Omnitek Partners LLC v. Spring Loaded Technology Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Omnitek Partners LLC (New Jersey)
  • Defendant: Spring Loaded Technology Inc. (Canada)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 2:24-cv-00042, E.D. Tex., 01/24/2024
• Venue Allegations: Venue is asserted on the basis that the Defendant is a foreign company not resident in the United States and may therefore be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s Levitation Knee Brace infringes a patent related to walk-assist devices that store and release energy during movement.
• Technical Context: The technology pertains to biomechanical and orthopedic devices designed to reduce the metabolic energy a user expends during periodic motions like walking or running.
• Key Procedural History: The complaint notes that during the patent's prosecution, the USPTO Examiner considered numerous prior art references, which may strengthen the patent’s presumption of validity against that specific art. No other prior litigation, licensing, or post-grant proceedings are mentioned.

Case Timeline

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

U.S. Patent No. 8,579,771 - "Walk-Assist Devices and Methods"

• Patent Identification: U.S. Patent No. 8,579,771, “Walk-Assist Devices and Methods,” issued November 12, 2013.

The Invention Explained

• Problem Addressed: The patent’s background section identifies two primary components of energy expenditure during human locomotion: "stance energy," required to maintain posture, and "locomotion energy," required to cyclically accelerate and decelerate the limbs. The patent asserts that prior art devices assisted with "stance energy" but did not effectively address the reduction of "locomotion energy" (Compl. ¶15; ’771 Patent, col. 1:33-54, col. 2:8-11).
• The Patented Solution: The invention proposes a method and an apparatus for capturing and reusing "locomotion energy." The device is designed to store mechanical energy during phases of a periodic motion where muscles would normally absorb energy (e.g., deceleration) and then return that stored energy during phases where muscles would perform work (e.g., acceleration), thereby reducing the net effort required from the user (’771 Patent, Abstract; col. 8:3-8). Embodiments show a hinged apparatus worn across a joint, such as an ankle, incorporating an elastic element that engages and disengages to manage this energy transfer (’771 Patent, Fig. 9).
• Technical Importance: This approach aims to reduce user fatigue, which could enable individuals to walk or run for longer distances, or carry heavier loads, with the same level of exertion (’771 Patent, col. 3:5-10).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1 (Compl. ¶25).
• The essential elements of Claim 1 include:
  • An apparatus with first and second parts configured to be disposed across a joint of a living body.
  • One or more connecting members with an axis of rotation substantially at the joint.
  • An elastic element connected to the parts, having an "active range" where it is "substantially engaged" to absorb mechanical energy during a portion of the locomotion cycle when the muscles would otherwise be doing work to absorb that energy.
  • The elastic element also has an "inactive range" where it is "substantially disengaged" during another portion of the locomotion cycle when the muscles are doing work to increase mechanical energy.
• The complaint does not explicitly reserve the right to assert dependent claims, but the claims contain nine dependent claims (Compl. ¶12).

III. The Accused Instrumentality

Product Identification

• The accused product is the "Levitation Knee Brace" (Compl. ¶25).

Functionality and Market Context

• The complaint alleges that the Levitation Knee Brace practices the technology claimed in the ’771 Patent, but does not provide an independent technical description of the product's operation or features (Compl. ¶30). The complaint refers to a claim chart in "Exhibit B" for a detailed infringement analysis, but this exhibit was not attached to the filed complaint (Compl. ¶25, ¶30). No allegations regarding the product's specific market position are included.

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendant's "Levitation Knee Brace" directly infringes at least Claim 1 of the ’771 Patent (Compl. ¶25). The complaint incorporates by reference a claim chart, designated as Exhibit B, which purportedly provides a detailed comparison of the accused product to the elements of Claim 1 (Compl. ¶30-31). However, Exhibit B was not provided with the complaint.

The complaint narratively alleges that the accused products "satisfy all elements of the exemplary claim 1" but does not plead specific facts in the body of the complaint that map individual product features to the limitations of Claim 1 (Compl. ¶30). The infringement theory appears to be that the Levitation Knee Brace functions as a walk-assist device that, like the claimed invention, has an elastic component that engages to store energy during one part of a user's stride and disengages during another part to reduce the user's effort.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: Claim 1 is directed to an apparatus for a "joint" generally, and the accused product is a knee brace. While the patent explicitly contemplates application to the knee (’771 Patent, col. 4:9), a potential dispute may arise if the defense attempts to limit the claim scope to the more frequently described ankle-joint embodiments (e.g., ’771 Patent, Fig. 9, col. 9:4-10:53).
• Technical Questions: A central technical question will be whether the Levitation Knee Brace actually operates with the distinct "active range" and "inactive range" required by Claim 1. The evidence will need to show not only that the brace's elastic element stores and releases energy, but that it is "substantially engaged" during the body's energy-absorbing phase and "substantially disengaged" during the body's energy-producing phase, as the claim requires.

V. Key Claim Terms for Construction

The Term

• "substantially disengaged"

Context and Importance

• The infringement analysis for Claim 1 hinges on whether the accused device's elastic element becomes "substantially disengaged" during the "inactive range" of motion. The definition of this term will determine what level of mechanical interaction is required for the accused product to fall outside the claim. Practitioners may focus on this term because it distinguishes the invention from a simple spring that is always under some tension throughout a cycle of motion.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: A party arguing for a broader meaning might point to the word "substantially," suggesting that the claim does not require complete or total disengagement. Under this view, any period where the elastic element is slack or under minimal tension, thus not meaningfully resisting the user's motion, could satisfy the limitation.
• Evidence for a Narrower Interpretation: A party arguing for a narrower meaning could cite specific embodiments in the patent that show a mechanical, clutch-like disengagement. For example, the specification describes a configuration where a link is "free to rotate ... without generating resistance to rotation ... unless it enters the range 137," implying a binary on/off state of engagement rather than a continuum of tension (’771 Patent, col. 11:1-10, Fig. 10). This could support an argument that "substantially disengaged" requires a specific mechanism that functionally uncouples the elastic element.

VI. Other Allegations

Indirect Infringement

• The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes one or more claims" (Compl. ¶28-29). The complaint also makes a conclusory allegation of contributory infringement (Compl. ¶25).

Willful Infringement

• The willfulness allegation is based on post-suit knowledge. The complaint asserts that service of the complaint itself provides Defendant with actual knowledge of infringement and that any continued infringing activity thereafter is willful (Compl. ¶23, ¶27-28).

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

1. Evidentiary Sufficiency: A primary issue, stemming from the complaint's lack of specific factual allegations and the missing Exhibit B, will be an evidentiary one. Can the Plaintiff demonstrate, with technical evidence, that the Levitation Knee Brace actually functions with the claimed, distinct "active" and "inactive" ranges, where its elastic element is "substantially engaged" and "substantially disengaged" in coordination with the phases of a user's stride?

2. Claim Construction: The case will likely turn on a question of definitional scope: how will the court construe the term "substantially disengaged"? Does this require a mechanical decoupling of the elastic element, as suggested by certain patent embodiments, or can it be satisfied by a period of minimal tension in a continuously connected spring? The answer will define the boundary of infringement.

3. Functionality Mismatch: A key question of functional operation will be whether the accused knee brace performs the specific energy absorption and return cycle described by the patent. The defense may argue that while its brace provides support, it does not operate in the specific, timed, engage/disengage manner required to literally meet the limitations of Claim 1.