DCT
2:20-cv-08427
Brandable Ventures LLC v. Zyppah Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brandable Ventures, LLC (Delaware)
- Defendant: Zyppah, Inc. (Nevada); Always More Marketing, Inc. (Nevada); Jonathan Greenburg (California); Laura Greenburg (California)
- Plaintiff’s Counsel: Nossaman LLP
- Case Identification: 2:20-cv-08427, C.D. Cal., 10/14/2020
- Venue Allegations: Venue is alleged to be proper in the Central District of California because corporate defendant Zyppah, Inc. and individual defendants Jonathan and Laura Greenburg are all residents of the judicial district.
- Core Dispute: Plaintiff, an exclusive licensee, alleges that Defendants’ sale of the Zyppah anti-snoring mouthpiece infringes patents covering the product itself, following a dispute over the validity of the license agreement.
- Technical Context: The technology relates to dental oral appliances designed to treat snoring and obstructive sleep apnea by repositioning the user's tongue and mandible to maintain an open airway during sleep.
- Key Procedural History: The dispute's origin is a February 2020 "Exclusive Distribution Rights" agreement, under which Plaintiff Brandable Ventures alleges it became the exclusive licensee of the patents-in-suit. The complaint alleges that Defendants subsequently attempted to terminate this agreement in July 2020 and began selling the accused product, which Plaintiff claims is a violation of the agreement and constitutes patent infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-12-31 | Priority Date for U.S. Patent No. 9,138,341 |
| 2010-05-17 | Priority Date for U.S. Patent No. 10,383,758 |
| 2015-09-22 | U.S. Patent No. 9,138,341 Issued |
| 2019-08-20 | U.S. Patent No. 10,383,758 Issued |
| 2020-02-21 | Parties enter into "Exclusive Distribution Rights" Agreement |
| 2020-07-20 | Defendant AMM allegedly purports to terminate the Agreement |
| 2020-08-13 | Defendant Zyppah, Inc. allegedly begins marketing the accused product |
| 2020-10-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,138,341, "Dental Appliance," Issued Sep. 22, 2015
The Invention Explained
- Problem Addressed: The patent addresses snoring and Obstructive Sleep Apnea, which can have severe medical consequences (Compl. ¶1; ’341 Patent, col. 1:28-33). It notes that many existing intra-oral appliances are uncomfortable for the user, leading to a high rate of non-use (’341 Patent, col. 1:41-43).
- The Patented Solution: The invention is a single-arch oral appliance that secures to the lower teeth. It employs two mechanisms to open the airway: (1) a "tongue restraining device," comprising a substantially U-shaped transverse strip, that pushes the tongue upward and forward, and (2) a "ramp" at the front of the appliance that forces the lower jaw (mandible) forward when the user closes their mouth (’341 Patent, col. 2:1-21). A key feature is a "substantial breach" or opening in the tongue restraining device, which is intended to provide freedom of movement for the tongue (e.g., to swallow), enhancing user comfort (’341 Patent, col. 2:6-9).
- Technical Importance: The design aims to improve patient compliance by combining mandibular advancement with a novel tongue restraint that allows for more natural tongue movement than prior art devices.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶35).
- Claim 1 requires:
- A base with a means for securing the appliance to an individual's lower teeth.
- A tongue restraining device connected to the base, which includes a "transverse strip" that is "substantially U-shaped" with a "downward orientation."
- The transverse strip has an anterior surface that forms a "substantial opening" to permit tongue movement.
- A ramp projecting upward from the front of the base, configured to force the mandible forward.
- The ramp has a top portion and a bottom portion that rise at different, specified angles (25-45 degrees and 40-60 degrees, respectively).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,383,758, "Dental Appliance," Issued Aug. 20, 2019
The Invention Explained
- Problem Addressed: Like the ’341 patent, this patent addresses the problem of uncomfortable oral appliances for snoring and sleep apnea, focusing on the restriction of natural tongue movement (’758 Patent, col. 2:7-10).
- The Patented Solution: This invention refines the tongue-restraining element, describing it as a "flexible, moveable transverse band." This band is designed to deform when the tongue moves backward to swallow and then, due to the material's "memory," recoil to its original position, bringing the tongue forward again and reopening the airway (’758 Patent, col. 2:10-18). The patent also discloses an adjustable base, where the relative position of the upper and lower sections can be modified to advance the mandible incrementally (’758 Patent, col. 4:30-40, col. 5:41-48).
- Technical Importance: This design seeks to improve comfort and efficacy by using a dynamic, flexible tongue restraint rather than a static one, and by allowing for the progressive adjustment of the appliance.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶35).
- Claim 1 requires:
- A base with a first section to accept a group of teeth.
- A tongue restraining device connected at the posterior ends of the base.
- The tongue restraining device consists "only of a flexible, moveable transverse band."
- The base comprises an upper section and a lower section.
- The relative position of the upper and lower sections "can be adjusted."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused product is the "Zyppah Product," an anti-snoring oral appliance (Compl. ¶¶1, 12).
Functionality and Market Context
- The complaint alleges the Zyppah Product is a therapeutic mouthpiece that prevents the tongue from blocking the user's airway at night (Compl. ¶1).
- The complaint includes multiple images of the accused product, one of which is an annotated diagram highlighting its features. This diagram identifies a "Tongue Stabilizing Device" that "supports tongue and opens airway" and a "Mandibular Advancement" feature that "advances lower jaw" (Compl. ¶37, p. 12). Another image shows the product in a user's mouth, illustrating its placement and function (Compl. ¶37, p. 12). The complaint alleges that Defendants are actively marketing and selling this product directly to consumers (Compl. ¶25, ¶26).
IV. Analysis of Infringement Allegations
’341 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A dental oral appliance to open an airway for a sleeping individual who suffers with snoring or obstructive sleep apnea comprising: | The Zyppah Product is described as a "unique therapeutic mouthpiece that provides a solution to snoring by preventing the tongue from blocking the user's airway at night." | ¶¶1, 36 | col. 1:46-51 |
| a base comprising a means for securing the appliance to a lower teeth of the individual and said base having an upper side, a bottom side, a front end and a rear end; | The product includes a base that fits over the lower teeth. An image shows the product being worn, implying it secures to the teeth. | ¶36, p. 12 | col. 3:1-3 |
| a tongue restraining device connected to the base, wherein said tongue restraining device comprises a transverse strip that extends from a lower right molars to a lower left molar that pushes the tongue upward and forward and an anterior surface that forms a substantial opening within said tongue restraining device to permit movement of the tongue... | The product has a "Tongue Stabilizing Device" in the form of a transverse strip. An annotated image shows this feature and states it "supports tongue and opens airway." | ¶¶36, 37, p. 12 | col. 2:1-9 |
| ...and wherein said transverse strip is substantially U-shaped and said transverse strip has a downward orientation relative to the bottom side of the base; and | Product images depict a U-shaped transverse strip. | ¶36, p. 10 | col. 2:4-6 |
| a ramp projecting upward from the front end of the base, wherein said ramp is configured, when the appliance is secured in a mouth, to force a mandible forward and wherein said ramp comprises a top portion and a bottom portion and said top portion rises at a first angle that is between 25 to 45 degrees and said bottom portion rises at a second angle that is between 40 and 60 degrees... | The complaint alleges the product includes this ramp and quotes the claim language directly. An annotated image in the complaint identifies a "Mandibular Advancement" feature which "advances lower jaw," alleged to be the claimed ramp. The complaint does not specify the angles of the accused product's ramp. | ¶36, p. 12 | col. 3:12-30 |
- Identified Points of Contention:
- Scope Question: The claim recites a "means for securing the appliance to a lower teeth." This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope will be limited to the corresponding structure described in the specification, namely "acrylic that is molded to fit securely over the lower teeth of the patient" and its equivalents (’341 Patent, col. 3:1-3). The infringement analysis will depend on whether the accused product's securing mechanism is structurally equivalent.
- Technical Question: The complaint does not provide evidence that the accused product's ramp has top and bottom portions rising at the specific angular ranges required by the claim (25-45 and 40-60 degrees). This may become a point of factual dispute requiring expert measurement and testimony.
’758 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A dental oral appliance to open the airway for a sleeping individual who suffers with snoring or sleep apnea comprising: a base comprising a first section configured to accept a first group of teeth of the individual and a right posterior end and a left posterior end; | The accused Zyppah Product is alleged to be such an appliance, with a base that fits over the user's teeth. | ¶¶1, 37 | col. 1:51-55 |
| and a tongue restraining device connected to the base at said right posterior end and at said left posterior end, said tongue restraining device consisting only of a flexible, moveable transverse band... | The product is alleged to have a "flexible, moveable transverse band" that functions as a tongue restraining device. An annotated image identifies this feature as a "Tongue Stabilizing Device" that "supports tongue and opens airway." | ¶¶37, p. 12-13 | col. 2:4-10 |
| ...wherein the base comprises an upper section and a lower section and the relative position of the upper section to the lower section can be adjusted. | The complaint alleges the product has this structure. An annotated photograph from the complaint shows "+" and "x" symbols on the device, which may correspond to an adjustment mechanism for the upper and lower sections, though this is not explicitly stated. The complaint does not detail how the accused product is adjusted. | ¶37, p. 13 | col. 4:10-16 |
- Identified Points of Contention:
- Scope Question: The claim requires the tongue restraining device to consist "only of a flexible, moveable transverse band." This "consisting only of" language is highly restrictive. A court would need to determine if the accused product's tongue restraint includes any additional structural components beyond the band itself, which could potentially place it outside the claim's scope.
- Technical Question: The complaint alleges the accused product's upper and lower sections "can be adjusted" but does not provide specific evidence of how this adjustment mechanism functions or whether it corresponds to the structures disclosed in the patent (e.g., posts and holes).
V. Key Claim Terms for Construction
For the ’341 Patent:
- The Term: "substantial opening"
- Context and Importance: This term defines the key feature distinguishing the invention from prior art that was allegedly too restrictive of tongue movement. The size of the "opening" is critical to both infringement (whether the accused product has a large enough opening) and validity (whether the term is indefinite). Practitioners may focus on this term because its inherent subjectivity makes it a likely target for dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the purpose of the opening is "to allow movement of the tongue within the opening 6 so that it is easier for the patient to swallow saliva" (’341 Patent, col. 3:58-61). This functional description could support a construction tied to allowing swallowing, regardless of a specific size.
- Evidence for a Narrower Interpretation: Figure 3 depicts the opening (6) in relation to the rest of the device, providing a potential visual reference for its proportional size. Further, the patent notes that "from a top view, the area of the breach will be greater than the apparent area of the tongue restraining device," which could be argued to impose a specific geometric constraint (’341 Patent, col. 5:51-54).
For the ’758 Patent:
- The Term: "flexible, moveable transverse band"
- Context and Importance: This term is the central element of the asserted claim. Its construction will determine what degree of flexibility and what type of movement are required to infringe. The dispute will likely center on whether the accused product's band has the specific dynamic properties described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Abstract describes the band as one that "deforms during tongue movement such as swallowing...and then because of the memory of the band, returns the tongue to its original position." This functional definition could be read broadly to cover any band that deforms and returns.
- Evidence for a Narrower Interpretation: The specification states, "The act of the tongue moving backward to swallow stretches the elastic type band. Once the swallowing motion is complete, the tongue relaxes allowing the transverse band to re-coil to its original un-stretched position" (’758 Patent, col. 2:11-16). This could support a narrower construction requiring a specific "stretching" and "re-coiling" action characteristic of an "elastic type" material.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that defendants AMM, Jonathan Greenburg, and Laura Greenburg induced infringement by "advertising to users and instructing users to use the Zyppah product in an infringing manner" (Compl. ¶41). As evidence of intent, the complaint alleges these defendants knew of the patents and the exclusive license (Compl. ¶42) and specifically cites an online instruction manual as an affirmative act of encouragement (Compl. ¶41, fn. 1).
- Willful Infringement: Willfulness is alleged against all defendants. The complaint asserts that the defendants' infringement was and is "intentional, willful, and without regard to Brandable's rights" (Compl. ¶38, ¶43). The basis for this allegation appears to be the defendants' direct involvement with the patents (as inventors/licensors) and their alleged knowledge of the exclusive licensing agreement with Brandable.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to hinge on three primary questions, one contractual and two rooted in patent law:
A threshold issue will be one of contractual standing: has the exclusive license agreement been validly terminated? The answer will determine whether Plaintiff Brandable Ventures, as an exclusive licensee, has the right to sue for infringement.
A core patent issue will be one of claim scope under § 112: can the "means for securing" limitation in the ’341 patent, which is tied to a specific "molded acrylic" structure, be proven to read on the accused product? Similarly, does the accused product's tongue restraint satisfy the highly restrictive "consisting only of" language in the ’758 patent?
A key evidentiary question will be one of factual proof: can the Plaintiff provide sufficient evidence, likely through expert testimony, that the accused product's ramp meets the specific angular limitations of the ’341 patent's claim 1? While infringement seems facially apparent given the product's origin, failure to prove this specific quantitative limitation could defeat the infringement claim for that patent.