Mueller Sports Medicine, Inc. v. Beveridge Marketing, LLC

369 F. Supp. 2d 1028, 2005 U.S. Dist. LEXIS 8937, 2005 WL 1125655
CourtDistrict Court, W.D. Wisconsin
DecidedMay 12, 2005
Docket04-C-648-C
StatusPublished

This text of 369 F. Supp. 2d 1028 (Mueller Sports Medicine, Inc. v. Beveridge Marketing, LLC) is published on Counsel Stack Legal Research, covering District Court, W.D. Wisconsin primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mueller Sports Medicine, Inc. v. Beveridge Marketing, LLC, 369 F. Supp. 2d 1028, 2005 U.S. Dist. LEXIS 8937, 2005 WL 1125655 (W.D. Wis. 2005).

Opinion

OPINION AND ORDER

CRABB, District Judge.

In this civil action for declaratory, in-junctive and monetary relief, plaintiff Mueller Sports Medicine, Inc. contends that defendant Beveridge Marketing, LLC infringed claims 1, 5 and 7 of plaintiffs U.S. Patent No. 4,719,909 (the ’909 patent), which relates to an under-eye light absorbing device, by making and selling Custom Eye Black. Plaintiffs bring their claim of infringement under 35 U.S.C. § 271. Jurisdiction is present. 28 U.S.C. §§ 1331 and 1338.

Now before the court are the parties’ cross motions for summary judgment. The central disputes are whether defendant’s product is “replaceable,” whether it includes a “pliable sheet material,” whether it has a pressure sensitive adhesive and if so whether the bond formed by the pressure sensitive adhesive is strong enough to withstand perspiration and exercise. I conclude that defendant’s product has a pressure sensitive adhesive. However, I will grant defendant’s motion and *1031 deny plaintiffs because the product is not replaceable, does not contain a pliable sheet material and there is no evidence that the pressure sensitive adhesive can withstand perspiration and exercise. Although plaintiff has raised a number of interesting and creative arguments, this case presents a square-peg, round-hole situation in which no argument could lead to a finding of infringement.

From the parties’ proposed findings of fact, I find that the following are material and undisputed.

UNDISPUTED FACTS

Plaintiff Mueller Sports Medicine, Inc. is a Wisconsin corporation with its principal place of business in Prairie Du Sac, Wisconsin. Plaintiff is the assignee of U.S. Patent No. 4,719,909, which is directed to an under-eye light absorbing device. Defendant Beveridge Marketing, LLC is a Maryland limited liability company with its principal place of business in Kensington, Maryland. Defendant sells a product called BMC Custom Eye Black, which is a customizable temporary tattoo designed to be placed under the eye. Plaintiff brought this infringement action against defendant on September 3, 2004, alleging infringement of independent claim 1 and dependent claims 5 and 7 of the ’909 patent.

A. The ’909 Patent

Claim 1 of the ’909 patent reads:

1. An under-eye light absorbing device, comprising:
a replaceable pliable sheet material patch having a first face for generally comfortable application to the skin area on the zygomatic arch along the lower side of the orbit of a user, said patch being of sufficient extent to substantially cover the skin area on the zygomatic arch when applied to said skin area; pressure sensitive adhesive means on said first face for strippable adhesive retention of the patch on said skin area, said adhesive means removable holding said patch on said skin area, said adhesive means being resistant to perspiration 'to retain said patch on said skin area during exercise; and
a light absorbing surface on a second face of the patch for absorbing incident light rays directed toward said skin area; said light absorbing surface being dark in color to reduce glare by substantially preventing light from reflecting from said skin area of the zygomatic arch toward the eyes of the wearer, said light absorbing surface being resistant to running caused by perspiration.

During prosecution of the ’909 patent, the patent applicants amended claim one, arguing that the amended claim was distinguishable from prior art because the “invention provides an adhesively applied light absorbing patch” held to the skin using an adhesive that is “strippable.” The applicants indicated that the strippa-ble adhesive would allow the patch to be removed more easily than the black grease paint worn by football players.

Claims 5 and 7 of the ’909 patent depend on claim 1. They read as follows:

5. A device according to claim 1, wherein said patch is generally kidney shaped in outline and of a length and width for generally conforming to the shape of the zygomatic arch skin area to which applied, with a concavely arched edge on the patch for disposition adjacent to the eye socket formation along the orbit.
7. A device according to claim 1, wherein said light absorbing surface is black.

The patent specification provides in part that

As to the light absorbing coating 12, while it may be a coloring material or dye which permeates the body layer 11, *1032 the light absorbing surface 12 may comprise a non-reflective, such as black, hypo-allergenic coating uniformly applied over the surface of the body sheet 11.

In addition, the specification states that

To meet average conditions, the size and shape of the patches [] may be standardized at about 11/2 inch in length by about 3/4 inch in width.

B. Custom, Eye Black

Custom Eye Black consists of a layer of adhesive on a layer of ink; there is no sheet material between the adhesive and the ink. The two layers are sold on a paper backing that is removed during application. Even when the paper backing is removed, the product is a solid material. To apply the product properly, it should be moistened with water and pressed to the skin for at least 10 seconds. After this, the paper backing should be pulled off and the product allowed to dry. These application instructions are printed on the product’s paper backing.

The consumer instructions also state that the product is designed to withstand heavy perspiration and it describes how to adjust the products “stickiness level” depending on whether the user is sweating heavily or lightly. The product did not slide or migrate on the faces of college football players who wore the product during a game or on the faces of the members of a college track team during a 45-minute practice. Custom Eye Blacks are removable and their product insert includes instructions for removal.

A pressure sensitive adhesive is one that (1) in dry form, exhibits tack at room temperature; (2) requires no activation by water, solvent, heat or other means to create adhesion or tack; and (3) can be adhered to surfaces upon contact .without more than finger or hand pressure. Its primary mode of bonding is not chemical or mechanical but through a polar attraction to a substrate. Without activation by water, solvent, heat or other means, Custom Eye Blacks exhibit a low to medium level of tack and adhere to stainless steel surfaces with only finger pressure.

Defendant’s product insert states that Custom Eye Blacks reduce glare. In July 2003, the scientific journal Archives of Op-thomology published a report about a study conducted at Yale University showing that although black under-eye grease reduces reflected light, anti-glare decals do not.

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369 F. Supp. 2d 1028, 2005 U.S. Dist. LEXIS 8937, 2005 WL 1125655, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mueller-sports-medicine-inc-v-beveridge-marketing-llc-wiwd-2005.