EastonVWilson - Wilson Memo of Law

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Eric R. McDonough(SBN 193956)

emcdonough@seyfarth.com
SEYFARTH SHAW LLP
333 S. Hope Street, Suite 3900
Los Angeles, California 90071
Telephone: (213) 270-9600
Facsimile: (213) 270-9601
Jeffery A. Key (Pro Hac Vice)

jakey@key-and-associates.com
KEY & ASSOCIATES
321 N. Clark Street, Suite 500
Chicago, Illinois 60654
Telephone: (312) 560-2148
Facsimile: (312) 957-1236
Michael R. Levinson (Pro Hac Vice)

mlevinson@seyfarth.com
SEYFARTH SHAW LLP
131 South Dearborn Street
Chicago, Illinois 60603
Telephone: (312)-460-5868
Facsimile: (312)-460-7868
Bradley T. Fox (Pro Hac Vice)

brad@foxgroupllc.com
FOX LAW GROUP, LLC
582C Main Ave.
Durango, Colorado 81301
Telephone: (970) 317-3580
Facsimile: (866) 348-4107
Attorneys for Defendant

WILSON SPORTING GOODS CO.
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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EASTON BASEBALL/SOFTBALL, INC.,
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Plaintiff,
v.
WILSON SPORTING GOODS CO.,
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Defendant.
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Case No. 2:15-cv-09221 R (GJSx)

[Assigned to Judge Manuel L. Real,
Courtroom 8]
DEFENDANT WILSON SPORTING
GOODS MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT OF ITS NOTICE OF
MOTION AND MOTION FOR
PARTIAL SUMMARY JUDGMENT
[Filed Concurrently with Notice of
Motion and Motion for Partial Summary
Judgment of Invalidity; Declaration of
Bradley T. Fox in Support of Motion;
Statement of Uncontroverted Facts and
Conclusions of Law, and [Proposed]
Order]
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Date:
Time:
Courtroom:
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October 3, 2016
10:00 a.m.
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Defendant Wilson Sporting Goods Co.s Memorandum of Points and Authorities in
Support of Its Notice of Motion and Motion for Partial Summary Judgment
28550263v.1
TABLE OF CONTENTS
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I.
Page(s)
INTRODUCTION .....................................................................................................1
II.
BACKGROUND .......................................................................................................1
A.
Invalidating Prior Art Bat, The UFP Bat ........................................................1
B.
Eastons Inventor Chauvin Testified That The UFP Bat Has An

Insert With A First Portion And A Second Portion. .......................................3
C.
Eastons Inventor Chauvin Testified That He Would Conduct

Two Tests Determine Whether An Insert Acts As A Stiffening
Element: A Barrel Compression Test And A Performance Test. ...................4
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1.
The Barrel Compression Test -- Results Demonstrate That

The Cork Insert Stiffens The Barrel Of The UFP Bat. .........................5
2.
The Bat Performance Test -- Results Demonstrate That The

Cork Insert Reduces Performance Of The UFP Bat.............................6
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D.
Additional Invalidating Prior Art References .................................................6
III.
LEGAL AUTHORITY FOR GRANT OF SUMMARY JUDGMENT ...................7
IV.
THE WILSON UFP BAT ANTICIPATES CLAIMS 1 AND 16.............................7

A.
The UFP Bat Was On Sale In 2001 And Is Prior Art. ....................................8
B.
The UFP Bat Has A Barrel With A Sweet Spot And A

Handle Continuous With The Barrel...............................................................8
C.
The UFP Bat Has An Insert Positioned Between The Sweet Spot
And The handle, And Closer To The Sweet Spot Than To The Handle. .......9
D.
The UFP Bat Has A Radially Central Opening. .............................................9
E.
The UFP Bat Cork Insert Has A First And A Second Portion......................10
F.
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The Only Element In Dispute Is Whether The Cork Insert In The

UFP Is A Stiffening Element. .......................................................................11
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1.
Inventor Chauvin Clearly Set Forth A Test To Determine If A Bat

Insert Is A Stiffening Element Under The '108 Patent. ......................11
2.
Wilson Ran Inventor Chauvins Stiffening Element Tests On

The UFP Bat Insert, And The Results Show That The Insert Is
A Stiffening Element. .........................................................................12
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a.
b.
Barrel Compression Test ..........................................................12
Performance Test ......................................................................13

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28550263v.1
c.
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Additional Player Test ..............................................................14
Easton Refuses To Test The UFP Bat Because It Knows

That The results Will Demonstrate That The Insert Is A
Stiffening Element. .............................................................................15
V.
FITZGERALD ANTICIPATES ALL OF THE ASSERTED CLAIMS

OF THE '108 PATENT ...........................................................................................16
VI.
CONCLUSION........................................................................................................18
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28550263v.1
TABLE OF AUTHORITIES
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Page(s)
Federal Cases
Am. Calcar, Inc. v. Am. Honda Motor Corp.,
651 F.3d 1318 (Fed. Cir. 2011) ...................................................................................... 8
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986)........................................................................................................ 7
Celotex Corp. v. Catrett,
477 U.S. 317 (1986)........................................................................................................ 7
Desper Prods., Inc. v. QSound Labs, Inc.,
157 F. 3d 1325 (Fed. Cir. 1998) ..................................................................................... 7
Net Moneyin, Inc. v. Verisign, Inc.,
545 F. 3d 1359 (Fed. Cir. 2008) .................................................................................. 7,8
Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373 (Fed. Cir. 2003) ...................................................................................... 8
Federal Statutes
35 U.S.C.
102(a) ........................................................................................................................... 8
301-319, et seq........................................................................................................... 6
F.R.C.P. 56(a) ...................................................................................................................... 7
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Other Authorities
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U.S. Patent 5,964,673........................................................................................................... 6
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U.S. Patent 6,729,983........................................................................................................... 6
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U.S. Patent 8,795,108..................................................................................................passim
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MEMORANDUM OF POINTS AND AUTHORITIES

I.
INTRODUCTION
Wilson seeks partial summary judgment that Claims 1 and 16 of U.S. Patent
8,795,108 (the '108 Patent, Dkt. #1.2) are invalid over the prior art. The essence of
Wilsons motion is laser-focused. Wilsons Ultimate Fastpitch Bat (UFP Bat)
invalidates the '108 Patent because: i) it was sold seven years before the priority date of
the '108 Patent; and ii) it discloses each and every element of the claims. Eastons head of
research, Dewey Chauvin (an inventor of the '108 Patent), testified that one would need
to run two tests to determine if the UFP Bat invalidates the '108 Patent. Wilson tested a
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2002 UFP Bat, under Eastons test procedures, and found that the earlier UFP Bat has all
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the elements of the later patent. Accordingly, the Court should grant partial summary
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judgment for Wilson.
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After Wilson ran Inventor Chauvins tests on the UFP Bat, it provided two samples
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of the bats to Easton to run the tests itself. Easton and its invalidity expert, Stephen
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Fitzgerald, declined to run the tests that Inventor Chauvin said should be conducted to
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determine invalidity. Mr. Fitzgerald never even saw the bat. Wilsons test data, therefore,
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is undisputed.
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Wilsons Motion presents indisputable evidence that Inventor Chauvin provided
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two tests for determining invalidity under the '108 Patent, that Wilson then ran the tests
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as prescribed, and that the test results demonstrate patent invalidity. Easton declined to
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run such tests, and its experts Invalidity Report is devoid of test results to refute
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Wilsons data as set forth in this Motion. These undisputed facts prove invalidity of the
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108 Patent and warrant partial summary judgment.
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II.
BACKGROUND
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A.
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Claims 1 and 16 generally recite a ball bat with a barrel, handle, and a stiffening
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element located between the bats sweet spot and the handle. '108 Patent, Dkt.# 1.2.
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Invalidating Prior Art Bat, The UFP Bat
The use of a stiffening element in the barrel is the heart of the patent, and the central
element in dispute between the parties. Claim 1 is representative of the claims:
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A ball bat, comprising:
a barrel including a sweet spot;
a handle attached to or continuous with the barrel; and
a stiffening element, comprising:
a substantially cylindrical first portion positioned along an inner

circumference of the barrel; and
a second portion projecting radially inwardly from the first portion and
positioned between the sweet spot and the handle, and closer to the
sweet spot than to the handle, wherein the stiffening element includes
a radially central opening.
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The priority date of the '108 Patent is December 23, 2008. Id. Easton has accused
several Wilson bats of infringing the '108 Patent. (Statement of Uncontested Facts
(UCF)) #1. Easton alleges that the Wilson accused bats have a stiffening insert between
the sweet spot and the handle and closer to the sweet spot as shown below UCF #1:
The parties dispute the meaning of sweet spot for determining infringement.
UCF #2. For purposes of this invalidity motion, however, the Court need not define or
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concern itself with the term sweet spot because the UFP Bat invalidates the '108 Patent
under either of the parties sweet spot definitions. UCF #3.
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Wilson designed and sold the UFP Bat having a stiffening element inserted
between the handle and the sweet spot before the '108 Patent priority date (shown below).
UCF #4.
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Wilson first began selling the UFP Bat in 2001, seven years before the December
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23, 2008 priority date of the '108 Patent. UCF #5. Since 2001, Wilson has consistently
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placed stiffening inserts in its baseball and softball bats. UCF #7. The lineage of Wilson
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bats with stiffening inserts begins with Wilsons Maxxum baseball bat in 2001 and
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carries forward to today with the accused Wilson bats. UCF #8. The UFP Bat is an early
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bat in that long line of bats with stiffening elements that predate the Patents-in-Suit.
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As shown above, the UFP Bat has a barrel, a handle, and a cork insert located
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between the sweet spot and the handle. UCF #9. Easton only alleges that the cork insert
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is not a stiffening element as that term is used in the '108 Patent. UCF #10. Therefore,
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the sole issue for this invalidity Motion is whether the UFP Bat contains a stiffening
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element as that term is used in the claims of the '108 Patent. UCF #10.
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B.
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Eastons Inventor Chauvin Testified That The UFP Bat Has An Insert
With A First Portion And A Second Portion.
Claim 1 recites the requirements for a stiffening element:

a stiffening element, comprising:
a substantially cylindrical first portion positioned along an inner
a second portion projecting radially inwardly from the first portion
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The first portion of the stiffening element is the outer diameter touching the barrel.
UCF # 11. The second portion is the body of the insert that extends inward towards the
hole. UCF # 11.
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Inventor Chauvin affirmed that the UFPs cork insert has the first portion and second
portion elements. UCF # 11. At deposition, Inventor Chauvin was handed a sample of
the cork insert removed from a UFP Bat and marked as Exhibit 7. UCF# 11. Inventor
Chauvin then testified that the UFP Bat insert met the first and second portion
requirements for a stiffening element:
Q: Does it [Exhibit 7] have a first portion and a second portion?
MR. HANEWICZ: Same objections.
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THE WITNESS: As an individual, if it were placed in a barrel, I would

say it has a first and second portion.
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UCF #11. Therefore, Inventor Chauvin has confirmed that the insert in the UFP Bat has a
first and a second portion as required by Claim 1. UCF #11.
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C.
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Eastons Inventor Chauvin Testified That He Would Conduct Two

Tests Determine Whether An Insert Acts As A Stiffening Element: A
barrel Compression Test And A Performance Test.
Wilson asked Inventor Chauvin whether the UFP Bat cork insert was a stiffening
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element. Mr. Chauvin responded that he could not tell simply by looking at it. UCF #12.
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Mr. Chauvin stated that he would need to conduct a barrel compression test and a
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performance test to determine if the cork insert was a stiffening element under the '108
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Patent. UCF #13.
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A barrel compression test involves a machine that compresses the barrel to
determine the stiffness of the barrel. Mr. Chauvin stated that the barrel compression test
would need to demonstrate that the bat barrel was stiffer with the insert in the barrel than
without the insert in the barrel. UCF #14. The American Society for Testing and
Materials (ASTM) has standardized the barrel compression test in standard ASTM
F2844. UCF #15. Mr. Chauvin agreed that ASTM F2844 was a suitable test procedure
for the barrel compression test. UCF #16.
A bat performance test utilizes an air cannon that fires a ball at a bat to determine
bat performance. UCF #17. A bat actually hits a ball and a machine measures the batted
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ball speeds of the hits. UCF #18. The performance test shows any differences in the
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velocity of balls hit with, and without, the cork insert in the UFP Bat.1 UCF #18. The
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performance test is standardized in ASTM F2219. UCF #18.
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As detailed in the arguments below, Wilson conducted both invalidity tests that
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Inventor Chauvin stated he would do. The results indisputably demonstrate that the UFP
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Bat cork insert is a stiffening element under the '108 Patent. UCF #19.
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1.
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The Barrel Compression Test -- Results Demonstrate That The

Cork Insert Stiffens The Barrel Of The UFP Bat.
Wilson first ran the barrel compression test on the UFP Bat. The compression test
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results show that the UFP Bat barrel with the insert is 7.4% stiffer than the barrel without
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the insert. UCF #20. Therefore, the cork insert in the UFP Bat indisputably acts to stiffen
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the barrel. UCF#20. Easton has no evidence to the contrary. Easton and its validity expert
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declined to do the test that Inventor Chauvin said that he would do to determine whether
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the insert was a stiffening element. Declaration Of Bradley T. Fox In Support Of
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Wilsons Partial Motion For Summary Judgment (Fox Dec.), at 13.

Wilson asserts that the barrel compression test result should be the end of the
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inquiry about whether the cork insert in the UFP Bat is a stiffening element. The claim
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Bat performance is reduced by a stiffening element because the bat barrel is stiffer
and less energy can be transferred from the bat to a hit ball.
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simply requires a stiffening element. Dkt # 1.2. However, Wilson went further and
conducted the bat performance test that Inventor Chauvin stated he would do to
determine whether the cork insert was a stiffening element. UCF #21.
2.
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The Bat Performance Test -- Results demonstrate that the cork

insert reduces performance of the UFP Bat.
Wilson conducted a performance test on the UFP Bat to determine if performance
decreased in a bat with the insert versus the bat without the insert. The results
demonstrate that the coefficient of restitution (COR), or how hard a bat hits the ball, was
reduced from a maximum value of approximately .550 without the insert to a maximum
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value of approximately .538 on the same bat with the insert. UCF #21. The reduction in
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COR is significant because it affects how fast and far a player can hit a ball. UCF #21.
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Again, Easton has possession of the two UFP Bats that Wilson sent to Easton for an
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opportunity to test; again, Easton and its expert have declined to do the bat performance
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test that Inventor Chauvin said that he would do to determine whether the insert was a
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stiffening element. Fox Dec., at 13.
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D.
Additional Invalidating Prior Art References
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On July 27, 2016, Wilson filed an inter partes review (IPR) with the United
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States Patent and Trademark Office (USPTO) seeking to invalidate the '108 Patent.
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UCF #22. An IPR is an administrative proceeding conducted by the Patent Trial and
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Appeal Board (PTAB) section of the USPTO that will determine the validity of the
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'108 Patent. See 35 U.S.C. 301-319, et seq. Wilsons IPR petition demonstrates that
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every asserted claim of the '108 Patent is invalid. Dkt. #39.2. Under the rules for an IPR,
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Wilson was not able to submit the UFP Bat for consideration by the PTAB. Instead,
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Wilson filed its IPR based upon three prior art references that each discloses placing an
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insert or inserts into a bat: U.S. Patent 6,729,983 (Vakili), U.S. Patent 5,964,673
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(MacKay), and U.S. Patent App. 2005/0070384 (Fitzgerald). Dkt. #39.2. Wilson
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believes each reference invalidates the '108 Patent. For purposes of this Motion, however,
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Wilson only asserts that Fitzgerald, in addition to the UFP Bat, invalidates the '108
Patent.
Fitzgerald was published on March 31, 2005 and predates the Patents-in-Suit by
approximately two and a half years. UCF #38. Fitzgerald discloses a bat with a barrel, a
handle, a stiffening element between the sweet spot and the handle. UFC #38, at 16.
The stiffening element is labeled No. 18 on the Fig. 4 image below:
Additionally, Fitzgerald discloses that the stiffening insert can be made from metal: a
short metal stiffener could also be employed. UCF #38, at 17. As shown in the claim
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chart below, Fitzgerald, like its predecessor the UFP Bat, both disclose each and every
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element of the claims prior to the date of the '108 Patent.
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III.
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LEGAL AUTHORITY FOR GRANT OF SUMMARY JUDGMENT

The summary judgment standard is applicable and appropriate in patent cases.
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Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). The
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Court shall grant summary judgment if the movant shows that there is no genuine dispute
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as to any material fact and the movant is entitled to judgment as a matter of law.
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F.R.C.P. 56(a). Wilson, as the party seeking summary judgment, bears the initial
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responsibility of demonstrating the absence of a genuine issue of material fact. See
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Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary judgment is appropriate if
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Plaintiff fails to offer "evidence on which the jury could reasonably find for the [non-
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movant]," Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
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IV.
THE WILSON UFP BAT ANTICIPATES CLAIMS 1 AND 16.
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The UFP Bat was on sale for approximately seven years prior to the priority date of
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the '108 Patent. UCF #21. The hallmark of anticipation is prior invention. Net Moneyin,
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Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). A person shall not be entitled
to a patent if the claimed invention was known or used by others in this country prior to
the invention by the applicant for a patent. 35 U.S.C. 102(a). An often stated axiom of
patent law is [t]hat which would literally infringe if later in time anticipates if earlier.
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Thus, the
rules for anticipation are the same as for infringement; the prior art must disclose each
and every claim limitation. Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318,
1341 (Fed. Cir. 2011). A defendant must show by clear and convincing evidence that a
patent is invalid. Microsoft Corporation v. i4i limited partnership et al., 564 U.S. 91
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(2011). Here, Wilson meets its burden because the UFP Bat indisputably discloses every
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element of Claims 1and 16 of the '108 Patent.
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A.
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The UFP Bat was first sold in the fall of 2001. UCF #23. Wilson marketed and
The UFP Bat Was On Sale In 2001 And Is Prior Art.
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sold the UFP bat from 2001 through 2005. UCF #23. The UFP specification list
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demonstrates that the bat contained a cork insert in the bat barrel. UCF #24. The '108
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Patent has a priority date of December 23, 2008. Dkt. #1.2. The UFP Bat is indisputably
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prior art in time to the '108 Patent.
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B.
The UFP Bat Has A Barrel With A Sweet Spot And A Handle
Continuous With The Barrel.
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It is undisputed that the UFP Bat has a barrel, with a sweet spot, a handle
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continuous with the barrel, and an insert between the sweet spot and the handle. UCF
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#24; Fox Dec., 14. The claim chart below illustrates these features:
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Claims U.S. Patent 8,795,108

1. A ball bat, comprising:
UFP Bat
The UFP Bat is a ball bat;
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a barrel including a sweet spot;
The UFP Bat has a barrel with a

sweet spot;
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The 108 Patent agrees: A bat barrel

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performance location or sweet

spot, '108 Patent, Col. 5, ll. 5-7.
a handle attached to or continuous The UFP Bat discloses a handle
continuous with the barrel;
with the barrel; and
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Common knowledge and the '108 Patent demonstrate that the UFP bat has a barrel with a
sweet spot and continuous handle.

C.
The UFP Bat has an insert positioned between the sweet spot and the
handle, and closer to the sweet spot than to the handle.
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The UFP Bat has a cork insert in the barrel. UCF #24; Fox Dec., 14. Regarding the
location of the cork insert: Wilsons expert tested the UPF Bat to determine the location
of the sweet spot under Eastons proposed definition. The location is marked on the
UFP Bat.
the stiffening element of the UFP Bat is positioned
positioned
between the sweet spot and the handle, and closer to
between the
the sweet spot than to the handle;
sweet spot and
the handle, and
closer to the
sweet spot than to
the handle
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Easton has not disputed this location in the litigation. Moreover, once again, Easton has
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conducted no testing on its own to refute the sweet spot location of the cork insert in
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the UFP Bat. Hence Easton has no actual evidence. Therefore, there is no genuine issue
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of fact that the element is satisfied.
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D.
The UFP Bat Has A Radially Central Opening.
The UFP Bat meets the last element of the Claim 1 and Claim 16. The UFP Bat has
a radially central hole. UCF #24; Fox Dec., 14.
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the stiffening element includes a

radially central opening.
The UFP Bat has a cork stiffening

element with a radially central
opening.
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The cork is glued into the UFP Bat as the stiffening element.
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E.
The UFP Bat cork insert has a first and a second portion.
As stated in II. BACKGROUND above, Inventor Chauvin testified that the insert
for the UFP Bat had a first portion and a second portion. Claims 1 and 16 require that the
stiffening element have a first portion and a second portion. The following chart shows
that, when inserted into the UFP Bat, the outer circumference of the cork insert (the first
portion) touches the barrel. The cork material that fills in the area between the outer
circumference and the hole (such material being the second portion) is also evident
inside the barrel. The cork is then adhered in place with the blue epoxy. UCF #24; Fox
Dec., 14.
a substantially cylindrical first
portion positioned along an inner
the stiffening element of the UFP

Bat has a cylindrical first portion
positioned along an inner
circumference of the barrel;
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a second portion projecting radially the stiffening element of the

DeMarini Bat has a second portion
inwardly from the first portion
projecting radially inwardly from the
first portion;
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Inventor Chauvin affirmed the existence of the first portion and the second portion on the
UFP Bats cork insert. I would say [the cork insert] it has a first and second portion.
Wilson reserves the right to further argue this issue should Easton dispute this element.
F.
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The only element in dispute is whether the cork insert in the UFP is a
stiffening element.
Respecting the term stiffening element, Inventor Chauvin said that he would do
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two tests. UCF #25. Wilson conducted the tests. For Easton to decline to do the very tests
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that the inventor said that he would do puts Easton in the position of lacking any evidence
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whatsoever on the issue of whether the UFP Bats cork insert is a stiffening element. A
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genuine dispute would require a genuine effort by Easton to do the tests the inventor said
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he would do. Summary judgment should issue for Wilson. Easton should not be
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permitted to hide from the truth that the tests would yield.
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1.
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Inventor Chauvin Clearly Set Forth A Test To Determine If A Bat

Insert Is A Stiffening Element Under The '108 Patent.
Wilson tested the UFP Bat insert and determined indisputably that the UFP Bat
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discloses the claimed stiffening element. UCF #26. Wilson asked Inventor Chauvin how
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to determine whether the insert in the UFP Bat was a stiffening element. Inventor
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Chauvin responded that he would run a barrel compression test and a performance test.
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UCF #25.
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Q:
Okay. My question originally which led to this ... is how do you

determine whether that is or is not a stiffening element, and you said
you have to run a barrel compression test and a batted ball
performance test. Is that correct so far?
A:
You asked me how I would do it. That's what I would do. (emphasis
added)
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Specifically, Inventor Chauvin stated he would run tests consistent with the barrel
compression test provided in ASTM F2844 and performance tests consistent with ASTM
F2219. The barrel compression test compresses the barrel to see if it is stiffer with the
insert than without the insert. The performance test generally tests to see how hard a bat
can hit a ball. Wilson performed both of these tests on a UFP bat with the insert and on
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the same bat with the insert removed. The results conclusively prove that the insert in the
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barrel of the UFP Bat is a stiffening element within the meaning of the disputed claims.
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2.
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Wilson Engineer Josh Stenzler under the direction of Wilsons Expert Mr. Frank
Garrett conducted Inventor Chauvins tests in the laboratory of Wilsons DeMarini bat
division. UCF #27. Inventor Chauvins stiffening element tests were conducted on a
production 34-inch UFP Bat and then on the same bat with the insert removed. UCF #28.
This head to head testing on the same bat with and without the insert was intended to
show the effect of the insert on the UFP Bat. UCF #29.
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21
22
23
24
25
26
27
28
Wilson ran Inventor Chauvins stiffening element tests on the

UFP Bat insert, and the results show that the insert is a stiffening
element.
a.
Barrel Compression Test
The first test Wilson ran on the UFP Bat was a barrel compression test consistent
with ASTM 2844 to determine if the barrel of the UFP Bat with the insert was stiffer then
the bat without the insert. The test measured the compression of the barrel of a bat at the
location of the ring and on either side of the ring. UCF #30. The test was run on the UFP
Bat with the insert and then run again on the same UFP Bat after the insert was removed.
The compression test demonstrated that the bat barrel of the UFP Bat was 7.4% stiffer
with the insert in place than with the insert removed. UCF #31. In other words, the insert
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28550263v.1
made the bat barrel 7.4% stiffer from 7943.4 lbf/in to 8534.1 lbf/in. UCF#31. This first
test alone indisputably proves that the insert is a stiffening element.
3
4
b.
Performance Test
Wilson continued and ran Inventor Chauvins second test, a performance test
consistent with ASTM F2219. UCF #32. A performance test generally measures how
hard a ball comes off of a bat when it is hit. A bat with a barrel that is less stiff can hit a
ball farther than a stiffer bat because a less stiff bat can transfer more of its rebound
energy to the ball. Therefore, if an insert stiffens a bat barrel, one would expect the bats
performance to decrease. A performance test with and without and insert measures this
10
decrease. The same individuals ran this performance test at the same location as the
11
barrel compression test. Once again, the test was conducted on a 34 inch UFP bat first
12
with the insert in place and then with the insert removed. UCF #33.
13
The results of the test shown in the graph below demonstrated that the coefficient
14
of restitution (COR), or how hard the bat can hit the ball was reduced from a maximum
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16
17
18
19
20
21
value of approximately .550 to a maximum value of approximately .538. UCF #21. The
22
graphs further show that the stiffness of the bat barrel at the location of the ring from the
23
knob, 26 inches, was significantly reduced. UCF #34. This can be seen by the sudden
24
downward spike in the graph at the 26-inch location of the ring. The performance test
25
results show that the performance was reduced on the bat with the insert and that the
26
insert is stiffening the bat barrel. UCF #35. The insert is a stiffening element.
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28550263v.1
c.
Additional Player Test
Wilson also conducted one additional test to demonstrate that the insert is a
stiffening element. Wilson conducted a player test to show that in the real world the
performance of the bat with the insert was reduced. Again, a stiffer bat barrel results in a
reduction of maximum performance. If the stiffening element governed performance, this
would further support that it is a stiffening element.2
DeMarinis play tester for womens softball bats, Kayla Yeager, was asked hit
several softballs as consistently as possible with the same 34 inch UFP Bat with the insert
and without the insert. UCF #36. Data for each hit ball was recorded using industry
10
accepted HitTrax analytics that collects data on a batted ball. The data was sorted to
11
include hits with ball exit speeds greater than 52 mph and a ball launch angle between -4
12
and 12 degrees to insure a consistent data pool of useful data and to eliminate any bad
13
hits. UCF #37. The results are in the chart below:
14
15
Although the average hit speed for the bat with the insert was only slightly
16
17
decreased, the number of hits above the average was much greater for the bat without the
18
insert then it was for the bat with the insert. UCF #37. The chart demonstrates that the
19
number of high speed hits was reduced significantly from over 80% of hits over 56 mph
20
with the bat without the insert and to only 45% of hits over 56 mph with the bat with the
21
insert. UCF #37. The results indisputably demonstrate that the insert acts to reduce peak
22
performance and limit performance to a reduced hit speed. The insert is acting to stiffen
23
the UFP Bat barrel and govern the peak performance.

Wilsons performance test results are similar to the results shown in Figure 21 of
24
25
the '108 Patent. The maximum performance of the bat is governed while average
26
performance is relatively maintained. The UFP Bat with the insert cannot reach the same
27
2
28
The title of the '108 Patent is a Ball Bat With Governed Performance.
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28550263v.1
maximum performance as when the insert is removed from the bat. Both Wilsons data
and the sample data in Fig. 21 show a reduction in peak performance while maintaining a
similar performance average. All of Wilsons test results are clear, the insert passes
Inventor Chauvins stiffening element tests, and it is indisputable that the insert in the
UFP Bat is a stiffening element under the '108 Patent. Since the insert is a stiffening
element, and since Easton admits that the UFP Bat discloses all the other elements of the
asserted Claims 1 and 16, the UFP Bat anticipates Claims 1 and 16.
3.
Easton refuses to test the UFP Bat because it knows that the
results will demonstrate that the insert is a stiffening element.
10
Easton refused to conduct Inventor Chauvins stiffening element tests on a UPF
11
Bat presumably because of the concern that the results will confirm that the insert is a
12
stiffening element. Wilson sent two 33-inch UFP Bats in their original wrapper to Easton
13
for testing. Easton produced no results from any testing on these bats. Mr. Fitzgerald did
14
not run the Inventor Chauvin tests on the bats. Having done no tests on the UFP Bat
15
insert, Mr. Fitzgerald simply relies upon his opinion that the insert is not a stiffening
16
element.3 Mr. Fitzgerald rendered his opinions without even seeing the bat or asking to
17
see it. See Fox Dec., 13.

Wilson has done the work to prove the insert is a stiffening element. Wilson ran
18
19
Inventor Chauvins stiffening element tests on the UFP Bat insert, and the insert passed
20
the test demonstrating that it is a stiffening element. Although Wilson has the burden of
21
proof on this issue, this Court should not reward Eastons ostrich strategy.
Easton does not deny that the insert in the UFP bat stiffens the bat barrel. But
22
23
without conducting testing, Easton asserts that the insert is not stiff enough to be a
24
stiffening element. The claims and the '108 Patent do not have a minimum stiffness
25
requirement. The '108 Patent states that the stiffening element may be made of any
26
suitable stiffening materials. Dkt. #1.2, '108 Patent, Col. 5, ll. 41-42. Easton is
27
28
It should be noted that Mr. Fitzgerald is an employee of Eastons sister company Combat Bats.
Combat and Easton are both owned by Performance Sports Group.
15
28550263v.1
attempting to read requirements for the stiffening element into the claims that do not exist
and are not supported under the Chauvin test. It is not credibly disputed that the insert of
the UFP Bat stiffens the bat barrel; therefore, it is a stiffening element. The UFP Bat
anticipates asserted Claims 1 and 16.
V.
FITZGERALD ANTICIPATES ALL OF THE ASSERTED CLAIMS OF
THE '108 PATENT
Fitzgerald filed for a patent in five years before Easton on the very same idea. The
Fitzgerald application was published on March 31, 2005. UCF #38. The publication
stands as part of the public domain before Easton filed its patent. The only issue for
10
summary judgment is: Does the Fitzgerald publication disclose each and every element of
11
the asserted claims of the 108 Patent? Wilson demonstrates below that it does.
12
Fitzgerald summarizes his teaching as follows, the bats of the present invention
13
are stiffened in the barrel area of peak bat performance commonly referred to as the
14
sweetspot...This is achieved by inserting or adding to the bat a circumferential stiffner
15
[sic] in the region of the sweetspot. UFC #38, 16. Fitzgerald also states that the
16
stiffener may be metal, a short metallic stiffener could also be employed. UFC #38,
17
17. Fitzgerald published in 2005 the same invention that Easton later claimed in
18
December 2008; a bat with a stiffening element in the region of the sweetspot of the
19
bat.
20
A chart comparing the Fitzgerald prior art to each element of the asserted claims
21
indisputably demonstrates invalidity of the '108 Patent:
22
Claims of 8,795,108
1. A ball bat,
comprising:
23
24
25
26
27
28
a barrel including a
sweet spot;
a handle attached to
Fitzgerald
Fitzgerald is directed at a ball bat. UFC #38.
the bats of the present invention are stiffened in the barrel
area of peak bat performance commonly referred to as the
sweetspot. UFC #38, at 16 and Fig. 4.
[B]ats of the present invention, include a traditional

16
28550263v.1
1
2
or continuous with the

barrel; and
knob at the handle portion end 5 and a traditional end

cap at the barrel portion end.... UFC #38, at 47 and
FIG. 4.
a stiffening element,
comprising:
The bats include a circumferential stiffener in the region of

the sweetspot. UFC #38, at 16.
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
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27
28
a substantially
cylindrical first portion
positioned along an
inner circumference of
the barrel; and
a second portion
projecting radially
inwardly from the first
portion and
positioned between
the sweet spot and the
handle, and closer to
the sweet spot than to
the handle,
Fitzgerald FIG. 4 shows a stiffening element 18 having a

cylindrical portion along the inner barrel. UFC #38
The insert of Fitzgerald has a thickness that constitutes a a

second portion. UFC #38, at 28 and FIG. 4.
FIG. 4 shows a single wall tubular bat in accordance with
the present invention showing an internal stiffener
generally confined to the sweetspot area of the barrel
portion and joined to the barrel portion. UFC #38, at 28,
43, 45, 59 and 60; FIGS. 4, 9 and 10.
wherein the stiffening

The stiffening element 18 of Fitzgerald includes a radially
element includes a
central opening. UFC #38,at 17 and FIGS. 4 and 4B.
radially central opening.
16. A ball bat,
Fitzgerald is directed at a ball bat. UFC #38.
comprising:
the bats of the present invention are stiffened in the barrel
a barrel including a
area of peak bat performance commonly referred to as the
sweet spot;
sweetspot. UFC #38, at 16 and Fig. 4.
a handle attached to
or continuous with the
barrel; and
a stiffening element,
[B]ats of the present invention, include a traditional

knob at the handle portion end 5 and a traditional end
cap at the barrel portion end... UFC #38, at 47 and FIG.
4.
The bats include a circumferential stiffener in the region of

17
28550263v.1
comprising:
a substantially
cylindrical first portion
positioned along an
inner circumference of
the barrel; and
a second portion
projecting radially
inwardly from the first
portion and
3
4
5
6
7
8
9
10
11
12
13
14
15
16
the sweetspot. UFC #38, at 16.

Fitzgerald FIG. 4 shows a stiffening element 18 having a
cylindrical portion along the inner barrel. UFC #38.
The insert of Fitzgerald has a thickness that constitutes a a

second portion. at 28 and FIG. 4.
FIG. 4 shows a single wall tubular bat in accordance with

positioned adjacent
the present invention showing an internal stiffener
to the sweet spot
generally confined to the sweetspot area of the barrel
between the sweet spot
portion and joined to the barrel portion. UFC #38, at 28,
and the handle,
43, 45, 59 and 60; FIGS. 4, 9 and 10.
wherein the
stiffening element
includes a radially
central opening.
The stiffening element 18 of Fitzgerald includes a radially

central opening. UFC #38, at 17 and FIGS. 4 and 4B.
17
Fitzgerald discloses each and every element of the asserted claims; therefore, the
18
19
'108 Patent is invalid. UFC #38.
20
VI.
21
CONCLUSION
Easton sued Wilson for patent infringement. Wilson showed Easton the Wilson
22
UFP Bat, and asked Eastons inventor and F.C.R.P 30(b)(6) witness exactly how Easton
23
would determine whether the prior art UFP Bat invalidates the '108 Patent. Inventor
24
Chauvin testified as to what he would do to determine invalidity, and Wilson ran the
25
tests. Wilson sent two UFP Bats to Easton., and Easton has declined to test. There is no
26
genuine issue of fact regarding Wilsons test results. A genuine issue would require a
27
28
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28550263v.1
genuine effort from Easton to do the Inventors tests. Summary judgment should issue on
Wilsons facts.
Eastons technical expert in this case Mr. Fitzgerald. Years before Easton filed for
its patent, Mr. Fitzgerald disclosed the same invention. That application published and is
part of the public domain. It discloses each and every element of Eastons claimed
invention. Summary judgment of invalidity of claims 1 and 16 of Eastons '108 Patent
should issue in this case.
8
9
DATED: August 19, 2016
Respectfully submitted,
SEYFARTH SHAW LLP
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By:
12
/ s / Eric R. McDonough
Eric R. McDonough
Bradley T. Fox (Pro Hac Vice)
FOX LAW GROUP LLC
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Jeffery A. Key (Pro Hac Vice)

KEY & ASSOCIATES
15
Michael R. Levinson (Pro Hac Vice)

SEYFARTH SHAW LLP
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17
Attorneys for Defendant

WILSON SPORTING GOODS CO.
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1

Eric R. McDonough(SBN 193956)

Jeffery A. Key (Pro Hac Vice)

Michael R. Levinson (Pro Hac Vice)

Bradley T. Fox (Pro Hac Vice)

Attorneys for Defendant

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

EASTON BASEBALL/SOFTBALL, INC.,

Case No. 2:15-cv-09221 R (GJSx)

Invalidating Prior Art Bat, The UFP Bat ........................................................1

Eastons Inventor Chauvin Testified That The UFP Bat Has An

Eastons Inventor Chauvin Testified That He Would Conduct

The Barrel Compression Test -- Results Demonstrate That

The Bat Performance Test -- Results Demonstrate That The

Additional Invalidating Prior Art References .................................................6

LEGAL AUTHORITY FOR GRANT OF SUMMARY JUDGMENT ...................7

THE WILSON UFP BAT ANTICIPATES CLAIMS 1 AND 16.............................7

The UFP Bat Has A Barrel With A Sweet Spot And A

The UFP Bat Has A Radially Central Opening. .............................................9

The Only Element In Dispute Is Whether The Cork Insert In The

Inventor Chauvin Clearly Set Forth A Test To Determine If A Bat

Wilson Ran Inventor Chauvins Stiffening Element Tests On

Barrel Compression Test ..........................................................12

Performance Test ......................................................................13

Additional Player Test ..............................................................14

Easton Refuses To Test The UFP Bat Because It Knows

FITZGERALD ANTICIPATES ALL OF THE ASSERTED CLAIMS

U.S. Patent 5,964,673........................................................................................................... 6

U.S. Patent 6,729,983........................................................................................................... 6

U.S. Patent 8,795,108..................................................................................................passim

MEMORANDUM OF POINTS AND AUTHORITIES

Wilsons motion is laser-focused. Wilsons Ultimate Fastpitch Bat (UFP Bat)

judgment for Wilson.

Wilsons Motion presents indisputable evidence that Inventor Chauvin provided

108 Patent and warrant partial summary judgment.

Invalidating Prior Art Bat, The UFP Bat

element in dispute between the parties. Claim 1 is representative of the claims:

A ball bat, comprising:

a barrel including a sweet spot;

a handle attached to or continuous with the barrel; and

a stiffening element, comprising:

a substantially cylindrical first portion positioned along an inner

Claim 1 recites the requirements for a stiffening element:

hole. UCF # 11.

THE WITNESS: As an individual, if it were placed in a barrel, I would

Eastons Inventor Chauvin Testified That He Would Conduct Two

Patent. UCF #13.

A barrel compression test involves a machine that compresses the barrel to

for the barrel compression test. UCF #16.

performance test is standardized in ASTM F2219. UCF #18.

The Barrel Compression Test -- Results Demonstrate That The

the insert was a stiffening element. Declaration Of Bradley T. Fox In Support Of

Wilsons Partial Motion For Summary Judgment (Fox Dec.), at 13.

The Bat Performance Test -- Results demonstrate that the cork

Wilson conducted a performance test on the UFP Bat to determine if performance

stiffening element. Fox Dec., at 13.

Additional Invalidating Prior Art References

The stiffening element is labeled No. 18 on the Fig. 4 image below:

element of the claims prior to the date of the '108 Patent.

LEGAL AUTHORITY FOR GRANT OF SUMMARY JUDGMENT

responsibility of demonstrating the absence of a genuine issue of material fact. See

THE WILSON UFP BAT ANTICIPATES CLAIMS 1 AND 16.