DCT
4:13-cv-15116
Naturs Design Inc v. Quietus CPAP Liners Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Naturs Design, Inc. (Michigan)
- Defendant: Quietus CPAP Liners, Inc. (Pennsylvania) and Matthew S. Kesner, Jr. (individual)
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 4:13-cv-15116, E.D. Mich., 12/17/2013
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan because Defendants are subject to personal jurisdiction in the district, having committed acts of patent infringement by selling and offering for sale the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendants’ Quietus Liners product infringes a patent related to disposable liners for use with Continuous Positive Airway Pressure (CPAP) respiratory masks.
- Technical Context: The technology addresses comfort and performance issues in CPAP masks, a common medical device for treating obstructive sleep apnea, by providing a liner that improves the seal and absorbs moisture.
- Key Procedural History: The complaint alleges that Defendant Kesner ordered Plaintiff's patented product in May 2010. Subsequently, in October 2010, Plaintiff sent a notice letter to Defendants identifying a pending patent publication (which later issued as the patent-in-suit) and alleging that the Quietus Liners product would infringe. These allegations of pre-suit knowledge form the basis for the willfulness claim. The complaint also includes alter ego allegations against the individual defendant, Matthew S. Kesner, Jr.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-29 | Priority Date for ’733 Patent (Provisional App. No. 61/056,893) |
| 2009-05-21 | Non-provisional application for ’733 Patent filed |
| 2010-05 | Defendant Kesner allegedly places an order for Plaintiff's CPAP mask liners |
| 2010-10-13 | Plaintiff allegedly sends notice letter to Defendants regarding the published patent application |
| 2013-02-05 | U.S. Patent No. 8,365,733 issues |
| 2013-12-17 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,365,733, "Liner for Use with Respiratory Mask," issued February 5, 2013.
The Invention Explained
- Problem Addressed: The patent's background section describes problems associated with conventional CPAP masks, which are typically made of impermeable materials like silicone or rubber. These problems include user discomfort, poor patient compliance, air leaks causing noise, sweating, pressure marks on the face, and the inability to use skin creams ('733 Patent, col. 1:26-42). The complaint notes the inventor's personal experience with these issues, such as the mask losing its seal, creating squealing noises, and making the user's face hot and sweaty (Compl. ¶8).
- The Patented Solution: The invention is a disposable liner made from an absorbent material that is placed between the user's face and the respiratory mask ('733 Patent, Abstract). A key feature is that the liner body has an outer perimeter larger than the perimeter of the mask's face-engaging portion. This creates an "extending portion" that protrudes beyond the mask's edge, which serves to "reduce or eliminate air from leaking" by acting as a baffle ('733 Patent, col. 2:50-65; Fig. 1). The liner is held in place simply by the pressure of the mask against the face, without requiring any separate adhesive or fastener ('733 Patent, col. 3:56-62).
- Technical Importance: The liner is intended to improve the "comfort, effectiveness, and/or patient compliance" of CPAP therapy by maintaining a better mask seal and absorbing moisture and oils from the skin ('733 Patent, col. 2:21-24).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶28).
- The essential elements of independent claim 1 are:
- A body constructed from an absorbent material.
- The body has an outer edge, an inner edge, and an opening bounded by the inner edge.
- A perimeter of the outer edge is larger than a perimeter of the face-engaging portion of the respiratory mask, forming an extending portion of the body.
- The extending portion is configured to be in non-adhering communication with a user's face.
- The liner is configured to be releasably held by the mask and the user's face such that the outer edge extends beyond the face-engaging portion.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a judgment that Defendants have infringed the ’733 patent generally (Compl. p. 9, ¶C).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Quietus Liners" product (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the Quietus Liner is a product designed for use with a respiratory mask and directly competes with Plaintiff's own "RemZzzs" product (Compl. ¶¶13, 15). The complaint describes the accused product as an "intentionally cop[ied]" and "low-quality knock-off" of Plaintiff's patented product (Compl. ¶¶15, 18). An image provided in the complaint shows the accused Quietus Liner as a triangular piece of fabric-like material with a central cutout, shaped for placement on the face under a CPAP mask (Compl. p. 5).
IV. Analysis of Infringement Allegations
’733 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body constructed from an absorbent material | The accused Quietus Liners product is a liner made of a material intended to be placed between a user's face and a CPAP mask. The complaint provides an image of the fabric-like product. | ¶¶15, 28 | col. 3:15-20 |
| the body having an outer edge, an inner edge, and an opening bounded by the inner edge | The accused product is depicted as having a triangular outer shape and a central opening for the user's nose and/or mouth. | ¶15; p. 5 | col. 2:39-49 |
| wherein a perimeter of the outer edge is larger than a perimeter of the face-engaging portion of the respiratory mask for forming an extending portion of the body | The complaint alleges the accused product is a "knock-off" that "uses the patented product," implying its dimensions are designed to extend beyond a standard mask's sealing portion. | ¶¶15, 28 | col. 2:50-59 |
| the extending portion configured to be in non-adhering communication with a user's face | The infringement allegation is based on the accused product being a liner held in place by mask pressure, not by adhesive. | ¶28 | col. 5:48-55 |
| and the liner is configured to be releasably held by the mask and the user's face such that the outer edge extends beyond the face-engaging portion | The product is sold as a liner to be used with a CPAP mask, which necessarily holds it in place by pressure during use. | ¶28 | col. 3:56-62 |
- Identified Points of Contention:
- Technical Questions: A central factual question may be whether the material used in the accused Quietus Liners is "absorbent" as required by the claim. A second question is whether the accused product, when used as intended, actually has an "extending portion" that protrudes beyond the "face-engaging portion" of the masks with which it is used. The complaint provides a photo of the accused liner, but not of the liner in use with a mask (Compl. p. 5).
- Scope Questions: The case may turn on the construction of the claim term "extending portion." The patent specification describes this portion as serving a "baffle" function to "reduce air leaks" ('733 Patent, col. 3:10-14, col. 5:58-60). A dispute may arise over whether this functional language limits the scope of the structural "extending portion" element.
V. Key Claim Terms for Construction
The Term: "extending portion"
Context and Importance: This term appears to define the primary point of novelty. The infringement analysis will depend on whether the accused product's physical structure meets the definition of an "extending portion," which is defined relative to the "face-engaging portion" of a separate product (the mask). Practitioners may focus on this term because its construction will determine whether the mere presence of liner material outside the mask's seal is sufficient, or if a specific size, shape, or baffle-like function is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself defines the term structurally: "a perimeter of the outer edge is larger than a perimeter of the face-engaging portion of the respiratory mask for forming an extending portion of the body" ('733 Patent, col. 5:48-51). This suggests a purely dimensional test.
- Evidence for a Narrower Interpretation: The specification repeatedly imputes a function to this structure, stating the "extending portion 22 serves to reduce air leaks from the perimeter of the mask M by acting as a baffle" ('733 Patent, col. 3:10-12). A defendant may argue this functional description limits the scope of the term to structures that actually perform a baffling function.
The Term: "non-adhering communication with a user's face"
Context and Importance: This negative limitation distinguishes the invention from liners that might use adhesives. Its precise meaning is critical to determining the boundary of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be interpreted broadly to mean the absence of any adhesive or fastener connecting the liner directly to the user's skin.
- Evidence for a Narrower Interpretation: The specification explains that the liner is "held in place by the pressure of the respiratory mask M upon the face" and that "neither elastic nor another mechanism for securing the liner 10 to the mask M is required" ('733 Patent, col. 3:56-62). This context suggests the term is meant to cover liners held in place solely by compression between the mask and face.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement. However, it alleges that Defendant Kesner "is actively and personally infringing the '733 patent by actively and personally marketing, advertising, selling and distributing the infringing Quietus Liner product" (Compl. ¶22). These allegations appear to support a claim of direct infringement against Kesner as an individual, potentially under an alter ego theory, rather than a claim for induced infringement (Compl. ¶¶20-21).
- Willful Infringement: The complaint makes detailed allegations to support willfulness. It asserts that Defendants had pre-suit knowledge of the patent's subject matter based on an October 13, 2010 notice letter regarding the '880 patent publication, which contained claims "very similar to one or more claims of the '733 patent" (Compl. ¶¶16-17). The complaint further alleges that Defendant Kesner ordered and received Plaintiff's own product prior to this notice, giving him direct exposure to the technology (Compl. ¶¶14-15). The complaint alleges Defendants acted "despite an objectively high likelihood that their actions constituted infringement" (Compl. ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of individual liability: can the plaintiff successfully argue that Matthew Kesner, Jr. operated the corporate defendant as a "mere instrumentality and/or alter ego," thereby making him personally liable for the alleged infringement? The pleadings dedicate significant attention to this theory.
- A second central question will be one of willfulness and damages: given the allegation that Defendants received a notice letter citing the published patent application years before the patent issued, the case will likely feature a significant dispute over whether this constituted pre-suit knowledge sufficient to support a finding of willful infringement.
- Finally, the case will involve a key question of claim scope: can the term "extending portion," which is defined structurally in the claim, be limited by the "baffle" function described in the specification? The outcome of this construction will likely determine whether the accused product infringes.