DCT

1:23-cv-10075

Nanobebe US Inc v. Mayborn Uk Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-10075, S.D.N.Y., 11/15/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant Mayborn USA is a New York corporation, and the foreign-based Mayborn defendants allegedly operate in concert with the U.S. entity and, as aliens, may be sued in any judicial district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its baby bottle products do not infringe Defendant's patent related to baby bottle nipple and collar design, and further seeks a declaration that the patent is unenforceable due to inequitable conduct during prosecution.
  • Technical Context: The technology concerns the design of baby bottle nipples and collars intended to more closely replicate the mechanics of natural breastfeeding and provide reliable air venting.
  • Key Procedural History: The parties are engaged in parallel litigation. Nanobebe previously filed a declaratory judgment action in the same court regarding two parent patents to the one asserted here. The complaint alleges that during the prosecution of the current patent-in-suit, Defendant Mayborn failed to disclose to the U.S. Patent and Trademark Office (USPTO) that the Patent Trial and Appeal Board (PTAB) had instituted inter partes review (IPR) proceedings challenging the validity of the parent patents, which allegedly share a nearly identical specification and similar claims. This alleged failure forms the basis of Plaintiff's inequitable conduct claim.

Case Timeline

Date Event
2004-06-29 Earliest Priority Date for ’680 Patent
2021-10-21 Nanobebe files first SDNY declaratory judgment action ('930 patent)
2021-12-27 Application for ’680 Patent filed
2022-01-13 Mayborn files counterclaims in first SDNY action ('930, '244 patents)
2022-07-26 Comotomo, Inc. files IPR petitions against parent patents
2023-01-13 Nanobebe files IPR petitions against parent patents
2023-04-11 Mayborn files Terminal Disclaimer in ’680 patent prosecution
2023-06-16 PTAB institutes review based on Nanobebe's IPR petitions
2023-08-10 Nanobebe receives notice of infringement accusation for ’680 patent
2023-08-22 Mayborn files infringement suit against Nanobebe's parent in E.D. Tex.
2023-08-22 U.S. Patent No. 11,730,680 issues
2023-09-06 Nanobebe receives Amazon infringement notice regarding ’680 patent
2023-11-15 Complaint for Declaratory Judgment filed

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

  • Patent Identification: U.S. Patent No. 11,730,680, "Baby Bottle with Flexible Nipple Regions," issued August 22, 2023. (Compl. ¶31).

  • The Invention Explained:

    • Problem Addressed: The patent's background section describes challenges with existing baby bottle teats, noting that some designs fail to "closely mimic the movement of the human breast during sucking" and that the point of flex can be "undefined and unpredictable" ( Compl. Ex. 1, ’680 Patent, col. 1:39-44). It also identifies issues with prior art venting systems, which can be frail or rely on inconsistent user-applied pressure when screwing the collar onto the bottle ( Compl. Ex. 1, ’680 Patent, col. 1:55-68, col. 2:1-8).
    • The Patented Solution: The invention claims to solve these problems through a nipple design featuring a dedicated "flex region" within the areola portion, which allows the teat to move in a way that provides a "more natural feeding action" ( Compl. Ex. 1, ’680 Patent, col. 2:11-16). This is achieved through features like "grooves or flex channels" that create defined thinned regions ( Compl. Ex. 1, ’680 Patent, col. 3:1-6). The overall shape of the nipple and collar assembly is described as being wide and domed to further mimic a natural breast ( Compl. Ex. 1, ’680 Patent, col. 4:5-8).
    • Technical Importance: The described approach sought to improve the infant feeding experience by creating a bottle teat that more accurately simulated the physical dynamics of breastfeeding, both in feel and function ( Compl. Ex. 1, ’680 Patent, col. 4:10-14).

  • Key Claims at a Glance:

    • The complaint identifies independent claims 1, 16, and 24 as being at issue (Compl. ¶35-43).
    • Independent Claim 1, for example, recites the following essential elements:
      • A baby bottle comprising a vessel and a removable assembly;
      • The assembly includes a nipple and a collar;
      • The nipple has a teat, a base, an areola portion, a flange, and an internal air vent;
      • The flange extends from a "substantially cylindrical lower portion of the base";
      • The nipple and collar together define a "breast shape" with a teat projecting from a "domed configuration" that extends to the "widest circumferential edge of the collar."
    • The complaint seeks a declaratory judgment of non-infringement for all claims of the patent (Compl. ¶34).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies Plaintiff's "Plastic Breastmilk Baby Bottle" and "Flexy Silicone Baby Bottle" as the "Accused Products" (Compl. ¶19, 21).
  • Functionality and Market Context: The complaint alleges the Nanobebe products feature innovative designs. The "Nanobebe Breast Milk Bottle" is described as having a concave bottom that spreads milk into a thin layer for faster and more even warming and cooling (Compl. ¶5). A provided visual shows the unique, wide, and shallow shape of this bottle. (Compl. p. 2, "Nanobebe Breast Milk Bottle"). The "Nanobebe Silicone Bottle" is described as having a design that creates a "continuous silicone surface area from the vessel to the aperture," ensuring milk only contacts silicone components (Compl. ¶6). The complaint notes the products have received media recognition and are sold through major online and retail channels (Compl. ¶5, 7-8).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. It describes Mayborn's infringement contentions (received via pre-suit claim charts) and presents Nanobebe's arguments for why its products do not meet the limitations of the asserted claims.

’680 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality (as disputed in the Complaint) Complaint Citation Patent Citation
wherein the nipple and collar together define a breast shape comprising a teat projecting from a domed configuration that extends outwardly and downwardly to a widest circumferential edge of the collar. Plaintiff asserts its products do not meet this limitation, stating the accused nipple and collar do not together form a "domed configuration" as defined by the patent's specification. ¶35 col. 7:9-12
wherein the flange extends from a substantially cylindrical lower portion of the base to define the outermost nipple circumference Plaintiff asserts its products do not meet this limitation because the relevant part of the accused product does not possess "a substantially cylindrical lower portion" from which a flange extends. ¶37 col. 7:4-6
  • Identified Points of Contention:
    • Scope Questions: A primary dispute will concern the interpretation of the patent's geometric and structural requirements. The case raises the question of whether the shapes of the accused Nanobebe bottles can be read upon by claim terms such as "domed configuration" and "substantially cylindrical lower portion," which Nanobebe alleges its products lack (Compl. ¶35, 37).
    • Technical Questions: An evidentiary question will be how Mayborn maps the components of the accused Nanobebe products to the claimed elements of a "nipple," "collar," "base," and "flange." The complaint suggests that under any plausible mapping, the required geometric relationships and structures are absent in the accused products (Compl. ¶35-37).

V. Key Claim Terms for Construction

  • The Term: "domed configuration"

    • Context and Importance: This term appears in all three asserted independent claims (1, 16, and 24) and is a central point of dispute. Plaintiff repeatedly argues that its products do not have the claimed "domed configuration" (Compl. ¶35, 38, 41). The outcome of the infringement analysis may depend heavily on the scope afforded to this geometric descriptor.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the shape in general terms, stating the base portion is "shaped like a breast and having a wide, domed configuration" (Compl. Ex. 1, ’680 Patent, col. 4:6-8). This language could suggest that any generally convex, breast-like shape falls within the claim scope.
      • Evidence for a Narrower Interpretation: The patent figures, particularly Figure 4, depict a specific, smooth, and broadly curved dome shape. A party could argue the term should be limited to the embodiments shown. The specification also refers to a specific "downwardly domed peripheral portion 134" as part of the collar assembly, potentially tying the term to a specific structure (Compl. Ex. 1, ’680 Patent, col. 4:61-63).

  • The Term: "substantially cylindrical lower portion" (of the base)

    • Context and Importance: Plaintiff specifically disputes that its products contain this feature, making its construction critical for Claim 1 (Compl. ¶37). The presence of this structure is a prerequisite for the claimed flange element.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The word "substantially" expressly allows for some deviation from a perfect cylinder, suggesting the term should not be interpreted with mathematical rigidity.
      • Evidence for a Narrower Interpretation: The claims require this portion to be part of the "base" from which the "flange extends" (Compl. Ex. 1, ’680 Patent, col. 7:4-6). Figure 4 shows a distinct cylindrical portion (132) of the screw collar, which may be argued to define the required structure and limit the term's scope to a similar feature (Compl. Ex. 1, ’680 Patent, col. 4:60-63).

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a judgment of non-infringement "directly or indirectly" but does not provide specific facts for analysis regarding any theory of indirect infringement (Compl. ¶34).
  • Inequitable Conduct: The complaint includes a claim for a declaratory judgment that the ’680 patent is unenforceable due to inequitable conduct (Compl. ¶46-80). The allegations state that Defendant Mayborn and its prosecution counsel had an affirmative duty of candor to the USPTO (Compl. ¶48). The complaint alleges that counsel knew of, but did not disclose, PTAB decisions instituting IPRs against two parent patents ('244 and '930), which share an identical specification with the ’680 patent (Compl. ¶54, 61, 70). This omission is alleged to be material to patentability and to have been made with a specific intent to deceive the USPTO, particularly since counsel allegedly disclosed other, more favorable IPR-related documents in the same prosecution (Compl. ¶67-68).

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

  • A core issue will be one of geometric scope: Can the term "domed configuration," as described and depicted in the ’680 patent, be construed to read on the physical shape of Nanobebe’s accused bottle and nipple assemblies? The resolution of this and other claim construction questions may be dispositive of the non-infringement claim.
  • A second central question will be one of inequitable conduct: Does the alleged failure by Mayborn's counsel to disclose the adverse PTAB institution decisions against parent patents to the USPTO examiner—while allegedly disclosing other, more favorable litigation documents—constitute a material omission made with an intent to deceive, which would render the entire ’680 patent unenforceable?