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The Fit is Too Narrow: Federal Circuit Dismisses Infringement Charge in ProFoot v. Merck & Co

Source: Grill IP patents news

ProFoot-Merck-InfringementThe Federal Circuit recently affirmed a district court’s dismissal of a claim of infringement against Merck & Co. in ProFoot v. Merck & Co. This case provides a narrowing claim construction analysis that incorporates the plaintiff’s patented method of shoe insert fittings (U.S. Patent No. 6,845,568). Following a narrowing claim construction on the part of the district court, ProFoot held that Merck’s Dr. Scholl’s process was not infringing upon their process. This ruling centers on the claim construction process and the factors involved in determining the range of applicability given to patent applications.

      Additional context and meaning are given through claim construction analysis, which looks at how a layperson might have interpreted the ‘568 patent claim’s language. The principal means for interpretation are intrinsic documents: the patent document and prosecution history. In this case, the fitting method in question involves a “neutralizer,” which places the wearer’s ankle in a “neutral position.” The district court interpreted this “neutralizer” in line with its description in the patent specification – as using an angular-adjustable footplate. On appeal, the plaintiff held that the court included elements of the specification that improperly limited the claims, as the “neutralizer” does not require such components. ProFoot argued that the neutralizer should be defined according to its functional ability instead of its physical elements.

    The Circuit rejected ProFoot’s broad-construction position, believing that “when read in the context of the [asserted] patent, this term requires a device that includes these components.” In arriving at this conclusion, the Circuit explained that the patentee had described “only two embodiments of the neutralizer,” and both necessitated every one the components included in the claim construction in a manner that is consistent with the claim’s requirements.

    Finding that the specification’s evidence supported the district court’s ruling, the appellate panel noted that the prosecution history of the parent patent application reinforced this view. According to this history, the claimed “neutralizer” was absent from the originally filed claim, but was added in the prosecution with a claim requirement that the neutralizer feature the physical elements (ex. the angular-adjustable footplate). While the child application does not include these physical components, the court observed that the patentee never indicated that it sought the child patent’s “neutralizer” to differ from that of the parent patent’s.

    ProFoot responded with an argument of claim-differentiation, holding that the child application does not involve the express limitations of the parent application, and thus should be viewed more broadly. The Circuit dismissed this argument, as it failed to provide any information on what the inventor understood “neutralizer” to mean.

    The Circuit’s use of the prosecution history to seek “the inventor’s understand of the neutralizer” seems to contradict the court’s previous stance that the inventor’s notion of the claim does not have a bearing on the claim construction. What should be at issue is the objective meaning of the claim as understood by the average individual. In sum, the Federal Circuit’s decision, that the district court had not misconstrued the term “neutralizer,” disadvantages prosecutors seeking implicitly broad patent claims.

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