McGinley v. Franklin Sports

• Decision Date: 21 August 2001
• Docket Number: 01-1113,Nos. 00-1324,s. 00-1324
• Citation: 262 F.3d 1339,60 USPQ2d 1001
• Parties: (Fed. Cir. 2001) MICHAEL L. MCGINLEY, Plaintiff-Appellant, v. FRANKLIN SPORTS, INC., Defendant-Cross Appellant. DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1339

262 F.3d 1339 (Fed. Cir. 2001)

MICHAEL L. MCGINLEY, Plaintiff-Appellant, v. FRANKLIN SPORTS, INC., Defendant-Cross Appellant.

Nos. 00-1324, 01-1113

United States Court of Appeals for the Federal Circuit

DECIDED: August 21, 2001

Appealed from: U.S. District Court for the District of Kansas

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] Kip D. Richards, Walters Bender Strohbehn & Vaughn, P.C., of Kansas City, Missouri, argued for plaintiff-appellant.

Joseph B. Bowman, Shook, Hardy & Bacon L.L.P., of Kansas City, Missouri, argued for defendant-cross appellant. Of counsel was Daniel P. Devers.

Before MAYER, Chief Judge, MICHEL and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

This is a patent infringement suit in which Michael L. McGinley charges Franklin Sports, Inc. ("FSI") with willful infringement of claims 1, 2, 6, and 7 of U.S. Patent No. 5,407,193 ("the '193 patent"). On summary judgment, the United States District Court for the District of Kansas ruled in favor of McGinley on the issue of infringement, and the case proceeded to trial on the issues of validity and willfulness. The jury found that the asserted claims were not invalid and were willfully infringed. On a subsequent motion filed by FSI for judgment as a matter of law ("JMOL"), the trial court set aside the jury verdict on validity, holding that the asserted claims of the '193 patent are invalid as obvious pursuant to 35 U.S.C. 103(a).

McGinley appeals the district court's grant of JMOL of invalidity and the earlier denial of McGinley's motion for leave to amend the complaint to join his business, S.C. Products, Inc. ("SCP"), as an additional plaintiff. On cross-appeal, FSI challenges the district court's grant of summary judgment in favor of McGinley on infringement and the denial of its motion for a new trial on willfulness.

Because we conclude that the district court erred in finding that no reasonable jury could have reached a verdict of nonobviousness, we reverse the JMOL of invalidity. We affirm the district court's rulings in all other respects.

I Background

The application for the '193 patent was filed on July 3, 1991, and the patent issued on April 18, 1995. In general terms, the '193 patent discloses and claims an instructional pitching device in the form of a regulation baseball with specific "finger placement indicia" for teaching students how to grasp a baseball for throwing different types of pitches. With the endorsement of a famous professional baseball pitcher, McGinley's invention was marketed and distributed as the Roger Clemens Instructional Baseball ("RCIB"). FSI also manufactured and sold a baseball designed to teach students to throw different types of pitches. The accused device in this case, the Franklin Pitch Ball Trainer 2705 ("FSI's 2705 baseball"), was sold in the United States from at least as early as April 1995 to March 1999.

In the preferred embodiment of the claimed invention, an aspect of which is illustrated in the following figure, three sets of finger placement indicia 11 are positioned on the cover 17 of a regulation baseball 10. Each set of indicia 11 is intended to illustrate the placement of a student pitcher's index and middle fingers so as to throw a particular type of pitch (e.g., two-seam fast ball, slider, curve ball, etc.). [Tabular or Graphical Material Omitted]

Indicia 11 are presented in two sizes, to allow the indicia intended for a left-handed student to be easily distinguished from the indicia intended for a right-handed student. The smaller indicia, exemplified by indicia 24 and 26, are intended for use by left-handed pitchers, while the larger indicia, as represented by indicia 20 and 22, are intended for use by right-handed pitchers. Moreover, indicia 11 are coded by coloring all indicia which are representative of a certain type of pitch in one color and indicia representative of another type of pitch in a different color. To further assist a student in learning how to throw a particular pitch, the indicia are shaped so as to indicate the relationship of the palm of the hand in grasping the ball. Specifically, the portion of each "egg-shaped" indicium to be situated closest to the palm is slightly tapered so as to indicate the correct orientation of the baseball in the palm. Although the preferred embodiment of the '193 patent makes no provisions for "thumb placement indicia," the written description of the '193 patent repeatedly states that the thumb is generally to be positioned on the baseball at a location opposite the corresponding set of finger placement indicia.

As originally filed in 1991, the claims of the '193 patent required that eight sets of finger placement indicia be provided on a single baseball pitching training device. Specifically, the four original claims all required the presence of indicia demarcating the placement of fingers for four specific types of pitches (i.e., curve ball, two-seam fast ball, slider, and four-seam fast ball), for both left-handed and right-handed students. These claims were rejected on obviousness grounds in view of U.S. Patent No. 2,925,273 ("Pratt"), which had issued on February 16, 1960, more than thirty years before McGinley's filing date. Pratt was brought to the attention of the Patent and Trademark Office ("PTO") via an Information Disclosure Statement ("IDS") filed concurrently with McGinley's priority patent application by McGinley's counsel.

Like the claims originally filed by McGinley, Pratt disclosed, inter alia, a conventional baseball having multiple sets of finger placement indicia for teaching baseball players to throw different types of pitches. Specifically, in the embodiment illustrated in Figure 4 (shown below) Pratt's written description disclosed the placement of finger and thumb placement indicia for three types of pitches (i.e., fast ball, curve ball, and screw ball). Equatorial band 17 was an important feature of Pratt's claimed invention. When a student threw Pratt's baseball correctly, bands of complementary colors in the equatorial band would blend into a single color to provide a visual indication to the student that the ball had been thrown with proper rotation.

[Tabular or Graphical Material Omitted]

Although the similarities between Pratt's disclosure and McGinley's then-existing claims are striking, there are also a few differences between Pratt's teachings and McGinley's initially claimed invention. First, Pratt did not provide for different sets of indicia on a single ball for distinguishing between left-handed and right-handed students. Also, Pratt's finger placement indicia were described and illustrated as being circular, but "phantom lines" illustrating the placement of fingers 21, 22 and thumb 23 were included in the patent figures. These phantom lines, however, are not described in Pratt as actual markings on the baseball. In contrast, the finger placement indicia in the preferred embodiment of McGinley's invention are actually marked on the ball, and are "egg-shaped" and slightly tapered at one end to indicate the proper orientation of the ball with respect to the student's palm.

Another prior art reference which was brought to the attention of the PTO via McGinley's IDS was U.S. Patent No. 3,110,494 ("Morgan"), which issued on November 12, 1963. In contrast to Pratt and the '193 patent, which are based on using a conventional regulation baseball, Morgan describes a baseball training device using a lightweight and inexpensive baseball "replica" fabricated in the form of plastic or metallic hemispherical shells which occupy a minimum of space before use, but which can be easily assembled by gluing the two hemispherical halves together. In Figure 6 of Morgan (shown below) and the accompanying written description, a single set of finger-shaped marks D'', E'', and L'' (for teaching proper placement of the forefinger, middle finger, and thumb, respectively) are provided on the baseball training device to teach a student how to throw a baseball with a particular curve or break.

[Tabular or Graphical Material Omitted]

Throughout the prosecution history of the '193 patent, McGinley's claims at issue in this case were rejected in view of Pratt on anticipation grounds. With respect to Morgan, although this reference was before the PTO during the entire pendency of McGinley's patent application, it was never explicitly relied upon as a basis for a rejection based on a prima facie case of anticipation or obviousness.

Ultimately, in 1995, after a series of rejections, amendments, and responses (including a partially successful appeal to the Board of Patent Appeals and Interferences and the filing of a continuation application), the '193 patent issued with 14 claims. Ten of the issued claims (i.e., claims 3-5 and 8-14) explicitly retain the original limitation requiring the inclusion of finger placement indicia on a single baseball pitching training device for both left-handed and right-handed students. These claims were not asserted in this case. Instead, McGinley asserted the remaining four claims (i.e., independent claim 1 and dependent claims 2, 6, and 7) against FSI, alleging willful infringement by making and selling the 2705 baseball. The asserted claims read as follows in their entirety:

1. A baseball pitching training device for duplicating finger placement on a baseball by a student comprising:

a baseball cover;

a plurality of sets of finger placement indicia on said cover, said sets of indicia comprising:

a first set of indicia demarcating the placement of finger [sic] for throwing a first pitch;

a second set of indicia demarcating the placement of fingers for throwing, [sic] a second pitch;

a third set of indicia demarcating the placement of fingers for throwing a third pitch;

means for indicating the orientation of the baseball relative to the palm of the hand; and

means for coding said finger placement indicia sets for identification of...