Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 1 of 13

United States District Court

Southern District of Texas

ENTERED
UNITED STATES DISTRICT COURT September 28, 2017
SOUTHERN DISTRICT OF TEXAS David J. Bradley, Clerk
HOUSTON DIVISION

SPORTSTAR ATHLETICS, INC., §

§
Plaintiff, §
VS. § CIVIL ACTION NO. 4:15-CV-01438
§
WILSON SPORTING GOODS, CO., §
§
Defendant. §

OPINION AND ORDER

Pending before the Court is Defendant Wilson Sporting Goods Co.‟s (“Wilson”) Motion

for Partial Summary Judgment on the Issue of Non-Infringement, Doc. 55, the Plaintiff SportStar

Athletics, Inc.‟s (“SportStar”) response, Doc. 57, and Defendant‟s reply, Doc. 58. Having

considered the motion, the response, the reply, the facts in the record, and the applicable law, the

Court grants the motion.

Also pending before the Court is Defendant Wilson‟s Daubert Motion to Strike and

Exclude Opinions of Plaintiff‟s Proffered Damages Expert Justin Blok, Doc. 44, Plaintiff‟s

response, Doc. 46, Defendant‟s reply, Doc. 47, Plaintiff‟s supplement to its response, Doc. 61,

Magistrate Judge Stacy‟s Memorandum and Recommendation denying Defendant‟s Motion to

Strike, Doc. 62, Defendant‟s objections to this recommendation order, Doc. 63, Plaintiff‟s

response to Defendant‟s objections, Doc. 67, and Defendant‟s reply, Doc. 70. In light of the

Court‟s ruling on Defendant‟s motion for partial summary judgment issued above, these pending

matters are now moot and need not be ruled on herein.

I. Background

SportStar is a locally owned and operated manufacturer and seller of high quality

sporting good products which are sold both directly to players and also through national retailers.

1 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 2 of 13

SportStar‟s president, Paul Schiebl, is the sole inventor for the patents-in-suit. The patents-in-

suit involve novel chinstrap assemblies for football helmets.

SportStar owns U.S. Patent No. 7,735,160 (the “„160 patent”) and U.S. Patent No.

8,621,671 (the “„671 patent”). The „671 patent, granted in January 2014, is a continuation-in-

part of the „160 patent, granted in June 2010. SportStar brought suit against Wilson for

infringement of both these patents. Wilson has denied infringement and moved for partial

summary judgment on the issue of non-infringement.

The „160 and „671 patents describe a chin guard apparatus for use with a helmet which

allows the chin guard straps to diverge from each other and connect to the helmet at different

points. SportStar alleges that Wilson products infringe certain claims of the „160 and „671

patents. Specifically, SportStar asserts Claims 1, 8, and 9 of the „160 patent and Claims 7–15

and 17 of the „671 patent.1

On January 30, 2017, the Court issued an order construing the claims of the patents-in-

suit as a matter of law under Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.

1995) (en banc), aff’d, 517 U.S. 370 (1996), Doc. 48 (the “Markman order”). The Court adopts

and incorporates the findings and conclusion of the Markman order in this order as if they were

fully set forth verbatim herein.

A. The Patents

i. SportStar’s ‘160 Patent

SportStar‟s „160 patent describes a chin guard apparatus involving, among other

1
For the „160 patent, Claim 1 is an independent claim, Claim 8 depends from Claim 1, and
Claim 9 depends from Claim 8. This means if all the elements of Claim 1 are not met, Wilson‟s
Accused Products cannot infringe Claims 8 and 9. For the „671 patent, Claims 7 and 10 are
independent claims, Claim 8 depends from Claim 7, Claim 9 depends from Claim 8, Claim 11
depends from Claim 10, and so on. If all the elements of Claims 7 and 10 are not met, the
Accused Products cannot infringe the other eight claims.
2 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 3 of 13

things, a device called a “strap splitter.” There is a strap on either side of the chin guard which

connects to the chin guard, passes through the strap splitter, then connects to the helmet. Claim 1

of the „160 patent teaches that the first and second straps are folded in two and subsequently

become a low strap portion and a high strap portion as they extend from a slot in the chin cup

and enter into the strap splitter, which has two slots: one shorter receiving slot through which the

two strap portions pass side by side, and a second, longer slot through which the straps pass

while angularly diverging from each other to allow one of the strap portions to be attached to

either the high hook-up or low hook-up of the helmet. „160 patent, claim 1.

„160 patent, figs. 7 and 8 (depicting the high and low hook-ups).

3 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 4 of 13

FIG. 5

„160 patent, fig. 5 (depicting the strap splitter).

Wilson also produces a chin guard apparatus. Similar to SportStar‟s „160 patent,

Wilson‟s apparatus involves a device that causes the chin straps to diverge from each other

before connecting to the helmet at multiple points. Wilson‟s apparatus, called a “strap divider,”

has three slots, all the same size and symmetrical with each other.

Wilson‟s strap divider, Doc. 57 at 29.

4 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 5 of 13

Wilson‟s product, Doc. 57 at 30, 32 (depicting the high and low hook-ups).

ii. SportStar’s ‘671 Patent

SportStar‟s „671 patent is a continuation-in-part of its „160 patent. It also

describes a chin guard apparatus involving a strap splitter. „671 patent, claim 7, 10. The strap

splitter in the „671 patent is essentially identical to that seen in Figure 7 of the „160 patent. Doc.

48, at 26.

„671 patent, fig. 7.

II. Legal Standards

a. Legal Standard for Summary Judgment

A motion for summary judgment requires the Court to determine whether the moving
5 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 6 of 13

party is entitled to judgment as a matter of law based on the evidence thus far presented. See

FED. R. CIV. P. 56(c)(2). Summary judgment is proper if “there is no genuine dispute as to any

material fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a).

“[A] dispute about a material fact is „genuine‟ . . . if the evidence is such that a reasonable jury

could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

248 (1986). The moving party bears the burden of identifying evidence that no genuine issue of

material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

b. Legal Standards for Patent Infringement

Patent infringement claims involve two analytic steps. First, the court determines the

meaning and scope of the asserted claims. Claim construction is a matter of law. Scanner Tech.

Corp. v. ICOS Vision Sys. Corp., N.V., 365 F.3d 1299, 1302 (Fed. Cir. 2004). Second, the claims

as construed are compared to the alleged infringer‟s device to determine if the accused device

falls within the scope of the claims. Id. Whether the accused device contains each element of

the claim, as properly construed, is a question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350,

1353 (Fed. Cir. 1998).

To prevail on a claim of infringement, a plaintiff must prove by a preponderance of the

evidence that the accused device infringes one or more claims of the patent either literally or

under the doctrine of equivalents. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc.,

261 F.3d 1329, 1336 (Fed. Cir. 2001). Literal infringement of a claim requires that every

limitation recited in the claim appears in the accused device, “i.e., that the properly construed

claim reads on the accused device exactly.” Cortland Line Co., Inc. v. Orvis Co., Inc., 203 F.3d

1351, 1358 (Fed. Cir. 2000). Any deviation from the literal claim language bars a literal

infringement finding. Telemaco Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330

6 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 7 of 13

(Fed. Cir. 2001). Summary judgment on the issue of literal infringement is proper “when no

genuine issue of material fact exists, in particular, when no reasonable jury could find that every

limitation recited in the properly construed claim either is or is not found in the accused device.”

Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1163 (Fed. Cir. 2004).

There may also be infringement under the doctrine of equivalents. Infringement under

the doctrine of equivalents requires that the accused product contain each limitation of the claim

or its equivalent. DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1331 (Fed. Cir. 2001). In

Warner-Jenkinson Co. v. Hilton Davis Chemical Co., the Supreme Court adopted an element-by-

element approach to the doctrine of equivalents:

Each element contained in a patent claim is deemed material to defining the scope
of the patented invention, and thus the doctrine of equivalents must be applied to
individual elements of the claim, not to the invention as a whole. It is important
to ensure that the application of the doctrine, even as to an individual element, is
not allowed such broad play as to effectively eliminate that element in its entirety.

520 U.S. 17, 29 (1997). The test for equivalence is whether the accused structure performs

substantially the same function in substantially the same way to achieve substantially the same

result as the claimed invention. Id. at 40. An element in the accused product is equivalent to a

claim limitation if a person of ordinary skill in the art would find the differences to be

insubstantial. Eagle Comtronics, Inc. v. Arrow Comm. Labs., Inc., 305 F.3d 1303, 1315 (Fed.

Cir. 2002). Summary judgment of noninfringement under the doctrine of equivalents is

appropriate if “no reasonable jury could determine two elements to be equivalent.” Warner-

Jenkinson, 520 U.S. at 39 n.8.

Additionally, “the determination of infringement under the doctrine of equivalents is

limited by two primary legal doctrines: (1) prosecution history estoppel and (2) the „all elements‟

rule,” the application of which are questions of law. Seachange Intern., Inc. v. C–COR, Inc., 413

7 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 8 of 13

F.3d 1361, 1378 (Fed. Cir. 2005). The “all elements” rule provides that the doctrine of

equivalents does not apply if the doctrine would vitiate an entire claim limitation. Asyst Techs.,

Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005); Lockheed Martin Corp. v. Space

Sys./Loral, Inc., 324 F.3d 1308, 1321 (Fed. Cir. 2003); see also Searfoss v. Pioneer Consol.

Corp., 374 F.3d 1142, 1151 (Fed. Cir. 2004) (summary judgment appropriate where finding of

infringement under doctrine of equivalents would vitiate a claim requirement).

III. Discussion

A. The ‘160 Patent

SportStar alleges that Wilson infringed Claims 1, 8, and 9 of the „160 patent. Claims 8

and 9 are dependent upon Claim 1. Claim 1 of the „160 patent claims:

A first strap splitter through which said first strap extends, said first strap splitter
comprising a unitary body having a first slot in spaced relationship to a second
slot, said first strap splitter having a fixed bar formed therewith and positioned
between said first slot and said second slot, said second slot having a length that
is greater than a length of said first slot, said first strap having a first portion and
a second portion juxtaposed together in said first slot and angularly diverging
from each other in said second slot, said first portion and said second portion
being angularly adjustable with respect to each other so as to allow one of said
first and second portions to be attached to either the high hook-up or low hook-up
of the helmet.

„160 patent, claim 1 (emphasis added).

i. Claim Interpretation

The first step in determining patent infringement is that the court must define the scope

and meaning of the asserted claims. A “bedrock principle” of patent law is that “the claims of a

patent define the invention to which the patentee is entitled the right to exclude.” Phillips v.

AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). In construing a claim term, the

“objective baseline” is the “ordinary and customary meaning,” which is “the meaning that the

term would have to a person of ordinary skill in the art in question at the time of the invention.”
8 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 9 of 13

Id. at 1313. The court should first examine intrinsic evidence including the claim language, the

specifications, and the prosecution history. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d

1336, 1344. “The words of the claims themselves define the scope of the invention, and are

given their ordinary and customary meaning, unless the patentee has chosen to use terms in some

other manner.” Id.

On January 30, 2017, the Court entered its Markman order on claim construction, which

has been adopted and incorporated herein. Based on the above principles of interpretation and

after a careful examination of the prosecution history, the Court construed as a matter of law

three disputed terms in Claim 1 of the „160 patent: “Strap splitter”; “in said second slot”; and

“greater than.” The Court concluded that “strap splitter” means:

A unitary body with a first slot in spaced relation to a second slot. A “fixed” bar
is formed with the unitary body and positioned between the first slot and the
second slot, with the second slot having a length greater than the first slot.

Doc. 48 at 29, 25. The Court construed the phrase “in said second slot” to mean “within the

second single continuous opening.” Id. at 33, 25. Additionally, the Court interpreted “greater

than” as meaning “longer than,” in reference to the length of the second slot. Id. at 33.

ii. Literal Infringement

The claim language in the „160 patent describes a “first slot in spaced relation to a second

slot, . . . said second slot having a length that is greater than a length of said first slot.” „160

patent, claim 1. SportStar argues that the claim limitation of having two slots is literally met,

despite the Wilson device having three symmetrical slots. Doc. 57 at 42. No reasonable jury

could conclude that Wilson‟s three-slotted device has two slots, with the second longer than the

first. Therefore, this Court finds that Wilson‟s device does not literally infringe the „160 patent.

9 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 10 of 13

iii. Infringement Under the Doctrine of Equivalents

To be entitled to summary judgment on the issue of noninfringement under the doctrine

of equivalents, Wilson must demonstrate that no reasonable jury could find that Wilson‟s device

performs the same function in the same way and achieves the same result as SportStar‟s „160

patent. However, “a court may not, under the guise of applying the doctrine of equivalents, erase

a plethora of meaningful structural and functional limitations of the claim on which the public is

entitled to rely in avoiding infringement.” Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822

F.2d 1528, 1532 (Fed. Cir. 1987).

Holding Wilson liable under the doctrine of equivalents would erase the limitations

describing a strap splitter with a “second slot having a length that is greater than a length of said

first slot,” which allows the strap portions to be “angularly adjustable with respect to each other.”

Consequently, this Court finds, as a matter of law, that Wilson‟s device does not infringe the

„160 patent.

While Wilson‟s device may perform the same overall function and achieve the same end

result as SportStar‟s strap splitter (that is, allowing the chin guard straps to connect to the helmet

at either a higher or lower point), Wilson‟s strap divider is lacking an element that would allow it

to perform in the same way as SportStar‟s strap splitter. See Sage Prod., Inc. v. Devon Indus.,

Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997) (“[Defendant] achieves a similar result. . . but it does

so by a different arrangement of elements”); Searfoss v. Pioneer Consol. Corp., 374 F.3d at 1151

(finding that the “same way” requirement was not met, which “completely vitiate[d]” an element

of the patent). Claim 1 explicitly describes a “second slot having a length that is greater than a

length of said first slot.” „160 patent, claim 1. This second, continuous slot allows the strap

portions to slide across it, changing the angle at which they exit the strap splitter. Again, this

10 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 11 of 13

limitation is found explicitly in Claim 1: “. . . said first portion and said second portion [of the

strap] being angularly adjustable with respect to each other. . .”. „160 patent, claim 1.

On the other hand, it is indisputable that the Wilson device has three slots. The strap

portions enter together into one slot, then one portion of the strap exits through the second slot,

while the second portion exits through a third, separate slot. The three slots are narrowly shaped

to the width of the straps, forcing the strap portions to diverge at a fixed, non-adjustable angle.

Therefore, despite the fact that the Wilson device also allows hook-up to either a higher or lower

point on the helmet, it does not meet the elements of having a strap splitter which allows for

angular adjustability via a second, single, continuous slot.

In the absence of these claim elements, a finding of infringement under the doctrine of

equivalents would entirely vitiate particular claimed elements of Claim 1. Accordingly, the

Court rules that there is no infringement of the „160 patent under the doctrine of equivalents. See

Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d at 1321. Because SportStar‟s claim

of infringement must fail under the “all elements” rule, the Court need not discuss here the legal

doctrine of prosecution history estoppel.

B. The ‘671 Patent

SportStar also alleges Wilson infringes independent Claims 7 and 10 of the „671 patent.

Claims 7 and 10 of the „671 patent each describe:

A chin guard comprising:

. . .a first strap splitter extending over said first strap so as to cause portions of
said first strap to diverge away from each other; and
a said second strap splitter extending over said second strap so as to cause
portions of said second strap to diverge away from each other.

„671 patent, claim 7, 10 (emphasis added).

11 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 12 of 13

i. Claim Interpretation

The „671 patent is a continuation-in-part of the „160 patent. In a continuation patent, the

inventor has “the right to refile the application and attempt to broaden the claims,” as long as he

has not previously surrendered or disclaimed the claim scope. Hakim v. Cannon Avent Grp.,

PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007). Statements regarding the terms or elements made

during the prosecution of the earlier „160 patent also apply with equal force to the continuation-

in-part „671 patent. See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)

Based on these principles, in its Markman Order, the Court construed the term “strap

splitter,” found in independent Claims 7 and 10 of the „671 patent to have the same definition as

it does in the „160 patent; this definition was a result of the Court‟s careful consideration of both

patents‟ claim language, specifications, and prosecution history. Doc. 48 at 29. Therefore, the

Court construed the term “strap splitter” in Claims 7 and 10 of the „671 patent to mean:

A unitary body with a first slot in spaced relation to a second slot. A “fixed” bar
is formed with the unitary body and positioned between the first slot and the
second slot, with the second slot having a length greater than the first slot.

Doc. 48 at 25.

ii. Literal Infringement

Summary judgment on the issue of literal infringement is proper when no reasonable jury

could find that every limitation recited in the properly construed claim is found in the accused

device. Goldenberg v. Cytogen, Inc., 373 F.3d at 1163. The Court construed a “strap splitter” to

have two slots, where the second slot has a greater length than the first slot. The Wilson device

has three symmetrical slots rather than two slots where the second slot has a greater length than

the first slot; no reasonable juror could find otherwise. Therefore, Wilson‟s accused product

does not have a “strap splitter” as construed by the Court. Since it does not have this claim

12 / 13
 Case 4:15-cv-01438 Document 73 Filed in TXSD on 09/27/17 Page 13 of 13

limitation exactly, there can be no literal infringement.

iii. Infringement Under the Doctrine of Equivalents

In the Markman Order, the Court ruled as a matter of law that the meaning of the term

“strap splitter” is the same in the „671 patent as it is in the „160 patent. Doc. 48 at 29. As

discussed in part III(A)(iii) of this Opinion, due to the lack of a two-slotted “strap splitter” in the

Wilson device, the “all elements” rule bars a finding of infringement under the doctrine of

equivalents as a matter of law. Therefore, the Court finds that the Wilson device does not

infringe the „671 patent as a matter of law.

IV. Conclusion

For the foregoing reasons, it is hereby ORDERED that the Defendant‟s Motion for Partial

Summary Judgment on the Issue of Non-Infringement, Doc. 55, is GRANTED.

SIGNED at Houston, Texas, this 27th day of September, 2017.

___________________________________
MELINDA HARMON
UNITED STATES DISTRICT JUDGE

13 / 13