DCT
2:23-cv-00328
Ministrap LLC v. Costco Wholesale Corp Pursuant To Court Order Docket In Lead Case 2 23cv330
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ministrap, LLC (Georgia)
- Defendant: Costco Wholesale Corporation (Washington)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:23-cv-00328, E.D. Tex., 07/14/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains regular and established places of business within the district and has committed the alleged acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s sale of consumer electronics products, such as charging cables from the "Anker" and "atomi" brands, infringes three patents related to secure strap systems used for bundling and organizing items.
- Technical Context: The technology at issue involves self-fastening straps, typically made of hook-and-loop material, designed with specific geometries to allow for the versatile and independent securing of one or more elongated objects.
- Key Procedural History: The three asserted patents are part of a single family, sharing a common priority claim. 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 U.S. Patent No. 8,371,000. This shared prosecution history may be relevant for claim construction and potential estoppel arguments.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-07 | Earliest 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 |
| 2023-07-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,587,796 - Secure Strap Systems, Issued Sep. 15, 2009
The Invention Explained
- Problem Addressed: The patent’s background section identifies limitations in prior art self-fastening straps, noting their inability to effectively bundle multiple, distinct sets of objects or to allow for the selective release of one set while the other remains secured (ʼ796 Patent, col. 1:57-2:7).
- The Patented Solution: The invention is a unitary strap system, cut from a single piece of flexible material, featuring at least two strap portions and an aperture. This configuration, particularly the "open-center" embodiment, allows the strap to form two independent, cinchable loops for organizing multiple items or for anchoring a bundle to another object (ʼ796 Patent, Abstract; Fig. 16; col. 4:1-4).
- Technical Importance: This design provided a more versatile method for cable management compared to simple, single-loop ties, addressing the common issue of organizing multiple electronic accessories or securing them during transport (ʼ796 Patent, col. 1:20-34).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶30).
- The essential elements of independent claim 1 include:
- A first and second elongated strap portion, a first and second fastening surface, and an aperture, all formed from a unitary portion of flexible sheet material.
- A geometric requirement that the first and second strap portions are "parallel and collinear," with the aperture located between their end portions.
- A functional requirement that the aperture is sized to receive the first strap portion for cinching, but the width of the second strap portion prevents its own insertion into the aperture.
- The system is structured to form two independent and finely adjustable fastening loops.
U.S. Patent No. 8,371,000 - Secure Strap Systems, Issued Feb. 12, 2013
The Invention Explained
- Problem Addressed: The patent addresses the same general problem as its parent: the need for a better system to securely and selectively fasten multiple bundles of items, such as electrical cords and their plugs (ʼ000 Patent, col.1:55-2:14).
- The Patented Solution: The invention described is a fastening strap system consisting of at least two strap portions made from a material with fastening surfaces on both sides. The key structural feature is that the second strap portion is "offset parallel" from the first strap portion by a distance approximately equal to the first strap's width, allowing the formation of two distinct loops ('000 Patent, Abstract; col. 3:28-39). Figure 3 illustrates this offset, parallel geometry ('000 Patent, Fig. 3).
- Technical Importance: This "offset parallel" design offers an alternative configuration to the "collinear" approach for achieving the goal of independently securing multiple items or bundles.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶42).
- The essential elements of independent claim 1 consist of:
- A first and a second strap portion, each with a length and width.
- The first strap portion has a first side and a second side with detachably fastenable surfaces.
- A geometric requirement that the second strap portion is "offset parallel from said first strap portion a distance about equal to said at least one first strap width."
- A further requirement that both strap portions are parallel.
U.S. Patent No. 9,386,824 - Secure Strap Systems, Issued Jul. 12, 2016
- Technology Synopsis: This patent claims methods of using and manufacturing strap systems. The asserted method claim involves providing a strap with a base and two offset, parallel strap portions, and then using it to secure longitudinal elements by folding and cinching the straps to create independent loops (’824 Patent, Claim 1). The patent also claims systems with specific fastener surfaces, such as three-dimensional mushroom-shaped hooks (’824 Patent, Claims 4, 9).
- Asserted Claims: At least independent claim 1 (Compl. ¶59).
- Accused Features: The complaint alleges that the strap systems included with the Accused Products, which are used to secure items like cables, are used in a manner that practices the claimed method (Compl. ¶¶19, 59).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the Accused Products as "various replacement cables featuring brand names such as 'Anker' and 'atomi' that include straps or strap systems" (Compl. ¶18).
Functionality and Market Context
- The accused instrumentalities are self-fastening straps included with consumer electronics products for the purpose of securing "elongated items such as cables and wires" (Compl. ¶19).
- The complaint alleges these straps aid in avoiding tangling and enable multiple items or sections of a single item to be attached together (Compl. ¶21).
- Visual evidence in the complaint depicts packaging for Anker-branded "PowerLine Select+ Lightning Cable Bundle" products sold by Defendant (Compl. p. 4). A close-up photograph shows a strap with the "atomi" brand name, featuring a narrow end and a wider body with a rectangular aperture (Compl. p. 8).
- The complaint alleges that Defendant sells the Accused Products at its retail locations, indicating they are commercially significant consumer goods (Compl. ¶19).
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 Products comprise a fastening strap system with first and second elongated strap portions. | ¶31 | col. 12:20-29 |
| c) at least one aperture... 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 Accused Products' strap system includes at least one aperture located between the first and second strap portions. | ¶31 | col. 4:56-64 |
| d) wherein said fastening strap system consists essentially of a unitary portion of flexible sheet material | The fastening strap system consists essentially of a unitary portion of flexible sheet material. | ¶31 | col. 3:1-4 |
| e) wherein said unitary portion of flexible sheet material comprises, i) a first side... and ii) a second side... adapted to be detachably fastenable... | The flexible sheet material has a first side with a first fastening surface and a second side with a second, detachably fastenable fastening surface. | ¶31 | col. 3:4-9 |
| f) wherein all said at least one first elongated strap portions and all said at least one second elongated strap portions are parallel and collinear | The first and second elongated strap portions of the Accused Products are parallel and collinear. | ¶31 | col. 3:10-12 |
| i) wherein said second strap width... prevents insertion of said at least one second elongated strap portion into said at least one aperture | The second strap width of the Accused Products' strap prevents its insertion into the aperture. | ¶31 | col. 21:26-30 |
| l) ...structured and arranged to form at least one first fastening loop... m) ...structured and arranged to form at least one second fastening loop... | The strap system is structured to form first and second fastening loops for securing elements. | ¶31 | col. 10:1-12 |
Identified Points of Contention
- Scope Questions: A central issue may be the interpretation of claim 1's requirement that the strap portions be "parallel and collinear." While the visual evidence of the accused straps (Compl. p. 8) appears to show a single, straight body that could be described as collinear, this raises the question of whether a strap made from one piece of material with a hole punched in it constitutes two distinct "portions" as contemplated by the patent.
- Technical Questions: The complaint alleges that the "second strap width" prevents its own insertion into the aperture, a key functional limitation for cinching. The factual support for this allegation will be critical, depending on how the "second elongated strap portion" is defined in relation to the strap's wider body and the aperture's dimensions.
’000 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) at least one first strap portion... b) at least one second strap portion... | The Accused Products' fastening strap system consists of at least a first strap portion and a second strap portion. | ¶43 | col. 19:5-15 |
| c) wherein said at least one first strap portion has... i) at least one first side... and ii) at least one second side... iii) wherein said... fastening surface is... detachably fastenable... | The first strap portion has first and second sides with fastening surfaces that are detachably fastenable to each other. | ¶43 | col. 11:45-53 |
| 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 parallel from the first strap portion by a distance about equal to the first strap's width. | ¶43 | col. 3:32-36 |
| e) wherein all said at least one first strap portions and all said at least one second strap portions are parallel | All first and second strap portions are alleged to be parallel. | ¶43 | col. 3:37-39 |
Identified Points of Contention
- Scope Questions: There is an apparent tension between the infringement theories for the ’796 and ’000 patents. The former requires a "collinear" structure, while the latter requires an "offset parallel" structure. The complaint's allegation that the same accused straps meet both of these seemingly contradictory geometric limitations raises a significant question for claim construction. Resolution may depend on whether the terms are interpreted broadly or if an equivalents theory is pursued for one or both claims.
- Technical Questions: The visual evidence in the complaint (e.g., Compl. p. 8) depicts a single, straight strap body. This raises the question of what evidence supports the allegation that this structure is "offset parallel" as required by claim 1 of the ’000 patent, which the patent specification illustrates as two physically separated, offset arms (’000 Patent, Fig. 3).
V. Key Claim Terms for Construction
Term: "parallel and collinear" (’796 Patent, Claim 1)
- Context and Importance: This geometric term is critical for defining the scope of claim 1 and distinguishing it from other configurations, including the "offset parallel" design of the ’000 Patent. Practitioners may focus on this term because the infringement case for the ’796 Patent depends on whether the accused single-body strap meets this specific spatial arrangement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that as long as the two functional strap portions lie along the same longitudinal axis, they satisfy the "collinear" requirement, even if formed from a single piece of material. The overall purpose is creating two loops from a unitary strap.
- Evidence for a Narrower Interpretation: The specification illustrates various multi-ended strap configurations (’796 Patent, Figs. 10, 12, 14), suggesting that the patentee deliberately chose the specific term "collinear" for claim 1. A party could argue this requires a stricter geometric arrangement than what is present in a simple strap with a punched hole.
Term: "offset parallel" (’000 Patent, Claim 1)
- Context and Importance: This is the defining structural limitation of the asserted claim in the ’000 patent. The viability of the infringement allegation hinges on whether the accused strap's single-body design can be construed as "offset parallel."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that the term should be interpreted functionally. When the strap is used to form two loops, the paths of the strap material could be considered "offset parallel" in their application, even if the strap itself is a single straight piece when laid flat.
- Evidence for a Narrower Interpretation: The patent’s figures, especially Figure 3, explicitly depict an embodiment with two distinct, parallel arms that are physically offset from one another (’000 Patent, Fig. 3). A defendant would likely argue that this illustration defines the required meaning of "offset parallel," which a single, straight strap body does not possess.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement for the ’000 patent. Inducement is alleged based on Defendant providing instructions and promoting the use of the Accused Products in an infringing manner (Compl. ¶44). Contributory infringement is alleged on the basis that the products have special features—namely, the ability to form two fastening straps—that are not suitable for substantial non-infringing use (Compl. ¶45).
- Willful Infringement: Willfulness is alleged for both the ’796 and ’000 patents. The allegations are based on post-suit knowledge, stating Defendant had knowledge of the patents "at least as of the date when they were notified of the filing of this action" (Compl. ¶¶32, 46). The complaint further alleges that Defendant has a "policy or practice of not reviewing the patents of others" and has thus been "willfully blind" to Plaintiff's patent rights (Compl. ¶¶33, 47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and consistency: can the accused straps, which appear to be single-body products with a punched aperture, be construed to meet both the "parallel and collinear" limitation of the ’796 patent and the "offset parallel" limitation of the ’000 patent? The court’s construction of these seemingly contradictory geometric terms, in light of the patent specifications and prosecution histories, will be pivotal.
- A key evidentiary question will be one of structural identity: does the physical construction of the accused straps correspond to the claimed "first" and "second" strap portions, or is there a fundamental mismatch? The case may turn on whether the plaintiff can prove that a single strap with a hole is structurally and functionally equivalent to the distinct multi-portion systems described and claimed in the patents-in-suit.