IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

PROFOOT INC., )

)

Plaintiff, ) 11 C 9004

)

v. ) Judge John Z. Lee

)

MERCK & CO., INC. )

)

Defendant )

MEMORANDUM OPINION AND ORDER

Plaintiff Eric Ward (“Ward”) has sued Defendant Merck, Inc. (“Merck”) alleging 

infringement of U.S. Patent No. 6,845,568 (the “’568 Patent”). The allegedly infringing 

activities concern Dr. Scholl’s Custom Fit Orthotic Centers and Custom Fit Orthotic Inserts, 

which are manufactured, marketed, and sold by Merck. 3d Am. Compl. ¶¶ 50, 51, 54; Def.’s 

Resp. 3d Am. Compl. ¶ 12. Merck has placed Dr. Scholl’s Custom Fit Orthotic Centers 

throughout the United States in various retail stores, including Walgreens and Sears. Def.’s Resp. 

3d Am. Compl. ¶ 15. The original complaint named only Walgreen Company (“Walgreens”) 

and Sears Holdings Corporation (“Sears”) as defendants. Compl. ¶¶ 5-6. But Ward later 

amended the complaint to include Merck and then voluntarily dismissed the suits against 

Walgreens and Sears. 1st Am. Compl. ¶ 5; dkt. 28, 29. Subsequently, ProFoot, Inc. (“ProFoot”) 

purchased the patent-in-suit from Ward, including the right to sue for past, present, and future 

infringement. 3d Am. Compl. ¶ 2. The parties now ask the Court to construe six terms that 

appear in the ’568 Patent.
I. Background

The patent-in-suit relates to a method for measuring and correcting the pronation of a 

person’s foot. See ’568 Patent col.1 ll.17-18, Joint Appendix (“J.A.”) 93. The method utilizes a 

device called a “neutralizer” in the following manner. First, an individual places one foot on the

device while keeping another foot off of it. Id. at col.5 ll.11-13, col.6 ll.3-5, J.A. 95. Then, the 

“neutralizer” is used to determine “the angle necessary to place the [right or left] ankle in a 

neutral position.” Id. at col.5 ll.14-15, col.6 ll.6-7, J.A. 95. Finally, an individual is provided 

with “an insert having an angle which represents the neutral state for the [right or left] ankle.” Id.

at col.6 ll.1-2, 8-9, J.A. 95. This method enables the individual to correct any pronation by 

obtaining a foot insert that may be used in “ski boots, skates, bike shoes and the like.” Id. at

col.1 ll.9-12, J.A. 93.

On September 22, 2000, Ward filed U.S. App. No. 09/667,998, the parent application of 

the patent-in-suit. It disclosed a system and a method for measuring foot pronation and 

correcting it by using a foot insert. U.S. App. No. 09/667,998, J.A. 27. On May 20, 2003, the 

application issued as U.S. Pat. No. 6,564,465 (the “’465 Patent”) with a claim that covered only a 

system for creating a foot insert. ’465 Patent, J.A. 11. This patent is not asserted in the present

case.

On March 14, 2003, Eric Ward filed U.S. App. No. 10/389,435 as a continuation-in-part 

of U.S. App. No. 09/667,998. U.S. App. No. 10/389,435, J.A. 96. This second application

claimed only a method of fitting an individual with the foot inserts. Id. at 113-14. It issued as 

the ’568 Patent—the patent asserted in this case.

To furnish foot inserts to its customers, Merck developed special kiosks, called Dr. 

Scholl’s Custom Fit Orthotic Centers. Def.’s Resp. 3d Am. Compl. ¶ 13. These kiosks, located 

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in various retail stores in the United States including Walgreens and Sears, contain a pressuremeasuring device. Id. ¶¶ 15, 19. This device allows customers to analyze their feet, so that they 

can use these measurements to choose one of the off-the-shelf Dr. Scholl’s Custom Fit Orthotic 

Inserts. Id. ¶¶ 19, 22.

The following terms of the ’568 Patent are in dispute: (1) neutralizer; (2) neutral position;

(3) using the neutralizer to determine the angle necessary to place the <right or left> ankle in a 

neutral position; (4) providing an insert having an angle which represents the neutral state for the 

<right or left> ankle; (5) creating a <right or left> foot insert; and (6) predetermined inserts.

II. Legal Standard

Claim construction is a question of law to be decided by a judge. Markman v. Westview

Instruments, Inc., 517 U.S. 370, 391 (1996). Words “are generally given their ordinary and 

customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 

“[T]he 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.” Phillips v. AWH 

Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). A person of ordinary skill in the art is assumed to 

read the claim term in the context of the entire patent. Id.

The Court’s analysis begins with the intrinsic evidence, which consists of the patent itself 

(including claims, specification, and Abstract) and the prosecution history. Vitronics, 90 F.3d at 

1582 (“in interpreting an asserted claim, the court should look first to the intrinsic evidence of 

record, i.e., the patent itself, including the claims, the specification and, if in evidence, the 

prosecution history”); Hill–Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1 (Fed. Cir.

2000) (courts “have frequently looked to the abstract to determine the scope of the invention”). 

The specification is usually “dispositive; it is the single best guide to the meaning of a disputed 

3
term.” Vitronics, 90 F.3d at 1582. Claim terms are given “the meaning and scope with which 

they are used in the specification and the prosecution history.” Kinik Co. v. ITC, 362 F.3d 1359, 

1365 (Fed. Cir. 2004). But a particular embodiment described in the specification should not be 

read into the claim when claim language is broader than the embodiment. Superglide Corp. v. 

DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). That said, a claim may be limited to 

its preferred embodiment if permitting expansive claim language would undermine the public 

notice requirements of 35 U.S.C. § 112. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 

1336, 1346 (Fed. Cir. 2005).

Furthermore, the context in which a term appears in a claim is also instructive. Phillips, 

415 F.3d at 1314. Likewise, other claims are “valuable sources of enlightenment as to the 

meaning of a claim term.” Id. Under the doctrine of claim differentiation, “each claim in a 

patent is presumptively different in scope.” RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 

1255, 1263 (Fed. Cir. 2003). “That presumption is especially strong when the limitation in 

dispute is the only meaningful difference between an independent and dependent claim.” 

Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007). Claim differentiation, 

however, is a “rule of thumb” and not absolute — it does not trump “the clear import of the 

specification” or the disclaimer of the subject matter in the prosecution history. See Edwards 

Lifesciences LLC v. Cook, Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009); Fantasy Sports Props., Inc. 

v. Sportsline.com, Inc., 287 F.3d 1108, 1116 (Fed. Cir. 2002).

In addition, “the prosecution history can often inform the meaning of the claim language.” 

Phillips, 415 F.3d at 1317 (Fed. Cir. 2005). For example, it may be used “as support for the 

construction already discerned from the claim language and confirmed by the written 

description.” 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008). And 

4
Courts can consult not only the asserted patent’s prosecution history, but also the prosecution 

history of other patents from the same family. See Aventis Pharm. Inc. v. Amino Chems. Ltd., 

715 F.3d 1363, 1375 (Fed. Cir. 2013); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 

(Fed. Cir. 2007). Moreover, the prosecution history may serve to “exclude any interpretation 

that was disclaimed during prosecution.” Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. 

Cir. 2005). However, a claim should not be narrowed “simply by pointing to the preferred 

embodiment or other structures or steps disclosed in the specification or prosecution history.”

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).

Finally, extrinsic evidence, such as dictionaries and expert testimony, may be used if the 

intrinsic evidence alone is insufficient to determine the meaning of the claim terms. Vitronics, 

90 F.3d at 1583.

III. Analysis

A. “Neutralizer”

The parties first disagree on the meaning of the term “neutralizer” used in Claim 1 of 

the ’568 Patent. Merck suggests that “neutralizer” is “a device that includes an angularly 

adjustable plate and a protractor which are used to measure the angle of adjustment to achieve 

the neutral position of a specific individual’s ankle.” Def.’s Reply Br. Claim Construction 1-2 

(“Def.’s Reply”). ProFoot argues that this term should be given its plain and ordinary meaning 

or, if the Court determines that this term needs further construction, that the term be construed as 

a “balance measuring device.” Pl.’s Resp. Claim Construction 5 (“Pl.’s Br.”).

The ’568 Patent makes it clear that “neutralizer” does not measure all types of balances. 

The Summary of the Invention explains that there are several types of balances and that the 

invention deals only with the dynamic one: 

5
This is the difference between what the present invention achieves 

and what many others do in this field. All other alignment 

processes implement a two-footed stance to determine the position 

of neutrality. . . . If a person is standing on two feet, . . . the person 

may be maintaining balance equally in all six quadrants or in one 

of the six quadrants and using two others to maintain a steady or 

“static” balance.

If you reduce the base of support to only one foot, you have a 

three-sided base which needs to articulate to maintain balance or 

balance dynamically. The present invention achieves this state by 

first analyzing the ankle joint to determine correct foot alignment.

’568 Patent col.2 ll.3-19, J.A. 93. Furthermore, Claim 1 itself provides that “the individual 

place[s] the right foot on a neutralizer while elevating the left foot off of the neutralizer.” Id. at 

col.5 ll.11-13, J.A. 95. Therefore, a “neutralizer” only deals with one-footed “dynamic” balance.

Next, “neutralizer” is not just any “balance measuring device” as ProFoot contends. It 

has specific functions: to accommodate a single foot and to determine the angle necessary to 

place the ankle in a neutral position. This is apparent from Claim 1, which covers a method 

comprising the steps of “having the individual place the right foot on a neutralizer while 

elevating the left foot off of the neutralizer” and “using the neutralizer to determine the angle

necessary to place the right ankle in a neutral position.” Id. at col.5 ll.11-15, J.A. 95 (emphasis 

added). Likewise, the Abstract states that “[t]he neutralizer is adapted to accommodate a single 

foot of the individual to determine the neutral angle for each foot individually.” Id. at Abstract, 

J.A. 89 (emphasis added). The Description of the Preferred Embodiments also explains that in 

order “[t]o determine a neutral position, one foot at a time is measured” while “the person stands

on [the] foot neutralizer.” Id. at col.4 ll.5-9, J.A. 94 (emphasis added).

Finally, the “neutralizer” accomplishes its functions by specific structural elements—a 

housing, an angularly adjustable plate capable of supporting the foot, and a protractor. Thus, the 

Abstract of the ’568 Patent plainly states that “[t]he neutralizer has a housing, protractor, and an 

6
angularly adjustable plate capable of supporting the foot.” Id. at Abstract, J.A. 89. Nothing in 

the specification contradicts this definition. In fact, all embodiments of a “neutralizer” have 

these structural elements. Id. at col.3, ll.1-15, J.A. 94. 

Such a construction also is supported by the prosecution history of the ’568 Patent’s 

parent ’465 Patent. See Biovail Corp. v. Andrx Pharms., Inc., 239 F.3d 1297, 1301 (Fed. Cir. 

2001) (considering prosecution history of parent patent in claim construction). The amended 

Claim 1 of the parent application contained the term “neutralizer,” which was described as 

“having a housing, protractor, an angularly adjustable plate capable of supporting a foot” and 

“adapted to accommodate a single foot of the individual to determine the neutral angle for each 

foot of the individual separately.” J.A. 74. This term was used consistently throughout the 

prosecution history. The inventor had the opportunity to indicate that the term “neutralizer” as it 

appears in the ’568 Patent was somehow different from the term as it was used in the parent 

patent, but did not do so.

Of course, “the distinction between using the specification to interpret the meaning of a 

claim and importing limitations from the specification into the claim can be a difficult one to 

apply in practice.” Phillips, 415 F.3d at 1323. ProFoot argues that the ’568 Patent’s 

specification supports a broader construction of a “neutralizer” and that reading the term as 

having specific structural features improperly limits the claim language to the preferred 

embodiment. Pl.’s Br. 8, 11. ProFoot points to the Summary of the Invention, which describes 

“a device and method that measures and then corrects the pronation of the foot” and discusses 

the method of analyzing the ankle joint to achieve balance. Id. 8. It also argues that the 

Description of the Preferred Embodiments depicts only exemplary measuring devices as the 

7
introduction to the section specifies, pointing to the language in the patent that [f]uture and 

present alternatives and modifications are contemplated.” Id. 9.

But claim terms should be read in the context of the entire patent. Phillips, 415 F.3d at

1313. And here, the ’568 Patent as a whole makes it clear that a “neutralizer” is not simply a 

“balance measuring device.” The device deals only with dynamic balance; it can accommodate a 

single foot and determine the angle necessary to place an ankle in a neutral position. ’568 Patent

col.2 ll.3-19, J.A. 93; col.5 ll.11-15, J.A. 95; Abstract, J.A. 89. Moreover, it is described as 

having a housing, a protractor, and an angularly adjustable plate capable of supporting the foot

not only in the Description of the Preferred Embodiments, but also in the Abstract and in the 

parent patent application. Id. at Abstract, J.A. 89; J.A. 74. In the face of such intrinsic evidence, 

the boilerplate language cited by ProFoot carries little weight. See Wireless Agents LLC v. Sony 

Ericsson Mobil Communs. AB ̧ 189 F. App’x 965, 967 (Fed. Cir. 2006); IP Innovation, LLC v. 

Ecollege.com, 156 F. App’x 317, 321-22 (Fed. Cir. 2005). 

Compared to ProFoot’s proposed construction, Merck’s proposal comes closer to the 

description above, but does not mention “a housing” and adds the phrase “which are used to 

measure the angle of adjustment to achieve the neutral position of a specific individual’s ankle.” 

Def.’s Reply 1-2 (stating that “neutralizer” is “a device that includes an angularly adjustable 

plate and a protractor which are used to measure the angle of adjustment to achieve the neutral 

position of a specific individual’s ankle”). Merck admits that “the definition previously 

expressed by the inventor is narrower than the definition [] proposed by Merck.” Id. 13. 

However, it gives no explanation why the definition should not include “a housing,” a structural 

element listed in the description of a “neutralizer” in the intrinsic evidence. ’568 Patent Abstract, 

J.A. 89; J.A. 74. Next, incorporating the phrase “which are used to measure the angle of 

8
adjustment to achieve the neutral position of a specific individual’s ankle” in the definition 

would result in repetitive language in Claim 1: “using a device that includes an angularly 

adjustable plate and a protractor which are used to measure the angle of adjustment to achieve 

the neutral position of a specific individual’s ankle to determine the angle necessary to place the 

right ankle in a neutral position.” See ’568 Patent col.5 ll.14-15, J.A. 95. Hence, this phrase 

should not be included in the definition.

For these reasons, the Court will construe “neutralizer” to mean “a device that has a 

housing, a protractor, and an angularly adjustable plate capable of supporting the foot.”

B. “Neutral position”

The Court next construes the term “neutral position.” Merck proposes that “neutral 

position” used in Claim 1 means “a state or position in which the tendons by the individual’s 

ankle are in a relaxed state or are working equally.” Def.’s Reply 2. ProFoot counters that the 

term should be given its plain and ordinary meaning, which is “balanced position.” Pl.’s Br. 5.

ProFoot’s proposed construction suffers from several deficiencies. First, the ’568 

Patent’s Summary of the Invention reveals that there are several types of balances and balanced 

positions. ’568 Patent col.2 ll.3-19, J.A. 93. But the invention concerns only a “dynamic” 

balance that is achieved by standing on one foot. Id. In fact, Claim 1 itself states that “neutral 

position” is determined when individual places one foot on the neutralizer and elevates another 

foot off of the neutralizer. Id. at col.5 ll.11-13, col. 6 ll.3-5, J.A. 95.

Next, “neutral position” corresponds to a specific ankle position or, to be precise, to a 

particular subtalar joint1 position, i.e., the position between pronation and supination. Claim 1 

1 A subtalar joint is a joint that allows a foot to move from the orientation where the big toe is over 

the smaller toes (called pronation) to the orientation where the smaller toes are over the big toe (called 

supination). See ’568 Patent col.1 ll.12-15, J.A. 93 (“the present invention concerns a device and method 

that produces an insert or foot support that positions the ankle joint or sub taylor [sic: subtalar] joint in a 

9

 
itself states that there is a particular angle that is “necessary to place the right ankle in a neutral 

position.” Id. at col.5 ll.14-15, J.A. 95 (emphasis added). Furthermore, the Background of 

Invention explains that “the present invention concerns a device and method that produces an 

insert or foot support that positions the ankle joint or sub taylor [sic: subtalar] joint in a relaxed 

position by correcting the pronation of the foot.” Id. at col.1 ll.12-15, J.A. 93 (emphasis added). 

Likewise, the Summary of the Invention discloses that “[t]his invention provides a device and 

method that measures and then corrects pronation of the foot.” Id. at col.1 ll.17-18, J.A. 93

(emphasis added). It further elaborates that “[u]nderstanding the demands of skiing specifically 

was the thrust behind the invention. . . . If the sub taylor [sic] joint is predisposed with 

nonfunctional tension, the ability to move freely will be jeopardized.” Id. at col.1 ll.40-48, J.A. 

93 (emphasis added). And, it also points out that “[t]o achieve the proper pronation of the sub

taylor [sic] joint, how the foot is designed to support weight, and walk must be understood.” Id.

at col.1 ll.52-54, J.A. 93 (emphasis added). The discussion of the “dynamic” balance in the 

Summary of the Invention is also instructive: “[t]he present invention achieves this state by first 

analyzing the ankle joint to determine correct foot alignment.” Id. col.2 ll.17-19, J.A. 93

(emphasis added).

Moreover, the prosecution history reveals the importance of the position of the subtalar 

joint. The ’568 Patent specification is almost identical to the specification of its parent 

application, but it contains an important difference; in the ’568 Patent specification, the term 

“sub taylor [sic] joint” was added to or replaced the phrase “ankle joint,” indicating that the 

relaxed position by correcting the pronation of the foot”); col.4 ll.21-27, J.A. 94 (“To achieve a neutral 

position, the operator visually examines the tendons by the ankle until they are in a relaxed state or are 

working equally. This commonly occurs with no more than two degrees of adjustment of pronation—

with the big toe of the foot over the smaller toes . . . . However, supination, orientation with smaller toes 

over the big toe, may also occur.”).

10

 
inventor wished to describe the relevant joint with greater specificity. Compare id. at col.1 ll.14, 

46, 52, J.A. 93, with U.S. Patent No. 6,564,465 col.1 ll.11, 44, 50, J.A. 9.

Merck’s proposed definition (“a state or position in which the tendons by the individual’s 

ankle are in a relaxed state or are working equally”) comes from the Description of the Preferred 

Embodiments, which states that “neutral position” is achieved when “the tendons by the ankle . . . 

are in a relaxed state or are working equally.” ’568 Patent col.4 ll.21-23, J.A. 94. But the Patent

clarifies that “[t]his commonly occurs with no more than two degrees of adjustment of 

pronation. . . . However, supination . . . may also occur.” Id. at col.4 ll.23-27, J.A. 94 (emphasis 

added). The relaxed state thus comes from the lack of pronation or supination. Add to this the 

Summary of the Invention, which explains the cause of the tension (i.e., the unrelaxed state) in 

the system:

If the sub taylor [sic] joint is predisposed with nonfunctional 

tension, the ability to move freely will be jeopardized. The fine 

muscular movements of the foot and ankle dictate the degree of 

success in the rest of the biomechanical chain. This is, to a large 

extent, the cause of tension or an imbalanced interaction in the 

chain.

Id. at col.1 ll.46-51, J.A. 93 (emphasis added). Therefore, the language in the Description of the 

Preferred Embodiments that Merck uses for its construction provides further support for the 

notion that the “neutral position” corresponds to a subtalar joint position that is between 

pronation and supination. In contrast, Merck’s definition draws from the single description of 

the embodiment and not from the totality of the intrinsic evidence.

Accordingly, the Court will construe the term “neutral position” to mean “a position in 

which subtalar joint is in the relaxed position due to the lack of pronation or supination.”

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C. “Using the neutralizer to determine the angle necessary to place the <right or 

left> ankle in a neutral position”

The next phrase to be construed, “using the neutralizer to determine the angle necessary 

to place the <right or left> ankle in a neutral position,” appears in Claim 1 of the ’568 Patent. 

Merck asserts that the correct interpretation of the phrase is “using neutralizer by: (1) visually 

examining and adjusting the individual’s <right or left> ankle to neutral position, and (2) 

measuring the angular degree of pronation or supination when that ankle is in the neutral 

position.” Def.’s Reply 2. ProFoot counters that this phrase should be given its plain and 

ordinary meaning, that the only term at issue after accepting the construction of “neutralizer” and 

“neutral position” is “angle necessary,” and that the term “angle necessary” needs no 

independent construction. Pl.’s Br. 6.

Merck’s construction seeks to limit the claims to the preferred embodiment. Its definition 

is based on the Description of the Preferred Embodiments, the only place in the patent where the 

visual examination is mentioned. ’568 Patent col.4 ll.21-23, J.A. 94. There is no other 

indication in the patent that the use of a “neutralizer” must involve visual inspection. On the

contrary, the ’568 Patent cites U.S. Patent No. 5,979,067, which describes another method to 

determine neutral position of a subtalar joint—palpation of the talus head. U.S. Patent No. 

5,979,067 col.1 ll.21-28.2

 This intrinsic evidence indicates that a person of ordinary skill in the 

art would recognize that visual inspection alone is not the only means to determine the neutral 

position of the ankle joint. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231 (Fed. 

Cir. 2011) (stating that the prior art cited in a patent or the prosecution history constitutes 

intrinsic evidence).

2 Although the parties did not include this patent in the Joint Appendix, the Court may take judicial 

notice of published patents under Fed. R. Evid. 201(b) & (c). See Pepitone v. Am. Standard, Inc., No. 92-

1284, 1992 WL 336539, at *3, n.1 (Fed. Cir. Nov. 17, 1992).

12

 
Applying the Court’s definitions of “neutralizer” and “neutral position,” the phrase at 

issue becomes “using a device that has a housing, a protractor, and an angularly adjustable plate 

capable of supporting the foot to determine the angle necessary to place the <right or left> ankle 

in a position in which subtalar joint is in the relaxed position due to the lack of pronation or 

supination.” There is no need to define the words “angle necessary.” The two words as they 

appear in the Patent are easily understood and do not require interpretation. In context, they 

mean the angle measured by the protractor after the angularly adjustable plate is turned to place 

the subtalar joint in the relaxed position. See, e.g.,’568 Patent, col.4 ll.21-29, 39-40, J.A. 94 

(discussing adjusting the plate to achieve a “neutral position” and measuring the corresponding 

angle by the protractor).

D. “Providing an insert having an angle which represents the neutral state for 

the <right or left> ankle”

Merck next suggests that the phrase “providing an insert having an angle which 

represents the neutral state for the <right or left> ankle” used in Claim 1 should be interpreted as 

“providing an insert that reflects the measured angular degree of pronation or supination of the 

individual’s <right or left> foot that establishes the neutral position.” Def.’s Reply 2. ProFoot 

replies that the phrase does not require further construction beyond its plain and ordinary 

meaning. Pl.’s Br. 6.

This phrase uses the term “neutral state” instead of “neutral position.” The Description 

of the Preferred Embodiments connects the two terms. It explains that the neutralizer’s plate is 

angularly adjusted “to achieve a neutral position” and the corresponding angle is then transferred 

to the “bed,” which is then “placed inside a piece of sports equipment such as ski boot” to hold 

the foot “at the angle which is the neutral state for the ankle.” ’568 Patent col.4 ll.4-58, J.A. 94 

13
(emphasis added). Thus, the ankle is at the same angle on the neutralizer’s plate and on the “bed,” 

and, hence, “neutral state” and “neutral position” signify the same position of the ankle.

Therefore, the Court replaces the term “neutral state” with the definition of “neutral 

position,” and the phrase “providing an insert having an angle which represents the neutral state 

for the <right or left> ankle” becomes “providing an insert having an angle, which represents the 

position in which the subtalar joint is in the relaxed position due to the lack of pronation or 

supination, for the <right or left> ankle,” which is similar to the Merck’s construction. This

phrase is easily understood. Again, the Court agrees with ProFoot that the term needs no further 

construction.

E. “Predetermined inserts”

Before construing the last disputed term of the independent Claim 1 (“creating a <right or 

left> foot insert”), the Court must first examine the term “predetermined inserts” that appears in 

dependent Claim 3. Merck argues that the term means “inserts that are pre-made with the 

previously measured angle that establishes the neutral position for the individual’s <left or right> 

foot.” Def.’s Reply 3. ProFoot again counters that the term needs no further construction 

beyond its plain and ordinary meaning. Pl.’s Br. 6.

The key concept in the Merck’s construction is that the fabrication of inserts “is based on 

individualized measurement of the individual’s foot and ankle.” Def.’s Reply 10. But “[t]hose 

measurements can be stored and used to create an individualized insert at any time,” so 

“fabrication of inserts can occur at any time.” Id. Although it is certainly imaginable that one 

can save an individual’s measurements to use it later to manufacture an insert, there is nothing in 

the intrinsic evidence to suggest this route. Instead, the ’568 Patent’s specification describes 

inserts that are pre-made without using a particular individual’s measurements: “the inserts [] 

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may be pre-made with a range of predetermined angles. For example, insert [] may have an 

angle that ranges from 1⁄2 a degree to 3 degrees . . . in 1⁄2 degree increments. This reduces the 

turn-around time to complete the process.” ’568 Patent col.4 ll.61-65, J.A. 94. Merck’s proposed

definition thus ignores important intrinsic evidence. Furthermore, Claim 3 itself states that the 

“insert is provided to a user by selecting said insert from a plurality of predetermined inserts.” Id. 

at col.6 ll.12-14, J.A. 95 (emphasis added). Under Merck’s definition, the insert would have to 

be chosen from the plurality of the same inserts made using individual’s measurement. This 

would be a nonsensical result.

Overall, the Court agrees with ProFoot that “predetermined inserts” is an easily 

understandable term and does not require further construction beyond its plain and ordinary 

meaning.

F. “Creating a <right or left> foot insert”

Finally, the term “creating a <right or left> foot insert” appears in Claim 1 of the ’568 

Patent. Merck reads this term to mean “fabricating a foot insert based on an operator’s 

measurements of the individual’s <right or left> foot.” Def.’s Reply 2. ProFoot replies that the 

term needs no further construction beyond its plain and ordinary meaning or, in alternative, that 

“creating” should be construed as “determining a right or left insert.” Pl.’s Br. 6.

Merck’s construction hinges on the idea that the insert is made using individualized 

measurements. Def.’s Reply 10. Specifically, Merck points out that in Claim 1 “the three substeps that follow the term[] . . . indicate that inserts are to be fabricated to have an angle that 

represents the neutral position.” Def.’s Opening Claim Construction Br. 19. Merck further 

refers to the specification, which discusses the importance of measuring each foot independently, 

15
evaluating pronation, and positioning the ankle in a relaxed position by correcting the pronation 

of the foot. Id. 20.

As an initial matter, the Court agrees that the phrase “creating a <right or left> foot insert” 

encompasses fabricating an insert based on the individual’s measurements. But that is not all 

that the term encompasses. Dependent Claim 3 states that the insert can be “provided to a user 

by selecting said insert from a plurality of predetermined inserts.” ’568 Patent col.6 ll.12-14, J.A. 

95. This means that “creating” must also include a scenario where a “predetermined insert” is 

provided to a user. This interpretation is further supported by the patent’s specification, which 

describes both, making an insert using individual’s measurements and pre-making inserts “with a 

range of predetermined angles.” Id. at col.4 ll.28-55, 61-64, J.A. 94.

The plain and ordinary meaning of “create” (e.g., “to cause to come into being”) 

encompasses both scenarios and is consistent with the entirety of the ’568 Patent, not just the 

excerpts selected by Merck. See Pl.’s Br. 18. (suggesting that “create” broadly means “to cause 

to come into being”). Therefore, the Court agrees with ProFoot that the term does not require 

construction.

IV. Terms as Construed

# Term Definition

I “Neutralizer” “A device that has a housing, a protractor, 

and an angularly adjustable plate capable 

of supporting the foot”

II “Neutral position” “A position in which subtalar joint is in 

the relaxed position due to the lack of 

pronation or supination”

III “Using the neutralizer to determine the 

angle necessary to place the <right or left> 

ankle in a neutral position”

No construction required once the 

definitions of the terms “neutralizer” and 

“neutral position” are applied.

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IV “Providing an insert having an angle which 

represents the neutral state for the <right or 

left> ankle”

No construction required once “neutral 

state” is replaced with the definition of the 

“neutral position.”

V “Predetermined inserts” No construction required.

VI “Creating a <right or left> foot insert” No construction required.

For the foregoing reasons, the six disputed claim terms are construed as set forth in this 

Memorandum Opinion and Order.

IT IS SO ORDERED. ENTERED 6/17/15

_________________________

John Z. Lee

United States District Judge

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