with the January is entitled to OPM regulations; by it is therefore bound pursuant interest to that clause. interpretation of OPM’s section 5.9. See Merrill, Crop Corp. Federal Ins. v. Conclusion 380, 384-85, U.S. 68 S.Ct. 92 L.Ed. Accordingly, the decision of the Armed (1947); States, Montilla v. United 198 Ct. Appeals Board Services of Contract is af- (1972).
Cl. 985-86 firmed. board, crediting the OPM Office of PCA, Inspector audit of found General’s AFFIRMED claim ... does not concern “OPM’s rating ‘methodology,’ furnishing but to ” OPM of ‘inaccurate data.’ We will not factual
disturb the board’s determination fraudulent,
“unless the decision is or arbi- trary, capricious, or grossly or so errone- CORPORATION, Plaintiff- faith, necessarily imply ous as to bad or Appellant, supported by ... substantial evi- 609(b) (1994). § dence.” 41 U.S.C. PCA presents finding no evidence that such a SALOMON S.A. and Salomon/North Thus, warranted here. its submission of America, Inc., Defendants- pricing implicates defective data the inter- Appellees. 5.9(e)(1). payment est mandate of section No. 98-1552. argues that PCA even OPM’s con apply struction of section 5.9 does not Appeals, United States Court of the 1991 contract. Section 1.4 states Federal Circuit. modifications like section 5.9 “will not be Sept. 1999. year effective until the second contract following year regulation which the Rehearing Rehearing En Banc or amendment ... promulgated; unless Denied Nov. 1999. agrees Carrier to an earlier [t]he date.” At agreed issue here is whether PCA 1,1991 January effective date. that it
PCA asserts is not bound regulation
modified because OPM did not May
send notification until 1991 and de- nego-
clared the amendment was “not However,
tiable.” signed PCA contract, thereby agreeing to
amended its *3 Gardner,
Paul L. Chrintensen O’Connor PLLC, Seattle, Johnson & Kindness Washington, argued plaintiff-appellant. for him R. With on the brief were James Uhlir D. and Lawrence Graham. Obion, Lipman, Spivak,
Steven E. McClelland, Neustadt, P.C., Maier & Arlington, Virginia, argued for defendants- appellees. him on the brief was With James J. Kulbaski. RADER, CLEVENGER,
Before and GAJARSA, Judges. Circuit Opinion by for court filed correctly interpreted Circuit district court the rel- evant claim Judge Dissenting opinion properly CLEVENGER. deter- mined that doctrine of Judge filed Circuit RADER. could not used be to reach the accused
CLEVENGER, Judge. Circuit device, we affirm. K-2 Corporation appeals summary . 1—1 judgment noninfringement granted favor of Salomon S.A. Salomon/North 0> America, Inc., by the United States Dis (“K-2”) K-2 Corporation is the owner of trict Court for the Western District of 5,437,466 reexamined U.S. Patent No. Washington. Corp. See K-2 v. Salomon (“the patent”), ’466 August issued *4 S.A., 1032110, USPQ2d 1998 WL 1054 entitled “In-Line Roller Skate.” The ’466 (W.D.Wash.1998). court, The district after patent generally directed to an in-line construing disputed claim terms in K- soft, pliable skate that has a inner “bootie” 2’s reexamined United States Patent No. or “shoe” surrounded certain areas 5,437,466, determined that no reasonable plastic molded or straps affixed to the base jury product— could find the accused arrangement skate. This allows the Salomon’s model “TR” in-line skat e —in wearer’s foot to breathe and offers sub- fringed literally asserted either stantially lighter skate while retaining equivalents. or under the doctrine of structural stiffness required perfor- for id. at 1057. Because we conclude the mance. *5 non-rigid 'portion being per-
Claims and 6 of the ’466 are said shoe Rep- in only manently portion claims at issue this case. to said base affixed major resentative claim 1 recites five at least said toe area and said heel area components, substantially preventing claimed as set forth in brief for movement therebetween at in a key form limitation under- least below with plane, horizontal wherein at least a lined: portion non-rigid portion of said shoe 1. In an having in-line roller skate continuously extends from said base upper portion shoe and a lower portion top to at least of said portion frame ... a non-rigid shoe support ankle cuff. portion adapted to receive and sub- parties Claims 5 and 6 contain what the stantially enclose the entire foot of respect with agree equivalent language support posi- ... the skater means key to the limitation: adjacent tioned selected areas ... 5. non-rigid portion pro- for said shoe viding support non-rigid portion being per- to aid the skater in said shoe maintaining manently in-line roller interconnected with said said skate substantially position portion vertical base at least at said toe area substantially portion, ... and a base ... and said heel area for preventing movement therebetween at that includes a soft inner bootie surround- plane least in a horizontal ... (“the by ed rigid plastic structure TR skate”). The TR skate’s inner bootie is 6. ... lower, rigid portion fastened to the non-[rigid] upper portion being said by skate the use of rivets non-removably rigid screw in to said affixed adjacent base both said heel and toe the toe area and a removable hex-head portions substantially said base screw the heel area. parties agree for preventing movement therebetween at dispositive issue this case is plane least in a horizontal ... whether the use of a removable screw in the heel area of the TR skate can meet the Salomon North Amer- S.A. Salomon “Salomon”) (collectively, ica affixed” make and sell limitation found in skate, TR, designated an in-line as model claims and 6 of patent. the ’466
Salomon’s TR Skate: Bootie/Base Attachment Detail
B “permanently of affixed” could encompass not the removable screw used In April K-2 sued Salomon for in the heel area of the TR skate. K-2 See infringement patent. of the ’466 On cross- S.A., Corp. v. Salomon 1998 WL summary judgment, motions for the dis- (W.D.Wash.1998). USPQ2d rejected trict court arguments K-2’s that The court TR determined because the disputed “permanently affixed” claim missing skate was an element of the ’466 limitation synon- should be construed to be claims, not, “affixed,” “secured,” it ymous with could as a matter of “firmly or held,” law, and instead literally infringe held that the those claims. id. See present limitations are TR of the claim held that the court also district law, device, not, literally in- either or a matter of accused as could
skate
of
equivalent.
the doctrine
See Renishaw
fringe under
substantial
estoppel.
history
Azioni,
prosecution
Marposs
per
of
Società
because
PLC v.
The court
1243, 1247-48, USPQ2d
at 1057.
concluded
See id.
during
claims
the relevant
amending
(Fed.
Mills,
Cir.1998);
v.
General
Inc.
to add the
and examination
prosecution
Hunt-Wesson, Inc.,
978, 981, 41
103 F.3d
limitation and the
affixed”
(Fed.Cir.1997);
Young
fastening, K-2
locations of
and toe
Inc.,
heel
Prods.,
Q3 Special
v.
Mfg.
Dental
Co.
in-line skates
coverage of
relinquished
had
1137, 1141,
112 F.3d
permanently
have a bootie
did not
(Fed.Cir.1997).
Cybor Corp.
See also
See
heel and
toe.
at both the
affixed
Inc.,
Technologies,
v. FAS
noted
the rele-
further
id. The court
(Fed.Cir.
1454, USPQ2d
1172-73
that K-
history suggested
prosecution
vant
1998) (en banc).
prior
art
claim to avoid
amended
aspects
relevant
of the ac-
Because the
5,331,752 to
reference,
No.
Patent
U.S.
operation are
cused
structure and
device’s
that,
reference”),
(“the Johnson
Johnson
case,
undisputed
question
in this
in which the boo-
an in-line skate
discloses
in-
literally
TR
whether Salomon’s
skate
the toe and
and affixed at
tie is removable
of the ’466
fringes
asserted claims
court con-
id. The district
See
mid-foot.
those
interpretation
on the
patent turns
of such
relinquishment
K-2’s
cluded
Alternatives,
claims.
Athletic
Inc.
it
now as-
subject
prevented
matter
Inc.,
Mfg.,
Prince
that the heel screw
Salomon’s
serting
(Fed.Cir.1996)
“perma-
to the
equivalent
TR
was
skate
(“Where,
here,
parties
do
dis-
as
of the ’466
affixed” limitation
nently
ac-
regarding
facts
pute
relevant
Summary judgment
nonin-
claims.
disagree over
product
cused
but
[claim
granted
favor
Salo-
fringement was
in-
question
of literal
interpretation],
id.
mon. See
to
con-
fringement collapses
one
claim
decision, vesting this
appeals that
summary
and is thus amenable
struction
pursuant
jurisdiction
with
court
judgment.”).
1295(a)(1)(1994).
§
U.S.C.
course,
begin,
with
We
*7
II
Renishaw,
the claims. See
language of
1248,
1120;
USPQ2d at
Here the critical claim language is us something about the structural require parties affixed.” agree The ments of the attachment between the boo- language the relevant in claims 5 and base; all, speaks tie and the it not at equivalent, dispute and there is no however, about whether that attachment is meaning about the of “affixed” in this con permanent, something perma less than Thus, text. our analysis begins with the nent, or entirely only removable. The an ordinary and accustomed meaning of the course, question, swer is the phrase term in the “permanently” “perma specific claim limitation that the bootie be nently affixed.” and accus “permanently affixed” to the base. phrase, tomed of this as the dis reads the way functional noted, K-2, trict court see effectively expunge that would the term *8 encompass does not affixation via “permanently” from the claim language. is, removable screw. That the Corp. Perkin-Elmer Westinghouse Cf. meaning and accustomed of “permanently Corp., Elec. 822 F.2d 1533 n. affixed” in requires this context that the (Fed.Cir.1987) 1325 n. 8 fastening be unremovable. (“[S]pecific claim limitations be can[not] ignored insignificant as or in immaterial primary argument K-2’s is that the determining A infringement.”). more nat functional in language following the claim ural construction reads the two clauses as prevent this limitation —“for substantially complementary, that recognizing “perma ing movement at in therebetween least a nently requires affixed” plane” horizontal unremovable meaning the —dictates attachment, is, “permanently sug language affixed.” That K-2 while the functional gests that the requires prevent inclusion of this functional that the attachment slid- specific the terms Renishaw, indeed free to define F.3d at See, e.g.,
ing. (“The (Fed.Cir.1998) invention, this his or her USPQ2d at used to describe true to the claim stays clarity, that de- construction be done with reasonable must with naturally aligns most language and liberateness, Hoganas, 9 precision.”); description of the invention patent’s (find- the 951, USPQ2d at at 1938-39 be, end, construc- the correct in the will unsup- proposed definition ing patentee’s tion.”). prosecution specification in or ported the passages in cited provides history). no reason Nowhere the claim itself While the accustomed ordinary and applicant squarely to alter the the describe to us does affixed,” K-2 meaning “permanently (i.e., “perma- the connection the nature of (and does) the intrinsic argue may affixed”) In- pending in claims. nently the forth an alternate clearly sets evidence stead, on the relevant focuses v. Wilde- Beachcombers definition. prior in the art Johnson the connection Wood, Inc., Products, 31 F.3d Creative (“detachable”) advantages and the skate (Fed. 1154, 1158, USPQ2d “permanently affixed” provided said, Cir.1994) (“As repeatedly a have we we K-2 therefore asks that connection. lexicographer own patentee can be his applicant the distinctions the infer definition, to the provided patentee’s in boot between the “detachable” draws the conventional def it differs from extent af- “permanently art and the prior inition, specifica forth in the clearly set required by the claims fixed” connection tion.”); AB v. Dresser Indus Hoganas explication of an a clear unac- constitute tries, Inc., “perma- of the term customed definition (Fed.Cir.1993) (“Although a decline, however, adopt a nently.” We lexicographer, as his own patentee can be so proffered unaccustomed with said, repeatedly the words of have we in the intrinsic record. See support little ordinary meaning, their given will be claim Paulsen, In re the inventor used appears unless it (“The specification mere- (internal quotations differently” them ly general in a fashion describes certain omitted).). points to particular, In K-2 in a capabilities desirable features and sup in arguments made amendments description, how- computer. This portable prior over art port patentability ever, establishing specialized from far There, applicant stat Johnson skate. computer].”). definition [of “perma of the that the addition term ed distinguish the claims nently” served to sure, prosecution history To be boot disclosed the “detachable” applicant indicates that intended argued applicant further Johnson. the claims to avoid the “detachable” amend permanent con advantage that an skate. The connection of the Johnson sliding that it avoided the heel was nection however, indicates history, same problem with the applicant noted as “perma the term applicant to add chose prior passages, From these art. to achieve nently” to the claims order to that outlined draws a conclusion similar applicant could possi this result. That the must affixed” above: “perma than bly have terms other added simply prevent sliding “affixed to mean patentable to create a distinction nently” reject dimension.” We this a horizontal simply art is prior irrele with asserted proposed definition conclusion: claim construction task. vant to our in a sliding as “permanently” “preventing claims; instead, we Courts do rewrite appear dimension” does not horizontal *9 by the to the terms chosen give effect deliberateness, required clarity, with the See, e.g., Texas patentee. Instruments impart to an precision and unaccustomed Comm’n, Trade Inc. v. International an otherwise clear claim term. meaning to 1018, USPQ2d F.2d Paulsen, 1480, 31 See In re F.3d (“[T]o (Fed.Cir.1993) construe the claims (“Although inventor is at 1674 an thing “permanent” if that un by TI would read as term is suggested manner in the out of the claims. express require limitation derstood to an infinite duration. an can This, ‘[c]ourts we will not do because claim philosophy; But construction is not give narrow claims to nor neither broaden wring we need not our hands when consid something different than patentee the ering implications metaphysical the of a ” Autogiro (quoting he has set forth’ what Instead, analysis of claim terms. we need States, v. 181 Ct.Cl. America United Co. recognize of that claim only construction is 391, 396, USPQ firmly reality by anchored in the under (Ct.Cl.1967)).). Here, the we hold that standing ordinary of those of skill the correctly “perma construed district court See, e.g., art. Hoechst Corp. Celanese ordinary and ac nently” according to its Ltd., BP Chemicals is, phrase the meaning' customed —'that (Fed.Cir.1996). In that the requires affixed” “permanently case, parties and district court this the the the between the bootie and connection agree that the rivet and screw attachment unremovable. base of the skate be in the toe area of the accused skate meet defi argues proposed that its “permanently affixed” claim limita meaning “permanently of nition supplies tions. This is so because the rivet affixed”— in a horizontal prevent sliding “affixed to permanent, unremovable connection. plane” ordinary and accustomed Indeed, description —is in the written of any phrase, of the meaning patent, the ’466 a rivet is cited as a conven event, presented has not evidence Salomon accomplish per fastening tional means ordinary contention that the support its Pat., 8, ll. manent connection. See ’466 col. meaning phrase and accustomed (describing 55-58 connection between base We, course, recognize “unremovable.” frame). perma and lower The rivet-made “ordinary and accustomed” mean “infinitely” nent connection is of course not dispute, a claim term will often be ing of permanent, because the rivet can be bro the terms irrespective clarity ken. The same is true of an embodiment Senmed, Inc. v. Richard-Allan used. See permanent that achieved a invention Indus., Inc., 8,n. Med. portion connection between base Cir.1989) (Fed. n. portion the lower frame of the skate ‘dispute’ about (“Lawyers may create a injection molded unit. See using single word, nothing ambiguous but there is Likewise, 11.58-61. were an id. col. disput about linguistically [the or obscure provide per laminate used to adhesive present in the term] ed claim as used 13,11. connection, see id. at col. 48- manent claim.”). ordinary dispute But a over the permanence too could be de imply meaning does not and accustomed apart. the structure stroyed by breaking Here, meaning that such a does not exist. laminates, Screws, unlike rivets and are example, recognize we that the term for unscrewed, is, meant to be to be “permanently” has what can be said to be laminate, to the removed. A rivet or flavor of infiniteness about its mean contrary, permanent, meant to remain ing, might questions which raise about unless one is bent on break of the term in this claim: even the unremovable use affixed” permanent apart. most ing permanent structure and the connections between the bootie Here, that the district we are convinced can, all, after be undone base of the skate in holding court was correct that the ordi- upon the total destruction of the skate “perma- nary and accustomed however, This, does not mean itself. nently requires affixed” unremovable no connection between the bootie because the bootie and the connection between “infinitely” permanent, and skate can be base. there can be no and accustomed we with the district Indeed, agree Because meaning for the claim term. we af- permanently pressed any- hard to describe court’s construction would be *10 1366 A dispute
fixed,
parties do
and the
utilizes a remova-
device
accused
Salomons
Supreme
in War-
Although the
Court
the heel of the bootie
connect
ble screw to
the existence of
reaffirmed
ner-Jenkinson
base,1
that the
we conclude
to the skate’s
it did so with
equivalents,
the doctrine of
granting
sum-
was correct
court
district
equiva-
...
of
“concern
that the doctrine
infringement
of no literal
mary judgment
own,
...
a life of its
lents
has taken on
plain language
[T]he
in favor of Salomon.
patent claims.” 520
by the
unbounded
56(c)
entry
of sum-
mandates
of Rule
1040,
28-29,
41
at
117
U.S.
S.Ct.
time for
adequate
after
mary judgment,
Indeed,
re-
unquestionably
while
1871.
motions,
par-
a
against
discovery
upon
vitality,
equivalents
doctrine of
taining
showing
a
sufficient
ty who fails to make
core
in some tension with other
exists
es-
of an element
the existence
establish
law,
patent
perhaps
most
tenets of
case, and on which
party’s
sential to
patentee
that the
notably
requirement
proof
of
the burden
party
will bear
distinctly
“particularly point[
out and
]
Catrett, 477
U.S.
Corp.
trial. Celotex
appli-
subject matter which the
claim[ ]
2548,
317, 322,
claims to notice to garding scope patent grant, of the see Ill Co., Binney & Carbon Co. v. Smith United accused Although Salomon’s 228, 232, 165, L.Ed. 317 63 S.Ct. 87 U.S. of a matter law—literal device cannot—as (1942) (“The 381, 232, USPQ 383-84 wheth we must still determine ly infringe, public ... of the inventor must inform the may none equivalents of er the doctrine asserted, monopoly so that it limits of the issues of genuine allow to raise theless "may features be safe- may be known which infringement un regarding fact material ly or manufactured without a license used equivalents. See the doctrine of der (internal may quotes not” omit- and which 242, Liberty Lobby, U.S. Anderson v. ted).). Boats, Inc. v. See also Bonito (1986). 2505, 255, 91 L.Ed.2d S.Ct. Boats, Inc., 489 U.S. Thunder Craft allows in equivalents The doctrine 150-51, 971, 118, 109 S.Ct. 103 L.Ed.2d in some cases fringement to be found (1989) 1847, (describing how accused device where the elements of the pat- of the “carefully bargain” crafted substantially to the corre equivalent are entirely system “dependfs] ent almost of the asserted claim. sponding elements competition in the upon backdrop of free v. Hilton Co. Warner-Jenkinson designs and in- exploitation unpatented 17, 29, Co., 520 Davis Chemical U.S. novations.”). L.Ed.2d S.Ct. (1997). responded under the The courts have Infringement array question by developing such concerns is doctrine limitations, formulations, Mfg. and tests legal Tank & Co. v. fact. See Graver Co., regarding application 609- of the doctrine 339 U.S. Linde Air Products USPQ These reflect two ani equivalents. L.Ed. efforts 70 S.Ct. (1950). mating concepts. The first court, notes affidavit filed with the district puzzled 1. are the dissent’s insistence We (which fact-finding required with additional that the heel screw holds the heel respect nature of the heel to the "removable” may portion place) be un- bootie fully dispute indeed, it screw. K-2 does not ¶ ex- screwed. See Grande Aff. 5. Salomon's — acknowledges' is remova- the heel screw description ac- pert —that concurs with this ble, removing the heel screw allows and that ¶¶ See Sénée Aff. 14. cused skate. ("slight- portion heel of the bootie to lift genuine issue of material We will not create Reply ly”) upwards away from the base. See parties agree that none exists. fact where the Further, expert, K-2’s in an Br. at 20.
1367
of equivalents
doctrine
is limited.
It can
ate an element from the claim in its entire
patent
encompass
not allow a
claim to
ty.
Warner-Jenkinson,
520 U.S. at
subject
matter
could not have been
29, 117
1040, USPQ2d
1871;
S.Ct.
41
at
see
patented; nor can it be used to ignore the
Biomet, Inc.,
also Tronzo v.
1154,
156 F.3d
Thus,
patent.
actual
of the
we 1160,
(Fed.Cir.
USPQ2d 1829,
47
1834
equivalents
have held
the doctrine of
1998) (“If
theory
a
of equivalence would
patent
encompass subject
cannot allow a
limitation, however,
vitiate a claim
then
prior
matter
in the
existing
art. See Wil
there can
infringement
be no
under the
Sporting
son
Goods Co. v. David Geoffrey doctrine
equivalents
as a matter of
Assoc.,
677, 684, USPQ2d
&
904 F.2d
14
law.”). Similarly, where
patent
the
docu
(Fed.Cir.1990) (“[A]
1942, 1948
patentee
expressly
ment
identifies a role for a claim
obtain,
not
should
be able to
under the
limitation, the
equivalents
doctrine of
can
equivalents,
doctrine of
coverage which he not
capture subject
be used to
matter that
lawfully
could
have obtained from the
does not substantially fulfill that role. See
claims.”);
by
PTO literal
Conroy v. Reebok
Warner-Jenkinson,
40,
Prosecution
B
presumed, see Warner-Jen
tain cases be
33,
1040,
kinson,
117
41
at
S.Ct.
520 U.S.
ease,
In this
K-2 asserts
the
scope
the
of such
USPQ2d at
and
the
attaching
removable screw
the heel of
be,
on the circum
depending
estoppel can
substantially
in
skate is
bootie
Salomon’s
to
stances,
great
“from
to small
anywhere
to the
affixed”
equivalent
v.
Hughes
Co.
United
zero.”
Aircraft
required by the
claims of
fastening
States,
1351, 1363, USPQ
219
717 F.2d
responds by ar
patent.
’466
Salomon
the
(Fed.Cir.1983).
Sys.,
Litton
See also
481
K-2,
prosecution and
during
guing
USPQ2d at
46
1331
140 F.3d at
reexamination,
subject
surrendered
(“[T]he
product
a
of
scope
estoppel is
of
connec
encompassing
matter
removable
argu
and
both [amendments
the effects of
the bootie and the base of the
tion between
concert.”);
Avi
working
Sextant
ments]
that the
agree
We
with Salomon
skate.
Devices, Inc.,
Analog
172
onique,
S.A.
law,
equivalents, as a matter of
doctrine of
(Fed.
1865,1875
817, 832, USPQ2d
49
cannpt encompass the accused skate’s re
Cir.1999) (“[P]rosecution history estoppel
movable screw.
operation
the
of the Warner-
arising from
reference describes and
Johnson
presumption allows
doctrine
Jenkinson
operate.”).
depicts
easily
In a
an in-line skate with an
re-
equivalents no room to
of
vein,
par
also stated that
upper
portion
similar
we have
shoe
that can be
movable
pat
subject
ticular
matter disclosed
to the base of the skate. A sec-
attached
is deemed
specification
ent
but not claimed
reference,
prior art
French Patent No.
ond
Maxwell v.
to have been surrendered. See
(the
reference”),
2,688,072
“French
teaches
Baker, Inc.,
1098, 1106-07,
86 F.3d
J.
to the
upper
a soft
bootie attached
skate
(Fed.Cir.1996).
with
at the toe and
heel.
base
screws
of law. See
Again,
questions
these are
art,
pieces
prior
these two
Given
Warner-Jenkinson,
at
520 U.S.
39 n.
fact that
undisputed
the accused skate
1040, USPQ2d at
n. 8.
117 S.Ct.
a removable screw to attach the
utilizes
concepts'
these
together,
Taken
upper
heel of the soft
bootie to the base
—'that
equivalents
is both limited
the doctrine
skate,
concluding
we have no
trouble
subject
estoppel
to
this
equivalents
that the doctrine of
cannot al-
—reflects
(and
Court’s)
Supreme
ap-
court’s
patent’s “permanently
’466
affixed”
low the
appli-
proach maintaining
principled
expand
limitation to
to cover the accused
equivalents
cation
the doctrine of
while
removable screw.
device’s
hewing closely
original
the doctrine’s
to
First, because the Salomon skate’s re
prevent
patent.
fraud on a
purpose:
to
is, most,
movable heel screw at
an obvious
Tank,
at
See Graver
339 U.S.
S.Ct.
variation of the French reference’s screw
(“The
854, USPQ
at 330
essence of the
attachment and the Johnson reference’s
may
practice
doctrine is that one
fraud
(either
tak
upper
removable
shoe
alone or
patent.”).
these limitations
on
Where
combination),
equiva
the doctrine of
en
equiva-
inapplicable,
are
the doctrine
cannot,
law, expand
as a matter of
lents
operates
“prevent
infringer
to
an
lents
encompass
the Salomon
the ’466
stealing
the benefit of
invention.”
hold
would allow
skate. To
otherwise
(quoting Royal Typewriter
Id.
Co. v. Rem-
patent,
through
’466
the doctrine of
Rand,
USPQ
ington
subject
equivalents, to cover
matter
Cir.1948)
J.).).
(2d
(Hand,
To
patented in
legally
could not have been
effect, however,
have this
the doctrine
Goods,
above,
Sporting
first instance.
Wilson
must, as noted
remain
equivalents
Cf.
1948;
at
established
904 F.2d at
Con
within the boundaries
1576-77,
applied
roy, 14 F.3d at
to the amended claim limitations.
1378;
Technologies,
Southwall
Avionique,
Sextant
F.3d at
1580, USPQ2d
(“[Prosecution
at 1680.
USPQ2d at 1875
history
estoppel arising
operation
from the
Second,
prosecu-
patentee, during
presumption
Warner-Jenkinson
allows the
tion, made amendments and statements
doctrine of
no
oper-
room to
competitor
that would lead reasonable
ate.”).
disagree.
We
subject
that the
mat-
objectively conclude
ter of removable screw attachments was
Whether or not an amendment
See,
relinquished.
e.g.,
Avionique,
Sextant
*13
patentability
was made for reasons of
ais
826-27,
USPQ2d at
With to claim this “non-removable,” “permanent” terms hasty, unsupported judg- court reaches a therefore, context, in proper refer to a meaning “perma- ment on the of the term nently.” opines relationship court that it between the shoe and the This “need only recognize claim construction is base. portion.” opinion gives absolutely no fixed” to “said base This court
This court’s support “ordinary for its context or nevertheless finds the heel screw is af- meaning” accustomed “removable” without evidence it Instead, begins it with its conclu- fixed.” was ever removed or “meant to be” re- - ordinary and accustomed “[t]he sion— at all a particularly egregious moved ... phrase of this does not en- appeal summary stretch on judg- - compass affixation via removable screw” ment. any evidence from and does not consider (too much?) protests This court that it in skill the art. This those genuine will “not create a issue material extremely interpretation of court’s narrow parties agree fact where the that none phrase potentially deny pat- this could so, however, In doing betrays exists.” it because, any coverage, in the entee almost dangers appeal. on fact-finding theoretical, reading out-of-context of this K-2 Specifically, this court states that “ful- court, permanent. nothing almost After ly acknowledges ... that the heel screw is all, may recognize those of skill this art ” Certainly, ‘removable.’ did not con- (the that even lamination method of affixa- Indeed, away cede its entire case. patent) tion described is removable full examination of the context of K-2’s fact, In with a chemical solvent. an adhe- statement shows that court this has taken may, sive affixation to those of skill this dispute. sides in a factual K-2 in their art, in fact permanent (becoming be less explains: reply brief time) loose over than screws for connect- Though the screw the heel of the summary pro- ing shoes to skates. This [accused] skate can be removed with supply record does not the context ceeding *15 effort, it not substantially different necessary for an accurate decision. None- theless, question permanent this court dismisses the from a or non-removable supposed of a on the basis gluing connection. As with or laminat- meaning. accustomed ing, tightly the base and shoe are held Indeed, un- together and “become one.” Although the court construed the claim shoe, por- like the soft the heel Johnson context, biggest out of its stretch non-rigid tion of the skate [accused] fact-finding appeal on na- is its about the shoe cannot be removed from the base. ture of the accused skate. This court hast- Rather, pried up it can at most be ily finds that the accused skate affixes the slightly piece paper so that a can be shoe to the base with a “removable screw.” (nonetheless wedged underneath. purely On this factual issue summarily appeal), resolved and on added.) (Emphasis Again, at the other record contains no evidence the ac- place “fully that K-2 ac- cited to show ever or cused skate’s screw was removed removable, knowledges” that the screw is any purpose. would ever be removed for explains reply K-2 in fact in its brief: Hence, a conclusion about whether Though the screws can be with removed screw was or was not “meant to un- be (which effort, prevent the rivets the shoe Indeed, premature. screwed” is the rec- integrally-connected includes the toe and ord shows that the flexible shoe of the portions) being heel removed with- permanently accused skate was attached out it. destroying to the base at the toe area use of rivets Thus, imposed this court has its definition (unremovable?) Therefore, and an screw. of “removable” and its factual view of the if even a user disassembled the accused K-2, resolving on accused skate on thus gain allegedly shoe to access to the “re- - appeal testimony without and without a screw, movable” heel that user not could - full record the factual issues which are remove the shoe from the base because place. dispute the heart of this the first apparently four rivets and the unremova- point is that the record shows no ble screw the toe would ensure the portion” “permanently “shoe remained af- instance of removal of the heel screw and removing the heel for ever purpose no FOOTWEAR, LA INC. CROSSE the connection shoe
screw because Corporation, International Footwear any event. “permanent” skate remains Plaintiffs-Appellees, has never been removed Is a screw that removed “removable?” and will never be if it removable it make a difference Does STATES, Defendant- UNITED court) (in adopted by this the surreal sense Appellant. the shoe remains because No. 98-5158. pre- substantially “for affixed” to the skate therebetween?” This venting movement Appeals, United States Court ap- factual issues on court decides these Federal Circuit. peal summary judgment. and on Sept. 1999. hasty judgment about the This court’s skate includes rea- nature of the accused history. In this
soning prosecution about
case, however, prior art and the Johnson prosecution history indisputably dis- only which accommodated
cuss skates replacement
complete removal and prior emphasized art dis-
shoe. Thus the removal, permanent
assembly and in the toe and the
fixation. The rivets already
unremovable “removable screw” device from
removes this accused
similarity prior art from which with patentee distinguished itself. sum, only
In could have re- this court *16 (particu- infringement
solved this case
larly infringement by equivalents) by on
undertaking finding extensive fact
summary judgment appeal. and on Sad-
ly, finding appeal on the screw is summarily importing
“removable” “permanent” for removes this permanent
judgment connec- art.
tion with the in-line skate