Apalone Inc v. Schutt Sports LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Apalone, Inc. (Illinois)
  • Defendant: Schutt Sports, LLC (Delaware); Certor Sports, LLC (Delaware)
  • Plaintiff’s Counsel: NIRO MCANDREWS, LLP
• Case Identification: 3:21-cv-03186, C.D. Ill., 08/25/2021
• Venue Allegations: Venue is based on Defendants having regular and established places of business within the Central District of Illinois, including two large manufacturing and business facilities operated by Schutt in Litchfield, Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ Schutt F7 and Vicis ZERO2 lines of football helmets infringe two patents related to external helmet cushioning and ventilated dual-shell systems.
• Technical Context: The technology addresses helmet safety and comfort in high-impact sports, focusing on novel shell structures to dissipate impact forces and manage heat stress for players.
• Key Procedural History: The complaint notes that the asserted '817 Patent was previously litigated against Defendants' predecessor, Kranos Corporation. During that litigation, claim 27 of the '817 Patent survived an inter partes review (IPR) challenge at the Patent Trial and Appeal Board (PTAB), which exercised its discretion to deny institution. That prior case was stayed following Kranos's bankruptcy.

Case Timeline

Date	Event
2013-03-11	U.S. Patent 8,938,817 Priority Date
2015-01-27	U.S. Patent 8,938,817 Issue Date
2016-11-22	U.S. Patent 10,617,167 Priority Date
2016-12-01	Alleged start of willful infringement for '817 Patent (approx.)
2019-02-01	Prior litigation filed against Defendants' predecessor (Kranos)
2020-04-14	U.S. Patent 10,617,167 Issue Date
2020-07-16	PTAB denies institution of IPR on '817 Patent
2020-12-18	Kranos files for bankruptcy
2021-02-11	Plaintiff sends notice letter to Defendants regarding '817 Patent
2021-08-25	Complaint Filing Date

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

U.S. Patent No. 8,938,817 - "External Helmet Cushioning System" (Issued Jan. 27, 2015)

The Invention Explained

• Problem Addressed: The patent describes a need for a helmet cushioning system that can decrease the effects of regular impacts and concussions in sports, noting that existing helmet designs are fundamentally similar and a more economical, retrofittable solution is needed to improve safety across all levels of play (ʼ817 Patent, col. 1:21-51).
• The Patented Solution: The invention proposes an external cushioning system comprising a second, outer shell placed over a helmet's existing (first) shell, with an absorptive layer situated between the two shells ('817 Patent, Abstract). This creates a sacrificial or cushioning outer structure designed to absorb and distribute impact forces before they reach the primary helmet and the wearer's head, as illustrated in the cross-section of Figure 5 ('817 Patent, Fig. 5; col. 2:1-4).
• Technical Importance: The approach sought to augment, rather than replace, existing helmets, offering a potentially cost-effective path to upgrade safety equipment for a wide range of participants ('817 Patent, col. 1:46-51).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 27 (Compl. ¶33).
• Essential elements of claim 27 include:
  • An external cushioning system for a helmet comprising: a first shell having an outer surface;
  • A second shell outward of said outer surface of said first shell;
  • An absorptive layer disposed between the outer surface of the first shell and the second shell;
  • An attachment mechanism to couple the second shell to the first shell;
  • Wherein the second shell is outward of the first shell by an offset distance of less than around one-half inch.

U.S. Patent No. 10,617,167 - "Ventilated Modular Dual Shelled Helmet System" (Issued Apr. 14, 2020)

The Invention Explained

• Problem Addressed: The patent background identifies the risk of heat stroke and heat illness for athletes wearing protective helmets, particularly in football, because helmets trap heat and impede natural cooling through sweat evaporation ('167 Patent, col. 1:26-44).
• The Patented Solution: The invention is a dual-shelled helmet where an outer shell is spaced radially outward from an inner shell, creating a "climatic zone" between them ('167 Patent, Abstract). Both the inner and outer shells feature vents that allow ambient air to flow through this climatic zone, promoting convective cooling and enhancing evaporation from the wearer's head ('167 Patent, col. 4:15-29). A cushion assembly is also positioned within this zone.
• Technical Importance: This design aimed to create a microclimate inside the helmet that actively facilitates heat dissipation, directly addressing the physiological danger of hyperthermia during strenuous activity ('167 Patent, col. 1:48-54).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 7 (Compl. ¶42).
• Essential elements of claim 7 include:
  • A modular helmet comprising: an inner shell adapted to be positioned onto a user's head, the inner shell includes a plurality of inner vents;
  • An outer shell coupled to the inner shell, spaced radially to define a climatic zone between them, with the outer shell including a plurality of outer vents for air flow; and
  • A cushion assembly positioned within the climatic zone and coupled to the outer shell.

III. The Accused Instrumentality

Product Identification

• The complaint accuses two product lines:
  1. The "Schutt F7 line of football helmets," which are marketed with "3DM Tektonic Plate Technology" and are accused of infringing the '817 Patent (Compl. ¶31).
  2. The "Vicis ZERO2 line of football helmets," including the ZERO2 Matrix and other models, which are accused of infringing the '167 Patent (Compl. ¶41).

Functionality and Market Context

• The complaint alleges the Schutt F7 helmets feature independently moving "tectonic plates" mounted on top of the main helmet shell with an absorptive layer in between, a design feature that Apalone maps to its patented external cushioning system (Compl. ¶33).
• The Vicis ZERO2 helmets are alleged to have a deformable outer shell spaced apart from a reinforced inner shell. The complaint alleges this space, which contains cushion pods, constitutes the claimed "climatic zone" and that vents in both shells allow for airflow as claimed in the '167 Patent (Compl. ¶42). The complaint positions both product lines as technologically advanced helmets sold for use in high-impact sports (Compl. ¶3, ¶6).

IV. Analysis of Infringement Allegations

’817 Patent Infringement Allegations

Claim Element (from Independent Claim 27)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a first shell having an outer surface	The main, inner helmet shell [A] of the Schutt F7 helmet.	¶33, p. 10	col. 12:41-42
a second shell outward of said outer surface of said first shell	The "Tectonic Plates" [B] located on the exterior of the Schutt F7 helmet.	¶33, p. 10	col. 12:43-44
an absorptive layer disposed between the outer surface of the first shell and the second shell	The layer [C] located underneath the Tectonic Plates and on top of the main shell.	¶33, p. 10	col. 12:45-47
an attachment mechanism to couple the second shell to the first shell	Screws [D] that secure the Tectonic Plates to the main shell.	¶33, p. 10	col. 12:48-49
wherein the second shell outward of said first shell by an offset distance... less than... one-half inch	The complaint alleges a separation of "approximately a quarter of an inch."	¶33, p. 11	col. 12:50-52

The complaint provides an annotated photograph of a Schutt F7 helmet identifying the alleged first shell [A], second shell [B], absorptive layer [C], and attachment mechanisms [D] (Compl. p. 10). Another photograph with a tape measure purports to show the offset distance between the shells (Compl. p. 11).

’167 Patent Infringement Allegations

Claim Element (from Independent Claim 7)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an inner shell adapted to be positioned onto a user's head, the inner shell includes a plurality of inner vents	The Vicis ZERO2 helmet's reinforced inner shell [A], which is alleged to have inner vents [B].	¶42, p. 14	col. 14:63-65
an outer shell coupled to the inner shell, the outer shell spaced a distance radially from the inner shell to define a climatic zone..., the outer shell includes a plurality of outer vents...	The ZERO2's deformable outer shell [C] is spaced from the inner shell, creating a gap, or "climatic zone" [D], and includes outer vents [E].	¶42, p. 14-15	col. 14:66 - 15:5
a cushion assembly positioned within the climatic zone..., the cushion assembly including a plurality of cushions that are coupled to the outer shell	The pod-like cushion assembly [F], containing multiple cushions [G], is located within the "climatic zone" and is allegedly coupled to the outer shell.	¶42, p. 14	col. 15:6-9

An annotated internal view of the Vicis ZERO2 helmet is provided, labeling the alleged inner and outer shells, vents, climatic zone, and cushion assembly (Compl. p. 14).

• Identified Points of Contention:
  • Scope Questions: A potential dispute regarding the '817 Patent is whether the term "second shell," which the patent's figures depict as a single, continuous layer, can be construed to read on the accused F7 helmet's set of discrete, independently moving "tectonic plates." For the '167 Patent, a question may arise as to whether the primary function of the accused inter-shell space aligns with the patent's "climatic zone" for cooling, or if its function is primarily for impact management, a distinction that could be material to infringement.
  • Technical Questions: For the '817 Patent, discovery may focus on whether the accused "absorptive layer" performs the cushioning function described in the patent, or a different function such as providing a low-friction surface for the plates. For the '167 Patent, the method and location of the coupling of the "cushion assembly" (i.e., to the inner shell, outer shell, or both) will be a key factual question.

V. Key Claim Terms for Construction

'817 Patent: "second shell"

• Context and Importance: The infringement allegation against the Schutt F7 helmet hinges on construing its multiple "Tectonic Plates" as a "second shell." Practitioners may focus on this term because the accused structure is physically discontinuous, whereas the patent figures show a unitary shell.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not explicitly require the "second shell" to be a single, unitary piece. An argument could be made that any external structure or collection of structures that covers the first shell and works with an absorptive layer to provide cushioning falls within the term's scope.
  • Evidence for a Narrower Interpretation: The specification consistently refers to "the shell 12" and depicts it in figures as a singular, continuous component covering the helmet ('817 Patent, Fig. 1, 2, 5; col. 3:10-15). This consistent disclosure may support an interpretation that limits the term to a unitary structure.

'167 Patent: "climatic zone"

• Context and Importance: The definition of this term is central to the '167 Patent's novelty, which is based on ventilation and cooling. The infringement case depends on showing that the space between the shells of the Vicis ZERO2 helmet functions as this specific "climatic zone."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Claim 7 structurally defines the zone as the space "between the inner shell and the outer shell" created by a radial spacing ('167 Patent, col. 14:66-col. 15:3). The complaint alleges the accused product has this physical structure (Compl. ¶42).
  • Evidence for a Narrower Interpretation: The specification repeatedly imbues the "climatic zone" with a specific function: to be in "flow communication" with vents to allow air movement and "enhance evaporation" for cooling ('167 Patent, col. 4:17-29; col. 5:14-17). An argument could be made that a mere space between shells is not a "climatic zone" unless its design and function are primarily for thermal regulation, as taught by the patent.

VI. Other Allegations

• Indirect Infringement: For the '817 Patent, the complaint alleges induced infringement by Defendants instructing and encouraging the use of the F7 Accused Products, and contributory infringement by providing a material part of the invention not suitable for substantial non-infringing use (Compl. ¶35-36). The complaint does not make specific allegations of indirect infringement for the '167 Patent.
• Willful Infringement: The complaint alleges willful infringement of the '817 Patent. It bases this on alleged pre-suit knowledge stemming from licensing discussions between Plaintiff and Defendants' predecessor (Kranos) beginning around December 2016 (Compl. ¶28), and post-suit knowledge from a formal notice letter sent to Defendants on February 11, 2021, which included the patent, claim charts, and a favorable PTAB decision (Compl. ¶26).

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

1. A core issue will be one of definitional scope: can the term "second shell" from the '817 Patent, depicted in the specification as a unitary component, be construed to cover the set of discrete, independently moving "tectonic plates" on the accused Schutt F7 helmet?
2. A key evidentiary question for the '167 Patent will be one of technical purpose: does the space between the shells in the accused Vicis ZERO2 helmet function primarily as a "climatic zone" for ventilation as taught by the patent, or is its main purpose for impact absorption via shell deformation, with any cooling effect being merely an incidental, non-infringing benefit?
3. Given the detailed allegations of prior litigation, a denied IPR, and licensing discussions related to the '817 Patent, a critical question for trial will be whether Defendants’ alleged conduct was objectively reckless, which could support a finding of willful infringement and lead to enhanced damages.