Herman v. William Brooks Shoe Co.

7 F. App'x 941
Court of Appeals for the Federal Circuit·Decided March 12, 2001·No. No. 00-1228·Published·Cited by 2 cases

Opinion

[942] DECISION

GAJARSA, Circuit Judge.

The appellant, Jack Herman (“Herman”) appeals the January 24, 2000 judgment of the United States District Court for the Southern District of New York, No. 95-CV-1324 (S.D.N.Y.2000), granting the motion of appellees Cabela’s, Inc., L.L. Bean, Inc., Raven Industries, Inc., Recreational Equipment, Inc., Rocky Shoes and Boots, Inc., U.S. Cavalry, Inc., and W.L. Gore & Associates, Inc. (collectively “L.L. Bean”) for summary judgment. The district court held that claim 1 of U.S. Patent No. 4,550,-446 (“the ’446 patent”) was invalid based on 35 U.S.C. § 102(b) as anticipated by a patent issued to Virginia Bradley — U.S. Patent No. 4,204,345 (“the ’345 patent”). We affirm.

BACKGROUND

Herman is the owner of the ’446 patent which describes “insert type” footwear that keeps users’ feet dry from the outside while allowing for the evaporation of moisture from the foot through the insert material. Claim 1 of the ’446 patent provides:

(1) A sock-type article
(2) adapted to be worn on the foot and
(3) having sole and heel regions adjacent to the sole and heel regions of a foot when worn,
(4) said sock-type article being substantially entirely formed of a light-weigh, flexible material
(5) defining an interior space receivable of a foot,
(6) said material being substantially waterproof to prevent passage of water into said interior of the sock-type article through said material and
(7) at the same time moisture vapor permeable to allow passage of evaporated perspiration which may be formed on the foot from said interior of the sock-type article though said material,
(8) whereby the foot will be maintained as dry as possible when the sock-type article is worn thereon.
(emphasis, paragraphing, and reference numbers added.)

On February 24, 1995, Herman filed suit against L.L. Bean in the United States District Court for the Southern District of New York alleging infringement of the ’446 patent.

On October 20, 1995, L.L. Bean moved for summary judgment based on, inter alia, invalidity of claim 1 of the ’446 patent in light of the ’345 patent. The ’345 patent claims a “liquid impermeable sock member,” ’345 pat, col. 2, I. 52, and describes the material used in the construction of the sock as “made from a suitable plastic that is lightweight, flexible and preferably air permeable, i.e. polyethylene, polypropylene, urethane film, etc.” Id. at col. 1, II. 53-56.

After this court reversed an unrelated appeal, see, Herman v. William Brooks Shoe Co., 111 F.3d 142, 1997 WL 130313 (Fed.Cir.1997) (Unpublished disposition), the district court conducted a Markman hearing. Because Herman conceded that elements (1) through (6) and (8) of claim 1 are disclosed by the ’345 patent, the district court construed element (7) of claim 1 of the ’446 patent, which was the remaining element in question. Therefore, the only issue before the district court was whether the limitation of a “moisture vapor permeable [material]” is disclosed in the ’345 patent. The district court construed “moisture vapor permeable” to mean “permits air, including moisture vapor, to pass through.”

At the Markman hearing, the district court reviewed the ’345 patent. The district court determined that the written description of the ’345 patent described a material that was “air permeable i.e., polyethylene, polypropylene, polyurethane [943] film, etc.” It reasoned that an air permeable material allows the transmission of both air and water vapor. Therefore, the district court concluded that element (7) of the claim was disclosed by the ’345 patent. Consequently, the district court held that because all the elements of claim 1 of the ’446 patent were disclosed in the ’345 patent, the claim was anticipated and therefore invalid.

This appeal followed.

STANDARD OF REVIEW

Claim construction is a question of law that this court reviews de novo. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir.1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When reviewing claim construction, this court gives no deference to the trial court. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248, 48 USPQ2d 1117, 1120 (Fed.Cir.1998). Anticipation is a question of fact. Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302, 36 USPQ2d 1101, 1103 (Fed.Cir.1995).

The grant of summary judgment is also reviewed de novo by this court. Summary judgment is appropriate when there are no genuine questions of material fact. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353, 47 USPQ2d 1705, 1713 (Fed. Cir.1998). In a summary judgment motion, the moving party bears the burden of showing that there are no material facts in dispute, and all reasonable inferences must be resolved in the nonmovant’s favor. Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1361-62, 47 USPQ2d 1027, 1029 (Fed.Cir.1998).

ANALYSIS

L.L. Bean asserts that claim 1 of the ’446 patent is invalid under 35 U.S.C. § 102(b) in light of the ’345 patent. A patent will be invalid if the claimed “invention was patented ... in this ... country” prior to the date of application. 35 U.S.C. § 102(b). See Electro Med. Sys. SA. v. Cooper Life Sciences, 34 F.3d 1048, 1052, 32 USPQ2d 1017, 1019 (Fed.Cir.1994).

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Herman v. William Brooks Shoe Co., 7 F. App'x 941 (Fed. Cir. 2001).

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