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-01133, W.D. Tex., 11/04/2021
• Venue Allegations: Plaintiff alleges venue is proper because Walmart is registered to do business in Texas, has transacted business 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 three patents related to anatomical support systems for treating foot pain, such as plantar fasciitis.
• Technical Context: The technology concerns adhesive, stretch-resistant support systems designed to be applied to the body to reduce stress on underlying fascia and provide biomechanical support.
• Key Procedural History: The complaint alleges that Walmart has had knowledge of the asserted patent family since at least 2015 through its sale of products marked with the patent numbers. It further alleges that Walmart received a pre-suit notice letter identifying the asserted patents and accused products.

Case Timeline

Date	Event
2004-04-02	Earliest Priority Date for ’398, ’229, and ’953 Patents
2014-09-16	U.S. Patent No. 8,834,398 Issues
2015-01-01	Approximate date from which Walmart allegedly sold marked products
2015-03-03	U.S. Patent No. 8,968,229 Issues
2019-05-28	U.S. Patent No. 10,299,953 Issues
2021-11-04	Complaint Filing Date

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

U.S. Patent No. 8,834,398 - "System for Treatment of Plantar Fasciitis"

• Patent Identification: U.S. Patent No. 8,834,398, "System for Treatment of Plantar Fasciitis," issued September 16, 2014.

The Invention Explained

• Problem Addressed: The patent addresses the pain and inflammation of plantar fasciitis, which results from excessive tensile forces on the plantar fascia ligament in the foot. The background notes that existing treatments like elastic socks are cumbersome and do not prevent excessive stretching, while taping is difficult to apply correctly and consistently (U.S. 8,834,398 B2, col. 2:5-62).
• The Patented Solution: The invention is a stretch-resistant support system that is adhesively applied to the bottom of the foot to act as an external ligament. This system is designed to absorb tensile forces that would otherwise stretch the plantar fascia, thereby reducing stress, relieving pain, and allowing the tissue to heal (’398 Patent, col. 10:55-65; Fig. 5). The system can be composed of multiple components, such as a main sole support and additional straps for the arch or heel (’398 Patent, col. 6:3-15).
• Technical Importance: The invention provides a non-invasive, form-fitting support that can be self-applied by a patient and worn during daily activities to provide continuous, ligament-like support.

Key Claims at a Glance

• The complaint asserts independent claim 1 and several dependent claims (Compl. ¶19).
• Essential elements of independent claim 1 (a method claim) include:
  • A method of self-treatment or prevention of plantar fasciitis in a patient, using pre-cut or perforated adhesive supports.
  • Adhering a first adhesive support to a sole of a patient's foot, so that the first adhesive support extends from a ball of the foot, across the sole and to a heel of the foot.
  • Adhering a second adhesive support to the sole of the foot, so that the second adhesive support extends across an arch or heel of the foot and at least partially overlaps the first adhesive support.
• The complaint reserves the right to assert claims 2, 5, 6, 13-17, and 19 (Compl. ¶19).

U.S. Patent No. 8,968,229 - "Disposable Two-Part Orthotic Foot Support Strap System and Method"

• Patent Identification: U.S. Patent No. 8,968,229, "Disposable Two-Part Orthotic Foot Support Strap System and Method," issued March 3, 2015.

The Invention Explained

• Problem Addressed: This patent, part of the same family, also addresses the treatment of plantar fasciitis and the difficulty of properly applying conventional adhesive tapes, which can be an "inefficient, and ineffective" process that is difficult for a patient to self-administer (U.S. 8,968,229 B2, col. 3:24-27).
• The Patented Solution: The patent describes a two-part system with a pre-cut sole support strap and a pre-cut arch support strap, both made of a flexible, non-stretch woven material. The components are provided on a release liner that allows them to be separated and applied individually to create a comprehensive support structure (’229 Patent, col. 14:1-14; Fig. 3). The system is designed for easy and consistent self-application.
• Technical Importance: This approach standardizes the application process by providing pre-formed, interacting components, aiming to improve consistency and effectiveness compared to free-form taping.

Key Claims at a Glance

• The complaint asserts independent claim 12 and reserves the right to assert others (Compl. ¶28, ¶30).
• Essential elements of independent claim 12 (a method claim) include:
  • A method for treating foot pain and providing support to a foot of a user.
  • Providing an arch support strap formed of woven material with an adhesive layer.
  • Removing a release liner from the adhesive layer.
  • Adhering the arch support strap to the skin surface of a longitudinal portion of an arch of the foot.
• The complaint reserves the right to assert other claims, though only claim 12 is specified in the body of the complaint (Compl. ¶28, ¶30).

U.S. Patent No. 10,299,953 - "Material Including Pre-Cut Anatomical Supports"

• Patent Identification: U.S. Patent No. 10,299,953, "Material Including Pre-Cut Anatomical Supports," issued May 28, 2019.

Technology Synopsis

This patent discloses a sheet of material containing pre-cut, partially disconnected anatomical supports that a user can easily remove and apply. The material includes a woven fabric support layer with specific stretch-resistance properties, an adhesive layer for attachment to the skin, and a removable cover layer, streamlining the process of creating and applying an anatomical support (U.S. 10,299,953 B2, Abstract).

Asserted Claims

Independent claim 1 and dependent claims 2, 4-8, 10-13, 15-17, and 19 are asserted (Compl. ¶35).

Accused Features

The complaint alleges that "KT Tape Equate Tape" products directly infringe the '953 patent because the material itself, as sold by Walmart, allegedly embodies the claimed invention (Compl. ¶35).

III. The Accused Instrumentality

Product Identification

The complaint names several product lines, including "Equate-brand Kinesiology Tape," "Equate-brand 'Copper' Kinesiology Tape," and various "KT Tape" products (e.g., Original, Gentle, Pro, Pro Extreme) (Compl. ¶15). These are collectively referred to as kinesiology tapes used for fascia injury treatment (Compl. ¶14).

Functionality and Market Context

The accused products are adhesive tapes intended to be applied to the body to provide support and pain relief for muscle and fascia injuries (Compl. ¶14). The complaint alleges that Walmart advertises and promotes these products through various websites and provides instructions on how to configure and use them (Compl. ¶19, ¶27, ¶39). A screenshot from Walmart.com shows the "Mueller PFTape" product—a related product used to establish notice—is offered for sale by the Defendant, indicating Walmart's role as a retailer for this category of products (Compl. p. 12).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,834,398 and U.S. Patent No. 8,968,229 Infringement Allegations

The complaint alleges indirect infringement of the method claims of the ’398 and ’229 patents, asserting that Walmart induces its customers to perform the claimed methods of self-treatment (Compl. ¶19, ¶27). The complaint references exemplary claim chart exhibits (Exhibits 4-15) but does not attach them (Compl. ¶21, ¶29). The narrative allegations state that Walmart provides product descriptions, packaging, and instructions that teach end-users to apply the accused tapes in an infringing manner, but the complaint does not quote or describe these instructions in detail. For example, product packaging for a related "PFTape" product depicts the system applied to a human foot to treat plantar fasciitis, illustrating the intended use that forms the basis of the infringement allegations (Compl. p. 12). Without the specific claim charts or more detailed factual allegations, a direct mapping of accused functionality to each claim element cannot be constructed from the complaint alone.

• Identified Points of Contention:
  • Evidentiary Questions: A central question will be what the instructions accompanying the accused Equate and KT Tape products actually direct users to do. The court will need to determine if these instructions teach every step of the asserted method claims, such as adhering a "first" support from ball to heel and a "second" overlapping support across the arch as required by claim 1 of the ’398 Patent.
  • Technical Questions: The infringement analysis may turn on whether the application of a general-purpose kinesiology tape for foot pain, as allegedly taught by Walmart, is functionally the same as the specific, multi-part "system" and "method" disclosed in the patents.

V. Key Claim Terms for Construction

• The Term: "pre-cut or perforated adhesive supports" (from claim 1 of the ’398 Patent).
• Context and Importance: This term is critical because the accused products are kinesiology tapes, which are often sold in continuous rolls or as rolls of pre-cut strips. The definition will determine whether these product formats fall within the scope of the claim. Practitioners may focus on this term because its construction could either limit the claim to products sold in a specific ready-to-use format or broaden it to include materials that the user cuts themselves.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification of the related ’953 Patent, which is part of the same family, mentions that a user "may use cutting tools to cut the support system 504 from the sheet 500," which could suggest the invention contemplates user-cutting (U.S. 10,299,953 B2, col. 11:55-59).
  • Evidence for a Narrower Interpretation: The plain language "pre-cut or perforated" suggests the supports are provided to the user in a prepared state. The title of the ’953 Patent is "Material Including Pre-Cut Anatomical Supports," emphasizing the "pre-cut" nature as a key feature of the inventive concept. The specification also describes support systems being "punched from sheets of material" and packaged for distribution, which supports a reading that the cutting is done prior to sale to the end-user (U.S. 8,834,398 B2, col. 11:18-19).

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Walmart's advertising, product packaging, and instructions actively encourage and teach customers to use the products in an infringing manner (Compl. ¶19). Contributory infringement is based on allegations that the products are especially designed for an infringing use, that the provided instructions are a material part of the invention, and that the products are not staple articles of commerce with substantial non-infringing uses (Compl. ¶22, ¶30).
• Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges Walmart had pre-suit knowledge from at least two sources: (1) its sale of third-party products (e.g., "PFTape") that were allegedly marked with the asserted patent numbers since at least 2015, and (2) its receipt of a notice letter from the plaintiff before the lawsuit was filed (Compl. ¶44, ¶46). A photograph of product packaging for "PFTape" lists several U.S. Patent numbers, including the asserted ’398 and ’229 patents, supporting the allegation of notice via marking (Compl. p. 12). The complaint alleges Walmart acted recklessly by continuing to sell the accused products despite this knowledge (Compl. ¶48).

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

• A core issue will be one of evidentiary proof: Can the plaintiff demonstrate that the instructions and marketing materials provided by Walmart for its Equate and KT Tape products specifically direct users to perform every step of the asserted multi-step method claims, or will the infringement theory rely on inference?
• A second key issue will be one of definitional scope: How will the court construe the term "system" as used in the patents? The case may turn on whether the application of one or two strips of general-purpose kinesiology tape constitutes the claimed "system," which the patents describe as having specific, interacting components designed to work together to replicate an external ligament.
• A final question will be one of direct vs. indirect liability: For the '953 patent, which claims a "material," the question will be whether the accused products, as sold, embody the invention. For the '398 and '229 patents, which claim methods, the case will depend on proving Walmart's role in causing infringement by end-users, with the willfulness analysis heavily influenced by evidence of pre-suit knowledge from product marking and notice letters.