2nd Skull Inc v. Thundagear Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: 2nd Skull, Inc. (Pennsylvania)
  • Defendant: ThundaGear Inc and ThundaGear Distribution LLC (Ohio)
  • Plaintiff’s Counsel: ULMER & BERNE LLP
• Case Identification: 3:18-cv-02143, N.D. Ohio, 09/18/2018
• Venue Allegations: Venue is asserted based on the Defendants' residence within the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s head guards infringe a patent related to multi-layered, stretchable protective headwear.
• Technical Context: The technology concerns supplemental protective headgear, such as skull caps or liners, designed to be worn under helmets to help dissipate impact forces in athletic activities.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent-in-suit and its alleged infringement on or about August 8, 2018, approximately one month prior to filing the lawsuit.

Case Timeline

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

U.S. Patent No. 8,763,166 - "Head Guard"

• Issued: July 1, 2014

The Invention Explained

• Problem Addressed: The patent addresses the need for protective padding for individuals participating in contact sports and other physical activities where the head is subject to impact. (’166 Patent, col. 1:26-32).
• The Patented Solution: The invention is a form-fitting, compressive head guard constructed from multiple layers of stretchable fabric that create a pocket to hold a separate padding layer. (’166 Patent, col. 1:41-53, Fig. 17C). This construction allows the guard to be worn securely on a user's head, often under a helmet, to provide an additional layer of impact-dissipating material without requiring a chin strap. (’166 Patent, col. 3:15-18).
• Technical Importance: The technology provides a method for adding supplemental impact protection that is integrated into a comfortable, stretchable cap, which can conform to a wearer’s head and be used in conjunction with conventional helmets. (’166 Patent, col. 2:6-12).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims, with a specific focus on independent claim 1. (Compl. ¶16).
• The essential elements of independent claim 1 are:
  • A head guard comprising a plurality of multi-layered sidewalls sewn together to form a dome with a circular opening for a wearer's head.
  • Each sidewall comprises an inner and an outer stretchable fabric layer (with a spandex component) attached at their peripheries to define a pocket.
  • A side padding layer is positioned within the pocket but is "disconnected from" both the inner and outer fabric layers.
  • The head guard is stretchable and delivers a compressive force to maintain its position on the wearer's head.
• The complaint's reference to "one or more claims" suggests the right to assert additional claims, including dependent claims, may be reserved. (Compl. ¶16).

III. The Accused Instrumentality

Product Identification

• The "ThundaGear" head guard, referred to as the "Infringing Head Guard." (Compl. ¶12).

Functionality and Market Context

• The complaint describes the accused product as a head guard sold on the Defendant's website. (Compl. ¶12). Its alleged functionality includes being made of "two separate sections—or 'sidewalls'—that are sewn together to form a dome," having pockets made of spandex layers containing padding material, and being stretchable to provide a compressive fit on a wearer's head. (Compl. ¶¶19-22). The complaint provides an image of the Infringing Head Guard, depicting a cap-style product worn on a mannequin head. (Compl. p. 3). The complaint does not provide further detail on the product's market position.

IV. Analysis of Infringement Allegations

'166 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: Claim 1 requires "a plurality of multi-layered sidewalls... sewn to collectively form a dome." The complaint alleges the accused product is made of "two separate sections" sewn together. (Compl. ¶19). This raises the question of whether the accused product's two-panel construction falls within the scope of the claim term "plurality of... sidewalls," particularly when some patent figures depict embodiments with multiple, smaller, triangular panels. (’166 Patent, Fig. 18A).
• Technical Questions: A central factual dispute may concern the "disconnected from" limitation. The complaint alleges that disassembly of the accused product "reveals that padding material floats unconnected to the layers." (Compl. ¶21). The case may turn on what evidentiary proof Plaintiff can offer to substantiate this allegation of the product's internal construction.

V. Key Claim Terms for Construction

• The Term: "disconnected from"
• Context and Importance: This term is critical to the infringement analysis, as the complaint's theory hinges on the allegation that the accused product's padding "floats unconnected." (Compl. ¶21). The definition will determine whether any minimal attachment, such as tack stitching or adhesive, would defeat the infringement claim for this element.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain and ordinary meaning of "disconnected" implies a complete lack of physical attachment. The patent reinforces this by describing the layer as "generally 'floating' between the two" other layers. (’166 Patent, col. 11:23-24).
  • Evidence for a Narrower Interpretation: The patent creates a clear dichotomy by stating that in "other embodiments," the padding layer "is attached to one or both of the... layers." (’166 Patent, col. 11:24-27). A party might argue this explicit contrast demonstrates the patentee's intent for "disconnected" to mean the absolute absence of any such attachment, leaving no room for incidental contact or minor connections to satisfy the claim.

VI. Other Allegations

• Indirect Infringement: The complaint does not include a separate count for indirect infringement. However, it makes a conclusory allegation of intent, stating Defendant acted with "full knowledge of the patent and both knowing and intending" that its conduct would infringe. (Compl. ¶24).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It states that Defendant was put on notice of the ’166 Patent and the alleged infringement via a letter on or about August 8, 2018, and that infringement has continued unabated. (Compl. ¶¶13-14). The prayer for relief seeks enhanced damages. (Compl. p. 6, ¶D).

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

• A key evidentiary question will be one of internal construction: what evidence will Plaintiff present to prove its allegation, made upon "disassembly," that the padding layer inside the accused product is physically "disconnected from" the surrounding fabric layers, as required by the asserted claim?
• A core issue will be one of definitional scope: can the claim term "a plurality of multi-layered sidewalls," read in light of the patent's figures and description, be construed to cover the accused product's alleged two-panel construction, or does the term require a more complex assembly of multiple, distinct panels to form the claimed "dome"?