## United States Court of Appeals for the Federal Circuit

2006-1628

MIKEN COMPOSITES, L.L.C., Plaintiff-Appellee,

v.

WILSON SPORTING GOODS COMPANY, Defendant-Appellant.

Julian Wing-Kai Poon , Gibson Dunn & Crutcher, LLP, of Los Angeles, California, argued for plaintiff-appellee. On the brief were Wayne M. Barsky and S. Ashlie Beringer . Of counsel were Aileen Y. Mo , of San Francisco and Miguel A. Estrada , of Washington, DC. Of counsel on the brief were Michael H. Streater , Briggs & Morgan, P.A., of Minneapolis, Minnesota, and Kurt J. Niederluecke , Frederickson & Byron, P.A., of Minneapolis, Minnesota. Michael R. Levinson , Seyfarth Shaw LLP, of Ch icago, Illinois, argued for defendant-appellant. With him on the brief was Louis S. Chronowski . Of counsel on the brief was Jeffery A. Key , Key & Associates, of Chicago, Illinois. Appealed from: United States District Court for the District of Minnesota Senior Judge David S. Doty

## United States Court of Appeals for the Federal Circuit

2006-1628

MIKEN COMPOSITES, L.L.C., Plaintiff-Appellee, v. WILSON SPORTING GOODS COMPANY, Defendant-Appellant.
Appeal from the United States District Court for the District of Minnesota in case no. 02- CV-769, Senior Judge David S. Doty.

__________________________ DECIDED: February 6, 2008

__________________________ Before NEWMAN, SCHALL, and LINN, Circuit Judges

. LINN, Circuit Judge

. Litigation stemming from the enforcement of U.S. Patent No. 5,415,398 (“the ’398 patent”) returns to this court for the third ti me, having visited us on two prior occasions in appeals from two different suits agai nst two other accused infringers. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co. , 442 F.3d 1322 (Fed. Cir. 2006); DeMarini Sports, Inc. v. Worth, Inc. , 239 F.3d 1314 (Fed. Cir. 2001). In this case, Wilson Sporting Goods Company (“Wilson”) appeals from the decis ion of the United States District Court for the District of Minnesota granting the motion of Miken Composites, L.L.C. (“Miken”) for summary j udgment of non-infringement of claims 1 and18 of the ’398 patent. Miken Composites, L.L.C. v. Wilson Sporting Goods Co. , No. 02- CV-769 (D. Minn. Aug. 10, 2006) (“ Summary Judgment Opinion ”). Because the district court’s claim construction was not erroneous , and because the district court correctly concluded that no reasonable jury could find that Miken’s bat s infringed the ’398 patent, either literally or under the doctrin e of equivalents, we affirm. I. BACKGROUND Wilson is the current assi gnee of the ’398 patent, whic h relates to “softball and baseball bats and more particularly relates to t he use of structural members inside such bats to improve their impact response.” ’ 398 patent col.1 ll.8–11. The patent begins with a description of the difficulties of desig ning aluminum bats with optimal tubular wall thickness in the prior art. A ccording to the patent, making the aluminum wall of a bat thin enables a large amount of “elastic de flection,” which results in superior power transfer and thus better “slugging” capacity. Ho wever, if the wall is too thin, there is a risk of “permanent plastic deformation,” which “lessens the power transfer to a ball and leaves the bat permanently dented.” Id. col.1 ll.24–44. On th e other hand, if the aluminum wall is too thick, the bat will be too stiff, and will “respond[] with relatively little spring, resulting in lo wer power transfer.” Id. col.1 ll.44–48. The ’398 patent discloses an improved bat design including “a tubular insert 18 . . . suspended within the impact porti on 12 of the tubul ar frame.” Id. col.2 ll.44–49.

2006-1628 2The preferred embodiment of the ’398 patent is illustrated in Figure 2, above. In Figure 2, the insert is identified as member 18 an d is described as having an “outer diameter . . . slightly less than the i nner diameter of t he tubular frame impact portion 12.” Id. col.2 ll.62–66. The insert “contacts the tubular frame only at the in terference fits [at the ends of the insert],” such that “[a] narrow, uniform gap 26 exists between the insert 18 and the inner wall of the impact portion 12 [of the frame].” Id. col.2 ll.62–68. According to this embodiment of the invention, “the insert is inserted into the tubular frame 11,” “the gap 26 is filled with a lubricant, such as gr ease,” and these components together “yield[] a mechanical system with characterist ics similar to a leaf spring.” Id. col.3 ll.3–6, 16– 19. The “leaf-spring-like suspension of the insert 18 within the t ubular frame” adds “snap” to the rebound of the bat after coming into contact with a ball, and t hus “yields an improved transfer of power to the batted ball, and a heightened ‘sl ugging’ capacity for the bat.” Id. col.3 ll.36–47. Miken brought a declaratory judgment acti on against Wilson seeking, inter alia, a declaration that several of it s bat models, specifically the Viper, hhd, Intensit-E, VelocitE, Ultra, Ultra II, Velocit-E II, Edge, and M-Pulse, did not infringe clai ms 1, 15, or 18 of the ’398 patent. Wilson counterclaimed alleging infringement of the ’398 patent. After the district court issued a claim construction order, Miken Composites, L.L.C. v. Wilson Sporting Goods Co. , No. 02-CV-769 (D. Minn. July 26, 2004), Wilson abandoned its allegations with respect to claim 15. Mik en then moved for summary judgment of noninfringement as to asserted claims 1 and 18 of the ’398 patent and of invalidity with respect to claim 18 only. The district court initially stayed all proceedings pending this court’s resolution of the appeal in the Hillerich case, which involved the same claims of

2006-1628 3the ’398 patent. Following the issuance of our decision in that case, the parties were permitted to submit suppl emental briefs addressing the relevance of the Hillerich opinion. The asserted claims of the ’398 patent r ead as follows, with disputed provisions emphasized: 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 crosssection, the insert having first and second ends adjoining the tubular frame, the insert being s eparated 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 sm all-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 circ ular cross-section with an outer diameter less than the innerdiameter of the frame impact portion, the insert being held within the impact portion; and the impact portion being inwardly elasti cally deflectable such to establish a tight interference fit between the insert and the impact portion

. The parties’ contentions regarding infri ngement revolved around two limitations. The first of these is the “insert” limitati on found in both claim 1 and claim 18. The second is the “gap” limitation expressly recited in claim 1 as “a gap forming at least part of an annular shape” between the insert and the bat frame, such t hat “the frame [is] elastically deflectable across the gap to operably engage t he insert.” Although claim 18 does not recite a “gap” in the terms used in claim 1, it does require that “the impact portion be[]

2006-1628 4inwardly elastically deflectable such to establish a tight interference fit between the insert and the impact portion.” The district court noted that, based on this language, “the Federal Circuit [has] found the requirem ent that a ‘gap’ exis t between the impact portion and the insert to be implicit in claim 18.” Summary Judgment Opinion at 15 n.5 (citing Hillerich , 442 F.3d at 1328–29). Miken conceded that the Viper, hhd, Intensit -E, and Velocit-E bats (collectively, “the non-carbon bats”) contain “inserts” wi thin the meaning of the claim language “because they are composed of a structural member that is either hydraulically or manually pushed into a separat ely manufactured frame.” Id. at 10 n.2. Miken argued, however, that the Ultra, Ultra II, Velocit-E II, Edge, and M-Pulse bats (collectively, “the carbon bats”) do not contain any “insert” because they are manu factured differently, using a successive layering process described by the district court as follows: An internal component is first fabric ated by rolling alternate layers of preimpregnated carbon fiber reinforc ed/epoxy tape, polypropylene shrink tape and nylon shrink tape over a m andrel, curing the component at an elevated temperature, removing the ex ternal layers of shrink tape and then dipping the component into a release agent. Each internal component is comprised of two layers of carbon fiber reinforced epoxy/tape and the placement and quantity of shrink tape layers vary slightly depending on the specific ba t. Dry pre-woven fabrics are then tightly drawn over the internal component, and the entire assembly is infused with resin. Id. at 10 (internal citations omitted). Thus , at bottom, the parties’ dispute centered around whether the “internal co mponent” of the carbon bats co nstitutes an “insert” and whether a “gap” is present bet ween the bat frame and insert, if any, in both the carbon and non-carbon bats. In due course, the district court granted Miken’s motion for summary judgment of non-infringement. Id. at 8. The district court c oncluded that the carbon bats “do not

2006-1628 5infringe claims 1 or 18 of the ’398 patent, lit erally or by equival ency, because they do not have an insert.” Id. at 13. Moreover, the distri ct court concluded that “no reasonable jury could find that [the non-carbon bat s] literally infringe” because they do not “contain a ‘gap’ for purposes of claim 1, or a space sufficient to allow contact upon elastic deflection, for purposes of claim 18.” Id. at 18–19. As for valid ity of claim 18, the district court rejected Miken’s challenge. Id. at 8. Wilson timely appealed the district court’s noninfringement determinations. We have jurisdiction pursu ant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION A. Standard of Review We review a district court’s gr ant of summary judgment de novo. Hilgraeve Corp. v. McAfee Assocs., Inc. , 224 F.3d 1349, 1352 (Fed. Cir . 2000). Summary judgment is proper only if there are no genui ne issues of material fact and the movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250 (1986). Claim construction is an issue of law, see Markman v. Westview Instruments, Inc. , 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff'd , 517 U.S. 370 (1996), over which we exercise plenary review, Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). A determination of non-infringement, either literal or under the doctrine of equivalents, is a question of fact. See IMS Tech., Inc. v. Haas Automation, Inc. , 206 F.3d 1422, 1429 (Fed. Cir. 2000). “Thus, on appeal from a grant of summary judgment of non-infringement, we must determine whether, after resolving

2006-1628 6reasonable factual inferences in favor of the patentee, the district court correctly concluded that no reasonable jurycould find infringement.” Id. B. Analysis 1. Claim Construction Wilson disputes the district court’s claim constructions of the “i nsert” limitation of claims 1 and 18 and the “gap” limitation of claim 1. W ilson further contends that the district court erred in applying its constructi on of the “gap” limitati on to claim 18 because the word “gap” does not appear in claim 18. a. The “Insert” Limitation Relying upon our prior discussion of the term “insert” in Hillerich , the district court held that “[t]he term ‘insert’ does not possess a particular meaning in the field of art encompassed by the ’398 patent,” and that “[ g]iven its ordinary and customary meaning, ‘insert’ means ‘something inserted or intended for insertion.’” Summary Judgment Opinion at 11 (quoting Hillerich , 442 F.3d at 1330). Although not discussed by the district court in this case, we had also pr eviously addressed the “insert” limitation in DeMarini . In that case, we accepted the “ord inary” and uncontested definition proffered by the then-owner of the ’398 patent as “anything put or fi t into something else.” DeMarini , 239 F.3d at 1330. We also noted that “the bat frame, which includes the impact portion and the handle, completely surr ounds and is separate from the ‘insert.’” Id. Wilson contends that the “insert” limitati on is purely structural , and that it does not matter whether an insert is placed into a pre-existing frame orwhether a frame is built around it. Wilson argues that by ho lding that the carbon bats do not contain an

2006-1628 7“insert” within the meaning of the claims because the internal component is not “inserted” into anything, the district c ourt committed the claim construction error of importing a process limitation into claims directed to a product

. See Hazani v. U.S. Int’l Trade Comm’n , 126 F.3d 1473, 1479 (Fed. Cir. 1997) (distinguishing between product and product-by-process claims). Miken responds that construing the term “insert” to encompass any separate, internal, independently moveabl e structural element woul d impermissibly broaden the scope of the claims and would read out the “ins ert” limitation entirely. Miken further argues that Nystrom v. Trex Co. , 424 F.3d 1136, 1142–46 (Fed. Cir. 2005) (limiting the term “board” to “wood cut from a log”), demons trates that how a product is made can be dispositive evidence of non-infrin gement of a product claim. We are not persuaded by Wilson’s argument s regarding the “insert” limitation. To the extent that these arguments are relevant to claim construction, we address them here; to the extent they relate to the seco nd step of the infringe ment analysis, however, we address them below. We note first that nothing in the claims or specification indicates, explicitly or imp licitly, that the inventor us ed the term in a novel way or intended to impart a novel meaning to it. To the contrary, the claims and written description of the ’398 patent consistently use the term “ins ert” in the sense of its ordinary meaning as “something inse rted or intended for insertion.” Webster's II New College Dictionary (3d ed. 2005); see also Webster’s Third New International Dictionary Unabridged (1993) (defining “insert” as “something that is insert ed or is for insertion”); ’398 patent col.3 l.5 (“the insert is inserted into the tubular frame 11”); id. col.4 ll.24–28 (“the insert 18 is coated with the lubricant be fore being inserted into the tubular frame

2006-1628 811”). Had the patentee, “who was responsible for drafting and prosecuting the patent, intended something different, it could hav e prevented this result through clearer drafting.” Hoganas AB v. Dresser Indus., Inc. , 9 F.3d 948, 951 (Fed. Cir. 1993). Moreover, the parties have pres ented no evidence to suggest that the term “insert” in the context of the patent has a particular meaning differi ng from the ordinary and customary meaning in the field of art en compassed by the ’398 patent. The term “insert” is a common term used to denote st ructure. To contend , however, as Wilson does, that it does not matter whether an insert is placed into a pre-existing frame or whether a frame is built ar ound it ignores that ordi nary and customary meaning, notwithstanding Wilson’s attempts to categorize the term “insert” as “purely structural.” The issue would have been diffe rent if the claims contai ned the language argued in Wilson’s briefs; to wit, “inter nal structural member,” Wilson Br. at 31, 38, or “multi-wall product,” Reply Br. at 3, but they do not. It is the language of the claims not the argument that governs. As for Wilson’s contention that the distri ct court impermissibly imported a process limitation into a product claim, we disagree. As we have discussed, the district court merely adopted an ordinary meaning of the term “insert.” Summary Judgment Opinion at 11. That this ordinary meaning has func tional attributes does not change the fact that the claim recites a structural componen t, albeit one possessed with certain understood characteristics. Cf. Greenberg v. Ethicon Endo-Surgery, Inc. , 91 F.3d 1580, 1583 (Fed. Cir. 1996) (noting that struct ural elements can be “expre ssed in functional terms” and citing examples “such as ‘filter,’ ‘brake,’ ‘c lamp,’ ‘screwdriver,’ [and] ‘lock’”). Miken further supports its argument by relying on Nystrom . We agree that Nystrom supports

2006-1628 9Miken’s position but for a reason diffe rent from the one presented. In Nystrom , we held that the “[b]roadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in [ Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].” Nystrom , 424 F.3d at 1145-46. Based on Phillips , a claim term should not be read to encompass a broader definition “in the absence of something in the written description and/or prosecution hi story to provide explicit or implicit notice to the public— i.e., those of ordinary skill in the art—that the inventor intended a disputed term to cover more than the ordinary and custom ary meaning revealed by the context of the intrinsic record.” Id. at 1145. Here, Wilson has not identif ied any such notice in the intrinsic record of the ’398 patent. Accordingly, and because we discern no claim construction error in the district court’s tr eatment of the “insert” limitati on, we affirm this aspect of the judgment. *

* We note that the claim construction we have affirmed in this case is fully consistent with the interpretation given to the same limitation in Hillerich , 442 F.3d at 1330 (“something inserted or in tended for insertion”), and DeMarini , 239 F.3d at 1330 (“anything put or fit into so mething else”). Indeed, for us not to adopt the same claim construction in a case such as this, in which the construction of the claim term in question was a necessary predicate to the dete rmination of a prior litigation before this court and is evident from the face of the intrinsic record without resort to expert testimony, would run counter to the Supreme Court’s guidance on stare decisis in Markman : “treating interpretive issues as purel y legal will promote (though it will not guarantee) intrajurisdictional cert ainty through the application of stare decisis .” Markman , 517 U.S. at 391; see also Key Pharm. v. Hercon Labs. Corp. , 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take our task light ly in this regard, as we recognize the national stare decisis effect that this court’s decisions on claim construction have.”); Cybor , 138 F.3d at 1455 (noting that in Markman “the Supreme Court endorsed this court’s role in providing national uniformity to the construction of a patent claim”); Zenith Radio Corp. v. United States , 783 F.2d 184, 187 (Fed. Cir. 1986) (holding that stare decisis applied where resolution of issue was a “necessary predicate” to earlier Federal Circuit ruling).

2006-1628 10b. The “Gap” Limitation With respect to the language of clai m 18 requiring “the impact portion being inwardly elastically deflectable such to establis h a tight interference fit,” the district court held “the requirement that a ‘gap’ exist betw een the impact portion and the insert to be implicit in claim 18.” Summary Judgment Opinion at 15 n.5 (citing Hillerich , 442 F.3d at 1328–29). For both this limitation and the “gap” limitation of claim 1, the district court adopted the claim construc tion articulated in Hillerich

. See id. at 7, 15–16; see also DeMarini , 239 F.3d at 1330 (declining to construe these limitations). On appeal, Wilson argues that the district c ourt read an additional limitation into the claims by holding that the separations measured in the accused bats, which the district court characterized as “irregularand sporadic,” were not large enough or consistent enough to be consider ed a “gap.” Wilson also contends that the district court’s claim construction ignored the real “invention” of the ’398 patent—i.e., a bat which yields a mechanical system with characteri stics similar to a leaf-spring. Wilson further argues that the distri ct court erroneously read the “gap” limitation of claim 1 into claim 18, in which the word “gap” does not appear. Miken responds by defending the district court’s claim construction and by arguing that the inventor disclaimed “discontinuous and variable spaces” between the frame and insert during the prosecution of the ’398 patent. These arguments are for the most part mo re germane to infringement, and thus we address them in the infringe ment discussion below. To the extent that they do relate to claim construction, they do not persuade us that the dist rict court erred in adopting the claim construction of this court in Hillerich . As we held in Hillerich , “[a]lthough ‘gap’

2006-1628 11does not appear in claim 18, the claim term ‘a tight interference fit’ implies some sort of space between the frame and the insert.” Hillerich , 447 F.3d at 1325. However, “claims 1 and 18 . . . do not foreclose some cont act between the insert and frame.” Id. at 1328. We therefore “define[] ‘gap’ fo r the purposes of claims 1 and 18 of the ’398 patent as ‘a separation,’ . . . [which] may be localized, so that a cross-sect ion of the bat in the impact region need not possess circular symmetry.” Id. at 1329. Specifically with respect to claim 18, “in contrast to the insert of cl aim 1, the insert in this claim need not be perfectly circular. Rather the claim r equires only space between the frame and the insert to allow for contact when the im pact portion is elastically deflected.” Id. Furthermore, “claim 18 also does not forecl ose the possibility that contact between the frame and insert occurs, before impact, at so me point other than t hat at which impact occurs.” Id. The district court adopted this same claim construction analysis, see Summary Judgment Opinion at 7, 15–16, and we herein a ffirm that determination. 2. Infringement a. The Carbon Bats The district court held that the carbon bats did not infringe because “Wilson provide[d] no evidence to support a finding that the carbon bats contain anything inserted or intended for insertion” as is appar ent from Miken’s proc ess of manufacturing multi-layered frames around what becomes an internal component. Id. at 10–11. It also rejected Wilson’s argument for infringemen t under the doctrine of equivalents, which relied upon its expert’s “load defle ction tests” to establish that the layers of the carbon bats were capable of i ndependent movement. Id. at 11–12. The district court held that because these tests could not serve as a basis to find equivalency of the insert, they

2006-1628 12established “at most the equivalency of the accused products as a whole.” Id. at 11–13 (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 40 (1997) (holding that “[t]he determination of equiva lence should be applied as an objective inquiry on an element-by- element basis”)). It further held that “to apply the doctrine of equivalents in this case would vitiate t he ‘insert’ limitation of claims 1 and 18 in contravention of the ‘all elements’ rule,” based on its understandi ng of the carbon bats as merely multi-layered frames. Id. at 13 (citing Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp. , 149 F.3d 1309, 1316–17 (Fed. Cir. 1998)). Because the district court found that the carbon bats did not meet the “insert” lim itation, it did not consider whether or not these bats contained a “gap” withi n the meaning of claims 1 or 18. Id. at 13 n.4. On appeal, Wilson presents two arguments fo r literal infringement. First, Wilson argues that Miken’s own expert admitted that Miken’s carbon bats each have an “insert.” Second, Wilson contends that reco rd evidence establishes that the carbon bats “have separate internal structural member s, each of which move s independently of the frame.” Miken responds that Wilson has presented no evidence that any part of the carbon bats was ever “inserted or intended for insertion” into a hollow bat frame, and that whether or not the ca rbon bats contain separate inte rnal structural elements capable of independent movement is not dispositive of the ex istence of an “insert” as that claim term has been construed. Miken further contends that the alleged “insert” of the carbon bats is not structur ally distinct from the fram e. Finally, Miken draws our attention to its expert’s supplemental declaration, which clarifies that [a]s in all previous documents [inc luding the declaration cited by Wilson] the term “insert” is used to identify an inner object or layer and the term frame is used to refer to an outer objec t or layer. The terms “insert” and

2006-1628 13“frame” are not used to imply any in formation regarding the nature of the manufacturing and/or assembly processes. J.A. at 1651. We agree with Miken that neither its expert’s casual reference to layers of the carbon bats as “inserts,” nor the possibili ty that these layers comprise separate structures capable of independent movement—without more —suffice to establish literal infringement. Even when we “view the evidence in a light most favorable to [Wilson] and draw all reasonable inferences in its favor,” we conclude that Wilson points to no evidence that any component of the carbon bats was ever “inserted or intended for insertion,” and thus “there is no genuine issue of material fact and [Miken] is entitled to judgment as a matter of law.” SRI Int’l v. Matsushita Elec. Corp. , 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc). Acco rdingly, we affirm the distri ct court’s judgment of no literal infringement as to the carbon bats. Wilson also argues infringement under the doctrine of equi valents. Again Wilson asserts that any bat having multiple laye rs exhibiting independent movement in the nature of a leaf spring must in fringe the “insert” limitation. As evidence of this, it offers its expert’s “load deflection tests,” which compared the performance of the accused bats as manufactured to the same bats wit h the layers bonded together with epoxy. We agree with the district court that these tests dem onstrate, at most, “the equivalency of the accused products as a whole,” Summary Judgment Opinion at 12, and that Wilson has not provided any factual basis or expert testimony to support “an objective inquiry on an element-b y-element basis” with respect to the insert limitation. Warner-Jenkinson , 520 U.S. at 40 (notin g additionally that the analysis should include “[a] focus on individual el ements and a special vigilance agai nst allowing the concept of equivalence to eliminate comple tely any such elements”). Moreover, Wilson’s expert’s

2006-1628 14explanation of the test results undermines Wils on’s position; he opine d only that “[t]his increase in deflection, from the unglued to the glued, is the measure of independent movement, and the existence of a ‘gap.’” He did not discuss the equivalence of any structural component of Miken’s bats to the “insert” of claims 1 and 18. Even according to Wilson’s own description, the load deflect ion tests merely demons trate that a stiff, fixed, multi-wall bat underper forms a bat with a multi-wall structure allowing independent movement in the nature of a leaf spring. Regardless of whether the carbon bats were designed “in order to achieve leafspring-like action as specified in the ’398 patent,” as alleged by Wilson, the ’398 patent does not claim a bat with leaf-s pring-like action, norone with separate layers capable of independent movement. Rather, claims 1 and 18 require an “insert,” and with respect to this limitation, Wilson has provided “no particularized te stimony from an expert or person skilled in the art that [(a)] specifically addressed equ ivalents on a limitation-bylimitation basis; [(b)] expl ained the insubstantiality of the differences between the patented method and the accused product; or [(c)] discuss ed the function, way, result test.” Aqua-Tex Indus., Inc. v. Techniche Solutions , 479 F.3d 1320, 1329 (Fed. Cir. 2007) (internal quotation mar ks omitted). Thus, Wilson ’s “lawyer argument and generalized testimony about t he accused product . . . fail[ s] to demonstrate a genuine issue of material fact that would prev ent the grant of su mmary judgment.” Id. Wilson also contends that t here is at least a genuine issue of material fact regarding the existence of a “gap” in the ca rbon bats. We do not address this issue because we, like the district court, find the la ck of an “insert” to be dispositive. See

2006-1628 15Summary Judgment Opinion at 13 n.4. Thus, we affirm the judgment of noninfringement with respec t to the carbon bats. b. The Non-Carbon Bats While the non-carbon bats indi sputably contain “inserts,” see id. at 10 n.2, the district court held that they did not infr inge claims 1 or 18 of the ’398 patent because they do not contain a “gap” between the insert and impac t portion. Based on the construction of “gap” as a “s eparation,” the district court found that because the IntensitE and Velocit-E bats included an insert manufactured to ha ve an outer diameter of between 2.004 to 2.008 inches and “hydraulic ally forced into a frame that has an internal diameter equal to or less than 2.000 [inches],” there was “no evidence of any spatial separation between the impact portion and insert.” Id. at 14, 16. With respect to the hhd and Viper bats, the district court noted that although microscopy images revealed spatial separations, which it charac terized as “irregular and sporadic,” these separations were “intermittent and disc ontinuous in nature,” and the images also established “intermittent and intimate c ontact throughout the interface between the impact portion and the inserts” of both the hhd and Viper bats. Id. at 17. The district court thus held that the non- carbon bats lacked a “gap,” across which the “frame [is] elastically deflectable . . . to operably engage the insert,” as required by claim 1. The district court further held that bec ause the non-carbon bats were designed to maintain an interference fit between the insert and impact portion priorto being under load, the impact portion is not “inwardly elasti cally deflectable such to establish a tight interference fit between the insert and the impact portion,” as required by claim 18. Id. at 16–17. Because Wilson did not argue this evidence, but rather relied on the load

2006-1628 16deflection tests to establish independent mo vement between the inserts and impact portions of the frames to pr ove “the leaf-spring elastic im pact response taught by the ’398 patent,” the district court held that undera construction of “gap” as a “separation” rather than as “independent move ment of the insert and im pact portion,” these bats do not infringe. Id. at 18–19. On appeal, Wilson primarily contends that t he real invention of the ’398 patent is a bat comprising a frame and an insert which “yield[] a mechanical system with characteristics similar to a leaf-spring,” and that its expert’s load deflection tests establish a gap or separati on sufficient to permit independent movement between the frames and inserts of the accused bats. It further asserts that the microscopic voids identified in certain no n-carbon bat models suffice to satisfy the “gap” limitation because “claims 1 and 18 . . . do not foreclose some contact between the insert and frame.” Hillerich , 442 F.3d at 1328. Wilson did not ra ise any arguments underthe doctrine of equivalents with respect to t hese claim limitations. Miken responds that as an initial ma tter, Wilson has offered no evidence establishing any separation in either t he Intensit-E or Veloci t-E bat models. Miken argues that none of the non-carb on bats meet claim 18’s requirement that inserts have “an outer diameter less than the inner diameter of the frame impact portion.” Miken asserts that it introduced uncontested evidence that the In tensit-E and Velocit-E bats have inserts measuring between 2.004 and 2.008 inches pr ior to insertion that are inserted into frames having inner diameter s of 2.000 inches. Miken similarly cites evidence that the hhd and Vipe r bats have inserts measurin g 2.00 inches that are inserted into frames having innerdiameters of 2.00 inches.

2006-1628 17Miken also argues that because the hhd and Viper models exhibit contact between the frames and inse rts at multiple points both circumferentially and longitudinally throughout t he impact portion, these bats can meet neither the interpretation of claim 1 requiring that the insert be perfectly circular, see id. at 1329 (noting that “in contrast to the insert of claim 1, the insert in [claim 18] need not be perfectly circular”), nor the holding that claim 18 permits contact between the frame and insert “before impact, at some point other than that at which impact occurs,” id. (emphasis added). Miken further contends that the invent or, during the prosecution of the ’398 patent, disclaimed gaps that are “discont inuous and variable shaped spaces” such as those identified in the hhd and Viper bats; that prior art bat designs would read on Wilson’s interpretation of the claims as applied to Miken’s bats; and that Wilson has provided no evidence that the microscopic void s permit the frame to “elastically deflect[] across the gap to operably engage the insert” according to claim 1, or to “elastically deflect[] such to establish a tight interference fit between the insert and the impact portion” according to claim 18. Finally, Miken argues that whether or not the accused bats permit independent movement of the insert within the frame is irrelevant to the question of literal infringement —i.e., whether a separation exists between the insert and frame. We agree with the district court’s determination for many reasons. Even when viewing the evidence in the li ght most favorable to Wils on and drawing all reasonable inferences in its favor, as we must, Wilson has failed to establish a genuine issue of material fact sufficient to preclude su mmary judgment. We agree with Miken that

2006-1628 18neither the Intensit-E nor the Velocit-E bats can infringe either claim; Wilson makes no attempt to provide evidence of any gap or separation in these models. Nor does Wilson contest the district court’s findings concerning the relative size of the inserts and frames in the non-carbon bats—none of which satisfy claim 18’s requirement that the outer diameter of the insert be less than the inner diameter of t he frame. We also agree that the undisputed presence of “intermittent and intimate cont act throughout the interface between the impact portion and the in serts of the hhd and Viper bats,” Summary Judgment Opinion at 17, precludes a finding of infr ingement of either claim 1 or 18 under our prior holding in Hillerich . And even though claim 1 permits “ some contact between the insert and frame,” even within the impact region, Hillerich , 442 F.3d at 1328–29 (emphasis added), Wilson fails to ex plain why this should encompass the substantial contact inherent in bats where s eparations are “intermittent and discontinuous” or “irre gular and sporadic.” Summary Judgment Opinion at 17. Nor does Wilson provide evidence to establish that these microscopic separations are closed upon impact as required by both asserted claims. Although Wilson attempts to link the load deflection tests to the existence of a gap or separation between the inserts and fr ames by arguing that they prove a “sufficient separation . . . to permit the i ndependent movement of t he frame and insert,” its own concessions regarding leaf-spring systems demonstrat e that the existence of leaf-spring-like bat functionality does not prove the existence of a separation between the frames and inserts. Wilson freely admit s that “there is no r equirement that the layers of a leaf-spring system . . . not be in contact. Leaf spring deformation and rebound occurs with adjac ent surfaces in contact with each other , provided that the

2006-1628 192006-1628 20 structure permits independent sliding motion.” Wilson Br. at 30 n.2 (second emphasis added); see also id. at 5 n.1 (“Leaf-springs operat e with adjacent surfaces in contact , providing that some sliding motion is permitted at their interface.”). Therefore, evidence establishing independent motion between the inserts and frames of Miken’s non-carbon bats does not demonstrate a “s eparation” as required by cl aims 1 and 18 of the ’398 patent. Because Wilson has raised no genuine issue of material fact regarding infringement under the “gap” limitation as construed by this court, we affirm the judgment of non-infringement with respect to the non-carbon bats. III. CONCLUSION For the above reasons, we conclude that the district court properly granted Miken’s motion for summary judg ment of non-infringement, and thus its judgment is AFFIRMED

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