DCT
0:24-cv-01475
Nanodropper Inc v. J4J LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nanodropper, Inc. (Minnesota)
- Defendant: J4J, LLC (Idaho)
- Plaintiff’s Counsel: Westman, Champlin & Kelly, PA.
- Case Identification: 0:24-cv-01475, D. Minn., 04/22/2024
- Venue Allegations: Plaintiff alleges venue is proper in the District of Minnesota because Defendant transacts business and has committed acts of patent infringement in the district, including through online sales and shipments to consumers.
- Core Dispute: Plaintiff alleges that Defendant’s "PRECISION DROPPER" product infringes a patent related to a volume-reducing adapter for eyedrop bottles.
- Technical Context: The technology involves after-market adapters for standard eyedrop bottles designed to reduce droplet size, thereby minimizing medication waste and potential side effects from overflow.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with written notice of the patent-in-suit on August 18, 2023, which may be used to support the claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-24 | U.S. Patent No. 10,695,216 Priority Date |
| 2020-06-30 | U.S. Patent No. 10,695,216 Issue Date |
| 2023-08-18 | Plaintiff provides pre-suit notice to Defendant |
| 2023-08-XX | Accused product offered for sale on or before this date |
| 2024-04-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,695,216 - “Assembly and Method for Delivery of Micro-Volume Droplets From a Squeeze Bottle”
- Patent Identification: U.S. Patent No. 10,695,216, “Assembly and Method for Delivery of Micro-Volume Droplets From a Squeeze Bottle,” issued June 30, 2020. (Compl. ¶11).
The Invention Explained
- Problem Addressed: The patent’s background section states that standard ophthalmic dropper bottles dispense drops with a volume of 25µl to 75µl, which is significantly larger than the human eye’s capacity of approximately 10µl or less. This results in wasted medication, which can be costly, and potential irritation to the skin surrounding the eye. (’216 Patent, col. 1:20-33; Compl. ¶¶ 9-10).
- The Patented Solution: The invention is an after-market assembly that can be secured to a standard squeeze bottle without removing or modifying the bottle’s original dispensing nozzle. (’216 Patent, col. 2:45-51). The assembly includes a flexible tip with a small outlet aperture that fits over the original nozzle, thereby reducing the volume of the ejected droplet to a "microliter scale" (e.g., less than 15µl) when the bottle is squeezed. (’216 Patent, Abstract; col. 3:1-10).
- Technical Importance: The invention offers a consumer-level solution to reduce medication waste and cost without requiring pharmaceutical companies to repackage products into new, specialized containers. (’216 Patent, col. 1:37-41).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, "including at least claim 1" of the ’216 Patent. (Compl. ¶22).
- Independent Claim 1 of the ’216 Patent recites:
- An assembly having a flexible and resilient tip for attaching to a container and configured to reduce a volume of a droplet of fluid ejected from the container
- wherein the assembly is removably securable to the container without removal of a dispensing tip original to the container,
- wherein the container is a squeeze type container
- and wherein the volume of the droplet ejected from the container is reduced on a microliter scale as the assembly is configured to reduce the volume of the droplet ejected per squeeze to a volume less than about 15 µL.
- The complaint reserves the right to assert other claims, which may include dependent claims that further narrow the scope of the invention. (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
- The accused product is the “PRECISION DROPPER.” (Compl. ¶23).
Functionality and Market Context
- The PRECISION DROPPER is described as a “Universal Eye Drop Attachment” made of a flexible material designed to fit over the nozzle of a pre-existing eyedrop container. (Compl. ¶¶ 23, 25-26). The complaint includes a screenshot from Defendant's website, "precisiondropper.com", which states that the product "produces drops of 12-16 ul." (Compl. p. 8). The complaint provides an image from the accused product's packaging describing it as a "Universal Eye Drop Attachment" that helps eye drops "last 3X longer." (Compl. p. 5). The product is allegedly sold individually and in “bundles” with various commercially available eye drop products. (Compl. ¶34; p. 10).
IV. Analysis of Infringement Allegations
’216 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An assembly having a flexible and resilient tip for attaching to a container and configured to reduce a volume of a droplet of fluid ejected from the container | The accused product is a "universal eye drop attachment with a flexible tip." The complaint includes a photograph showing the accused product attached to an eyedrop bottle, allegedly reducing droplet volume. (Compl. p. 6). | ¶25, p. 6 | col. 4:32-34 |
| wherein the assembly is removably securable to the container without removal of a dispensing tip original to the container, | The complaint alleges the accused product "is an attachment for a pre-existing squeeze type container" and that it is "removably securable to the container without removal of a dispensing tip original to the container." | ¶24, ¶26 | col. 3:4-10 |
| wherein the container is a squeeze type container | The product is sold for use with squeeze-type eyedrop containers and is offered in "bundles" with such containers. | ¶26, ¶28 | col. 3:11-14 |
| and wherein the volume of the droplet ejected from the container is reduced on a microliter scale as the assembly is configured to reduce the volume...to a volume less than about 15 µL. | The complaint alleges the accused product "reduces the volume of a droplet ejected from the squeeze type container on a microliter scale to a volume less than about 15 µl." It supports this with a website screenshot stating the product "produces drops of 12-16 ul." (Compl. p. 8). | ¶27, p. 8 | col. 2:1-4 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise from the claim limitation requiring a droplet volume "less than about 15 µL." The complaint cites Defendant's own marketing, which advertises a droplet size of "12-16 ul." (Compl. p. 8). This raises the question of whether a droplet of "16 ul" falls within the scope of "about 15 µL." The interpretation of the word "about" will be critical.
- Technical Questions: The complaint includes a photograph comparing three droplet sizes, allegedly showing the reduction achieved by the accused product. (Compl. p. 6). The evidentiary weight and accuracy of this visual demonstration will be a factual question. The case may turn on expert testing and evidence establishing the actual range of droplet volumes produced by the PRECISION DROPPER under typical use conditions.
V. Key Claim Terms for Construction
- The Term: "less than about 15 µL"
- Context and Importance: This term is at the heart of the infringement dispute, as Defendant’s own advertising ("12-16 ul") appears to place its product directly on the boundary of the claimed range. Practitioners may focus on this term because its construction could be dispositive of infringement for at least some of the accused product's operating range.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification discloses several different volume ranges, such as "about 5 µL to about 30 µL" and "about 7 µL to about 20 µL," which may suggest that the drafters did not intend the specific numerical values to be rigid limits. (’216 Patent, col. 5:41-44). The consistent use of the term "about" could be argued to signal a degree of numerical flexibility that encompasses values slightly above 15 µL, such as 16 µL.
- Evidence for a Narrower Interpretation: An argument could be made that "less than about 15 µL" creates a ceiling at approximately 15 µL, and does not extend to values meaningfully above it. The patent’s background emphasizes the problem of oversized drops and highlights an "optimal drop volume" of "about 10 µL or less," potentially supporting an interpretation that the invention is directed toward significant volume reduction, not values approaching 20 µL. (’216 Patent, col. 1:25-26).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement. The factual basis for this claim includes Defendant's advertising of the PRECISION DROPPER as a "universal eye drop attachment" and its practice of selling the product in "bundles" with squeeze-type ophthalmic solution containers, which allegedly encourages and instructs customers to perform the infringing act of combining the attachment with a bottle. (Compl. ¶¶ 33-34, p. 10).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that Plaintiff provided Defendant with written notice of the ’216 patent on August 18, 2023, and that subsequent correspondence occurred. (Compl. ¶21). Continued infringement after this date is alleged to be willful. (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and literal infringement: Can the claim term "less than about 15 µL" be construed to read on a product that Defendant advertises as producing droplets of "12-16 ul"? The outcome will depend on the court's interpretation of the scope of "about" in the context of the patent and the factual evidence of the accused product's performance.
- A second central question will concern willfulness and damages: Given the complaint’s specific allegation of pre-suit notice, including the provision of the patent itself, the court will likely examine the nature of Defendant's conduct following that notice to determine if it meets the standard of objective recklessness required for enhanced damages.