DCT
3:22-cv-00623
Oralic Supplies Inc v. Jiang Huang
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Oralic Supplies Inc. (California)
- Defendant: Jiang Huang (China)
- Plaintiff’s Counsel: Fox Rothschild LLP
- Case Identification: 3:22-cv-00623, E.D. Va., 09/13/2022
- Venue Allegations: Plaintiff alleges venue is proper because a substantial portion of the events giving rise to the claim, namely Defendant's infringement assertions directed at products sold in the district, occurred in or were directed at the forum.
- Core Dispute: This is a declaratory judgment action in which Plaintiff seeks a declaration that its replacement electric toothbrush heads do not infringe Defendant’s patent and/or that the patent is invalid.
- Technical Context: The technology concerns the mechanical interface used to connect a disposable electric toothbrush head to the handle's vibrating core, aiming to ensure a secure and stable fit.
- Key Procedural History: The dispute arose after Defendant submitted an infringement report to Amazon.com concerning Plaintiff's product. After Plaintiff’s counsel sent a letter demanding withdrawal of the complaint and received no response, Plaintiff filed this action. The complaint notes that the accused product has been on sale since 2014, a fact central to its invalidity contentions.
Case Timeline
| Date | Event |
|---|---|
| 2014-09-17 | Plaintiff's Accused Product ('IMW ASIN') first available for sale |
| 2021-09-18 | Priority Date for U.S. Patent No. 11,253,052 |
| 2022-02-22 | U.S. Patent No. 11,253,052 Issues |
| 2022-08-26 | Defendant notifies Amazon of alleged infringement |
| 2022-08-27 | Plaintiff's counsel sends demand letter to Defendant's counsel |
| 2022-09-13 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,253,052 - "Electrical Toothbrush Head in Secure Contact Engagement with Vibration Core"
- Patent Identification: U.S. Patent No. 11,253,052, issued February 22, 2022.
The Invention Explained
- Problem Addressed: The patent’s background section identifies a problem in the prior art where the connection between an electric toothbrush head and the handle’s vibration core may not be “stable and secure,” which can negatively affect the transmission of vibration to the bristles (’052 Patent, col. 1:43-48).
- The Patented Solution: The invention discloses an “insertion piece” within the toothbrush head containing an “elastic bar.” This bar is designed with a fixed upper end and a movable lower end, allowing it to flex. When the handle's vibration core is inserted, it pushes against both the elastic bar and an opposing surface, creating a secure, spring-like clamping force that holds the core firmly in place (’052 Patent, Abstract; col. 5:20-34). An “elastic filler block” is also described, which compresses upon assembly to further secure the connection (’052 Patent, col. 6:8-19).
- Technical Importance: The claimed configuration seeks to provide a more reliable and firm mechanical coupling, ensuring efficient transfer of high-frequency vibrations from the handle to the brush head for effective cleaning (’052 Patent, col. 1:49-54).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement and invalidity for all claims (1-10), with a focus on independent claim 1, on which all other claims depend (Compl. ¶20, ¶33).
- Independent Claim 1 requires, among other elements:
- An insertion piece with a core channel and a “sideway slot.”
- An “elastic bar that is integrally formed as one piece and elastically swingable” arranged in the slot.
- The elastic bar has an “upper end” that is “fixedly connected” and a “lower end” that is “arranged in a movable manner.”
- The elastic bar has a “middle portion that bulges and curves toward the core channel.”
- An outside surface of the curved section defines a “curved trough” that is “completely filled with a single-piece elastic filler block” in a “compressed state.”
- The complaint expressly reserves the right to assert additional grounds for non-infringement and invalidity (Compl. ¶29, ¶42).
III. The Accused Instrumentality
Product Identification
- The accused product is the “Brushmo Replacement Toothbrush Heads Compatible with Sonicare Electric Toothbrush Pack,” identified by Amazon Standard Identification Number (ASIN) B00NN07IMW (the “IMW ASIN”) (Compl. ¶10).
Functionality and Market Context
- The IMW ASIN is a third-party replacement head for electric toothbrushes sold primarily on Amazon.com (Compl. ¶9). The complaint alleges the product consists of a main toothbrush head and a separate, “removable coupling member” that interfaces with the toothbrush handle (Compl. ¶24). The complaint includes a photograph showing the two-piece construction of the accused product (Compl. p. 9). The plaintiff characterizes the product as readily available and inexpensive (Compl. ¶28).
IV. Analysis of Infringement Allegations
The complaint provides a detailed basis for its request for a declaration of non-infringement, focusing on structural differences between the accused product and the requirements of Claim 1.
- Claim Chart Summary:
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elastic bar that is integrally formed as one piece and elastically swingable being arranged in the sideway slot | The accused product’s coupling member does not include an elastic bar. It has walls that are alleged to be fixed at both ends and thus immovable. | ¶25, ¶26 | col. 10:16-19 |
| an upper end of the elastic bar being fixedly connected to the sidewall of the insertion piece, a lower end of the elastic bar being arranged in a movable manner | The walls of the accused coupling member are alleged to be fixed on both ends, not having one fixed end and one movable end. | ¶26 | col. 10:20-24 |
| the elastic bar having a middle portion that bulges and curves toward the core channel to form a curved section | The complaint alleges there is no portion of the accused coupling member's wall or bar that both bulges and curves toward the center core or channel. A photograph of the coupling member is provided to illustrate its allegedly uniform structure. | ¶25, ¶26 | col. 10:29-32 |
| an outside surface of the curved section surrounding and defining a curved trough, the curved trough being completely filled with a single-piece elastic filler block... being in a compressed state | The complaint’s argument focuses on the absence of the elastic bar itself, which implies the absence of features associated with that bar, such as the curved trough and filler block. | ¶23-¶26 | col. 10:47-54 |
- Identified Points of Contention:
- Scope Questions: The central dispute appears to be a question of scope: does the term “elastic bar,” as defined in the patent with a fixed upper end and movable lower end, read on the accused product’s coupling member, which is alleged to be a more rigid structure with walls fixed at both ends? (Compl. ¶26).
- Technical Questions: A key technical question is whether the accused coupling member functions in the manner required by the claim. The complaint alleges that its structure, shown in close-up photographs, is "immovable" and does not have a portion that "bulges and curves toward the center core or channel," raising the question of whether it can perform the claimed elastic deformation. (Compl. ¶26).
V. Key Claim Terms for Construction
The Term: "elastic bar"
Context and Importance: This term is the crux of the non-infringement argument. The plaintiff contends its product lacks this element entirely (Compl. ¶23). The construction of this term—specifically what it means for a bar to be "elastically swingable" with one "movable" end—will likely be dispositive for infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader scope might contend that any flexible wall or member that provides a clamping force could qualify as an "elastic bar." The general purpose is to secure the vibration core, a function the accused product also performs.
- Evidence for a Narrower Interpretation: The claim language itself provides significant structural limitations, requiring the bar to be "integrally formed," "elastically swingable," have an "upper end... fixedly connected" and a "lower end... arranged in a movable manner" (’052 Patent, col. 10:16-24). The specification further describes that the bar "may undergo elastic swinging by taking the upper end thereof as a swing position" (’052 Patent, col. 5:29-32). Patent Figure 7, which is reproduced and annotated in the complaint, depicts this specific cantilever-like structure, supporting a narrower construction limited to this configuration (Compl. p. 8).
The Term: "a sideway slot penetrating to outside of the insertion piece and the core channel"
Context and Importance: The plaintiff raises a validity challenge under 35 U.S.C. § 112, arguing this term is indefinite because a "slot (or empty space)" cannot logically "penetrate" anything (Compl. ¶34). Practitioners may focus on this term as a potential, albeit perhaps secondary, line of attack on the patent's validity.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., supporting validity): A patentee would likely argue that in the context of mechanical arts, "penetrating to" is well-understood by a person of ordinary skill to mean forming a passage or opening that extends through or connects different regions. The specification supports this by describing the "sideway slot 102" as being located "in a sidewall" of the insertion piece (’052 Patent, col. 5:20-22).
- Evidence for a Narrower Interpretation (i.e., supporting invalidity/indefiniteness): The plaintiff's argument relies on a literal interpretation of the word "penetrate," suggesting its application to an "empty space" is nonsensical and fails to inform a skilled artisan of the claim's scope with reasonable certainty (Compl. ¶34).
VI. Other Allegations
- Willful Infringement: The complaint makes allegations regarding the patentee's (Defendant's) conduct in asserting the '052 Patent. Plaintiff alleges that Defendant either failed to conduct a reasonable pre-suit investigation or knowingly asserted a baseless infringement claim, given that the accused product is inexpensive, readily available for inspection, and allegedly lacks key claim elements (Compl. ¶28). These allegations form the basis for Plaintiff's request for a finding that the case is "exceptional" and an award of attorneys' fees under 35 U.S.C. § 285 (Compl. ¶28; Prayer for Relief (d), (e)).
- Invalidity: The complaint advances invalidity defenses under 35 U.S.C. §§ 102, 103, and 112 (Compl. ¶33). It specifically identifies the accused IMW ASIN product, on sale since 2014, and U.S. Patent No. 9,724,180 as prior art that allegedly anticipates or renders obvious the claims of the '052 Patent, which has a 2021 priority date (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of claim construction and infringement: Can the term "elastic bar", which is described in the patent as an "elastically swingable" structure with one fixed and one "movable" end, be construed to cover the accused product's coupling member, which is alleged to possess walls that are fixed and immovable at both ends?
A critical question for validity will be whether the accused product itself, the IMW ASIN, which has allegedly been on sale since 2014, constitutes invalidating prior art under the on-sale bar of 35 U.S.C. § 102 against the '052 Patent and its 2021 priority date.
The case presents a procedural and tactical question regarding the patentee’s enforcement conduct: Did the Defendant’s infringement complaint to Amazon, allegedly made without a reasonable pre-suit investigation into a readily available product, constitute conduct that renders this case exceptional under 35 U.S.C. § 285?