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MadGrip Holdings, LLC v. West Chester Holdings, Inc.

United States District Court, D. Vermont

September 27, 2017



          William K. Sessions III District Court Judge

         Plaintiff MadGrip Holdings, LLC (“MadGrip”) brings this action claiming that Defendant West Chester Holdings, Inc. (“West Chester”) has infringed its patent relating to the manufacture of utility gloves. West Chester counters that the patent is invalid because the technology in the patent is not new, and that MadGrip's inequitable conduct in proceedings before the United States Patent and Trademark Office (“USPTO”) renders the patent unenforceable.

         Now pending before the Court is MadGrip's motion to strike West Chester's affirmative defenses and to dismiss its counterclaims. After MadGrip filed its motion, West Chester moved to amend its counterclaims and to add new allegations of inequitable conduct. Acknowledging the proposed amendments, MadGrip has renewed its motions to strike and to dismiss. For the reasons set forth below, the motion for leave to amend is granted in part and denied in part, MadGrip's initial motions to strike and to dismiss are granted, and its subsequent motions are granted in part and denied in part.

         Factual Background

         I. MadGrip's Claims

         MadGrip is a glove company located in Essex Junction, Vermont. In 2006 or 2007, David Gellis, one of the principals of MadGrip, allegedly devised a process for manufacturing utility gloves using injection molding technology. MadGrip uses this technology to produce a glove with a rubberized “concave palm, ” “pre-curved finger construction, ” and a “breathable knit” backside. ECF No. 1 at 5. The injection molded glove is reportedly “contoured with the natural contours of the wearer's hand to allow for maximum motion while still providing cushion to the wearer's palm.” Id. at 5.

         On July 16, 2007, Mr. Gellis filed a provisional patent application describing this manufacturing technique. After several iterations of the application, the USPTO ultimately granted United States Patent No. 9, 346, 202 (the “‘202 Patent”) on May 24, 2016. MadGrip is the assignee of the ‘202 Patent.Representative Claim 1 of the ‘202 Patent reads, in part, that the patent covers “[a] method of manufacturing a utility glove” including:

injecting an elastomeric material into the cavity to form the molded portion . . . said molded portion comprising greater than 50% of the circumference of each of the fingers along the length of each finger while leaving an area of fabric without elastomeric material on each finger wherein the molded portion comprises a palm having a middle and edges, the palm edges comprising a heel, a front corresponding to knuckles of the fingers, a thumb side and an outer side, wherein the middle of the palm is set in from the heel, the front, the thumb side and the outer side of the palm to form a concave shape.

         ECF No. 1-1 at 16.

         Defendant West Chester sells a line of gloves known as Sumo Grip. Sumo Grip advertising uses the term “injection grip technology, ” and references the glove's “injection-molded grip.” ECF No. 1 at 10. MadGrip claims that the Sumo Grip glove infringes elements specific to Claim 1 of the ‘202 patent, including that “the molded portion of the Sumo Grip glove is greater than 50% of the circumference of each finger, and it includes a palm with a middle and edges, a thumb side and an outer side, and the middle of the palm is set in from the edges of the palm to form a concave shape.” Id. at 11. MadGrip further alleges, upon information and belief, that the Sumo Grip glove infringes other Claims within the ‘202 Patent as well. Id. (“the Sumo Glove infringes at least Claims 1-5, 7-10 and 13 of the ‘202 Patent”).

         On May 18, 2016, counsel for MadGrip informed West Chester that the ‘202 Patent would issue on May 24, 2016 and that West Chester would likely be infringing. The May 18 letter also requested information about West Chester's manufacturing process. West Chester declined to provide MadGrip with manufacturing information, and allegedly asked MadGrip's attorney to first detail the ways in which the Sumo Grip glove infringes the ‘202 Patent. West Chester also reportedly noted features of the claims in the ‘202 Patent that are not present in the Sumo Grip glove, and requested contrary information. West Chester alleges that MadGrip has not responded to its requests.

         MadGrip filed its Complaint in this case on October 14, 2016, asserting one count of patent infringement for “making, using, importing, selling, and/or offering for sale Sumo Grip gloves which are manufactured by a method disclosed and claimed in the ‘202 Patent in violation of 35 U.S.C. § 271, et seq.Id. at 13. For relief, MadGrip seeks compensatory damages, including reasonable royalties and/or lost profits; enhanced damages under 35 U.S.C. § 284; attorney's fees; and pre-issuance damages in light of the notice provided to West Chester on May 18, 2016.

         II. West Chester's Affirmative Defenses and Counterclaims

         West Chester contends that the ‘202 Patent is invalid and unenforceable. It first claims that Mr. Gellis and MadGrip did not invent, and do not claim to have invented, injection molding in rubberized fabric gloves. West Chester notes that during MadGrip's patent prosecution, the examiner cited a patent granted to J. M. Edwards in 1927 that showed a rubber-coated fabric glove. West Chester also claims that injection molding to make rubberized gloves was known prior to the ‘202 Patent, and that MadGrip did not disclose relevant prior art to the examiner.

         In its allegations of inequitable conduct, West Chester asserts that MadGrip and its agents, including the prosecuting attorney for the patent, Kenneth Florek, violated their duty of candor and good faith in dealing with the USPTO. Their claim begins with the rejection of an earlier patent effort:application 13/500, 483 (the “‘483 application”). After the ‘483 application was rejected, Attorney Florek, acting on behalf of MadGrip, submitted amended claims to the USPTO and asked for further examination. The examiner reportedly rejected many of the amended claims on the basis of certain “prior art, ” including patents granted to the aforementioned J. M. Edwards showing a rubber-coated glove, and to “Koliwer” showing injection molding in clothing articles such ...

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