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

United States District Court, D. Vermont

September 27, 2017

MADGRIP HOLDINGS, LLC, Plaintiff,
v.
WEST CHESTER HOLDINGS, INC., Defendant.

          OPINION AND ORDER

          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. MadGrip's patent describes the use of injection molding technology to provide cushioning on the palm and other portions of a utility glove. West Chester denies that its rival product infringes the MadGrip patent, and has filed counterclaims asserting that the patent is invalid and unenforceable.

         Now before the Court is the matter of claim construction. The parties have conferred and resolved most claim construction issues, though a few disagreements remain. West Chester contends that there are three items in dispute: (1) the significance of the preamble to Claim 1, (2) the term “edges” in Claim 1, and (3) the term “saddle” in Claim 6. MadGrip submits that “edges” is the only term requiring construction. The Court held a non-testimonial claim construction hearing on June 20, 2017, after which the parties submitted supplemental briefing.

         Factual Background

         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 “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 the injection-molding manufacturing technique. After several iterations of the application, discussed in more detail below, the United States Patent and Trademark Office (“USPTO”) granted United States Patent No. 9, 346, 202 (the “‘202 Patent”) on May 24, 2016. MadGrip is the assignee of the ‘202 Patent, which is entitled “Utility Glove.”

         The ‘202 Patent contains 25 claims. Claims 1-7, 9-10, and 13 are asserted in this action. Claim 1, the only independent claim being asserted, states:

1. A method of manufacturing a utility glove having a thumb and four fingers, said glove comprising a three dimensional molded portion, the molded portion comprising an elastomeric material bonded to a fabric material in a three dimensional configuration substantially conforming to three dimensional contours of at least a portion of a hand exclusive of any variations in thickness or features on the surface of the molded portion, comprising the steps of:
a. placing a glove blank comprising a fabric material over a first mold part in the form of at least a portion of a hand;
b. bringing at least a second mold part into molding engagement with the first mold part to create a cavity with the glove blank on the first mold part; and
c. injecting with an elastomeric material into the cavity to form the molded portion, wherein the elastomeric material is injected on the side of the fabric material opposite the first mold part, 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 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”).

         West Chester argues that its product is not infringing, and that MadGrip is trying to eliminate some of the limitations set forth in the ‘202 Patent in order to secure a broader monopoly in the marketplace.

         Prosecution History

         At claim construction, the prosecution history can be a relevant consideration. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Here, that history began on July 16, 2007, when MadGrip filed provisional patent application No. 60/950, 028 (the “‘028 Provisional”). Among other things, the ‘028 Provisional described “[a] three dimensional molded palm having a thumb portion and at least one finger portion.” ECF No. 51-4 at 16. The provisional application also stated that the “palm gripping portion covers the entire palm side of all fingers.” Id. at 14.

         On July 16, 2008, MadGrip submitted U.S. Patent Application 12/218, 562 (the “‘562 Application”). The Patent Examiner for the application was Katherine Moran. Claims 1 through 16 of the ‘562 Application were for a glove with molded portions. Claims 17 through 20 were for methods of injection molding a glove.

         Examiner Moran rejected the claims, in part based upon a patent to “Howard, ” which reportedly shows a utility glove with a molded palm portion comprised of thickened areas that are raised in relation to other areas of the palm. Examiner Moran commented that one of the figures in Howard “shows the palm region and it appears that the pad tapers at its outer edges towards the finger and towards the wrist.” ECF No. 51-5 at 61. West Chester highlights this first reference to the term “edges” as significant for claim construction.

         On October 12, 2009, MadGrip filed U.S. Patent Application No. 12/577, 273 (the “‘273 Application”). Katherine Moran was again the examiner. The ‘273 Application specified a “[p]re-curved concave palm, where the middle of the palm portion is set in from the edges of the palm to create an at least partially cupped shape.” The USPTO again rejected the claim, citing a patent to “Wiley.” The examiner found that Wiley had a “molded palm portion [] formed in a pre-curved configuration where the middle of the palm is set in from the edges to form a concave shape.” ECF No. 51-7 at 175. The examiner also again cited Howard as disclosing a molded palm portion set in from the edges to form concavity.

         MadGrip contested the examiner's conclusion that Wiley and Howard barred its claim, in part because the molded portion in those patents was not completely concave from the middle to the edges. On March 5, 2012, the patent examiner again rejected the claim, explaining that certain illustrations (Figures) in the Howard patent show a palm with “an edge at the outermost thumb palm portion, ” and “the palm portion extending from the index finger into a palm area. This portion has a middle set in from the edges.” Id. at 224, 227. The examiner further cited Wiley and its specification discussing “a concave outer face. Therefore, at least a portion of a middle molded portion is set in from the edges of the molded portion.” Id. at 226.

         The claims in the ‘273 Application were rejected on June 4, 2012, and again on November 1, 2012 after MadGrip filed an Amendment. The latter rejection was not based on either the Howard or the Wiley patents. MadGrip appealed to the Patent Trial and Appeal Board. In the course of the appeal, MadGrip stated that “the present claimed invention is not merely defined as having a palm that is pre-curved . . . . Instead, the present invention is defined as having a palm with a middle and edges [where] the middle of the palm is set in from the edges of the palm to form a concave shape . . . .” Id. at 418 (internal quotation marks and citation omitted). A patent issued from the ‘273 Application on November 2, 2016 (after issuance of the ‘202 Patent).

         On October 11, 2010, MadGrip filed an international application that was a continuation-in-part of the ‘273 Application. Claim 1 of the foreign patent was rejected due to a patent to “Jaeger, ” which reportedly disclosed “a utility glove . . ., the palm side comprising a three dimensional molded portion . . . wherein the molded portion is formed in a pre-curved configuration with the middle of the palm set in from the edges of the palm to form a concave shape within the palm.” ECF No. 37-2 at 470.

         On April 5, 2012, MadGrip began prosecution of U.S. Patent Application No. 13/500, 483 (the “‘483 Application”). Katherine Moran was the initial examiner, but Matthew Daniels replaced her in 2015. Claim 3 of the ‘483 Application stated that the “molded portion includes a palm portion with the middle set in from the edges of the palm to form a concave shape within the palm.” Id. at 314-15. Claim 29 of the application defined “edges” as “a heel, a front corresponding to knuckles of the fingers, a thumb side and an outer side.” Id. at 320. MadGrip stated in the “remarks” section that “[f]or Claim 29, the amendment more clearly defines the concave shape of the palm, with the middle of the palm set in from the edges of the palm to form a cupped shape.” Id. at 321.

         In 2015, the examiner rejected all claims in the ‘483 Application, based in part upon a prior MadGrip application (the ‘562 Application) and other patents showing gloves with various thicknesses of elastomeric material. West Chester notes that not all of that prior art cited by the examiner involved injection molding.

         On November 17, 2015, MadGrip's counsel submitted amended claims to the USPTO and requested further examination. Claim 15, as amended, stated

         15. (currently amended) A method of manufacturing an injection-molded utility glove having a thumb and four fingers, said glove comprising a three dimensional molded portion, the molded portion comprising an elastomeric material bonded to a fabric material in a three dimensional configuration substantially conforming to three dimensional contours of at least a portion of a hand exclusive of any variations in thickness or feature on the surface of the molded portion: comprising the steps of:

a. placing a glove blank comprising a fabric material over a first mold part in the form of at least a portion of a hand;
b. bringing at least a second mold part into molding engagement with the first mold part to create a cavity with the glove blank on the first mold part; and
c. injecting with an elastomeric material into the cavity to form the molded portion, wherein the elastomeric material is injected on the side of the fabric material opposite the first mold part, 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.

Id. at 91. Claim 33, which was dependent on Claim 15, stated:

33. (new) The method of Claim 15 wherein the molded portion comprises a palm having a middle and edges, the 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.

Id. at 93. MadGrip notes that Claim 33, being a dependent claim, included all of limitations of the method recited in Claim 15, but added that the molded portion included a concave palm.

         On December 9, 2015, the patent examiner issued an office action stating that he believed Claim 15 was obvious based on certain prior art; specifically, two patents that had been granted to “Edwards” and “Koliwer.” The Edwards patent showed a rubber-coated glove, and the Koliwer patent showed injection molding in clothing such as boots. Nonetheless, the examiner concluded that two features of the amended claims would be allowable if asserted as an independent claim. Specifically, the examiner found that Edwards showed a rubber coating extending “360 degrees about the main body portion” of the glove, and noted in a parenthetical that “(a molded palm with edges would make the molded portion terminate on the palm).” Id. at 66. The examiner further stated: “Additionally, while gloves where the middle of the palm is formed in a concave shape may be known, these configurations are not formed by an injection molding process. The additional feature of engaging a first mold part with a second mold part to form a concave shape in the middle of the palm are not obvious over the prior art even if gloves formed by a different method having the same configuration are known.” Id. at 66-67.

         On December 22, 2015, MadGrip submitted an amendment that essentially combined Claim 33 and Claim 15 into a new Claim 1.

         That claim, as cited above, described the manufacturing process, as well as the molded portion which “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, where in 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.” On May 24, 2016, ...


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