EZ Gard Wins Preliminary Injunction Against XO

Posted on | May 30, 2008 | 1 Comment

2008-1384 EZ Gard v. XO Athletic
D/MN 07-cv-4769

Defendant XO appeals Judge James Rosenbaum grant of a preliminary injunction against it.

EZ Gard manufactures athletic mouthguards, including the GEL MAX, and claims to own [see Notes and Comments below] 5,339,832 directed to a thermoplastic mouthguard with an integral shock absorbing framework.

XO is also in the sports equipment business but never offered a mouthguard.  However, in late 2007–shortly after it hired Paul Andre, a former sales manager of EZ Gard–it introduced its first mouthguard.  EZ Gard alleges that XO’s new mouthguard infringes the ‘832 and was designed using EZ Gard trade secrets.  Mr. Andre’s employment with XO is also apparently in violation of his non-compete with EZ Gard.

The court had little trouble granting the preliminary injunction based on infringement of the ‘832.  XO’s opposition papers were sealed [sigh]–however, at least as the court describes it, XO did not really offer any serious non-infringement argument nor any invalidity theory.  Because it was a completely new product to XO and "tainted" with Mr. Andre’s purported bad acts, the court readily found that all injunction factors favored EZ Gard.

Notes and Comments: According to the Complaint and Order, the patent is owned by EZ Gard Industries, Inc. (a Minnesota corporation), which also makes the GEL MAX mouthguard, which is claimed to be a commercial embodiment of the ‘832.  However, in the course of looking for a photo of a GEL MAX, I found the following:

• the Shock Doctor, Inc. web site shows that it is manufacturer of GEL MAX mouthguards and also states:

Originally established as E-Z GARD Industries, Inc. . . . The Shock Doctor brand became so well recognized that, in 2000, the company officially changed its name to Shock Doctor, Inc.

• The Minnesota Secretary of State’s web site shows that EZ Gard Industries is inactive;
• The Minnesota Secretary of State’s web wise shows that Shock Doctor, Inc. is a Delaware corporation.  It seems like more than a simple name change to go from a Minnesota to a Delaware corporation; and
• web sites for both the Minnesota and Delaware Secretary of State show that Shock Doctor, Inc. was not technically formed until March 31, 2008.

The corporate name confusion is probably nothing, but twice little things like this have lead me to really dig through corporate records and establish that plaintiff lacked standing to bring infringement claims.  See Paradise Creations v. UV Sales, 315 F.3d 1304 (Fed. Cir. 2003) and Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005).  In the former, the case against my client was dismissed.  In the latter, my discovery lead to a co-defendant successfully vacating a $26 million judgment even after the Federal Circuit had already affirmed on the merits.

Also, the Shock Doctor web site shows all its mouthguard products and states:

These products are protected by one or more of the following patents:
4,997,905 | 5,234,005 | 6,082,363 | 5,624,257 | 5,152,301 | 5,353,810.

Oddly absent is the patent in suit, the ‘832.

Finally, the injunction–in addition to the normal prohibitions–also bars XO from "discussing the accused devices with any current or potential customer."  Nothing in the court’s opinion suggests why talking about the accused device would be enjoined.

More reading: 

Order Granting Preliminary Injunction

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