Case 4:15-cv-01438 Document 55 Filed in TXSD on 02/24/17 Page 1 of 20

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

SPORTSTAR ATHLETICS, INC., §

§
Plaintiff, §
v. §
Civil Action No. 4:15-cv-01438
§
WILSON SPORTING GOODS CO., §
§
Defendant. §
§

DEFENDANT’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON THE ISSUE

OF NON-INFRINGEMENT
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Table of Contents

I.  INTRODUCTION.......................................................................................................................... 1 

II.  BACKGROUND............................................................................................................................ 3 

A.  The asserted patents generally relate to chin straps for football helmets. .................................... 3 

B.  This Court’s Markman ruling has established the definitions of certain key terms in the Patents-
in-Suit and has eliminated any remaining questions of fact. ........................................................ 4 

1.  The Court ruled that “in said second slot” means “within the second single continuous
opening.” .......................................................................................................................... 4 
2.  The Court ruled that “greater than” means “longer than.” ............................................... 4 
3.  The Court ruled that “strap splitter” means “a unitary body with a first slot in spaced
relation to a second slot. A ‘fixed’ bar is formed with the unitary body and positioned
between the first slot and the second slot, with the second slot having a length that is
greater than the first slot.” ................................................................................................ 5 
C.  The Asserted Claims....................................................................................................................... 6 

D.  Wilson’s Accused Products............................................................................................................ 7 

III.  LEGAL STANDARD.................................................................................................................... 9 

IV.  ARGUMENT ............................................................................................................................... 10 

A.  Wilson does not infringe the '160 Patent because the Accused Products do not have a second
slot having a length “greater than” the length of a first slot and they do not have a strap divider
with two straps diverging within a second single continuous opening. ..................................... 11 

1.  Wilson’s accused chins straps do not meet the claim element that requires two slots, with
a second slot having a length “greater than” the length of a first slot. .......................... 11 
2.  Under this Court’s definition of “in said second slot,” Wilson’s accused product does not
infringe the ‘160 Patent. ................................................................................................. 12 
B.  Wilson does not infringe the '671 Patent because the Accused Products do not have a “strap
splitter” under this Court’s definition of the claim term. ............................................................ 14 

V.  CONCLUSION ............................................................................................................................ 15 

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Table of Authorities
Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) ........................................................ 1

Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121 (Fed. Cir. 2011) ............................ 9

Alien Engineering Corp., v. Bartell Indus. Inc., 299 F.3d 1336 (Fed. Cir. 2002) .......................... 6

Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325 (Fed. Cir. 1998) ................................... 9

Emtel, Inc. v. Lipidlabs, Inc., 907 F.Supp.2d 833 (S.D. Texas 2012) .......................................... 10

F.R.C.P. 56(a) ................................................................................................................................. 9

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) ...................... 5

Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999) ......................... 9

Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991) ............................................... 1, 9

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ........................................... 9

Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571 (Fed. Cir. 1997)

..................................................................................................................................................... 6

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I. INTRODUCTION

This case involves two related patents on chin straps for helmets. SportStar Athletics Inc.

(“SportStar”) accuses Wilson Sporting Goods Co. (“Wilson”) of selling infringing chin straps.

Wilson can demonstrate that, as a matter of law, it does not infringe the asserted claims of

SportStar’s patents and accordingly moves for summary judgment of non-infringement.

Determining whether a product infringes a patent is a two-step process; first, the court

interprets the patent claims, and second, the properly interpreted claims are compared to the

accused product.1 This Court has completed step one and construed the language of the patent to

require a chin strap with a “strap splitter” having two slots, with a second slot longer than the

first. Every asserted claim of both patents in suit requires this element. A representation of this

Court’s construction is shown below in Figure 5 from the earlier of the two patents:

Shorter First Slot  Longer Second Slot 

Fig. 5

Step two compares the construed claims to the accused products. The absence of a single

claim limitation mandates a finding of non-infringement.2 In this case, Wilson’s accused chin strap

                                                            
1
  See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). 
2
 See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). 

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does not contain all the limitations of the claims. Specifically, one piece of Wilson’s accused chin

strap, essentially a strap divider, appears below showing three symmetrical slots:

Wilson’s Strap Divider 
(Fig. B)

Three 
Symmetrical Slots 

This Court entered a finding of fact comparing Wilson’s strap divider to SportStar’s claims. “In

contrast [to the claim limitation], Wilson’s accused strap splitter has three slots, all the same size

and symmetrical with each other, i.e., the configuration that Schiebl [the inventor] moved away

from to avoid rejection.” See Docket No. 48, p. 34. Wilson does not infringe because its chin straps

do not have a “strap splitter” as that term has been properly construed by the Court.

This Court should grant Wilson’s motion for summary judgment because there is no

genuine issue of fact for the jury to decide. The Court has already concluded that Wilson’s accused

chin straps do not have a strap splitter comprised of two slots, with the second slot longer than the

first; in contrast, Wilson’s strap divider has three symmetrical slots.

This Court’s claim construction opinion contained the key rulings that foreclose

SportStar’s infringement claims. First, this Court ruled that asserted claims cover only chin straps

with strap splitters that have two slots, with the second slot being longer than the first. See Docket

No. 48, p. 33. Second, this Court ruled that Plaintiff’s patents require the chin strap ends to diverge

from each other within that single second slot. See Docket No. 48, p. 32. The chin strap ends of

Wilson’s accused chin straps do not diverge from each other in a second slot. Instead, the Wilson

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chin strap ends pass individually through a second and a third slot, as noted by the Court (and

shown above). For these two reasons, Wilson’s chin straps cannot infringe Plaintiff’s patents

because they do not have all the required elements of the asserted claims.

The Court’s existing rulings in this case mandate summary judgment of non-infringement

for Wilson. As set forth below, the inescapable conclusion is that there are no genuine questions

of material fact. Summary judgment in Wilson’s favor should be granted as a matter of law.

II. BACKGROUND

A. The asserted patents generally relate to chin straps for football helmets.

SportStar has asserted numerous claims from the two patents that generally relate to chin

straps for helmets. The first patent is U.S. Patent No. 7,735,160 (the “’160 Patent”), entitled “Chin

Guard Apparatus For Use With A Helmet,” and the second patent (a continuation-in-part of the

‘160 Patent), is U.S. Patent No. 8,621,671 (the “’671 Patent”), entitled “Protective Chin Guard”

(together the “Patents-in-Suit”). 3

The asserted claims of the ‘160 and ‘671 Patents relate to a chin cup with looped straps

attached to either side, whereby each looped strap extends from the cup through a “strap splitter”

before each strap attaches to a helmet. The strap splitter is a small piece where both lengths of the

looped chin strap enter a first slot and where both lengths enter a continuous, longer second slot.

The second slot is longer than the first slot to permit the separate strap lengths to diverge angularly.

                                                            
3
SportStar has asserted claims 1, 8 and 9 of the ‘160 Patent, and claims 7, 8, 9, 10, 11, 12, 13, 14, 15, and
17 of the ‘671 Patent. See the Declaration of Jeffery A. Key (“Key Declaration”) attached as Exhibit 1. A
copy of the ‘160 Patent is attached as Exhibit 2; a copy of the ‘671 Patent is attached as Exhibit 3.

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See Docket No. 48, p. 32. This is shown in Figure 1 of the ‘160 Patent and Figure 7 of the ‘671

Patent which are essentially identical: Strap Splitter – Straps Diverge 

Within Longer Second Slot 

SportStar has alleged that Wilson’s “Wilson Hard Cup Football Chin Strap” model

numbers WTF985000 and WTF985001 (the “Accused Products”) infringe certain claims of the

two Patents-in-Suit, with all of the asserted claims requiring the “strap splitter” element.

B. This Court’s Markman ruling has established the definitions of certain key
terms in the Patents-in-Suit and has eliminated any remaining questions of fact.

This Court recently issued its ruling on the construction of four disputed claim terms.

Docket No. 48. Notably, this Court adopted each of Wilson’s claim construction proposals

observing that all of Wilson’s “claim constructions are properly based on the patents’ intrinsic

evidence (claim language, specifications, and prosecution history) and on the patentee’s claim

construction as his own lexicographer.” Docket 48, pp. 25-26. Critically, this Court made three

key claim construction rulings:

1. The Court ruled that “in said second slot” means “within the second single
continuous opening.”

The Court based this ruling on the ‘160 Patent and its prosecution history, in which the

inventor “argued that his claim elements were distinguished from [the prior art] by the way in

which the strap portions diverged within the single second slot.” Docket No. 48, p. 32.

2. The Court ruled that “greater than” means “longer than.”

The Court also based this ruling on the ‘160 Patent and its prosecution history, noting that

“this limitation was employed to overcome a rejection in view of [the prior art] and therefore must

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be read narrowly to distinguish it from the strap splitter structure of [the prior art].” Docket No.

48, p. 33. 

3. The Court ruled that “strap splitter” means “a unitary body with a first slot
in spaced relation to a second slot. A ‘fixed’ bar is formed with the unitary body and
positioned between the first slot and the second slot, with the second slot having a
length that is greater than the first slot.”

The Court based this ruling on the patentee’s own definition in the prosecution history,

noting again that the inventor “deliberately amended his claims to narrow the definition of strap

splitter to overcome the examiner’s rejection.” Docket No. 48, p. 26. Significantly, the Court also

determined that the same construction of “strap splitter” applies to both the ‘160 Patent and the

‘671 Patent. The Court rejected SportStar’s argument that “strap splitter” can have different

meanings in the two Patents-in-Suit. Docket 48, pp. 26-29. 

The Court also entered three critical findings of fact:

1. Wilson’s strap divider has three slots “all the same size and symmetrical with
each other.” Docket No. 48, p. 34

2. The inventor “deliberately amended his claims to narrow the definition of

strap splitter.” Docket No. 48, p. 34.

3. “The key point of [in said second slot] is the angular divergence of the two
strap portions from one another within that slot.” Docket No. 48, p. 32.

This Court recognized that under the doctrine of prosecution history estoppel, SportStar is

barred from attempting to expand its claims under the doctrine of equivalents. As the Supreme

Court has ruled, when “the patentee originally claimed the subject matter alleged to infringe but

then narrowed the claim in response to a rejection, he may not argue that the surrendered territory

comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the

issued patent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733-

734 (2002). Essentially, because SportStar narrowed its claims in the ‘160 Patent file history to

overcome rejections, it cannot now argue that Wilson infringes through the doctrine of equivalents.

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“Prosecution history estoppel… precludes a patentee from regaining, through litigation, coverage

of subject matter relinquished during prosecution of the application for the patent.” Id. at 734

(citing Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571, 1577-

1578 (Fed. Cir. 1997)).

Thus, every element of the accused claims must literally be present in Wilson’s Accused

Products. Alien Engineering Corp., v. Bartell Indus. Inc., 299 F.3d 1336, 1345 (Fed. Cir. 2002)

(“To establish literal infringement, the patentee must establish that every limitation set forth in the

properly construed claim reads on, or in other words is found in, the accused product, exactly”).

This is simply not the case, and this Court should grant Wilson’s motion for summary judgment.

C. The Asserted Claims

SportStar asserts three claims from the ‘160 Patent: 1, 8, and 9. Claims 8 and 9 are dependent

claims that require all of the elements of Claim 1 plus the additional elements of the dependent claim

itself. This means that if all the elements of Claim 1 are not met, the Accused Products cannot infringe

Claims 8 and 9. Set forth below is the relevant portion of independent Claim 1 with the critical claim

elements highlighted in yellow and bolded:

a first strap splitter through which said first strap extends, said first strap splitter comprising
a unitary body having a first slot in spaced relationship to a second slot, said first strap splitter
having a fixed bar formed therewith and positioned between said first slot and said second slot,
said second slot having a length that is greater than a length of said first slot, said first strap
having a first portion and a second portion juxtaposed together in said first slot and angularly
diverging from each in said second slot, said first portion and said second portion being
angularly adjustable with respect to each other so as to allow one of said first and second
portions to be attached to either the high hook-up or low hook-up of the helmet.
See Exhibit 2, Col. 8, lines 58-67, Co. 9, lines 1-3. Wilson’s Accused Products do not meet these

highlighted elements, as construed by this Court.

SportStar asserts ten claims from the ‘671 Patent: 7 – 15, and 17. Claims 8, 9, 11 – 15, and 17

are dependent claims, such that if the elements of independent claims 7 and 10 are not met, the eight

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dependent claims are not infringed. Set forth below are relevant portions of Claims 7 and 10 of the ‘671

Patent, with the critical claim elements highlighted in yellow and bolded:

7. A chin guard comprising:

….
a first strap splitter extending over said first strap so as to cause portions of said first strap to
diverge away from each other; and
a second strap splitter extending over said second strap so as to cause portions of said second
strap to diverge away from each other.
* * *
10. A chin guard comprising:
….
a first strap splitter extending over said first strap so as to cause portions of said first strap to
diverge away from each other; and
a second strap splitter extending over said second strap so as to cause portions of said second
strap to diverge away from each other.
See Exhibit 3, Col. 8, lines 39-44, and 62-67. Wilson’s Accused Products do not meet these highlighted

elements, as construed by this Court.

The specification of the ‘160 Patent (as well as the ‘671 Patent)

provides Figure 5, an illustration of the claimed strap splitter showing two

slots, with the second slot longer than the first:

Fig. 5

D. Wilson’s Accused Products

Wilson’s Accused Products include a strap divider: a small piece of rubber with three slots

that accepts both straps through a first slot, and then separates the straps through the second and

third slots such that the two ends of the strap diverge in fixed directions from the second and third

slots. As found by this Court, the three slots are “all the same size and symmetrical with each

other.” See Docket No. 48, p. 34. Actual, physical measurements of the slots of the Accused

Product strap divider confirms this finding. See Declaration of Shaun Gilday (“Gilday

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Declaration”) attached as Exhibit 6, at ¶¶ 3 – 5. There is no second slot which is longer the first

slot. Gilday Declaration ¶ 6. The Accused Product is depicted below in Figure A and a detail of

the strap divider is depicted in Figure B4:

FIG. A FIG. B

FIG. A – the accused chin strap Three 

Symmetrical 
Slots 

Figure A (above left), shows the Accused Product with the outer surface of the Wilson strap divider

shown (black component). Figure B (above right), shows the inner surface of the accused strap

divider with its three symmetrical slots. The straps do not diverge away within a single second

slot; rather, each strap length is directed out of its own slot. Gilday Declaration at ¶ 7.

The size of the three symmetrical slots of the Wilson strap divider prevent any adjustability

of the straps’ separation angle. In other words, the angle separating the two strap portions

extending from the strap divider cannot be changed and cannot be adjusted. It can readily be seen

that each of the strap portions are fixed within the narrow slots through which they pass.

The Court has already ruled that the intrinsic evidence of the patent and its prosecution

history is sufficient to define the asserted claim language. Nonetheless, Wilson also submits with

this Motion supporting materials from its retained expert, Todd Rathe. See Key Declaration,

                                                            
4
 These images are from SportStar’s Rule P.R. 3-1 and 3-2 Infringement Contentions. 

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Exhibit 4, Expert Report of Todd A. Rathe on Alleged Infringement (“Rathe Report”). Mr. Rathe’s

report was written prior to the Court’s ruling on claim construction. However, Mr. Rathe accurately

anticipated this Court’s definition of “strap splitter” and opined that the Accused Products do not

infringe the claims of either Patent-in-Suit “because they do not have a ‘strap splitter’ as the term

was defined by Schiebl in the patent file history in order to overcome prior rejections.” Rathe

Report, p. 3. Mr. Rathe’s report is directly supportive of the Court’s claim construction on the

meaning of “strap splitter” in the patent and its prosecution history.

III. LEGAL STANDARD

The instant matter provides a textbook situation for this Court to render a summary

judgment. The summary judgment standard is applicable and appropriate in patent cases. Desper

Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). “The Court shall grant

summary judgment if the movant shows that there is no genuine dispute as to any material fact and

the movant is entitled to judgment as a matter of law.” F.R.C.P. 56(a). Here, the Court’s claim

construction rulings leave no question of fact for a jury to consider.

Determining whether an accused product infringes is a two step process. First, the claim

must be properly construed to determine its scope and meaning. Absolute Software, Inc. v. Stealth

Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011). Second, the court must then compare the

accused device to the properly construed claims, to see whether the accused device contains all the

limitations, either literally or by equivalents, which are in the claimed invention. Johnson

Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1999); Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The absence of a single claim limitation

or its equivalent in the accused combination precludes infringement. Laitram Corp. v. Rexnord,

Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).

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As the facts of this case show, SportStar is limited in the inferences it can make due to

prosecution history estoppel and the simplicity of Wilson’s strap separator. Additionally, the

Court’s claim construction ruling made several findings of fact and law that support Wilson’s

arguments. The inescapable conclusion is that there are claim limitations in the Patent-in-Suit that

are not found in Wilson’s Accused Products.

IV. ARGUMENT

Summary judgment is proper in this case as this Court and the evidence have established

that there are no remaining genuine issues of material fact, and no reasonable jury could find that

every claim limitation from SportStar’s patents is found in Wilson’s Accused Products. SportStar

has submitted infringement contentions that limit its allegations of infringement of independent

claims to Claim 1 of the ‘160 Patent, and Claims 7 and 10 of the ‘671 Patent.5 While there are

other dependent claims asserted by SportStar, “[b]ecause dependent claims incorporate all the

limitations of the independent claims from which they depend, if even one limitation of an

independent claim is not met, there can be no infringement of its dependent claims.” Emtel, Inc. v.

Lipidlabs, Inc., 907 F.Supp.2d 833, 842 (S.D. Texas 2012) (citing Wahpeton Canvas Co. v.

Frontier, Inc., 870 F.2d 1546, 1552 n. 9 (Fed. Cir. 1989). As this motion shows, the Court’s ruling

on three key terms from the Patents-in-Suit removes any questions of fact and compels a finding

of non-infringement in Wilson’s favor.

                                                            
5
The Court notes in its Markman ruling that SporStar contends Wilson also infringes Claim 12 of the ‘160 Patent,
but that appears to be an oversight or typo unsupported by the record.

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A. Wilson does not infringe the '160 Patent because the Accused Products do not
have a second slot having a length “greater than” the length of a first slot and they do
not have a strap divider with two straps diverging within a second single continuous
opening.

Wilson cannot infringe the '160 Patent for two simple reasons: 1) the three slots in Wilson’s

strap divider are all the same length, thus, there is no second slot having a length “greater than”

the length of a first slot; and 2) Wilson’s Accused Products have a chin strap divider where each

strap end exits the divider in its own slot, thus, the two ends do not diverge within a second single

continuous opening. For either of these two reasons, summary judgment of non-infringement is

appropriate.

1. Wilson’s accused chin straps do not meet the claim element that requires two
slots, with a second slot having a length “greater than” the length of a first slot.

Wilson’s Accused Products do not meet the element of Claim 1 of the '160 Patent: “said

second slot having a length that is greater than a length of said first slot.” This Court has already

noted that the three slots in Wilson’s chin strap divider are all the same length. Since an element

of Claim 1 is not met by Wilson’s Accused Products, there can be no infringement.

As mentioned above, this Court agreed with Wilson’s construction and ruled that “greater

than” means “longer than.” Thus, to infringe the ‘160 Patent, the strap divider in Wilson’s Accused

Products must literally have a second continuous slot with a length that is longer than the length

of the first slot. Wilson’s Accused Products do not infringe because they do not meet this

limitation.

SportStar cannot rely on the doctrine of equivalents to argue that Wilson’s second and third

slots added together are longer than the first slot on Wilson’s Accused Devices. Once again, the

Court has already addressed this issue in its claim construction ruling. “[T]he key point of the

element at issue is the angular divergence of the two strap portions from one another within that

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[second] slot. SportStar cannot expand the reach of the limitation because the ‘160 Patent was

narrowed specifically to overcome a rejection.” Docket 48, p. 32.

Thus, not only does Wilson not literally infringe Claim 1 of the '160 Patent, but SportStar

is estopped from arguing infringement via the doctrine of equivalents due to the limitations and

disclaimers made during the prosecution of the patent. Accordingly, based simply on the definition

provided by the Court and a simple observation of the Accused Products, there is no genuine issue

of fact, and summary judgment should be granted finding that Wilson does not infringe Claim 1

of the ‘160 Patent.  

2. Under this Court’s definition of “in said second slot,” Wilson’s accused
product does not infringe the ‘160 Patent.

Wilson’s Accused Products also do not meet the following element of Claim 1 of the '160

Patent: “said first strap having a first portion and a second portion juxtaposed together in said first

slot and angularly diverging from each in said second slot.” [Emphasis added]. As mentioned

above, this Court has construed “in said second slot” to mean “within the second single continuous

opening.” Thus, to infringe this claim of the ‘160 Patent, the strap divider of Wilson’s Accused

Product must literally have a strap with a first portion and a second portion juxtaposed together in

a first slot and angularly diverging from each other within the second single continuous opening.

At this point, it is instructive to look back at Figure B, which again shows Wilson’s strap

divider. As is clearly shown in the picture, Wilson’s strap divider does have a first strap, with a

first portion and a second portion juxtaposed together in a first slot. Stated differently, the strap for

the left side of the chin cup doubles up against itself and enters one of the slots of Wilson’s strap

divider. However, unlike the ‘160 Patent claim, after leaving the first slot, the two ends of the strap

do not angularly diverge from each other within a second single continuous opening. Instead, the

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two ends of the strap diverge into two separate slots, such that the divider has three symmetrical

slots, rather than the claimed two slots with the second slot longer then the first.

This structural difference between SportStar’s patent claims and Wilson’s Accused

Products is clear to the eye. Because Wilson’s strap divider does not include the two ends of the

strap diverging from each other within a second single continuous opening, Wilson does not

literally infringe Claim 1 of the ‘160 Patent.

Furthermore, SportStar cannot claim that Wilson’s Accused Products infringe the ‘160

Patent through the doctrine of equivalents. As this Court found in its claim construction ruling,

“SportStar cannot expand the reach of the limitation because the ‘160 Patent was narrowed

specifically to overcome a rejection.” Docket 48, p. 32 (citing Graham, 383 U.S. at 33). With

regards to this second slot, the inventor, Scheibl, specifically noted that unlike the prior art Pietrzak

Patent, his invention had “a first slot in spaced relation to a second slot…. It is indicated that the

second slot has a length that is greater than the first slot.” See Exhibit 5, Patent File History, WIL

000563-64. Again, as this Court noted, “[i]n the Pietrzak Patent, the slots appear to be symmetrical

with each other so that there is not a ‘second slot having a length greater than the length of the first

slot.’” Docket 48, p 32. Wilson’s Accused Products also have symmetrical slots, as already found

by this Court.

Thus, Wilson does not literally infringe Claim 1 of the ‘160 Patent. Moreover, SportStar is

estopped from arguing infringement via the doctrine of equivalents due to the limitations and

disclaimers made during the prosecution history. Therefore, based simply on the definition

provided by the Court and a visual inspection of the accused Wilson strap divider, there is no

question of fact. Summary judgment should be granted finding that Wilson does not infringe Claim

1 of the ‘160 Patent.

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B. Wilson does not infringe the '671 Patent because the Accused Products do not
have a “strap splitter” under this Court’s definition of the claim term.

While the ‘160 Patent includes the limitations discussed above, SportStar has argued that

those same limitations are not part of the ‘671 Patent. However, this Court has ruled that

SportStar’s claim term “strap splitter” inherently contains the same limitations in the ‘671 Patent

as in the ‘160 Patent. Docket 48, pp. 26-29. The ‘671 Patent is a continuation-in-part of the ‘160

Patent. The Court found that Inventor Schiebl acted as his own lexicographer and defined “strap

splitter” as a term of art. Thus, the Court defined “strap splitter” as, “a unitary body with a first

slot in spaced relation to a second slot. A ‘fixed’ bar is formed with the unitary body and positioned

between the first slot and the second slot, with the second slot having a length that is greater

than the first slot.” [Emphasis added]. Both Claims 7 and 10 of the '671 Patent include the element

“a first strap splitter… and a second strap splitter.” [Emphasis added]. Therefore, Wilson does

not infringe the '671 Patent for the same reasons that it does not infringe the '160 Patent: 1)

Wilson’s strap divider has three symmetrical slots and not two slots with the second slot having a

length that is greater than the length of a first slot; and 2) Wilson’s strap divider does not permit

the two strap lengths to diverge from each other within a second slot. Wilson’s Accused Products

do not have a “strap slitter” as that term was defined by the inventor of the '671 Patent.

This Court has already ruled against SportStar’s only argument regarding the “strap

splitter” element. SportStar previously argued that the '671 Patent covers “any strap splitter” and

not just a strap splitter with two slots, with the second slot being longer than the first slot. This

Court specifically rejected that argument in its claim construction ruling:

“Scheibl deliberately amended his claims to narrow the definition of strap splitter to
overcome the examiner’s rejection… during the prosecution of the ‘160 Patent. Therefore
SportStar is barred by prosecution history estoppel from altering the definition now and
expanding the construction of the term ‘strap splitter.’
Nor can SportStar use different definitions in the two patents at issue, as it
now seeks to do in order to broaden its definition.”

14
 
 Case 4:15-cv-01438 Document 55 Filed in TXSD on 02/24/17 Page 18 of 20

Docket 48, p. 26 [emphasis added]. As this Court has held, the ‘671 Patent is subject to the same

claim limitations as the ‘160 Patent as the two patents derive from one original application, and

SportStar remains estopped from arguing the doctrine of equivalents. Docket 48, p. 19,

citing Jonsson v. The Stanley Works, 903 F.2d 812, 817-18 (Fed. Cir. 1990) (“holding that when

two patents issued from continuation-in-part applications derived from one original application,

the prosecution history of a claim limitation in the first patent to issue was properly applied to the

same claim limitation in the second patent to issue.”). Thus, it is ordered that the '671 Patent

contains the same definition of “strap splitter” as the ‘160 Patent. SportStar cannot now seek to

expand the definition of strap splitter to include Wilson’s Accused Products.

Once more, looking at Figure B, this Court can see that Wilson’s strap divider does not

contain all of the elements of SportStar’s patented claims. First, there is no second slot longer than

the first slot. Second, there is no second slot containing both diverging straps. Moreover, Wilson’s

strap divider is not a “strap splitter” under the inventor’s own definition since the slots are

symmetrical. Finally, SportStar is estopped from arguing that Wilson infringes under the doctrine

of equivalents. Thus, Wilson’s Accused Products cannot infringe SportStar’s ‘671 Patent, and the

Court should enter summary judgment of non-infringement in Wilson’s favor. 

V. CONCLUSION

The inescapable conclusion before the Court is that Wilson’s Accused Products do not

infringe the Patents-in-Suit. Under this Court’s recent claim construction ruling, Wilson’s Accused

Products do not have the required “strap splitter” element with a second slot longer than a first

slot. For that reason alone, Wilson’s Accused Products cannot infringe SportStar’s patents. This

15
 
 Case 4:15-cv-01438 Document 55 Filed in TXSD on 02/24/17 Page 19 of 20

matter is ripe for summary judgment as there is nothing for a jury to decide; this Court’s claim

construction ruling already made the relevant decisions.

As detailed above, this Court has already ruled that SportStar’s patent claims cover only

chin straps with strap splitters that have two slots, with the second slot being longer than the first.

This Court has also ruled that SportStar’s patents require the chin strap ends to diverge from each

other in that single second slot. This Court has further ruled that SportStar is foreclosed from

arguing infringement under the doctrine of equivalents. Most importantly, this Court has already

issued a finding of fact that Wilson’s Accused Products have strap dividers with three slots, “all

the same size and symmetrical with each other” and not two slots with the second slot being longer

than the first. Based on these rulings, the Court has already decided that Wilson’s Accused

Products do not infringe SportStar’s patents.

Summary judgment finding that Wilson does not infringe the ‘160 Patent and the ‘671

Patent is proper. Wilson respectfully requests the Court issue an order granting Wilson’s motion

for summary judgment.

Dated: February 24, 2017

Respectfully submitted,

WILSON ELSER MOSKOWITZ

EDELMAN & DICKER LLP

By: /s/ Chandria T. Jackson

Chandria T. Jackson
State Bar NO. 24048569
Federal Bar NO. 635680
909 Fannin, Suite 3300
Houston, Texas 77010
(713) 353-2000
(713) 785-7780 (fax)
Email: Chandria.Jackson@wilsonelser.com

Jeffery A. Key, Esq. (Pro Hac Vice)

16
 
 Case 4:15-cv-01438 Document 55 Filed in TXSD on 02/24/17 Page 20 of 20

KEY & ASSOCIATES

321 N. Clark Street, Suite 500
Chicago, Illinois 60654
(312) 560-2148
Email: jakey@key-and-associates.com

Attorneys for Defendant Wilson Sporting

Goods Co.

17
 
Case 4:15-cv-01438 Document 55-1 Filed in TXSD on 02/24/17 Page 1 of 3

E XH I B I T 1
 Case 4:15-cv-01438 Document 55-1 Filed in TXSD on 02/24/17 Page 2 of 3

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

SPORTSTAR ATHLETICS, INC., §

§
Plaintiff, §
v. §
Civil Action No. 4:15-cv-01438
§
WILSON SPORTING GOODS CO., §
§
Defendant. §
§

DECLARATION OF JEFFERY A. KEY IN SUPPORT OF

DEFENDANT’S MOTION FOR SUMMARY JUDGMENT

I, Jeffery A. Key, declare as follows:

1. I am one of the attorneys of record for Defendant Wilson Sporting Goods Co.

(“Wilson”) in the captioned litigation, and through my own investigation in this case, including

utilizing publicly available information, including from the USPTO’s website, I have personal

knowledge of the matters stated herein.

2. Exhibit 2 to Defendant’s Brief in Support of Motion for Summary Judgement of

Noninfringement (the “Brief”) is a true and correct copy of U.S. Patent No. 7,735,160.

3. Exhibit 3 to the Brief is a true and correct copy of U.S. Patent No. 8,621,671.

4. Exhibit 4 to the Brief is a true and correct copy of the previously served EXPERT

REPORT OF TODD A. RATHE ON ALLEGED INFRINGEMENT, dated August 10, 2016.

5. Exhibit 5 to the Brief is a true and correct copy a true and correct copy, in

pertinent part, of the Prosecution History for U.S. Patent No. 7,735,160.

I declare under penalty of perjury under the laws of the United States of America that the
 Case 4:15-cv-01438 Document 55-1 Filed in TXSD on 02/24/17 Page 3 of 3

foregoing is true and correct.

Executed on February 24, 2017 in Chicago, Illinois.

______________________
Jeffery A. Key

2
Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 1 of 12

E XH I B I T 2
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 2 of 12
111111 1111111111111111111111111111111111111111111111111111111111111
US007735160Bl

c12) United States Patent (10) Patent No.: US 7,735,160 Bl

Schiebl (45) Date of Patent: Jun.15,2010

(54) CHIN GUARD APPARATUS FOR USE WITH A 5,090,061 A 2/1992 Kamata
HELMET 5,546,609 A 8/1996 Rush, III
5,584,076 A 12/1996 Armstrong
(76) Inventor: Paul Schiebl, 1513 Story St., Houston, 5,621,922 A 4/1997 Rush, III
5,794,271 A 8/1998 Hastings
TX (US) 77055
5,826,281 A * 10/1998 Rush, III ....................... 2/421
6,079,053 A 6/2000 Clover, Jr. et a!.
( *) Notice: Subject to any disclaimer, the term of this 6,117,176 A 9/2000 Chen
patent is extended or adjusted under 35 6,138,284 A 10/2000 Arai
U.S.C. 154(b) by 1271 days. 6,256,797 B1 7/2001 Nemoto eta!.
6,298,483 B1 10/2001 Schiebl et a!.
(21) Appl. No.: 11/222,283 6,499,147 B2 * 12/2002 Schiebl et a!. ................. 2/425
2004/0003452 A1 112004 Schiebl
(22) Filed: Sep.8,2005 2004/0191446 A1 9/2004 Kriesel

Related U.S. Application Data * cited by examiner

(63) Continuation-in-part of application No. 10/463,774, Primary Examiner-Tejash Patel
filed on Jun. 16, 2003, now abandoned. (74) Attorney, Agent, or Firm-Egbert Law Offices PLLC

(51) Int. Cl. (57) ABSTRACT

A63B 71110 (2006.01)
(52) U.S. Cl. .......................................................... 2/425 A chin guard apparatus has a shell having a cup suitable for
(58) Field of Classification Search . ... ... ... ... .. ... ... 21411, fitting upon a human chin, a resilient layer received within in
2/414,425,412,417,418,421 the cup of the shell and having a periphery overlying an outer
See application file for complete search history. peripheral edge of the shell, a first strap affixed to one side of
the shell and extending outwardly therefrom, and a second
(56) References Cited
strap affixed to an opposite side of the shell and extending
U.S. PATENT DOCUMENTS outwardly therefrom. A bladder is affixed to a surface of the
resilient layer opposite the shell. Strap splitters are associated
3,729,744 A 5/1973 Rappleyea with each of the first and second straps so as to allow portions
3,935,044 A 111976 Daly
of the strap to be attached to different hook-ups of the helmet.
4,075,717 A 2/1978 Lemelson
4,282,610 A 8/1981 Stiegerwald et a!.
4,831,668 A 511989 Schulz 14 Claims, 5 Drawing Sheets

78

6 6
tL __ ___!
A

WIL00783
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 3 of 12

U.S. Patent Jun.15,2010 Sheet 1 of 5 US 7,735,160 Bl

~10
20

FIG. 1
~10 ~10
16

FIG. 3

FIG. 2 FIG. 4

WIL00784
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 4 of 12

U.S. Patent Jun.15,2010 Sheet 2 of 5 US 7,735,160 Bl

78

6 6
ti_ __
A
___ !

FIG. 5

80

FIG. 6

WIL00785
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 5 of 12

U.S. Patent Jun.15,2010 Sheet 3 of 5 US 7,735,160 Bl

84

FIG. 7

WIL00786
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 6 of 12

U.S. Patent Jun.15,2010 Sheet 4 of 5 US 7,735,160 Bl

84

18

~10

28

FIG. 8

WIL00787
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 7 of 12

U.S. Patent Jun.15,2010 Sheet 5 of 5 US 7,735,160 Bl

16

FIG. 9
92

FIG. 10
102~ 100

MdS~
18~ 104

FIG. 11

WIL00788
 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 8 of 12
US 7,735,160 Bl
1 2
CHIN GUARD APPARATUS FOR USE WITH A
HELMET
RELATED U.S. APPLICATIONS
The present application is a continuation-in-part of U.S.
patent application Ser. No. 10/463,774, filed on Jun. 16, 2003,
and entitled "Helmet Chinstrap", presently pending.
STATEMENT REGARDING FEDERALLY
SPONSORED RESEARCH OR DEVELOPMENT
Not applicable.
REFERENCE TO MICROFICHE APPENDIX
Not applicable.
FIELD OF THE INVENTION
The present invention relates to chin guards for use with
helmets. More particularly, the present invention relates to
chin guards that have protective cups associated therewith for
protection of the chin of the wearer. More particularly, the
present invention relates to chin guards apparatus whereby
the chin strap can be selectively attached to different hookup
points of the helmet. Additionally, the present invention
relates to bladders that can be selectively filled with a fluid so
as to adapt to the needs of the wearer.
BACKGROUND OF THE INVENTION
The invention relates to improvements in protective head-
gear such as football helmets, motorcycle and bicycle hel-
mets, and helmets for other activities where protection from
head impact and injury is desirable. The invention also relates
to protective pads, particularly chin pads.
Protective helmets to minimize head injuries have been
known and used for many years. For example, football helmet
shells have been produced from injection molded ABS, or
polycarbonate plastic. Helmets intended for youth usage have
usually been produced from ABS plastic, and helmets for
adult usage have usually been produced from polycarbonate
plastic. ABS plastic is significantly less expensive than poly-
carbonate, butABS plastic is not as structurally rigid as poly-
carbonate. As the level of intensity of contact in youth football
is significantly lower than that at the adult level, ABS has been
accepted as a satisfactory material for use at the youth level.
For adult helmets, however, the structural rigidity of the poly-
carbonate material is essential to minimize the flex and defor-
mation of the shell under extreme impact conditions.
The National Operating Committee on Standards for Ath-
letic Equipment (NOCSAE) has been responsible for setting
minimal performance criteria for football helmets. The mini-
mum standard acceptance level measured by the Severity
Index (SI) is set at 1200. Through the continuous testing of
NOCSAE, it has been established that the rigidity of polycar-
bonate shells, in comparison to ABS shells, leads to signifi-
cantly lower IS results. From these tests, it is believed that
there is a correlation between the rigidity of the shell material
and improved safety performance.
Protection can also be improved by the addition of a face
mask attached to the helmet. For example, football helmets
are usually equipped over the exposed face area with a vinyl
coated wire or other metal structure, or an injection molded
plastic face mask. The obvious purpose of the face mask is to
protect the face of the player from injury, while not obstruct-
ing the players' vision unnecessarily. The addition of a face
mask can also increase the rigidity of the shell which
improves the SI performance. Helmets are usually tested
without face masks so that the SI performance of a helmet
5 with the mask will somewhat exceed the test standard.
Face masks have been mounted to the exterior surface of
the helmet shell behind the front edge of the helmet face
opening. This design can, under certain conditions, contribute
to serious injury. Helmet shells are specifically designed with
10 smooth spherical surfaces to allow the shells to glance and
slide on impact. The mounting of the face mask on the outer
surface creates the potential that the masks of two players
hitting could become engaged as their helmets are glancing,
changing the directional forces and causing the potential for
15 serious injury.
Protective helmets usually include a chin strap to hold the
helmet on, particularly during impact. In the past, chin straps
were frequently constructed using a molded plastic cup made
of compression or injection-molded plastic material. A pad,
20 usually of a felt or foam material, was bonded or otherwise
attached to the plastic cup. This cup construction is preferable
to non-padded chin straps which have been standard equip-
ment on football helmets. Non-padded chin straps do not
offer any impact protection to the chin area, and only serve to
25 secure the helmet to the player's head. Padded chin cups
provide an added measure of protection to the chin from
impacts, in addition to securing the helmet to the player's
head.
Improvement in the impact absorption performance of
30 padded chin straps is desirable. Most molded plastic chin
cups currently used are molded in a manner which allows the
formed cup to flex upon impact. An improved construction is
a rigid material which does not flex on impact to an undesir-
able degree, thus distributing the impact force over a larger
35 area of the chin.
One key to improved SI performance is related to the
stiffness of the protective shell. The invention provides hel-
met shells which can increase the rigidity of the shell, result-
ing in improved SI performance. An additional and signifi-
40 cant benefit can be a substantial reduction of weight in
comparison to the current plastic shells being produced.
These same methods and structures may be applied to pro-
tective headgear other than football helmets, and to chin cups.
The present inventor is one of the inventors ofU.S. Pat. No.
45 6,298,493, issued on Oct. 1, 2001 to Schiebl eta!. U.S. Pat.
No. 6,298,493 describes a protective headgear that comprises
a rigid shell with face pads that can be released and removed
while the headgear is still on a person's head. A protective
chin guard is attached to the headgear by way of the face pads.
50 The chin guard includes a substantially rigid shell with a
removable insert made of a flexible bladder filled with a
shock-absorbing fluid. The headgear includes a shell made of
an inner and outer material layered over an internal foam core
to effect both strength and light weight.
55 Existing chin straps are usually separately prepared for
attachment to either the high hooknp or the low hookup of a
football helmet. The user of the football helmet will often
desire that the chin strap have different orientations to fit the
desires of the wearer and the configuration of the face of the
60 wearer. Additionally, whether the wearer uses a high hookup
or a low hookup will depend upon the desired amount of
protective performance desired from the chin strap. Unfortu-
nately, conventional chin straps cannot be interchangeably
adapted to the high hooknp or the low hookup configurations.
65 In other circumstances, the cup associated with the protec-
tive shell of the chin strap has an imperfect fit with the wear-
er's chin. In certain circumstances, the user may desire to
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 Case 4:15-cv-01438 Document 55-2 Filed in TXSD on 02/24/17 Page 9 of 12
US 7,735,160 Bl
3 4
have enhanced protection against impacts. The wearer may
desire a more comfortable fit with the cup of the shell of the
protective chin strap. Existing chin straps do not offer the
degree of adjustability desired by the user so as to fit the
performance and comfort goals of the user.
Often, the cup of the chin strap has a peripheral edge which
bears against the skin of the user. In the event of an impact,
this edge can bruise the chin of the user. In the event of a
severe impact, the peripheral edge of the protective shell of
the chin strap can cause adverse impacts to the face of the
user. As such, a need has developed whereby the edge of the
shell of the cup of the chin strap be fully cushioned and
protected from the skin of the wearer.
It is an object of the present invention to provide a chin
guard apparatus which maximizes the protection and comfort
of the user.
It is another object of the present invention to provide a
chin strap apparatus which enhances the degree of protection
against the peripheral edge of the rigid shell of the cup of the
chin guard apparatus.
It is a further object of the present invention to provide a
chin guard apparatus which allows the user to adapt between
different hookup points of the helmet.
It is a further object of the present invention to provide a
chin guard apparatus whereby the cushion of the cup can be
adapted to properly fit the facial configuration and desires of
the user.
It is another object of the present invention to provide a
chin guard apparatus that enhances shock absorption on the
exterior surface of the protective shell of the chin guard.
It is still a further object of the present invention to provide
a chin guard apparatus to provide air circulation with the skin
of the user.
It is still a further object of the present invention to provide
a chin guard apparatus whereby the straps associated with the
apparatus can display team indicia and/or advertising.
These and other objects and advantages of the present
invention will become apparent from a reading of the attached
specification and appended claims.
BRIEF SUMMARY OF THE INVENTION
The present invention a chin guard apparatus for use with a
helmet. This chin guard apparatus includes a shell having a
cup suitable for fitting upon a human chin, a resilient layer
received within in the cup of the shell, a first strap affixed to
one side of the shell and extending outwardly therefrom, and
a second strap affixed to an opposite side of the shell and
extending outwardly therefrom. The shell has an outer
peripheral edge. The resilient layer has a periphery overlying
the outer peripheral edge of the shell. The first and second
straps are suitable for attachment to the helmet.
In the present invention, the outer peripheral edge of the
shell is flanged outwardly away from the cup. The periphery
of the resilient layer extends over and beyond this outer
peripheral edge. In the preferred embodiment of the present
invention, the shell is formed of a rigid polymeric material
while the resilient layer is formed of a foamed polymeric
material.
In one embodiment of the present invention, a bladder can
be affixed to a surface of the resilient layer opposite the shell
or directly to the shell. This bladder is filled at least partially
with a fluid. In particular, the bladder may be selectively
tillable with fluid. In this configuration, a valve means com-
municates with the bladder so as to allow a pump to selec-
tively fill the bladder with fluid. The shell and the resilient
layer have a hole formed therethrough. This valve means
extends through the hole so as to have an inlet of the valve at
an outer surface of the shell.
In the present invention, the shell has a slot formed gener-
5 ally centrally thereof. A shock absorber is affixed within this
slot. The shock absorber is of a material that is more resilient
than a resiliency of a material of the shell.
The present invention has a first strap splitter through
which the first strap extends and a second strap splitter
10 through which the second strap extends. Each of the first and
second strap splitters includes a body having a first slot in
spaced relationship to a second slot. The body has a bar
between the slots. The second slot has a length that is greater
than the first slot. The strap has a first portion and a second
15 portion. Each of the first and second portions extends through
first and second slots and over the bar. The second slot is
suitable for allowing one of the first and second portions to be
attachable to either a high hookup or a low hookup of the
helmet. Each of the first and second slots are in the form of an
20 arcuate slot. The body has a button element positioned over
and adjacent to the first slot.
Each of the first and second straps includes a fabric strap
that is encased in a polymeric material. The polymeric mate-
rial may be suitably translucent or transparent so as to expose
25 the fabric strap therethrough. This fabric strap can be formed
of a natural or synthetic material. The strap can have team
indicia, advertising indicia or other information printed
thereon so that this information is visible through the poly-
meric covering. The polymeric covering of the strap can be of
30 a desired color.
The resilient layer can be directly affixed to the rigid shell.
The resilient layer can be a non-viscous gel material.
BRIEF DESCRIPTION OF THE SEVERAL
VIEWS OF THE DRAWINGS
35
FIG. 1 is a front elevation view showing the chin guard
apparatus in accordance with the preferred embodiment of
the present invention.
FIG. 2 is an exploded view showing the chin guard appa-
40
ratus of the present invention.
FIG. 3 is an interior view of the chin cup as used in the chin
guard apparatus of the present invention.
FIG. 4 is a frontal view showing the chin cup of the chin
guard apparatus of the present invention.
45
FIG. 5 is an isolated view of the strap splitter as used in the
present invention.
FIG. 6 is a cross-sectional view taken across lines 6-6 of
FIG. 5 of the strap splitter of the present invention.
FIG. 7 is a side elevational view of the present invention
50
showing the chin guard apparatus as applied to a high hookup
of a football helmet.
FIG. 8 is a side elevational view showing the chin guard
apparatus of the present invention as applied to a low hookup
of a football helmet.
55
FIG. 9 is a cross-sectional view of the chin cup of the
present invention.
FIG. 10 is a perspective view showing the valve as used
with the inflatable bladder associated with the chin guard
apparatus of the present invention.
60
FIG. 11 is a cross-sectional view as taken across lines
11-11 of FIG. 8 showing the strap as used in the chin guard
apparatus of the present invention.
DETAILED DESCRIPTION OF THE INVENTION
65
Referring to FIG. 1, there is shown the chin guard appara-
tus 10 in accordance with the preferred embodiment of the
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US 7,735,160 Bl
5 6
present invention. The chin guard apparatus 10 includes a
shell12 that has a cup-shape which is suitable for fitting upon
a human chin. The shell12 includes an outer peripheral edge.
A resilient layer 14 is received within the shell. The resilient
layer 14 has an outer periphery 16 that overlies the outer
peripheral edge of the shell12. A first strap 18 is affixed to one
side of the shell12 and extends outwardly therefrom. The first
strap 18 is suitable for attachment to a helmet. A first strap 20
is affixed to an opposite side of the shell 12 and extends
outwardly therefrom. This second strap 20 is also suitable for
attachment to another location on the helmet.
As can be seen in FIG. 1, the shell12 has a cup-shape with
a plurality of holes 22 formed therethrough. The holes 22 are
configured so as to allow air to circulate into the interior of the
cup-shape of the shell12. This feature improves air circula-
tion with the skin of the user so as to avoid rashes and skin
discomfort.
The shell 12 has a shock absorber 24 located generally
centrally thereof. The shock absorber 24 is affixed within a
slot formed on the exterior surface of the shell12. The shock
absorber 24 will have a resiliency which is greater than the
resiliency of the remainder of the shell 12. As a result, any
direct impacts onto the central portion of the shell 12 are
effectively absorbed, dispersed and/or distributed.
An air valve 26 is located in a hole formed in the shell12
adjacent to the shock absorber 24. The air valve 26 commu-
nicates with a bladder located on the interior of the shell 12
and the resilient layer 14. As such, the user can apply a pump
to this valve 26 so as to introduce air (or possibly a liquid) into
a bladder located on the interior of the shell12.
A rigid layer 12 is formed of a rigid polymeric material,
such as a polycarbonate material. The resilient layer 14 is
generally of a foamed polymeric material. The resilient layer
14 has a periphery that extends over and beyond the outer
peripheral edge of the shell12. The resilient layer 14 provides
some shock absorption in combination with the shell 12. In
other words, the rigid nature of the shell12 will tend to resist
impacts and distribute the force of the impact. The resilient
layer 14 would absorb any shocks applied to the rigid shell12.
The resilient layer can be formed of a non-viscous gel.
In FIG. 1, it can be seen that the first strap 18 include a first
strap portion 28 and a second strap portion 30. These strap
portions extend through a slot 32 formed through the shell12
on one side of the shell12.A strap splitter 34 is positioned on
the portions 28 and 30 so as to allow the portions 28 and 30 to
be respectively affixed to desired locations on a football hel-
met. The second strap 20 also has a similar configuration as
the first strap 18 with a first portion 36 and a second portion
38. The strap splitter 40 allows the portions 36 and 38 to be
affixed to respective connections on the football helmet. The
strap 20 passes through a slot 42 formed on an opposite side
of the shell12. A snap 44 is secured to the portion 30 of strap
18. A snap 46 is secured to the portion 28 of strap 18. A snap
48 is secured to the portion 36 of strap 20. Similarly, a snap 50
is secured to the portion 38 of strap 28. Snaps 44, 46, 48 and
50 are suitable for being secured onto the hookups of a foot-
ball helmet.
FIG. 2 is an exploded view of the chin guard apparatus 10
of the present invention. In FIG. 2, it can be seen that the shell
12 has a generally cup-shape and an outer peripheral edge 52.
The shell12 includes holes 22 which facilitate air circulation
into the interior of the cup shape of the shell12. A slot 54 is
formed centrally of the shell12. Slot 54 is configured so as to
allow for the receipt of a shock absorber therein.
The resilient layer 14 also has a cup-shape and is positioned
substantially in the interior of the shell12. Resilient layer 14
also has holes 56 which are aligned with the holes 22 on the
shell12. A central opening 58 is formed in the resilient layer
14 so as to align with the openings 60 located on opposite
sides of the slot 54. The resilient layer 14 has a periphery 16
which will overlie the outer peripheral edge 52 of the shell12.
5 It can be seen that the outer peripheral edge 52 of the shell12
is flanged outwardly from the remainder of the shell12. The
periphery 16 of the resilient layer 14 should have a sufficient
size so as to completely overlie and extend over and beyond
the outer peripheral edge 52 of the shell 12. As such, any
10 impacts applied upon the surface of the shell 12 will be
absorbed by the resilient layer 14 at the outer periphery 16.
This will prevent any damaging direct contacts between the
rigid outer peripheral edge 52 of the shell12 and the face of
the user.
15 In FIG. 2, it can be seen that there is a bladder 62 that is be
positioned on the interior of the resilient layer 14 and on the
interiorofthe shell12. Bladder 62 has a general configuration
similar to that described in U.S. Pat. No. 6,298,483 by the
present inventor. However, it can be seen that the bladder 62
20 includes a valve 26 that communicates with the interior of the
bladder 62. Valve 26 will extend through the hole 58 and into
one of the openings 60 on opposite sides of the slot 54 of the
shell 12. As a result, the end face 64 of the valve 26 will be
exposed on the exterior of the shell12. When a suitable needle
25 is inserted into the valve 26, an air pump can be used so as to
inflate and/or deflate the interior of the bladder 62. As a result,
the present invention allows the chin guard apparatus 10 of
the present invention to be suitably adapted to various shapes
and sizes of human chins while providing a desired degree of
30 comfort and protection to the user.
FIG. 3 shows the interior of the chin guard apparatus 10.
The outer periphery 16 of the resilient layer 14 will overlie the
outer peripheral edge 52 of the shell 12. The bladder 62 is
affixed into the interior of the resilient layer 14. The bladder
35 62 includes finger elements which extend longitudinally out-
wardly from a central portion. As was described in U.S. Pat.
No. 6,298,483, this configuration provides enhanced protec-
tion and comfort to the user.
FIG. 4 illustrates the face of the chin guard apparatus 10 of
40 the present invention. In FIG. 4, it can be seen how the outer
periphery 16 of the resilient layer 14 overlies the outer periph-
era! edge 52 of the shell12. The shock absorber 24 is affixed
within the slot 54 located centrally of the shell12. The valve
face 64 is exposed through one of the openings 60 on one side
45 of the shock absorber 24. The first strap 18 is illustrated as
extending the slot 32 of the shell 12. The second strap 20
extends through the slot 42 of the shell12.
A unique feature of the present invention is illustrated in
FIG. 5. In particular, FIG. 5 shows the strap splitter 40. The
50 strap splitter 40 is intended to allow the user conveniently to
connect the strap portions 36 and 38 to either a high hookup
or a low hookup of a football helmet. The strap splitter 40
includes a body 66 formed of a polymeric material. A first slot
68 opens through the body 66. A second slot 70 is in spaced
55 relationship to the first slot 68 and also opens through the
body. A bar 72 is formed between the slots 68 and 70. The
slots 68 and 70 are configured so as to allow the strap portions
36 and 38 to pass therethrough and over the bar 72. The
second slot 70 has a length that is greater than the first slot 68.
60 Each of the first portion 36 and the second portion 38 will
extend through the slots 68 and 70 and over the bar 72 so as to
allow at least one of the portions 36 and 38 to be attached to
either a high hookup or a low hookup of the helmet. A button
element 74 is positioned over and adjacent to the first slot 68.
65 An indicia 76 may be positioned on the exterior surface of the
button element 74 for displaying a team logo, marketing
and/or advertizing material, or any other information that the
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US 7,735,160 Bl
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user may want to be visibly displayed. Gripping elements 76
and 78 are formed on the outer periphery of the strap splitter
40. The gripping elements 76 and 78 can be knurled surfaces
so as to facilitate the ability of the user to grip the strap splitter
40 and move the strap splitter 40 along the strap 20, as desired.
Although FIG. 5 shows the strap splitter 40, the strap
splitter 34 will have an identical configuration and can be
used so as to receive the portions 28 and 30 of the strap 18
therethrough.
FIG. 6 is a cross-sectional view showing the configuration
of the strap splitter 40. It can be seen that the first slot 68 is in
spaced relationship to the second slot 70. The bar 72 extends
between the slots 68 and 70. The button element 74 extends
upwardly at an angle over the first slot 68 and generally
adjacent to the bar 72. As such, the strap portions 36 and 38
can be easily threaded through the slot 68, over the bar 72 and
back down through the slot 70 and under the end portion 80.
The indicia 76 can be placed upon the face 82 of the button
element 74.
FIG. 7 illustrates the application of the chin guard appara-
tus 10 of the present invention to a high hookup of a football
helmet 84. It can be seen that the football helmet 84 has
connections 86, 88 and 90 thereon. Strap 18 is individually
illustrated with its portion 28 affixed in snap-fit relationship
onto the connector 86. The portion 30 of strap 18 is secured to
the high hooknp connector 90. The strap 18 extends through
the slot 70 of the strap splitter 34. Similarly, the portion also
extends through the slot 70 of the strap splitter 34. The rela-
tively long length of the slot enhances the ability of the strap
18 to angularly divert the portions 28 and 30 so as to achieve
a high hookup configuration.
FIG. 8 shows the strap 18 as configured for a low hookup on
the football helmet 84. As can be seen, the portion 28 is also
secured to the connector 86. The portion 30 is in snap-fit
relationship with the low hooknp connector 88 of the football
helmet 84. The portions 28 and 30 are less angularly separated
and are closer together within the slot 70 of the strap splitter
34.
The adaptability of the present invention allows the straps
18 and 20 to be used in association with either the high
hookup or low hookup. It is not necessary for the football
player to entirely replace the straps when he desires to move
from a low hooknp to a high hookup. Additionally, the present
invention allows for only a single strap 18 and/or 20 to be used
in association with the chin guard apparatus 10. Prior art
arrangements often require two separate straps that extend in
angularly different arrangements so as to achieve the desired
high hookup or low hooknp configuration of the strap.
FIG. 9 illustrates the manner in which the resilient layer 14
is received within the rigid shell12. As can be seen, the outer
peripheral edge 52 of the shell12 is flanged outwardly from
the remaining body 90 of the shell12. The resilient layer 14
has a periphery 16 which will overlie the outer peripheral
edge 52 and extend entirely thereover. As a result, any inju-
rious contact between the rigid peripheral edge 52 of the shell
12 and the face of the user is effectively avoided no matter
what type of impact is applied to the shell12.
It should be noted that, within the concept of the present
invention, the chin guard apparatus 10 can simply have the
rigid shell12 and the resilient layer 14 affixed to each other. In
certain circumstances, the resilient layer 14 can be securely
and integrally affixed to the interior surfaces of the shell
during assembly at the factory. In other circumstances, the
resilient layer 14 can have a different color or appearance than
that of the shell 12 so as to allow assembly in remote loca-
tions.
FIG. 10 is an isolated view of the valve connection 26 with
the bladder 62. It can be seen that the valve 26 has a face 64
which generally conforms in shape to the opening 60 located
adjacent to the shock absorber 54 on the shell12. A hole 92 is
5 formed through the interior of the valve 26 so as to extend
downwardly through tubular connector 94. Tubular connec-
tor 94 can be inserted into an opening associated with the
bladder 62. The frustoconical shape of the sections 96 and 98
of the tubular portion 94 ensure an air tight relationship
10 between the valve 26 and the connector with the bladder 62.
When a needle is inserted into the hole 92, interior surfaces
within the hole 92 open so as to allow the needle to be inserted
thereinto. As a result, an air pump can apply air through the
hole 92 and into the interior of the bladder 62. When a suffi-
15 cient amount of air has been applied into the interior of the
bladder 62, the needle can slide outwardly through the hole 92
such that the interior surfaces on the interior of hole 92 will
reunite so as to prevent escape of air through the valve 26.
FIG. 11 shows a cross-sectional view of the portion 30 of
20 the strap 18. In FIG. 11, it can be seen that the strap 18 is
configured with a fabric strip 100 encased between polymeric
sides 102 and 104. The fabric strips 100 can be formed of a
polymeric fabric material or a natural fabric material. The
fabric strip 100 can be imprinted with team logos, marketing
25 information, advertisements or other information. The poly-
meric layers 102 and 104 are suitably transparent and/or
translucent so as to allow the information imprinted on the
fabric strip 100 to be visible therethrough. It is believed that
the appearance of the fabric strip enhances the aesthetic
30 appeal of the strap 18. The encasing of the fabric strip 100
within the polymeric layers 102 and 104 ensures a long life
for the strap 18 without deterioration or damage.
The foregoing disclosure and description of the invention
is illustrative and explanatory thereof. Various changes in the
35 details of the illustrated construction can be made within the
scope of the appended claims without departing from the true
spirit of the invention. The present invention should only be
limited by the following claims and their legal equivalents.
I claim:
40 1. A chin guard apparatus for use with a helmet in which the
helmet has a high hook-up and a low hook-up, the chin guard
apparatus comprising:
a shell having a cup suitable for fitting upon a human chin,
said shell having an outer peripheral edge, said shell
45 having a single first strap-receiving slot adjacent one
side of said shell and a single second strap-receiving slot
adjacent an opposite side of said shell;
a resilient layer received within said cup of said shell, said
resilient layer having a periphery overlying said outer
50 peripheral edge of said shell;
a first strap extending through said first strap-receiving slot
of said shell and extending outwardly therefrom, said
first strap suitable for attachment to the helmet;
a second strap extending through said second strap-receiv-
55 ing slot of said shell and extending outwardly therefrom,
said second strap suitable for attachment to the helmet;
and
a first strap splitter through which said first strap extends,
said first strap splitter comprising a unitary body having
60 a first slot in spaced relationship to a second slot, said
first strap splitter having a fixed bar formed therewith
and positioned between said first slot and said second
slot, said second slot having a length that is greater than
a length of said first slot, said first strap having a first
65 portion and a second portion juxtaposed together in said
first slot and angularly diverging from each in said sec-
ond slot, said first portion and said second portion being
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US 7,735,160 Bl
9 10
angularly adjustable with respect to each other so as to
allow one of said first and second portions to be attached
to either the high hook-up or low hook-up of the helmet.
2. The apparatus of claim 1, said outer peripheral edge of
said shell being flanged outwardly away from said cup, said
periphery of said resilient layer extending over and beyond
said outer periphery.
3. The apparatus of claim 1, said resilient layer being of a
non-fluid gel material.
4. The apparatus of claim 1, further comprising:
a bladder affixed to or interconnected to said shell, said
bladder being filled at least partially with a fluid.
5. The apparatus of claim 4, said bladder being selectively
Tillable with a fluid, the apparatus further comprising:
a valve means communicating with said bladder for allow- 15
ing a pump to selectively fill said bladder.
6. The apparatus of claim 5, said shell and said resilient
layer having a hole formed therethrough, said valve means
extending through said hole so as to have an inlet of said valve
on an outer surface of said shell.
7. The apparatus of claim 1, said shell having a slot gener-
ally centrally thereof, the apparatus further compri~ing:
a shock absorber affixed within said slot, smd shock
absorber being of a material that is more resilient than a
resiliency of a material of said shell.
8. The apparatus of claim 1, further comprising:
a second strap splitter through which said second strap
extends.
9. The apparatus of claim 8, said second strap splitter
comprising:
a unitary body having a first slot in spaced relationship to a
second slot, said unitary body having a bar between said
first and second slots, said second slot having a length
that is greater than a length of said first slot, the strap
having a first portion and a second portion, each of said 35
first and second portions extending through said first and
second slots and over said bar, said second slot suitable
for allowing one of said first and second portions to be
attachable to either the high hook-up or the low hook-up
of the helmet.
10. The apparatus of claim 9, each of said first and second
slots of said body being an arcuate slot, said body having a
button element positioned over and adjacent to said first slot.
11. The apparatus of claim 1, each of said first and second
straps comprising:
a fabric strap encased in a polymeric material, said poly-
meric material being suitably translucent so as to expose
said fabric strap therethrough.
12. A chin guard apparatus for use with a helmet in which
the helmet has a high hook-up and a low hook-up, the chin so
guard apparatus comprising:
a shell having a cup suitable for fitting upon a human chin,
said shell having an outer peripheral edge;
a resilient layer received within in said cup of said shell;
a first strap affixed to one side of said shell and extending
outwardly therefrom, said first strap suitable for attach-
ment to the helmet;
a second strap affixed to an opposite side of said shell and
extending outwardly therefrom, said second strap suit-
able for attachment to the helmet;
10
a first strap splitter through which said first strap extends,
said first strap splitter comprising a unitary body having
a first slot in spaced relationship to a second slot, said
first strap splitter having a fixed bar formed therewith
and positioned between said first slot and said second
slot, said second slot having a length that is greater than
a length of said first slot, said first strap having a first
portion and a second portion juxtaposed together in said
first slot and angularly diverging from each in said sec-
ond slot, said first portion and said second portion being
20
angularly adjustable with respect to each other so as to
allow one of said first and second portions to be attached
to either the high hook-up or low hook-up of the helmet;
and
a second strap splitter through which said second strap
25
extends, said second strap splitter comprising a unitary
body having a first slot in spaced relationship to a second
slot said second strap splitter having a fixed bar formed
the;ewith and positioned between said first slot and said
second slot, said second slot of said second strap splitter
30
having a length that is greater than a length said first slot
of said second strap splitter, said first strap having a first
portion and a second portion juxtaposed together in said
first slot of said second strap splitter and angularly
diverging from each in said second slot of said second
strap splitter, said first portion and said second portion of
said second strap being angularly adjustable with
respect to each other so as to allow one of said first and
second portions of said second strap to be attached to
either the high hook-up or low hook-up of the helmet.
40
13. The apparatus of claim 12, each of said first and second
slots of said body of each of said first and second strap
splitters being an arcuate slot, said body having a button
element positioned over and adjacent said first slot.
45 14. The apparatus of claim 12, each of said first and second
straps comprising:
a fabric strip encased in a polymeric material, said poly-
meric material being suitably translucent so as to expose
said fabric strip therethrough.
* * * * *
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E XH I B I T 3
 Case 4:15-cv-01438 Document 55-3 Filed in TXSD on 02/24/17 Page 2 of 11
111111 1111111111111111111111111111111111111111111111111111111111111
US008621671Bl

c12) United States Patent (10) Patent No.: US 8,621,671 B1

Schiebl (45) Date of Patent: Jan.7,2014

(54) PROTECTIVE CHIN GUARD (56) References Cited

(76) Inventor: Paul Schiebl, Houston, TX (US) U.S. PATENT DOCUMENTS

( *) Notice: Subject to any disclaimer, the term of this 3,619,813 A * 1111971 Marchello ......................... 2/421
3,916,446 A * 1111975 Gooding ........................... 2/421
patent is extended or adjusted under 35 5,794,274 A * 8/1998 Kraemer ........................... 2/421
U.S.C. 154(b) by 238 days. 6,298,483 B1 10/2001 Schiebl eta!.
6,481,024 B1 * 1112002 Grant ................................ 2/421
(21) Appl. No.: 13/190,045 6,499,147 B2 12/2002 Schiebl eta!.
7,886,370 B2 * 2/2011 Winningham .................... 2/421
(22) Filed: Jul. 25, 2011 * cited by examiner
Related U.S. Application Data Primary Examiner- Tejash Patel
(63) Continuation-in-part of application No. 11/752,100, (74) Attorney, Agent, or Firm- Egbert Law Offices, PLLC
filed on May 22, 2007, now Pat. No. 8,006,322, which
is a continuation-in-part of application No. (57) ABSTRACT
11/222,283, filed on Sep. 8, 2005, now Pat. No. A chin guard has a shell with a cup suitable for fitting upon a
7,735,160, which is a continuation-in-part of human chin and a resilient layer received within the cup of the
application No. 10/463,774, filed on Jun. 16, 2003, shell. The resilient layer is suitable for contacting the human
now abandoned. chin. The shell has a first strap-receiving slot on one side
thereof and a second strap-receiving slot on an opposite side
(51) Int. Cl. thereof. Each of the first and second strap-receiving slots
A42B 7100 (2006.01) open through a thickness of the shell. A first strap extends
(52) U.S. Cl. through the first strap-receiving slot and a second strap
USPC .............................................................. 2/421 extends through said second strap-receiving slot. The first and
(58) Field of Classification Search second slots are arranged transverse to a longitudinal axis of
USPC ............. 2/421,410,411,414,417,418,422, the shell.
2/425, 9, 455
See application file for complete search history. 18 Claims, 4 Drawing Sheets

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U.S. Patent Jan.7,2014 Sheet 1 of 4 US 8,621,671 B1

FIG. 1

~:-._~-- - - ~~-=--==---= ------------= --~-"

-.----===--=-==--- J
--~-==-----~~~----- _
-------~ -==--~~----~~
-:_-=:::---..--
ll-

FIG. 2

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U.S. Patent Jan.7,2014 Sheet 2 of 4 US 8,621,671 B1

f "
"!
,,
'

,,,,
(

FIG. 3

FIG. 4

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U.S. Patent Jan.7,2014 Sheet 3 of 4 US 8,621,671 B1

I~

FIG. 5

.cE:--- I o

FIG. 6

(2.

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U.S. Patent Jan.7,2014 Sheet 4 of 4 US 8,621,671 B1

FlG. 7

FIG. B

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US 8,621,671 B1
1 2
PROTECTIVE CHIN GUARD
CROSS-REFERENCE TO RELATED U.S.
APPLICATIONS
The present invention is a continuation-in-part of U.S.
application Ser. No. 11/752,100, filed on May 22, 2007, and
entitled "Padded Chin Guard", presently pending. U.S. appli-
cation Ser. No. 11/752,100 is a continuation-in-part of U.S.
application Ser. No. 11/222,283, filed on Sep. 8, 2005 and
entitled "Chin Guard Apparatus for use with a Helmet",
issued as U.S. Pat. No. 7,735,160 on Jun. 15, 2010. U.S.
application Ser. No. 11/222,283 is a continuation-in-part of
U.S. patent application Ser. No. 10/463,774, filed on Jun. 16,
2003, and entitled "Helmet Chinstrap", now abandoned.
STATEMENT REGARDING FEDERALLY
SPONSORED RESEARCH OR DEVELOPMENT
Not applicable.
NAMES OF PARTIES TO A JOINT RESEARCH
AGREEMENT
Not applicable.
REFERENCE TO AN APPENDIX SUBMITTED
ON COMPACT DISC
Not applicable.
BACKGROUND OF THE INVENTION
1. Field of the Invention
The present invention relates to chin guards for use with
helmets. More particularly, the present invention relates to
chin guards that have protective cups associated therewith for
protection of the chin of the wearer. More particularly, the
present invention relates to chin guards apparatus that have at
least one resilient layer extending across an interior surface of
the protective cup.
2. Description of Related Art
Including Information Disclosed Under 37 CFR 1.97 and
37 CFR 1.98.
The invention relates to improvements in protective head-
gear such as football helmets, lacrosse helmets, hockey hel-
mets, bull riding helmets, motorcycle and bicycle helmets,
and helmets for other activities where protection from head
impact and injury is desirable. The invention also relates to
protective pads, particularly chin pads.
Protective helmets to minimize head injuries have been
known and used for many years. For example, football helmet
shells have been produced from injection molded ABS, or
polycarbonate plastic. Helmets intended for youth usage have
usually been produced from ABS plastic, and helmets for
adult usage have usually been produced from polycarbonate
plastic. ABS plastic is significantly less expensive than poly-
carbonate, butABS plastic is not as structurally rigid as poly-
carbonate. As the level of intensity of contact in youth football
is significantly lower than that at the adult level, ABS has been
accepted as a satisfactory material for use at the youth level.
For adult helmets, however, the structural rigidity of the poly-
carbonate material is essential to minimize the flex and defor-
mation of the shell under extreme impact conditions.
The National Operating Committee on Standards for Ath-
letic Equipment (NOCSAE) has been responsible for setting
minimal performance criteria for football helmets. The mini-
mum standard acceptance level measured by the Severity
Index (IS) is set at 1200. Through the continuous testing of
NOCSAE, it has been established that the rigidity of polycar-
bonate shells, in comparison to ABS shells, leads to signifi-
5 cantly lower IS results. From these tests, it is believed that
there is a correlation between the rigidity of the shell material
and improved safety performance.
Protection can also be improved by the addition of a face
mask attached to the helmet. For example, football helmets
10 are usually equipped over the exposed face area with a vinyl
coated wire or other metal structure, or an injection molded
plastic face mask. The obvious purpose of the face mask is to
protect the face of the player from injury, while not obstruct-
ing the player's vision unnecessarily. The addition of a face
15 mask can also increase the rigidity of the shell which
improves the IS performance. Helmets are usually tested
without face masks so that the IS performance of a helmet
with the mask will somewhat exceed the test standard.
Face masks have been mounted to the exterior surface of
20 the helmet shell behind the front edge of the helmet face
opening. This design can, under certain conditions, contribute
to serious injury. Helmet shells are specifically designed with
smooth spherical surfaces to allow the shells to glance and
slide on impact.
25 Protective helmets usually include a chin strap to retain the
helmet, particularly during impact. In the past, chin straps
were frequently constructed using a molded plastic cup made
of compression or injection-molded plastic material. A pad,
usually of a felt or foam material, was bonded or otherwise
30 attached to the plastic cup. This cup construction is preferable
to non-padded chin straps which have been standard equip-
ment on football helmets. Non-padded chin straps do not
offer any impact protection to the chin area, and only serve to
secure the helmet to the player's head. Padded chin cups
35 provide an added measure of protection to the chin from
impacts, in addition to securing the helmet to the player's
head.
Improvement in the impact absorption performance of
padded chin straps is desirable. Most molded plastic chin
40 cups currently used are molded in a manner which allows the
formed cup to flex upon impact. An improved construction is
a rigid material which does not flex on impact to an undesir-
able degree, thus distributing the impact force over a larger
area of the chin.
45 The present inventor is the owner of U.S. Pat. No. 6,298,
493, issued on Oct. 1, 2001 to Schiebl et a!. U.S. Pat. No.
6,298,493 describes a protective headgear that comprises a
rigid shell with face pads that can be released and removed
while the headgear is still on a person's head. A protective
50 chin guard is attached to the headgear by way of the face pads.
The chin guard includes a substantially rigid shell with an
insert made of a flexible bladder filled with a shock-absorbing
fluid. The headgear includes a shell made of an inner and
outer material layered over an internal foam core to effect
55 both strength and lightweight construction.
The cup associated with the protective shell of the chin
strap often has had an imperfect fit with the wearer's chin. In
certain circumstances, the user may desire to have enhanced
protection against impacts. The wearer may also desire a
60 more comfortable fit with the cup of the shell of the protective
chin strap and more comfortable contact between the chin and
an interior surface of the chin guard.
In prior art chin straps, there is often an inferior connection
between the actual chin guard and the straps. In order to
65 achieve maximum integrity, it is important for the straps to be
securely connected to the chin guard. If the strap should
become disconnected or torn from the chin guard, then inad-
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US 8,621,671 B1
3 4
equate protection of the person wearing the chin guard will
result. Additionally, many connecting structures between the
straps in the chin guard involve a rather complicated looping
of straps through multiple slots formed on the chin guard.
This can create an unattractive appearance and an inadequate
fit. As such, a need has developed so as to provide a chin guard
wherein the straps can be easily and adjustably connected to
the chin guard in a secure and stable manner.
It is an object of the present invention to provide a chin
guard apparatus which maximizes the protection and comfort
of the user.
It is a further object of the present invention to provide a
chin guard apparatus whereby the cushion of the cup can be
adapted to properly fit the facial configuration and desires of
the user.
It is another object of the present invention to provide a
chin guard apparatus that enhances shock absorption.
It is another object of the present invention to provide a
chin guard which allows the straps to be easily and securely
connected thereto.
It is a further object of the present invention to provide a
chin guard whereby the straps of the chin guard are more
securely retained by the chin guard.
It is still another object of the present invention to provide
a chin guard which avoids unnecessary looping and buckling
of the straps to the chin guard.
It is another object of the present invention to provide a
chin guard apparatus that is relatively inexpensive, easy to
manufacture and easy to assemble.
These and other objects and advantages of the present
invention will become apparent from a reading of the attached
specification and appended claims.
BRIEF SUMMARY OF THE INVENTION
The present invention is a chin guard apparatus for use with
a helmet. The chin guard has a shell with a cup suitable for
fitting upon a human chin. The shell has a first strap-receiving
slot on one side thereof and a second strap-receiving slot on
an opposite side thereof. Each of the first and second strap-
receiving slots open through a thickness of the shell. A resil-
ient layer is received within the cup of the shell. This resilient
layer is suitable for contacting the human chin
In the preferred embodiment of the present invention, each
of the first and second strap-receiving slots extend transverse
to a longitudinal axis of the shell. The first strap-receiving slot
is a single slot on the one side of the shell. The second
strap-receiving slot is a single slot on the opposite side of the
shell.
The resilient layer is in surface-to-surface contact with an
inner surface of the shell. The resilient layer has a padded
section formed centrally on a side of the resilient layer oppo-
site the shell.
In one embodiment of the present invention, the resilient
layer is of a foam material. In other embodiments of the
present invention, the resilient layer can be of a fabric, rubber,
elastomeric, silicone or other soft materials.
A first strap extends through the first strap-receiving slot. A
second strap extends through the second strap-receiving slot.
Each of the first and second straps has a portion positioned
between an inner surface of the resilient layer and an inner
surface of shell.
The shell has an outer peripheral edge. The shell also has
first channel extending from the first strap-receiving slot to
the outer peripheral edge. The first strap has a portion extend-
ing along this first channel. The shell further has a second
channel extending from second strap-receiving slot to the
outer peripheral edge. The second strap has a portion extend-
ing along this second channel
The single strap-receiving slot on opposite sides of the
shell assures a proper and secure connection between the
straps and the chin guard. Since the slots are formed through
the rigid polymeric material of the shell, the straps are con-
nected to a rigid material rather than a flexible, and possibly
tearable, material. The use of the transverse orientation of the
10 slots assures a proper threading of the strap through the shell
of the chin guard. The alignment of the strap is assured
through the use of the channels associated with each of the
slots. The present invention avoids the unnecessary looping
and cross-threading associated with other chin guards. As
15 such, the straps can be installed in a quick, easy and secure
manner. The strap can have portions that extend outwardly
from the shell of the chin guard so as to be secured to the high
and low hook-ups of a helmet.
20 BRIEF DESCRIPTION OF THE SEVERAL
VIEWS OF THE DRAWINGS
FIG. 1 is a perspective view of the chin guard in accordance
with the preferred embodiment of the present invention.
25 FIG. 2 is a frontal view of the chin guard of the present
invention.
FIG. 3 is a back view of the chin guard of the present
invention.
FIG. 4 is a side elevational view of the chin guard of the
30 present invention.
FIG. 5 is an end view of the chin guard of the present
invention.
FIG. 6 is an upper perspective exploded view of the chin
guard of the present invention.
35 FIG. 7 is a frontal view of the chin guard of the present
invention showing, in particular, the mechanism for assuring
a divergent relationship of the straps.
FIG. 8 is a frontal view of an alternative embodiment of the
present invention.
40
DETAILED DESCRIPTION OF THE INVENTION
Referring to FIG. 1, there is shown the chin guard 10 in
accordance with the preferred embodiment of the present
45 invention. The chin guard 10 includes a shell12 and a resilient
layer 14. The shell12 has a cup 16 suitable for fitting upon a
hnman chin. The shell has an outer peripheral edge 18 that
extends therearound and extends outwardly of the outer
periphery of the cup 16. The resilient layer 14 is received
50 within the cup 16 of shell 12. The resilient layer 14 has a
periphery 20 which overlies the outer peripheral edge 18 of
the shell12.
As can be seen in FIG. 1, the shell12 is formed of a rigid
polymeric material. Holes 22, 24, 26 and 28 are formed
55 through the shell12 so as to allow air circulation to contact the
chinoftheuser. Similarly, as will be described hereinafter, the
resilient layer 14 also includes holes 30, 32 and 34 which are
aligned with the through holes 22, 24 and 26, respectively, of
the shell12. This arrangement of aligned holes ensures proper
60 air circulation to the chin of the wearer.
The shell 12 also includes a first generally semi-circular
opening 36 and a second semi-circular opening 38 formed
centrally of the cup 16. The semi-circular openings 36 and 38
will receive semi-circular shaped insert members 40 and 42,
65 respectively, of the resilient layer 14. A bnmper member 44 is
received between the semi-circular openings 36 and 38 so as
to extend thereacross. Bumper member 44 can provide shock
WIL00800
 Case 4:15-cv-01438 Document 55-3 Filed in TXSD on 02/24/17 Page 9 of 11
US 8,621,671 B1
5 6
absorbency at the very center of the shell 12. The bumper
member 44 can be formed of various materials.
The shell 12 includes a slot 46 formed on one side and
another slot formed on the opposite side. The slot 46 is suit-
able for receiving the strap which serves to connect the chin
guard 10 to a helmet. A suitable channel 48 can be formed on
the resilient member 14 generally adjacent to the slot 46 so as
to provide a suitable guide for the chin strap extending there-
across.
The shell12 is formed of a rigid polymeric material while
the resilient layer 14 is formed of a foam or other soft mate-
rial. Since there are only two main components of the chin
guard 10 of the present invention, the chin guard 10 can be
assembled in an easy manner. Additionally, the manufactur-
ing costs associated with forming the chin guard 10 of the
present invention are minimal. These goals can be accom-
plished while, at the same time, providing maximum protec-
tion to the wearer of the chin guard. Since the resilient layer
14 overlies the outer peripheral edge 18 of the shell12, sharp
contacts between the outer peripheral edge 18 of the shell12
and the face of the wearer are effectively cushioned.
FIG. 2 shows a front view of the chin guard 10 of the
present invention. In FIG. 2, the holes 22, 24, 26 and 28 are
fully illustrated. Each of these holes 22, 24, 26 and 28 has a
generally oval or oblong configuration. The respective holes
30, 32, 34 and 50 of the resilient layer 14 are illustrated as
aligned with the respective holes 22, 24, 26 and 28. The oval
nature of the holes 22, 24, 26 and 28 assures full air circula-
tion to the wearer even in the event that the resilient layer 14
has shifted slightly out of position. The semi-circular open-
ings 36 and 38 are illustrated as located within the center of
the cup 16 ofshell12. The bumpermember44 has a generally
reverse Z-shaped configuration.
In FIG. 2, it can be seen that there is a first strap 47 that
extends through the slot 46. Another strap 49 extends through
the slot 52. Each of these slots 46 and 52 extends in an
orientation generally transverse to a longitudinal axis of the
shell12. It can be seen that there is a single slot 46 on one side
of the shell12 and a single slot 52 on an opposite side of the
shell 12. Each of the slots 46 and 52 extends through the
thickness of the polymeric material used to form the shell12.
The first strap 47 extends through the slot 46. It can be seen
that the strap 47 has a portion 51 that will extend along the
channel 48 formed adjacent to the slot 46. As such, the chan-
nel 48 will assure the proper alignment of the strap 47. The
strap 47 also has another portion 53 that extends outwardly
from the backside of the shell12. This second portion 53 will
extend between the inner surface of the shell12 and the inner
surface of the resilient layer 14. Eachofthe portions 51 and 53
extends outwardly of the shell 12. A suitable mechanism,
such as a strap splitter, can be utilized so as to properly align
the portions 51 and 53 so that the opposite ends of the strap 47
can be secured to the high or low hook-ups of a football
helmet.
The strap-receiving slot 52 is formed on the opposite side
of the shell12 from the strap-receiving slot 46. The strap 49
will extend through the slot 52. As can be seen, the strap 49
has a first portion 55 that will extend along the channel asso-
ciated with this slot 52. The strap 49 will also have a second
portion 57 that will extend between the inner surface of the
shell12 and the inner surface of the resilient layer 14. Each of
the portions 55 and 57 can be threaded through a suitable strap
splitter, or other mechanism, so as to be secured to the high or
low hook-ups of a football helmet.
The orientation of the straps 47 and 49, as shown in FIG. 2,
is a significant improvement over the prior art. In the present
invention, there are only single slots 46 and 52 provided on
opposite sides of the shell12. As such, it is not necessary to
thread and loop the portions of the respective straps 47 and 49
a variety of holes and/or slots. The threading of the strap 47
and 49 through the respective slots 46 and 52 provides a neat
5 appearance in the area of connection between the straps and
the chin guard 10. Additionally, since the slots 46 and 52 are
formed through the thickness of the rigid polymeric material
of the shell 12, there is an absolutely secure and sound fit
between the respective straps 47 and 49 and the shell12. As
10 such, any tearing or ripping of the strap is effectively avoided.
The respective channels associated with the slots 46 and 52
will assure the proper alignment of the portion 51 of strap 47
and the portion 55 of strap 49. As such, this can provide an
easy guide whereby the straps can be properly secured in a
15 desired location to the helmet.
FIG. 3 illustrates the interior of the chin guard 10 of the
present invention. In FIG. 3, the resilient layer 14 is particu-
larly illustrated. The resilient layer 14 has padded surfaces 60
formed therein. The padded surfaces 60 include a rectangular
20 portion 62 extending centrally across a support layer 64 of the
resilient layer 14. The support layer 64 is positioned so as to
be in surface-to-surface contact with the interior surface of
the shell 12. The padded surfaces 60 are integrally formed
with the support layer 64. Finger members 66, 68, 70 and 74
25 are also integrally formed with the support layer 64 and
extend in generally spaced relationship to the edges of the
rectangular portion 62. The finger 66 has an adjoining portion
76 connected to the rectangular portion 62. The finger 68 has
an adjoining portion 78 connected to the rectangular portion
30 62. The finger 70 has an adjoining portion 80 connected to the
rectangular portion 62. The finger 7 4 has an adjoining portion
82 connected to the rectangular portion 62. The adjoining
portions 76, 78, 80 and 82 are located in a central area of the
rectangular portion 62. The spacing between the fingers 66,
35 68, 70 and 74 and the rectangular section 62 is intended to
accommodate the through holes 30, 32, 34 and 50 which are
formed through the support layer 64 are aligned with the
respective through holes formed in the shell12. As such, the
arrangement of the various padded surfaces 60 in the resilient
40 layer 14 assures a proper air flow through the through holes to
the chin of the wearer.
FIG. 4 illustrates a plan view of the chin guard 10 of the
present invention. In FIG. 4, it can be seen that the resilient
layer 14 has a peripheral surface 20 which overlies and
45 extends rearwardly over the outer peripheral edge 18 of the
shell 12. This lengthy overlying relationship assures a pro-
tective cushioning effect against any sharp edges of the rigid
shell12.
In FIG. 5, the resilient layer 14 is further illustrated as
50 having its outer periphery 20 extending over and beyond the
outer peripheral edge 18 of the shell12 on opposite sides of
the shell 12. The channel 48 is illustrated as formed in a
surface of the outer periphery 20 of the resilient layer 14 so as
to generally align with the slot 46 formed in the shell12.
55 FIG. 6 illustrates the manner in which the resilient layer 14
is received within the shell 12 of the chin guard 10 of the
present invention. In FIG. 6, the shell 12 has cup 16 which
serves to receive the cup area 90 of the resilient layer 14. The
semi -circular insert members 40 and 42 are positioned so as to
60 be received by the semi-circular indentations 36 and 38
located centrally on the shell12. This arrangement serves to
retain the resilient layer 14 removably within the interior of
the cup 16 of the shell12. FIG. 6 shows that the through holes
of the resilient layer 14 are aligned with the through holes of
65 the shell12 when the insert members 40 and 42 are received
within the semi-circular openings 36 and 38 of the shell12.
The shell12 is illustrated as having its outer peripheral edge
WIL00801
 Case 4:15-cv-01438 Document 55-3 Filed in TXSD on 02/24/17 Page 10 of 11
US 8,621,671 B1
7 8
18 slighted flanged outwardly of the shell 12. The outer
peripheral edge 20 has a suitable size so as to completely
cover this outer peripheral edge 18 and to provide effective
protection against sharp impacts caused by the outer periph-
eral edge 18 against the face of the wearer. The resilient layer
14 is illustrated as having a channels 48 and 54 formed on
opposite sides thereof so as to align with the strap-receiving
slots formed on the shell12. These surfaces provide a guide
for the strap which emanates through the slots on the shell12.
FIG. 7 shows he strap splitters 90 and 92 which assure the
divergent relationships of the respective straps 47 and 49. In
particular, strap 47 extends from the slot in the shell 12 and
has the strap splitter 90 extending thereover. Strap splitter 90
has slots formed therein which causes the portions 51 and 53
to extend in different direction away from each other. Simi-
larly, strap splitter 92 has slots formed therein which cause the
portions 55 and 57 to extend in different directions away from
each other. As a result of the strap splitters 90 and 92, the
respective portions can be properly directed to the high and/or
low hook-ups of the helmet. In the strap splitters 90 and 92,
the respective straps 47 and 49 will enter generally aligned
with each other and then diverge at the opposite end of the
strap splitters.
FIG. 8 shows an alternative embodiment of the present
invention. In FIG. 8, the chin guard assembly 100 has a shell
102 and a resilient layer 104. The shell102 and the resilient
layer 104 have a configuration similar to the previous
embodiment. The shell has a first strap-receiving slot 106 and
a second strap-receiving slot 108. A first strap 110 extends
through the first strap-receiving slot 106. A second strap 112
extends through the second strap-receiving slot 108.
Unlike the strap splitters 90 and 92 in FIG. 7, the embodi-
ment of FIG. 8 utilizes stops in order to allow the position of
the straps 110 and 112 to be adjustably fixed. In particular,
strap 110 has a first rivet 114 affixed to a first portion 116
adjacent to one side of the strap-receiving slot 106. Strap 110
has a second rivet 118 affixed to a second portion 120 adjacent
to an opposite of the strap-receiving slot 106. Similarly, the
strap 112 has a first rivet 122 adjacent one side of strap-
receiving slot 108 and a second rivet 124 adjacent to an
opposite side of the strap-receiving slot 108. The rivets 114,
118, 122 and 124 extend outwardly of a surface of the respec-
tive straps so as to have a thickness greater than the width of
the respective strap-receiving slots 106 and 108. As such, the
rivets act as stops so as to prevent excessive movement of the
shell102 relative to the straps 110 and 112.
The use of the rivets (or stops) unexpectedly facilitates the
ability to angularly adjust the straps 110 and 112 relative to
the high and low hook-ups of the helmet. The rivets can be
conveniently installed subsequent to the connection of the
shell102 with the straps 110 and 112. As such, the length of
the straps can be widely adjustable to the preferences of the
user. The number of separable components is significantly
reduced. Additionally, the costs associated with the rivets is
minimal. In certain helmets with broadly extending face
masks, the rivets will not interfere with such face masks.
The foregoing disclosure and description of the invention
is illustrative and explanatory thereof. Various changes in the
details of the illustrated construction can be made within the
scope of the appended claims without departing from the true
spirit of the invention. The present invention should only be
limited by the following claims and their legal equivalents.
I claim:
1. A chin guard comprising:
a shell having a cup suitable for fitting upon a human chin,
said shell having a first strap-receiving slot on one side
thereof and a second strap-receiving slot on an opposite
side thereof, each of said first and second strap-receiving
slots opening through a thickness of said shell; and
a resilient layer received within said cup of said shell, said
resilient layer suitable for contacting the human chin;
a first strap extending through said first strap-receiving
slot; and
a second strap extending through said second strap-receiv-
ing slot, said shell having an outer peripheral edge, said
shell having a first channel extending from said first
10
strap-receiving slot to said outer peripheral edge, said
first strap having a portion extending along said first
channel, said shell having a second channel extending
from second strap-receiving slot to said outer peripheral
15
edge, said second strap having a portion extending along
said second channel.
2. The chin guard of claim 1, each said first and second
strap-receiving slots extending transverse to a longitudinal
axis of said shell.
20 3. The chin guard of claim 1, said first strap-receiving slot
being a single slot on said one side, said second strap-receiv-
ing slot being a single slot on said opposite side.
4. The chin guard of claim 1, said resilient layer being in
surface-to-surface contact with an inner surface of said shell.
25 5. The chin guard of claim 4, said resilient layer having a
padded section formed centrally on a side of or within said
resilient layer opposite said shell.
6. The chin guard of claim 1, said first and second straps
each having a portion positioned between a surface of said
30 resilient layer and an inner surface of shell.
7. A chin guard comprising:
a shell having a cup suitable for fitting upon a human chin,
said shell having a first strap-receiving slot on one side
thereof and a second strap-receiving slot on an opposite
35 side thereof, each of said first and second strap-receiving
slots opening through a thickness of said shell; and
a resilient layer received within said cup of said shell, said
resilient layer suitable for contacting the human chin;
a first strap splitter extending over said first strap so as to
40 cause portions of said first strap to diverge away from
each other; and
a second strap splitter extending over said second strap so
as to cause portions of said second strap to diverge away
from each other.
45 8. The chin guard of claim 7, each of first and second strap
splitters having a first slot into which the strap enters and at
least one second slot through which the strap exits.
9. The chin guard of claim 7, further comprising:
a first stop affixed to said first strap adjacent said first
50 strap-receiving slot; and
a second stop affixed to said second strap adjacent said
second strap-receiving slot.
10. A chin guard comprising:
a shell having a cup suitable for fitting upon a human chin,
55 said shell have a first slot on one side thereof and a
second slot on an opposite side thereof, said first and
second slots opening through a thickness of said shell;
a resilient layer received within said cup of said shell, said
resilient layer suitable for contacting the human chin;
60 a first strap extending through said first slot; and
a second strap extending through said second slot;
a first strap splitter extending over said first strap so as to
cause portions of said first strap to diverge away from
each other; and
65 a second strap splitter extending over said second strap so
as to cause portions of said second strap to diverge away
from each other.
WIL00802
 Case 4:15-cv-01438 Document 55-3 Filed in TXSD on 02/24/17 Page 11 of 11
US 8,621,671 B1
9 10
11. The chin guard of claim 10, each of said first and second
slots extending transverse to a longitudinal axis of said shell.
12. The chin guard of claim 10, said first slot being a single
slot on said one side, said second slot being a single slot on
said opposite side.
13. The chin guard of claim 10, said resilient layer being in
surface-to-surface contact with an inner surface of said shell.
14. The chin guard of claim 13, said resilient layer having
a padded section formed centrally on a side of or within said
resilient layer opposite said shell.
15. The chin guard of claim 10, each of said first and second
straps each having a portion positioned between a surface of
said resilient layer and an inner surface of said shell.
16. The chin guard of claim 10, said shell having an outer
peripheral edge, said shell having a channel extending from
said slot to said outer peripheral edge, said first strap having a
portion extending along said first channel, said shell having a
second channel extending from said second strap-receiving
slot to said outer peripheral edge, said second strap having a
portion extending along said second channel.
17. The chin guard of claim 10, each of first and second
strap splitters having a first slot into which the strap enters
said at least one second slot through which the strap exits.
18. A chin guard comprising:
a shell having a cup suitable for fitting upon a human chin,
said shell having a first strap-receiving slot on one side
thereof and a second strap-receiving slot on opposite
side thereof;
a resilient layer received within said cup of said shell, said
resilient layer suitable for contacting the human chin;
a first strap extending through said first strap-receiving
slot;
10
a second strap extends through said second strap-receiving
slot;
a first stop affixed to said first strap adjacent to said first
strap-receiving slot; and
a second stop affixed to said second strap adjacent to said
15 second strap-receiving slot, said first stop comprising a
first rivet affixed to said first strap on one side of said first
strap-receiving slot and a second rivet affixed to said first
st~ap on an opposite side of said first strap-receiving slot,
smd second stop comprising a third rivet affixed to said
20
second strap adjacent one side of said second strap-
receiving slot and a fourth rivet affixed to said strap on an
opposite side of said second strap-receiving slot.
* * * * *
WIL00803
Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 1 of 33

E XH I B I T 4
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 2 of 33

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

SPORTSTAR ATHLETICS, INC., §

§
Plaintiff, §
§
v. § Civil Action No. 4:15-cv-01438
§
WILSON SPORTING GOODS, CO., §
§
Defendant. §

EXPERT REPORT OF TODD A. RATHE ON ALLEGED INFRINGEMENT

I, Todd A. Rathe, state as follows:

1. I am a partner at the law firm of Rathe Lindenbaum LLP.

2. I have been asked to evaluate and respond to the report of J.E. Akin, PhD., PE,

dated June 15, 2016, and submitted by Plaintiff SportStar Athletics, Inc. (“SportStar”). I have

also been asked to provide my opinions regarding alleged infringement by Defendant Wilson

Sporting Goods Co. (“Wilson”) by its football chin guard model nos. WTF985000 and

WTF985001 (the “Accused Products”) of U.S. Patent No. 7,735,160 (“the '160 Patent”) claims 1,

8, and 9, and U.S. Patent No. 8,621,671 (“the ‘671 Patent”), claims 7-15 and 17, in connection

with the captioned case.

3. I have a degree in industrial engineering, and I am an attorney registered to

practice before the U.S. Patent and Trademark Office. My curriculum vitae is attached hereto as

Exhibit A.

4. I am co-author of a chapter on patents for Overview of Intellectual Property Law

for Business Lawyers, a West publication.

 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 3 of 33

5. I am compensated at the rate of $350.00 per hour for preparation of this report and

for my testimony. I have not testified as an expert in the past 5 years. I have rendered an expert

report regarding design and utility patents, and a report regarding invalidity of the ‘160 Patent

and ‘671 Patent (in this case), within the past 5 years.

I. SUMMARY OF NON-INFRINGEMENT OPINIONS

As of the issuance of this Report, the Court has not issued a claim construction ruling.
Accordingly, I have set forth below claim construction conclusions in light of the applicable law, the
specification and the prosecution history of the ‘160 Patent, as well as the specification and
prosecution history of the ‘671 Patent, the Patents-in-Suit. In view of the foregoing, I provide the
following opinions:

I am aware that Wilson has stopped importing and selling the Accused Products. I have had
conversations with Wilson employees and its counsel and I understand that the Wilson chin guard
pictured below (Fig. A and Fig. B), is representative of the of the football chin guards that are Accused
Products in this case. These pictures are from SportStar’s Infringement Contentions.1

FIG. A

FIG. B

1 Images of the Accused Products are from SportStar’s Rule P.R. 3-1 and 3-2 Infringement Contentions.
2
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 4 of 33

I have the following opinions regarding the Accused Products:

1. The Accused Products do not infringe claims 1, 8, and 9 of the '160 Patent
because they do not have a “strap splitter” as the term was defined by the inventor, Paul
Schiebl (“Schiebl”) in in the patent file history in order to overcome prior rejections.
Specifically, Schiebl defined “strap splitter” as: “strap splitter is defined as a ‘unitary body’
[with] a first slot in spaced relation to a second slot. A ‘fixed’ bar is formed with the unitary
body and positioned between the first slot and the second slot. It is indicated that the second
slot has a length that is greater than the first slot.”2

2. The Accused Products additionally do not infringe claims 1, 8, and 9 of the

'160 Patent because they do not have strap splitters that provide first and second portions of a
strap with “angular adjustability”, a limitation added to distinguish such claims over the prior
art.

3. The Accused Products do not infringe claims 7-15 and 17 of the ‘671 Patent
because they do not have a “strap splitter” as the term was defined by Schiebl in the patent
file history in order to overcome prior rejections. The ‘671 Patent application was filed as a
continuation in part (meaning, related to the ‘160 Patent) using the identical term “strap
splitter” from the ‘160 Patent. In addition, the ‘671 Patent application claims the same filing
date as the earlier ‘160 Patent as well as the earlier abandoned, rejected application. However,
in the later ‘671 Patent, Schiebl did not use a different term for strap splitter, nor did Schiebl
modify the term, or redefine the term. As a result Schiebl’s use of the identical term “strap
splitter” from the earlier related ‘160 Patent, the examiner did not reject claims similar to the
original abandoned application. The examiner was equipped with the express definition of the
term “strap splitter” from the related ‘160 Patent history, and allowed the claims of the ‘671
Patent over the prior art. These prosecution history events – prior art rejections, followed by
the patent applicant’s express and narrowing definition of a key claim term, followed by

2 WIL00560, p. 8.
3
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 5 of 33

allowance – are significant because Schiebl is thereby estopped from going back and
redefining the narrowed claim term using an earlier, rejected definition. . Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 737 (2002).

4. The Accused Products do not infringe claim 9 of the ‘671 Patent because
they do not have a “stop” as the term was defined by Schiebl in the specification.

5. The Report of J.E. Akin dated June 15, 2016 (“Akin Report”), and submitted
on behalf of SportStar is wrong in connection with his construction and infringement opinions
as to the terms “strap splitter’ and “stop”. The Akin Report further is in error in the analysis of
the Accused Products by concluding that the Wilson chin guard has a strap splitter with a first
and second slot, and that the second slot is bisected with a “cosmetic fill-in at essentially the
midpoint of the second slot.” In fact, Wilson’s accused football chin guards have a strap
divider with three symmetrical slots and a structure as in the prior art. The structure of the
Wilson strap divider does not meet the claim limitations of the asserted claims.

II. MATERIALS REVIEWED

I have reviewed the Complaint filed by SportStar, and Wilson’s Answer and Counterclaims. I
have reviewed the ‘160 Patent and its file history (WIL00530-WIL00656); the ‘671 Patent and its file
history (WIL00657-WIL00763); and each of the patents cited in the ‘160 Patent and the ‘671 Patent
and in their file histories. I have reviewed all of the additional prior art patents cited in my Invalidity
Report dated June 15, 2016, and submitted in this case. I have reviewed the Accused Products and
SportStar’s chin strap, as well as chin straps made by Champro, Athletic Specialty Football Helmet
4PT Chin Strap, and Adams, and materials produced by SportStar relating to a 2007 Wilson chin
guard, Model F9856.

Additionally, I have reviewed SportStar’s Infringement Contentions; the Markman claim

construction briefs of the parties; the parties’ Joint Claim Construction Chart; the depositions of
Shawn Gilday and Craig Kopcash. I have also reviewed the infringement report of J.E. Akin,

4
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 6 of 33

submitted on behalf of SportStar.

III. MY OPINIONS

A. The Asserted Claims of the ‘160 and ‘671 Patents

SportStar asserts three claims from the ‘160 Patent: 1, 8, and 9. Claims 8 and 9 are dependent
claims, such that if the elements of Claim 1 are not met, claims 8 and 9 are not infringed. I have set
forth below Claim 1, and have highlighted the language that is emphasized in my opinions:
A chin guard apparatus for use with a helmet in which the helmet has a high hook- up and a
low hook-up, the chin guard apparatus comprising:
a shell having a cup suitable for fitting upon a human chin, said shell having an outer
peripheral edge, said shell having a single first strap-receiving slot adjacent one side of said
shell and a single second strap-receiving slot adjacent an opposite side of said shell;
a resilient layer received within said cup of said shell, said resilient layer having a periphery
overlying said outer peripheral edge of said shell;
a first strap extending through said first strap-receiving slot of said shell and extending
outwardly therefrom, said first strap suitable for attachment to the helmet; a second strap
extending through said second strap-receiving slot of said shell and extending outwardly
therefrom, said second strap suitable for attachment to the helmet; and
a first strap splitter through which said first strap extends, said first strap splitter comprising a
unitary body having a first slot in spaced relationship to a second slot, said first strap splitter
having a fixed bar formed therewith and positioned between said first slot and said second
slot, said second slot having a length that is greater than a length of said first slot, said first
strap having a first portion and a second portion juxtaposed together in said first slot and
angularly diverging from each in said second slot, said first portion and said second portion
being angularly adjustable with respect to each other so as to allow one of said first and second
portions to be attached to either the high hook-up or low hook-up of the helmet.

The specification of the ‘160 Patent provides Figure 5, an

illustration of the claimed strap splitter:

Fig. 5

SportStar asserts ten claims from the ‘671 Patent: 7 – 15, and 17. Claims 8, 9, and 11 – 15, and

5
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 7 of 33

17 are dependent claims, such that if the elements of independent claims 7 and 10 are not met, the

eight dependent claims are not infringed. I have set forth below Claims 7, 9, and 10 of the ‘671 Patent,

and have highlighted the language that is emphasized in my opinions:

7. A chin guard comprising:

a shell having a cup suitable for fitting upon a human chin, said shell having a first strap-
receiving slot on one side thereof and a second strap-receiving slot on an opposite side thereof,
each of said first and second strap-receiving slots opening through a thickness of said shell;
and
a resilient layer received within said cup of said shell, said resilient layer suitable for
contacting the human chin;
a first strap splitter extending over said first strap so as to cause portions of said first strap to
diverge away from each other; and
a second strap splitter extending over said second strap so as to cause portions of said second
strap to diverge away from each other.
* * *
9. The chin guard of claim 7, further comprising:
a first stop affixed to said first strap adjacent said first strap-receiving slot; and
a second stop affixed to said second strap adjacent saidsecond strap-receiving slot.
* * *
10. A chin guard comprising:
a shell having a cup suitable for fitting upon a human chin, said shell have a first slot on one
side thereof and a second slot on an opposite side thereof, said first and second slots opening
through a thickness of said shell;
a resilient layer received within said cup of said shell, said resilient layer suitable for
contacting the human chin;
a first strap extending through said first slot; and
a second strap extending through said second slot;
a first strap splitter extending over said first strap so as to cause portions of said first strap to
diverge away from each other; and
a second strap splitter extending over said second strap so as to cause portions of said second
strap to diverge away from each other.

6
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 8 of 33

B. The Prosecution History of the ‘160 and ‘671 Patents

The ‘160 Patent is a continuation-in-part of an earlier application no. 10/463,774 (“the ‘774

Application”) filed on June 16, 2003, that was rejected three times, and then abandoned. Schiebl next

filed the ‘160 Patent application with new claims on September 8, 2005, and included the term “strap

splitter” from the abandoned ‘774 Application. The USPTO rejected all the claims of the ‘160 Patent

application. The strap splitter was claimed in the September 8, 2005, application as follows:

9. The apparatus of Claim 8, each of said first and second strap splitters comprising:
a body having a first slot in spaced relationship to a second slot, said body having a bar
between said first and second slots, said second slot having a length that is greater than said
first slot, the strap having a first portion and a second portion, each of said first and second
portions extending through said first and second slots and over said bar, said second slot
suitable for allowing one of said first and second portions to be attachable to either a high
hook-up or a low hook-up of the helmet.
‘160 Prosecution History, WIL00638. The strap splitter claimed in this rejected application expressly

provided for the first and second portions of the strap to enter the strap splitter through the first slot

and then exit through the second slot in a manner diverging from each other so as to attach to either a

high hook-up or a low hook-up. Figure 1 of the rejected application illustrated the strap splitters (34

and 40):

Schiebl then filed an amendment deleting all 20 claims and replacing them with new claims.

New claim 21 included all of the language of the replaced original claim 1 plus additional, narrowing

language (shown in bold below) that Schiebl added to new claim 21 to overcome the prior art

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rejections:

21. A chin guard apparatus for use with a helmet in which the helmet has a high
hook-up and a low hook-up, the chin guard apparatus comprising:
a shell having a cup suitable for fitting upon a human chin, said shell having an outer
peripheral edge, said shell having a single first strap-receiving slot adjacent one side
of said shell and a single second strap-receiving slot adjacent an opposite side of
said shell;
a resilient layer received within said cup of said shell, said resilient layer having a
periphery overlying said outer peripheral edge of said shell;
a first strap extending through said first strap-receiving slot of said shell and
extending outwardly therefrom, said first strap suitable for attachment to the helmet;
a second strap extending through said second strap-receiving slot of said shell
and extending outwardly therefrom, said second strap suitable for attachment to the
helmet; and
a first strap splitter through which said first strap extends, said first strap
splitter comprising a unitary body having a first slot in spaced relationship to a
second slot, said first strap splitter having a fixed bar formed therewith and
positioned between said first slot and said second slot, said second slot having a
length that is greater than a length of said first slot, said first strap having a first
portion and a second portion juxtaposed together in said first slot and angularly
diverging from each in said second slot, said first portion and said second portion
being angularly adjustable with respect to each other so as to allow one of said first
and second portions to be attached to either the high hook-up or low hook-up of
the helmet.

‘160 Prosecution History Amendment “A”, WIL00555-56.

In addition to all of the amended claim language, Schiebl also provided an express definition

of the term “strap splitter” to clearly define the scope of that term for examination, and would not

again reject the claims:

strap splitter is defined as a “unitary body” [with] a first slot in spaced relation to
a second slot. A “fixed” bar is formed with the unitary body and positioned
between the first slot and the second slot. It is indicated that the second slot has a
length that is greater than the first slot. (Emphasis added.)

‘160 Prosecution History, WIL00560. Based upon the amendments, and the express definition of

strap splitter supplied by Schiebl, the examiner allowed the ‘160 Patent.

Schiebl filed the ‘671 Patent application subsequently, on July 25, 2011, as a continuation in

part (meaning, related to the ‘160 Patent) using the exact same term “strap splitter” from the ‘160

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 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 10 of 33

Patent. The continuation in part ‘671 Patent application also claimed the same filing date as the earlier

‘160 Patent as well as the earlier abandoned, rejected ‘774 Application. Significantly, in the later ‘671

Patent, Schiebl used the identical term “strap splitter” without modifying or redefining it. As correctly

noted in Wilson’s claim construction brief, these prosecution history events – prior art rejections,

followed by the patent applicant’s express and narrowing definition of a key claim term (“strap

splitter”), followed by allowance – are significant because SportStar, the patent assignee, and its expert

Dr. Akin, cannot now go back for purposes of this case and redefine the narrowed claim term using an

earlier, rejected definition. Festo, supra, 535 U.S. at 737.

C. Claim Construction
1. “Strap Splitter”
As correctly discussed by Wilson’s counsel in connection with the claim construction

briefing, the purpose of claim construction:

is to construe the claims to “capture the scope of the actual invention” that is disclosed,
described, and patented. Fenner Investments, Ltd. v. Cellco Partnership, 778 F.3d 1320, 1323
(Fed. Cir. 2015), citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296,
1305 (Fed. Cir. 2011). In capturing the scope of the actual invention, the Court must construe
the identified terms “not only in the light of the claims, but also with reference to the file
wrapper or prosecution history in the Patent Office." Graham v. John Deere Co., 383 U.S. 1,
33, 86 S. Ct. 684 (1966). In resolving a dispute as to the interpretation of a claim, not only
should reference be made to the prosecution history, but also to the specification and the other
claims in the patent. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866, 867 (Fed. Cir. 1985).
* * *
“The terms used in patent claims are not construed in the abstract, but in the context in
which the term was presented and used by the patentee, as it would have been understood
by a person of ordinary skill in the field of the invention on reading the patent
documents.” Fenner Investments, supra, 778 F.3d at 1322-23; see also Biogen Idec, Inc.
v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) ("[A] term's ordinary
meaning must be considered in the context of all the intrinsic evidence, including the
claims, specification, and prosecution history."). Thus, a claim receives “the meaning
that the term would have to a person of ordinary skill in the art in question at the time of the
invention.” Fenner Investments, supra, 778 F.3d at 1323, citing Phillips v. AWH Corp., 415
F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc).
9
Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 11 of 33

The prosecution history informs the Court of what the claims mean. “[L]ike the
specification, the prosecution history was created by the patentee in attempting to explain
and obtain the patent.” Phillips, supra, 415 F.3d at 1317. As such, the prosecution history is
vital to the construction of terms and phrases within the claims. See Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370,
116 S. Ct. 1384 (1996) (a court "should also consider the patent's prosecution history, if it
is in evidence."); see also, Graham, supra, 383 U.S. at 33 ("[A]n invention is construed
not only in the light of the claims, but also with reference to the file wrapper or prosecution
history in the Patent Office.").
The bar of prosecution history estoppel impacts the claim construction in this case. The
prosecution history informs the Court as to what was disclaimed during prosecution.
“Prosecution history estoppel … precludes a patentee from regaining, through litigation,
coverage of subject matter relinquished during prosecution of the application for the patent.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734, 122 S. Ct.
1831, 1839 (2002). The inventor here, Schiebl, amended and narrowed the claims of both the
‘160 and ‘671 Patents during prosecution to overcome rejections. “When the patentee
responds to the rejection by narrowing his claims, this prosecution history estops him from
later arguing that the subject matter covered by the original, broader claim was nothing more
than an equivalent.” Id. at 727, 122 S. Ct. at 1835. “Competitors may rely on the estoppel to
ensure that their own devices will not be found to infringe by equivalence.” Id. In such
instances, the prosecution history estops the inventor from asserting the broader limitation is
equivalent to the narrower limit he claimed. Id. at 735, 122 S. Ct. at 1840.
Regarding continuation patents, specifically the ‘671 Patent, “[an inventor] has the
right to refile the application and attempt to broaden the claims.” Hakim v. Cannon Avent
Group, PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007). “However, an applicant cannot
recapture claim scope that was surrendered or disclaimed.” Id. "The public notice
function of a patent and its prosecution history requires that a patentee be held to what he
declares during the prosecution of his patent. A patentee may not state during prosecution
that the claims do not cover a particular device and then change position and later sue a
party who makes that same device for infringement." Hakim, 479 F.3d at 1318; see also
Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
Thus, “[w]hen multiple patents derive from the same initial application, the prosecution
history regarding a claim limitation in any patent that has issued applies with equal force
to subsequently issued patents that contain the same claim limitation.” Elkay
Manufacturing Co., supra, 192 F.3d at 980; Jonsson v. The Stanley Works, 903 F.2d 812,
817-818 (Fed. Cir. 1990) (holding that when two patents issued from continuation-in-part
applications derived from one original application, the prosecution history of a claim
limitation in the first patent to issue was properly applied to the same claim limitation in
the second patent to issue).

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I understand that a “person of ordinary skill in the art” (hereafter “POSITA”), is not a specific, real
individual, but rather a hypothetical individual who is presumed to have known the relevant art at the
time of the invention. In defining “one of ordinary skill in the art,” I have been advised to consider
factors such as the educational level and years of experience not only of the person or persons who
have developed the invention that is the subject of the case, but also others working in the pertinent art
at the time of the invention; the types of problems encountered in the art; the teachings of the prior art;
patents and publications of other persons or companies; and the sophistication of the technology. I
have assessed the level of ordinary skill in the art based upon my review of the prior art, and my
experience in the industry (as detailed above).

In my opinion, I believe that a POSITA with regard to the '160 Patent and the ‘671 Patent would
possess a Bachelor of Science degree in a relevant course of study, such as engineering, for example
industrial or mechanical engineering.

I consider myself to have been at least one of ordinary skill in the relevant art as of the applicable
time frame. Moreover, through my education and years of experience, I have an understanding
regarding the level of technical acumen that a person of ordinary skill in the art of the ‘160 Patent and
‘671 Patent would have possessed at the time of the claimed invention; the types of problems
encountered in the art; the teachings of the prior art; patents and publications of other persons or
companies; and the sophistication of the technology. I have assessed the level of ordinary skill in the
art based upon my review of the prior art, and my experience in the industry.

SportStar and Wilson submitted to the Court a Joint Claim Construction in which the term “strap
splitter” was defined by the parties as follows:
Claim Term SportStar’s Construction Wilson’s Construction
“strap splitter” A part of chin guard assembly, A unitary body with a first slot in
(‘160 Patent separate from the chin cup, through spaced relation to a second slot. A
Claims 1, 8, and 9 which two portions of a chin strap "fixed" bar is formed with the
and 12-13) extending in line from the chin cup unitary body and positioned
(‘671 Patent are separated at an angle. between the first slot and the
Claims 7, 8, 10, second slot, with the second slot
15, and 17) having a length that is greater

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than the first slot.

SportStar deletes from the definition in the prosecution history the following language:

“unitary body,” “fixed bar,” and “second slot having a length that is greater than said first slot.” The

Report of Dr. Akin states that he finds infringement under either proposed construction; however, the

Report specifically advocates for a view of the Accused Product strap splitter that is inconsistent with

the accused structure. Whereas the Wilson strap splitter has three equal sized slots that do not permit

the strap portions to adjust from a high hookup to a low hookup, or to angularly diverge within the

second slot, the Akin Report insupportably asserts that two of the three slots are a single, divided slot:

“Wilson has added a cosmetic fill-in at essentially the midpoint of the

second slot. The red arrows [sic] below point to the cosmetic fill-in:”

Report of J.E. Akin, at pp. 29-30. The red arrow above could arguably be placed on any of the three

uniform so-called “fill-in” structures whereby the strap splitter would have a single slot bisected three

times. There is nothing in the structure of the Wilson strap splitter that distinguishes any of the three

slots, each being the same as the others. The strap portions in the Accused Products are fixed in place

by the three equal sized slots, and do not read upon or infringe the ‘160 Patent or ‘671 Patent.

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In the case of the Patents-In-Suit, Schiebl added his express definition of “strap splitter” set

forth above, during the prosecution of the ‘160 patent in order to overcome a rejection to Pietrzak US

Patent 7,203,972 and other prior art references. Prosecution history estoppel now prevents Sportstar

from changing this definition, and trying to re-write and expand the construction of the term “strap

splitter”. Schiebl amended his claims during prosecution, narrowing them and specifically defining

this term. Sportstar cannot now ignore the prosecution history and the issued claims.

Indeed, it is also not appropriate that “strap splitter” should mean something different in the

two patents at issue. This is true since the strap splitter in Figure 1 of the ‘160 Patent and Figure 7 of

the ‘671 Patent are essentially identical except for the numbers assigned to the structure elements:

‘160 Patent, Figure 1.

‘671 Patent, Figure 7.

Moreover, the specifications of the two patents describe the strap splitter in nearly identical

language, emphasizing the aspect of the strap splitter for allowing the straps to move from a high

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 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 15 of 33

hookup to a low hookup, as was argued in the prosecution to gain approval after abandoning earlier

claims:

‘160 Patent, Col. 6, ll. 49-52
The strap splitter 40 is intended to allow the
user conveniently to connect the strap
portions 36 and 38 to either a high hookup
or a low hookup of a football helmet.
‘671 Patent, Col. 7, ll. 18-20
As a result of the strap splitters 90 and 92,
the respective portions can be properly
directed to the high and/or low hook-ups of
the helmet.

Further, the specification of the ‘160 Patent and its prosecution history is binding on the ‘671

continuation-in-part.3 The ‘671 Patent is a continuation-in-part that uses the exact same claim term

that was narrowed earlier for acceptance.4 The inventor defined the term, as his own lexicographer,

and cannot now try to avoid his own definition to establish infringement. Schiebl’s claims were

amended and narrowed in response to an Office Action that cited to US 7,203,972 (“Pietrzak”),

which also disclosed a strap splitter for a helmet. In narrowing his invention, Schiebl states:

In particular, in each of these claims, the strap splitter is defined as a “unitary body”
[with] a first slot in spaced relation to a second slot. A “fixed” bar is formed with the
unitary body and positioned between the first slot and the second slot. It is indicated that
the second slot has a length that is greater than the first slot. (Emphasis added.)

See Exhibit G, ‘160 Prosecution History Amendment “A”, p. 8 (WIL00560) (emphasis added).

Schiebl specifically defined “strap splitter” to have that specific structure. Vasudevan Software,

Inc. v. Microstrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (patentee’s definition, acting as

lexicographer in the prosecution history, should be ascribed to the claim term).

This limitation was added to overcome a rejection in light of Pietrzak, and accordingly must

be read narrowly in light of distinguishing it from the strap splitter configuration of Pietrzak which

3
Mycogen Plant Science, Inc. v. Monsanto Co., 91 Fed. Appx. 666, 668 (Fed. Cir. 2004) (“[W]e hold
that it is immaterial that the claims at issue (13 and 14) were not themselves amended to avoid
patentability rejections, because broader claims 1, 2, 5, and 6, which addressed the same claim
limitations at issue in this case … were canceled in response to a rejection for unpatentability. …”).
4 Desper Products, Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998) (“[P]rosecution

history estoppel cannot be avoided by filing a continuing application….”);

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had slots of the same length. The Wilson chin guard employs strap splitter slots of the same length,

which is what Schiebl amended away from (in Pietrzack) in order to overcome rejection of his strap

splitter claim element. The slots of the ‘160 Patent strap splitter and Pietrzak’s follow:

‘160 Patent, Pietrzak,

Figure 5 Figure 3A

The ’160 patent specification notes the “relatively long length” of the second “slot.” Exhibit B, Col. 7,

lines 20-31. And Figure 5 shows that the second slot is both narrow and elongated. Id. at Fig. 5.

These specific slot size features were emphasized by Schiebl in the Prosecution History to

overcome the prior art cited against the claims. Schiebl distinguished Pietrzak by stating:

Each of the slots of the Pietrzak patent appear to be symmetrical with each other such
that there is not a “second slot having a length that is greater than the length of the first
slot”… On this basis, Applicant contends that the Pietrzak patent in combination with
the Schiebl and Rush patents does not show the structure, function, or results of the present
invention…

‘160 Prosecution History, WIL00563-64.

The ‘160 Patent specification similarly defines the “strap splitter” as follows:

The strap splitter 40 includes a body 66 formed of a polymeric material. A first slot 68
opens through the body 66. A second slot 70 is in spaced relationship to the first slot 68
and also opens through the body. A bar 72 is formed between the slots 68 and 70. The
slots 68 and 70 are configured so as to allow the strap portions 36 and 38 to pass
therethrough and over the bar 72. The second slot 70 has a length that is greater than the
first slot 68.

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‘160 Patent, Col. 6, ll. 52-59.Scheibl specifically narrowed the claims of the ‘160 Patent to explicitly

define the structure of the strap splitter and overcome prior art rejections.5 Sportstar, through the

Report of Dr. Akin, cannot now disavow this prosecution history and impermissibly capture

surrendered subject matter. Schiebl, as the inventor, did not use a different term for “strap splitter” in

the ‘671 Patent, nor did the inventor specifically propose a new definition. Rather, Schiebl expressly

defined strap splitter in the patent history, as his own lexicographer, to avoid another rejection while

seeking the ‘160 and ‘671 Patents.

2. “Stop”

The Accused Products do not infringe claim 9 of the ‘671 Patent because they do not have a

“stop” as the term was defined by Schiebl in the specification. The ‘671 Patent defines the term

“stop” just as a rivet or plug. Wilson’s Acused Products do not include a rivet or a plug. The Akin

Report seeks to expand the definition to cover other structures, including stiches of thread, even

though such other structures are not supported by the intrinsic record. Akin asserts: “The woven

material stops, impedes or prevents the motion the strap portions that loop through the slots in the

chin cup, and thus prevent excessive movement of the chin cup relative to the straps. ‘671 patent,

column 7, lines 45-46.” Akin Report, p. 42. I have set forth below Figure 8 from the ‘671 Patent

showing the rivets that form the “stop” of Claim 9. Below that is Akin’s illustration of the Wilson

threads which Akin asserts are a stop or equivalent to a stop.

The ‘671 Patent illustrates the rivet or plug “stop” in Figure 8 (labeled as 114, 118, 122 and

124) on each portion of the first and second straps to enable the straps to be “adjustably fixed”:

5
Estoppel applies here to “strap splitter” in the ‘160 and ‘671 Patents. “Estoppel arises when an
amendment is made to secure the patent and the amendment narrows the patent’s scope.” Festo at
736 and at 1840. “A patentee who narrows a claim as a condition for obtaining a patent disavows his
claim to the broader subject matter, whether the amendment was made to avoid prior art or to comply
with §112.” Festo at 737, at 1840.
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The figure and arrow below is from the Akin Report, p. 42, showing the strap portions sewn

together such that they cannot be adjusted:

The specification uses the term “stop” only three times, and it specifically defines a “stop” as a

“rivet”. Below are the three uses of the term “stop”:

[T]he embodiment of FIG. 8 utilizes stops in order to allow the position of the straps 110 and
112 to be adjustably fixed. In particular, strap 110 has a first rivet 114 affixed to a first
portion 116 adjacent to one side of the strap-receiving slot 106. Strap 110 has a second rivet
118 affixed to a second portion 120 adjacent to an opposite of the strap-receiving slot 106.
Similarly, the strap 112 has a first rivet 122 adjacent one side of strap receiving slot 108 and a
second rivet 124 adjacent to an opposite side of the strap-receiving slot 108. The rivets 114,
118, 122 and 124 extend outwardly of a surface of the respective straps so as to have a
thickness greater than the width of the respective strap-receiving slots 106 and 108. As such,
the rivets act as stops so as to prevent excessive movement of the shell 102 relative to the
straps 110 and 112.
The use of the rivets (or stops) unexpectedly facilitates the ability to angularly adjust
the straps 110 and 112 relative to the high and low hook-ups of the helmet. The rivets can be
conveniently installed subsequent to the connection of the 50 shell102 with the straps 110 and
112.

‘671 Patent, Col. 7, lines 34-49 (emphasis added). Accordingly, Schiebl explicitly stated that the

terms “stop” and “rivet” are interchangeable in his patent claims. The rivets allow the straps to be

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“adjustably fixed” as explicitly taught in the specification. By contrast, the sewn strap on Wilson’s

Accused Products is not “adjustably fixed”, it is not adjustable at all; rather, it is simply sewn in place

by thread. The ‘671 Patent nowhere enables, teaches or describes straps being sewn in place

A POSITA would be entitled to rely upon the inventor’s statements in the specification. The

only places in the patent where “stop” is defined is in Figure 8 and the passage quoted above from

Col. 7. In Phillips, supra, 415 F.3d at 1321, the Court held that “the specification is ‘the single best

guide to the meaning of a disputed term,’ and that the specification ‘acts as a dictionary when it

expressly defines terms used in the claims or when it defines terms by implication.’” Citing Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). See also Irdeto Access, Inc. v.

Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided

in explicit definitional format, the specification may define claim terms by implication such that the

meaning may be found in or ascertained by a reading of the patent documents.”) Abandoning the

definition of stop that appears in the ‘671 in the specification would violate 35 U.S.C. § 112, ¶ 1.

Accordingly, the argument in the Akin Report to expand the ‘671 Patent’s definition of stop as a rivet

is misplaced and unsupportable.

D. Wilson’s Chin Guard Model Nos. WTF985000 and WTF985001 Do Not

Infringe the Asserted Claims of the ‘160 Patent

Each of the asserted claims of the ‘160 Patent requires a chin guard apparatus having a

strap splitter that has a first slot and a second slot, wherein the second slot has a length that is

greater than the length of the first slot such that first and second portions of a strap may not only

be “angularly diverging from each other in the second slot” but may also be “angularly

ADJUSTABLE with respect to each other”. (Emphasis added).

Wilson’s Accused Products do not include a chin guard apparatus with (1) a strap splitter

that has a second slot that has a length that is greater than the length of the first slot or (2) first

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and second portions of a strap that angularly diverge within the second slot and that are

“angularly adjustable”.

1. Wilson’s Accused Products do not include a strap splitter that has a second
slot that has a length that is greater than the length of the first slot.

Wilson’s strap splitter is composed of three identically configured slots in a unitary

body, as illustrated below in Figures B (inner surface facing user) and C (outer surface facing

away from user). Each of the three slots has exactly the same length.

FIG. C
FIG. B

The Akin Report attempts to characterize two of the separate slots of the Wilson strap

splitter as a single slot, contending that the slot separating bar that clearly separates the two slots

is “cosmetic”. Such an assertion lacks all merit. As any POSITA would appreciate, the slot

separating bar is definitely not “cosmetic”, but serves two important functions. First, the slot

separating bar spaces apart the two distinct slots to ensure a minimum spacing of the two strap

portions extending from the strap splitter. The two strap portions cannot overlap one another

when exiting the strap splitter. Second, the slot separating bar prevents the two strap portions

from pivoting towards one another within the two distinct slots. In other words, the slot

separating bar fixes the angles of the strap portions and prevents the two straps portions from

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being “angularly ADJUSTABLE”.

The Akin Report further contends that “to a POSITA, if literal infringer was found

lacking, then, at a minimum, the divided second slot of Wilson’s strap splitter would perform

the same, or at a minimum substantially the same function as a second slot having a length that

is greater than the first slot because the second slot allows the two portions of each strap to

angrily separate or diverge as appropriate for a high hook and a low hookup.” (The Akin report,

page 34).

However, a POSITA would clearly appreciate that the two distinct slots of the Wilson

strap splitter do not perform the same function as the longer second slot required by each of the

asserted claims. A POSITA can appreciate that the separator bar between the two separate slots

in the Wilson strap splitter limits sideways movement of the two strap portions and prevents

“angular adjustability”. It is interesting to note that the Akin report, when addressing the

function-way-result test on page 34, apparently overlooks the fact that each of the asserted

claims requires the function of “angular adjustability” for the two strap portions. As the two

separate slots of the Wilson strap splitter (characterized as the claimed single elongate second

slot by the Akin report) do not provide the claimed function of angular adjustability for the two

strap portions, the two separate slots of the Wilson strap splitter do not perform the same

function in the same way to achieve the same result as the longer second slot required by each of

the asserted claims.

2. Wilson’s Accused Products do not include a strap splitter that provides first
and second portions of a strap with angular adjustability.

As demonstrated above, the three identically sized slots of the Wilson strap splitter, in

conjunction with the slot separating bar, prevent pivoting or sideways movement of the strap

portions relative to one another. In other words, the angle separating the two strap portions

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 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 22 of 33

extending from the strap splitter CANNOT be changed and CANNOT be adjusted.

In fact, the Wilson strap splitter is simply practicing what was already known in the prior

art to the’ 160 Patent. As shown below, U.S. Patent No. 5,915,537, issued June 19, 1999, Figure

7 teaches a strap splitter of the same configuration as Wilson’s (shown in Fig. B and Fig. C):

‘537
Patent
Fig. 7

FIG. B

Closeup,
Fig. 7

FIG. C

Like in the ‘537 Patent shown above, the Wilson strap splitter comprises three distinct slots

which prevent “angular adjustability” of the two strap portions extending from the strap splitter. The

angle between the straps extending from the strap splitter is fixed. It is well settled law that claim

limitations cannot be construed in a manner that would render such claims invalid in view of the prior

art. To construe the “angular adjustability” limitation of each of the claims of the ‘160 Patent so

broadly so as to encompass the Wilson strap splitter would also result in such claims of the ‘160 patent

being invalid (see Wilson Invalidity Report).

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E. The Akin Report

The Akin Report makes several misleading assertions in an apparent attempt to distract one

from the fact that the Wilson accused products simply do not include a second slot having a length

greater than a length of a first slot so as to provide “angular ADJUSTABILITY” for the first and

second strap portions. Despite the fact that is well-settled law that (1) intended use of a claimed

apparatus does not render the apparatus patentable (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909

F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990); Ex parte Masham, 2 USPQ2d 1647 (Bd.

Pat. App. & Inter. 1987)) and that (2) making an apparatus integral (as a “unitary body”) is not

patentable (In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (use of a one piece

construction instead of a multi-piece construction is merely a matter of obvious engineering choice),

the well-crafted Akin report might have one mistakenly believe that the reason that the asserted claims

of the ‘160 patent were granted was the requirement that the strap splitter was intended to be used with

a football helmet having high and low hookups and that the strap splitter was formed as a unitary

body. That is not the case, and the assertions by Akin as to a “cosmetic fill-in” in the so-called second

slot of the Wilson strap splitter are clearly wrong. Wilson is practicing the prior art with three,

separate, equal sized slots that prevent the strap from being “angularly adjustable,” the element that

won Schiebl his patents.

The patent history establishes that the asserted claims of the ‘160 Patent were granted due to

the inclusion of limitations requiring the longer second slot and the angular adjustability provided by

the longer second slot.

1. The “unitary body” limitation was NOT the only limitation that was
added to the asserted claims.
The Akin report incorrectly contends that “the only structural limitation added to the strap

splitter that was not already in dependent claims 9 and 13 was the “unitary body” limitation.” (Akin

22
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 24 of 33

Report, page 17).

However, the “unitary body” limitation was NOT the only limitation that was added to the

asserted claims. Significantly, each of the asserted claims was additionally amended in response to the

Examiner’s rejection to specifically recite that the angularly diverging first and second portions of the

strap within the second slot are ANGULARLY ADJUSTABLE with respect to each other:

As an overview to the present reply, Applicant has revised previous Claims 1 - 15 in

the form of new Claims 21 - 34. Previous Claims 16 - 20 have been canceled herein. In
particular, new independent Claims 21 and 32 have been introduced to emphasize the
structure of the "strap splitter". In particular, in each of these claims, the strap splitter is
defined as a "unitary body" in a first slot in spaced relation to a second slot. A "fixed" bar is
formed with the unitary body and positioned between the first slot and the second slot. It is
indicated that the second slot has a length that is greater than the first slot. It is further
indicated that the first and second portions of the strap are angularly adjustable with
respect to each other so as to allow one of the first and second portions to be attached to
either the high hook-up or low hook-up of the helmet.6

Akin incorrectly fails to acknowledge that the “strap splitter” limitation was amended to provide a

specific structure with the second slot longer than the first in order to overcome a prior rejection for

unpatentability.

2. The patentability of the asserted claims was premised on BOTH the

limitations: (A) that the second slot have a length greater than the first
slot and (B) that the portions of the strap not only diverge within the
second slot, but also be “angularly adjustable”.
The Akin report mischaracterizes the prosecution history and the basis for which the asserted

claims were allowed. Akin incorrectly contends that:

the first slot, second slot, bar between the first and second slot, and
second slot having length over first slot limitations were clearly not
added to gain allowance over Pietrzak.
Akin Report, page 17. The Akin report further goes on to incorrectly contend that:

To a POSA [sic], the second slot limitation added by Mr. Schiebl was
6
‘160 Prosecution History, WIL000560-61 (emphasis added):
23
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 25 of 33

not added for reasons related to patentability, but rather, it was added
“for the purpose of more clearly distinguishing the present invention
from the prior art.”
Akin report, page 31.
Such assertions in the Akin Report reflect a misunderstanding regarding the basic principles of

patent law. First, it is well-settled law that any claim amendments are presumed to be for the

purposes of patentability. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722,

737 (2002). The Akin report does not present any evidence rebutting such a presumption. The Akin

report similarly fails to articulate any valid rationale as to why the second slot limitation was added

but for the purposes of patentability. Moreover, it is clear that the independent claims were each

amended to add the second slot limitations found in the dependent claims BECAUSE the Examiner

indicated that such additional limitations in the dependent claims would result in the independent

claims overcoming the rejection based upon Peitrzak.

Second, the other referenced assertion in the Akin Report, that “the second slot limitation

added … was not added for reasons related to patentability, but rather, it was added ‘for the purpose of

more clearly distinguishing the present invention from the prior art’” is flatly wrong. The Akin report

fails to articulate how a limitation added to distinguish an invention over the prior art is somehow not

related to patentability. Akin’s assertion cannot be legally supported.

Furthermore, not only was the requirement that the second slot be longer than the first slot

added for patentability, the limitation of angular adjustability was also added for purposes of

patentability. Figures 7 and 8 of the’ 160 Patent (below) illustrate the “angular adjustability” limitation

that was added to each of the asserted claims.

24
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 26 of 33

As illustrated above, and as would be understood by a POSITA, the “angular adjustability” is

achieved by (1) the upper strap portion bending and (2) the upper strap portion pivoting from the

position shown in Fig. 7, within the second slot, to the position shown in Fig. 8. This is facilitated by

the second slot being continuous, uninterrupted and longer than the first slot. As a POSITA would

appreciate, chin guard apparatuses with bendable straps have been around since the very first chin

guard apparatus came into existence. Moreover, a POSITA would also likewise appreciate that the

Pietrzak patent already disclosed bendable straps. Accordingly, a POSITA would also appreciate that

the recited “angular adjustability” that was specifically added to distinguish over Pietrzak was not

referring to the simple bending of the chin straps themselves, but the angular pivoting of the straps

within the second longer slot of the strap splitter.

The Akin Report argues that the Wilson chin guard apparatus satisfies the limitations requiring

that the strap portions are angularly adjustable with respect to one another by referring to the figures

below. (Akin Report, page 37).

25
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 27 of 33

However, as clearly seen above, the straps of the Wilson chin guard apparatus are fixed in the

splitter and only bend when switched from a high hook up to a low hookup on a football helmet. The

strap portions of the Wilson chin guard apparatus do not pivot within the strap splitter to provide

angular adjustability. The three distinct same sized slots and separator bars of the Wilson chin guard

apparatus prevent such pivoting of the two strap portions to satisfy the limitations of the asserted

claims requiring “angular adjustability”. The Wilson strap splitter merely practices the prior art in that

the Wilson strap splitter merely includes bendable strap portions.

F. Wilson’s Chin guard model nos. WTF985000 and WTF985001 Do Not

Infringe the Asserted Claims of the ‘671 Patent

Each of the asserted claims of the ‘671 patent require the same strap splitter as required

by the asserted claims of the ‘160 Patent. As demonstrated above in the Claims Construction

section, each of the asserted claims of the ‘671 Patent requires a strap splitter, as defined by

Schiebl to include a “unitary body” [with] a first slot in spaced relation to a second slot, wherein

a “fixed” bar is formed with the unitary body and positioned between the first slot and the second

slot and wherein the second slot has a length that is greater than the first slot. As demonstrated

above with respect to the ‘160 Patent, the Wilson chin guard apparatus does not include a strap

splitter that has a second slot that has a length that is greater than the first slot. Moreover, the

two distinct slots of the Wilson strap splitter, which are separated by the separator bar, do not

26
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 28 of 33

perform the same function in the same way to achieve the same result as the strap splitter of the

asserted claims. The strap splitter of the Wilson chin guard apparatus does not provide the

function of “angular adjustability” at all or at least in the same way, since the straps of the

Wilson chin guard apparatus does not allow the straps portions to pivot in a sideways direction

within a second longer slot. Accordingly, Wilson does not infringe any of the asserted claims of

the ‘671 Patent.

Moreover, the limitation, “strap splitter” must be construed in accordance with the definition

prescribed to it by Schiebl in the ‘160 patent in order to preserve the validity of the asserted claims of

the ‘671 Patent. It is well settled law that claim limitations cannot be construed in a manner that

would render such claims invalid in view of the prior art. Eastman Kodak Co. v. Goodyear Tire

& Rubber Co., 114 F.3d 1547, 1556 (Fed. Cir.1997) (“claims should be read in a way that avoids

ensnaring prior art if it is possible to do so”). As correctly concluded by the Examiner during the

prosecution of the ‘671 Patent,7 and as never rebutted by Schiebl, Kraemer U.S. Patent 5,794,274

discloses each of the limitations of asserted claims 7 and 10 but for the additional limitations

requiring:

a first strap splitter extending over said first strap so as to cause portions of said first strap
to diverge away from each other;
and

a second strap splitter extending over said second strap so as to cause portions of said
second strap to diverge away from each other.

These additional limitations pertaining to the first strap splitter and the second strap

splitter were added by Schiebl in order to gain allowance over Kraemer. As demonstrated above,

during prosecution of the parent application, the ‘160 Patent, Shiebl had previously defined a

7
‘671 Prosecution History, WIL00702.
27
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 29 of 33

“strap splitter” as having a second slot having a length greater than a length of a first slot.

To construe the term “strap splitter” in each of the asserted claims of the ‘671 Patent

differently from its previous ascribed definition would be improper as such a construction would

result in claims 7 and 10 of the ‘671 Patent being invalid at least in view of Kraemer and the

Pietrzak Patent. The same examiner who examined the ‘671 Patent, Examiner Tejash Patel, also

examined the ‘160 Patent. During the examination of the ‘160 Patent, this same Examiner

concluded that the Pietrzak Patent disclosed first and second strap splitters that facilitate the

attachment of straps at high and low hookup positions on a helmet.8 Such a conclusion by the

Examiner would inherently require a strap to diverge from the strap splitter. As shown below,

the Pietrzak Patent clearly illustrates first and second strap splitters that cause portions of the

strap to diverge from one another.

It is therefore clear that Examiner Patel took into consideration the definition for “strap

splitter” prescribed by Schiebl when the Examiner allowed claims 7 and 10 of the asserted

claims in response to the addition of the first and second “strap splitter” limitations. Otherwise,

claims 7 and 10 of the asserted claims would have been rejected given the fact that the Examiner

had already concluded that any strap splitter that simply diverges strap portions (without having

8 ‘160 Prosecution History, WIL000560-61.

28
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 30 of 33

a longer second slot that permits the straps to move sideways within the longer second slot) was

already known given the teachings of the Pietrzak Patent. Indeed, regarding the ‘671 Patent as a

continuation patent, “[an inventor] has the right to refile the application and attempt to broaden

the claims.” Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007).

“However, an applicant cannot recapture claim scope that was surrendered or disclaimed.” Id.

“A patentee may not state during prosecution that the claims do not cover a particular device and

then change position and later sue a party who makes that same device for infringement.” Hakim,

479 F.3d at 1318; see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995

(Fed. Cir. 2003). To construe the limitations of claims 7 and 10 more broadly and in disregard

for the definition ascribed to the term “strap splitter” by Schiebl, in order to read such claims on

the Wilson chin guard apparatus, would violate the Federal Circuit precedent regarding such

terms that are repeated in a continuation patent. Further, it would also be improper as such a

construction would also result in claims 7 and 10 being invalid.

In addition, dependent claim 9 of the ‘671 Patent requires a “stop” which the inventor defined

as a rivet in order for the strap portions to be adjustably fixed near the cup.

As demonstrated above, the patent itself specifically states:

The use of the rivets (or stops) unexpectedly facilitates the ability to
angularly adjust the straps 110 and 112 relative to the high and low
hook-ups of the helmet.
‘671 Patent, Col. 7, lines 34-49.
Wilson’s Accused Products do not meet the claim limitation of a “stop” as they have no rivet

and the strap portions are not “adjustably fixed”, they are simply sewn in place. Moreover, the Wilson

stitching does not perform the same function in the same way to achieve the same result as the rivets

of claim 9.

29
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 31 of 33

To construe the term “stop” in asserted claim 9 of the ‘671 Patent differently from its

previous ascribed definition would be improper as such a construction would result in claim 9 of

the ‘671 Patent being invalid at least in view of Kraemer and the Pietrzak Patent. As illustrated

below, Figures 1 and 3 of the prior art patent to Kraemer already taught the use of stitching on

the straps adjacent strap receiving slots of a chin guard shell.

With regard to asserted claim 9, Wilson is once again simply practicing the prior art. To

improperly broaden the scope of claim 9 so as to read upon the Accused Products would improperly

ensnare the prior art. (See Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547,

1556 (Fed. Cir.1997) (“claims should be read in a way that avoids ensnaring prior art if it is

possible to do so”).

Accordingly, Wilson does not infringe dependent claim 9 of the ‘671 Patent.

August 10, 2016

_/s/ Todd A. Rathe_____________
Todd A. Rathe

30
Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 32 of 33

EXHIBIT A
 Case 4:15-cv-01438 Document 55-4 Filed in TXSD on 02/24/17 Page 33 of 33

Todd A. Rathe

Todd A. Rathe is a partner of Rathe Lindenbaum LLP, having over 24 years of experience in
IP law. Prior to cofounding Rathe Lindenbaum LLP, Todd was the owner of Rathe Patent &
IP Law and was a partner at Foley & Lardner.

Todd's areas of practice include managing corporate intellectual property rights, procuring
U.S. and foreign patents, conducting patentability, patent validity and risk assessment
studies, preparing legal opinions and drafting and negotiating confidentiality, joint
development and license agreements.

Representative Experience and Technologies

 Personally written and prosecuted over 500 US and foreign patent

applications
 Ongoing counseling, risk assessment and patent acquisition for U.S. Fortune
100 and Fortune 500 companies
 Provided counsel to clients in technology areas including medical devices,
semiconductor fabrication, electronic controls and automation, engine and
transmission design, computing and internet technologies, printing, imaging
and display technologies, consumer products, sport and recreation equipment
and construction and agricultural equipment

Education

Todd earned a B.S. degree in industrial engineering (with honors and distinction) in 1989
from Iowa State University, where he was a member of Tau Beta Pi, Alpha Pi Mu and Phi
Kappa Phi academic honoraries. He received his law degree (with high distinction) in 1992
from the University of Iowa College of Law, where he served as note and comment editor of
the Journal of Corporation Law and was published for articles pertaining to medical device
patent term extension and environmental advertising.

Affiliations/Memberships

Todd is admitted to practice in Wisconsin and before the U.S. Supreme Court. He is
registered to practice before the U.S. Patent and Trademark Office. He is co-author of a
chapter on patents for Overview of Intellectual Property Law for Business Lawyers, a West
publication.
Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 1 of 10

E XH I B I T 5
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 2 of 10

Case 4:14-cv-01304 Document 3 Filed in TXSD on 05/14/14 Page 1 of 1

AO 120 (Rev. 08/10)

Mail Stop 8 REPORT ON THE

TO:
Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN
P.O. Box 1450 ACTION REGARDING A PATENT OR
Alexandria, VA 22313-1450 TRADEMARK

In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you arc hereby advised that a court action has been
filed in the U.S. District Court Southern District of Texas - Houston on the following
- --
D Trademarks or [i'fPatents. ( D the patent action involves 35 U.S.C. § 292.):

DOCKET NO. DATE FILED U.S. DISTRICT COURT

4: 14-cv-1304 5/12/2014 Southern District of Texas- Houston
PLAINTIFF DEFENDANT

SportStar Athletics, Inc. Under Amour, Inc.

JR286, Inc.

PATENT OR DATE OF PATENT

HOLDER OF PATENT OR TRADEMARK
TRADEMARK NO. OR TRADEMARK

I See Docket Sheet

2 ') J 735 J I~ 0
3
'/) ??'95} f..o 7 7
4
15) 6o<o 3J.d-
5 '6, ~~f,t.o 7/
./

In the above---entitled case, the following patcnt(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BY
D Amendment D Answer D Cross Bill D Other Pleading
PATENT OR DATE OF PATENT
HOLDER OF PATENT OR TRADEMARK
TRADEMARK NO. OR TRADEMARK

In the above entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT

CLERK (BY) DEPUTY CLERK DATE

David Bradley W. Bostic 5/14/2014

Copy 1-Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
Copy 2-Upon tiling document adding patent(s), mail this copy to Director Copy 4--Case tile copy

WIL00530
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 3 of 10
UNITED STATES pATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov

APPLICATION NO. ISSUE DATE PATENT NO. ATTORNEY DOCKET NO. CONFIRMATION NO.

111222,283 06/15/2010 7735160 2107-1 7357

24106 7590 05/26/2010

EGBERT LAW OFFICES
412 MAIN STREET, 7TH FLOOR
HOUSTON, TX 77002

ISSUE NOTIFICATION

The projected patent number and issue date are specified above.

Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)

(application filed on or after May 29, 2000)

The Patent Term Adjustment is 1271 day(s). Any patent to issue from the above-identified application will
include an indication of the adjustment on the front page.

If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
determines Patent Term Adjustment is the filing date of the most recent CPA.

Applicant will be able to obtain more detailed information by accessing the Patent Application Information
Retrieval (PAIR) WEB site (http://pair.uspto.gov).

Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
(ODM) at (571)-272-4200.

APPLICANT(s) (Please see PAIR WEB site http://pair.uspto.gov for additional applicants):
Paul Schiebl, Houston, TX;

WIL00531
IR103 (Rev. 10/09)
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 4 of 10

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANT: SCHIEBL, Paul

SERIAL NO.: 11/222,283 ART UNIT: 3765

FILED: September 8, 2005 EXAMINER: Patel, T. D.

TITLE: CHIN GUARD APPARATUS FOR USE WITH A HELMET

Amendment A: REMARKS

Upon entry of the present amendments, previous Claims 1 - 20 have been canceled and new

Claims 21 - 34 substituted therefor. Reconsideration of the rejections, in light of the forgoing

amendments and present remarks, is respectfully requested. The present amendments have been

entered for the purpose of more clearly distinguishing the present invention from the prior art.

In the Office Action, it was indicated that Claims 1 - 7, 11 and 16-20 were rejected under

35 U.S.C. § 103(a) as being unpatentable over the Schiebl patent in view of the Rush patent. Claims

8- 10 and 12- 15 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the Schiebl

patent in view of the Rush patent and further in view of the Pietrzal patent.

As an overview to the present reply, Applicant has revised previous Claims 1 - 15 in the form

of new Claims 21 - 34. Previous Claims 16 - 20 have been canceled herein. In particular, new

independent Claims 21 and 32 have been introduced to emphasize the structure ofthe "strap splitter".

In particular, in each of these claims, the strap splitter is defined as a "unitary body" in a first slot

in spaced relation to a second slot. A "fixed" bar is formed with the unitary body and positioned

between the first slot and the second slot. It is indicated that the second slot has a length that is

greater than the first slot. It is further indicated that the first and second portions of the strap are

angularly adjustable with respect to each other so as to allow one of the first and second portions to

WIL00560
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 5 of 10

be attached to either the high hook-up or low hook-up of the helmet. In particular, independent

Claim 21 emphasizes that the shell has a "single" first strap-receiving slot adjacent one side of the

shell and a "single" second strap-receiving slot adjacent an opposite side of the shell. The straps are

defined as extending through these single slots.

In particular, independent Claim 21 incorporates the limitations of previous independent

Claim 1, along with a portion of the limitations of dependent Claims 8 and 9. New independent

Claim 32 incorporates the limitations of previous independent Claim 12 and the limitations of

dependent Claim 13.

Relative to the prior art rejections, Applicant notes that the Schiebl patent is an earlier patent

of which the present inventor is a co-inventor. As can be seen in this patent, there is described a shell

having a resilient layer received therein. However, in this patent, it is clearly seen that the shell of

the chin guard is a pair of strap-receiving slots formed on opposite sides thereof. This is clearly

illustrated in FIGURE 9. As such, the straps are threaded through the chin guard in a relatively

conventional manner. Through this threading of the strap through the pair of holes in the shell of

the chin guard, the proper attachment of the strap 72 is able to achieved. During the manufacture

and sale of the chin guard in accordance with the teachings of the Schiebl patent, the present inventor

noted that the utilization of a pair of closely spaced slots on the chin guard created certain structural

difficulties on the chin guard. In other words, with the removal of the polymeric material in the area

of these slots, there was a weakening of the structural integrity of the whole of the chin guard. As

such, by virtue of the strong impacts that can occur during a play of football, it was possible that the

rigid shell could split in the area of this pair of slots. Additionally, the use of such a pair of slots

made it somewhat difficult to manipulate the straps so as to be easily adjustable for connection to

WIL00561
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 6 of 10

the low hook-up or high hook-up of the helmet. As such, a need developed so as to form a chin

guard having a single strap-receiving slot on each side of the shell while, at the same time, enhancing

the ability of the strap to be engaged with either the high hook-up or low hook-up of the helmet. As

such, the strap splitter of the present invention was invented so as to achieve a solution to the

previous problems. Quite clearly, neither the Schiebl patent nor the Rush patent show, in anyway,

such a strap splitter. The Rush patent was simply cited as showing an inflatable chin strap for a

helmet.

The Pietrzak patent was cited by the Examiner to show such a "strap splitter". Applicant has

amended the claims herein so as to more clearly distinguish the present invention from the strap

splitter of the Pietrzak patent.

The Pietrzak patent describes a strap adjustment assembly for a bicycle helmet. As such,

the field of application of this strap splitter of the Pietrzak patent is quite different than that of the

present invention. A bicycle helmet will have fixed button hook-up on each side of the helmet.

There would be no "high hook-up" or "low hook-up". The Strap simply extends under the chin of

the bicyclist. As such, the Pietrzak patent would not be addressing the need for the football to be

able to easily and conveniently adjust the angular orientation of the strap so as to connect with a high

hook-up or a low hook-up on the football helmet. The Pietrzak patent does not provide any

information as to how to better support a chin guard over the chin of a football player.

The Pietrzak patent provides a strap adjustment mechanism that utilizes a pivotal lever so

as to permit an adjustment of the straps. A description of this "release lever" was found in column

2, lines 21 - 30 of the Pietrzak patent as follows:

The release lever has an arm section and a pivot section. The
pivot section defines a second pivot surface. The release lever further

10

WIL00562
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 7 of 10

includes a protuberance defining an engagement surface. The first

pivot surface and the second pivot surface cooperate to permit manual
manipulation of the arm section to rotate the lever about the axis
between a first position wherein the engagement surface of the
protuberance is unopposed and extends outward a first distance in the
direction of the first face and a second position wherein the
engagement surface of the protuberance extends less than the first
distance in the direction of the first face.

Additionally, it was recited in column 2, lines 39 - 44 that:

The portion of the base opposite the distal end of the release
member is exposed to provide a secondary gripping surface to
facilitate rotation of the release lever around the axis by squeezing the
distal end of the release lever and the opposite portion of the base
together with a finger and a thumb.

As such, it can be seen that the strap adjustment assembly of the Pietrzak patent utilizes this

manipulatable release lever so as to achieve the proper adjustment and fixing of the strap assembly.

Fundamentally, the strap adjustment assembly of the Pietrzak patent is not intended to

engage the chin guard of football helmet. It can be seen in the illustration of the Pietrzak patent that

the strap actually extends underneath the chin of the bicycle rider. As such, there is no need to

provide a first strap which extends through a first strap-receiving slot on the side of the shell and a

second strap extend through the second strap-receiving slot of the shell. It would appear that the

Pietrzak patent simply shows a pair of straps that extend in overlying relationship underneath the

chin of the user and then spread outwardly of the strap adjustment assembly. This is a significantly

different arrangement than that of the present invention.

Relative to independent Claims 21 and 32, it can be seen that the Pietrzak patent does not

show a "unitary body". There is no "fixed bar" formed with this unitary body. Each of the slots of

the Pietrzak patent appear to be symmetrical with each other such that there is not a "second slot

having a length that is greater than the length of the first slot". Additionally, and furthermore, there

11

WIL00563
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 8 of 10

is no teaching or suggestion in the Pietrzak patent that the first and second portions of the strap are

"angularly adjustable" with respect to each other so as to allow one of the first or second portions

to be attached to either the high hook-up or the low hook-up of the helmet. On this basis, Applicant

contends that the Pietrzak patent in combination with the Schiebl and Rush patents does not show

the structure, function, or results of the present invention, as defined by independent Claim 21 and

32 herein.

Independent Claim 21 further includes the limitations ofthe "single first strap-receiving slot"

and the "single second strap-receiving slot" located on opposite sides of the shell. There is no

teaching in either the Schiebl patent, the Rush patent or the Pietrzak patent of such a configuration.

As such, the enhancement of the integrity of the shell of the chin guard would not be achieve by this

prior art combination. On this basis, Applicant contends that independent Claim 21 is further

patentably distinguishable from the prior art combination.

Dependent Claims 22 - 27 correspond, respectively, to the limitations found in previous

dependent Claims 2 - 7. Dependent Claim 28 reflects a portion of the limitations of previous

dependent Claim 8. Dependent Claim 29 reflects the limitations of previous dependent Claim 9 as

pertaining to the "second strap splitter". Dependent Claim 30 and 31 correspond, respectively, to

the limitations of previous dependent Claims 10 and 11.

Dependent Claims 33 and 34 correspond, respectively, to the limitations of previous

dependent Claims 14 and 15.

Based upon the foregoing analysis, Applicant contends that independent Claims 21 and 32

are now in proper condition for allowance. Additionally, those claims which are dependent upon

these independent claims should also be in condition for allowance. Reconsideration of the

12

WIL00564
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 9 of 10

rejections and allowance of the claims at an early date is earnestly solicited. Since no new claims

have been added above those originally paid for, no additional fee is required.

Respectfully submitted,

December 15, 2009 /JohnS. Egbert/

Date JohnS. Egbert; Reg. No. 30,627
Customer No. 24106 Egbert Law Offices
412 Main Street, 7th Floor
Houston, Texas 77002
(713 )224-8080
(713)223-4873 fax

13

WIL00565
 Case 4:15-cv-01438 Document 55-5 Filed in TXSD on 02/24/17 Page 10 of 10

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U.S. Patecot and Tf1Jdemat1( Ofliol; U. S. DEPARTMENT Of COMMeRce
..... A~q~Aired ~ respond to a coll4ldlon ot Wonnatlon unless K displays a wild OMB control IIUnlber•
/

NONPUBLICATION REQUEST
First Named Inventor I SCHI EBL , P au 1
..........

UNDER ICHIN GUARD APPARATUS FOR USE

Title WITH A HELMET .
35 U.S.C. 122(b)(2)(B)(i)
Atty Oocl<et Number -, 21 0 7- 1

' ../

I hereby certify that the invention disclosed in the attached application has not and will not
be the subject of an application filed in another country, or under a multilateral agreement,
that requires publication at eighteen months after filing.

I hereby request that the attached application not be published under 35 U.S.C.
122{b).

q " e,. 0~
Date

John S. Egbert
Typed or printed name
Reg. No. 30,627

This request must be signed in compliance with 37 CFR 1.33(b) and submitted with the
application upon filing.

Applicant· may rescind this non publication request at any time. If applicant rescinds a
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scheduled for publication at eighteen months from the earliest claimed filing date for which a
benefit is claimed.

If applicant subsequently files an application directed to the invention disclosed in the

attached application in another country, or under a multilateral international agreement, that
requires publication of applications eighteen months after filing, the applicant must notify the
United States Patent and Trademark Office of such filing within forty-five (45) days after the
date of the filing of such foreign or international application. Failure to do so will result in
abandonment of this application (35 U.S.C. 122(b)(2)(B)(Ui)).

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pubUsh6d under 35 U.S.C. 122(b) (and the PTO to p~ss that request). Confidentiality Is governed by 35 U.S.C. 122 and 37 CFR 1.14. This fonn is estimated
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(Request and Certification under 35 U.S.C. § 122(b)(2)(B)(i) (PTO/SB/35) [25-1.1)-page 1 of 1)

WIL00656
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 Case 4:15-cv-01438 Document 55-7 Filed in TXSD on 02/24/17 Page 1 of 1

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

SPORTSTAR ATHLETICS, INC., §

§
Plaintiff, §
v. §
Civil Action No. 4:15-cv-01438
§
WILSON SPORTING GOODS CO., §
§
Defendant. §
§

ORDER GRANTING DEFENDANT WILSON SPORTING GOODS CO.’S MOTION

FOR PARTIAL SUMMARY JUDGMENT ON THE ISSUE OF NON-INFRINGEMENT

Before the Court is Wilson Sporting Goods Co.’s Motion for Partial Summary Judgment

on the Issue of Non-Infringement. Having considered the papers submitted and the arguments of

all parties, the Court is of the opinion that the Motion should be GRANTED.

IT IS THEREFORE ORDRED that a finding of non-infringement by Wilson Sporting

Goods Co. of both U.S. Patent Nos. 7,735,160 and 8,621,671 is hereby entered.

And it is so ORDERED on this, the ____ day of _____________, 2017.

____________________________________

1