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The Patentee is Free to Act as His Own LexicographerMarch 21, 2006

In Harold Schoenhaus and Richard M. Jay v. Genesco, Inc., the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement to defendants Genesco. At issue was a patent entitled ‘Dynamic Stabilizing Inner Sole System’ for an orthotic device for preventing hyperpronation of a human foot. Co-inventors of this ‘052 patent are Drs. Schoenhaus and Jay. The invention works by maintaining the heel bone in proper alignment relative to the leg through a ‘heel seat.’ This invention differed from other orthotics which provides heel inversion through an extrinsic wedge built into the shoe’s insole. Drs. Schoenhaus and Jay filed suit against Genesco alleging patent infringement after discovering what they believed was an infringing line of footwear in a retail store.The primary issue on appeal was whether the limitations of claim 1 of the ‘052 patent must be found in a removable orthotic insert or the immovable insert portion of a shoe, or whether some of the limiting features may be provided, at least in part, by other arts of the construction of the shoe. Central to the dispute was the meaning of the phrase ‘orthotic device.’ Plaintiffs argued that the phrase, and thus the scope of claim 1, allowed other parts of the shoes, not just the insert or immovable insert portion, to meet the claim limitations. In the alternative, plaintiffs’ argued that the term ‘rigid’ should be construed to include ‘semi-rigid.’In upholding the decision of the district court, the Federal Circuit found that the proposed claim construction by plaintiffs was nonsensical stating there is a ‘presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear for the specification and prosecution history that the terms have different meaning at different portions of the claims.’ In using the definitions proposed by plaintiffs, the Federal Circuit ‘re-read’ claims 1 and 2 of the patent and found the proposed construction incorrect and nonsensical. As for the plaintiffs’ alternative argument, the Federal Circuit again agreed with the district court when it looked to the prosecution history of the ‘052 patent to determine how the term ‘rigid’ should be construed. The court found that the patentee had surrendered coverage of orthotic devices with ‘semi-rigid’ heel seats in order to avoid prior art cited by the examiner. As such, the patentee acted as its own lexicographer and set forth special definitions of the claim terms in the patent specification and file history.To read the full text of the decision, log on to

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