Ascentcare Dental Products, Inc. v. Solmetex, LLC

1. Case Identification

• Case #: IPR2025-01104
• Patent #: 12,011,329
• Filed: June 7, 2025
• Petitioner(s): Ascentcare Dental Products, Inc.
• Patent Owner(s): Solmetex, LLC
• Challenged Claims: 1-25 and 27-30

2. Patent Overview

• Title: INTRAORAL DEVICE
• Brief Description: The ’329 patent discloses a dental isolation mouthpiece designed to retract the tongue and cheek while providing continuous suction. The device generally comprises a main body forming a pocket with first and second walls, a cheek retractor portion, and a suction connector.

3. Grounds for Unpatentability

Ground 1: Obviousness over Black - Claims 1-5 and 8 are obvious over Black.

• Prior Art Relied Upon: Black (Patent 8,029,280).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Black, a single prior art reference, teaches every limitation of independent claim 1. Black's tongue shield aspirator (340) was asserted to be a mouthpiece with a main body (flap 340a) that is narrower at its second end. Black's anterior layer (348b) and posterior layer (348a) were identified as the claimed first and second walls, respectively. Petitioner contended that Black's transverse walls (348c) constitute the claimed "bridge structure" that prevents collapse, and that a wall shown in other embodiments (e.g., Fig. 4C) is the claimed "connecting wall." Finally, Black's second flap (340b) was mapped to the "cheek-retractor portion," which Petitioner argued transitions from the main body with its walls separated for a distance before merging.
  • Motivation to Combine (for §103 grounds): As this ground relied on a single reference, the argument was that Black inherently teaches all elements. For any features drawn from different embodiments within Black, Petitioner argued it would be obvious to combine them as they perform the same function in a similar device.
  • Expectation of Success (for §103 grounds): Success was expected because all elements were allegedly present in a single, well-understood prior art device.

Ground 2: Obviousness over Black and Hirsch - Claims 6, 7, 9-25, and 27-30 are obvious over Black in view of Hirsch.

• Prior Art Relied Upon: Black (Patent 8,029,280) and Hirsch (Application # 2003/0134253).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Black by adding features from Hirsch to meet limitations in dependent and other independent claims. For claim 6's interlocking cutout, Petitioner argued Hirsch teaches a suction connector with slots (630) that function as a locking mechanism. For claim 7's "stability bar," Petitioner asserted that while Black teaches an external stiffener (347), Hirsch teaches an internal spine (365) that extends between the device's walls. For claims requiring perforations along the edges (e.g., claim 9), Petitioner argued Hirsch explicitly teaches evacuation holes (410) along the edges of its flaps, which could be added to Black's device.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Hirsch's features with Black's device to solve known problems. Hirsch's locking mechanism would be added to provide a more secure connection to the vacuum source, and its internal spine would be added to provide greater anti-collapse rigidity and cheek retraction force, which were known design goals.
  • Expectation of Success (for §103 grounds): Success was expected because the combination involved applying known features (locking mechanisms, stiffeners, perforations) from a similar dental device (Hirsch) to another (Black) to achieve predictable improvements in stability and suction.

Ground 3: Obviousness over Park, Baughan, and Johnson - Claims 1-4, 6, and 8 are obvious over Park in view of Baughan and Johnson.

• Prior Art Relied Upon: Park (Korean Patent No. 10-1082826), Baughan (Patent 3,101,543), and Johnson (Patent 4,017,975).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground used Park as the primary reference, arguing it teaches an enclosed mouthpiece with a main body, first and second walls, sidewalls (the "connecting wall"), and a cheek retractor. Petitioner contended that Park is silent on internal anti-collapse structures. Baughan was introduced to teach such a structure—projecting discs (17) that prevent a flexible sleeve from collapsing under suction. Johnson was added to teach the simple and well-known method of forming integral projections on a flat plastic surface via injection molding.
  • Motivation to Combine (for §103 grounds): A POSITA would recognize that Park's flexible silicone mouthpiece was susceptible to collapsing under suction, which would block fluid flow. To solve this known problem, a POSITA would be motivated to add the anti-collapse structures taught by Baughan. Johnson was cited to show it would be a simple design choice to integrally mold these projections onto Park's internal walls.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying Baughan's known anti-collapse technique to Park's device to achieve the predictable result of preventing collapse and maintaining suction channels.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges, primarily by adding Black or Hirsch to the Park/Baughan/Johnson combination to teach features like a thicker suction connector or a tapered mouth prop. Further grounds added Zheng (Chinese Application # 200420094338.X) to the Black and Hirsch combinations as an alternative way to teach a cheek retractor where the walls remain separated before merging.

4. Key Claim Construction Positions

• Petitioner argued that the Patent Owner, in its infringement contentions, appeared to be asserting overly broad constructions for key terms not defined in the specification.
• For example, Petitioner contended the Patent Owner was interpreting "connecting wall" to include a bite block, even though the patent describes the main body and mouth prop as separate. Similarly, "corresponding" was allegedly being applied to walls of very different sizes and shapes. Petitioner asserted the claims are invalid even under these broad constructions.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention was that a POSITA would understand the Park reference to inherently disclose an enclosed, four-sided inner chamber, even though not all figures explicitly detail it.
• Petitioner argued that for Park's device to be operable (i.e., for the suction ports to connect to the evacuation holes and effectively remove debris from the operational area), the existence of an inner chamber is a functional necessity. Without it, the device would not work as described, and a POSITA would understand this implicit structure.

6. Arguments Regarding Discretionary Denial

• Petitioner explicitly stated that, pursuant to PTAB guidance, it was omitting preemptive arguments against discretionary denial under §314(a) or §325(d). Petitioner noted it would present any such arguments in an Opposition Brief if the Patent Owner were to file a Discretionary Denial Brief.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and a final written decision finding claims 1-25 and 27-30 of the ’329 patent unpatentable and ordering their cancellation.