Litigation over anti-snoring patent (5,427,117)
On Aug. 9, 2005 Dallas dentist and inventor Dr. W. Keith Thornton filed a patent infringement suit against MDSA Pty, Ltd., in the Northern District of New York federal court (NDNY) in Watertown, New York. The complaint charges that MDSA manufactures dental components that have no purpose but to create unauthorized copies of Thornton’s patented “Apparatus for Prevention of Snoring and Improved Breathing During Sleep,” protected by U.S. Patent No. 5,427,117. (denoted the '117 patent)
Thornton’s complaint charges that MDSA’s exclusive American distributor, Braebon Medical Corp. sells MDSA–built dental parts that are used to infringe the ‘117 patent. (Braebon is not named as a defendant in the suit.)
“MDSA’s components have no purpose or use except to be used to construct infringing dental devices, sales of these components include instructions that demonstrate how to construct infringing dental devices,” the complaint alleges. “MDSA intends that these components will be used to construct infringing dental devices.”
Thornton’s complaint seeks a declaration that MDSA is contributing to the infringement of his patent, an injunction [Query: what would Thornton have done if the initial version of HR 2795 had become law?], damages, and attorney’s fees.
Paul Ragusa, an attorney for Baker Botts, LLP’s Manhattan office, represents Thornton in the NDNY litigation. Note that this case is one in which a single law firm (Baker Botts) prosecuted the patent and is litigating the patent.
There are interesting jurisdictional issues here. MDSA is based in Victoria, Australia, and has no office in New York or elsewhere in the United States. Thornton’s complaint states that MDSA should anticipate being sued in New York, because it conducts business through Braebon. Braebon’s sale of the MDSA products in the Northern District of New York provides jurisdiction for the suit, according to the complaint. MDSA has not yet been served with a copy of the complaint, says Kennerly. Treaties govern international service of legal process.
[above text derived from report of Central NY Business Journal]
from US 5,427,117 (issued June 27, 1995; law firm Baker & Botts) -->
from the Background:
Snoring is a problem that plagues millions of people. And snoring affects not only the snorer, but also those within earshot of the snorer. Consequently, many attempts have been made to solve this snoring problem.
For example, U.S. Pat. No. 5,117,816 issued to Shapiro, et al., discloses an anti-snoring device that uses a single upper mouth piece with a flange extending downward to maintain the lower jaw in a forward position. Such devices are referred to as one-piece devices. The Shapiro, et al. patent takes advantage of the known technique of extending the lower jaw of a snorer, thereby opening the air passage and reducing or preventing snoring. Similar devices have also been disclosed in U.S. Pat. No. 5,003,994 issued to Cook; U.S. Pat. No. 5,092,346, issued to Hayes, et al.
Because these patents disclose one-piece devices, they present significant disadvantages. For example, to prevent snoring with these devices, the lower jaw must be held nearly stationary. This reduction in possible freedom of movement increases discomfort, an important consideration for any dental mouth piece.
Claim 1:
A dental device, comprising:
an upper arch including a deformable material in which a mold of at least some of a user's upper teeth is formed;
a lower arch including a deformable material in which a mold of at least some of said user's lower teeth is formed, said lower arch having an inside surface; and
a post extending downward from said upper arch, said post being uncoupled from said lower arch to allow said user's lower jaw to move up and down, said post contacting said inside surface of said lower arch to cause said user's lower jaw to extend forward with respect to said user.
Claim 25:
A dental device, comprising:
an upper arch fitting at least some of a user's upper teeth;
a lower arch fitting at least some of said user's lower teeth, said lower arch having an inside surface; and
a post extending downward from said upper arch, said post being separate from said lower arch to allow said user's lower jaw to move up and down, said post contacting said inside surface of said lower arch to cause said user's lower jaw to extend forward with respect to said user, said post being shaped to engage with said lower arch, such that said user's lower jaw cannot be lowered more than a predetermined amount while said post is engaged.
**
The patent has been cited by 31 U.S. patents, including 6,516,805, which is related, through continuations, to the '117 patent:
This application [leading to the '805] is a continuation of U.S. application Ser. No. No. 08/363,639, entitled "Apparatus for Prevention of Snoring and Improved Breathing During Sleep", and filed Dec. 22, 1994 by W. Keith Thornton, now abandoned, which is a continuation of U.S. application Ser. No. 08/129,598, entitled "Apparatus for Prevention of Snoring and Improved Breathing During Sleep" and filed Sep. 29, 1993 by W. Keith Thornton et al, now U.S. Pat. No. 5,427,117 issued Jun. 27, 1995. Multiple patents derived from the '117 may be relevant to themes in the article by Mark Lemley and Kimberly Moore on ending abuse of patent continuations.
Claim 1 of the '805:
An oral appliance, comprising:
an upper arch including a deformable material in which a mold of one or more of a user's upper teeth may be formed, the upper arch further including a downwardly extending post; and
a lower arch including a deformable material in which a mold of one or more of the user's lower teeth may be formed, the lower arch uncoupled from the upper arch until the appliance is inserted into the user's mouth, the post contacting a surface of the lower arch after the appliance is inserted into the user's mouth to cause the user's lower jaw to extend forward from its natural position.
Claim 12 of the '805:
An oral appliance, comprising:
an upper arch adapted to receive one or more of a user's upper teeth and including a downwardly extending post, the upper arch leaving the most posterior upper teeth exposed; and
a lower arch uncoupled from the upper arch until the appliance is inserted into the user's mouth, the lower arch adapted to receive one or more of the user's lower teeth, the lower arch leaving the most posterior lower teeth exposed, the post operable to contact a surface of the lower arch after the appliance is inserted into the user's mouth to cause the user's lower jaw to extend forward from its natural position, the appliance operable to maintain a separation between the most posterior lower teeth and the most posterior upper teeth.
Thornton’s complaint charges that MDSA’s exclusive American distributor, Braebon Medical Corp. sells MDSA–built dental parts that are used to infringe the ‘117 patent. (Braebon is not named as a defendant in the suit.)
“MDSA’s components have no purpose or use except to be used to construct infringing dental devices, sales of these components include instructions that demonstrate how to construct infringing dental devices,” the complaint alleges. “MDSA intends that these components will be used to construct infringing dental devices.”
Thornton’s complaint seeks a declaration that MDSA is contributing to the infringement of his patent, an injunction [Query: what would Thornton have done if the initial version of HR 2795 had become law?], damages, and attorney’s fees.
Paul Ragusa, an attorney for Baker Botts, LLP’s Manhattan office, represents Thornton in the NDNY litigation. Note that this case is one in which a single law firm (Baker Botts) prosecuted the patent and is litigating the patent.
There are interesting jurisdictional issues here. MDSA is based in Victoria, Australia, and has no office in New York or elsewhere in the United States. Thornton’s complaint states that MDSA should anticipate being sued in New York, because it conducts business through Braebon. Braebon’s sale of the MDSA products in the Northern District of New York provides jurisdiction for the suit, according to the complaint. MDSA has not yet been served with a copy of the complaint, says Kennerly. Treaties govern international service of legal process.
[above text derived from report of Central NY Business Journal]
from US 5,427,117 (issued June 27, 1995; law firm Baker & Botts) -->
from the Background:
Snoring is a problem that plagues millions of people. And snoring affects not only the snorer, but also those within earshot of the snorer. Consequently, many attempts have been made to solve this snoring problem.
For example, U.S. Pat. No. 5,117,816 issued to Shapiro, et al., discloses an anti-snoring device that uses a single upper mouth piece with a flange extending downward to maintain the lower jaw in a forward position. Such devices are referred to as one-piece devices. The Shapiro, et al. patent takes advantage of the known technique of extending the lower jaw of a snorer, thereby opening the air passage and reducing or preventing snoring. Similar devices have also been disclosed in U.S. Pat. No. 5,003,994 issued to Cook; U.S. Pat. No. 5,092,346, issued to Hayes, et al.
Because these patents disclose one-piece devices, they present significant disadvantages. For example, to prevent snoring with these devices, the lower jaw must be held nearly stationary. This reduction in possible freedom of movement increases discomfort, an important consideration for any dental mouth piece.
Claim 1:
A dental device, comprising:
an upper arch including a deformable material in which a mold of at least some of a user's upper teeth is formed;
a lower arch including a deformable material in which a mold of at least some of said user's lower teeth is formed, said lower arch having an inside surface; and
a post extending downward from said upper arch, said post being uncoupled from said lower arch to allow said user's lower jaw to move up and down, said post contacting said inside surface of said lower arch to cause said user's lower jaw to extend forward with respect to said user.
Claim 25:
A dental device, comprising:
an upper arch fitting at least some of a user's upper teeth;
a lower arch fitting at least some of said user's lower teeth, said lower arch having an inside surface; and
a post extending downward from said upper arch, said post being separate from said lower arch to allow said user's lower jaw to move up and down, said post contacting said inside surface of said lower arch to cause said user's lower jaw to extend forward with respect to said user, said post being shaped to engage with said lower arch, such that said user's lower jaw cannot be lowered more than a predetermined amount while said post is engaged.
**
The patent has been cited by 31 U.S. patents, including 6,516,805, which is related, through continuations, to the '117 patent:
This application [leading to the '805] is a continuation of U.S. application Ser. No. No. 08/363,639, entitled "Apparatus for Prevention of Snoring and Improved Breathing During Sleep", and filed Dec. 22, 1994 by W. Keith Thornton, now abandoned, which is a continuation of U.S. application Ser. No. 08/129,598, entitled "Apparatus for Prevention of Snoring and Improved Breathing During Sleep" and filed Sep. 29, 1993 by W. Keith Thornton et al, now U.S. Pat. No. 5,427,117 issued Jun. 27, 1995. Multiple patents derived from the '117 may be relevant to themes in the article by Mark Lemley and Kimberly Moore on ending abuse of patent continuations.
Claim 1 of the '805:
An oral appliance, comprising:
an upper arch including a deformable material in which a mold of one or more of a user's upper teeth may be formed, the upper arch further including a downwardly extending post; and
a lower arch including a deformable material in which a mold of one or more of the user's lower teeth may be formed, the lower arch uncoupled from the upper arch until the appliance is inserted into the user's mouth, the post contacting a surface of the lower arch after the appliance is inserted into the user's mouth to cause the user's lower jaw to extend forward from its natural position.
Claim 12 of the '805:
An oral appliance, comprising:
an upper arch adapted to receive one or more of a user's upper teeth and including a downwardly extending post, the upper arch leaving the most posterior upper teeth exposed; and
a lower arch uncoupled from the upper arch until the appliance is inserted into the user's mouth, the lower arch adapted to receive one or more of the user's lower teeth, the lower arch leaving the most posterior lower teeth exposed, the post operable to contact a surface of the lower arch after the appliance is inserted into the user's mouth to cause the user's lower jaw to extend forward from its natural position, the appliance operable to maintain a separation between the most posterior lower teeth and the most posterior upper teeth.
posted by Lawrence B. Ebert at 3:34 PM
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