Wilson Sporting Goods V Rawlings Sporting Goods
Wilson Sporting Goods V Rawlings Sporting Goods
Wilson Sporting Goods V Rawlings Sporting Goods
)
)
)
)
)
)
)
)
)
)
)
)
Plaintiff,
v.
headquarters and principal place of business at 510 Maryville University Dr., Suite 110, St.
Louis, Missouri. Rawlings does business in, inter alia, the State of Illinois and the County of
Cook.
JURISDICTION AND VENUE
3.
This action arises under the Patent Laws of the United States, 35 U.S.C. 271,
4.
Jurisdiction over this action is founded upon 28 U.S.C. 1331, 1332 and 1338.
5.
Venue is proper under 28 U.S.C. 1391 (a) and (b) and 28 U.S.C. 1400(b).
Defendant has sold infringing products in this District and routinely conducts business within
this District.
GENERAL ALLEGATIONS
6.
On June 11, 2013, United States Patent No. 8,460,135 (hereinafter the 135
Patent), was duly and legally issued for a Game Ball Cover with Improved Stripes and/or
Logos. A true and correct copy of the 135 Patent is attached hereto as Exhibit 1.
7.
Wilson is the owner by assignment of the 135 Patent and has the right to bring
One of the named inventors of the 135 Patent, Douglas G. Guenther, was an
In his capacity as a named inventor and during the application process for the
135 Patent, Mr. Guenther made declarations regarding the patentability of the invention
disclosure of the 135 Patent.
10.
Mr. Guenther was also an employee of Wilson when the invention of the 135
Patent was placed into practice by Wilson in one of Wilsons most successful footballs, the
GST model.
11.
12.
The white stripes of the Wilson GST football are formed of a more grippable
14.
At the time Mr. Guenther commenced his employment at Rawlings, Rawlings did
not sell a football with highly grippable stripes as claimed in the 135 Patent.
15.
began selling its model R-2 football in the United States, with stripes formed of more grippable
material than the rest of the football as claimed in the 135 Patent.
16.
The Rawlings R-2 football competes directly for sales with the Wilson GST
football.
17.
Rawlings made its R-2 football to look like the Wilson GST football, with the
highly grippable, stitched white stripes, in order to compete with Wilsons GST football:
18.
On December 9, 2014, United States Patent No. 8,905,876 (hereinafter the 876
Patent), was duly and legally issued for a game ball with improved stripes. A true and correct
copy of the 876 Patent is attached hereto as Exhibit 2.
19.
Wilson is the owner by assignment of the 876 Patent and has the right to bring
In his capacity as a named inventor and during the application process for the
876 Patent, Mr. Guenther made declarations regarding the patentability of the invention
disclosure of the 876 Patent.
21.
began selling its model R-2 football in the United States, with stripes formed of more grippable
material than the rest of the football as claimed in the 876 Patent.
FIRST CLAIM
22.
Rawlings has itself, or through its agents, infringed the 135 Patent literally and/or
under the doctrine of equivalents, by making, using, offering to sell and selling within the United
States and/or by importing into the United States footballs, marketed as the R2, which embody
and fall within the scope of the 135 Patent, and Rawlings will continue to so infringe unless
enjoined by this Court.
24.
commercial injury, entitling Wilson to lost profits and/or other relief under 35 U.S.C. 284.
25.
On information and belief, Rawlings had actual notice of the 135 Patent, and its
infringement is willful and deliberate. Rawlings knew about the 135 Patent and acted despite an
objectively high likelihood that its actions constituted infringement of a valid patent.
4
SECOND CLAIM
26.
Rawlings has itself, or through its agents, infringed the 876 Patent literally and/or
under the doctrine of equivalents, by making, using, offering to sell and selling within the United
States and/or by importing into the United States footballs, marketed as the R2 model, which
embody and fall within the scope of the 876 Patent, and Rawlings will continue to so infringe
unless enjoined by this Court.
28.
commercial injury, entitling Wilson to lost profits and/or other relief under 35 U.S.C. 284.
29.
On information and belief, Rawlings had actual notice of the 876 Patent, and
their infringement is willful and deliberate. Rawlings knew about the 876 Patent and acted
despite an objectively high likelihood that its actions constituted infringement of a valid patent.
WHEREFORE, Plaintiff Wilson Sporting Goods Co. prays for:
A.
D.
E.
An award of Wilsons costs, prejudgment interest, and attorneys fees and such
other and further relief as this Court deems just and appropriate.
JURY DEMAND
Plaintiff hereby demands a trial by the maximum number of jurors permitted by law.
/s/ Jeffery A. Key________________
Jeffery A. Key, Esq. (#6269206)
Attorney for Plaintiff Wilson Sporting Goods Co.
EXHIBIT 1
c12)
(10)
Guenther et al.
(45)
Patent No.:
US 8,460,135 B2
Date of Patent:
*Jun. 11, 2013
(56)
(54)
(75)
(73)
( *)
Notice:
References Cited
(21)
(22)
Filed:
(65)
US 2008/0287230 AI
(63)
(51)
(52)
(58)
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
*
*
*
*
*
*
*
*
*
*
*
3/1924
10/1924
10/1933
8/1935
12/1939
7/1943
9/1948
1111975
4/1976
5/1985
4/1989
9/1989
9/1989
5/1990
3/1992
7/1992
7/1992
2/1993
3/1993
7/1993
5/1994
5/1994
111995
9/1995
1111996
1111996
(Continued)
Primary Examiner- Steven Wong
(74) Attorney, Agent, or Firm- Terence P. O'Brien
(57)
ABSTRACT
least one thin member. The cover has inner and outer surfaces.
The inner surface of the cover is coupled to the carcass. At
least one recess is formed into the outer surface of the cover.
At least one thin member is coupled to the cover at the at least
one recess. The member substantially fills the recess. The
member has inner and outer portions. The outer portion is
formed of a highly gripable material.
27 Claims, 7 Drawing Sheets
10
28
26
473/605
473/604
473/597
473/597
473/596
473/604
473/599
6,520,877
6,634,970
D505,462
D505,463
7,028,407
7,029,407
8,168,026
* cited by examiner
U.S. Patent
US 8,460,135 B2
Sheet 1 of7
10
12
32
18
FIG.
U.S. Patent
Sheet 2 of7
US 8,460,135 B2
FIG.2
42
10
28
26
U.S. Patent
US 8,460,135 B2
Sheet 3 of7
10
FIG.3
46
18
/
52
50
14
42
18
FIG.6
18
FIG.7
56
U.S. Patent
US 8,460,135 B2
Sheet 4 of 7
FIG.4
54
18
24
44
FIG.5
18
~-
44
24
U.S. Patent
US 8,460,135 B2
Sheet 5 of7
FIG. a
10
118
57
/
52
50
14
U.S. Patent
US 8,460,135 B2
Sheet 6 of7
FIG.9
60
62
10
U.S. Patent
Sheet 7 of7
US 8,460,135 B2
FIG.10
100
60
20
20
25
30
35
40
45
50
55
60
65
0.2 to 2.0 millimeters. In a particularly preferred embodiment, the depth of the recesses 36, 38, 40 and 42 is within the
range of 0.5 to 1.0 millimeters. In yet another particularly
preferred embodiment, the recesses have a depth within the
range of0.65 to 0.8 millimeters.
The stripe recesses 36, 38, 40 and 42 can be positioned at
any position about the cover panels and can have any width or
length dimension. Preferably, the position, width and length
of the stripe recesses 36, 38, 40 and 42 are located and sized
in accordance with stripe requirements of a particular athletic
association requirement. For example, the NCAA requires
two 1-inch white stripes that are three to three and one-quarter
inches from the end of the ball and are located only on the two
cover panels adjacent to the laces. Therefore, the stripe
recesses can be positioned and sized to correspond with the
NCAA stripe requirements. Alternatively, the stripe
recesses can be positioned and sized to match the stripe
requirements of other organizations, such as state high school
athletic associations.
In alternative preferred embodiments, the stripe recesses
can be formed on any one or more of the cover panels 22, 24,
26 and 28. In another alternative embodiment, the stripe
recesses can be formed by milling, stripping or otherwise
removing material from the outer surface of the cover panel to
form the recess. In another alternative preferred embodiment,
the cover, including the cover panels, can be formed without
recesses.
Referring to FIG. 1, the bladder 14 is an inflatable air tube
preferably having a prolate spheroidal shape. The bladder 14
is inserted into the cover 12 through the slot 32. The bladder
14 includes a valve 37 that extends through the valve aperture
34 of the cover 12 for access by a user.
The lacing 16 is used to secure the first and second cover
panels 22 and 24 and to close the slot 32. The lacing 16 also
provides raised surfaces for a player to contact when passing,
catching or holding onto the footballlO.
Referring to FIG. 2, the stripe 18 is an elongate thin member sized and positioned to substantially fill one of the stripe
recesses 36, 38, 40 and 42. The stripes 18 are also preferably
positioned and sized to match the position and size of the
stripe recesses. In a particularly preferred embodiment, the
stripes 18 are sized to meet a specific association or organization requirements for stripes, such as, for example, the
NCAA and state high school associations. The stripes 18
are preferably formed with a thickness within the range of0.2
to 2.0 millimeters. In a particularly preferred embodiment,
the thickness of the stripes is within the range of 0.5 to 1.0
millimeters. In yet another particularly preferred embodiment, the thickness of the stripes 18 is within the range of0.65
to 0.8 millimeters. In another preferred embodiment, the
thickness of the stripe 18 can be selected to substantially fill
and slightly outwardly extend from cover panel. In another
alternative preferred embodiment, the stripe 18 is applied
directly to the outer surface of the cover or cover panel of the
football without a recess. In this embodiment, the stripe can
outwardly extend from the outer surface of the cover or cover
panel by a predetermined amount, such as, for example, 0.2 to
2.0mm.
Each stripe 18 is permanently (not removeably) attached to
one of the cover panels 22 and 24. Preferably, the stripe is
attached to one of the cover panels through adhesive bonding,
thermal bonding, chemical bonding, stitching, sewing, pressfitting, and combinations thereof. In a particularly preferred
embodiment, the stripe 18 is attached to the cover panel by
stitching, or sewing, and adhesive bonding. An adhesive is
applied to one or both of the inner surface of the stripe 18 and
the exposed surface of the stripe recess. The stripe 18 is
10
15
20
25
30
35
40
45
50
55
60
65
stitched or sewn at each end adjacent to the respective longitudinal seam 3 0. In one preferred embodiment, the stripe 18 is
laid over a portion of the cover panel and stitched to the cover
panel. In another alternative preferred embodiment, the cover
panel is formed of two or more sub-panels. One side edge of
the stripe is stitched to an edge of one of the sub-panels and
another side edge of the stripe is stitched to an edge of another
sub-panel. In this alternative preferred embodiment, the stripe
does not fully overlap the cover or cover panel, rather the
stripe serves as a portion of the cover panel. In this embodiment, stitching of the edges is preferred, but the stripe and
cover sub-panels can also be coupled through other conventional means, such as, for example, bonding, welting, adhesives, etc. In an alternative preferred embodiment, the stripe
18 can be applied to the stripe recess in a liquid state and then
allowed to cure.
In a preferred embodiment, the stripe 18 includes outer and
inner portions 44 and 46. The outer portion 44 is formed of a
compressible, resilient and tactile (as in tacky) material, preferably, a polyurethane. In alternative preferred embodiments,
the outer portion 44 can be formed of other materials, such as,
for example, a polyvinylchloride, a rubber, a leather, a synthetic leather, an elastomer and combinations thereof. The
stripe 18 is not formed of a hook and/or loop material, or a
loose sand-like material that is glued to the cover 12. The
outer portion 44 is preferably formed in a white color. Alternatively, the outer portion 44 can be formed in any other color
or color combination. In a preferred embodiment, the tactile
characteristics and the frictional interaction of the outer portion 44 of the stripe 18 with the hands of a user are greater than
or equal to the tactile characteristics and frictional interaction
of outer surface of the cover 12 or the cover panels 22, 24, 26
and 28 with the hands of a user. In one particularly preferred
embodiment, the outer portion 44 of the stripe 18 is formed of
a polyurethane or other highly grippable material and is used
on a ball1 0 having a leather, composite leather, or a synthetic
leather material with less tactility (or tackiness).
The inner portion 46 of the stripe 18 is a backing layer
configured to strengthen and facilitate attachment of the
stripe to the cover 12. The inner portion 46 is fixedly connected to the outer portion through bonding, impregnation, or
other conventional means. The inner portion 46 is preferably
formed of a strong, tear resistant material, such as, a woven or
unwoven fabric. The fabric of the inner portion 46 can be
impregnated with a polymer, such as a latex.
The outer portion 44 of the stripe 18 improves the overall
feel of the stripes and the ball, and increases the frictional
interaction between the stripe 18 and the hands of the player.
This increased frictional interaction enables the stripe 18 to
improve or increase the gripability or tactility of the football
10, thereby improving a player's ability to pass, catch, hold
on to, and otherwise control the ball 10, particularly in
inclement weather. The stripe 18 of the present invention
eliminates the smooth and slick outer surface of the stripe
present on many existing balls. The stripe 18 is also more
durable, more wear resistant and less susceptible to peeling
than conventional football stripes. The stripe 18 is configured
to withstand the stresses encountered during normal use without peeling or significantly wearing, and to improve the overall feel of the stripe 18 and the ball10totheuser.Additionally,
the stripe 18 of the present invention improves the feel and
playability of the ball without deviating from the traditional
look of a game ball or the football requirements of athletic
associations.
FIG. 3 illustrates the football 10 in greater detail. The
football10 is a multi-layered structure preferably including a
carcass 48 and the cover 12. In one preferred embodiment, the
10
15
20
25
30
35
40
45
50
55
60
65
15
20
25
30
35
40
45
50
55
60
65
10
TABLE 1
2
4
Avg.
Std.
Dev.
White
PU
Material
Brown
PU
Material
Genuine
Leather
Velcro
Hook
Material
Velcro
Loop
Material
Smooth
Plate of
Glass
3.57
4.22
4.43
3.95
3.95
4.02
0.32
3.20
3.43
3.28
3.35
4.13
3.48
0.37
0.39
0.36
0.40
0.40
0.39
0.39
0.02
0.14
0.12
0.12
0.13
0.12
0.13
0.01
0.19
0.18
0.18
0.17
0.18
0.18
0.00
0.15
0.16
0.16
0.16
0.17
0.16
0.01
10
15
20
25
30
35
40
45
50
55
60
65
12
cover and the hands of the user, wherein the at least first
and second stripes include first, second, third and fourth
stripes, and wherein the cover includes first second
third and fourth cover panels, and wherein t~o of th~
first, second, third and fourth stripes are connected to the
first cover panel, and wherein the remaining of the first,
second, third and fourth stripes are connected to the
second cover panel.
14. The football of claim 1, wherein the second material of
the at least one of the stripes is selected from a group consisting of a polyurethane, a polyvinylchloride, a rubber, a leather,
a synthetic leather, an elastomer and combinations thereof.
15. The football of claim 1, wherein the outer surface of the
at least one of the stripes includes an exposed surface having
a pebbled texture.
16. The football of claim 1, wherein the at least one of the
stripes has a thickness between the range of0.2 to 2.0 millimeters.
17. The football of claim 1, wherein the at least one of the
stripes has a thickness between the range of0.5 to 1.0 millimeters.
18. The football of claim 1, wherein the at least one of the
stripes is coupled to the cover in a method selected from the
group consisting of adhesively bonded, thermally bonded,
chemically bonded, stitched, sewn, and combinations
thereof.
19. A game ball configured for direct contact with a user's
hands, the game ball comprising:
a cover having an outer surface formed of a first material
and
'
at least two sheet-like flexible, non fully circumferential
and laterally extending members fixedly and non-removably attached to, and positioned over, the outer surface of the cover without forming a recess in the outer
surface of the cover, the at least two members outwardly
extending from the cover by at least 0.2 millimeters, the
at least two members having an outer surface formed of
a second material, the second material having a static
coefficient of friction that is greater than the static coefficient of friction of the first material when measured in
accordance with the standard test method for static coefficient of friction of ASTM D1894-01, the frictional
interaction between the outer surface of the at least one
member and the hands of the user being greater than the
frictional interaction between the outer surface of the
cover and the hands of the user, wherein the at least one
sheet-like member is at least first and second stripes,
wherein each of the at least first and second stripes
include at least one tapered edge.
20. A game ball configured for direct contact with a user's
hands, the game ball comprising:
a cover having an outer surface formed of a first material
and
'
at least two sheet-like flexible, non fully circumferential
and laterally extending members fixedly and non-removably attached to, and positioned over, the outer surface of the cover without forming a recess in the outer
surface of the cover, the at least two members outwardly
extending from the cover by at least 0.2 millimeters, the
10
15
20
25
30
35
40
45
50
55
* * * * *
EXHIBIT 2
c12)
(54)
(10)
Guenther et al.
(45)
(58)
(71)
(72)
(73)
( *)
Notice:
(22)
Filed:
1,487,658
1,559,117
1,931,429
2,011,760
2,182,053
2,194,674
2,325,128
Sep. 5, 2013
(63)
(51)
(2006.01)
(2006.01)
A63B 43/00
U.S. Cl.
CPC ............... A63B 41108 (2013.01); A63B 43/008
(2013.01); A63B 2243/0037 (2013.01); A63B
2243/007 (2013.01)
A63B 41108
(52)
3/1924
10/1924
10/1933
8/1935
12/1939
3/1940
7/1943
(Continued)
(57)
US 2013/0231206 Al
A
A
A
A
A
A
A
(65)
References Cited
(56)
(21)
Patent No.:
US 8,905,876 B2
Date of Patent:
*Dec. 9, 2014
ABSTRACT
10
28
26
References Cited
(56)
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
A
9/1948
1111975
4/1976
5/1985
4/1989
9/1989
9/1989
5/1990
3/1992
7/1992
7/1992
2/1993
3/1993
7/1993
5/1994
5/1994
5,383,660
5,451,046
5,570,882
5,577,724
5,681,233
5,888,157
5,931,752
5,941,785
5,984,812
6,200,239
6,500,082
6,514,164
6,520,877
6,634,970
D505,462
D505,463
7,029,407
8,168,026
8,460,135
111995
9/1995
1111996
1111996
10/1997
3/1999
8/1999
8/1999
1111999
3/2001
12/2002
2/2003
2/2003
10/2003
s
5/2005
5/2005
s
B2
4/2006
B1
5/2012
B2 * 6/2013
A
A
A
A
A
A
A
A
A
B1
B1
B1*
B1
B2
* cited by examiner
U.S. Patent
Dec. 9, 2014
US 8,905,876 B2
Sheet 1 of7
FIG.1
10
12
18
32
U.S. Patent
Dec. 9, 2014
Sheet 2 of7
US 8,905,876 B2
FIG.2
12
36
38
10
28
26
U.S. Patent
Dec. 9, 2014
US 8,905,876 B2
Sheet 3 of7
10
46
18
FIG.3
12
52
50
14
FIG.3A
22
29
42
27
/18
FIG.6
FIG.7
44
56
46
U.S. Patent
Dec. 9, 2014
US 8,905,876 B2
Sheet 4 of7
FIG.4
54
18
24
44
FIG.5
18
~-
"
44
24
U.S. Patent
Dec. 9, 2014
US 8,905,876 B2
Sheet 5 of7
FIG.8
10
118
57
22
/
52
50
14
U.S. Patent
US 8,905,876 B2
Sheet 6 of7
Dec. 9, 2014
FIG.9
60
62
10
U.S. Patent
Dec. 9, 2014
Sheet 7 of7
US 8,905,876 B2
FIG.10
100
60
20
CROSS-REFERENCE TO RELATED
APPLICATION
This application is a continuation application of U.S.
patent application Ser. No. 12/220,569 filed on Jul. 25, 2008,
which is a continuation application ofU.S. patent application
Ser. No. 11/404,986 filed on Apr. 14, 2006, now abandoned,
which is a continuation-in-part of application Ser. No.
10/325,421 filed on Dec. 20, 2002, now U.S. Pat. No. 7,029,
407.
10
15
20
Inflatable game balls, such as footballs, basketballs, volleyballs and soccer balls, are well known and typically
include an inner inflatable air bladder and an outer cover. The
cover can be formed of one or more cover panels. Many
footballs include covers with stripes. In fact, many organized
football associations, such as the National Collegiate Athletic
Association ("NCAA") and many state high school athletic
associations, require stripes on their footballs. In particular,
the NCAA requires footballs to include two l-inch white
stripes that are three to three and one-quarter inches from the
end of the ball and are located only on the two cover panels
adjacent to the laces. The outer cover of footballs and other
types of game balls also typically include trademarks, symbols and logos. The stripes, trademarks, logos and/or symbols
on game balls can extend over a significant percentage of the
outer surface area of the ball.
In football and basketball, as in many other sports, the
gripping and tactile characteristics of the ball can considerably affect the performance of the participating players. In
particular, the tactile characteristics of the outer surface of the
game ball significantly affect the player's ability to catch,
pass or otherwise control the ball accurately and reliably.
Football stripes are commonly applied by painting or transferring on a thin layer of paint, dye or other coating. These
stripes typically have a smooth and slick outer surface which,
particularly in inclement weather, can negatively affect the
player's ability to catch, pass and otherwise control the ball.
Many painted on or transferred on stripes are also susceptible
to peeling and can wear easily. As a result, the appearance of
many striped footballs overtime can be negatively affected by
stripes that have partially worn or flaked off. Even premium
game balls using striping material that is less slick and more
durable than typical striping material, result in stripes with
outer surfaces that have lower tactility than the other portions
of the ball. Logos, trademarks and other symbols commonly
applied to the outer surface of game balls also can have a
smooth, slick outer surface and can flake or wear away easily.
Thus, there is a need for football stripes that have improved
gripping and tactile characteristics, or frictional interaction
with the hands of a user, without deviating or radically departing from the ball's traditional design and organized play
equipment requirements. What is needed is football stripes
30
35
40
45
50
55
60
65
10
15
20
25
35
40
45
50
55
60
65
10
15
20
25
30
35
40
45
50
55
60
65
10
15
20
25
30
35
40
45
50
55
60
65
10
TABLE 1
STATIC COEFFICIENT OF FRICTION
White
Sample
PU
Brown PU Genuine
No.
Material Material Leather
2
4
Avg.
Std.
Dev.
3.57
4.22
4.43
3.95
3.95
4.02
0.32
3.20
3.43
3.28
3.35
4.13
3.48
0.37
0.39
0.36
0.40
0.40
0.39
0.39
0.02
Velcro
Hook
Material
Velcro
Loop
Material
Smooth
Plate of
Glass
0.14
0.12
0.12
0.13
0.12
0.13
0.01
0.19
0.18
0.18
0.17
0.18
0.18
0.00
0.15
0.16
0.16
0.16
0.17
0.16
0.01
10
15
20
25
30
35
40
45
50
55
60
65
* * * * *
12