DCT
1:19-cv-02217
Ermi LLC v. Graymont Equipment Distribution LLC
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: 1:19-cv-02217, N.D. Ill., 04/01/2019
- Venue Allegations: Venue is alleged as proper in the Northern District of Illinois because both Defendants are Illinois entities with their principal places of business in the district, and because a substantial portion of the infringing activities, including sales and distribution, are alleged to have occurred there.
- Core Dispute: Plaintiff alleges that Defendants’ T-Rex Orbit for Shoulder medical device, used for post-injury physical therapy, infringes a patent related to a shoulder motion control apparatus.
- Technical Context: The technology concerns mechanical therapy devices that enable patients to regain range of motion in their shoulder joints, particularly for abduction and external rotation, through patient-controlled application of force.
- Key Procedural History: The complaint alleges a detailed history suggesting pre-suit knowledge, including that the founder of the company that developed the accused device, T-Rex Rehab, met with Plaintiff and was exposed to Plaintiff's patented commercial product in 2013, prior to founding his company in 2014. The complaint further alleges that this individual cited Plaintiff’s website in his own patent prosecution filings. The patent-in-suit’s originally filed claims 1-6 were allowed without rejection, a fact Plaintiff highlights that may be used to argue the patent’s strength against certain validity challenges.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-13 | U.S. Patent No. 7,547,289 priority date (provisional filing) |
| 2002-12-13 | U.S. Patent No. 7,547,289 non-provisional application filed |
| 2006-01-13 | First Office Action issued, allowing Claims 1-6 |
| 2009-03-16 | Notice of Allowance issued for the ’289 Patent |
| 2009-06-16 | U.S. Patent No. 7,547,289 issues |
| 2012-10-01 | First Maintenance Fee paid for the ’289 Patent |
| 2013-11-07 | T-Rex Rehab founder allegedly contacts Plaintiff ERMI |
| 2013-12-13 | T-Rex Rehab founder allegedly meets with Plaintiff and views its patented device |
| 2014-05-XX | T-Rex Rehab, LLC founded |
| 2016-12-01 | Second Maintenance Fee paid for the ’289 Patent |
| 2019-04-01 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,547,289 - "Shoulder Extension Control Device"
- Patent Identification: U.S. Patent No. 7,547,289, "Shoulder Extension Control Device," issued June 16, 2009 (the "’289 Patent").
The Invention Explained
- Problem Addressed: Following a shoulder injury or surgery, scar formation and the shortening of ligaments and muscles can lead to a significant loss of the joint's range of motion (’289 Patent, col. 1:39-44). While manual therapy from a professional is one treatment, the patent identifies a need for mechanical devices that allow a patient to personally manage their stretching regimen to regain motion and potentially avoid further surgery (’289 Patent, col. 2:1-6).
- The Patented Solution: The invention is a therapeutic apparatus designed to be mounted to a chair, which allows a user to control the manipulation of their own shoulder joint (’289 Patent, col. 2:18-20). The core of the apparatus consists of an "arm carriage" to hold the patient's arm and a "power unit" that applies force via a linkage. A key inventive concept is the modularity of the design; the arm carriage and power unit can be detached and "switched between said first and second mounting locations" on the device's frame, allowing the same apparatus to be configured for therapy on either the left or the right arm (’289 Patent, Abstract; col. 2:29-36). As shown in Figures 3 and 4, the device is configurable to provide distinct therapeutic motions, namely abduction (lifting the arm out to the side) and external rotation.
- Technical Importance: The device provides a method for "complete patient control" over shoulder therapy, which was presented as a desirable alternative to therapist-led sessions or more invasive surgical treatments (’289 Patent, col. 2:14-18).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 22 (method) (”72”).
- Independent Claim 1 (Apparatus) essential elements:
- A frame with spaced apart first and second mounting locations.
- An arm carriage, mounted to one location, to manipulate the user's shoulder joint.
- A power unit, mounted to the other location, to provide power under the user's control.
- A linkage to transfer power from the power unit to the arm carriage.
- A configuration that allows the arm carriage and power unit to be switched between the mounting locations to operate in alternating modes for the right and left arms.
- Independent Claim 22 (Method) essential elements:
- Providing an apparatus with a frame, a seat, a pivotable upper arm assembly, and a pivotable forearm assembly.
- Securing the user's forearm to the forearm assembly.
- A sequence of steps involving selectively discouraging and allowing relative movement between the assemblies and the frame to create distinct therapeutic motions of abduction/adduction and external rotation at the shoulder.
- The complaint asserts infringement of "at least one claim" and reserves the right to pursue infringement under the Doctrine of Equivalents (Compl. ¶74, 75).
III. The Accused Instrumentality
Product Identification
- The accused product is the "T-Rex Orbit for Shoulder" (the "Accused Device") (Compl. ¶6).
Functionality and Market Context
- The complaint alleges the Accused Device is a medical device used for shoulder therapy that is manufactured and/or distributed by the Defendants (Compl. ¶6, 44, 55, 63). The complaint attaches as Exhibit 2 a picture of the device, showing a chair-mounted apparatus with an arm support structure (Compl. ¶6).
- The complaint alleges that the device is advertised on Defendants' websites and through commercial brochures which are distributed to consumers (Compl. ¶46, 49, 57, 65). One such brochure, referenced as Exhibit 6, allegedly contains images of both the Accused Device and Plaintiff's own patented "ERMI Shoulder Flexionater®" device (Compl. ¶60, 68).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Device embodies the limitations of Claims 1 and 22 but does not provide a detailed, element-by-element technical mapping or an explicit claim chart (Compl. ¶73). The following charts are constructed based on the complaint's general allegations.
’289 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a frame including spaced apart first and second mounting locations | The Accused Device is alleged to be an apparatus that embodies the elements of Claim 1, including a frame. | ¶6, 73 | col. 4:21-26 |
| an arm carriage configured to manipulate said shoulder joint...mounted to one of said first and second mounting locations | The Accused Device is alleged to possess an arm carriage for shoulder manipulation. | ¶6, 73 | col. 2:21-24 |
| a power unit configured to provide power upon control by said user...mounted to the other of said first and second mounting locations | The Accused Device is alleged to incorporate a power unit controlled by the user. | ¶6, 73 | col. 2:25-28 |
| a linkage intermediate said arm carriage and said power unit...configured to transfer power | The Accused Device is alleged to include a linkage to transfer power between its components. | ¶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...for the right arm...and...the left arm | The complaint alleges the Accused Device embodies this claim, suggesting it possesses a feature allowing it to be reconfigured for use on either the user's left or right arm. | ¶73 | col. 2:30-36 |
’289 Patent Infringement Allegations (Claim 22)
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A) providing an apparatus itself comprising: 1) a frame; 2) a seat...; 3) an upper arm assembly...; 4) a forearm assembly... | Defendants are alleged to provide the Accused Device, an apparatus for shoulder manipulation, to end users. | ¶6, 81 | col. 6:1-8 |
| B) securing the forearm of a user to said forearm assembly; | Defendants are alleged to instruct users to perform the claimed method, which includes securing their forearm. A brochure for the Accused Device is referenced as Exhibit 6. | ¶49, 83, 85 | col. 6:9-10 |
| D) pivoting said upper arm assembly...such that abduction/adduction of the shoulder is created; | The Accused Device is allegedly used by patients, as instructed by Defendants, to perform therapeutic motions including abduction/adduction. | ¶76, 83, 84 | col. 6:17-21 |
| F) pivoting said forearm assembly...such that external rotation is created at said shoulder. | The Accused Device is allegedly used by patients, as instructed by Defendants, to perform therapeutic motions including external rotation. | ¶76, 83, 84 | col. 6:28-33 |
Identified Points of Contention
- Technical Questions: The complaint makes conclusory allegations that the Accused Device "embodies" the claims without providing specific technical facts mapping product features to claim limitations. A central question will be whether discovery reveals that the Accused Device actually operates in the manner required by the claims. For example, what evidence shows that the Accused Device performs the specific sequence of "selectively discouraging" and allowing movement as recited in steps C, D, E, and F of Claim 22?
- Scope Questions: For Claim 1, a key dispute may arise over the meaning of "switched between said first and second mounting locations." Does the Accused Device achieve ambidexterity through a different mechanism that falls outside this specific structural limitation (e.g., via symmetrical design rather than re-mounting components)? The complaint does not provide sufficient detail to analyze this point.
V. Key Claim Terms for Construction
"switched between said first and second mounting locations" (Claim 1)
- Context and Importance: This term is central to the apparatus claim's theory of modularity and ambidexterity. The infringement analysis for Claim 1 will depend on whether the Accused Device's method for accommodating both left and right arms falls within the scope of this language. Practitioners may focus on this term to determine if the accused product was designed around this specific structural feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, describing the ability to be "switched." A party might argue this covers any configuration change that achieves the alternating modes for left and right arm use, not just the specific one in the embodiment.
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the arm carriage (50) and power unit (90) are selectively detachable and can be physically moved and re-mounted to side-mounting members (44) on opposite sides of the frame (’289 Patent, col. 9:5-10; col. 10:5-18). A party could argue the term should be limited to this physical re-mounting of components.
"selectively discouraging relative movement" (Claim 22)
- Context and Importance: This functional language appears in multiple steps of the method claim and is key to how the apparatus isolates and creates specific therapeutic motions (abduction vs. external rotation). The dispute will hinge on what mechanism in the Accused Device performs this "discouraging" function and whether that mechanism is covered by a proper construction of the term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional and does not specify a mechanism. A party could argue it broadly covers any technique for temporarily restricting or preventing movement, such as using a brake, a clutch, or a software control, not just a physical lock.
- Evidence for a Narrower Interpretation: The specification discloses a specific mechanical solution: the use of a "pivot-fixing pin 89" that is inserted into different holes to lock certain rotational movements while allowing others (’289 Patent, col. 10:5-11; Fig. 13). A party could argue that "discouraging" should be construed in light of this disclosed embodiment, requiring a mechanical locking pin or a similar structure.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement of method Claim 22 (Compl. ¶¶82, 88). The inducement allegation is based on Defendants allegedly marketing, demonstrating, and distributing the Accused Device with instructions for use to doctors and patients (Compl. ¶¶81, 83, 85). Contributory infringement is supported by the allegation that the Accused Device is a special-purpose tool with "no substantial non-infringing use" (Compl. ¶87).
Willful Infringement
- The complaint alleges willful infringement based on both pre- and post-suit knowledge (Compl. ¶77). The pre-suit knowledge allegations are particularly detailed, citing a 2013 meeting where the alleged originator of the accused product was exposed to Plaintiff’s patented device, as well as Defendants' alleged familiarity with Plaintiff's product at trade shows and awareness of brochures that pictured both products (Compl. ¶¶37-38, 60-62, 68-70).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Proof of Infringement: A primary issue will be one of evidentiary sufficiency. Can the Plaintiff, through discovery, produce technical evidence demonstrating that the Accused Device’s structure and operation meet the specific limitations of the asserted claims, particularly given the complaint’s currently conclusory infringement allegations?
- Definitional Scope: The case will likely involve a critical question of claim construction, centered on whether the term "switched between...mounting locations" in Claim 1 can be construed to read on the specific design of the Accused Device, or if the Accused Device employs a non-infringing alternative for achieving ambidexterity.
- Willfulness and Intent: Should infringement be established, a key battleground will be willfulness. The complaint constructs a compelling narrative of alleged copying based on pre-suit exposure to the patented product, raising the question of whether Defendants' conduct was objectively reckless, which could expose them to enhanced damages.