DCT
2:23-cv-00289
Dao Health v. Chiaro Technology Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dao Health (California)
- Defendant: Chiaro Technology Limited (United Kingdom)
- Plaintiff’s Counsel: Susman Godfrey LLP; Ward, Smith & Hill, PLLC
- Case Identification: 2:23-cv-00289, E.D. Tex., 06/21/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant, as a foreign corporation not resident in the U.S., may be sued in any judicial district. The complaint also alleges substantial business contacts within the district, including sales, distribution through partners like Walmart and Target, and customer service activities.
- Core Dispute: Plaintiff alleges that Defendant’s Elvie Pump and Elvie Stride wearable breast pumps infringe two patents related to compact, hands-free breast milk collection devices designed to be worn inside a brassiere.
- Technical Context: The technology concerns wearable, discreet breast pumps, which represent a significant innovation over traditional, bulky pumping equipment by allowing users more freedom and mobility.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the asserted patents through multiple channels, including a 2017 trade show meeting between the companies' principals and Defendant’s subsequent citation of the patents-in-suit as prior art during the prosecution of its own U.S. patent applications.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-13 | Earliest Priority Date for ’915 and ’772 Patents (Provisional Filing) |
| 2009-01-01 | Plaintiff’s Freemie® system brought to market (approximate) |
| 2009-07-14 | U.S. Patent No. 7,559,915 Issues |
| 2012-02-21 | U.S. Patent No. 8,118,772 Issues |
| 2018-06-15 | Alleged date of Defendant’s knowledge of Asserted Patents |
| 2018-09-01 | Defendant’s Elvie Pump launched (approximate) |
| 2021-09-01 | Defendant’s Elvie Stride launched (approximate) |
| 2023-06-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,559,915 - "Breast Pump Device With Self-Contained Breast Milk Reservoir," issued July 14, 2009
The Invention Explained
- Problem Addressed: The patent describes conventional breast pumping systems as cumbersome, requiring mothers to undress in a private setting, and manually hold the equipment in place, which is disruptive, time-consuming, and limits multitasking (’915 Patent, col. 2:11-30).
- The Patented Solution: The invention is a compact breast milk collection device where both the breast-interfacing funnel (adaptor) and the milk container (reservoir) are integrated into a single, self-contained unit shaped to fit discreetly inside a woman's standard brassiere (’915 Patent, col. 5:6-16; Fig. 2). This integrated, in-bra design allows for hands-free operation, eliminating the need to disrobe or use external bottles for collection during pumping (’915 Patent, col. 7:32-37).
- Technical Importance: This approach sought to transform breast pumping from an isolated, stationary activity into one that could be integrated into a user's daily routine, promoting convenience and discretion (Compl. ¶¶15-16).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶32).
- The essential elements of claim 11 are:
- A funnel shaped breast adaptor.
- A reservoir with an internal volume to receive and store breast milk.
- The breast adaptor and reservoir forming a single unit adapted to fit within a woman’s brassiere.
- The internal volume is adapted to communicate with an external suction source that cyclically provides and relieves suction force.
- The complaint reserves the right to assert other claims (Compl. ¶33).
U.S. Patent No. 8,118,772 - "Breast Pump Device With Self-Contained Breast Milk Reservoir," issued February 21, 2012
The Invention Explained
- Problem Addressed: This patent addresses potential issues in wearable pumps, such as milk backflow into the vacuum pump and the need for more efficient suction. The background notes the tendency for milk to migrate into vacuum lines in some systems, which can contaminate the pump mechanism (’772 Patent, col. 3:35-42).
- The Patented Solution: The invention refines the in-bra pump concept by introducing a specific valve assembly positioned between the breast adaptor and the reservoir (’772 Patent, Abstract; Fig. 16). This valve assembly is designed to isolate the milk flow path from the vacuum source and creates a smaller, "reduced volume" for the pump to act upon, which can generate more efficient suction compared to pumping the entire reservoir volume (’772 Patent, col. 14:23-44; col. 18:50-65).
- Technical Importance: This design aims to improve the mechanical reliability and pumping efficiency of in-bra collection devices, particularly by preventing milk from contaminating the vacuum source (Compl. ¶43).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶44).
- The essential elements of claim 1 are:
- A breast adaptor with a first receiving end and a second end to receive a nipple.
- A reservoir coupled with and enclosing the adaptor to form a single unit supported by a brassiere.
- A valve assembly disposed between and surrounded by the adaptor and the reservoir, which alternately opens and closes fluid communication.
- The valve assembly creates a reduced volume that is less than the interior volume of the reservoir.
- The complaint reserves the right to assert other claims (Compl. ¶45).
III. The Accused Instrumentality
Product Identification
- The complaint names the "Elvie Pump" and the "Elvie Stride" as the accused instrumentalities (Compl. ¶33, ¶45).
Functionality and Market Context
- The Elvie Pump is described as a "slimline wearable electric breast pump [that] tucks discreetly in-bra," integrating the pump motor and milk reservoir into a single, wireless housing designed to be worn in a nursing bra (Compl. ¶¶18-19). A visual of the Elvie Pump shows its compact, all-in-one form factor (Compl. p. 7).
- The Elvie Stride is described as a "hands-free, hospital-grade performance electric breast pump" that uses collection cups worn inside a bra, which are connected via tubes to a separate, portable pump hub (Compl. ¶¶20-21). A visual provided in the complaint depicts the collection cups and the external control unit (Compl. p. 8).
- The complaint positions these products as direct competitors to Plaintiff's Freemie® system in the "femtech" market (Compl. ¶23).
IV. Analysis of Infringement Allegations
’915 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a funnel shaped breast adaptor... | The Elvie Pump and Elvie Stride devices each include a funnel shaped breast adaptor. | ¶36 | col. 7:10-14 |
| a reservoir, said reservoir having an internal volume... | The accused devices each include a reservoir with an internal volume to receive and store breast milk. | ¶36 | col. 7:10-14 |
| said breast adaptor and said reservoir forming a single unit adapted to fit within said woman's brassiere... | The breast adaptors and reservoirs of the accused devices are alleged to form a single unit that fits within a woman's brassiere. | ¶37 | col. 5:6-16 |
| said internal volume adapted to communicate with an external suction source, said external suction source adapted to cyclically provide suction force... | The internal volume of the accused devices' reservoirs is alleged to communicate with an external suction source that provides cyclical suction. | ¶38 | col. 11:20-24 |
Identified Points of Contention
- Scope Question: The infringement reading on the Elvie Pump, which has an integrated motor, raises a question about the scope of the term "external suction source". The defense may argue that an integrated motor is not "external," whereas the patent's primary embodiment depicts a physically separate pump connected by a hose (’915 Patent, Fig. 6). The case may turn on whether "external" is construed to mean external to the device housing or merely external to the milk-collection fluid path.
’772 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a breast adaptor having a first receiving end... the adaptor having a second end... | The Elvie Stride products are alleged to be breast milk collection devices comprising a breast adaptor with first and second ends. | ¶47 | col. 14:18-22 |
| a reservoir coupled with and enclosing the adaptor to form a single unit...the reservoir adapted to be supported by the brassiere... | The Elvie Stride products are alleged to comprise a reservoir coupled with the adaptor to form a single unit supported by a brassiere. | ¶48 | col. 14:23-28 |
| a valve assembly disposed between and surrounded by the adaptor and the reservoir, the valve assembly alternately opening and closing fluid communication... | The Elvie Stride products are alleged to include a valve assembly between the adaptor and reservoir that alternately opens and closes fluid communication. | ¶49 | col. 14:29-32 |
| the valve assembly creating a reduced volume...said reduced volume being less than said interior volume of said reservoir. | The valve assembly in the Elvie Stride is alleged to create a reduced volume that is smaller than the reservoir's total interior volume. | ¶50 | col. 14:33-36 |
Identified Points of Contention
- Technical Question: A central dispute will likely be whether the accused Elvie Stride contains a mechanism that meets the structural and functional requirements of the claimed "valve assembly". The complaint alleges that it does (Compl. ¶49), but the determination will depend on technical evidence regarding the accused product's internal operation and whether it truly creates a "reduced volume" for suction in the specific manner claimed by the patent.
V. Key Claim Terms for Construction
Term: "external suction source" (’915 Patent, Claim 11)
- Context and Importance: This term's construction is critical for the allegation against the Elvie Pump, where the motor is integrated into the wearable unit. The defendant will likely argue its integrated motor is internal, not external, and therefore does not meet this limitation.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff may argue that "external" should be interpreted as external to the fluid path of the milk, not necessarily requiring a separate physical housing. The claim language itself does not specify the degree of physical separation.
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently depicts the "external suction source" as a physically separate tabletop or manual pump (e.g., pump "12") connected by a vacuum hose ("50") (’915 Patent, Fig. 6, col. 8:30-43). The background also contrasts the invention with "table-top electric pump" systems, suggesting the inventors viewed the pump as a separate component (’915 Patent, col. 2:41).
Term: "valve assembly" (’772 Patent, Claim 1)
- Context and Importance: Practitioners may focus on this term because infringement of the ’772 patent hinges on whether the accused Elvie Stride incorporates a component that qualifies as the claimed "valve assembly", particularly one that creates a "reduced volume".
- Intrinsic Evidence for a Broader Interpretation: The claim broadly defines the assembly by its function: "alternately opening and closing fluid communication" and "creating a reduced volume" (’772 Patent, col. 14:29-36). A plaintiff could argue that any structure performing these functions infringes.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides detailed descriptions and figures of a specific "three-part valve assembly" comprising a valve body, valve cap, and valve flap (’772 Patent, col. 16:30-33; Figs. 16-21). A defendant may argue that the term "valve assembly" is implicitly limited to this more complex structure, or one with similar components, rather than any generic valve.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Chiaro induces infringement by providing customers with its products along with "promotional and marketing materials, supporting materials, instructions, product manuals, and/or technical information" that encourage and instruct users on how to use the devices in an infringing manner (Compl. ¶39, ¶53).
- Willful Infringement: The complaint makes detailed allegations to support willfulness. It claims Chiaro had actual knowledge of the patents no later than June 15, 2018, based on two primary events: (1) a 2017 trade show interaction where Chiaro's CEO was allegedly informed of the patents, and (2) Chiaro's subsequent citation to both asserted patents as prior art in Information Disclosure Statements filed with the USPTO during the prosecution of its own patents (Compl. ¶¶22-28).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents focused questions of claim scope and technical infringement, amplified by strong allegations of willfulness. The key questions for the court will likely be:
- A core issue will be one of definitional scope: Can the term "external suction source" from the ’915 patent, which the specification illustrates as a separate unit connected by a hose, be construed to read on the integrated motor housed within the body of the accused Elvie Pump?
- A key evidentiary question will be one of technical operation: Does the accused Elvie Stride contain a "valve assembly" that functions in the specific manner required by Claim 1 of the ’772 patent, namely by creating a "reduced volume" that is smaller than the main reservoir to enhance suction, or is there a fundamental mismatch in its mechanism of action?
- A pivotal driver of the litigation will be the question of willfulness: Do the specific allegations of pre-suit notice—including a personal meeting and citations in Defendant’s own patent filings—constitute the "wanton, egregious" conduct necessary for enhanced damages, potentially raising the financial stakes of the dispute significantly?