DCT

1:18-cv-05408

Umbrella Baby LLC v. Abcd Capital LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-05408, N.D. Ill., 09/17/2018
  • Venue Allegations: Venue is alleged to be proper based on Defendant's residence, regular and established place of business, and commission of infringing acts within the Northern District of Illinois.
  • Core Dispute: Plaintiff alleges that Defendant’s "aLoo" brand backwash prevention devices and associated baby bottle sets infringe a patent related to dual-chamber nursing bottles.
  • Technical Context: The technology addresses the problem of an infant's saliva contaminating the main liquid supply in a baby bottle, using a valve-separated dual-chamber design to prevent spoilage and reduce waste.
  • Key Procedural History: Plaintiff states it sent a notice letter with a detailed claim chart to Defendant on May 23, 2018, an allegation relevant to willfulness. The sole patent-in-suit, U.S. Patent No. 8,636,158, was the subject of an ex parte reexamination proceeding, which concluded with the issuance of a Reexamination Certificate on October 28, 2019. This proceeding, which occurred after the complaint was filed, resulted in the cancellation of one claim and amendments to the asserted independent claim, potentially narrowing its scope and creating questions regarding intervening rights.

Case Timeline

Date Event
2003-12-11 ’158 Patent Priority Date
2014-01-28 ’158 Patent Issue Date
2018-05-23 Plaintiff sends notice of infringement to Defendant
2018-09-17 Amended Complaint Filing Date
2019-10-28 ’158 Patent Reexamination Certificate Issue Date

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

U.S. Patent No. 8,636,158 - “Dual Chamber Nursing Bottle”

  • Patent Identification: U.S. Patent No. 8,636,158, “Dual Chamber Nursing Bottle,” issued January 28, 2014.

The Invention Explained

  • Problem Addressed: The patent’s background section describes a key drawback of conventional baby bottles: when an infant feeds, saliva can flow back into the bottle, introducing bacteria and causing the remaining milk or formula to spoil quickly (ʼ158 Patent, col. 1:25-38).
  • The Patented Solution: The invention is a nursing bottle with two distinct chambers—a main storage chamber for the bulk of the liquid and a smaller feeding chamber connected to the nipple. A valve mechanism, mounted on an insert, separates the two chambers. This valve allows liquid to flow from storage to feeding when the infant sucks but prevents backflow, thereby keeping the main supply uncontaminated (ʼ158 Patent, Abstract; col. 2:42-49). One embodiment further discloses a "valve bypass assembly" composed of an insert and a separate inner cap that can be manipulated to control flow between the chambers, for instance to prime the nipple (ʼ158 Patent, col. 6:29-32; FIG. 17).
  • Technical Importance: This design allows a partially used bottle to be safely stored for later use, which reduces the waste of valuable breast milk or formula (ʼ158 Patent, col. 1:28-34).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 and dependent Claims 3-5 and 7-8 (Compl. ¶14).
  • The asserted independent claim, Claim 1 (original version), recites the following essential elements:
    • A dual chamber nursing bottle comprising a nursing nipple, a bottle, and an insert member that forms a storage chamber and a feeding chamber.
    • A "valve means" mounted on the insert, normally closed but opened by reduced pressure in the feeding chamber.
    • A "bypass valve" disposed on the insert to bypass the valve means.
    • The bypass valve comprises an "inner cap" disposed below the insert means.
  • Analyst Note: The complaint asserts the original version of Claim 1. However, the subsequent ex parte reexamination resulted in an amended Claim 1. The amended claim clarifies, among other things, that the valve means comprises an "aperture" and that the bypass valve comprises an inner cap with a "planar member" disposed below the insert. This change may impact the scope of the claim and the viability of the infringement allegations as pleaded.

III. The Accused Instrumentality

Product Identification

The accused products are the "aLoo Device," sold as a "Backwash Prevention Device," and "aLoo Bottle Sets," which package the device with third-party bottles like those from Dr. Brown's (Compl. ¶¶ 8, 14).

Functionality and Market Context

The aLoo Device is described as an insert containing a valve, designed to be placed within the nipple ring of a standard baby bottle (Compl. ¶¶ 12, 22). The complaint alleges that this creates a dual-chamber system, with a main valve that opens in response to suction to allow milk to flow into the nipple (the feeding chamber) (Compl. ¶14, p. 6). The device is also alleged to have an "anti-colic air vent" that allows air to flow back into the bottle to prevent a vacuum, which the complaint identifies as the claimed "bypass valve" (Compl. ¶14, p. 6). The complaint includes a labeled photograph of the accused product identifying the "Insert Member" which contains the valve. (Compl. p. 5).

IV. Analysis of Infringement Allegations

’158 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A dual chamber [n]ursing bottle comprising;... a nursing nipple having a hollow portion;... a bottle with said nursing nipple mounted on said bottle; The accused "aLoo Bottle Set" is a dual chamber nursing bottle that includes a nipple with a hollow portion and a bottle on which the nipple is mounted. A labeled photograph shows the assembled bottle, cap, and nipple. ¶14 col. 2:13-17
an insert member disposed communicating with said hollow portion of said nursing nipple and thereby forming a storage chamber generally defined by said bottle and a feeding chamber; The "aLoo Valve" is identified as the claimed "insert member," which, when installed, separates the bottle into a "Storage Chamber" and a "Feeding Chamber" within the nipple. A photograph with labels illustrates this alleged configuration. ¶14 col. 2:42-49
valve means mounted on said insert member,...communicating between said storage chamber and said feeding chamber, with said valve means normally closed and with said valve means opened responsive to reduced pressure in said feeding chamber; A valve is mounted on the insert, is normally closed, and opens in response to an infant's sucking, which reduces pressure in the feeding chamber. The complaint provides photographs showing the valve in both "Closed" and "Open" states. ¶14 col. 6:42-44
a bypass valve disposed on said insert member and disposed to bypass said [] valve means, The accused device's "anti-colic air vent" is alleged to be the claimed "bypass valve." ¶14 col. 6:29-32
said bypass valve comprising an inner cap disposed below said insert means. The complaint alleges that the accused bypass valve includes an "inner cap" located on the underside of the insert member. A photograph identifies a structure on the underside of the insert as the "Inner Cap." ¶14 col. 8:21-22

Identified Points of Contention

  • Scope Questions: A primary issue may be whether the accused product's "anti-colic air vent" meets the "bypass valve" limitation. The complaint alleges the air vent is the bypass valve (Compl. ¶14, p. 6). However, the patent specification describes the bypass valve assembly in the context of allowing liquid to flow to prime the nipple, not for allowing air to flow in the opposite direction to relieve pressure (’158 Patent, col. 6:45-68). This raises the question of whether a valve for air ingress can be construed as a valve that "bypasses" the main liquid-delivery valve.
  • Technical Questions: The complaint identifies a part of the accused device as an "inner cap" (Compl. p. 7). The patent, particularly in Figures 17-20, depicts the "inner cap" (604) and "insert member" (602) as two separate, cooperating components that can be rotated relative to one another to open or close bypass channels. The photographs in the complaint appear to show a single, unitary insert. A key factual question will be whether the accused product's "inner cap" is a distinct component as contemplated by the patent, or merely an integral structural feature of the insert.

V. Key Claim Terms for Construction

The Term: "bypass valve... disposed to bypass said valve means"

  • Context and Importance: The viability of the infringement claim may depend on this term's construction. Practitioners may focus on this term because the accused feature is an "anti-colic air vent," which handles air inflow, whereas the patent's embodiment of a bypass valve appears designed for liquid transfer.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself does not specify the direction or substance of the bypass. A party could argue that any secondary valve on the insert that provides an alternative flow path relative to the main valve meets the literal language.
  • Intrinsic Evidence for a Narrower Interpretation: The specification's only detailed description of a bypass valve and inner cap (the sixth embodiment) explains a mechanism for aligning holes between two separate parts to "fill[] the nipple feeding chamber" with milk before fully tightening the assembly (’158 Patent, col. 6:61-64). This context suggests the term "bypass" refers to an alternative route for liquid, not for air venting.

The Term: "inner cap"

  • Context and Importance: Infringement of this element hinges on whether the accused product contains a structure that meets this definition. If the accused product's insert is a single piece of molded plastic, a dispute will arise over whether any part of it can be considered an "inner cap."
  • Intrinsic Evidence for a Broader Interpretation: Claim 1 recites "an inner cap disposed below said insert means" without requiring it to be a separate component (’158 Patent, col. 8:21-22). One might argue that an integrally molded, cap-like feature on the underside of the insert satisfies this language.
  • Intrinsic Evidence for a Narrower Interpretation: The figures depicting the embodiment with an inner cap (FIGS. 17, 19, and 20) unambiguously show the "insert member" (602) and "inner cap" (604) as two distinct parts. The description of their function—rotating relative to one another to align bypass slots—reinforces that they are separate structural elements (’158 Patent, col. 6:50-68).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement, stating Defendant provides instructions to customers on how to assemble the aLoo Device with a bottle (Compl. ¶20). The complaint quotes instructions to "‘insert’ the aLoo Device ‘within the nipple ring’" and "‘screw the cap...onto the top of the bottle,’" which allegedly causes end-users to directly infringe (Compl. ¶22).

Willful Infringement

The complaint alleges willful infringement based on pre-suit knowledge. Plaintiff claims Defendant has been aware of the ’158 Patent since its issuance and was explicitly notified via letter on May 23, 2018. The complaint asserts that Defendant’s continued infringement after this notice was "reckless" (Compl. ¶15).

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

  • A core issue will be one of functional scope: can the term "bypass valve," which the patent specification links to a liquid-priming function, be construed to cover an "anti-colic air vent" that allows air to flow into the bottle?
  • A second key issue will be one of structural definition: does the claim term "inner cap," which the patent’s detailed description and figures portray as a distinct, movable component, read on the accused product’s seemingly unitary insert structure?
  • Finally, a critical procedural question is the impact of reexamination: given that the asserted independent claim was amended after the complaint was filed, the court must address whether the infringement allegations remain viable under the potentially narrowed claim scope and determine the extent of any intervening rights that may protect infringement that occurred prior to the issuance of the reexamination certificate.