Frolow v. Wilson Sporting Goods Co.
710 F.3d 1303
Fed. Cir.2013Background
- Frolow sues Wilson for breach of a License Agreement and alleged patent-related issues stemming from the ’372 patent.
- The License defines Licensed Articles as tennis rackets covered by unexpired claims of the ’372 patent and centers on claim 20’s head/handle/grip/strings features plus weight-distribution limitations.
- The district court granted partial summary judgment that 37 of 42 accused rackets were not Licensed Articles based on a 80 oz-in² MOI threshold, and later addressed 299 additional rackets.
- For the 299 models, Wilson argued late addition and lack of evidence; Wilson also showed 82 models had MOI ≤ 80 oz-in² while remaining 217 had no data.
- Trial proceeded on five remaining models; JMOL later held those five were not Licensed Articles for lack of head/handle/grip/strings testimony or stipulation.
- This appeal results in reversing in part, affirming in part, and remanding for further proceedings on marking and royalty evidence while upholding JMOL on the five trial models.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Marking evidence and genuine issue of fact | Frolow argues marking by Wilson raises genuine issue whether rackets are Licensed Articles | Wilson says marking is irrelevant or inadvertent and does not prove licensing | Summary judgment improper; marking evidence can preclude if it shows/licensing context on remand |
| Past royalty payments as to the 299 models | Frolow contends royalties paid on 299 models are circumstantial evidence they are Licensed Articles | Wilson argues past payments are not proof of licensing status | Summary judgment improper for remand; past payments may preclude judgment in appropriate facts |
| JMOL on the five contested rackets | Frolow asserts evidence showed head/handle/grip/strings; JMOL was improper | Wilson contends failure to prove those basic limitations and lack of stipulation | JMOL affirmed for the five models; lack of proof of head/handle/grip/strings supported |
| Burden of proof on remand | Burden should shift to Wilson to prove non-Licensed status given marking/payments | Burden remains with plaintiff to show breach | Burden remains with the plaintiff to prove breach; marking/payments evidence supports but does not shift the burden |
Key Cases Cited
- Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209 (Fed. Cir. 2006) (circumstantial evidence can establish infringement; not limited to direct proof)
- Michalic v. Cleveland Tankers, Inc., 364 U.S. 325 (Sup. Ct. 1960) (circumstantial evidence can be sufficient and persuasive)
- Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 F.3d 574 (S. Ct. 1986) (summary judgment standard; rational trier of fact)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (Sup. Ct. 1986) (nonmovant evidence credited; genuine issues for trial)
- SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878 (Fed. Cir. 1988) (marking evidence as extrajudicial admissions; marking estoppel discussed)