United States District Court, D. Massachusetts
NIKE, INC. Plaintiff,
PUMA NORTH AMERICA, INC., Defendant.
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
SOROKIN, UNITED STATES DISTRICT JUDGE
Inc. brought this action against PUMA North America, Inc.
alleging infringement of 10 patents directed to various
aspects of footwear technologies. Doc. No.
58. Puma denies that it infringes and asserts
the claims of the patents in suit are invalid. Doc. No.
60. Now pending before the Court are the parties'
briefs on claim construction. The Court has reviewed the
parties' submissions and held a hearing on October 17,
2019, pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996), at which it heard argument
and technology tutorials.
parties dispute the proper construction of 10
terms. Each of the disputed terms appears in the
claims of one or more of the following six of the ten patents
at issue in the case: U.S. Patent Nos. 7, 401, 420
(“the '420 patent”), 7, 637, 032 (“the
'032 patent”), 9, 375, 046 (“the '046
patent”), 9, 314, 065 (“the '065
patent”), 10, 051, 917 (“the '917
patent”), 10, 098, 411 (“the '411
patent”). Puma asks the Court to construe the
disputed terms in accordance with its proposed constructions.
Doc. No. 99; Doc. No. 108. Nike argues that
the terms are all to be understood in accordance with their
“ordinary and customary” meaning and that no
further construction is required. Doc. No. 100;
Doc. No. 107. Because the patents are directed to a
variety of non-overlapping technologies, the Court discusses
the relevant disclosure of each patent in the course of
construing the disputed claim terms below.
“construction of a patent, including terms of art
within its claim, is exclusively within the province of the
court.” Markman, 517 U.S. at 372; Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).
“It is a bedrock principle of patent law that the
claims of a patent define the invention to which the patentee
is entitled the right to exclude.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(internal quotation marks omitted). The claim itself is
“of primary importance, in the effort to ascertain
precisely what it is that is patented.”
Id.(citing Merrill v. Yeomans, 94 U.S. 568,
570 (1876)); see also Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 339 (1961) (“the
claims made in the patent are the sole measure of the
grant”). Because as a general matter, “claims,
not specification embodiments, define the scope of patent
protection, ” a patentee is not limited “to his
preferred embodiment, ” and “a limitation from
the specification” cannot be imported “into the
claims.” Kara Tech. Inc. v. Stamps.com Inc.,
582 F.3d 1341, 1348 (Fed. Cir. 2009).
words of the claim are generally given their ordinary and
customary meaning.” Phillips, 415 F.3d at 1312
(internal quotation marks and citations omitted). The
“ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent
application.” Id. at 1313. The “person
of ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire
patent, including the specification.” Id.
construction that stays true to the claim language and most
naturally aligns with the patent's description of the
invention will be, in the end, the correct
construction.” Renishaw PLC v. Marposs Societa'
Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
“A claim construction is persuasive, not because it
follows a certain rule, but because it defines terms in the
context of the whole patent.” Id. “In
some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words.”
Phillips, 415 F.3d at 1313. Other times, though,
when “the meaning of a claim term as understood by
persons of skill in the art is . . . not immediately
apparent, ” or when “patentees . . . use terms
idiosyncratically, ” a court must consider “those
sources available to the public” which shed light on
how “a person of skill in the art would have understood
[the] disputed claim language.” Id. (quotation
evidence-the patent claims, specification, and prosecution
history-is the most reliable and useful evidence in
determining the meaning of a patent's claims.
Id. at 1317-19. Extrinsic evidence, including expert
and inventor testimony, dictionaries, and learned treatises,
may also assist the court in understanding the underlying
technology, the meaning of terms to one skilled in the art,
and how the invention works. Id.; accord
Markman, 52 F.3d at 980. Although a court may consider
extrinsic evidence to the extent it is useful, it may not
rely on such evidence to “change the meaning of claims
in derogation” of the intrinsic evidence of record.
Phillips, 415 F.3d at 1319.
by these principles-and having carefully reviewed the
language of each patent at issue in its entirety, all cited
prosecution history, and the extrinsic evidence proffered by
the parties-the Court addresses each of the disputed claim
terms in turn.
The Court's Obligation to Resolve Claim Construction
is no doubt that the Court must resolve the parties'
dispute over how the claim terms at issue should be
construed. O2 Micro Int'l Ltd. v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
(“When the parties present a fundamental dispute
regarding the scope of a claim term, it is the court's
duty to resolve it.”); MedIdea, L.L.C. v. DePuy
Orthopaedics, Inc., No. 1:17-cv-11172, 2018 WL 5830849,
*5 (D. Mass. Nov. 7, 2018) (when the parties disagree about
the meaning of claim terms, “the Court is not only
empowered, but required, to construe” them). That said,
to the extent that Puma contends that the Court cannot
resolve that dispute by determining that any of the claim
terms have their ordinary and customer meanings, it is
mistaken. See, e.g., Finjan, Inc. v. Secure
Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010)
(courts may resolve claim construction disputes by ascribing
disputed terms their ordinary meaning); Summit 6, LLC v.
Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir.
2015) (“because the plain and ordinary meaning of the
disputed claim language is clear, the court did not err by
declining to construe the claim term”); ActiveVideo
Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d
1312, 1326 (Fed. Cir. 2012) (“the district court did
not err in concluding that these terms have plain meanings
that do not require additional construction”);
Phillips, 415 F.3d at 1313 (“In some cases,
the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves
little more than the application of the widely accepted
meaning of commonly understood words.”).
course, sometimes a term requires a particular construction,
as was the case in this Court's opinion in
MedIdea, 2018 WL 5830849 at *12 (construing the
technical and unfamiliar claim term “cam” because
it was not one with which the jury was likely to be familiar)
and in O2 Micro, 521 F.3d at 1361 (“In
this case, the ‘ordinary' meaning of a
term does not resolve the parties' dispute, and claim
construction requires the court to determine what claim scope
is appropriate in the context of the patents-in-suit.”)
Puma's Proffered Expert Declarations
submits two expert declarations in support of its claim
construction arguments but Puma's declarants do not
explain the state of the art at the time of the claimed
inventions or how their experience or expertise leads them to
construe the disputed claim terms in a way that is different
from the way in which the terms might be construed by a
layperson who reads them in the context of the patent claims,
the specification, and the prosecution history. See
generally Doc. No. 99-26 (Decl. of Dr. Stefanyshyn);
Doc. No. 99-28 (Decl. of Dr. Steszyn). Indeed, Dr.
Stefanyshyn cites no authority for his opinions other than
the intrinsic record of the patents about which he opines and
makes no reference to any subject matter outside the
intrinsic record. See Doc. No. 99-26. Dr. Steszyn
also cites no authority for his opinions other than the
intrinsic record of the patents about which he opines, and
with two small and unsupported exceptions discussed
infra, also makes no reference to any subject matter
outside the intrinsic record. See Doc. No. 99-28.
Neither illuminates how the disputed terms might have been
understood by a person of ordinary skill in the art at the
time of the inventions.
this reason, and because the intrinsic record before the
Court suffices to permit the Court to determine the meaning
of the disputed claim terms, the Court does not rely on the
declarations of Puma's proffered experts to construe the
disputed claim terms.
The disputed claim terms
“fluid-filled bladder” ('420 patent,
term “fluid-filled bladder” appears in claim 14
of the '420 patent, entitled “Article of Footwear
Having a Fluid-Filled Bladder with a Reinforcing
Structure.” Doc. No. 58-5 ('420 patent).
As its title suggests, the '420 patent is directed to a
sole structure of a footwear article that incorporates a
fluid-filled bladder. '420 patent at 1:24-30. Claim 14
14. An article of footwear comprising:
a sole structure incorporating a fluid-filled
bladder and a reinforcing structure secured to the
bladder, the sole structure having an upper surface and an
opposite lower surface, the upper surface forming a ridge
that defines a first portion of a lasting surface, at least a
portion of the ridge being an inclined surface formed by the
reinforcing structure and located over the bladder, the
bladder defining a second portion of the lasting surface; and
an upper secured directly to the first portion of the lasting
surface and the second portion of the lasting surface.
'420 patent, claim 14 (disputed claim term bolded).
parties do not disagree about what constitutes a
“bladder” and they agree that the
“fluid” in “fluid-filled bladder” may
consist of any liquid, including ambient air. Doc. No.
99 at 26 n.13 (“[c]onsistent with the
specification of the '420 patent, the term
‘fluid' encompasses gasses, gels, and
liquids.”) (citing '420 patent at 8:3-16); Doc.
No. 100 at 17 (same). Indeed, the specification broadly
describes fluid-filled bladders as bladders filled with any
fluid, including pressured fluids or non-pressurized fluids
such as ambient air:
The fluid within bladder 30 may be any of the gasses
disclosed in U.S. Pat. No. 4, 340, 626 to Rudy . . . The
fluid may also include gasses such as pressurized
octafluorapropane, nitrogen, or air. In addition to gasses,
various gels or liquids may be sealed within bladder 30.
Accordingly, a variety of fluids are suitable for bladder 30.
With regard to pressure, a suitable fluid pressure is fifteen
pounds per square inch, but may range from zero to thirty
pounds per square inch. Accordingly, the fluid pressure
within bladder 30 may be relatively high, or the fluid
pressure may be at ambient pressure or at a pressure that is
slightly elevated from ambient in some embodiments of the
'420 patent at 8:3-16.
respect to this claim term, the parties disagree only over
the word “filled.” Nike argues no further
construction is required “because ‘filled' is
a non-technical, commonly understood word.” Doc.
No. 100 at 16. Alternatively, Nike suggests that to the
extent the claim term needs construction, it may be construed
to mean “bladder filled with fluid.” Doc. No.
107 at 18-19.
argues that the word “filled” in
“fluid-filled bladder” means “added to,
” and proposes that the claim term be construed to mean
“a bladder to which fluid has been added.”
Doc. No. 99 at 25-27. As support for its proposed
construction, Puma contends that “[t]he '420 patent
does not describe any embodiments with bladders to which
fluid has not been added.” Id. at 26. Puma
also notes that in discussing “[t]he present invention,
” the '420 patent specification discloses that
“the bladder encloses a pressurized fluid that exerts
an outward force upon the barrier material, ” and that
“[t]he pressurized fluid contained by [the] bladder 
induces an outward force.” Id. (quoting
'420 patent at 2:45-47; id. at 6:7-9). And Puma
cites to passages describing processes by which fluid is
added to the bladder. Id. (“The chambers [of
the bladder] are pressurized above ambient pressure by
inserting a nozzle or needle connected to a fluid pressure
source into a fill inlet formed in the bladder.”)
(quoting '420 patent at 2:16-18); id. at 26-27
(“pressurized fluid may be injected [into the bladder]
through [a] conduit” and “[t]he conduit is then
sealed to enclose the fluid within [the] bladder.”)
(quoting '420 patent at 16:22-24).
counters that Puma mischaracterizes the specification's
statements of “the present invention” and that,
in any event, it is well settled that statements of
“the present invention” are not limiting.
Doc. No. 100 at 20-21. Nike also argues that none of
the passages cited by Puma in support of its proposed
construction discloses that the bladder becomes filled with
fluid only by means of having fluid added to it
after the bladder has been formed. Id. at 21.
further argues that the doctrine of claim differentiation
militates against Puma's proposed construction. The claim
differentiation doctrine provides that an independent claim
should not be construed as requiring a limitation added by a
dependent claim. Curtiss-Wright Flow Control Corp. v.
Velan, Inc., 438 F.3d 1374, 1380-81 (Fed. Cir. 2006).
Nike notes that while other claims of the '420 patent
recites “a limitation that requires ‘the bladder
enclosing a fluid that exerts an outward force, '”
the asserted claims of the '420 patent, including claim
14, do not include such a limitation. Doc. No. 107 at
21 ('420 patent at 23:13-28).
strongest argument against Puma's proposed construction
is that that construction improperly excludes an embodiment
disclosed in the specification-namely, bladders filled with
ambient air. Doc. No. 100 at 11 (describing
fluid-filled bladder containing “non-pressurized fluids
such as ambient air) (citing '420 patent at 8:3-16). Nike
explains that by virtue of being filled with ambient air,
such bladders become “filled with fluid” as they
are formed, not after they are formed. Id.
Therefore, such bladders are “filled” with fluid
even though they are not bladders to which fluid has been
Court agrees that Puma's proposed construction of a
“fluid-filled bladder” to mean “a bladder
to which fluid has been added” is not supported by the
claims and specification and improperly excludes the
disclosed embodiment of a bladder that is filled with ambient
air. Puma's proposed construction also improperly imports
a method of manufacture-adding fluid to bladders after they
are formed-into the claim limitation. No. such limitation is
disclosed in the specification.
reviewed the parties' submissions and the intrinsic
record, the Court construes “fluid-filled
bladder” in accordance with its ordinary and customary
meaning to mean “bladder filled with fluid.”
“stability ribs” and “enhanced
stability structures” ('032 patent, claims 1, 14,
terms “stability ribs” and “enhanced
stability structures” appear in claims 1 and 16,
respectively, of the '032 patent, entitled
“Footwear Structure with Textile Upper Member.”
Doc. No. 58-1 ('032 patent). The '032 patent
is directed to articles of footwear incorporating “a
textile upper member with an exterior constructed from
knitted textile material.” '032 patent at Abstract.
Claim 1 of the '032 patent recites:
article of footwear, comprising:
an upper member substantially constructed from textile
material, wherein the upper member includes an exterior
portion substantially constructed from knitted textile
material, the exterior portion including a first region
having stability ribs integrally formed in
the knitted textile material and a second region continuous
with the first region, the second region not including
stability ribs . . . ”
'032 patent, claim 1 (disputed claim terms bolded). Claim
16 is similar, except it recites “enhanced
stability structures” instead of
“stability ribs.” Id., claim 16.
parties agree that, whatever they mean, the claim terms
“stability ribs” and “enhanced stability
structures” mean substantially the same thing. They
also do not dispute the meaning of “ribs” or
“structures” or “enhanced.” They
dispute only the meaning of the word “stability.”
says “stability” needs no further construction
because it is a “non-technical, commonly understood
word.” Doc. No. 100 at 19. Nike further
observes that “stability” “means ‘the
state of being stable,' and ‘stable means
‘not likely to give way or overturn; firmly
fixed.'” Id. (citing Doc. No.
100-13, Oxford Dictionary of English, 2d ed.). Puma
argues that “stability ribs” and “enhanced
stability structures” should be construed to mean
“ribs / structures that increase the resistance to
bending or stretching of the upper member in the region of
the upper where the ribs are located in order to provide
support to a wearer's foot in that region.”
Doc. No. 99 at 28.
contends that “[t]he stability ribs / enhanced
stability structures provide stability by being
‘place[d] . . . at one or more regions or locations
around the foot so as to anatomically place the stability
regions at areas around the foot that need to be stabilized
during the desired activities.'” Id. at 29
(quoting '032 patent at 1:60-2:3). And, citing the
declaration of Dr. Stezyn, Puma argues that “a person
of ordinary skill in the art would understand that stability
ribs could be used to increase the ‘Young's
modulus' of the area of the upper in which they are
located, ” which Puma explains is “is a measure
of [a] material's elasticity.” Id. (citing
Doc. No. 99-28 ¶ 34). The problem for Puma is
that Dr. Stezyn cites no authority for his discussion of the
Young's modulus. Doc. No. 99-28 ¶ 34. Nor
does he tie his discussion of the Young's modulus to any
particular disclosure of the '032 patent. Id.
This is perhaps not surprising as the patent makes no
reference to the Young's modulus. See generally
'032 patent. Nor does it disclose that the feature
providing the structures in question their
“stability” is their relative inelasticity, as
Puma contends. Doc. No. 99 at 29. The Court
therefore disregards Dr. Stezyn's statements regarding
the '032 patent.
urges the Court to reject Puma's proposed construction on
the grounds that “the specification broadly describes
the ‘stability' ribs or structures as inherently
providing stability because they are ribs or other
structures, ” and that Puma's claim construction is
not supported by the intrinsic record and is unduly limiting.
Doc. No. 100 at 19, 20. The Court agrees. The
specification discloses that:
[T]he exterior layer 102 a of the upper member 102 may be
formed from plural material constructions or formations that
each impart different properties or characteristics . . .
(e.g., ribbed or other support or stability structures in
some areas to provide higher stability as compared to other
(e.g., non-ribbed) areas, etc.).
'032 patent at 10:24-30. At the claim construction
hearing, Nike proposed that, in keeping with the above-quoted
disclosure, the Court construe the disputed claim terms to
mean “ribs / structures that provide support.”
reviewed the parties' submissions and the intrinsic
record, the Court construes “stability ribs” and
“enhanced stability structures” to mean
“ribs / structures that provide stability or
“webbed areas” and “tubular
structures” ('046 patent, claims 1, 2, 17)
claim terms “webbed areas” and “tubular
structures” appear in asserted claims of the '046
patent, entitled “Article of Footwear Incorporating a
Knitted Component with Inlaid Tensile Elements and Method of
Assembly.” See Doc. No. 58-4 ('046
patent). The '046 patent is generally directed to
articles incorporating knitted components that are
“formed of multiple knitted component portions.”
'046 patent at 1:20-22; id. at Abstract. Claim 1
1. An article comprising:
a plurality of webbed areas that include a
plurality of courses formed from a first yarn, the
webbed areas having a front surface, the
webbed areas configured to move between a
neutral position and an extended position, the webbed