USFC {62FC17D7-FB28-4C77-859E-13A86226A88D} {70873} { :083548} {050806} APPELLEE'S BRIEF

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1 JM F rill fl rrlllf rl USFC {62FC17D7-FB28-4C77-859E-13A86226A88D} {70873} { :083548} {050806} APPELLEE'S BREF

2 WEST/CPS UNTED STATES COURT OF APPEALS FOR THE FEDERAL CRCUT xhe 1"r-u="'- AKEVA V. L.L.C, ADDAS-SALOMON and Plaintiff-Appellant, AG, ADDAS AMERCA, NC., Defendant, Defendant-Appellee. APPEAL FROM THE UNTED STATES DSTRCT COURT FOR THE MDDLE DSTRCT OF NORTH CAROLNA N CASE NO. :03-CV-01207, JUDGE WLLAM L. OSTEEN, SR. BREF OF DEFENDANT-APPELLEE ADDAS AMERCA, NC. James H. Kelly, Jr. KLPATRCK STOCKTON LLP 1001 West Fourth Street Winston-Salem, NC (336) Douglas Richard William J. Kline B. Myrus A. Meunier GOODWN PROCTER LLP 53 State Street Boston, MA (617) May 8, 2006 Attomeys for Defendant-Appellee

3 i!! CERTFCATE OF NTEREST Counsel for the appellee adidas America, nc. certifies the following (use "None" if applicable; use extra sheets if necessary): 1. The full name of every party or amicus represented by me is: adidas America, nc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: adidas America, nc. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: adidas North America, nc.; adidas-salomon AG 4. [] There is no such corporation as listed in paragraph The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: Goodwin Procter LLP, Testa, Hurwitz & Thibeault LLP, Kilpatrick Stockton LLP; Douglas J. Kline, Richard B. Myrus, William A. Meunier, Keith A. Zullow, James H. Kell7, Jr., Steven Gardner, J. Jason Link, Brian M. Gaff, Stephen D. Whetstone 5/8/06 Date Signature of counsel tq/r.a Douglas J. Kline Printed name of counsel

4 TABLE OF CONTENTS STATEMENT OF RELATED CASES... v STATEMENT OF THE SSUES... 1 STATEMENT OF THE CASE... 2 STATEMENT OF THE FACTS The Patents-n-Suit... 5 A. The '471 Patent... 5 B. The '300 Patent The Secured Rear Sole The Flexible Region And Plate The District Court's Claim Construction Rulings SUMMARY OF THE ARGUMENT ARGUMENT Claim Construction Standard The District Court Correctly Construed "Secured" n The '471 Patent A. The '471 Patent Disclaims Rear Soles That Are Not Detachable B. Akeva Has Failed To dentify Any Basis For Reversing The District Court's Construction Of"Secured" n The '471 Patent l. Akeva Misstates The Basis For The District Court's Construction Of"Secured" n The '471 Patent Akeva's Reliance On Liebel-Flarsheim s Misplaced... 30

5 .. Akeva's New Argument Fails To Refute The '471 Patent's Disclaimer Of All Shoes Lacking A Detachable Rear Sole The District Court Correctly Construed "Secured" n The '300 Patent A. B. The '300 Patent Disclaims Rear Soles That Are Permanently Locked n Place The '300 Patent Discloses An Adjustable But Permanently Attached Rear Sole C. Akeva's "More Than One nvention" Argument s Baseless.. 40 l. The ' 126 Patent Does Not Support Akeva's Two nvention Theory o Akeva Has Failed To dentify Any Statement n The '300 Patent Contradicting ts Express Disclaimer Of All Shoes Lacking A Means For Selectively Locking The Rear Sole nto Different Positions V. O. The District Court's Construction s Correct Even Absent The '300 Patent's Disclaimer adidas Also s Entitled To Judgment Of Non-nfringement Of The '300 Patent Because The Accused Shoes Lack The Claimed "Flexible Plate" CONCLUSON... 52

6 Cases TABLE Astrazeneca AB v. Mutual Phaml. Co., OF AUTHORTES 384 F.3d 1333 (Fed. Cir. 2004)... passim Bell Atlantic Network Services, nc. v. Covad Commc'ns Group, nc., 262 F.3d 1258 (Fed. Cir. 2001)... 45,46,52 C.R. Bard, nc. v. United States Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) CSS Fitness, nc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) Curtiss-Wright Flow Control Corp. v. Velan, nc., 348 F.3d 1374 (Fed. Cir. 2006)... 47,48,52 Laitram Corp. v. Morehouse ndus., nc., 143 F.3d 1456 (Fed. Cir. 1998) Liebel-Flarsheim Co. v. Medrad, nc., 358 F.3d 898 (Fed. Cir. 2004)... 30,31 Markman v. Westview nstruments, nc., 517 U.S. 370, 116 S.Ct (1996) Markman v. Westview nstruments, nc., 52 F.3d 967 (Fed. Cir. 1995)... 23,41 Microsoft Corp. v. Multi-Tech Sys., nc., 357 F.3d 1340 (Fed. Cir. 2004) Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005)... 48,49,52 On Demand Machine Corp. v. ngrain ndus., nc., 442 F.3d 1331, 2006 U.S. App. LEXS 7889 (Fed. Cir. 2006)... 24,48,52 iii

7 ! Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)... passim Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) SciMed Life Sys., nc. v. Advanced Cardiovascular Sys., nc., 242 F.3d 1337 (Fed. Cir. 2001)... passim Texas Digital Sys., nc. v. Telegenix, nc., 308 F.3d 1193 (Fed. Cir. 2002)... passim Vitronics Corp. v. Conceptronic, nc., 90 F.3d 1576 (Fed. Cir. 1996)... passim iv

8 STATEMENT OF RELATED CASES No other appeal in or from this action has previously been before this or any other appellate court. Counsel is unaware of any other case, in this or any other court, known to be directly affect by this Court's decision in this appeal.

9 STATEMENT OF THE SSUES 1. Whether the district court correctly construed the asserted claims of U.S. Patent No. 6,662,471 (the '471 patent) as requiring a detachable rear sole where the '471 patent expressly limits the scope of its invention to shoes having such a sole: The present invention relates generally to multi-purpose athletic shoes and, more particularly, to athletic shoes with interchangeable detachable rear soles that provide extended and more versatile life and better performance in terms of cushioning and spring. []n a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated with conventional shoes and provides enhanced cushioning and/or spring. 2. Whether the district court correctly construed the asserted claims of U.S. Patent No. 6,604,300 (the '300 patent) as requiring a rear sole that can be selectively locked in different positions where the '300 patent expressly limits the scope of its invention to shoes having a means for selectively locking the rear sole into different positions: n all embodiments, the invention includes mechanical means for selectively locking the rear sole relative to the rear sole support and upper of the shoe.

10 3. Whether adidas America, nc. is entitled to judgment of noninfringement of the '300 patent independent of the patent's requirement of a rear sole that can be selectively locked in different positions because: (a) each asserted claim of the '300 patent requires a "flexible plate," (b) the '300 patent defines a "flexible plate" as a separate and removable piece of material having a central portion that is elevated relative to its periphery, and (c) Akeva concedes that the accused adidas shoes lack such a "flexible plate." STATEMENT OF THE CASE adidas America, nc. is a U.S. company within the adidas-salomon Group that, among other things, produces and distributes footwear and apparel under the well known adidas and Reebok trademarks. Appellant Akeva, L.L.C. ("Akeva") is a company run by David F. Meschan devoted to licensing a portfolio of Meschan's footwear patents that are assigned to Akeva. Akeva has never sold any products and has never licensed any of its patents without the threat of litigation. Akeva alleges that various adidas shoe models infringe two Akeva patents: U.S. Patent No. 6,662,471 and U.S. Patent No. 6,604,300, each of which concerns shoe heel technology. The district court held that each patent clearly disclaims particular shoe features from the scope of its claims. The district court relied on this Court's SciMed decision, which holds that "[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed

11 to be outside the reach of the claims of the patent." SciMed Life Svs., nc. v. Advanced Cardiovascular Sys., nc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). (A0022, May 17, 2005 Memorandum Opinion And Order (5/17/05 Order)at 22). This is true even if the claim language, on its own, "might be considered broad enough to encompass the feature in question." (A0021, 5/17/05 Order at 21, quoting SciMed, 242 F.3d at 1341). The district court ruled that each of the patents-in-suit expressly disclaims from its subject matter all shoes lacking a particular type of rear sole. The '471 patent disclaims shoes without detachable rear soles because it unequivocally limits its invention to shoes having "a detachable rear sole": The present invention relates generally to multi-purpose athletic shoes and, more particularly, to athletic shoes with interchangeable detachable rear soles that provide extended and more versatile life and better performance in terms of cushioning and spring. []n a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including, a detachable rear sole, that significantly alleviates heel wear problems associated with conventional shoes and provides enhanced cushioning and/or spring. (A0173-t74, '471 patent at col. 1, ; col. 4, (emphasis added); A , 5/17/05 Order at 26-28). As a result, the district court construed the

12 i '471 patent claims as requiring a detachable rear sole. (A , 5/17/05 Order at 26-27). Likewise, the district court ruled that the '300 patent disclaims all shoes having a rear sole that is permanently fixed in position because the patent expressly limits its invention to shoes incorporating a "mechanical means for selectively locking the rear sole" into different positions: n all embodiments, the invention includes mechanical means for selectively locking the rear sole relative to the rear sole support and upper of the shoe. (A0128, '300 patent at col. 7, ) (emphasis added). Thus, the district court construed the '300 patent claims as requiring a rear sole that can be locked into different positions. (A , 5/17/05 Order at 20-25). Following the district court's claim constructions, Akeva sought reconsideration and also submitted arguments concerning the Federal Circuit's intervening _ decision. _The district court considered Akeva's new arguments and evidence but did not change its claim constructions. (A0052, August 26, 2005 Memorandum Opinion And Order (8/26/05 Order) at 1). Akeva then agreed to the district court entering judgment of no infringement for adidas. (A , October 28, 2005 Final Order And Judgment (Final Judgment) at 1-2). i 415 F.3d 1303 (Fed. Cir. 2005).

13 l!! i STATEMENT OF THE FACTS. The Patents-n-Suit A. The '471 Patent The '471 patent, entitled "Athletic Shoe With Heel Structure," issued on December 16, 2003, more than a year after adidas began marketing its accused shoes. n its Summary of nvention, the '471 patent defines its invention as an athletic shoe having a rear sole that is detachable, and each asserted claim of the '471 patent calls for a shoe that features, among other things, "a rear sole secured below a portion of the upper." (E..,A , A0179, '471 patent at col. 1, ; col. 3, ; col. 4, ; claim 1). The '471 patent explains, under the heading Field Of nvention, that "[t]he present invention relates generally to multi-purpose athletic shoes and, more particularly, to athletic shoes with interchangeable detachable rear soles." (A0173, '471 patent at col. 1, ) (emphasis added). According to the '471 patent, the disclosed "athletic shoes with interchangeable/detachable rear soles" were designed to overcome the following disadvantages: n known athletic shoes, "the heel typically wears out much faster than the rest of the athletic shoe, thus requiring replacement of an entire shoe even though the bulk of the shoe is still in satisfactory condition." (A0173, '471 patent at col. 1, ).

14 l! Known detachable and replaceable rigid heels designed for dress shoes cannot be used with athletic shoes because "the soft, resilient materials utilized in athletic shoe soles make it extremely difficult to devise a mechanism for detachably securing heel elements to each other without adversely affecting the cushioning and other desired properties of the shoe." (A0173, '471 patent at col. 2, ). Because an athletic shoe's heel cannot be replaced independent of the rest of the shoe, users and manufacturers cannot vary or customize the amount of spring or firmness provided by a particular shoe to account for different weights, preferences and activities. (A0173, '471 patent at col. 2, ). The '471 patent concludes that the foregoing disadvantages result from the athletic shoe industry's lack of"awareness of the fact that the use and function of an athletic shoe can be changed dramatically if it is simply given interchangeable rear soles." (A0173, '471 patent at col. 2, ). To overcome these problems, the '471 patent touts a shoe having "a rear sole [that] is detachably secured to the rear sole support:" []n a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated

15 i i i! with conventional soles and provides enhanced cushioning and/or spring. (A0174, '471 patent at col. 3, ; col. 4, ) (emphasis added). The '471 patent depicts an embodiment of this detachable rear sole in Figure 1:!! An embodiment of the heel structure is shown in Figs 1 and 2 and includes a rear sole support 26 attached to the heel region of the upper 22, a rear sole 28 detachably secured to the rear sole support 26, a mounting member 60 for detachably securing the rear sole 28 to the rear sole support 26, and locking members 90 for preventing rotation of the rear sole 28 relative to the rear sole support 26 during use. % _!! -28 i 2, FG. 1 (A , '471 patent at Fig. 1; col. 4, col. 5, 1. 1) (emphasis added). n a preferred embodiment, the detachable rear sole 300 is a U-shaped member, depicted below in Fig. 21.

16 FG. 21 (A0166, A , '471 patent at Fig. 21; col. 10, col. 11, 1. 10). B. The '300 Patent Like the '471 patent, the '300 patent issued more than a year after adidas began marketing its accused shoes. The patent is entitled "Athletic Shoe With mproved Sole," and it discloses an athletic shoe having a rear sole that can selectively be locked into different positions. (E..,A0128, '300 patent at col. 7, ).

17 The '300 patent advocates that the disclosed "improved rear sole" was designed to overcome the following disadvantages associated with typical athletic shoes: n typical athletic shoes, the heel region (i.e., the rear sole) wears out faster than the rest of the shoe. However, because the rear sole is integral with the entire shoe, the worn out heel cannot be independently replaced. nstead, the whole shoe must be replaced, even though only the heel is worn out and the rest of the shoe is still in satisfactory condition. (A0125, '300 patent at col. 1, ). After repeated typical use, the heel area of the sole - which is supposed to provide cushioning for the user- loses its cushioning effect. (A0125, _300 patent at col. 1, ). Because an athletic shoe's rear sole cannot be replaced independent of the rest of the shoe, a user cannot customize or modify the height of the rear sole or its cushioning or "spring" properties. (A0125, '300 patent at col. 1, col. 2, 1.12). To overcome these problems, the '300 patent touts a rear sole that can be rotated into different positions, thereby allowing the heel to be rotated out of one position (in which the ground-engaging portion of the rear sole is worn out) and 9

18 i into a new position (in which the ground-engaging portion of the rear sole is like i new) to increase the longevity of the detachably secured rear sole. (E..,A0126- i 128, '300 patent, at col. 4, col. 5,. 20; col. 6, ; col. 7, ). i n the preferred embodiment, the adjustably positionable rear sole also is detachable and designed to accept and use different "flexible members" having i specific and variable characteristics. (E._., A028, '300 patent at col. 7, ). 1. The Secured Rear Sole i As illustrated in the below Figure 1 from the specification, the shoe 100 i disclosed in the '300 patent includes a shoe upper 120, a forward sole 160, a rear sole support 140, and a rear sole 150. (A0126, '300 patent at col. 3, ). FG. 1,oo H :,o i The specification describes that the forward sole 160 and rear sole support 140 are "attached to upper 120 in a conventional manner." (A0126, '300 patent at col. 3, , 63-65). As a result, the forward sole and the rear sole support are 10

19 integral to, and cannot be detached from, the claimed shoe. (See, e._&.,a0126, '300 patent at col. 3, ). n contrast, the '300 patent discloses that the rear sole must be secured to the rear sole support so that the rear sole can be selectively locked into different positions: "[i]n all embodiments, the invention includes mechanical means for selectively locking the rear sole relative to the rear sole support and upper of the shoe." (A0128, '300 patent at col. 7, See also A , '300 patent at col. 4, col. 5, 1.20; col. 6, ). The '300 patent explains that securing the rear sole so that it can be placed into different positions extends the life of the rear sole: [The rear sole] may be moved to a plurality of positions with a means provided to allow the user to secure the rear sole at each desired position. After a period of use, outsole 154 [of rear sole 150] will exhibit a wear pattern at the point in which the heel first contacts the ground, when the user is running, for example. Excessive wear normally occurs at this point, and at midsole [] generally above this point, degrading the performance of the rear sole. When the user determines that the wear in this area is significant, the user can rotate the rear sole so that the worn portion will no longer be in the location of the user's first heel strike. (A0127, '300 patent at col. 6, (emphasis added). See also A , '300 patent at col. 4, ; col. 6, ). The foregoing ability to selectively lock the rear sole into position is achieved by "securing" the rear sole to the rear sole support, rather than permanently locking it in place in the conventional manner. (A0127, '300 patent at 11

20 col. 6, ). Figure 2 of the '300 patent illustrates that, in the preferred embodiment, the rear sole is secured to the rear sole support using knobs protruding from the rear sole to engage openings in the rear sole support, thereby allowing the rear sole to "be removed, repositioned, and/or locked to the rear sole support... " (A0127, '300 patent at col. 5, ("To secure rear sole 150 to rear sole support 140, rear sole 150 is simply press-fitted into recess 146 until knobs 165 engage corresponding openings 145.") (emphasis added)). FG. 2,62 s8 Consistent with the foregoing description, each asserted claim of the '300 patent calls for a shoe having, among other things, a "rear sole secured below the heel region of the upper." (E._._., A0134, '300 patent at claim 93). 12

21 2. The Flexible Region And Plate n a preferred embodiment of the '300 patent's invention, the adjustably positionable rear sole of the '300 patent is combined with a "flexible region [] that is positioned above the rear sole," and "acts like a trampoline to provide extra spring in the user's gait." (A0128, '300 patent at col. 7, ; col. 8, ). According to the '300 patent, there are different embodiments of this region: one that is integral to the rear sole support and another that is "a separate flexible member or plate." (A0128, '300 patent at col. 7, ) (emphasis added). For example, Figure 2 of the '300 patent, shown above, illustrates the embodiment of the flexible region as a separate flexible member, or "plate," 200: As shown in Fig. 2, flexible member 200 can be in the form of a plate supported at its peripheral region by an upward facing top surface of rear sole support 140. n this embodiment, the member, or plate 200, is positioned between the rear sole 150 and the heel portion of upper 120. (A0128, '300 patent at col. 7, col. 8, 1.3). According to the specification, the separate nature of the plate embodiment of the flexible region allows a user selectively to vary the amount of spring provided for by the rear heel of the shoe: The removability of the flexible member allows the use of several different types of flexible members of varying stiffness or composition and, therefore, can be adapted according to the weight of the runner, the ability of the runner, the type of exercise involved, or the amount of cushioning and/or spring desired in the heel of the shoe. (A0128, '300 patent at col. 8, ). 13

22 Whether integral or removable, each flexible region or member provides spring to the user's gait because, as defined throughout the patent, it has a central portion that is capable of being repeatedly bent from a normal unflexed state (in which the central portion is elevated relative to the plate's periphery.) into a flexed state (in which the central portion is bent downward), without permanently deforming: n each of the embodiments the central portion of the flexible member is raised relative to its outer perimeter so that when placed in the shoe, the interior portion in its normal state does not touch the rear sole support and/or rear sole. As a result, the interior of the flexible member will flex in response to the user's stride without first, if ever, contacting the rear sole support and/or rear sole. (A0130, '300 patent at col. 12, ). n each of these embodiments,.., the interior portion of the flexible member is elevated relative to its periphery when the flexible member is positioned in the shoe in its normal position. (A0129, '300 patent at col. 10, U ). [The] flexible region is positioned above the rear sole and has a central portion that in its normal unflexed state is spaced upwardly from the portion of the shoe (rear sole support, or rear sole) immediately below it. (A0128, '300 patent at col. 7, ). [T]he middle of the flexible member can flex under the weight of the user without being impeded by rear sole 150. Flexible member 200 thus acts like a trampoline to provide extra spring in the user's gait... (A0128, '300 patent at col. 8, ). 14

23 Thus, each flexible region, member, and plate disclosed in the patent is defined as having an interior portion that is raised and extends upwardly toward the heel of the user. This is achieved in two different ways. n the first, the top surface of the flexible member is convex, i.e., shaped like the top outer surface of a dome. An example of this type of flexible member is shown in the patent's Figure 4: As shown in Fig. 4, flexible member 500 has a concave under surface 502 (when viewed from its bottom) and an opposing convex upper surface, and is circular in shape. As a result, the interior portion of the flexible member 500 is elevated relative to its peripheral portion and is positioned below the rear sole of the user when supported in the shoe. (A0129, '300 patent at col. 10, ). FG. 4 / 5OO n the other type of flexible member, the top surface curves up in only one direction, and thus forms an arch, rather than a convex dome shape. For example, "[t]lexible member 530 shown in Fig. 7 is identical in structure to flexible member 15

24 520 shown in Fig. 6 except that it is not convex in shape, but rather curved in only one direction." (A0129, '300 patent at col. 10, ). FG. 7 ii Consistent with the foregoing description, each asserted claim of the '300 patent calls for a shoe having, among other things, a "flexible plate" with various characteristics, which vary from claim to claim. (E.., A0134, '300 patent at claim 93).. The District Court's Claim Construction Rulings The parties first briefed and argued claim construction prior to this Court's en banc decision in Phillips v. AWH Corp. 2 The district court found that "Akeva relies heavily on dictionary definitions" and "not the written description." (A0012, 5/17/05 Order at 12). n contrast, the district court found that adidas' proposed constructions and arguments focused "on the 'objective test' of what the claims would have meant to someone skilled in the art at the time of the invention[, which] requires a review of the claim language, the specification, and the F.3d 1303 (Fed. Cir. 2005). 16

25 prosecution history, but with more focus on the specification than Akeva would support." (A0013, 5/17/05 Order at 13). The district court initially ruled on claim construction before Phillip s_ rejected the approach advocated by Akeva and confirmed the correctness of adidas' analysis. Thus, the district court's initial ruling applied the strict Texas Digital "dictionary first" methodology - advocated by Akeva but since rejected in Phillip fi - and adopted broad dictionary definitions for most of the claim terms. Even applying the Texas Digital approach, however, the district court recognized that where a patent disclaims subject matter, this Court requires that the patent's claims be construed so as to exclude that disclaimed subject matter. (A , 5/17/05 Order at 20-23). Consistent with this rule of construction and the '471 patent's disclaimer of all shoes lacking a detachable rear sole, the district court construed "secured" in the '471 patent claims as requiring a detachable rear sole. (A , 5/17/05 Order at 25-28). Likewise, consistent with the '300 patent's disclaimer of any shoe lacking a means for selectively locking the rear sole into different positions, the district court construed "secured" in the '300 patent claims as requiring a rear sole that can selectively be locked into different positions. (A , 5/17/05 Order at 15-25). Akeva sought reconsideration of the district court's "secured" constructions and also filed an additional brief to address this Court's Phillips decision. Despite 17

26 that the district court's claim construction ruling expressly had noted Akeva's failure to identify any statements in the patents-in-suit refuting their disclaimers of certain types of rear soles (e.., A0025, 5/17/05 Order at 25), Akeva identified no such refuting statements in its reconsideration or Phillip_fi briefing. nstead, Akeva argued for the first time that SciMed was no longer good law. (E.., A0758, A0771, Mere. n Support Of Mot. For Partial Reconsideration Of The Court's C. Construction Order). The district court considered Akeva's new arguments and evidence but did not change its claim constructions because: (1) Akeva failed to identify any evidence refuting the disclaimers in the patents-in-suit and (2) SciMed remains good law. (A0055, A , 8/26/05 Order at 4, 9-12). Akeva then conceded that adidas does not infringe the patents-in-suit under the district court's claim construction, and the district court entered final judgment of noninfringement for adidas. (A , Final Judgment at 1-2). This appeal followed. SUMMARY OF THE ARGUMENT The '471 Patent: Akeva's arguments that there was no disclaimer of the ordinary meaning of "secured" because the '471 patent and claims in a parent patent application use the phrase "detachably secured" miss the point. The issue is not whether the '471 specification reveals a special definition of"secured;" rather, the issue is whether 18

27 ! the '471 specification reveals a disclaimer or disavowal from its scope of all shoes lacking a detachable rear sole. As the district court correctly recognized, the Court in Phillips_ identified two ways in which the specification may limit claim scope, and it is the second way that applies to the '471 patent: [O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. n such cases, the inventor's lexicography governs. CSS Fitness, nc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). n other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. n that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive. SciMed Life Sys. v. Advanced Cardiovascular Svs., nc., 242 F.3d 1337, (Fed. Cir. 2001). Phillip s, 415 F.3d at 1316 (emphasis added). (A0055, A , 8/26/05 Order at 4, 8-12). The district court correctly ruled that the '471 patent specification reveals a disclaimer or disavowal from its claim scope of any shoes lacking a detachable rear sole because the '471 patent: (1) defines the invention as having a detachable rear sole; (2) touts that that the invention is superior because, unlike prior art shoes, it features a detachable rear sole; and (3) tails to disclose or suggest any embodiments of the supposed invention that feature a rear sole that is not detachable. (A , 5/17/05 Order at 25-28). Under this Court's precedent, the tbregoing disclaimer requires that the '471 patent claims cannot cover any shoe 19

28 having a non-detachable rear sole, "even if the claim language, on its own, 'might be considered broad enough to encompass the feature in question.'" (A0021, A , 5/17/05 Order at 21, 25-27, _ SciMed, 242 F.3d at 1341). The district court therefore correctly followed SciMed and Phillios in construing the '471 patent claims and "secured" as requiring a detachable rear sole. The '300 Patent: A statement in a patent specification that "all embodiments of the present invention" include a particular element constitutes a "broad and unequivocal" disclaimer of all subject matter lacking that element. SciMed, 242 F.3d at This Court has held that such "all embodiments" language is "a clear case of disclaimer of subject matter that, absent the disclaimer, could have been considered to fall within the scope of the invention." d. Falling squarely within this claim construction rule, the '300 patent specifically requires that "[i]n all embodiments, the invention includes a mechanical means for selectively locking the rear sole relative to the rear sole support and upper of the shoe." (A0128, '300 patent at col. 7, ) (emphasis added). The district court thus correctly ruled that the '300 patent disclaims from its subject matter any shoe omitting this essential selective locking means, i.e =, any shoe with a rear sole permanently locked in position. (A , 5/17/05 Order at 23-25). Phillip_fi, 415 F.3d at 1316; SciMed, 242 F.3d at O

29 n response to the district court's initial claim construction ruling, Akeva argued for the first time that SciMed is inapplicable because the '300 patent allegedly discloses two inventions: one in which "all embodiments" have the movable rear sole, and another previously unidentified invention. The Court should reject Akeva's so-called "second" invention theory because, among other reasons: Akeva has failed to identify any section of the '300 patent where the patentee states that there is more than one invention described therein; Akeva has failed to identify any portion of the '300 patent contradicting its requirement that "in all embodiments, the invention" must have a selective locking means; and Akeva has failed to identify any disclosed "second invention" or any embodiment in the '300 patent that does not feature the required selective locking means. The district court therefore correctly construed "secured" in the '300 patent's claims to mean "selectively or permanently fastened, but not permanently fixed in position." (A0025, 5/17/05 Order at 25). ndeed, regardless of the '300 patent's disclaimer, the district court's claim construction is correct because, reviewing the intrinsic record as a whole, one skilled in the art would understand "'secured" as used in the '300 patent claims to mean "selectively locked into 21

30 i position" because that is how the patentee consistently uses "secured" throughout the '300 patent's specification. n addition to the district court's correct construction of"secured," adidas' accused shoes also do not infringe the asserted claims of the '300 patent as a matter of law because they lack the claimed "flexible plate." As defined in the '300 patent, the claimed "flexible plate" is a separate and removable piece of material having a central portion that is elevated relative to its periphery. Akeva concedes, however, that the alleged flexible plate in the accused adidas shoes (1) is an integral part of the accused shoe that cannot be removed or replaced; and (2) has an interior portion that is positioned below - not elevated above - its periphery.. Claim Construction Standard "property": ARGUMENT The claims of a patent set forth the metes and bounds of the patentee's Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction. Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (internal citations omitted)..-)-_

31 The meaning of a disputed patent claim term is a question of law for the Court to decide. Markman v. Westview nstruments, nc., 517 U.S. 370, 372, 116 S.Ct. 1384, 1387 (1996). When construing the meaning of a claim term, Courts apply an objective test to determine what one of ordinary skill in the art, at the time of the invention, would have understood the term to mean based on: (1) the claim language itself; (2) the patent's specification; and (3) the patent's prosecution history. Markman v. Westview nstruments, nc., 52 F.3d 967, 986 (Fed. Cir. 1995). Akeva has argued throughout this lawsuit that the foregoing bases for claim construction should be ignored in favor of broad dictionary definitions, which, according to Akeva, should be the initial and primary focus of the claim construction analysis. n Phillips., however, this Court rejected the strict Texas approach upon which Akeva relied throughout this case: "That approach, in our view, improperly restricts the role of the specification in claim construction." Phillip fi,415 F.3d at According to this Court, the primary focus should be on the specification, not dictionary definitions: "the specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" d (quoting Vitronics, 90 F.3d at 1582). 23

32 n Phillip_fi, the Court also stressed that SciMed remains good law, confirming that the disclaimers in Akeva's patents are dispositive. Citing SciMed approvingly, _ held that "the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. n that instance as well, the inventor had dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive." Phillip_fi, 415 F.3d at n addition, a specification's disclaimer or disavowal need not be explicit: "when the scope of the invention is clearly stated in the specification, and is described as the advantage and distinction of the invention, it is not necessary to disavow explicitly a different scope." On Demand Machine Corp. v. n,ram ndus., nc., 442 F.3d 1331, 2006 U.S. App. LEXS 7889 at "17-18 (Fed. Cir. 2006); Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004).. The District Court Correctly Construed "Secured" n The '471 Patent A. The '471 Patent Disclaims Rear Soles That Are Not Detachable The district court correctly ruled that the '471 patent limits its invention to a shoe having a detachable rear sole by consistently and expressly defining the invention as "including a detachable rear sole" and distinguishing the prior art on 24

33 the grounds that the prior art shoes have many disadvantages due to their failure to utilize detachable rear soles. (E._._.,A , 5/17/05 Order at 26-28; A , '471 patent at col. 1, ; col , 48-54; col. 3, ; col. 4, ). For example, according to the '471 patent: "The present invention relates generally to multi-purpose athletic shoes and, more particularly, to athletic shoes with interchangeable detachable rear soles that provide extended and more versatile life and better performance in terms of cushioning and spring." There is "no apparent industry awareness of the fact that the use and function of an athletic shoe can be changed dramatically if it is simply given interchangeable rear soles." "[]n a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated with conventional shoes and provides enhanced cushioning and/or spring." (A , '471 patent at col. 1, ; col , 48-54; col. 4, ; A , 5/17/05 Order at 26-27) (emphasis added). The '471 patent specification thus reveals "an intentional disclaimer, or disavowal, of claim scope by the inventor." See Philli.p s_, 415 F.3d at 1316; SciMed, 242 F.3d at ; Astrazeneca, 384 F.3d at 1340 ("[w]here the general summary or description of the 25

34 invention describes a feature of the invention.., and criticizes other products... that lack that same feature, this operates as a clear disavowal of these other products"); see also C.R. Bard, nc. v. United States Surgical Corp., 388 F.3d 858, (Fed. Cir. 2004). Where a specification includes such a disclaimer, "the inventor has dictated the correct scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive." Phillips, 415 F.3d at Accordingly, because the '471 patent has disclaimed from its scope any shoe lacking a detachable rear sole, the '471 claims must be construed as requiring a detachable rear sole. d.; SciMed, 242 F.3d at ; Astrazeneca 384 F.3d at The '471 patent falls squarely within this Court's SciMed holding. n SciMed, the patent-in-suit claimed a catheter featuring two passageways, or "lumens." SciMed, 242 F.3d at The parties agreed that only two arrangements of two lumens were know in the art: dual (adjacent) lumens and coaxial lumens. d. Although the claims did not expressly specify that the claimed two lumens were coaxial, the SciMed district court found that the claims were limited to coaxial lumens and did not cover dual lumens because the specification of the patents-in-suit limited the scope of the invention to a catheter with coaxial lumens. d. This Court affirmed the district court's claim construction: "Like the district court, we interpret the specification to disclaim the dual lumen 26

35 configuration and to limit the scope of the asserted claims to catheters with coaxial lumen structures... We therefore construe the asserted claims to read only on catheters with coaxial lumens, and not on catheters with dual or side-by-side lumens." d :. at n its analysis, the Court rejected the patentee's argument that the district court had improperly read a limitation of the written description into the claims, explaining that [w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question. d. at Applying this rule of claim construction, the Court found that the patents-in-suit disclaimed all catheters lacking coaxial lumens because the written description "define[s] 'the invention' as employing a coaxial lumen structure and distinguish[es] the prior art in part on the ground that [the prior art] used a dual lumen structure." d. at The same is true here: the '471 patent specification consistently defines the invention as "including a detachable rear sole" and distinguishes the prior art on the grounds that the prior art shoes have many disadvantages due to their failure to utilize detachable rear soles. (A , '471 patent at col. 1, ; col. 2, ,48-54; col. 3, ; col. 4, ; A , 5/17/05 Order at 26-27). 27

36 Accordingly, the district court correctly ruled that the '471 patent disclaims from its subject matter any shoe having a non-detachable rear sole and correctly construed "secured" as requiring a detachable rear sole. (A0028, 5/17/05 Order at 28). Phillips, 415 F.3d at 1316; F.3d at B. Akeva Has Failed To dentify Any SciMed, 242 F.3d at ; Astrazeneca, 384 Basis For Reversing The District Court's Construction Of "Secured" n The '471 Patent Below, Akeva's principal argument against the district court's '471 patent claim construction was that SciMed is not good law. Now unable to make that argument in light of Phillips, Akeva's appeal ignores SciMed and the district court's analysis. 1. Akeva Misstates The Basis For The District Court's Construction Of "Secured" n The '471 Patent nstead of addressing SciMed and the '471 patent's disclaimers of nondetachable rear soles, Akeva misstates the basis for the district court's construction, arguing that the district court found that the '471 patent's specification disclaimed the ordinary meaning of"secured." (Akeva at 23-29). However, the district court made no such finding. Rather, the district court based its construction of"secured" on the '471 patent's disclaimer from the scope of its 28

37 claims of any shoe that lacks a detachable heel, not on a disclaimer of the ordinary meaning of "secured." The district court correctly ruled that the '471 patent expressly disclaims from the scope of its claimed invention all shoes lacking a detachable rear sole because the '471 patent: (1) defines the invention as having a detachably secured rear sole; (2) touts that that the disclosed shoe is superior because, unlike prior art shoes, it features a detachably secured rear sole; and (3) fails to disclose any embodiments of the supposed invention that feature a rear sole that is not detachably secured. (A , 5/17/05 Order at 25-28). The district court then explained that because of this disclaimer of claim scope (not a disclaimer of the ordinary meaning of"secured'), this Court's precedent precludes the '471 patent claims from covering a shoe that lacks a detachable rear sole, "even if the claim language, on its own, 'might be considered broad enough to encompass the feature in question.'" (A0021, A , 5/17/05 Order at 21, 25-27, _ SciMed, 242 F.3d at 1341). Akeva's arguments that there was no disclaimer of the ordinary meaning of "secured" because the '471 patent and claims in a parent patent application use the phrase "detachably secured" miss the point. (E.., Akeva at 23-29). The issue is not whether the '471 patent disclaims the ordinary meaning of"secured;" the issue is whether the '471 patent disclaims from its invention all shoes lacking a 29

38 detachable rear sole. The '471 patent disclaims all such shoes, and the district court therefore correctly followed SciMed and Phillip_s to construe the claims and "secured" as requiring a detachable rear sole. 2. Akeva's Reliance On Liebel-Flarsheim s Misplaced Unable to dispute SciMed's applicability to the '471 patent, Akeva instead focuses on this Court's decision in Liebel-Flarsheim Co. v. Medrad, nc., 358 F.3d 898 (Fed. Cir. 2004). (Akeva at 25-29). Liebe-Flarsheim, however, is inapposite. Liebel-Flarsheim holds that it is improper to construe a patent's claims to require a specific element merely because that element is present in every embodiment disclosed in the patent, a claim construction error that the district court here expressly addressed and avoided. Liebel-Flarsheim, 358 F.3d at n Liebel-Flarsheim, the patent-in-suit described and claimed a power injector for use in various medical applications. While every embodiment described in the patent-in-suit included a particular feature (a pressure jacket), the patent did not contain any language suggesting a disclaimer or disavowal from its scope of iniectors that lacked a pressure jacket. d :at For example, the patent-insuit did not define the invention as including a pressure jacket or characterize prior art injectors that lacked a pressure jacket as inferior. d. at The defendant nonetheless argued that the scope of the claims should be limited to injectors with pressure jackets solely because the patent failed to 30

39 disclose any embodiments that lacked a pressure jacket. d. The Federal rejected that argument because - unlike the Akeva patents here - the Liebel- Circuit Flarsheim patent did not disavow embodiments lacking a pressure jacket. d. at Liebel-Flarsheim is thus inapplicable here because, contrary to Akeva's characterization of the district court's decision, the district court did not base its claim construction solely on the fact that each embodiment described in the '417 patent features a detachable rear sole. Rather, the district court correctly construed the '471 patent claims as requiring a detachable rear sole because the '471 patent clearly disclaims from its subject matter all shoes lacking a detachable rear sole. ndeed, the district court expressly rejected Akeva's characterization of its ruling: Akeva argues in its Philli_ brief that the court's ruling improperly limited the patent's scope to one or more embodiments described in the specification. However, Plaintiff mischaracterizes the nature of the Court's ruling. The court did not find any implicit limitation of the term "secured" based on a lack of information about other possible forms, but rather tbund an explicit disavowal of a permanently positioned rear sole by express language in the '300 patent and of a permanently attached rear sole by express language in the '471 patent. (A , 8/26/05 Order at 9-10) (internal citations omitted). disclaimers: 3. Akeva's New Argument Fails To Refute The '471 Patent's Disclaimer Of All Shoes Lacking A Detachable Rear Sole Akeva does not dispute that the '47l patent includes the following 31

40 "The present invention relates generally to multi-purpose athletic shoes and, more particularly, to athletic shoes with interchangeable detachable rear soles that provide extended and more versatile life and better performance in terms of cushioning and spring." "[]n a radical departure from conventional shoes, the shoe of the present invention incorporates a heel structure, including a detachable rear sole, that significantly alleviates heel wear problems associated with conventional shoes and provides enhanced cushioning and/or spring." (A , '471 patent at col. 1, ; col. 4, ; A , 5/17/05 Order at 26-27) (emphasis added). Akeva also does not dispute that the '471 patent argues that the disclosed inventive shoe is superior because, unlike prior art shoes, it features a detachable rear sole or that the '471 patent fails to disclose any embodiments of the supposed invention that feature a rear sole that is not detachable. Akeva nonetheless contends that the '471 patent does not disclaim shoes lacking a detachable rear sole, arguing for the first time on appeal that the '471 patent describes that another feature of the invention - a U-shaped member - can be used without the detachable rear sole. The '471 patent, however, includes no such description. 32

41 Akeva mischaracterizes the specification of the '471 patent, wrongly arguing that it suggests that the disclosed U-shaped member can be used with or without a detachable rear sole. n fact, the quote relied on by Akeva does not even concern a U-shaped member, it concerns a "flexible plate," which is a different and distinct component of the disclosed shoe. (See, e.., A0169, '471 patent at Fig. 24, depicting a flexible plate 80 and a U-shaped member 400). Moreover, the portion of the specification cited by Akeva does not indicate that any element (flexible plate, U-shaped member, or anything else) can be used without the detachable rear sole; rather, it indicates that the detachable rear sole can be used with or without a flexible plate: [T]he rear sole support/locking member combination shown in FGS. 2 and 17 [i.e., examples of the disclosed means for detachably fastening the rear sole to the shoe's upper] can be used in conjunction with any of the above-described rear sole configurations, and can be used with or without the flexible plate. (A0178, '471 patent at col. 12, (emphasis added); Akeva at 9, 21, 25, 30-31). ndeed, the '471 patent repeatedly sets forth that the disclosed invention must include a detachable rear sole. (A , '471 patent at col. 1, ; col. 4, ; A , 5/17/05 Order at 26-27). Akeva also argues that the boilerplate language at the end of the '471 specification indicates that the U-shaped member can be used without a detachable rear sole. Again, the cited portion of the specification includes no such statement, 33

42 but merely suggests that features of one embodiment can be used in other embodiments: t will be apparent to those skilled in the art that various modifications and variations can be made in the state of the present invention without departing from the scope or spirit of the invention and that certain features of one embodiment may be used interehangeably in other embodiments... Thus, it is intended that the present invention cover all possible combinations of the features shown in the different embodiments, as well as modifications and variations of this invention, provided they come within the scope of the claims and their equivalents. (A , '471 patent at col. 12, col. 13, 1.5 (emphasis added); Akeva at 30-31). Nothing in the foregoing suggests that a U-shaped member can be used without the supposedly inventive detachable rear sole. To the contrary, although the language contemplates using a feature of one embodiment in another embodiment of the invention, all embodiments of the disclosed invention indisputably feature a detachable rear sole. Moreover, because the specification expressly requires the use of a detachable rear sole, any modification of the disclosed embodiments that eliminated the detachable rear sole would not "come within the scope of the claims and their equivalents." ll. The District Court Correctly Construed "Secured" n The '300 Patent A. The '300 Patent Disclaims Rear Soles That Are Permanently Locked n Place The '300 patent specifies that "[i]n all embodiments, the invention includes a mechanical means for selectively locking the rear sole relative to the rear sole 34