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Simpson Performance Products, Inc. v. Zamp Inc.

United States District Court, W.D. North Carolina, Statesville Division

March 5, 2019

ZAMP INC., Defendant.


          Max O. Cogburn Jr. United States District Judge

         In this patent infringement case, Simpson Performance Products, Inc. (“Simpson” or “plaintiff”) accuses Zamp, Inc. (“Zamp” or “defendant”) of infringing all nineteen claims of U.S. Patent No. 9, 351, 529 (the “529 patent”), which relates to a system of tethers and a helmet cooperating with the tethers for controlling a driver's head during operation of a vehicle. Simpson owns the ‘529 patent. Zamp produces a similar head and neck restraint product called the Zamp NT001003 Z-Tech Series 1A (the “Accused Device”). Simpson is suing Zamp for direct infringement and inducing infringement of the ‘529 patent.

         I. Jurisdiction

         Simpson is a corporation organized under the laws of the State of Texas and has a place of business in Mooresville, North Carolina. Zamp is a corporation organized under the laws of the State of Washington, having a principal place of business in Vancouver, Washington. Zamp does not contest personal jurisdiction. This Court has jurisdiction over the subject matter of this lawsuit under 28 U.S.C. §§ 1331 and 1338(a), this Court has personal jurisdiction over the parties, and venue is appropriate in this district pursuant to 28 U.S.C. §§ 1391(b), (c) and 1400(b).

         II. Procedural History

         As usually occurs in patent litigation, the parties have been unable to agree on the meaning of several material claim terms and phrases, which requires Markman claim construction. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The Court conducted a Markman hearing on November 15, 2017. On January 8, 2018, the Court issued an Order (#28) staying the case pending resolution of a third-party petition for inter partes review conducted by the United States Patent and Trademark Office (“USPTO”) relating to the ‘529 patent. Ultimately, the Patent Trial and Appeal Board (“PTAB”) denied the petition on May 4, 2018 and the motion for reconsideration on July 25, 2018. See Mot. Lift Stay (#33). Given the PTAB's determinations, the stay was lifted on July 30, 2018. This case is now ripe for review.

         III. Background

         A. The Patented Technology

         The ‘529 patent pertains to a restraint device that protects a race-car driver's head and neck when subjected to high acceleration, deceleration, and vibration forces. The invention is within the field of safety devices worn by a driver operating a high-performance vehicle. More specifically, the restraint device controls movement of, and reduces forces applied to, a driver's head, neck, and spine during a drag race or collision event.

         Traditionally, drivers of high-performance vehicles have employed standard five- or six-point seat belt assemblies, in which all of the belts tie into a common buckle, to restrain the driver during racing. Although standard seat belt assemblies effectively constrain the torso to the seat assembly during a collision event, they do not restrain the driver's head or neck. As such, the driver's head may move forward, backward, sideways, or oscillate side-to-side depending on the force applied.

         Stock car racing is one of the most popular spectator sports in North America. The sport has its origins in the Western District of North Carolina, with Charlotte hosting the very first National Association of Stock Car Auto Racing (“NASCAR”) Strictly Stock race in June 1949. Charlotte is also home to the NASCAR Plaza, widely considered NASCAR's “unofficial headquarters, ” which adjoins the NASCAR Hall of Fame. While NASCAR and other motorsports exist mainly for entertainment, they also play an important role in development of safety technology, much of which is adopted by the automotive industry, benefitting even those who are not race enthusiasts.

         Over the years, numerous race-car drivers have lost their lives in competition or practice due to the inherently dangerous nature of the sport. Among the leading causes of deaths for race car drivers is basilar skull fracture, which occurs when a driver's head continues to move forward while the body is restrained by seat belts during high-speed impact. Basilar skull fracture is not just a fracture at the base of the skull. It involves the cracking of a small circular bone about the size of a quarter at the bottom rear of the skull, where the bone and cartilage are weakest. Cracking of the little bone can cut the interior carotid arteries, and the sufferer can bleed to death in a matter of seconds. There also can be damage to the areas of the brainstem that control breathing and heart rate. Michael Hill & Jason McKinley, NASCAR Safety Improvements Save Lives, RGA Reinsurance Company (Apr. 2, 2012), media/research/nascar-safety-improvements-save-lives. Such injuries are not unique to NASCAR; they occur across the array of automotive racing disciplines, both professional and amateur. The death of Dale Earnhardt in 2001 ultimately led NASCAR officials to mandate the use of the Head and Neck Support (the “HANS”) device to prevent basilar skull fractures. Bruce Martin, Mandated 10 years ago, HANS device has ushered in era of safety, Sports Illustrated (Aug. 4, 2011),

         1. The HANS and Hutchens Device

          Both the HANS device and the Hutchins device were designed to minimize the risk of serious neck injuries in an auto racing crash. The HANS Device has been around since the early 1980s but gained notoriety following the death of Dale Earnhardt in 2001. Earnhardt was not wearing one when he crashed. Before Earnhardt's death, many motorsports drivers weren't willing to wear the head and neck restraint, claiming it was uncomfortable and restrictive. NASCAR has since made its use mandatory.

         The HANS device is largely synonymous with head and neck restraint technology. The U-shaped device slides on like a football players' shoulder pads, then hooks onto the helmet. The device restrains the driver's head relative to the torso, not the seat of the car. There are two portions to the device: the back portion and the shoulder portion.

         The back portion of the device, which fits around the neck and resembles a head rest, is a carbon fiber shoulder collar with a single flexible tether that loops around the back of the raised collar. The two ends of the tether extend from the either side of the raised collar and attach to lateral anchors on the driver's helmet. This tether secures the driver's head and neck to the HANS device. The shoulder portion of the device extends from the back portion, over the shoulders, down the chest, and lies flat over the pectoral muscles. The shoulder portion looks like backpack straps that do not reconnect with the back portion under the armpits. The HANS device does not attach to the seat, the safety harness belts, or the driver's body. It attaches only to the driver's helmet and is secured under the safety belts.

         The Hutchens is another early restraint device designed to restrict forward whipping of the head. But unlike the HANS, the Hutchens device is no longer approved by NASCAR. The device consists of a series of straps that connect across the chest and at the waist. The helmet is attached to the device with the help of an anchor on each side, much like the HANS device but placed slightly forward. In a crash, the straps of the Hutchens device tighten as the driver's head begins to move forward. It uses the driver's pelvic area as an anchor to prevent whipping of the head and neck. When first introduced, many drivers gravitated to the Hutchens device due to greater comfort and range of movement than the HANS device and lower price point. However, a string of injuries prompted testing which revealed the Hutchens failed to meet minimum standards. NASCAR has banned the use of the Hutchens device for all its series, making the HANS device the sport's only approved head-and-neck restraint system. NASCAR bans Hutchens device, Star News Online (Jan. 4, 2005), 605046979/WM/.

         Today, the HANS device is the most widely used and recognized head and neck restraint in motorsports. Motorsports Safety, Worcester Polytech. Inst. Injuries to the cervical spine and, most commonly, where the spine attaches to the skull are now rarer than ever. James Norman, The Medical Causes of Racing Deaths and Resulting Race Car Improvements, Complex (July 2, 2013), examples-and-resulting-race-car-improvements/spinal-cord-injuries-base-of-the-skull-injuries.

         2. The ‘529 patent

          Development of devices to protect drivers' heads and necks in collisions did not stand still with the invention of the HANS or Hutchens devices. Despite the HANS device's success in reducing basil skull fractures by restricting forward whipping of the head, its single-point attachment strap provides little resistance to side-to-side movement caused by vehicle vibration. “[T]his vibration has been known to cause severe side-to-side oscillation of the driver's head, which can lead to loss of control of the vehicle or cause injury or even death by banging the driver's head against the interior of the vehicle.” ‘529 Patent col. 1 ll. 53-57. As such, there was a need in the art to improve head and neck restraint devices and tethering systems to protect drivers during a collision event, regardless of the direction of impact, and to improve drivers' safety under a greater variety of conditions. Id. ll. 58-62.

         On May 31, 2016, the United States Patent and Trademark Office (the “PTO”) issued the ‘529 patent, entitled “Multi-point Tethering System for Head and Neck Restraint Devices, ” with Trevor P. Ashline named as the inventor. Simpson is the sole owner of the ‘529 patent. The ‘529 patent describes a system of tethers connecting the driver's helmet to a support member worn by the driver. The system of tethers, in cooperation with the support member, function to control movement of the driver's head during operation of the vehicle. Pl.'s Br. (#16) at 2. Unlike the HANS device, which employs a single tether looped around the back portion of the device, the ‘529 patent describes a system of rear, side and front tethers that attach the driver's helmet to the restraint device. The front tethers are also attached to the vehicle's seat belt assembly. The rear tether and one of the pair of side tethers are jointly attached to the helmet at a single attachment point on each side of the helmet. In conjunction with the support member, this tether system controls movement of the driver's head and neck during operation of the vehicle. In doing so, the likelihood is reduced that a driver's head will strike the interior of the vehicle and cause serious harm.

         3. The Accused Device

         Simpson asserts that Zamp has infringed one or more valid and subsisting claims of the ‘529 patent by making, using, importing, offering for sale, and selling the Accused Device to its distributors, intermediaries, customers, and/or end users. Simpson contends that the Accused Device has a pair of side tethers with each side tether configured for attachment to a respective side of a helmet and to a support member, that it has a rear tether that is attached to the support member and is configured for attachment to a helmet, and that the rear tether and one of the pair of side tethers are jointly attached to a helmet at a single attachment point on each respective side of the helmet. Simpson contends that the Accused Device falls within the scope of at least independent claim 1 of the ‘529 patent. Simpson further contends that Zamp has caused it substantial and irreparable harm.

         Zamp does not deny using a tether-equipped device that attaches to a driver's helmet to control the driver's head and improve driver safety, but claims that the manufacture, use, and sale of such devices does not constitute infringement of the ‘529 patent. Further, Zamp argues that infringement of the ‘529 patent is impossible, as the ‘529 patent is invalid on several grounds, contending that the ‘529 patent does not meet conditions of patentability under 35 U.S.C. §§ 101, 102, 103, and 112. Finally, Zamp argues that Simpson is not entitled to relief due to unclean hands because Simpson sought to enforce a patent it knows to be invalid or not infringed.

         IV. Legal Standard

         Before the court can determine whether a patent has been infringed, the court must first determine the meaning and scope of patent claims that are asserted to be infringed. Once the claims have been properly construed, the court may compare the properly construed claims to the device accused of infringing. Markman, 52 F.3d at 976. Determining the meaning and scope of the patent claims at issue is the purpose of claim construction. O2 Micro Int'l Ltd. V. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008).

         To start, “the claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “It is a bedrock principle of patent law that the claims of a patent define the invention to which patentee is entitled the right to exclude.” Id. at 1115. This Court must “look to the words themselves . . . to define the scope of the patented invention.” Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996).

         The “words of a claim are generally given their ordinary and customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quotations omitted). The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. A person of ordinary skill in the art “is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Where the ordinary meaning of a claim phrase or term is not apparent, a court may then act as would a person of ordinary skill in the art by looking to “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Innova/Pure Water, 381 F.3d at 1116.

         When engaging in claim construction, courts must follow a hierarchy of evidence, with the first being claim language, the second consisting of other intrinsic evidence (i.e., the specification, the remainder of the patent, and the prosecution history), and the third being extrinsic evidence (i.e., evidence that is external to the patent and prosecution history, such as expert testimony or treatises). Advanced Cardiovascular Sys. v. Medtronic, 265 F.3d 1294, 1304 (Fed. Cir. 2001); N5 Techs. LLC v. Capital One N.A., 22 F.Supp.3d 572, 578 (E.D. Va. 2013). This hierarchy of evidence does not, however, suggest that courts must consider and weigh all forms of evidence. Instead, if the intrinsic evidence provides a court with sufficient evidence to inform the claim construction, it need not descend and consider other extrinsic evidence or extrinsic evidence. Put another way, claim construction must focus first on the intrinsic evidence, and only if that evidence does not yield the answer should a court proceed to extrinsic evidence. Vitronics, 90 F.3d at 1583. Courts may, however, rely on extrinsic evidence to aid their understanding of the patent technology. Markman, 52 F.3d at 980 (“The court may, in its discretion, receive extrinsic evidence in order to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent.”) (internal quotation marks omitted).

         When a court considers intrinsic evidence, the specification[1] is “the single best guide to the meaning of a disputed term” and most often “dispositive.” Phillips, 415 F.3d at 1315. Courts must be cautious, however, to avoid limiting the scope of the claims by importing limitations of the specification into the scope of the claims. There is “a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Id. at 1323. Where a court construes “the claims based on the written description, the district court has committed one of the cardinal sins of patent law-reading a limitation from the written description into the claims.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001). Rather, “[c]laims must be read in view of the specification, of which they are a part.” Id. (citation and quotations omitted). Notably, the patentee need not “describe in the specification every conceivable and possible future embodiment of his invention.” CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (internal citations omitted).

         Importantly, the “patentee is free to be his own lexicographer” and to give claim terms a specific meaning, Markman, 52 F.3d at 980, which may differ from “their ordinary meaning.” Vitronics, 90 F.3d at 1582. When a patentee embarks on such a course, the patentee is obligated to “define the specific terms used to describe his or her invention . . . with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Where a party points to a statement in the specification to support the contention that the patentee acted as his own lexicographer, that effort “must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claim term.” Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005). Where it is contended that the patentee defined a claim term by implication, the duty of clarity also applies inasmuch as the implied redefinition must “be so clear that it equates to an explicit one.” Thorner v. Sony Computer Ent. Am., 669 F.3d 1362, 1368 (Fed. Cir. 2012).

         Both sides presented expert testimony at the Markman hearing. Expert testimony “can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318. However, “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Id. The court may disregard any expert testimony “that is clearly at odds with . . . the written record of the patent.” Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).

         V. Disputed Terms

         In accordance with Local Patent Rule 4.3, the parties identified the following terms for construction: (1) a restraint device having a system of tethers, and a helmet cooperating with the tethers, for controlling a driver's head during operation of a vehicle, comprising (preamble); (2) tether; (3) tethers; (4) a pair of side tethers; (5) at least one rear tether; (6) a support member; (7) jointly attached; (8) jointly attached to the helmet at a single attachment point on each respective side of the helmet; (9) adapted for being disposed between; (10) principally without being laterally angled; (11) engage; (12) in relation to the driver; (13) rigid; (14) angles upwards and forwards; (15) angles inward from the support member to the helmet; (16) an intermediate portion; (17) opposed end portion; (18) does not pass directly vertically above; and (19) not disposed directly vertically above. The Court will address each of these in turn.

         1.A restraint device having a system of tethers, and a helmet cooperating with the tethers, for controlling a driver's head during operation of a vehicle, comprising (preamble)

         This phrase is the preamble of independent claims 1, 8, and 14, which Simpson contends should be construed as a restraint device including a system of tethers for use with a driver's helmet for controlling a driver's head during operation of a vehicle. Zamp does not seek an interpretation of the entire preamble but argues individual terms contained in the preamble require construction. Zamp also argues the preamble is limiting.

         a. Construction of a Preamble Term

          The court first addresses the issue of whether the preamble as a whole necessitates construction. Generally, the preamble does not limit the claims and, therefore, does not require construction. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). However, where “the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality' to the claim, then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (C.C.P.A. 1951)). “A claim's preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011). However, when a patentee “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Novatek, Inc. v. Sollami Co., 559 Fed.Appx. 1011, 1015 (Fed. Cir. 2014) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). “Whether a preamble is treated as a limitation is determined by the facts of each case and upon an understanding of what the inventors actually invented and intended to encompass by the claims.” Id. (citing Catalina Mktg. Int'l, Inc. v., Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)).

         While no precise test exists to determine when a preamble limits claim scope, the Federal Circuit has held that “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int'l, 289 F.3d at 808. On the other hand, a preamble term is not limiting “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention” or if the preamble is “reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a [prior art] rejection).” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010) (internal quotations and citations omitted). The ultimate determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., 868 F.2d 1251, 1257 (Fed. Cir. 1989).

         The Court finds that construction is needed to clarify the extent of potential liability. It is clear from the wording of the preamble that the presence of a helmet is required. What is not clear, however, is whether the helmet is an essential element of the invention or merely essential to its use. The difference is a matter of direct versus indirect infringement. If the ‘529 patent does not require a helmet as an element of the invention, then defendant may be directly liable if it is found to have infringed the ‘529 patent. If a helmet is an element of the claimed invention, then defendant may be liable for, at most, indirect infringement because Zamp did not make and sell a helmet with the Accused Device.

         Zamp argues a helmet is an essential element of the patented device, and that Simpson's proposed construction essentially attempts to write-out the requirement that the helmet be part of the invention. Whether the helmet is part of the invention depends on whether the phrase and a helmet cooperating with the tethers describes the structure of the invention as having both tethers and a helmet; or, whether it simply states how the tethers should be used, i.e., with a helmet. If the term “helmet” was not also referenced in the body of claims 1, 8, and 14, the answer would be simple-that the preamble explains the device's intended use, not structure. See Am. Med. Sys., Inc., 618 F.3d at 1358-59 (explaining a preamble term is not limiting where the body of the claim “describes a structurally complete invention” such that the preamble is merely duplicative and describes only function, not structure). But because “helmet” is referenced in the body of claims 1, 8, and 14 without language clearly indicating that it is not a structural component of the invention, defendant's position that the body of the claims do not “describe a structurally complete invention” requires further evaluation.

         Consequently, the Court must review the entire patent “to gain an understanding of what the inventors actually invented and intended to encompass by the claim” and determine whether the preamble recites a structural limitation or merely states the invention's purpose or use. Corning Glass Works, 868 F.2d at 1257.

         a. Claim Construction

         Having considered each party's position and reviewed the patent and related documents, the Court finds that a helmet is not an essential element of the patented invention, that the preamble merely states the invention's intended purpose or use, and that the preamble is not limiting. In the context of the entire patent, it is apparent that the phrase “a restraint device including a system of tethers for use with a driver's helmet for controlling a driver's head during operation of a vehicle” is meant to describe the principal intended use of the invention-not to import a structural limitation on the device, or to exclude from the reach of the claims an assembly that does not include a helmet.

         First and foremost, a helmet is not listed as a separate element following the transitional language “comprising” in claims 1, 8, and 14. The word “comprising” traditionally denotes that the claim encompasses the succeeding enumerated elements. In the ‘529 patent, a helmet is referenced in the description of other enumerated elements, such as side tethers and rear tether, as a means of describing the structure and positioning of those elements. The claims do not teach of the helmet's size, construction, or assembly. Nor do the claims contain sufficient detail about the helmet to inform with reasonable ...

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