DCT
1:21-cv-04432
Akha LLC v. Young Dental Mfg I LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AKHA, LLC (d/b/a Lotus) (California)
- Defendant: Young Innovations, Inc. and Young Dental Manufacturing I, LLC (Missouri)
- Plaintiff’s Counsel: Bishop Diehl & Lee, Ltd.
- Case Identification: 1:21-cv-04432, N.D. Ill., 01/27/22
- Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain a regular and established place of business in the Northern District of Illinois and have committed acts of infringement within the district, including manufacturing, offering to sell, and selling the accused products.
- Core Dispute: Plaintiff alleges that Defendants’ disposable dental prophy angles infringe two patents related to splatter-reducing prophy cups and guards.
- Technical Context: The technology concerns prophylactic (prophy) angles used in routine dental cleanings, which are designed to minimize the splatter of polishing paste and patient saliva, a long-standing issue of hygiene and safety in dentistry.
- Key Procedural History: The complaint details a significant pre-suit history, alleging that in early 2015 the parties discussed a potential business relationship wherein Plaintiff shared prototypes and technical details of its splatter-reducing prophy angle design. Plaintiff also alleges it made Defendants aware of its U.S. Patent No. 8,784,102, which later reissued as the RE46,696 patent-in-suit. Communications reportedly ceased after Plaintiff requested a non-disclosure agreement. U.S. Patent No. 9,962,236 underwent an ex parte reexamination, resulting in a certificate issuing on September 17, 2024, which amended the scope of the asserted independent claim.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-28 | Priority Date for RE46,696 Patent |
| 2014-07-22 | Issue Date for U.S. Patent No. 8,784,102 (original '696) |
| 2015-03-01 | Plaintiff allegedly shares patent information with Defendant |
| 2016-08-15 | Priority Date for 9,962,236 Patent |
| 2018-02-06 | Issue Date for RE46,696 Patent |
| 2018-05-08 | Issue Date for 9,962,236 Patent |
| 2020-07-15 | Alleged first commercial use of Accused Products |
| 2022-01-27 | Complaint Filing Date |
| 2024-09-17 | Reexamination Certificate issues for '236 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE46,696 - Prophy Cup for Dental Handpiece
- Patent Identification: U.S. Reissue Patent No. RE46,696, "Prophy Cup for Dental Handpiece," issued February 6, 2018.
The Invention Explained
- Problem Addressed: Conventional dental prophy cups, when spinning at high speeds, eject a "rope-like mass" of slurry (saliva, blood, and polishing paste), creating a wide area of contamination and posing a health risk to dental professionals (RE46696 Patent, col. 1:31-43).
- The Patented Solution: The invention proposes two main features to combat this. First, it introduces a stationary "wiper" positioned proximate to the rotating prophy cup. This wiper is shaped to conform to the cup's outer surface and scrapes off the slurry as it migrates along the cup, before it can be ejected (RE46,696 Patent, Abstract; col. 5:41-65). Second, it describes placing dimples on the cup's outer surface to increase turbulence in the fluid boundary layer, which improves the slurry's adhesion to the cup and reduces its tendency to separate and splatter (RE46,696 Patent, col. 4:47-56).
- Technical Importance: The invention provides a mechanical solution to a persistent hygiene problem in dental practice by actively managing and containing contaminated fluid during cleaning procedures (Compl. ¶20, ¶26).
Key Claims at a Glance
- The complaint asserts independent claim 7 (Compl. ¶27, ¶58).
- Independent Claim 7 recites:
- A dental handpiece comprising: a first shaft, a second shaft, and a prophy cup coupled to the second shaft.
- A "wiper" positioned proximal to the prophy cup.
- The wiper has at least one "blade edge" with a shape selected to "conform to at least a portion of the contour" of the prophy cup's outer surface.
- The wiper is positioned "sufficiently close" to the outer surface to "remove fluid" and "reduce accumulation of fluid".
- The blade edge does "not extend beyond the distal end" of the prophy cup.
- The complaint reserves the right to assert other claims (Compl. ¶66).
U.S. Patent No. 9,962,236 - Splatter Reduction in a Small Head Contra-Angle Prophy
- Patent Identification: U.S. Patent No. 9962236, "Splatter Reduction in a Small Head Contra-Angle Prophy," issued May 8, 2018.
The Invention Explained
- Problem Addressed: The patent addresses the "long-standing problem" of splatter during tooth cleaning procedures, which occurs when paste and saliva are thrown from the spinning prophy cup by centrifugal force ('236 Patent, col. 1:42-48).
- The Patented Solution: The invention discloses a "splatter guard" that attaches to the handpiece housing. The key design feature is a structural difference between its edges: it has a thin, flexible "proximate edge" that abuts the rotating cup to wipe away splatter, and a thicker, more rigid "distal edge" that provides structural support and stability ('236 Patent, col. 2:6-14, col. 5:10-19). This design balances the need for a soft, conforming wiping action with the need for a durable, securely mounted component.
- Technical Importance: This approach provides a specific design for an integrated splatter guard that aims to be both effective at wiping and robust enough for clinical use ('236 Patent, col. 8:15-20).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶31, ¶68). This claim was amended during an ex parte reexamination.
- Independent Claim 1 (as amended by Reexamination Certificate US 9,962,236 C1) recites:
- A hand piece comprising: a rotating member and a "splatter guard" attached to a housing.
- The splatter guard has a "proximate edge" and a "distal edge".
- The "distal edge has a first thickness" and the "proximate edge has a second, smaller thickness".
- The proximate edge, at an end distal to the housing, "terminates prior to a longitudinal end" of the rotating member.
- The "proximate edge following a contour of an exterior of the rotating member and abutting the rotating member from a longitudinal start" of the rotating member "to a distal end of the splatter guard".
- The complaint reserves the right to assert other claims (Compl. ¶78).
III. The Accused Instrumentality
- Product Identification: The "Young Splatter Guard Disposable Prophy Angle" and "Vera Splatter Guard Disposable Prophy Angle," collectively referred to as the "Accused DPA" or "Accused Products" (Compl. ¶14, ¶56).
- Functionality and Market Context: The Accused Products are single-use, disposable prophy angles designed to be attached to a dental handpiece for polishing teeth (Compl. ¶17, ¶56). The complaint alleges that the products incorporate a fixed component adjacent to the rotating prophy cup, which it identifies as a "wiper" or "splatter guard" (Compl. ¶62, ¶70). This component is central to the infringement allegations. The products are marketed with the claim that they reduce splatter, with one product video claiming "Up to 15 TIMES Reduction in Splatter Compared to Traditional Prophy Angles" (Compl. ¶73-74). An image in the complaint depicts two versions of the Accused DPA (Compl. ¶59).
IV. Analysis of Infringement Allegations
RE46,696 Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wiper positioned proximal to the prophy cup... the wiper having at least one blade edge, the at least one blade edge having a shape selected to conform to at least a portion of the contour of the outer surface of the prophy cup | The Accused DPA includes a component identified as a wiper positioned proximal to the prophy cup, with a blade edge that conforms to the cup's surface contour (Compl. ¶62). An annotated photograph shows this alleged wiper and conforming blade edge (Compl. ¶62). | ¶62 | col. 5:41-50 |
| the wiper position with the at least one blade edge sufficiently close to the outer surface of the prophy cup to remove fluid from the outer surface of the prophy cup and thereby reduce accumulation of fluid on the outer surface | The wiper is allegedly positioned close enough to the cup to remove and reduce fluid accumulation. The complaint provides a screenshot from a product video showing the accused device in operation, captioned "Keep splatter under control," to support this functional limitation (Compl. ¶63). | ¶63 | col. 6:1-5 |
| the blade edge not extending beyond the distal end of the prophy cup | The complaint alleges that photographs of the Accused DPA show that the blade edge of the wiper does not extend past the distal end of the cup (Compl. ¶64). | ¶64 | col. 9:11-14 |
'236 Patent Infringement Allegations
| Claim Element (from Independent Claim 1, as Amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a splatter guard attached to a housing of the hand piece, the splatter guard having a proximate edge... and a distal edge... the proximate edge extending lengthwise... and abutting the rotating member | The Accused DPA allegedly has a splatter guard attached to its housing (Compl. ¶70). An annotated photograph shows the alleged splatter guard and its proximate edge, which is alleged to extend lengthwise and abut the rotating cup during operation (Compl. ¶70, ¶72, ¶74). A video screenshot shows this alleged abutment during rotation (Compl. ¶73-74). | ¶70, ¶72, ¶74 | col. 2:7-11 |
| the distal edge has a first thickness and the proximate edge has a second, smaller thickness | An annotated photograph is provided to allege that the distal edge of the splatter guard is thicker than its proximate edge (Compl. ¶75). | ¶75 | col. 9:49-51 |
| the proximate edge, at an end distal to the housing, terminates prior to a longitudinal end of the rotating member | An annotated diagram alleges that the proximate edge of the guard terminates before reaching the longitudinal end of the rotating member (Compl. ¶76). | ¶76 | col. 9:52-54 |
| the proximate edge following a contour of... and abutting the rotating member from a longitudinal start of the rotating member... to a distal end of the splatter guard | The complaint alleges the proximate edge extends lengthwise along the longitudinal axis (Compl. ¶72). | ¶72 | '236 C1, col. 2:56-62 |
- Identified Points of Contention:
- Functional Questions ('696 Patent): The infringement analysis for the '696 patent may turn on the functional limitations in claim 7. A key question is whether the accused component is "sufficiently close" to the prophy cup to actually "remove fluid," as the claim requires, or if it primarily deflects it. This distinction raises an evidentiary question that may require testing and expert analysis beyond visual comparison.
- Scope Questions ('236 Patent): The reexamination of the '236 patent introduces a significant potential point of contention. The added language requiring the proximate edge to follow a contour and abut the rotating member "from a longitudinal start... to a distal end of the splatter guard" appears to be a substantial narrowing of the claim. A central question will be whether the accused product's guard meets this specific, continuous dimensional requirement, which provides a potential non-infringement argument.
V. Key Claim Terms for Construction
Term: "wiper" (from '696 Patent, Claim 7)
- Context and Importance: This term defines the central component of the '696 invention. Whether the accused structure falls within the scope of "wiper" is dispositive for infringement. Practitioners may focus on this term because the complaint's allegations of copying are strong, but infringement will still depend on whether the allegedly copied feature meets the specific claim language.
- Intrinsic Evidence for a Broader Interpretation: The patent abstract describes the invention broadly as including a wiper that "removes slurry as the prophy cup rotates" (RE46,696 Patent, Abstract). This could support an argument that "wiper" should be construed functionally to cover any component that performs this action.
- Intrinsic Evidence for a Narrower Interpretation: The specification discloses a specific embodiment, "wiper 340," with first and second "blade edges" (342, 344) and a specific mounting structure (RE46,696 Patent, col. 5:41-55). This could support a narrower construction limited to structures with similar features.
Term: "abutting" (from '236 Patent, Claim 1)
- Context and Importance: The requirement that the "proximate edge" is "abutting the rotating member" along the length specified in the amended claim is critical. Its definition will determine the required degree of contact between the guard and the cup.
- Intrinsic Evidence for a Broader Interpretation: The complaint alleges abutment occurs "at least during operation" (Compl. ¶74), suggesting a functional definition where intermittent or dynamic contact is sufficient. The specification also discusses the need for flexibility to "prevent excessive friction" ('236 Patent, col. 8:18-20), which may suggest that constant, hard contact is not required.
- Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "abutting" implies direct physical contact. The reexamination amendment, which specifies this abutment occurs "from a longitudinal start... to a distal end," could be argued to require continuous, unbroken contact along this entire path, potentially excluding designs with any intentional clearance.
VI. Other Allegations
- Indirect Infringement: The complaint includes allegations of indirect infringement for both patents (Compl. ¶66, ¶78). The basis for these claims would likely be that Defendants sell the Accused Products to dentists and provide marketing or instructions that encourage or cause the dentists (direct infringers) to use the products in an infringing manner (Compl. ¶107, ¶111).
- Willful Infringement: The complaint makes extensive allegations to support willfulness. It alleges Defendants had pre-suit knowledge of the technology and the predecessor to the '696 patent through direct business discussions, review of prototypes, and receipt of an e-brochure containing patent information in 2015 (Compl. ¶32-34, ¶40). The complaint alleges that after these discussions failed, Defendants developed a "copycat product" (Compl. ¶42, ¶55). These allegations, if proven, could support a finding of willful infringement and a potential award of enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope versus prior art avoidance: The amendment made to claim 1 of the '236 patent during reexamination appears to have narrowed its scope. A key question for the court will be whether this narrowing—likely made to distinguish the invention from prior art—was so significant that the claim no longer reads on the accused product's design, particularly regarding the length and continuity of the "abutting" edge.
- A key evidentiary question will be one of functional performance: For the '696 patent, does the accused "wiper" perform the specific function of "remov[ing] fluid" as required by claim 7? The litigation will likely require competing expert analyses and empirical evidence to resolve whether the accused device operates in the manner claimed or in a technically distinct way.
- A central theme of the case will be the allegations of copying: The complaint constructs a detailed narrative of a failed business negotiation followed by the development of an allegedly infringing "copycat product." Should infringement be found, the resolution of these potent willfulness allegations, which are based on extensive pre-suit interactions, will be critical to the determination of damages.