DCT

1:25-cv-12152

Performance Solutions LLC v. Implus Footcare LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-12152, D. Mass., 07/31/2025
  • Venue Allegations: Venue is alleged to be proper based on a mandatory forum selection clause in a prior license agreement between the parties, and because Plaintiff is headquartered in the district.
  • Core Dispute: Plaintiff alleges that Defendant, its former licensee, is infringing two patents on handheld massage sticks after Plaintiff terminated their license agreement due to Defendant’s alleged failure to pay royalties.
  • Technical Context: The technology involves handheld therapeutic massage devices with textured projections designed for self-myofascial release, a common practice in the fitness and physical therapy markets.
  • Key Procedural History: The parties entered a license agreement in 2017. A dispute arose over royalties for handheld massage sticks, which Plaintiff alleges led it to terminate the agreement in March 2025. The complaint notes that other patents in Plaintiff's portfolio (not asserted here) have successfully survived multiple ex parte reexaminations at the USPTO and that Plaintiff recently secured a preliminary injunction against a competitor in separate litigation.

Case Timeline

Date Event
2006-07-18 Priority Date for '238 and '825 Patents
2010-07-01 Thera-Roll® product showcased by fitness distributor
2017-05-01 Effective date of License Agreement between parties
2017-06-07 License Agreement signed by parties
2019-04-12 Implus alleged to have actual notice of '238 Patent
2019-04-23 '238 Patent Issue Date
2019-08-02 Implus paid royalties on 7,243 handheld massage sticks
2022-07-28 Implus allegedly repudiated royalty promises in a letter
2023-12-10 PTAB found other Performance Solutions patents valid in reexaminations
2024-06-14 Competitor PowX Inc. preliminarily enjoined on other patents
2024-11-05 '825 Patent Issue Date
2025-02-04 Implus alleged to have actual notice of '825 Patent
2025-03-12 Performance Solutions notifies Implus of license termination
2025-03-13 Implus sends letter disputing royalty agreement authority
2025-06-24 Performance Solutions sends follow-up termination letter
2025-07-31 Complaint Filing Date

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

U.S. Patent No. 10,265,238 - "Therapeutic, Fitness, and Sports Enhancement Device," issued April 23, 2019

The Invention Explained

  • Problem Addressed: The patent describes conventional, smooth cylindrical foam rollers as having a minimized effect on tissue mobilization. It further notes that existing devices with projections are often limited to a single density, diameter, and projection type, thus failing to effectively mobilize different soft tissue structures. (’238 Patent, col. 1:30-col. 2:2).
  • The Patented Solution: The invention is a therapeutic device comprising a body with solid projections, an opening through the center, a sleeve, and a handle. The key innovation is the optimization of the device through the combination of the body's density, its diameter, and the specific shape of the projections to more effectively mobilize soft tissue, break up scar tissue, and increase flexibility. (’238 Patent, Abstract; col. 2:48-56, col. 7:25-44).
  • Technical Importance: The technology provides for purpose-built massage devices with specific physical characteristics tailored to treat different muscle groups and conditions more effectively than one-size-fits-all smooth rollers. (’238 Patent, col. 7:36-44).

Key Claims at a Glance

  • The complaint asserts claims 1-3, 5-6, and 9-10 (Compl. ¶74). Independent claim 1 is central.
  • Independent Claim 1 requires:
    • A completely cylindrically shaped body having a length comprised entirely of foam, rubber, or plastic
    • A plurality of solid projections along the body’s length with a predetermined shape
    • An opening extending through the body
    • A sleeve inside the opening, extending entirely through it
    • A handle extending through the sleeve
    • A smallest thickness of the body being greater than a thickness of the sleeve
  • The complaint does not explicitly reserve the right to assert other claims.

U.S. Patent No. 12,133,825 - "Therapeutic, Fitness, and Sports Enhancement Device," issued November 5, 2024

The Invention Explained

  • Problem Addressed: The patent addresses the same problems as the ’238 Patent: the ineffectiveness of conventional smooth rollers and the design limitations of prior art rollers with projections. (’825 Patent, col. 1:26-col. 2:5).
  • The Patented Solution: The invention is a hand-held device for soft tissue mobilization. Like the ’238 Patent, it features a body with projections, a central opening, a sleeve, and a handle. This patent specifies dimensional ranges for the opening (approx. 1/4 to 5 inches in diameter) and the projection height (approx. 1/8 to 3 inches) and describes the projections as being configured to extend into tissue below the subcutaneous fat. (’825 Patent, Abstract; col. 2:47-56; Claim 1).
  • Technical Importance: As with the ’238 Patent, this technology aims to improve self-myofascial release by enabling device designs tailored to specific therapeutic applications. (’825 Patent, col. 7:40-44).

Key Claims at a Glance

  • The complaint asserts claims 1-3, 5-6, 11-12, 14-15, and 21-22 (Compl. ¶80). Independent claim 1 is central.
  • Independent Claim 1 requires:
    • A hand-held soft tissue mobilization device
    • An opening extending the length of a substantially cylindrically shaped body, with a diameter from about 1/4 inch to about 5 inches
    • A sleeve within the opening, extending entirely through it
    • A plurality of projections on the body configured to extend into tissue below the subcutaneous fat, with heights between about 1/8 inch and 3 inches
    • A handle extending through the sleeve
  • The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

  • The complaint names the TriggerPoint Grid STK (Regular Firm), TriggerPoint Grid STK (Extra Firm), and the Perfect Fitness Massage stick as the "Accused Products." (Compl. ¶50).

Functionality and Market Context

  • The Accused Products are described as handheld massage sticks used for therapeutic self-massage. (Compl. ¶¶ 18, 47, 50). The complaint alleges that Defendant markets these products and that they are not licensed under the parties' prior agreement. (Compl. ¶50). The complaint provides images of the three accused products, each depicted as a handheld roller with handles on either end and a central body featuring patterned projections. (Compl. ¶51).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 17-22) that were not publicly filed with the pleading; therefore, the following is a prose summary of the infringement allegations based on the complaint's narrative. (Compl. ¶52).

  • '238 Patent Infringement Allegations Summary
    The complaint alleges that the Accused Products infringe, either literally or under the doctrine of equivalents, at least claims 1-3, 5-6, and 9-10 of the ’238 Patent. (Compl. ¶74). The infringement theory appears to map the features of the Accused Products onto the elements of claim 1. The central, textured roller portion of the products is alleged to be the claimed "completely cylindrically shaped body comprised entirely of foam, rubber, or plastic" with "solid projections." (Compl. ¶¶ 47, 51; ’238 Patent, cl. 1). The handles are alleged to satisfy the limitations requiring a "handle extending through the sleeve" which is situated inside an "opening" that runs through the body. (Compl. ¶¶ 47, 51; ’238 Patent, cl. 1).

  • '825 Patent Infringement Allegations Summary
    The complaint alleges that the Accused Products infringe, either literally or under the doctrine of equivalents, at least claims 1-3, 5-6, 11-12, 14-15, and 21-22 of the ’825 Patent. (Compl. ¶80). The theory asserts that the Accused Products are "hand-held" devices with a "substantially cylindrically shaped body" as claimed. (Compl. ¶50; ’825 Patent, cl. 1). The textured surfaces of the Accused Products are alleged to contain "projections" of the claimed height that are "configured to extend into tissue below the subcutaneous fat." (Compl. ¶47; ’825 Patent, cl. 1). As with the ’238 Patent, the handle-and-roller design is alleged to meet the claimed structure of a handle, sleeve, and opening. (Compl. ¶¶ 47, 51; ’825 Patent, cl. 1).

  • Identified Points of Contention:

    • Scope Questions: A potential dispute for the ’238 Patent may arise over the term "completely cylindrically shaped body comprised entirely of foam, rubber, or plastic." The question is whether the Accused Products, which may have an inner structural core of a different material, meet this limitation literally. Further, the requirement that the "smallest thickness of the body is greater than a thickness of the sleeve" will require factual analysis and may depend on how "thickness of the body" is construed.
    • Technical Questions: For the ’825 Patent, a key question may be whether the phrase "configured to extend into tissue below the subcutaneous fat" imposes a functional requirement that must be proven with extrinsic evidence, or if it is met simply by the projections having the claimed dimensions. The alternative pleading of infringement under the doctrine of equivalents for both patents suggests the possibility that there are technical or structural differences between the claims and the accused devices that will be disputed. (Compl. ¶¶ 74, 80).

V. Key Claim Terms for Construction

  • The Term: "completely cylindrically shaped body" (’238 Patent, claim 1)

    • Context and Importance: Practitioners may focus on this term because its interpretation is critical for a literal infringement finding against the ’238 Patent. The dispute may center on whether "completely" refers only to the external shape or implies a homogenous material composition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification's focus is on the device's therapeutic function and external features, which may support an interpretation that "completely" refers to the overall form factor visible to the user. (’238 Patent, col. 7:25-44).
      • Evidence for a Narrower Interpretation: The specification discloses embodiments that appear to be a single, solid piece of foam. (’238 Patent, Fig. 10). This could support an argument that "completely" excludes composite structures with different internal and external materials.

  • The Term: "smallest thickness of the body" (’238 Patent, claim 1)

    • Context and Importance: This limitation creates a specific geometric relationship that is a prerequisite for infringement. Its construction will determine how the accused products are measured.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A plaintiff might argue "thickness" should be measured to the outermost point of the projections to capture the full working dimension of the device. The patent lacks an explicit definition, arguably leaving it open to a broader, functional interpretation.
      • Evidence for a Narrower Interpretation: A defendant could argue the "thickness of the body" should be measured from the inner sleeve to the "valley" between projections, as this represents the base body structure. Figure 2 shows diameter "d13" measured to the valleys, which may support a narrower construction. (’238 Patent, Fig. 2).

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on allegations of direct infringement and does not plead separate counts for indirect or contributory infringement. (Compl. ¶¶ 74, 80).
  • Willful Infringement: The complaint alleges willful infringement for both patents. (Compl. ¶¶ 77, 83). The allegations are based on Defendant's alleged actual notice of the ’238 Patent as of April 12, 2019, and the ’825 Patent as of February 4, 2025, both pre-suit. (Compl. ¶49). The plaintiff cites the parties' extensive history of licensing negotiations and the dispute over royalties for the accused product category as evidence of knowledge and intent. (Compl. ¶¶ 26-36).

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

  • A central issue will be the interplay of contract and patent law: how does the history of the now-terminated license agreement, including Defendant's prior royalty payments for some handheld sticks, affect the analysis of infringement and damages for sales made after the termination date?
  • A core patent dispute will be one of definitional scope: can the term "completely cylindrically shaped body comprised entirely of foam, rubber, or plastic" from the ’238 Patent be construed to read on the potentially multi-component construction of the accused TriggerPoint products?
  • A key evidentiary question for the ’825 Patent will be one of functional configuration: does the claim language "projections...configured to extend into tissue below the subcutaneous fat" require evidence of actual therapeutic effect on a user, or is it a purely structural limitation satisfied by the projection's geometry?