Applied Biokinetics LLC v. Walmart Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Applied Biokinetics LLC (Texas)
  • Defendant: Walmart Inc. (Delaware)
  • Plaintiff’s Counsel: Sorey, & Gilliland, LLP; Katz PLLC
• Case Identification: 6:21-cv-01132, W.D. Tex., 11/04/2021
• Venue Allegations: Plaintiff alleges venue is proper because Walmart is registered to do business in Texas, has committed acts of infringement in the district, and maintains regular and established places of business in the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s sale of certain kinesiology tape products infringes patents related to orthotic strap systems and materials for treating fascia injuries.
• Technical Context: The technology concerns adhesive, stretch-resistant supports designed for user self-application to relieve pain from conditions such as plantar fasciitis by offloading stress from connective tissues.
• Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the asserted patents or related family members since at least 2015 through its sale of other marked products. The complaint also alleges that Defendant received a pre-suit notice letter from Plaintiff identifying the patents and accused products.

Case Timeline

Date	Event
2004-04-02	Earliest Priority Date for ’818 and ’815 Patents
2014-08-26	U.S. Patent No. 8,814,818 Issued
2015-01-01	Alleged earliest date of Walmart's knowledge via sale of marked products
2021-08-24	U.S. Patent No. 11,096,815 Issued
2021-11-04	Complaint Filed

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

U.S. Patent No. 8,814,818 - "Disposable Two-Part Orthotic Foot Support, Strap System and Method," issued August 26, 2014

The Invention Explained

• Problem Addressed: The patent describes conventional treatments for plantar fasciitis as being inadequate, noting that elastic socks allow for excessive stretching of the fascia, while taping the foot is effective but cumbersome and requires a trained technician for proper application (’818 Patent, col. 3:5-62).
• The Patented Solution: The invention is a disposable, two-part orthotic system that a user can apply themselves. It consists of a non-resilient "sole support strap" that acts as an external ligament to bear tensile loads and an "arch support strap" that is applied over the sole strap to provide additional stability and prevent slippage (’818 Patent, Abstract; col. 2:15-21). This mimics the support of professional taping in a user-friendly format.
• Technical Importance: The invention provides an economical, non-invasive, and easily self-applied system for treating plantar fasciitis that is designed to be worn discretely and provide consistent support throughout the day (’818 Patent, col. 2:22-29).

Key Claims at a Glance

• The complaint asserts at least independent claim 15 (Compl. ¶19, ¶20).
• The essential elements of independent method claim 15 include:
  • Providing a disposable orthotic foot arch support strap.
  • The strap is formed of a flexible material with a tensile strength of at least 25 lb/in-width and a specific elongation-to-tensile strength ratio.
  • The strap has an adhesive layer on an underside surface.
  • Securing the strap transversely over a midfoot portion of a longitudinal arch.
• The complaint also alleges infringement of claims 19 and 20, which are dependent claims (Compl. ¶23).

U.S. Patent No. 11,096,815 - "Material Including Elongate Strap Support," issued August 24, 2021

The Invention Explained

• Problem Addressed: The patent identifies a need for a system to treat pain and support damaged fascia that is inexpensive, fast-acting, and easy to apply at home, addressing the shortcomings of painful injections or professionally-required taping (Compl. ¶10). The patent specification details the biomechanics of plantar fasciitis and how overstressing the fascia leads to painful inflammation (’815 Patent, col. 2:5-16).
• The Patented Solution: The invention is a specific type of material for creating orthotic supports. The material comprises a support layer of a thin (less than 30 mils) woven fabric, an adhesive layer for application to the skin, and a removable cover layer. Crucially, the support layer has anisotropic stretch properties: a low ratio of elongation to tensile strength in one direction (for support) and a high ratio in the perpendicular direction (for flexibility) (’815 Patent, Abstract; col. 12:36-45).
• Technical Importance: The invention specifies a set of material properties that create a "balanced combination of strength and resistance to elongation," allowing for a support that is strong enough to offload stress but flexible enough to conform to the body for user-friendly application (’815 Patent, col. 11:11-14).

Key Claims at a Glance

• The complaint asserts a wide range of claims, including independent claims 1, 9, 12, 21, 25, 56, 63, 76, and 80 (Compl. ¶29).
• The essential elements of independent product claim 1 include:
  • A product of manufacture comprising a plurality of elongate strap supports.
  • Each support includes a support layer of a woven fabric.
  • The woven fabric has a thickness of less than 30 mils and a tensile strength greater than 10 lb/per inch-width.
  • The support layer has a ratio of elongation to tensile strength that is less than 0.9 in a first direction and greater than 0.9 in a second direction, per ASTM D3759.
  • An adhesive layer on the support layer.
  • A removable cover layer on the adhesive layer.
  • A package enclosing the supports.
• The complaint reserves the right to assert numerous dependent claims (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

• The accused products are various kinesiology tapes sold by Walmart, including Equate-brand Kinesiology Tape (Cotton and Copper versions) and several versions of KT Tape (Original, Gentle, Pro, and Pro Extreme) (Compl. ¶15).

Functionality and Market Context

• The complaint identifies the accused products as being used to treat fascia injury (Compl. ¶14). These products are adhesive tapes that are applied to the skin over muscles and joints to provide support and pain relief. The complaint alleges that Walmart, a major national retailer, derives "substantial revenues" from the sale of these products in the judicial district (Compl. ¶6).

IV. Analysis of Infringement Allegations

The complaint references but does not attach claim chart exhibits (Exhibits 3-14) that compare the asserted claims to the accused products (Compl. ¶21, ¶31). In the absence of these exhibits, the infringement theories are summarized below based on the complaint's narrative allegations.

• '818 Patent Infringement Allegations: The complaint alleges that end users of the accused KT Tape and Equate Tape products infringe method claim 15 by applying the tape to their feet as instructed (Compl. ¶23). The primary allegation against Walmart is for indirect infringement (inducement and contributory), based on Walmart’s alleged advertising, sale, and provision of instructions that encourage and enable customers to perform the patented method (Compl. ¶23, ¶24). For example, the complaint alleges that enclosed product instructions constitute an "apparatus for use in practicing the invention" (Compl. ¶24).
• '815 Patent Infringement Allegations: The infringement theory for the ’815 patent is one of direct infringement. The complaint alleges that the accused tape products themselves embody the patented invention (Compl. ¶29). The theory is that the tapes are "elongate strap supports" made of a material that meets the specific claim limitations regarding the support layer’s composition (woven fabric), thickness (<30 mils), tensile strength (>10 lb/in-width), and its specific, differential ratio of elongation to tensile strength (Compl. ¶30). The complaint includes a photograph of a Mueller-branded product box, which lists U.S. Patent No. 8,814,818 among other patents, as evidence of marking in the relevant product space (Compl. ¶37). A second visual shows both packaging for a Mueller PFTape product and a screenshot of that product for sale on Walmart.com (Compl. p. 10).

Identified Points of Contention

• Scope Questions: For the ’818 patent, a central question may be whether a generic, user-cut piece of kinesiology tape constitutes an "arch support strap" as that term is used in the patent, which depicts more structured, pre-formed components.
• Technical Questions: For the ’815 patent, the dispute may center on factual questions of technical performance. The infringement analysis will likely require expert testing to determine if the accused tapes' materials meet the specific, numerical thresholds for thickness, tensile strength, and the differential elongation ratio as defined in the claims and the corresponding ASTM standard.

V. Key Claim Terms for Construction

• Term: "arch support strap" (’818 Patent, Claim 15)

  • Context and Importance: This term is central to the method claim. The infringement theory depends on construing this term to cover a standard strip of kinesiology tape that a user applies. Practitioners may focus on this term because the patent figures depict a system with uniquely shaped components, whereas the accused products are generic rolls of tape.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes embodiments where straps may be "separate and distinct from the foot sole support" ('818 Patent, col. 7:4-7), which could support an argument that any separately applied piece of material performing the function is covered.
  • Intrinsic Evidence for a Narrower Interpretation: The patent's drawings (e.g., Figs. 3, 5A) consistently show straps as distinct parts of a pre-formed "system" with specific shapes and interrelations. A defendant might argue these embodiments limit the term to something more structured than a simple rectangular strip cut from a roll.

• Term: "a ratio of elongation in percent to tensile strength (lb/in-width) that is less than 0.9 in a first direction and greater than 0.9 in a second direction" (’815 Patent, Claim 1)

  • Context and Importance: This quantitative limitation is the technical core of the ’815 patent's asserted claims. Infringement will turn on whether the accused products meet this precise performance standard. While seemingly a factual question, its resolution depends on the proper interpretation of the claim language and the specified testing protocol (ASTM D3759).
  • Intrinsic Evidence for Interpretation: The claim explicitly requires the ratio to be determined "in accordance with American Society for Testing and Materials D3759" (’815 Patent, col. 19:20-24). The specification explains this ratio provides "a balanced combination of strength and resistance to elongation" (’815 Patent, col. 11:11-14). The prosecution history, though not provided, would be critical for understanding any arguments made to the patent office to distinguish prior art based on this specific ratio.

VI. Other Allegations

• Indirect Infringement: The complaint explicitly pleads indirect infringement for the '818 patent. It alleges inducement based on Walmart providing "product descriptions, product packaging, enclosed product instructions, and other instructions" that allegedly direct customers to use the tapes in an infringing manner (Compl. ¶23). It alleges contributory infringement on the basis that the products are especially adapted for infringement and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶24). Similar allegations of inducement are made for the '815 patent (Compl. ¶33).
• Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge (Compl. ¶41). The complaint alleges pre-suit knowledge from at least two sources: (1) Walmart's sale since at least 2015 of similar products (e.g., FasciaDerm, PFTape) that were allegedly marked with patents from the asserted patent family (Compl. ¶37); and (2) a pre-suit notice letter sent from Plaintiff to Defendant (Compl. ¶39).

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

1. A central evidentiary question will be one of technical compliance: Will independent testing confirm that the accused Equate and KT Tapes possess the specific material properties recited in the '815 patent, particularly the numerical thresholds for thickness, tensile strength, and the differential elongation-to-strength ratio defined by claim 1?
2. A key legal question will be one of definitional scope: Can the term "arch support strap" from the ’818 patent’s method claim, which is depicted in the specification as a component of a structured orthotic system, be construed to read on a generic, user-cut strip of kinesiology tape as applied in the accused method?
3. An important factual issue for damages will be the effect of prior notice: What weight will the court give to allegations that Walmart had knowledge of the patent family since 2015 via its sale of other marked products, and what did the pre-suit notice letter contain, in determining whether any potential infringement was willful?