DCT
3:23-cv-00458
Dental Choice Holdings LLC v. New Age Performance Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dental Choice Holdings LLC. (Kentucky)
- Defendant: New Age Performance Inc. (Ontario, Canada)
- Plaintiff’s Counsel: Dinsmore & Shohl LLP
- Case Identification: 3:23-cv-00458, W.D. Ky., 09/05/2023
- Venue Allegations: Plaintiff asserts that venue is proper in the Western District of Kentucky because Defendant directed enforcement actions into the district, including hiring local counsel and filing complaints with Amazon.com against Plaintiff, a Kentucky-based company.
- Core Dispute: Plaintiff seeks a declaratory judgment that its performance mouthpieces do not infringe Defendant's patent related to neuromuscular oral appliances and that the patent is invalid and unenforceable.
- Technical Context: The technology involves performance-enhancing oral appliances, or mouthguards, designed to optimize jaw positioning to improve an athlete's strength and balance.
- Key Procedural History: The action follows pre-suit enforcement activities by Defendant, including a demand letter sent in May 2023, multiple infringement complaints filed with Amazon.com resulting in the "takedown" of Plaintiff's product listings, and the initiation of an Amazon Patent Evaluation Express proceeding in July 2023. Plaintiff states it responded to the demand letter with a denial of infringement. This history forms the basis for the "actual and justiciable controversy" required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-11 | '903 Patent Priority Date |
| 2015-05-05 | '903 Patent Issue Date |
| 2023-05-26 | Defendant sends Demand Letter to Plaintiff |
| 2023-06-20 | Plaintiff responds to Demand Letter denying infringement |
| 2023-07-17 | Defendant initiates Amazon Patent Evaluation Express proceeding |
| 2023-09-05 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,022,903 - "Oral Appliance for Improving Strength and Balance"
- Issued: May 5, 2015
The Invention Explained
- Problem Addressed: The patent notes that the relative positioning of the upper and lower jaws can affect an individual's strength and balance, but that fabricating custom oral appliances to optimize this positioning is often expensive and inconvenient due to wide variations in dental anatomy ('903 Patent, col. 1:12-24).
- The Patented Solution: The invention is a "neuromuscular oral appliance" that can be customized by the user. It features a channel made of a heat-deformable material to conform to the user's teeth, and a separate "pliable, elastic bite pad" on the opposite side ('903 Patent, Abstract). When the user bites down, this pad is designed to partially collapse, creating and maintaining a specific gap between the jaws. This gapped position is intended to allow the jaw to find a "balanced position," which in turn is said to encourage an erect spine by aligning the cervical vertebrae ('903 Patent, col. 8:1-12).
- Technical Importance: The appliance aims to provide the physiological benefits associated with neuromuscular dentistry, such as improved posture and strength, in a non-custom, "boil-and-bite" device accessible to a broader market ('903 Patent, col. 4:1-9; col. 5:6-14).
Key Claims at a Glance
- The complaint identifies independent Claim 1 and dependent Claim 2 as having been asserted by Defendant in its pre-suit demand letter (Compl. ¶17, ¶33).
- Independent Claim 1 requires:
- A neuromuscular oral appliance for placement in a user's mouth.
- A "channel" with a base to accept teeth from either the upper or lower jaw.
- The channel must be "deformable" to conform to the teeth's shape after heating and cooling.
- A "pliable, elastic bite pad" extending opposite the channel, for contacting teeth from the other jaw.
- The bite pad must be adapted to "partially collapse" upon contact to maintain a gap between the jaws within a "predefined range".
- The channel must include "two portions", each spanning from the first bicuspid to the second molar on opposite sides of the mouth.
- The two portions must be connected by a "wire".
III. The Accused Instrumentality
Product Identification
- The accused products are Plaintiff's line of AIRWAAV® Performance Mouthpieces, including the HIIT and ENDURANCE models and their various editions (Compl. ¶13a-f).
Functionality and Market Context
- The complaint describes the Accused Products as "sports training and competition mouthpieces" marketed to high-intensity and endurance athletes (Compl. ¶11). Their stated function is to "direct the wearer's tongue down and forward when the wearer gently bites down, creating an airway opening" (Compl. ¶12). An image provided in the complaint shows the AIRWAAV HIIT mouthpiece, which appears to be a single, integrated piece of molded material (Compl. ¶13a). The complaint states that the products were temporarily removed from sale on Amazon.com due to Defendant's infringement assertions, causing significant harm to Plaintiff (Compl. ¶28).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff, Dental Choice, is asserting non-infringement. The following table summarizes Plaintiff's asserted points of non-infringement with respect to Claim 1 of the '903 Patent.
'903 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a channel with a base adapted to accept teeth from one of a lower jaw and an upper jaw of the mouth; wherein the channel is deformable... | Plaintiff does not specifically contest this element but asserts its products are "substantially different" from the claimed appliance (Compl. ¶47). | ¶47 | col. 18:61-67 |
| a pliable, elastic bite pad extending opposite the channel... adapted to partially collapse upon contact with the teeth such that a gap between the lower jaw and the upper jaw is maintainable within a predefined range | Plaintiff asserts the Accused Products do not include a pliable, elastic bite pad and are not adapted to partially or elastically collapse as recited in the claim (Compl. ¶49). | ¶49 | col. 18:1-10 |
| wherein the channel includes two portions, each portion spanning at least from the first bicuspid to the second molar on opposite sides of the mouth and wherein the two portions are connected by a wire. | Plaintiff asserts the Accused Products do not include a wire (Compl. ¶48). The provided visual of the product appears to show a unitary construction (Compl. ¶13a). | ¶48 | col. 18:10-16 |
- Identified Points of Contention:
- Technical Question: A primary factual dispute concerns the "wire" limitation. The complaint alleges the Accused Products lack a wire, and the provided images appear to support this, showing a unitary molded device. The question for the court will be whether any component of the Accused Product can be characterized as a "wire" connecting two distinct "portions."
- Scope Questions: The dispute over the "pliable, elastic bite pad" raises questions of both claim scope and technical function. The court will need to determine if the structure of the Accused Product, which is alleged to function by directing the tongue to create an "airway opening" (Compl. ¶12), meets the claim definition of a pad that "partially collapses" to maintain a jaw-alignment gap ('903 Patent, col. 8:1-12). This raises the question of whether the two devices achieve their results in fundamentally different ways.
V. Key Claim Terms for Construction
The Term: "wire"
- Context and Importance: Plaintiff's assertion that its products "do not include a wire" makes this term's construction potentially dispositive for infringement of Claim 1 (Compl. ¶48). If the Accused Products are found to lack this element, they cannot literally infringe the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "wire" that deviates from its ordinary meaning. A party arguing for a broader scope might contend that any thin, flexible connecting member could satisfy the limitation, though the specification does not provide direct support for this.
- Evidence for a Narrower Interpretation: The patent repeatedly depicts and describes the "wire" as a distinct component connecting two physically separate channel portions (e.g., '903 Patent, Figs. 10A-C, 11-12, element 330). The specification states that two channel portions "can be connected by a wire, for example" (col. 2:3-5), and the claim explicitly recites this structure, suggesting that a distinct connecting element is a required feature of the invention as claimed.
The Term: "pliable, elastic bite pad... adapted to partially collapse"
- Context and Importance: This term is central because it defines the primary functional mechanism of the claimed invention—creating a specific gap for jaw alignment. Plaintiff denies its products have this feature or function, instead alleging they create an "airway opening" (Compl. ¶12, ¶49).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the bite pads as deforming and yielding around the teeth upon contact ('903 Patent, col. 8:26-30). A party could argue that any yielding portion of the accused device that creates a space between the jaws meets this limitation.
- Evidence for a Narrower Interpretation: The specification describes specific embodiments of the bite pad, such as a "pliable skin or shell filled with a fluid" like a "silicone gel" ('903 Patent, col. 7:32-39). The function is also specific: to "allow[] the lower jaw to find a balanced position" and maintain a gap in a "predefined range" of 2mm to 7mm to decompress the temporomandibular joint (TMJ) ('903 Patent, col. 8:1-10; col. 8:36-44). Practitioners may focus on whether the accused device's mechanism for creating an "airway opening" is structurally and functionally equivalent to the claimed mechanism for TMJ decompression.
VI. Other Allegations
- Invalidity: Plaintiff seeks a declaration that the '903 Patent is invalid under 35 U.S.C. §§ 102 and/or 103, citing U.S. Patent No. 8,113,206 as a prior art reference (Compl. ¶35, ¶52). The complaint includes Figures 2 and 4 from this prior art patent to illustrate its teachings (Compl. ¶35).
- Exceptional Case: The complaint does not contain allegations of willful infringement. However, Plaintiff requests that the court find this to be an "exceptional case" under 35 U.S.C. § 285, which would entitle it to an award of attorney's fees (Compl., Prayer for Relief ¶h). This request is based on allegations that Defendant continued to pursue enforcement actions after being presented with Plaintiff's non-infringement arguments (Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and factual comparison: can the term "wire", which the patent illustrates as a distinct element connecting two separate channel portions, be construed to read on the apparently unitary, single-piece construction of the Plaintiff’s AIRWAAV® mouthpiece? The resolution of this question may be dispositive for Claim 1.
- A key evidentiary question will be one of functional distinction: does the accused product, which Plaintiff asserts is designed to create an "airway opening," perform the same function as the "pliable, elastic bite pad" of the patent, which is claimed to "partially collapse" to maintain a specific gap for neuromuscular jaw alignment? The case may turn on whether these are fundamentally different technical operations and purposes.
- A third central issue will be validity: does U.S. Patent No. 8,113,206, or other prior art, disclose or render obvious the combination of elements recited in the asserted claims of the '903 Patent, particularly the combination of a user-formable channel with a collapsing bite pad and a wire connector?