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Total Control Sports, Inc. v. Precision Impact

United States District Court, N.D. Illinois, Eastern Division

December 2, 2019

TOTAL CONTROL SPORTS, INC., Plaintiff,
v.
PRECISION IMPACT, Defendant.

          MEMORANDUM OPINION AND ORDER

          MARY M. ROWLAND, UNITED STATES DISTRICT JUDGE.

         This case is before the Court on claim construction. The parties dispute two claim terms found in both U.S. Patent No. 8, 702, 542 (“the ‘542 patent”) and U.S. Patent No. 9, 186, 564 (“the '564 patent”). Defendant Precision Impact also argues that multiple terms within the ‘564 patent's claims do not meet the definiteness requirements of 35 U.S.C. § 112 (2018). The Court's construction of claim terms and rulings on indefiniteness are set forth in this opinion.[1]

         Background & Procedural History

         A. Total Control Sports and Precision Impact

         Plaintiff Total Control Sports, Inc. (TCS) is an Illinois corporation that develops sports equipment and training methods used to train athletes. First Amended Complaint [25], ¶¶2, 9. TCS owns both the ‘542 patent and the ‘564 patent, which are directed towards a weighted ball and a method for training a hitter, respectively. Id., ¶10. Defendant Precision Impact (Precision) is a Canadian business that has sold its “Soft Slugs” (Slugs) product in the Northern District of Illinois. Answer to First Amended Complaint [28], ¶3-4.

         TCS first filed this suit on December 27, 2017 [1] and then amended its complaint on March 30, 2018 [25] in response to Precision's Motion to Dismiss [20]. In the amended complaint, TCS alleged infringement of the ‘542 patent (Count I) and infringement of the ‘564 patent (Count II). TCS alleges that when Precision manufactured, used, sold, provided, and/or offered to sell its Slugs, it directly infringed claim 1 of the ‘542 patent. Id., ¶24. TCS further alleges that Precision induced its customers, distributors, and end users to infringe through the aforementioned actions. Id., ¶25-26. Similarly, TCS alleges that Precision both directly infringed and induced infringement of claim 1 of the ‘564 patent through its products and services. Id., ¶35-36.

         B. The ‘542 Patent and its Prosecution History

         The ‘542 patent describes a “weighted ball designed to be hit or struck.” U.S. Patent No. 8, 702, 452, Abstract. The weighted ball is comprised of a hollow inner chamber and an outer shell. Id. The outer shell is described as “resilient, flexible, [and] nonburstable.” Id. Through a filler hole, the inner chamber can be filled with a “weighted filler material.” Id. The ‘542 patent recites 16 claims and the terms at issue appear in independent claims 1 and 10.

         Before being issued on April 22, 2014, the ‘542 patent went through multiple rejections. See, e.g., Joint Appendix [44], pp. 78, 117. The examiner, however, did not raise § 112 indefiniteness objections to the claims at issue. See Id. The only § 112 rejection that the examiner raised related to the terms describing the hole plug sealant structure. Id., p. 118. The claim terms currently at issue have not changed since the original submission. Id., p. 205.

         C. The ‘564 Patent Overview and Prosecution History

         The ‘564 patent describes a method of training a hitter using a weighted ball. U.S. Patent No. 9, 186, 564, Abstract. Depending on whether the ball “donuts” and which position it travels in, the hitter can determine if she hit the ball correctly. Id. The ‘564 patent recites three claims. All of the allegedly indefinite terms appear in independent claim 1.

         Like the ‘542 patent, the ‘564 patent went through multiple rounds of rejection by the patent office. See, e.g., Joint Appendix [44], pp. 307, 354. The patent office rejections were limited to either § 102 novelty rejections or § 103 obviousness rejections. See Id. Therefore, they provide limited guidance for the claims currently at issue in this case.

         D. The Parties' Proposed Claim Constructions

         1. Precision Impact's Proposed Claim Construction

         The first disputed term is “nonburstable.” The term appears in claim 1 of the ‘542 and ‘564 patents. In context, it appears as follows:

A weighted ball for hitting comprising:
a resilient, flexible, nonburstable shell;

U.S. Patent No. 8, 702, 542, col. 9, lines 9-10. Precision argues that a “nonburstable” shell is one that cannot be broken open from impact. Precision's Opening Brief [48], p. 8. For intrinsic support, Precision relies on language from the specification that discusses “[h]aving a ball that does not break, ” the importance of “non-breakability, ” and a ball that can withstand “repeated striking and hitting . . . without . . . bursting apart.” Id., pp. 8-9. For extrinsic support, Precision relies on the definitions of “non” and “burst” stated in the dictionary. Id., p. 9. Accordingly, Precision argues, the dictionary defines “nonburstable” as “not being capable of being broken open or apart.” Id.

         The second disputed term is “said [or ‘an'] inside air pressure equals an outside air pressure.” The term appears in claims 1 and 10 of the ‘542 patent and claim 1 of the ‘564 patent. Demonstrating the terms usage, claim 1 of the ‘542 patent provides:

air inside said hollow inner chamber that displaces the remaining space inside said hollow inner chamber such that an inside air pressure equals an outside air pressure;

‘542 Patent, col. 9, lines 15-17. Precision argues that this term should have its plain and ordinary meaning, which is that the air pressure inside the weighted ball is the same as the air pressure outside the weighted ball. (Dkt. 48 Precision's Br. at p. 10). For support, Precision relies on language in the specification that describes adjusting the air inside the weighted ball until the “outside air pressure and the internal air pressure are equal.” Id.

         Thus, Precision proposes the following constructions:

Claim Term

Precision Proposed Construction

“nonburstable”

Not capable of being broken open, apart, or into pieces usually, for example, from impact or from pressure within.

“said [or ‘an'] inside air pressure equals an outside air pressure”

Plain and ordinary meaning.

(Dkt. 53, Joint Claim Construction Chart at p. 3).

         2. Total Control Sports' Proposed Claim Construction

         Regarding the first term, TCS argues that this Court should construe the term to mean that “the outer shell can withstand ordinary contact from a baseball or softball bat without bursting.” (Dkt. 50, TCS Resp. Br. at p. 16). In support, TCS points to language in the specification that describes an outer shell material that “is strong enough to withstand multiple batting strikes.” Id. TCS further contends that in light of the specification, the patentee did not intend to claim a ball that would not burst under any circumstances. Id.

         TCS argues that this Court should construe the second term to mean that the internal and external air pressures cannot differ such that the weighted ball cannot return to its “normal size when at rest.” Id., p. 17. TCS, again, points to language from the specification to support its proposed construction. The specification discusses slight ambient or negative air pressures that allow the weighted ball to keep its shape “without deforming at rest.” Id. According to TCS, this expressly confirms that the “inside and outside air pressures can be slightly different . . . .” Id. Thus, TCS proposes the following claim constructions:

Claim Term

TCS Proposed Construction

“nonburstable”

The outer shell can withstand ordinary contact from a baseball or softball bat without bursting.

“said [or ‘an'] inside air pressure equals an outside air pressure”

The inside and outside air pressures on the weighted ball are equal or vary no more than an amount that will allow the weighted ball to return to its normal size when at rest.

(Dkt. 53, Joint Claim Construction Chart at p. 3).

         D. The Parties' Contentions

         Precision asserts that six terms, all of which describe how the ball will travel, in claim 1 of the ‘564 patent are indefinite because they do not provide “reasonably certain boundar[ies] for the claim.” (Dkt. 48 at p. 3). The challenged terms and parties' contentions for each are summarized below.

         1. “said weighted ball traveling a limited distance ...


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