Nomis LLC v. DNA Motor Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nomis LLC (Illinois)
  • Defendant: DNA Motor, Inc. d/b/a DNA Motoring (California)
  • Plaintiff’s Counsel: Reinhart Boerner Van Deuren s.c.
• Case Identification: 4:24-cv-02494, S.D. Tex., 07/02/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant commits acts of infringement in the district and maintains a regular and established place of business there.
• Core Dispute: Plaintiff alleges that Defendant’s rolling knee support products infringe a patent related to a rolling knee support with a detachable knee pad.
• Technical Context: The technology concerns ergonomic support equipment used in trades such as flooring installation, where workers must kneel and move across surfaces for extended periods.
• Key Procedural History: Plaintiff alleges it notified Defendant of the asserted patent and infringement first via Amazon's internal reporting process and subsequently via a formal letter demanding that Defendant cease its allegedly infringing activities.

Case Timeline

Date	Event
2005-05-26	Priority Date for U.S. Patent No. 7,681,248
2010-03-23	U.S. Patent No. 7,681,248 Issued
2015-04-30	'248 Patent Assigned to Plaintiff Nomis LLC
2024-04-05	Plaintiff Reports Infringement to Amazon (Earliest Date)
2024-05-13	Plaintiff Sends Notice Letter to Defendant
2024-05-14	Defendant Receives Notice Letter
2024-05-24	Plaintiff's Requested Response Deadline for Notice Letter
2024-07-02	Complaint Filed

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

U.S. Patent No. 7,681,248 - “Rolling knee support with detachable knee pad”

• Patent Identification: U.S. Patent No. 7,681,248, “Rolling knee support with detachable knee pad,” issued March 23, 2010.

The Invention Explained

• Problem Addressed: The patent’s background section notes that in conventional rolling knee supports, the knee pad is permanently attached to the wheeled base. This requires replacing the entire unit if either the pad or the base becomes worn or damaged, and it prevents the knee pad from being used independently from the base ('248 Patent, col. 1:31-42).
• The Patented Solution: The invention is a rolling knee support system where the knee pad component can be "quickly and easily detachable from the base" ('248 Patent, col. 1:38-39). This is achieved through a specific mechanical interface: the base has "latching projections" that engage corresponding apertures in the shell of the knee pad, and the knee pad includes a "release member" that, when pressed, disengages the connection, allowing the pad to be separated from the wheeled base ('248 Patent, Abstract; col. 4:24-28). Figure 3 illustrates this combination, showing the base (2), the detachable knee pad (4), and the latching mechanism.
• Technical Importance: This modular design offers increased utility and economy by allowing the knee pad to be used with or without the rolling base and enabling the replacement of individual components rather than the entire device ('248 Patent, col. 4:50-53; col. 4:29-32).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 15, as well as dependent claims 2-14 and 16-19 (Compl. ¶14, ¶33).
• Independent Claim 1 includes these essential elements:
  • A base with a concave knee pad receiving portion and roller attachment portions with casters.
  • A knee pad with a shell and a cushion.
  • At least first and second latching projections on the base that engage the shell to detachably mount the knee pad, with the second latching projection engaging an aperture in the shell.
  • A release member on the knee pad for detaching it from the base.
  • A strap for attaching the support to a user's knee.
• Independent Claim 15 includes similar elements to Claim 1, but specifically requires that "the first latching projection abuts a top surface of the shell."

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as those sold by Defendant DNA Motoring on Amazon.com and other platforms under descriptions including “Rolling Knee Pads Roller Kneeling Dolly Creepers with Casters,” “Knee Creeper Pads,” and “Rolling Knee Pad With Wheels, Cushion Kneeling Dolly Kreeper with Tool Tray” (the "Infringing Products") (Compl. ¶14, ¶16).

Functionality and Market Context

The complaint alleges these products are rolling knee supports that embody the patented invention (Compl. ¶14, ¶33). The product names provided suggest they are designed for the same purpose as the patented device: providing a mobile, cushioned support for a user's knees (Compl. ¶16). The complaint alleges infringement through Defendant’s acts of making, using, importing, selling, and offering the products for sale (Compl. ¶14).
No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Products meet every limitation of claims 1-19 of the ’248 patent (Compl. ¶14, ¶33). It states that a claim chart detailing this infringement was attached as Exhibit B to a pre-suit notice letter and to the complaint itself (Compl. ¶14, ¶24). However, this exhibit was not filed with the public version of the complaint. The complaint’s body does not contain a limitation-by-limitation analysis. Therefore, the infringement theory is presented as a general allegation that the accused rolling knee supports contain all elements of the asserted claims, including a base, a detachable knee pad, a latching mechanism, and a release member.

Identified Points of Contention

• Technical Questions: A central factual question will be whether the accused products possess a connection mechanism that meets the specific claim limitations. For example, what evidence will show that the accused products have both "first and second latching projections" and a distinct "release member" that function as described in the patent? The manner in which the accused product's pad separates from its base will be a key area of dispute.
• Scope Questions: The infringement analysis may raise the question of whether the connection mechanism in the accused products, even if functionally separable, is structurally equivalent to the "latching projections" and "release member" required by the claims. The court may need to determine if the claims cover any form of detachable connection or are limited to the specific embodiment disclosed.

V. Key Claim Terms for Construction

The Term: "detachably mounts" (Claim 1)

Context and Importance

This term is at the heart of the invention's stated purpose. Its construction will determine the required nature of the connection between the knee pad and the base. Practitioners may focus on this term because its scope will dictate whether a wide variety of separable connections could infringe, or only those that are "quickly and easily" separated by a user without tools, as suggested in the specification.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The claim language itself does not include modifiers like "quickly," "easily," or "without tools." An argument could be made that any design that allows the pad to be mounted and later detached, regardless of the method, falls within the plain meaning of the term.
• Evidence for a Narrower Interpretation: The specification repeatedly describes the problem being solved as the inconvenience of permanent attachment and frames the solution as a pad that is "quickly and easily detachable" ('248 Patent, col. 1:38-39). The specific embodiment shows a user-operable "release member" (26), which could be used to argue that "detachably mounts" implies a specific type of user-initiated, tool-less separation ('248 Patent, col. 4:24-28).

The Term: "latching projections" (Claim 1)

Context and Importance

This term defines the primary structures that create the detachable connection. The infringement analysis will depend on whether the accused products' connection points can be characterized as "latching projections."

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent states that while specific projections are shown, "it will be appreciated by those skilled in the art that other attachment mechanisms may be used" ('248 Patent, col. 2:44-45). This language suggests the patentee did not intend to limit the claims to the exact structures depicted.
• Evidence for a Narrower Interpretation: The claims and specification distinguish between "first and second latching projections" (12, 13) that are located in different areas (knee support area vs. shin support area) and appear to perform slightly different functions in securing the pad ('248 Patent, col. 2:36-40). A defendant may argue that to meet this limitation, an accused device must have two structurally and functionally distinct types of projections corresponding to those disclosed.

VI. Other Allegations

Indirect Infringement

The complaint does not contain a separate count for indirect infringement (inducement or contributory infringement). The allegations focus on direct infringement under 35 U.S.C. § 271 for making, using, selling, offering for sale, and importing the accused products (Compl. ¶33, ¶35).

Willful Infringement

The complaint alleges willful infringement based on both constructive and actual knowledge (Compl. ¶29). The claim is supported by allegations that Defendant had actual notice of the ’248 patent and its infringement on two occasions prior to the lawsuit: first, "at least as early as April 5, 2024" through Amazon's intellectual property reporting process, and second, through a formal notice letter delivered on May 14, 2024 (Compl. ¶20, ¶23). The complaint alleges that Defendant continued its infringing activities despite these notices (Compl. ¶28, ¶36).

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

1. A central issue will be one of claim construction: How broadly will the court define the mechanical elements of the connection? Specifically, can the term "latching projections" be construed to cover a wide range of connection points, or will it be limited to the distinct structural arrangement described in the patent's embodiment?

2. A key evidentiary question will be one of technical proof: As the complaint lacks a public, detailed infringement chart, the case will turn on what factual evidence Plaintiff can produce to demonstrate that the accused products' specific mechanical design incorporates not just a separable pad, but the particular combination of a "release member" and distinct "latching projections" as required by the asserted claims.

3. The analysis of willfulness will likely focus on the timing and content of the pre-suit notices. The court will examine whether the April 5th notice through Amazon and the May 13th letter were sufficiently specific to put Defendant on notice of a high likelihood of infringement, and whether Defendant's subsequent conduct was objectively reckless.