Total Control Sports Inc v. Rukket LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Total Control Sports, Inc. (Illinois)
  • Defendant: Rukket, LLC (Delaware)
  • Plaintiff’s Counsel: Young Conaway Stargatt & Taylor LLP; Hahn Loeser & Parks LLP
• Case Identification: 1:17-cv-01731, D. Del., 12/01/2017
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is organized and resides in Delaware, has transacted business in the district, and has allegedly committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s weighted training balls, and the methods of using them, infringe patents related to the construction of deformable weighted balls and the training feedback they provide.
• Technical Context: The technology concerns sports training equipment, specifically weighted balls for batting practice designed to limit flight distance while providing immediate visual feedback on swing quality.
• Key Procedural History: The '564 Patent is a divisional of the application that issued as the '542 Patent, and both patents claim priority to the same 2009 provisional application.

Case Timeline

Date	Event
2009-12-08	Priority Date for '542 and '564 Patents
2014-04-22	U.S. Patent No. 8,702,542 Issues
2015-11-17	U.S. Patent No. 9,186,564 Issues
2017-11-15	Date of Plaintiff's visit to Defendant's website for exhibits
2017-12-01	Complaint Filed

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

U.S. Patent No. 8,702,542 - "Total Control Batting Ball"

• Patent Identification: U.S. Patent No. 8,702,542, "Total Control Batting Ball," issued April 22, 2014. (Compl. ¶13).

The Invention Explained

• Problem Addressed: The patent identifies a need for a batting practice ball that does not travel far when hit, provides immediate feedback to the hitter about the quality of contact, and is durable enough to withstand repeated strikes from a bat. (’542 Patent, col. 1:13-36). Existing practice balls were described as either traveling too far, being too large to simulate gameplay, or having weak points like valve structures that were prone to breakage. (’542 Patent, col. 1:56-65).
• The Patented Solution: The invention is a weighted ball with a "resilient, flexible, nonburstable outer shell" containing a weighted filler material, such as sand. (’542 Patent, Abstract). A key aspect is the sealing mechanism for the filler hole, which involves a "hole plug" and a separate "hole plug sealant" that reinforces the plug and becomes part of the ball's outer surface, aiming to eliminate the weak point of a conventional valve. (’542 Patent, col. 7:51-65). This construction is designed to absorb impact, deform to provide visual feedback, and endure repeated use.
• Technical Importance: This design sought to create a durable, limited-flight training tool that could offer instant, visual feedback on swing mechanics within a confined practice space. (’542 Patent, col. 2:20-32).

Key Claims at a Glance

• The complaint asserts infringement of at least Independent Claim 1. (Compl. ¶14).
• Essential elements of Independent Claim 1 include:
  • a resilient, flexible, nonburstable outer shell;
  • a hollow inner chamber;
  • a filler hole;
  • a weighted filler material inserted into the chamber;
  • air inside the chamber at a pressure equal to the outside air pressure;
  • a hole plug to seal the filler hole;
  • a hole plug sealant to reinforce the plug and permanently seal the filler hole; and
  • the hole plug sealant forming a portion of the ball's outer cover. (’542 Patent, col. 9:8-26).

U.S. Patent No. 9,186,564 - "Method Of Training And Evaluating A Hitter Using A Weighted Ball"

• Patent Identification: U.S. Patent No. 9,186,564, "Method Of Training And Evaluating A Hitter Using A Weighted Ball," issued November 17, 2015. (Compl. ¶22).

The Invention Explained

• Problem Addressed: The patent addresses the difficulty for hitters and coaches in immediately discerning whether a batted ball was struck properly (i.e., on its center line) or improperly (e.g., hit too high, low, or with an "inside out" swing). (’564 Patent, col. 2:32-38).
• The Patented Solution: The invention is a method of training that uses a weighted ball with the specific construction described in the ’542 Patent. The method provides "instant optical feedback" based on the ball's deformation and trajectory after being hit. (’564 Patent, Abstract). A correct hit results in the ball traveling in a "substantially horizontal plane" in a round shape. An incorrect hit causes the ball to "donut"—deform into an out-of-round shape—and travel in a diagnostically different manner (e.g., lifting, diving, or donuting horizontally), allowing the hitter to see the error. (’564 Patent, col. 10:8-25).
• Technical Importance: This method transforms the physical characteristics of the ball into a real-time, visual feedback system for diagnosing and correcting a batter's swing mechanics. (’564 Patent, col. 8:35-39).

Key Claims at a Glance

• The complaint asserts infringement of at least Independent Claim 1. (Compl. ¶23).
• Essential elements of Independent Claim 1 include the steps of:
  • using a weighted ball with the specific structural features of the '542 Patent's claims (resilient shell, filler, plug, sealant, etc.);
  • a hitter hitting the ball with a bat;
  • the ball "wrapping around said bat" and absorbing energy;
  • the ball traveling a limited distance;
  • the ball providing "instant optical feedback" through its travel position and deformation;
  • the ball traveling in a substantially horizontal plane when hit correctly; and
  • the ball "donuting" vertically or horizontally, or lifting/diving, when hit incorrectly in various ways. (’564 Patent, col. 9:8-col. 10:25).

III. The Accused Instrumentality

Product Identification

• The accused product is the "PurePower Weighted Hitting & Pitching Training Ball" sold by Rukket. (Compl. ¶11). For the ’564 Patent, the accused instrumentality also includes "Rukket's instructions for using the same." (Compl. ¶11).

Functionality and Market Context

• The complaint alleges the Accused Product is a weighted ball sold for use in training athletes in sports that involve striking a ball with a bat or club. (Compl. ¶9). The packaging for the Accused Product, a photograph of which is included in the complaint, describes it as "PurePower Weighted Training Balls" and lists benefits such as "Improves Power, Accuracy, and Timing" and "Builds a powerful swing." (Compl. p. 6). This image shows the product packaging, which includes marketing claims related to improving a batter's swing. (Compl. p. 6). The complaint alleges the product's use for training, as instructed by Rukket, performs the patented method. (Compl. ¶11, ¶23).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for its infringement allegations but does not attach them. (Compl. ¶14, ¶23). The analysis below is based on the narrative allegations.

'542 Patent Infringement Allegations

The complaint alleges that the Accused Product infringes at least independent Claim 1 of the ’542 Patent. (Compl. ¶14). The infringement theory appears to be that the Accused Product is a weighted training ball that embodies each of the structural elements recited in the claim, including a resilient shell, a weighted filler, and a specific sealed filler hole configuration. (Compl. ¶11, ¶14).

• Identified Points of Contention:
  • Scope Questions: A potential dispute may arise over the term "nonburstable." A court would need to determine if this requires absolute indestructibility or a lesser standard of durability against repeated, intended use.
  • Technical Questions: A primary factual question is whether the accused ball's construction includes both a distinct "hole plug" and a separate "hole plug sealant" that "forms a portion of said outer cover," as claimed. The evidence required to prove this specific two-part sealing structure, as opposed to an integrated plug or another sealing method, will be central to the direct infringement analysis.

'564 Patent Infringement Allegations

The complaint alleges that the use of the Accused Product, in line with Rukket's instructions, infringes at least independent Claim 1 of the ’564 Patent. (Compl. ¶23). The theory is that using the ball for batting practice inherently performs the claimed method steps, including the specific visual feedback mechanism where the ball deforms into a "donut" shape upon an incorrect hit. (Compl. ¶11, ¶23).

• Identified Points of Contention:
  • Scope Questions: The construction of "donuting" will be critical. The question is whether this term is limited to the specific "flatten out and look like a donut" deformation described in the specification or if it could be interpreted more broadly to cover any out-of-round compression.
  • Technical Questions: A key evidentiary hurdle will be demonstrating that the accused ball performs the precise cause-and-effect relationship claimed—for example, that a hit that is "too low" specifically causes the ball to "lift up" and that an "inside out" hit causes it to "donut in a horizontal position." Proving these specific, diagnostic deformations occur as claimed will likely require extensive testing and expert testimony.

V. Key Claim Terms for Construction

'542 Patent

• The Term: "hole plug sealant"
• Context and Importance: This term, in conjunction with "hole plug," defines a specific two-part sealing architecture that appears to be a point of novelty. The infringement analysis for the ’542 Patent may turn on whether the accused product's sealing mechanism meets the definition of this two-part structure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify the sealant's composition, which may support an argument that it covers any material applied to seal the plug.
  • Evidence for a Narrower Interpretation: The specification describes the sealant as a "solvent based PVC, non-phthalate material" that is "poured into and over the filler hole" and ultimately "forms a portion of said outer cover of said ball." (’542 Patent, col. 7:55-65, col. 9:24-26). This language suggests a specific material, application process, and final state that is integrated with the ball's exterior.

'564 Patent

• The Term: "donuting"
• Context and Importance: This term is the lynchpin of the claimed "instant optical feedback" method. The outcome of the infringement analysis for the ’564 Patent will heavily depend on whether the accused ball's deformation upon being hit can be characterized as "donuting."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the term simply means to become out-of-round, as Claim 1 links it to an "out of round deformation." (’564 Patent, col. 10:16-18).
  • Evidence for a Narrower Interpretation: The specification provides a more vivid description, stating the ball will "flatten out and look like a donut due to the filler material." (’564 Patent, col. 2:38-40). Further, Claim 1 distinguishes between "donuting substantially vertical" and "donuting in a horizontal position," suggesting it is a specific and observable type of deformation, not just any compression. (’564 Patent, col. 10:16-25).

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement of infringement for both patents. The allegations are based on Defendant's advertising, provision of instructional materials, and support services. (Compl. ¶17, ¶26). As a specific example, the complaint points to an offer on the accused product's packaging that gives customers a discount for sharing "pics and videos" of their use of the product. (Compl. ¶17, p. 6).
• Willful Infringement: The complaint does not use the word "willful" but does request "enhanced damages pursuant to 35 U.S.C. § 284." (Compl. p. 10, ¶g). The allegations of knowledge are based on the filing of the complaint itself, which can only support a claim for post-suit willfulness. (Compl. ¶14, ¶23). No facts are alleged to support pre-suit knowledge of the patents.

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

1. A central issue will be one of structural correspondence: does the accused ball’s filler hole sealing mechanism meet the specific limitations of a distinct "hole plug" and a separate "hole plug sealant" that forms a portion of the outer cover, as required by the '542 Patent, or does it utilize a different, non-infringing design?

2. A key evidentiary question will be one of functional performance: can Plaintiff prove that the accused ball, when used, exhibits the precise, diagnostic deformations—such as "donuting substantially vertical" versus "donuting in a horizontal position"—in response to the specific types of incorrect hits recited in the '564 Patent's method claim? The case may turn on whether this specific cause-and-effect relationship, which defines the "instant optical feedback," can be established.