There is strength in numbers, especially specific ones.
Ebonite International, Inc. found that out the hard way this summer when a federal judge invalidated its patent for cost-effectively manufacturing and delivering bowling balls that bowlers could test before buying
The company was sued by Storm Products, Inc., which had charged that U.S. Patent 6,280,343 (343 patent) was invalid because it was indefinite.
The 343 patent centered on the fact that “a market exists for the sale of bowling balls to professional and amateur bowlers, many of whom compete in bowling leagues,” wrote the court. “Storm and Ebonite are both involved in this market and both demonstrate and sell bowling balls to bowlers. The 343 patent, which is assigned to Ebonite, relates to methods for adapting custom bowling balls for testing by bowlers.”
The court noted that “before purchasing a new bowling ball, bowlers often want to test it out. Usually, a bowling ball is shipped from the factory with a pair of finger holes pre-drilled at standard spots on the ball, but the thumb hole is left to be drilled later. Since bowlers’ hand grips vary in size, sellers typically drill the ball’s thumb hole to fit the size of the testing customer’s grip on an individual basis. If the seller drills a thumb hole to customize a ball for a prospective purchaser who decides not to purchase the ball, then the seller is left with a bowling ball that cannot be custom-drilled for another customer. Ebonite asserts that such balls cannot then be sold as new. This potential for waste is compounded by the fact that Storm and Ebonite apparently introduce new balls with some frequency in an effort to offer balls with improved performance. Accordingly, one stated object of the 343 patent is to reduce waste by providing a ‘method for drilling a small number of bowling balls for testing by a relatively large number of bowlers having hand spans of different sizes.’”
In February 2007, Ebonite sent Storm a letter alleging that Storm’s showcases might infringe its 343 patent. After a further exchange of letters, Ebonite sent Storm a letter asserting that Storm was willfully infringing the 343 patent.
On April 20, 2007, Storm brought an action for a declaratory judgment “that the 343 patent is invalid and not infringed by Storm, either directly or indirectly as an inducing or contributing infringer. Ebonite filed a counterclaim against Storm, alleging that Storm has willfully infringed its 343 patent.”
In addressing the legal standards, the court noted that “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’ Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.2005) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).”
Focusing on this point, Storm argued that the terms “large number of bowlers” and “relatively small number of balls” in claim 1 of the 343 patent “are indefinite and cannot be construed.”
Agreeing with Storm, the court wrote that with no guidance “as to what the term ‘large number of bowlers’ means, it could potentially be any number of bowlers over one. For example, one skilled in the art of providing bowling balls for testing by potential customers might consider ten bowlers to be ‘a large number of bowlers’ in some circumstances or 100 bowlers as ‘large’ in others. But it is equally plausible that one skilled in the art might consider ten or 100 bowlers to be a small number of bowlers in other contexts. For example, a bowling lane in a small town that sells balls and that holds a ‘product showcase’ might view 100 bowlers, or even ten bowlers, as a ‘large’ turnout. Meanwhile, a lane in a large city holding such an event may consider one hundred or fewer bowlers as a disappointingly small turnout. Nothing in the intrinsic evidence of the ‘343 patent or in the extrinsic evidence offered by Ebonite provides sufficient support for how one skilled in the art would be able to determine what the circumstances are to allow an objective conclusion of what number of bowlers would fall within or outside the boundary of the patent, which is described only as a ‘large number.’”
The court went on to write that the “fatal defect in the ‘343 patent is its failure to specify one of these methods – or any other possible method – to calculate ‘large.’ There is nothing in the evidence that definitively ties a ‘large number of bowlers’ to any anchor, such as a numeric threshold or a limited time and space. In other words, the court could not find any indication that there is any particular point at which the number of bowlers becomes ‘large’ for purposes of claim 1, other than perhaps any number more than one bowler. Indeed, there is nothing in the patent or the supporting evidence to provide a baseline over which any number would be understood to be ‘large.’
“Because there is no way to know what a ‘large number of bowlers’ is as used in claim 1, there is no way to decide what a ‘relatively small number of balls’ means. Determining a ‘relatively small’ number requires a comparison with a ‘large number of bowlers.’ Moreover, even if there were a set number of bowlers with which to compare, there is nothing in the patent or evidence that sets a limit on what ‘relatively small’ means. Is ‘relatively small’ a ratio? Is it a set number? There is simply no indication in this record of how one skilled in the art could make this determination.”
The court added that it “considered narrowing the scope of the terms.” However, Ebonite sought to “resolve the ambiguity in a way that gives it the broadest possible construction,” which “would undermine the notice function of the claims because it would allow a patent holder to benefit from the ambiguity, rather than requiring a patent holder to give proper notice of the scope of the claims to competitors.”
Storm Products, Inc. v. Ebonite International, Inc., et al.; D. Utah; ; Case No. 2:07-cv-260-CW, 2009 U.S. Dist. LEXIS 60446; 7/15/09
Attorneys of record: (for plaintiff) H. Dickson Burton, Krista Weber Powell, LEAD ATTORNEYS, TRASK BRITT PC, SALT LAKE CITY, UT. (for defendants) Glen G. Reid, Jr., Kacey L. Faughnan, Mark Vorder-Bruegge, Jr., Matthew F. Jones, LEAD ATTORNEYS, PRO HAC VICE, WYATT TARRANT & COMBS (MEMPHIS), MEMPHIS, TN; James K. Tracy, Jennifer A. Brown, LEAD ATTORNEYS, CHAPMAN & CUTLER (UT), SALT LAKE CITY, UT; Matthew A. Williams, Sarah Osborn Hill, LEAD ATTORNEYS, PRO HAC VICE, WYATT TARRANT & COMBS (KY), LOUISVILLE, KY.
