DCT

2:23-cv-00631

Shenzhen Root Technology Co Ltd v. Chiaro Technology Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00631, W.D. Wash., 06/02/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant contractually agreed to the jurisdiction and venue of courts in Seattle, Washington for disputes arising from an Amazon Patent Evaluation Express (APEX) proceeding, which is central to this case.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its wearable breast pumps do not infringe Defendant’s patent and that the patent is invalid, following Defendant’s successful use of an Amazon dispute process to have Plaintiff’s products delisted.
  • Technical Context: The technology involves self-contained, wearable electric breast pumps, a consumer product category focused on providing users with discretion and mobility.
  • Key Procedural History: The complaint states that Defendant initiated an Amazon APEX proceeding, resulting in the delisting of Plaintiff’s flagship S12 Pro product. Plaintiff alleges this lawsuit is necessary to challenge the APEX outcome. The complaint also details the prosecution history of the asserted patent, noting that the key claim limitation at issue was added to overcome a prior art rejection, which may raise issues of prosecution history estoppel.

Case Timeline

Date Event
2017-06-15 Earliest Priority Date for ’893 Patent
2019-Early Momcozy enters the U.S. breast pump market
2021-03-16 ’893 Patent's underlying U.S. application filed
2022-06-14 ’893 Patent Issued
2022-06 Defendant sends cease-and-desist letter to Plaintiff
2022-11-08 Plaintiff launches S12 Pro breast pump
2023-02-01 Defendant initiates Amazon APEX proceeding
2023-04-25 Amazon delists Plaintiff's S12 Pro product
2023-06-02 Amended Complaint for Declaratory Judgment filed

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

U.S. Patent No. 11,357,893 - "Breast Pump System"

  • Patent Identification: U.S. Patent No. 11,357,893, "Breast Pump System", issued June 14, 2022.

The Invention Explained

  • Problem Addressed: The patent describes prior art breast pumps as often being cumbersome, requiring users to be tethered to a power source, and utilizing specialized bras, which limits discrete use ('893 Patent, col. 1:40-2:6). Even more modern, integrated systems are described as complex, sometimes using wasteful collection bags and noisy pumping arrangements ('893 Patent, col. 2:7-44; Compl. ¶7).
  • The Patented Solution: The invention is a self-contained, "wearable breast pump system" designed to fit inside a standard bra. It features a housing containing a quiet piezo air-pump which operates a "separate, deformable diaphragm" to generate negative pressure for milk expression ('893 Patent, Abstract). This integrated design, with its key components contained in the housing (as depicted in '893 Patent, Fig. 3), aims to provide a more discrete, convenient, and easy-to-clean solution than the prior art (Compl. ¶¶7, 9).
  • Technical Importance: The invention seeks to improve user convenience and discretion in the personal-use medical device field by integrating all necessary components into a single, quiet, wearable unit ('893 Patent, col. 2:10-17).

Key Claims at a Glance

  • The complaint focuses its non-infringement arguments on independent claim 1 (Compl. ¶10).
  • The essential elements of Claim 1 of the ’893 Patent are:
    • A breast pump device that is configured as a self-contained, in-bra wearable device,
    • the breast pump comprising: a housing that includes:
      • a battery, and
      • a pump powered by the battery and generating negative air pressure;
    • a breast shield made up of a breast flange and a nipple tunnel;
    • a milk container that is configured to be attached to and removed from the housing; and
    • a diaphragm configured to be seated against a diaphragm holder that forms a recess or cavity at least in part with an external surface of the housing, the diaphragm deforming in response to changes in air pressure caused by the pump to create negative air pressure in the nipple tunnel.
  • The complaint seeks a declaratory judgment that its products do not infringe "any valid claim" of the patent (Compl. ¶41).

III. The Accused Instrumentality

Product Identification

  • Plaintiff’s wearable breast pumps, including its flagship product, the S12 Pro (Compl. ¶4).

Functionality and Market Context

  • The S12 Pro is a wearable electric breast pump. The complaint alleges that, unlike the patented invention, its diaphragm and diaphragm holder are located "entirely within the milk container" and are "completely separate from the housing" (Compl. ¶21). It further alleges that negative pressure is transferred from the pump (located in the housing) to the diaphragm via a tube that extends from the milk container and inserts into an opening in the housing (Compl. ¶21). An annotated diagram in the complaint shows the diaphragm holder located inside the milk container, physically separated from the pump housing. (Compl. p. 9).
  • The complaint alleges that the S12 Pro achieved the "number one position in the electric breast pump product category" on the Amazon marketplace within months of its launch and that Plaintiff is a "leading seller" in the field (Compl. ¶¶3-4).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The following chart summarizes the Plaintiff's key arguments for why its S12 Pro product does not meet the limitations of Claim 1.

’893 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a breast pump device that is configured as a self-contained, in-bra wearable device Plaintiff alleges the S12 Pro is not configured as an "in-bra wearable device" because the pump's housing "extends up above the bra cup and the pump does not substantially fit within a user's bra." ¶43 col. 5:20-22
a pump powered by the battery and generating negative air pressure The S12 Pro's housing includes a "non-piezo pump." ¶20 col. 6:1-2
a diaphragm configured to be seated against a diaphragm holder that forms a recess or cavity at least in part with an external surface of the housing... Plaintiff alleges the S12 Pro's diaphragm holder is located entirely within the milk container, is physically separated from the housing by the wall of the milk container, and therefore does not form a recess or cavity with an external surface of the housing. ¶¶21-22, 42 col. 6:4-7

Identified Points of Contention

  • Scope Questions: The primary dispute revolves around the meaning of "a diaphragm holder that forms a recess or cavity at least in part with an external surface of the housing." A central question is whether this language reads on a structure like the S12 Pro's, where the diaphragm holder is physically separate from and fully enclosed within the milk container, rather than being integrated with or forming a recess in the pump housing itself. The complaint's annotated diagram of the S12 Pro highlights this physical separation (Compl. p. 9).
  • Scope Questions: A secondary dispute may arise over the term "in-bra wearable device." The court may need to determine if a device whose housing partially extends above the bra cup, as the S12 Pro is alleged to do, falls within the scope of this term (Compl. ¶43).
  • Technical Questions: While Claim 1 recites "a pump," the patent specification heavily features a "piezo air-pump" ('893 Patent, Abstract). The complaint states the accused S12 Pro uses a "non-piezo pump" (Compl. ¶20). This raises the question of whether there is a technical mismatch in the type of pump used, which could be relevant to the infringement analysis.

V. Key Claim Terms for Construction

"a diaphragm holder that forms a recess or cavity at least in part with an external surface of the housing"

  • Context and Importance: This limitation is the focal point of the dispute. The complaint alleges it was added during prosecution to overcome the examiner's rejection over the "Khalil" prior art reference (Compl. ¶¶14-16). The complaint's side-by-side comparison of the patented invention and Khalil visually contextualizes this prosecution history (Compl. p. 7). The construction of this term is therefore critical to both infringement (whether the S12 Pro meets the limitation) and validity (whether the term is supported by the specification).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language "at least in part" could be argued to support a broad functional, rather than strictly structural, relationship between the diaphragm holder and the housing.
    • Evidence for a Narrower Interpretation: The complaint highlights prosecution history where the applicant distinguished the invention from prior art in which the diaphragm assembly was "fully positioned within the housing" (Compl. ¶16). This history may support a narrower construction requiring the holder to be structurally integrated with, or physically external to, the housing. The specification describes an embodiment where part of the diaphragm housing "is provided in a recessed portion of the housing 1" ('893 Patent, col. 11:34-36), suggesting a direct structural relationship. The complaint also alleges the word "cavity" lacks written description support, arguing it was not in the original application (Compl. ¶¶19, 50).

"in-bra wearable device"

  • Context and Importance: Plaintiff's non-infringement argument relies in part on its assertion that the S12 Pro is not an "in-bra" device because it does not fit entirely within a bra cup (Compl. ¶43). The definition of this term will determine whether this argument has merit.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes the housing as "shaped at least in part to fit inside a bra" ('893 Patent, Abstract), which may suggest that complete containment is not required.
    • Evidence for a Narrower Interpretation: The patent specification describes the goal of "discrete pumping" and a design that "allows the breast pump 100 to substantially fit within the cup of a user's bra" ('893 Patent, col. 8:38-41). This language may support a construction requiring the device to be mostly or entirely concealed within the bra.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement both directly and indirectly (Compl. ¶41). However, the specific factual allegations focus on the absence of elements required for direct infringement, which would preclude a finding of indirect infringement.
  • Willful Infringement: This section is not applicable, as the complaint is a declaratory judgment action brought by the accused infringer.

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

  • A core issue will be one of claim scope and prosecution history estoppel: How narrowly must the court construe the limitation "a diaphragm holder that forms a recess or cavity at least in part with an external surface of the housing," which was added to overcome prior art? The resolution will likely depend on whether the arguments made to the patent office now bar the patent owner from asserting a scope broad enough to cover a device where the diaphragm holder is physically separate from and enclosed within the milk container.
  • A second central question will be one of validity: Does the patent’s specification provide adequate written description under 35 U.S.C. § 112 for the full scope of the amended claim, particularly for the term "cavity," which the complaint alleges was absent from the original application?
  • A key factual and evidentiary question will be one of structural and functional comparison: Does the accused S12 Pro's design, which uses a tube to pneumatically connect a pump in one housing to a diaphragm assembly in another physically separate container, meet the structural requirements of the asserted claim, or is there a fundamental mismatch in the device's architecture?