DCT
2:21-cv-00406
v. 7-Eleven Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ministrap, LLC (Georgia)
- Defendant: 7-Eleven, Inc. (Texas)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:21-cv-00406, E.D. Tex., 02/01/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business within the Eastern District of Texas, listing specific store addresses, and has committed acts of patent infringement in the District.
- Core Dispute: Plaintiff alleges that Defendant’s "SOLARAY" brand replacement cables, which include integrated fastening straps, infringe three patents related to secure strap systems for bundling objects.
- Technical Context: The technology concerns reusable, self-fastening straps, typically made of hook-and-loop material, designed to organize and secure elongated items like wires and cables.
- Key Procedural History: The asserted patents form a family, with U.S. Patent 8,371,000 being a continuation-in-part of U.S. Patent 7,587,796, and U.S. Patent 9,386,824 being a continuation-in-part of U.S. Patent 8,371,000. The complaint is a First Amended Complaint, and willfulness allegations are based on knowledge dating from at least the receipt of the original complaint.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-07 | Priority Date for ’796, ’000, and ’824 Patents |
| 2009-09-15 | ’796 Patent Issued |
| 2013-02-12 | ’000 Patent Issued |
| 2016-07-12 | ’824 Patent Issued |
| 2022-02-01 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,587,796 - “Secure Strap Systems”
Issued September 15, 2009
The Invention Explained
- Problem Addressed: The patent describes limitations in prior art fastening straps, such as the difficulty of integrally connecting a first bundle of objects to a second bundle, or the inability to selectively release one bundle while leaving the other secured (’796 Patent, col. 1:60-col. 2:7).
- The Patented Solution: The invention is a fastening strap system constructed from a single, unitary piece of two-sided (e.g., hook-and-loop) material. The key feature is a design with at least two distinct elongated strap portions separated by at least one aperture, which allows each strap portion to be independently looped and cinched to form secure, adjustable fastening loops for different objects or bundles (’796 Patent, Abstract; col. 12:1-20). Figure 27, for example, illustrates a strap anchored to one object (201) while the second strap portion binds another object (203) (’796 Patent, Fig. 27).
- Technical Importance: This configuration provides greater versatility than a simple single-loop strap, enabling a user to independently bind and release multiple sets of items with a single, integrated device (’796 Patent, col. 2:36-41).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶24).
- Claim 1 recites a fastening strap system with the following essential elements:
- At least one first and one second elongated strap portion, each with defined end portions, widths, and lengths.
- At least one aperture located between the end portions of the first and second strap portions.
- The system consists "essentially of a unitary portion of flexible sheet material" with a first fastening surface on one side and a complementary second fastening surface on the other.
- The first and second strap portions are "parallel and collinear."
- The aperture is sized to receive the first elongated strap portion, while the wider second strap portion is prevented from insertion, allowing for the formation of two distinct, finely adjustable fastening loops.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,371,000 - “Secure Strap Systems”
Issued February 12, 2013
The Invention Explained
- Problem Addressed: As a continuation-in-part of the ’796 Patent, the ’000 Patent addresses the same general problem of providing improved, versatile strap systems for bundling multiple items together securely and independently (’000 Patent, col. 1:21-col. 2:14).
- The Patented Solution: This invention discloses a different strap geometry consisting of at least two parallel strap portions that are offset from each other. In this design, the second strap portion is "offset parallel from said first strap portion a distance about equal to said at least one first strap width" (’000 Patent, Abstract; col. 3:15-22). This structure, cut from a unitary piece of two-sided fastening material, is designed to form two parallel fastening loops without requiring an aperture for one strap to pass through.
- Technical Importance: This parallel-offset design offers an alternative structural approach to creating a dual-loop fastener, potentially simplifying manufacturing from a sheet of material while still enabling the separate bundling of two items or sets of items (’000 Patent, col. 2:48-55).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶43).
- Claim 1 recites a fastening strap system consisting of the following essential elements:
- At least one first strap portion and at least one second strap portion.
- The first strap portion has a first side with a first fastening surface and a second side with a second, complementary fastening surface.
- The second strap portion is "offset parallel from said first strap portion a distance about equal to said at least one first strap width."
- All first and second strap portions are parallel.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,386,824 - “Secure Strap Systems”
Issued July 12, 2016
- Technology Synopsis: This patent claims a method of using a fastening strap system that has a base from which at least two strap portions extend inseparably. The claimed method comprises the steps of providing such a strap, folding the first strap portion around a first element, folding the second strap portion around a second element, and cinching both portions to secure the elements (Compl. ¶64; ’824 Patent, Abstract).
- Asserted Claims: Independent claim 1 (Compl. ¶62).
- Accused Features: The complaint alleges that Defendant infringes by performing the method of using the Accused Instrumentalities to secure longitudinal elements, such as the associated cables (Compl. ¶64).
III. The Accused Instrumentality
Product Identification
"various replacement cables featuring the brand name 'SOLARAY' that include straps or strap systems" (Compl. ¶13).
Functionality and Market Context
The complaint alleges the accused straps are sold with replacement cables and are used to secure items together to avoid tangling and provide a clean appearance (Compl. ¶16). A photograph in the complaint shows the product in its retail packaging hanging on a display hook, suggesting it is a consumer good sold in-store (Compl. p. 3). Another photograph shows a close-up of the black, two-sided fastening strap itself, illustrating its physical construction (Compl. p. 3). The complaint alleges these straps include a first and second fastening loop to secure single or multiple items (Compl. ¶15).
IV. Analysis of Infringement Allegations
’796 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) at least one first elongated strap portion... b) at least one second elongated strap portion... | The accused strap system has at least two elongated strap portions. | ¶26 | col. 3:1-14 |
| c) at least one aperture... located between said at least one first strap end portion... and said at least one second strap end portion... | The accused strap system has an aperture located between the two strap portions. | ¶26 | col. 3:56-61 |
| d) wherein said fastening strap system consists essentially of a unitary portion of flexible sheet material | The accused strap system is made of a unitary piece of flexible material. | ¶26 | col. 3:1-3 |
| e) ...a first side having... at least one first fastening surface, and... a second side having... at least one second fastening surface adapted to be detachably fastenable to... said first fastening surface | The strap has two sides with complementary fastening surfaces (e.g., hook and loop). | ¶26 | col. 3:3-9 |
| l) ...form at least one first fastening loop, such first fastening loop formed by encirclement... insertion of... said first strap end portion... into and through said at least one aperture, and cinching... | The system is structured to form a first loop by passing the first strap portion through the aperture and cinching it. | ¶26 | col. 6:8-19 |
| m) ...form at least one second fastening loop formed by encirclement of said at least one second elongated strap portion... | The system is further structured to form a second loop by wrapping the second strap portion around a second element. | ¶26 | col. 6:20-29 |
’000 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) at least one first strap portion... and b) at least one second strap portion... | The accused strap system consists of at least a first and second strap portion. | ¶45 | col. 3:1-8 |
| c) wherein said at least one first strap portion has... i) at least one first side comprising at least one first fastening surface... and ii) at least one second side comprising at least one second fastening surface... | The first strap portion has two sides with complementary fastening surfaces. | ¶45 | col. 3:8-14 |
| d) wherein said at least one second strap portion is offset parallel from said first strap portion a distance about equal to said at least one first strap width | The second strap portion is allegedly offset from the first by a parallel distance approximately equal to the first strap's width. | ¶45 | col. 3:18-22 |
| e) wherein all said at least one first strap portions and all said at least one second strap portions are parallel | The strap portions of the accused product are parallel. | ¶45 | col. 3:20-22 |
Identified Points of Contention
- Structural Mismatch (’796 Patent): Claim 1 of the ’796 Patent is exceptionally detailed, requiring, for example, that the strap portions be "parallel and collinear" and that the aperture be sized to permit passage of the first strap but not the second. A central question will be whether the accused SOLARAY strap meets every one of these specific structural and dimensional limitations, raising the possibility of a defense based on non-infringement due to structural differences.
- Scope Questions (’000 Patent): The infringement allegation for the ’000 Patent hinges on the term "about equal." The case may turn on what degree of deviation from perfectly equal is permissible for the offset distance to be considered "about equal" to the strap width. This raises a classic claim construction question that will likely be a primary focus of the dispute.
V. Key Claim Terms for Construction
The Term: "aperture" (’796 Patent, Claim 1)
- Context and Importance: The structure and function of the claimed "aperture" is central to the operation described in Claim 1 of the ’796 Patent, as it enables the creation of the first cinching loop. Whether the accused product contains a structure that falls within the proper construction of this term is a critical infringement question.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a broad definition, stating the aperture "comprises a portion devoid of such flexible sheet material" (’796 Patent, col. 4:11-12), which could support an argument that any form of opening, including a simple slit, meets the limitation.
- Intrinsic Evidence for a Narrower Interpretation: Figures 16, 19, and 25 consistently depict the aperture as a distinct, die-cut, fully-enclosed hole within a wider section of the strap material (’796 Patent, Figs. 16, 19, 25). This may support an argument that the term is limited to such specific configurations and does not cover other types of openings.
The Term: "about equal" (’000 Patent, Claim 1)
- Context and Importance: This term defines the specific geometric relationship between the two strap portions, which is a core inventive concept of the ’000 patent. The infringement analysis will depend entirely on how broadly or narrowly this relational term is construed. Practitioners may focus on this term because its inherent imprecision makes it a natural point of dispute.
- Intrinsic Evidence for a Broader Interpretation: The patent does not explicitly define a numerical range for "about equal," which may support an argument that the term should be given its ordinary meaning, allowing for reasonable manufacturing tolerances and functional variations.
- Intrinsic Evidence for a Narrower Interpretation: The written description states the offset is "a distance about equal to such at least one first strap width" without further elaboration or examples of deviation (’000 Patent, col. 3:18-22). A party could argue that the lack of disclosure of any significant variation implies the term should be construed narrowly to mean "approximately the same as" or "nearly identical to."
VI. Other Allegations
Indirect Infringement
For all three patents, the complaint alleges both induced and contributory infringement. The inducement claims are based on allegations that 7-Eleven provides or distributes instructions and advertises or promotes the use of the Accused Instrumentalities in an infringing manner (e.g., Compl. ¶¶ 29, 48, 67). The contributory infringement claims are based on allegations that the straps have "special features" specially designed for infringing use (e.g., the ability to form two fastening loops) that are not staple articles of commerce (e.g., Compl. ¶¶ 30, 49, 68).
Willful Infringement
The complaint alleges willful infringement based on knowledge of the patents since at least the time Defendant received the original complaint (e.g., Compl. ¶29). It further alleges willful blindness, stating on information and belief that Defendant has a "policy or practice of not reviewing the patents of others" (e.g., Compl. ¶¶ 32, 51, 70).
VII. Analyst’s Conclusion: Key Questions for the Case
A key evidentiary question will be one of structural correspondence: Can Ministrap prove that the physical construction of the accused SOLARAY strap meets every specific geometric and dimensional limitation recited in the asserted claims, particularly the "parallel and collinear" orientation and aperture sizing in the ’796 Patent and the "offset parallel" distance in the ’000 Patent?
The case will likely turn on a central issue of claim construction: How will the court define the scope of imprecise terms like "aperture" (’796 Patent) and "about equal" (’000 Patent)? The resolution of these terms could be dispositive, as a narrow construction may place the accused product outside the claims' literal scope.
A third core issue will be one of method infringement: For the ’824 patent, can Ministrap establish that 7-Eleven's customers are directly infringing by performing the claimed method steps, and that 7-Eleven's instructions or marketing materials specifically encourage the performance of the claimed sequence of "folding" and "cinching" actions with the requisite intent to induce infringement?