DCT
2:21-cv-00500
Composite Resources Inc v. John Caleb Rood JR
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Composite Resources, Inc. (South Carolina)
- Defendant: John Caleb Rood, Jr. (Idaho)
- Plaintiff’s Counsel: Snell & Wilmer L.L.P.
- Case Identification: 2:21-cv-00500, D. Idaho, 12/17/2021
- Venue Allegations: Venue is based on Defendant’s residency and business activities within the Northern District of Idaho.
- Core Dispute: Plaintiff alleges that Defendant, an officer of Recon Medical, LLC, is personally liable for the company's infringement of patents related to one-handed emergency tourniquets, citing a prior jury verdict against the company.
- Technical Context: The technology concerns windlass-style emergency tourniquets designed for one-handed application to stop arterial bleeding in a limb.
- Key Procedural History: This action follows a prior lawsuit filed by Plaintiff against Defendant’s company, Recon Medical, LLC (Recon), in the District of Nevada. In that case, a jury found Recon’s products infringed the patents-in-suit, and the court granted judgment as a matter of law that the patents were valid. The current complaint seeks to hold Defendant personally liable for Recon's infringing acts, alleging he directed the infringement both before and after the verdict. Plaintiff asserts that the outcome of the prior case collaterally estops Defendant from challenging ownership, validity, or infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-08 | Priority Date for ’067 and ’807 Patents |
| 2007-08-28 | Priority Date for ’253 Patent |
| 2010-11-30 | Issue Date for U.S. Patent No. 7,842,067 |
| 2011-02-22 | Issue Date for U.S. Patent No. 7,892,253 |
| 2014-11-18 | Issue Date for U.S. Patent No. 8,888,807 |
| 2016-04-01 | Alleged Infringement by Recon Begins |
| 2016-06-01 | Defendant allegedly on notice of patent issues |
| 2016-12-13 | Defendant allegedly received actual notice of infringement |
| 2017-01-27 | Plaintiff filed prior civil action against Recon |
| 2019-12-26 | Recon admitted Plaintiff's ownership of patents in prior action |
| 2021-12-02 | D. Nev. court finds patents valid (JMOL); jury finds infringement by Recon |
| 2021-12-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,842,067 (the ’067 Patent) - “Tourniquet and Method of Use,” Issued Nov. 30, 2010
The Invention Explained
- Problem Addressed: The patent describes that prior art tourniquets can apply uneven pressure, which may pinch soft tissues or fail to stop arterial blood flow even at high tension, increasing the risk of nerve and muscle injury (’067 Patent, col. 1:26-44).
- The Patented Solution: The invention proposes a tourniquet with two main components: an outer sleeve that contacts the limb and a separate inner strap that slides within the sleeve. A windlass (a rod-like tensioning mechanism) is used to twist and tighten only the inner strap. This design separates the tensioning element from the limb-contacting surface, which is intended to distribute compressive force more evenly and effectively around the limb (’067 Patent, col. 2:2-13, Figs. 4-5).
- Technical Importance: This dual-sleeve design represented an approach to mitigate tissue damage and improve the effectiveness of one-handed tourniquets, a critical factor for soldiers or individuals in emergency situations without immediate medical aid (’067 Patent, col. 1:20-25).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-11 and 17 (Compl. ¶22).
- Independent Claim 1 recites the core apparatus:
- An outer sleeve.
- An inner strap in slidable engagement with the outer sleeve and anchored to it.
- A windlass connected to the inner strap, which is rotated to twist and shorten the inner strap’s effective length.
- A restraining mechanism (e.g., a buckle) connected to the outer sleeve for looping it.
- The inner strap forms a continuous loop from one end of the outer sleeve to the windlass and back.
- Applying tensile force to the inner strap via the windlass creates a radial compressive force on the body part.
- The complaint reserves the right to assert other claims (Compl. ¶22).
U.S. Patent No. 7,892,253 (the ’253 Patent) - “Tourniquet and Method of Use,” Issued Feb. 22, 2011
The Invention Explained
- Problem Addressed: The patent addresses the same general problems as the ’067 Patent but focuses on the risk of the tourniquet’s outer sleeve accidentally loosening or disengaging from its buckle, especially when a user is being moved or is crawling (’253 Patent, col. 10:15-24).
- The Patented Solution: While retaining the inner/outer strap system, this invention adds specific features to the buckle. The buckle includes at least one "tooth" or set of teeth that project into the path of the outer sleeve. These teeth are designed to engage the fabric of the outer sleeve, increasing drag and providing a safety mechanism to prevent it from slipping out of the buckle (’253 Patent, col. 10:11-15, Fig. 14).
- Technical Importance: This innovation adds a layer of security to the tourniquet, aiming to ensure it remains tightly fastened even under adverse conditions, thereby improving its reliability in emergency and field settings (’253 Patent, col. 10:20-24).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2 and dependent claims 3-5 and 8-11, and alleges inducement of claim 12 (Compl. ¶23-24, ¶82).
- Independent Claim 2 recites an apparatus including:
- An outer sleeve.
- A buckle connected to the outer sleeve, comprising an intermediate bar and "at least one first tooth" situated on a sidewall of the bar.
- The outer sleeve interacts with the tooth to prevent disengagement.
- An inner strap in slidable engagement with the outer sleeve.
- A windlass connected to the inner strap to apply a compressive force.
- The complaint reserves the right to assert other claims (Compl. ¶23).
Multi-Patent Capsule
U.S. Patent No. 8,888,807 (the ’807 Patent) - “Tourniquet and Method of Use,” Issued Nov. 18, 2014
- Technology Synopsis: As a divisional of the application that led to the ’067 Patent, this patent claims a method of making a tourniquet. The claimed method includes the steps of anchoring a first elongated member (outer sleeve) to a second elongated member (inner strap), interconnecting a bendable base, and connecting a tensioning mechanism like a windlass.
- Asserted Claims: Independent claims 1, 10, 17, and 23, among others (Compl. ¶25).
- Accused Features: The complaint alleges that Recon’s tourniquets were made by a method covered by the ’807 Patent claims and were subsequently imported into and sold in the U.S., constituting infringement under 35 U.S.C. § 271(g) (Compl. ¶25, ¶70).
III. The Accused Instrumentality
Product Identification
- The accused products are tourniquets referred to as "Recon GEN 1," "Recon GEN 2," "Recon GEN 3," and "Recon GEN 4" (collectively, the "Accused Products") (Compl. ¶22, ¶23, ¶25).
Functionality and Market Context
- The complaint does not provide specific technical details on the operation of the Accused Products. It alleges they are tourniquets that were imported, offered for sale, and sold in the United States (Compl. ¶13).
- The complaint alleges the Accused Products were sold through channels including Amazon.com and the website www.reconmedical.com (Compl. ¶5, ¶12). It further alleges that these products were sold in direct competition with Plaintiff’s own "COMBAT APPLICATION TOURNIQUET®" products (Compl. ¶38).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or detailed technical mappings. The infringement allegations are based on general assertions that the Accused Products practice the claimed inventions and are supported by the jury verdict in the prior litigation against Recon.
’067 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) an outer sleeve | The complaint alleges the Accused Products contain an outer sleeve. | ¶22 | col. 4:57-64 |
| (b) an inner strap in slidable engagement with the outer sleeve | The complaint alleges the Accused Products contain an inner strap that slides within the outer sleeve. | ¶22 | col. 5:5-14 |
| (c) a windlass connected to the inner strap | The complaint alleges the Accused Products contain a windlass to tighten the inner strap. | ¶22 | col. 7:1-6 |
| (d) a restraining mechanism connected to the outer sleeve | The complaint alleges the Accused Products contain a buckle for looping the outer sleeve. | ¶22 | col. 4:6-14 |
| wherein the inner strap forms a continuous loop | The complaint alleges the Accused Products contain an inner strap forming a continuous loop. | ¶22 | col. 5:11-13 |
’253 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (b) a buckle connected to the second end of the outer sleeve, the buckle comprising... at least one first tooth | The complaint alleges the Accused Products contain a buckle with at least one tooth. | ¶23 | col. 9:56-65 |
| whereby the outer sleeve interacts with the at least one tooth to prevent the outer sleeve from disengaging from the buckle | The complaint alleges the Accused Products' outer sleeve interacts with the tooth to prevent disengagement. | ¶23 | col. 10:11-24 |
| (c) an inner strap in slidable engagement with the outer sleeve | The complaint alleges the Accused Products contain a sliding inner strap. | ¶23 | col. 6:55-59 |
| (d) a windlass connected to the inner strap | The complaint alleges the Accused Products contain a windlass. | ¶23 | col. 7:51-54 |
- Identified Points of Contention:
- Legal Question (Personal Liability): The primary point of contention is not the technical act of infringement by Recon's products, which Plaintiff argues was established in prior litigation (Compl. ¶35), but whether Defendant Rood can be held personally liable for that infringement. The case will depend on evidence that he personally participated in or directed the infringing acts.
- Legal Question (Collateral Estoppel): A threshold issue will be whether the prior verdict against Recon collaterally estops Defendant, as a 50% owner and manager allegedly in privity with the company, from re-litigating the issues of infringement and validity (Compl. ¶50, ¶62, ¶74).
- Technical Question (Evidence): While the complaint relies on the prior verdict, a factual question remains whether Plaintiff can produce sufficient evidence in this case to map the specific features of the Accused Products to the claim limitations, as the complaint itself lacks such detailed allegations.
V. Key Claim Terms for Construction
Term: "inner strap in slidable engagement with the outer sleeve" (’067 Patent, Claim 1)
- Context and Importance: This phrase describes the core functional relationship of the invention. The scope of "slidable engagement" will determine whether a wide or narrow range of dual-component tourniquets infringes. Practitioners may focus on this term because its construction defines the central mechanism of the patented invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the relationship generally, stating the inner strap "can slide within the interior space 44 of the outer sleeve 14" (’067 Patent, col. 5:21-22), which could support a construction covering any structure where one strap moves within a channel formed by another.
- Evidence for a Narrower Interpretation: The embodiments consistently show the outer sleeve formed from two panels of material seamed together to create a pocket for the inner strap (’067 Patent, Fig. 4, col. 4:57-64). This could support a narrower construction limited to a strap-within-a-pocket configuration.
Term: "at least one first tooth" (’253 Patent, Claim 2)
- Context and Importance: This term represents the key improvement claimed in the ’253 Patent. Its definition is critical for distinguishing the invention from prior art buckles and for determining infringement. Practitioners may focus on this term because it is the asserted point of novelty over the parent ’067 patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires a "tooth" that interacts with the outer sleeve to "prevent... disengaging," suggesting a functional definition. This could be argued to cover any projection, nub, or high-friction surface inside the buckle that performs this function.
- Evidence for a Narrower Interpretation: The specification and figures depict very specific structures for the teeth, including a "top surface," an "inclined surface," and a "projection" (’253 Patent, col. 9:56-65, Fig. 14). This could support a narrower construction limited to structures with these specific geometric features.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant actively induced infringement by Recon and others (Compl., Count V). The factual basis includes Defendant’s alleged direction and control over Recon (Compl. ¶13), his knowledge of the patents from the prior litigation (Compl. ¶16), and his alleged direction to sell infringing products through various channels (Compl. ¶40).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's knowledge of the patents and the prior lawsuit. It specifically alleges that Defendant received actual notice as early as December 2016 (Compl. ¶16) and that he "willfully and deliberately directed RECON to continue to infringe" even after the December 2, 2021 jury verdict found Recon's products to be infringing (Compl. ¶51, ¶63). The allegation that Defendant directed a 60% price reduction to increase infringing sales post-verdict is presented as evidence of willfulness (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of personal liability: can Plaintiff produce sufficient evidence to hold Defendant Rood personally liable for the infringing acts of his company, Recon, either by proving he personally directed or induced the infringement or by piercing the corporate veil?
- A key legal question will be the preclusive effect of prior litigation: to what extent does the infringement verdict and validity finding against Recon in the Nevada case collaterally estop Defendant, as an individual officer, from re-litigating those same issues?
- A critical factual question for damages will be willfulness: does the evidence, particularly the allegations of continued and increased infringement after the prior jury verdict, support a finding of willful infringement by the Defendant, which could expose him to enhanced damages?