DCT
2:24-cv-02135
Divot Board LLC v. Golf Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Divot Board, LLC (Delaware)
- Defendant: Golf Technologies, LLC d/b/a Birdie Bath (Kansas)
- Plaintiff’s Counsel: Stevens & Brand, L.L.P.
- Case Identification: 2:24-cv-02135, D. Kan., 04/09/2024
- Venue Allegations: Venue is asserted based on Defendant's residence and its regular and established place of business within the District of Kansas.
- Core Dispute: Plaintiff alleges that Defendant’s "Birdie Practice Mat Pro" golf training aid infringes a patent related to a practice board that provides visual feedback of a golf club's swing path.
- Technical Context: The technology concerns golf training aids, specifically mats with surfaces that change appearance upon contact to show a golfer the path and impact point of their swing.
- Key Procedural History: The complaint alleges that on March 6, 2024, Plaintiff sent a notice letter with a copy of the patent-in-suit to Defendant, and that Defendant, through counsel, responded on March 8, 2024, but refused to cease the allegedly infringing activity. This pre-suit exchange is cited to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-19 | Priority Date for U.S. Patent No. 10,639,539 |
| 2020-05-05 | U.S. Patent No. 10,639,539 Issues |
| 2024-03-06 | Plaintiff sends notice of infringement letter to Defendant |
| 2024-04-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,639,539 - “GOLF PRACTICE BOARD FOR IMPROVING GOLF SWING”
- Patent Identification: U.S. Patent No. 10,639,539, issued May 5, 2020.
The Invention Explained
- Problem Addressed: The patent seeks to improve upon prior art golf training mats. It notes that some existing devices, like those using artificial grass, make it difficult to quickly and easily see the club's path, while other more complex devices are "costly to produce" (’539 Patent, col. 1:26-39). The stated need is for a practice board that "clearly displays the golf club head's impact point and club head path" using a "simplified structural design" (’539 Patent, col. 1:40-43).
- The Patented Solution: The invention is a golf practice board comprising a mat held in a frame. The mat's surface is covered with a plurality of "multi-colored discs" that are pivotably attached (’539 Patent, col. 2:51-54). When a golf club passes over the mat, the discs flip over, revealing a differently colored reverse side. This action creates a visible trace—a "divot pattern"—that shows the user the exact path of their swing (’539 Patent, col. 3:7-14). The complaint includes images of Plaintiff's "Divot Board" product, illustrating its green surface before a swing and the white path left after a club passes over it (Compl. p. 2).
- Technical Importance: This design offers golfers immediate, clear, and resettable visual feedback on their swing mechanics through a simple and durable mechanism (’539 Patent, col. 3:14-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 5 (Compl. ¶35).
- Essential elements of independent claim 1 include:
- a mat;
- a plurality of multi-colored discs pivotably attached to the mat's top surface that pivot upon contact to show a reverse surface;
- a frame securing the mat; and
- a plurality of anchors attached to the frame's bottom surface.
- The claim further requires that the obverse and reverse surfaces of the discs have different colors and that the anchors "comprise a plurality of mounting spikes."
III. The Accused Instrumentality
Product Identification
The "Birdie Practice Mat Pro" (the "Accused Product") (Compl. ¶12).
Functionality and Market Context
- The Accused Product is a golf swing training board that allegedly "incorporates a golf practice board containing a mat set within a frame with a divot tracking system that includes multi-colored discs pivotally attached to the mat" (Compl. ¶36). These discs are alleged to pivot when contacted by a golf club to show a reverse surface, thereby tracing the swing path (Compl. ¶36). The complaint provides a top-down image of the Accused Product, showing a green mat with white markings inside a black frame (Compl. p. 4).
- The complaint alleges the Accused Product also includes a "slip resistant contoured bottom surface" to secure the board during use (Compl. ¶36). It is marketed and sold online, including on Amazon and the Defendant's website, in "direct competition with Divot Board" (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Product directly infringes claim 1 of the ’539 Patent under the doctrine of equivalents and literally infringes claims 2, 3, and 5 (Compl. ¶¶16, 19, 22, 25). The central dispute for claim 1 appears to concern the "mounting spikes" limitation.
’539 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mat | The Accused Product is a practice board containing a mat. | ¶36 | col. 2:50-51 |
| a plurality of multi-colored discs pivotably attached to a top surface of the mat, such that when an object passes over..., the plurality of multi-colored discs pivot from a first orientation... to a second orientation... | The Accused Product includes a "divot tracking system that includes multi-colored discs pivotally attached to the mat that pivot from a first position... to a second position." | ¶36 | col. 2:62-67 |
| a frame with a bottom surface, wherein the mat is secured within the frame | The Accused Product's mat is "set within a frame." | ¶36 | col. 2:50-51 |
| a plurality of anchors attached to the bottom surface of the frame... wherein... the plurality of anchors comprise a plurality of mounting spikes | The Accused Product has "a plurality of raised horizontal rows and columns projecting from the bottom surface" alleged to be equivalent to the claimed mounting spikes. | ¶15 | col. 3:40-44 |
| wherein: the obverse surface of the multi-colored discs has a different color than the reverse surface of the multi-colored discs | The discs on the Accused Product pivot to show a "reverse surface when contacted by the golf club." | ¶36 | col. 2:52-54 |
Identified Points of Contention
- Equivalency Question: The primary point of contention is whether the Accused Product's "plurality of raised horizontal rows and columns" on its bottom surface is equivalent to the claimed "plurality of mounting spikes." The complaint explicitly bases its infringement allegation for this element on the doctrine of equivalents, arguing the accused feature functions "in the same way to achieve the same result" (Compl. ¶15). The case will likely involve a factual analysis of whether these two structures are interchangeable for the purpose of securing the mat.
- Technical Question: A potential question for the court is how the "raised horizontal rows and columns" actually function to secure the mat compared to the function of "spikes." The analysis may explore differences in how each structure interacts with various surfaces like grass or carpet, which could impact the "same way" prong of the equivalents test.
V. Key Claim Terms for Construction
- The Term: "a plurality of mounting spikes"
- Context and Importance: This term is critical because the Plaintiff has conceded a lack of literal infringement for this element, resting its case for claim 1 on the doctrine of equivalents (Compl. ¶¶15-16). The definition of "spikes" will therefore frame the entire equivalents analysis. Practitioners may focus on this term because the Defendant's non-infringement defense will likely center on arguing that its "rows and columns" are technically and legally distinct from "spikes."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the specific anchor type is not essential to the invention, stating, "other suitable anchors, such as golf cleats, may be attached... In fact, any anchors suitable for anchoring the board to a carpet, grass, or other ground surface may be used" (’539 Patent, col. 3:45-49). A party could argue this language supports a broader functional definition of the anchoring element, not one limited to a specific shape.
- Evidence for a Narrower Interpretation: The claim language itself explicitly uses the word "spikes." The only embodiment of the anchors depicted in the patent's figures shows pointed, cone-like structures (e.g., ’539 Patent, FIG. 5, FIG. 6). A party could argue that by choosing the specific term "spikes" in the claim, when broader terms like "anchors" were available and used in the specification, the patentee intentionally narrowed the claim scope to exclude other shapes like rows or columns.
VI. Other Allegations
Indirect Infringement
The prayer for relief requests an injunction against inducing infringement, but the factual allegations in the body of the complaint focus exclusively on direct infringement (Compl. p. 8, ¶B).
Willful Infringement
The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It alleges on "information and belief" that Defendant was aware of the ’539 Patent even "prior to the release of the Accused Product" (Compl. ¶26). It further alleges that Defendant gained explicit knowledge from a notice letter sent on March 6, 2024, and that its continued sales thereafter constitute "reckless disregard of Divot Board's patent rights" (Compl. ¶¶30, 39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of infringement by equivalents: Can the "raised horizontal rows and columns" on the accused mat's underside be proven to perform substantially the same function (securing the board), in substantially the same way, to achieve substantially the same result as the claimed "plurality of mounting spikes"? The outcome may depend heavily on the factual evidence presented regarding the mechanics of each structure.
- A second key question will be one of willfulness and damages: Can the Plaintiff substantiate its claim of pre-suit knowledge? The evidence surrounding the Defendant's awareness of the ’539 patent, particularly before its product launch, and its conduct after receiving the March 2024 notice letter, will be critical in determining whether any infringement was willful, potentially justifying enhanced damages.