MATTHEW F. KENNELLY, District Judge:
Riddell has sued Kranos Corporation, which does business as Schutt Sports, for alleged infringement of two of Riddell's football helmet patents: U.S. Patent Nos. 8,528,118 (the '118 patent) and 8,938,818 (the '818 patent). In May 2017, the Court issued a claim construction order and denied Schutt's motions for partial summary judgment on a number of the infringement claims based on the '818 patent. See Riddell, Inc. v. Kranos Corp., No. 16 C 4496, 2017 WL 2349714 (N.D. Ill. May 30, 2017) (memorandum opinion and order denying partial summary judgment); Riddell, Inc. v. Kranos Corp., No. 16 C 4496, 2017 WL 2264347 (N.D. Ill. May 24, 2017) (claim construction memorandum opinion and order).
Schutt has moved for summary judgment of non-infringement and invalidity, and Riddell has filed a cross-motion for partial summary judgment regarding the validity of claim 6 of the '118 patent as well as infringement. For the reasons stated below, the Court grants summary judgment of non-infringement in favor of Schutt regarding claims 11 and 50 of the '818 patent with respect to three specific models of the accused helmets but denies the rest of Schutt's motion for summary judgment. The Court grants summary judgment in favor of Riddell with respect to infringement on all '818 patent claims,
Riddell manufactures and sells football helmets, among other types of sports equipment. It owns the '118 and '818 patents at issue in the present litigation. Both
Schutt also manufactures and sells sports helmets. Riddell filed suit against Schutt in April 2016, alleging that Schutt's "Vengeance" line of football helmets infringes a number of claims of the '118 and '818 patents.
In August 2016, Schutt filed petitions with the Patent Trial and Appeal Board (the Board) for inter partes review (IPR) of all of the patent claims asserted by Riddell. Specifically, Schutt sought review of claims 1-7, 11-13, 25-28, 30, and 32-37 of the '118 patent and claims 1-3, 5-6, 8-12, 14-16, 18-19, 21-25, 27, 29-32, 34, 36-52, 56-58, and 60-65 of the '818 patent. The Board instituted review with respect to claims 1, 2, 5, 11, 12, 25, 27, 28, 30, 32-35, and 37 of the '118 patent and claims 41, 42, 49, 51, 56-58, and 62-65 of the '818 patent. In February 2018, the Board issued final written decisions with respect to each of the two proceedings. With respect to the '118 patent, the Board concluded that Schutt had shown, by a preponderance of the evidence, that claims 1, 11, 12, 25, 28, 33-35, and 37 were unpatentable as obvious under 35 U.S.C. § 103, but had failed to prove that claims 2, 5, 27, 30, and 32 were unpatentable. See dkt. no. 220, Def.'s Notice of Suppl. Authorities in Supp. of Mot. for Summ. J., Ex. 1 (PTAB Decision on '118 Patent) at 83. As for the '818 patent, the Board determined that Schutt proved by a preponderance of the evidence that claims 41, 49, 51, 56, 57, 62, 63, and 65 were unpatentable as obvious, but failed to prove claims 42, 58, and 64 unpatentable. See id., Ex. 2 (PTAB Decision on '818 Patent) at 46.
Following the Board's issuance of these decisions, Riddell stipulated to the dismissal of all claims of infringement regarding any of the claims of the '118 patent except for those based on claim 6 and all claims of infringement regarding any of the claims of the '818 patent except for those based on claims 1, 2, 5, 6, 11, 40, 50, and 58. See dkt. no. 201, Joint Notice of Stipulation Regarding Dismissal of Certain Claims of U.S. Patent No. 8,528,118; dkt. no. 203, Joint Notice of Stipulation Regarding Dismissal of Certain Claims of U.S. Patent No. 8,938,818. Accordingly, Riddell's infringement claims in this lawsuit rest on claim 6 of the '118 patent and claims 1, 2, 5, 6, 11, 40, 50, and 58 of the '818 patent.
Claim 6 of the '118 patent depends from unasserted claim 5, which in turn depends from unasserted claim 1. Claim 1 of the '118 patent discloses:
Compl., Ex. C ('118 Patent Ex Parte Reexamination Certificate) 1:24-1:40. Claim 5 adds the limitation that the raised central band "has a width defined by a pair of opposed side walls that extend transversely from an outer surface of the shell." Id. 1:41-1:44. Claim 6 adds the limitation that "the side wall has a curvilinear configuration as it extends between the crown region and the rear region of the shell." Compl., Ex. B ('118 Patent) 14:45-14:47.
Claim 1 of the '818 patent is an independent claim; the rest of the asserted claims of the '818 patent are dependent claims. Specifically, claims 2, 5, and 6 depend from claim 1; claim 11 depends from claims 9 and 1; claim 40 depends from claims 39, 36, and 29, and; claims 50 and 58 depend from claim 41. Claim 1 of the '818 patent is largely representative of the claimed invention:
Compl., Ex. A ('818 Patent) 14:49-15:17.
Schutt has moved for summary judgment on the issues of invalidity, non-infringement, and Riddell's entitlement to lost profits. Schutt first contends that the asserted claims of the patents-in-suit are not entitled to the claimed priority date of May 1, 2002 and are therefore invalid as anticipated by Riddell's own helmets pursuant to 35 U.S.C. § 102. Alternatively, Schutt argues that even if the patents-in-suit are afforded a 2002 priority date, all of the asserted claims are invalid as anticipated or obvious under 35 U.S.C. §§ 102 or 103. Schutt further contends that summary
For its part, Riddell contends that disputed issues of material fact preclude a grant of summary judgment to Schutt with respect to the priority date and the validity of all the asserted claims of the '818 patent, as well as the issue of lost profits. Riddell has moved for summary judgment of infringement on the ground that at least some of Schutt's Vengeance helmets meet all of the limitations of the asserted claims. It has also moved for summary judgment regarding the validity of claim 6 of the '118 patent.
In reviewing cross-motions for summary judgment, the Court takes the motions one at a time, construing all facts and drawing all reasonable inferences in favor of the non-moving party. Advance Cable Co., LLC v. Cincinnati Ins. Co., 788 F.3d 743, 746 (7th Cir. 2015). A party is entitled to summary judgment only if it shows that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). There is a genuine issue of material fact, and summary judgment is therefore precluded, "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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
"An infringement analysis involves the two-step process of construing the claims and comparing the properly construed claims to the accused product." Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190, 1203 (Fed. Cir. 2017) (internal quotation marks and citation omitted). Infringement is a question of fact. EMD Millipore Corp. v. AllPure Techs., Inc., 768 F.3d 1196, 1200-01 (Fed. Cir. 2014). Summary judgment on the issue of infringement is appropriate, however, "when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." U.S. Philips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1374-75 (Fed. Cir. 2007) (citation omitted). Riddell does not rely on the doctrine of equivalents in opposing summary judgment.
Several of the limitations discussed by the parties in their respective summary judgment briefs are common to all or most of the asserted claims. The Court will address each of these limitations in the order in which they are presented by the parties.
Schutt first contends that no reasonable jury could find that the Vengeance helmets meet the "raised central band"
Def.'s Mem. at 34. Schutt does not appear to dispute (nor could it) that this feature is raised and in the center of the helmet. Rather, Schutt's argument rests largely on the proposition that it cannot be considered a band. Citing a number of online dictionaries that define "band" as "a thin, flat strip of some material,"
The Court is unpersuaded by this selective comparison of the saw-tooth offset feature to dictionary definitions of the word "band." Although the feature may not be a flat strip that confines or constricts, it fits comfortably within several of the other definitions provided by Schutt. For example, it could easily be considered "a strip ... or a stripe ... differentiable (as by color, texture, or structure) from the adjacent material or area." Band, Merriam-Webster. The offset feature, which runs as a stripe from the front of the helmet to the back, is differentiable from the adjacent areas of the helmet because it is raised. It could also be considered "a stripe, as of color or decorative work." Band, Dictionary.com.
Schutt also argues that no reasonable jury would consider the saw-tooth offset
Despite Schutt's assertions that the dictionary definitions discussed above provide support for its argument, none of the definitions describe a band as necessarily or even generally having "continuous" and/or "substantially parallel" sides. More importantly, although Schutt's expert, Jonathan Posner, has opined that a person of ordinary skill in the art would understand a band to have "boundaries defined by substantially parallel side walls or sides; or, at a minimum, by side walls or sides that have a continuous geometry," id. ¶ 56, this Court has already rejected Schutt's proposed construction of a raised central band as having "a width defined by a pair of opposed side walls," as well as Schutt's contention that the walls of the band must be parallel and "continuous and uninterrupted — that is, without zigs and zags." Riddell, 2017 WL 2264347, at *5, 7-8. In any case, even if the side walls of the saw-tooth offset feature are not continuous, the raised surface offset by the saw-tooth design extends continuously from the crown to the rear of the helmet. See, e.g., Lukas Decl., Ex. 83 (Shewchenko Infringement Report), App. B at 5-6. No reasonable jury could conclude that Schutt's saw-tooth offset feature is not a "raised central band" within the plain and ordinary meaning of that term — and thus find that the Vengeance helmets lack a raised central band — simply because of the feature's saw-tooth configuration.
Riddell has cross-moved for summary judgment on the issue of infringement. Riddell asserts that "[a]pplying plain meaning, the accused products unquestionably include an integrally formed raised central band extending across the crown region to the rear region." Pl.'s Mem. in Supp. of Cross-Mot. for Summ. J. (Pl.'s Mem.) at 7. In support, it cites Schutt's schematic drawings of the accused helmets, a physical sample of one of the accused helmet models, and claim charts in which Riddell's expert, Nicholas Shewchenko, labels the saw-tooth offset feature as a "raised central band integrally formed as part of the shell." Shewchenko Infringement Report, App. A at 8-9; Id., App. B at 5-6. It is apparent even from this limited evidence that no reasonable jury could find that the Schutt helmets at issue lack a raised central band, even when the evidence is viewed in the light most favorable to Schutt. It is evident from the pictures of the helmets as well as the physical model that the saw-tooth offset feature is not only "raised" and "central" with respect to the rest of the shell, but also a "band" within the plain and ordinary meaning of that term. The Court therefore finds, pursuant to Federal Rule of Civil Procedure 56(g), that the accused helmets contain a "raised central band" as a matter of law.
Schutt next argues that even if a jury could find that the saw-tooth offset feature constitutes a raised central band, its helmets do not infringe most asserted claims because the saw-tooth offset feature does not have a "width defined by a pair of
Posner Rebuttal Report ¶ 73; see also id. ¶¶ 71-72, 74. Schutt also contends that this limitation is not met because the saw-tooth offset feature has more than a single pair of side walls, divided by the gaps where there are no side walls at all. Lastly, Schutt asserts that to the extent the feature has side walls, they are not "opposed" because they do not always face away from each other (the direction of the walls being defined by a line that is perpendicular to their surface).
As Riddell notes, however, Schutt's suggestion that a side wall must be "a separate discernable surface that connects two different surfaces" in all places in order to define the width of the raised central band, id. at 36, appears to ignore the fact that the raised central band must also be "integrally formed as part of the shell," which this Court has construed to mean "not including a separate element attached to the shell." Riddell, 2017 WL 2264347, at *9. The fact that Schutt's expert has identified certain regions of the saw-tooth offset feature where "the outer surface of the saw-tooth offset feature bends towards and directly interfaces with the outer shell surface" instead of creating a "definable visual or tactile distinguishing boundar[y] such that all three surfaces can be separately discerned," in no way precludes a reasonable factfinder from concluding that the saw-tooth offset feature has a width defined by a pair of opposed side walls, within the plain meaning of that phrase. Posner Rebuttal Report ¶¶ 71-72.
The proposition that the saw-tooth offset feature cannot be found to have a width defined by a pair of opposed side walls
Shewchenko Infringement Report, App. B at 9; see also id., App. A at 9; Lukas Decl., Ex. 85. Lastly, the Court has also previously rejected the contention that side walls may only be "opposed" if they have outer surfaces that always face away from each other. See Riddell, 2017 WL 2264347, at *7. Webster's Third New International Dictionary defines "opposed" as "opposite to each other." Opposed, Webster's Third New Int'l Dictionary 1583 (1993). To the extent that the side walls identified by Riddell's expert define the outer limits of the raised band on either side, they are "opposite to each other." There is no question that a reasonable jury could therefore find that the Vengeance helmets' saw-tooth offset feature has a width defined by a pair of opposed side walls. Indeed, it is evident merely from looking at the accused helmets that the saw-tooth offset feature does have a width defined by a pair of opposed side walls, in the way that a person of ordinary skill in the art would understand the plain and ordinary meaning of that phrase. After Schutt's previously rejected and overly narrow claim constructions are set aside, even when the evidence is viewed in the light most favorable to Schutt, no reasonable factfinder could conclude otherwise. The Court therefore finds that the accused helmets meet the "width defined by a pair of opposed side walls" limitation as a matter of law.
Schutt further contends that the accused products do not infringe any of the asserted claims because they lack two or more vent openings "aligned along"
In the claim construction decision, the Court observed that "Schutt appear[ed] to agree" that the claim construction language relating to the positioning and alignment of vent openings "simply discloses that any vent openings are located completely outside the raised central band." Riddell, 2017 WL 2264347, at *10. It is also true that Schutt did not argue in its claim construction briefs that a plurality of vent openings had to be aligned with respect to each other, and Schutt makes no attempt in its briefs to explain why such an interpretation of the claim language is appropriate. As previously discussed, Schutt did argue, in the context of the raised central band side wall limitation, that the sides of the raised central band would have to be continuous and substantially straight, but the Court rejected that proposed construction. Id. at *7. Riddell has presented evidence from which a reasonable jury could conclude that two or more vent openings in the Vengeance helmets are indeed aligned along the sides of the saw-tooth offset feature, as each vent is aligned with the portion of the wall to which it is adjacent:
Shewchenko Infringement Report, App. A at 10.
Id., App. A at 11. Although Schutt points to various statements by Riddell and its expert Shewchenko that it contends establish that a line between vent holes must always be parallel to a side wall in order to be considered aligned with it, those statements were made in context of specific discussions about certain other helmets and they do not suggest that is necessarily the case with respect to raised central bands that have zig-zag side walls. See Pl.'s Resp. to Def.'s Corrected Statement of Material Facts ¶¶ 11, 14-18, 21, 153; see also Lukas Decl., Ex. 15 (Nov. 28, 2017 Shewchenko Dep.) 13:21-14:1 ("[T]he term parallel is not forcing the alignment of the vent holes with the wall. The vent holes are following the sidewall. So the sidewall is always the reference."). A reasonable jury could conclude from the above image that the vent openings are, in fact, aligned along the side walls of the saw-tooth offset feature Schutt is therefore not entitled to summary judgment on this basis.
With regard to Riddell's cross-motion, the question is whether a reasonable jury could find that two or more vent openings in the Vengeance helmets are not aligned along the sides of the saw-tooth offset feature. Schutt's expert's explanation for why a person of ordinary skill in the art would not consider this limitation met by the accused helmets appears to rely in large part on the unwarranted assumption that the sides of the raised central band simply cannot have a zig-zag configuration. See, e.g., Posner Rebuttal Report ¶¶ 94, 98-100. Schutt's expert also asserts that the vent openings cannot be considered aligned with the sides of the saw-tooth offset feature specifically because, as demonstrated below, "any line that connects two vent holes [shown in blue] ... cannot be aligned with any side or side wall boundary [shown in red]":
Id. ¶ 95. But the problem with this line of argument is that it is wholly unsupported by the claim language, which only specifies that a plurality of vent openings are "aligned along" or "aligned, and positioned along" a side of the raised central band and gives no indication that the lines connecting the vent holes must always be parallel to the side walls themselves. The Court concludes that there is no genuine dispute that the vent openings of the accused helmets are "aligned along" or "aligned, and positioned along" a side of the saw-tooth offset feature; even when the evidence is viewed in the light most favorable to Schutt, it would not be reasonable for a factfinder to conclude otherwise. The accused helmets therefore meet the vent opening limitations as a matter of law.
Schutt next argues that the Vengeance helmets do not infringe claim 6 of the '118 patent because the saw-tooth offset feature does not have a side wall with a "curvilinear configuration as it extends between the crown region and the rear region of the shell." '118 Patent 14:45-14:47. Curvilinear is defined in Webster's Third New International Dictionary as "consisting of or bounded by curved lines" or "following a curve." Curvilinear, Webster's Third New Int'l Dictionary 558. The phrase "curvilinear configuration" was defined during claim construction as describing "walls that curve in the horizontal plane as they extend from the front to the rear of the shell." Riddell, 2017 WL 2264347, at *15. As the Court noted in the claim construction order, this construction is consistent with the Patent Trial and Appeal Board's description of the side wall highlighted in the following figure as having a "curvilinear shape" in that the wall curves outward as it crosses the shell:
Dkt. no. 117 (Pl.'s Resp. to Xenith) at 24-25; see also Riddell, 2017 WL 2264347, at *14-15 (citing Pl.'s Resp. to Xenith at 24-25). Schutt contends that because the alleged side walls of the saw-tooth offset feature are discontinuous and travel in a zig-zag path, they would not be considered curvilinear or curving in the horizontal plane by a person of ordinary skill in the art, but it does not explain why a discontinuous, zig-zag wall could not be considered to curve overall in the horizontal plane. Riddell, for its part, contends that the zig-zag configuration of the saw-tooth offset feature "plainly meets" the curvilinear configuration limitation, Pl.'s Mem. at 13, but once again, the only evidence it cites in support of that contention are Schutt's schematic drawings of the accused helmets, a physical sample of one of the accused helmet models, and a claim chart in which its expert has labeled a side wall of the saw-tooth offset feature as a "side wall having [a] curvilinear configuration." Shewchenko Infringement Report, App. B at 10. Although Riddell did not need to point to more evidence than that to establish that the raised central band, side wall, and vent opening limitations are met by Schutt's helmets, viewing the evidence in the light most favorable to Schutt, it is not entirely clear from the schematic drawings, the physical sample, or the cited claim chart that this particular "curvilinear configuration" limitation is met.
Because neither party makes any attempt to actually explain why the side walls of the saw-tooth offset feature would or would not be considered curvilinear, neither party has met its burden to establish that they are entitled to judgment as a matter of law on this issue. See, e.g., Estate of Moreland v. Dieter, 395 F.3d 747, 759 (7th Cir. 2005) (the Court "will not scour a record to locate evidence supporting a party's legal argument" where that party has "failed to discuss the facts relevant to [its] claim ... [and relied] instead almost entirely on a series of string citations to affidavits and other documents in the record"). Accordingly, the Court denies both parties' motions for summary judgment regarding whether the accused products infringe claim 6 of the '118 patent.
Lastly, Schutt contends that three specific models of Vengeance helmets — the
Riddell contends that, in addition to meeting the previously discussed limitations, the accused helmets meet all of the remaining limitations of the '818 patent claims. See Pl.'s Mem. at 11-15. Schutt has forfeited any argument to the contrary by failing to respond to Riddell on this point. See, e.g., Potts v. Manos, No. 11 C 3952, 2017 WL 4340157, at *4 (N.D. Ill. Sept. 29, 2017). In any case, as explained below, the Court finds that these limitations are indeed met by the accused helmets.
Schutt concedes that the Vengeance helmets meet the remaining limitations of the independent claims (asserted claim 1 and unasserted claims 29 and 41 of the '818 patent and unasserted claim 1 of the '118 patent) from which all the asserted claims depend. See Def.'s Resp. to Pl.'s Statement of Material Facts ¶¶ 8-19. Schutt likewise does not dispute that the accused products
That leaves asserted dependent claims 40 and 58 of the '818 patent and unasserted claim 5 of the '118 patent, from which claim 6 depends.
Asserted claim 40 of the '818 patent recites "[t]he football helmet of claim 39, wherein the first and second vent openings are substantially adjacent a respective one of the pair of opposed sidewalls defining the central band." '818 Patent 18:14-18:16. Claim 39, in turn, recites "[t]he football helmet of claim 36, wherein the shell further includes a first vent opening aligned along a first side of the raised central band, and a second vent opening aligned along a second side of the raised central band." Id. 18:9-18:12. And claim 36 recites "[t]he football helmet of claim 29, further comprising a crown shock absorbing pad disposed in the crown region adjacent the inner wall surface." Id. 17:65-17:67. Schutt does not dispute that the accused products meet the additional limitation in claim 36. See Def.'s Resp. to Pl.'s Statement of Material Facts ¶ 24. Schutt does dispute that the accused helmets feature a "first vent opening aligned along a first side of the raised central band, and a second vent opening aligned along a second side of the raised central band," but the Court has already rejected its argument on that point. It is clear from the picture below
Pl.'s Mem. at 15. It is also clear from the picture that the accused helmets meet the additional limitation of claim 40 that the "first and second vent openings are substantially adjacent a respective one of the pair of opposed sidewalls defining the central band." '818 Patent 18:14-18:16. Accordingly, there is no genuine dispute that the accused helmets meet all the limitations of asserted dependent claim 40.
Claim 58 of the '818 patent recites the following:
Id. 19:33-19:39. Schutt does not dispute that the shell of the accused helmets has a frontal face guard connection component for securement of an upper, frontal portion of the face guard. See Def.'s Resp. to Pl.'s Statement of Material Facts ¶ 26. Nor does Schutt meaningfully dispute either (1) that the helmets include a first and second plurality of vent openings that include a first vent opening or (2) that the distance between an outer edge of the first vent openings exceeds the width of the frontal face guard connection component. Id. There is thus no genuine dispute that the accused helmets meet the limitations of claim 58.
Lastly, unasserted claim 5 of the '118 patent reads "[t]he football helmet of claim 1, wherein the raised central band has a width defined by a pair of opposed side walls that extend transversely from an outer surface of the shell." '118 Patent Ex Parte Reexamination Certificate 1:41-1:44. The Court has rejected Schutt's contention that the saw-tooth offset feature does not have a width defined by a pair of opposed side walls, and Schutt does not dispute that the side walls extend transversely from an outer surface of the shell. See Def.'s Resp. to Pl.'s Statement of Material Facts ¶ 27; Def.'s Mem. at 33-37. Accordingly, although summary judgment of infringement or non-infringement regarding the "curvilinear configuration" limitation of claim 6 of the '118 patent is not warranted, the Court finds, pursuant to Federal Rule of Civil Procedure 56(g), that the accused helmets contain all the other remaining limitations of that claim and unasserted claims 5 and 1 from which it depends as a matter of law.
In summary, neither party is entitled to summary judgment with respect to claim 6 of the '118 patent. But even when the evidence is viewed in the light most favorable to Schutt, no reasonable jury could find that the accused helmets do not meet every limitation recited in the asserted '818 patent claims. The Court therefore denies Schutt's motion for summary judgment of non-infringement in its entirety and denies Riddell's cross-motion for summary judgment of infringement on claim 6 of the '118 patent. The Court grants Riddell's cross-motion for summary judgment of infringement with respect to claims 1, 2, 5, 6, 11,
Schutt has moved for summary judgment of invalidity with respect to all of the asserted claims. Schutt's first invalidity argument rests on its contention that the asserted claims of the patents-in-suit are not entitled to a priority date of May 1, 2002.
"[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also 35 U.S.C. § 112(a) ("The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same...."). To meet the written description requirement, the prior application's disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention at that time. PowerOasis, 522 F.3d at 1306. As this Court has already explained in the context of Schutt's prior motions for partial summary judgment, drawings alone may be found to satisfy the written description requirement. Riddell, 2017 WL 2349714, at *3; see also Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009). Although the issue of whether the written description requirement is met is a question of fact, the Court may grant summary judgment in cases where no reasonable jury could return a verdict for the non-moving party. PowerOasis, 522 F.3d at 1307.
Riddell responds that although it has argued that drawings in certain prior art references did not disclose an integrally formed raised central band, neither it nor Shewchenko have taken the position that a drawing could
Hanewicz Decl. in Supp. of Pl.'s Cross-Mot. for Summ J., Ex. 1 (Shewchenko Validity Report) ¶ 449 (emphasis in original). Shewchenko further opined that a person of ordinary skill in the art would, in fact, understand the following figures as depicting a raised central band integrally formed as part of the shell because the band "clearly blends into the shell at its starting and ending points":
Id. ¶¶ 446-447. Schutt vaguely asserts that the doctrines of prosecution disclaimer and estoppel preclude a genuine dispute of material fact on the issue of whether the above figures constitute a written description of an integrally formed raised central band based on the positions Riddell has previously taken. As Riddell notes, however, Schutt "neither acknowledges nor attempts to satisfy the legal factors to be considered with respect to such doctrines (and may not raise them for the first time in reply)." Pl.'s Mem. at 39. The Court agrees. See, e.g., Chavez v. Ill. State Police, 251 F.3d 612, 651 (7th Cir. 2001) ("It is not the obligation of this court to research and construct the legal arguments open to parties, especially when they are represented by counsel.") (citation omitted). In any case, because the prior statements cited by Schutt were made in reference to photographs and figures of specific prior art and not in reference to the figures in the provisional application at issue here, the Court is not persuaded that Riddell's and Shewchenko's statements are necessarily inconsistent with the assertion that the figures of the provisional application would convey an integrally formed raised central band with reasonable clarity to those skilled in the art. Viewing the evidence in the light most favorable to Riddell, the Court concludes that Shewchenko's opinion creates a genuine dispute regarding whether the integrally formed raised central band claims were disclosed by the provisional application and thus entitled to a priority date of May 1, 2002; accordingly, it is a question of fact for the jury that may not be resolved on summary judgment. See Riddell, 2017 WL 2349714, at *5 (same conclusion with respect to the offset band claims).
Schutt next argues that even if the patents-in-suit are entitled to the claimed 2002 priority date, all of Riddell's asserted claims are nonetheless invalid as anticipated and/or obvious pursuant to 35 U.S.C. §§ 102 and 103. Riddell has cross-moved for summary judgment of validity with respect to claim 6 of the '118 patent, and it asserts that there are disputed factual issues precluding summary judgment of invalidity for each of the asserted claims of the '818 patent.
Because patent claims are presumed valid, an accused infringer must prove invalidity by clear and convincing evidence. Microsoft Corp. v. I4I Ltd. P'ship, 564 U.S. 91, 95, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1367 (Fed. Cir. 2011); see also 35 U.S.C. § 282(a) ("Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim."). Under 35 U.S.C. § 102, a claim is invalid as anticipated "if each and every limitation is found either expressly or inherently in a single prior art reference." King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (citation omitted). Under 35 U.S.C. § 103, a claim is invalid as obvious "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill" in the relevant art. 35 U.S.C. § 103(a) (2006).
Schutt contends that the following prior art references, alone or in combination, render all of the asserted claims invalid as anticipated and/or obvious:
Schutt argues that even if Riddell denies that the cited prior art references disclose the certain limitations, each of the Sears, Wilson, VSR4, and JOFA prior art references, alone or in combination, renders obvious all of the independent claims (unasserted claim 1 of the '118 patent; asserted claim 1 of the '818 patent, and;
thereby rendering all of the asserted claims invalid as obvious.
Riddell responds that Schutt has waived many of the invalidity arguments raised in its motion for summary judgment because it did not include several of the above prior art references in the list it provided to Riddell of the 25 "primary" references that it intended to rely upon to demonstrate the invalidity of the asserted claims. Pl.'s Mem. at 18. The Court declines to find Schutt's invalidity arguments waived on this basis, however, because both parties addressed the references at issue in their expert reports and thus Riddell is not unfairly prejudiced. See, e.g., Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, 2013 WL 6132598, at *24 (N.D. Ill. Nov. 20, 2013) (invalidity defense missing from final invalidity and unenforceability contentions not waived where it was asserted in expert report and the patentee was clearly on notice of the argument).
Riddell also contends that Schutt has failed to establish that several of the references upon which it relies for its anticipation and obviousness arguments qualify as prior art with respect to the patents-in-suit. Riddell identifies the following issues:
Instead of directly and specifically addressing each of the above contentions, Schutt summarily asserts that it has met its burden to show the references in question are prior art because it has shown that each has "
The Court's review of the references in question reveals that the white JOFA helmet pictured in Exhibit H does display a model number — 395 — that corresponds with one of the model numbers in shown in the relevant catalog excerpt, but the model number of the black JOFA helmet included in the same exhibit is not visible. See Def.'s Mem., Ex. H at 1, 4; Lukas Decl., Ex. 73. Additionally, as Shewchenko has pointed out, the black helmet does not appear to be assembled correctly. Shewchenko Validity Report ¶ 81. The pictures of the other references do not reveal model numbers and do not appear to be otherwise authenticated. Although Schutt may well be able to establish that such references were on the market prior to the relevant priority date, it has not done so here. For that reason, the Court concludes that Schutt may not rely on these references — aside from the white JOFA helmet — for purposes of summary judgment.
Even if Schutt had established that all of the above references constitute prior art, however, summary judgment would not be warranted because there are genuine factual disputes with respect to the content of this prior art. For example, although Schutt contends that the Halstead patent and Bike embodiment lack only the raised central band limitation of the independent claims from which the asserted claims depend, Shewchenko has opined that they also fail to disclose any of the relevant vent opening limitations
Riddell has cross-moved for summary judgment of validity with respect to claim 6 of the '118 patent on the ground that Schutt has not presented evidence or argument to support its contention that claim 6 is invalid beyond the unsupported
Lukas Decl., Ex. 68. Because this is Riddell's motion, the evidence must be viewed in the light most favorable to Schutt. Additionally, as previously explained, there are disputed issues of material fact regarding the content of much of the prior art relied upon by Schutt for its section 103 invalidity arguments.
Schutt has also moved for summary judgment that Riddell is not entitled to lost profits because it cannot prove the absence of acceptable non-infringing substitutes for its helmets and because Schutt could have quickly and easily designed a non-infringing substitute that would have captured much of the market share occupied by the allegedly infringing helmets.
To recover lost profits in a patent infringement case, "the patentee bears the burden of proof to show a reasonable probability that, but for infringement, it would have made the sales that were made by the infringer." Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1380 (Fed. Cir. 2017) (internal quotation marks and citation omitted). This but-for causation may be proven using what is known as the Panduit test. Id. Under the Panduit test, the patentee must show the following: "(1) demand for the patented product; (2) an absence of acceptable, noninfringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit that would have been made." Id. (citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)). Summary judgment is appropriate if the patentee relies on the Panduit test but cannot establish one of its elements. See, e.g., Kearns v. Chrysler Corp., 32 F.3d 1541, 1551-52 (Fed. Cir. 1994).
Schutt first argues that Riddell cannot establish entitlement to lost profits because a number of non-infringing football helmets that would have been acceptable to consumers in terms of both price and performance were available during the relevant accounting period. As Riddell points out, however, the Panduit test is not the only method by which a patentee may show a reasonable probability that it would have made the sales made by the infringer but for that infringement. See, e.g., Micro Chem., Inc. v. Lextron, Inc., 318 F.3d 1119, 1122 (Fed. Cir. 2003) ("A patentee may resort to any method showing, with reasonable probability, entitlement to lost profits `but for' the infringement."). Under the market share approach, a patentee "may satisfy the second Panduit element by substituting proof of its market share for proof of the absence of acceptable substitutes." BIC Leisure Prod., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1219 (Fed. Cir. 1993). "This market share approach allows a patentee to recover lost profits, despite the presence of acceptable, noninfringing substitutes, because it nevertheless can prove with reasonable probability sales it would have made `but for' the infringement." Id. (emphasis added).
Riddell asserts that the presence of non-infringing alternatives does not preclude entitlement to lost profits because it seeks lost profits only for the sales it would have made but for Schutt's alleged infringement "based on its established (and undisputed) market share in the Varsity segment" of the market. Pl.'s Mem. at 46. After eliminating Schutt's infringing sales, Riddell's damages expert, John C. Jarosz, calculated that Riddell would be expected to have an 81.4% share of the Varsity market. This calculation "allows for the fact that Schutt
Posner Rebuttal Report ¶ 120. Schutt's damages expert, Michael K. Milani, has opined that Schutt could have fully commercialized this "Hypothetical Design Around" helmet within 75 days. Def.'s Mem. at 44; see also Lukas Decl., Ex. 88 at 74. Schutt contends that consumers would have bought a disproportionately higher amount of this helmet relative to Schutt's market share because it is "virtually identical" to the infringing helmets that were actually sold. Def.'s Reply at 16. In support of this argument, Schutt cites Fuji Photo Film Co. v. Jazz Photo Corp., 249 F.Supp.2d 434 (D.N.J. 2003), in which the district court held that a patentee was not entitled to lost profits based on proof of its own market share because the alleged infringer "could have sold a non-infringing alternative" that looked just like the products it actually sold during the accounting period. Id. at 455. As the district court explained, in light of this outwardly identical alternative, it was not likely that the alleged infringer "would have surrendered its entire share of the disposable camera market." Id.
There is no doubt that "a fair and accurate reconstruction of the `but for' market ... must take into account, where relevant, alternative actions the infringer foreseeably would have undertaken had he
Schutt's expert asserts that the hypothetical redesign would have been an available, acceptable substitute because it "is not likely to be appreciably different from the existing Vengeance helmet shell in terms of fit, impact resistance, rigidity, durability, and/or the appearance of comfort or heat management." Posner Rebuttal Report ¶ 121. But although Posner explains that the front region of the helmet — which is one of the most commonly impacted regions — will maintain its structural rigidity because the front set of vent openings are left outside the saw-tooth offset feature, he does not go on to specifically explain why the placement of the remaining vents inside the saw-tooth offset feature would not affect the structural rigidity of other portions of the helmet. See id. ¶ 122. And as Riddell points out, Schutt has provided no evidence that the hypothetical redesign has ever been produced or actually tested for safety or anything else. Moreover, Riddell's expert, Shewchenko, has opined that "[t]he inclusion of vent openings within the raised central band, as shown in [Schutt's] hypothetical design ... would create areas of less structural rigidity, which could affect the durability and impact protection of the helmet if no other changes were made." Lukas Decl., Ex. 94 ¶ 8.
Because this is Schutt's motion for summary judgment, the Court must construe the facts and draw all reasonable inferences in favor of Riddell. In the absence of any testing to refute Shewchenko's opinion that the inclusion of the vent openings within the saw-tooth offset feature could affect the safety of the helmet, the Court concludes that the parties' conflicting expert testimony creates a genuine issue of material fact regarding the acceptability and availability of Schutt's hypothetical redesign, which in turn, affects any determination regarding the propriety of Riddell's use of the market share approach. See Fuji Photo Film Co., 249 F.Supp.2d at 455. The Court therefore denies Schutt's motion for summary judgment on the issue of lost profits.
For the foregoing reasons, the Court grants summary judgment of non-infringement on claims 11 and 50 of the '818 patent with respect to three specific models of the accused helmets (the Adult Vengeance Z10, Youth Vengeance A3, and the Youth Vengeance Hybrid) and grants summary judgment of infringement on claims 1, 2, 5, 6, 40, and 58 of the '818 patent with respect to all accused helmets and on claims 11 and 50 of the '818 patent with respect to all accused helmets except for the Adult Vengeance Z10, Youth Vengeance A3, and the Youth Vengeance Hybrid models. The Court denies the rest of Schutt's motion for summary judgment [dkt. no. 174] and Riddell's cross-motion for summary judgment [dkt. no. 208]. The case is set for an in-person status hearing on August 3, 2018 at 8:45 a.m. for the
