Ultra Athlete LLC v. Araujo D

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: Duncan Galloway Egan Greenwald, PLLC
• Case Identification: 4:17-cv-237, S.D. Ind., 12/27/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction in the district, a substantial part of the events giving rise to the claims occurred there, and Defendants maintain a business presence through an Amazon storefront and use of Amazon fulfillment centers located within the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s "Flexibrace Ankle Brace Hinged Support Guard" infringes a utility patent and a design patent related to articulating ankle braces.
• Technical Context: The technology concerns performance ankle braces designed to provide ankle stability and prevent injury for athletes and other users, while allowing for a degree of natural movement.
• 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 with a signed receipt dated July 6, 2017. It also alleges constructive notice based on continuous marking of commercial products since at least July 2004.

Case Timeline

Date	Event
1999-02-18	’578 Patent Priority Date
2004-06-15	’578 Patent Issue Date
2005-12-07	D’370 Patent Filing/Priority Date
2007-09-04	D’370 Patent Issue Date
2017-07-06	Alleged Actual Notice via Certified Letter
2017-12-27	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,749,578 - Ankle Brace With Cuff And Strap (Issued June 15, 2004)

The Invention Explained

• Problem Addressed: The patent’s background section describes a shortcoming in prior art ankle braces, which either provided support at the cost of flexibility and comfort or provided flexibility while sacrificing structural support needed to protect an injured ankle. (’578 Patent, col. 1:13-28). Additionally, prior art stirrups could interfere with the natural spreading of a user's foot, causing pain. (’578 Patent, col. 1:29-35).
• The Patented Solution: The invention is an ankle brace featuring a U-shaped heel stirrup pivotally connected to left and right side supports ("pivot legs"). These pivot legs include rearward-projecting arms that join to form a "flexible rear cuff." This structure is designed to limit injurious side-to-side ankle motion while a "flexing means" in the cuff permits the desired front-to-back movement essential for activities. (’578 Patent, Abstract; col. 1:39-44). The design of the stirrup also leaves the bottom of the foot free, avoiding the impingement problem. (’578 Patent, col. 2:1-5).
• Technical Importance: The claimed invention sought to resolve the critical trade-off between stability and mobility in ankle brace design, offering a solution that protects the ankle while allowing for athletic performance. (’578 Patent, col. 1:13-17).

Key Claims at a Glance

• The complaint asserts infringement of one or more unspecified claims of the ’578 Patent; Claim 1 is the first independent claim. (Compl. ¶33).
• Essential elements of Independent Claim 1 include:
  • A substantially U-shaped heel stirrup with a bottom portion and left and right upright portions.
  • Left and right pivot legs pivotably attached to the stirrup's upright portions at pivot points.
  • Left and right arms projecting rearwardly from the upper portions of the pivot legs, with their lower edges terminating substantially above the pivot points.
  • The arms are joined to form a "flexible rear cuff," which includes "flexing means" that permits the left arm to flex up and down relative to the right arm. (’578 Patent, col. 8:1-12).
• The complaint does not explicitly reserve the right to assert dependent claims, though this is common practice.

U.S. Patent No. D550,370 - Ankle Brace Shell (Issued September 4, 2007)

The Invention Explained

• Problem Addressed: The complaint asserts that beyond functional aspects, there is value in a product's non-functional, aesthetic design features which serve to identify the product's source. (Compl. ¶23).
• The Patented Solution: The D’370 Patent claims the specific ornamental design for an ankle brace shell, as depicted in the patent’s seven figures. The claim covers the visual appearance of the brace, including its overall configuration, the contours of the shell, and the placement and shape of surface features. (D’370 Patent, Figs. 1-7).
• Technical Importance: In the market for athletic and medical equipment, a distinct ornamental design can serve as a source identifier, creating protectable trade dress and brand recognition. (Compl. ¶23, ¶50).

Key Claims at a Glance

• As a design patent, the D’370 Patent contains a single claim: "The ornamental design for an ankle brace shell, as shown and described." (D’370 Patent, "CLAIM").
• The complaint asserts infringement of one or more claims of the D'370 Patent, necessarily referring to this single claim. (Compl. ¶38).

III. The Accused Instrumentality

Product Identification

• The accused products are ankle braces identified as the "Flexibrace Ankle Brace Hinged Support Guard" (the "HSG Product"). (Compl. ¶25).

Functionality and Market Context

• The complaint describes the HSG Product as an "articulating ankle brace" sold by Defendants through various online channels, including commercial websites, eBay, and Amazon. (Compl. ¶12, ¶25). A visual provided in the complaint shows the HSG Product, which features a heel stirrup, side supports with pivots, and an upper cuff structure. (Compl. p. 8, "Exemplary Flexibrace HSG Product"). The complaint alleges that the Defendants' business has grown into a "multimillion-dollar enterprise" and that they derive a "competitive advantage" from using the patented technology without authorization. (Compl. ¶11, ¶29).

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 adapted to extend upwardly along the left and right sides of a wearer's foot	The HSG Product is alleged to include a U-shaped component that fits under the heel and extends upward along the sides of the ankle, as depicted in the complaint's visual evidence. The image shows the HSG product alongside the patent's Figure 2 for comparison. (Compl. p. 8).	¶25, p. 8	col. 3:15-24
left and right pivot legs, each having upper and lower portions, with the lower portions being pivotably attached to said left and right upright portions at left and right pivot points, respectively	The HSG Product is alleged to have side supports attached to the heel stirrup with pivot-like connectors, allowing for articulation. (Compl. p. 8).	¶25, p. 8	col. 3:37-43
left and right arms projecting rearwardly from the upper portions of said left and right pivot legs, respectively, said left and right arms each having a lower edge terminating at an elevation substantially above the elevation of the left and right pivot points	The HSG Product's side supports are alleged to extend upward and have rearward portions that form a cuff around the lower leg, above the ankle joint pivot. (Compl. p. 8).	¶25, p. 8	col. 3:44-50
wherein said left and right arms are joined together to form a flexible rear cuff, including flexing means permitting the left arm to flex up and down relative to the right arm	The HSG Product is alleged to have a rear cuff formed by the joining of the two side supports. The complaint does not specify the accused "flexing means" but alleges overall infringement of the claim. The complaint’s side-by-side comparison shows the accused cuff structure. (Compl. p. 8, ¶39).	¶25, p. 8, ¶39	col. 3:41-44

Identified Points of Contention

• Scope Questions: A central question will be the proper construction of "flexible rear cuff, including flexing means." The patent discloses multiple embodiments, including a mechanical pivot, interlocking slotted members, and a thinned flexible web. (’578 Patent, col. 3:41-43; col. 4:27-40; col. 7:20-24). The litigation may focus on whether the specific manner in which the HSG Product's rear cuff is joined and operates falls within the scope of this claim language.
• Technical Questions: The complaint relies on visual similarity but does not provide a technical breakdown of how the HSG Product's rear cuff functions. A key factual question will be what evidence demonstrates that the accused cuff permits the specific "up and down" flexing of one arm relative to the other, as required by the claim, rather than simply being made of a generally flexible material.

Note: The complaint alleges infringement of the D'370 design patent through narrative and side-by-side visual comparisons rather than a claim chart format. The complaint presents several such comparisons, including a side view (Compl. ¶39), a top-down view (Compl. ¶40), and a side perspective view (Compl. ¶41), to argue that the HSG Product's ornamental design is confusingly similar to the patented design.

V. Key Claim Terms for Construction

• The Term: "flexible rear cuff, including flexing means" (’578 Patent, Claim 1)
• Context and Importance: This limitation appears to be the central point of novelty described in the patent, distinguishing the invention from prior art that was either too rigid or lacked sufficient support. The outcome of the infringement analysis for the ’578 patent may depend heavily on the court's construction of this term.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests that "flexibility may be achieved" through several different mechanisms, including "cutting out portions," "changing the dimensions... so that it is substantially thinner or shorter," or through the "mechanical arrangement by which the arms are joined." (’578 Patent, col. 2:45-53). Plaintiff may argue this language supports a broad definition that covers any structure intentionally designed to provide controlled flexibility at the rear of the cuff.
  • Evidence for a Narrower Interpretation: The primary embodiment described in detail and shown in Figures 1-5 achieves flexibility via a distinct mechanical "rear pivot point 36" made with a "bolt, rivet, pin, or other connector." (’578 Patent, col. 3:41-43). A defendant could argue that the term "flexing means" should be construed more narrowly to require a discrete, pivoting connection, as distinguished from the inherent properties of a flexible material or a simple seam.

VI. Other Allegations

• Indirect Infringement: The complaint includes general allegations of contributory and induced infringement. (Compl. ¶25, ¶32). However, it does not plead specific facts detailing how Defendants allegedly induced or contributed to infringement by third parties, such as by providing specific instructions or manuals to end-users.
• Willful Infringement: The complaint alleges that Defendants' infringement is willful and deliberate. (Compl. ¶34, ¶44, ¶¶73-76). This allegation is based on claims of both constructive and actual notice. Plaintiff alleges Defendants had constructive notice since at least July 2004 via patent marking on commercial products. (Compl. ¶74). More significantly, the complaint alleges Defendants received actual notice of the patents-in-suit and the alleged infringement via a certified letter dated July 6, 2017. (Compl. ¶26, ¶74). To support the claim of intentional copying, the complaint includes a side-by-side comparison of an image of a licensed UA product and an allegedly "photomanipulated" image used by Defendants on eBay, from which branding was purportedly removed. This visual shows an image used by Flexibrace that appears identical to a licensed product's image, except for the removal of brand logos. (Compl. p. 16).

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

• A core issue will be one of claim scope: can the term "flexible rear cuff, including flexing means," as described and claimed in the ’578 patent, be construed to read on the specific structure used to join the rear supports of the accused Flexibrace product? The breadth of this definition will likely be a central point of dispute.
• For the D'370 design patent, the case will present a key factual question for the ordinary observer: are the ornamental designs of the accused HSG Product and the patented shell "substantially the same," such that an ordinary observer would be deceived into purchasing one believing it was the other? The side-by-side visual evidence presented in the complaint will be central to this determination.
• A critical question for damages will be willfulness: did the Defendants have pre-suit knowledge of the patents, and does the evidence, particularly the allegations of actual notice and the use of allegedly manipulated product photos, support a finding of willful infringement that could lead to enhanced damages under 35 U.S.C. § 284?