Profoot, Inc. v. Merck & Co., Inc.

Docket No. 2016-1216

October 26, 2016


Brief Summary: DC construction and judgment based on claim construction affirmed basred in part on prosecution history of parental patent.

Summary: ProFoot appealed DC stipulated judgment of noninfringement following claim construction of US 6,845,568 encompassing “a method for providing custom footwear inserts for sports that involved symmetrical, side-to-side movement, such as skiing, skating and cycling.” “To determine the insert that is best for a particular athlete, the patent teaches the use of a special device called a ‘neutralizer’” which “[t]he athlete steps on…one foot at a time…to determine what angle the foot should be in to place the ankle in a ‘neutral position.’” Asserted claims 1 and 3 (by dependency on claim 1) include the terms “neutralizer” (construed to mean “a device that has a housing, a protractor, an angularly adjustable plate capable of supporting the foot”), “neutral position” (construed as “a position in which subtalar joint is in the relaxed position due to the lack of pronation or supination”) and “neutral state” (not construed). Based on these constructions, the parties stipulated to a judgment of noninfringement and ProFoot agreed that Merck does not infringe “under the [DC’s] construction of ‘neutralizer’ alone”. ProFoot argued that a person of ordinary skill in the art would understand the neutralizer to be “simply just some kind of measuring device” since the claims do not recite specific components and finds support in the prior art (rejected since the prior art “does not contain the word ‘neutralizer’”). The FC disagreed, however, because the claim language makes it “hard to imagine how [neutralization] could be accomplished without something for the athlete to step on-such as an angularly adjustable plate capable of supporting the foot-and something to measure an angle-such as a protractor” and the “gap” (i.e., “this language, by itself, is not strong enough to require these components”) is closed by the specification (“[W]hen a patent ‘repeatedly and consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” GPNA, FC 2016). And here the only two embodiments described by the specification (and the abstract) “name all the components listed in the [DC’s] construction”. The FC panel also found the prosecution history of a parent patent (the ‘465 patent claims reciting the neutralizer as including the housing, protractor and adjustable plate) supported this construction since “nowhere in the ‘568 patent does the inventor indicate that he intended the ‘neutralizer’ of the ‘568 patent to be different from the ‘neutralizer’ in the parent ‘465 patent” (“When the application of prosecution history disclaimer involves statements from prosecution of a familial patent relating to the subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue.” Ormco, FC 2007). And the FC panel also noted that ProFoot’s prior art arguments were “less significant” extrinsic evidence “than the intrinsic record” (Phillips, FC 2005). Thus, the DC construction and judgment were affirmed.

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