CAFC Affirms that District Court Did Not Err in Including Limitations from Examples in Specification

October 27, 2016 – The Federal Circuit affirmed a district court’s claim construction, which resulted in ProFoot, Inc. stipulating that Merck & Co., Inc. did not infringe U.S. Patent No. 6,845,568 (“the ’568 patent”) related to a shoe insert.

On appeal, ProFoot challenged the district court’s construction of two claim terms: (1) “neutralizer,” and (2) “neutral position.”  The parties agreed during oral argument that, under the district court’s construction of “neutralizer” alone, Merck does not infringe the ’568 patent. Because the Federal Circuit agreed that the district court correctly construed “neutralizer,” it did not reach the term “neutral position.”

With respect to “neutralizer,” ProFoot argued that the district court’s construction was too narrow because the claims are silent as to what components comprise the neutralizer.  Although the Federal Circuit admitted that the asserted claims do not recite the specific components that comprise the neutralizer, it agreed with the district court that, when read in the context of the ’568 patent, this term required a device that included certain components.  The Federal Circuit looked at the claims, specification, and prosecution history, noting that the specification consistently and repeatedly disclosed that the neutralizer included a housing, protractor, and angularly adjustable plate components.

The case is captioned ProFoot, Inc. v. Merck & Co., Inc., in the United States of Appeals for the Federal Circuit, 2016-1216.

By:  Christopher J. Stankus

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