New Age Performance Inc v. Diversified Product Solutions LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: New Age Performance, Inc. (Canadian corporation)
  • Defendant: Diversified Product Solutions, LLC (d/b/a) Berkland Goods (California LLC)
  • Plaintiff’s Counsel: Dergosits & Noah LLP
• Case Identification: 4:24-cv-00710, N.D. Cal., 02/06/2024
• Venue Allegations: Venue is asserted on the basis that Defendant is a California limited liability company residing in the Northern District of California and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s "PowerGuard" performance mouthpieces infringe a utility patent and a design patent related to performance-enhancing oral appliances.
• Technical Context: The technology involves oral appliances designed not for dental protection, but to optimize jaw alignment, which is purported to improve an athlete's strength, balance, and a performance.
• Key Procedural History: The complaint alleges Defendant had constructive notice of the patents-in-suit via Plaintiff's patent marking, beginning in 2015 for the D109 patent and 2018 for the '903 patent. Plaintiff also alleges it provided Defendant with actual notice of the asserted patents and alleged infringement via a letter dated August 4, 2023, a fact which may be material to the claim for willful infringement.

Case Timeline

Date	Event
2011-03-11	U.S. Patent No. 9,022,903 Priority Date
2013-01-01	Plaintiff began development and sale of its mouthpiece products (approx.)
2014-04-11	U.S. Design Patent No. D743,109 Priority Date
2015-05-05	U.S. Patent No. 9022903 Issued
2015-11-10	U.S. Design Patent No. D743,109 Issued
2015-01-01	Plaintiff began marking products with D109 Patent (approx.)
2018-01-01	Plaintiff began marking products with '903 Patent (approx.)
2023-08-04	Plaintiff sent "Notice Letter" to Defendant alleging infringement
2024-02-06	Complaint Filed

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

U.S. Patent No. 9,022,903 - "ORAL APPLIANCE FOR IMPROVING STRENGTH AND BALANCE"

• Patent Identification: U.S. Patent No. 9,022,903, "ORAL APPLIANCE FOR IMPROVING STRENGTH AND BALANCE," issued May 5, 2015.

The Invention Explained

• Problem Addressed: The patent background observes that the relative positioning of an individual's jaws can affect their physical strength and balance. However, fabricating a custom oral appliance to optimize this positioning is often expensive and inconvenient due to wide variations in dental anatomy and bite patterns. (Compl. ¶20; ’903 Patent, col. 1:12-25).
• The Patented Solution: The invention is a "neuromuscular oral appliance" that provides a non-customized solution. It comprises a deformable channel that fits over one set of teeth (e.g., upper jaw) and a separate, pliable bite pad for the opposing teeth. The key feature is that the bite pad is designed to partially collapse when a user bites down, thereby establishing and maintaining a specific gap between the jaws that is believed to create a more favorable neuromuscular position for strength and balance. (’903 Patent, Abstract; col. 1:30-40).
• Technical Importance: The technology aimed to create a mass-market, "boil-and-bite" product that went beyond traditional dental protection to actively enhance athletic performance by optimizing jaw alignment. (Compl. ¶¶19, 23).

Key Claims at a Glance

• The complaint provides an exemplary analysis based on independent claim 2. (Compl. ¶¶22, 41).
• The essential elements of independent claim 2 are:
  • A neuromuscular oral appliance for placement in a mouth of a user comprising:
  • a channel adapted to accept teeth from one of a lower jaw and an upper jaw of the mouth;
  • wherein the channel is deformable to at least partially conform to a shape of the accepted teeth;
  • a pair of bite pads extending adapted to contact teeth from the other of the lower jaw and the upper jaw when the oral appliance is placed in the mouth;
  • wherein the pair of bite pads is adapted to partially collapse upon contact with the teeth such that a gap between the lower jaw and the upper jaw is maintainable within a predefined range.
• The complaint alleges infringement of "one or more claims," reserving the right to assert others. (Compl. ¶28).

U.S. Design Patent No. D743,109 - "MOUTHPIECE"

• Patent Identification: U.S. Design Patent No. D743,109, "MOUTHPIECE," issued November 10, 2015.

Technology Synopsis

This patent protects the ornamental, non-functional design of a mouthpiece. The claimed design consists of two bite pad structures connected by a curved anterior bar, with specific visual features including the "H"-shaped profile of the base/channel sections and the appearance of the upraised bite pad features. (Compl. ¶33; D109 Patent, Figs. 1, 3, 4). The complaint provides visual comparisons between the patented design and the accused product to illustrate the alleged copying. (Compl. ¶35).

Asserted Claims

Design patents contain a single claim for the ornamental design as shown and described in the patent's figures. (Compl. Count II, ¶¶71-72).

Accused Features

The complaint alleges that the overall visual appearance of the Defendant's "PowerGuard" product is "confusingly similar" and "substantially the same" as the design claimed in the D109 Patent. (Compl. ¶¶34, 36).

III. The Accused Instrumentality

Product Identification

• The "PowerGuard" mouthpiece, sold by Defendant Diversified Product Solutions, LLC under its "Berkland" brand. (Compl. ¶¶27, 29).

Functionality and Market Context

• The PowerGuard product is described as a "performance mouthpiece" sold online, including via Amazon, for use in fitness activities like weightlifting. (Compl. ¶¶27, 45). The complaint alleges it is made of Polyolefin Elastomer ("POE"), a thermoplastic material that allows for a "boil-and-bite" customization process where the user heats the device and bites into it to create a custom fit. (Compl. ¶¶39, 50).
• Marketing statements cited in the complaint claim the product "provides instant jaw stabilization," "helps promote proper alignment," and "removes restrictions during weightlifting." (Compl. ¶48). The complaint includes a screenshot from the product's Amazon listing, showing callouts for features like "Comfortable Spacing for effective breathing and balance." (Compl. p. 16).

IV. Analysis of Infringement Allegations

’903 Patent Infringement Allegations

Claim Element (from Independent Claim 2)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a channel adapted to accept teeth from one of a lower jaw and an upper jaw of the mouth	The accused product is alleged to have two channels on its bottom portion, which are configured to accept the teeth of the user's lower jaw.	¶49	col. 5:30-34
wherein the channel is deformable to at least partially conform to a shape of the accepted teeth	The accused product is made of a thermoplastic polymer (POE) and is sold with instructions for the user to heat it in boiling water and bite down, causing the channel material to deform and conform to the user's teeth.	¶50	col. 5:35-38
a pair of bite pads extending adapted to contact teeth from the other of the lower jaw and the upper jaw when the oral appliance is placed in the mouth	The upper portion of the accused product is alleged to feature a pair of bite pads that contact the teeth of the user's upper jaw when the device is in place.	¶51	col. 6:1-4
wherein the pair of bite pads is adapted to partially collapse upon contact with the teeth	The complaint provides a "before and after use" photograph showing teeth imprints in the bite pads, alleging this demonstrates the required collapse. It further alleges this collapse occurs during both initial fitting and subsequent use.	¶¶52, 54, 55	col. 6:5-7
such that a gap between the lower jaw and the upper jaw is maintainable within a predefined range	It is alleged that the molding process, the material's properties, and the thickness of the bite pads result in a maintainable gap, pointing to marketing claims of "Comfortable Spacing for effective breathing and balance."	¶¶52, 53	col. 6:7-9

Identified Points of Contention

• Scope Questions: A primary question for the court will be the proper construction of "partially collapse." The dispute may center on whether the one-time, permanent deformation of a "boil-and-bite" thermoplastic during molding constitutes "collapse," or if the claim requires a more dynamic, resilient compression and rebound during each clenching action, as might be suggested by specification embodiments describing fluid or gel-filled cores. (’903 Patent, Abstract; col. 7:29-49).
• Technical Questions: What evidence will be required to prove the accused product's bite pads "partially collapse" during use as a performance aid, beyond the initial molding? The complaint's primary visual evidence shows the result of the initial fitting. (Compl. p. 16). The analysis may turn on whether creating a permanent impression is functionally the same as the "collapse" described in the patent.

V. Key Claim Terms for Construction

• The Term: "partially collapse"
• Context and Importance: The infringement reading for the '903 Patent appears to hinge on this term. Practitioners may focus on this term because Defendant may argue that the one-time plastic deformation of its "boil-and-bite" product is distinct from the dynamic "collapse" of the specialized structures described in the patent's preferred embodiments.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify the mechanism or timing of the collapse. General statements in the specification describe the bite pads as "pliable," "elastic," and "deformable," language which could arguably encompass the behavior of the accused thermoplastic material. (’903 Patent, col. 1:35-37; col. 8:17-19).
  • Evidence for a Narrower Interpretation: The specification repeatedly describes specific embodiments where the bite pads include a "pliable chamber," a "skin encapsulating a core," a "silicone gel," or a "fluid." (’903 Patent, Abstract; col. 7:32-49). This repeated emphasis on fluid or gel-filled structures could be used to argue that "collapse" implies the resilient compression of such a chamber, rather than the permanent setting of a thermoplastic.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant's product marketing, packaging, and online "Molding instructions" direct and encourage end-users to heat, fit, and use the PowerGuard mouthpiece in a manner that performs the steps of the claimed invention. (Compl. ¶¶28, 43, 50).
• Willful Infringement: The willfulness claim is based on two separate grounds. First, the complaint alleges constructive notice through Plaintiff's continuous marking of its own products with the patent numbers since 2015 and 2018. (Compl. ¶16). Second, it alleges post-suit willfulness based on actual, explicit notice provided in a letter to Defendant on August 4, 2023, after which Defendant allegedly continued its infringing activities. (Compl. ¶¶17, 76).

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

• A core issue will be one of definitional scope: Can the term "partially collapse," which is described in the patent specification in the context of gel-filled chambers, be construed to cover the permanent dental impression formed in a simple "boil-and-bite" thermoplastic material?
• A key evidentiary question for the design patent will be one of visual identity: Will an ordinary observer, examining the accused PowerGuard mouthpiece, find its overall aesthetic appearance to be substantially the same as the ornamental design claimed in the D109 patent, as the complaint's side-by-side photographic comparisons suggest?
• The outcome of the willfulness claim may depend on a question of knowledge and timing: Can the plaintiff establish that the defendant knew of the patents or was willfully blind to them prior to receiving the August 2023 notice letter, and did the alleged continuation of sales after receiving the letter constitute deliberate infringement sufficient to warrant enhanced damages?