DCT

1:24-cv-00954

Solmetex LLC v. Ascentcare Dental Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00954, W.D. Mich., 09/16/2024
  • Venue Allegations: Venue is based on Defendant being a Michigan corporation with its principal place of business within the Western District of Michigan.
  • Core Dispute: Plaintiff alleges that Defendant’s VacuLUX line of dental mouthpieces infringes five utility patents and four design patents related to intraoral suction and isolation devices.
  • Technical Context: The technology concerns integrated intraoral devices used during dental procedures to provide suction, cheek retraction, and isolation, thereby keeping the working area dry and visible for clinicians.
  • Key Procedural History: The complaint alleges Plaintiff provided Defendant with pre-suit notice of infringement of four of the patents-in-suit via a letter with claim charts dated May 17, 2023. Notice of subsequently issued patents was allegedly provided through further communications. The complaint also notes that Defendant's counsel communicated on August 8, 2024, that Defendant had altered the design of its accused product.

Case Timeline

Date Event
2012-12-07 Earliest Priority Date for ’969, ’970, ’686, and ’329 Patents
2014-03-27 Earliest Priority Date for D'438 and D'439 Design Patents
2019-05-10 Earliest Priority Date for ’217 Patent
2020-05-08 Earliest Priority Date for D'505 Design Patent
Late 2020/Early 2021 Accused VacuLUX Product Launch
2021-05-07 Earliest Priority Date for D'436 Design Patent
2022-08-30 D'438 and D'439 Design Patents Issue
2023-02-28 ’969 and ’970 Patents Issue
2023-05-17 Plaintiff sends Notice Letter to Defendant
2023-06-06 D'505 Design Patent Issues
2023-09-05 ’686 Patent Issues
2023-11-28 ’217 Patent Issues
2024-06-18 ’329 Patent Issues
2024-07-30 D'436 Design Patent Issues
2024-08-08 Defendant’s counsel communicates product design alteration
2024-09-16 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,589,969 - “Intraoral Device With Mesh” (Issued Feb. 28, 2023)

The Invention Explained

  • Problem Addressed: The patent describes the field of dentistry as traditionally requiring a two-person team (e.g., a dental professional and an assistant) using multiple separate tools like mirrors, bite blocks, and suction ejectors to perform procedures. This method is presented as potentially inefficient and cumbersome (’969 Patent, col. 1:21-41).
  • The Patented Solution: The invention is a single, reusable intraoral mouthpiece designed to combine these functions. It is made of a flexible, autoclavable material like silicone and features a main body that provides suction via perforations ("mesh"), a cheek retractor, and a connector for a high-suction vacuum source (’969 Patent, Abstract). A key feature is an internal "bridge structure" protruding from the posterior wall, which is designed to prevent the device's walls from collapsing under suction, thereby ensuring a clear pathway for the removal of air, fluids, and debris (’969 Patent, col. 2:13-22).
  • Technical Importance: This integrated approach aims to improve the efficiency of dental procedures by allowing for hands-free suction and isolation with a single, customizable device (’969 Patent, col. 1:36-41).

Key Claims at a Glance

  • The complaint asserts at least independent claim 19 (Compl. ¶61).
  • Essential elements of independent claim 19 include:
    • A main body portion configured as a pocket with an interior space.
    • A first wall with perforations and a shape defined by one or more edges.
    • A second wall with a corresponding shape, which includes a "bridge structure" with a "plurality of protrusions" that protrude toward the first wall in a "wave shape comprising one or more crests and one or more troughs."
    • A suction connector portion connected to a first end of the main body.
    • A cheek retractor connected to a second end of the main body.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 11,589,970 - “Intraoral Device With Detachable Mouth Prop” (Issued Feb. 28, 2023)

The Invention Explained

  • Problem Addressed: Similar to the ’969 Patent, this invention addresses the need for a more integrated and efficient system for performing dental procedures (’970 Patent, col. 1:15-41).
  • The Patented Solution: The invention is an intraoral device with suction and cheek retraction capabilities, distinguished by its modular design featuring a detachable mouth prop. The suction connector of the mouthpiece includes an external plug designed to fit into a corresponding opening on the mouth prop, allowing the two components to be securely joined for use and separated for cleaning or customization (’970 Patent, Abstract; col. 5:19-49).
  • Technical Importance: This modularity allows clinicians to mix and match different sizes of mouthpieces and mouth props to better fit a particular patient's anatomy, enhancing versatility (’970 Patent, col. 5:45-49).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶71).
  • Essential elements of independent claim 1 include:
    • A main body portion configured as a pocket with an interior space and an internal bridge structure.
    • A suction connector extending from a first end of the main body.
    • A "mouth prop molded in one piece," through which the suction connector extends and past which it passes.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 11,744,686 - “Intraoral Device” (Issued Sep. 5, 2023)

  • Patent Identification: U.S. Patent No. 11,744,686, “Intraoral Device,” issued Sep. 5, 2023 (Compl. ¶17).
  • Technology Synopsis: This patent describes an intraoral device with an interior space defined by first and second walls. The invention focuses on features including a slit opening along the first wall for fluid capture and cleaning, and an internal stability bar aligned with the slit to provide structural reinforcement (’686 Patent, Abstract, cl. 1).
  • Asserted Claims: At least independent claim 12 (Compl. ¶81).
  • Accused Features: The complaint alleges infringement by the Accused Products generally, without specifying features corresponding to this patent (Compl. ¶81).

U.S. Patent No. 11,826,217 - “Dental Mouthpiece” (Issued Nov. 28, 2023)

  • Patent Identification: U.S. Patent No. 11,826,217, “Dental Mouthpiece,” issued Nov. 28, 2023 (Compl. ¶18).
  • Technology Synopsis: This patent discloses a dental mouthpiece formed in a curve, comprising a main body, a suction connector, and a cheek retractor. The main body has anterior and posterior walls with intervening support walls that feature alternating crests and troughs to maintain the interior space during suction (’217 Patent, Abstract).
  • Asserted Claims: At least independent claim 17 (Compl. ¶91).
  • Accused Features: The complaint alleges infringement by the Accused Products generally, without specifying features corresponding to this patent (Compl. ¶91).

U.S. Patent No. 12,011,329 - “Intraoral Device” (Issued Jun. 18, 2024)

  • Patent Identification: U.S. Patent No. 12,011,329, “Intraoral Device,” issued Jun. 18, 2024 (Compl. ¶19).
  • Technology Synopsis: This patent describes an intraoral mouthpiece with a main body, cheek retractor, and a bridge structure with spaced protrusions. The claims focus on the specific geometry wherein the main body transitions into a cheek retractor portion where the device's walls remain spaced apart before connecting (’329 Patent, Abstract, cl. 1).
  • Asserted Claims: At least independent claim 9 (Compl. ¶101).
  • Accused Features: The complaint alleges infringement by the Accused Products generally, without specifying features corresponding to this patent (Compl. ¶101).

U.S. Design Patents D962,438, D962,439, D988,505, and D1,037,436 - “Mouthpiece”

  • Patent Identification: U.S. Design Patent Nos. D962,438, D962,439, D988,505, and D1,037,436, all titled “Mouthpiece,” issued between August 2022 and July 2024 (Compl. ¶¶20-23).
  • Technology Synopsis: These patents claim the ornamental, non-functional design for a portion of a dental mouthpiece, as depicted in their respective figures.
  • Asserted Claims: The single claim of each design patent.
  • Accused Features: The overall visual appearance of the Accused Products is alleged to replicate the claimed designs, such that an ordinary observer would believe the accused mouthpiece is the claimed design (Compl. ¶¶113, 125, 137, 149). The complaint includes side-by-side images comparing the accused product to the patent drawings (Compl. ¶¶112, 124, 136, 148).

III. The Accused Instrumentality

Product Identification

  • Defendant Ascentcare’s "VacuLUX mouthpieces" are accused of infringement. The complaint identifies both an "original" and an "altered 'new' design" of the mouthpiece, collectively termed the "Accused Products" (Compl. ¶¶24, 34).

Functionality and Market Context

  • The Accused Products are dental isolation mouthpieces that directly compete with Plaintiff's DryShield® products (Compl. ¶25). They are marketed as being compatible with various isolation systems, including Plaintiff’s DryShield® system, to provide suction within a patient's mouth (Compl. ¶25). The complaint includes a photograph, taken from Defendant's website, of the altered VacuLUX mouthpiece design (Compl. ¶33).

IV. Analysis of Infringement Allegations

The complaint alleges that the May 17, 2023 notice letter sent to Defendant included claim charts exemplifying infringement (Compl. ¶28). However, those charts are not attached as exhibits to the complaint. The complaint itself does not provide a narrative infringement theory or map specific elements of any asserted claim to corresponding features of the Accused Products for any of the utility patents. It states conclusorily that Ascentcare has infringed the asserted claims by making, using, and selling the Accused Products (Compl. ¶¶61, 71, 81, 91, 101). The complaint does not provide sufficient detail for analysis of how the Accused Products are alleged to meet the specific limitations of the asserted utility claims.

For the asserted design patents, the complaint alleges that the "nearly identical look of the Accused Products to the design claimed" would cause an "ordinary observer" to believe the products embody the patented designs (Compl. ¶¶113, 125, 137, 149). This theory is supported by visual evidence, such as the side-by-side comparison of a drawing from the D'438 Design Patent and a photograph of an Accused Product (Compl. ¶112).

  • Identified Points of Contention:
    • Evidentiary Questions: A central question will be what technical evidence demonstrates that the internal structures of the Accused Products meet the specific limitations of the utility patents, such as the "bridge structure" of the ’969 Patent or the detachable prop mechanism of the ’970 Patent. The complaint provides no public-facing evidence on these internal features.
    • Scope Questions (Design Patents): The dispute may focus on whether the visual similarities between the Accused Products and the claimed designs are substantial from the perspective of an ordinary observer, and to what extent any differences are dictated by function rather than ornament.

V. Key Claim Terms for Construction

  • The Term: "bridge structure" (’969 Patent, cl. 19)

  • Context and Importance: This term appears central to the ’969 Patent's asserted novelty of preventing mouthpiece collapse under suction. The outcome of the infringement analysis for this patent may depend on whether the internal support features of the Accused Products fall within the scope of this term.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification introduces the feature broadly as "an internal bridge structure" and "a protruding bridge structure on the interior surface of the posterior wall," which could suggest any internal protuberance that spans the interior space (’969 Patent, col. 2:13-15, col. 2:51-52).
    • Evidence for a Narrower Interpretation: Claim 19 further defines the structure as having "a plurality of protrusions... in a wave shape comprising one or more crests and one or more troughs." The embodiment depicted in FIG. 5 shows a specific, highly detailed, undulating structure, which could be argued to limit the term's scope to designs with similar wave-like characteristics (’969 Patent, Fig. 5, col. 4:51-64).

  • The Term: "a mouth prop molded in one piece" (’970 Patent, cl. 1)

  • Context and Importance: Infringement of claim 1 of the ’970 Patent requires not only the mouthpiece but also a mouth prop with specific characteristics. Practitioners may focus on whether the Accused Products are used, sold, or intended for use with a mouth prop that meets this "molded in one piece" limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The language itself suggests any single, integrally formed mouth prop. The specification describes it as "injection molded in a single piece with an elastic strap" (’970 Patent, col. 5:40-42).
    • Evidence for a Narrower Interpretation: Dependent claim 2 further specifies that the mouth prop comprises a "bite block portion and a strap portion." An argument could be made that the term in claim 1 should be construed in light of this more detailed description and the specific prop depicted in FIGS. 3A-3F, potentially limiting it to props having both of these distinct components (’970 Patent, cl. 2, Figs. 3A-3F).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant encourages infringement by dental clinicians through "promotional and marketing materials, supporting materials, product manuals, and/or technical support and information" (Compl. ¶¶64, 74). Contributory infringement is based on the allegation that the Accused Products have "no suitable or substantial non-infringing use" (Compl. ¶¶65, 75).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge. For the ’969 and ’970 patents (among others), this knowledge is alleged to stem from a May 17, 2023 notice letter (Compl. ¶¶26, 66, 76). For patents issued after this date, knowledge is alleged to have been acquired through subsequent communications and the issuance of the patents (Compl. ¶¶31, 86, 96, 106).

VII. Analyst’s Conclusion: Key Questions for the Case

  • Evidentiary Sufficiency: A primary issue will be establishing the facts of infringement for the utility patents. As the complaint lacks a detailed infringement theory, the case will depend heavily on evidence developed during discovery concerning the precise internal construction and modular features of both the "original" and "altered" designs of the accused VacuLUX mouthpieces.
  • Claim Construction Scope: A key legal question will be one of definitional scope, particularly for the term "bridge structure" in the ’969 Patent. The case may turn on whether this term, which is described with specific "wave shape" and "crest/trough" limitations in the claim, can be construed broadly enough to read on the internal supports of the accused products or if it is limited to the specific embodiments shown in the patent.
  • Design vs. Function: For the four asserted design patents, a central question will be the classic design patent issue of separating ornament from function. The analysis will likely focus on whether an ordinary observer would find the overall visual impression of the accused products to be substantially similar to the claimed designs, after filtering out any design aspects that are dictated purely by the device's function.