DCT
2:23-cv-00244
Divot Board LLC v. Derealized Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Divot Board, LLC (Delaware)
- Defendant: Derealized LTD. d/b/a Golf Daddy (United Kingdom) and Daddy Sports, LLC (Delaware)
- Plaintiff’s Counsel: INTELLECTUAL PROPERTY CONSULTING, LLC
- Case Identification: 2:23-cv-00244, E.D. La., 07/20/2023
- Venue Allegations: Venue is alleged to be proper under 28 U.S.C. § 1391(c)(3) on the basis that Defendants are foreign entities subject to personal jurisdiction in the district through their business activities and interactive commercial website.
- Core Dispute: Plaintiff alleges that Defendants’ "Divot Daddy Pro" golf training aid infringes a patent related to a practice board that provides instant visual feedback of a golf club's swing path.
- Technical Context: The technology occupies the consumer market for golf training aids, where devices that provide clear, immediate feedback on swing mechanics are commercially significant.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the patent-in-suit on November 22, 2022, after which the parties' counsel engaged in communications that did not resolve the dispute. This alleged pre-suit and post-notice knowledge forms the basis of the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-19 | Priority Date for U.S. Patent No. 10,639,539 |
| 2020-05-05 | Issue Date for U.S. Patent No. 10,639,539 |
| 2022-11-22 | Plaintiff sends notice of infringement to Defendant Golf Daddy |
| 2023-01-01 (approx.) | Defendant Daddy Sports allegedly began selling accused product |
| 2023-07-20 | Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: 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 "clearly displays the golf club head's impact point and club head path" in a way that is structurally simpler and less costly to produce than prior art solutions, which could be difficult to interpret or overly complex ('539 Patent, col. 1:26-44).
- The Patented Solution: The invention is a practice board comprising a mat secured in a frame, with a top surface covered by a plurality of "multi-colored discs" that are pivotably attached ('539 Patent, Abstract). When a golf club passes over the mat, the discs flip from a first orientation to a second, revealing a reverse side of a different color and thereby creating a visible "divot pattern" that traces the club's path ('539 Patent, col. 3:9-17). This mechanism is designed to be easily "reset" by swiping a hand or the club back over the surface ('539 Patent, col. 3:13-17).
- Technical Importance: The design offers golfers a reusable and immediate visual feedback tool to analyze and correct their swing without the ambiguity or complexity of previous devices ('539 Patent, col. 1:21-25).
- Key Claims at a Glance:
- The complaint asserts infringement of "at least claim 1" of the ’539 Patent (Compl. ¶28).
- Independent Claim 1 requires:
- a mat;
- a plurality of multi-colored discs pivotably attached to a top surface of the mat, which pivot from a first orientation to a second orientation upon contact;
- a frame with a bottom surface, with the mat secured within it;
- a plurality of anchors attached to the bottom surface of the frame;
- wherein the obverse and reverse surfaces of the discs have different colors; and
- wherein the plurality of anchors comprise a plurality of mounting spikes.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The "Divot Daddy Pro" golf swing training board (Compl. ¶12).
- Functionality and Market Context: The complaint alleges the Divot Daddy Pro is a "golf practice board" that functions by using a "plurality of multi-colored discs pivotably attached to a top surface of the mat that pivot... showing a different color on the reverse side when contacted by a golf club" (Compl. ¶14). A marketing image for the product included in the complaint shows the device creating a visual swing path with the text "TAKE A SWING" and "GET FEEDBACK" (Compl. p. 3). The complaint further alleges the product includes a "rubber sole" designed for friction and a "stake to pin down the mat" to secure it to the ground (Compl. ¶15). The product is alleged to be sold directly to consumers in the U.S. and to be in direct competition with Plaintiff's "Divot Board" product (Compl. ¶¶7, 11, 13).
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." | ¶14 | 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...; | The accused product has "a plurality of multi-colored discs pivotably attached to a top surface of the mat that pivot from a first orientation... to a second orientation... when contacted by a golf club." The complaint includes a picture showing this feature in action. | ¶14; p. 3 | col. 2:62-67 |
| a frame with a bottom surface, wherein the mat is secured within the frame; | The Divot Daddy Pro is alleged to consist of "a mat secured within a frame." | ¶14 | col. 2:49-51 |
| and a plurality of anchors attached to the bottom surface of the frame, wherein: ... the plurality of anchors comprise a plurality of mounting spikes. | The product allegedly includes 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 and secure it to the ground." | ¶15 | col. 3:40-44 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the claim term "a plurality of anchors... compris[ing] a plurality of mounting spikes." The complaint alleges infringement based on a "rubber sole" and a single "stake." This raises the question of whether a single stake can meet the "plurality" requirement and whether a "rubber sole" can be construed as "mounting spikes."
- Technical Questions: The infringement analysis will likely turn on the evidence presented to equate the accused product's features with the claim limitations. What evidence does the complaint provide that the "rubber sole" functions as a "plurality of mounting spikes"? The complaint's description of a single "stake" appears facially inconsistent with the claim's requirement for a "plurality" of spikes, a point that may be central to non-infringement arguments. The image of Plaintiff's own "Patented Device" shows a different configuration from the accused product, featuring two distinct visual elements on the top surface. (Compl. p. 2).
V. Key Claim Terms for Construction
- The Term: "a plurality of anchors... compris[ing] a plurality of mounting spikes"
- Context and Importance: Practitioners may focus on this term because its construction appears dispositive for literal infringement. The accused product is alleged to have a "rubber sole" and a single "stake" (Compl. ¶15), which Defendant will likely argue does not meet the "plurality of mounting spikes" limitation. Plaintiff’s ability to prove infringement may depend on whether these features fall within the scope of this term, either literally or under the doctrine of equivalents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "other suitable anchors, such as golf cleats, may be attached" and that "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 demonstrates an intent to cover a range of anchoring mechanisms beyond the specific spike embodiment.
- Evidence for a Narrower Interpretation: Claim 1 itself explicitly recites that the "plurality of anchors comprise a plurality of mounting spikes." This specific language in the claim itself is strong evidence that the claim scope is limited to that structure. The patent's figures and primary embodiment description focus on "mounting spikes 14" extending from the bottom of the frame, which could be used to argue that the claim is tied to this specific configuration ('539 Patent, Fig. 5; col. 3:40-44).
VI. Other Allegations
- Indirect Infringement: The complaint's factual allegations focus on direct infringement (Compl. ¶28). However, the prayer for relief seeks an injunction against "inducing the infringement of the ’539 Patent," suggesting a potential, though not factually developed, claim for inducement (Compl. p. 6, ¶B).
- Willful Infringement: The complaint alleges a basis for willfulness, asserting that Defendant Golf Daddy had pre-suit knowledge of the ’539 Patent and Plaintiff's product even "prior to the release of the Divot Daddy Pro" (Compl. ¶17). It further alleges post-suit knowledge based on a notice letter sent on November 22, 2022, and subsequent communications between counsel, after which Defendants allegedly continued to infringe (Compl. ¶¶22-25, 32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and definitional scope: Can the term "a plurality of anchors... compris[ing] a plurality of mounting spikes," as recited in Claim 1, be construed to read on the accused product's alleged "rubber sole" and single "stake"? The resolution of this question may be dispositive of literal infringement.
- A key evidentiary question will be one of infringement under the doctrine of equivalents: If no literal infringement is found, the focus will shift to whether the accused product's anchoring system performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "plurality of mounting spikes," a highly fact-intensive inquiry.
- A central question for damages will be willfulness: Should infringement be established, the court will examine the evidence surrounding Defendant's alleged knowledge of the patent, both before releasing its product and after receiving formal notice, to determine if enhanced damages are warranted.