Profoot, Inc. v. Merck & Co., Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

PROFOOT, INC.,
Plaintiff-Appellant

v.

MERCK & CO., INC.,
Defendant-Appellee
______________________

2016-1216
______________________

Appeal from the United States District Court for the
Northern District of Illinois in No. 1:11-cv-09004, Judge
John Z. Lee.
______________________

Decided: October 26, 2016
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WILLIAM L. NIRO, Niro Law Group, LLC, Chicago, IL,
argued for plaintiff-appellant. Also represented by
CHRISTOPHER W. NIRO.

DANIEL A. BOEHNEN, McDonnell, Boehnen, Hulbert &
Berghoff, LLP, Chicago, IL, argued for defendant-
appellee. Also represented by ANTHOULA POMRENING,
JORDAN JOSEPH PRINGLE.
______________________
2 PROFOOT, INC. v. MERCK & CO., INC.

Before PROST, Chief Judge, TARANTO and HUGHES, Circuit
Judges.
PROST, Chief Judge.
ProFoot, Inc. (“ProFoot”) appeals from a stipulated
judgment of noninfringement entered by the United
States District Court for the Northern District of Illinois
in favor of Merck & Co., Inc. (“Merck”), following claim
construction of U.S. Patent No. 6,845,568 (“’568 patent”).
For the reasons stated below, we affirm.
BACKGROUND
ProFoot is the owner of the ’568 patent, entitled “High
Performance Foot Bed for Sports Equipment.” The inven-
tion is a method for providing custom footwear inserts for
sports that involve symmetrical, side-to-side movement,
such as skiing, skating, and cycling. ’568 patent col. 1 ll.
9–12. The inserts “position[] the ankle joint or sub taylor
[sic] joint in a relaxed position by correcting the prona-
tion[ 1] of the foot.” Id. at col. 1 ll. 13–15. This reduces
non-functional tension in the subtalar joint, which “in-
creases the amount of relatedness between the foot and
ankle joint” and allows the athlete to move side-to-side
(e.g., shifting weight when making turns down a ski hill)
with greater agility. Id. at col. 1 ll. 45–50, col. 2 ll. 23–28.
The ’568 patent touts that its solution is superior to prior
art solutions, because it determines this “relaxed position”
while an athlete is standing on one foot, instead of on two.
Id. at col. 2 ll. 5–7.
To determine the insert that is best for a particular
athlete, the patent teaches the use of a special device
called a “neutralizer.” Id. at abstract, col. 3 ll. 1–15. The

1 Pronation refers to the natural inward rolling of
the foot that happens as a person walks or runs. ’568
patent col. 1 ll. 19–20.
PROFOOT, INC. v. MERCK & CO., INC. 3

athlete steps on the “neutralizer” one foot at a time, and a
fitting specialist uses the “neutralizer” to determine what
angle the foot should be in to place the ankle in a “neutral
position.” Id. at col. 5 ll. 11–15. The specification ex-
plains that “[t]o achieve a neutral position, the operator
visually examines the tendons by the ankle until they are
in a relaxed state or are working equally.” Id. at col. 4 ll.
22–24. It also discloses two different embodiments of the
“neutralizer,” shown in Figures 1 and 2:
4 PROFOOT, INC. v. MERCK & CO., INC.

Claims 1 and 3 are asserted. They recite:
1. A method of fitting an individual with right and
left foot inserts which place the ankles of the indi-
vidual in a neutral position comprising the steps
of:
for creating a right foot insert, having the individ-
ual place the right foot on a neutralizer while ele-
vating the left foot off of the neutralizer;
using the neutralizer to determine the angle nec-
essary to place the right ankle in a neutral posi-
tion;
providing an insert having an angle which repre-
sents the neutral state for the right ankle;
for creating a left foot insert, having the individu-
al place the left foot on a neutralizer while elevat-
ing the right foot off of the neutralizer;
using the neutralizer to determine the angle nec-
essary to place the left ankle in a neutral position;
and
providing an insert having an angle which repre-
sents the neutral state for the left ankle.
....
3. The method of claim 1 wherein said insert is
provided to a user by selecting said insert from a
plurality of predetermined inserts.
’568 patent col. 5 l. 14–col. 6 l. 14 (emphases added).
On June 17, 2015, the district court construed the
terms “neutralizer” and “neutral position,” as well as four
others. The district court construed “neutralizer” as “a
device that has a housing, a protractor, and an angularly
adjustable plate capable of supporting the foot.” J.A. 10.
It construed “neutral position” as “a position in which
PROFOOT, INC. v. MERCK & CO., INC. 5

subtalar joint is in the relaxed position due to the lack of
pronation or supination.” J.A. 12.
Based on the district court’s constructions, the parties
stipulated to a judgment of noninfringement of all of the
asserted claims of the ’568 patent. The district court
entered final judgments under Rule 54(b) of the Federal
Rules of Civil Procedure.
ProFoot now appeals. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
DISCUSSION
A claim term’s ultimate construction is a question of
law reviewed de novo, while underlying factual determi-
nations are reviewed for clear error. Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S.Ct. 831, 842 (2015). “When the
district court reviews only evidence intrinsic to the patent
(the patent claims and specifications, along with the
patent's prosecution history), the judge’s determination
will amount solely to a determination of law, and the
Court of Appeals will review that construction de novo.”
Id. at 841.
ProFoot challenges the district court’s construction of
two claim terms: (1) “neutralizer,” and (2) “neutral posi-
tion.” The parties agree that, under the district court’s
construction of “neutralizer” alone, Merck does not in-
fringe the ’568 patent. Oral Argument at 1:30–2:01,
23:55–24:26, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2016-1216.mp3. Because we
agree that the district court correctly construed this term,
we do not reach “neutral position.”
With respect to “neutralizer,” ProFoot argues that the
district court erred by naming specific components that
comprise the neutralizer (e.g., a housing, a protractor, and
an angularly adjustable plate capable of supporting the
foot) in its construction. In ProFoot’s view, this construc-
tion is too narrow because the claims are silent as to what
6 PROFOOT, INC. v. MERCK & CO., INC.

components comprise the neutralizer, and a person of
ordinary skill in the art would recognize that a “neutral-
izer” is simply just some kind of measuring device.
ProFoot posits that the district court relied too heavily on
the ’568 patent’s specification and also the prosecution
history from the parent to the ’568 patent, U.S. Patent
No. 6,564,465 (“the parent ’465 patent”), neither of which
it contends are controlling. We address each in turn.
The words of a claim are generally given their ordi-
nary and customary meaning, which is the meaning that
the term would have to a person of ordinary skill in the
art at the time of the invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim
terms “do not stand alone,” but “must be read in view of
the specification, of which they are a part.” Id. at 1315
(citation omitted). The specification is “highly relevant”
and often “the single best guide to the meaning of a
disputed term.” Id. (citation omitted). In addition, “the
prosecution history can often inform the meaning of the
claim language by demonstrating how the inventor un-
derstood the invention.” Id. at 1317. Accordingly, “the
only meaning that matters in claim construction is the
meaning in the context of the patent.” Trs. of Columbia
Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir.
2016).
Although ProFoot is correct that the asserted claims
do not recite the specific components that comprise the
neutralizer, we agree with the district court that, when
read in the context of the ’568 patent, this term requires a
device that includes these components. We begin with the
claims themselves, as “the context in which a term is used
in the asserted claim can be highly instructive.” Phillips
415 F.3d at 1314. Here, the claims state that the neutral-
izer is something that the athlete steps on, one foot at a
time, see id. at col. 5 ll. 11–13, col. 6 ll. 3–5, and is “us[ed]
. . . to determine the angle necessary to place the
[left/right] ankle in a neutral position,” id. at col. 5 ll. 14–
PROFOOT, INC. v. MERCK & CO., INC. 7

15, col. 6 ll. 6–7. It would be hard to imagine how this
could be accomplished without something for the athlete
to step on—such as an angularly adjustable plate capable
of supporting the foot—and something to measure an
angle—such as a protractor. Although this language, by
itself, is not strong enough to require these components, it
at least supports the district court’s construction.
The specification, however, closes this gap. “[W]hen a
patent ‘repeatedly and consistently’ characterizes a claim
term in a particular way, it is proper to construe the claim
term in accordance with that characterization.” GPNE
Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016)
(citing VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308,
1318 (Fed. Cir. 2014); ICU Med., Inc. v. Alaris Med. Sys.,
Inc., 558 F.3d 1368, 1374–75 (Fed. Cir. 2009)). Here, the
specification discloses only two embodiments of the neu-
tralizer. ’568 patent col. 3 ll. 1–15. Both name all the
components listed in the district court’s construction:
The present invention includes a number of com-
ponents such as a foot neutralizer 10 as shown in
FIG. 1 . . . . Neutralizer 10 includes a housing 12,
protractor 14, an angularly adjustable plate 16,
crank 18 with threaded rod 19 having threads 23
that coact with threads 21 on support 22, and rod
24. Bearings 11A, 11B, 11C and 11D may also be
provided for ease of operation.
FIG. 2 shows an alternate embodiment of a foot
neutralizer 100. It includes a housing 102, angu-
larly adjustable plate 104, foot rests 106 and 108,
upright support bar 110, and a positionable hori-
zontal bar 112 that adjustably slides along bar
114 of support 110. Also included is protractor
116.
Id. (emphases added). In addition, the abstract states
that “[t]he neutralizer has a housing, protractor, and an
angularly adjustable plate capable of supporting the foot.”
8 PROFOOT, INC. v. MERCK & CO., INC.

Id. at abstract (emphasis added). At no point does the
patent describe an embodiment of a neutralizer that does
not have these components, nor does it give any indication
that it contemplates a neutralizer that would not have
these components. Rather, inclusion of these components
is consistent with the specification’s description of how
the neutralizer is used: the athlete stands on the device
(e.g., through the angularly adjustable plate, encased in
or sitting on top of a housing) and the fitting specialist
uses it to determine the angle that would place the foot in
a “neutral position” (e.g., using a protractor). See id. at
col. 4 ll. 7–9, 40–42, 50–59; see also col. 5 ll. 11–15, col. 6
ll. 3–7. Accordingly, because the specification consistently
and repeatedly discloses that the neutralizer includes the
housing, protractor, and angularly adjustable plate com-
ponents, the district court did not err in including them in
its construction.
Finally, the prosecution history of the parent ’465 pa-
tent supports the district court’s construction. Originally,
when the application for the parent ’465 patent was filed,
it contained a single claim for “[a] method for creating a
pair of foot inserts” that recited a process similar to that
claimed in claim 1 of the ’568 patent, but did not recite
any specific device or mechanism that was used to per-
form this process. J.A. 100. However, through a series of
amendments seeking to overcome prior art rejections, this
claim was eventually cancelled and replaced with a claim
that recited a substantially similar process but also
specifically required “a neutralizer . . . said neutralizer
having a housing, protractor, an angularly adjustable
plate capable of supporting a foot” to perform the claimed
process. J.A. 147. Although this history arose during
prosecution of the parent ’465 patent, it is still relevant
here as evidence of the inventor’s understanding of “neu-
PROFOOT, INC. v. MERCK & CO., INC. 9

tralizer” at the time. 2 See Phillips 415 F.3d at 1317
(“[T]he prosecution history can often inform the meaning
of the claim language by demonstrating how the inventor
understood the invention.”); cf. Ormco Corp. v. Align
Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (“When
the application of prosecution disclaimer involves state-
ments from prosecution of a familial patent relating to the
same subject matter as the claim language at issue in the
patent being construed, those statements in the familial
application are relevant in construing the claims at
issue.”). The specifications and the claims of the parent
’465 patent and the ’568 patent are substantially similar,
and nowhere in the ’568 patent does the inventor indicate
that he intended the “neutralizer” of the ’568 patent to be
different from the “neutralizer” in the parent ’465 patent.
Accordingly, the prosecution history of the parent ’465
patent also supports the district court’s inclusion of the

2 In addition, we have recognized that prosecution
history disclaimer in a parent application may bind
continuation or continuation-in-part applications, if they
involve the same claim limitation. Omega Eng’g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003) (“As
long as the same claim limitation is at issue, prosecution
disclaimer made on the same limitation in an ancestor
application will attach.”). This is not the case here be-
cause, even though both claim 1 of the parent ’465 patent
and claim 1 of the ’568 patent include the term “neutral-
izer,” only claim 1 of the parent ’465 patent contains the
limitation “said neutralizer having a housing, protractor,
an angularly adjustable plate capable of supporting a
foot.” To the extent there is prosecution history disclaim-
er in the parent ’465 patent (a question we decline to
answer), only this limitation would disclaim all neutral-
izers that do not contain these three components, so this
disclaimer cannot be inherited by the ’568 patent.
10 PROFOOT, INC. v. MERCK & CO., INC.

housing, protractor, and angularly adjustable plate com-
ponents within the meaning of “neutralizer.”
ProFoot nevertheless contends that the prosecution
history does suggest that the “neutralizer” of the ’568
patent was intended to be different from the “neutralizer”
in the parent ’465 patent because claim 1 of the parent
’465 patent recites “said neutralizer having a housing,
protractor, an angularly adjustable plate capable of
supporting a foot” but claim 1 of the ’568 patent does not.
This argument turns the correct analysis on its head.
Here, the prosecution history merely stands as supporting
evidence that, starting with the parent ’465 patent, the
inventor understood “neutralizer” to include the housing,
protractor, and angularly adjustable plate components.
The omission of these limitations in the ’568 patent is not
inconsistent with this; instead, the overwhelming similar-
ities between the parent ’465 patent and the ’568 patent
suggest that the inventor intended “neutralizer” to have
the same meaning between the two patents. If he had
not, he could have said so explicitly, or revised the ’568
patent to include other, broader embodiments of the
neutralizer. Accordingly, when read in combination with
the rest of the intrinsic evidence, the prosecution history
supports, rather than refutes, the district court’s con-
struction.
We also do not find any of the other arguments that
ProFoot advances in support of its position persuasive.
For example, ProFoot argues that a person of ordinary
skill in the art would recognize that a “neutralizer” is
simply just some kind of measuring device, pointing to an
asserted prior art reference, U.S. Patent No. 5,979,067 to
Waters (“Waters”), for support. However, Waters does not
contain the word “neutralizer,” see J.A. 593–602, which
appears to be a term coined by the inventor of the ’568
patent. Moreover, this is extrinsic evidence, which is “less
significant than the intrinsic record in determining the
‘legally operative meaning of claim language.’” Phillips,
PROFOOT, INC. v. MERCK & CO., INC. 11

415 F.3d at 1317 (citations omitted). Accordingly, in light
of the compelling intrinsic record supporting the district
court’s construction, this does not compel a different
result.
CONCLUSION
The district court did not err in construing the term
“neutralizer.” We need not reach “neutral position”
because, under the district court’s construction of “neu-
tralizer,” Merck does not infringe. Oral Argument at
1:30–2:01, 23:55–24:26. We therefore affirm the district
court’s stipulated judgment of noninfringement.
AFFIRMED