DCT
1:21-cv-02112
Smith Sport Optics Inc v. Burton Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Smith Sport Optics, Inc. (Delaware) and Koroyd SARL (Monaco)
- Defendant: The Burton Corporation (Vermont)
- Plaintiff’s Counsel: Dorsey & Whitney LLP
- Case Identification: 1:21-cv-02112, D. Colo., 08/04/2021
- Venue Allegations: Venue is based on Defendant operating regular and established places of business in the district, specifically the "Denver Burton Flagship Store" and the "Boulder Burton Flagship Store."
- Core Dispute: Plaintiffs allege that Defendant’s Anon-brand ski and snowboard helmets, which incorporate WaveCel® technology, infringe a patent related to protective helmets that use shock-absorbing cellular inserts for improved ventilation and impact protection.
- Technical Context: The technology involves advanced helmet construction that seeks to balance impact safety, low weight, and high airflow, key performance characteristics in the competitive market for ski, snowboard, and cycling helmets.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with pre-suit notice of infringement via a detailed letter on January 8, 2021, before Defendant commenced sales of the accused products later that month. This notice forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-13 | Priority Date for U.S. Patent No. 10,736,373 |
| 2013 | Plaintiff Smith begins selling helmets with the patented technology |
| 2020-08-11 | U.S. Patent No. 10,736,373 Issued |
| 2020-12-29 | Plaintiff Koroyd learns of Defendant's plan to sell accused products |
| 2021-01-08 | Plaintiffs send Defendant a demand letter alleging infringement |
| 2021-01 | Defendant begins selling the accused Anon WaveCel® helmets |
| 2021-08-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,736,373 - “Helmet with Shock Absorbing Inserts,” issued August 11, 2020 (’373 Patent)
The Invention Explained
- Problem Addressed: The patent's background describes the trade-off in conventional helmet design between providing robust impact protection and achieving desirable characteristics like light weight and sufficient ventilation for user comfort (’373 Patent, col. 1:11-29).
- The Patented Solution: The invention describes a helmet constructed with a traditional hard outer shell and an inner shock-absorbing liner (e.g., expanded polystyrene, or EPS). The key innovation is that this liner contains one or more cavities, which are filled with a separate, second type of shock-absorbing material described as a "honeycomb material" comprising an "array of energy absorbing cells" (’373 Patent, col. 2:16-19, col. 2:47-50). These cellular inserts are positioned under the shell's vents, allowing air to flow freely through the open-ended cells to the wearer's head, thereby providing both ventilation and impact protection where traditional helmets might just have an open vent (’373 Patent, col. 4:18-24).
- Technical Importance: This composite construction claims to resolve the conflict between protection and ventilation by using a specialized, air-permeable material to provide structure and safety directly within the helmet's ventilation channels (’373 Patent, col. 1:30-34).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 7 (Compl. ¶48).
- Independent Claim 1 requires:
- A shell with a plurality of vents (a first vent and a second vent).
- A shock absorbing liner attached to the shell, with a cavity at least partially aligned with the vents.
- A shock absorbing insert positioned in and substantially filling the cavity, where the insert is visible through the vents.
- A portion of the liner is positioned between the shell and the insert.
- The insert comprises an "array of energy absorbing cells," each with "open first longitudinal ends and open second longitudinal ends."
- These cells are positioned within the perimeters of the vents to allow airflow from the exterior, through the vents, and through the cells to the interior of the helmet.
- The complaint notes that Plaintiffs may assert additional claims (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The accused products are Defendant's "Anon® Merak" and "Anon® Logan" ski and snowboard helmets (Compl. ¶22).
Functionality and Market Context
- The accused helmets incorporate a technology called "WaveCel®," which is described as an energy-absorbing cellular structure (Compl. ¶22). The complaint alleges that this WaveCel material functions as the "shock absorbing insert" of the ’373 Patent. Multiple images in the complaint show the WaveCel material, often colored bright green, positioned within the accused helmets such that it is visible through external vents (Compl. ¶27, 30). The complaint presents a side-by-side visual comparison of the domed insert structures used by Plaintiff (Koroyd) and Defendant (WaveCel), suggesting a similar application and function despite differences in geometric structure (Compl. ¶32). Plaintiffs allege these products were launched to directly compete with and trade on the goodwill of Plaintiffs' own helmets (Compl. ¶25).
IV. Analysis of Infringement Allegations
’373 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell comprising a plurality of vents including a first vent defining a first opening and a second vent defining a second opening | The accused helmets have an outer shell with multiple vents. The complaint provides an annotated image identifying the shell and two distinct vents on both the Logan and Merak models (Compl. ¶37). | ¶37 | col. 2:11-13 |
| a shock absorbing liner adjacent to and attached to the shell and comprising a cavity at least partially aligned with the plurality of vents | The helmets allegedly contain a shock-absorbing liner (identified as molded EPS) attached to the shell, which has a cavity aligned with the vents. A cutaway image with annotations purports to show this structure (Compl. ¶38). | ¶38, 43 | col. 2:30-33 |
| a shock absorbing insert positioned in and substantially filling the cavity such that the shock absorbing insert is visible through and spans across at least a portion of each of the plurality of vents | The WaveCel material allegedly serves as the insert, is positioned in the cavity, and is visible through the helmet's vents. The complaint includes an annotated exploded view to illustrate this arrangement (Compl. ¶39). | ¶39 | col. 2:13-16 |
| wherein at least a portion of the shock absorbing liner is positioned between the shell and the shock absorbing insert | The complaint alleges this configuration exists in the accused helmets, providing an annotated cross-section image purporting to show the liner situated between the outer shell and the WaveCel insert (Compl. ¶40). | ¶40 | col. 2:30-38 |
| wherein the shock absorbing insert comprises an array of energy absorbing cells, each having respective open first longitudinal ends and open second longitudinal ends | The WaveCel material is alleged to be an "array of energy absorbing cells" with open ends. The complaint provides close-up images of the WaveCel structure to support this characterization (Compl. ¶41, 44). | ¶41, 44 | col. 2:47-52 |
| wherein the first longitudinal ends of a first plurality of adjacent cells ... are positioned within a perimeter of the first opening and the first longitudinal ends of a second plurality of adjacent cells ... are positioned within a perimeter of the second opening such that air is able to flow from an exterior side of the helmet through each of the first and second vents and through a respective one of the first and second plurality of adjacent cells toward an interior of the helmet | The complaint alleges that the WaveCel cells are positioned within the vents to allow airflow through them. An annotated image shows close-ups of the vents on the accused helmets, identifying the cell arrays within the vent openings (Compl. ¶42). | ¶42 | col. 4:18-24 |
Identified Points of Contention
- Scope Questions: A central dispute may arise from the structural difference between the "honeycomb" and "tubes" described as examples in the patent and the accused "WaveCel" technology, which appears from complaint visuals to be a folded, undulating structure (Compl. ¶32). The case may turn on whether the claim term "array of energy absorbing cells" is broad enough to read on the WaveCel geometry, or if it is implicitly limited to the honeycomb-like embodiments heavily featured in the patent specification.
- Technical Questions: An evidentiary question is whether the WaveCel structure functions as claimed. Specifically, does it possess "open first longitudinal ends and open second longitudinal ends" that permit air to flow through the cells as required by claim 1? The defense may argue that airflow in the accused products occurs around or between the folds of the WaveCel material, rather than through discrete, open-ended cells, suggesting a different technical operation than what is claimed.
V. Key Claim Terms for Construction
The Term: "array of energy absorbing cells"
- Context and Importance: This term defines the core of the inventive insert. Its construction will be dispositive, as the primary non-infringement argument will likely be that the accused WaveCel structure is not an "array of energy absorbing cells" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs may argue that the claim language is general and not limited to a specific geometry. The specification introduces the "honeycomb material" as an example ("For example, the second shock absorbing material...may include a honeycomb material...") rather than a requirement, suggesting other cell structures are contemplated (’373 Patent, col. 2:47-49).
- Evidence for a Narrower Interpretation: Defendants may argue that the patent repeatedly and consistently describes the invention using "honeycomb material" and "tubes," indicating that the inventors regarded this specific structure as essential to their invention (’373 Patent, col. 2:18, 4:2-4). The drawings exclusively depict honeycomb-like arrangements, which may be used to narrow the scope of the claims to the disclosed embodiments.
The Term: "open first longitudinal ends and open second longitudinal ends"
- Context and Importance: This limitation defines the structure of the cells for enabling airflow. Whether the undulating, folded WaveCel material has "longitudinal ends" in the manner claimed is a critical question for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs may argue that "longitudinal ends" simply requires openings on opposite sides of the insert that align with the direction of airflow, regardless of the path's linearity.
- Evidence for a Narrower Interpretation: Defendants may point to specification language describing a "longitudinal axis" of the tubes, which suggests a straight, tube-like structure, not a folded or tortuous path (’373 Patent, col. 4:9-11). The visual comparison in the complaint could be used by the defense to argue that WaveCel lacks the distinct, linear "longitudinal" structure of the patented invention (Compl. ¶32).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by "inducing users to use the helmets in the United States after purchase" (Compl. ¶49). The complaint does not, however, specify the acts of inducement, such as referencing instructions in user manuals or marketing materials that direct users to perform an infringing act.
- Willful Infringement: The complaint alleges a strong basis for willfulness. It claims Defendant received actual, detailed notice of the ’373 patent and the specific infringement allegations in a letter dated January 8, 2021 (Compl. ¶23). The complaint further alleges that Defendant proceeded to launch and sell the accused products in January 2021 after receiving this notice, which suggests a "deliberate and conscious decision to infringe" or at least reckless disregard of Plaintiffs' patent rights (Compl. ¶24, 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "array of energy absorbing cells," which is exemplified in the patent specification almost exclusively as a "honeycomb" or "tubular" structure, be construed broadly enough to cover the defendant's visually distinct, undulating WaveCel® material?
- A key evidentiary question will be one of technical operation: Does the accused WaveCel® insert function as claimed by allowing air to flow through individual cells with "open... longitudinal ends," or is there a fundamental mismatch in the mechanism of airflow and energy absorption compared to that disclosed in the ’373 patent?
- A third critical question will concern willfulness: Given the allegation that Defendant received a detailed infringement analysis before launching the accused products, the court will likely examine the timing and substance of Defendant's actions to determine whether its conduct constituted willful infringement, potentially exposing it to enhanced damages.