Marc Kapsalis v. Dean Sicking

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Marc Kapsalis and ZiKap, Inc. (Illinois)
  • Defendant: Dean Sicking and Sicking Safety Systems, LLC (Texas)
  • Plaintiff’s Counsel: Bradley Arant Boult Cummings LLP
• Case Identification: 2:22-cv-00166, N.D. Ala., 07/05/2022
• Venue Allegations: Venue is alleged to be proper because a substantial part of the events giving rise to the claims occurred in the district, and Defendants do not object to venue.
• Core Dispute: Plaintiffs seek a declaratory judgment that Marc Kapsalis is a joint inventor and co-owner of patents held by Defendants related to safer hockey rink barriers, in addition to asserting claims for breach of contract and fraud.
• Technical Context: The technology concerns energy-absorbing dasher board assemblies for sports arenas, primarily hockey, designed to reduce the severity of player injuries from collisions.
• Key Procedural History: The complaint notes that Plaintiff previously filed a civil action in Illinois state court in January 2019 asserting breach of contract and fraud, which was removed to federal court, transferred to this district, and subsequently dismissed without prejudice by agreement of the parties.

Case Timeline

Date	Event
2011-08-30	Kapsalis and Sicking execute "Initial Agreement"
2012-05-24	Dr. Sicking executes employment agreement with UAB
2012-07-12	’091 Patent Priority Date
2015-06-01	Parties memorialize joint venture in "2015 Document"
2015-07-28	U.S. Patent No. 9,091,091 Issues
2017-05-02	’377 Patent Priority Date
2019-01-01	Kapsalis files initial suit in Illinois state court
2019-12-17	U.S. Patent No. 10,507,377 Issues
2022-07-05	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,507,377 - "Sports Wall Assembly"

The Invention Explained

• Problem Addressed: The patent addresses injuries in sports like hockey resulting from sudden deceleration when a participant collides with the surrounding boards (’377 Patent, col. 5:1-5). The background notes that conventional designs can cause severe injuries, including head trauma and spinal cord damage, by not sufficiently lengthening the time of impact (’377 Patent, col. 5:2-10).
• The Patented Solution: The invention is a wall assembly with a support structure and a separate movable wall panel positioned between the support and the playing surface (’377 Patent, col. 1:51-54). When a player hits the wall, the movable panel displaces toward the support structure, absorbing energy via shock absorbers (e.g., springs) and decelerating the player over a greater distance, thereby reducing peak forces (’377 Patent, Abstract; Fig. 2). The system is biased to return the movable wall to its original position after impact (’377 Patent, col. 2:5-9).
• Technical Importance: This approach separates the impact-receiving surface from the main support frame, allowing for a lighter, lower-inertia movable panel that can react more effectively to impacts and reduce injury severity compared to rigid or semi-rigid single-unit board systems (’377 Patent, col. 6:35-45).

Key Claims at a Glance

• The complaint does not identify specific claims for its inventorship challenge, but the patent’s broadest independent claim appears to be Claim 1.
• Claim 1 Elements:
  • A support assembly.
  • A vertically extending transparent shield fixedly attached to an upper end of the support assembly.
  • A movable wall assembly.
  • A plurality of shock absorbers positioned between the support assembly and the movable wall assembly.
  • The shock absorbers are configured to store energy when a force moves the movable wall assembly from a first position to a second position, and to release that energy to return the wall to the first position when the force is removed.
• The complaint does not explicitly reserve the right to assert dependent claims in its inventorship challenge.

U.S. Patent No. 9,091,091 - "Energy Absorbing Sports Board Assembly"

The Invention Explained

• Problem Addressed: The patent identifies the risk of concussions and paralyzing spinal cord injuries in hockey resulting from players striking rigid board systems (’091 Patent, col. 1:10-24). It notes that prior art systems are often fixed to the arena floor, offering insufficient energy dissipation, particularly at the bottom of the boards where head-first impacts are likely (’091 Patent, col. 1:36-41, col. 2:30-35).
• The Patented Solution: The invention is a board assembly that is not fixed to the arena floor but instead rests on a ramped surface (’091 Patent, Abstract; col. 4:50-52). A key feature is a hinge system allowing wall panels to rotate relative to adjacent panels and the see-through upper portion (glass) (’091 Patent, Abstract). Upon impact, the bottom of the board deflects laterally and upward along the ramp, absorbing energy, while a pre-tensioned spring or cable system provides a restoring force to return the panel to its original position (’091 Patent, col. 3:46-51, col. 4:26-34).
• Technical Importance: This design allows the board system to move relative to the arena floor and pivot at hinges, providing a more forgiving impact surface designed to reduce peak g-loading on players compared to traditional fixed-board systems (’091 Patent, col. 2:25-30).

Key Claims at a Glance

• The complaint does not identify specific claims for its inventorship challenge, but the patent’s broadest independent claim appears to be Claim 1.
• Claim 1 Elements:
  • A catch plate with a front surface facing a playing surface.
  • A ramp adjacent to the back of the catch plate, having an upward angle.
  • A frame with a generally rectangular shape, having a bottom portion with a slope positioned on the top surface of the ramp.
  • The frame is configured so its bottom portion can laterally deflect away from the playing surface on the ramp during an impact.
  • First and second extension hinges extending from the frame's side portions.
  • First and second elongated slots within the respective extension hinges.
  • A dasher board on the front of the frame.
• The complaint does not explicitly reserve the right to assert dependent claims in its inventorship challenge.

No probative visual evidence provided in complaint.

III. The Accused Instrumentality

This section is not applicable as the complaint does not allege patent infringement against an accused instrumentality. The core of the dispute is a declaratory judgment action concerning inventorship and ownership of the patents-in-suit.

IV. Analysis of Infringement Allegations

This section is not applicable as the complaint does not contain patent infringement allegations.

V. Key Claim Elements for Inventorship Analysis

• ’377 Patent: The "Movable Wall Assembly"

  • Context and Importance: A central technical concept of the ’377 Patent is the structural separation of a "movable wall assembly" from a "support assembly," with shock absorbers in between (’377 Patent, col. 1:51-54). The inventorship dispute may turn on who conceived of this specific two-part construction, as opposed to merely improving a unitary board system. Practitioners may focus on evidence showing which party, if any, first conceived of a distinct, movable impact panel guided by and cushioned against a separate, fixed frame.
  • Evidence for Broader Interpretation: The specification describes the movable wall as potentially including various frame pieces and a front wall, suggesting a multi-component subsystem (’377 Patent, col. 8:38-51).
  • Evidence for Narrower Interpretation: Claim 1 requires the movable wall assembly to be distinct from the support assembly to which the transparent shield is "fixedly attached" (’377 Patent, col. 12:4-6). Specific embodiments show the movable wall as an entirely separate, sliding or rolling carriage-like structure (e.g., Fig. 1), which could suggest a narrower scope tied to a complete structural separation.

• ’091 Patent: The "Ramp" and "Extension Hinge"

  • Context and Importance: The ’091 Patent’s inventive concept appears to combine a floor-based "ramp" that guides deflection with "extension hinges" having "elongated slots" that allow adjacent panels to move apart during impact (’091 Patent, col. 5:27-31; col. 6:50-54). The inventorship question will likely focus on who conceived of this combination of features allowing the system to deflect upwards and outwards simultaneously while also expanding laterally.
  • Evidence for Broader Interpretation: The term "ramp" is described functionally as providing a restoring force and guiding rotation (’091 Patent, col. 3:46-51), which could encompass various sloped or guiding surfaces.
  • Evidence for Narrower Interpretation: The claims require a "bottom portion with a slope positioned on the top surface of the ramp," suggesting a specific physical interface (’091 Patent, col. 5:39-41). The "elongated slot" in the hinge is a specific structural limitation; inventorship requires contribution to this particular concept, not just the general idea of a flexible board connection (’091 Patent, col. 5:50-54).

VI. Key Patent-Related Claims

• Declaratory Judgment of Inventorship and Ownership (’377 and ’091 Patents): Plaintiffs allege that Marc Kapsalis contributed to the conception and reduction to practice of the inventions claimed in the ’377 and ’091 Patents and is, therefore, a joint inventor with Dr. Sicking (Compl. ¶¶134-136, 146-148). The complaint alleges that Kapsalis was omitted as an inventor through error and seeks a court order under 35 U.S.C. § 256 to correct the inventorship on both patents (Compl. ¶¶137-139, 149-151). As a claimed joint inventor who has not assigned his rights, Kapsalis asserts he is a joint owner of both patents (Compl. ¶¶141, 153).
• Declaratory Judgment of License Rights: In the alternative, Plaintiffs allege that Dr. Sicking was hired by Kapsalis to make a particular invention (a safer dasher board) and used Kapsalis’s money and other contributions to do so (Compl. ¶¶158-161). Based on this, Plaintiffs assert that Kapsalis has at least "shop rights" or a non-exclusive license to practice the "Dasher-Board IP," which includes the patents-in-suit (Compl. ¶¶163-164).
• Declaratory Judgment of Estoppel: As a further alternative, Plaintiffs allege that Defendants’ course of conduct, including alleged misrepresentations and refusal to move the project forward, has created an implied license and equitably estops Defendants from asserting any infringement claims against Kapsalis related to the "Dasher-Board IP" (Compl. ¶¶173-180).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of contribution to conception: What specific, corroborated evidence can Plaintiff Kapsalis provide to demonstrate that he contributed to the definite and permanent idea of the complete and operative inventions as claimed in the ’377 and ’091 patents? This will require distinguishing contributions to the specific claim elements (e.g., the movable wall assembly, the ramp-and-hinge system) from general contributions to the overall project goal of a safer dasher board.
• The case will also present a question of contractual interpretation and its effect on ownership: Assuming Kapsalis is deemed a joint inventor, how will the various alleged agreements between the parties—from the 2011 "Initial Agreement" to the 2015 "Binding Agreement"—affect the ownership of his inventive rights? The court will need to determine if any valid agreement obligated Kapsalis to assign his interest to Dr. Sicking or the joint venture.
• Finally, an alternative legal question is one of implied rights: If Kapsalis is not found to be a joint inventor, did Defendants' conduct and use of Plaintiffs' resources give rise to an implied license or "shop right," or otherwise estop Defendants from preventing Plaintiffs from practicing the patented technology? This inquiry will shift from patent law's inventorship standards to equitable principles based on the parties' entire course of dealing.