Saso Golf, Inc. v. Nike, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SASO GOLF, INC.,
Plaintiff-Appellant
v.
NIKE, INC.,
Defendant-Appellee
______________________
2020-1456
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:08-cv-01110, Judge
Andrea R. Wood.
______________________
Decided: February 10, 2021
______________________
M EG E. FASULO , Bartlit Beck Herman Palenchar &
Scott LLP, Denver, CO, argued for plaintiff-appellant. Also
represented by ERIC H. WEIMERS , Law Office of Eric H.
Weimers, Chicago, IL.
M ICHAEL JOSEPH H ARRIS , Arnold & Porter Kaye
Scholer LLP, Chicago, IL, argued for defendant-appellee.
Also represented by CHRISTOPHER J. RENK .
______________________
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SASO GOLF, INC. v. NIKE , INC. 2
Before O’M ALLEY, R EYNA, and H UGHES , Circuit Judges.
H UGHES , Circuit Judge.
Saso Golf, Inc. owns U.S. Patent No. 5,645,495, which
claims a particular golf club shape. Saso sued Nike, Inc. for
infringing claim 7 of the patent. The U.S. District Court for
the Northern District of Illinois held the claim invalid due
to indefiniteness. Because we agree with the district court
that claim 7 is indefinite, we affirm.
I
Claim 7 of the ’495 patent regards the shape of a golf
club, specifically a wood. According to the patent, the cen-
tral innovation is in moving mass from the toe side of a golf
club (the half of the clubhead furthest from the player) to-
ward the heel side (the half of the clubhead nearest to the
player), which can help a player avoid “hook shots.” [JA
54] The specification discusses in depth the importance of
this mass shift and how it can help a player avoid twisting
the clubhead when hitting a golf ball. J.A. 54–55. In the
figure below, dashed lines show a prior art golf club, while
solid lines show an embodiment of the invention with mass
transferred to the heel side.
Annotated Figure 1, Appellant’s Br. 30.
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SASO GOLF, INC. v. NIKE , INC. 3
Saso’s application originally claimed shifting mass to
the heel side of a golf club. The examiner rejected the
claims as “clearly anticipated” by prior art that disclosed a
golf club with mass “concentrated at the heel portion.”
J.A. 1483. Saso subsequently amended the claims to de-
scribe the shape of the golf club, specifically the radius of
curvature of each side. In essence, by bulging out a portion
of the heel side of the club, the patent moves mass toward
the heel side while claiming the invention in terms of
shape. The examiner accepted this change. Claim 7 is at
issue here:
7. A golf club comprising:
a metallic wood type head including a cylindrical
hosel portion formed integrally therewith;
said metallic wood type head having a heel side
and a toe side, said metallic wood type head
having a hitting surface extending from the
toe side to said heel side, the hitting surface
having substantially the same curvature
along a transverse direction as a longitudinal
direction,
said metallic wood type head further comprising
a toe, a heel, and a back side profile shape
extending from the toe side to the heel side,
said back side profile shape between the toe
and a most rearwardly point of said metallic
wood type head having a radius of curvature
that is larger than the radius of curvature of
said back side profile shape between the most
rearwardly point of said metallic wood type
head and the heel.
’495 Patent at 6:22–37.
To determine whether a golf club infringes claim 7, one
must: (1) measure the radius of curvature of the “back side
profile shape” of the club head between the club’s “toe” and
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SASO GOLF, INC. v. NIKE , INC. 4
its most rearwardly point; (2) measure the radius of curva-
ture of the back side profile shape between the club’s “heel”
and its most rearwardly point; and (3) determine whether
the first value is larger than the second value. Making
these calculations requires picking a specific point on the
“toe” and “heel” from which to measure. But here, the defi-
nitions of “toe” and “heel” are at issue. While the parties
agree that the terms refer to regions on the toe and heel
sides as shown below, the parties dispute whether the size,
shape, and locations of these regions and where within
them to begin measurements are reasonably certain.
Annotated Figure 1, Appellant’s Br. 30.
II
In 2008, Saso sued Nike in the Northern District of Il-
linois for infringement of claim 7. Nike argued that claim 7
was invalid due to indefiniteness.
The radius of curvature calculation is not described in
the specification. Nike argued that an artisan would not be
able to determine the locations of the “toe” and the “heel”
without further definition in the specification, which
meant that an artisan would not know from where to meas-
ure the radii of curvature. Nike provided expert testimony
in support of this argument. For example, Ralph Maltby
stated that “toe” and “heel” were “general terms” and were
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SASO GOLF, INC. v. NIKE , INC. 5
“susceptible to different interpretations” at the time, J.A.
2418–19, and that the patent would cover different club-
heads depending on the definitions of the terms, J.A. 2425.
Dr. Jack Hu testified to the same effect, noting that “toe”
and “heel” “have no commonly understood or accepted tech-
nical definitions.” J.A. 2370. This creates a problem for
claim 7, Dr. Hu testified, because “[t]he patent does not ex-
plain where to identify these locations on a golf club head.
Accordingly, the ‘495 patent does not advise the person of
skill in the art where to measure the golf club head.”
J.A. 2370–71. John Stites similarly testified that “toe” and
“heel” were “general terms.” J.A. 2493.
Saso countered with its own expert, Mark Myrhum,
who stated in a conclusory fashion that all terms at issue
“have a definite and readily ascertainable meaning to one
of ordinary skill in the art.” J.A. 2802. But Mr. Myrhum did
not make any statement defining the horizontal bounda-
ries of the toe and heel. Instead, he opined that the edges
of the toe and heel were irrelevant to the present dispute.
See J.A. 2812 (“[T]he toe and heel each also has a horizontal
extent. . . . However, in my opinion, the exact location
and/or extent of the heel and toe need not be determined to
construe claim 7 of the ‘495 patent.”).
The district court agreed with Saso that the terms “toe”
and “heel” refer to regions rather than specific points, but
the court rejected Saso’s argument that there was no need
to pick a specific point on the toe and the heel from which
to begin measurements. J.A 34–39. Therefore, the district
court narrowed the claim construction dispute to a single
legal question (whether claim 7 is indefinite) with a single
underlying factual question (whether an artisan would
know the boundaries of the toe and heel). J.A. 39 (“[F]rom
where on the toe and heel does one measure[?]. . . Or is this
where the patent becomes too indefinite to construe?”) (em-
phasis in original).
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SASO GOLF, INC. v. NIKE , INC. 6
In briefing this question, Nike maintained that the
claim was indefinite because an artisan would not know
from where to measure. Saso argued that an artisan would
know to measure from the edges of the toe and heel, but
Saso did not provide any explanation of how to determine
the locations of those edges. Neither side presented any
new expert testimony, and the district court declared claim
7 indefinite. The court held that “[w]ith nothing suggesting
where the toe side and heel side end points are located, it
is not clear from where on each surface one measures to the
most rearwardly point to determine the radii of curvature”
and that the claim is therefore indefinite. J.A. 44.
Saso appeals.
III
We review a determination of indefiniteness de novo.
Dow Chem. Co. v. Nova Chems. Corp. (Canada), 803 F.3d
620, 625 (Fed. Cir. 2015). Factual findings underlying the
conclusion—such as findings regarding the knowledge of a
skilled artisan—are subject to clear error review. Teva
Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1337
(Fed. Cir. 2015).
Here, the district court made a factual finding that an
artisan would not know the precise bounds of the toe and
heel of a golf club. Although the district court’s final deci-
sion did not explicitly state that this was a factual finding,
the nature of the finding was clear from the context in
which the decision issued. By the time the district court is-
sued its final decision, the dispute had narrowed to a single
legal question (whether claim 7 is indefinite) with a single
underlying factual question (whether an artisan would
know the boundaries of the toe and heel). See J.A. 38–39
(rejecting Saso’s argument that there was no need to deter-
mine a precise point related to the toe and heel from which
to measure and requesting additional briefing on the ques-
tion of whether an artisan would know where to find those
points); see also id. at 34 (“[T]he Court now turns to
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SASO GOLF, INC. v. NIKE , INC. 7
pinpointing the exact location of the ‘toe’ [and] ‘heel’….”).
With this context in mind, it is apparent that when the dis-
trict court said “Saso itself does not indicate where the
edges of the toe side and heel side are located” and “it is not
clear from where on each surface one measures,” the dis-
trict court made an underlying factual finding that an ar-
tisan would not inherently know the edges of the toe and
the heel. J.A. 44; see also Teva Pharm. USA, Inc. v. Sandoz,
Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (“Understand-
ings that lie outside the patent documents about the mean-
ing of terms to one of skill in the art or the science or state
of the knowledge of one of skill in the art are factual is-
sues.”). Even Saso, in its briefing before the district court,
contended that the locations of the toe and heel boundaries
are factual questions. J.A. 44.
We hold that the district court did not clearly err in this
factual finding. Nike presented three experts whose testi-
mony bore on the question of whether an artisan would
know from where to begin the radius of curvature measure-
ment.1 Each testified that artisans did not consider the
1 Saso argues that Nike’s expert testimony is irrele-
vant because it was submitted at an earlier stage of the
dispute when Nike contended that the terms “toe” and
“heel” referred to points rather than regions. Reply Br. 14–
17. This argument fails for two reasons. First, Saso appears
to mischaracterize Nike’s stance. Nike’s stance at the time
was that “toe” and “heel” had multiple definitions and were
therefore indefinite, an argument they still maintain. Com-
pare J.A. 1334 (“[T]hey have varying meanings, and there
is no single common understanding as to the exact location
of the toe or heel on a club head.”) with Appellee’s Br. 59
(“[There are] multiple definitions for ‘toe’ and ‘heel’ that
have been used in the art and that yield different re-
sults. . . .”). Second, Nike’s arguments at various stages of
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SASO GOLF, INC. v. NIKE , INC. 8
terms “toe” and “heel” to have a single definition. See J.A.
2418–19 (noting the terms were “susceptible to different in-
terpretations”); J.A. 2370 (noting the terms were “suscep-
tible to different definitions”); J.A. 2493 (“I am not aware
of a single, standard definition. . . .”). The consistent thrust
of their testimony was that an artisan would not be able to
choose a point related to the toe and heel from which to
measure because “toe” and “heel” are general terms. See
e.g. J.A. 2370–71 (“[T]he patent does not explain where to
identify these locations on a golf club head. Accordingly,
the ‘495 patent does not advise the person of skill in the art
where to measure the golf club head.”); J.A. 2419 (“[T]he
‘495 patent does not explain where the measurements of
claim 7 are to be taken. This is problematic because the
disputed terms listed above are general terms. . . .”). More
importantly, Saso never explained how to find the bounda-
ries of the toe and heel. As the district court emphasized,
“nothing in the record” explains the boundaries, nor did
Saso offer any theory in its briefs. J.A. 44. Saso’s lone ex-
pert on the issue testified that the exact boundaries of the
toe and heel “need not be determined.” J.A. 2812. Thus, it
was not clear error for the district court to find that an ar-
tisan would not reasonably know the boundaries of the toe
and heel.
Saso argued at the district court that because this was
a factual question, it should have gone to the jury, J.A. 44,
but that was not necessary. The meaning of a patent term
is a question for the judge, even though some of the ques-
tions underlying claim construction may involve credibility
determinations. See Markman v. Westview Instruments,
Inc., 517 U.S. 370, 389 (1996) (rejecting the argument that
the dispute do not alter the actual testimony of the experts.
Although district courts often resolve certain disputes
along the way, portions of expert testimony may remain
relevant, and we analyze the relevant portions here.
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“a jury should decide a question of meaning peculiar to a
trade or profession simply because the question is a subject
of testimony requiring credibility determinations.”) Moreo-
ver, here, there was no genuine dispute about whether an
artisan would know the precise edges of the “toe” and
“heel.” “[A] conclusory statement on the ultimate issue does
not create a genuine issue of fact.” See Imperial Tobacco
Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir.
1990). And Nike provided the only non-conclusory testi-
mony regarding the location of the toe and heel. Saso’s ex-
pert never indicated that an artisan would know those
boundaries, J.A. 2812, and even Saso admits that their ex-
pert “did not opine on the boundary question that is rele-
vant now.” Reply Br. 17. The expert’s conclusory statement
that all terms in the patent “have readily ascertainable
meaning[s]” is no more than a recitation of the ultimate
conclusion—and indeed, is followed immediately by a sen-
tence opining that the precise locations of the toe and heel
are irrelevant. See J.A. 2802.
The district court gave the parties a narrow question:
“from where … does one measure[?]” J.A. 39. And the court
clearly instructed the parties to explain “why skilled arti-
sans would adopt those proposed points.” Id. The district
court credited Nike’s experts’ opinions that an artisan
would not know where to measure because Saso provided
no explanation of how an artisan could determine the loca-
tions. We affirm that finding.
IV
Under the Supreme Court’s precedent in Nautilus, a
patent is indefinite if its claims, “read in light of the speci-
fication . . . and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the
scope of the invention.” Nautilus, Inc. v. Biosig Instru-
ments, Inc., 572 U.S. 898, 901 (2014). Because an artisan
would not already know the bounds of the toe and heel of a
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golf club, and because the patent provides no guidance, we
hold that claim 7 is indefinite.
A
As this court recently explained, our precedents indi-
cate that “a claim may be invalid as indefinite when (1) dif-
ferent known methods exist for calculating a claimed
parameter, (2) nothing in the record suggests using one
method in particular, and (3) application of the different
methods result in materially different outcomes for the
claim’s scope.” Ball Metal Beverage Container Corp. v.
Crown Packaging Tech., Inc., No. 2020-1212, 2020 WL
7828776, at *3 (Fed. Cir. Dec. 31, 2020) (citing Teva
Pharms. USA, 789 F.3d at 1345; Dow Chem., 803 F.3d at
634). Claim 7 of the ’495 patent is indefinite under similar
logic.
Here, to know whether a golf club infringes the patent,
an artisan must make two radius of curvature measure-
ments, one starting from a point on the toe of the club and
one starting from a point on the heel of the club. J.A. 33–
34. As the district court noted, unless the sides of the golf
club are segments of a perfect circle, changes in the start-
ing point of the measurements can change the results of
the measurement. Id. Almost every golf club, including the
preferred embodiment, is more complex than a segment of
a perfect circle. J.A. 27–28. So, for an artisan to be reason-
ably certain whether a golf club falls within the scope of the
patent, they must be reasonably certain of the measure-
ment points. See J.A. 33 (“[T]he radius of curvature meas-
urements . . . necessarily depend on identifying exact
locations of the toe, heel, and most rearwardly point.”); id.
2425 (opining that “applying a different interpretation” of
“toe” and “heel” would make the patent cover different
clubheads). Therefore, we agree with the district court that
claim 7 is indefinite, given that “it is not clear from where
on each surface one measures to the most rearwardly point
to determine the radii of curvature. . . .” J.A. 44.
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Having accepted the district court’s factual finding that
artisans do not bring consistent and precise definitions of
the toe and heel to their reading of the patent, we now con-
sider whether the patent specification or prosecution his-
tory provide any guidance. See Nautilus, 572 U.S. at 901.
Here, there is no definition for the terms “toe” and “heel” in
the patent, nor is there any instruction on how the radius
of curvature calculations should be made. The prosecution
history provides no guidance either—the claims regarding
radius of curvature spawned from an in-person interview
with the examiner, and the record does not reflect the spe-
cifics of the radius of curvature measurements. See J.A.
1623, 1637, 1667–69.
Here, there are multiple methods of calculating the ra-
dii of curvature because the calculations depend on pin-
pointing the locations of the toe and heel. Nothing in the
record indicates that an artisan would inherently know the
locations of those boundaries and the patent provides no
guidance. The scope of the claim depends on these meas-
urements. As such, claim 7 does not “afford clear notice of
what is claimed, thereby apprising the public of what is
still open to them.” Nautilus, 572 U.S. at 909 (quoting
Markman, 517 U.S. at 373 (internal quotation marks omit-
ted)). We affirm the district court’s holding that claim 7 is
indefinite.
B
Saso nonetheless argues we must remand because the
district court applied an indefiniteness standard that was
overturned by the Supreme Court’s precedent in Nautilus.
See Appellant’s Br. 18–20. But this argument fails for two
reasons.
First, Saso explicitly waived this argument at the dis-
trict court. When the Nautilus decision issued between the
final briefing on indefiniteness and the district court’s final
decision in this case, Saso turned down the opportunity to
offer briefing on Nautilus, arguing that it was no different
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than the previous standard. See J.A. 3260 (calling the rea-
sonable certainty standard of Nautilus “a different label for
the same thing”). We will not consider Saso’s present argu-
ment that the district court erred by applying the previous
standard when Saso only assigned importance to the dif-
ference in standards after an adverse outcome at the dis-
trict court.
Second, even if Saso had not waived the arguments re-
garding Nautilus, the district court’s decision is consistent
with the “reasonable certainty” standard. To be sure, the
district court never used the exact words “reasonable cer-
tainty,” but the court never used the phrase “insolubly am-
biguous” either, which would have been a telltale sign that
the court applied the wrong standard. See Nautilus, 572
U.S. at 901 (replacing the “insolubly ambiguous” standard
with one of “reasonable certainty”). Instead, the district
court said that “it is not clear from where on each surface
one measures” and that the claim is therefore “too indefi-
nite to be valid.” J.A. 44. Though the reasoning in that sec-
tion of the opinion may be brief, a lack of clarity is
consistent with a lack of reasonable certainty. Brevity is
not legal error.
Regardless, we review the legal issue of indefiniteness
de novo, and we hold that the claim is indefinite.
C
Saso also contends that the district court demonstrated
a lack of understanding of the patent by using the terms
“toe side” and “heel side” when the correct terms would
have been “toe” and “heel.” Appellant’s Br. 29. While the
district court was occasionally loose in its distinctions be-
tween the terms “toe,” “toe region,” and “toe side,” the court
demonstrated a clear grasp of the nature of the dispute.
The district court plainly described the issue: “where on the
toe and heel sides the end points for measurement of the
toe and heel radii of curvature should be measured.” J.A.
44. And the district court clearly answered the question:
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“With nothing suggesting where the toe side and heel side
end points are located, it is not clear where on each surface
one measures. . . .” Id.
“We sit to review judgments, not opinions.” Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983).
And here, the opinion language was certainly not so impre-
cise “as to obfuscate the true basis for the judgement.” Id.
The district court held that the claim was indefinite be-
cause it was not clear where an artisan would take the re-
quired measurements. We agree and affirm the judgment.
V
Choosing precise points from which to measure the ra-
dii of curvature is essential to knowing whether a golf club
infringes the ’495 patent. The district court did not clearly
err in its findings that the patent provided no guidance on
where to locate the points (the toe and heel) and that an
artisan would not know specific definitions for those areas.
Therefore, we agree with the district court’s legal conclu-
sion and hold that claim 7 of the patent is invalid for indef-
initeness because it fails to inform an artisan of the scope
of the claim with reasonable certainty.
AFFIRMED
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