November 25, 2003

Brine has successfully sued STX for patent infringement relating to offset heads in US District Court (Worcester, MA) and that a jury has awarded $1.9M to Brine in compensatory damages. Further, because the jury ruled that STX's infringement was willful, STX will be subject to punitive damages of up to an additional $5.7M (plus attorney's fees).

Bad blood between competing manufacturers is nothing new, and patent enforcement is usually the method by which their feelings are given teeth (think SCO and IBM, or Amazon and Barnes & Noble). In fact, STX had previously sued Brine and Warrior over the use of an 'open sidewall', first used on the STX Excaliber. The case was dismissed because STX had placed the goods on the market before filing for their patent -- you can view the decision here.

But most companies patent every conceivable innovation (whether its trivial or not) simply as insurance against a possible violation of their own -- if one company has a beef with another then their patent attorneys will go tit for tat and call it even. Apparently, STX had no tat this time around -- the decision was entered on Nov 14th for violation of this patent, which is a 1997 continuation and refinement of the original offset head patent in 1995. But the jury also decided that the original Brine patent was not violated.

Brine has also filed a motion for a speedy decision on their request for a permanent injunction against STX selling any more of the offending heads: the Proton, the X2, and the Octane. Because STX has asked for another month with which to file a brief to the court, Brine is concerned that the extra month will allow STX to unload any of the offending products. Of course STX also risks a contempt of court should they do so.

Furthermore, Brine is also seeking an injunction against sales of the rest of STX's line of 'canted' heads (the suit was filed more than 2 years ago when only the Proton, X2, and Octane violated Brine's patent).

STX has stated that they will appeal the decision, but that appeal is also contingent upon them being able to afford an appeals bond, a bond value which the judge sets based on the likelihood of the defendant succeeding in its appeal. Look for it to be in the millions (and since STX does between $10M-$15M in annual revenue they would almost certainly be bankrupted by any judgment over $2M). STX's statement appears below:

November 25, 2003 --- STX, LLC (Baltimore, MD) announced today that in the patent lawsuit filed against it by Brine, Inc. of Massachusetts, a jury returned a verdict of non-infringement of one of two Brine patents asserted. While the jury found that certain STX lacrosse heads infringed a second, later issued Brine patent, no judgement has yet been entered in the case. Since there is an issue outstanding to be decided by the Judge, the case is not complete and STX may still prevail on both patents.

Still pending with the Massachusetts federal court is a significant claim by STX alleging inequitable conduct by Brine during the patent prosecution process. A finding for STX on inequitable conduct would render Brine's patents unenforceable. Regardless of the outcome of that claim, STX is confident in its position on appeal that Brine's later issued patent is invalid on the basis of prior art lacrosse sticks never considered by the patent office at the time Brine's patent issued.

"STX is in the business of product innovation, not copying others' products," said STX President, Richard B .C. Tucker, Jr. "STX has products that differ significantly in design and performance from Brine's products and we feel strongly that no infringement occurred in the matter brought by Brine some years ago," said STX General Counsel and Vice President, David A. Emala. "If necessary when the trial portion of the case is concluded, and assuming Brine still has any rights at all to assert under its patents, we will appeal that portion of the jury's verdict not in our favor to the appropriate court. We are quite confident that if we have to appeal the decision, we will prevail. We look forward to that outcome and to putting an end to lawsuits such as this one which, in the modest sized lacrosse market, are largely harassing in nature."