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Claims May Not Be Construed With Reference to the Accused Device, HoweverMarch 31, 2006

In Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., the Federal Circuit vacated and sent the case back on remand to the district court, refusing to provide its own claim construction, choosing instead to find errors in the district court’s construction.At issue was a Wilson patent on a non-traditional softball bat that incorporates interior structural members to improve the bat’s hitting properties. According to the specification, the bat transfers power from the bat to the ball better than competing bats because of the ‘leaf-spring’ action of the double wall construction. The defendant, H & B, was accused of infringing this patent.In a stipulated Rule 54 judgment, the district court dismissed with prejudice Wilson’s contentions that bats sold by H & B infringed the Wilson patent. The court also granted H & B’s declaratory judgment action that its bats did not infringe the Wilson patent, but dismissed H & B’s cause of action for declaratory judgment of patent invalidity. Wilson then appealed the district court’s construction of claim terms.Although the only issues upon appeal was claim construction, the Federal Circuit found itself with little, if any, record on the accused products. The court complained that ‘this sparse record lacks the complete context for accurate claim construction.’ The Federal Circuit was faced with its own rule that ‘claims may not be construed with reference to the accused device.’ NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1108 (Fed. Cir. 1985) (en banc). However, the Federal Circuit backtracked somewhat stating ‘[t]he rule, however, does not forbid awareness of the accused product or process to supply the parameters and scope of the infringement analysis, including its claim construction component. The Federal Circuit seemingly sent a message to the district court that some claim analysis must be made

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