The patent in question, making its third appearance at the plate (i.e., at the U.S. Court of Appeals for the Federal Circuit) resulted (this time) in a ruling that absent element-by-element equivalents, there can be no infringement by equivalents. Miken Composites v. Wilson Sporting Goods, Case No. 06-1628 (Fed. Cir., Feb. 6, 2008) (Linn, J.)

Wilson is the owner of a patent that relates to the use of structural members inside bats to improve their impact response. The parties’ contentions regarding infringement revolved around two claim limitations: an “insert” positioned within a bat frame and a “gap” between the insert and the bat frame.

Several of the accused bats were conceded to contain “inserts” within the meaning of the claim language. Others, carbon bats manufactured using a successive layering process, were argued by Miken not to contain the claimed insert. For either construction, Miken argued that there was no “gap” between the bat frame and insert (if any).

The district court concluded that the layered construction carbon bats did not infringe because they did not have an insert and that the other (non-layered) bats did not infringe because there was no “gap” or “space sufficient to allow contact upon elastic deflection.” Wilson appealed.

The Federal Circuit, citing to its own prior consideration of the same patent in DeMarini Sports, held that the claimed insert was “anything put or fit into something else” and that “the bat frame, which includes the impact portion and the handle, completely surrounds and is separate from the ‘insert.’”

Despite that construction, Wilson nevertheless argued that it does not matter whether an insert is placed into a pre-existing frame or whether a frame is built around it. The Federal Circuit knocked that one out of the park, noting that the patent uses the term “‘insert’ in the sense of its ordinary meaning as something inserted or intended for insertion,” and that Wilson’s contention not only “ignores” the ordinary and customary meaning of the term “insert”, but moreover, violates the principles articulated in Phillips by attempting to broaden “the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended.”

On the issue of infringement of the carbon bats, Wilson relied upon its expert’s “load deflection tests” that established that the layers of the carbon bats were capable of independent movement. The Court slammed the bat on that argument as well, agreeing with the district court “that these tests demonstrate, at most the equivalency of the accused products as a whole … and that Wilson has not provided any factual basis or expert testimony to support an objective inquiry on an element-by-element basis.”

As for the non-layered bats that do contain “inserts,” the district court held that they did not infringe because they did not contain a “gap” or separation between the insert and impact portion, notwithstanding Wilson’s microscopy evidence that revealed “irregular and sporadic” separations that were “intermittent and discontinuous in nature.” To the contrary, the district court held that because the non-layered bats were designed to maintain an interference fit between the insert and impact portion there was no gap or separation as the claim requires.

Before the Federal Circuit, Wilson contended that the “real invention” of the patent is a bat comprising a frame and an insert which “yield[] a mechanical system with characteristics similar to a leaf-spring,” and that its load deflection tests show that the microscopic voids permit sufficient independent movement between the bat frames and inserts to yield such characteristics and to satisfy the “gap” limitation.

Once again Wilson struck out. The Federal Circuit held that “the undisputed presence of intermittent and intimate contact throughout the interface between the impact portion and the inserts of the bats, precludes a finding of infringement, because there is substantial contact inherent in bats where separations are intermittent and discontinuous or irregular and sporadic” (emphasis in original). The Court also held that even if the load deflection test demonstrate the existence a leaf spring characteristics in the accused bats, it does not establish the existence of the claimed gap.