1. Whether claim language should be given its plain meaning in the absence of a specific contrary meaning in the claim.
2. Whether the doctrine of equivalents may allow infringement beyond the literal language of the claims.
1. Yes. Claim language should be given its plain meaning where the patentee fails to specifically define the term differently. Functional language cannot void the plain meaning of claim language.
2. No. The doctrine of equivalents is limited, as a matter of law, to subject matter literally contained in the individual claims.
K-2 Corp. is the owner of United States Patent No. 5,437,466 ("the '466 patent) which is directed to an in-line skate that has a soft, pliable inner "bootie" or "shoe" that is "permanently affixed" to the base of the skate in the heel and toe areas. K-2 Corp. filed suit against Salomon S.A. and Salomon/North America, Inc., for infringement of the '466 patent. K-2 Corp. now appeals a summary judgement verdict of noninfringement in favor of Defendant. The District Court held that no reasonable jury could find that Defendant's "TR" in-line skate infringed the '466 patent literally or under the doctrine of equivalents. The Federal Circuit affirmed the District Court's interpretation of the relevant claim language and affirmed the ruling that the doctrine of equivalents could not be used to reach the accused device.
Both parties agreed that the dispositive issue in this case was whether a removable screw in the heel of the "TR" in-line skate fell within the "permanently affixed" limitations of the '466 patent claims. K-2 Corp. argued, in support of its assertion that Salomon literally infringed the '466 patent, that the proper meaning of "permanently affixed" is defined by the functional language following the limitation in the claim, specifically "preventing sliding in a horizontal dimension." The Federal Circuit, while noting that functional language operates as a claim limitation, determined that functional language must be read in a way so as not to void the meaning of any terms in the claim language. K-2 Corp. asserted in the alternative that the patentee's definition of "permanently affixed" was set forth in the claim specifications. The Federal Circuit also rejected this assertion, stating that it would not deviate from the ordinary and accustomed meaning, except where the patentee has defined the term with "reasonable clarity, deliberateness, and precision." The Court found that the '466 patent's general description of "permanently affixed" failed to meet this standard.
K-2 Corp. asserted, in the alternative, that the Salomon skate heel fixation device was substantially equivalent to that of the '466 patent under the doctrine of equivalents. The Federal Circuit rejected this assertion for two reasons. First, the doctrine of equivalents is limited to subject matter that could have initially been legally patented. In the present case, the removable heel screw of the Salomon skate was an obvious variation of two prior art references and therefore could not have been originally patented by K-2 Corp. Second, the doctrine of equivalents cannot be evoked where a patentee makes amendments or statements during the course of prosecution or reexamination that would lead someone of ordinary skill in the art to conclude that the patentee surrendered the subject matter in question. K-2 Corp. had added the "permanent affixed" language, relinquishing its broader claim encompassing removable screw attachments, to distinguish the '466 patent from prior art.
Prepared by the liibulletin-patent Editorial Board.