Dananberg v . Payless Shoesource CV-00-34-PB 03/30/06
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE
Howard J. Dananberg, D.P.M.
v. Case N o . 00-cv-34-PB
Opinion N o . 2006 DNH 039
Payless ShoeSource, Inc.
MEMORANDUM AND ORDER
Howard Dananberg owns U.S. Patent N o . 4,597,195 (issued July
1 , 1986) (“‘195 patent”). His lawsuit claims that Payless
ShoeSource, Inc.’s Pre-Redesign One-Piece Insole infringed the
‘195 patent.1 Payless challenges this claim in a motion for
summary judgment.
I. BACKGROUND
A. The ‘195 Patent
The ‘195 patent identifies various ways in which a shoe sole
or insole can be designed to improve gait. As I explained in
1
The parties agree that Payless’s other infringement claims
have been resolved by prior rulings. See Order granting parties’
joint motion for partial summary judgment on non-infringement
dated November 1 4 , 2005; Def.’s Mem. in Supp. of Mot. for Summ.
J. at 1 n.1.
prior orders, the central idea that underlies the ‘195 patent is
that plantarflexion2 and eversion3 of the first metatarsal head4
can be promoted, and the wearer’s gait improved, by providing an
area of reduced support in a shoe sole or insole under the first
metatarsal head. Order dated March 3 0 , 2004 (Doc. N o . 104) at 3 .
Claim 1 of the ‘195 patent claims:
A human shoe sole having a foot supporting upper
surface, a portion of said sole, extending from said
upper surface into said sole and underlying
substantially only the location of the first metatarsal
head of a wearer’s foot, being of reduced support
relative to the remainder of said sole to provide less
resistance to downward motion than the remainder of
said surface to facilitate eversion and plantarflexion
of said first metatarsal head, wherein said portion
does not extend forward of said first metatarsal head.
‘195 patent col. 9, l l . 50-59 (emphasis added). The ‘195
2
Plantarflexion is a movement that occurs during
contraction of the peroneus longus, the tendon that connects the
heel and first metatarsal head. The contracting tendon pulls the
first metatarsal head downward and back toward the heel, creating
increased foot arch, as when one “points the toes.”
3
Eversion is the medial rotation of the metatarsal bone so
that the sole of the foot twists outward and upward away from the
midline of the body.
4
The first metatarsal is the long bone that runs from the
base of the “great toe” (the big toe) up the arch of the foot
toward the ankle. The part of the metatarsal bone closest to the
toe is the metatarsal “head.” The “metatarsal-phalangeal joint”
is the joint between the first metatarsal head and the proximal
phalanx of the great toe.
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patent’s other independent claims also require an area of reduced
support “underlying [the] first metatarsal head.”5 ‘195 patent
col. 1 0 , l l . 43-44 (claim 1 0 ) ; see also id. col. 1 0 , l . 66 (claim
1 2 ) ; col. 1 2 , l l . 1-2 (claim 1 3 ) . 6 The area of reduced support
may be achieved by inserting a soft material in the sole or
creating a hollow in the sole under the first metatarsal head.
See
id. col. 6, l l . 19-21; col. 7 , l l . 13-17.
B. The Accused Product
The Pre-Redesign One-Piece Insole has a concave depression
(or “dimple”) that extends downward from the upper surface of the
insole. The dimple is located behind rather than vertically
beneath the location of the first metatarsal head.
The issue presented by Payless’s motion for summary judgment
5
The other independent claims do not include the term
“substantially” and thus are narrower than claim 1 . See Playtex
Prods., Inc. v . Procter & Gamble Co., 400 F.3d 9 0 1 , 907 (Fed.
Cir. 2005) (“The term ‘substantial’ is a meaningful modifier
implying ‘approximate,’ rather than ‘perfect.’” (quotation
omitted)). Because the accused product does not infringe claim 1
and the remaining claims are narrower on the point in question
than claim 1 , I also grant Payless summary judgment with respect
to these claims.
6
Payless contends that only claims 1 and 10 are in dispute;
Dananberg maintains that the accused insole also infringes claims
12 and 1 3 .
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is whether the dimple on the accused insole is “underlying
substantially only the location of the first metatarsal head.”
II. STANDARD OF REVIEW
A. Summary Judgment
Summary judgment is appropriate “if the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(c).
The party moving for summary judgment “bears the initial
responsibility of . . . identifying those portions of [the
record] which it believes demonstrate the absence of a genuine
issue of material fact.” Celotex Corp. v . Catrett, 477 U.S. 3 1 7 ,
323 (1986). Once the moving party has met its burden, the burden
shifts to the adverse party to “produce evidence on which a
reasonable finder of fact, under the appropriate proof burden,
could base a verdict for i t ; if that party cannot produce such
evidence, the motion must be granted.” Ayala-Gerena v . Bristol
Myers-Squibb Co.,
95 F.3d 8 6 , 94 (1st Cir. 1996). The “adverse
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party may not rest upon the mere allegations or denials of the
adverse party’s pleading, but the adverse party’s response . . .
must set forth specific facts showing that there is a genuine
issue for trial.” Fed. R. Civ. P. 56(e); see also Anderson v .
Liberty Lobby, Inc., 477 U.S. 2 4 2 , 256 (1986).
B. Patent Infringement
“A patent infringement analysis involves two steps: 1 ) claim
construction; and 2 ) application of the properly construed claim
to the accused product.” Techsearch, L.L.C. v . Intel Corp., 286
F.3d 1360, 1369 (Fed. Cir. 2002) (citing Markman v . Westview
Instruments, Inc.,
52 F.3d 9 6 7 , 976 (Fed. Cir. 1995)). I decide
the first step, claim construction, as a matter of law. See id.
“To prove infringement, the patentee must show that the accused
device meets each claim limitation, either literally or under the
doctrine of equivalents.” Playtex, 400 F.3d at 906. Determining
whether the accused product meets each claim limitation is a
question of fact. Techsearch,
286 F.3d at 1369-70. Summary
judgment of non-infringement is appropriate “where the patent
owner’s proof is deficient in meeting an essential part of the
legal standard for infringement, because such failure will render
all other facts immaterial.”
Id. at 1369 (citations omitted).
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C. Claim Construction
The words of a patent claim “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, i.e., as of the
effective filing date of the patent application.” Phillips v .
AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005), cert. denied,
2006 WL 386393 (U.S. Feb. 2 1 , 2006). To ascertain this meaning,
courts examine the so-called intrinsic evidence, including the
claim language, the patent specifications and the prosecution
history. Id. at 1313. Extrinsic evidence such as dictionaries,
treatises and expert testimony may also be useful if “considered
in the context of the intrinsic evidence.” Id. at 1319.
Although there is “no magic formula or catechism for conducting
claim construction,” id. at 1324, the Federal circuit has made
clear that “‘[t]he construction that stays true to the claim
language and most naturally aligns with the patent’s description
of the invention will b e , in the end, the correct construction.’”
Id. at 1316 (quoting Renishaw PLC v . Marposs Societa’ per Azioni,
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158 F.3d 1243, 1250 (Fed. Cir. 1998).
III. ANALYSIS
Payless’s motion for summary judgment turns on an unresolved
question of claim construction. Payless argues that the phrase
“underlying substantially only the location of the first
metatarsal head” describes the area of the shoe sole that lies
vertically beneath the first metatarsal head. Dananberg argues
that the phrase refers to the area of the shoe sole that is
“located along the path that the first metatarsal head will
actually follow” during plantarflexion. Payless is entitled to
summary judgment if its definition is correct because it is
undisputed that the dimple in the Pre-Redesign One-Piece Insole
is not vertically beneath the first metatarsal head.
I adopt Payless’s proposed interpretation because its
position is supported by substantial evidence in both the
specification and the prosecution history. The patent abstract
describes the invention as follows: “A human shoe sole has a
foot engaging surface, that area of the sole immediately
underlying the first metatarsal head being designed so that the
first metatarsal head is free to plantarflex under load . . . .”
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‘195 patent Abstract (emphasis added). Other parts of the
specification refer to the area of reduced support as being
“placed directly under the first metatarsal head,” id. col. 1 , l .
4 5 , and “positioned under the head of the first metatarsal,”
id.
col. 6, l l . 23-25. Nothing in the specification supports
Dananberg’s contrary contention that the entire area of reduced
support may be behind the first metatarsal head and not directly
beneath i t .
The prosecution history also reveals that the location of
the area of reduced support was critical to the patentability of
Dananberg’s invention. Dananberg’s original application claimed,
in part: “A human shoe sole having a foot engaging surface, that
area of the sole immediately underlying the first metatarsal head
being softer than the remainder of the midsole material . . . .”
Payless SUF Ex. L , Prosecution History Tab 1 (Application N o .
598,712) at 2 3 , l l . 1-3 (claim 1 ) (emphasis added). This claim,
along with the other independent claims, was rejected as being
anticipated by the prior art. Prosecution History Tab 4
(Examiner’s Action dated March 2 0 , 1985) ¶¶ 8-9. In response,
Dananberg canceled the original seven claims and added fourteen
new claims. To distinguish the prior art that formed the basis
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of the examiner’s rejection of the original claims, Dananberg
stressed that the area of reduced support must be “only
substantially under the location of the first metatarsal head as
claimed” in order to achieve the proper eversion/plantarflexion
movement taught by the invention. Prosecution History Tab 6
(Response dated July 2 2 , 1985) at 9 (emphasis omitted). New
claim 8 , which eventually became claim 1 of the patent, was later
amended to include the “wherein” clause, which provides that
“said portion does not extend forward of said first metatarsal
head.” This clause was added to distinguish the invention from
German Patent N o . 660,551, which has a flexible area of the sole
that extends under the ball of the big toe. Although the
location of the area of reduced support was crucial to
Dananberg’s invention, there is nothing in the prosecution
history to support his contention that the entire area of reduced
support may be placed behind the first metatarsal head.
Dananberg offers scant evidence to rebut Payless’s proposed
interpretation. His position appears to be that the disputed
phrase should be read to refer to the portion of the sole that is
behind and to the rear of the first metatarsal head because the
patent was intended to promote plantarflexion and his expert
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contends that locating an area of reduced support on the shoe
sole behind the first metatarsal head will produce the intended
result. I reject this argument. A patentee may not rely on
expert testimony to change the meaning of a patent term simply
because the expert can conceive of other ways than the patent
specifies to achieve the result intended by the patentee. Here,
the disputed phrase has a clear meaning when it is construed as a
part of the patent as a whole. The extrinsic evidence on which
Dananberg relies is simply not sufficient to call this
interpretation into doubt.7 Because the undisputed evidence
demonstrates that the Pre-Redesign One-Piece insole at issue does
not infringe the ‘195 patent when it is properly construed, I
agree that Payless is entitled to summary judgment.8
7
Dananberg also relies on Figure 8 of the patent to
support his interpretation. Figure 8 includes an arrow
indicating the path that the first metatarsal head follows during
plantarflexion. The arrow does not identify the location of the
area of reduced support on the shoe sole. Instead, the area of
reduced support depicted on Figure 8 is substantially beneath the
first metatarsal head on a vertical plane. Thus, the figure does
not support Dananberg’s proposed interpretation.
8
Dananberg has not argued in response to Payless’s motion
for summary judgment that the Pre-Redesign One-Piece Insole
infringes the ‘195 patent under the doctrine of equivalents.
Thus, I do not consider how, if at all, the doctrine of
equivalents might apply in this case.
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IV. CONCLUSION
Payless’s motion for summary judgment of non-infringement
(Doc. N o . 151) is granted. All other pending motions are denied
as moot. The clerk is instructed to enter judgment accordingly.
SO ORDERED.
/s/Paul Barbadoro
Paul Barbadoro
United States District Judge
March 3 0 , 2006
cc: Lawrence K. Kolodney, Esq.
Robert E . Hillman, Esq.
W . Wright Danenbarger, Esq.
Peter Kirk, Esq.
Bernadette McGlynn Reilly, Esq.
David R. Barnard, Esq.
David V . Clark, Esq.
James P. Bassett, Esq.
R. Cameron Garrison, Esq.
Stephen J. Horace, Esq.
William R. Hansen, Esq.
William A . Rudy, Esq.
Philip Lorenzo, Esq.
Michael Roche, Esq.
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Attachment
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