DCT
2:18-cv-02493
Markwort Sporting Goods Co Inc v. 13 31 Sport LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Markwort Sporting Goods Company, Inc. (Missouri)
- Defendant: 13-31 Sport LLC (Kansas)
- Plaintiff’s Counsel: Sandberg Phoenix & von Gontard P.C.
- Case Identification: 2:18-cv-02493, D. Kan., 09/14/2018
- Venue Allegations: Venue is asserted based on Defendant having its principal place of business within the District of Kansas, from which it directs its patent licensing and enforcement activities.
- Core Dispute: Plaintiff Markwort seeks a declaratory judgment that its "Game Face" protective masks do not infringe Defendant 13-31 Sport's patents related to sports face guards, and/or that those patents are invalid.
- Technical Context: The technology at issue involves protective face guards for sports like baseball and softball, which are designed to prevent impact injuries without obstructing the player's field of vision.
- Key Procedural History: The complaint states this declaratory judgment action was precipitated by Defendant filing patent infringement lawsuits against retailers Dick's Sporting Goods and Walmart, in which Defendant alleged that the sale of Plaintiff's "Game Face" masks constituted infringement of the patents-in-suit. This history establishes the "justiciable controversy" required for the court to hear the case.
Case Timeline
| Date | Event |
|---|---|
| 2002-01-07 | Priority Date for ’139 and ’234 Patents |
| 2002-12-31 | U.S. Patent No. 6,499,139 Issued |
| 2003-07-29 | U.S. Patent No. 6,598,234 Issued |
| 2018-03-07 | Defendant files suit against Dick's Sporting Goods |
| 2018-03-08 | Defendant files suit against Walmart |
| 2018-09-14 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,499,139 - "Face Guard," issued Dec. 31, 2002
- The Invention Explained:
- Problem Addressed: The patent describes a need for facial protection for baseball and softball players, noting that prior art masks were often either too bulky and visually obstructive (like catcher's masks) or were uncomfortable, unstable during use, and failed to adequately absorb or transfer impact forces away from the face (like prior infielder masks) (Compl. Ex. 5, ’139 Patent, col. 1:13-46).
- The Patented Solution: The invention proposes a lightweight, open framework of metal bars configured to prevent a ball from striking the face while remaining outside the player's "generally horizontal line of sight." This framework is spaced from the face by compressible padding at the brow and chin, which contacts the player at bone-supported locations to manage impact forces. A multi-part strap assembly is used to position the guard and secure it to the player's head (’139 Patent, Abstract; col. 2:1-17; col. 5:25-33).
- Technical Importance: The design sought to provide effective facial protection that was comfortable and minimally intrusive to a player's vision, thereby encouraging its use by players like infielders who found previous designs impractical (’139 Patent, col. 1:41-46).
- Key Claims at a Glance:
- The complaint seeks a declaratory judgment of non-infringement with respect to independent claims 1, 7, and 10 (Compl. ¶¶31-33, 36-38).
- Independent Claim 1 recites a face guard with: an open framework with crossbars and risers positioned outside the player's horizontal line of sight; a brow pad and a chin pad; the risers being "free of said padding"; a "chin bar extending below the chin"; a "chin guard"; and a strap system including a "stretchable positioning strap and first and second adjustable securing straps."
- Independent Claim 7 recites a face guard with a similar framework, but requires the "chin pad being integrally formed with said chin guard" and a strap system including a "positioning strap," a "securing strap," and an "additional adjustable securing strap."
- Independent Claim 10 recites a face guard with a strap system including a "first securing strap" and a "second securing strap" configured to prevent movement in two generally perpendicular directions.
U.S. Patent No. 6,598,234 - "Face Guard," issued July 29, 2003
- The Invention Explained:
- Problem Addressed: As a continuation of the application for the ’139 Patent, the ’234 Patent addresses the same technical problem of providing effective, non-obtrusive facial protection for ball players (’234 Patent, col. 1:21-51).
- The Patented Solution: The patented solution is also a lightweight open framework. This patent further specifies that the framework defines an "open section" adjacent to the player's horizontal line of sight that is "devoid of risers," explicitly teaching a construction that keeps the central field of view unobstructed by vertical frame members (’234 Patent, Abstract; col. 7:17-21).
- Technical Importance: This patent refines the concept of an unobstructed view by claiming a framework structure that is specifically "devoid of risers" in the player's primary line of sight.
- Key Claims at a Glance:
- The complaint seeks a declaratory judgment of non-infringement with respect to independent claims 1, 11, and 13 (Compl. ¶¶45-47).
- Independent Claim 1 (apparatus claim) recites a face guard with an open framework defining an "open section...devoid of risers"; risers that are "free of said padding"; and a "securing strap being coupled relative to the chin pad" and configured to "snugly enclose the crown of the player's head."
- Independent Claim 11 (apparatus claim) is directed to a face guard with a specific strap configuration and padding.
- Independent Claim 13 (method claim) recites a method of protecting a face by positioning the framework, spacing it with padding, and "securing the framework to the player's face."
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the "Game Face Medium" and "Game Face Large" protective fielder's masks, sold by Plaintiff Markwort (Compl. ¶17).
- Functionality and Market Context: The "Game Face masks" are protective face guards for use in sports, consisting of a wireframe cage, padding for the forehead and chin, and an adjustable strapping system (Compl. ¶16). The complaint provides images of the accused masks, showing a wire cage structure with forehead and chin padding, along with an adjustable strapping system (Compl. p. 4, ¶16). The complaint notes that these products are sold through various wholesalers and major retailers, and that Defendant has previously filed infringement suits against Dick's Sporting Goods and Walmart based on their sales of the masks (Compl. ¶¶15, 18, 19).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, the "allegations" are Plaintiff Markwort's assertions of non-infringement, denying that its products meet the claim limitations that Defendant 13-31 Sport presumably asserted in prior litigation.
’139 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of risers interconnecting the crossbars ... said risers being free of said padding | The complaint alleges the accused masks do not have this feature. | ¶31, ¶36 | col. 5:32-35 |
| a chin bar extending below the chin of the player when the guard is donned | The complaint alleges the accused masks do not include a chin bar with this configuration. | ¶31, ¶36 | col. 4:26-29 |
| a stretchable positioning strap and first and second adjustable securing straps | The complaint alleges the accused masks do not include this specific three-strap arrangement. | ¶31, ¶36 | col. 6:42-67 |
’234 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of risers interconnecting the crossbars ... said risers being free of padding | The complaint alleges the accused masks do not have risers that are free of padding. | ¶45 | col. 5:35-38 |
| a securing strap being coupled relative to the chin pad | The complaint alleges the accused masks do not include a securing strap coupled in this manner. | ¶45 | col. 7:31-39 |
| [From Claim 13] securing the framework to the player's face... using the Game Face Mask so that the chin strap is coupled snugly around the crown of the player's head | The complaint alleges that neither Markwort nor its customers perform this step, stating the mask does not include the recited "chin strap" nor is it connected around the crown of the head. This visual from the complaint shows the strapping system on the accused "Game Face Medium" mask. (Compl. p. 4, ¶16) | ¶47 | col. 8:1-10 |
- Identified Points of Contention:
- Structural Questions: The core of the non-infringement case rests on alleged structural differences. The dispute raises questions as to whether the accused masks' wireframe and strap systems contain the specific elements recited in the claims, such as a distinct "chin bar extending below the chin," completely unpadded "risers," and the exact number and type of straps claimed. (Compl. ¶¶31, 45).
- Functional/Method Questions: For method claim 13 of the ’234 Patent, the dispute raises a factual question about user behavior: does the design of the Game Face mask lead a user to perform the claimed step of securing a "chin strap snugly around the crown of the player's head"? Markwort alleges it does not. (Compl. ¶47).
V. Key Claim Terms for Construction
The Term: "risers being free of said padding" (’139 Claim 1; ’234 Claim 1)
- Context and Importance: Markwort repeatedly asserts that its products do not meet this limitation, making its construction central to the infringement analysis (Compl. ¶¶31, 36, 45). Practitioners may focus on this term because its interpretation will determine whether any coating or material on the risers of the accused product falls within the claim scope.
- Evidence for a Broader Interpretation: A patentee could argue "free of said padding" refers specifically to the "compressible padding" recited earlier in the claim, potentially allowing for other non-compressible materials (e.g., a vinyl coating) on the risers.
- Evidence for a Narrower Interpretation: The specification states that in the preferred embodiment, "the illustrated risers 30,32 do not have any compressible padding 14 coupled thereto" (’139 Patent, col. 5:32-35), which may support an interpretation that the risers must be bare.
The Term: "a chin bar extending below the chin" (’139 Claim 1)
- Context and Importance: This is another structural element Markwort claims is absent from its products (Compl. ¶¶31, 36). The case may turn on whether the lower portion of the accused mask's framework constitutes this specific element.
- Evidence for a Broader Interpretation: A patentee might argue that any structural part of the framework that is positioned lower than the bottom of the player's chin meets this limitation.
- Evidence for a Narrower Interpretation: The patent figures depict the chin bar (34) as a distinct, arcuate component positioned clearly underneath the chin (C) (’139 Patent, Fig. 1). The description specifies it is "configured to extend around and below the chin" (’139 Patent, col. 4:26-29), suggesting a specific shape and position that a court could find limiting.
The Term: "securing strap being coupled relative to the chin pad" (’234 Claim 1)
- Context and Importance: Markwort denies this feature is present in its masks, putting the point of strap attachment at issue (Compl. ¶45). The interpretation of "relative to" could be dispositive.
- Evidence for a Broader Interpretation: A patentee may argue that "relative to" is a broad term of proximity and does not require direct attachment, meaning a strap coupled to the framework near the chin pad would suffice.
- Evidence for a Narrower Interpretation: Markwort could point to the patent’s own figures, which show the straps coupled to side-mounted "strap couplings (36, 38)," not directly to or particularly near the chin pad (42), creating a potential inconsistency that could support a narrower construction limited to the embodiment shown or to a more direct coupling (’234 Patent, Fig. 1).
VI. Other Allegations
- Indirect Infringement: The complaint preemptively denies liability for indirect infringement of method claim 13 of the ’234 Patent. It alleges that because the accused masks lack the required structure, neither Markwort's customers nor any other users perform all the recited method steps (Compl. ¶¶47-48).
- Willful Infringement: The complaint does not allege willfulness. However, the factual background, which details prior infringement lawsuits filed by Defendant 13-31 Sport against retailers selling Markwort’s products, establishes Markwort’s pre-suit knowledge of the patents-in-suit. This fact could be used by Defendant to support a counterclaim for willful infringement (Compl. ¶¶18, 19, 23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of elemental presence: do the accused "Game Face" masks, as a matter of fact, incorporate the specific structural components required by the claims, such as a "chin bar extending below the chin," risers that are "free of padding," and the precise multi-strap arrangements recited? The outcome may depend on a direct comparison of the physical products to the claim language.
- The case will likely turn on claim construction: how will the court define the scope of key terms? The dispute will require defining whether "free of padding" means entirely bare metal or simply lacking the specific compressible padding, and whether "extending below the chin" and "coupled relative to the chin pad" require the specific configurations shown in the patent's drawings or permit broader structural variation.
- A key evidentiary question for the method claims will be one of user action: does the design of Markwort's product and its instructions lead customers to necessarily perform the claimed method of "securing" the mask with a "chin strap...snugly around the crown of the player's head," or is there a fundamental difference in the actual method of use?