DCT
1:18-cv-12203
Neotech Products LLC v. Sandbox Medical LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Neotech Products LLC (California)
- Defendant: Sandbox Medical, LLC (Massachusetts)
- Plaintiff’s Counsel: Eckert Seamans Cherin & Mellott, LLC; Kelly & Kelley, LLP
- Case Identification: 1:17-cv-01366, D. Del., 11/07/2017
- Venue Allegations: Plaintiff alleges that venue is proper in the District of Massachusetts, where Defendant is organized and has its principal place of business, and notes that a motion to transfer to that district was filed concurrently with the complaint.
- Core Dispute: Plaintiff alleges that Defendant’s "Boogie Baby Nasal Aspirator" products infringe a patent related to the design of multi-part medical suction devices.
- Technical Context: The technology concerns handheld nasal and oral aspirators, commonly used in neonatal care to clear fluid from a patient's airways.
- Key Procedural History: The complaint was originally filed in the Central District of California, voluntarily dismissed, and re-filed in the District of Delaware. Notably, subsequent to this filing, the patent-in-suit was the subject of an Inter Partes Review (IPR) proceeding (IPR2019-00246). The resulting IPR certificate, issued July 15, 2021, cancelled all claims of the patent (Claims 1-10), rendering it unenforceable and likely rendering this litigation moot. The complaint also alleges Defendant had knowledge of the patent since at least April 2015.
Case Timeline
| Date | Event |
|---|---|
| 2001-06-04 | Priority Date for U.S. Patent No. 6,958,050 |
| 2005-10-25 | Issue Date for U.S. Patent No. 6,958,050 |
| 2017-05-05 | Plaintiff's original action filed in C.D. Cal. (later dismissed) |
| 2017-11-07 | Complaint Filing Date (D. Del.) |
| 2018-11-09 | Inter Partes Review (IPR2019-00246) filed against the '050 Patent |
| 2021-07-15 | IPR Certificate issues, cancelling all claims of the '050 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,958,050 - "Nasal/Oral Aspiration Device"
- Patent Identification: U.S. Patent No. 6958050, "Nasal/Oral Aspiration Device," issued October 25, 2005.
The Invention Explained
- Problem Addressed: The patent background identifies a general need for improved medical suction devices that offer greater utility, ease of use, and operational effectiveness ('050 Patent, col. 1:8-14).
- The Patented Solution: The invention is a two-part medical aspirator. It comprises a "first tubular body portion" made of a relatively hard plastic, which connects to an external suction source, and a "second tubular body portion" made of a softer, more pliable plastic for patient contact ('050 Patent, col. 4:31-35). A key feature is a side inlet on the first portion that allows a user to control suction by covering and uncovering the opening with a finger ('050 Patent, Abstract; col. 2:57-64). The second, softer portion is described as having three distinct sections with different flexibility and taper angles to enhance maneuverability within a patient's nasal or oral cavity while minimizing tissue trauma ('050 Patent, col. 2:65-col. 3:8).
- Technical Importance: The design's combination of materials and specific geometry aims to give a user one-handed suction control while making the patient-contacting tip soft, flexible, and less traumatic than prior devices ('050 Patent, col. 4:35-40).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3-10 (Compl. ¶13). It also refers to claim 2 in its indirect infringement allegations (Compl. ¶15, ¶17).
- The essential elements of independent claim 1 include:
- A one-piece first tubular body portion made of relatively hard plastic.
- A one-piece second tubular body portion made of relatively soft plastic, operatively connected to the first.
- The second portion having a flexible, soft, and pliable tip.
- A side inlet for manual control of suction.
- The second tubular portion having "primary secondary and tertiary lengthwise extending sections."
- The primary section fits telescopically to the first tubular body portion.
- The tertiary section is flexible and tapers toward the tip at a "relatively lesser taper angle."
- The secondary section is located between the primary and tertiary sections and tapers at a "relatively greater taper angle."
- The length of the tertiary section (L₃) is much greater than the length of the secondary section (L₂) (L₃>>L₂).
- The body portions are transparent or translucent.
- The complaint does not explicitly reserve the right to assert other claims but invokes "one or more of the inventions claimed" generally (Compl. ¶12).
III. The Accused Instrumentality
Product Identification
The "Boogie Baby Nasal Aspirator" line of products, including versions with a "preemie tip, a standard tip, or a flair tip" (Compl. ¶13).
Functionality and Market Context
The complaint describes the accused product as a "multipurpose suction device" (Compl. ¶13). The functionality relevant to the infringement allegations is its physical construction, which allegedly includes a one-piece first tubular body, a one-piece second tubular body, a side inlet, and a multi-section tip with varying taper angles (Compl. ¶13). The complaint states that the product is intended for use with an external suction source, citing packaging that instructs users to "connect to standard suction line" (Compl. ¶16). The complaint references a screenshot from the defendant's website, dated September 26, 2017, which allegedly shows the accused aspirator products (Compl. ¶13).
IV. Analysis of Infringement Allegations
'050 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a one piece first tubular body portion, | The Boogie Baby Nasal Aspirator has a "claimed one-piece first tubular body portion." | ¶13 | col. 4:15 |
| b) a one piece second tubular portion operatively connected to said first tubular body portion, | The device has a "one-piece second tubular body portion operatively connected thereto." | ¶13 | col. 4:18-20 |
| d) there being a side inlet associated with at least one of said first and second portions, to be manually blocked and unblocked to control suctioning... | The device possesses "the claimed side inlet." | ¶13 | col. 4:25-30 |
| f) said second tubular portion having primary secondary and tertiary lengthwise extending sections, said primary section fitting telescopically to said first tubular body portion...said tertiary section being flexible and tapering toward said tip... | The second tubular body portion is alleged to have "primary, secondary, and tertiary lengthwise extending sections." | ¶13 | col. 4:40-43 |
| ...said secondary section extending between said primary and tertiary sections, at a relatively greater taper angle... | The accused device's secondary section allegedly tapers "at a relatively greater taper angle than the tertiary section." | ¶13 | col. 4:46-50 |
| g) said secondary and tertiary sections having respective lengths L₂, and L₃ where L₃ is elongated and L₃>>L₂, | The complaint's allegation of infringement of claim 1 implies this dimensional relationship exists in the accused product. | ¶13 | col. 4:53-55 |
| h) and wherein said device is characterized by one of the following: i) said body portions are transparent ii) said body portions are translucent... | The complaint does not specify whether the accused product is transparent or translucent, but infringement of claim 1 requires it to be one or the other. | ¶13 | col. 4:61-65 |
- Identified Points of Contention:
- Technical Questions: The complaint's infringement allegations are conclusory. A central factual dispute would concern whether the accused aspirator's physical form truly contains the distinct "primary, secondary, and tertiary" sections with the specific geometric relationships (e.g., L₃ >> L₂, β > α) required by claim 1. The complaint asserts these features exist but does not provide diagrams, measurements, or other evidence to substantiate this structural mapping ('050 Patent, col. 3:1-8; Compl. ¶13).
- Scope Questions: The interpretation of what constitutes three distinct "sections" on a continuously tapered surface would be a likely point of contention. The defense might argue that the accused product has a smooth, multi-stage taper that does not meet the specific structural and dimensional limitations of the claims.
V. Key Claim Terms for Construction
- The Term: "primary secondary and tertiary lengthwise extending sections"
- Context and Importance: This composite term defines the core structural novelty of the patented device's tip. The outcome of the infringement analysis would hinge on whether the accused product's geometry can be fairly characterized as having these three specific, distinct sections.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the terms should be interpreted functionally, focusing on the patent's goal of creating a flexible yet maneuverable tip, suggesting that any multi-stage taper achieving this result meets the limitation ('050 Patent, col. 3:9-18).
- Evidence for a Narrower Interpretation: A party would argue the terms require the specific structural and geometric relationships disclosed in the preferred embodiment, including the secondary section (37) having a "relatively larger taper angle β" and the tertiary section (38) having a "lesser tape angle α," as well as the length of the tertiary section being significantly greater than the secondary section (L₃ >> L₂) ('050 Patent, col. 3:1-8, Fig. 2).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both inducement and contributory infringement. The inducement allegation is based on Defendant's knowledge of the patent and its website and packaging instructions, which allegedly direct customers to "connect to standard suction line," thereby completing the infringing system as claimed in method and system claims (Compl. ¶16). The contributory infringement allegation is based on the assertion that the accused aspirator is a material component of the invention with no substantial non-infringing use (Compl. ¶14-15, ¶17).
- Willful Infringement: The complaint alleges that Defendant has had knowledge of the '050 Patent since "at least as early as April 2015" (Compl. ¶11). Based on this alleged pre-suit knowledge, Plaintiff claims Defendant's infringement was undertaken in "subjective bad faith, and/or intentional or with reckless disregard" (Compl. ¶21), seeking enhanced damages and attorneys' fees.
VII. Analyst’s Conclusion: Key Questions for the Case
At the time of its filing, this case presented focused questions of claim construction and infringement. However, the subsequent cancellation of all asserted claims in the IPR2019-00246 proceeding is a dispositive event that overshadows the original dispute. The key questions, as they would have been litigated, were:
- A central issue would have been one of structural correspondence: Does the accused "Boogie Baby Nasal Aspirator" embody the specific tripartite structure of "primary, secondary, and tertiary sections" with the claimed relative taper angles and lengths, or does its geometry differ in a way that is material to the claim language?
- A second key question would have been one of intent: Assuming infringement was found, did the Defendant's conduct, particularly in light of its alleged pre-suit knowledge of the patent since 2015, rise to the level of objective recklessness required to support a finding of willful infringement?