Neotech Products LLC v. Sandbox Medical LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Neotech Products LLC (California)
  • Defendant: Sandbox Medical, LLC (Delaware)
  • Plaintiff’s Counsel: Eckert Seamans Cherin & Mellott, LLC
• Case Identification: 1:17-cv-01366, D. Del., 09/29/2017
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a limited liability company organized and existing under the laws of Delaware.
• Core Dispute: Plaintiff alleges that Defendant’s Boogie Baby Nasal Aspirator products infringe a patent related to multi-part medical suction devices.
• Technical Context: The technology resides in the field of neonatal medical devices, specifically aspirators used to clear oral or nasal passages, where ease of use and patient safety are primary considerations.
• Key Procedural History: The complaint alleges that Defendant had knowledge of the patent-in-suit as early as April 2015. Notably, public records attached to the patent-in-suit indicate that subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding was initiated against the patent (IPR2019-00246). An IPR certificate issued on July 15, 2021, states that all claims of the patent, including all asserted claims, have been cancelled.

Case Timeline

Date	Event
2001-06-04	'050 Patent Priority Date
2005-10-25	'050 Patent Issue Date
2015-04-01	Alleged earliest date of Defendant's knowledge of '050 Patent
2017-09-29	Complaint Filing Date
2018-11-09	IPR2019-00246 Filing Date
2021-07-15	IPR Certificate issued cancelling all claims of the '050 Patent

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

U.S. Patent No. 6,958,050 - "Nasal/Oral Aspiration Device"

The patent at issue is U.S. Patent No. 6,958,050, issued October 25, 2005 (the "’050 Patent").

The Invention Explained

• Problem Addressed: The patent identifies a general need for medical suctioning devices with "increased overall utility, as well as ease and effectiveness of use and operation" ('050 Patent, col. 4:9-12).
• The Patented Solution: The invention is a two-part suctioning device. It comprises a first, relatively hard tubular body portion that connects to a second, relatively soft and pliable tubular portion ending in a flexible tip ('050 Patent, col. 5:17-21). A key feature is a "side inlet" on the first body portion which can be manually blocked or unblocked by a user's finger to control the application of suction ('050 Patent, col. 4:60-63). This design aims to provide precise suction control while the soft tip allows for easier, less traumatic maneuvering within a patient's nasal or oral cavity ('050 Patent, col. 4:38-41).
• Technical Importance: The design sought to provide a single device that combined the fine control of a catheter with the safety and simplicity of a bulb-style aspirator, particularly for sensitive applications like neonatal care ('050 Patent, col. 5:32-35).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 3-10, and also references claim 2 ('050 Patent, Compl. ¶¶ 13, 15).
• Independent Claim 1 recites a "multi-purpose medical suctioning device" with the following essential elements:
  • A "one piece first tubular body portion" made of "relatively hard plastic."
  • A "one piece second tubular portion" made of "relatively soft plastic" that connects to the first portion.
  • The second portion has a "flexible tip portion" that is "soft and pliable" and "easily maneuverable."
  • A "side inlet" on one of the portions that can be "manually blocked and unblocked to control suctioning."
  • A specific geometry where the second portion has "primary secondary and tertiary lengthwise extending sections" with defined tapers and lengths.
  • A requirement that the body portions are "transparent" or "translucent."

III. The Accused Instrumentality

Product Identification

The "Boogie Baby Nasal Aspirator having a preemie tip, a standard tip, or a flair tip" ('050 Patent, Compl. ¶13).

Functionality and Market Context

The complaint describes the accused product as an "economical & easy to use oral & nasal suction device" and a "non-invasive suction device" ('050 Patent, Compl. ¶16). The product packaging allegedly instructs users to "connect to standard suction line," suggesting it is intended for use with an external suction source, similar to the device described in the patent ('050 Patent, Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products directly infringe the ’050 Patent, but it does not map specific product features to the limitations of the asserted claims in a detailed manner ('050 Patent, Compl. ¶12). The infringement theory is based on the general allegation that the "Boogie Baby Nasal Aspirator" is a "multipurpose suction device embodying one or more of the inventions claimed in the ’050 Patent" ('050 Patent, Compl. ¶12). No probative visual evidence provided in complaint.

Identified Points of Contention

The high-level nature of the complaint’s allegations raises several points that may be central to an infringement analysis.

Structural Questions

The complaint does not contain specific factual allegations showing that the accused aspirator incorporates several key structural limitations of claim 1. A central evidentiary question would be whether the accused product includes:

1. A "side inlet" for manual suction control, as required by limitation (d).
2. The specific three-section geometry ("primary secondary and tertiary sections") with defined relative lengths and tapers, as required by limitations (f) and (g).
3. Body portions constructed as "one piece" and made of "transparent" or "translucent" material, as required by limitations (a), (b), and (h).

Scope Questions

The interpretation of "one piece" for both the first and second tubular portions may be a point of dispute. The question is whether this term restricts the claim to components made of a single, continuous piece of molded material, or if it could read on assemblies of multiple components that are permanently joined.

V. Key Claim Terms for Construction

Term for Construction: "side inlet ... to be manually blocked and unblocked"

Context and Importance

This term defines the core suction control mechanism of the claimed invention. Whether the accused device possesses a structure that meets this limitation is fundamental to the infringement case. Practitioners may focus on this term because it appears to be a key point of differentiation for the patented technology.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The specification describes the feature as a "side inlet 30" that facilitates "finger control of suctioning, as by closing or opening the inlet" ('050 Patent, col. 4:57-60). This functional language could support a construction that covers any user-operable port for modulating suction.
• Evidence for a Narrower Interpretation: The figures depict a specific embodiment: a "short tubular projection 33 from one side of 20" ('050 Patent, col. 4:58-59; Figs. 1, 5). A party might argue that the term should be limited to a structure resembling this projecting port, rather than any simple opening in the device body.

Term for Construction: "one piece"

Context and Importance

This term is used to describe both the "first tubular body portion" and the "second tubular body portion." Its construction is critical because if the accused device's corresponding parts are assembled from multiple components, it may fall outside the scope of the claim.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent does not explicitly define "one piece." A party could argue it means functionally integral or unitary, potentially including co-molded parts of different materials that form a single, inseparable unit.
• Evidence for a Narrower Interpretation: The plain and ordinary meaning suggests a component formed from a single, contiguous piece of material. The patent’s distinction between the "one piece first tubular body portion" and the separate "one piece second tubular portion" may support an interpretation that each of these two main components must itself be of monolithic construction ('050 Patent, col. 5:15-17).

VI. Other Allegations

Indirect Infringement

The complaint alleges both contributory and induced infringement. The inducement allegation is based on the assertion that Defendant had knowledge of the '050 Patent since April 2015 and that its product instructions, which direct users to "connect to standard suction line," actively encourage an infringing use ('050 Patent, Compl. ¶¶ 11, 16). The contributory infringement allegation is based on the assertion that the accused device has "no substantially non-infringing uses" ('050 Patent, Compl. ¶14).

Willful Infringement

The complaint alleges that Defendant’s infringement was willful, asserting that its conduct was undertaken in "subjective bad faith, and/or intentional or with reckless disregard" of Plaintiff's patent rights ('050 Patent, Compl. ¶21). This claim is supported by the allegation of pre-suit knowledge of the '050 Patent ('050 Patent, Compl. ¶11).

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

1. A threshold issue, arising from information post-dating the complaint, is one of viability: given that the U.S. Patent and Trademark Office cancelled all asserted claims of the ’050 Patent in a subsequent Inter Partes Review, the primary question for the court is whether any cause of action for patent infringement remains or if the entire case is moot.

2. Setting aside the claim cancellation, a key evidentiary question would have been one of structural correspondence: does the accused "Boogie Baby Nasal Aspirator" actually incorporate the specific, unclaimed structural features recited in Claim 1—particularly the manually-operable "side inlet" and the defined multi-section tip geometry—for which the complaint provides no specific factual allegations?