       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

     NASSAU PRECISION CASTING CO., INC.,
              Plaintiff-Appellant,

                           v.

   ACUSHNET COMPANY, INC., COBRA GOLF
  COMPANY, AND PUMA NORTH AMERICA, INC.,
             Defendants-Appellees.
            ______________________

                      2013-1410
                ______________________

    Appeal from the United States District Court for the
Eastern District of New York in No. 10-CV-4226, Judge
William F. Kuntz, II.
                 ______________________

                 Decided: June 6, 2014
                ______________________

   DARIUSH KEYHANI, Meredith & Keyhani, PLLC, of
New York, New York, argued for plaintiff-appellant. With
him on the brief was SIDNEY R. BRESNICK.

    JOSHUA C. KRUMHOLZ, Holland & Knight LLP, of Bos-
ton, Massachusetts, argued for defendants-appellees.
With him on the brief was BENJAMIN M. STERN.
                ______________________
2      NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



    Before WALLACH, TARANTO, and CHEN, Circuit Judges.
TARANTO, Circuit Judge.
    Nassau Precision Casting Co., Inc., owns United
States Patent No. 5,486,000, entitled “Weighted Golf Iron
Club Head.” In September 2010, Nassau sued Acushnet
Company, Inc., Cobra Golf Company, and Puma North
America, Inc. (collectively, “Acushnet”) for infringement of
the ’000 patent. Nassau appeals from a decision of the
United States District Court for the Eastern District of
New York that granted Acushnet’s motion for summary
judgment of non-infringement. For the reasons set out
below, we affirm in part, vacate in part, and remand.
                       BACKGROUND
     The ’000 patent describes what it says is an improve-
ment in the distribution of weight within the head of a
golf club. The purpose of the invention is to achieve
“sweet spot-enhancement, i.e. significant improvement in
the ball-striking efficacy of the club head, while maintain-
ing the same starting overall weight of the club head.”
’000 patent, col. 1, lines 58-61. The ’000 patent states
that “in the typical use of a golf club iron the ball is never
intentionally struck near or at the top edge of the club
face, but always at the ‘sweet spot’ or below,” and there-
fore calls for removing material (generally metal or graph-
ite) from the “top edge central portion” of the golf club
head and relocating it to a lower position, preferably near
the bottom edge of the golf club head. ’000 patent, col. 2,
lines 7-9; id., col. 3, lines 10-20. Figures 5 and 10 of the
’000 patent depict a prior art golf club head and a golf
club head contemplated by the ’000 patent, respectively:
4      NASSAU PRECISION CASTING     v. ACUSHNET COMPANY, INC.



    contributes to increasing said height attained by a
    struck golf ball.
       2. A method of improving the weight-
    distribution of a selected construction material
    constituting a golf iron club head with a ball-
    striking surface bounded in a vertical perspective
    by top and bottom surfaces and in a horizontal
    perspective by toe and heel portions said method
    comprising the steps of removing construction ma-
    terial from a central portion of said top surface,
    determining the weight of said removed construc-
    tion material, and embodying as part of selected
    bottom areas of said toe and heel of said club head
    said removed construction material having said
    determined weight, whereby the weight is distrib-
    uted to said selected bottom area without any in-
    crease in the overall weight of the club head.
’000 patent, col. 4, lines 16-44.
    On September 16, 2010, Nassau brought this action,
accusing Acushnet of infringing claims 1 and 2 of the ’000
patent by making, offering to sell, and selling its Cobra
S9, Cobra S9 Second Generation, King Cobra UFi, and
Cobra S2 clubs. Nassau Precision Casting Co., Inc. v.
Acushnet Co., Inc., 940 F. Supp. 2d 76, 78 (E.D.N.Y.
2013); Compl.¶¶ 14, 18, Nassau Precision Casting Co.,
Inc. v. Acushnet Co., Inc., No. 10-CIV-4226 (E.D.N.Y. Sep.
16, 2010) (ECF No. 1). The following characteristics of
the named clubs—not of the processes by which they were
designed or manufactured—are not in dispute. None of
the accused clubs has a concave-from-above topline like
the one depicted in figure 10 of the ’000 patent; the face of
each club, in the upper portion, has a profile like that of
the prior-art club head shown in figure 5. But the top
surface (not face) of each club contains a channel in the
metal/graphite construction material, and a lightweight
polymer insert fills that channel. To ensure that the total
NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.      5



weight of the club head is the same as if the met-
al/graphite construction material filled the channel, the
bottom heel and toe of the club head contain more met-
al/graphite construction material than if no channel
existed at the top—the extra amount equal in weight to
the construction material “missing” from the top minus
the weight of the polymer insert. Id. at 83.
    On April 17, 2013, the district court granted summary
judgment of non-infringement in favor of Acushnet. Id. at
78. The district court concluded that “the ordinary mean-
ing of terms in Claims 1 and 2 such as ‘remove,’ ‘relocate,’
and ‘construction material’ is the shifting or redistrib-
uting of mass or weight in a golf club head design in order
to achieve an optimal weight distribution.” Id. at 90.
Treating that language as not referring to any actual
process of manufacture or design, but to where weight is
in a club compared to where it would be in some other
model club, the court nevertheless held both claims not to
be infringed as a matter of law.
     As to claim 2, the district court reasoned that the
claim requires that “all of the construction material or
weight removed from the top of the club be embodied in
the selected bottom areas,” while not changing the net
weight of the club. Id. at 92. In the accused clubs, how-
ever, an amount of construction material equal to only the
difference in weight between the polymer insert and the
removed construction material is embodied in the bottom
areas of the accused clubs—not the entire “determined
weight” of the removed material. Id. For that reason, the
district court found that the accused clubs could not
infringe claim 2. Id. at 92-93.
    As to claim 1, the district court construed the phrase
“removed construction material from a location not used
during ball-striking service” as “prohibit[ing] removal of
construction material from the club head face,” because
“any area of the club head face may be used to strike a
6      NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



golf ball.” Id. at 90 (emphasis added). The district court
based its conclusion on testimony stating that the upper
portion of the face near the “topline”—the line where the
face meets the top surface of the club—is sometimes,
though rarely, used to strike a ball. Id. at 91. Having so
construed the claim element, the district court then
concluded that the accused clubs did not meet this ele-
ment, even though it is undisputed that in the accused
clubs material is “removed” only from the top surface of
the club head, not the face. Id. at 92. In moving from
claim construction to application, the court thus seems to
have broadened its view to extend beyond the face of the
club head to encompass the top surface, although none of
the material cited from the patent or the evidence says
that the top surface is ever used for striking the ball.
    On May 28, 2013, the district court entered an
amended final judgment in favor of Achushnet on Nas-
sau’s infringement claims, dismissing as moot Acushnet’s
counterclaim for invalidity of the ’000 patent. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
                       DISCUSSION
     We review the district court’s claim constructions and
its grant of summary judgment of non-infringement de
novo. Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., 744 F.3d 1272, 1276-77 (Fed. Cir. 2014) (en
banc); Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314,
1320 (Fed. Cir. 2003). Summary judgment is appropriate
if, drawing all factual inferences in favor of the nonmov-
ing party, “the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56;
Omega, 334 F.3d at 1320.
                            A
    We begin with claim 2. We hold that the district court
correctly ruled that claim 2 is not infringed. For this
NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.     7



purpose, it suffices to focus, as Nassau does and the
district court did regarding claim 2, on a comparison of
two clubs—one before and one after the claimed process of
“removing” material from the top surface and “embodying
. . . said removed construction material” on bottom areas,
whether in making any of the clubs or in designing them.
’000 patent, col. 4, lines 37-41.
    Claim 2 requires that the weight of the club remain
unchanged after relocating to the bottom of the club the
construction material removed from the top, so all the
removed material (in weight) must be relocated to the
bottom. It is undisputed that, in the accused clubs, the
“before” and “after” clubs have exactly the same weight
after the combined steps of relocating construction mate-
rial from the top to the bottom and inserting the polymer
material at the top. Nassau, 940 F. Supp. 2d at 83; Oral
Arg. at 26:41-27:19. As a result, as the district court
correctly concluded, not all the construction material
allegedly removed from the top (or its equivalent in
weight) could be placed on the bottom of the accused
clubs. The polymer insert weighs something. For the
weight to remain the same in the resulting club, as is
undisputedly true of the accused clubs, only an amount of
the removed construction material with the polymer-
insert weight subtracted could have been relocated to the
bottom areas of the accused clubs. Claim 2 is not satis-
fied.
    Nassau has not preserved an argument about claim
construction that would overcome this simple reason the
accused clubs cannot infringe. Although Nassau now
makes an argument about “determined weight,” Nassau
waived this argument below by failing to offer any re-
sponse to Acushnet’s assertion of non-infringement based
on the fact that, in the accused clubs, some of the weight
of the allegedly removed construction material remains in
the topline of the club head in the form of the polymer
insert. In any event, the claim meaning is clear in requir-
8      NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



ing that the “determined weight” of the “removed con-
struction material” be “distributed to said selected bottom
area without any increase in the overall weight of the club
head.” ’000 patent, col. 4, lines 32-44. The ordinary
meaning of this language is that all of the construction
material removed from the club head must be embodied in
the selected bottom areas. Because it is conceded that
some of the weight of the allegedly removed construction
material remains in the topline of the accused club heads
in the form of the polymer insert, we affirm summary
judgment that Acushnet does not infringe claim 2.
                            B
    With respect to claim 1, we vacate the district court’s
summary judgment of non-infringement. For this pur-
pose, it is again sufficient to focus, as Nassau does and
the district court did, on a comparison of two clubs—one
before and one after the process of “removing” material
from the top surface and “relocating said removed con-
struction material” to certain bottom-area positions,
either in making any of the clubs or in designing them.
’000 patent, col. 4, lines 37-41. The sole claim element
that the district court found missing in the accused clubs
is, on the record before us, undisputedly present. We
remand for further proceedings on claim 1, which pre-
sents further claim-construction and invalidity issues that
we flag but do not definitively resolve.
                            1
    The district court granted summary judgment of non-
infringement of claim 1 based on the claim language
requiring that the “removed construction material”
be “from a location not used during ball-striking service,”
and Nassau’s apparent concession that the entire club
head face may be used (if unintentionally) during ball-
striking service. Nassau, 940 F. Supp. 2d at 91-92.
Focusing just on that element alone, we conclude that the
district court’s holding that the limitation was not met is
NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.       9



incorrect. Indeed, on the current record, the undisputed
facts show that the limitation is met.
     Nassau accused Acushnet of “remov[ing] material
from behind the top face of the club head,” and Acushnet
asserts that the “channel in the center topline area of the
club” containing the polymer insert (which displaced the
allegedly removed construction material) “undisputedly
sits behind a face at the center topline.” Appellee Br. at
12, 37 (emphases added); Oral Arg. at 25:00-25:30. Thus,
it is apparently undisputed that in none of the accused
clubs was material removed from the face of the club
head. Under the district court’s construction of the perti-
nent claim element, the removed construction material
must be from an area other than the club head face.
Nassau, 940 F. Supp. 2d at 91. Under Nassau’s still
broader construction of the claim element, the removed
construction material must be either from club head areas
other than the club head face or from the upper portion of
the club head face (which is not normally and intentional-
ly used by golfers for striking the ball). Under either
construction, the accused clubs meet the requirement: it is
undisputed that all of the removed material is from areas
other than the club head face.
    We need not choose between the district court’s con-
struction and Nassau’s construction in order to vacate
summary judgment of non-infringement. Both construc-
tions readily encompass the accused clubs on the record
before us. Resolving this aspect of the infringement
inquiry therefore does not require us to decide which of
the competing constructions is correct. See, e.g., Bayer
CropScience AG v. Dow AgroSciences LLC, 728 F.3d 1324,
1331-32 (Fed. Cir. 2013); EMI Grp. N. Am., Inc. v. Intel
Corp., 157 F.3d 887, 895 (Fed. Cir. 1998) (finding it “irrel-
evant whether the district court achieved a technological-
ly perfect definition, because there [was] no dispute that
the corresponding step of the [accused] process [was]
10     NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



within the literal scope of [the term], however . . . de-
fined”).
     Acushnet’s validity defenses to be litigated on remand
could, of course, be affected by which construction is
chosen. Keeping in mind that “ ‘ [a] patent may not, like a
“nose of wax,” be twisted one way to avoid anticipation
and another to find infringement,’ ” Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir.
2001) (quoting Sterner Lighting, Inc. v. Allied Elec. Sup-
ply, Inc., 431 F.2d 539, 544 (5th Cir. 1970)), Nassau may
be held to its insistence on its broader construction when
it comes to assessing invalidity. We do not so decide, but
leave the matter for remand if further construction of this
claim element is needed.
                             2
    Before entering summary judgment of non-
infringement based on the “location not used” claim
element, the district court rejected Acushnet’s claim-
construction argument that the “method” language of
claim 1 (and of claim 2, for that matter) refers to a physi-
cal manufacturing process, in which a club head is initial-
ly formed one way, material is then physically removed
from certain (top) areas, and that material is then moved
to certain (bottom) areas. Nassau, 940 F. Supp. 2d at 86-
90. Acushnet renews its argument here as an alternative
ground to affirm the summary judgment of non-
infringement. Like the district court, we reject Acushnet’s
manufacturing-process construction.
    Acushnet’s argument starts with the important fact
that the claim language uses the fundamental patent-law
language of “method,” which refers to a process of taking
specified actions over time. What the language does not
plainly require, however, is that the actions are steps in a
manufacturing process. And as the district court ex-
plained, such a construction is unreasonable here. Noth-
ing in the patent’s specification refers to the steps of
NASSAU PRECISION CASTING     v. ACUSHNET COMPANY, INC.         11



physically constructing a golf club; and in the absence of a
description of the physical construct-remove-relocate club-
head-making process that Acushnet’s interpretation
would require, it is evidently undisputed that a skilled
artisan would not think of making a golf club that way
(instead of making and using a mold in the ultimately
desired shape). Id. at 87. Acushnet’s manufacturing-
process construction is so surprising in context that it
must be rejected where the language does not make it
unavoidable.
    Importantly, an alternative construction is readily
available that gives the unmistakable language of “meth-
od” its due. “[T]he Court construes Claims 1 and 2 as
describing steps taken in designing a golf club head with
the physical characteristics described in the ’000 Patent.
In other words, Claims 1 and 2 encompass a design pro-
cess, not a manufacturing process . . . .” Id. (emphasis
added); see id. at 88 (“those terms refer to a design meth-
od, not a manufacturing process”); id. at 88 n.3 (“the
Court reads the ’000 Patent as addressing changes made
to a pre-existing golf club head design—i.e., the steps
described by Claims 1 and 2 alter the overall design,
resulting in the design of a club head with a lower [center
of gravity]”). The claims thus refer to a process of design-
ing a golf club, not only a golf club having certain struc-
tural features that might be called its “design.”
      A “method” in a claim, one of the most common and
basic terms of patent drafting, is a “process,” and “meth-
od” and “process” have a clear, settled meaning: a set of
actions, necessarily taken over time. Limelight Networks,
Inc. v. Akamai Networks, Inc., No. 12-786 (U.S. Sup. Ct.
June 2, 2014), slip op. at 5 (“[a] method patent claims a
number of steps” to be “carried out”); Bilski v. Kappos, 561
U.S. 593, 130 S. Ct. 3218, 3228 (2010) (relying on defini-
tion of “method” as “way or manner of doing anything”);
Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process
. . . . is an act, or a series of acts . . . .”); NTP, Inc. v. Re-
12       NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



search in Motion, Ltd., 418 F.3d 1282, 1316 (Fed. Cir.
2005) (“ ‘ [ A] process is a series of acts . . . .’ ” ) (quoting
Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373,
1378 (Fed. Cir. 2003)); In re Kollar, 286 F.3d 1326, 1332
(Fed. Cir. 2002) (“[A] process . . . consists of a series of
acts or steps. . . . It consists of doing something, and
therefore has to be carried out or performed.”); Dept. of
Commerce, Patent and Trademark Office, Manual of
Patent Examining Procedure § 2106 (9th ed. 2014)
(MPEP) (“Process – an act, or a series of acts or steps.”).
“Method” is not a technical term; its meaning is therefore
not a matter of skilled artisans’ understandings. It is a
patent-law term with a stable, unambiguous meaning
that distinguishes the subject matter from “product”
subject matter. It would do unacceptable violence to that
meaning to treat the claim here, reciting a “method,” as
one to a product defined simply by structural features. 1
    This conclusion is reinforced by the fact that claim 1,
in stating the steps of the “method,” uses action words:
“removing,” “relocating.” Moreover, while it calls for a



     1  The court has long warned that apparatus and
method claims “are directed toward different classes of
patentable subject material under 35 U.S.C. § 101” and
that the distinction should not be “blurred.” Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344
(Fed. Cir. 2008); see Kollar, 286 F.3d at 1332 (recognizing
“the distinction between a claim to a product, device, or
apparatus, all of which are tangible items, and a claim to
a process, which consists of a series of acts or steps”);
NTP, 418 F.3d at 1317 (quoting Kollar). The court has
accordingly invalidated as indefinite claims that simulta-
neously claimed a product and a method of using it. See
In re Katz, 639 F.3d 1303, 1314 (Fed. Cir. 2008); IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005); MPEP § 2173.05(p).
NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.     13



comparison of a resulting club to some template, i.e., some
“pre-existing golf club,” Nassau, 940 F. Supp. 2d at 88 n.3,
it provides no identification of the template in terms of
structural properties. The only template indicated by the
language is a temporal one: the club with which a design-
ing process began. That temporal comparison, built into
the claim language, reinforces the steps-over-time mean-
ing of “method” and the action words of the claim.
     Finally, the “method” language of claim 1 contrasts
with the unmistakable structural product language that
Acushnet used when, in some of its own patents, it
claimed golf club heads that embodied designs with
weight distributions different from prior-art clubs. See
U.S. Patent No. 7,481,718, cols. 5-6; U.S. Patent No.
7,524,250, cols. 9-10; U.S. Patent No. 7,819,757, cols. 17-
20. The specifications of those patents contain language
loosely describing the design with language akin to the
removal/relocation language Nassau placed in its claim.
See Nassau, 940 F. Supp. 2d at 88-89. But Acushnet
knew that, when it came to the claims, precision was
needed in using the standard language of patent claiming
for the fundamental choice about what category of subject
matter it was claiming. Nassau could have claimed a
product in structural terms, but it did not.
    Performance of the claimed steps by a designer of the
accused clubs is therefore required by claim 1. That is so
if the claim is read as claiming a method itself, as its
language expressly states. It also is so if the claim is
treated as a product-by-process claim, covering the prod-
uct resulting from the designing process and requiring
proof of performance of the process in order to prove
infringement. Abbott Labs. v. Sandoz, Inc., 566 F.3d
1282, 1293 (Fed. Cir. 2009) (en banc). The product-by-
process construction might find support in the introducto-
ry “in a club” language. But we need not resolve that
question. In either event, the claimed process must be
14       NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.



performed by the accused infringer to establish infringe-
ment. 2
     Acushnet argues on appeal that there is no evidence
from which a reasonable jury could find that Acushnet
performed the designing process required by claim 1. But
the district court did not examine the evidence on wheth-
er Acushnet performed that process. We think it prema-
ture to rule on Acushnet’s contention. Rather, we leave
initial examination of the evidence on this question—
whether direct or indirect evidence—to the district court.
                              3
    Acushnet also argues for affirmance of summary
judgment that it did not infringe claim 1 on the grounds
that the “no adverse consequence” limitation of claim 1 is
indefinite and not met by the accused products. We
decline to address Acushnet’s “no adverse consequence”
contentions. Acushnet argues, in particular, that whether
the consequence of the club alteration is “adverse” de-
pends on the subjective preferences of particular golfers,
some of whom will prefer the effect on ball movement
(greater loft, shorter distance), some of whom will
not. The district court has not addressed this or Acush-
net’s other contentions about this claim element. Nassau,
940 F. Supp. 2d at 83. We think that it is preferable for
the district court to do so in the first instance, if neces-
sary.




     2   If claim 1 is a method claim, Nassau may have to
amend its complaint, which currently alleges that the
“activities of defendants . . . in manufacturing, offering for
sale, and selling golf irons . . . constitute infringement,”
Compl. ¶ 14, rather than accusing activities performed in
the design of the accused clubs.
NASSAU PRECISION CASTING   v. ACUSHNET COMPANY, INC.   15



                      CONCLUSION
    For the foregoing reasons, we affirm the summary
judgment that Acushnet does not infringe claim 2, vacate
the summary judgment that Acushnet does not infringe
claim 1, and remand.
   Each party shall bear its own costs.
  AFFIRMED IN PART, VACATED IN PART, AND
                REMANDED
