The opinion of the court was delivered by: Judge Rebecca R. Pallmeyer
MEMORANDUM OPINION AND ORDER
Thomas Serewicz and Sam Gallucci invented and patented a baseball chest protector that incorporates shoulder guards to protect the top and back areas of a catcher's shoulders from deflected baseballs. Plaintiff Everything Baseball Limited, LLC ("EBL"), the assignee of the patent, U.S. Patent No. 6,161,226 (the "'226 Patent"), charges Defendant Team Athletic Goods, Inc. ("TAG"), a major supplier of baseball chest protectors, with selling chest protectors that infringe the '226 Patent. The parties have submitted Markman briefs, presenting their respective interpretations of claim language in the single claim of the '226 Patent. Following is the court's construction of that claim.
A. Conception of the Invention
Chest protectors are used by baseball catchers to protect their bodies from being struck by "foul tips" and otherwise deflected baseballs.*fn2 In August 1999, Serewicz, a Little League coach in Wasco, Illinois, noticed that the chest protector worn by his catcher did not fully protect the shoulder area. (Serewicz Aff. ¶ 4, Ex. C to Pl.'s Br.) Specifically, balls deflected from the bat or off of the catcher's helmet struck the top and rear portions of the catcher's shoulders, which were left exposed by the chest protector, causing severe pain and bruising. (Id.; Serewicz Dep., Ex. 5 to Def.'s Br., at 11-12.) Collaborating with Gallucci, a longtime baseball instructor and coach who had started the Wasco Little League in 1987, Serewicz conceived of a chest protector that incorporated shoulder guards that curved over the catcher's shoulder.*fn3 (Serewicz Aff. ¶¶ 3-5.) Serewicz built a prototype, using plastic shoulder guards he cut from a piece of used hockey equipment and attached to an existing chest protector with rivets. (Serewicz Dep., at 18.) Serewicz and Gallucci filed an application for a patent on their invention on September 15, 1999, ('226 Patent, Ex. A to Pl.'s Br.), and in July 2000 executed an assignment of their patent rights to Plaintiff EBL, an Illinois limited liability company that Serewicz and Gallucci had formed shortly before.*fn4 See Order of August 16, 2007, Dkt. No. 76. The '226 Patent issued on December 19, 2000. ('226 Patent.)
B. The Claim and Specification of the '226 Patent
The '226 Patent, titled "Baseball Chest Protector," sets forth a single claim:
1. A baseball chest protector comprising:
a flexible main pad having a left shoulder portion, a right shoulder portion, a chest portion, and an abdomen portion; a flexible shoulder guard extending from the left shoulder portion of the main pad over the shoulder of a wearer and having a front portion adjacent the main pad, a top portion, and a back portion; and adjustable straps, each adjustable strap attached at one end to the abdomen portion of the main pad and at the other end to the back portion of the shoulder guard. ('226 Patent, col. 4, ll. 2-12.)
In the patent's written specification, the inventors provided a background and a summary of their invention, identifying problems with existing chest protectors and the ways in which their invention addressed those problems; five drawings, portraying an embodiment of the chest protector from different perspectives; and a detailed description of the preferred embodiment of the invention, with references to the drawings. In the background section, Serewicz and Gallucci explained that existing, "conventional" chest protectors were designed to protect the front of the catcher's upper body without restricting mobility. (Id. col. 1, ll. 9-11.) In addition, the protectors then in use utilized adjustable straps, arranged on the back of the protectors, to enable the protector to be worn by different individuals. (Id. col. 1, ll. 12-14.) This design resulted in two problems that the inventors sought to solve. First, when the protector was "properly fitted," only the front portion of the shoulder area was protected; the top of the shoulder was unprotected, resulting in catchers frequently being struck on the top of the shoulder by stray balls. (Id. col. 1, ll. 15-20.) Second, if the protector was not properly adjusted, it might "sag" and thus expose an even greater portion of the shoulder area. (Id. col. 1, ll. 20-22.)
The inventors claimed that their chest protector addressed these disadvantages by incorporating "shoulder guards." (Id. col. 1, ll. 26-27.) Summarizing the invention, they explained that the shoulder guards "are of lightweight material, such as the material used for other portions of the chest protector, and they may be integrally formed with the chest protector, or they may be separately manufactured and attached to the chest protector." (Id. col. 1, ll. 30-35.) The shoulder guards "should extend just slightly outward of the wearer's shoulder," so the shoulder would be protected but the catcher's mobility not impaired. (Id. col. 1, ll. 34-37.) In addition, the inventors stated that their chest protector "should rest on the wearer's shoulders, ensuring that the protector is properly positioned even when the straps are not perfectly adjusted." (Id. col. 1, 38-41.)
In their description of the preferred embodiment and the drawings referenced therein, the inventors provided a more detailed example of their invention. The "main pad" would be similar to that of existing chest protectors in the materials used for its construction, and in the fact that it would have a "shoulder portion" on each side; in the drawings, each "shoulder portion" of the main pad extends up the front part of the wearer's shoulder and only slightly curves over the top part of the shoulder. (Id. col. 2, ll. 13-15 & fig. 2.) The shoulder guards-not to be confused with the "shoulder portions" of the main pad-curve over each of the wearer's shoulders, and may either be "integrally formed as part of the main pad" or may consist of separate pieces attached with "suitable fastening means such as rivets or snaps" to the shoulder portions of the main pad. (Id. col. 2, ll. 45-49 & fig. 4.) The preferred embodiment contains the following description of the shoulder guards, which is at the heart of the parties' dispute over the proper interpretation of several key claim terms:
The shoulder guards should be relatively rigid so that they maintain a "U" or "J" shape . . . but they should remain flexible enough to be comfortable to wear. The guards are, therefore, preferably made of plastic or any other material that is sufficiently rigid to maintain a "U" or "J" shape but that is flexible enough for comfort. (Id. col. 2, ll. 31-38.) In addition, the "front portion" of the shoulder guards in the preferred embodiment extends from the top of the shoulder portion of the main pad to the top of the wearer's shoulder; the "top portion" of the shoulder guards "curv[es] over the wearer's shoulder"; and the "back portion" extends "down a portion of the wearer's back such that the shoulder is covered." (Id. col. 2. ll. 38-43.) Finally, the inventors stated that the "adjustable straps" in the preferred embodiment "may be made of leather or other suitable material." (Id. col. 3, ll. 1-2.)
The Patent and Trademark Office ("PTO") rejected Serewicz's and Gallucci's application once before issuing the patent. On February 29, 2000, the Examiner rejected Claim 1 (the only claim) of the '226 invention as anticipated or rendered obvious by the "Siemens" patent, U.S. Patent No. 5,204,993. (Detailed Action, Ex. 10 to Def.'s Br.) The Siemens patent disclosed a rigid chest protector, for use by hockey goalies, that included shoulder coverings.*fn5 ('993 Patent, Ex. 9 to Def.'s Br.) In response, Serewicz and Gallucci amended Claim 1 to add the adjective "flexible" to modify the claimed main pad and shoulder guards. (Amendment, Ex. 11 to Def.'s Br.) In their argument to the Examiner, the inventors noted that while Siemens disclosed a "hockey goalie protector comprised of a rigid frame," their chest protector "is generally made of the same materials as conventional chest protectors and should be flexible enough for comfort." (Id.) Similarly, each shoulder guard "may be made of a different material but it too should be flexible for comfort." (Id.) In addition, the inventors argued that it would not have been obvious to modify the Siemens protector because hockey goalies generally remain standing and wear their protective gear for most of the game, whereas baseball catchers crouch and must be able to quickly and easily take the chest protector on and off several times per game in order to bat. (Id.) The PTO subsequently issued the claim as amended.
D. TAG's 100 Series and 200 Series Chest Protectors
Defendant TAG manufactures athletic equipment, including baseball chest protectors, and sells the products to dealers in North America, who turn sell to end users such as high schools. (Answer ¶ 14; Steele Dep., Ex. B to Pl.'s Br., at 11-22.) Trevor Swangard is TAG's president and part owner of the company. (Swangard Dep., at 12-16.) In August 1999, Serewicz and Gallucci showed the prototype of their chest protector to the dealer from whom they bought most of their Little League equipment; the dealer in turn contacted Swangard. (Serewicz Dep., at 22-23; Gallucci Dep., Ex. 7 to Def.'s Br., at 84-87.) At some point thereafter-Swangard recalls that it was sometime in 2000*fn6 -Swangard met with the inventors and viewed the prototype. (Swangard Dep., at 116-17.) TAG then manufactured three more prototypes, designed for children of different ages and sizes, for Serewicz and Gallucci to test in the Wasco little league. (Serewicz Aff. ¶ 8.)
At this time and for many years prior, TAG was selling its "100 Series" chest protectors, which, according to Plaintiff, were representative of the "conventional" chest protectors whose disadvantages the inventors noted in the '226 Patent. (Pl.'s Br., at 2; Pl.'s Reply, at 10.) TAG disagrees with that characterization, and asserts that the 100 Series chest protectors "contain[ed] portions that extended over the shoulder" and that model TBP-116 in particular "includ[ed] shoulder guards" and "protect[ed] the front, top, and back of the catcher's shoulder." (Def.'s Br., at 8 & n.4.) Although this argument is more properly directed to issues of validity that the court need not reach for purposes of claim construction, the court notes that TAG's cited evidence does not appear to support its assertions. Swangard testified in his deposition that the TBP-116 "went over the shoulder," not that it had "shoulder guards," (Swangard Dep., at 102); and in photographs of the TBP-116 submitted by TAG, in which the chest protector is worn by a ten-year-old girl, the top area of her shoulders is covered only because the protector-which appears far too large for the girl's size-has been adjusted so that the shoulder portions of the main pad, which would ordinarily cover only the front of the shoulder, have been drawn up and over her shoulders. (Ex. 13 to Def.'s Br.)
In any event, because "early returns on [Serewicz's and Gallucci's chest protector] seemed to be positive," (Swangard Dep., at 171), TAG on July 14, 2000 entered into a license agreement EBL in which TAG agreed to pay a royalty for each chest protector, made and sold by TAG, that was covered by the subject matter claimed by the then-pending '226 Patent application. (Licence Agreement, Ex. G to Pl.'s Br.) TAG referred to these chest protectors in the agreements as the "Saddle Shoulder" model. (Id.) Swangard explained that he coined the name because the shoulder guards "would sit on the shoulder, much like a saddle would sit on a horse." (Swangard Dep., at 77-78.) On October 3, 2001, after the '226 Patent issued, TAG signed an exclusive license agreement to sell "Saddle Shoulder" chest protectors. (License Agreement, Ex. H to Pl.'s Br.) TAG sold these chest protectors as the "200 Series," and marked each chest protector with the '226 Patent number. (Swangard Dep., at 175.) Until 2004, TAG paid the agreed royalty and submitted royalty reports for sales of the 200 Series chest protector. (Id. at 86.)
Photos of the 200 Series chest protector display a chest protector in which the "shoulder guards" extend up from the main pad and curve over the shoulder, and slightly down over the back of the shoulder, where short vertical straps are attached to each end and to a triangular-shaped leather piece. (Ex. I to Pl.'s Br.) Other straps connect the leather piece to the sides of the main pad. (Id.) When the chest protector is viewed from the side, held up (not worn), the shoulder guards form an inverted "U" shape. The photographs do not reveal from what material the shoulder guards are made. TAG asserts that the shoulder guards contained a "preformed plastic U- or J-shaped insert," (Def.'s Br., at 10), but Swangard, to whose deposition testimony TAG cites, states only that the shoulder guard was "preformed," (Swangard Dep., at 78), and that his opinion of the '226 Patent in general was that it disclosed only a "fiber insert J- or U-shaped shoulder." (Id. at 127.)
E. Mizuno's "Tsunami" Chest Protector
Mizuno USA, Inc., a sporting goods company, sells high-end chest protectors. (Swangard Dep., at 66.) In October 2001, Swangard learned that Mizuno planned to sell a new chest protector, the "Tsunami," for the upcoming 2002 baseball season. (Id. at 176-80.) Swangard advised Mizuno that the Tsunami, which incorporated shoulder protectors, was covered by the '226 Patent. (Letter from Swangard to Gallucci and Serewicz of December 18, 2001, Ex. M to Pl's Br.) Mizuno requested a sublicense from TAG so that Javy Lopez,*fn7 a catcher with the Atlanta Braves, could wear the Tsunami during the 2002 season. (Id.) On January 1, 2002, TAG and Mizuno entered into a sublicense agreement in which Mizuno agreed to pay TAG a royalty for chest protectors covered by the '226 Patent, and to mark such products with the '226 Patent number. (Sublicense Agreement, Ex. N to Pl.'s Br., at 2.) Over the next two years, Mizuno paid royalties to TAG, which in turn paid royalties to EBL. (Ex. O to Pl.'s Br.)
Photos of the Tsunami portray a chest protector in which the shoulder guards, like those on TAG's 200 Series, extend up and over the shoulder and slightly down over the back of the shoulder. In a rear view, vertical straps attached to each end of the back of the shoulder guards form a "Y"; other straps run from the bottom of the "Y" to the sides of the main pad. (Ex. P to Pl.'s Br.) Viewed from the side, the shoulder guards maintain a "J" shape when not worn. (Id.) The shoulder guards appear to be made from the same material as the main pad, and there is no indication-and TAG does not assert-that the shoulder guards contain a plastic piece.
F. TAG's Allegedly Infringing Chest Protectors
With the licensing agreement between TAG and EBL set to expire on October 3, 2004, Swangard sent a letter to Gallucci on September 29, 2004, informing him that TAG would not renew the agreement because TAG "d[id] not expect additional sales of [the] TAG 'Saddle Shoulder' product for the year 2005." (Letter from Swangard to Gallucci of September 29, 2004, Ex. R to Pl.'s Br.) The letter also advised Gallucci that Mizuno had declined to renew the sublicense agreement, expiring on October 1, 2004. (Id.) TAG subsequently discontinued the 200 Series of chest protectors and began selling the 300 Series, which it listed in its catalog as the "Pro Shoulder" model.*fn8 (TAG 2005-06 Catalog, Ex. S to Pl.'s BR., at 1.) The record does not reveal whether Mizuno similarly discontinued the Tsunami and introduced a new model.
TAG, citing to Swangard's deposition, asserts that the 300 Series protectors, unlike the 200 Series, contain no "plastic piece" or "fiber insert" but are made from "memory foam." (Def.'s Br., at 10 n.6.) Because of this construction, according to TAG, the 300 Series chest protectors "do not maintain a U or J shape." (Id.) Some of TAG's photographs indeed support this assertion, as the chest protector is pictured lying on a table with the shoulder guards "spread out" so that the entire device lies flat. (Ex. 17 to ...