Merck triumphs again in row over footwear patent

The US Court of Appeals for the Federal Circuit has affirmed a district court’s ruling in a patent dispute between foot care company ProFoot and pharmaceutical business Merck.

Yesterday’s ruling affirmed that Merck does not infringe ProFoot’s patent.

ProFoot is the owner of US patent number 6,845,568, titled “High performance foot bed for sports equipment”.

According to ProFoot, Merck had infringed its patent via Dr. Scholl’s Custom Fit Orthotic Centers and Custom Fit Orthotic Inserts, which are manufactured, marketed and sold by Merck.

Dr. Scholl’s Custom Fit Orthotic Centers are special kiosks developed to produce foot inserts for customers. The kiosks use a device to measure the pressure of the foot, and this technology allegedly infringes ProFoot’s patent.

As explained in the ruling, the invention of the ‘568 patent “is a method for providing custom footwear inserts for sports that involve symmetrical, side-to-side movement, such as skiing, skating, and cycling”.

The inserts work by putting the ankle joint in a relaxed position by correcting the pronation of the foot, reducing non-functional tension in the subtalar joint.

In order to determine the insert that is best for an athlete, a special device called the “neutraliser” is used to ascertain when the foot is in a “neutral state”.

ProFoot appealed against the decision from the US District Court for the Northern District of Illinois, which had said there was no infringement, arguing that the court erred by naming specific components that comprise the neutraliser when interpreting the claims.

The company further argued that the court relied too heavily on the ‘568 patent’s specification, as well as the prosecution history of the patent’s parent, US number 6,564,465.

The Federal Circuit said in the ruling: “Although ProFoot is correct that the asserted claims do not recite the specific components that comprise the neutraliser, 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.”

According to the Federal Circuit, the prosecution history of the parent ‘465 patent also supports the district court’s inclusion of the housing, protractor, and angularly adjustable plate components within the meaning of neutraliser.

The Federal Circuit ruled in the appeal that the district court did not err in construing the term neutraliser.