Stx, Inc. v. Brine, Inc.

• Decision Date: 25 February 1999
• Docket Number: No. Civ. AMD 97-1578.,Civ. AMD 97-1578.
• Citation: 37 F.Supp.2d 740
• Parties: STX, INC., Plaintiff, v. BRINE, INC., and Warrior Lacrosse, Inc., Defendants.
• Court: U.S. District Court — District of Maryland

37 F.Supp.2d 740

STX, INC., Plaintiff, v. BRINE, INC., and Warrior Lacrosse, Inc., Defendants.

No. Civ. AMD 97-1578.

United States District Court, D. Maryland.

February 25, 1999.

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James K. Archibald, Venable, Baetjer & Howard, Baltimore, MD, Rudolf E. Hutz, Mary W. Bourke, Connolly, Boye, Lodge & Hutz, Wilmington, DE, for plaintiff.

D. Christopher Ohly, Patton & Boggs, Baltimore, MD, Brian M. Dingman, Westboro, MA, for Brine, Inc. Mark A. Cantor, John S. Artz, Brooks & Kushman, P.C., Southfield, MI, for Warrior Lacrosse, Inc.

Shaun Michael Rose, Patton & Boggs, Baltimore, MD, for Sports Licensing, Inc.

MEMORANDUM

DAVIS, District Judge.

This is an action for patent infringement involving three corporations that market equipment used in the sport of lacrosse, and in particular lacrosse sticks. Pending before the court are numerous motions, including cross motions for summary judgment on the merits of certain infringement claims and invalidity defenses. For the reasons explained below, I shall grant certain of the motions and enter a final judgment disposing of all claims.

I. PROCEDURAL HISTORY

In January 1997, STX, Inc. ("STX") initiated this action against Brine, Inc. ("Brine") and Warrior Lacrosse, Inc. ("Warrior") in the United States District Court for the Eastern District of Virginia. That court transferred the action to this District in May 1997. STX alleged that Brine has been "infringing and inducing infringement" of its Patent No. 5,566,947 ("the '947 patent") by marketing lacrosse sticks under the trade names "Edge," "OZ," "M1," "MD," "MX," and "WMX." STX further alleged that Warrior committed like acts of infringement in respect to its lacrosse sticks having the trade names "Cobra," "Predator" and "Diablo." STX seeks a permanent injunction and damages.

Brine and Warrior separately answered the complaint, alleging in the aggregate virtually every known defense to an infringement action, including noninfringement, unenforceability, invalidity, laches and fraud on the patent office. In addition, in a counterclaim seeking equitable and monetary relief, Brine alleged that STX is infringing two of its patents, U.S. Patent No. 5,037,112 ("the '112 patent") and U.S. Patent No. 5,035,434 ("the '434 patent") by virtue of its marketing of the "Excalibur," "Turbo" and "Raptor" lacrosse sticks. STX answered Brine's counterclaim asserting a host of defenses of its own. Warrior has not asserted an affirmative claim. All of the parties seek attorney's fees on the ground that this is an exceptional case under 35 U.S.C. § 285.

It came to light during discovery that Brine has only an exclusive license to market products that are designed under the '434 and '112 patents. The owner and licensor of both patents is Sports Licensing, Inc. ("SLI"). SLI and Brine have a relationship that is not uncommon in the patent licensing arena; they share a common ownership, William H. Brine, Jr., and Peter J. Brine and their families. The two companies have distinct roles. SLI was created for the sole purpose of acquiring and managing various types of intellectual property, including the two patents sued on by Brine in this action. Brine's role is to market products under SLI's patents as its exclusive licensee.

Thus, STX moved for summary judgment of dismissal as to Brine's affirmative claims on the ground of lack of standing after it became evident that Brine's licensing arrangement with SLI did not include a written grant of all substantial rights under the patents in suit. See Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1092-94 (Fed.Cir.1998) (A patent licensee has standing to bring an infringement action independently only if it has obtained a written grant of all substantial rights under the patent.).

Brine's standing dilemma was resolved when I granted SLI's motion to intervene. Cf. id. at 1093. When SLI intervened in the action, however, it elected to abandon any infringement claim based on the '112 patent. Thus, that patent is not properly before me and I shall dismiss without prejudice for lack of jurisdiction Brine's claims based on the '112 patent.

I held a hearing on the pending motions and the parties were given an opportunity to present argument on all issues, including issues related to claim construction. At my invitation, the parties supplemented their arguments with additional filings subsequent to the hearing. Having now considered the arguments of counsel, the motions and responses, and the summary judgment record compiled herein, I shall grant Warrior's motion for summary judgment on the ground that the '947 patent is invalid under 35 U.S.C. § 102(b) because the invention, properly understood as not including as a limitation in claim 1 the preamble thereto, was "on sale" more than one year before the inventors filed their patent application. In the alternative, I shall also conditionally grant Brine's motion for summary judgment on the ground that the only independent claim of the '947 patent, properly understood as including as a limitation in claim 1 the preamble thereto, is indefinite under 35 U.S.C. § 112, ¶ 2. I shall also grant STX's motion for summary judgment and declare that its Raptor product does not infringe Brine's '434 patent. The remaining motions shall be denied.

II. STANDARDS FOR SUMMARY JUDGMENT

Summary judgment under Fed.R.Civ.P. 56 is appropriate in a patent case as in any other case. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795-96 (Fed. Cir.1990). Fed.R.Civ.P. 56(c) provides that summary judgment is appropriate when "viewed in the light most favorable to the non-moving party, `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 judgment as a matter of law.'" Cooke v. Manufactured Homes, Inc., 998 F.2d 1256, 1260 (4th Cir.1993); see Matsushita Elec. Indust. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

A fact is material for purposes of summary judgment, if when applied to the substantive law, it affects the outcome of the litigation. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A party opposing a properly supported motion for summary judgment bears the burden of establishing the existence of a genuine issue of material fact. Id. at 248-49, 106 S.Ct. 2505. The opposing party's "response by affidavit or as otherwise provided in [Rule 56] must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The Court must enter summary judgment against a party who, "after adequate time for discovery ... fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

III. PRELIMINARY MATTERS

A. Background of the '947 Patent

STX and/or its predecessor began manufacturing lacrosse sticks in the 1960s. In the early 1970s, STX developed the first synthetic lacrosse stick. Such sticks have become the standard for the game. Prior to the introduction of synthetic sticks, lacrosse sticks were composed of a one-piece construction of a handle with a head made of wood. Today, lacrosse sticks are generally composed of a head frame, including a throat portion at which a handle is affixed to the head. Generally, the head frame has two sidewalls and a transverse wall. Within the confines of the head frame is netting that is supported by loops connected to the sidewalls of the head frame. The netting allows a player to catch, carry and propel the ball during play. Numerous patents have issued covering lacrosse sticks.

As even a causual observer who has ever watched a serious game can attest, a team's success in the game is a function most of all of the relative speed, strength, agility, determination, intelligence and overall athleticism of the competing players. For players of equal or near equal ability, however, the equipment and apparatuses used in the game — including but not limited to sticks, gloves, helmets and other protective gear — can make a significant difference in the quality of play and in the outcome of contests played at a high degree of fluid teamwork and individual proficiency.

On September 20, 1985, the inventors named in the '947 patent filed their application. The '947 patent is entitled "Lacrosse Stick Having Open Sidewall Structure" and issued on October 22, 1996, after an arduous eleven year prosecution history. The application from which the '947 patent matured described the invention as

a new lightweight lacrosse stick having a double-wall, synthetic head having an opening or openings in the sidewalls to provide lightness and easy handling while retaining the strength and durability of the prior art lacrosse sticks having closed, or substantially closed, or solid sidewalls.

Prosecution History, Vol. 1, p. 10.

The '947 patent sets forth nine claims. Claim 1 is the only independent claim of the '947 patent. Each of the remaining claims is dependent upon claim 1, that is, each of claims 2 through 9 include all of the limitations of claim 1 in addition to the limitations recited in each of the dependent claims. The claims of the '947 patent are:

1. A head for a lacrosse stick which provides improved handling and playing characteristics comprising a generally V-shaped frame constructed of a synthetic polymeric material defined by two sidewalls joined at a juncture and diverging therefrom, a transverse wall joining tile ends of said sidewalls opposite of said juncture, said frame being adapted to receive a web, and said sidewalls having openings therein, the area of said openings including string holes comprising...