Patent Law

Witless Fitness

By Gary Odom and Jordan Kuhn

Jonathan Monti co-invented exercise equipment which he pumped up to 6,932,749 and other patents. Suffering hasty-inventor syndrome, he tried to interest Fitness Quest (FQ) in his equipment before getting his patent. After getting the patent, he induced FQ into a declaratory judgment motion with an accusing letter. His flabby spec led to a losing claim construction, and summary judgment of non-infringement. But, on appeal, the CAFC gave him a little muscle.

Fitness Quest v. Jonathan Monti (CAFC 2008-1433) non-precedential

There are two steps to infringement analysis: "first, the claims are construed, and second, the properly construed claims are applied to the accused devices." Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1370 (Fed. Cir. 2007).

To construe a claim term, a court must determine the meaning of any disputed words from the perspective of one of ordinary skill in the pertinent art at the time the patent application was filed. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In determining the meaning of a disputed claim limitation, courts look primarily to the intrinsic evidence of record, examining the claim language, the specification, and the prosecution history. Id. at 1312-17. Absent evidence to the contrary, words of a claim "are generally given their ordinary and customary meaning" as understood by a person of ordinary skill in the art. Id. at 1312-13.

Claims, however, "do not stand alone" and are read within the context of the specification, which is the single best guide to the meaning of disputed terms. Id. at 1315. The specification may expressly or impliedly define a claim term contrary to its ordinary meaning. See id. at 1321. Similarly, the specification may contain a clear disavowal of claim term scope. Voda v. Cordis Corp., 536 F.3d 1311, 1320 (Fed. Cir. 2008). On the other hand, "[i]n examining the specification for proper context" it is improper to "import limitations from the specification into the claims." CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). And, of particular importance to this appeal, "claim terms are presumed to be used consistently throughout the patent." Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005).

"Where the parties do not dispute any relevant facts regarding the accused product . . . but disagree over possible claim interpretations, the question of literal infringement collapses into claim construction and is amenable to summary judgment." Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997).

Monti disputed four limitations. Inconsistent specification support made construing "back extension" a stretching exercise.

"Selectively applying a force" had some uncertainty about whether the user or the machine was doing the selecting. The district court found discrepancy between Monti's argument in his claim construction hearing and in summary judgment motions, so invoked judicial estoppel.

Judicial estoppel can apply to claim construction arguments. See, e.g., Interactive Gift Express v. Compuserve Inc., 256 F.3d 1323, 1349 (Fed. Cir. 2001).

Here, however, the analysis falters on the first prong; Monti's position from the claim construction hearing was not "clearly inconsistent" with his position from the summary judgment motions. Cf. SanDisk Corp. v. Memorex Prods., 415 F.3d 1278, 1291 (Fed Cir. 2005) (finding no "clearly inconsistent" positions despite appellee definitively advocating for different claim constructions before and after grant of preliminary injunction). Monti's example of the 120-pound woman and 250-pound man appears to have been an attempt to explain the difference between a machine "selectively applying" an amount of force as recited in independent claim 15 from a user "selectively adjusting" the amount of force in dependent claim 16. This was not "clearly inconsistent" with his arguments on summary judgment, making the application of judicial estoppel inappropriate.

Because of the errors in the district court's rulings related to the terms "body pad," "transversely oriented support," and "selectively applying a force," the grant of summary judgment of non-infringement of claim 28 is vacated.

Monti gets another grab at the brass ring.

Affirmed-in-part. Vacated-in-part. Remanded.

Full post as published by The Patent Prospector on May 13, 2009 (boomark / email).