DCT
2:24-cv-00619
Nomatic Inc v. Tropic Feel SL
Key Events
Complaint
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: 2:24-cv-00619, D. Utah, 08/22/2024
- Venue Allegations: Venue is asserted on the basis that the defendant, a foreign corporation, may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Lift 40L Rollerbag infringes a patent related to a carrying bag system that can transition between a backpack and a hand-carry bag by using a panel to conceal the shoulder straps.
- Technical Context: The technology at issue addresses convertible luggage, specifically methods for stowing backpack straps to give the bag a more professional, briefcase-like appearance.
- Key Procedural History: Plaintiff alleges it sent a cease-and-desist letter to Defendant on October 20, 2022, followed by two additional communications. The complaint alleges that despite this notice, Defendant continued its accused infringing activities, forming the basis for a willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2017-12-21 | U.S. Patent No. 10,463,124 Priority Date (Application Filing) |
| 2019-11-05 | U.S. Patent No. 10,463,124 Issue Date |
| 2022-10-20 | Nomatic sends first notice letter to Tropic Feel |
| 2023-01-25 | Nomatic sends follow-up letter to Tropic Feel |
| 2023-03-07 | Nomatic sends third letter to Tropic Feel |
| 2024-08-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,463,124 - "BACKPACK"
The Invention Explained
- Problem Addressed: The patent addresses the difficulty and tediousness of converting bags from a backpack to a hand-carry or briefcase style, which often requires complex steps like unclipping and reconfiguring straps ( '124 Patent, col. 1:47-61).
- The Patented Solution: The invention is a carrying bag with a dedicated panel on its back surface designed to conceal the shoulder straps. The panel has two flaps extending from a central "bond line" that fold over the straps and are secured to the bag, allowing a user to "quickly and effectively" transition between backpack and hand-carry modes without reconfiguring the straps themselves ('124 Patent, col. 2:1-3, 2:28-35; Fig. 1-2).
- Technical Importance: The design aims to provide a single, versatile bag suitable for both professional and recreational use by simplifying the transition between carrying modes ('124 Patent, col. 2:6-12).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 (Compl. ¶11).
- Independent Claim 1 requires:
- A set of straps extending from a top to a bottom of the bag.
- At least one opening.
- A panel on a back portion of the bag configured to hold the straps.
- The panel includes: a "bond line" securing the panel to the bag; a first flap extending laterally from the bond line; a second flap extending laterally in the opposite direction; a "first engagement feature" on the lateral ends of the flaps; and a complementary "second engagement feature" on the bag to secure the flaps.
- Independent Claim 9 is similar but structurally different, requiring:
- A backpack with at least one opening.
- A first strap and a separate, laterally displaced second strap.
- A panel on the back surface comprising: a first flap extending from a "bond line" of the panel; a second flap extending in a second direction from the bond line; and engagement features to secure the flaps to the backpack.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Lift 40L Rollerbag" (Compl. ¶2, 11).
Functionality and Market Context
- The complaint alleges the Lift 40L Rollerbag is a carrying bag that includes a set of straps that can be held by a panel on the back of the bag (Compl. ¶11).
- The complaint further alleges this panel includes a first and second flap "bonded to a central portion of the bag and secured on opposite sides of the bag" (Compl. ¶11).
- The complaint alleges that Defendant advertises, markets, and sells the accused product through its website to customers throughout the United States (Compl. ¶5).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'124 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a set of straps extending from a top of the bag toward a bottom of the bag; | The complaint alleges the Lift 40L Rollerbag includes "a set of straps extending from the top of the bag to the bottom of the bag." | ¶11 | col. 8:57-59 |
| a panel positioned on a back portion of the bag and configured to hold the set of straps, the panel comprising: 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 as the first flap; | The complaint alleges the straps "can be held by a panel on the back of the bag," and that the 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." | ¶11 | col. 8:60-66 |
| a first engagement feature positioned on each of the lateral ends of the first and second flaps; and a second engagement feature complementary to and positioned on the bag opposite the first engagement feature... | The complaint alleges "The flaps are each secured on the top outer corner by a first engagement feature and on the bottom outer corner by a second engagement feature." | ¶11 | col. 9:1-5 |
Identified Points of Contention
- Scope Questions: A central question may be the definition of "bond line." The patent specification describes a specific "bonding strap 114" that is "central to the panel 112" (col. 4:26-30). The infringement analysis may turn on whether the accused product's method of attaching its flaps to a "central portion" falls within the scope of this term, or if the term is construed more broadly as any line of attachment.
- Technical Questions: The complaint's description of the "engagement feature" (Compl. ¶11) does not precisely map onto the claim's requirement of a "first engagement feature" on the flap and a "complementary... second engagement feature" on the bag. A factual question will be whether the accused product's fastening system meets this two-part, complementary structure as claimed.
V. Key Claim Terms for Construction
The Term: "bond line" (Claim 1, 9)
Context and Importance
This term is foundational to the claimed panel structure. The dispute will likely focus on whether the accused product's "central portion" where the flaps are "bonded" (Compl. ¶11) constitutes a "bond line." Practitioners may focus on this term because its construction could either limit the claim to the specific "bonding strap" embodiment shown in the patent or allow it to cover a wider range of bag constructions.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language itself refers to "a bond line securing the panel to the bag" without further structural limitation, which could support an argument for a broader meaning encompassing any seam or line of attachment ('124 Patent, col. 8:62).
- Evidence for a Narrower Interpretation: The specification repeatedly describes a specific, central "bonding strap 114" as the point from which the flaps extend ('124 Patent, col. 4:26-30, 4:42-47). A defendant may argue this consistent description limits the term "bond line" to this more specific structure.
The Term: "first engagement feature" and "second engagement feature" (Claim 1)
Context and Importance
The infringement analysis depends on whether the accused bag's fasteners meet the claim's two-part structure. The complaint's allegation is ambiguously worded, stating flaps are secured by a "first" feature at the top and a "second" at the bottom (Compl. ¶11), which does not align with the claim's requirement of a feature on the flap and a complementary feature on the bag.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent does not appear to limit the "engagement feature" to a specific type of fastener, potentially allowing it to read on various mechanisms like snaps, buttons, or magnets.
- Evidence for a Narrower Interpretation: The primary embodiment discloses "snaps 120, buttons or other securing feature" ('124 Patent, col. 4:48-50). A defendant might argue that the term should be construed in light of these examples and, more importantly, that the accused product must have the specific placement of one feature on the flap and its complement on the bag body itself.
VI. Other Allegations
Indirect Infringement
- The complaint makes a conclusory allegation of induced infringement under 35 U.S.C. § 271(b) (Compl. ¶17). It alleges Defendant acted "actively and knowingly" but does not plead specific supporting facts, such as referencing user manuals or marketing materials that instruct customers on how to use the accused features in an infringing manner.
Willful Infringement
- The complaint alleges that Defendant had pre-suit knowledge of the '124 Patent as of October 20, 2022, due to a series of cease-and-desist and licensing-offer letters sent by Plaintiff (Compl. ¶13). The complaint alleges that Defendant continued to sell the Lift 40L Rollerbag after receiving this notice, which forms the basis for the willfulness claim (Compl. ¶¶12, 13, 18).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute centers on the mechanical details of a convertible backpack. The outcome will likely depend on the resolution of two primary questions:
A core issue will be one of definitional scope: can the term "bond line," which the patent illustrates as a distinct central strap, be construed broadly enough to cover the "central portion" to which the accused bag's flaps are allegedly bonded?
A key evidentiary question will be one of structural correspondence: does the accused product's fastening system meet the specific two-part structure required by Claim 1, which calls for an "engagement feature" on the flap and a "complementary" feature on the bag, or is there a fundamental mismatch in how the components are arranged?