DCT
0:19-cv-62472
Ermi LLC v. Graymont Equipment Distribution LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ermi LLC (Delaware)
- Defendant: Graymont Equipment Distribution, LLC, d/b/a Graymont Medical (Illinois), and Kinnick Medical Limited (Illinois)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: 0:19-cv-62472, N.D. Ill., 04/01/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because both Defendants are Illinois entities with principal places of business in the district, where they are also alleged to have engaged in infringing activities.
- Core Dispute: Plaintiff alleges that Defendants’ "T-Rex Orbit for Shoulder" medical device infringes a patent related to orthopedic devices for controlling and improving a patient's shoulder range of motion.
- Technical Context: The technology pertains to mechanical therapy devices used for post-surgical or post-injury rehabilitation of the human shoulder joint.
- Key Procedural History: The complaint alleges a history wherein a principal of the Defendants, Mr. Marti, met with the Plaintiff in 2013, was exposed to Plaintiff's commercial embodiment of the patent-in-suit, and subsequently founded a company to sell the accused product. The complaint notes that during the prosecution of his own patent applications, Mr. Marti cited Plaintiff's website in an Information Disclosure Statement. Subsequent to the filing of this complaint, the asserted patent underwent an ex parte reexamination, which concluded on October 15, 2021, confirming the patentability of claims 1-4 and issuing an amended version of claim 22.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-13 | ’289 Patent Priority Date |
| 2009-06-16 | ’289 Patent Issue Date |
| 2013-11-07 | Mr. Marti (related to Defendants) allegedly contacted ERMI |
| 2013-12-13 | Mr. Marti allegedly met with ERMI |
| 2014-05-01 | T-Rex Rehab, LLC (related to Defendants) allegedly founded |
| 2019-04-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,547,289 - "Shoulder Extension Control Device," issued June 16, 2009
The Invention Explained
- Problem Addressed: The patent addresses the loss of motion in the shoulder joint that can occur following an injury or surgery due to scar formation and tissue contracture (’289 Patent, col. 1:38-48). While manual therapy from a professional is one treatment, the patent identifies a need for mechanical devices that allow a patient to safely and effectively conduct their own stretching regimen (’289 Patent, col. 2:1-10).
- The Patented Solution: The patent describes an apparatus that provides "substantially complete control over the range of motion of the human shoulder" to the patient (’289 Patent, col. 1:16-18). A key aspect of the invention is its reconfigurability. The apparatus comprises a frame with distinct mounting locations for an "arm carriage" (which holds the patient's arm) and a "power unit" (which the patient operates). These two main components can be switched between the mounting locations, allowing the device to be used for either the left or the right arm in "alternating modes" (’289 Patent, Abstract; col. 2:18-37). The device can also be adjusted to facilitate different therapeutic motions, such as abduction and external rotation.
- Technical Importance: The invention provides a single, reconfigurable device that a patient can use to perform multiple types of controlled shoulder therapy on either arm, potentially increasing patient compliance and reducing reliance on a therapist for each session (’289 Patent, col. 2:1-6).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 22 (Compl. ¶72).
- Independent Claim 1 (Apparatus):
- An apparatus for manipulating the shoulder joint of a user, comprising:
- a frame including spaced apart first and second mounting locations;
- an arm carriage configured to manipulate the shoulder joint, mounted to one of the locations;
- a power unit controlled by the user, mounted to the other location;
- a linkage to transfer power from the power unit to the arm carriage;
- wherein the arm carriage, power unit, and linkage are configured to be switched between the locations to operate in alternating modes for the user's right or left arm.
- Independent Claim 22 (Method, as amended by reexamination):
- A method of manipulating the shoulder, comprising the steps of:
- A) providing an apparatus with: 1) a frame with first and second mounting locations, 2) a seat, 3) an upper arm assembly mounted to one location, 4) a forearm assembly, and 5) a power unit mounted to the other location;
- B) securing the user's forearm to the forearm assembly;
- C) selectively discouraging forearm movement relative to the upper arm assembly while allowing both to pivot together;
- D) actuating the power unit and pivoting the upper arm assembly for abduction/adduction;
- E) selectively discouraging upper arm movement while allowing forearm movement;
- F) actuating the power unit and pivoting the forearm assembly for external rotation.
- The complaint indicates an intent to rely on the Doctrine of Equivalents and reserves the right to assert other claims (Compl. ¶75).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "T-Rex Orbit for Shoulder" device (the "Accused Device") (Compl. ¶6).
Functionality and Market Context
- The complaint alleges the Accused Device is a medical product made and distributed by Rehab, a company allegedly founded by Mr. Marti after he was exposed to Plaintiff's product (Compl. ¶39, 44). The complaint alleges the device is advertised on a website, which includes videos showing the device being used by a person (Compl. ¶46, 48). The complaint also refers to a commercial brochure, which allegedly shows a photograph of the Plaintiff's ERMI Shoulder Flexionater® device alongside the Accused Device (Compl. ¶60, 68, Ex. 6). Defendants Graymont and Kinnick are alleged to be distributors of the Accused Device (Compl. ¶55, 63).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart exhibit. The infringement allegations are made in a narrative and conclusory fashion, without detailed factual support mapping specific product features to claim elements.
’289 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame including spaced apart first and second mounting locations | The complaint alleges the Accused Device embodies Claim 1, but does not provide specific facts describing the frame or mounting locations. | ¶73 | col. 2:20-22 |
| 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 embodies Claim 1, but does not provide specific facts describing the arm carriage or its mounting. | ¶73 | col. 2:22-24 |
| 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 embodies Claim 1, but does not provide specific facts describing the power unit or its mounting. | ¶73 | col. 2:25-28 |
| 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 embodies Claim 1, but does not provide specific facts describing the linkage. | ¶73 | col. 2:28-30 |
| 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 does not provide specific factual allegations detailing how the Accused Device is switched to treat a user's left and right arms. | ¶73 | col. 2:30-37 |
- Identified Points of Contention:
- Technical Questions: A primary question is whether the Accused Device literally meets the "switched" limitation of Claim 1. The complaint offers no factual allegations that components of the Accused Device are physically detached and re-mounted on different sides of its frame. The infringement analysis may depend on whether the Accused Device achieves bilateral functionality through a different, non-infringing design.
- Evidentiary Questions: The complaint's infringement allegations are conclusory (Compl. ¶73). A key question for the court will be what evidence Plaintiff introduces to demonstrate that the Accused Device contains each element of the asserted claims, particularly for the "switched" and "linkage" limitations of Claim 1 and the "selectively discouraging" steps of Claim 22.
V. Key Claim Terms for Construction
The Term: "switched between said first and second mounting locations" (Claim 1)
- Context and Importance: This term is central to the apparatus claim, defining the reconfigurable nature of the device for treating both left and right arms. The outcome of the infringement analysis for Claim 1 will likely depend on the construction of this phrase.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires the components to be "configured to allow" switching, which a party could argue does not strictly require any particular method of reconfiguration, so long as operation in "alternating modes" for the left and right arm is enabled by changing the component arrangement.
- Evidence for a Narrower Interpretation: The specification describes and figures show an embodiment with distinct "side-mounting members" (44) on opposite sides of the main frame (40), to which the "arm carriage" (50) and "power unit" (90) are attached (’289 Patent, col. 7:5-15, Fig. 10). A party could argue this disclosure limits the term "switched" to a physical detachment of the components from one mounting location and reattachment to another.
The Term: "selectively discouraging relative movement" (Claim 22)
- Context and Importance: This term appears twice in the method claim and is critical to how the device isolates and applies therapeutic force for different motions (abduction vs. external rotation). Infringement of Claim 22 depends on whether the Accused Device performs an active, selective "discouraging" of motion, rather than merely having a design with inherent physical constraints.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "discouraging" does not require a complete lock, and could be met by any mechanism or geometric configuration that makes one type of movement substantially more difficult than another at a given time.
- Evidence for a Narrower Interpretation: The specification discloses using a "pivot-fixing pin" (89) that can be inserted into different holes to lock certain axes of rotation while permitting others (’289 Patent, col. 9:1-11; Fig. 13). The use of the word "selectively" in the claim may support an interpretation that requires a user-controlled mechanism, like the disclosed pin, to engage or disengage the "discouraging" feature.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of at least Claim 22 (Compl. ¶82). The factual basis alleged is that Defendants market, advertise, and provide instructions for the Accused Device to third parties, such as doctors and patients, encouraging them to use the device in an infringing manner (Compl. ¶81, 85). The complaint alleges the requisite knowledge and intent based on Mr. Marti’s alleged pre-suit exposure to Plaintiff's product and patent, and his subsequent citation to Plaintiff's website during his own patent prosecution (Compl. ¶36-38, 43, 85).
- Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶77). The allegations supporting willfulness are the same as those for knowledge, focusing on the detailed narrative of alleged pre-suit knowledge of Plaintiff’s product and patent (Compl. ¶36-43, 60-62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical proof: Can the Plaintiff provide evidence that the accused "T-Rex Orbit" device possesses a reconfigurable design where the arm carriage and power unit are physically "switched between... mounting locations" to treat alternate arms, as required by the plain language of Claim 1? The complaint's lack of specific factual allegations on this point suggests it will be a central point of dispute.
- A second key issue will be one of knowledge and intent: While the complaint presents a detailed narrative alleging Defendants' pre-suit knowledge of the patentee's product, a central question for willfulness and inducement will be whether this establishes knowledge of infringement of the specific limitations of the patent-in-suit.
- A final question will be one of claim scope versus evolving facts: How does the post-filing amendment to Claim 22, which added the limitation of "actuating said power unit" to the therapeutic steps, affect the Plaintiff's infringement case, which was pled based on the original, broader claim language?