Maina Enterprises LLC v. Pro Performance Sports LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Maina Enterprises, LLC (Kentucky)
  • Defendant: Pro Performance Sports, LLC, dba SKLZ (California)
  • Plaintiff’s Counsel: Choken Welling LLP
• Case Identification: 3:19-cv-00397, W.D. Ky., 06/03/2019
• Venue Allegations: Plaintiff alleges venue is proper based on a forum selection clause in the parties' license agreement designating Jefferson County, Kentucky, as the exclusive jurisdiction for disputes.
• Core Dispute: Plaintiff alleges that Defendant breached a patent license agreement by failing to pay royalties on sales of soccer training products that allegedly practice Plaintiff's patented technology.
• Technical Context: The technology at issue relates to sports training equipment, specifically a soccer ball with a removable tether featuring a rotatable attachment mechanism designed to allow the ball to spin freely.
• Key Procedural History: The complaint states the parties entered into a license agreement in August 2014, which was amended in October 2015, granting Defendant an exclusive license to the patent-in-suit for its "Playmaker Kickback" and "Starkick Elite" products. The current dispute arises from Defendant's alleged failure to pay contractually required royalties under that agreement.

Case Timeline

Date	Event
2008-09-23	'006 Patent Priority Date
2011-05-03	'006 Patent Issue Date
2014-08	License Agreement entered into by parties
2015-10	Amendment #1 to License Agreement entered into
2019-06-03	Complaint Filing Date

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

U.S. Patent No. 7,935,006 - "Soccer Ball and Removable Spin Training Tether"

• Issued: May 3, 2011

The Invention Explained

• Problem Addressed: The patent identifies a need for a soccer training device that allows a player to practice kicking a tethered ball with a "controlled" spin. It notes that conventional tethering devices often have attachment means that interfere with the spinning motion imparted to the ball during a kick, making practice less realistic ('006 Patent, col. 2:1-10).
• The Patented Solution: The invention is an apparatus comprising a soccer ball, a tether, and a unique attachment system. The system features a "retaining flap" sewn onto the surface of the ball, creating a pocket. A "closable plastic keeper" connected to the tether's end is placed inside this pocket, where it can rotate freely. This allows the ball to spin without twisting or binding the tether, enabling a controlled return to the user ('006 Patent, Abstract; col. 4:8-43).
• Technical Importance: The design's focus on a rotatable, non-interfering attachment point sought to allow players to practice advanced kicking techniques, such as curving the ball, in a solo setting ('006 Patent, col. 2:1-10).

Key Claims at a Glance

• The complaint alleges that the accused products "read on the patent's claims" without specifying which claims are asserted (Compl. ¶41). Independent claim 1 is the sole independent claim.
• Independent Claim 1 recites:
  • A spherical soccer ball with a removably attached tether extending from a single point;
  • The tether is composed of an elastic portion and a non-elastic portion;
  • The elastic portion provides a "smooth return" of the ball "without jerking";
  • A "retaining flap" is securely attached to the ball;
  • A "closable plastic keeper" defining a housing, through which the tether is passed and knotted, is held in a "keeper-holding space" formed between the retaining flap and the ball;
  • A "swivel lead" connects the elastic and non-elastic portions of the tether, allowing the ball to spin freely; and
  • A "clip" is attached to the tether for adjusting its length.
• The complaint does not mention the assertion of any dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Playmaker Kickback" and "Starkick Elite" products as the licensed products at issue (Compl. ¶¶ 12, 15).

Functionality and Market Context

• The complaint does not provide technical descriptions or diagrams of the accused products' operation. It alleges that the Defendant developed and marketed these products using the technology of the '006 patent (Compl. ¶41).
• The central allegation is that these products are sold "under the license of the '006 utility patent," which forms the basis for the Defendant's alleged royalty obligations (Compl. ¶20). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

Because the complaint's primary cause of action is for breach of a license agreement, it does not contain a detailed, element-by-element infringement analysis mapping product features to claim limitations. Instead, it asserts that the "Playmaker Kickback" and "Starkick Elite" products "read on the patent's claims" (Compl. ¶41) and were sold under the license (Compl. ¶20), thereby triggering a contractual duty to pay royalties.

As the complaint does not map specific product features to claim limitations, a claim chart summary cannot be constructed. The infringement theory is predicated on the existence of the license agreement itself, which implicitly suggests the parties previously agreed that the licensed products practice the patented technology.

• Identified Points of Contention:
  • Contractual Question: The primary dispute is whether Defendant's sales of the accused products trigger royalty obligations that have gone unpaid, constituting a breach of the license agreement (Compl. ¶17).
  • Technical Question (Contingent): Should the case evolve beyond a contract dispute (e.g., if the license is terminated or its scope is contested), a key technical question would emerge: do the "Playmaker Kickback" and "Starkick Elite" products actually incorporate every element of Claim 1 of the '006 Patent? The analysis would then focus on whether the products include the specific "retaining flap," "closable plastic keeper," and "swivel lead" structures as claimed.

V. Key Claim Terms for Construction

While the complaint does not frame a claim construction dispute, the following terms from independent Claim 1 appear central to the scope of the patented technology.

• The Term: "closable plastic keeper defining a housing"

  • Context and Importance: This element is the core of the invention's rotatable attachment mechanism. Its specific structure distinguishes the invention from prior art. Practitioners may focus on this term because its construction would define how similar an accused device's attachment component must be to infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the keeper is not limited to one form, stating it could comprise a "clip, a washer, a bearing, a button, a container, or any generally flat holding member" ('006 Patent, col. 4:40-43).
    • Evidence for a Narrower Interpretation: The preferred embodiment describes a specific two-part structure: a "shallow circular container 19" with a base and a "circular cap 27" that creates a "snap fit" ('006 Patent, col. 4:62-67, col. 5:1-2). This detailed description could be used to argue for a more limited scope.

• The Term: "retaining flap"

  • Context and Importance: This flap creates the concealed "pocket" or "keeper-holding space" that houses the rotating keeper ('006 Patent, col. 4:55-62). Its presence and characteristics are a key feature of the claimed assembly.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself might be construed broadly to mean any piece of material attached to the ball's surface to create a space for the keeper.
    • Evidence for a Narrower Interpretation: The specification describes the flap with some specificity, noting it is "selected to be roughly the same size and shape as the section over which it is sewn" and made of the "same type of synthetic material covering the ball" ('006 Patent, col. 4:18-24). This could support a narrower construction tied to these material and dimensional properties.

VI. Other Allegations

• Willful Infringement: The complaint does not explicitly use the term "willful infringement." However, it alleges that Defendant breached the agreements "without legal excuse" and that written demands for payment and accounting have been "refused or ignored" (Compl. ¶¶ 17-18). These allegations may be used to support a finding of willfulness or to justify an award of enhanced or punitive damages, which are requested in the prayer for relief (Compl. p. 9, ¶N).

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

The resolution of this dispute appears to hinge on questions that are primarily contractual, with patent law principles forming the underlying context.

1. Contractual Breach: The central issue is one of contract law: did the Defendant fail to pay royalties and/or minimums required by the 2014 License Agreement and its 2015 amendment for sales of the "Playmaker Kickback" and "Starkick Elite" products?
2. Scope of the Agreement: A secondary question may concern the scope of the licensed products. The case could turn on whether all versions of the products sold by the Defendant fall under the definitions and obligations set forth in the parties' agreements.
3. Underlying Infringement as a Contingency: A key evidentiary question that may arise, particularly if the license is terminated or contested, is one of technical identity: do the accused products actually practice every element of the asserted claims of the '006 patent? The outcome would then shift from interpreting a contract to a formal infringement analysis centered on claim construction, for which the current complaint does not provide a detailed foundation.