DCT
2:23-cv-01424
Pegnatori v. Pure Sports Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Carl Pegnatori and Monsta Athletics, LLC (California)
- Defendant: Pure Sports Technologies, LLC (South Carolina)
- Plaintiff’s Counsel: Saxton & Stump; Law Office of David B. Abel; Foundation Law Group, LLP
- Case Identification: 2:23-cv-01424, D.S.C., 04/07/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and physical place of business in the District of South Carolina and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s multi-wall composite softball bats infringe a patent related to a "floating" inner barrel design intended to increase rebound performance.
- Technical Context: The technology concerns high-performance composite baseball and softball bats, a market where incremental design changes can yield significant competitive advantages in hit distance and bat durability.
- Key Procedural History: The complaint alleges that Defendant previously licensed the patent-in-suit for a three-year term starting in 2019. The license was reportedly not renewed, which may be significant for the allegations of willful infringement, as it suggests Defendant had direct knowledge of the patent prior to the alleged infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-30 | '056 Patent Priority Date |
| 2015-04-14 | '056 Patent Issued |
| During 2019 | Defendant allegedly takes a license to the '056 Patent |
| During 2022 | Defendant's three-year license allegedly expires/is not renewed |
| 2023-04-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,005,056 - Baseball Bat
The Invention Explained
- Problem Addressed: The patent describes a problem with prior multi-wall bat designs where the inner and outer walls are securely connected or make contact at multiple points. This configuration prevents the walls from flexing independently to their full potential, limits the overall rebound ("trampoline") effect, and allows undesirable vibrations to travel through the bat to the user's hands (’056 Patent, col. 2:57-65).
- The Patented Solution: The invention proposes a bat with a "floating" tubular insert positioned inside the main hitting barrel but separated from it by a "void gap." This insert is suspended in place by a foam element fitted within it, which protrudes from both ends of the insert to centrally position it without rigidly connecting it to the outer frame. This allows both the outer barrel and the inner insert to deform independently upon impact with a ball, combining their elastic energy to produce a greater rebound effect while also dampening vibrations (’056 Patent, Abstract; col. 4:51-64; Fig. 1).
- Technical Importance: This approach seeks to maximize energy transfer to the ball by creating a dual-spring system where two independent walls compress and rebound in concert, a departure from designs where walls were physically bonded or abutted one another (’056 Patent, col. 3:32-37).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (’056 Patent, col. 6:51-65; Compl. ¶28).
- Claim 1 requires:
- A tubular frame with a large diameter hitting portion, a tapering portion, and a small diameter handle portion.
- A tubular insert positioned within the hitting portion, separated from the frame by a void gap of largely constant width.
- A foam element fitted within the insert that protrudes and expands beyond the insert's ends, allowing the insert to be suspended within the frame.
- A knob covering the end of the handle portion.
- A cap covering the end of the hitting portion.
- The complaint does not explicitly reserve the right to assert dependent claims, but states infringement of "at least claim 1" (Compl. ¶28).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are softball bats sold under the "HELLFIRE," "SIDEWINDER," and "SKYBOLT" brands (Compl. ¶17).
Functionality and Market Context
- The complaint alleges these bats feature a "triple wall outer barrel and a short inner barrel spaced from the inside diameter of the outer barrel" (Compl. ¶18). Defendant markets this internal component as a "Power Amplification Device" or "PAD," which allegedly "will greatly increase the amount of force applied to the ball" by compressing to "amplify the force of the swing," causing a "faster rebound" (Compl. ¶¶17, 21). The complaint provides a photograph of a disassembled HELLFIRE bat showing the outer barrel and the inner components (Compl. p. 5, bottom figure). This image depicts a black tubular insert and a separate orange component described as a "spacer."
IV. Analysis of Infringement Allegations
’056 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tubular frame having a circular cross-section, the tubular frame including a large diameter hitting portion, an intermediate tapering portion, and a small diameter handle portion | The HELLFIRE, SIDEWINDER and SKYBOLT bats are alleged to include an "inner tubular insert cylinder" that has a "generally constant outer diameter that is slightly less than the inner diameter of the bat barrel, leaving a void gap along the entire length of the inner tubular insert." A photograph of the HELLFIRE bat is provided as an example. | ¶30, ¶33 | col. 4:41-45 |
| a tubular insert positioned within the large diameter hitting portion, the insert...being separated from the tubular frame by a void gap along the entire length of the insert, the gap being largely of constant width... | The accused bats are alleged to include a "spacer" within the inner cylinder that expands to a diameter "slightly greater than the outer diameter of the inner cylinder." Plaintiff alleges the spacer "appears to be made of plastic-like material and it may include air gaps or bubbles between layers thereby having the structure of foam." A close-up photograph shows this component. | ¶36, ¶37, ¶38 | col. 5:48-53 |
| a foam fitted within the insert, the foam protruding beyond the first and second ends of the insert and expanding beyond first and second ends of the insert such that the diameter of the expanded foam is greater than an outer diameter of the insert, allowing the insert to be suspended within the tubular frame... | The accused bats are alleged to include a knob covering the end of the handle. | ¶44 | col. 5:47-48 |
| a knob covering an exposed end of the handle portion | The accused bats are alleged to include a cap covering the end of the hitting portion. | ¶46 | col. 5:56-57 |
| a cap covering an exposed end of the hitting portion | The accused bats are alleged to include a cap covering the end of the hitting portion. | ¶46 | col. 5:56-57 |
Identified Points of Contention
- Scope Questions: The central dispute appears to be whether the accused "spacer" constitutes the claimed "foam." The complaint alleges the "spacer appears to be made of plastic-like material and it may include air gaps or bubbles... thereby having the structure of foam" (Compl. ¶38). This suggests a potential dispute over the definition of "foam" and whether a "plastic-like" component with some internal voids meets that definition. The complaint preemptively raises the doctrine of equivalents, alleging that even if the spacer is not literally foam, it performs the same function in the same way to achieve the same result (Compl. ¶¶39-41).
- Technical Questions: An evidentiary question will be the actual material composition and internal structure of the accused "spacer." Discovery will likely focus on whether this component is a solid polymer, a closed-cell foam, an open-cell foam, or another structure, and how that structure compares to the "high density foam" described in the patent (’056 Patent, col. 5:48).
V. Key Claim Terms for Construction
- The Term: "foam"
- Context and Importance: This term appears critical to the infringement analysis. The complaint alleges the accused bats contain a "spacer" and argues this component is, or is equivalent to, the claimed "foam" (Compl. ¶¶35-41). The resolution of whether this "plastic-like" spacer (Compl. ¶38) falls within the scope of "foam" will likely determine the outcome of the literal infringement inquiry.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification does not provide a formal definition of "foam." It refers to "high density foam" but does not limit the term to a specific material or manufacturing process (’056 Patent, col. 5:48). A party could argue that any material with a cellular or porous structure that performs the claimed suspension and elastic deformation functions should be considered a "foam."
- Evidence for a Narrower Interpretation: The patent consistently uses the term "foam" (e.g., "Foam 28", "Foam 32") in its preferred embodiments, which may suggest a conventional understanding of the term, such as a polymeric foam (’056 Patent, Fig. 1, Fig. 2). A party could argue that the patentee's choice of the specific word "foam," as opposed to a more general term like "spacer" or "resilient member," limits the claim to materials conventionally known as foams and excludes a solid "plastic-like" material, even if it contains incidental "air gaps or bubbles" (Compl. ¶38).
VI. Other Allegations
Indirect Infringement
- The complaint does not plead a separate count for indirect infringement and focuses its factual allegations on Defendant's direct acts of making, using, and selling the accused bats (Compl. ¶27).
Willful Infringement
- The complaint alleges that Defendant's infringement has been and is willful. The primary basis for this allegation is Defendant's prior three-year license to the ’056 Patent, which allegedly began in 2019. This history is asserted as direct evidence of Defendant's pre-suit knowledge of the patent and its technology (Compl. ¶¶22, 47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of material definition: Can the term "foam", as used in Claim 1, be construed to read on the accused bats’ "spacer," which the complaint itself describes as a "plastic-like material"? This question will likely involve a detailed claim construction analysis followed by an inquiry into either literal infringement or the doctrine of equivalents.
- A second central question will concern willfulness: Given the allegation of a prior, expired license agreement, the court will likely examine the circumstances surrounding the non-renewal of the license and the subsequent launch or continued sale of the accused products. The undisputed pre-suit knowledge of the patent may present a significant challenge for the Defendant in contesting the willfulness claim.