Stash, Inc. v. Palmgard Intern., Inc.

• Decision Date: 30 August 1996
• Docket Number: Civil No. K-95-2006.
• Citation: 937 F. Supp. 531
• Parties: STASH, INC. v. PALMGARD INTERNATIONAL, INC.
• Court: U.S. District Court — District of Maryland

937 F. Supp. 531

STASH, INC. v. PALMGARD INTERNATIONAL, INC.

Civil No. K-95-2006.

United States District Court, D. Maryland.

August 30, 1996.

COPYRIGHT MATERIAL OMITTED

Jeffrey Auerbach, and Howrey & Simon, Baltimore, Maryland, and Eugene E. Renz, Jr., Media, Pennsylvania, for plaintiff and counter-defendants.

JoAnne S. Redmann, Joppa, Maryland, for defendant and counter-plaintiff.

FRANK A. KAUFMAN, Senior District Judge.

Plaintiff Stash, Inc. ("Stash") instituted this case, seeking a declaratory judgment that certain protective athletic gloves which Stash distributes do not infringe the earlier issued Webster patent. The Webster patent, which is apparently assigned to defendant Palmgard International, Inc. ("Palmgard"), covers an inner baseball glove. Stash also seeks a declaratory judgment that certain claims of the Webster patent are invalid. Palmgard has filed a counter-claim of infringement against Stash and against Carol A.J. Stanley ("Stanley"), a corporate officer of Stash and the original holder of the Stanley patent. That patent, which covers protective athletic gloves, was issued prior to the Webster patent and is assigned to Stash. This Court's jurisdiction in this case is based on federal question jurisdiction over each and all of the said patent issues, in accordance with 28 U.S.C. § 1331, and on the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.

Stash and Stanley moved for summary judgment on April 15, 1996 regarding all open patent issues. On August 14, 1996, with leave of this Court and without objection from Stash and Stanley, Palmgard filed a cross-motion against Stash and Stanley for summary judgment regarding infringement. Having considered all motions and filings related thereto, this Court will grant summary judgment to Stash and Stanley regarding their denial of infringement, deny Palmgard's motion with respect to that issue, and deny the motions of Stash and Stanley regarding invalidity. In sum, therefore, Stash and Stanley prevail.

I. Fact

The facts of this case are essentially undisputed except in two instances which will be discussed infra. This case turns on interpretation of the Webster and Stanley patents. Ms. Stanley, together with one Ms. Miller,¹ filed a patent application with the Patent and Trademark Office (PTO) for an open-fingered protective athletic glove on January 4, 1984. The PTO issued that patent on December 31, 1995. Figure A shows the alternate embodiment of the Stanley invention, an open-fingered glove with a single pad of shock absorbent material extending across the upper portion of the palm and up the second finger.² Additional padding is also provided on the thumb.

Mr. Webster submitted his patent application for "an improved protective inner athletic glove designed for wear inside a larger baseball or softball glove"³ to the PTO on April 3, 1987 and it was issued on June 7, 1988. Figure B shows one embodiment of the Webster invention.⁴ That embodiment is a closed-fingered glove⁵ with padding in the "critical areas to be protected during catching"⁶: the inside of all five fingers and the upper palm. Webster's initial patent application was rejected. After initial rejection and upon reconsideration, the patent examiner stated that "a claim would be deemed allowable if applicant would claim the exact location (i.e. points of coverage) of the padding and stress the advantages of sensory perception, flexibility, and protection that this coverage affords."⁷ Webster responded that the padding in gloves made according to previous patents covered the control points (finger tips) and flex points (creases) of the hand, thereby decreasing flexibility and sensory perception. Webster stated that his invention solved those problems by providing padding only in maximum stress areas while leaving finger tips and crease areas unencumbered for continued ball control during glove use.

Palmgard initially asserted that a certain full- or closed-fingered glove manufactured by Champion for Stash infringed the Webster patent. The parties, however, have now stipulated that Stash no longer sells that Champion glove, but does sell a glove which is substantially identical to it. The padding configuration in those Stash gloves is similar to the padding configuration indicated in the Stanley patent. Palmgard contends that those Stash closed-fingered gloves infringe the Webster patent; Stash denies that contention by Palmgard.

II. Summary judgment standard

Summary judgment shall be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56. Material facts are those facts which the substantive law identifies as "facts that might affect the outcome of the suit." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). A dispute concerning material facts is genuine if "a reasonable jury could return a verdict for the nonmoving party." Id.

"A defendant moving for summary judgment has the burden of showing the absence of any genuine issue of material fact and that he is entitled to judgment as a matter of law.... Once a defendant makes the necessary showing, the plaintiff must go forward and produce evidentiary facts to support his contention." Barwick v. Celotex Corp., 736 F.2d 946, 958 (4th Cir.1984). See also Fed.R.Civ.P. 56(e); Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed.Cir.1984) ("Summary judgment is as appropriate in a patent case as in any other."). In addition, the nonmovant is entitled to have all reasonable inferences drawn in his favor. Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1608-09, 26 L.Ed.2d 142 (1970).

III. Infringement

An accused device infringes a patent claim if the device embodies every limitation of the claim, either literally or by a substantial equivalent. The Read Corp. v. Portec, Inc., 970 F.2d 816, 821-22 (Fed.Cir. 1992). The burden of proof regarding infringement is generally on the holder of the patent, who must prove infringement by a preponderance of the evidence. Carroll Touch, Inc. v. Electro Mechanical Systems, Inc., 15 F.3d 1573, 1578 (Fed.Cir.1993). It would appear that Palmgard bears the burden of proof on that issue even though Stash, one of the alleged infringers, initiated the within suit as a declaratory judgment action. See National Business Systems, Inc. v. AM International, Inc., 546 F.Supp. 340, 349, 356-57, 360-61 (N.D.Ill.1982), aff'd, 743 F.2d 1227 (7th Cir.1984), cert. denied, 471 U.S. 1110, 105 S.Ct. 2345, 85 L.Ed.2d 861 (1985) (placing burden of proof regarding infringement on defendant in a declaratory judgment action).⁸

A. Literal Infringement

Stash and Stanley contend that the Stash glove does not infringe the Webster patent because unlike the invention described in the earlier Webster patent,⁹ the Stash product has padding on the inner tip of the second finger and across the crease between the upper palm and that finger ("the palmar crease"). Palmgard contends that a genuine dispute of material fact exists concerning the padding on the index finger. Specifically, Palmgard appears to make two related factual-type arguments: first, that the padding in the Stash product covers only a portion of the inner tip of the index finger; and second, that the Webster patent covers gloves which have padding which does not extend to the entire inner and outer tip of at least one of the fingers.¹⁰

The resolution of the latter contention requires interpretation of claim 1 of the Webster patent.¹¹ Claim interpretation is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed.Cir.1995), aff'd, ___ U.S. ___, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). To construe claims, a court should consider "the claims, the specification, and the prosecution history." Id. (quoting Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed.Cir.1991)). The trier of fact then determines whether the claims, as construed by the court, cover the accused device. Id. at 976.

Claim 1 of the Webster patent describes an inner glove with padding "covering portions of the palm and inner digits of said inner glove, ... without covering said ... inner tips of the digits."¹² The prosecution history of that patent indicates that the padding would not cover any portion of the inner tips of the fingers in order to achieve the sensory perception in the fingertips that Webster claimed was an improvement of his invention over the prior art. Thus, Palmgard was apparently disclaiming coverage on the end-most inner finger tips, since it is that portion of the finger in which sensory perception is necessary for ball control. Palmgard explains that Webster's statements during the prosecution history were meant to distinguish the Webster invention from prior inventions in which the padding covered the entire inner and outer tip of the fingers. Nevertheless, Webster expressly stated that the padding in his invention would not cover the inner tips of the digits. For that reason, this Court interprets claim 1 to extend only to gloves in connection with which the padding does not cover the inner tips of the digits. A glove in which the padding covers the inner tip of at least one digit, but does not extend to the outer tip, would therefore not infringe the Webster patent. In other words, claim 1 does not cover gloves in which the padding on the inner tips would interfere with sensory perception at that point, regardless of whether such padding also extends over the end of the finger to the outer tip.

Plaintiff also contends that the padding of the Stash glove does not cover even the entire inner tip of the index finger and that the glove therefore infringes the Webster patent insofar as the padding on the fingers is concerned. That...