DCT
2:19-cv-13657
Blake Mfg Inc v. Trulife Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blake Manufacturing, Inc. (Florida)
- Defendant: TruLife, Inc. (Delaware)
- Plaintiff’s Counsel: Miller, Canfield, Paddock & Stone P.L.C.; Lathrop Gage LLP
- Case Identification: 2:19-cv-13657, E.D. Mich., 12/12/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, has committed acts of infringement there, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s contracture boot infringes patents related to a foot orthosis that uses a tongue-and-pocket mechanism to attach a skid sole plate and an adjustable toe plate.
- Technical Context: The technology concerns orthotic devices used to immobilize and support a patient's foot and lower leg, often for treating conditions like contracture.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant purchased and resold Plaintiff’s patented boot from at least 2007 until January 2017. Plaintiff also alleges it sent a formal notice-of-infringement letter to Defendant on July 29, 2019, which was delivered the next day.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-09 | Priority Date for ’780 and ’519 Patents |
| 2005-08-02 | U.S. Patent No. 6,923,780 Issued |
| 2007-01-01 | Plaintiff began selling BMI Boot (on or before this date) |
| 2007-01-01 | Defendant began purchasing BMI Boot (on or before this date) |
| 2007-01-16 | U.S. Patent No. 7,163,519 Issued |
| 2017-01-31 | Defendant's last purchase of BMI Boot (on or around this month) |
| 2019-07-29 | Plaintiff sent pre-suit notice letter to Defendant |
| 2019-07-30 | Pre-suit notice letter delivered to Defendant |
| 2019-12-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,923,780 - “Foot Orthosis with Detachable Skid Sole Plate,” Issued August 2, 2005
The Invention Explained
- Problem Addressed: The patent describes prior art orthotic devices that attached components like skid pads using hardware such as nuts and bolts. This hardware, located directly under the patient's foot, could be "invasive," impede walking, and create a risk of further injury or "potential liability of the care giver" (’780 Patent, col. 1:35-48).
- The Patented Solution: The invention proposes replacing this hardware with a tongue-and-pocket system. A flexible "tongue section" projecting from a detachable skid pad is inserted into a "tongue-receiving pocket" on the underside of the fabric boot, allowing for secure, tool-free attachment and removal (’780 Patent, col. 2:24-39; Fig. 3).
- Technical Importance: This design sought to improve patient safety and ease of use by eliminating potentially injurious "underfoot hardware" that was common on devices at the time (’780 Patent, col. 1:45-48).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, and 14 (Compl. ¶12).
- Independent Claim 1 recites a foot orthosis comprising:
- a generally "L"-shaped splint
- a flexible foot receiving and retaining boot mounted on the splint
- a tongue-receiving pocket mounted on the splint or boot
- a planar skid pad with an attached tongue section
- the tongue section being insertable into the pocket to releasably secure the skid pad
- Independent Claim 8 recites an orthosis similar to claim 1, further including a "forwardly extending toe plate" which also has a tongue portion insertable into the tongue-receiving pocket (’780 Patent, col. 7:1-9).
- Independent Claim 14 recites a more general combination of a splint, a boot, a tongue-receiving pocket, and a skid pad with a projecting tongue section that is insertable into the pocket (’780 Patent, col. 8:14-29).
- The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶18).
U.S. Patent No. 7,163,519 - “Foot Orthosis with Detachable and Adjustable Toe Plate,” Issued January 16, 2007
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’780 patent, the ’519 patent addresses the same problem of "invasive hardware," but focuses specifically on the attachment and adjustment of the toe plate, a component that protects the patient's toes (’519 Patent, col. 1:57-65).
- The Patented Solution: The invention claims a foot orthosis where a toe plate includes a "rearwardly extending tongue portion" that is slidably received within a "tongue-receiving pocket." This allows the toe plate to be positioned and secured "forwards or rearwards" relative to the foot without the use of tools or external hardware (’519 Patent, col. 6:20-33).
- Technical Importance: This approach aimed to simplify the adjustment of the toe plate, eliminating the need for a caregiver to "unscrew the nut to adjust the toe plate, which can cause further aggravation to the injured extremity" (’519 Patent, col. 1:62-65).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6 (Compl. ¶13).
- Independent Claim 1 recites a foot orthosis comprising:
- a generally "L"-shaped splint
- a flexible boot mounted on the splint
- a tongue-receiving pocket
- a toe plate with a rearwardly extending tongue portion
- the tongue portion being adapted to fit within the pocket, allowing the toe plate to be slidably positioned and secured
- Independent Claim 6 recites a similar combination focused on the toe plate, comprising a splint, a boot, a pocket, and a toe plate with a tongue portion that is "insertable and releasably securable" in the pocket (’519 Patent, col. 6:58-6:65).
- The complaint reserves the right to assert additional claims (Compl. ¶25).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "TruLife Boot," identified as "Item Number FH3002 CONTRACTURE BOOT" and/or "66906 BOOT TRU-CLEAR CONTRACTURE" (Compl. ¶11).
Functionality and Market Context
The complaint alleges that the TruLife Boot is "nearly identical" to the Plaintiff's own "BMI Boot," which purportedly practices the patents-in-suit (Compl. ¶12-13). Exhibit D provides a photograph of the accused "TruLife Boot," showing a blue fabric boot attached to a black sole plate with a toe guard (Compl., Ex. D). The complaint alleges that Defendant, a former distributor of Plaintiff's product, began selling the accused TruLife Boot after it stopped purchasing boots from the Plaintiff, suggesting a direct competitive relationship in the orthosis device market (Compl. ¶10-11).
IV. Analysis of Infringement Allegations
The complaint does not include a claim chart. The central infringement theory is that the accused TruLife Boot is "nearly identical" to the Plaintiff's patented product and therefore contains all elements of the asserted claims (Compl. ¶12, ¶13).
’780 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a generally "L"-shaped splint having a generally upright leg-engaging section and a forwardly-extending foot support section | The TruLife Boot is alleged to incorporate a rigid, L-shaped splint to support the user's leg and foot. | ¶12; Ex. D | col. 3:1-4 |
| a generally flexible foot receiving and retaining boot mounted on said splint for releasably securing a foot on said splint | The TruLife Boot is alleged to include a fabric boot mounted on the splint structure. | ¶12; Ex. D | col. 3:11-13 |
| a tongue-receiving pocket mounted on one of said splint and said boot | The TruLife Boot is alleged to have a pocket on the underside of the boot for receiving a tongue from an attachable component. | ¶12; Ex. D | col. 4:24-27 |
| a generally planar skid pad including an attached tongue section projecting from said skid pad | The TruLife Boot is alleged to use a detachable skid pad that includes a projecting tongue. | ¶12; Ex. D | col. 4:8-13 |
| said tongue section of said skid pad being insertable into said tongue-receiving pocket such that said tongue is releasably secured | The tongue of the TruLife Boot's skid pad is alleged to be insertable into its corresponding pocket to secure the pad to the boot. | ¶12; Ex. D | col. 4:36-40 |
Identified Points of Contention
- Technical Questions: The complaint's infringement allegations are conclusory and rest on the assertion that the accused product is "nearly identical" to Plaintiff's own product. A central evidentiary question will be whether the TruLife Boot's attachment mechanism for its skid plate actually functions as the claimed "tongue" and "pocket" system. The complaint does not provide specific evidence, such as diagrams or technical descriptions, of how the accused product's components connect.
- Scope Questions: The dispute may raise the question of whether the physical structures on the accused boot meet the definitions of the claim terms. For instance, does the receiving feature on the TruLife Boot meet the structural and functional requirements of a "tongue-receiving pocket" as understood in light of the patent's specification?
V. Key Claim Terms for Construction
The Term: "tongue-receiving pocket"
Context and Importance: This term, along with "tongue section," defines the core inventive concept of a hardware-free attachment system. The outcome of the infringement analysis for both patents will likely depend on how this term is construed. Practitioners may focus on this term because its definition will determine whether the accused product's connection mechanism falls within the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the ’780 Patent broadly recites the pocket as being "mounted on one of said splint and said boot" and having "at least one opening and a tongue retaining section," which could be argued to encompass any structure that receives and retains a tongue (’780 Patent, col. 6:11-14).
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the pocket is formed by a "longitudinally extended generally semi-cylindrical curved outer wall" made of fabric and attached to the boot's underside (’780 Patent, col. 4:24-33; Fig. 4). A party could argue that this disclosure limits the scope of the term to a fabric-based pocket, rather than any conceivable receiving slot or channel.
The Term: "tongue section"
Context and Importance: This term is the counterpart to the "tongue-receiving pocket" and is equally critical to the infringement analysis. The construction will clarify what kind of projecting element qualifies as a "tongue."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the ’780 Patent requires only "an attached tongue section projecting from said skid pad," language that could be argued to cover any type of projecting tab, whether integrally formed or separately attached (’780 Patent, col. 6:15-17).
- Evidence for a Narrower Interpretation: The preferred embodiment describes the tongue as "a cut out section of said skid pad which is separated from said skid pad along the longitudinal length thereof and remains attached at the forward end thereof to permit the tongue...to be pivoted upwards" (’780 Patent, col. 4:20-24; Fig. 3). A party could argue this limits the term to a flexible, integrally formed, and pivoted flap, excluding more rigid or separately affixed tabs.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement under 35 U.S.C. § 271(a) but does not plead separate counts for indirect or contributory infringement (Compl. ¶18, ¶25).
- Willful Infringement: The complaint alleges willful infringement based on two independent grounds for knowledge. First, it alleges Defendant had pre-suit knowledge from its long history (since at least 2007) of purchasing and reselling Plaintiff's patented boot, which was "consistently marked with the '780 and '519 patent numbers" (Compl. ¶9-10, ¶20, ¶27). Second, it alleges Defendant had actual knowledge as of July 30, 2019, upon receiving a detailed infringement notice letter that identified the patents, claims, and accused product (Compl. ¶14-15, ¶21, ¶28). The complaint alleges Defendant continued to infringe despite this knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual evidence: can Plaintiff prove its allegation that the accused TruLife Boot is "nearly identical" to its patented product? The case will likely turn on a detailed, feature-by-feature comparison to determine if the TruLife Boot's attachment mechanism for its sole and toe plates actually practices the "tongue" and "pocket" limitations of the asserted claims.
- The case will also involve a key question of definitional scope: how will the court construe the central claim terms "tongue-receiving pocket" and "tongue section"? Whether these terms are limited to the specific fabric-based, pivoted embodiments shown in the patent figures or are given a broader construction will be critical in determining if the accused product infringes.
- Finally, given the detailed allegations of a prior commercial relationship involving the patented product and a formal notice letter, a significant question will be one of intent: does the evidence support a finding that Defendant's alleged infringement was "willful," potentially exposing it to enhanced damages under 35 U.S.C. § 284?