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A Full Markman Claim Construction Hearing Is Not Always Required

March 17, 2006

In Genesco, Inc. v. Johnston & Murphy, Inc . (March 15, 2006), the Federal Circuit affirms grant of summary judgment of non-infringement of Genesco's “Dynamic Stabilizing Inner Sole System” patent, where the district court did not hold a Markman claim construction hearing. Genesco's patent is directed to a shoe insert and shoe design which helps maintain a desired heel-to-leg angle. Johnston & Murphy's accused shoe is built with an integral heel surface shaped like the top of Genesco's heel seat insert. The district court construed the claim 1 term “orthotic device” to be a separate component which is either inserted or built into a shoe, and determined that Johnston & Murphy's shoe did not infringe because it did not include the required device. Genesco appealed, arguing that its disclosure made clear that the invention was both a shoe insert and a shoe “built to have the shape” of such an insert.

Referring to the district court's opinion as “carefully-crafted,” the Court approved the district court's construction, followed by entry of summary judgment, without a Markman hearing. In response to Genesco's primary argument, the Federal Circuit first agreed with Genesco as to the scope of the invention disclosed in its patent, but noted that this was not what was claimed . Applying the presumption that a term used in different claims should be interpreted consistently throughout the claims, the Court agreed with the district court that the term “orthotic device” must be an “insert or an immovable insert portion” built into the shoe. The Court notes that this interpretation results in a consistent, “logical” reading of claims 1 and 2, whereas reading the claims as Genesco desired would result in claim 2 reciting a shoe “having as an element thereof [a shoe …],” which the Court dismissed as “obviously” not correct. Then, as if to add a note of finality to its opinion, the Court approved the district court's rejection of Genesco's argument that the claim term “rigid heel seat” included Johnston & Murphy's “semi-rigid” heel seat. Referring to this “unusual interpretation,” the Federal Circuit observed that the inventors did not define the term in this manner in the specification, and Genesco had not overcome the presumption that it surrendered semi-rigid materials during prosecution by amending the claims to overcome a reference which included semi-rigid heel seat materials. 

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