Claimed "Insert" Limitation Creates Product by Process

Miken Composites v. Wilson Sporting Goods (Fed. Cir. 2008)

This case involve the same patent that prompted Judge Rader’s intriguing 2006 koan:

“while a claim is not to be construed in light of the accused device,
in an infringement case,
it must inevitably be construed in context of the accused device.”

See Wilson v. Hillerich.

The Wilson patent is directed to a type of softball bat that includes a internal structural inserts that allow for a lighter and stronger bat.  On summary judgment, Miken won a declaratory judgment non-infringment. In particular, the lower court found that Miken’s bats did not contain the required “insert.” Rather the internal structural members of thte Miken composite bats were created using a successive layering process.

Product by Process: Normally, a device claim can be infringed regardless of the construction methods used.  Miken argued that in this case, the patentee’s inclusion of the “insert” claim language transformed that portion of the claim into a product-by-process.

On appeal, the CAFC agreed with Miken that the insert limitation required an element that was “put or fit into something else.” Consequently, Miken’s products cannot infringe because the accused structural members were never “inserted or intended for insertion.”

Vitiation and DOE: Even without an insert, Miken’s products are arguable equivalents of the Wilson invention. However, the issue of ‘equivalent as a whole’ is irrelevant to whether a product infringes under the doctrine of equivalents. Rather, the all elements rule requires that each element of a patent claim be infringed either literally or by an equivalent element found in the product.  Here, that means that to infringe under the DOE, Miken’s bat must have an element that is the structural and functional equivalent of an insert.  Because Wilson did not provide evidence of such an element, the CAFC affirmed the lower court’s holding of non-infringement under the DOE.

Comments

[Sean]

That should be "insertion," not "insertation."

[A.Non.E.Mous]

I don't like this result. The fact that a noun used to describe an element is also a verb should not limit the meaning of the noun by the meaning of the verb.

For example, a claim that recites an "opening" should not require that the opening be formed by "opening" the material. The opening could also be formed by removing the material by drilling, milling, etc.

[BigGuy]

Unfair comparison. "Open" is an adjective as well as a verb; the adjective does NOT imply that the verb "open" has been or will be performed. "Opening" as a noun can simply mean "something that is open." You can't have an "insert" (noun) that either has not been inserted or is not intended to be inserted. The noun "insert" ALWAYS implies the action.

The claim required an insert. Nothing in the accused product was ever inserted. The patentee either gets the accused on DOE, or nothing at all.

Affirmed.

[Malcolm Mooney]

I'm not familiar with the prior art issues the patentee had to deal with but it seems that "insert" is generally a poor (unnecessarily narrow) word choice for a claim directed to the final bat "product."

[Matt]

This is a startling result. "Insert" is a very common term for things that are not necessarily inserted. I take this result to mean that it is irrelevant what a person of skill in the art (such as a mold maker) would call a part. It seems pursuant to this precedent that if there is any verb implied in the term, it will be construed against you if need be.

Serious implications in the mechanical arts.

The mind reels. "Your honor, the key on our shaft doesn't unlock anything!" Eesh.

[BigGuy]

Another off-target comparison. A standard definition for "key" is "a small piece of wood or metal used as a wedge or for preventing motion between parts." Provided your specification is consistent with that, then you don't have a problem. As the court noted in this case, however, the specification consistently used the word "insert" (noun) as something "inserted or intended for insertion." There was no other standard definition, nor did the specification provide an express definition. Indeed, the previous owner of the patent defined the term, in a previous case, as "anything put or fit into something else." This is a plain and simple case of claim construction. The current patent owner tried to get more than he was entitled to. He lost. A nice job by the District Court.

[Ed]

Help. I thought it was still not entirely clear whether process limitations were considered in construing a product by process claim for infringment purposes. I remember Atlantic Thermoplastics and another case being somewhat in conflict.
Where am I confused here? The decision seems not to deal with any of that.

[hp]

note to self: add "insert" to list of words to never, ever, put in patent claim.

[Raoul]

This is really a poor decision. "Insert" is a common term which easily includes structures that are generally inside of another structure regardless of whether the first structure was inserted or whether the second structure was built around the first.

I agree with hp, I'll have to quit using "insert" in claim terms and resort to using "doohicky" or "thingamabob" instead.

[SoCalIPNoobFormerExaminer]

Never say never,

Remember Philips? -->Similarly to how many discussions are off in this forum because few people go read the entire opinion of the court along with the associated spec, a claim must be read in light of the specification.

Well said BigGuy

"This is a plain and simple case of claim construction. The current patent owner tried to get more than he was entitled to. He lost. A nice job by the District Court."

[Ed]

See my comment above re product by process and Atlantic Thermoplastics above. Does anybody have any thoughts on that? This is an area of interest to me and I wonder whether the law is clearer now than the last time I considered it.
Thanks!

[jfbpatent]

I have read the `398 patent, and it is clear to me that the inventors and patent attorney had a very narrow view of the invention at the time the application was filed. There are a number of alternative embodiments relating to the "insert" and the bat fabrication, but none suggest the successive molding process used to fabricate the inserts and frames of the accused "carbon bats". The patent specification describes separately fabricating the bat "frame" and the insert, fitting the insert into the frame cavity, and coupling them together. Assuming no anticipatory prior art, an experienced patent attorney would have readily imagined the alternative order of fabricating the insert first and then forming the frame over the insert and challenged the inventors to describe such a fabrication. Ideally, an enabling embodiment would have been described, and the attorney would have defined "insert" in a way to cover the additional embodiment. The CAFC opinion suggests that this should have been done citing Hobanas AG.

Query: if the attorney or inventors had merely suggested an alternative order of fabrication broadly covering the carbon bat fabrication, and defined "insert" to embrace it, would the patent claims be subject to a lack of enablement attack per Auto. Tech. Intl. (despite using concrete rather than "means" terms)?

To avoid the result of this case, the body of recent CAFC decisions places a heavy burden on the patent attorney to build a comprehensive detailed disclosure of and claims covering alternative inventive embodiments from inventor's disclosures that are typically either (or both) narrowly focussed on the current embodiment or so broadly stated as to encompass the entire field. Of course, this effort will be wasted if the CAFC finds error in the prosecution of the claims in any of the myriad of ways it has seized upon in recent years.