DCT
1:19-cv-12269
Ultra Athlete LLC v. Araujo
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultra Athlete, LLC (Indiana)
- Defendant: Jalmar Araujo, and JB Sports, LLC dba/ FLEXIBRACE (Massachusetts)
- Plaintiff’s Counsel: YURKO, SALVESEN & REMZ, P.C.
- Case Identification: 1:19-cv-12269, D. Mass., 11/05/2019
- Venue Allegations: Venue is based on Defendants' residence and regular and established place of business in Massachusetts, as well as the marketing, sale, and delivery of accused products within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s "Flexibrace" ankle brace products infringe two utility patents and one design patent related to articulating ankle braces with flexible cuffs and specific strapping mechanisms.
- Technical Context: The technology resides in the field of orthopedic and athletic support devices, which aim to provide ankle stability and prevent injury while allowing for a natural range of motion.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with actual notice of the patents-in-suit and the alleged infringement via a certified letter on July 6, 2017. This pre-suit notice is a factual predicate for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-18 | Priority Date for '578 and '017 Patents |
| 2004-06-15 | U.S. Patent No. 6,749,578 Issue Date |
| 2005-02-22 | U.S. Patent No. 6,858,017 Issue Date |
| 2005-12-07 | U.S. Design Patent No. D550,370 Filing Date |
| 2007-09-04 | U.S. Design Patent No. D550,370 Issue Date |
| 2017-07-06 | Plaintiff provides actual notice of infringement to Defendants |
| 2019-11-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,749,578 - "Ankle Brace With Cuff And Strap"
- Patent Identification: U.S. Patent No. 6,749,578, "Ankle Brace With Cuff And Strap," issued June 15, 2004.
The Invention Explained
- Problem Addressed: The patent describes prior art ankle braces as having two primary drawbacks: either they used straps that could stretch and shift, thereby "sacrificing some structural support," or they employed semi-rigid stirrups that encircled the bottom of the foot, which could interfere with the foot's natural spreading and cause "irritation and pain" (’578 Patent, col. 1:25-35).
- The Patented Solution: The invention is an ankle brace featuring a U-shaped heel stirrup connected via pivots to left and right upright "pivot legs." Rearwardly-projecting arms from these legs join to form a "flexible rear cuff" that allows for controlled front-to-back flexing while limiting unwanted side-to-side motion (’578 Patent, col. 1:39-44, col. 3:41-43). A key aspect is that the heel stirrup provides stability without fully impinging on the bottom of the foot, and the flexible cuff provides support superior to simple straps (’578 Patent, col. 2:1-5).
- Technical Importance: This design sought to provide the flexibility of a hinged brace while improving structural support to prevent ankle sprains, a common injury mechanism in sports (’578 Patent, col. 1:19-27).
Key Claims at a Glance
- The complaint asserts infringement of "one or more of the claims" of the ’578 Patent (Compl. ¶37). Independent claim 1 is representative.
- Independent Claim 1: The essential elements include:
- A substantially U-shaped heel stirrup adapted to extend under a wearer's foot.
- Left and right pivot legs pivotably attached to the stirrup's upright portions.
- Left and right arms projecting rearwardly from the upper portions of the pivot legs, with lower edges terminating substantially above the pivot points.
- The arms are "joined together to form a flexible rear cuff," which includes a "flexing means" permitting the arms to flex relative to each other.
U.S. Patent No. 6,858,017 - "Ankle Brace With Cuff And Strap"
- Patent Identification: U.S. Patent No. 6,858,017, "Ankle Brace With Cuff And Strap," issued February 22, 2005.
The Invention Explained
- Problem Addressed: As a divisional of the application leading to the ’578 Patent, this patent addresses the same fundamental problem of balancing flexibility with structural support in an ankle brace (’017 Patent, col. 1:14-24).
- The Patented Solution: This invention focuses on a specific single-strap closure mechanism. The brace features "outwardly-projecting U-shaped post[s]" on the pivot legs that create vertical slots (’017 Patent, col. 6:5-15). A single closure strap is routed through these slots and around the posts. This configuration is described as providing "substantial rigidity at both ends of the strap" and creating a secure, adjustable, and easy-to-use fit (’017 Patent, col. 2:13-16, col. 7:3-9).
- Technical Importance: The invention claims to offer an improved closure system that enhances structural support and adjustability compared to prior strapping methods by using rigid, integrated strap guides (’017 Patent, col. 2:13-16).
Key Claims at a Glance
- The complaint asserts infringement of "one or more of the claims" of the ’017 Patent (Compl. ¶46). Independent claim 1 is representative.
- Independent Claim 1: The essential elements include:
- A U-shaped heel stirrup, pivot legs, and a rear cuff.
- A first "outwardly-projecting U-shaped post" on the left arm, defining a first slot.
- A second, parallel "outwardly-projecting U-shaped post" on the right arm, defining a second slot.
- A first fastener on one of the arms, forward of its post.
- A closure strap with a cooperating second fastener, where the strap is fed through both slots and secured.
U.S. Design Patent No. D550,370 - "Ankle Brace Shell"
- Patent Identification: U.S. Design Patent No. D550,370, "Ankle Brace Shell," issued September 4, 2007.
- Technology Synopsis: This patent protects the ornamental, non-functional design of an ankle brace shell. The complaint asserts that this design covers the "look and feel" of the Plaintiff's product and serves as a source identifier (Compl. ¶26).
- Asserted Claims: The single claim for "The ornamental design for an ankle brace shell, as shown and described" is asserted (Compl. ¶54; D’370 Patent, Claim).
- Accused Features: The overall visual appearance of the Defendants' "Flexibrace Ankle Brace Hinged Support Guard" is alleged to infringe. The complaint presents side-by-side visual comparisons to argue that the similarities are "unmistakable and striking" (Compl. ¶55-58). The complaint includes a comparison of the side view of the accused product and a figure from the design patent (Compl. ¶55).
III. The Accused Instrumentality
Product Identification
- The "Flexibrace Ankle Brace Hinged Support Guard" or "HSG Product" (Compl. ¶28).
Functionality and Market Context
- The HSG Product is an articulating ankle brace sold by Defendants through online channels including eBay and Amazon (Compl. ¶14). The complaint alleges the product is manufactured in China by "Supercare Medical and Sporting Articles Co., Ltd." for distribution by Defendants (Compl. ¶13). The complaint presents a side-by-side comparison between Figure 2 of the '578 Patent and a photograph of the accused HSG Product (Compl. ¶28). The complaint characterizes Defendants' business as a "multimillion-dollar enterprise" (Compl. ¶11).
IV. Analysis of Infringement Allegations
'578 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substantially U-shaped heel stirrup, including a bottom portion adapted to extend under a wearer's foot and left and right upright portions | The HSG Product is depicted with a U-shaped component that fits under the heel and extends upward along the sides of the ankle. | ¶28 | col. 3:15-18 |
| left and right pivot legs... pivotably attached to said left and right upright portions at left and right pivot points | The HSG Product has side supports that are hinged to the heel stirrup, allowing for articulation. | ¶20, ¶28 | col. 3:41-49 |
| left and right arms projecting rearwardly from the upper portions of said left and right pivot legs... joined together to form a flexible rear cuff | The side supports on the HSG Product extend upward and are connected at the rear by a strap system that wraps around the leg. | ¶28 | col. 4:1-5 |
- Identified Points of Contention:
- Scope Questions: A central issue may be whether the accused product's strap-based rear connection meets the "flexible rear cuff" limitation where "left and right arms are joined together." The construction of this phrase will be critical, specifically whether being "joined" requires a more integrated connection than a separate strap.
- Technical Questions: Claim 1 requires a "flexing means permitting the left arm to flex up and down relative to the right arm." The complaint's evidence does not detail the specific mechanism of flexibility in the accused product's rear connection, raising the question of what evidence supports the existence of this claimed function.
'017 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first outwardly-projecting U-shaped post... defining a first slot between said first post and said left arm | The HSG Product is depicted with structures on its uprights that guide the closure strap. The complaint provides a side-by-side comparison of the accused product and a figure from the '017 patent. | ¶28 (p. 9) | col. 6:5-11 |
| a closure strap... fed through said first slot and through said second slot | The HSG Product's closure strap is visibly routed through the guide structures on the side supports. | ¶28 (p. 9) | col. 6:42-50 |
| a first fastener located on the outer surface of one of said arms forward of its respective post | The complaint does not provide sufficient detail for analysis of this specific element. | col. 5:46-48 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis may turn on whether the strap-guide structures on the accused product can be properly characterized as an "outwardly-projecting U-shaped post." The visual evidence is not sufficiently clear to resolve this, making the construction of this term highly important.
- Technical Questions: What evidence demonstrates that the accused product's closure system uses a "first fastener" located "forward of its respective post" that cooperates with a "second fastener" on the strap, as specifically required by the claim? The complaint's allegations and visual evidence do not address this specific fastening arrangement.
V. Key Claim Terms for Construction
The Term: "flexible rear cuff" (’578 Patent, Claim 1)
- Context and Importance: This term is central to the novelty claimed in the ’578 Patent. Whether the accused product’s combination of uprights and a connecting strap constitutes a "cuff" where the "arms are joined together" will likely be a primary point of dispute.
- Evidence for a Broader Interpretation: The specification discloses embodiments where the connection is made by a rivet or a separate cuff member, which could support a construction that does not require a unitary piece (’578 Patent, col. 4:27-39).
- Evidence for a Narrower Interpretation: The phrase "formed by the two rearwardly-projecting arms" could be argued to mean the arms themselves, in combination, must form the cuff, potentially excluding a separate strap (’578 Patent, col. 4:6-9). The patent figures for the primary embodiment also show integrated, overlapping arms (Fig. 3).
The Term: "outwardly-projecting U-shaped post" (’017 Patent, Claim 1)
- Context and Importance: This term defines the specific strap-anchoring mechanism of the ’017 Patent. Practitioners may focus on this term because the visual evidence of the accused product shows a strap guide, but its geometry may not align with a literal reading of a "U-shaped post."
- Evidence for a Broader Interpretation: The patent describes the function as creating a vertical slot "outwardly spaced from the outer surface of the left leg" to provide a rigid anchor (’017 Patent, col. 6:9-11). A party could argue that any structure performing this specific function should be covered.
- Evidence for a Narrower Interpretation: The term is geometrically specific. Embodiments in the patent show a distinct, continuous piece connected at both its top and bottom ends to the pivot leg (Fig. 20). A defendant could argue that a simple loop or bridge structure does not meet this limitation.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement (Compl. ¶28), but does not plead specific facts to support the requisite knowledge and intent for either theory, such as detailing how Defendants allegedly encouraged end-users to infringe.
- Willful Infringement: The complaint alleges willful infringement based on Defendants having actual, pre-suit knowledge of the patents since at least July 6, 2017, from a certified letter sent by Plaintiff's counsel (Compl. ¶29, ¶38). The complaint further alleges that Defendants "continued and expanded the infringing conduct uninterrupted" after receiving notice and engaged in "deliberate deception" regarding the product's design origin (Compl. ¶30, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural definition: can the term "flexible rear cuff", described in the ’578 patent as being formed by "joined" arms, be construed to read on the accused product’s use of a separate strap to connect its two side uprights? Similarly, do the strap guides on the accused product meet the specific "outwardly-projecting U-shaped post" limitation of the ’017 patent?
- A key question for the finder of fact will be one of visual identity: is the overall ornamental appearance of the accused "Flexibrace" product substantially the same as the D'370 patented design from the perspective of an ordinary observer, or are the differences sufficient to avoid infringement?
- A significant factual dispute will concern willfulness: given the explicit allegations of pre-suit notice and subsequent "deliberate deception," the court will need to determine whether Defendants' alleged post-notice conduct was sufficiently egregious to support a finding of willful infringement and potential enhancement of damages.