DCT
6:21-cv-01134
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-01134, W.D. Tex., 01/11/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Walmart is registered to do business in the state, has transacted business in the district, and maintains regular and established places of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s sale of Equate-brand and KT-brand kinesiology tapes infringes patents related to anatomical support systems and methods for treating conditions such as plantar fasciitis.
- Technical Context: The technology involves stretch-resistant, adhesive tapes designed to provide anatomical support and relieve pain, particularly for foot-related ailments, which represents a significant consumer health product category.
- Key Procedural History: This filing is a First Amended Complaint. The complaint alleges that Walmart had knowledge of the asserted patent family since at least 2015 due to its sale of third-party products marked with the patent numbers. The complaint also references pre-suit notice letters sent to Walmart and knowledge stemming from the filing of the original complaint in this action.
Case Timeline
| Date | Event |
|---|---|
| 2004-04-02 | Earliest Priority Date for ’511, ’987, and ’894 Patents |
| 2013-04-09 | U.S. Patent No. 8,414,511 Issues |
| 2015-01-01 | Approximate Date Plaintiff Alleges Walmart's Knowledge Began |
| 2019-02-26 | U.S. Patent No. 10,212,987 Issues |
| 2021-12-28 | U.S. Patent No. 11,206,894 Issues |
| 2022-01-11 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,414,511 - "System for Treatment of Plantar Fasciitis," Issued April 9, 2013 (’511 Patent)
The Invention Explained
- Problem Addressed: The patent describes plantar fasciitis as a painful condition resulting from excessive tension on the plantar fascia tissue of the foot. It notes that prior treatments, such as elastic socks or traditional taping, were often inconvenient, cumbersome, or ineffective at preventing the tissue from stretching during the healing process (’511 Patent, col. 2:7-62).
- The Patented Solution: The invention is a non-elastic, stretch-resistant support system that adheres directly to the sole of the foot. By acting as a second, parallel "string" to the "archer's bow" of the foot's arch, it shares the tensile load and restricts the extension of the plantar fascia, thereby reducing stress and allowing the tissue to heal (’511 Patent, col. 4:26-34; col. 8:36-49). The system can be a single sole-shaped member or include various straps for additional stability around the arch, heel, or toes (’511 Patent, Fig. 3).
- Technical Importance: This approach aimed to provide a discrete, easy-to-apply, and effective at-home treatment that offers direct structural support, unlike bulky orthotics or less-reliable taping methods (’511 Patent, col. 3:20-34).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-4, 26, 31-34, and 36 (Compl. ¶19).
- Independent Claim 1 recites the core elements of the device:
- A foot support device with a thin, flexible, stretch-resistant "sole member" made of a single woven fabric layer.
- The sole member has a shape matching less than the entire outline of a wearer's sole.
- An adhesive layer on the sole member for direct application to the skin.
- The sole member must be sufficiently stretch-resistant to restrict the extension of skin tissue on the sole of the foot.
- The adhesive layer must have sufficient adhesion to maintain the device's position and share tension forces with the plantar fascia.
U.S. Patent No. 10,212,987 - "Method of Manufacturing an Anatomical Support System," Issued February 26, 2019 (’987 Patent)
The Invention Explained
- Problem Addressed: The patent addresses the need to efficiently produce anatomical supports for consumers, moving beyond practitioner-applied taping to a standardized, packaged product (’987 Patent, col. 11:15-28).
- The Patented Solution: The patent claims a method for manufacturing these supports. The method involves acquiring a sheet of material composed of a specific support layer (e.g., woven microfiber less than 30 mils thick), an adhesive layer, and a removable cover layer. The key step is cutting this sheet to form a plurality of separate, elongated, pre-cut support portions, which can then be packaged for consumer use, for example, in a roll (’987 Patent, Abstract; col. 21:18-44).
- Technical Importance: This manufacturing method enables the mass production and distribution of standardized, pre-shaped, ready-to-use anatomical supports in a consumer-friendly format (’987 Patent, col. 12:50-54).
Key Claims at a Glance
- The complaint asserts independent claims 18, 19, and 22-31 (Compl. ¶29).
- Independent Claim 18 recites the essential steps of the manufacturing method:
- Acquiring a sheet of material with a support layer (single woven fabric), an adhesive layer, and a removable cover layer.
- The support layer must have a thickness of less than 30 mils and a specific ratio of elongation to tensile strength.
- Forming the sheet into a plurality of separate "pre-cut support portions," each with substantially straight sides and rounded corners and of a similar size and shape.
- The fabric must comprise a micro-fiber fabric.
U.S. Patent No. 11,206,894 - "Anatomical Support Method Using Elongate Strap Support," Issued December 28, 2021 (’894 Patent)
Technology Synopsis
This patent focuses on the method of using an anatomical support. It claims a method of applying an "elongate strap support" with specific material properties (woven fabric, thickness less than 30 mils, and defined ratios of elongation to tensile strength in different directions) to the outer skin of a user to provide anatomical support (’894 Patent, Abstract; col. 20:14-38). The method can involve applying one or more such straps to encircle a body part like the foot.
Asserted Claims
Independent claims 19, 20, 23-25, 28-30, 32-34 (infringement by importation under § 271(g)) and 35-40, 42 (direct and indirect infringement) are asserted (Compl. ¶¶36, 42).
Accused Features
The complaint alleges that the use of the accused tapes by consumers, as instructed by Walmart's packaging and marketing, constitutes infringement of the method claims (Compl. ¶40). It further alleges that the tapes are made by a patented process and that their importation and sale infringes under 35 U.S.C. § 271(g) (Compl. ¶42).
III. The Accused Instrumentality
Product Identification
The accused products are identified as "Equate-brand Kinesiology Tape (Equate Cotton)," "Equate-brand 'Copper' Kinesiology Tape," and various KT Tape products, including "KT Tape (original)," "KT Tape Gentle," "KT Tape Pro," and "KT Tape Pro Extreme" (Compl. ¶15).
Functionality and Market Context
These products are described as adhesive tapes used to treat fascia injury (Compl. ¶14). The complaint alleges that Walmart makes, uses, sells, offers for sale, and/or imports these products, and derives substantial revenues from their sale within the district (Compl. ¶6). The complaint includes an image of Plaintiff's own "HEEL-EEZ" product to provide an example of the technology in a commercial format (Compl. ¶13).
IV. Analysis of Infringement Allegations
8,414,511 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a foot support device having a thin flexible stretch-resistant sole member comprised of a single woven fabric layer of uniform thickness | The accused KT Tape and Equate Tape products are alleged to be thin, flexible, stretch-resistant members made of a woven fabric. | ¶19, ¶20 | col. 3:38-40 |
| having a shape matching less than the entire outline of a sole of a wearer's foot to which the device is to be applied and sized to cover only a portion of the wearer's sole | The accused products are applied to a portion of the wearer's sole. | ¶19, ¶20 | col. 3:41-45 |
| an adhesive layer on said sole member for securely adhering said device directly to an outer skin tissue on the sole of the foot | The accused products have an adhesive layer that allows them to be applied directly to the skin on the sole of the foot. | ¶19, ¶20 | col. 4:26-34 |
| said stretch-resistant sole member sufficiently stretch-resistant to restrict extension and stretching of an outer skin tissue on the sole of a foot, when adhered thereto | The accused products, when applied, are alleged to be sufficiently stretch-resistant to restrict tissue extension and share tensile forces. | ¶19, ¶20 | col. 4:35-38 |
10,212,987 Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of manufacturing an anatomical support system, said method comprising: acquiring a sheet of material including a support layer comprising a single woven fabric... | The complaint alleges that the accused products are made by a process that begins with acquiring sheets of material with the claimed properties. | ¶29, ¶31 | col. 11:40-41 |
| wherein said support layer has a thickness of less than 30 mils and a ratio of elongation to tensile strength... that is less than 0.9 | The material used to make the accused products is alleged to meet the specific thickness and stretch-resistance properties of the claim. | ¶29, ¶31 | col. 21:33-37 |
| forming said sheet of material into a plurality of separate pre-cut support portions each having substantially straight sides and rounded corners... | The manufacturing process for the accused products allegedly involves cutting the sheet of material into separate, pre-cut strips. | ¶29, ¶31 | col. 21:38-41 |
| wherein: the fabric comprises a micro-fiber fabric | The material used for the accused products is alleged to be a micro-fiber fabric. | ¶29, ¶31 | col. 21:42-43 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’511 Patent will be whether a generic, rectangular strip of kinesiology tape can be considered a "sole member" as recited in the claims. The patent's specification and figures appear to describe a device specifically shaped to the contours of a human foot, which may suggest a narrower scope than what is alleged to infringe (’511 Patent, Fig. 3; col. 3:41-43).
- Technical Questions: For the ’987 and ’894 patents, which claim manufacturing and use methods, a key factual dispute will be whether the accused products are actually made and used in the specific manner claimed. The complaint alleges that Walmart had knowledge that a patented process was used to make the products it imported (Compl. ¶31). Evidence of these external manufacturing processes and specific consumer uses will be a focus of discovery. The complaint provides an image of a competitor's product, "Mueller PFTape," which is marked with several patent numbers including the '511 Patent, as evidence of Walmart's knowledge of the asserted patents in the market (Compl. ¶47, p. 12).
V. Key Claim Terms for Construction
'511 Patent, Claim 1:
- The Term: "sole member"
- Context and Importance: The definition of this term is critical for determining direct infringement. If construed narrowly to mean a device pre-shaped to the contours of a foot's sole, infringement by a generic roll of tape may be difficult to prove. If construed broadly to mean any component applied to the sole, the infringement case may be strengthened. Practitioners may focus on this term because the accused products are general-purpose tapes, not foot-specific devices.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the shape beyond stating it matches "less than the entire outline of a sole."
- Evidence for a Narrower Interpretation: The specification repeatedly describes the invention as being "shaped to conform to the outline of the bottom of a foot" (’511 Patent, col. 3:41-43) and every drawing of the embodiment (e.g., Fig. 3) depicts a device with a specific, non-rectangular shape anatomically contoured to a foot.
'987 Patent, Claim 18:
- The Term: "forming said sheet of material into a plurality of separate pre-cut support portions"
- Context and Importance: This term is central to the infringement allegation under 35 U.S.C. § 271(g), which requires the imported product to be made by the patented process. The dispute will turn on whether the manufacturing process for the accused tapes includes this specific cutting step.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue this language covers products sold as a roll with perforations that create "pre-cut" but not yet "separate" portions.
- Evidence for a Narrower Interpretation: The claim language requires forming "separate" portions. The specification describes a process where the "support system 504 is formed and removed from the sheet 500" (’987 Patent, col. 11:41-43), suggesting a complete separation during manufacturing, which may not apply to products sold in a continuous roll.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for the ’511 and ’894 patents.
- Inducement (§ 271(b)): The complaint alleges Walmart induces infringement by providing "product descriptions, product packaging, enclosed product instructions, and other instructions on how to configure and/or use" the accused products, with the knowledge and intent that customers will perform the infringing acts (Compl. ¶¶23, 40).
- Contributory (§ 271(c)): The complaint alleges the accused products are "especially designed or adapted" for infringement and are "not a staple article of commerce suitable for substantial non-infringing use" (Compl. ¶¶24, 41). The assertion that general-purpose kinesiology tape lacks substantial non-infringing uses raises a significant question of fact.
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged to stem from Walmart's sale of third-party products marked with the asserted patent numbers since at least 2015 (Compl. ¶47) and from pre-litigation notice letters sent by Plaintiff (Compl. ¶49). Post-suit knowledge is based on the service of the original and amended complaints (Compl. ¶50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "sole member," which is rooted in the patent's description of a specifically-shaped device for treating plantar fasciitis, be construed to cover a generic, rectangular strip of multi-purpose kinesiology tape?
- A key legal and factual question will be one of substantial non-infringing use: can Plaintiff successfully argue that general-purpose kinesiology tape, a product with a wide variety of applications across the human body, is not a "staple article of commerce" and is instead especially adapted for the patented use, as required for contributory infringement?
- A central evidentiary challenge will be one of proof of process: for the claims under 35 U.S.C. § 271(g), what evidence can Plaintiff uncover to demonstrate that the accused tapes imported and sold by Walmart were actually manufactured overseas using the specific multi-step cutting and forming methods recited in the ’987 and ’894 patents?