Helmet Maker Riddell Accuses Rivals of Delaying Football Helmet Patent Infringement Litigations: Unfair Delay, or Proper Use of a Stay Pending the PTAB Outcome?

Riddell, Inc., a Chicago-based sports equipment maker, urged an Illinois federal court to keep its patent infringement suits moving forward, instead of granting its rival’s motion to stay the cases while the Patent Trial and Appeal Board (PTAB) reviews the patents at issue.

As background, Riddell filed two lawsuits in April, 2016 against Schutt Sports and Xenith, LLC, alleging the competing companies’ football helmets violated Riddell’s “Sports Helmet” patents, patent numbers 8,938,818 and 8,528,118, both issued between 2013 and 2015. Each patent provides detail regarding the helmet’s shape and design. Also, Riddell alleged infringement of its patent 8,813,269 covering the design of the company’s quick-release face guard. Riddell’s motion to combine the two cases was denied, but the judge allowed the two cases to proceed under the same discovery plan prior to trial.

Dan Armet, Riddell’ president, stated “Riddell is the leader in football innovation and has advanced the game with the introduction of new technologies directed to player protection and performance.” He continued, “[w]e intend to protect that investment by enforcing our intellectual property portfolio when competitors unfairly use our patented technology.” However, Schutt CEO Robert Erb responded that “the suit has no merit and appears to be a desperate attempt by a struggling competitor to attack the market while it faces product liability and other challenges. . . in fact. . . Riddell itself is in violation of certain Schutt patents.” Thus, Schutt moved for the court to stay the case in August, after it requested review from the PTAB. However, this motion was denied (without prejudice) as premature since the PTAB had not yet decided to institute proceedings.

Schutt renewed its motion to stay the case after the PTAB initiated review over the patents in dispute. Xenith joined Schutt’s motion. In response, Riddell argued that Schutt’s stay request is just another delay tactic, and that the suit is further along than Schutt implied, as Schutt had already delayed the case when it refused to produce discovery in October even though its motion to stay the case had been denied.

Riddell’s response stated: “Schutt has demonstrated a pattern of delay since the beginning of this case. . . despite the court’s denial of Schutt’s original motion to stay, Schutt has continued to use its pending [inter partes reviews] as an excuse for not diligently participating in this case or providing requested discovery.”

Also, Riddell’s response argued that the PTAB’s review will not cover all of the underlying patent claims, instead only covering certain claims, and thus, the court will “still be required to make its own conclusions,” regardless of the PTAB’s results.

Lastly, Riddell argued that while the defendants would benefit from the stay — as they will be able to continue infringing on its patents during that time — Riddell would be unfairly prejudiced by any further delay of the case. Riddell’s response maintained that “[d]efendants seek a tactical advantage here, positioning themselves to get another chance to invalidate these patents should they not succeed in the PTAB.”

If the defendant’s motion to stay is granted, Riddell faces further infringement of its patents while awaiting the PTAB’s final conclusions, and thus, will motivate other companies facing patent infringement lawsuits to delay the proceedings in order to receive the same benefit Schutt would — the ability to keep infringing.

This is not the first legal battle between Schutt and Riddell. In 2008, Riddell sued Schutt for infringing on other patents than those at issue in this case. In August 2010, a jury awarded Riddell $29 million. The two companies later agreed on a $1 million settlement to resolve the patent fight.

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