DCT
8:18-cv-00508
Battle ABC LLC v. Soldier Sports LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Battle-ABC, LLC (Nebraska)
- Defendant: Soldier Sports, LLC, and Jeffrey Evans (Nebraska)
- Plaintiff’s Counsel: CLINE WILLIAMS WRIGHT JOHNSON & OLDFATHER, L.L.P.
- Case Identification: 8:18-cv-00508, D. Neb., 01/04/2019
- Venue Allegations: Venue is alleged to be proper in the District of Nebraska as both Plaintiff and Defendant Soldier Sports, LLC are Nebraska limited liability companies with their principal places of business in the District, and the accused products are offered for sale there.
- Core Dispute: Plaintiff alleges that Defendant’s "Elite Air Lip Protector" mouth guards infringe three patents related to athletic mouth guards featuring an aperture for breathing and drinking.
- Technical Context: The technology concerns athletic protective gear, specifically mouth guards designed to allow unobstructed airflow and hydration without being removed, addressing a common limitation in conventional designs.
- Key Procedural History: The complaint alleges that Defendant Jeffrey Evans is a named inventor on all three patents-in-suit who transferred his interest to the Plaintiff. It is further alleged that Evans now owns and/or manages Defendant Soldier Sports, which sells the accused products. This relationship forms the basis for the complaint's allegations of willful infringement and inducement. The complaint also notes a prior, related case involving two of the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-01 | Priority Date for ’488, ’413, and ’975 Patents |
| 2011-01-01 | (Approx.) Predecessor to Plaintiff developed the Oxygen Lip Protector design |
| 2015-01-13 | U.S. Patent No. 8,931,488 Issued |
| 2015-01-01 | (Approx.) Defendants allegedly had actual notice of the '488 Patent |
| 2016-05-10 | U.S. Patent No. 9,333,413 Issued |
| 2017-08-01 | U.S. Patent No. 9,717,975 Issued |
| 2019-01-04 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,931,488 - "Mouth Guard with Breathing and Drinking Aperture"
- Patent Identification: U.S. Patent No. 8,931,488, "Mouth Guard with Breathing and Drinking Aperture," issued January 13, 2015. (Compl. ¶15; ’488 Patent, p. 1).
The Invention Explained
- Problem Addressed: The patent identifies a need for an effective mouth guard that does not obstruct a user's mouth opening, which in traditional guards inhibits breathing during athletic exertion and prevents drinking. (’488 Patent, col. 1:52-62).
- The Patented Solution: The invention is a mouth guard comprising two molar-receiving members that engage a user's back teeth, an outer wall that acts as a lip shield, and an inner wall positioned between the lips and teeth. A key feature is a "conduit" forming an open passage that extends between the inner and outer walls, allowing the user to breathe or drink through the guard. This structure leaves a "fluid gap" in front of the incisor teeth, which are not covered. (’488 Patent, col. 2:6-14; Fig. 4).
- Technical Importance: The design purports to offer the protective benefits of a mouth guard while simultaneously improving athlete performance by enabling better airflow and hydration during use. (’488 Patent, col. 1:58-62).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1. (Compl. ¶21).
- Essential elements of Claim 1 include:
- A pair of planar, spaced-apart molar receiving members.
- Forward end portions of the molar receiving members positioned in a spaced-apart relationship, defining a "fluid gap."
- An outer wall shaped to confront the exterior of a user's lips.
- An inner wall positioned between the molar members and outer wall, spanning the fluid gap.
- A conduit extending between the inner and outer walls, with an open passage for fluid communication.
- The "fluid gap" having a width, along its entire length, that is "wider than a width of the open passage."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,333,413 - "Mouth Guard with Breathing and Drinking Aperture"
- Patent Identification: U.S. Patent No. 9,333,413, "Mouth Guard with Breathing and Drinking Aperture," issued May 10, 2016. (Compl. ¶15; ’413 Patent, p. 1).
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’488 Patent, this patent addresses the same problem: traditional mouth guards obstruct airflow and prevent drinking. (’413 Patent, col. 2:1-4).
- The Patented Solution: The technology is structurally similar to that of the ’488 Patent, describing a mouth guard with molar-engaging portions, an outer lip shield, and a central breathing/drinking passage. The claims, however, refine the description of the inner wall, introducing a distinction between a "rearward inner wall portion" and a "forward inner wall portion." (’413 Patent, col. 5:50-57).
- Technical Importance: The technology provides a way for athletes to remain protected while breathing and hydrating more effectively than with conventional mouth guards. (’413 Patent, col. 1:62-65).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1. (Compl. ¶26).
- Essential elements of Claim 1 include:
- A pair of spaced-apart molar receiving members.
- Forward end portions of the molar receiving members positioned apart to define a "fluid gap."
- An outer wall to confront the user's lips.
- An inner wall comprising a "rearward inner wall portion" (extending along the molars) and a "forward inner wall portion" (extending forward of the fluid gap).
- A conduit between the walls with at least one open passage.
- The "fluid gap" having a width that is "at least as wide as" the width of the open passage.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,717,975 - "Mouth Guard with Breathing and Drinking Aperture"
- Patent Identification: U.S. Patent No. 9,717,975, "Mouth Guard with Breathing and Drinking Aperture," issued August 1, 2017. (Compl. ¶15; ’975 Patent, p. 1).
- Technology Synopsis: This patent is part of the same family as the ’488 and ’413 patents and addresses the same need for a mouth guard that allows for simultaneous protection, breathing, and drinking. (’975 Patent, col. 2:1-4). The disclosed solution is a mouth guard with molar-engaging members, an outer lip shield, and a central conduit providing a passage for air and fluid, with the inner wall "operatively coupled" to the molar members. (’975 Patent, col. 5:46-65).
- Asserted Claims: The complaint asserts at least Claim 1. (Compl. ¶30).
- Accused Features: The complaint alleges that the "Elite Air Lip Protector" infringes by embodying the claimed invention, applying the same general infringement theory as for the other asserted patents. (Compl. ¶16, ¶30).
III. The Accused Instrumentality
Product Identification
- The accused products are a range of mouth and lip guards sold under the name "Elite Air Lip Protector." (Compl. ¶16).
Functionality and Market Context
- The complaint alleges the Accused Products are mouth and lip protectors for athletes. (Compl. ¶4). A representative image shows a device with an external lip shield, a central opening, and internal structures for engaging teeth. (Compl. ¶17). This perspective view of the accused product shows an external shield and a central aperture, which are features central to the infringement allegations. (Compl. ¶17).
- The complaint alleges that infringement provides Defendant Soldier Sports with a "considerable competitive advantage." (Compl. ¶18).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of at least Claim 1 of each asserted patent but does not contain detailed element-by-element infringement contentions or reference any separate claim chart exhibits. The infringement theory is based on conclusory allegations and visual evidence of the accused product.
'488 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pair of planar, spaced-apart molar receiving members; the molar receiving members having opposite upper and lower biting surfaces... | The complaint alleges the Accused Product has molar-engaging portions with biting surfaces, as depicted in the images provided. | ¶21, ¶17 | col. 3:7-24 |
| forward end portions of the molar receiving members being positioned in a spaced-apart relationship with one another, defining a fluid gap... | The complaint alleges the Accused Product's molar-engaging portions are spaced apart at the front, creating a gap. | ¶21, ¶17 | col. 3:36-41 |
| an outer wall having opposing forward and rearward surfaces; the rearward surface of the outer wall being shaped to confront an exterior surface of the user's lips... | The complaint alleges the Accused Product has an external lip shield, visible as the foremost component in the provided images. | ¶21, ¶17 | col. 3:61-64 |
| an inner wall, positioned between the molar receiving members and the outer wall; the inner wall being shaped to...span the fluid gap between the molar receiving members... | The complaint alleges the Accused Product has an inner wall structure that connects the molar portions across the front. | ¶21, ¶17 | col. 5:32-38 |
| a conduit extending between the inner and outer walls; the conduit having an open passage that extends through opposite end portions of the conduit... | The complaint alleges the Accused Product has a central opening that passes through the device from front to back. | ¶21, ¶17 | col. 3:11-14 |
| the fluid gap having a width... that is wider than a width of the open passage... | The complaint alleges this dimensional relationship is met, but provides no measurements or specific factual support. | ¶21 | col. 5:52-58 |
'413 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pair of spaced-apart molar receiving members having opposite upper and lower biting surfaces... | The complaint alleges the Accused Product has molar-engaging portions with biting surfaces, as depicted in the images provided. | ¶26, ¶17 | col. 3:30-36 |
| forward end portions of the molar receiving members being positioned in a spaced-apart relationship with one another, defining a fluid gap... | The complaint alleges the Accused Product's molar-engaging portions are spaced apart at the front, creating a gap. | ¶26, ¶17 | col. 4:46-50 |
| an outer wall having opposing forward and rearward surfaces; the rearward surface of the outer wall being shaped to confront an exterior surface of a user's lips... | The complaint alleges the Accused Product has an external lip shield, visible as the foremost component in the provided images. | ¶26, ¶17 | col. 4:11-14 |
| an inner wall... a rearward inner wall portion being shaped to extend along at least a portion of a length of an outer edge portion of the molar receiving members and a forward inner wall portion being shaped to extend... forward of the fluid gap... | The complaint alleges the Accused Product's inner wall meets this two-part structural description, but provides no specific factual support to distinguish these "portions." | ¶26 | col. 5:50-57 |
| a conduit extending between the inner and outer walls... having at least one open passage... | The complaint alleges the Accused Product has a central opening that passes through the device from front to back. | ¶26, ¶17 | col. 3:18-24 |
| the fluid gap having a width... that is at least as wide as a width of the open passage... | The complaint alleges this dimensional relationship is met, but provides no measurements or specific factual support. | ¶26 | col. 6:4-9 |
- Identified Points of Contention:
- Scope Questions: The complaint's lack of detail raises the question of whether the Accused Product meets specific structural and dimensional limitations. For the ’488 Patent, a key dispute may be whether the product's "fluid gap" is demonstrably "wider than" its "open passage." For the ’413 Patent, a central question will be whether the product's continuous inner wall can be construed to have the claimed "rearward inner wall portion" and "forward inner wall portion."
- Technical Questions: A primary technical question will be evidentiary: What evidence will Plaintiff offer to prove the specific dimensions and structural relationships required by the claims? The images in the complaint do not, by themselves, provide the necessary measurements to resolve whether the "wider than" or "at least as wide as" limitations are met.
V. Key Claim Terms for Construction
The Term: "fluid gap" ('488 Patent, Claim 1; '413 Patent, Claim 1)
- Context and Importance: This term defines the open area between the forward ends of the molar-receiving members. The infringement analysis for both the '488 and '413 patents hinges on the dimensional relationship between this "fluid gap" and the "open passage." Practitioners may focus on this term because its construction and measurement will be a critical, fact-intensive part of the infringement case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the gap as being defined by forward end portions "positioned in a spaced-apart relationship," which could suggest any separation is sufficient. (’488 Patent, col. 3:36-39).
- Evidence for a Narrower Interpretation: The specification ties the term to the function of allowing fluid to "flow along a linear pathway... without confronting an opposing surface of the molar receiving members," suggesting the gap must be of a sufficient size and configuration to permit this function. (’488 Patent, col. 3:45-51).
The Term: "forward inner wall portion" and "rearward inner wall portion" ('413 Patent, Claim 1)
- Context and Importance: This terminology, which differentiates Claim 1 of the ’413 Patent from Claim 1 of the ’488 Patent, divides the inner wall into two distinct regions. The construction of these terms is critical, as it may determine whether a single, continuous inner wall structure like that appearing in the Accused Product can meet the limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the portions based on their location (the rearward portion "shaped to extend along at least a portion of a length of an outer edge portion of the molar receiving members" and the forward portion "shaped to extend... forward of the fluid gap"). This could support an interpretation where the "portions" are merely descriptive locations on a single structure. (’413 Patent, col. 5:50-57).
- Evidence for a Narrower Interpretation: The act of separately naming and defining two "portions" in the claim itself creates a potential structural requirement. A defendant may argue this language requires two identifiably distinct sections, and that a unitary, undifferentiated inner wall does not infringe.
VI. Other Allegations
- Indirect Infringement: The complaint alleges a claim for inducement of infringement against Defendant Jeffrey Evans personally. The basis for this claim is that Evans, as a named inventor, had actual knowledge of the patents and, as a person with "control and influence" over Defendant Soldier Sports, knew his activities would lead to infringement. (Compl. ¶33).
- Willful Infringement: The complaint seeks increased damages, alleging willful infringement. (Compl. p. 7, ¶d). The factual basis for this allegation is Defendant Evans's status as a named inventor on the asserted patents and his role at Soldier Sports, which allegedly establishes that Defendants had knowledge of the patents and the infringing nature of their conduct from the patents' inception. (Compl. ¶4, ¶23, ¶27, ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court's answers to several central questions:
A core issue will be one of claim construction and scope: Can the specific structural limitations recited in the claims, particularly the "forward" and "rearward" inner wall portions of the '413 patent, be construed to read on the accused product's seemingly unitary construction? The outcome will depend on whether these terms are interpreted as requiring distinct structural components or merely describing locations.
A key evidentiary question will be one of dimensional proof: As the complaint provides no specific measurements, what evidence will be dispositive in determining whether the accused product's "fluid gap" meets the "wider than" limitation of the '488 patent or the "at least as wide as" limitation of the '413 patent?
A third significant question will concern personal liability: Will the allegations of Defendant Jeffrey Evans's role as both a named inventor who assigned his rights and the subsequent principal of the accused company be sufficient to support the claims for willful infringement and personal liability for inducement?