United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY, District Judge
Inc. has sued Kranos Corporation, doing business and referred
to here as Schutt Sports, alleging that Schutt is infringing
three of Riddell's patents for football helmets. One of
these patents-U.S. Patent No. 8, 939, 818 (the '818
patent)-claims a priority date based on a provisional
application filed almost eleven years earlier. Schutt has
filed two motions for partial summary judgment on some of
Riddell's infringement claims based on the '818
patent. In the first, Schutt argues that those claims are not
entitled to the filing date of the provisional application.
In the second, Schutt argues that those claims are
anticipated by prior art and therefore invalid. For the
reasons stated below, the Court denies Schutt's motions.
manufactures and sells football equipment including helmets.
It owns the '818 patent, which is titled "Sports
Helmet" and discloses a protective sports helmet
designed to have increased strength and rigidity without
additional weight. The application that led to issuance of
the '818 patent was filed with the Patent and Trademark
Office (PTO) in March 2013 as a continuation of another
patent owned by Riddell, the '118 patent. Def.'s
Statement of Material Facts in Supp. of Its Mots. for Partial
Summ. J. (Def.'s SOMF), Ex. 1 at SCHUTT009845-46. The
application claimed entitlement to the filing date of a
provisional application that was filed with the PTO on May 1,
2002. Id. The PTO granted the application for the
'818 patent in January 2015.
also manufactures and sells sports helmets. Riddell has filed
suit against Schutt, alleging that its products infringe the
'818 patent.1 Specifically, Riddell claims that
Schutt's line of Vengeance football helmets infringe
claims 1-3, 5-6, 8-12, 40-42, 49-50, 53, 56-58, 60-61, and 65
of the '818 patent. Schutt has filed two motions for
summary judgment on Riddell's claims of infringement
based on a subset of these claims. These motions center on
what the parties refer to as the offset band limitation.
limitation is disclosed in claims 1-3, 5-6, 8-12, 40, and
60-61 (referred to by the parties as the asserted offset band
claims). The disclosure in claim 1 is illustrative of the
A football helmet comprising . . .
an offset band extending around the rear region and above the
lower edge surface, the offset band including
an offset band wall having an inner band surface offset from
the inner shell wall surface, and an outer band surface
offset from the outer shell wall surface, and
a pair of angled transition walls, extending between the
offset band wall and the rear region.
Id. at SCHUTT009866-67, 14:49-15:2. Schutt argues in
its first motion for partial summary judgment that the offset
band limitations are not disclosed in the provisional 1
Riddell also brings claims against Schutt based on the
'118 patent. None of those claims are at issue in
Schutt's motions for partial summary judgment.
application and therefore Riddell cannot claim the date of
the provisional application as the effective date for the
asserted offset band claims. Schutt contends that the
appropriate priority date is the date of the '818
application: March 15, 2013. In its second motion for partial
summary judgment, Schutt argues that Riddell was selling
helmets that met all the limitations of the asserted offset
band claims prior to March 15, 2013 and therefore the claims
are invalid as anticipated. Thus Schutt asks the Court to
grant summary judgment in its favor on Riddell's claims
of infringement based on the asserted offset band claims.
Both parties agree that the Court cannot grant summary
judgment based on invalidity if it denies summary judgment on
the question of the priority date. See Pl. Riddell,
Inc.'s Opp'n to Def.'s Mots. for Partial Summ. J.
(Pl.'s Opp'n) at 15; Def.'s Consolidated Reply in
Supp. of Its Mots. for Partial Summ. J. (Def.'s Reply) at
response, Riddell contends that the provisional application
does disclose these limitations and therefore the effective
filing date of the asserted offset band claims is May 1,
2002, before Riddell put the helmets up for sale. Riddell
argues that figures 19 and 20 in the provisional application,
reproduced below, disclose the offset band limitation.
See Pl.'s Opp'n at 1.