Riddell Inc. v. Schutt Sports Inc.

724 F.Supp.2d 981

RIDDELL, INC., Plaintiff,

v.SCHUTT SPORTS, INC., Defendant.

No. 08-cv-711-bbc.

United States District Court,W.D. Wisconsin.

July 19, 2010.

Opinion Granting Motion for Clarification July 28, 2010.

COPYRIGHT MATERIAL OMITTED.

Christopher G. Hanewicz, Perkins Coie LLP, Madison, WI, Debra R. Bernard, Perkins Coie LLP, Chicago, IL, for Plaintiff.

Colleen M. Garlington, Emily Dempsey, Matthew Hertko, Noah Franklin Webster, William A. Streff, Robin McCue, Kirkland & Ellis LLP, Chicago, IL, Jeffrey A. McIntyre, Paul Cranley, Whyte Hirschboeck Dudek S.C., Madison, WI, Robert Erb, Schutt Sports, Inc., Litchfield, IL, for Defendant.

OPINION and ORDER

BARBARA B. CRABB, District Judge.

In this patent infringement suit, plaintiff Riddell, Inc. contends that defendant Schutt Sports, Inc. is infringing certain claims of three patents plaintiff owns related to design improvements in football helmets. Schutt is asserting counterclaims for declaratory judgment of non-infringement, invalidity and inequitable conduct. Now before the court are Schutt's motion for summary judgment on Riddell's patent infringement claims and a related motion to strike expert testimony. (In an order entered on July 14, 2010, 724 F.Supp.2d 963 (2010), I granted Riddell's motion for summary judgment on Schutt's false advertising and deceptive trade practice claims. The parties have voluntarily dismissed their other claims related to false advertisement. Dkt. # 70.)

I will grant Schutt's motion for summary judgment with respect to Riddell's infringement claims requiring “notches” and a “jaw pad having ... a 25% compression deflection of [at least] 8 pounds per square inch” because Riddell has failed to prove the accused products contain those requirements, either literally or by equivalence. I will deny Schutt's motion with respect to Riddell's remaining infringement claims and Schutt's counterclaims for invalidity of claims requiring a “jaw flap,” a “jaw pad having ... a 25% compression deflection of [at least] 8 pounds per square inch” or a connectable face guard. As for Schutt's motion to exclude portions of the expert testimony of James Newman, I will deny that motion as unnecessary; the challenged portions of his testimony relate to the “notches” and “jaw pad” limitations that are no longer part of the case.

Before turning to the facts, I note that I have disregarded many of the parties' proposed findings of fact, some because they are unnecessary to resolve the parties' disputes, others because they are conclusory or inadmissible. Among the proposed facts I have disregarded are the parties' attempts to construe claims or prove or disprove infringement through witnesses' “interpreting” the claim language or assessing whether the accused products fall within the asserted claims. For example, Schutt includes many facts about what Riddell's expert, its Rule 30(b)(6) witness or the inventor of the asserted patents has said about the meaning of certain claim terms at issue, or how Riddell's expert has “interpreted” these terms. These are not admissible facts. A witness's statement about the meaning of an asserted claim term, even an expert's statement, is generally too conclusory to be of use. (On the other hand, an expert's statement about how a term appearing in a claim is used in the field can be useful.)

Most of these witness statements relate to “concessions” about the meaning of the terms that Schutt has extracted during depositions. These statements are even less useful; often they do not represent the entire idea of the witness, but rather aim to show weaknesses and inconsistencies in the witness's position. For example, Schutt proposes a series of facts related to what Riddell's expert and the inventor concede about the meaning of the term “jaw flap” to bolster Schutt's position that the term is insolubly ambiguous. However, the question whether a term is insolubly ambiguous is a question of law that does not hinge on whether a party's experts are confused or imprecise about the scope of the term.

Similarly, Riddell proposes several facts related to statements from employees of Schutt or an outside designer of Schutt's helmets (Design Concepts) who express their understanding about whether the accused products contain features disclosed in the claims. Their statements about whether the products have a “notch” or a “jaw flap” are irrelevant to determining the meaning of the terms in the asserted claims and whether the products fall within the scope of those claims.

From the parties' proposed findings of fact and the record, I find the following facts to be material and undisputed.

UNDISPUTED FACTS

A. Parties

Both plaintiff Riddell, Inc. and defendant Schutt Sports, Inc. manufacture and sell sporting equipment, including football helmets and face guards. Riddell is the owner by assignment of U.S. Patents Nos. 6,934,971 ('971 patent); 7,240,376 ('376 patent); and 7,036,151 ('151 patent).

B. Asserted Claims

1. Claims requiring “notches” ('971 pat., cls. 42-47)

Claim 42 of the '971 patent claims “[a] helmet” that includes

at least two notches formed in the lower edge surface of the shell, with at least one notch being disposed on each side of the shell, and at least one of the flexible members on each side of the chin protector passes through at least one of the notches on each side of the shell.

Claims 43-47 of the '971 patent depend from claim 43.

Figures 1A and 1B of the '971 patent depict a chin strap connector 116 “pass[ing] through a ‘notch,’ ” '971 pat., col. 9, lns. 41-42:

The specification discusses the role of the notches in detail, explaining that

Because ... the ear flaps 32 of the present invention are generally disposed to lie in a plane which is substantially parallel to the longitudinal axis 61 of the outer shell 31, the notches 107, 108 of chin protector connector 34 serve to provide improved stability of the lower chin straps, or flexible members 104, by preventing the lower strap from being free to slide around the outer wall surface of ear flaps 32. The notches 107, 108 are believed to effectively “catch” the lower strap member 104 to prevent the free sliding of the lower chin strap 104. In general, if a helmet 30 is subjected to a downward impact force upon face mask 65, helmet 30 tends to roll forwardly around a virtual pivot point located slightly above the ear openings 112. This rolling effect is typically resisted by a force acting between the lower strap connectors 109, 110 and the chin 49 of the wearer of the helmet. The further away from the virtual pivot point the lower snap connection of the lower chin strap is located, the better the resistance of the helmet 30 to rolling. Notch 107 assists in resisting the undesired rolling effect by redirecting the strap's force line of action to a location farther away from the virtual pivot point.

'971 pat., col. 9, ln. 56-col. 10, ln. 10.

In an order entered July 10, 2009, 2009 WL 2045941, I construed the term “notches” as used in claims 42-47 to mean “indentations of any shape in the lower edge of the helmet shell that prevent the lower chin straps from moving.” Dkt. # 51, at 8. I rejected Riddell's construction, which would have allowed “notches” to include “large angled portions in the lower edge surface of the helmet” but also rejected Schutt's narrow limitation that the “notches” be either concave or v-shaped, noting that the specification provides that “other shapes of notches ... could be utilized.” Id. at 7-8.

2. Claims requiring “compression deflection” ('971 pat., cls. 71-72 and '376 pat., cls. 1, 4-6, 10-20 and 22-24) a. Priority date of claims related to compression deflection

On May 1, 2002, Riddell filed Provisional Application No. 60/376,898. On May 1, 2003, Riddell filed Application No. 10/427,236, which resulted in the ' 971 patent. The '971 patent claims priority to the 2002 provisional application. During prosecution of the '971 patent, the patent examiner did not determine the priority date of the claims of the '971 patent.

On August 18, 2005, Riddell filed Application No. 11/208,233, which resulted in the '376 patent. This application was filed as a continuation of the 2003 application, so the '376 patent traces its priority claim to the 2002 provisional application as well. The patent examiner did not determine the priority date of the claims of the '376 patent during its prosecution.

The 2002 provisional application included the following disclosure:

A variety of different padding materials can be used for layers 175-177. For example, PVC nitrile foam, rubber foam, or polycarbonate foam are examples of foam padding materials which may be utilized, as are known in the art. When multiple layers of padding material are utilized, such as in pad 152, the first layer of 176 may be one of the foregoing types of foam materials, which is generally referred to as an energy, or force attenuating, foam, and the second layer of foam padding material 177 is a “softer” foam, generally referred to as a fitting, or comfort foam, as is known in the art. Examples of materials in construction of the foregoing described pads may also be found in U.S. Patent No. 3,882,547 ... which patent is incorporated herein by reference.

At the time the 2002 provisional application was filed, a nitrile foam called Der-Tex VN 600 PVC was known to those of skill in the art. Der-Tex refers to VN 600 PVC as an “energy absorbing” foam and at least since 1999 has maintained manufacturing specifications for the VN 600 foam indicating a minimum 25% compression deflection of 8.5 pounds per square inch. Force- or energy-attenuating PVC nitrile foam is not limited to foams that possess the claimed density and compression deflection characteristics. (The parties dispute whether VN 600 or any foam having certain minimum compression deflection properties would have been understood to be a “force-attenuating foam” as opposed to a “fitting foam.”)

CF-405S, a...