STX scores patent infringement victory in federal court

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The design of a rival company’s lacrosse stick head has infringed the patent of Baltimore-based STX LLC, a federal judge ruled Monday.

But U.S. District Judge Richard D. Bennett denied STX’s request for an injunction preventing the defendant, Minnesota-based Epoch Lacrosse LLC, from continuing to infringe on STX’s patent – for a lacrosse stick head incorporating an innovative type of ball stop – and allowed claims contesting the patent’s validity to go to trial.

Bennett also allowed claims that Epoch willfully infringed on STX’s patent to be considered by a jury.

Jay Spiegel, a Virginia-based attorney for Epoch, said his client stopped making the disputed stick head in May and stopped selling it months earlier “as a matter of the evolution of its business.”

“The ruling left for adjudication half of the claims that are being asserted by STX,” Spiegel said. “This is a case that perhaps ought to be amicably resolved at this juncture.”

In its lawsuit against Epoch, filed last year, STX alleged its patented design offered lacrosse players numerous advantages, including the manufacturing of sticks with shorter handles — reducing the overall weight of the stick — and a flexible ball stop, allowing players to more easily secure the ball in the pocket, according to the lawsuit.

The position of the ball stop in the stick head also allows the ball to be secured under it, which helps prevent the ball from flying out when the stick is checked, “a desirable feature in modern lacrosse sticks,” according to STX’s complaint.

The patent was issued in 2011, according to the suit, and since then, STX has made and sold various products with ball stop features covered by the patent.

Epoch debuted last year its first lacrosse head product, called “the Hawk,” the suit states. STX alleged the design of that stick head’s ball stop infringed on its patent, causing the company to lose profits and status.

Epoch argued its own design does not infringe on the STX patent because the patent specifies a ball stop with a “ball-contacting surface,” whereas the Epoch stick head is topped by a pad that shields the ball from the ball stop itself.

Bennett agreed with STX and granted summary judgment on the infringement claim but ruled more evidence is needed to determine whether the STX patent is invalid as Epoch claims.

Epoch alleged in part the patent should be deemed invalid because someone skilled or knowledgeable in the design of lacrosse equipment could not recreate the invention without “undue experimentation,” or alternatively, because STX incorrectly introduced new matter when it amended the patent after it was first rejected by the U.S. Patent and Trademark Office.

Bennett also allowed to proceed to a jury the question of whether Epoch’s infringement, which STX called “deliberate, willful, wanton, and intentional” in its lawsuit, was in fact willful.

“At this stage in the proceedings, this Court is unable to determine whether Epoch acted with the requisite objective willfulness. Epoch asserts that its defenses are well-grounded in patent law, a contention that STX emphatically rejects,” Bennett wrote. “This Court will await the full presentation of evidence at trial before issuing a final ruling.”

James K. Archibald, an attorney for STX, did not immediately return a call seeking comment on the ruling on Wednesday. Archibald is of counsel to Wright, Constable & Skeen LLC in Baltimore.

The case is STX LLC v. Epoch Lacrosse LLC, 1:14-cv-03511-RDB.