DCT

1:24-cv-20609

Ontel Products Corp v. EHT LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-20609, S.D. Fla., 02/16/2024
  • Venue Allegations: Venue is alleged to be proper as Defendant is a Florida company with its principal place of business in the district, from which it conducts business and ships products.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its "Miracle Smile" dental irrigation product does not infringe Defendant's patent, and further that the patent is invalid and/or unenforceable.
  • Technical Context: The technology concerns mouthpiece-style dental irrigation devices designed to clean a user's upper and lower teeth simultaneously using targeted jets of fluid.
  • Key Procedural History: The action was precipitated by a "Notice of infringement + Cease and desist" letter sent from Defendant to Plaintiff, followed by a patent infringement report filed with Amazon against Plaintiff's product. The complaint also raises questions of patent unenforceability, alleging that the Defendant improperly claimed micro-entity status during patent prosecution.

Case Timeline

Date Event
2018-02-13 '705 Patent Priority Date
2019-02-13 Defendant submitted certificate for micro entity status
2020-07-09 Defendant represented raising over $812,000 via Kickstarter
2021-07-21 Defendant paid information disclosure statement fee as a micro entity
2022-08-02 '705 Patent Issue Date
2023-09-01 Plaintiff began selling the accused Miracle Smile™ product (approx.)
2024-01-17 Defendant sent "Notice of Infringement" to Plaintiff
2024-01-30 Plaintiff received notice from Amazon regarding patent infringement report
2024-02-13 Counsel for parties met and conferred without resolution
2024-02-16 Complaint Filing Date

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

U.S. Patent No. 11,399,705 - "APPARATUS FOR DENTAL IRRIGATION" (issued Aug. 2, 2022)

The Invention Explained

  • Problem Addressed: The patent asserts that conventional dental hygiene, such as brushing and flossing, "does not allow for pristine dental cleaning to be performed effectively and efficiently" ('705 Patent, col. 1:31-34).
  • The Patented Solution: The invention is an apparatus, generally H-shaped, comprising two U-shaped manifolds that fit over the user's upper and lower teeth simultaneously. These manifolds contain orifices on their inner surfaces that project jets of fluid onto both the cheek-facing (buccal) and tongue-facing (lingual) sides of the teeth. A central "rotating inlet joint" connects the two manifolds and supplies the fluid ('705 Patent, Abstract; col. 8:47-54).
  • Technical Importance: The design aims to automate and improve oral irrigation by simultaneously cleaning all tooth surfaces at an effective angle, a task the patent suggests is difficult to achieve with traditional single-jet water flossers ('705 Patent, col. 9:41-54).

Key Claims at a Glance

  • The complaint identifies independent claim 55 as being at issue (Compl. ¶14, 32).
  • The essential elements of independent claim 55 include:
    • A first manifold segment with an inlet and outlet holes.
    • A second manifold segment with an inlet and outlet holes.
    • A rotating inlet segment with an inlet channel that receives fluid and directs it into both manifolds.
    • The assembly of the three segments is positioned with approximate vertical and horizontal axes of symmetry.
    • The rotating inlet segment is configured to rotate about the axis of common symmetry.
    • An angle of the rotating inlet segment "impacts a property of the fluid flow to the user's teeth," with the angle being relative to the vertical or horizontal axis of symmetry.
  • The complaint seeks a judgment of non-infringement for all claims of the '705 Patent (Compl. p. 8, ¶D).

III. The Accused Instrumentality

Product Identification

  • The "Ontel Miracle Smile™" product (Compl. ¶14).

Functionality and Market Context

  • The complaint describes the Miracle Smile™ as a consumer product sold through various online and retail channels, including Walmart and Amazon (Compl. ¶22). The complaint provides limited detail on the product's specific operation, focusing instead on its legal status. The core of the non-infringement argument is a specific functional denial: that "the angle of the rotating inlet segment of Ontel's Miracle Smile™ product... does not impact a property of the fluid flow to the user's teeth as required by claim 55" (Compl. ¶32).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint is for a declaratory judgment of non-infringement and does not contain a traditional infringement claim chart. It references a claim chart provided by the Defendant, EHT, but this chart is not included as an exhibit in the provided filing (Compl. ¶14, Exhibit C).

Instead of alleging infringement, the complaint puts forth a specific theory of non-infringement for at least claim 55. The central assertion is that the accused Miracle Smile™ product does not meet the final limitation of claim 55. Specifically, the complaint alleges that in the Miracle Smile™ device, the angle of its rotating inlet segment does not "impact a property of the fluid flow to the user's teeth" ('705 Patent, col. 26:20-26; Compl. ¶32). This creates a direct factual dispute over the function and operation of the accused product relative to the patent's claim language.

Identified Points of Contention

  • Technical Question: What is the actual effect of rotating the inlet segment on the Miracle Smile™ device? A central question for the court will be a factual one: does evidence show that a change in the angle of the accused device's inlet segment causes a corresponding change in a "property of the fluid flow" (e.g., pressure, volume, direction, or distribution), or is the rotation purely for ergonomic positioning with no functional effect on the fluid?
  • Scope Questions: The dispute raises the question of how to interpret the claim phrase "impacts a property of the fluid flow." Does this require a significant, designed, and functional alteration of the flow, such as the alternating or pulsing flows described in the patent's embodiments ('705 Patent, col. 13:36-44), or could it be read to cover any incidental physical effect, however minor, that results from changing the geometry of the fluid path?

V. Key Claim Terms for Construction

  • The Term: "wherein an angle of the rotating inlet segment impacts a property of the fluid flow to the user's teeth" (from claim 55).
  • Context and Importance: This limitation is the explicit basis for the Plaintiff's non-infringement argument (Compl. ¶32). The outcome of the infringement analysis for claim 55 will likely depend entirely on how this functional language is construed and applied to the accused product's operation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes multiple embodiments where rotation explicitly alters fluid flow. For example, it discloses revolver wheels that spin to alternate flow between the top and bottom manifolds or between the buccal and lingual sides of the teeth ('705 Patent, col. 13:45-col. 14:32). A party could argue these examples show the patentees envisioned "impacts" to include a wide variety of functional changes to flow direction and distribution.
    • Evidence for a Narrower Interpretation: A party could argue that the term requires a deliberate, functional "impact" that is central to the device's cleaning method, not merely an incidental or unavoidable physical consequence of repositioning the device. The complaint's assertion that its product does not meet this limitation suggests an argument that its device's rotation is for user comfort or positioning and lacks the flow--altering function described in the patent's embodiments (Compl. ¶32).

VI. Other Allegations

  • Invalidity and Unenforceability: The complaint alleges that claim 55 is invalid as obvious over prior art, citing U.S. Patent Nos. 5,616,028, 4,106,501, and 5,800,367 (Compl. ¶¶ 25-26). More significantly, it alleges the '705 Patent is invalid or unenforceable because the Defendant allegedly fraudulently claimed micro-entity status to reduce USPTO fees. The complaint alleges that Defendant's Kickstarter campaign raised funds ($812,272) that exceeded the maximum gross income permitted for micro-entity status for the year in which related fees were paid (Compl. ¶¶ 27-29).
  • Indirect Infringement: The prayer for relief seeks a declaratory judgment of non-infringement "directly or indirectly" (Compl. p. 8, ¶D). However, the complaint provides no specific factual allegations for analysis regarding inducement or contributory infringement.
  • Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness. However, it establishes a basis for a potential future willfulness claim by the Defendant against the Plaintiff by acknowledging receipt of a "Notice of infringement" on January 17, 2024, which serves as notice of the patent's existence (Compl. ¶14).

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

This declaratory judgment action appears to center on two distinct and critical questions for the court:

  1. A question of functional causality: Does the accused Miracle Smile™ product practice the claimed invention? This will turn on whether the rotation of its inlet segment "impacts a property of the fluid flow" as required by claim 55. The court's decision will depend on the construction of this phrase and the factual evidence presented about how the accused product actually operates.

  2. A question of patent enforceability: Did the patentee commit inequitable conduct before the USPTO? The allegation of improperly claiming micro-entity status, if proven to be a material and intentional misrepresentation, could render the entire patent unenforceable, potentially resolving the case regardless of the infringement analysis.