Nanobebe US Inc. v. Mayborn Limited

Background and posture

Nanobebe US Inc. filed an action seeking a declaration that it was not infringing Mayborn (UK) Limited’s U.S. Patent No. 10,952,930 B2. Mayborn USA, Inc. and Mayborn Group Limited were also named as defendants. Mayborn asserted counterclaims alleging infringement of the ’930 Patent and U.S. Patent No. 11,207,244 B2. Both patents concern baby bottles with flexible nipple regions.

The parties disputed the meanings of terms in the patent claims. The court held a technology tutorial on January 18, 2023, and a Markman hearing on February 22, 2023. A Markman hearing is a proceeding in which the judge decides the meaning of disputed patent-claim language. The parties initially identified 16 disputed terms, but Nanobebe withdrew six disputes and the parties presented 10 terms at the hearing. The parties did not offer live witness testimony.

Legal standard

The court explained that patent claims define the invention’s legal scope. It primarily considered intrinsic evidence: the claims, the patent specifications, and the prosecution history. When that evidence left ambiguity, the court could consider extrinsic evidence, such as expert testimony and dictionaries, but such evidence could not contradict clear intrinsic evidence. The court generally gave claim terms their ordinary meaning as understood by a person skilled in the relevant field when the invention was made.

Claim constructions

“A teat portion”

The parties agreed that “a teat portion” means “the entire part projecting generally perpendicular to the mouth of the vessel and disposed above the areola portion.” The court adopted that agreed construction.

“A teat portion having a variable wall thickness”

Nanobebe asked the court to define this phrase as “a teat portion having a helical groove.” Mayborn proposed the term’s plain and ordinary meaning. The court rejected Nanobebe’s proposal because it would improperly import a limitation from a dependent claim and from a particular embodiment in the specification into independent Claim 14. The court also concluded that the patent used “variable wall thickness” and helical features as separate concepts. The court therefore construed the term according to its plain meaning.

“Base portion”

Mayborn proposed “part below the areola portion.” Nanobebe proposed a definition that included the lowest part of the nipple and required that the portion meet the vessel’s top rim and be mountable to the vessel. The court found Mayborn’s proposal incomplete because it lacked a lower boundary, but rejected Nanobebe’s added requirement because Claim 14 assigns the sealing function to the flange and does not require the base portion to contact the vessel. The court construed “base portion” as “the lowest portion of the nipple below the areola portion, excluding the flange.”

“Domed configuration,” “a base portion having a domed configuration,” and “domed shape”

Nanobebe proposed “having a rounded shape in profile.” Mayborn proposed “wide circular base with an arc-shaped cross-sectional profile,” or alternatively a “wide circular base with a convex cross-sectional profile.” The court replaced “base” with “bottom” to avoid confusion with other uses of “base” in the patents and rejected Nanobebe’s attempt to limit the term to a hemispherical or partially spherical shape. The court construed the terms as “wide circular bottom with an arc-shaped cross-sectional profile.”

“An areola portion”

Nanobebe proposed a surface area with characteristics and functionality different from the rest of the nipple. Mayborn proposed “part extending beyond the bottom of the teat portion.” The court rejected Nanobebe’s proposed requirements because the claims did not limit the areola to a surface area or require special characteristics such as grooves or flex regions. The court also found Mayborn’s proposal incomplete because it lacked a lower boundary. The court construed “areola portion” as “the part extending beyond the bottom of the teat portion, bounded by the base.”

“At least partially inwardly”

Nanobebe argued that this phrase was indefinite, meaning that the patent did not tell a skilled person with reasonable certainty what the phrase covered. The court rejected that argument. It explained that “inward” means toward the center of the invention and that “at least partially inward” means that some, or all, of the valve must be inward of the collar; part of the valve may overlap with the collar. The court construed the phrase according to its plain meaning and found that Nanobebe had not shown indefiniteness by clear and convincing evidence.

“Mouthpiece”

The parties agreed that “mouthpiece” should have the same meaning as “teat portion.” The court construed it as “the entire part projecting generally perpendicular to the mouth of the vessel and disposed above the areola portion.”

“Flex region”

Nanobebe proposed a region with characteristics, such as grooves or channels, specifically designed to enable flexing. Mayborn proposed “a region having surface characteristics that control flexing.” The court declined to include examples such as grooves or channels and rejected a requirement concerning the designer’s purpose. Based on the patents’ descriptions of defined and predictable flexing, the court concluded that “control” better captured the claimed function than “enable.” It construed “flex region” as “a region having surface characteristics that control flexing.”

“Flex of the mouthpiece towards and away from a lower portion of the nipple”

Nanobebe proposed “up and down movement of the mouthpiece relative to a lower portion of the nipple.” Mayborn proposed the plain meaning. The court rejected Nanobebe’s wording because it could exclude the multi-axial movement described in the patent. The court therefore adopted the plain meaning of the phrase.

Disposition and effect

The court ordered that the disputed terms be construed as stated in the opinion. This was a claim-construction ruling; the opinion did not determine whether Nanobebe infringed either patent or whether Mayborn was entitled to relief on its counterclaims.