## United States Court of Appeals for the Federal Circuit

05-1278

HAROLD SCHOENHAUS and RICHARD M. JAY, Plaintiffs-Appellants,

v.
GENESCO, INC. and JOHNSTON & MURPHY, INC., Defendants-Appellees.

Charles R. Wolfe, Jr. , Blank Rome LLP, of Washingt on, DC, argued for plaintiffsappellants. With him on the brief were Brian William Higgins , of Washington, DC; Grant S. Palmer and Todd A. Schoenhaus , of Philadelphia, Pennsylvania. Mitchell G. Stockwell , Kilpatrick Stockton LLP, of Atlanta, Georgia, argued for defendants-appellees. With him on the brief were Vaibhav P. Kadaba and Pamela C. Mallari

. Appealed from: United States District Cour t for the Eastern District of Pennsylvania Senior Judge Louis H. Pollak

## United States Court of Appeals for the Federal Circuit

05-1278 HAROLD SCHOENHAUS and RICHARD M. JAY, Plaintiffs-Appellants,

v. GENESCO, INC. and JOHNSTON & MURPHY, INC., Defendants-Appellees.

_________________________ DECIDED: March 15, 2006

_________________________ Before MICHEL, Chief Judge , GAJARSA and LINN, Circuit Judges

. MICHEL, Chief Judge

. Plaintiffs Harold D. Schoenhaus and Richard M. Ja y appeal the decision of the United States District Court fo r the Eastern District of Pennsylvania granting summary judgment of non-infri ngement of their United States Patent No. 5,174,052 (“the ’052 patent”) to defendants Genesco, Inc. and J ohnston & Murphy, Inc. Schoenhaus v. Genesco, Inc. , 351 F. Supp. 2d 320 (E.D. Pa. 2005). T he district court correctly held that the limitations of clai m 1 must be found in a removabl e orthotic insert, or the immovable insert portion of a shoe, and may not be provided by other parts of the construction of the shoe. Likewise, the district court correctly held th at the “heel seat” of the removable insert or immovable insert port ion must itself be “rigid”, not rigid only in conjunction with the rear of t he upper of the shoe, and not merely semi-rigid. Becausethe district court correctly conc luded as a matter of law that t he rigidity limitation of claim 1 is missing from the i n sert portion of the accused shoe, we affirm. I Co-inventors Drs. Schoenhaus and Jay are co-owners of the ’052 patent, entitled “Dynamic Stabilizing Inner Sole System”. According to t he abstract, the inventio n is directed to “[a]n orthoti c dev ice for preventing hyperpronati on of a human foot ”, which is a cond ition invo lvin g e x cess ive fl attening of the arch of the foot, in which the f oot rotate s inward ly while a pers on is walk ing, causin g problems such as heel spurs, bunions and hammertoes. The invention wor ks by main taining the heel bone in proper alignment relative to the leg, approxim ately five degrees of varus, and differs from the prior art in that it controls relative heel position entirel y t h rough the interior of the “heel seat”, which cups the heel. In contrast, ot her orthotics provide heel in version through portions of the shoe construction by incorporating, for exam ple, an “extrinsic wedge” built into the shoe’s ins o le that tilts the foot. When the application that ma tured into the ’052 patent was pending, plaintiffs contacted the defendants in an attempt to arrange a lic ens e. After the defendants signed a c onfidential disclos ure agreement, the defendants made a prototype shoe using the invention and the par ties exchanged draft lic ense agr eements. However, after two-and-a-half years, the defend ants withdr ew from negotiations

. Eight years later, in 2002, Dr. Schoenhaus ent ered a Johnston & Murphy stor e and came upon what he believed to be an infringi ng line of footwear. T he plaintiffs promptly filed suit against the defendants alleging infri ngement of the ’052 patent, mis appropriat i on of trade secrets,

05-1278 2conversion, and unjust enrichment. In respons e, defendants asserted a counterclaim of invalidity. On Januar y 10, 2005, the district court granted defendants’ motion for summary judgment of non-infringement. S enior Judge Louis H. Pollak did not issue a separate Markman order; rather, in a carefully-crafted summary judgment opinion, he construed two lim itations of claim 1 of the patent and found as a matter of law that neither limitation was present in the accused shoes. Id. at 324-26. Accordingly, Judge Polla k entered final judgment under F ederal Rule of Civil Proc edure 54(b) in favor of defendants of non-infringement, dismissed def endants’ counterclaim of invalid ity as moot, and stayed further proceedi ngs on the state law claims pending our review of the infringement question. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II The primar y issue on appeal is whether t he limitations of claim 1 of the ’05 2 patent must be found in a removable orthotic in sert or the immovable insert portion of a shoe, or whether some of the limiting features may be provided, at least in part, by other parts of the construction of t he shoe. Central to this di spute is the meaning of the phrase “orthotic devic e”. 1 Claims 1 and 2 of the ’052 pat ent read in relevant part: 1. An orthotic devic e for preventing hyperpronation of a human foot comprising a deep rigid heel s eat to cup the calca neus, said heel cup being medially offset and laterally tilted by a suffi cient amount to maintain the calcaneus in approximatel y 5 degrees of varus . . . . 2. A footwear product having as an element thereof an orthotic devic e as claimed in claim 1. ’052 patent , col. 6, ll. 29-42 (emphasis added).

1 The district court did not expres sl y construe “orthotic device”, although its analys is clearly implied a particu lar construction of the term.

05-1278 3On appeal, plaintiffs argue that the district court erred in its claim construction. This court reviews the meaning and scope of patent claim terms for correctness as a matter of l a w, that is, without deference, or de nov o . Cyber Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998). A Plaintiffs contend that the phrase “orthotic device”, and thus the scope of claim 1, is not limited to a “discrete in sert (whether it be removable or immovable from a shoe).” Rather, they assert that an “orthotic device” means any “immovable or removable part or parts of an actual shoe that is designed to activate or supplement a weakened or atrophied limb or function.” In short, plai ntiffs ur ge this c o urt to adopt a claim construction that allows other parts of the shoe—not j u st the ins e rt or immovable ins e rt portion—to meet claim limitations. In support of this argument, plaintiffs point to language in the specification that states that their “invention” is both an ins e rt and a “shoe [ ] built to have the s hape of the interior of the insert”. ‘052 patent, col. 4, ll. 44-45. Plaintiffs’ contention regarding the inventio n as disclosed is correct; however, the term “orthotic device”, as used in the claims, has a specific meaning which must be determined from the intrinsic evidence. See Phillips v. AWH Corp. , 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc). In other words, the question before this court is not what the invention covers, but w hether the claim term “orthotic device”, as used in the pat ent, and thus the s ubsidiary limitations of claim 1, such as “rigid heel s eat”, refer only to a removable orthotic insert or the immovable insert porti on of a shoe, or more generally to a shoe built to have the shape of the interi or of the insert.

05-1278 4We begin our analysis with the usage of the term “orthotic devic e” in the patent claims. The term appears in cl aims 1 and 2 of the patent, and there is a “ p resumption that the same terms appearing in different portions of the claims should be given the same meaning unles s it is clear from the s pecification and prosecut ion history that the terms have different meanings at different portions of the claims .” Fin Control Sys. Pty., Ltd. v. OA M, Inc. , 265 F.3d 1311, 1318 ( F ed. Cir. 2001) . Using plaintiffs’ proposed definition of “orthotic device” , claim 1 would cover both an insert alone and a shoe built to have the shape of the interi or of the i n sert. If the phrase “orthotic device” is interpreted consistently thr oughout the patent, t hen plaintiffs’ proposed definition will only hold if, substituti ng either of the tw o proffered meanings in place of the phrase “orthotic device”, clai m 2 makes sense. Claim 2 specifies “[a] foot wear product having as an el ement thereof an orthotic device as c l aimed in c l aim 1.” ’052 patent, col. 6, ll. 41-42. Defining “orthotic device” a s “insert or immovable insert portion”, as suggested by defendants, claim 2 would read: “[a] footwear product having as an element thereof an [ins ert or immovable ins e rt portion] as claimed in claim 1.” T h is construction is logical. Defining “orthotic device” as a “shoe built to have the shape of the interior of the insert”, as suggested by plaintiffs, claim 2 would read: “[a] footwear product havi ng as an element thereof [a shoe built to have the s hape of the interior of the insert] as claimed in cl aim 1.” Obviously, a “sho e built to hav e the shape of the interior of the insert” cannot be considered “an element” of a footwear product. Thus, the latter defi n it ion of “orthotic device” renders claim 2

nonsens ical. Accordingly, plaintiffs’ pr oposed construction cannot be correct.

05-1278 5As such, we construe the term “orthotic device” to refer to a removable or thotic insert or the immovable insert portion of a s hoe. We therefore hold that the subsidiary limitations of claim 1 must be found on the removable insert or immovable insert portion of the shoe, and may not be supplied by any other part of the shoe’ s con s truction. A shoe built t o have the shape of th e interior of the insert woul d infringe claim 1 only if the insert portion of the shoe contains the limit ations required by clai m 1. We turn now to the question of whether, viewed alone, the insert portion of the accused shoe contain s the subsidiary limitations of claim 1. B The district court construed the term “rigid ” of claim 1, as used in “a deep rigid heel s eat to cup the c a lcaneus”, to requi re the heel seat to be rigid on its own . As such , the court rejected the plaintiffs ’ assertion that the rigidity limitation was met because the “semi-rigid” insert effectivel y bec o mes “rigid” when viewed in conjunction with the rear portion of the upper of the shoe that surrounds the wearer ’s heel. Schoenhaus , 351 F. Supp. 2d at 324. As stated above, we define “orthotic device” to require that the rigidity be provided by the heel seat portion of the removable insert or immovable insert portion of the shoe, rather than by the rear heel porti on of the upper of the shoe. Therefore, we reject plaintiffs’ argument that the rigidity limitation is me t by the semi-rigid insert in conjunction with the rigid rear heel portion of the upper of the shoe. In the alternative, plaintiffs argue that the term “rigid” should be construed to include “semi-rigid”. In s upport, plaintiffs point to writ ten description language whic h states that the “insert .

. . is formed by mo lding sem i -rigid mate rial ”, which “preferably has a varying rigidity, being more rigid and stiff at the heel cup and having somewhat

05-1278 6less stiffness and rigidity towards the forefoot.” ’052 patent, col. 4, l. 67 - col. 5, l. 4. Plaintiffs argue that although the preferred embodiment requi res “more” rigidity at the heel c up, it does not require the heel c up t o be “inflexible”. Semi-rigid would suffice, they say, especially since that is the characteristic of t he molding material from which the insert portion of the accused shoe is made. The district court rejected plaintiff s ’ unusua l interpretation of “ri gid” as semi-rigid on two grounds. Firs t, the court held that t he spec ific ation language cited by plaintiffs was ins u fficient to “clearly set forth a differ ent definition” from the conventional us age of “rigid” by ordinary practiti oners in the field. Schoenhaus , 351 F. Supp. 2d at 324 (quoting 3M Innovative Props. Co . v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003)). Second, the cour t noted that the prosecution history of the ’052 patent supported a construction that th e patent c o vered only orthot ic devices with heel seats that are rigid. Id. We agree with the district court. The patentee is free to act as his own lexicographer, and may set forth any special definitions of t he claim terms in the patent specification or file his t ory, ei ther express l y or imp liedly. Irdeto Acc e ss, Inc. v. Echostar Satellite Co rp. , 383 F.3d 1295, 1300 (Fed. Cir. 2004). Here, the patentee’s usage of the phrase “semi-rigid material” in t he spec ific at ion, when referring to the material to be used in the manufacture of the orthotic device generally, is ins u fficient to disclaim the requirement in claim 1 that the material used to construc t the “heel seat” be “rigid”. Moreover, the application’s file history, the other place in whic h an inventor m a y lay o u t a s pecia l defin iti on of a c l aim term, id. , does not contain any evidenc e to sup p ort the plaintif fs’ proposed alter native definition of “rigid”. When the application that

05-1278 7matured into the ’052 patent was submitted, cl aim 1 did not include the term “rigid” in reference to the “heel seat”. The Pate nt and Trademark Office (“PTO”) rejected plaintiffs’ applic ation, ruling the invention would have been obvious in light of certain prior art. The applic ants ar gued against this rejection, and ev entually added certain amendatory language to claim 1 in an attempt to overcome the rejection. However, the patent exa m iner still obj ected a nd agreed to issue th e ’05 2 pat ent only if the pla i ntiffs would adopt additional limit ations suggest ed in an Exam iner’s Amendment, including the term “ r igid”. Plaintiffs argue that because the patent ex aminer did not expl ain his rationale for requiring t he term “rigid” in the Examiner ’s Amendment, the court has no basis from which to infer that the addition of this term is intended to lim it the claimed inv ention to a “rigid” heel seat. This argument is unpers uasive. T he Examiner Interview Summary Record clearly states that the plaintiffs “agreed to amend claim 1 as in attached [Examiner’s Amendment] to overcome the previ ous rejection.” The prosecution history reveals that claim 1 was rejected in c onjunc tion with claim 6; although c l aim 6 did not issue as part of the ’052 patent , it contain ed language relevant to claim 1 in that it specified “a deep heel seat to cup the calc aneus .

. . the hee lcup being more rigid than the flanges .” The examiner originally rejected both claims as unpatent able in view of an article by Jay, U.S. Pat ent No. 4,232,457 (“Mosher”) and U.S. Patent No. 4,446,633 (“Scheinhaus”). Mosher disclos es a flexible orthotic insert, and the patent examiner explained t hat “it is inherent in the structure of Jay that the heel cup is more rigid than the flanges as c l aimed”. This alone prov id es a reas onable bas is from which a c o urt could conc lude that the amendment was related to avoiding the prior art.

05-1278 8Howev e r, we need not rely on this circum stantial evidence. The Supreme Court, in discussing a s i tuation where the PTO record did not rev eal the reason for a claim amendment, has stated that “[w] here no explanation is established, .

. . the court should presume that the PTO had a s ubstantial reason related to patentability for including the limiting ele m ent adde d by amen dment.” Warner-Jenkinson Co. v

. Hilton Da vis Chem. Co. , 520 U.S. 17, 32-33 (1997). The Court exp l ained that t h is presumption “gives proper deference to the role of claims in defining an invention and providing public notice, and to the pri m acy of the PTO in ensuring that the claims allowed cover only subject matter that is proper ly patentable in a proffere d patent applicat ion.” Id. at 33-34. If the additional limitation of rigidity in the Examiner’s Amendment was improper or unnecessary, plaintiffs should have raised th is issue by appeal bef ore the PTO. They did not. The patentee, of course, is only entitled to protection of the claims as issued, not as filed. As this court held in Unique Concepts, Inc. v. Brown , 939 F.2d 1558, 1562 (Fed. Cir. 1991), where a patent specification includes a description lacking a feature, but the claim recites that feat ure, the language of the claim c ontrols. In that case, the claim excludes the described embodiment, whic h is deemed dedicated to the public. Id. at 1562-63. Even int e rpreting the spec ific at ion language to permit semi-rigid materia l elsewhere, the language of claim 1 requires that the heel seat portion of the orthotic device be “ r igid”. Thus, plaintiff s u rrendered coverage of orthotic devices wit h semi-rigid heel seats. Given plaintiffs’ admission that t he heel s e at in the im movable insert portion of the accused shoe is only semi-rigid, t he district court properly granted summary judgment of non-infringem ent on this ground.

05-1278 9The district court also held that no mate rial factual dis p ute existed regarding the limitation “heel cup being medi ally offset and laterally tilted by a sufficient amount to maintain the calcaneus in approximat ely 5 degrees of varus”. Schoenhaus , 351 F. Supp. 2d at 324. The parties disagree ov er whether expert testimony offered by the plaintiffs on this point in summary judgm ent papers is admissible, and whether certain language in the specificat ion allows other parts of the s hoe to pr ovide the r equis i te five degrees of rotation. Because we have det e rmined that the claim limitatio n requiring a rigid heel s eat does not read on the immovabl e insert portion of t he accused shoe, we need not determine whether a material factual dispute exists on these issues. III In sum, this court holds that an “orthot ic device” must be defined as a remov able insert or immovable insert portion of a shoe. Such a definition is required for a logic a l interpretation of claims 1 and 2 of the paten t. The parties do not dispute that the immovable insert portion of the accus ed shoe, standing alone, does not meet the subsidiary limitation of claim 1 of a “rigid” heel seat. Neither the specificatio n nor the file history of the applicat ion establishes a spec ial meaning of the t e rm “rigid” as used in claim 1. As such, a subsidiary limitation of claim 1 is not met, and the acc u sed shoe does not infringe the ’052 patent. Accordingl y, the trial court’s grant of summary judgment of non-infringement to the defendants must be, and is AFFIRMED

.

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