DCT
8:24-cv-00078
Akha LLC v. Pac Dent Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Akha, LLC (California) and Ajk Engineering Services Inc. (South Carolina)
- Defendant: PAC-DENT, INC. (California)
- Plaintiff’s Counsel: Hankin Patent Law, A Professional Corporation
- Case Identification: 8:24-cv-00078, C.D. Cal., 01/12/2024
- Venue Allegations: Venue is alleged to be proper as Defendant resides, does business, offers for sale, and allegedly committed wrongful acts within the Central District of California.
- Core Dispute: Plaintiffs allege that Defendant’s dental prophy angle products infringe a patent related to splatter reduction technology, developed by Plaintiffs and previously manufactured for them by Defendant.
- Technical Context: The dispute concerns disposable prophy angles, a common dental instrument used for polishing teeth, where controlling the splatter of polishing paste is a significant functional and safety consideration.
- Key Procedural History: The complaint details a prior business relationship where Defendant acted as the contract manufacturer for Plaintiffs' "Lotus SFA" product. Plaintiffs allege that after this relationship soured and was terminated, Defendant began manufacturing and selling a "virtually identical" infringing product, leveraging the mold and knowledge gained during the prior contractual relationship.
Case Timeline
| Date | Event |
|---|---|
| 2016-08-15 | U.S. Patent No. 9,962,236 Priority Date |
| 2018-05-08 | U.S. Patent No. 9,962,236 Issue Date |
| 2018-09-05 | Parties' Confidentiality Agreement Signed |
| 2018-09-28 | Defendant Presents Manufacturing Quotation to Plaintiffs |
| 2019-08-06 | First Prototypes of Lotus SFA Shipped |
| 2019-09-10 | Plaintiffs Introduce Lotus SFA to Dental Community |
| 2020-10-01 | Parties' Distribution Agreement Executed (approx. date) |
| 2021-01-22 | Plaintiffs Enter Distribution Agreement with Ultradent |
| 2022-07-21 | Ultradent Cancels All Future Orders from Plaintiffs |
| 2023-09-23 | Parties' Distribution Agreement Terminated |
| 2024-01-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,962,236, "Splatter Reduction in a Small Head Contra-Angle Prophy," issued May 8, 2018.
The Invention Explained
- Problem Addressed: The patent addresses the "long-standing problem" of splatter during dental cleaning procedures, where a mixture of abrasive paste, saliva, and potentially blood is thrown from the spinning prophy cup by centrifugal force, creating an unsanitary and messy condition ('236 Patent, col. 1:42-59).
- The Patented Solution: The invention is a "splatter guard" that attaches to the housing of the dental hand piece. The guard features a thin, flexible "proximate edge" that abuts the rotating cup to wipe away splatter, and a thicker, more rigid "distal edge" for structural support ('236 Patent, col. 2:6-15). The guard is intentionally designed to be shorter than the prophy cup, which allows the cup to flex outward during use without interference, a function the patent notes is required for a proper polishing procedure ('236 Patent, Abstract; col. 5:27-32).
- Technical Importance: The claimed design seeks to provide an effective device to contain contaminated splatter while preserving the necessary operational flexibility of the prophy cup during a dental procedure ('236 Patent, col. 1:61-64).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 18 (Compl. ¶¶ 51-53).
- Independent Claim 1 of the ’236 Patent recites the following essential elements:
- A rotating member (e.g., a cleaning cup) with a longitudinal axis.
- A splatter guard attached to the hand piece housing.
- The splatter guard has a "proximate edge" that extends lengthwise along and abuts the rotating member.
- The splatter guard's "distal edge" has a first thickness, and its "proximate edge" has a second, smaller thickness.
- The proximate edge terminates before reaching the longitudinal end of the rotating member.
- The complaint also notes that the ’236 Patent contains dependent claims 2-12, 14-17, and 19-20 (Compl. ¶47).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as the "AntiSplatr" prophy angle products manufactured and sold by Defendant (Compl. ¶34). It also broadly defines "Accused Products" to include the continued, allegedly unauthorized, manufacture and distribution of Plaintiffs' "Lotus SFA" product after the termination of the parties' agreement (Compl. ¶49).
Functionality and Market Context
- The complaint alleges that the "AntiSplatr" product is "virtually identical" in appearance to the Plaintiffs' own Lotus SFA product, which embodies the ’236 Patent (Compl. ¶¶ 35, 48). A side-by-side photographic comparison is provided in the complaint to support this allegation (Compl. p. 8). The complaint further alleges that Defendant began manufacturing and selling the accused product after learning Plaintiffs intended to terminate their distribution agreement and that Defendant uses the exact same SKU numbers for its accused product as were used for Plaintiffs' product, allegedly to cause consumer confusion and conceal sales (Compl. ¶¶ 34, 36-39).
IV. Analysis of Infringement Allegations
The complaint alleges that Defendant's "AntiSplatr" products infringe at least independent claims 1, 13, and 18 of the ’236 Patent (Compl. ¶¶ 51-53). While the complaint references an external claim chart (Exhibit E) that was not provided, its central infringement theory is that the accused products are "virtually identical" to Plaintiffs' patented product (Compl. ¶35). A side-by-side photographic comparison shows Plaintiff’s Lotus SFA product (“P”) and Defendant’s accused AntiSplatr product (“D”), highlighting their similar transparent housings and pink internal components (Compl. p. 8).
’236 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a rotating member having a longitudinal axis | The accused "AntiSplatr" is a prophy angle that includes a rotating cup for dental polishing. | ¶34, p. 8 | col. 9:38-39 |
| a splatter guard attached to a housing of the hand piece ... the splatter guard having a proximate edge ... abutting the rotating member | The accused product is alleged to be "virtually identical" to Plaintiffs' product and is shown in a photograph with a splatter guard attached to its housing and abutting the cup. | ¶35, p. 8 | col. 9:40-47 |
| the distal edge has a first thickness and the proximate edge has a second, smaller thickness | Based on the "virtually identical" allegation, the complaint implies the accused splatter guard possesses the claimed differential thickness between its distal and proximate edges. | ¶35 | col. 9:51-53 |
| the proximate edge, at an end distal to the housing, terminates prior to a longitudinal end of the rotating member | The provided side-by-side image appears to show the splatter guard on the accused product ending before the tip of the prophy cup. | p. 8 | col. 9:54-56 |
Identified Points of Contention
- Technical Questions: The core of the dispute appears to be a factual one. A primary question for the court will be whether discovery reveals that the accused "AntiSplatr" product is, in fact, technically identical to the patented "Lotus SFA" product with respect to all limitations of the asserted claims. The analysis will depend on a direct comparison of the accused product's physical geometry and construction against the claim language.
- Scope Questions: While the complaint alleges direct copying, any subtle differences in the accused product could raise claim construction issues. For example, the precise nature of the "abutting" contact between the guard and cup, or the specific dimensional relationship required by "terminates prior to," could become points of dispute.
V. Key Claim Terms for Construction
The Term: "abutting"
Context and Importance: Claim 1 requires the guard's proximate edge to be "abutting the rotating member." The definition of this term will be critical to determining infringement. Practitioners may focus on this term because the degree of contact required (e.g., constant physical touching versus intermittent wiping contact) could be a dispositive issue if the accused product is found to have any separation between the guard and the cup.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the guard as designed to "wipe[] off the splatter," which may support an interpretation that functional wiping contact satisfies the "abutting" requirement, even if not perfectly continuous ('236 Patent, col. 5:21-22).
- Evidence for a Narrower Interpretation: The patent also states the invention's purpose is to allow the cup to "flex outward without interfering," which could support a narrower definition of "abutting" that does not imply a rigid, friction-inducing contact that would impede this flexing ('236 Patent, Abstract).
The Term: "terminates prior to a longitudinal end of the rotating member"
Context and Importance: This limitation defines the relative length of the splatter guard. Infringement requires the accused guard to be shorter than the cup.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the general principle that the guard is "shorter than the cleaning cup" to allow for flexing, which supports a general, functional interpretation ('236 Patent, col. 5:30-31).
- Evidence for a Narrower Interpretation: The specification provides a more specific range, stating the guard is "disposed a distance away from an end 13 of the cleaning cup 12. This distance is preferably from about 2 to about 5 mm" ('236 Patent, col. 5:39-43). A defendant may argue this preferred range should inform or limit the scope of the claim term.
VI. Other Allegations
- Indirect Infringement: The complaint alleges infringement "directly, indirectly, and/or under the Doctrine of Equivalents" (Compl. ¶50). However, it does not plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement, such as allegations related to user manuals or specific instructions to third parties. The primary focus of the factual allegations is on Defendant's own acts of making, using, and selling.
- Willful Infringement: The complaint alleges that Defendant’s infringement was and is willful (Compl. ¶58). The factual basis for this allegation is the parties' prior contractual relationship, during which Defendant served as the manufacturer for Plaintiffs' patented product (Compl. ¶¶ 14, 48). This relationship suggests Defendant had actual pre-suit knowledge of the ’236 Patent and the product embodying it.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical identity: Is the accused "AntiSplatr" product, as manufactured by Defendant, structurally identical to the product it previously manufactured for Plaintiffs, and does it meet every limitation of the asserted claims of the ’236 patent? The case appears to hinge on a direct factual comparison rather than a complex legal or technical dispute.
- A second key question will be the separation of damages: Given the complex business history, how will the court distinguish between damages arising from the alleged patent infringement post-termination, damages from the alleged breach of the prior manufacturing and distribution agreements, and potential enhanced damages from the alleged willfulness of Defendant's conduct?