Dananberg v. Payless ShoeSource CV-00-34-B 03/30/04

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Howard J. Dananberg

v. Civil No. 00-34-B

Payless ShoeSource, Inc.

MEMORANDUM AND ORDER

Howard Dananberg claims that Payless Shoe Source, Inc.

("Payless") is currently selling shoes that infringe

597, 195 ("''195 patent") . In this Memorandum and Order, I

construe several disputed terms in Dananberg's patent.

I.

The '195 patent identifies various ways in which a shoe sole

or insole can be designed to improve gait. To understand the

patent, some background information is necessary.

A. General Terminology

A human forefoot consists of phalanges, metatarsals, and

sesamoid bones. Phalanges are toe bones. The big toe, called

the "great toe" or the hallux, has two phalanges. The phalanx under the nail is the distal phalanx and the other phalanx is the

proximal phalanx. The long bones that comprise the majority of

the forefoot are metatarsals. They run from the base of the toe

up the arch toward the ankle and are numbered one through five.

The first metatarsal connects to the great toe. 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.

Together, the first metatarsal, proximal phalanx, and distal

phalanx comprise the first ray. Underneath the metatarsal head

lie two sesamoid bones. The one closest to the instep edge of

the foot is the medial sesamoid and the one closest to the second

metatarsal is the lateral sesamoid.1 The dorsal view of the foot

is a "top down" view, or what one sees when looking at one's own

foot while standing. A plantar view is "bottom up," or looking

at the sole of a foot.

1 In general, the terms medial and lateral denote proximity to an imaginary "medial" line down the middle of the body. "Medial" indicates relative close proximity to that midline. "Lateral" indicates distance from the line, or relative proximity to outer edges of the body.

- 2 - Plantarflexion is a movement that occurs during the

contraction of the tendon (the peroneus longus) 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. Flexing the great toe upward plantarflexes

the foot. Flexing the foot downward dorsiflexes the foot, or

pushes the first metatarsal head in a dorsal direction. Eversion

and inversion are rotations of the metatarsal bone medially and

laterally, respectively. Generally these motions of the first

ray occur during toe-off, which is the last phase of gait before

another step begins.

B. The '195 Patent

The central idea that underlies the '195 patent is that

eversion and plantarflexion of the first metatarsal head can be

promoted - and hence gait can be improved - by providing a

portion of reduced support in a shoe sole or insole under the

first metatarsal head. Only two of the '195 patent's thirteen

claims are presently at issue. The first, claim 1, states:

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 -3- 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 metatarsal head, wherein said portion does not extend forward of said first metatarsal head.

The second, claim 10, states:

A human shoe sole to facilitate downward motion of the first metatarsal head, of a human foot supported by said sole, relative to the rest of said foot to promote eversion and plantarflexion of said first metatarsal head, said sole having an upper surface for supporting said foot, a portion of said sole extending downward from said upper surface and underlying said first metatarsal head being of reduced support relative to the remainder, including those portions under the other metatarsal heads and the entire hallux, of the sole.

II.

Claim construction presents a guestion of law for the court

to resolve. Liguid Dynamics Corp. v. Vaughan Co.,

(Fed. Cir. 2004). The starting point is the language of the

claim itself.

"There is a 'heavy presumption' that the

terms used in claims 'mean what they say and have the ordinary

meaning that would be attributed to those words by persons

skilled in the relevant art.'" Superguide Corp. v. DirecTv

Enters., Inc.,

(Fed. Cir. 2004) (guoting Tex.

Digital Sys., Inc. v. Telegenix, Inc.,

(Fed.

- 4 - Cir. 2002). Dictionary definitions are "often useful" in this

process. Id. at 875. Once a range of possible meanings has been

identified, the context in which a disputed term is used in the

claims and the specification must be carefully scrutinized to

determine the preferred interpretation. See Int'l Rectifier

Corp. v. IXYS Corp.,

(Fed. Cir. 2004). While

the specification must always be considered, claim terms

ordinarily are not limited to the embodiments disclosed in the

specification. See Amgen Inc. v. Hoechst Marion Roussel, Inc.,

(Fed. Cir. 2003). Extrinsic evidence should

be considered only when ambiguity cannot be resolved by

consulting the intrinsic evidence. See SunRace Roots Enter. Co.

v. SRM Corp.,

, 1307 (Fed. Cir. 2003).

A court may depart from ordinary meaning in two

circumstances. If the patentee has acted as his own

lexicographer by clearly defining the term in the specification,

the court must adopt that meaning selected by the patentee. See

Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 30

(Fed. Cir. 2002) . Similarly, a patentee is

not entitled to rely on an interpretation that he clearly

- 5 - surrendered during the prosecution of the patent. See Superquide

Corp.,

.

I apply these interpretive standards construing the '195

patent.

III.

Claims 1 and 10 are limited in several ways. The parties

disagree as to the meaning of three similar limitations in each

claim.

A. "Relative to the Remainder"

Claims 1 and 10 each state that a portion of the shoe sole

that underlies the first metartasal head and extends from the

upper surface of the sole into the sole must be "of reduced

support relative to the remainder" of the sole. The parties

offer different interpretations for this limitation.

Payless argues that the limitation plainly rules out any

shoe sole design in which any portion of the shoe sole is of

equal or reduced support when compared with the portion of the

sole that underlies the first metatarsal head. As Payless sees

it, claims 1 and 10 divide the shoe sole into two zones, one

being the portion underlying the first metatarsal head and - 6 - extending from the top of the sole into the sole, and the other

being what remains of the sole. Accordingly, Payless argues,

when the claims refer to the "remainder" of the sole, they are

referring to the entire sole other than the portion that

underlies the first metatarsal head.

Dananberg argues that "remainder" refers only to the portion

of the sole that is adjacent to the portion that underlies the

first metatarsal head. Thus, he argues that a shoe sole design

could infringe the '195 patent even though it provides for a

second area of reduced support elsewhere on the shoe sole. His

argument is that "remainder" must be construed in light of the

stated purpose of the claims, which is to promote eversion and

plantarflexion. Because the only two portions of the sole that

affect eversion and plantarflexion are the portion that underlies

the first metatarsal head and the portion adjacent thereto,

"remainder" must refer only to the adjacent portion.

I adopt Payless's argument on this issue. In common usage,

"remainder" means "something that remains or is left." The

Random House Dictionary of the English Language 1629 (2d ed.

1987). In both claims 1 and 10, what remains of the sole after

the portion of the sole underlying the first metatarsal head is - 7 - excluded is the entire sole other than the excluded portion.

Nothing in the claim language, the specification or the

prosecution history suggests otherwise and Dananberg has not

identified any extrinsic evidence to support his view. While

Dananberg may well be correct in claiming that portions of the

sole that are unconnected to the portion underlying the first

metatarsal head have no impact on eversion or plantarflexion,

that fact, if it proves to be true, does not permit me to read

into the claim language a meaning that it will not reasonably

bear. Accordingly, with respect to claim 1, I construe the

limitation at issue to mean the entire shoe sole other than the

"portion . . . extending from said upper surface into said sole

and underlying substantially only the location of the first

metatarsal head . . . wherein said portion does not extend

forward of said metatarsal head." With respect to claim 10, I

construe the phrase to mean the entire shoe sole other than the

portion of the sole "extending downward from said upper surface

and underlying said first metatarsal head . . . ."

B. "Extending From"

Claim 1 limits the portion of the sole that is of reduced

support to the portion "extending from said upper surface into said sole . . . The corresponding language in claim 10

provides that the portion of reduced support is the portion

"extending downward from said upper surface . . . The parties

disagree as to the meaning of these limitations.2

Payless argues that the limitations encompass only

structures that are of reduced support at the upper surface of

the shoe sole and extend into the sole. Thus, it argues that the

claims are limited to designs that either leave a void in the

shoe sole at the upper surface or that have material at the upper

surface that is of reduced support relative to the remainder of

the sole.

Dananberg contends that the limitations are functional and

thus include all structures that produce reduced support at the

upper surface of the sole. Under Dananberg's interpretation, a

structure that produces reduced support under the first

metatarsal head at the surface of the sole by creating a void in

2 The claims also limit the portion of the shoe sole that must be of reduced support in other ways. For example, claim 1 states that the portion of reduced support must be "underlying substantially only the location of the first metatarsal head . . . wherein said portion does not extend forward of said first metartasal head." Claim 10 similarly states that the portion of reduced support must be "underlying said first metatarsal head." These limitations are not currently in dispute. the midsole or the underside of the sole would be covered even if

the upper surface of the sole is comprised of material of

equivalent resistance to the remainder of the sole.

I decline to resolve this dispute because it has not been

adequately briefed. Payless focuses on prosecution history that

arquably limits the disputed lanquaqe to avoid prior art3 but

3 Payless asserts that Dananberq surrendered his riqht to his proposed interpretation in order to overcome

which was issued to Kevin Lawlor. Lawlor teaches a shock absorbinq "inverted cup" structure on the bottom of a shoe sole under the first metatarsal head. The examiner raised Lawlor durinq an interview with Dananberq on Auqust 21, 1985. Dananberq responded by explaininq that his invention did not read on Lawlor because he was claiminq a structure of reduced support at the upper surface of the shoe sole extendinq into the sole, whereas Lawlor claimed a structure that, if anythinq, increased resistance at that location. After hearinq Dananberq's presen­ tation, the examiner "suqqested that [Dananberq's] claims be further amended to distinquish over the art of record by defininq the area of reduced support underlyinq the first metatarsal head as extendinq from the upper foot supportinq surface of the sole and defininq this area as beinq provided to promote downward motion of the first metatarsal head to encouraqe eversion and plantarflexion thereof." Payless Ap p . Ex. B(8) at 9. Dananberq included the suqqested amendment in claim 1 and claim 10 (then claim 22) but did not similarly amend what was then claim 14. As a result, the examiner rejected claim 14 on the qround that it "does not call specifically for the area of reduced support of the sole to extend from the soles [sic] upper surface into the sole . . . ." Payless App. Ex. B(ll) at 3. Payless arques that these excerpts clearly demonstrate that Dananberq surrendered any riqht to his proposed interpretation durinq the prosecution history in order to avoid Lawlor. I disaqree. The claims as amended do not read on Lawlor reqardless of which of the two competinq interpretations is adopted. Under - 10 - does not explain why the disputed language is structural rather

than functional. Dananberg, in turn, explains why his

interpretation is not foreclosed by prior art, but does not

otherwise support his position that the language in guestion is

functional. Even if I were to determine that the disputed

language is functional, as Dananberg suggests, I would have to

determine whether the claims disclose sufficient structure to

completely perform the recited function or whether, instead, the

claims contain means-plus-function limitations under

5 6. See, e.g., Al-Site Corp. v. VSI Int'l, Inc.,

(Fed. Cir. 1999). This issue is potentially

significant because a means-plus-function claim element is

restricted to "corresponding structure, material or acts

described in the specification or eguivalents thereof,"

5 6, and the specification does not appear to

disclose structures of the type envisioned by Dananberg's

interpretation. Thus, it is unclear whether Dananberg could

prevail even if I accepted his view that the disputed language is

Payless's interpretation, Lawlor is distinguished because the portion of reduced support in Lawlor is not at the upper surface of the sole. Under Dananberg's interpretation, Lawlor is distinguished because it does not describe a structure that results in reduced support at the upper surface of the sole. - 11 - functional. These issues have not beenadequately briefed and I

decline to resolve them on my own.

C. "Promote or "Facilitate"

Claims 1 and 10 also contain limitations that bothparties

treat as functional.4 Claim 1 provides that the portion of the

sole that is of reduced support must "facilitate eversion and

plantarflexion of said metatarsal head . . . ." Claim 10 states

that the portion of reduced support must "promote eversion and

plantarflexion of the first metatarsal head . . . ." Payless

bases two arguments on these limitations. First, it contends

that the limitations are means-plus-function claim elements that

restrict the claims to the embodiments disclosed in the

specification and equivalents thereof. Alternatively, Payless

argues that the disputed language limits the claims to designs

that promote eversion and plantarflexion to a greater degree than

prior art. I examine each argument in turn.

1. Means-Plus-Function

Under

5 6, an inventor may express an

element of a claim "as a means or step for performing a specified

4 I accept the parties' position for purposes of analysis.

- 12 - function without the recital of structure, material, or acts in

support thereof . . .

When a claim element is expressed

in such terms, however, the claim is restricted to the

"corresponding structure, material, or acts described in the

specification and equivalents thereof."

The Federal Circuit has developed an analytical framework

for determining whether a claim element is subject to § 112 5 6.

If the element uses the terms "means" or "step" in combination

with a recited function, it is presumed to be a means-plus-

function element. See Al-Site Corp.,

.

Conversely, "treatment as a means-plus-function claim is

generally not appropriate" if the claim element does not contain

these terms.

The question ultimately turns on whether the

claim element discloses sufficient structure to completely

perform the recited function.

If it recites a function and

discloses sufficient structure to entirely perform the recited

function, it will not be treated as a means-plus-function claim

element regardless of whether it speaks of "means" or "steps" for

performing the recited function.

Neither of the claims at issue here use the terms "means" or

"steps." I am in no position, however, to determine whether the - 13 - claims recite sufficient structure to completely perform the

recited functions until I determine whether the language in claim

1 limiting the portion of reduced support to the portion

"extending from the upper surface into said sole" and the

corresponding language in claim 10 limiting the portion of

reduced support to the portion "extending downward from said

upper surface" are themselves functional or structural

limitations. As these subsidiary guestions have not been

properly briefed, I cannot determine whether to treat the

admittedly functional statements at issue here as means-plus-

function claim elements. Thus, I also decline to resolve this

issue.

2. "Promote" or "Facilitate"

Payless argues that the functional limitations cover only

designs that promote plantarflexion and eversion to a greater

degree than prior art. I reject this argument because it is

based on the flawed premise that the limitations would otherwise

be meaningless.

Assuming without deciding that the claim elements at issue

disclose sufficient structure to completely perform the recited

function of promoting eversion and plantarflexion, the - 14 - limitations are meaningful to the extent that they serve the

recited functions to any degree. I can find nothing in the

claims themselves, the specification or the prosecution history

that support Payless's argument. Accordingly, I reject its

position and instead give the terms in guestion their ordinary

meaning.

CONCLUSION

I grant in part and deny in part Payless's motion for

summary judgment on Markman interpretation (Doc. No. 77). I deny

all other pending motions without prejudice.

The clerk shall schedule a status conference to discuss the

next steps in this litigation.

SO ORDERED.

Paul Barbadoro Chief Judge

March 30, 2004

cc: W. Wright Danenbarger, Esg. James P. Bassett, Esg. William A. Rudy, Esg.

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