DCT
1:24-cv-08649
Jacob v. Riddell Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: William A. Jacob (Missouri)
- Defendant: Riddell, Inc. (Illinois)
- Plaintiff’s Counsel: AVEK IP, LLC; DLM LAW LLC
- Case Identification: 1:24-cv-08649, N.D. Ill., 09/25/2024
- Venue Allegations: Venue is alleged to be proper as Defendant has its principal place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Speedflex® and Axiom® football helmets infringe a patent related to energy-dissipating helmet technology.
- Technical Context: The technology concerns protective helmets with distinct rigid and compliant zones, where the compliant zones are designed to deform upon impact to dissipate energy and reduce concussions.
- Key Procedural History: The complaint alleges that Plaintiff first disclosed his invention to Defendant in 2012 in an offer for an exclusive license. It further alleges that Plaintiff sent a cease-and-desist letter regarding the pending patent application in 2016, to which Defendant allegedly replied to resume communication "when you get a patent." These allegations form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-17 | Plaintiff files first provisional patent application (Compl. ¶17) |
| 2012-05-14 | Patent Priority Date (U.S. Provisional 61/646,596) |
| 2012-05-30 | Plaintiff allegedly discloses invention and application to Riddell (Compl. ¶19) |
| 2013-05-14 | Plaintiff files U.S. non-provisional application ('423 application) (Compl. ¶23) |
| 2014 | Riddell launches Speedflex® helmet line (Compl. ¶26) |
| 2016-06-28 | Plaintiff's counsel sends cease-and-desist letter to Riddell (Compl. ¶30) |
| 2021 | Riddell launches Axiom® helmet line (Compl. ¶32) |
| 2022-10-11 | U.S. Patent No. 11,464,271 issues |
| 2024-09-25 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,464,271 - "Energy Dissipating Helmet"
- Patent Identification: U.S. Patent No. 11,464,271, issued October 11, 2022 (the "’271 Patent").
The Invention Explained
- Problem Addressed: The patent background describes that conventional protective helmets, while effective against injuries like skull fractures, are less successful at preventing concussions and spinal injuries, which result from the transfer of impact energy to the user (’271 Patent, col. 1:35-49).
- The Patented Solution: The invention is a helmet with a shell composed of distinct regions: a rigid, "non-active" section that provides structural integrity and a separate "compliant energy dissipating section" designed to deform and "resistively collapse" when struck (’271 Patent, col. 11:30-49). This dual-structure approach allows the helmet to manage impact forces by actively dissipating energy through the deformation of the shell itself in specific, predefined areas, rather than relying solely on internal padding to absorb the shock (’271 Patent, col. 2:5-10).
- Technical Importance: The technology represents a design philosophy focused on managing impact energy at the shell level to deter concussions, rather than simply preventing direct trauma to the head (’271 Patent, col. 2:30-34).
Key Claims at a Glance
- The complaint asserts independent Claim 1, as well as dependent claims. (Compl. ¶¶ 43, 80).
- The essential elements of independent Claim 1 include:
- A protective football helmet with an outer shell made of hard plastic, including left, right, and dorsal portions.
- The shell defines a "rigid, non-active section" in the left and right side portions for structural integrity.
- The shell further defines "at least one compliant energy dissipating section" in the front and dorsal portions, which is configured to "resistively collapse" upon impact.
- The compliant and non-active sections are "cooperatively configured" so that the compliant section undergoes a "greater amount of deformation" than the non-active section upon impact.
- Interior padding.
- A facemask.
- The complaint reserves the right to assert additional claims, including claims 2-4, 6, 8-10, 12, and 15. (Compl. ¶¶ 43, 80).
III. The Accused Instrumentality
Product Identification
- The Riddell Speedflex® and Axiom® lines of football helmets. (Compl. ¶1).
Functionality and Market Context
- The complaint alleges that the accused helmets incorporate a "Flex system" which involves an "energy dissipating section" in the dorsal and front portions of the shell, and "non-active sections in the sides" (Compl. ¶27). This functionality is described as achieving "force attenuation or energy absorption through deformation of the shell itself" (Compl. ¶55).
- The complaint alleges the Axiom® helmet incorporates "multiple flexible panels" into its shell (Compl. ¶94). The complaint provides a photograph of two Axiom® helmets, highlighting the distinct texturing and separation of the flexible panels on the crown and back of the helmets (Compl. ¶94, picture (1)).
- The complaint alleges the Speedflex® helmet achieved "immediate commercial success" and became one of the most widely used helmets in the U.S., and that Defendant has sold over 100,000 Speedflex® helmets (Compl. ¶¶ 29, 34).
IV. Analysis of Infringement Allegations
'271 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A protective football helmet configured to fit upon the head of a user, to receive an anticipatory impact...and to dissipate a portion of the energy... | The Speedflex® helmets are alleged to be protective football helmets designed to fit on a user's head and dissipate impact energy. | ¶45 | col. 11:11-17 |
| an outer shell of hard plastic defining a continuous exterior surface...presenting a front elevation, and including a left side portion, a right side portion, and a dorsal portion... | The Speedflex® helmets are alleged to have an outer shell of hard plastic with left, right, and dorsal portions that define a continuous exterior surface. | ¶¶ 46-47 | col. 2:29-32 |
| said shell defining a rigid, non-active section in each of said left side portion and right side portion, wherein the non-active section is operable to provide structural integrity... | The Speedflex® shell is alleged to have a rigid, non-active section in its left and right side portions that provides structural integrity. | ¶48 | col. 8:30-33 |
| said shell further defining at least one compliant energy dissipating section disposed within the front elevation and the dorsal portion...configured to be deformed...wherein said at least one compliant energy dissipating section is configured to resistively collapse towards the head of the user... | The Speedflex® shell is alleged to have a compliant energy dissipating section (the "Flex system") in the front and dorsal portion that is configured to deform and "resistively collapse" upon impact. | ¶¶ 49, 51 | col. 8:34-40 |
| said at least one compliant energy dissipating section and non-active section being cooperatively configured, such that said at least one compliant energy dissipating section undergoes a greater amount of deformation than does the non-active section... | The compliant and non-active sections of the Speedflex® helmet are alleged to be configured such that the compliant section deforms more than the non-active section upon impact. | ¶52 | col. 11:50-56 |
| interior padding adapted to engage the head of the user...and configured to be compressed when the shell receives the anticipatory impact... | The Speedflex® helmets are alleged to contain interior padding that engages the user's head and compresses upon impact. | ¶54 | col. 8:55-57 |
| a facemask. | The Speedflex® helmets are alleged to comprise a facemask. | ¶54 | col. 8:50-51 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the meaning of "resistively collapse." The complaint alleges the mechanical flexing of the accused products' shells meets this limitation (Compl. ¶51). Defendant may argue that, in the context of the patent's detailed description, the term requires a specific type of material behavior, such as the phase transitions described for shape memory alloys, which may not be present in the accused products (’271 Patent, col. 5:27-44).
- Technical Questions: A key factual question will be whether the plaintiff's evidence can establish that the accused helmets meet the relative functional requirements of the claim. Specifically, what evidence demonstrates that the "compliant" section "undergoes a greater amount of deformation" than the "non-active" section, and that the "non-active section does not dissipate said portion of the energy" as claimed (’271 Patent, col. 11:50-63). The complaint relies on third-party media reports and Defendant's marketing materials to support these points (Compl. ¶¶ 56-58).
V. Key Claim Terms for Construction
The Term: "compliant energy dissipating section"
- Context and Importance: This term is the core of the asserted invention. Whether the flexible panels on the Riddell helmets fall within its scope will be a determinative issue for infringement. Practitioners may focus on this term because its construction will either limit the patent to specific advanced materials or allow it to cover broader mechanical solutions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language of Claim 1 itself describes the section functionally, as being "configured to be deformed" and to "resistively collapse," without specifying a particular material or mechanism (’271 Patent, col. 11:42-49). This language could support an interpretation covering any part of a shell intentionally designed to be flexible to absorb impact.
- Evidence for a Narrower Interpretation: The patent’s abstract and detailed description heavily feature "stress-activated active material," specifically shape memory alloys (SMA) and piezoelectric composites, as the inventive element (’271 Patent, Abstract; col. 4:35-58). A defendant could argue these embodiments define the true scope of the invention and that "compliant energy dissipating section" should be construed to require such active material properties, not just passive mechanical flexibility.
The Term: "cooperatively configured"
- Context and Importance: This term defines the relationship between the rigid and flexible parts of the shell. The required degree and nature of this "cooperation" is open to interpretation and is critical for determining whether a helmet with a flexible zone integrated into a unitary shell infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be interpreted to mean the sections are simply part of a single, functional design, where one part is intentionally rigid and another is intentionally flexible to work together to protect the user. The assertion of Claim 6, which recites a "unitary and non-modular structure," supports a reading where "cooperatively configured" does not require separate physical components (’271 Patent, col. 13:20-24).
- Evidence for a Narrower Interpretation: The specification describes and depicts embodiments where the sections are separate parts "inter-engaged by a plurality of retractable pins or dowels" (’271 Patent, Fig. 1; col. 8:58-62). A defendant might argue that "cooperatively configured" implies a more specific, interactive mechanical relationship, such as that shown between distinct, joined components, rather than different zones of a single molded piece.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing instructions and marketing materials that encourage athletes and teams to use the helmets in an infringing manner (Compl. ¶¶ 40, 69). It alleges contributory infringement by asserting the helmets are a material part of the invention and not a staple article of commerce suitable for substantial noninfringing use (Compl. ¶41).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the invention since 2012, stemming from alleged licensing discussions, and its knowledge of the pending patent application via a 2016 cease-and-desist letter (Compl. ¶¶ 30-31, 71). The complaint alleges that Defendant's decision to launch and continue selling the accused products constitutes deliberate disregard for Plaintiff's patent rights (Compl. ¶71).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: does the term "compliant energy dissipating section", which is described in the specification with reference to "active materials" like shape memory alloys, read on the mechanically flexible panels of the accused helmets? The outcome of this definitional dispute will likely determine the scope of the patent and the viability of the infringement case.
- A key evidentiary question will be one of comparative function: can the Plaintiff prove, with technical evidence beyond the marketing materials cited, that the accused helmets meet the claim’s relative performance requirements—specifically, that the flexible panel undergoes "a greater amount of deformation" than the rigid sections and that the rigid sections do "not dissipate said portion of the energy" under impact?
- A central question for damages will be willfulness: did Defendant's alleged knowledge of the invention and pending patent application as early as 2012 and 2016, followed by its continued sales after the patent issued, constitute the "egregious" conduct required for enhanced damages?