Sportstar Athletics, Inc. v. Wilson Sporting Goods Co.

Decision Date30 January 2017
Docket NumberCiv. A. H-15-1438
PartiesSPORTSTAR ATHLETICS, INC., Plaintiff, v. WILSON SPORTING GOODS CO., Defendant.
CourtUnited States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
FINDINGS OF FACT, CONCLUSIONS OF LAW, CONSTRUCTION OF CLAIMS

The above referenced case, alleging that Defendant Wilson Sporting Goods ("Wilson"), based on its Wilson Football Chin Strap, is liable for deliberately, intentionally and willfully committing direct, induced, and contributory patent infringement,1 is currently before this Court for construction ofdisputed terms in two patents for chin guard apparatuses for football helmets, licensed by Plaintiff Sportstar Athletics, Inc. ("Sportstar"): (1) U.S. Patent No. 7,735,160 ("the '160 Patent" for "Chin Guard Apparatus For Use With a Helmet," issued by the Patent and Trademark Office ("PTO") on June 15, 2010),2 called by Sportstar the "original strap splitter patent"; and (2) U.S. Patent No. 8,621.671 ("the '671 Patent" for "Protective Chin Guard," issued by the PTO on January 7, 2014),3 called by Sportstar the "any strap splitter patent," a continuation-in-part("CIP") of the '160 Patent4 that serves to broaden the claims of the '160 Patent.5

A Markman hearing6 was held on March 23, 2016.

Specifically, the parties dispute the meaning of following claim terms or claim elements in the two patents: "strap splitter" (in claims 1,8,9,12, and 13 of the '160 patent and in claims 7,8,10, and 17 of the '671 patent); "In said second slot" (in claims 1,9, and 12 of the '160 patent); "stop" (in claims 9 and 18 of the '671 patent); and "greater than" (in claims 1 and 9 of the '160 patent).7 Sportstar contends that Wilson Hard Cup Football chin straps, including model numbers WTF985000 and WRF985001, infringe Claims 1 and 12 of the '160 Patent and Claims 7 and 10 of the '671 Patent.

After hearing the arguments regarding the parties' proposed constructions of the disputed claim terms at the Markman hearing, and after careful review of the record, including the claim language, specifications, and prosecution histories of the patents-in-issue, as well as of the law, the Court enters the following Findings of Fact and Conclusions of Law construing the disputed terms as a matter of law pursuant to Federal Rule of Civil Procedure 52(a).

Findings of Fact

Sportstar is a corporation organized under the laws of the State of Texas and is the licensee of the rights to the '160 and '671 patents.

Wilson was incorporated under the laws of the State of Delaware, has its principal place of business at 8750 W. Bryn MawrAvenue, Chicago, Illinois 60631, and is a major manufacturer of sports equipment and paraphernalia.

The sole inventor of the Sportstar chin guards and the owner of the two Patents-in-issue is Paul Schiebl, the president of Sportstar, who has licensed the substantial rights to the '160 and '671 Patents to Sportstar.8

Before Schiebl's invention, existing chin straps for football helmets were made for attachment to either the high hookup or the low hookup of a football helmet, depending on the configuration of the player's face and the amount of protective performance he desires from the chin strap; if a player wanted to be able to hook up to both high and low hookups, he had to have separate chin straps for each kind of hookup.

There was no expert testimony, but only arguments of counsel and the record at the Markman hearing.

Conclusions of Law
Applicable Law

This Court has original and exclusive jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) over this action for patent infringement.

"[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States orimports into the United States any patented invention during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271.

Patent claim construction is a matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995)(en banc), aff'd, 517 U.S. 370 (1996); Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002).

A patent is a fully integrated written instrument memorializing a grant by the government to the patentee of rights for a limited time to exclude others from making, using, or selling the invention described in the patent. Markman, 52 F.3d at 978. To determine whether infringement of a patent has occurred, the court first decides the correct scope and meaning of each claim and then compares the "construed claim to the accused device to determine whether all of the claim limitations are present literally or by a substantial equivalent." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1247-48 (Fed. Cir. 1998); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)(en banc). The first step, the construction of the claim, is an issue of law to be decided by the Court; the second is a factual question. Dynacore Holdings Corp. v. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004); see also MBO Laboratories, Inc. v. Becton, Dickinson Cos., 474 F.3d 1323, 1329 (Fed. Cir. 2007)("A determination of patent infringement requires a two-step analysis: first the meaning of the claim language is construed, then the facts are applied to determine if the accused devicefalls within the scope of the claims as interpreted."), citing Markman, 52 F.3d at 976. In other words, "claim construction is the court's 'power and obligation' in a jury case. The court's construction permits the jury in the second step of the suit to decide the fact question of infringement, which requires a comparison of properly construed patent claims and the alleged infringer's device or process." Logan v. Hormel Foods, Inc., No. Civ. A. H-05-0055, 2005 WL 2171893, at *2 (S.D. Tex. 2005), aff'd, 217 Fed. Appx. 942 (Fed. Cir. Jan 25, 2007), cert. denied, 552 U.S. 941 (2007).

To determine the meaning of the claims one must view them in the context of "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Phillips, 415 F.3d at 1314.

In construing the claim limitations, the court first examines the intrinsic evidence, i.e., "the written description, the drawings, and the prosecution history, if in evidence." Allen Engineering, 299 F.3d 1344. The three primary sources of intrinsic evidence for ascertaining the meaning of patent claims in the order of importance are (1) the words of the claims in the patent, (2) the specification, and (3) the prosecution history (also known as the "file wrapper"). US Foam, Inc. v. On Site Gas Systems, Inc., 735 F. Supp. 2d 535, 541 (E.D. Tex. 2010).9

Different weights are imposed on different sources, with the most relevant being the patent's specification,10 "which is 'the single best guide to the meaning of a disputed term.'" MBO, 474 F.3d at 1329, quoting Vitronics Corp. v. Conceptronic, Inc.,90 F.3d 1576, 1582 (Fed. Cir. 1996). Section 112 of the Patent Act, 35 U.S.C. § 112, opens with the statement that the specification "shall contain a written description of the invention, and of themanner and process of making and using it, in such full, clear concise and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same . . . ." The second paragraph recites that the specification "shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "[W]e look to the words of the claims themselves . . . to define the scope of the patented invention." Vitronics, 90 F.3d at 1582. Furthermore because the claims are part of "a fully integrated written instrument," comprised mainly of the specification, they "must be read in view of the specification." Markman, 52 F.3d at 978, 979.

Next in significance is the prosecution history, which simultaneously is also part of the "'intrinsic evidence' that directly reflects how the patentee has characterized the invention." Id., citing id. at 1317. The prosecution history, if in evidence, includes the complete record before the PTO and the prior art cited during the examination of the patent. Phillips, 415 F.3d at 1317. The prosecution history "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it otherwise would be." Phillips, 415 F.3d at 1317. It includes "all express representations made by or on behalf of the applicant to the examiner to induce a patent grant, or . . . to reissue a patent[,] . . . . includ[ing] amendments to the claims and arguments made to convince the examiner that theclaimed invention meets the statutory requirements for a patent of novelty, utility, and nonobviousness. 35 U.S.C. §§ 101-103. Thus the prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) Because the prosecution history is created by the patentee as he tries to obtain a patent, it reflects the ongoing negotiations rather than their final product and lacks the clarity of and is less helpful for claim construction than the specification. Id. Yet it can also "inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id., citing Vitronics, 90 F.3d at 1582-83.

Finally extrinsic evidence, including expert testimony, dictionaries, learned treatises, or other material not part of the public record associated with the patent, may be helpful, but is less significant than the intrinsic record in...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT