Patrick Charles Mullaly v. Patrick E Kerr

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Patrick Charles Mullaly (New York)
  • Defendant: Patrick E. Kerr and Kerr Sports, LLC (Delaware)
  • Plaintiff’s Counsel: Allegaert Berger & Vogel LLP
• Case Identification: 1:18-cv-01885, S.D.N.Y., 03/02/2018
• Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant Kerr is domiciled in the District, Kerr Sports maintains its principal place of business in the District, and a substantial part of the events giving rise to the claims occurred there.
• Core Dispute: Plaintiff alleges that he is an uncredited co-inventor of patents related to a cervical protection device for athletes and seeks to have his name added to the patents, from which he claims he was fraudulently omitted by Defendant Kerr.
• Technical Context: The technology concerns protective equipment for contact sports, specifically a collar designed to mitigate neck and spinal injuries by absorbing and redirecting forces from impacts to a player's helmet.
• Key Procedural History: The complaint alleges a long-term collaboration between the parties, culminating in Defendant Kerr filing for patents naming himself as the sole inventor. The patents-in-suit form a family, with U.S. Patent 8,615,819 and U.S. Patent 9,517,401 being continuations-in-part of the application that led to U.S. Patent 8,370,968. Plaintiff alleges that his key conceptual contributions were incorporated into the patent claims during prosecution, distinguishing them from prior art.

Case Timeline

Date	Event
2006-01-18	Priority Date for '968, '819, '401 Patents
2012-05-25	Defendant Kerr Sports, LLC formed
2013-02-12	'968 Patent Issued
2013-12-31	'819 Patent Issued
2016-12-13	'401 Patent Issued
2018-03-02	Complaint Filed

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

U.S. Patent No. 8,370,968 - “Cervical Spine Protection Device,” Issued Feb. 12, 2013

The Invention Explained

• Problem Addressed: The patent describes the high risk of serious neck injuries in contact sports, particularly from "axial loading" when a player's head is driven down toward the shoulders, which can cause the spinal column to buckle (’968 Patent, col. 2:26-31). Existing protective devices were noted to either fail to address this specific type of force or to do so by restricting the player's normal range of motion (’968 Patent, col. 2:46-52).
• The Patented Solution: The invention is a protective collar that rests on the user's shoulders and is designed to engage the lower edges of a helmet during an impact. The device features openings at the front and back to allow for unrestricted head movement (’968 Patent, col. 3:28-34). When an axial force is applied to the helmet, the collar absorbs the impact via embedded compression elements and redirects the force obliquely away from the cervical spine, rather than allowing it to compress vertically (’968 Patent, col. 4:6-15; Fig. 6).
• Technical Importance: The device claims to provide a novel way to minimize the risk of catastrophic axial compression injuries without the trade-off of limiting a player's athletic performance (’968 Patent, col. 2:18-24).

Key Claims at a Glance

• The complaint broadly asserts co-inventorship of all claims, with Claim 1 being a representative independent claim (’968 Patent, col. 5:12-34).
• Claim 1 Elements:
  • A lower portion for engaging a user's shoulders.
  • An upper portion for engaging a head protection device (helmet) when an axial force is applied.
  • The upper portion has openings at the front and rear.
  • A plurality of compression elements that direct the axial force away from the cervical spine in an oblique direction.
  • The compression elements include a horizontal portion and a tapered lower portion that follows the neck's contours.
• The complaint reserves the right to seek correction of inventorship on a related pending application when it issues (Compl. ¶28).

U.S. Patent No. 8,615,819 - “Cervical Spine Protection Device,” Issued Dec. 31, 2013

The Invention Explained

• Problem Addressed: As a continuation-in-part of the '968 Patent, this patent addresses the same fundamental problem of preventing axial compression neck injuries in sports (’819 Patent, col. 2:46-53).
• The Patented Solution: The ’819 Patent refines the geometry of the protective collar. A key feature is that the top surface of the side sections of the device has an "apex that is higher than the top surface of the front section and the rear section" (’819 Patent, col. 14:21-25). This specific geometry is designed to ensure that upon impact, the helmet makes contact with the elevated sides of the collar rather than the lower front or back portions, enhancing the device's ability to absorb and redirect force without restricting motion (’819 Patent, col. 8:10-26).
• Technical Importance: This refined geometry claims to create a more effective and reliable engagement with the helmet during an impact, further improving the protective function while maintaining freedom of movement (’819 Patent, col. 8:36-52).

Key Claims at a Glance

• The complaint broadly asserts co-inventorship. Claim 1 is a representative independent claim and includes the key geometric feature alleged by Plaintiff to be his contribution (’819 Patent, col. 14:2-33).
• Claim 1 Elements:
  • A lower portion engaging shoulders and an upper portion engaging a helmet.
  • A middle portion connecting the lower and upper portions.
  • An inside portion fitting around the neck and an outside portion engaging shoulder pads.
  • The top surface of the side sections has an apex that is higher than the top surface of the front section and the rear section when worn.
  • The device absorbs and directs axial force away from the cervical spine.
• The complaint reserves the right to seek correction of inventorship on a related pending application when it issues (Compl. ¶28).

Multi-Patent Capsule

• U.S. Patent No. 9517401, “Shoulder Pads Incorporating a Cervical Spine Protection Device,” Issued Dec. 13, 2016
  • Technology Synopsis: This patent integrates the cervical protection device directly into a set of shoulder pads, creating a single, unified piece of protective equipment. The system maintains the core functionality of engaging a helmet to redirect axial forces away from the spine while being an integral part of the shoulder pads themselves (’401 Patent, Abstract).
  • Asserted Claims: The complaint makes a blanket assertion of co-inventorship over the "inventions claimed" in the patent (Compl. ¶30). Representative independent claims include Claim 1 and Claim 11.
  • Accused Features: This is an inventorship action, not an infringement action; the dispute centers on Plaintiff's alleged conceptual contributions to the claimed integrated device (Compl. ¶21, ¶23).

III. The Accused Instrumentality

This section is not applicable, as the complaint is for correction of inventorship, not patent infringement.

IV. Analysis of Co-Inventorship Allegations

The complaint alleges that Plaintiff Mullaly made significant conceptual contributions to the patented inventions, particularly to the features that distinguish the inventions from the prior art and were added to the continuation-in-part applications. The central allegation is that Plaintiff conceived of the "horizontal/vertical distinction," which required the sides of the collar to be elevated relative to the front and back to properly disperse force (Compl. ¶13). This concept is allegedly embodied in the claims of the ’819 Patent.

The complaint provides visual evidence comparing Plaintiff's alleged notebook sketches with patent figures. For example, a sketch is compared to Figure 13 of the '819 Patent and a photo of the commercial "Kerr Collar" to show similarity in form (Compl. ¶22). Another sketch is provided to illustrate the concept of the helmet interacting with the elevated sides of the collar (Compl. ¶27).

U.S. Patent No. 8,615,819 Co-Inventorship Allegations

Claim Element (from Independent Claim 1)	Plaintiff's Alleged Contribution to Conception	Complaint Citation
an upper portion designed for engagement with a user's head protection device ... the upper portion having a front section, a rear section, and side sections	Plaintiff alleges he co-conceptualized the overall design through extensive collaboration, including creating prototypes and modeling the device (Compl. ¶8, ¶21). A sketch allegedly from Plaintiff's notebook, showing a top-down view of the collar's structure, is presented as evidence of his contribution to the device's form (Compl. ¶22, p. 8).	¶8, ¶21, ¶22
wherein the top surface of the side sections of the upper portion has an apex that is higher than the top surface of the front section and the rear section when the cervical spine protection device is worn by a user	This limitation appears to be the primary basis for the inventorship claim. The complaint alleges that Plaintiff's "key" insight was that the collar "had to be designed more horizontally than vertically to better disperse the axial force," which became his "guiding principle" (Compl. ¶13). This concept allegedly led to the claimed feature of the elevated side apexes, which the complaint states was a "key distinction with the prior art that led to the issuance of the ‘819 Patent" (Compl. ¶23). A comparison of Plaintiff's sketch with Figure 7 of the patent is offered as evidence of this conception, showing downward arrows from a helmet to the top of the collar (Compl. ¶26-27, p. 10).	¶13, ¶23, ¶27
an outside portion shaped to engage with shoulder pads	The complaint alleges a decade-long collaboration to develop the device, including development of "numerous prototype collars" and traveling to meet with a manufacturer to discuss material options (Compl. ¶8, ¶9). A sketch allegedly from Plaintiff's notebook shows the collar interacting with "Shoulder pads" (Compl. ¶26, p. 10).	¶8, ¶9, ¶26

• Identified Points of Contention:
  • Conception vs. Reduction to Practice: The core legal question in an inventorship dispute is who conceived of the claimed invention. The complaint focuses on Plaintiff's alleged conceptual contributions (e.g., the "horizontal/vertical" insight). A point of contention will be whether these alleged contributions rise to the level of conceiving a "definite and permanent idea of the complete and operative invention," or whether they were merely contributions to the reduction to practice or general concepts that do not map onto the specific claim limitations.
  • Corroboration: To prevail, a party seeking to correct inventorship must provide clear and convincing evidence to corroborate their claim. The complaint relies on "contemporaneous emails, notes and notebooks" (Compl. ¶2). A central issue will be whether this evidence, particularly the undated sketches, is sufficient to corroborate Plaintiff's testimony regarding his conception of the specific features claimed in the patents.

V. Key Claim Terms for Construction

The construction of the following term may be central to resolving the inventorship dispute.

• The Term: "apex that is higher than the top surface of the front section and the rear section" (’819 Patent, cl. 1)
• Context and Importance: This term appears to define the central inventive concept that Plaintiff claims as his contribution. The complaint asserts that this feature was a "key distinction with the prior art" and a "key feature supporting patentability" (Compl. ¶23, ¶27). The resolution of the case may depend on whether Plaintiff can prove he conceived of this specific, claimed geometric relationship. Practitioners may focus on this term because its definition will determine whether Plaintiff's alleged "horizontal/vertical" insight (Compl. ¶13) is synonymous with the feature as claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The parties may argue for a functional interpretation. The specification states that the purpose of the device's shape is to direct force away from the spine and that when a force is applied, the helmet "would contact the top surface 40 of the upper portion 15, and not the valley 42 of the back portion 26" (’819 Patent, col. 8:19-26). This could support an interpretation where any geometry achieving this functional result meets the limitation.
  • Evidence for a Narrower Interpretation: A party could argue for a more literal, structural interpretation based on the drawings. Figure 5, a cross-section, and Figure 9, a perspective view, show a distinct, elevated curvature on the side portions relative to the "valley 42" in the back (’819 Patent, Fig. 5, Fig. 9). This could support a narrower definition requiring a specific, visually apparent height differential as depicted in the patent's own figures.

VI. Other Allegations

• Correction of Inventorship (35 U.S.C. § 256): The First Claim for Relief is a statutory claim to correct inventorship under 35 U.S.C. § 256. Plaintiff alleges he made "significant contributions to the conception of the subject matter claimed in each of the Patents" and was "incorrectly... not named as a co-inventor" (Compl. ¶30-31). The complaint further alleges that Defendant Kerr acted with deceptive intent by filing the application in his name alone despite Plaintiff's co-inventorship (Compl. ¶12).
• State Law Claims: The complaint also includes claims for breach of an oral contract, unjust enrichment, quantum meruit, and promissory estoppel. These are based on allegations that Defendant Kerr repeatedly promised Plaintiff a one-third ownership interest in the business (Kerr Sports) and other compensation in exchange for his work on developing and promoting the collar, promises which Defendant allegedly broke (Compl. ¶11, ¶15, ¶34, ¶39).

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

This case is not a typical infringement suit, but a dispute over authorship and ownership of intellectual property. The outcome will likely depend on the court's resolution of two central questions:

• A core question will be one of conception and claim mapping: Can the plaintiff demonstrate, with clear and convincing evidence, that his alleged "horizontal/vertical" design insight constitutes a conception of the specific, claimed geometric relationship of a "higher apex" on the sides of the device, or will the court find that his contribution was a more general idea that does not amount to co-inventorship of the claimed subject matter?
• A key evidentiary question will be one of corroboration: Beyond the plaintiff's own allegations and interpretations, is the proffered evidence—such as the undated notebook sketches and alleged oral promises made between long-time friends—sufficiently clear and corroborating to meet the high legal standard required to divest a named inventor of his sole ownership rights and rewrite the patent's inventorship?