Everything You Need to Know About Joola's Patent Lawsuit: Attorney Q&A

To help make sense of it all, I sat down with Kelly Burris, an intellectual property attorney and owner of Burris Law, PLLC, to break down what's actually happening from a legal perspective. 

Kelly specializes in patent law — her firm writes and prosecutes patents for innovators across multiple industries — so she's uniquely positioned to walk us through the strategy behind the filings, what it means for the companies named (and the ones that weren't), and where the pickleball industry goes from here. 

Whether you're a brand owner trying to figure out your next move or a player wondering what this means for the paddles you love, this conversation covers it all.

What are your initial impressions of this lawsuit?

Well, there's a couple of actions here. You've got the 337 action at the ITC, and then you have the district court proceedings. Our firm writes a lot of patents — we work for patent owners. Well, if you have a patent, what's the point of having it if you're not going to enforce it? So good for them. They've spent money on innovation, they've spent money on patents, and they're enforcing them. I don't have any problem with that.

We'll put the prior art conversation on the back burner for now because there's always prior art that people don't know about. 

So you have the 337 proceeding at the ITC — those proceedings go very fast, and it's the way to stop imports. You get an injunction, that's all you get. You don't get damages, you don't get the infringer's profits, you don't get a royalty — you don't get any form of damages. You just get them to stop. It's an injunction.

Whereas in the district court proceedings, there's all kinds of remedies they could have, including a reasonable royalty and getting an injunction. So I thought, maybe there's some parties they definitely want to stop right away — and that'll go really fast. 

The district court is more of a "let's go see" approach. Maybe there's companies where they know there's a lot of damages and they could get a reasonable royalty in the millions. It's going to pay for these lawsuits and then some — just try to clean house.

One of the thoughts I had this morning was they're probably filing those to get negotiations started. You know, sometimes they call them "patent trolls" — companies that don't have any products but have patents and just send out cease and desist letters to see who's going to bite. So perhaps the district court litigation is more of a strategy to see who they can talk to about licensing the technology, or perhaps cross-licensing technology, depending on what kind of IP the defendants might have.

The risk of filing the district court litigation, though, is that if those defendants have prior art or can find prior art, they can file petitions at the patent office for inter partes review — the IPRs — to challenge those patents. If that happens, there's a really good chance the district court litigation will get stayed — put on hold — pending the outcome of the IPR. That happens a lot. The ITC proceeding will not get stayed. It'll continue on its fast track.

So there's probably a good chance that, depending on how much money these guys have, they'll go back to the patent office and argue, "This is not new. It's not non-obvious. There's prior art." And they'll try to knock it out of the water. That will take a year — those are year-long proceedings.

A lot of strategy here. Joola, or the company that owns the patents, they've hired a very large law firm — Kirkland and Ellis. Those guys are very good. They're not cheap, but they have really high-quality litigators. So this is very serious. If I were a defendant, I would be like, "Okay, let's develop a counter strategy here quickly." I wouldn't make a funny video and post that online, but to each their own.

The patents that were granted last year are fairly broad — they're material-agnostic and cover a construction of a paddle that's been popular. Does that potentially hurt them, because prior art could be anything similar?

Yes. The broader your claim is, the more susceptible it becomes to an attack by prior art — the weaker it might be. But they also have a lot of dependent claims, so they've got full sets of claims.

I checked the patent office this morning, and they also have other continuations pending. It's a way you can keep the door open to getting different claim scope — a slightly altered claim scope — if you have to go with a specific material, specific geometry, or manufacturing method. The whole family's got the original application still pending, and then they have two continuations pending off of that 891 patent. So they're keeping that door open. And if I were a defendant, I would be keeping a really close eye on that.

At least one brand is asking all their retailers to stop selling their paddles. Why would they specifically do that, while other brands are still launching? Why would one brand choose the safer route versus the other?

It's risky to continue because the longer you continue, the more the damages will accumulate and the stronger argument Joola will have that they're willful infringers. They knew about the patent but continued anyway. So if the defendant is found to infringe and they've continued, let's just say it's a $20 million damages award — that will get trebled. There'll be a $60 million award because they're willful infringers.

So the company that said "let's stop" — that's really a risk mitigation approach. They probably talked to their attorneys who said, "You need to stop right now. Let us take a closer look. Just put it on hold. We'll take a close look, and if there's a counter strategy we can employ, let's do that." It's just a matter of protecting your company from a bunch of damages.

If you're a consumer at this stage, and you know about the lawsuit and you purchase a paddle, can you face any repercussions?

Practically? No. What's Joola going to do — sue individuals? I don't think so. And what are the damages off of that, like ten bucks or five bucks? It's not going to happen. So I don't think consumers have much to worry about.

Although, technically, whoever makes, uses, sells, offers to sell, or imports an infringing product — if it's found to infringe — is liable for damages. So the worst thing that would happen is Joola would say, "Hey, you need to stop using that paddle. We'll sell you one at a 20% discount or whatever. But stop. You need to stop using it." But I doubt they're going to do that. It's probably not going to help their brand or reputation. They'll probably just let those products that are out there continue, get worn out, get thrown away, and hopefully be able to sell more of their own paddles.

Joola's complaint named 11 companies, and there are a lot of smaller brands that were not named — I'm assuming just because it's not worth the trouble given their size. What would you recommend those companies do if they're worried about being sued in the future?

First and foremost, they should hire a patent attorney to look at the Joola patents, compare those claims to the construction of their paddle, and get a legal opinion on whether or not they fall within the scope of the claims. Because if they get that legal opinion, it will protect them from treble damages. If the opinion says, "You don't infringe" for whatever reason — maybe the construction is different — then you definitely want that. Hiring a lawyer to get a legal opinion will save you even if you are found to infringe. Your damages will be reduced significantly.

Then if you want to take the extra step to look for prior art that could invalidate those patents, you could do that too. But I would guess that some of these companies would work together. The examiners at the patent office do not have every single piece of prior art in front of them. They do the best search they can with the time they're allotted and they always do a really good job, but there could be a commercial product that came out years before they filed that patent application. That commercial product can be prior art as well — but you have to prove it. You'd actually have to have a sales receipt, a paddle that's probably cross-sectioned, and an affidavit from somebody who bought it on that date. You have to have the evidence.

Can you explain what prior art is, and what's the procedure to challenge the patent with prior art?

Prior art is basically anything that was publicly available before the effective filing date of the patent application. There's a provisional date — the earliest was around August 30th, 2023. That wasn't very long ago.

There are two provisionals, and you'd probably want to pull those provisionals — you have to order them from the patent office — and see exactly what they disclosed versus what the non-provisional disclosed, because sometimes there's a disconnect between the two. That's part of the diligence process.

To challenge the patent, there are a lot of different ways. You can wait to get sued and then go to court and show the prior art. You can give Joola a call and say, "I don't know if you're aware of this, but here's some prior art. Don't sue me." Then Joola can do with it what they want.

You can go back to the patent office and ask them to reexamine the patent. That favors the patentee a little bit more because you as the challenger are just throwing prior art over the wall to the patent office.

Then there's the inter partes review, which is between two parties before the Patent Trial and Appeal Board — the PTAB. You go through a one-year process of arguing over the prior art and claims. That gets really expensive — those IPRs are hundreds of thousands of dollars. Litigation is hundreds of thousands of dollars. A re-exam could be cheaper, maybe $50,000 to $60,000.

Or a phone call is a phone call. In the past when I litigated, you'd have prior art, and the company didn't want to go to court. So the business folks got together, had a meeting, slid a patent across the table and said, "Why don't you have a look at that? When you're done, let me know if we need to have another meeting." And both parties walked out the door. That was the last of it.

But that would solely benefit the company with prior art, right? So if they wanted Joola to get off everyone's backs, they would challenge it. If they can prove prior art, does that mean the patent is just void for everyone they're suing?

Yes. Any issued patent is presumed valid and enforceable, and it's up to the challenger to invalidate it. If multiple parties go through either the district court or back to the patent office and they're successful at invalidating the claims — there's no longer a patent. So those lawsuits would all go away.

There could be a knight in shining armor here that shows up with prior art and says, "I got this. I'm going to take it upon myself to be the good guy and help out all these companies, because what Joola has, they shouldn't have." If that's the case, they shouldn't have that broad protection.

But I haven't seen the prior art. I haven't looked at it. It would be a fun challenge, but the law firm representing Joola — they're top notch. They're really good at what they do. I think a lot of law firms at that caliber will do their own prior art search before they file a lawsuit for a client. Whether they did or not, I don't know, but I suspect they probably did some searching or interviewed their client about the whole story — Gen 1, 2, 3, 4, what was out there in this sport prior to when they developed this.

Why would they not go after a brand like Selkirk?

Well, that's like poking the giant. Selkirk has a huge patent portfolio themselves. I don't know what they have that they could throw back at Joola, but they probably don't want to pick that fight. Selkirk is so big — when I play pickleball, most everybody has a Selkirk paddle.

So technically, the little nerd in me is like, "Oh, why didn't they sue Selkirk?" Well, they probably had a Selkirk paddle, cut it up, and said, "Oh, you don't have the features that are in my claim."

Now, if Selkirk paddles do have the features in the patent claims and they didn't sue Selkirk, my guess is they don't want to fight that battle. They're just trying to get rid of the low-hanging fruit, clear the decks, get rid of some competition, get rid of people who are taking away their market share.

They probably know that Selkirk could uncover some prior art and wipe out their patents entirely — because Selkirk has the resources to do that.

Is Joola doing this with malicious intent? Are they trying to stifle innovation, or is this standard business practice?

I wouldn't say they're trying to stifle innovation, because a patent IS innovation. By definition, you're innovating and spending money to get a patent in exchange for a monopoly for 20 years. That's the patent system. You innovate, you share it with everybody, but you get a limited window where nobody else can use it except you. That's the quid pro quo — the deal you make with the government.

So I think Joola has every right to protect the intellectual property they developed. You don't know if they went to these companies first and said, "Hey, you're infringing — knock it off," and they didn't listen and kept importing anyway. I've dealt with aftermarket automotive products where you find the infringing company, tell them to knock it off, they shut down their factory, and then a month later it's under a new name. They don't take it seriously. This is one way to get companies to take it seriously.

If I'm a product designer making paddles, I'm going to make sure I'm not stepping on anyone else's toes. And if I truly am innovating, I'm going to file for protection on my IP, and at the same time, make sure I don't step on anybody else. It's what you need to do as an innovator. It's part of the game. If you want someone to respect your IP, you have to respect their IP.

Is this a sign of natural market maturity? You've worked in other industries — it's been the wild wild west up to this point in pickleball. Will the brands that survive need more legal counsel? Does that make it harder for new brands to enter the space?

I think you're going to see a lot more patents being filed, patents being enforced, and there will be attrition. It's happened in other industries. Golf is a good example — the technology around golf balls, clubs, materials, and manufacturing methods is a very tight but active space where the parties really respect each other's IP.

I'm not sure entering the market would be that much harder. If you want entry-level paddles with technology that's 20 years old or never got patented, that's public domain. Anybody can make those. But if you're wanting to innovate at the competitive level — the material of the core, how it's constructed, these newer generations of paddles — yeah, you're going to have to spend more money to make sure you're not stepping on others' toes and to protect your own innovations. It's expensive. It costs a lot of money to patent, to patent in different countries, to file continuations. Joola is spending a lot of money on this patent family, and they won't stop.

Is this enforceable in international markets? 

It looks like they do have some filings in China. They have a filing in Taiwan, Australia, Europe, and a separate filing in Spain. In China, there's a form of intellectual property called a "utility model" — it's kind of like a mini patent. It's good for 10 years, a lot less expensive, and there's not as rigorous of an examination procedure. Utility models in China actually have a really high enforcement rate compared to patents of invention. So it looks like they have at least one utility model filed over there. They'll probably have some good success in China with that if it grants — it doesn't look like it's granted yet. But they do have an international filing structure.

Because the wording is so broad, a lot of brands are confused whether this also includes full floating cores. From my reading, it seems like full floating cores are exempt from the patent, but the wording isn't very specific. Does any evidence from your reading suggest it's only diving board constructions and not full floating cores?

I have to confess, I haven't looked at it that closely. When you look at a patent and these claim terms — "at least two gaps in the core defined by the absence of the first material" — you want to figure out what that means. But there's going to be claim construction in the litigation and at the Patent Trial and Appeal Board. What do they actually mean by "substantially adjacent to a throat portion"? Does it mean one side, all sides? Is there a gap in between?

Then you go through the file history, the prior art, and actually define what every single term means. There is some claim construction that the litigators have done internally, but without going through the file history, doing a full claim construction is hard to say.

What does the future look like for pickleball with all of this?

The fact that they filed so many cases and they've got this patent family that will continue tells me they're going to try to get some law and order in this pickleball industry. 

It's booming and continues to grow, and there haven't been a lot of lawsuits. Differentiating yourself from all the competition is becoming harder and harder. If you have IP that protects your design, you have to step up. Why have a patent if you're not going to enforce it?

I think this is probably a sign you're going to see more attrition. You're going to see things get more serious on the business side around intellectual property, and you're probably going to see a lot more patent filings. One of the best ways to fight a patent is to have your own armory of patents. If my client was a defendant, one thing I would do is say, "Okay, they have these patents. How would you improve on it? How would you make this even better?" Now I can patent an improvement on what they've got and block them from making it any better. That's one strategy.

They're going to try to knock out the low-hanging fruit, and then start having more serious conversations with the upper-tier companies. Perhaps they're going to license the technology — "Fine, you can use it, but you have to give us 25 cents a paddle or a dollar a paddle." That would be a huge cash cow for them.

Do you think we'll see a pause in new paddles for the next few months?

Yeah, I think you will see some companies slow down and change direction. There will probably be those that continue anyway — they probably don't have much in the way of sales, or they're being a little reckless, or they're just going to change their company name to something different and play a game of hide and seek, which — I hate to say it — a lot of Chinese companies do that.

It's probably not worth Joola's time and effort to chase down those little guys. They've probably decided, "Okay, who's got enough sales for this to be worthwhile?" Because with a firm like they have, they're going to spend probably on the order of $300,000 to $400,000 a month — easy — on each one of these. 

They're going to be burning through money. The expectation is they'll make it back in damages, protecting their product, or license fees. They may negotiate licenses with some companies, but I think they're probably thinking it'll come back to them in increased sales if they don't have as much competition.

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