DCT

0:19-md-02914

Ermi LLC v. Detroit Medical Devices LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:19-md-02914, S.D. Fla., 01/24/2020
  • Venue Allegations: This is a Multi-District Litigation (MDL) action consolidating cases transferred from multiple districts by the Judicial Panel on Multidistrict Litigation (JPML). Venue is alleged to be proper based on the JPML transfer order, as well as on the residency, principal places of business, and infringing activities of certain defendants within the Southern District of Florida.
  • Core Dispute: Plaintiff alleges that Defendants’ orthopedic rehabilitation devices infringe a patent for a shoulder extension control device, and further alleges a broad campaign of trademark infringement, copyright infringement, and unfair competition.
  • Technical Context: The technology at issue involves mechanical devices used for post-surgical or post-injury physical rehabilitation to restore a patient’s range of motion in a joint.
  • Key Procedural History: The action is a consolidated MDL case. The complaint alleges a history of business dealings and disputes between the parties, including a 2013 meeting where certain defendants were allegedly exposed to Plaintiff's patented products. It also notes that Defendants cited Plaintiff’s website in an Information Disclosure Statement during the prosecution of their own separate patent applications. The prosecution history of the patent-in-suit is noted as having original claims 1-6 allowed without rejection.

Case Timeline

Date Event
2001-12-13 Provisional application for '289 Patent filed.
2002-12-13 Non-provisional application for '289 Patent filed.
2003-07-10 '289 Patent application published.
2006-01-13 USPTO issues first office action on '289 Patent application.
2009-03-16 USPTO issues notice of allowance for '289 Patent.
2009-06-16 U.S. Patent No. 7,547,289 issues.
2013-12-13 Defendants Marti and Kaiser allegedly visit ERMI and observe products.
2014-05-01 Defendant T-Rex Rehab, LLC allegedly founded.
2015-08-27 Defendants allegedly file IDS citing Plaintiff's website.
2020-01-24 Omnibus Amended Complaint filed.

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 addresses the loss of joint motion in the human shoulder following surgery or injury, which can be caused by the formation of scar tissue between layers of the joint and the shortening or contracture of individual layers (’289 Patent, col. 1:38-47). The goal is to provide effective therapy to avoid the need for further surgical intervention (’289 Patent, col. 2:4-6).
  • The Patented Solution: The invention is a mechanical apparatus that allows a patient to perform self-directed range-of-motion therapy. Its central innovation is a modular design where an "arm carriage" (which holds the patient's arm) and a "power unit" (which provides hydraulic force controlled by the user) can be mounted to and switched between two distinct locations on a frame. This allows the same device to be reconfigured to treat either the left or the right arm, providing therapy for both abduction and external rotation (’289 Patent, Abstract; col. 2:19-37).
  • Technical Importance: The device is intended to provide an improved mechanical therapy apparatus that gives the patient complete control over the joint-stretching process, a technique considered helpful in rehabilitating shoulder joints (’289 Patent, col. 2:1-6).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 22, along with dependent claims 2, 3, and 4 (Compl. ¶557).
  • Independent Claim 1 (Apparatus): The key elements are:
    • a frame including spaced apart first and second mounting locations;
    • an arm carriage configured to be mounted to one of the mounting locations;
    • a user-controlled power unit configured to be mounted to the other mounting location;
    • a linkage to transfer power from the power unit to the arm carriage;
    • the components are configured to be switched between the mounting locations to operate in alternating modes for manipulating either the right arm or the left arm of the user.
  • Independent Claim 22 (Method): The key steps are:
    • providing an apparatus with a frame, seat, and pivotable upper arm and forearm assemblies;
    • securing a user's forearm to the forearm assembly;
    • selectively discouraging forearm movement relative to the upper arm while pivoting both together to create shoulder abduction/adduction;
    • selectively discouraging upper arm movement relative to the frame while pivoting the forearm assembly to create external rotation at the shoulder.

III. The Accused Instrumentality

Product Identification

The primary accused product is the "T-Rex Orbit for Shoulder" device (the "Accused Shoulder Device"). The complaint also names the "T-Rex Arc for Knee," "T-Rex Traverse for Hip," and "Accused Ankle Device" as part of a line of infringing products (Compl. ¶¶48-49).

Functionality and Market Context

The complaint alleges the Accused Devices are joint extension control devices that directly compete with Plaintiff's products (Compl. ¶174). Defendants are alleged to make, use, sell, lease, and advertise these devices through a network of distributors (Compl. ¶¶48, 176). The complaint includes a photograph of a commercial van bearing the allegedly infringing "T-REX" mark and a website address, which it asserts was transporting one of the Accused Devices (Compl. ¶625, p. 88).

IV. Analysis of Infringement Allegations

The complaint references an initial claim chart in Exhibit 33, which was not provided with the filed complaint (Compl. ¶557). The infringement theory is therefore based on the narrative allegations in the complaint.

The complaint alleges that the Accused Shoulder Device is an apparatus that directly infringes at least Claim 1 and that its use by Defendants and their customers directly infringes at least method Claim 22 of the ’289 Patent (Compl. ¶558). The infringement theory for Claim 1 appears to rest on the allegation that the Accused Shoulder Device possesses the core structural elements of the claim, including a frame with distinct, swappable mounting locations for an arm carriage and a power unit. For method Claim 22, the theory is that use of the Accused Shoulder Device, as instructed by Defendants, performs the claimed steps of securing a user's arm and manipulating it to achieve both abduction and external rotation. The complaint includes side-by-side photographic comparisons to allege that Defendants copied Plaintiff's copyrighted images of its own devices for use in Defendants' marketing brochures, which may be used to support a broader narrative of copying the underlying product as well (Compl. ¶248, p. 41).

  • Identified Points of Contention:
    • Scope Questions: A principal dispute may arise over the interpretation of Claim 1's requirement that the arm carriage and power unit be "switched between said first and second mounting locations." The case may turn on whether the accused device's mechanism for adapting to a left or right arm meets this claimed structural limitation, or if it uses a different, non-infringing design.
    • Technical Questions: For method Claim 22, a key question will be evidentiary: does the operation of the Accused Shoulder Device meet the "selectively discouraging relative movement" limitations? The complaint lacks technical detail on how the accused device is locked or constrained during use, which will likely be a focus of discovery and expert testimony.

V. Key Claim Terms for Construction

  • The Term: "switched between said first and second mounting locations" (from Claim 1)

    • Context and Importance: This phrase captures the essential modular and ambidextrous nature of the claimed apparatus. Whether the Accused Shoulder Device is found to infringe Claim 1 will likely depend heavily on how this limitation is construed.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that "the positions of the arm carriage 50 and the power unit can be interchanged relative to the main frame," which could be argued to encompass any mode of reconfiguration for left/right arm use (’289 Patent, col. 5:16-20).
    • Intrinsic Evidence for a Narrower Interpretation: The figures and detailed description show a specific embodiment where components are physically detached from one side of the frame and reattached to the other (’289 Patent, Figs. 1-2, 10, 15). A defendant may argue that "switched" requires this specific process of detachment and re-mounting at distinct, physically separate locations.

  • The Term: "selectively discouraging relative movement" (from Claim 22)

    • Context and Importance: This functional language appears in multiple steps of the method claim and is crucial for defining the claimed therapeutic motions. Infringement of Claim 22 hinges on whether using the accused device involves actively "discouraging" movement in the specific manner required.
    • Intrinsic Evidence for a Broader Interpretation: The term itself is not structurally limiting. Plaintiff may argue that it covers any mechanism—such as a brake, lock, or physical stop—that restricts one degree of freedom while permitting another.
    • Intrinsic Evidence for a Narrower Interpretation: The patent discloses a specific "pivot fixing pin 89" that is inserted into different holes to lock certain movements (’289 Patent, Fig. 13; col. 7:51-64). Defendants may argue that "selectively discouraging" should be limited to a discrete, user-activated locking mechanism as shown in the preferred embodiment, not merely an inherent physical constraint of the device's geometry.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement of at least method Claim 22 (Compl. ¶¶570, 576). Inducement is based on allegations that Defendants market, advertise, and provide instructions to doctors and patients on how to use the Accused Shoulder Device in an infringing manner (Compl. ¶¶569, 571). The complaint cites a website statement that a defendant "agrees to properly instruct the patient and/or caregiver on the proper use," which may be used as evidence of specific intent to induce (Compl. ¶214). Contributory infringement is based on the allegation that the device has no substantial non-infringing use (Compl. ¶575).
  • Willful Infringement: The complaint alleges that Defendants had knowledge of the ’289 Patent and willfully infringed (Compl. ¶565). The basis for this allegation is extensive, citing alleged pre-suit knowledge from: (1) a December 2013 meeting where key defendants allegedly observed the patented device marked with the patent number (Compl. ¶¶154, 159); (2) Defendants’ own patent prosecution, where they cited Plaintiff's website in an Information Disclosure Statement in 2015 (Compl. ¶563); and (3) a 2016 internal OneDirect memorandum acknowledging "careful inspection of the ERMI line of products" (Compl. ¶¶198-199).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of structural correspondence: Can Plaintiff demonstrate that the Accused Shoulder Device contains the specific modular architecture of Claim 1, particularly the distinct "first and second mounting locations" between which the arm carriage and power unit are "switched," or will Defendants show that their device achieves ambidextrous functionality through a materially different design that falls outside the claim's scope?
  • A key evidentiary question will be one of deliberate copying versus independent design: Given the complaint's detailed allegations of Defendants' prior knowledge of the patent, direct observation of the commercial product, and internal competitive analyses, a central theme of the case will be whether the Accused Devices were the result of a willful effort to copy a known, patented product, or the result of legitimate, independent development. The resolution of this question will be critical to the issue of willfulness and potential enhanced damages.