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1 Markman v. Westview Instr., Inc., 517 U.S. 370 (1996)

ORDER - 1 

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

AT SEATTLE

BADEN SPORTS, INC.,

Plaintiff,

v.

KABUSHIKI KAISHA MOLTEN (DBA

MOLTEN CORPORATION) AND MOLTEN

U.S.A., INC., 

Defendants.

No. C06-0210 

ORDER REGARDING CLAIM

CONSTRUCTION

This matter comes before the Court on the parties’ claim construction briefing. (Dkt. Nos. 80-

81, 90-91). On January 19, 2007, the Court held a Markman hearing1

 regarding construction of the

at-issue claim terms. Having considered the parties’ briefs, the documents submitted in support

thereof, and the arguments at the Markman hearing, the Court orders as follows:

(1) “Raised seams” means “a piece of material that is at a higher position that the sponge

layer in the basketball.”

(2) “Strips of seam material” means “strips of seam material.”

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2 Although Baden’s original complaint alleged infringement of the ‘283 patent,

Baden has amended its complaint to dismiss the claims based on the ‘283 patent. 

In a separate order, the Court grants Baden’s request to amend its complaint. The

Court therefore only considers the ‘835 patent in its analysis.

ORDER - 2 

BACKGROUND

Baden develops, manufactures, and sells basketballs. In the mid-1990s, Baden developed a

new game-quality basketball that is “cushioned” or “padded.” On May 12, 1995, Baden filed a

patent application in the United States Patent and Trademark Office (USPTO) on certain features of

its padded basketball design. The USPTO granted Baden a patent on June 10, 1997: U.S. Patent No.

5,636,835 (the ‘835 patent). On May 22, 1997, Baden filed a continuing patent application. The

USPTO subsequently granted Baden a second patent regarding this same design on February 8, 2000:

U.S. Patent No. 6,022,283 (the ‘283 patent).2

The patented basketball is designed with a “sponge rubber” or “cellular sponge layer”

underneath both the exterior panels of the basketball and the seams. The ‘835 patent explains that

this design gives the ball a “soft feel” and a “truer bounce”, and allows the ball to wear better and

maintain its spherical shape more easily than a conventional ball.

Baden alleges that Defendants recently introduced several basketball models in the United

States market that copy Baden’s patented basketball design. Baden alleges that Molten’s basketball

design infringes on Baden’s ‘835 patent.

DISCUSSION

A. The Law of Claim Construction

The Court has the sole responsibility for construing patent claims. Markman v. Westview

Instruments, Inc., 517 U.S. 370, 372 (1996). The Court construes claims purely as a matter of law. 

Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (applying de novo review to

all claim construction issues, even “allegedly fact-based questions”). In practice, executing the

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ORDER - 3 

Markman mandate means following rules that rank the importance of various sources of evidence of

the “true” meaning of claim terms.

The Federal Circuit’s most recent exposition of the claim construction rules came in Phillips v.

AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Although the case focused on the role of

dictionaries in claim construction, it also reviewed the claim construction process. 

Intrinsic evidence, which includes the patent and its prosecution history, is the primary source

from which to derive a claim’s meaning. Id. at 1314. The court’s task is to determine the “ordinary

and customary meaning” of the terms of a claim in the eyes of a person of ordinary skill in the art on

the filing date of the patent. Id. at 1313 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1582 (Fed. Cir. 1996)). In its review of intrinsic evidence, the court should begin with the

language of both the asserted claim and other claims in the patent. Id. at 1314; see also Innova/Pure

Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (“[C]laim

construction analysis must begin and remain centered on the claim language itself.”). 

The court must read claim language, however, in light of the remainder of the patent’s

specification. Phillips, 415 F.3d at 1316 (“[T]he specification necessarily informs the proper

construction of the claims.”). The specification acts as a “concordance” for claim terms, and is thus

the best source beyond claim language for understanding claim terms. Id. at 1315. The inventor is

free to use the specification to define claim terms as she wishes, and the court must defer to the

inventor’s definitions. Id. at 1316 (“[T]he inventor’s lexicography governs.”). The court should

“rely heavily” on the specification in interpreting claim terms. Id. at 1317. The court should not,

however, commit the “cardinal sin” of claim construction – reading limitations from the specification

into the claims. Id. at 1320 (citing SciMed Life Sys. v. Advanced Cardiovascular Sys., Inc., 242 F.3d

1337, 1340 (Fed. Cir. 2001). Although a court should limit the meaning of a claim where the

“specification makes clear that the invention does not include a particular feature,” the court must not

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ORDER - 4 

read “particular embodiments and examples appearing in the specification” into the claims unless the

specification requires it. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.

1988).

Although the patent’s prosecution history is also intrinsic evidence, it is “less useful for claim

construction purposes.” Id. at 1317. As the prosecution history documents an invention’s evolution

from application to the issuance of the patent, it usually “lacks the clarity of the specification . . . .” 

Id. The prosecution history is useful, however, in determining when an inventor has expressly

disavowed certain interpretations of her claim language. Id. 

Finally, the court can consider extrinsic evidence, “including expert and inventor testimony,

dictionaries, and learned treatises.” Id. at 1317 (citing Markman v. Westview Instruments, Inc., 52

F.3d 967, 980 (Fed. Cir. 1995)). For a variety of reasons, extrinsic evidence is usually “less reliable

than the patent and its prosecution history” as a source for claim interpretation. Id. at 1318. The

court thus need not admit extrinsic evidence, but may do so in its discretion. Id. at 1319.

As the Phillips court put it, the “inquiry into how a person of ordinary skill in the art

understands a claim term provides an objective baseline from which to begin claim interpretation.” 

415 F.3d 1303, 1314. However, the court can only rely on dictionaries or on expert testimony from a

person of skill in the art when no answers are apparent from the intrinsic evidence. Following

Phillips, the starting point for claim construction is the “widely accepted meaning of commonly

understood words.” Id. The court should then look first to the claims, then to the specification, and

finally to the prosecution history to clarify that meaning. 

B. Raised Seams

The parties dispute the meaning of “raised seams.” This term is found in claim numbers 1, 3,

and 5 of the ‘835 patent. The dispute focuses on what the seams are raised in relation to. Baden

argues that the seams are raised in relation to the underlying sponge layer of the basketball. Baden’s

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3 The numbers refer to the identifying numbers in Fig. 3 of Baden’s ‘835 patent.

ORDER - 5 

proposed construction is: “a piece of material that is at a higher position than the sponge layer in the

basketball.” Molten argues that the seams are raised in relation to the exterior skin panels, such that

the raised seams extend to the height of the outer edges of the two adjacent skin panels. Molten’s

proposed construction is: “a raised central portion 22 of seam material 20 fills the space between the

outer edges 24, 26, of two adjacent skin panels.”3 The Court concludes that Baden has provided the

more accurate construction.

The Court looks first to the ordinary meaning of the claim terms and then reads those terms in

the context of the other claims in the patent. The ‘835 patent claims, in part, “a plurality of raised

seams, defined by strips of a seam material, wherein the sponge layer underlies the raised seams, and

further, the inner carcass portion, the cellular sponge layer and raised seams together define a ball

carcass.” (Claim 1). Considered in isolation, the words “raised seams” suggest seams that are

heightened in relation to something else. Thus, considered in light of the ordinary meaning of the

words, Molten’s construction does not make sense. Molten suggests comparing the height of the

seam to the exterior skin panels. But under Molten’s construction, the seam is not heightened in

relation to the exterior skin panels, but “flush with the upper surfaces of the adjacent skin panels.”

(Emphasis added.) Molten’s construction would therefore eliminate the ordinary meaning of the

word “raised.”

Baden’s proposed construction is consistent with the ‘835 patent claims. As explained in

claims 1 and 3, the “inner carcass portion, the cellular sponge layer and raised seams together define

the ball carcass.” Thus, before the skin panels are attached, the ball carcass is composed of an inner

carcass, encircled by a cellular sponge layer, with seams extending upwards from and on top of the

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ORDER - 6 

cellular sponge layer. This phraseology suggests that the seams are “raised” regardless of the height

or positioning of the exterior skin panels; they are “raised” in relation to the underlying sponge layer.

Molten points to other claim language to support its construction of the term. Specifically,

Molten points to that portion of Claim 1, which states, “wherein . . . each strip of seam material

comprises: a raised portion positioned between spaced, outer edges of the skin panels on opposite

sides of the raised portion.” And Molten points to Claim 5, which states, “the raised seams defining

the boundaries of skin panel placement areas . . . each strip of seam material includes a raised

portion.” But this claim language describes the horizontal position of the seams in relation to the

exterior panels, not the vertical position. This language explains that the raised portion of the seams

are exposed between and touch the exterior panels. It does not describe the height of the seam vis-avis the adjacent exterior skin panels.

In addition, Molten points to language in the specification of Baden’s ‘835 patent that refers

to the raised seams “exposed between the edges of exterior skin panels” (col. 1, ll. 11-12); “the

boundaries of the exterior skin panels [being] defined by the raised seams” (col. 2, ll. 29-31); and the

“raised central portion 22 of the seam material 20 fill[ing] the space between the outer edges 24, 26

of two adjacent skin panels 28, 30” (col. 3, ll. 32-34). Like the claim language, these specifications

do not describe the height of the seam compared to the adjacent exterior skin panels, but rather, the

horizontal position of the seam in relation to the skin panels.

Finally, Molten points to prior art mentioned in the prosecution of the ‘835 patent. But

Molten has not cited to where this prosecution history is in the record. And even if the Court

considered the relevance of this prior art (the Anderson patent, U.S. Patent No. 3,863,923), which

itself refers to the Henderson patent (U.S. Patent No. 3,508,750), the Court is not persuaded that

Anderson or Henderson affect the meaning of “raised seams” in Baden’s ‘835 patent. As explained

by Molten, Anderson, in describing the Henderson patent, discloses that the diameter of the exterior

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ORDER - 7 

skin panels constitute the diameter of the ball, as defined by the elevated raised seam. Not only is this

evidence attenuated, it does not explain that the Henderson seam must be “raised” in relation to the

exterior panel; it only explains that in the Henderson design, that seam was designed to be the same

height as the highest portion of the exterior skin panel. This prior art thus provides little guidance in

understanding the meaning of “raised seams” in Baden’s ‘835 patent. 

The ordinary meaning of the term and the claim language support Baden’s construction of

“raised seams.” Baden’s construction is also supported by Figures 1, 3, and 5 of the ‘835 patent,

which all indicate a seam with a raised portion at a height above the underlying sponge layer. And

finally, the patent specifications support Baden’s construction. The specifications describe how the

ball is molded: In the mold, the carcass is cured under heat, the heat causes the foaming agent to

expand the foamable sections into a single, uniform cellular sponge layer, and “[t]he seam strips are

molded at the same time, thereby creating the raised seams familiar to conventional basketballs.”

(Col. 4, ll. 25-34). This specification suggests that the seams are “raised” regardless of the height of

the exterior skin panels; rather, their raised characteristic explains the seams’ height in relation to the

underlying foam section.

Because the ordinary meaning of the words, the claim language, and the patent specifications

are all consistent with Baden’s proposed construction, the Court adopts Baden’s proposed

construction of the term “raised seams.”

C. Strips of seam material

The parties dispute the meaning of the term “strips of seam material.” This term is found in

claim numbers 1, 3, and 5. Baden argues that “strips of seam material” should be construed as “strips

of seam material.” Molten suggests that “strips of seam material” should be construed as “raised

seams having a raised portion which is filled with an underlying foam layer” or “a seam having an

outer surface formed by thin rubber strips and an inner portion of foam attached to the strips.” 

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ORDER - 8 

Molten is arguing that Baden’s patent is limited to a design with strips of seam material with a raised

portion that is not solid underneath, but rather, has foam underneath and within the raised portion of

the seam. The Court does not agree that Baden’s patent is limited in this way.

The Court agrees with Baden that the ordinary and plain meaning of the words “strips of seam

material” is “strips of seam material”. Stated differently, in isolation, this term means a narrow piece

of material that constitutes a seam. This interpretation is supported by the claims themselves. The

term is used throughout the claims. For example, in Claim 1, “each strip of seam material comprises:

a raised portion positioned between spaced, outer edges of the skin panels on opposite sides of the

raised portion; and flange portions extending away from opposite sides of the raised portion.” And

Claim 1 states “a plurality of raised seams defined by strips of a seam material, wherein the sponge

layer underlies the raised seams.” Claim 3 states “a plurality of raised seams defined by strips of a

seam material, wherein the strips of seam material are bonded directly to the cellular sponge layer and

the sponge layer underlies the strips of seam material . . . .” Claim 5 states “a plurality of raised

seams defined by strips of a seam material attached to the cellular sponge layer . . . and, wherein, each

strip of seam material includes a raised portion positioned between spaced, outer edges of the skin

panels on opposite sides of the raised portion . . . .” In all of these contexts, the most straightforward

meaning of “strips of seam material” is “strips of seam material”, or a narrow piece of material that

constitutes a seam.

Molten’s construction expands the term itself to include a larger portion of the claim. 

Molten’s proposed construction of “strips of seam material” is really a proposed construction of

“strips of a seam material, wherein the sponge layer underlies the raised seams”. (Claim 1). But even

considering that phrase as one term, the Court is not convinced that the term means “raised seams

having a raised portion which is filled with an underlying foam layer.” Molten’s construction is not

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ORDER - 9 

supported by the claim language. None of the claim language discusses the raised portion of the seam

being “filled” with foam; instead, its discusses the sponge or foam layer underlying the seam strip.

Molten’s construction does find support in Figure 3 of the ‘835 patent. That figure shows a

seam with a raised portion, and within that raised portion is foam. But the claims themselves do not

contain language that limits the design to that particular graphic representation. The Court will

therefore not limit the claims to the graphic representation in Figure 3. See Constant v. Advanced

Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988) (“Although the specification may aid the

court in interpreting the meaning of disputed language in the claims, particular embodiments and

examples appearing in the specification will not generally be read into the claims.”).

Molten also makes arguments regarding the prosecution of the ‘283 patent. But the Court is

not considering the ‘283 prosecution history because Baden has amended its complaint to eliminate

its cause of action based on that patent. And even if the Court were to consider the prosecution

history of the ‘283 patent, the Court does not agree with Molten that the ‘283 prosecution history

limits the patent to Molten’s proposed construction. The prosecution history makes clear that

Baden’s ‘835 patent is limited to a design with a sponge layer under both the exterior panels and the

rubber seams. The prosecution history presented by Molten does not suggest that Baden’s ‘835

patent is limited to seams filled with foam.

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4 The Court did not rely on any extrinsic evidence in construing these terms.

ORDER - 10 

CONCLUSION

Because Baden’s proposed construction of both of the disputed claim terms is supported by

intrinsic evidence, the Court adopts Baden’s proposed construction of “raised seams” and “strips of

seam material.”4 “Raised seams” means “a piece of material that is at a higher position than the

sponge layer of the basketball.” “Strips of seam material” means “strips of seam material.”

The clerk is directed to send a copy of this order to all counsel of record.

Dated: January 26th, 2007.

AMarsha J. Pechman

 United States District Judge

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