Johnson v. Bruington Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Dr. Keyne Johnson, M.D., and Brain and Spine Institute for Children, LLC (Florida)
  • Defendant: Rodney A. Brown and Bruington Inc. (Florida)
  • Plaintiff’s Counsel: Louis R. Gigliotti., PA
• Case Identification: 6:25-cv-00380, M.D. Fla., 04/22/2025
• Venue Allegations: Venue is based on the defendants being residents of the judicial district, having transacted business in the district, and the action arising from injuries to the plaintiffs that occurred in the district.
• Core Dispute: Plaintiffs allege that Defendant Brown wrongfully filed for and obtained a patent on an invention conceptualized and disclosed by Plaintiff Dr. Johnson under a non-disclosure agreement, and seek to have inventorship of the patent corrected to name Dr. Johnson as the sole inventor.
• Technical Context: The technology concerns a specially designed infant support pillow intended to prevent or correct positional plagiocephaly, a condition involving the flattening of an infant's head.
• Key Procedural History: The dispute arises from a relationship where Dr. Johnson allegedly disclosed her invention concept to Defendants for prototyping purposes under a Non-Disclosure Agreement (NDA). Plaintiffs allege Defendants subsequently filed a patent application for the disclosed invention without Dr. Johnson's knowledge or permission, in breach of the NDA.

Case Timeline

Date	Event
2022-11-17	Parties allegedly execute Non-Disclosure Agreement (NDA)
2023-01-08	Provisional patent application filed ('692 Patent Priority Date)
2024-01-02	Non-provisional patent application filed
2024-10-29	U.S. Patent No. 12,127,692 issues
2025-04-22	Complaint filed

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

U.S. Patent No. 12,127,692 - Infant support pillow

• Patent Identification: U.S. Patent No. 12,127,692, "Infant support pillow," issued October 29, 2024 (the "'692 Patent").

The Invention Explained

• Problem Addressed: The patent's background section notes that while "back to sleep" campaigns have reduced SIDS, they have led to a "dramatic increase in the prevalence of positional plagiocephaly," or the flattening of an infant's head, which can affect a high percentage of infants and may require corrective helmets ('692 Patent, col. 1:11-24).
• The Patented Solution: The invention is a molded pillow with a specific geometry designed to support an infant's head and neck properly. It features two distinct, connected depressions on its top surface: a deeper "first rounded depression" for the back of the head and a shallower "second rounded depression" for the neck, separated by a ridge ('692 Patent, Abstract; col. 4:48-62). This structure is intended to create a "secure supportive rebounding effect" that helps prevent or correct head flattening ('692 Patent, col. 4:43-44). The patent describes the pillow base as a half sphere with a flat bottom for stability ('692 Patent, col. 4:46-49).
• Technical Importance: The claimed design provides a specific, structural solution aimed at mitigating a widely recognized pediatric health issue that arose as a side effect of public health recommendations ('692 Patent, col. 1:11-29).

Key Claims at a Glance

• The complaint asserts that Dr. Johnson is the true inventor of the "subject matter claimed in '692 Patent" without specifying individual claims (Compl. ¶50). Independent claim 1 is representative.
• Independent Claim 1 Elements:
  • A molded pillow comprising:
  • a pillow base comprising a first rounded depression and a second rounded depression with a circular edge;
  • a ridge separating the first rounded depression and second rounded depression;
  • wherein the first rounded depression has a top to bottom depth greater than the second rounded depression;
  • wherein the second rounded depression has a smaller diameter than the first rounded depression.
• The complaint does not explicitly reserve the right to assert dependent claims, as its focus is on inventorship of the claimed subject matter as a whole.

III. The Accused Instrumentality

Product Identification

• The complaint alleges that Defendants are able to "make, use and sell products made under the '692 Patent" as a result of the allegedly improper patent filing (Compl. ¶11). The complaint does not identify specific product names or models.

Functionality and Market Context

• The complaint alleges that Defendants were originally contacted to "make a protype/products for marketing to the affected community" based on Dr. Johnson's conceptual idea (Compl. ¶18). It further alleges that the patent allows Defendants to exploit the invention through "commercial opportunities" (Compl. ¶54). The complaint does not provide further technical details about the products Defendants are allegedly making or selling.

IV. Analysis of Inventorship Allegations

This complaint does not allege patent infringement but instead seeks correction of inventorship under 35 U.S.C. § 256. Therefore, a traditional claim chart comparing claim elements to an accused product is not applicable. The central dispute is factual: who conceived of the claimed invention.

The complaint presents a narrative in which Plaintiff Dr. Johnson is the sole conceiver of the invention. The core allegations supporting this claim are:

• Conception: Dr. Johnson, a neurosurgeon, "conceptualized the need to develop a pillow" with a "shaped surface to prevent infant positional plagiocephaly" (Compl. ¶2, ¶45).
• Disclosure: After "full conceptualization," Dr. Johnson disclosed her invention to Defendants for the purpose of engineering a prototype, explicitly under the terms of an executed Non-Disclosure Agreement (NDA) (Compl. ¶3, ¶5).
• Misappropriation: "Unbeknownst to Plaintiffs," Defendant Brown allegedly used the disclosed information to file a patent application in his own name, in contravention of the NDA (Compl. ¶6, ¶15).
• Lack of Contribution: The complaint alleges that Defendant Brown "contributed nothing that would enable him to make a claim of inventorship" and had "no knowledge relating to the invention and conceptualization of the ideas" prior to Dr. Johnson's disclosure (Compl. ¶8, ¶18, ¶47).

A primary point of contention will be the factual determination of who conceived of the specific features recited in the claims of the ’692 Patent. The case may turn on evidence corroborating Dr. Johnson's alleged conception and the precise nature of the information she disclosed to Defendants under the NDA, versus any evidence of inventive contribution by Defendant Brown.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

While this is not an infringement case, the scope of key claim terms will be central to determining what was invented and, therefore, by whom.

• The Term: "a ridge separating the first rounded depression and second rounded depression" (Claim 1)

• Context and Importance: This structural element is a key feature distinguishing the claimed pillow. The nature and definition of this "ridge" will be critical to defining the boundaries of the invention Dr. Johnson claims to have conceptualized. Practitioners may focus on this term because the specific geometry separating the head and neck depressions appears to be a core part of the patented solution.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term "ridge" is not explicitly defined in the specification, which may suggest it should be given its plain and ordinary meaning as a raised element between two depressions.
  • Evidence for a Narrower Interpretation: Figure 2 shows the ridge (110) as a specific, curved structure formed by the intersection of the two circular depressions ('692 Patent, Fig. 2). The specification describes the ridge as "acting as a dividing chord flattening out" portions of the depressions, suggesting a specific geometric function rather than just any raised separation ('692 Patent, col. 4:10-14).

• The Term: "top to bottom depth" (Claim 1)

• Context and Importance: The limitation requiring the head depression to have a "depth greater than" the neck depression is a critical functional and structural requirement of the claim. How this "depth" is measured will define a key aspect of the pillow's geometry. The dispute over inventorship will involve determining who conceived of this specific dimensional relationship.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification does not provide a precise method for measuring this depth, which could support a more general understanding based on the vertical distance from the plane of the pillow's top edge to the lowest point of each depression.
  • Evidence for a Narrower Interpretation: The specification emphasizes the "depth disparity" between the two depressions and links it to creating craters sized for an infant's head and neck ('692 Patent, col. 4:1-3; col. 5:26-33). This functional context may support a narrower construction tied to the intended anatomical fit, as illustrated in figures like Fig. 9 ('692 Patent, Fig. 9).

VI. Other Allegations

The complaint includes several state law claims alongside the federal claim for correction of inventorship:

• Breach of Contract: Plaintiffs allege that Defendants' use of the disclosed information to file a patent application for their own benefit constituted a direct breach of the executed NDA (Compl. ¶¶ 57-58).
• Fraud: The complaint alleges Defendants committed fraud against the USPTO by "knowingly filing a patent application with knowledge that Defendant BROWN is not the inventor" and falsely claiming inventorship under oath (Compl. ¶19, ¶63-64).
• Unjust Enrichment & Conversion: Plaintiffs allege that Defendants have been unjustly enriched by wrongfully taking and exploiting Plaintiffs' proprietary information and intellectual property, and that this taking constitutes conversion of Plaintiffs' property rights in the invention (Compl. ¶¶ 68, 76).

The complaint does not allege indirect or willful patent infringement, as infringement is not at issue.

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

The resolution of this case appears to hinge on several key questions of fact and evidence rather than claim construction or technical infringement analysis.

• A core issue will be one of conception and proof: What evidence, beyond Dr. Johnson’s own testimony, can corroborate that she conceived of the complete and definite invention, as defined by the patent's claims, prior to disclosing it to the Defendants?
• A second key question will be the scope of disclosure: What was the precise technical content of the information Dr. Johnson disclosed to Defendants under the NDA, and does it map to the specific limitations recited in the claims of the ’692 Patent?
• Finally, the case will raise a question of contribution: Did Defendant Brown make any contribution to the conception of the subject matter of any claim in the ’692 Patent that would qualify him as a joint inventor, or was his role limited to the non-inventive task of reducing Dr. Johnson's alleged conception to practice?