DCT
2:21-cv-00410
Ministrap LLC v. QuikTrip Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ministrap, LLC (Georgia)
- Defendant: QuikTrip Corporation (Oklahoma)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:21-cv-00410, E.D. Tex., 02/01/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains established and regular places of business within the district, including numerous retail locations, and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s SOLARAY brand replacement cables, which are sold with 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 bundle items such as electrical cables and wires.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,371,000 is a continuation-in-part of U.S. Patent No. 7,587,796, and U.S. Patent No. 9,386,824 is a continuation-in-part of the '000 patent, indicating a direct familial relationship between the asserted patents. The current filing is a First Amended Complaint, and the complaint references the date of the original complaint to establish a timeline for alleged willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-07 | Priority Date for '796, '000, and '824 Patents |
| 2009-09-15 | U.S. Patent No. 7,587,796 Issued |
| 2013-02-12 | U.S. Patent No. 8,371,000 Issued |
| 2016-07-12 | U.S. Patent No. 9,386,824 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's background section identifies limitations in prior art fastening straps, such as their inability to easily and independently bind multiple sets of items together or to allow for the selective release of one set without unbundling the other (’796 Patent, col. 1:56-col. 2:7). It also notes the difficulty of handling long straps, which can tangle or prematurely fasten to themselves (’796 Patent, col. 2:11-21).
- The Patented Solution: The invention is a fastening strap system, typically formed from a single piece of double-sided hook-and-loop material, that features at least two elongated strap portions and an aperture. The key design places an aperture between a first and second strap portion, allowing one portion to be passed through the aperture to form a first adjustable loop, while the second portion can form a second, independent loop. This configuration, illustrated in embodiments like Figure 16, enables the independent cinching and securing of at least two different elements or bundles (’796 Patent, Abstract; col. 4:35-51; Fig. 16).
- Technical Importance: This design provided a more versatile tool for cable management than simple single-loop straps, allowing a user to secure multiple, related objects (like a power cord and its plug) together with one integrated device while maintaining independent adjustability for each (’796 Patent, col. 2:3-10).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
- Essential elements of independent claim 1 include:
- A fastening strap system with a first and a second elongated strap portion and at least one aperture.
- The system "consists essentially of a unitary portion of flexible sheet material" with complementary first and second fastening surfaces (e.g., hook and loop).
- The strap portions are "parallel and collinear," and the aperture is located "between" the first and second strap end portions.
- The aperture is sized to receive the first strap portion, while the width of the second strap portion "prevents insertion" into the aperture.
- The system is structured to form at least two independent and "finely adjustable" fastening loops.
- The complaint focuses on claim 1 but makes a general prayer for relief covering "one or more claims" (Compl. ¶74(a)).
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 problems of bundling multiple items with a single, versatile fastener (’000 Patent, col. 1:61-col. 2:14).
- The Patented Solution: This patent also discloses a strap system with at least two strap portions made from a unitary piece of double-sided material. However, its claims describe a different geometry: one where a second strap portion is "offset parallel" from the first strap portion by a distance "about equal to said at least one first strap width." This structure, depicted in figures like Figure 6, creates two parallel arms extending from a common base, which can be used to form independent fastening loops (’000 Patent, Abstract; col. 3:15-37; Fig. 6).
- Technical Importance: This "offset parallel" design offers an alternative manufacturing and functional configuration for achieving the goal of independently bundling multiple items, distinct from the "collinear" arrangement described in the parent '796 patent (’000 Patent, col. 2:42-50).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶43).
- Essential elements of independent claim 1 include:
- A fastening strap system "consisting of" a first strap portion and a second strap portion.
- The first strap portion has two sides with complementary fastening surfaces.
- 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 strap portions are "parallel."
- The complaint focuses on claim 1 but makes a general prayer for relief covering "one or more claims" (Compl. ¶74(a)).
Multi-Patent Capsule
- Patent Identification: 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. The method comprises providing a strap with a base from which at least two "divided and offset in parallel" strap portions extend, and then performing the steps of folding and cinching these portions around separate longitudinal elements to secure them (’824 Patent, Abstract; col. 3:1-26).
- Asserted Claims: The complaint asserts infringement of at least independent claim 1 (Compl. ¶62).
- Accused Features: The complaint alleges infringement through the "method of using the fastening strap system of the Accused Instrumentalities to secure at least one first longitudinal element and at least one second longitudinal element" (Compl. ¶64).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "various replacement cables featuring the brand name 'SOLARAY' that include straps or strap systems" sold by Defendant QuikTrip (Compl. ¶13).
Functionality and Market Context
- The complaint alleges the straps are used to secure elongated items like cables and wires, featuring a "first fastening loop and a second fastening loop" to secure items together (Compl. ¶¶14-15). The function is to prevent tangling, provide a clean appearance, and attach multiple items or sections of items to each other (Compl. ¶16).
- The complaint provides a visual of the product in its retail packaging, showing a black cable secured by an attached black strap (Compl. p. 3). A second visual shows a standalone red "SOLARAY" branded strap laid flat, which depicts a wider body portion with an aperture and a thinner strap portion extending from it (Compl. p. 3).
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 complaint alleges the SOLARAY strap system includes at least a first and second elongated strap portion (Compl. ¶26(a)-(b)). The visual of the red strap shows a structure with a long, thin strap portion and a wider body portion (Compl. p. 3). | ¶26 | col. 3:1-4 |
| g) wherein said at least one aperture is located between said at least one first strap end portion... and said at least one second strap end portion... | The complaint alleges the accused product has an aperture located between the two strap end portions (Compl. ¶26(g)). The visual of the red strap shows an aperture in the wider body of the strap (Compl. p. 3). | ¶26 | col. 3:10-13 |
| h) wherein said at least one aperture width is sized so as to be able to receive said at least one first elongated strap portion without requiring twisting... | The complaint recites this limitation, alleging the aperture is sized to receive the first strap portion (Compl. ¶26(h)). This is alleged to enable the formation of a fastening loop (Compl. ¶15). | ¶26 | col. 6:7-12 |
| l) ...structured and arranged to form at least one first fastening loop... m) ...further structured and arranged to form at least one second fastening loop... | The complaint alleges that the accused straps are used to form a first and second fastening loop to secure single or multiple items (Compl. ¶15), and recites the claim language describing this function (Compl. ¶26(l)-(m)). | ¶¶15, 26 | col. 6:1-27 |
Identified Points of Contention:
- Scope Questions: A central question may be whether the accused strap, as depicted in the complaint's visual evidence, meets the "parallel and collinear" limitation of claim 1(f). A defendant may argue that the product's "head-and-tail" design, with one thin strap extending from a wider body, is not "collinear" in the sense described by the patent, which distinguishes this geometry from "offset" designs and shows specific "open-center" embodiments to illustrate the term (’796 Patent, col. 10:1-5, Fig. 16).
- Technical Questions: The complaint alleges that the second strap's width "prevents insertion" into the aperture, per claim 1(i) (Compl. ¶26(i)). However, it provides no specific facts or measurements to support this functional limitation. This raises an evidentiary question about whether the accused product actually operates in the claimed manner.
'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 complaint alleges the accused system consists of at least a first and second strap portion (Compl. ¶45(a)-(b)), which it uses to form two fastening loops (Compl. ¶15). | ¶45 | col. 3:15-20 |
| 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 complaint recites this structural limitation verbatim, alleging the SOLARAY strap possesses this "offset parallel" geometry (Compl. ¶45(d)). | ¶45 | col. 3:31-34 |
Identified Points of Contention:
- Scope Questions: The complaint alleges infringement of both the '796 patent (requiring "collinear" portions) and the '000 patent (requiring "offset parallel" portions). These two geometries appear to be mutually exclusive design choices. A key point of contention will be whether the single accused product design can plausibly infringe claims requiring both configurations. The complaint provides a visual that appears to support the '796 patent's geometry, but offers no visual evidence for the "offset parallel" structure of the '000 patent.
- Technical Questions: Claim 1 is a "consisting of" claim, which is narrowly construed. A defendant is likely to argue that the accused product contains additional, unclaimed structural elements beyond the two strap portions, potentially placing it outside the scope of the claim.
V. Key Claim Terms for Construction
For the '796 Patent
- The Term: "parallel and collinear"
- Context and Importance: This phrase in claim 1(f) defines the core spatial relationship between the two strap portions. The infringement analysis for the '796 patent will likely depend heavily on whether the accused product's "head-and-tail" design can be considered "collinear." Practitioners may focus on this term because its construction could be dispositive of infringement for this patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term simply means the strap portions can be laid out along a single straight line, without requiring a specific symmetrical structure.
- Evidence for a Narrower Interpretation: The specification explicitly distinguishes between different strap configurations, such as the "offset-relationship" shown in Fig. 3 and the "open-center-configuration" of Fig. 16 (’796 Patent, col. 10:1-5, 36-43). A defendant might argue that "collinear" must be read in light of these distinct embodiments to mean a structure where two strap ends extend from opposite sides of a central element, a structure not clearly depicted in the complaint's visuals.
For the '000 Patent
- The Term: "offset parallel"
- Context and Importance: This phrase in claim 1(d) is the central structural limitation for the '000 patent. As the complaint alleges infringement of patents with seemingly different geometries, the definition of this term will be critical. The lack of visual evidence in the complaint supporting this specific geometry makes its construction particularly important.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that any design with two non-overlapping, generally parallel arms extending from a common point meets the definition.
- Evidence for a Narrower Interpretation: A defendant would likely point to specific embodiments like Figure 6, arguing that "offset parallel" requires two distinct strap portions that run parallel to each other for their full length and are separated by a consistent distance, which is a very specific structure (’000 Patent, Fig. 6; col. 4:44-51).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both inducement and contributory infringement for all three asserted patents. The inducement theory is based on Defendant allegedly distributing instructions and advertising that guide customers to use the straps in an infringing manner (Compl. ¶¶29, 48, 67). The contributory infringement theory is based on allegations that the straps have special features (the ability to form two fastening loops) that are not staple articles of commerce and have no substantial non-infringing use (Compl. ¶¶30, 49, 68).
- Willful Infringement: Willfulness is alleged based on knowledge of the patents acquired "at least as of the date when they were notified of the filing of this action" (Compl. ¶¶31, 50, 69). The complaint also pleads willful blindness, alleging Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶¶32, 51, 70).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural interpretation: can a single accused product be read to infringe claims from patents that appear to require mutually exclusive geometries—the "parallel and collinear" structure of the '796 patent and the "offset parallel" structure of the '000 patent? The court will have to determine if the complaint plausibly alleges infringement of both, especially given the visual evidence provided seems to favor only one of these configurations.
- A key question will be one of claim construction: how will the court define the terms "parallel and collinear" (’796 patent) and "offset parallel" (’000 patent)? The resolution of infringement will likely turn on whether these terms are given a broad, functional interpretation or are narrowly construed to require the specific geometric arrangements depicted in the patents' figures.
- A central evidentiary question will be one of methodology: for the '824 method patent, what evidence can Plaintiff produce to show that Defendant or its customers perform the precise, multi-step method of "folding," "looping," and "cinching" required by the asserted claims? The complaint's allegations of method infringement will require factual proof of specific user actions.