DCT
3:19-cv-05246
Ermi LLC v. Intl Rehabilitative Sciences Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ermi LLC (Delaware)
- Defendant: International Rehabilitative Sciences, Inc. d/b/a RS Medical (Washington)
- Plaintiff’s Counsel: Foster Pepper PLLC
- Case Identification: 3:19-cv-05246, W.D. Wash., 04/01/2019
- Venue Allegations: Venue is alleged to be proper as Defendant is a Washington corporation with its principal place of business in the district, and the events giving rise to the claim, including the alleged sale and distribution of infringing products, occurred within the district.
- Core Dispute: Plaintiff alleges that Defendant’s T-Rex Orbit for Shoulder rehabilitation device infringes a patent related to a reconfigurable, patient-controlled shoulder therapy apparatus.
- Technical Context: The technology concerns mechanical therapy devices designed to help patients recover range of motion in their shoulder joint following injury or surgery.
- Key Procedural History: The complaint details a history between the inventor, Dr. Thomas Branch, and Eduardo Marti, the alleged founder of the company that developed the accused device. This history includes a 2013 meeting where Mr. Marti was allegedly exposed to Plaintiff’s patented device, followed by Mr. Marti founding companies with a similar "T-Rex" name and filing his own patent applications that cited Plaintiff’s commercial materials. The patent-in-suit, U.S. 7,547,289, was the subject of a post-complaint ex parte reexamination proceeding, which resulted in the confirmation of apparatus claims 1-4 and the amendment of method claim 22, effective October 15, 2021.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-13 | ’289 Patent Priority Date (Provisional Application) |
| 2002-12-13 | ’289 Patent Non-Provisional Application Filing Date |
| 2003-07-10 | ’289 Patent Application Published |
| 2006-01-13 | First Office Action; Claims 1-6 Allowed |
| 2009-03-16 | Notice of Allowance Issued for ’289 Patent |
| 2009-06-16 | ’289 Patent Issue Date |
| 2012-10-01 | First Maintenance Fee Paid for ’289 Patent |
| 2013-12-13 | Alleged meeting between Plaintiff's principal and Defendant's predecessor |
| 2014-05-01 | T-Rex Rehab, LLC (accused product originator) allegedly founded |
| 2016-12-01 | Second Maintenance Fee Paid for ’289 Patent |
| 2019-04-01 | Complaint Filing Date |
| 2021-10-15 | Ex Parte Reexamination Certificate for ’289 Patent Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,547,289 - "Shoulder Extension Control Device"
- Issued: June 16, 2009
The Invention Explained
- Problem Addressed: The patent addresses the loss of shoulder motion that occurs after injury or surgery, which is caused by scar formation and the shortening of muscles and ligaments. While manual therapy from a professional is one treatment, the patent notes that mechanical therapy devices allowing a patient to stretch the joint themselves are also highly desired, and that "improvements are always welcomed." (’289 Patent, col. 1:39-48, col. 2:1-10).
- The Patented Solution: The invention is an apparatus that allows a patient to control the rehabilitation of their own shoulder. Its central innovation is a modular and ambidextrous design. The apparatus consists of a main frame with two mounting locations, an "arm carriage" for securing the patient's arm, and a separate "power unit" that the patient operates (e.g., via a pump handle) to create the therapeutic motion. The key feature is that the arm carriage and power unit can be detached and swapped between the two mounting locations, allowing the same device to be reconfigured for use on either the right or left arm. (’289 Patent, Abstract; col. 2:18-38; FIG. 6).
- Technical Importance: The design provides a single, reconfigurable apparatus for patient-controlled therapy on either shoulder, which could offer advantages in cost and convenience over multiple single-purpose devices or those requiring constant therapist intervention. (’289 Patent, col. 2:11-17).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 22 (method) (Compl. ¶63).
- Independent Claim 1: An apparatus for manipulating a shoulder joint, comprising:
- a frame with spaced apart first and second mounting locations;
- an arm carriage configured to manipulate the shoulder and be mounted to one of the mounting locations;
- a power unit to provide power under user control, mounted to the other mounting location;
- a linkage to transfer power from the power unit to the arm carriage; and
- a configuration that allows the arm carriage and power unit to be switched between the mounting locations to operate in alternating modes for the right and left arm. (Compl. ¶20; ’289 Patent, col. 16:51-col. 17:8).
- Independent Claim 22 (as amended by Reexamination Certificate US 7,547,289 C1): A method of manipulating a shoulder, comprising the steps of:
- A) providing an apparatus with a frame, seat, an upper arm assembly mounted to a mounting location on the frame, and a forearm assembly, with specific parallel and orthogonal axial relationships;
- B) securing the user's forearm to the forearm assembly;
- C) selectively discouraging forearm movement relative to the upper arm while allowing both to pivot together;
- D) actuating the power unit and pivoting the upper arm assembly to create abduction/adduction;
- E) selectively discouraging upper arm movement relative to the frame while allowing forearm movement; and
- F) actuating the power unit and pivoting the forearm assembly to create external rotation. (’289 Patent, col. 20:36-col. 22:5, as amended by Reexamination Certificate).
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "T-Rex Orbit for Shoulder" device (the "Accused Device") (Compl. ¶5).
Functionality and Market Context
- The Accused Device is a medical device manufactured by Rehab, LLC and distributed by Defendant RS Medical for use in shoulder rehabilitation (Compl. ¶¶ 5, 53).
- The complaint alleges the device is marketed and sold to third parties, including doctors and end-user patients, for treating their shoulders (Compl. ¶¶ 72, 75). It further alleges that Defendant demonstrates the device to customers and advertises it on its website and through commercial brochures (Compl. ¶¶ 44, 47, 57). A photograph referenced in the complaint's claim chart exhibit reportedly shows a person using the Accused Device for rehabilitative motion (Compl. ¶65, Exhibit 7).
IV. Analysis of Infringement Allegations
The complaint references a claim chart exhibit that was not provided with the filing. The following summary is based on the complaint's narrative allegations of infringement of the ’289 Patent.
’289 Patent Infringement Allegations (Claim 1 - Apparatus)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for manipulating the shoulder joint of the left or right arm of a human user, said apparatus comprising: a frame including spaced apart first and second mounting locations; | The complaint alleges the Accused Device is an apparatus that embodies Claim 1 and includes a frame with the claimed features. | ¶¶64-65 | col. 16:54-57 |
| an arm carriage configured to manipulate said shoulder joint of said user, said arm carriage configured to be mounted to one of said first and second mounting locations of said frame; | The complaint alleges the Accused Device includes a component corresponding to the claimed "arm carriage" that is mounted to the frame. | ¶¶64-65 | col. 16:58-61 |
| a power unit configured to provide power upon control by said user, said power unit configured to be mounted to the other of said first and second mounting locations of said frame; | The complaint alleges the Accused Device includes a component corresponding to the claimed "power unit" that is mounted to the frame opposite the arm carriage. | ¶¶64-65 | col. 16:62-65 |
| a linkage intermediate said arm carriage and said power unit, said linkage configured to transfer power from said power unit to said arm carriage; | The complaint alleges the Accused Device includes a component corresponding to the claimed "linkage" that transfers power. | ¶¶64-65 | col. 17:1-3 |
| said arm carriage, said power unit, and said linkage configured to allow said arm carriage and said power unit to be switched between said first and second mounting locations and operated in alternating modes... | The complaint's core allegation is that the Accused Device possesses the claimed switchable configuration, allowing its components to be rearranged to manipulate either the right arm or the left arm of a user. | ¶¶64-65 | col. 17:4-8 |
- Identified Points of Contention:
- Scope Questions: The primary dispute for Claim 1 will likely center on the scope of its structural terms. A key question for the court will be whether the components of the "T-Rex Orbit for Shoulder" device meet the definitions of "arm carriage," "power unit," and "linkage" as understood in the context of the patent.
- Technical Questions: A critical technical question will be whether the accused product's mechanism for adapting to a left or right arm constitutes being "switched between said first and second mounting locations" as claimed. The analysis will depend on the degree of structural and functional similarity between the patented and accused methods of reconfiguration.
V. Key Claim Terms for Construction
The Term: "switched between said first and second mounting locations" (Claim 1)
Context and Importance: This phrase is the central limitation of apparatus Claim 1, defining the invention's ambidextrous and modular nature. The infringement analysis will turn on whether the accused device's mechanism for accommodating both left and right arms falls within the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue the term should be read broadly to encompass any configuration where the primary arm-holding and power-providing assemblies are repositioned on opposite sides of a central frame to switch between left- and right-arm use. The patent’s "Summary of the Invention" describes this switching capability as a key aspect of the invention without being limited to a single structure. (’289 Patent, col. 2:30-38).
- Evidence for a Narrower Interpretation: A party may argue the term is limited by the specific embodiments shown in the patent, which disclose "side-mounting members" and "carriage-gripping members" that facilitate the switch. (’289 Patent, col. 8:5-16; FIG. 15). The detailed description of how these specific components interact to achieve the "switch" could be cited to support a narrower construction.
The Term: "selectively discouraging relative movement" (Claim 22)
Context and Importance: This functional language appears in steps C and E of the method claim and is essential for describing the distinct therapeutic motions (abduction vs. external rotation). The definition of what it means to "discourage" movement—whether it requires a hard lock or merely resistance—will be critical to the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term covers any mechanism that makes movement in one direction substantially more difficult than in another, thereby isolating the desired therapeutic motion, consistent with the patent's goal of providing specific, controlled stretching. (’289 Patent, col. 5:1-7).
- Evidence for a Narrower Interpretation: A party could argue the term requires a specific, physical locking mechanism as described in the preferred embodiment, such as the "pivot-fixing pin 89" that can be inserted into different holes to physically prevent or allow pivoting about different axes. (’289 Patent, col. 9:1-11; FIGS. 13-14).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement of at least method Claim 22 by marketing, demonstrating, and distributing the Accused Device with instructions for users on how to perform the patented method (Compl. ¶¶ 72-74, 76). The complaint also alleges the Accused Device has no substantial non-infringing use, a basis for contributory infringement (Compl. ¶78).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It constructs a detailed narrative alleging that the founder of the company that developed the accused product met with the patent's inventor, was shown the patented device, and subsequently founded a company ("T-Rex Rehab") with a name similar to the inventor's practice ("TREX Orthopedics") to sell the accused product (Compl. ¶¶ 34-37). The complaint also alleges the founder cited Plaintiff's commercial materials in an Information Disclosure Statement during prosecution of his own patent applications (Compl. ¶41). It further alleges Defendant's general awareness of Plaintiff's patented device from industry activities (Compl. ¶¶ 59-61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and alleged copying. The case presents a strong narrative of imitation, but the infringement analysis will ultimately depend on whether the accused "T-Rex Orbit" device is found to be structurally and functionally equivalent to the patent's claims. The central technical question is whether the accused device's method for accommodating both left and right arms constitutes being "switched between...mounting locations" as required by Claim 1.
- A key evidentiary question will be one of functional performance. For method Claim 22, the case will likely turn on expert testimony and evidence demonstrating whether the accused device, when operated, performs the precise biomechanical sequence of "pivoting" and "selectively discouraging" motion about different axes as claimed, or if there is a fundamental mismatch in its technical operation.
- A significant procedural question arises from the post-complaint amendment of Claim 22. The court will need to address how the infringement allegations, originally pled against the issued version of Claim 22, apply to the narrower, amended version of the claim that is now in force, which may impact both the infringement and damages theories as the case proceeds.