DCT
3:25-cv-01231
Shinrin Yoku Traders LLC v. Koncept Innovators LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shinrin-Yoku Traders LLC d.b.a. Itus Mouthguardz (Oregon)
- Defendant: Koncept Innovators, LLC (South Carolina)
- Plaintiff’s Counsel: Hatch Law, PC; Phillips Lex
- Case Identification: 3:25-cv-01231, D. Or., 07/14/2025
- Venue Allegations: Plaintiff alleges venue is proper in the District of Oregon because Defendant directed an "extra-judicial patent enforcement attack" against the Plaintiff, an Oregon resident, through a complaint filed with Amazon.com.
- Core Dispute: Plaintiff seeks a declaratory judgment that its mouthguard products do not infringe Defendant's patent related to adjustable mandibular advancement devices.
- Technical Context: The technology concerns mandibular advancement devices, a type of mouthguard designed to reposition a user's lower jaw to prevent snoring and improve breathing.
- Key Procedural History: This declaratory judgment action was precipitated by Defendant's complaint to Amazon.com, filed under Amazon's Patent Evaluation Express (APEX) Procedure, accusing Plaintiff's products of infringement. Plaintiff filed this lawsuit in response to a notice from Amazon, which gave Plaintiff the option to file suit to prevent its product listings from being removed.
Case Timeline
| Date | Event |
|---|---|
| 2017-01-26 | '478 Patent Earliest Priority Date |
| 2024-06-04 | '478 Patent Issue Date |
| 2025-06-25 | Defendant files complaint against Plaintiff with Amazon.com |
| 2025-06-26 | Plaintiff receives notice of infringement claim from Amazon.com |
| 2025-07-14 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,998,478 - "Mandibular Advancement Device"
- Patent Identification: U.S. Patent No. 11,998,478, “Mandibular Advancement Device,” issued June 4, 2024. (Compl. ¶7).
The Invention Explained
- Problem Addressed: The patent describes prior art mandibular advancement devices as being difficult for users to adjust, often requiring removal from the mouth or significant dexterity. ( '478 Patent, col. 1:52-64). Other designs that rely on friction can become ineffective due to saliva, and some are uncomfortably thick. ('478 Patent, col. 2:1-10).
- The Patented Solution: The invention is a two-piece (upper and lower frame) device that allows for in-mouth adjustment. The core mechanism involves a protruding "rib" on one frame that is designed to "snap" into a corresponding "channel" on the other frame when the user bites down. ('478 Patent, col. 6:15-25; Abstract). This snap-fit engagement is intended to lock the two frames in a desired position of advancement without relying on friction. ('478 Patent, col. 2:30-34).
- Technical Importance: The design purports to offer a device that is easily adjustable by the user while being worn and can be reliably secured in various positions to optimize comfort and effectiveness. ('478 Patent, col. 2:15-25).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement as to all claims of the ’478 Patent, with specific arguments directed at elements in independent claims 1, 9, and 15. (Compl. ¶26).
- Independent Claim 1:
- A mandibular advancement device with a first and second frame.
- The first frame has a first and second sidewall.
- A "rib between the first and second sidewall."
- The second frame has a "channel ... disposed in relative position to snappingly receive the rib."
- Independent Claim 9:
- A device with a first and second frame.
- The first frame has "a first rib ... having a narrower portion and a wider portion."
- The second frame has "a first channel ... in relative position to interface with the first rib."
- The frames can be squeezed together so the rib "snaps into the first channel."
- Independent Claim 15:
- A device with a first and second frame.
- The first frame has "a first locking member of first set of upstanding sidewalls."
- The second frame has "a first mating locking member ... dimensioned in relative proportions and disposed in relative position to receive the first locking member."
III. The Accused Instrumentality
Product Identification
- The "Itus mouthguards," which are available in large, medium, and small sizes and sold in transparent and blue colors. (Compl. ¶¶ 20, 22).
Functionality and Market Context
- The complaint describes the accused products as mouthguards sold by Plaintiff Itus primarily through its storefront on Amazon.com. (Compl. ¶¶ 4, 22). The products are depicted in several photographs. Image 1 shows a complete mouthguard in a closed, assembled position. (Compl. ¶17). Images 2a and 2b show the upper tray from different angles, and Images 3a and 3b similarly show the lower tray. (Compl. ¶¶ 18, 19).
- Plaintiff alleges that its Amazon.com sales constitute a "substantial amount" of its business, and that the Defendant's infringement accusations threaten to terminate its ability to sell on the platform, which would "severely damage" its business. (Compl. ¶¶ 13, 23).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the Plaintiff's primary arguments for why its products do not meet the limitations of the asserted claims.
U.S. Patent No. 11,998,478 Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Non-Infringement Contention | Complaint Citation | Patent Citation |
|---|---|---|---|
| a rib between the first and second sidewall, the rib parallel to the first and second sidewalls and having a top that is narrower than a middle | Plaintiff alleges that its mouthguards lack the claimed "rib" structure entirely. | ¶26 | col. 9:6-9 |
| a channel of the second occlusal surface disposed in relative position to snappingly receive the rib | As Plaintiff alleges its products lack a "rib," it follows that they would also lack the corresponding channel designed to "snappingly receive" it. | ¶26 | col. 9:15-17 |
- Identified Points of Contention:
- Factual Question: The central dispute is factual: do the accused Itus mouthguards, as shown in Images 1-3b, contain physical structures that meet the definitions of a "rib," a "locking member," or a corresponding "channel" as required by the independent claims? (Compl. ¶¶ 17-19, 26). The complaint's primary assertion is a complete absence of these claimed features.
- Scope Questions: The case will depend heavily on the construction of key claim terms. The question for the court will be whether any feature of the Itus product can be considered a "rib" or "locking member" under the legally construed meaning of those terms.
V. Key Claim Terms for Construction
The Term: "rib"
Context and Importance: This term appears in independent claims 1 and 9 and is central to the dispute. Plaintiff's non-infringement argument for claims 1-14 is predicated on the assertion that its products "lack such a rib." (Compl. ¶26). The construction of this term will therefore be a critical threshold issue.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope may point to the general use of the term and the functional language in the claims, such as the channel being configured to "snappingly receive the rib," suggesting the term could cover any protrusion that performs this locking function. ('478 Patent, cl. 1).
- Evidence for a Narrower Interpretation: The specification provides a specific description, stating that "The ribs 21 are illustrated in the attached drawings as an elongated cylinder on a pillar." ('478 Patent, col. 5:1-3). Furthermore, Claim 1 requires the rib to have "a top that is narrower than a middle," and Figure 10 shows this specific profile. ('478 Patent, cl. 1; Fig. 10). This language may support a narrower construction limited to the specific shapes and profiles disclosed.
The Term: "locking member"
Context and Importance: This term is the basis for Plaintiff's non-infringement argument for claims 15-20. (Compl. ¶26). Its definition is essential for determining infringement of the patent's third independent claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "locking member" is a generic term for any component that secures the two frames, distinct from the more specific "rib." Claim 15 recites the term without the detailed geometric constraints applied to the "rib" in Claim 1. ('478 Patent, cl. 15).
- Evidence for a Narrower Interpretation: The specification appears to use "rib" and "locking member" to refer to the same structure. For instance, the function of the "locking member" in Claim 15—being received by a "mating locking member"—mirrors the function of the "rib" being received by a "channel." ('478 Patent, cl. 1, 15). A party may argue that "locking member" should be construed as being coextensive with the disclosed "rib" structure.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general denial of any direct or indirect infringement. (Compl. ¶¶ 29, 30). As a declaratory judgment action, it does not plead facts that would support such a claim.
- Willful Infringement: Not applicable. However, the Plaintiff alleges that the Defendant's conduct in filing a "wrongful" and "baseless" complaint with Amazon constitutes an "exceptional case" under 35 U.S.C. § 285, entitling Plaintiff to attorneys' fees. (Compl. ¶¶ 25, 43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: How will the court construe the terms "rib" and "locking member"? Will the construction be limited to the specific cylindrical-on-a-pillar structure with a narrow top shown in the patent's figures, or will it encompass a broader range of protruding features that perform a locking function?
- A key evidentiary question will be one of structural presence: Based on the construed claims, does a physical examination of the accused Itus mouthguards reveal any structure that meets the requirements of a "rib" or "locking member"? The complaint's categorical denial of the presence of these elements sets up a direct factual conflict that will likely require expert testimony to resolve.
- A third question relates to enforcement conduct: Did the Defendant's use of Amazon's APEX procedure to accuse the Plaintiff of infringement, just weeks after its patent issued, constitute conduct so baseless as to render the case "exceptional" under 35 U.S.C. § 285?