The opinion of the court was delivered by: Hon. Harry D. Leinenweber
MEMORANDUM OPINION AND ORDER
Before the Court are the parties' briefs on construing Claim 7 of U.S. Patent No. 5,645,495 (hereinafter, the "'495 Patent"). The Court's construction and its reasoning are stated herein.
Saso Golf, Inc. (hereinafter, "Saso") accuses Nike, Inc. (hereinafter, "Nike") of infringing its '495 Patent for a golf club. The effective filing date for Saso's patent is December 21, 1991. The patent was granted on July 8, 1997. Saso's invention is a golf club that purports to improve the flying distance and directional stability of a hit golf ball by, among other things, moving the center of gravity of the club's head away from the toe end and toward the heel end. The invention does this by decreasing the volume of the head at the toe end and increasing the volume at the heel end. Although the patent applies to both irons and metal wood clubs, the present controversy concerns only the patent's application to metal wood clubs.
The litigation is now at the claim construction stage, and the parties agree that Claim 7 of the patent (the "Claim") is the only disputed claim. Claim 7 reads as follows:
7. A golf club comprising: a metallic wood type head including a cylindrical hosel portion formed integrally therewith; said metallic wood type head having a heel side and a toe side, said metallic wood type head having a hitting surface extending from the toe side to said heel side, the hitting surface having substantially the same curvature along a transverse direction as a longitudinal direction, said metallic wood type head further comprising a toe, a heel, and a back side profile shape extending from the toe side to the heel side, said back side profile shape between the toe and a most rearwardly point of said metallic wood type head having a radius of curvature that is larger than the radius of curvature of said back side profile shape between the most rearwardly point of said metallic wood type head and the heel.
The parties dispute the meanings of ten terms in the Claim: "hitting surface," "toe," "heel," "toe side," "heel side," "back side profile shape," "most rearwardly point," "a radius of curvature," "the radius of curvature," and "golf club."
Claim interpretation is a question of law to be determined by the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976-78 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 372 (1996). Judicial construction is reserved for "when the meaning or scope of technical terms and words of art is unclear and in dispute." Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004). It is well settled that in interpreting an asserted claim, a court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
As a first step, a court should look to the words of the claims themselves to define the scope of the patented invention. Id. Although words in a claim are generally given their ordinary and customary meanings, a patentee may use terms in a manner other than their ordinary meaning, as long as the patent specification clearly states the special definition. Id. A court must construe the claim language according to the meaning of the words to a person skilled in the art as of the application date. See, W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983).
Second, to determine if a patentee has used any claim terms in a manner inconsistent with the ordinary and customary meaning, the court must review the patent specification. Vitronics, 90 F.3d at 1582. Claims must be analyzed in view of the specification. Markman, 52 F.3d at 979. A patent specification acts as a dictionary when it expressly either defines claim terms or defines terms by implication. Vitronics, 90 F.3d at 1582 ("Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term."). As a general rule, the claims of a patent are not limited to the preferred embodiment or to the examples in the specification. Dow Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir. 2000).
As a third step, a court should also consider the prosecution history of the patent, if in evidence. Markman, 52 F.3d at 980; Vitronics, 90 F.3d at 1582.
If claim language remains unclear after review of the intrinsic record, a court "may look to extrinsic evidence to help resolve the lack of clarity." Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001). The court may look to extrinsic evidence such as expert and inventor testimony, dictionaries, and learned treatises. Markman, 52 F.3d at 980. The court may consult, for example, general or technical dictionaries to assist in determining the commonly understood meaning of a term. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202-04 (Fed. Cir. 2002). The Federal Circuit, however, ruling en banc, has reaffirmed the primacy of the intrinsic evidence, making it clear that extrinsic sources such as dictionaries must not be used in such a way as to contradict claim meaning that is unambiguous in light of the intrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1317-24 (Fed. Cir. 2005) (en banc).
While Saso offers a proposed construction for the entire Claim, Nike argues that nine of the ten disputed terms are insolubly ambiguous and offers an alternative construction for the term "golf club" only. Nike does not suggest that the disputed terms cannot be defined, only that in the context of the patent they would have had numerous possible meanings to a person of skill in the art when Saso filed the patent application in 1991. Nike therefore argues that the Claim is indefinite.
A finding of indefiniteness, however, would render a claim invalid. Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Patents are presumed valid under 35 U.S.C. § 282. To prove indefiniteness, therefore, an accused infringer must demonstrate, not merely by a preponderance of the evidence, but by clear and convincing evidence that "a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008). A court will find claims indefinite only when reasonable efforts at claim construction prove futile, in accordance with the respect due to the statutory presumption of validity. See Exxon, 265 F.3d at 1375.
Nike's indefiniteness argument rests partially on its assertion that Saso has espoused different definitions of several of the disputed terms, making it impossible to determine what is meant by the Claim terms. The Court finds, however, that Nike clouds the issue by citing to statements that are either inadmissible settlement communications, see, FED. R. EVID. 408, or statements of third parties. The Court will disregard such statements. Its analysis of the Claim will rely primarily on the Claim itself, the specification, and the prosecution history, consulting appropriate extrinsic evidence only as needed.
The Court will begin by construing the disputed terms. The Court's descriptions assume a right-handed golf club held by a right-handed golfer - who is set in a normal swing stance prior to taking a backswing to strike a golf ball - with the sole of the golf club touching the ground.
The Court construes "hitting surface" to refer to the "face of the golf club head, i.e., the surface of the head that makes contact with the ball during striking."
2. Toe, Heel, Toe Side, Heel Side
The parties do not dispute that toe and heel are commonly used terms in reference to golf club heads - heel referring generally to the portion of the head closest to the shaft and to the golfer, while the toe is generally the portion of the head farthest from the shaft. Nike argues, however, that the terms are so loosely used by those skilled in the art that the toe, for example, could refer to a point on the far end of the head or a section of that end. If it refers to a point, Nike argues, it is not always clear which point is meant.
Saso construes "toe" as referring to an area of, rather than a point on, the far end of the club head. Specifically, Saso construes "toe" to mean "the sidewall region of the club head that is the side portion opposite from the heel extending ...