DCT
2:18-cv-00798
Hibbett Sporting Goods Inc v. 13 31 Sport LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hibbett Sporting Goods, Inc. (Delaware)
- Defendant: 13-31 Sport LLC (Kansas)
- Plaintiff’s Counsel: Burr & Forman, LLP
- Case Identification: 2:18-cv-00798, N.D. Ala., 05/24/2018
- Venue Allegations: Plaintiff asserts venue is proper in the Northern District of Alabama because Defendant allegedly directed licensing and enforcement activities into the district and a substantial part of the events giving rise to the action occurred there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its sales of "fielder's masks" do not infringe two patents owned by Defendant related to protective face guards for sports.
- Technical Context: The technology concerns protective face guards for sports like baseball and softball, which are designed to prevent facial injury from ball impacts while minimizing obstruction of the player's field of vision.
- Key Procedural History: The complaint states that this action follows communications from Defendant's counsel regarding potential infringement and a desire to negotiate a license. The complaint also notes that Defendant has filed infringement lawsuits asserting the same patents against other retailers, including Dick's Sporting Goods, Academy, and Walmart, in the Eastern District of Texas. Plaintiff alleges that Defendant exists solely for the purpose of owning and licensing the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2002-01-07 | Priority Date for '139 and '234 Patents |
| 2002-12-31 | U.S. Patent No. 6,499,139 Issued |
| 2003-07-29 | U.S. Patent No. 6,598,234 Issued |
| 2018-03-07 | Defendant files suit vs. Dick's Sporting Goods (mentioned) |
| 2018-03-22 | Defendant's counsel contacts Plaintiff re: potential suit |
| 2018-05-24 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,499,139 - "Face Guard" (issued Dec. 31, 2002)
The Invention Explained
- Problem Addressed: The patent identifies a need for facial protection for baseball and softball infielders. It notes that prior art masks, such as those for catchers, were often too bulky, obstructed the player's horizontal and peripheral vision, and were uncomfortable or difficult to secure properly. ('139 Patent, col. 1:15-46).
- The Patented Solution: The invention proposes a lightweight face guard with an "open framework" of metal crossbars and vertical "risers" that is positioned "outside of the player's generally horizontal line of sight." ('139 Patent, col. 2:10-12). Compressible padding at the brow and chin spaces the frame from the face, and a system of straps is used to position and secure the guard, allowing the player to don it and then adjust it with their hands free. ('139 Patent, Abstract; col. 5:43-54).
- Technical Importance: This design sought to provide effective impact protection specifically for fielders who require an unobstructed field of vision, a key difference from the more enclosed masks used by catchers. ('139 Patent, col. 1:20-24).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 7, and 10. (Compl. ¶¶35-37).
- Independent Claim 1 includes elements for: an open framework with crossbars and risers positioned outside the horizontal line of sight, with the risers being "free of said padding"; a chin bar extending below the chin; a "chin guard"; and a strap system comprising a "stretchable positioning strap and first and second adjustable securing straps."
- Independent Claim 7 includes elements for: a framework with a chin bar and chin guard, where the chin pad is "integrally formed with said chin guard"; and a strap system including a "positioning strap," a "securing strap," and an "additional adjustable securing strap."
- Independent Claim 10 includes elements for: a strap system with a "first securing strap" and a "second securing strap," configured to prevent movement of the guard in two "generally perpendicular" directions.
- The complaint denies infringement of all claims of the '139 Patent. (Compl. ¶33).
U.S. Patent No. 6,598,234 - "Face Guard" (issued Jul. 29, 2003)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '139 Patent, this patent addresses the same problem of providing facial protection for fielders without the visual obstruction and bulk of prior art masks. ('234 Patent, col. 1:21-49).
- The Patented Solution: The technology is substantially the same as the '139 Patent. The claims, however, introduce different structural and methodological limitations. For example, a key feature is an "open section being positioned generally adjacent the player's generally horizontal line of sight," with that open section being "devoid of risers." ('234 Patent, col. 7:15-20).
- Technical Importance: This patent refines the claims around the core concept of providing protection while preserving a clear sightline, focusing on the specific arrangement of the framework's components. ('234 Patent, col. 2:2-21).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 11, and 13. (Compl. ¶¶55-57).
- Independent Claim 1 (apparatus) includes elements for: an open framework with an "open section" that is "devoid of risers"; risers that are "free of said padding"; and a "securing strap being coupled relative to the chin pad."
- Independent Claim 11 (apparatus) includes elements for: a framework with a chin bar and chin guard, where the "chin pad being integrally formed with said chin guard"; and a strap system including an "additional adjustable securing strap."
- Independent Claim 13 (method) includes steps for: (a) positioning an open framework so an open section is "devoid of crossbars"; (b) spacing the framework from the face using padding at the brow and chin; and (c) securing the framework so impact forces from a "baseball" are limited to the brow and chin contact points.
- The complaint denies infringement of all claims of the '234 Patent. (Compl. ¶53).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Red Face Mask," "Accused White Face Mask," and "Accused Black Face Mask," collectively referred to as the "Accused Products." (Compl. ¶16). An image from the complaint shows three distinct fielder's masks. (Compl. p. 4, ¶15).
Functionality and Market Context
- The products are protective "fielder's masks" offered for sale and sold by Plaintiff Hibbett Sporting Goods through its retail stores and e-commerce website. (Compl. ¶14). The complaint alleges the masks are "designed to protect against a softball," distinguishing them from the "baseball" language used in the patents. (Compl. ¶35).
IV. Analysis of Infringement Allegations
'139 Patent Infringement Allegations
The complaint alleges non-infringement by arguing the Accused Products lack multiple claimed elements. The allegations for the "Accused Red Face Mask" are summarized below.
| Claim Element (from Independent Claim 1) | Plaintiff's Non-Infringement Position | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of risers interconnecting the crossbars...said risers being free of said padding | The Accused Red Face Mask does not include this element. | ¶35 | col. 5:35-37 |
| a chin bar extending below the chin of the player when the guard is donned | The Accused Red Face Mask does not include this element. | ¶35 | col. 4:26-29 |
| a plurality of straps including a stretchable positioning strap and first and second adjustable securing straps | The Accused Red Face Mask does not include this strap configuration. | ¶35 | col. 2:59-61 |
| an open framework configured to prevent a baseball from contacting the player's face | The Accused Red Face Mask is designed for a softball and not a baseball. | ¶35 | col. 7:4-6 |
'234 Patent Infringement Allegations
The complaint makes similar non-infringement allegations against the '234 Patent, again focusing on the "Accused Red Face Mask."
| Claim Element (from Independent Claim 1) | Plaintiff's Non-Infringement Position | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of risers interconnecting the crossbars...said risers being free of padding | The Accused Red Face Mask does not include this element. | ¶55 | col. 6:36-38 |
| a securing strap being coupled relative to the chin pad | The Accused Red Face Mask does not include this element. | ¶55 | col. 7:34-40 |
| an open framework configured to prevent a baseball from contacting the player's face | The Accused Red Face Mask is designed for a softball and not a baseball. | ¶55 | col. 1:11-12 |
- Identified Points of Contention:
- Scope Questions: A central dispute concerns whether a mask "designed to protect against a softball" can infringe claims specifying protection from a "baseball." (Compl. ¶¶35, 55). This raises the question of whether "baseball" is a limiting term or merely exemplary of a hard ball used in a diamond sport. The complaint provides a detailed image of the "Accused Red Face Mask" that will be compared against the patent's figures and claim limitations. (Compl. p. 8, ¶34).
- Technical Questions: The case will involve a direct structural comparison between the Accused Products and the claimed features. Key questions include whether the accused masks contain structures that meet the definitions of a "plurality of risers...free of padding," a "chin bar extending below the chin," and the specific multi-strap configurations recited in various independent claims. (Compl. ¶¶35, 55).
V. Key Claim Terms for Construction
The Term: "baseball"
Context and Importance: Plaintiff repeatedly alleges its products are designed for softball, not baseball, as a basis for non-infringement. (Compl. ¶¶35, 55, 57). The construction of this term is therefore critical to determining the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification states that "Baseball and softball players are at risk of being hit in the face by a moving ball," suggesting the inventors contemplated both sports. ('139 Patent, col. 1:15-16). This may support an argument that "baseball" should be construed to include softballs or that the invention is applicable to both.
- Evidence for a Narrower Interpretation: The claims themselves, as well as the abstract and title, consistently and specifically refer to a "baseball player's face" and protection from a "baseball." ('139 Patent, Claim 1, col. 7:1-3; Abstract). This may support an argument that the claims are explicitly limited to equipment designed for the sport of baseball.
The Term: "risers"
Context and Importance: Plaintiff contends that its products do not include "a plurality of risers interconnecting the crossbars." (Compl. ¶¶35, 55). Practitioners may focus on this term because its definition will determine whether the vertical or semi-vertical frame components on the accused masks meet this structural limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the risers as interconnecting the crossbars and extending vertically. ('139 Patent, col. 4:22-26). Defendant could argue that any such vertical connecting element on the accused masks constitutes a "riser."
- Evidence for a Narrower Interpretation: The specification discloses "horizontally spaced riser sections 30 and 32" and notes that in the preferred embodiment, the risers are "free of the padding." ('139 Patent, col. 2:16-17, col. 4:23-24). Plaintiff may argue that for a component to be a "riser," it must match this more specific description and be separate from padded portions of the frame.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement "either directly or indirectly," but provides no specific factual allegations related to inducement or contributory infringement. (Compl. ¶49). The focus of the complaint is on the assertion that the accused products themselves do not meet the limitations of the patent claims.
- Willful Infringement: As a declaratory judgment complaint filed by the accused infringer, willfulness is not alleged against the Plaintiff. However, the complaint establishes that Defendant provided Plaintiff with pre-suit notice of the patents-in-suit via communications from counsel starting on March 22, 2018. (Compl. ¶17). This fact would be relevant to a potential willfulness claim by the Defendant if it were to file a counterclaim for infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on fundamental questions of claim scope and factual comparison. The key issues for the court will likely be:
A core issue will be one of definitional scope: can the claim term "baseball" be construed to read on a protective mask that Plaintiff alleges is designed for "softball"? The outcome may depend on whether the court views the term as an essential limitation or as exemplary, particularly in light of the specification's reference to both sports.
A second key issue will be one of structural correspondence: do the physical components of the accused masks—specifically their vertical frame elements and strap assemblies—possess the specific structures required to meet the claim limitations for a "plurality of risers...free of padding," a "chin bar," and various multi-strap configurations?
For method claim 13 of the '234 patent, a central question will be whether selling a mask allegedly designed for softball constitutes performing the claimed step of "securing the framework...so that impact forces of a baseball engaging the framework are substantially limited," intertwining the issues of claim scope and accused product functionality.