DCT
1:25-cv-04751
Intake Breathing Technology LLC v. Regenex Co
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Intake Breathing Technology, LLC (California)
- Defendant: Regenex Co. (Texas)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 1:25-cv-04751, N.D. Ill., 04/30/2025
- Venue Allegations: Plaintiff asserts venue is proper in the Northern District of Illinois because Defendant maintains a warehouse in Franklin Park, Illinois, which it alleges constitutes a "regular and established place of business," and from which it ships accused products into the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Regenex Magnetic Nasal Strips" infringe a patent related to disposable nasal dilator technology that uses magnetic force to open a user's nasal passages.
- Technical Context: The technology addresses devices designed to improve nasal airflow, particularly for athletes or others who may experience nasal constriction, by using an external adhesive strip that is magnetically attracted to a separate component.
- Key Procedural History: The complaint alleges that Plaintiff sent multiple pre-suit infringement notices to Defendant between September 2024 and March 2025. Following a formal cease and desist letter in April 2025, Defendant’s counsel allegedly gave assurances that sales had stopped, but Plaintiff alleges Defendant then created a new website to continue selling the accused products, a fact pattern that may be central to the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-20 | ’969 Patent Priority Date |
| 2016-12-06 | ’969 Patent Issue Date |
| 2024-09-XX | Plaintiff sends first pre-suit notice to Defendant |
| 2024-11-XX | Plaintiff sends second pre-suit notice to Defendant |
| 2025-03-XX | Plaintiff sends two additional pre-suit notices to Defendant |
| 2025-04-02 | Plaintiff’s counsel sends formal cease and desist letter |
| 2025-04-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,510,969 - Nasal element for a breathing system
- Patent Identification: U.S. Patent No. 9,510,969, “Nasal element for a breathing system,” issued December 6, 2016.
The Invention Explained
- Problem Addressed: The patent addresses the problem of nasal passage compression caused by wearing eyewear such as goggles during athletic activities, which can inhibit breathing. The patent notes that breathing through the mouth as an alternative can lead to undesirable water and heat loss. (’969 Patent, col. 1:42-56).
- The Patented Solution: The invention is a disposable apparatus, typically an adhesive strip, containing a "metallic element" that is attached to the wearer's nose. This apparatus is designed to interact with a separate magnet (e.g., one placed on the user's goggles or held separately). The magnetic attraction between the two components imparts an outward "dilating force" on the nasal tissue, pulling the nasal passages open to improve airflow. (’969 Patent, Abstract; col. 10:11-27). This mechanism is illustrated in figures such as Figure 16, which shows the nasal elements (17) being pulled toward clips (38) on the goggle frame (16). (’969 Patent, Fig. 16).
- Technical Importance: The technology provides a non-invasive method for enhancing nasal breathing, particularly in contexts where external equipment might otherwise constrict the nose. (Compl. ¶¶11-12).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1. (Compl. ¶28).
- Independent Claim 1 of the ’969 Patent recites:
- A disposable apparatus attachable to a nose and configured for use with a magnet.
- A flexible base layer with an adhesive on its first surface for attachment to the nose.
- A metallic element coupled to the base layer's second surface, configured to interact with the magnet to impart a dilating force.
- An outer layer coupled to the base layer, at least partially covering the metallic element.
- A portion of the flexible base layer extending "radially outward beyond the metallic element to define a flexible peripheral portion."
- The metallic element is "configured to allow for movement of the magnet relative to the metallic element" during magnetic engagement.
- The apparatus is "selectively transitional between an active state" (when magnetically interacting to dilate the nose) and an "inactive state" (when magnetically decoupled).
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Regenex Magnetic Nasal Strips." (Compl. ¶29).
Functionality and Market Context
- The complaint describes the accused products as "externally applied, flexible strips" with a "flexible backing layer coated on one side with medical-grade adhesive" and a "metallic insert or embedded structure" on the non-adhesive side. (Compl. ¶¶29-31). The complaint alleges that this metallic component is designed to interact with a separate "magnetic component" to generate "lateral tension or lift on nasal tissue to promote dilation." (Compl. ¶31). The complaint references Exhibit 2, a screenshot from Defendant's website, which allegedly shows the accused product being sold after Defendant had assured Plaintiff it had ceased sales. (Compl. ¶25).
- Plaintiff alleges Defendant is an "opportunistic" seller that has entered the market to capitalize on the "growing popularity and demand" for this technology, undercutting Plaintiff's sales. (Compl. ¶20).
IV. Analysis of Infringement Allegations
’969 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A disposable apparatus attachable to a nose of a wearer and configured for use with a magnet positioned adjacent to the nose of the wearer... | The Regenex Magnetic Nasal Strips are marketed as externally applied, flexible strips for opening nasal passages and include a magnetic feature for use. | ¶29 | col. 10:11-14 |
| a flexible base layer including a first surface and an opposing second surface, the first surface having an adhesive disposed thereon to enable the first surface to be selectively attachable to the nose of the wearer; | The accused strips are constructed with a flexible backing layer coated on one side with medical-grade adhesive for attachment to the nasal bridge. | ¶30 | col. 10:15-19 |
| a metallic element coupled to the second surface of the base layer and being configured to interact with the magnet... the interaction between the metallic element and the magnet imparting a dilating force... | The accused strips include a metallic insert on the non-adhesive side that interacts with a magnetic component to generate tension on nasal tissue, causing dilation. | ¶31 | col. 10:20-27 |
| an outer layer coupled to the base layer and extending over the metallic element to at least partially cover the metallic element; | The accused strips have a top cover layer of plastic or polymer that conceals or protects internal components, including the metallic element. | ¶32 | col. 10:28-30 |
| at least a portion of the flexible base layer extending radially outward beyond the metallic element to define a flexible peripheral portion; | The accused strips feature "flared, adhesive outer regions extending beyond the metallic element," allowing for peripheral flexibility. | ¶33 | col. 10:31-33 |
| the metallic element being configured to allow for movement of the magnet relative to the metallic element when the magnet is magnetically engaged with the metallic element; | The accused strips allegedly allow for "some movement or repositioning during engagement" and are not permanently affixed, permitting magnetic alignment. | ¶34 | col. 10:34-37 |
| the disposable apparatus... being selectively transitional between an active state and an inactive state... | The accused strips are alleged to have a functional mode where magnetic coupling occurs during use (active state) and decouples upon removal (inactive state). | ¶35 | col. 10:38-40 |
- Identified Points of Contention:
- Technical Question: The complaint alleges the accused product meets the "allow for movement" limitation by permitting "some movement or repositioning." (Compl. ¶34). A point of contention may be whether this alleged functionality meets the specific requirement of the claim, or if the interaction is functionally different (e.g., more rigid) than what the patent describes. The evidence regarding the precise nature of the magnetic coupling will be critical.
- Scope Question: Claim 1 is directed to a "disposable apparatus" containing a "metallic element" that is configured for use with a separate "magnet." A potential dispute could arise over whether the term "metallic element" is distinct from a "magnet." If the accused strip itself contains a magnet (rather than a passive ferrous material), the analysis may focus on whether this configuration falls within the literal scope of Claim 1, which appears to distinguish the two components.
V. Key Claim Terms for Construction
The Term: "metallic element"
Context and Importance: The distinction between the claimed "metallic element" and the "magnet" it interacts with is central to the infringement analysis. Practitioners may focus on this term because its construction determines whether the claim reads on a disposable strip that itself contains a magnet, or if it is limited to a strip containing a passive, non-magnetized but magnetically-attractable material (e.g., steel).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning of "metallic" is broad. Further, Claim 19 of the patent recites a "magnetic element," and under the doctrine of claim differentiation, one could argue that the use of the different term "metallic element" in Claim 1 implies a different and potentially broader scope that is not limited to magnets.
- Evidence for a Narrower Interpretation: The specification consistently describes the element in the disposable apparatus as a "magnetically attractable element 59, such as a ferrous material." (’969 Patent, col. 8:61-63). This language, combined with the claim's separate recitation of a "magnet," suggests the "metallic element" is intended to be a passive component that is attracted to an active magnet.
The Term: "selectively transitional between an active state and an inactive state"
Context and Importance: This functional language describes the device's operation. Practitioners may focus on this term because its meaning could be disputed as either reciting a specific functional capability or merely stating the inherent result of any removable magnetic device.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the "active state" simply as when the magnetic interaction imparts a dilating force, and the "inactive state" as when the components are decoupled. (’969 Patent, col. 10:38-40). This could support a broad interpretation where any device that can be magnetically coupled and decoupled meets the limitation.
- Evidence for a Narrower Interpretation: This language could be construed more narrowly to require a specific mechanism or configuration that enables this transition, beyond the simple act of bringing magnets together or pulling them apart. The context of the entire claim may suggest a more complex interaction than simple on/off functionality.
VI. Other Allegations
- Indirect Infringement: The complaint alleges infringement "directly and/or indirectly" and requests relief for "Aiding, abetting, contributing to, or otherwise assisting" infringement. (Compl. ¶27; Prayer for Relief ¶1(b)). The factual basis may rely on allegations that Defendant's advertising and use of influencers instruct or encourage customers to use the accused strips in an infringing manner. (Compl. ¶19).
- Willful Infringement: The complaint makes strong allegations supporting willfulness. It pleads multiple instances of pre-suit knowledge, including several notices sent between September 2024 and April 2025. (Compl. ¶23). Critically, it alleges that after Defendant’s counsel provided assurances that infringing sales had ceased, Defendant created a new website to continue its activities, suggesting a "calculated effort to deceive Plaintiff." (Compl. ¶25). Plaintiff also alleges public notice through patent marking on its own commercial product listings. (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of willfulness and deceptive conduct: Do the facts support the allegation that Defendant deliberately continued infringement through a new sales channel after assuring Plaintiff it would stop? This question, if answered affirmatively, could lead to enhanced damages and significantly influence the posture of the case.
- A key question of claim construction will be the definitional scope of "metallic element." The case may turn on whether this term is limited to a passive ferrous material, as distinguished from the "magnet" it interacts with, or if it can be construed more broadly to read on a device where the disposable strip itself contains a magnet.
- A third question will be evidentiary and technical: Does the accused "Regenex Magnetic Nasal Strip" actually operate in a way that satisfies the functional limitations of Claim 1, such as being "configured to allow for movement" and "selectively transitional"? The outcome will depend on factual evidence comparing the specific mechanics of the accused product to the language of the patent.