DCT
1:18-cv-01456
PR Mfg Enterprises LLC v. Northwest Podiatric Laboratory Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: PR Manufacturing Enterprises, LLC d/b/a PAL Health Technologies, LLC (Illinois)
- Defendant: Northwest Podiatric Laboratories, Inc. (Washington)
- Plaintiff’s Counsel: Michael Evans Law Group, LLC
- Case Identification: 1:18-cv-01456, C.D. Ill., 12/26/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant actively seeks to sell its products to residents of Illinois and the judicial district and maintains a website offering products for sale to residents therein.
- Core Dispute: Plaintiff seeks a declaratory judgment that its foot orientation apparatus does not infringe Defendant’s patents related to an apparatus and method for imaging feet for the creation of custom orthotics.
- Technical Context: The technology concerns devices that hold a patient's foot in a specific, neutral position to allow for accurate 3D imaging, which is then used to manufacture custom orthotic inserts.
- Key Procedural History: The complaint was filed in response to a series of demand letters from Defendant sent between July and December 2018, which alleged infringement and demanded that Plaintiff cease its activities. This correspondence is cited by the Plaintiff to establish the existence of an actual and justiciable controversy, a prerequisite for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2010-08-31 | Priority Date for ’081, ’696, and ’027 Patents |
| 2013-10-29 | U.S. Patent No. 8,567,081 Issues |
| 2015-11-24 | U.S. Patent No. 9,194,696 Issues |
| 2017-10-03 | U.S. Patent No. 9,778,027 Issues |
| 2018-07-19 | Defendant sends first demand letter to Plaintiff |
| 2018-08-15 | Plaintiff responds to Defendant's letter |
| 2018-10-16 | Defendant sends second demand letter to Plaintiff |
| 2018-10-24 | Plaintiff responds to Defendant's second letter |
| 2018-12-11 | Defendant sends third demand letter to Plaintiff |
| 2018-12-26 | Plaintiff files Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,567,081 - Apparatus and Method for Imaging Feet, issued October 29, 2013
The Invention Explained
- Problem Addressed: The patent describes that prior methods for creating custom orthotics, such as plaster casting, were labor-intensive and time-consuming. Newer optical scanning methods often failed to produce satisfactory results because they either distorted the soft tissues of the foot (e.g., by pressing it against a glass plate) or failed to hold the foot's bone structure in the correct "neutral position" with the midtarsal joint "locked" (’081 Patent, col. 1:45-col. 2:68).
- The Patented Solution: The invention is an apparatus that suspends the foot in space for optical imaging. It uses a support member that engages the plantar surface "substantially only in the immediate area of the fifth metatarsal head," which applies a dorsally-directed load to lock the midtarsal joint. A heel stirrup and a laser reference line are used to align the foot and hold the subtalar joint in a neutral condition, thereby allowing for an accurate scan without distorting the foot's structure (’081 Patent, Abstract; col. 6:55-65).
- Technical Importance: This approach sought to combine the accuracy of traditional casting methods with the speed and efficiency of digital scanning by ensuring the foot was held in a biomechanically ideal, non-weight-bearing position during the scan (’081 Patent, col. 2:50-68).
Key Claims at a Glance
- The complaint seeks a judgment of non-infringement of all claims (’081 Patent, Compl. ¶18). Independent claim 1 is representative.
- Independent Claim 1 elements:
- An imaging section for optically measuring contours of a foot's plantar surface.
- An alignment section for orientating the foot relative to the imaging section.
- The alignment section comprises:
- "at least one support member for engaging said plantar surface of said foot substantially only beneath a lateral forefoot area of said foot".
- "means for moving said foot relative to said at least one support member so that said lateral forefoot area of said foot is reactively loaded in a dorsal direction by said support member so as to lock a metatarsal joint of said foot".
U.S. Patent No. 9,194,696 - Apparatus and Method for Imaging Feet, issued November 24, 2015
The Invention Explained
- Problem Addressed: As a continuation of the ’081 Patent, the ’696 Patent addresses the same problem: obtaining accurate, non-distorted 3D measurements of a foot for orthotic manufacturing by holding it in a proper, non-weight-bearing alignment (’696 Patent, col. 2:45-68).
- The Patented Solution: The ’696 patent claims an apparatus with similar components to the ’081 Patent, including an imaging section and an alignment section. The solution again focuses on using a support member that engages "substantially only beneath a lateral forefoot area" and is "adjustable relative to said foot" to achieve a reactive loading that locks the midtarsal joint without distorting the foot's overall shape (’696 Patent, Abstract; col. 6:55-65).
- Technical Importance: The invention provides a specific mechanical structure for achieving the desired clinical foot position for scanning, aiming to improve the quality and functional effectiveness of the resulting custom orthotics (’696 Patent, col.2:56-62).
Key Claims at a Glance
- The complaint seeks a judgment of non-infringement of all claims (’696 Patent, Compl. ¶18). Independent claim 1 is representative.
- Independent Claim 1 elements:
- An imaging section that optically measures contours of a foot's plantar surface.
- An alignment section that orientates the foot relative to the imaging section.
- The alignment section comprises:
- "at least one support member that engages said plantar surface of said foot substantially only beneath a lateral forefoot area of said foot".
- The support member is "adjustable relative to said foot to a position in which said lateral forefoot area of said foot is reactively loaded in a dorsal direction by said support member so as to lock a metatarsal joint of said foot".
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 9,778,027, Apparatus and Method for Imaging Feet, issued October 3, 2017.
- Technology Synopsis: As a continuation-in-part of the prior patents, the ’027 patent describes a similar foot imaging apparatus. It introduces claims for a portable and collapsible frame assembly, comprising upright and horizontal sections connected by a hinge, to improve transportability and storage of the device while retaining the core functionality of aligning and scanning the foot (’027 Patent, col. 4:60-68; col. 17:26-34).
- Asserted Claims: The complaint seeks a judgment of non-infringement of all claims (’027 Patent, Compl. ¶18). Independent claims 1 and 17 are representative.
- Accused Features: Plaintiff's "foot orientation apparatus" is the subject of the non-infringement claim (Compl. ¶¶ 8, 27). The complaint's arguments about the fixed heel support and wide forefoot support apply to all asserted patents (Compl. ¶¶ 20-21).
III. The Accused Instrumentality
Product Identification
Plaintiff's "foot orientation apparatus" (Compl. ¶8).
Functionality and Market Context
- The Plaintiff's apparatus is offered to its customers to facilitate "holding a patient's foot in neutral position so as to optimize the fit and function of Plaintiff's custom orthotics" (Compl. ¶8).
- The complaint alleges the apparatus uses a "fixed heel support" and a "forefoot support that extends across all or most of the width of the forefoot" (Compl. ¶21). It is also described as having a forefoot support that is "tensioned to set the foot in neutral position" (Compl. ¶21). These features form the basis for Plaintiff's non-infringement argument.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The following tables summarize the Plaintiff's non-infringement arguments as presented in the complaint.
’081 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one support member for engaging said plantar surface of said foot substantially only beneath a lateral forefoot area of said foot | Plaintiff's apparatus uses a forefoot support "that extends across all or most of the width of the forefoot" (Compl. ¶21). | ¶21 | col. 13:54-58 |
| means for moving said foot relative to said at least one support member so that said lateral forefoot area... is reactively loaded... | Plaintiff’s apparatus uses a "fixed heel support," which differs from the patent's disclosure of a "moveable heel support" (Compl. ¶¶20-21). | ¶¶20, 21 | col. 4:6-14 |
’696 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one support member that engages said plantar surface of said foot substantially only beneath a lateral forefoot area of said foot | Plaintiff's apparatus uses a forefoot support "that extends across all or most of the width of the forefoot" (Compl. ¶21). | ¶21 | col. 14:1-5 |
| said at least one support member being adjustable relative to said foot to a position in which said lateral forefoot area... is reactively loaded... | Plaintiff’s apparatus uses a "fixed heel support," which differs from the patent's disclosure of a "moveable heel support" (Compl. ¶¶20-21). | ¶¶20, 21 | col. 14:5-10 |
- Identified Points of Contention:
- Scope Question (Forefoot Support): A central dispute will be whether Plaintiff's forefoot support that "extends across all or most of the width of the forefoot" (Compl. ¶21) falls outside the scope of the claim term "substantially only beneath a lateral forefoot area" (’081 Patent, Claim 1). The outcome may depend on how broadly "substantially only" is construed.
- Functional/Structural Question (Heel Support): A second key dispute will be whether Plaintiff's "fixed heel support" (Compl. ¶21) fails to meet the "means for moving said foot" limitation of the ’081 patent or the "adjustable relative to said foot" limitation of the ’696 patent. The complaint frames the patented invention as requiring a "moveable heel support" (Compl. ¶20), a characterization the defendant will likely contest.
V. Key Claim Terms for Construction
The Term: "substantially only beneath a lateral forefoot area" (’081 Patent, Claim 1)
Context and Importance: This term is critical because the Plaintiff's primary non-infringement argument is that its forefoot support is wider than what is claimed, allegedly extending "across all or most of the width of the forefoot" (Compl. ¶21). The definition of "substantially only" and "lateral forefoot area" will determine if there is a literal mismatch.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not appear to explicitly define the term. A party arguing for a broader scope might contend that "substantially" allows for some deviation and that the key inventive concept is avoiding pressure on the medial aspect, not the precise width of the support.
- Evidence for a Narrower Interpretation: The specification repeatedly emphasizes engaging the "fifth metatarsal head" specifically (’081 Patent, Abstract; col. 8:50-52). The abstract states the support engages the plantar surface "substantially only in the immediate area of the fifth metatarsal head," which suggests a very localized, lateral-only point of contact.
The Term: "means for moving said foot relative to said at least one support member" (’081 Patent, Claim 1)
Context and Importance: This is a means-plus-function claim element. Its scope is tied to the structures disclosed in the specification for performing the stated function. Plaintiff alleges its "fixed heel support" (Compl. ¶21) does not perform this function or is structurally different from the disclosed means, which it characterizes as a "moveable heel support" (Compl. ¶20).
Intrinsic Evidence for Interpretation:
- Structure disclosed in the Specification: The specification describes several structures for performing this function, including a rolling chassis with casters that moves the entire apparatus relative to the patient (’081 Patent, col. 9:26-54), and an adjustable V-shaped heel stirrup (’081 Patent, col. 8:6-24; Fig. 3). The analysis will focus on whether the plaintiff's "fixed" system is structurally equivalent to these disclosed "moveable" systems. A party arguing for a narrower interpretation would argue the claims require a physically adjustable or rolling component, which Plaintiff's system allegedly lacks.
VI. Other Allegations
The complaint is for declaratory judgment of non-infringement and does not contain allegations of infringement against the Defendant.
- Indirect Infringement: Not applicable.
- Willful Infringement: Not applicable.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on two dispositive questions of claim interpretation and application:
- A core issue will be one of definitional scope: Does the term "substantially only beneath a lateral forefoot area," which the patent specification links to the fifth metatarsal head, read on a forefoot support that the Plaintiff alleges "extends across all or most of the width of the forefoot"?
- A key issue will be one of structural and functional comparison: Does the Plaintiff's apparatus, with its allegedly "fixed heel support," contain a structure that is the same as or equivalent to the "means for moving said foot" (e.g., a rolling chassis or adjustable stirrup) disclosed in the Defendant’s patents?