Claims requiring an “insert” do not cover products with similar structure not “inserted”February 8, 2008

In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement. At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases.As the district court applied the Federal Circuit's earlier construction, the court had little trouble affirming on the claim construction issues. As to infringement, the Federal Circuit likewise affirmed the district court's summary judgment of no infringement, as one group of accused products lacked at least one claim element (and there was insufficient information to generate a fact question under the doctrine of equivalents), and the other group of accused products lacked another claim element.More detail of Miken Composites, L.L.C. v. Wilson Sporting Goods Co. after the jump.Wilson owns a patent relating to baseball bats, specifically directed toward the use of structural members to improve the bat's impact response. The bats enable a large amount of deflection which results in better power transfer and slugging capacity. The patent attempts to deal with a "Goldilocks" dilemma in the baseball bat industry: Bats with thin walls are often lighter but risk permanent plastid deformation, but bats with thicker walls are often heavier, stiffer, and respond with relatively little spring, resulting in low power transfer.The patent discloses "a tubular insert 18 . . . suspended within the impact portion 12 of the tubular frame." The preferred embodiment of the '398 patent is illustrated in Figure 2:The relevant claims on appeal (with the disputed elements emphasized) are:

1. A bat, comprising: a hollow tubular bat frame having a circular cross-section; and an insert positioned within the frame, the insert having a circular cross-section, the insert having first and second ends adjoining the tubular frame, the insert being separated from the tubular frame by a gap forming at least part of an annular shape along a central portion between said first and second ends, the frame elastically deflectable across the gap to operably engage the insert along a portion of the insert between the insert first and second ends. 18. A bat, comprising: a hollow tubular bat frame having a small-diameter handle portion and a large-diameter impact portion having a circular cross-section with an inner and outer diameter; at least one insert having a substantially circular cross-section with an outer diameter less than the inner diameter of the frame impact portion, the insert being held within the impact portion; and the impact portion being inwardly elastically deflectable such to establish a tight interference fit between the insert and the impact portion.

Miken, a competitor of Wilson, brought a declaratory judgment action against Wilson seeking a declaration that several of its models did not infringe the patent. Miken admitted several of its bats, the "non-carbon bats," contained inserts within the meaning of the disputed claim language. However, it argued several other models, the "carbon bats," did not contain an insert. Thus, the dispute centered on whether the carbon bats satisfied the insert and gap limitations and whether the non-carbon bats satisfied the gap limitations.The court first dealt with Wilson's argument that the district court erred in claim construction of the terms "insert" and "gap." The court noted the district court relied on the claim construction of the term insert and gap provided in the Hillerich case dealing with the same terms in the same patent. Wilson argued an insert was purely structural, and did not require anything to actually be "inserted." Miken countered that construing the term insert in such a manner would impermissibly broaden the scope of the claims to read out the limitation entirely. The court was not persuaded by Wilson's argument, and noted nothing in the specification indicated any intention to impart a novel meaning to the word insert. The court went on to suggest that just because the ordinary meaning of the word has functional attributes does not mean these attributes cease to exist. As a result, the court affirmed the district court's (and, by extension, its own) claim construction. The court also noted in a footnote that interpreting the claims in the same way as prior cases furthers the Supreme Court's goals articulated in Markman, where the court stated that "treating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis."In analyzing infringement, the court first started with the Miken carbon bats. These bats are constructed using multi-layered frames around an internal component; there is nothing "inserted" during the process. The court found the lack of an insert in the carbon bats to be dispositive and concluded no literal infringement occurred. Regarding the doctrine of equivalents, the court noted Wilson had not provided any evidence as to what structural component of Miken's bats were equivalent to the insert of claims 1 and 18. What little evidence Wilson did provide only established equivalency of the accused bats as whole rather than equivalency on an element-by-element basis, which was insufficient to raise a genuine issue of material fact. As a result, the summary judgment of noninfringement of the carbon bats was affirmed.The court next moved on to the non-carbon bats, specifically whether they contained a "gap" between the insert and bat frame. Many of the non-carbon bats had inserts larger in diameter than the bat frame that were forced into the bat using hydraulic force. The remaining non-carbon bats had inserts of equal diameter as the bat frame. In determining the non-carbon bats did not infringe claim 1, the court highlighted that even though the "gap" term of the Wilson claim permitted some contact, it did not encompass the substantial contact between the bat frame and insert found in the Miken bats. As a result, the court concluded that Wilson had not presented a general issue of material of fact regarding the "gap" limitation. As to claim 18, because the inserts were no less than equal diameter than the bat frame, the accused bats likewise did not infringe claim 18. Therefore, the district court properly granted summary judgment of non-infringement.To read the full decision in Miken Composites, L.L.C. v. Wilson Sporting Goods Co., click here.