DCT
3:25-cv-00665
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: 3:25-cv-00665, W.D. Ky., 10/14/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant directed patent enforcement actions, including product takedown complaints on Amazon.com, at Plaintiff in the district and retained local counsel for patent maintenance and enforcement.
- Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe U.S. Patent No. 9,022,903, and that the patent’s original claims are invalid and unenforceable, following Defendant’s use of the patent to remove Plaintiff's products from an e-commerce platform.
- Technical Context: The dispute concerns neuromuscular oral appliances, or mouthpieces, designed to optimize jaw positioning to enhance athletic performance, strength, and balance.
- Key Procedural History: The complaint alleges that the patent-in-suit is currently undergoing an ex parte reexamination at the U.S. Patent and Trademark Office (USPTO) initiated by the Plaintiff. During this proceeding, the Defendant (patent owner) voluntarily amended all original independent claims. Subsequently, the USPTO issued a Final Rejection of the amended claims as unpatentable. The complaint asserts that despite this adverse prosecution history, Defendant initiated product takedown actions based on the original, unamended patent claims, which Plaintiff contends are no longer enforceable.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-11 | U.S. Patent No. 9,022,903 Priority Date (Filing Date) |
| 2015-05-05 | U.S. Patent No. 9,022,903 Issue Date |
| 2023-05-26 | Defendant New Age sends demand letter to Plaintiff Dental Choice |
| 2023-09-05 | Plaintiff Dental Choice files prior lawsuit (the "2023 Suit") |
| 2024-01-XX | Plaintiff Dental Choice requests ex parte reexamination of the ’903 Patent |
| 2024-02-XX | USPTO grants request for reexamination |
| 2024-02-XX | Plaintiff Dental Choice voluntarily dismisses the 2023 Suit |
| 2024-11-21 | USPTO issues Non-Final Rejection of the ’903 Patent claims |
| 2025-06-17 | USPTO issues Final Rejection of the amended ’903 Patent claims |
| 2025-07-XX | Plaintiff Dental Choice sends letter to Defendant New Age regarding unenforceability |
| 2025-08-01 | Plaintiff Dental Choice lists two Accused Products on Amazon.com |
| 2025-08-12 | Plaintiff Dental Choice re-lists third Accused Product on Amazon.com |
| 2025-09-25 | Plaintiff Dental Choice receives notice of product takedown from Amazon.com |
| 2025-10-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,022,903 - "Oral Appliance for Improving Strength and Balance"
- Patent Identification: U.S. Patent No. 9,022,903, "Oral Appliance for Improving Strength and Balance," issued May 5, 2015 (the "’903 Patent").
The Invention Explained
- Problem Addressed: The patent’s background section notes that the relative positioning of a person's upper and lower jaw can affect physical strength and balance, but that fabricating custom oral appliances to optimize this positioning is often expensive and inconvenient due to variations in dental anatomy (’903 Patent, col. 1:11-24).
- The Patented Solution: The invention is a "neuromuscular oral appliance" that provides a "pliable intermediate surface" between the upper and lower jaws (’903 Patent, col. 4:22-24). This surface, a "pliable, elastic bite pad," is designed to "partially collapse" when a user bites down, creating a predefined gap between the jaws (’903 Patent, col. 1:34-40). This allows the lower jaw to settle into a balanced position of minimal muscle tension, which the patent asserts can decompress the jaw joints and encourage better spinal alignment, thereby improving strength and balance (’903 Patent, Abstract; col. 8:1-15). The appliance channel is also made of a thermo-plastic material that can be heated and molded to a user's teeth for a semi-custom fit (’903 Patent, col. 5:1-14).
- Technical Importance: The technology aims to provide an accessible, non-customized device that addresses biomechanical issues related to jaw alignment previously addressed primarily through expensive, individually fabricated dental appliances (’903 Patent, col. 1:19-24).
Key Claims at a Glance
- The complaint indicates the dispute centers on the originally issued independent claims, including Claim 1 and Claim 20 (Compl. ¶65).
- Original Independent Claim 1 includes these essential elements:
- A neuromuscular oral appliance comprising a channel with a base to accept teeth from an upper or lower jaw.
- The channel is deformable (e.g., via heating) to conform to the user's teeth.
- A "pliable, elastic bite pad" extends opposite the channel to contact the opposing teeth.
- The bite pad is "adapted to partially collapse upon contact with the teeth" to maintain a gap between the jaws within a "predefined range."
- The channel has two portions spanning from the first bicuspid to the second molar on opposite sides of the mouth.
- The two portions are "connected by a wire."
- The complaint notes that the remaining patent claims are dependent and further narrow the scope of the independent claims (Compl. ¶66).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s AIRWAAV® Performance Mouthpieces, including the AIRWAAV® RX1 RECOVERY MOUTHPIECE FOR SLEEP and the AIRWAAV® PERFORMANCE HYBRID PACK - MAYHEM EDITION (collectively, the "Accused Products") (Compl. ¶¶28, 30-31).
Functionality and Market Context
- The complaint states the Accused Products are configured to "direct the wearer's tongue down and forward when the wearer gently bites down, creating an airway opening" (Compl. ¶29).
- They are marketed to athletes in high-intensity and endurance sports (Compl. ¶28).
- A visual provided in the complaint shows the AIRWAAV® RX1 RECOVERY MOUTHPIECE FOR SLEEP as a single-piece, translucent purple appliance (Compl. ¶30.a).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action for non-infringement. The following table summarizes the Plaintiff's asserted points of non-infringement against an exemplary independent claim.
’903 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the pliable, elastic bite pad is adapted to partially collapse upon contact with the teeth... | The Accused Products are "designed not to collapse (partially or otherwise) upon compression." | ¶65 | col. 1:38-39 |
| wherein the two portions are connected by a wire. | The Accused Products "do not include a 'wire' as recited in independent claims 1 and 20." | ¶65 | col. 2:5-6 |
- Identified Points of Contention:
- Functional Questions: The complaint creates a direct factual dispute over the operational characteristics of the products. A central question will be whether the Accused Products undergo any form of "collapse" upon compression that would meet the claim limitation, notwithstanding the complaint's allegation that they are designed not to do so. The complaint provides an image of the AIRWAAV® PERFORMANCE HYBRID PACK, which, like the other accused product, appears to be of a unitary polymer construction (Compl. ¶30.b).
- Structural Questions: The complaint raises a clear structural question regarding the "wire" limitation. The court's analysis may focus on whether the single-piece molded construction of the Accused Products contains any component that could be construed as a "wire."
V. Key Claim Terms for Construction
The Term: "partially collapse"
- Context and Importance: This term is central to the primary non-infringement argument. Its construction will determine whether the alleged "non-collapsing" design of the Accused Products falls outside the claim scope. Practitioners may focus on this term because its definition distinguishes between simple material compression and the specific yielding action described in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the bite pads "deform and displace around the teeth" and "yield to the teeth," which could support a construction covering any significant deformation under pressure (’903 Patent, col. 8:63-66).
- Evidence for a Narrower Interpretation: The patent describes the bite pads as comprising a "pliable skin or shell filled with a fluid" that deforms to create a "cushion of fluid" (’903 Patent, col. 8:24-34). This suggests a specific structural mechanism for collapse, not just the inherent compressibility of a solid material.
The Term: "wire"
- Context and Importance: This structural term provides a second, distinct basis for the non-infringement claim. A narrow construction would likely exclude the Accused Products, which are depicted as single-piece molded devices.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "wire," which might allow for arguments that any thin connecting element, regardless of material, could satisfy the limitation.
- Evidence for a Narrower Interpretation: The patent repeatedly uses the term "wire" and refers to a "wire frame" and a wire resembling that used in a "Hawley style orthodontic retainer," suggesting a metallic and structurally distinct component from the main body of the appliance (’903 Patent, col. 4:39; col. 9:53-55).
VI. Other Allegations
- Defendant's Alleged Bad Faith: The complaint is not for willful infringement by the Plaintiff, but rather alleges that the Defendant's enforcement actions constitute willful and bad-faith conduct. The basis for this allegation is Defendant's knowledge of the adverse USPTO reexamination, including its own narrowing amendments and the subsequent Final Rejection of the patent claims, at the time it filed infringement complaints with Amazon.com (Compl. ¶¶13-14, 79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary legal question will be one of enforceability: what is the legal effect of Defendant's decision to amend its original patent claims during a reexamination that ultimately resulted in a final rejection? The court will need to determine if asserting the original, surrendered claims after such events constitutes patent misuse or renders those claims unenforceable as a matter of law.
- A central claim construction question will concern definitional scope: can the term "partially collapse," which the patent links to a fluid-filled pad, be construed to read on the functionality of the Accused Products, which Plaintiff asserts are "designed not to collapse"?
- A key evidentiary question will be one of structural presence: do the Accused Products, depicted as unitary molded devices, contain a structure that meets the "wire" limitation required by certain independent claims, or is there a dispositive structural mismatch?