DCT
2:23-cv-00244
Divot Board LLC v. Derealized Ltd
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Divot Board, LLC (A Delaware LLC with its principal place of business in California)
- Defendant: Derealized LTD. d/b/a Golf Daddy (A British company)
- Plaintiff’s Counsel: INTELLECTUAL PROPERTY CONSULTING, LLC
- Case Identification: 2:23-cv-00244, E.D. La., 01/18/2023
- Venue Allegations: Venue is asserted under 28 U.S.C. § 1391(c)(3) as Defendant is a foreign entity. The complaint also alleges personal jurisdiction based on Defendant directing business activities to the district, including through an interactive commercial website.
- Core Dispute: Plaintiff alleges that Defendant’s "Divot Daddy Pro" golf training aid infringes a patent related to a practice board that uses pivoting, two-colored discs to provide a visual indication of a golf club's swing path.
- Technical Context: The technology concerns golf training equipment designed to provide golfers with immediate, resettable visual feedback on their swing to help improve accuracy and consistency.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant notice of infringement on November 22, 2022. It further alleges that after communications between counsel, Defendant temporarily removed the accused product from its website before resuming sales, which Plaintiff characterizes as a deliberate continuation of infringement after being notified.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-19 | Patent Priority Date ('539 Patent) |
| 2020-05-05 | '539 Patent Issue Date |
| 2022-11-22 | Plaintiff sends notice of infringement to Defendant |
| 2023-01-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,639,539 - GOLF PRACTICE BOARD FOR IMPROVING GOLF SWING, Issued May 5, 2020
The Invention Explained
- Problem Addressed: The patent's background section identifies a need for a golf practice board that provides a clear visual display of the club head's impact point and path. It notes that prior art devices using artificial grass can be difficult to interpret, while other complex indicator mechanisms are costly to produce ('539 Patent, col. 2:26-44).
- The Patented Solution: The invention is a practice board comprising a mat held in a frame. The mat's surface features a plurality of pivotable, two-sided discs. The top (obverse) side of the discs has one color, while the bottom (reverse) side has a different, contrasting color. When a golf club head passes over the mat, it flips the discs, creating a visible "divot pattern" that traces the club's path. The board can be reset by swiping a hand or the club back over the surface to flip the discs back to their original orientation ('539 Patent, Abstract; col. 3:7-16).
- Technical Importance: The design aims to provide clear, immediate, and repeatable visual feedback for swing analysis using a simplified and durable mechanical structure compared to prior art solutions ('539 Patent, col. 2:38-44).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶27).
- Independent Claim 1 requires:
- a mat;
- a plurality of multi-colored discs pivotably attached to a top surface of the mat, which pivot to show a differently colored reverse surface when an object passes over;
- a frame with a bottom surface, wherein the mat is secured within the frame;
- a plurality of anchors attached to the bottom surface of the frame;
- wherein the anchors comprise a plurality of mounting spikes.
- The complaint notes that the accused product infringes "one or more claims of the '539 Patent," reserving the right to assert additional claims (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
The accused product is the "Divot Daddy Pro" golf swing training board (Compl. ¶11).
Functionality and Market Context
The complaint alleges the Divot Daddy Pro is a golf practice board that provides visual feedback on a golfer's swing (Compl. ¶11). Its alleged functionality includes a mat within a frame, with pivotable, multi-colored discs that show a different color on their reverse side when contacted by a golf club (Compl. ¶13). The complaint includes an image of the accused product, showing a visible white "divot" path against a green background, with text overlay reading "TAKE A SWING GET FEEDBACK" (Compl. p.3). The product is also alleged to include a "rubber sole" and a "stake to pin down the mat and secure it to the ground" (Compl. ¶14). The complaint positions the product as being sold in direct competition with Plaintiff's own "Divot Board" product (Compl. ¶10).
IV. Analysis of Infringement Allegations
'539 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mat; | The Divot Daddy Pro includes a "mat secured within a frame." | ¶13 | col. 2:50 |
| 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, the plurality of multi-colored discs pivot from a first orientation showing an obverse surface of the multi-colored discs to a second orientation showing a reverse surface of the multi-colored discs; | The product has "a plurality of multi-colored discs pivotably attached to a top surface of the mat that pivot from a first orientation showing one colored surface of the disc to a second orientation showing a different color on the reverse side when contacted by a golf club." | ¶13 | col. 2:63-67 |
| a frame with a bottom surface, wherein the mat is secured within the frame; and | The product consists of "a mat secured within a frame." | ¶13 | col. 2:49-51 |
| a plurality of anchors attached to the bottom surface of the frame, | The product includes a "rubber sole" and a "stake to pin down the mat and secure it to the ground." | ¶14 | col. 2:54-57 |
| wherein: the obverse surface of the multi-colored discs has a different color than the reverse surface of the multi-colored discs; and | The discs pivot to show "a different color on the reverse side." | ¶13 | col. 3:5-7 |
| the plurality of anchors comprise a plurality of mounting spikes. | The product has a "rubber sole that was 'designed to create enough friction to prevent any moving' as well as the use of a stake to pin down the mat." | ¶14 | col. 3:41-44 |
Identified Points of Contention
- Scope Questions: The primary point of contention appears to be the "anchors" limitation. Claim 1 requires "a plurality of anchors" that "comprise a plurality of mounting spikes." The complaint alleges the accused product meets this limitation with a "rubber sole" and a singular "stake." This raises the question of whether a single stake can satisfy the "plurality" requirement and whether a high-friction "rubber sole" can be construed as one or more "mounting spikes" as that term is used in the patent.
V. Key Claim Terms for Construction
- The Term: "a plurality of ... mounting spikes"
- Context and Importance: This term appears central to the infringement analysis. The accused product is alleged to have a "rubber sole" and a single "stake" (Compl. ¶14). The defense may argue that "a plurality" requires two or more spikes and that a "rubber sole" is structurally and functionally different from a "spike." Practitioners may focus on this term because its construction could be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent discloses that "any anchors suitable for anchoring the board to a carpet, grass, or other ground surface may be used" ('539 Patent, col. 3:47-49). Plaintiff may argue this supports a functional definition where any feature preventing movement, like a high-friction sole or a stake, serves as an "anchor."
- Evidence for a Narrower Interpretation: Claim 1 explicitly recites "a plurality of mounting spikes," which narrows the broader term "anchors" used in the specification. The patent's figures and detailed description show an embodiment with numerous, distinct, cone-shaped "mounting spikes 14 extending outwardly from the bottom surface of the frame 10" ('539 Patent, col. 3:41-43; FIG. 5). This specific disclosure and the plain meaning of "spike" may support a narrower construction that excludes a flat rubber sole and requires more than one distinct spike.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks an injunction against inducing infringement (Compl. p.6, ¶B). However, the complaint's factual allegations focus on direct infringement and do not specify acts taken by Defendant to encourage or instruct others to infringe.
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It alleges, "upon information and belief," that Defendant was aware of the '539 Patent and Plaintiff's product even "prior to the release of the Divot Daddy Pro" (Compl. ¶16). It further alleges post-suit knowledge stemming from a notice letter sent on November 22, 2022, and subsequent discussions between legal counsel (Compl. ¶¶21-22). The allegation that Defendant continued to sell the product after this notice is presented as evidence of reckless and deliberate conduct (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "a plurality of mounting spikes," as required by Claim 1, be construed to read on an accused product that allegedly possesses a "rubber sole" and a single "stake"? The resolution of this definitional dispute may determine the outcome of the direct infringement claim.
- A key evidentiary question will be one of pre-suit knowledge: what factual evidence will Plaintiff produce to substantiate its "information and belief" allegation that Defendant was aware of the '539 patent prior to launching the accused product? The strength of the willfulness claim, and any potential for enhanced damages, may turn on the answer.