Omnitek Partners LLC v. Bionic Power Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Omnitek Partners LLC (New Jersey)
  • Defendant: Bionic Power Inc. (Canada)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 2:24-cv-00041, E.D. Tex., 01/24/2024
• Venue Allegations: Plaintiff alleges that because Defendant is a foreign corporation organized under the laws of Canada, venue is proper in any U.S. judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s Amplify augmented exoskeleton infringes two patents related to methods and devices for generating electrical power from the motion of a user's joints during locomotion.
• Technical Context: The technology concerns wearable biomechanical energy harvesting systems that capture power from human movement, a field relevant for providing portable power to electronics in military, recreational, and industrial applications.
• Key Procedural History: The complaint notes that both patents-in-suit were examined by the same USPTO examiner and asserts they are valid over the prior art cited during prosecution. U.S. Patent No. 8,062,237 is a divisional of the application that led to U.S. Patent No. 7,645,246 and is subject to a terminal disclaimer, which may limit its enforceable term to that of the earlier patent.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,645,246 - "Method for Generating Power Across a Joint of the Body During a Locomotion Cycle," issued January 12, 2010

The Invention Explained

• Problem Addressed: The patent specification describes human locomotion (e.g., walking) as involving two main energy expenditures: "locomotion energy" used to accelerate and decelerate limbs, and "stance energy" used to maintain posture (’246 Patent, col. 1:36-65). A significant portion of this energy is consumed when muscles act as brakes to decelerate a limb, an action that does not contribute to forward movement and leads to fatigue (’246 Patent, col. 7:3-10).
• The Patented Solution: The invention proposes a method to offload this braking work from the user's muscles to a wearable device. The method involves selectively "engaging" an energy-absorbing device across a joint only during the specific phase of a gait cycle when muscles would normally be absorbing energy (i.e., decelerating the limb). The device is "disengaged" during the propulsion phase when muscles are performing positive work. The energy captured during the braking phase is then converted and returned to a storage device (e.g., a battery) or a power-consuming device (’246 Patent, Abstract; col. 8:10-24).
• Technical Importance: This approach aims to simultaneously reduce user fatigue by offloading metabolically expensive muscle work and generate on-the-go electrical power for portable electronics (’246 Patent, col. 2:3-14).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1 (’246 Patent, col. 35:38-36:26).
• Essential elements of Claim 1 include:
  • Disposing an energy absorbing and converting device across a joint of a living body.
  • Engaging the device to absorb mechanical energy only during a portion of the locomotion cycle where muscles would otherwise do work to absorb energy.
  • Disengaging the device during a portion of the locomotion cycle where muscles do work to increase mechanical energy.
  • At least partially converting the absorbed energy and providing it to an energy storage or power-consuming device.

U.S. Patent No. 8,062,237 - "Device for Generating Power Across a Joint," issued November 22, 2011

The Invention Explained

• Problem Addressed: As a divisional of the ’246 Patent application, this patent addresses the same problem of energy expenditure and fatigue caused by the muscle-braking phase of locomotion (’237 Patent, col. 1:36-56).
• The Patented Solution: Rather than claiming the method, this patent claims the device that performs the energy harvesting. The claimed device is an "energy absorbing and converting device" configured to be selectively placed in an "engaged state" to absorb energy during the muscle-braking portions of a gait cycle and a "disengaged state" during the muscle-propulsion portions. The captured energy is then converted for storage or use (’237 Patent, Abstract).
• Technical Importance: The device provides a physical embodiment for the method described in the parent patent, creating a tangible product that can reduce fatigue and generate power (’237 Patent, col. 2:3-14).

Key Claims at a Glance

• The complaint asserts at least independent Claim 1 (’237 Patent, col. 35:38-36:15).
• Essential elements of Claim 1 include:
  • An energy absorbing and converting device configured to be disposed across a joint.
  • The device is configured to be selectively in an engaged state or a disengaged state during selected portions of the locomotion cycle.
  • The device is engaged only during the portion of the cycle where muscles would otherwise absorb energy.
  • The device is disengaged during the portion of the cycle where muscles work to increase energy.
  • The absorbed energy is at least partially converted and provided to an energy storage or power-consuming device.

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Amplify augmented exoskeleton" as the infringing instrumentality (Compl. ¶¶30, 45).

Functionality and Market Context

The complaint alleges on information and belief that the Amplify product is an "augmented exoskeleton" that practices the technology claimed in the patents-in-suit (Compl. ¶¶30, 36, 45, 50). It further alleges that the Defendant manufactures, uses, sells, and advertises these products in the United States and the Eastern District of Texas (Compl. ¶6). The complaint does not provide specific details on the technical operation or market position of the accused product within the body of the complaint, instead incorporating by reference unattached claim chart exhibits (Compl. ¶¶35-36, 50-51). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement based on claim charts attached as Exhibits C and D, which were not filed with the public complaint. The analysis below summarizes the infringement theory for the lead independent claim of each patent based on the narrative allegations.

’246 Patent Infringement Allegations

’237 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central issue for both patents will be the construction of the "engaging... only during" and "disengaging during" limitations. The dispute may center on whether this requires active, microprocessor-controlled timing or if it can be read on a passive mechanical system that inherently resists motion in one direction or part of the cycle but not another.
• Technical Questions: Since the complaint lacks technical details, a primary question is what evidence exists to show that the Amplify exoskeleton actually performs the selective engagement and disengagement as claimed. The functionality of its "energy absorbing and converting device" will be a critical factual dispute that discovery will need to resolve.

V. Key Claim Terms for Construction

• The Term: "engaging the device... only during a portion of the locomotion cycle" and "disengaging the device during a portion of the locomotion cycle" (’246 Patent, Claim 1).

• Context and Importance: These limitations are the core of the claimed invention, defining the selective, timed nature of the energy harvesting. Infringement will hinge on whether the accused product’s operation meets this selective engagement/disengagement requirement tied to the phases of muscle work (negative vs. positive).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification discloses embodiments where engagement is achieved via simple, passive mechanical means, such as a spring that engages only within a certain range of ankle motion (’246 Patent, col. 11:15-26, FIGS. 10-11). This may support a construction that does not require active electronic control.
  • Evidence for a Narrower Interpretation: The specification also details complex embodiments using microprocessors and sensors (e.g., accelerometers) to "optimally time the aforementioned sequence of activation and deactivation" (’246 Patent, col. 19:57-65). A party could argue that the term "selectively" (used in the ’237 patent) implies this more sophisticated, active control.

• The Term: "energy absorbing and converting device" (’237 Patent, Claim 1).

• Context and Importance: The definition of this term determines the types of physical hardware covered by the claims. As the complaint does not describe the accused device's mechanism, the construction of this term will be critical for mapping the claim to the product.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent provides a broad definition, stating the absorbed energy can be converted to "electrical energy, heat energy, and mechanical energy" and that the absorbing element can be a "mechanical device" (’237 Patent, col. 4:22-26). This supports a construction covering a wide range of generators, brakes, or dampers.
  • Evidence for a Narrower Interpretation: A defendant might point to the highly detailed descriptions of specific embodiments, such as the piezoelectric generator made of bending beams (FIGS. 24a-c), to argue for a narrower scope (’237 Patent, col. 25:46-26:41). However, limiting the claim to a preferred embodiment is generally disfavored.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for both patents. The factual basis for this allegation is that Defendant distributes "product literature and website materials" which allegedly instruct end users on how to operate the Amplify exoskeleton in a manner that directly infringes the claims (Compl. ¶¶33, 48).
• Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it pleads facts to support a claim for post-suit willfulness by alleging that Defendant has knowledge of the patents and its infringement "at least since being served by this Complaint" and continues to infringe (Compl. ¶¶34, 49). There are no allegations of pre-suit knowledge.

VII. Analyst’s Conclusion: Key Questions for the Case

• A primary issue will be evidentiary and factual: given the complaint's pleading on "information and belief" and its reliance on unfiled exhibits, the case will turn on what discovery reveals about the technical operation of the Amplify exoskeleton. Does it, in fact, contain a mechanism that selectively engages to harvest energy only during the negative-work (muscle braking) phase of a gait cycle and disengages during the positive-work (propulsion) phase?
• A second core issue will be one of claim construction: can the "engaging... only during" and "disengaging during" limitations, which form the heart of the invention, be construed to cover a passive mechanical system, or do they require active, sensor-driven control? The resolution of this question will define the legal scope of the patents and be dispositive for infringement.