DCT
5:19-cv-00124
Ermi LLC v. Northstate Surgical Devices LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ermi LLC (Delaware)
- Defendant: Northstate Surgical Devices, LLC (North Carolina) and Mary Patricia Coppedge (North Carolina)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: 5:19-cv-00124, E.D.N.C., 04/01/2019
- Venue Allegations: Venue is alleged as proper based on Defendant Northstate having its principal place of business in the district, Defendant Coppedge residing in the district, and a substantial part of the events giving rise to the claims, including the sale and distribution of the accused products, occurring in the district.
- Core Dispute: Plaintiff alleges that Defendants’ "T-Rex Orbit for Shoulder" medical device infringes a patent related to a shoulder extension and rotation therapy apparatus.
- Technical Context: The technology concerns mechanical physical therapy devices designed to help patients recover or improve the range of motion in their shoulder joints following injury or surgery.
- Key Procedural History: The complaint alleges that the founder of the company that created the accused product line met with the Plaintiff and was exposed to the Plaintiff's own commercial device and "TREX" trade name before developing the accused "T-Rex" branded product. The complaint also notes that the asserted patent’s originally filed claims 1-6 were never rejected during prosecution. A subsequent ex parte re-examination, concluded after the complaint was filed, confirmed the patentability of claims 1-4 and amended asserted claim 22.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-13 | ’289 Patent Priority Date |
| 2002-12-13 | ’289 Patent Non-Provisional Application Filing Date |
| 2003-07-10 | ’289 Patent Application Publication Date |
| 2006-01-13 | ’289 Patent First Office Action Issued |
| 2009-03-16 | ’289 Patent Notice of Allowance Issued |
| 2009-06-16 | ’289 Patent Issue Date |
| 2012-10-01 | ’289 Patent First Maintenance Fee Paid |
| 2013-11-07 | Founder of Accused Device Maker Contacts Plaintiff |
| 2013-12-13 | Founder of Accused Device Maker Meets with Plaintiff |
| 2014-05-XX | T-Rex Rehab (Accused Device Maker) Founded |
| 2016-12-01 | ’289 Patent Second Maintenance Fee Paid |
| 2019-04-01 | Complaint Filing Date |
| 2021-10-15 | ’289 Patent Re-examination Certificate Issue Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,547,289 - "Shoulder Extension Control Device," issued June 16, 2009
The Invention Explained
- Problem Addressed: The patent’s background section describes the loss of shoulder motion that can occur from scar formation and tissue contracture after an injury or surgery (’289 Patent, col. 1:40-45). While manual therapy from a professional is one treatment, the patent notes a desire for mechanical devices that can assist a patient in regaining range of motion (’289 Patent, col. 2:1-6).
- The Patented Solution: The invention is an apparatus for shoulder therapy that gives the patient "complete patient control" over the process (’289 Patent, col. 2:13-18). A key feature described in the summary of the invention and shown in figures is a modular design with a frame, an arm carriage, and a power unit; the arm carriage and power unit can be switched between two mounting locations on the frame, allowing the same device to be configured for therapy on either the user's left or right arm (’289 Patent, col. 2:18-37; Figs. 1-2).
- Technical Importance: The invention provides a patient-controlled mechanical therapy device that is adaptable for use on either shoulder, aiming to provide a structured and repeatable way to increase joint motion (’289 Patent, col. 2:1-10).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 22 (Compl. ¶65). Claim 22 was amended during a 2021 re-examination proceeding.
- Independent Claim 1 (Apparatus): The essential elements include:
- A frame with spaced apart first and second mounting locations.
- An arm carriage for manipulating the shoulder, mounted to one of the mounting locations.
- A user-controlled power unit mounted to the other mounting location.
- 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 user's right and left arms.
- Independent Claim 22 (Method, as amended): The essential steps include:
- Providing an apparatus comprising a frame with first and second mounting locations, a seat, a pivotable upper arm assembly mounted to one location, a pivotable forearm assembly, and a power unit mounted to the other location.
- Securing a user's forearm to the forearm assembly.
- Selectively discouraging movement between the forearm and upper arm assemblies while allowing them to pivot together.
- Actuating the power unit and pivoting the upper arm assembly to create abduction/adduction of the shoulder.
- Selectively discouraging movement of the upper arm assembly relative to the frame while allowing the forearm assembly to move.
- Actuating the power unit and pivoting the forearm assembly to create external rotation at the shoulder.
III. The Accused Instrumentality
Product Identification
- The accused product is the "T-Rex Orbit for Shoulder" (the "Accused Device") (Compl. ¶7).
Functionality and Market Context
- The Accused Device is a medical product for shoulder therapy that Defendants allegedly use, sell, lease, and distribute in the district (Compl. ¶7). The complaint alleges the device is advertised on a website, which includes videos showing the device being used by a person (Compl. ¶¶47, 49). A commercial brochure, referenced as Exhibit 6 in the complaint, allegedly depicts the Accused Device and has been distributed to consumers (Compl. ¶50). Defendants are alleged to market the device to third parties, including doctors, medical practices, care facilities, and directly to patients (Compl. ¶74).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Device infringes both literally and under the doctrine of equivalents (Compl. ¶¶67-68).
’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 complaint alleges that the Accused Device, depicted in an attached exhibit, embodies all elements of Claim 1, which would include a frame with two distinct mounting locations (Compl. ¶7, Exhibit 2). | ¶66 | col. 16:56-57 |
| an arm carriage configured to manipulate said shoulder joint of said user, said arm carriage configured to be mounted to one of said first... | The Accused Device is alleged to possess an arm carriage component that mounts to the frame. | ¶66 | col. 16:58-61 |
| a power unit configured to provide power upon control by said user, said power unit configured to be mounted to the other of said first... | The Accused Device is alleged to have a user-controlled power unit that mounts to the frame opposite the arm carriage. | ¶66 | col. 16:62-65 |
| a linkage intermediate said arm carriage and said power unit, said linkage configured to transfer power from said power unit to said arm carriage | The complaint alleges the Accused Device contains a linkage to transfer power between its power unit and arm carriage. | ¶66 | col. 16:66-68 |
| ...configured to allow said arm carriage and said power unit to be switched between said first and second mounting locations and operated in alternating modes... | The complaint alleges that the Accused Device embodies this claim, which requires that its components be reconfigurable to treat both the left and right arms of a user by swapping the positions of the arm carriage and power unit. | ¶66 | col. 17:1-8 |
’289 Patent Infringement Allegations (Claim 22, as amended)
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation (Re-exam Cert.) |
|---|---|---|---|
| A) providing an apparatus itself comprising: 1) a frame including spaced apart first and second mounting locations; 2) a seat... 3) an upper arm assembly... mounted to one... location... 4) a forearm assembly... 5) a power unit... mounted to the other... location | Defendants are accused of providing the Accused Device, which the complaint alleges embodies the claimed apparatus (Compl. ¶66). A commercial brochure allegedly shows the device's features (Compl. ¶50, Exhibit 6). | ¶¶76, 81 | col. 2:1-8 |
| D) actuating said power unit and pivoting said upper arm assembly...such that abduction/adduction of the shoulder is created | The complaint alleges that Defendants instruct users (e.g., doctors, patients) to operate the Accused Device in a manner that performs the claimed method steps, including actuating the device to pivot the upper arm assembly for abduction/adduction therapy (Compl. ¶¶76, 78). | ¶¶76, 78 | col. 2:18-24 |
| F) actuating said power unit and pivoting said forearm assembly...such that external rotation is created at said shoulder | The complaint alleges Defendants instruct users on how to perform the claimed steps, which includes actuating the device to pivot the forearm assembly to achieve external rotation of the shoulder (Compl. ¶¶76, 78). The complaint alleges videos on the manufacturer's website show a person using the device, which may serve as evidence of these steps being performed (Compl. ¶49). | ¶¶76, 78 | col. 2:25-33 |
- Identified Points of Contention:
- Technical Questions: A primary factual dispute may concern whether the Accused Device is "configured to allow said arm carriage and said power unit to be switched between said first and second mounting locations" as required by Claim 1. The infringement analysis will depend on evidence of whether the Accused Device actually has two distinct mounting points that facilitate this specific reconfigurability for left- and right-arm use.
- Scope Questions: For the method claim (Claim 22), a key question will be whether the operation of the Accused Device, as directed by Defendants' instructions, includes every claimed step, particularly the "selectively discouraging" limitations in steps C and E, which are functional requirements related to how movement is constrained during therapy.
V. Key Claim Terms for Construction
The Term: "mounting locations"
- Context and Importance: This term appears in both asserted independent claims and is foundational to the patent's "switchability" feature for left/right arm use. The infringement analysis may turn on whether the points of attachment on the Accused Device's frame meet the definition of "first and second mounting locations" intended for swapping the arm carriage and power unit.
- Intrinsic Evidence for a Broader Interpretation: The plain language of Claim 1 requires only "spaced apart first and second mounting locations" without specifying their structure, which may support an interpretation covering any two distinct attachment points on the frame (’289 Patent, col. 16:56-57).
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a specific embodiment where "side mounting members 44" are part of a "substantially rectangular rigid framework," to which the arm carriage and power unit attach (’289 Patent, col. 8:5-16; Fig. 10). The summary of the invention explicitly links these locations to enabling "alternating modes" for the right and left arms, suggesting a functional rather than merely structural requirement (’289 Patent, col. 2:29-37).
The Term: "linkage"
- Context and Importance: This term from Claim 1 defines the component that transfers power from the power unit to the arm carriage. The nature of this connection in the Accused Device will be compared to the scope of this term.
- Intrinsic Evidence for a Broader Interpretation: The claim language is broad, requiring only "a linkage intermediate said arm carriage and said power unit" that is "configured to transfer power" (’289 Patent, col. 16:66-68). This could be argued to cover any mechanical, hydraulic, or electrical connection that performs this function.
- Intrinsic Evidence for a Narrower Interpretation: The preferred embodiment discloses a hydraulic system, including a "working...main cylinder 98" and associated "plumbing 120," as the means for transferring power (’289 Patent, col. 5:21-22, col. 6:49-51; Fig. 16). Parties may dispute whether the term "linkage" should be limited by this exemplary disclosure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement of at least Claim 22 (Compl. ¶¶73-81).
- Inducement: The claim is based on allegations that Defendants "market, advertise, demonstrate, sell, distribute, [and] lease" the Accused Device and provide instructions to third parties (e.g., doctors, patients), directing them to use the device in an infringing manner (Compl. ¶¶74, 76, 78).
- Contributory Infringement: This claim is supported by the allegation that the Accused Device has "no substantial non-infringing use" (Compl. ¶80).
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge (Compl. ¶70). The allegations of pre-suit knowledge are detailed, asserting that the founder of the company that developed the Accused Device met with Plaintiff, was exposed to Plaintiff's commercial embodiment of the patent, and subsequently founded "T-Rex Rehab" to sell the "T-Rex Orbit" device (Compl. ¶¶37-40). The complaint further alleges that Defendants were aware of Plaintiff's device and patent through, among other things, marketing materials that allegedly show both parties' devices (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute presents several central questions for the court's determination:
- A core infringement question will be one of technical and factual correspondence: Does the "T-Rex Orbit for Shoulder" device possess the specific, reconfigurable architecture of Claim 1, particularly the "spaced apart first and second mounting locations" that enable the arm carriage and power unit to be switched for ambidextrous use?
- The case will likely feature a significant dispute over culpability and intent: Do the detailed allegations of the Defendants’ pre-suit exposure to the patentee’s technology and trade name provide sufficient evidence to support the claim of willful infringement?
- An important evidentiary question for the indirect infringement claims will be one of causation and instruction: Does the evidence, such as user manuals and marketing videos, show that Defendants specifically instructed or encouraged users to perform all the steps of the multi-part method of amended Claim 22?