DCT
5:23-cv-00134
Mayborn Uk Ltd v. Comotomo Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mayborn (UK) Limited, Mayborn USA, Inc., Mayborn Group Limited (United Kingdom; New York)
- Defendant: Comotomo Inc., Comotomo Corporation (California; Republic of Korea)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 5:23-cv-00134, S.D.N.Y., 01/27/2022
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant Comotomo Inc. has a regular and established place of business in the district and has committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s baby bottles infringe patents related to flexible, breast-like nipple designs that incorporate specific venting and structural features.
- Technical Context: The technology concerns the design of baby bottle nipples intended to more closely mimic the natural shape, feel, and mechanics of a human breast to ease the transition between breast and bottle feeding.
- Key Procedural History: The asserted patents are continuations of a family with a 2004 priority date. The complaint alleges Defendant had actual notice of the ’930 Patent at least as of July 22, 2021, and received a claim chart from Plaintiff the following day. The complaint also alleges Defendant was aware of the application that became the ’244 Patent because it tracked its prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-29 | Earliest Priority Date for ’930 and ’244 Patents |
| 2021-03-23 | U.S. Patent No. 10,952,930 Issued |
| 2021-07-22 | Defendant allegedly received notice of ’930 Patent infringement |
| 2021-07-23 | Plaintiff allegedly sent Defendant a claim chart for the ’930 Patent |
| 2021-12-28 | U.S. Patent No. 11,207,244 Issued |
| 2022-01-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,952,930 - "Baby Bottle With Flexible Nipple Regions," issued March 23, 2021
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art bottle teats as failing to "closely mimic the movement of the human breast during sucking" and notes that the flexing points in some designs are "undefined and unpredictable" (’930 Patent, col. 1:35-40). It also identifies challenges with prior valved feeding bottles, such as frailness or reliance on precise user assembly (’930 Patent, col. 1:46-67).
- The Patented Solution: The invention is a feeding bottle with a nipple assembly designed for more natural function. The nipple includes an "areola portion" with a "flex region" comprising grooves that allow the teat to move towards and away from its base, mimicking the mechanics of breastfeeding (’930 Patent, col. 2:9-15). The solution also incorporates a specific design for a one-way air inlet valve to reduce colic by allowing air to enter the bottle as the infant drinks (’930 Patent, col. 5:11-24).
- Technical Importance: The claimed design seeks to provide a more natural feeding action, which the complaint alleges "makes switching between breast and bottle feeding simpler" (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶28).
- The essential elements of claim 14 include:
- A vessel with an open top.
- A collar with an internally threaded surface and an outermost surface having a "sloping portion" that comprises a "majority of the collar's outermost surface."
- A nipple with a teat portion (variable wall thickness), a domed base portion, an areola portion, a flange, and a "one-way air inlet valve" with four specified structural characteristics.
- The nipple is secured to the collar by capturing an inner edge of the collar between the base portion and the flange.
- The nipple is secured to the vessel by capturing the flange between the collar and the vessel's open top.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,207,244 - "Baby Bottle With Flexible Nipple Regions," issued December 28, 2021
The Invention Explained
- Problem Addressed: As a continuation in the same family, the patent addresses the same problems as the ’930 Patent: creating a bottle nipple that more accurately mimics the natural movement and feel of a human breast (’244 Patent, col. 1:29-43).
- The Patented Solution: This patent claims a "drinking vessel" focusing on the overall geometry of the bottle and nipple assembly. The invention combines a container having a "varying internal circumference" with a cover assembly (nipple and collar). The nipple has a "flex region" that allows the mouthpiece to move, and together with the collar, it defines a "downward domed shape" that extends from the flex region to the collar's edge (’244 Patent, col. 8:1-19). This geometry is intended to provide a more natural feeding experience (’244 Patent, col. 4:1-10).
- Technical Importance: The invention aims to provide a bottle with an overall shape and flexible nipple assembly that closely mimics a human breast, which the complaint frames as a revolution in baby bottle design (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts independent claim 21 (Compl. ¶44).
- The essential elements of claim 21 include:
- A container with a "varying internal circumference" and an opening.
- A cover assembly, comprising:
- A nipple with a mouthpiece, a "flex region" allowing flex of the mouthpiece, a bite region, and a flange.
- A collar removably coupled to the nipple to seal the container's opening.
- The collar and the lower portion of the nipple together define a "downward domed shape" extending from the flex region to the "widest circumferential edge of the collar."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Comotomo Baby Bottle and substantially similar products and components thereof" (Compl. ¶21).
Functionality and Market Context
- The complaint alleges the Accused Products are baby bottles designed with a "breast-like shape, design, and functionality" (Compl. ¶21). Key accused features include a "wide mound and a naturally shaped nipple" advertised to "mimic breastfeeding to help babies easily transition back and forth from nursing to bottle feeding" (Compl. ¶23). The complaint supplies multiple annotated photographs to illustrate the product's components, including its vessel, collar, and nipple with a one-way air inlet valve (Compl. ¶¶30-34). For example, an annotated image shows the assembled bottle, identifying the "Vessel" and "Open top" (Compl. ¶30, p. 9).
IV. Analysis of Infringement Allegations
’930 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a vessel having an open top | The accused bottles are feeding bottles that include a vessel with an open top. | ¶30 | col. 5:7-8 |
| b) a collar having an upper rim and a lower rim comprising: an internally threaded inner surface, an outermost surface having a sloping portion that extends outwardly and downwardly relative to said upper rim, and wherein said sloping portion comprises a majority of the collar's outermost surface | The accused bottles have a collar with an upper and lower rim, an internally threaded inner surface, and a sloping outermost surface. An annotated image depicts these features (Compl. ¶31, p. 10). | ¶31 | col. 5:3-6 |
| c) a nipple having: a teat portion having a variable wall thickness including an aperture, a base portion having a domed configuration, an areola portion between the teat portion and the base portion, a flange... a one-way air inlet valve... | The accused nipple has a teat with variable wall thickness, a domed base, an areola portion, a flange, and a one-way air inlet valve with the claimed structural properties. Annotated images illustrate these components (Compl. ¶32, pp. 11-12). | ¶32 | col. 3:7-11 |
| d) the nipple being secured to the collar by sealingly capturing an inner edge of the collar between the base portion and the flange | The accused nipple is secured to the collar by capturing the collar's inner edge between the nipple's base and flange. An annotated image demonstrates this assembly (Compl. ¶33, p. 13). | ¶33 | col. 5:10-12 |
| e) the nipple being secured to the vessel by capturing the flange of the nipple between the collar and the open top of the vessel | The accused nipple is secured to the vessel by capturing the flange between the collar and the open top of the vessel. | ¶34 | col. 5:6-12 |
- Identified Points of Contention:
- Scope Questions: The interpretation of the term "a majority of the collar's outermost surface" may be a point of dispute, as it is a relative geometric limitation. The parties may contest whether the accused collar's "sloping portion" meets this requirement.
- Technical Questions: A key question will concern the "one-way air inlet valve." The claim requires the valve to meet four specific structural and positional limitations. The court will need to determine if the accused valve, shown in an annotated photograph (Compl. ¶32, p. 12), possesses a structure and function corresponding to that claimed.
’244 Patent Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a container comprising a varying internal circumference and an opening into the container | The accused bottles are alleged to be drinking vessels with a container that has a varying internal circumference and an opening. An annotated photograph illustrates these features (Compl. ¶46, p. 18). | ¶46 | col. 8:1-3 |
| a cover assembly... comprising: i. a nipple comprising a mouthpiece... a flex region configured to allow flex of the mouthpiece... a bite region, and a flange... and ii. a collar configured to removably couple to the nipple to seal over the opening of the container | The accused bottles include a cover assembly with a nipple and collar. The nipple is alleged to have a mouthpiece, a flex region, a bite region, and a flange, as depicted in an annotated photograph (Compl. ¶48, p. 20). | ¶¶47-49 | col. 8:4-13 |
| and wherein the collar and the lower portion of the nipple together define a downward domed shape that extends outwardly and downwardly from the flex region of the nipple towards a widest circumferential edge of the collar | The collar and lower nipple portion of the accused products are alleged to together define the claimed "downward domed shape." An annotated image traces this specific geometry on the accused product (Compl. ¶50, p. 21). | ¶50 | col. 8:14-19 |
- Identified Points of Contention:
- Scope Questions: The construction of "downward domed shape" will be critical. The claim defines this shape with specific geometric and relational constraints (extending from the flex region to the widest edge of the collar). The litigation may focus on whether the accused product's curvature and dimensions fall within the scope of this term.
- Technical Questions: What evidence supports the allegation that the accused nipple's "flex region" is "configured to allow flex of the mouthpiece towards and away from a lower portion of the nipple"? This is a functional limitation, and its proof may require more than the static photographs provided in the complaint.
V. Key Claim Terms for Construction
For the ’930 Patent: "one-way air inlet valve"
- Context and Importance: This term is central to the venting feature of the invention, which is designed to prevent vacuum buildup and reduce colic. The claim recites four specific structural and positional sub-elements for the valve, making its precise definition critical for the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple types of valves, including an "integrally moulded duck-bill valve" and a "discontinuous flap or lip valve portion 123" (’930 Patent, col. 2:60-61, col. 5:14-15). This may support an interpretation that the term is not limited to a single structure.
- Evidence for a Narrower Interpretation: The claim itself provides a detailed, four-part structural definition, including that it projects downwardly, has a length that does not extend past the collar's lower rim, and is disposed at least partially inwardly from the collar (’930 Patent, col. 8:44-51). An opponent might argue these specific limitations constrain the term to the particular embodiment shown that meets all four criteria.
For the ’244 Patent: "flex region"
- Context and Importance: The "flex region" is the core of the claimed invention's "natural" movement. Its ability to "allow flex of the mouthpiece" is a key functional limitation. Practitioners may focus on this term because infringement will depend on whether the accused nipple operates in the claimed manner.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes an "areola portion allowing movement of the teat portion towards and away from the base portion" (’244 Patent, Abstract). This suggests a focus on the general function of enabling movement.
- Evidence for a Narrower Interpretation: The detailed description links the "flex region" to specific structures, such as "three grooves or flex channels" that create a "bellows action" (’244 Patent, col. 3:65-col. 4:2, col. 4:16-21). This could support an argument that a "flex region" must possess such structural characteristics to perform the claimed function.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, stating that Defendant promotes and advertises the accused products and provides instruction manuals that encourage and instruct customers to assemble and use the products in an infringing manner (Compl. ¶¶23-24, 36). It also alleges contributory infringement through the sale of replacement nipples that are especially adapted for use in the infringing bottles and are not suitable for substantial non-infringing use (Compl. ¶38).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and post-suit knowledge. For the ’930 Patent, it alleges Defendant had knowledge from at least July 22, 2021, via notice from Amazon, and received a claim chart from Plaintiff on July 23, 2021 (Compl. ¶35). For the ’244 Patent, it alleges Defendant had knowledge because it "has been tracking the prosecution" of the underlying patent application (Compl. ¶¶26, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the descriptive, geometric term "downward domed shape," as defined in the ’244 Patent with specific relational boundaries, be construed to read on the precise curvature and dimensions of the accused bottle's nipple-and-collar assembly?
- A second central question will be one of structural and functional correspondence: does the accused product's venting mechanism meet all four of the specific structural and positional limitations required for the "one-way air inlet valve" in claim 14 of the ’930 Patent, and does its "flex region" operate to allow flex in the manner claimed by the ’244 Patent?
- A key evidentiary question will concern willfulness: what evidence will emerge in discovery to substantiate the allegation that Defendant tracked the prosecution of the ’244 Patent application, and did the pre-suit notice provided for the ’930 Patent create an objectively high likelihood of infringement that was consciously disregarded?