Antonious v. Spalding & Evenflo Co
| Decision Date | 07 January 2002 |
| Citation | 275 F.3d 1066,61 USPQ2d 1245 |
| Parties | (Fed. Cir. 2002) ANTHONY JOHN ANTONIOUS, Plaintiff, and FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P., Sanctioned Party-Appellant, v. SPALDING & EVENFLO COMPANIES, INC., and SPALDING SPORTS WORLDWIDE, Defendants-Appellees. 01-1088 DECIDED: |
| Court | U.S. Court of Appeals — Federal Circuit |
Appealed from: United States District Court for the District of Maryland, Judge Marvin J. Garbis
[Copyrighted Material Omitted] Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff and sanctioned party-appellant. With him on the brief were Thomas H. Jenkins, of Washington, DC; and Richard L. Rainey, Finnegan, Henderson Farabow, Garrett & Dunner, L.L.P., of Atlanta, Georgia. Of counsel was Michael J. McCabe, II, of Atlanta Georgia.
Christopher B. Fagan, Fay, Sharpe, Fagan, Minnich & McKee, LLP, of Cleveland, Ohio, argued for defendants-appellees. With him on the brief were Richard M. Klein, and Steven M. Auvil.
Before LOURIE, BRYSON, and LINN, Circuit Judges.
Anthony John Antonious filed this patent infringement action against Spalding & Evenflo Companies, Inc., and Spalding Sports Worldwide (collectively, "Spalding") in the United States District Court for the District of Maryland. During the litigation, Spalding sought sanctions under Fed. R. Civ. P. 11(c) against both plaintiff and plaintiff's counsel, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. ("Finnegan Henderson"), for failure to conduct a reasonable prefiling factual investigation. The district court awarded sanctions against Finnegan Henderson, and Finnegan Henderson appealed.
We vacate the sanctions order and remand to the district court for further proceedings. To the extent the district court concluded that Finnegan Henderson's proposed construction of certain critical claim language was frivolous, we hold that the court's conclusion was legally erroneous. To the extent the district court concluded that Finnegan Henderson's prefiling investigation was inadequate, we cannot uphold the court's ruling on that ground because the court apparently analyzed the prefiling investigation in light of its view of the proper claim construction. On remand the district court must assess Finnegan Henderson's prefiling investigation in light of Finnegan Henderson's proposed claim construction and may impose sanctions only if the court determines that the prefiling investigation was inadequate under that claim construction.
Mr. Antonious is the owner of U.S. Patent No. 5,482,279 ("the '279 patent"), which is directed to an improved perimeter weighting structure for metal golf club heads. The '279 patent contains three independent claims, claims 1, 13, and 56, which provide as follows, in pertinent part:
1. A metal wood-type golf club head comprising:
a golf club head body including a heel, toe, bottom, crown, side walls, ball striking face and a rear club face, said ball striking face intersecting with a forward most progression of said bottom to define a leading edge of the ball striking face;
a hosel integrally connected to said club head body; and
a peripheral mass positioned along at least the majority of the interface of the ball striking face and the crown of the club head, wherein the hosel extends into and connects with a portion of said peripheral mass . . . .
13. A metal wood-type golf club head comprising:
a golf club head body including a heel, toe, bottom, crown, ball striking face and rear club face, said ball striking face intersecting with a forward most progression of said bottom to define a leading edge of the all striking face;
said club head body having a frontal body section and a rearward shell attached to said frontal body section at the interface of said frontal body section and said rear shell;
a hosel integrally connected to said club head body; said frontal body section including:
the ball striking face;
the rear club face; and
a peripheral mass projecting outwardly from the rear club face and extending around at least a portion of the outer periphery of said frontal body section . . .; and
said shell extending rearwardly beyond said frontal body section and forming the crown, the rear portion of said club head, and a cavity behind said frontal body section.
56. A metal wood-type golf club head consisting essentially of:
a golf club head body made only from a metal material, said golf club head body including a heel, toe, bottom, crown, side walls, ball striking face and a rear club face, said ball striking face intersecting with a forward most progression of said bottom to define a leading edge of the ball striking face;
said ball striking face having a thickness in a front to rear direction of at least 0.100 inch;
a hosel integrally connected to said club head body; and
a peripheral mass positioned along at least the majority of the interface of the ball striking face and the crown of the club head, said peripheral mass having a thickness in a front to rear direction of at least 0.125 inches . . . .
Spalding sells the Intimidator golf club line, which it introduced in 1995. The Intimidator line includes drivers and fairway woods that use what Spalding refers to as "titanium insert technology." The Intimidator club heads are cast from stainless steel with a continuous mounting flange that runs along a recess in the interior surface of the club head body. A titanium insert, or face plate, is then inserted into the recess. The titanium insert rests against the mounting flange, which prevents it from being forced back into the interior of the club head body when the club strikes a golf ball. The insert is fixed into the club head body by either crimping or welding.
In the spring of 1997, Mr. Antonious saw several Spalding Intimidator metal wood-type golf clubs in retail stores. He purchased one of the Intimidator drivers and cut open the club head. After inspecting the interior of the club head, Mr. Antonious concluded that the club infringed his '279 patent. He then contacted his patent counsel at Finnegan Henderson, advised them that he believed the Intimidator driver infringed the '279 patent, and gave them the cut-open Intimidator driver to examine.
The Finnegan Henderson attorneys reviewed the language and prosecution history of the '279 patent and interpreted its claims. Claim 1 recites that the hosel, which is the socket in the head of the club into which the shaft is inserted, "extends into and connects with" the peripheral mass that is positioned along the interface between the ball-striking face and the crown of the club head. The Finnegan Henderson attorneys concluded that the limitation "extends into and connects with" could be interpreted to read on any hosel that abuts against and is fastened to the peripheral mass.
After construing the claims of the '279 patent, the Finnegan Henderson attorneys, in consultation with Mr. Antonious, compared the construed claim 1 to the cut-open driver that Mr. Antonious had purchased. After defining the continuous mounting flange as the peripheral mass referred to in the patent, they decided that the hosel of the cut-open Intimidator both abutted against and joined with the interior portion of that flange. As a result of comparing the cut-open club with the claim language as they interpreted it, the Finnegan Henderson attorneys concluded that the cut-open Intimidator club literally infringed claim 1 of the '279 patent.
The Finnegan Henderson attorneys also reviewed literature about the Intimidator line of golf clubs, including Spalding patents, advertisements and similar Spalding literature, and information on Spalding's internet site. Neither the Finnegan Henderson attorneys nor Mr. Antonious cut open and examined any other club head from the Intimidator metal wood line to see whether the other clubs had a peripheral mass and, if so, whether the hosel extended into and connected with that peripheral mass. Instead, based on their consultations with Mr. Antonious and their review of the available literature, the Finnegan Henderson attorneys inferred that all the Intimidator fairway woods had the same interior structural characteristics as the single cut-open driver with respect to peripheral weighting and the connection of the hosel to the peripheral weights. They therefore presumed that the other Intimidator woods also infringed the '279 patent.
On June 17, 1996, Mr. Antonious filed suit against Spalding alleging that the Intimidator metal woods infringed "one or more claims of the '279 patent." The complaint also charged that another line of Spalding golf clubs, the "Tour irons," infringed another utility patent, U.S. Patent No. 5,328,184 ("the '184 patent"), and two design patents owned by Mr. Antonious.
With respect to the metal woods, the complaint did not specify which clubs in the Intimidator line were alleged to infringe the '279 patent, nor did it specify which claims of the '279 patent were allegedly infringed. In response to a scheduling order entered by the district court, however, the Finnegan Henderson attorneys filed and served a letter on October 30, 1997, that elaborated upon and explained Mr. Antonious's claims. In the October 30 letter, the Finnegan Henderson attorneys, on behalf of Mr. Antonious, alleged that 21 named Intimidator woods infringed independent claims 1, 13, and 56, as well as various dependent claims of the '279 patent.
In January 1998, Spalding served and filed a motion for sanctions on Finnegan Henderson and Mr. Antonious. Spalding contended that Finnegan Henderson and Mr. Antonious failed to determine whether the hosel of each of the 21 accused Intimidator woods met the "extends into and connects with said portion of a peripheral mass" limitation of claim 1 of the '279 patent before charging that the 21 Intimidator woods infringed.
Spalding subsequently filed motions for summary...
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