Nomatic Inc v. Tropic Feel SL

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nomatic, Inc. (Utah)
  • Defendant: The Tropic Feel, S.L. (Spain)
  • Plaintiff’s Counsel: Foley & Lardner LLP
• Case Identification: 1:24-cv-00142, D. Utah, 08/22/2024
• Venue Allegations: Venue is alleged to be proper because the defendant is a foreign corporation not resident in the United States and therefore may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s rollerbag product infringes a patent related to a convertible backpack featuring a panel for stowing shoulder straps.
• Technical Context: The technology concerns multi-functional travel bags that can transition between a backpack and a hand-carry configuration, a design feature of interest in the consumer travel accessories market.
• Key Procedural History: The complaint states that Plaintiff sent Defendant three pre-suit letters between October 2022 and March 2023, notifying Defendant of the patent and alleged infringement. This history forms the basis for the complaint's willfulness allegations.

Case Timeline

Date	Event
2017-06-13	'124 Patent Priority Date
2019-11-05	'124 Patent Issue Date
2022-10-20	First pre-suit notice letter sent to Defendant
2023-01-25	Second pre-suit notice letter sent
2023-03-07	Third pre-suit notice letter sent
2024-08-22	Complaint Filing Date

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

U.S. Patent No. 10,463,124 - "BACKPACK"

• Patent Identification: U.S. Patent No. 10,463,124, "BACKPACK", issued November 5, 2019.

The Invention Explained

• Problem Addressed: The patent's background section identifies the difficulty and inconvenience of converting conventional bags between different carrying styles, such as from a backpack to a hand-carry bag, noting that such transitions are often "difficult and tedious" and may require reconfiguring straps ('124 Patent, col. 1:50-60).
• The Patented Solution: The invention is a bag system that allows a user to quickly transition between a backpack and a hand-carry bag by using a panel on the back of the bag ('124 Patent, col. 2:5-12). This panel includes flaps that can be secured over the shoulder straps to hide them, converting the bag to a hand-carry or "briefcase type" configuration (as shown in Fig. 1). To use it as a backpack, the user simply releases the flaps and pulls the straps out (as shown in Fig. 2), a process described as "as simple as placing the straps in front of or behind the panel" ('124 Patent, col. 2:41-43).
• Technical Importance: The design aims to solve the "strap configuration problem" by providing a seamless method for alternating between carrying modes without detaching or re-clipping hardware, enhancing convenience for users in professional or travel settings ('124 Patent, col. 1:62-63).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 9 ('124 Patent, Compl. ¶11).
• The essential elements of independent claim 1 include:
  • a set of straps extending from a top of the bag toward a bottom of the bag;
  • at least one opening;
  • a panel on a back portion of the bag configured to hold the straps, which comprises:
    • a bond line securing the panel to the bag;
    • a first flap extending laterally from the bond line;
    • a second flap extending laterally from the bond line in the opposite direction;
    • a first engagement feature on the lateral ends of the flaps; and
    • a second, complementary engagement feature on the bag to secure the flaps.
• The complaint reserves the right to assert additional claims of the '124 Patent.

III. The Accused Instrumentality

Product Identification

The accused product is "The Lift 40L Rollerbag" sold by Defendant The Tropic Feel, S.L. (Compl. ¶3, ¶11).

Functionality and Market Context

• The complaint alleges the Lift 40L Rollerbag includes a set of straps that extend from the top to the bottom of the bag (Compl. ¶11). It further alleges that a panel on the back of the bag can hold these straps, and that this panel includes a "first flap and a second flap bonded to a central portion of the bag and secured on opposite sides of the bag" (Compl. ¶11).
• The complaint asserts that the Defendant's infringing activities "serve to divert sales from Nomatic's products," suggesting the parties are direct competitors in the travel goods market (Compl. ¶14).

IV. Analysis of Infringement Allegations

The complaint references an attached claim chart (Exhibit 2) that was not included with the publicly filed document. The infringement theory is therefore summarized from the complaint’s narrative allegations.

The complaint alleges that the Lift 40L Rollerbag infringes at least claims 1 and 9 of the ’124 Patent (Compl. ¶11). The core of the infringement theory is that the accused bag’s strap-stowing system contains the elements recited in the patent’s claims (Compl. ¶9, ¶11). The complaint asserts that the accused bag possesses a "set of straps," a "panel on the back of the bag," and that this panel includes a "first flap and a second flap" (Compl. ¶11). These flaps are alleged to be "bonded to a central portion of the bag," which Plaintiff appears to equate with the "bond line" limitation in claim 1 (Compl. ¶9, ¶11). The complaint further alleges that the flaps are secured via a "first engagement feature" and a "second engagement feature," mapping to the corresponding limitations in the patent's claims (Compl. ¶11).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: A potential dispute may arise over whether the accused product's alleged panel with flaps "bonded to a central portion" (Compl. ¶11) meets the claim limitation of a panel with "a bond line securing the panel to the bag" from which flaps "extend... laterally" ('124 Patent, col. 8:58-65). The interpretation of "bond line" and its structural relationship to the flaps will be a central question.
• Technical Questions: What evidence does the complaint provide that the accused product contains the claimed "first engagement feature" and "second engagement feature"? The complaint does not specify the structure or mechanism of these alleged features on the Lift 40L Rollerbag, raising the question of how they correspond to the features disclosed in the patent, such as "snaps 120" ('124 Patent, col. 4:48-49).

V. Key Claim Terms for Construction

"bond line"

• Context and Importance: This term is critical as it defines the central structural element from which the claimed flaps extend. Its construction will determine whether the accused product's alleged "central portion" falls within the scope of the claims. Practitioners may focus on this term because the infringement allegation hinges on equating the accused bag's structure with this specific claim language (Compl. ¶9, ¶11).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term itself is not defined, which could support a construction covering any linear area of attachment that secures the panel to the bag.
  • Evidence for a Narrower Interpretation: The specification describes a specific embodiment as a "bonding strap 114" that is "central to the panel 112 and secured to the back surface 102 of the bag" ('124 Patent, col. 4:28-30). A party could argue that "bond line" should be limited to this disclosed strap-like structure.

"engagement feature"

• Context and Importance: The mechanism for securing the flaps is a required element of the asserted independent claims. As the complaint does not specify the nature of this feature on the accused product, its definition will be key to the infringement analysis (Compl. ¶11).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim uses the general term "feature," which could be argued to encompass any means of engagement, such as magnets, hooks, or clasps.
  • Evidence for a Narrower Interpretation: The specification discloses "snaps 120, buttons or other securing feature" ('124 Patent, col. 4:48-49). A party may argue that under the doctrine of ejusdem generis, the general term "other securing feature" should be interpreted as being limited to the same class as the specific examples provided (i.e., mechanical fasteners like snaps and buttons).

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating upon information and belief that the defendant has "actively and knowingly" induced infringement (Compl. ¶17). The complaint does not, however, plead specific facts to support this allegation, such as references to user manuals or advertising that instruct customers to use the product in an infringing manner.

Willful Infringement

The complaint alleges that the infringement has been willful, based on Defendant’s alleged pre-suit knowledge of the '124 Patent (Compl. ¶12, ¶18). The basis for this allegation is a series of three communications sent to the defendant between October 2022 and March 2023, and Defendant’s alleged continuation of infringing sales after receiving notice (Compl. ¶13).

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

• A core issue will be one of structural interpretation: can the term "bond line," as described and claimed in the '124 Patent, be construed to read on the accused rollerbag's panel, which is alleged to have flaps "bonded to a central portion"? The outcome may depend on whether this is a distinction in name only or a fundamental structural difference.
• A key evidentiary question will be one of factual proof: what specific components of the accused product constitute the "first engagement feature" and complementary "second engagement feature," and does the evidence show that these components function in the manner required by the patent's claims? The resolution of this question will likely require detailed discovery into the accused product's design and construction.