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EZ Gard Industries, Inc. v. XO Athletic Co. et al.: US District Court : PATENT - preliminary injunction issued in mouthguard patent case

1As this is a preliminary injunction, the Court’s “findings”
are based on the parties’ pleadings and affidavits. Any such
“facts” are not final determinations of disputed matters.
EZ Gard Industries, Inc. )
v. ) ORDER
XO Athletic Co. et al. )
Plaintiff seeks a preliminary injunction pursuant to Rule 65
of the Federal Rules of Civil Procedure (“Fed. R. Civ. P.”) to
protect its patent, U.S. Patent No. 5,339,832 (“‘832 patent”), from
infringement by defendant XO Athletic Co. Defendant opposes the
motion. Plaintiff’s motion is granted.
I. Background1
Plaintiff, EZ Gard Industries, Inc. (“EZ Gard”), a company
headquartered in Minnesota, manufactures athletic protective gear.
Its products are distributed along two primary paths: retail
stores selling directly to individuals, and dealers marketing to
teams, such as schools. At issue is the ‘832 patent, which
plaintiff obtained in 1994. The ‘832 patent relates to a
thermoplastic mouthguard with an integral shock absorbing
framework. Plaintiff sells its Gel Max mouthguard under the name
“Shock Doctor,” as a commercial embodiment of the ‘832 patent.
Defendant XO Athletic Co., a New Jersey corporation, is a
competitor in the athletic protection equipment market. Until very
recently, its line did not include a protective mouthguard.
In April, 2007, XO Athletic hired EZ Gard’s former sales
manager, Paul J. Andre. In late October, 2007, EZ Gard customers
heard Mr. Andre’s sales pitch on behalf of XO Athletic at a trade
show. During that presentation, these customers learned for the
first time that XO Athletic was marketing a mouthguard. On October
31, 2007, an EZ Gard customer forwarded to EZ Gard a marketing
email he had received from Mr. Andre containing specifications for
XO Athletic’s mouthguard. EZ Gard was contacted by another
customer about the same time who had recently attended a trade show
intending to purchase 600 EZ Gard mouthguards. He placed an order
with XO Athletic instead, after hearing Mr. Andre’s presentation
and receiving a substantial discount.
On December 5, 2007, plaintiff filed this action alleging
defendant’s mouthguard infringes the ‘832 patent, and Mr. Andre’s
employment with XO Athletic violated his non-compete agreement with
plaintiff. Plaintiff contends Mr. Andre shared confidential
information with defendant, enabling it to copy plaintiff’s Gel Max
mouthguard. Apparently, in response to plaintiff’s motion for a
temporary restraining order to enforce the non-compete agreement,
defendant suspended Mr. Andre’s employment until its expiration.
Defendant also redesigned its mouthguard, admittedly in an effort
to avoid infringement.
Plaintiff claims both defendant’s original and its
redesigned mouthguards infringe the ‘832 patent. Plaintiff seeks
a preliminary injunction to prevent defendant from marketing and
selling either rendition pending final resolution of this matter.
Plaintiff’s motion for preliminary relief hinges on its claim
that defendant’s mouthguards infringe claims 2, 7, and 8 of the
‘832 patent. Claim 2 reads:
A composite mouthguard for a user having an upper jaw
with anterior teeth, posterior teeth with occlusal
surfaces, and fossae with cartilage forming sockets, and
a moveable lower jaw with anterior teeth, posterior teeth
with occlusal surfaces and condyles movably fitted within
the sockets forming the temporomandibular joints through
which the auriculo-temporalis nerves and supra-temporal
arteries pass, the mouthguard comprising:
(a) a flexible and tough mouthguard portion made of
a first material of a softenable thermoplastic
having a U-shaped base with top and bottom sides
with upward inner lingual and outer labial walls
and further having posterior and anterior portions;
(b) a shock absorbing and attenuating framework
made of a second material of a nonsoftening,
resilient, low compression elastomer which is
embedded in the mouthguard posterior portions of
the mouthguard base comprised of a posterior
cushion pad in each posterior portion each with
enlarged portions in an area of a molar tooth and a
bicuspid tooth to absorb, attenuate and dissipate
shock forces exerted on the mouthguard during
athletic activity.
Claim 7 reads:
The composite mouthguard of claim 2, wherein the
mouthguard portion first material is made from a
thermoplastic comprised of copolymers of ethylene or
vinyl acetate.
Claim 8 reads:
The composite mouthguard of claim 2, wherein the
framework second material is made from an elastomeric
material of a group comprising thermoplastic rubber or
vulcanized rubber.
In support of its claim of infringement, plaintiff offers the
analysis of Dr. Arthur Erdman, Professor of Mechanical Engineering
at the University of Minnesota. Defendant acknowledges Dr. Erdman
as one of ordinary skill in the art, and does not challenge his
expertise. Dr. Erdman opines that both of defendant’s mouthguards
infringe the ‘832 patent.
II. Analysis
A patent owner is entitled to exclude others from making,
selling, or offering to sell a patented invention for the term of
the patent. See 35 U.S.C. § 271. The patent statute authorizes
issuance of a preliminary injunction to protect this right. 35
U.S.C. § 283. When considering a request for a preliminary
injunction, a court balances four factors: (1) the likelihood of
success of the merits; (2) the threat of irreparable harm to the
plaintiff if no injunction issues; (3) the balance between that
harm and any injury the injunction would inflict on defendant; and
(4) whether the injunction will serve the public interest. Bio-
Technology General Corp. v. Genentech, Inc., 80 F.3d 1553, 1558
(Fed. Cir. 1996).
A. Success on the Merits
A plaintiff who claims patent infringement must show both that
its patent is valid and infringed. Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001).
Here, defendant does not dispute the validity of plaintiff’s
patent. As such, the Court need only preliminarily determine
whether defendant’s mouthguards infringe the ‘832 patent.
Infringement analysis is a two-step process. First, the Court
must interpret or construe the patent’s claims as a matter of law.
Second, the defined claims are compared to the accused product.
See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384
1. Claim Construction
The words of the patent claim define the invention, and thus
are the central focus. Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005). In construing a patent, claim terms are given
the ordinary and customary meaning which one with ordinary skill in
the art would give them. Id. at 1313. A court is permitted to
look to multiple sources in construing patent claims, affording
them differing weights depending on the source. Id. at 314.
Greater weight is given to intrinsic, rather than extrinsic
evidence. Id. at 1317. A patent’s specification is the best guide
to determining the meaning of a disputed term. Id. at 1315-16.
“Like the specification, the prosecution history provides evidence
of how the PTO [Patent and Trademark Office] and the inventor
understood the patent.” Id. at 1317. Extrinsic evidence is less
reliable, but may assist a court in determining how a person of
ordinary skill in the art would interpret the terms. Id. at 1318-
Most of the ‘832 patent terms are not in dispute; at this
preliminary stage, the parties dispute the meaning of only two
terms. The Court addresses each in turn.
a. The Claim Term “Embedded”
Claim 2 uses the term “embedded” when it recites “a shock
absorbing and attenuating framework made of a second material of a
nonsoftening, resilient, low compression elastomer which is
embedded in the mouthguard posterior portions of the mouthguard
base.” Defendant argues that “embedded” means “substantially
internal,” pointing to column 4, lines 11-15, of the specification
which reads, “Mouthguard is comprised of a thermoplastic mouthguard
portion . . . with the embedded or substantially internal
elastomeric framework forming posterior cushion pads and an
anterior impact brace.”
As an initial matter, plaintiff argues that “embedded” is
commonly understood and need not be construed as a term of art in
the patent. Second, plaintiff contends defendant’s proposed
construction is inconsistent with another part of the
specification, namely column 5, lines 44-48, which states, “the
copolymer mouthguard portion at least partially surrounds the
anterior cushion pads to further embed the framework in the
anterior portion of the mouthguard portion.” It amplifies this
argument by reference to Dr. Erdman’s expert testimony and the
common dictionary definitions found in Merriam-Webster’s Collegiate
Dictionary, Tenth Edition, 1993, and American Heritage College
Dictionary, Third Edition, 1993, to show “embedded” means “an
integral part of.”
The Court agrees the claim term “embedded” does not require
that the mouthguard’s protective framework be substantially
internal, but merely that it be made “an integral part” of the
mouthguard. Defendant’s definition is tantamount to claiming the
framework must be inlaid, a construction the Court rejects. The
Court finds “embedded” as a claim term is facially clear, and means
only that the protective framework be integrally incorporated into
the mouthguard’s softer, more malleable portion.
b. The Claim Term “Enlarged Portions”
Claim 2 calls for a mouthguard with “enlarged portions in an
area of a molar tooth and a bicuspid tooth.” Defendant asks the
Court to interpret this phrase to mean “larger parts of the
framework that protrude in both vertical directions from the
framework at areas of the framework that will engage the molar and
bicuspid teeth.” Again, plaintiff argues that the plain meaning is
controlling, and opposes adding any limiting language. Having
analyzed the claim language, the Court construes the term “enlarged
portions” to mean “a spatial enlargement from the linear plane of
the framework.”
The larger parts in question act to anchor the mouthguard in
a position which allows the protective framework to protect the
teeth. Defendant asks the Court to read into the claim a
requirement that “larger parts” must be of increased thickness. A
review of the claims and specification makes clear there is no such
requirement. The Court finds its claim definition describes the
claimed invention in accord with the plain meaning of the claim’s
2. Infringement Analysis
A claim is infringed when an accused product is shown to
embody each element of a claim. See Johnson Worldwide Assocs. v.
Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1999). Literal
infringement occurs when each limitation of the claim is present in
the accused product. North Am. Vaccine, Inc. v. Am. Cyanamid Co.,
7 F.3d 1571, 1574 (Fed. Cir. 1993).
The Court finds, for the purposes of this preliminary
injunction, a substantial likelihood that both the original design
and the redesign of defendant’s mouthguard literally infringe the
‘832 patent. The harder framework portion of the mouthguard is
embedded within the softer form-fitting portion; the two materials
are fused, making each an integral part of the other. There are
spatial enlargements along the linear plane of the framework where
the molar teeth and bicuspid teeth are positioned. Defendant makes
much of the fact that its mouthguard is of uniform thickness. This
fact proves nothing. There are bulges below the surface of the
mouthguard which enlarge its shape in a fashion which engages the
molar and bicuspid teeth. These enlarged portions protrude below
the linear plane of the framework.
Defendant does not dispute that the other elements of claim 2
are met. Thus, it is highly likely that the mouthguard literally
infringes claim 2.
Defendant argues that certain elements of claims 1 and 9 are
not met, particularly that the harder framework make contact with
the teeth. Whether the mouthguards infringe claims 1 and 9 is
irrelevant when considering the preliminary nature of the relief
sought. An infringing product, such as defendant’s mouthguards,
infringes the patent even if it embodies the elements of only a
single claim. See Johnson Worldwide, 175 F.3d at 988.
B. Irreparable Harm
The injunctive relief provided by the patent statute is
designed to “preserve the legal interests of the parties against
future infringement which may have market effects never fully
compensable in money.” Hybritech Inc. v. Abbott Labs, 849 F.2d
1446, 1457 (Fed. Cir. 1988). Plaintiff must show irreparable
injury is likely absent an injunction. See Torpso Hockey Int’l,
Inc. v. Kor Hockey Ltd., 491 F. Supp. 2d 871, 881 (D. Minn. 2007)
(rejecting Federal Circuit’s presumption of irreparable harm in
light of Supreme Court’s holding in eBay, Inc. v. MercExchange,
L.L.C., 547 U.S. 388 (2006) that traditional principles of equity
apply in patent cases).
Plaintiff claims it will be irreparably harmed if defendant is
permitted to sell its mouthguard. Defendant’s product competes
directly with plaintiff’s line of mouthguards. Plaintiff has
already lost at least one sale to defendant. Lost sales,
particularly sales lost to an infringing product, cannot be
remedied by dollar damages alone. They are likely to have an
irreparable effect on plaintiff’s pricing structure and market
share. See Johns Hopkins Univ. v. Datascope Corp., 513 F. Supp. 2d
578, 586 (D. Md. 2007). Plaintiff also notes defendant’s marketing
to a second EZ Gard customer, touting its mouthguard as a superior
product, thus impairing plaintiff’s goodwill and reputation. The
Court finds plaintiff will likely suffer irreparable harm absent an
C. Balance of Hardships
The Court also considers whether the harm to defendant if an
injunction issues would be greater than the harm to plaintiff if it
does not. Hybritech, 849 F.2d at 1457. Defendant asks the Court
to consider the harm which will inhere from a prohibition barring
it from delivering a product already introduced to customers. It
further claims an injunction will undermine the substantial
investment it has made in the development and marketing of its
mouthguard. The Court finds these concerns to be hollow.
Were the Court to credit them, it would turn equity on its
head. First, the Court notes defendant’s entry into this market
falls hard on the heels of its hiring Paul Andre, EZ Gard’s former
sales manager, in violation of his non-compete agreement. This
act, while not directly related to the patent infringement claim,
suggests that XO Athletic’s marketing program was wrongly placed
from the beginning. Second, the Court preliminarily finds a high
probability that defendant knew it was marketing an infringing
product. Once notified by plaintiff of a possible infringement,
defendant withdrew its original product and substituted the second
product. This suggests two things: either defendant did not know
its first product was subject to a patent or infringed it, or it
did know it was infringing, but thought it would not be discovered.
In either event, it withdrew the first product (which it displayed
and used to make its improper sales), and substituted the
redesigned product, which the Court finds likely infringes.
As for the cost defendant has expended to set up manufacture
of its infringing product, its argument is hollow, indeed. If one
could be insulated from the consequences of infringement by
expending a lot of money to produce the infringing device, the
patent process would grind to a halt; infringing products, if
expensively made, could flood the market with impunity. The fact
that it costs money to produce infringing goods is not a reason to
allow them to be made and sold. This argument is rejected; it is
nothing more than a frontal attack on 35 U.S.C. § 283, the section
of the Patent Act which allows for a preliminary injunction.
D. Public Interest
Public policy favors protection of a valid patent. See Smith
Int’l, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1581 (Fed. Cir.
1983). The United States Constitution is the ultimate expression
of this Nation’s public interest; Article 1, Section 8, assures
that useful inventions may be protected. The Court finds the
showing of infringement here is strong. Thus, it is in the
public’s interest to grant the injunction.
III. Bond
Fed. R. Civ. P. 65(c) requires that the Court consider a bond
when issuing a preliminary injunction. Plaintiff, unsurprisingly,
seeks either no bond, or one of very small size. Defendant,
equally unsurprisingly, asks for one monumental in scale.
The Court considers that defendant has sold athletic equipment
for some time and has never had a protective mouthguard among its
wares. Its only foray into this market has been accompanied by the
problematic employment of plaintiff’s former sales manager, in
contravention of his non-compete agreement. And the only products
it has offered in the protective mouthguard market have been
infringing. At least on a preliminary basis, the Court sees no
instance of a single sale of a non-infringing product. Under these
circumstances, its claims of lost sales or injury to its reputation
cannot be afforded a great deal of weight.
With all of these considerations in mind, the Court finds it
appropriate to require that plaintiff post a bond in the penal sum
of ,000, to secure the defendant against injury on a preliminary
IV. Conclusion
Having balanced the factors relating to the issuance of
preliminary relief, the Court grants plaintiff’s motion for a
preliminary injunction [Docket No. 32].
Accordingly, IT IS ORDERED that:
1. Defendant XO Athletic Co., including its officers, agents,
servants, employees, and attorneys, and those persons in active
concert or participation with them who receive actual notice of the
order by personal service or otherwise, is enjoined from making,
using, offering to sell, or selling mouthguards which infringe the
claims of the ‘832 patent, including mouthguards no more than
colorably different from those disclosed by plaintiff in this
litigation, pending final judgment. Defendant is specifically
enjoined from demonstrating, taking orders, distributing literature
about, or discussing the accused devices with any current or
potential customer.
2. This injunction will be effective upon plaintiff placing
a ,000 cash or surety bond with the Clerk of this Court, in
accordance with Fed. R. Civ. P. 65(c).
Dated: April 23rd, 2008
s/ James M. Rosenbaum
United States Chief District Judge


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