DCT
1:25-cv-02443
9878866 Canada Inc v. Intake Breathing Technology LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: 9878866 Canada Inc. (Canada)
- Defendant: Intake Breathing Technology, LLC (California)
- Plaintiff’s Counsel: Watkins Law & Advocacy, PLLC
- Case Identification: 1:25-cv-02443, D.D.C., 09/05/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant purposefully offers for sale and sells its products to persons in the District of Columbia through its own website and third-party retailers such as Amazon.com and Walmart.com.
- Core Dispute: Plaintiff, a seller of nasal strips, seeks a declaratory judgment that its product does not infringe Defendant's patent and that the patent is invalid, following an infringement accusation made by Defendant through Amazon's patent enforcement program.
- Technical Context: The technology relates to external nasal dilators, specifically multi-component systems designed to improve airflow for users, particularly those wearing athletic goggles that can compress nasal passages.
- Key Procedural History: The dispute was initiated by Defendant's use of the Amazon Patent Evaluation Express (APEX) program to assert U.S. Patent No. 9,510,969 against Plaintiff's product. This assertion of infringement created the "actual controversy" prompting Plaintiff to file this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-20 | ’969 Patent Priority Date |
| 2016-12-06 | ’969 Patent Issue Date |
| Early 2025 | Defendant allegedly discovered Plaintiff selling product on Amazon.com |
| 2025-07-07 | Amazon sends infringement notice to Plaintiff on behalf of Defendant |
| 2025-09-05 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,510,969 - “Nasal Element for a Breathing System” (Issued Dec. 6, 2016)
The Invention Explained
- Problem Addressed: Eyewear such as athletic goggles are often fitted with a foam liner that creates a seal against the wearer's face. This seal, while protective, can compress the user's nasal passages, inhibiting the ability to breathe through the nose during physical activity (’969 Patent, col. 1:46-56).
- The Patented Solution: The patent describes a multi-component system to counteract this compression. The solution involves a "nose element" that adheres to the exterior of the user's nose and a corresponding element, such as a magnet-equipped "goggle clip," that attaches to the eyewear. When the user puts on the eyewear, the two components magnetically engage, pulling the skin on the sides of the nose outward and forward, thereby dilating the nasal passages to improve airflow (’969 Patent, Abstract; col. 2:1-12).
- Technical Importance: The invention offers a method for nasal dilation that is specifically integrated with eyewear, addressing a problem unique to that context, as distinct from general-purpose nasal strips that rely solely on the spring-like action of a single adhesive strip.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 19, and 26.
- Independent Claim 1: A disposable apparatus for use with an external magnet, comprising:
- a flexible base layer with an adhesive first surface to attach to the nose;
- a metallic element coupled to the base layer's second surface, configured to interact with the magnet;
- an outer layer at least partially covering the metallic element;
- whereby the interaction between the metallic element and the magnet imparts a dilating force on the nose.
- Independent Claim 19: A disposable apparatus similar to that of claim 1, but where the apparatus itself includes a "magnetic element" for use with an external "metallic element."
- Independent Claim 26: An externally applied nose dilating system comprising:
- a magnet positionable adjacent the nose;
- a flexible attachment layer (for the nose) with a middle portion and a surrounding peripheral portion;
- a rigid metallic element coupled to the middle portion of the attachment layer.
III. The Accused Instrumentality
Product Identification
The "Bash Stack," sold as a "Nasal Strips Refill Pack – 30-Day Count" (Compl. ¶3).
Functionality and Market Context
The complaint describes the Accused Product as consisting of 30 pairs of patches, with each patch being a "thin adhesive patch with [a] metal disc" (Compl. ¶4). A key allegation is that the product is a "refill pack" and that a "[m]agnetic nasal band and applicator [are] not included" with the sale of the product (Compl. ¶5). An image provided in the complaint shows sheets of circular, flesh-toned adhesive patches (Compl. p. 2). The product is marketed as a sleep aid and for snore reduction and enhanced breathing (Compl. ¶3).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff seeks a ruling of non-infringement. The following table summarizes the Plaintiff's stated rationale for why its Accused Product does not meet the elements of the asserted patent claim.
’969 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Position on Accused Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A disposable apparatus attachable to a nose of a wearer and configured for use with a magnet positioned adjacent to the nose of the wearer... | The complaint alleges the Accused Product does not have "a magnet positioned adjacent to the nose of the wearer," as no magnet is included with the product. | ¶49 | col. 10:11-14 |
| a flexible base layer including a first surface... having an adhesive disposed thereon to enable the first surface to be selectively attachable to the nose of the wearer; | The Accused Product is described as a "thin adhesive patch" that attaches to the nose. An instructional image shows a user applying the patch to their nose. | ¶4, p. 3 | col. 10:15-19 |
| a metallic element coupled to the second surface of the base layer and being configured to interact with the magnet... | The Accused Product includes a "metal disc" within the adhesive patch. | ¶4 | col. 10:20-22 |
| the interaction between the metallic element and the magnet imparting a dilating force on the nose of the wearer causing the nose of the wearer to dilate; | The complaint alleges that because the Accused Product is sold without a magnet, this required interaction and resulting dilating force does not occur. | ¶49 | col. 10:24-28 |
| an outer layer coupled to the base layer and extending over the metallic element to at least partially cover the metallic element; | Plaintiff alleges the Accused Product lacks this outer layer. | ¶49 | col. 10:29-32 |
- Identified Points of Contention:
- Scope Questions: A central issue appears to be one of divided infringement. The complaint argues that because Plaintiff sells only the disposable adhesive patch component and not the corresponding magnet component, it cannot be liable for direct infringement of claims that require both elements or their interaction. Does selling a "refill" component that is "configured for use with" a magnet that the customer must supply separately constitute direct infringement of claim 1?
- Technical Questions: What evidence does the complaint provide regarding the structure of the Accused Product? Plaintiff alleges the product lacks "an outer layer" as required by claim 1 (Compl. ¶49), which presents a factual question about the product's construction beyond the absence of the magnet.
V. Key Claim Terms for Construction
The Term: "configured for use with a magnet" (from the preamble of claim 1)
Context and Importance: The interpretation of this phrase may be determinative for infringement of claim 1. Plaintiff's primary non-infringement defense is that it does not supply the magnet. The dispute will question whether this phrase requires the magnet to be supplied with the apparatus for infringement to occur, or if it merely describes the apparatus's intended function and capability.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "configured for use with" relates to the design and capability of the apparatus itself, not what is packaged with it. The specification describes the metallic element as "being configured to interact with the magnet" (’969 Patent, col. 10:21-22), suggesting a focus on the object's inherent properties.
- Evidence for a Narrower Interpretation: A party could argue that the patent, read as a whole, describes a complete "system" (e.g., system 10, ’969 Patent, col. 4:32) where the interaction between components is essential. Therefore, an "apparatus for use with" implies that the claimed functionality—imparting a dilating force via interaction—must be achievable by the accused instrumentality as provided.
The Term: "system" (from the preamble of claim 26)
Context and Importance: Claim 26 recites a "nose dilating system comprising: a magnet... and a flexible attachment layer..." This term is critical because system claims typically require all enumerated components to be present for a finding of direct infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: It is difficult to argue for a broader interpretation of a "system comprising A and B" that would read on a product that is only B. Arguments would likely shift to theories of indirect infringement.
- Evidence for a Narrower Interpretation: The plain language of the claim recites a combination of elements. Plaintiff's position—that it only sells the "flexible attachment layer" component—appears to directly challenge whether Defendant can prove direct infringement of this system claim (’969 Patent, col. 12:26-38; Compl. ¶55).
VI. Other Allegations
- Indirect Infringement: The complaint anticipates and denies any claim of indirect infringement. It asserts that the Accused Product has substantial non-infringing uses, citing a prior art patent (U.S. Patent No. 7,793,661) that allegedly discloses using adhesive patches on a user's neck for an anti-snoring device (Compl. ¶56). This allegation is intended to counter a potential claim of induced infringement by arguing the product has legitimate uses that do not involve the patented method. The complaint further denies that Plaintiff possesses the specific intent required for inducement (Compl. ¶57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of divided infringement: can the patentee establish infringement when the Plaintiff allegedly supplies only one component (the disposable patch) of a multi-component claimed system, while the end user must presumably obtain the second component (the magnet) from a different source to practice the invention?
- A central claim construction question will be one of definitional scope: does the claim 1 preamble phrase "configured for use with a magnet" require that a magnet be supplied along with the accused apparatus, or does it merely describe the apparatus's technical capability to interact with a magnet, regardless of how the magnet is sourced?
- An important evidentiary question will be one of alternative utility: can the Plaintiff demonstrate that its adhesive metal discs have substantial non-infringing uses, such as for the neck-based anti-snoring application alleged in the complaint, which could undermine a claim for induced infringement?