DCT
0:19-cv-60851
Ermi LLC v. Team Post Op Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ermi LLC (Delaware)
- Defendants: Team Post Op, Inc. (Florida); Eduardo M. Marti (Florida); T-Rex Rehab, LLC (Florida); T-Rex Investment, Inc. (Georgia); and OneDirect Health Network, Inc. (Georgia)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: 0:19-cv-60851, S.D. Fla., 04/11/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have principal places of business in the district, maintain a physical presence in the district, and a substantial part of the events giving rise to the claim, including the sale and distribution of infringing products, occurred there.
- Core Dispute: Plaintiff alleges that Defendants' "T-Rex Orbit for Shoulder" medical device infringes a patent related to a user-controlled shoulder rehabilitation apparatus.
- Technical Context: The technology concerns mechanical therapy devices designed to help patients recover range of motion in their shoulder joints following injury or surgery.
- Key Procedural History: The complaint alleges that Defendant Eduardo Marti, the founder of Defendant T-Rex Rehab, had pre-suit knowledge of the patent-in-suit and the associated commercial product. This knowledge is alleged to stem from a December 2013 meeting with the patent’s inventor and from a 2015 Information Disclosure Statement Mr. Marti filed during prosecution of his own patent applications, which cited Plaintiff's website. Plaintiff filed an original complaint on April 1, 2019; Defendant OneDirect subsequently filed a declaratory judgment action for non-infringement and invalidity in the Northern District of Georgia on April 4, 2019. Plaintiff ERMI files Amended Complaint on April 11, 2019.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-13 | ’289 Patent Provisional Application Filing Date |
| 2002-12-13 | ’289 Patent Non-provisional Application Filing Date |
| 2003-07-10 | ’289 Patent Application Publication Date |
| 2006-01-13 | First Office Action on ’289 Patent Application |
| 2009-03-16 | ’289 Patent Notice of Allowance |
| 2009-06-16 | ’289 Patent Issue Date |
| 2012-10-01 | First Maintenance Fee Paid for ’289 Patent |
| 2013-12-13 | Defendant Marti allegedly meets with Plaintiff ERMI |
| 2014-05-XX | Defendant T-Rex Rehab, LLC allegedly founded |
| 2015-08-27 | Defendant Marti allegedly files IDS citing Plaintiff's website |
| 2016-12-01 | Second Maintenance Fee Paid for ’289 Patent |
| 2019-04-01 | Plaintiff ERMI files Original Complaint |
| 2019-04-04 | Defendant OneDirect files Declaratory Judgment action against ERMI |
| 2019-04-11 | Plaintiff ERMI files Amended Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,547,289 - "Shoulder Extension Control Device"
The Invention Explained
- Problem Addressed: The patent describes the problem of lost shoulder motion following injury or surgery, which is caused by scar formation between layers of tissue and contracture of individual layers (’289 Patent, col. 1:38-48). The patent notes that while mechanical therapy devices exist to help patients regain motion, "improvements are always welcomed" (’289 Patent, col. 2:10).
- The Patented Solution: The invention is an apparatus that gives a patient "substantially complete control" over the range of motion of their shoulder during rehabilitation (’289 Patent, col. 1:17-19). A key aspect of the described apparatus is its modular design, featuring an arm carriage and a power unit that can be "switched between...first and second mounting locations" on a frame to manipulate either the user's left or right arm (’289 Patent, col. 2:20-36). The user operates a power unit, which transfers force via a linkage to the arm carriage to move the joint (’289 Patent, Abstract).
- Technical Importance: The patent presents the invention as a helpful and "highly desired" technique that allows a patient to use a mechanical device to stretch the joint without the direct hands-on manipulation of a therapist (’289 Patent, col. 2:1-6).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 22 (method) (Compl. ¶97).
- Independent Claim 1 recites an apparatus for manipulating a shoulder joint, comprising:
- a frame including spaced apart first and second mounting locations;
- an arm carriage configured to manipulate the shoulder joint, which can be mounted to one of the mounting locations;
- a power unit controlled by the user, which can be mounted to the other mounting location;
- a linkage to transfer power from the power unit to the arm carriage; and
- the components being configured to allow the arm carriage and power unit to be "switched" between the mounting locations for use on either the right or left arm.
- Independent Claim 22 recites a method of manipulating a user's shoulder, comprising the steps of:
- A) providing an apparatus with a frame, a seat, an upper arm assembly pivotable about a second axis, and a forearm assembly pivotable about a third axis;
- B) securing the user's forearm to the forearm assembly;
- C) selectively discouraging forearm movement relative to the upper arm while allowing both to pivot together;
- D) pivoting the upper arm assembly about the second axis (creating abduction/adduction) while discouraging forearm movement;
- E) selectively discouraging upper arm movement relative to the frame while allowing forearm movement; and
- F) pivoting the forearm assembly about the third axis (creating external rotation) while discouraging upper arm movement.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "T-Rex Orbit for Shoulder" (the "Accused Device") (Compl. ¶9).
Functionality and Market Context
- The Accused Device is a medical product for shoulder rehabilitation that Defendants are alleged to make, use, sell, lease, and distribute in the United States (Compl. ¶9).
- Defendants are alleged to advertise the Accused Device on websites such as trexrehab.com and teampostop.net and through commercial brochures (Compl. ¶¶ 54, 57, 70). The complaint alleges that Defendant Team Post Op's website states it will "properly instruct the patient and/or caregiver on the proper use and maintenance of product(s)" (Compl. ¶72).
- The complaint provides a photograph of the T-Rex Orbit for Shoulder device in Exhibit 2 (Compl. ¶52, Ex. 2). A commercial brochure attached as Exhibit 6 includes images showing the Accused Device being used by a person (Compl. ¶57, Ex. 6).
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed claim chart. It alleges generally that the Accused Device "embodies at least Claim 1" and that its use "infringes at least method Claim 22" (Compl. ¶98). The following tables summarize this theory of infringement.
’289 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for manipulating the shoulder joint of the left or right arm of a human user, said apparatus comprising: | The complaint alleges the Accused Device is an apparatus for manipulating a shoulder joint. | ¶98 | col. 16:51-53 |
| a frame including spaced apart first and second mounting locations; | The complaint alleges the Accused Device includes this element. | ¶98 | col. 16:54-55 |
| an arm carriage configured to manipulate said shoulder joint of said user, said arm carriage configured to be mounted to one of said first and second mounting locations of said frame; | The complaint alleges the Accused Device includes this element. | ¶98 | col. 16:56-59 |
| a power unit configured to provide power upon control by said user, said power unit configured to be mounted to the other of said first and second mounting locations of said frame; | The complaint alleges the Accused Device includes this element. | ¶98 | col. 16:60-63 |
| a linkage intermediate said arm carriage and said power unit, said linkage configured to transfer power from said power unit to said arm carriage; | The complaint alleges the Accused Device includes this element. | ¶98 | col. 16:64-65 |
| said arm carriage, said power unit, and said linkage configured to allow said arm carriage and said power unit to be switched between said first and second mounting locations and operated in alternating modes... | The complaint alleges the Accused Device includes this functionality. | ¶98 | col. 17:1-8 |
’289 Patent Infringement Allegations
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of manipulating the shoulder of a user...comprising the steps of: | The complaint alleges that use of the Accused Device constitutes a method of manipulating a shoulder. | ¶98 | col. 20:22-26 |
| A) providing an apparatus itself comprising: 1) a frame; 2) a seat...; 3) an upper arm assembly...; 4) a forearm assembly... | The complaint alleges that using the Accused Device involves providing an apparatus with these components. | ¶98 | col. 20:27-46 |
| B) securing the forearm of a user to said forearm assembly; | The complaint alleges that using the Accused Device involves this step. | ¶98 | col. 20:47-48 |
| C) selectively discouraging relative movement of said forearm assembly with respect to said upper arm assembly while at the same time allowing said upper arm assembly and said forearm assembly to both pivot together... | The complaint alleges that using the Accused Device involves this step. | ¶98 | col. 20:49-54 |
| D) pivoting said upper arm assembly about said second axis relative to said frame while...said relative movement of said forearm assembly...is discouraged such that abduction/adduction of the shoulder is created; | The complaint alleges that using the Accused Device involves this step. | ¶98 | col. 20:55-61 |
| E) selectively discouraging relative movement of said upper arm assembly with respect to said frame while at the same time allowing relative movement of said forearm assembly... | The complaint alleges that using the Accused Device involves this step. | ¶98 | col. 20:62-col. 21:2 |
| F) pivoting said forearm assembly about said third axis...while at the same time said relative movement of said upper arm assembly...is discouraged such that external rotation is created at said shoulder. | The complaint alleges that using the Accused Device involves this step. | ¶98 | col. 21:3-8 |
Identified Points of Contention
- Scope Questions: A central question for Claim 1 is whether the Accused Device possesses the modular architecture of an "arm carriage" and "power unit" that are "switched between said first and second mounting locations" to accommodate left versus right arm use. The complaint does not provide specific factual allegations detailing how the Accused Device meets this limitation.
- Technical Questions: For Claim 22, the infringement analysis will depend on whether the actual operation of the Accused Device performs the specific sequence of isolating and enabling different movements. For example, what evidence demonstrates that use of the device involves "selectively discouraging" forearm movement to create abduction (Step D) and then "selectively discouraging" upper arm movement to create external rotation (Step F)?
V. Key Claim Terms for Construction
The Term: "switched between said first and second mounting locations" (Claim 1)
Context and Importance: This term is critical to the scope of apparatus Claim 1. The infringement analysis may turn on whether the Accused Device's components are repositioned from one side of its frame to the other in a manner that falls within the definition of being "switched."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the positions of the arm carriage and power unit can be "interchanged" (’289 Patent, col. 6:18-20). Parties arguing for a broader scope may suggest this language covers any means of repositioning the components.
- Evidence for a Narrower Interpretation: The Summary of the Invention describes a configuration where the components are "switched between the first and second mounting locations and operated in alternating modes," suggesting an integrated system designed for this purpose (’289 Patent, col. 2:29-36). The detailed description and figures show specific "side-mounting members" and "carriage gripping members" used to attach the components, which may support a narrower construction tied to this disclosed hardware (’289 Patent, Fig. 15; col. 8:5-16).
The Term: "selectively discouraging relative movement" (Claim 22)
Context and Importance: This functional language is the core of method Claim 22, defining how the apparatus isolates different therapeutic motions. Infringement will depend on whether the Accused Device is operated in a way that "discourages" movement of one component to enable movement of another as claimed. Practitioners may focus on this term because it links the method steps to the underlying mechanics of the device.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term should be given its plain and ordinary meaning, covering any mechanism (e.g., a brake, lock, or even user resistance) that impedes or prevents motion.
- Evidence for a Narrower Interpretation: The specification discloses a specific structure for achieving this function: a "pivot-fixing pin 89" that can be inserted into one of two different holes. Placing the pin in one hole configures the device for abduction, while placing it in the other configures it for external rotation (’289 Patent, col. 9:59-65; Fig. 13). This specific embodiment could be used to argue for a narrower definition tied to a mechanism that physically locks or unlocks specific axes of rotation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of at least Claim 22, asserting that Defendants instruct and direct third parties, including doctors and patients, to use the Accused Device in an infringing manner through marketing, advertising, and demonstrations (Compl. ¶¶ 109, 110, 112). The complaint also alleges contributory infringement by stating that the Accused Device has "no substantial non-infringing use" (Compl. ¶114).
- Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶104). The basis for this allegation is purported pre-suit knowledge of the ’289 Patent. The complaint alleges that Defendant Marti visited ERMI on December 13, 2013, and was "exposed to...the ERMI Shoulder Flexionater® device," which is marked with the patent number (Compl. ¶¶ 42, 45-46, 102). It further alleges that on August 27, 2015, Mr. Marti filed an Information Disclosure Statement in his own patent application that cited Plaintiff's website, where the patented product is allegedly shown (Compl. ¶¶ 51, 103).
VII. Analyst’s Conclusion: Key Questions for the Case
This litigation appears to center on questions of structural correspondence, functional operation, and the defendants' state of mind. The key open questions for the court will likely include:
- A core issue will be one of structural correspondence: does the accused "T-Rex Orbit for Shoulder" device contain the modular architecture recited in Claim 1, specifically an arm carriage and power unit that are "switched between...first and second mounting locations" to alternate between left and right arm therapy?
- A key evidentiary question will be one of operational equivalence: does the standard use of the accused device by a patient follow the specific multi-step method of Claim 22, which requires "selectively discouraging" movement around one axis to isolate therapeutic motion around another?
- A significant question regarding damages will be one of willfulness: given the complaint’s specific allegations of pre-suit meetings and patent prosecution disclosures, did Defendants' alleged conduct following this knowledge constitute objective recklessness sufficient to support a finding of willful infringement?