DCT
2:25-cv-00103
Safe Solar v. nCAP Holdings
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Safe Solar, L.C. (Utah)
- Defendant: nCAP Holdings, LLC; nCAP Licensing LLC; nCAP Medical, LLC (all Utah)
- Plaintiff’s Counsel: Parsons Behle & Latimer
- Case Identification: 2:25-cv-00103, D. Utah, 02/12/2025
- Venue Allegations: Venue is alleged to be proper as all parties are Utah limited liability companies with principal places of business in Utah.
- Core Dispute: Plaintiff seeks a declaratory judgment that its pain relief patch products do not infringe three of the Defendants' patents related to techniques for pain relief using reactive capacitance materials.
- Technical Context: The technology concerns wearable patches designed to alleviate pain by interacting with the body's nervous system through non-invasive electrical or capacitive means.
- Key Procedural History: Plaintiff alleges that Defendants have accused it and its licensee, Signal Relief, Inc., of patent infringement through direct communications and in statements made during a separate Chapter 11 Bankruptcy proceeding involving Signal Relief. These actions are presented as creating the actual and justiciable controversy required for this declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2010-11-22 | Earliest Priority Date for all Patents-in-Suit ('570, '985, '761) |
| 2020-07-07 | U.S. Patent No. 10,707,570 Issued |
| 2022-07-05 | U.S. Patent No. 11,380,985 Issued |
| 2024-04-23 | U.S. Patent No. 11,967,761 Issued |
| 2025-02-12 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,707,570 - "Techniques for pain relief" (Issued July 7, 2020)
The Invention Explained
- Problem Addressed: The patent's background describes conventional pain relief methods, such as chemical-based techniques (e.g., opioids) and electrical stimulation (e.g., TENS), as being potentially problematic due to negative side effects, addictiveness, or interference with the body's natural healing processes ('570 Patent, col. 4:35-49).
- The Patented Solution: The invention is a passive patch for pain relief that uses a "reactive capacitance material" ('570 Patent, Abstract). This material is composed of conductive particles suspended in a non-conductive binder in such a way that most particles are very close but do not physically touch ('570 Patent, col. 6:59-63). The patent posits that when placed on the body, this material enhances the communication of the body's own nerve impulses, which "may better enable the brain to assist in the body's natural healing processes" and resolve pain ('570 Patent, col. 9:32-42). The layered structure of the patch is illustrated in Figure 2 ('570 Patent, Fig. 2).
- Technical Importance: The invention purports to offer a non-invasive, drug-free method of pain relief that works with the body's nervous system rather than by chemically interrupting or electrically overpowering its signals ('570 Patent, col. 9:35-42).
Key Claims at a Glance
- The complaint asserts non-infringement of "one or more claims" (Compl. ¶25). The independent claims are Claim 1 (a method of using a patch) and Claim 13 (the patch itself).
- Independent Claim 13 (Patch) Elements:
- a first non-conductive outer layer;
- a reactive capacitance layer;
- a second non-conductive outer layer;
- wherein the reactive capacitance layer is disposed between the outer layers to encase and electrically isolate it;
- wherein the patch is a passive device; and
- wherein the reactive capacitance layer is formed of a material comprising conductive particles in a binder where "at least a majority of the conductive particles are adjacent to, but do not touch, one another."
- The complaint does not explicitly reserve the right to assert non-infringement of dependent claims, but refers generally to "any claim" of the patent (Compl. ¶26).
U.S. Patent No. 11,380,985 - "Techniques for pain relief" (Issued July 5, 2022)
The Invention Explained
- Problem Addressed: As a continuation of the '570 Patent, the '985 Patent addresses the same technical problem: the need for safer and more effective pain relief techniques that avoid the drawbacks of existing chemical and electrical methods ('985 Patent, col. 4:44-55).
- The Patented Solution: The solution is identical to that described in the '570 Patent: a passive patch containing a reactive capacitance material. This material consists of conductive particles dispersed in a binder such that they are closely adjacent but non-touching, which is theorized to enhance nerve communication and facilitate natural pain resolution ('985 Patent, Abstract; col. 9:26-36).
- Technical Importance: The technology proposes a non-invasive and reusable method to manage pain by passively interacting with the body's electrical system, distinct from active stimulation or pharmaceutical approaches ('985 Patent, col. 9:51-57).
Key Claims at a Glance
- The complaint asserts non-infringement of "one or more claims" (Compl. ¶31). The independent claims are Claim 1 (a method of using a patch) and Claim 13 (the patch itself).
- Independent Claim 13 (Patch) Elements: The elements are substantively identical to Claim 13 of the '570 Patent, requiring a passive patch with a reactive capacitance layer composed of conductive particles in a binder where "at least a majority of the conductive particles are adjacent to, but do not touch, one another" ('985 Patent, cl. 13).
- The complaint refers to "any claim" of the '985 Patent (Compl. ¶32).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 11,967,761, "Techniques for pain relief," Issued April 23, 2024.
- Technology Synopsis: As a continuation in the same family, the '761 patent describes the same technology. It is directed to a pain relief patch that includes a "reactive capacitance layer" configured to capacitively interact with the body, which is based on the same principle of using adjacent, non-touching conductive particles to enhance nerve signaling and aid the body's natural healing processes ('761 Patent, Abstract; col. 5:1-14).
- Asserted Claims: The complaint asserts non-infringement of "one or more claims" (Compl. ¶37). The independent claims are Claim 1 (a method of using a patch) and Claim 14 (the patch itself).
- Accused Features: Plaintiff alleges that its products do not infringe because they do not meet the limitation of having "the reactive capacitance layer" as required by the claims of the '761 Patent (Compl. ¶39).
III. The Accused Instrumentality
- Product Identification: Plaintiff’s "application patch products and the related technology," which are sold under the "Nio" brand and also licensed to third parties such as Signal Relief, Inc. (Compl. ¶¶3, 17).
- Functionality and Market Context: The complaint describes the products as "application patch products... used to assist with human and animal pain relief" (Compl. ¶3). It does not provide specific technical details on the microstructure or mechanism of operation for the Nio products. Instead, it focuses the allegations on what the products are not, asserting they do not possess the specific structural characteristics required by the patents-in-suit (Compl. ¶¶27, 33, 39). The complaint notes that these products are sold independently and licensed, and that Defendants' infringement allegations have threatened Plaintiff's business and royalty arrangements (Compl. ¶¶3, 5, 18).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'570 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first non-conductive outer layer; a reactive capacitance layer; and a second non-conductive outer layer, wherein the reactive capacitance layer is disposed between the first non-conductive outer layer and the second non-conductive outer layer so as to encase and electrically isolate the reactive capacitance layer | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 13:16-29 |
| wherein the patch is a passive device | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 13:20-21 |
| wherein the reactive capacitance layer is formed of a reactive capacitance material comprising conductive particles dispersed in a binder so that at least a majority of the conductive particles are adjacent to, but do not touch, one another | Plaintiff's products and technology do not have conductive particles dispersed in a binder in a manner where a majority are "adjacent to, but do not touch, one another" as required by the claims. | ¶27 | col. 13:30-34 |
'985 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first non-conductive outer layer; a reactive capacitance layer; and a second non-conductive outer layer, wherein the reactive capacitance layer is disposed between the first non-conductive outer layer and the second non-conductive outer layer so as to encase and electrically isolate the reactive capacitance layer | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 14:15-23 |
| wherein the reactive capacitance layer is formed of a reactive capacitance material comprising conductive particles dispersed in a binder so that at least a majority of the conductive particles are adjacent to, but do not touch, one another | Plaintiff's products and technology do not have conductive particles dispersed in a binder in a manner where a majority are "adjacent to, but do not touch, one another" as required by the claims. | ¶33 | col. 14:24-29 |
- Identified Points of Contention:
- Factual Question: The central dispute is a factual one regarding the microstructure of Plaintiff's Nio products. The case will depend on evidence (e.g., microscopy, materials analysis) establishing whether the conductive particles in Plaintiff's products are arranged in the specific "adjacent, but do not touch" configuration claimed by the patents.
- Scope Questions: The interpretation of key phrases will be critical. The dispute raises the question of what degree of proximity and separation is meant by "adjacent to, but do not touch." Furthermore, the term "at least a majority" suggests a quantitative threshold that may require definition and a method for measurement.
V. Key Claim Terms for Construction
The Term: "conductive particles dispersed in a binder so that at least a majority of the conductive particles are adjacent to, but do not touch, one another"
Context and Importance: This limitation appears in the independent claims of both the '570 and '985 patents and is the sole basis for non-infringement articulated in the complaint for those patents (Compl. ¶¶27, 33). The definition of this entire phrase—particularly "adjacent to, but do not touch"—will determine the scope of the claims and is therefore central to the dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the particles as being "closely adjacent" and "capacitively coupled," which might suggest that some degree of variability in spacing is contemplated as long as direct electrical contact is avoided ('570 Patent, col. 6:60-66). The term "adjacent" is not given a precise numerical definition, which may support a more flexible reading.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes that the particles "do not touch" and that this arrangement is unlike conventional conductive inks that "create conductive paths" ('570 Patent, col. 7:7-11). The abstract itself recites the "do not touch" requirement, suggesting its centrality. Defendants may argue that Figure 1, a micrograph of "diluted paint," is a defining example of the required structure, potentially narrowing the claim to arrangements that visually conform to that depiction ('570 Patent, Fig. 1; col. 8:12-16).
The Term: "the reactive capacitance layer"
Context and Importance: This is the key term from the '761 patent that Plaintiff alleges its products lack (Compl. ¶39). Its construction is critical because the infringement allegation for the '761 patent hinges entirely on whether Plaintiff's products contain this specific layer.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional ("configured to capacitively interact with the body"), which could support an interpretation based on the layer's function rather than solely its structure ('761 Patent, cl. 14).
- Evidence for a Narrower Interpretation: The patent family specification, which applies to the '761 Patent, explicitly defines the "reactive capacitance layer" as being "formed of a reactive capacitance material" which, in turn, is defined by the "adjacent, but do not touch" particle structure ('570 Patent, col. 1:65-col. 2:4). This suggests the term "reactive capacitance layer" is not a generic functional description but is inextricably linked to the specific microstructure described in the '570 and '985 patents, meaning the dispute over this term will likely resolve to the same factual question as for the other patents.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement by the Plaintiff. As a declaratory judgment action, it instead requests that the court find the case "exceptional" under 35 U.S.C. § 285 based on the Defendant's alleged conduct in asserting its patents (Compl., Prayer for Relief ¶B).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on a single, dispositive issue that is both a question of law and a question of fact. The key questions for the court will likely be:
- A primary issue will be one of claim construction: What is the precise legal meaning of the phrase "at least a majority of the conductive particles are adjacent to, but do not touch, one another"? This will involve defining the required proximity, separation, and the quantitative measure of "a majority."
- The ultimate question will be one of factual determination: Based on expert and scientific evidence, does the physical microstructure of Plaintiff's "Nio" products fall within the scope of the key claim limitations as construed by the court? The resolution of this factual question will likely determine the outcome for all three patents-in-suit.