govinfo:USCOURTS-dcd-1_25-cv-02443-0

UNITED STATES DISTRICT COURT 
FOR THE DISTRICT OF COLUMBIA 
____________________________________       
      )   
9878866 CANADA INC.,   ) 
      ) 
   Plaintiff,   ) 
   Counter- Defendant, ) 
      ) 
 v.     ) Civil Action No. 25-2443 (RBW)  
      )  
INTAKE BREATHING   ) 
TECHNOLOGY, LLC,    ) 
      ) 
   Defendant,   ) 
Counter-Plaintiff. ) 
      ) 
        
MEMORANDUM OPINION 
The parties in this case both sell competing disposable nasal adhesive products designed 
to be used with a magnetic nasal strip to help users of the nasal device breathe better.  The 
plaintiff/counter-defendant, 9878866 Canada Inc. (hereinafter referred to as the “plaintiff” or 
“Pl.”), does not hold a patent for the nasal adhesive product that it sells, but the 
defendant/counter-plaintiff, Intake Breathing Technology, LLC (hereinafter referred to as the 
“defendant” or “Def.”) does.  Although the plaintiff does not hold a patent for the disposable 
nasal product it sells, it initiated this civil action against the defendant alleging “unfair 
competition, and false and misleading advertising under Section 43 of the Lanham Act, 15 
U.S.C. § 1125, related unfair or deceptive trade practices under District of Columbia Code § 28-
3904, and [seeks a] Declaratory Judgment of patent non[-]infringement and invalidity against 
[the] Defendant. . . .”  See First Amended Complaint (“Am. Compl.”) at 1, ECF No. 10.  The 
defendant filed its answer in response to the plaintiff’s Amended Complaint, in which it asserts 
several affirmative defenses and counterclaims.  See generally Answer To Plaintiff’s First 
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Amended Complaint, Affirmative Defenses, And Counterclaims (“Answer”), ECF No. 16.  
Among the defendant’s counterclaims, and important to the current matter before the Court, the 
defendant has filed patent infringement claims pursuant to 35 U.S.C. §§ 101, 271, 281, and 284, 
in which it alleges that the plaintiff is infringing its U.S. Patent No. 9,510,969, entitled “Nasal 
Element for a Breathing System” (hereinafter referred to as the “defendant’s patent”).  Id. at 11–
12; Am. Compl., Exhibit (“Ex.”) A (U.S. Patent No. 9,510,969 B2 (filed Dec. 6, 2016) (“the 
defendant’s patent”)) at 2, ECF No. 10-1.1  Accordingly, immediately after filing its answer, the 
defendant moved for a preliminary injunction pursuant to 35 U.S.C. § 283 and Federal Rule of 
Civil Procedure 65, requesting that the Court enjoin the plaintiff “from offering for sale, selling, 
importing, [and/or] using, . . . its infringing ‘Intake Breathing’ products during the pendency of” 
this case.  See Defendant Intake Breathing Technology, LLC’s Motion for Preliminary 
Injunction (“Def.’s PI Mot.”) at 1, ECF No. 17.  Upon careful consideration of the parties’ 
submissions,
2 the Court concludes for the following reasons that it must grant the defendant’s 
motion.  
 
1 Unless otherwise indicated, all pincites to documents filed on the docket in this case are to the automatically 
generated ECF Page ID number that appear at the top of each page of the documents that comprise the record in this 
case.  
 
2 In addition to the filings already identified, the Court considered the:  (1) Am. Compl., Ex. B (Product Page for 
Nasal Strips Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore Reduction, Bash Stack), ECF 
No. 10-2; (2) Am. Compl., Ex. D (Intake Breathing Technology, www.intakebreathing.com (July 28, 2025, 7:08 
PM) (“Intake’s website”)), ECF No. 10-4; (3) Answer, Ex. 1 (U.S. Patent No. 9,510,969 B2 (filed Dec. 6, 2016) (the 
defendant’s patent”)), ECF No. 16-1; (4) Def.’s PI Mot., Declaration Of Chris Herbert In Support Of Defendant’s 
Motion For A Preliminary Injunction (“Herbert Decl.”), ECF No. 17-1; (5) Def.’s PI Mot., Declaration of Dawn M. 
David (“David Decl.”), ECF No. 17-2; (6) Def.’s PI Mot., Ex. A to the David Decl. (Intake Breathing Technology, 
www.intakebreathing.com (Sept. 16, 2025)), ECF No. 17-3; (7) Def.’s PI Mot., Ex. B to the David Decl. (Amazon 
Product Page for Nasal Strips Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore Reduction, 
Bash Stack), ECF No. 17-4; (8) Def.’s PI Mot., Ex. C to the David Decl. (1-star Amazon Reviews for Nasal Strips 
Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore Reduction, Bash Stack), ECF No. 17 -5; (9) 
Def.’s PI Mot., Ex. D to the David Decl. (Amazon Complaint Submission History), ECF No. 17-6; (10) Def.’s PI 
Mot., Ex. E to the David Decl. (Bash Stack Baby Trademark Application), ECF No. 17-7 ; (11) the Plaintiff’s 
Memorandum In Opposition To Defendant’s Motion For Preliminary Injunction (“Pl.’s Opp’n”) at 1, ECF No. 21; 
(12) Pl.’s Opp’n, Declaration Of Marie Habib In Support Of Plaintiff’s Opposition To Defendant’s Motion For 
Preliminary Injunction (“Habib Decl.”), ECF No. 21-2; (13) Pl.’s Opp’n, Declaration Of Seth A. Watkins In Support 
(continued . . .) 
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I. BACKGROUND 
A. Factual Background 
 
The defendant holds a patent for its “magnetic nasal strip medical device” that functions 
as a “nasal breathing aid[]” for its users.  Def.’s PI Mot. at 10.3  The defendant sells its patented 
device “through its website [ ], on e-commerce platforms such as Amazon.com and TikTok, and 
through a select number of authorized distributors.”  Answer at 15 ¶ 18.  The medical device 
consists of “a magnetic nasal band and refill tabs [that are] required for the band’s use.”  Def.’s 
PI Mot. at 9.  An image of the defendant’s medical device, as shown in the defendant’s patent 
specification, along with a separate picture of the refill tabs is depicted below. 
 
(. . . continued) 
Of Plaintiff’s Opposition To Defendant’s Motion For Preliminary Injunction (“Watkins Decl.”), ECF No. 21-5; (14) 
Pl.’s Opp’n, Ex. 4 to Watkins Decl. (United States Patent No. 7,793,661 B2 (filed Sept. 14, 2010) (“Macken 
Patent”)), ECF No. 21-9; (15) Pl.’s Opp’n, Ex. 5 to Watkins Decl. (United States Patent Application Publication No. 
U.S. 2005/0139215 A1 (filed June 30, 2005) (“Riach Application”)), ECF No. 21-10; (16) Pl.’s Opp’n, Ex. 6 to 
Watkins Decl. (United States Patent and Trademark Office Action Summary Application No. 14/628,517 (Apr. 25, 
2016)), ECF No. 21-11; (17) Pl.’s Opp’n, Ex. 7 to Watkins Decl. (Applicant’s Amendment in Response to Office 
Action of April 25, 2016 (“Response to Office Action Summary”)), ECF No. 21-12; (18) Pl.’s Opp’n, Ex. 8 to 
Watkins Decl. (United States Patent and Trademark Office Notice Of Allowance And Fee(s) Due Application No. 
14/628,517 (Aug. 23, 2016) (“Notice of Allowance”)), ECF No. 21-13; (19) Intake’s Reply Memorandum In 
Support Of Its Motion For Preliminary Injunction (“Def.’s Reply”) at 1, ECF No. 24; (20) Joint Statement In 
Response To The Court’s Order For Briefing On Personal Jurisdiction (“Personal Jurisdiction Joint Statement”), 
ECF No. 34; (21) the defendant’s Notice Of Supplemental Authority And Facts, ECF No. 35; and (22) the oral 
arguments of the parties during the motion hearing held on October 3, 2025.  
 
3 The defendant’s patent describes that its invention relates “specifically to an eyewear accessory kit designed to 
enhance nasal airflow for the wearer by urging the wearer’s nostrils to a more open position.”  Am. Compl., Ex. A 
(the defendant’s patent) at 11.  During the motions hearing conducted by the Court, the defendant explained that the 
invention “was originally developed for dirt bike riders.”  Motion Hearing Transcript (“Hr’g Tr.”) 29:20–21.   
“According to one embodiment[ in the specification of the patent,] an eyewear system [is] adapted to open a nasal 
passage of a user.”  Am. Compl., Ex. A (the defendant’s patent) at 11.   
 
The eyewear system includes a wearable frame [that has] a bridge section configured to be 
placeable adjacent the nose of the user. A nasal attachment member is configured to be selectively 
placeable on the nose of the user adjacent the nasal passage. The nasal attachment member is 
adapted to be urged toward the wearable frame in response to placement of the wearable frame 
adjacent the nose of the user to cause the nasal passage of the user to open. 
 
Id.  Moreover, the specification provides that the descriptions and drawings included in the specification were not 
included to limit the embodiments of the invention, but were included to “illustrat[e] a preferred embodiment of the 
[ ] invention only.”  Id.  The specification therefore states “that the same or equivalent structure and/or functions 
may be accomplished by different embodiments that are also intended to be encompassed within the scope of the” 
specification.  Id.  
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Am. Compl., Ex. A (the defendant’s patent) at 8, fig. 16. 
 
Am. Compl., Ex. D (Intake’s website) at 20.  
The “nasal band [is] intended to be used repeatedly with the aid of [the defendant’s] 
[r]efill [t]abs, which customers must replenish regularly to continue using the nasal band.”  
Def.’s PI Mot. at 11.  Claim 1 of the defendant’s patent—which is at the crux of the dispute 
between the parties—describes the defendant’s refill tabs  and states the following: 
What is claimed is:  
1. A disposable apparatus attachable to a nose of a wearer and configured for 
use with a magnet positioned adjacent to the nose of the wearer, the disposable 
apparatus comprising:  
 
a flexible base layer including a first surface and an opposing second surface, the 
first surface having an adhesive disposed thereon to enable the first surface to 
be selectively attachable to the nose of the wearer;  
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a metallic element coupled to the second surface of the base layer and being 
configured to interact with the magnet when the magnet is positioned adjacent 
the nose of the wearer and the flexible base layer is attached to the nose of the 
wearer, the interaction between the metallic element and the magnet imparting 
a dilating force on the nose of the wearer causing the nose of the wearer to 
dilate; and  
 
an outer layer coupled to the base layer and extending over the metallic element to 
at least partially cover the metallic element;  
 
at least a portion of the flexible base layer extending radially outward beyond the 
metallic element to define a flexible peripheral portion;  
 
the metallic element being configured to allow for movement of the magnet 
relative to the metallic element when the magnet is magnetically engaged with 
the metallic element;  
 
the disposable apparatus, while being attached to the nose of the wearer, being 
selectively transitional between an active state and an inactive state, in the 
active state, the metallic element magnetically interacts with the magnet to 
impart the dilating force on the nose of the wearer, in the inactive state, the 
metallic element is magnetically decoupled from the magnet to cease imparting 
of the dilating force on the nose of the wearer. 
 
Answer, Ex. 1 (the defendant’s patent) at 15.  There are also 29 other claims in the defendant’s 
patent.  Id.  Importantly, claims 2–18 of the defendant’s patent depend on claim 1 in their 
respective descriptions.  For example, claim 2 states “[t]he disposable apparatus recited in claim 
1, wherein the metallic element is configured to impart the dilating force only in response to 
interaction between the metallic element and the magnet.”  Id. at 15.  Therefore, if claim 1 of the 
defendant’s patent is invalid, then the other claims which rely on claim 1 are also invalid. 
Additionally, to maintain the device’s “effective[ness]” and “high quality,” the defendant 
“does not license” its patent.  Def.’s PI Mot. at 11.  Instead, the defendant “encourages repeat 
purchases in part by offering discounted prices on its [r]efill [t]abs to return customers who 
become subscribers” of the defendant’s product.  Id.  The defendant claims that “demand and 
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popularity have been growing for [its] products” and that its products have gone “viral over 
social media.”  Id.   
The plaintiff sells a product “under the branding Bash Stack, [which it identifies as] a 
‘Nasal Strips Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore Reduction, 
Bash Stack’” (hereinafter referred to as the “Accused Product”) on Amazon.com (hereinafter 
referred to as “Amazon”).  Am. Compl. ¶ 3.  Specifically, the Accused Product is “30 pairs of 
patches” that are “thin adhesive patch[es] with a metal disc that attaches to a magnetic nasal 
band.”  Id. ¶ 4 (internal brackets omitted).  Users of the Accused Product place one of the 
patches “to either side of [the user’s] nose.”  Id. ¶ 5.  Importantly, a “magnetic nasal band and 
applicator are not included with the Accused Product.”  Id. (citation modified).  Images of the 
Accused Product are depicted below: 
 
 
Id. 
On July 7, 2025, Amazon’s patent evaluation team sent the plaintiff an email notifying it 
that Amazon “received a report from [the defendant] who believes the” Accused Product 
“infringe[s] [the defendant’s patent].”  Id. ¶ 6.  Amazon notified the plaintiff that, because the 
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Accused Product was reported to Amazon as a product believed to be infringing a patent, the 
plaintiff had three choices if the plaintiff wished to continue selling the Accused Product on 
Amazon.  Id.4  The first choice was to contact the defendant “within . . . three weeks” of 
Amazon’s July 7, 2025, email “to resolve [the] claim.”  Id.  And, if the defendant agreed to 
retract its claim, the plaintiff could continue to sell the Accused Product on Amazon.  Id.  The 
second option the plaintiff had was “to resolve the claim with the patent owner in a federal 
district court case.”  Id.  If the plaintiff “file[d] a lawsuit against the [defendant] for [a] 
declaratory judgment of non-infringement . . . within the [ ] three weeks [thereafter], [the 
plaintiff could] continue selling the [Accused Product] while the lawsuit proceed[ed].”  Id.  The 
third option the plaintiff was given was to “participate in neutral evaluation of the patent owner’s 
claim” under “Amazon’s neutral evaluation procedure[,]” also called the “Amazon Patent 
Evaluation Express” (“APEX”).5  Id. at ¶¶ 6, 7.  Amazon explained to the plaintiff that 
“participation in the evaluation process does not guarantee that [the plaintiff] will be able to 
continue to sell the [Accused Product] . . . [i]f the evaluator decides that the items likely 
infringe” the defendant’s patent.  Id. ¶ 6.  But, if the plaintiff did “not either resolve [the] claim 
with the patent owner directly, or agree to participate in [Amazon’s] neutral evaluation process, 
[Amazon would] remove the [Accused Product] . . . from Amazon.”  Id.  
After receiving the July 7, 2025, email from Amazon with these options, the plaintiff 
contacted the defendant ten days later on July 17, 2025, “to arrange discussions concerning the 
[defendant’s] infringement allegation made to Amazon[].”  Id. ¶ 8.  Subsequently, the parties 
 
4 The email the plaintiff received from Amazon actually indicated that the plaintiff had two choices because 
although it informed the plaintiff of the option to file a lawsuit, it did not specifically identify this course of action as  
a separate option.  
 
5 “APEX is [a] voluntary, confidential” patent evaluation process provided by Amazon that “allows owners of U.S. 
utility patents or their authorized representatives, such as attorneys or exclusive licensees to obtain a fast evaluation 
of patent infringement claims against products” by “a neutral evaluator.”  Am. Compl. ¶ 7.   
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engaged in discussions on three different days in an attempt to resolve the dispute.  Id.  Despite 
these discussions, the defendant “declined to retract [its] infringement allegation” made to 
Amazon.  Id.  The defendant also “declined” any “further . . . resolution [of its infringement 
allegation] other than the cessation of” the plaintiff selling the Accused Product.  Id.   
B. Procedural History 
 
On July 28, 2025, the plaintiff filed its Complaint, see generally Complaint for 
Declaratory Judgment of Noninfringement, at 1, ECF No. 1, and on September 5, 2025, filed an 
Amended Complaint, see generally Am. Compl. at 1.  The defendant filed its answer to the 
plaintiff’s Amended Complaint on September 19, 2025, which asserted affirmative defenses and 
counterclaims.  See generally Answer.  On the same day, the defendant also filed its motion for a 
preliminary injunction.  See generally Def.’s PI Mot. at 1.   
On September 24, 2025, the Court ordered the plaintiff to respond to the defendant’s 
preliminary injunction motion “on or before September 26, 2025,” and ordered the defendant to 
reply to the plaintiff’s opposition on or before October 1, 2025.  See Order at 1 (Sept. 24, 2025), 
ECF No. 20.  Subsequently, on September 27, 2025, the plaintiff filed its opposition to the 
defendant’s motion for a preliminary injunction, see generally Pl.’s Opp’n at 1, and on 
September 30, 2025, moved for “leave to file its Opposition . . . one (1) day out of time,” see 
Corrected Plaintiff’s Unopposed Motion For Leave To File Out Of Time Its Opposition To 
Defendant’s Motion For Preliminary Injunction (“Pl.’s Mot. for Leave”), at 1–2, ECF No. 23, 
which the Court granted on October 3, 2025, see Minute (“Min.”) Order (Oct. 3, 2025).  On 
October 1, 2025, the defendant filed its reply to the plaintiff’s opposition brief.  See generally 
Def.’s Reply at 1.  After briefing was complete, the Court held a hearing on the defendant’s 
motion for a preliminary injunction.  See Min. Entry (Oct. 3, 2025).   
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II. STANDARD OF REVIEW6 
In deciding whether a preliminary injunction should issue in this patent dispute, the Court 
applies the law of the D.C. Circuit.  See Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159, 
1165 (Fed. Cir. 2013) (“The grant[ or] denial . . . of a preliminary injunction is not unique to 
patent law, so [district] court[s] appl[y] the law of the regional circuit when [deciding] such a 
decision.”) (internal ellipses omitted).  However, since “the Federal Circuit has [ ] built a body of 
precedent applying the general preliminary injunction considerations to a large number of 
factually variant patent cases,” courts may give “effect to Federal Circuit precedent insofar as it 
reflects considerations specific to patent issues.”  Id. (internal brackets omitted).  
“A preliminary injunction is an extraordinary remedy never awarded as of right.”  Winter 
v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008).  Instead, courts are required to “balance 
the competing claims of injury and must consider the effect on each party of the granting or 
withholding of the requested relief.”  Id. (citing Amoco Prod. Co. v. Village of Gambell, 480 
 
6 The Court has subject matter jurisdiction to review this case pursuant to 15 U.S.C. §  1121 and 28 U.S.C. §§ 1331, 
1338, because the parties dispute “depends on resolution of a substantial question of federal patent law.”  
Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 808– 09 (1988).   
 
On October 24, 2025, the Court ordered the parties to provide further briefing and show cause why the Court has 
personal jurisdiction to entertain both the defendant’s counterclaims and the plaintiff’s claims.  See Order at 1 (Oct. 
24, 2025), ECF No. 32.  On October 29, 2025, the parties filed their Personal Jurisdiction Joint Statement in which 
the plaintiff stated “that it has voluntarily consented to personal jurisdiction of this Court in this action by filing” its 
Complaint and First Amended Complaint in this Court.  Personal Jurisdiction Joint Statement at 1; see  Leman v. 
Krentler-Arnold Hinge Last Co., 284 U.S. 448, 451 (1932) (explaining that when a party brings a suit in federal 
district court, “it submit[s] itself to the jurisdiction of the [C]ourt with respect to all the issues embraced in the suit, 
including those pertaining to the counterclaim of the defendants”).  Likewise, the defendant “elected to waive its 
objections to personal jurisdiction” and instead file its counterclaims for the Court to decide on the merits.  Personal 
Jurisdiction Joint Statement at 2.   
 
Therefore, because “personal jurisdiction . . . can be waived at any stage of a proceeding[,]” Spann v. Colonial Vill., 
Inc., 899 F.2d 24, 32–33 (D.C. Cir. 1990), the Court has personal jurisdiction over the defendant’s patent 
infringement claim presently before the Court.  See Rates Tech. Inc. v. Nortel Networks Corp., 399 F.3d 1302, 1307 
(Fed. Cir. 2005) (internal quotations omitted) (quoting Ins. Corp. of Ir., Ltd. v. Compagnie des Bauxites de Guinee , 
456 U.S. 694, 703 (1982) (“Because the requirement of personal jurisdiction represents first of all an individual 
right, it can, like other such rights, be waived.”)). 
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U.S. 531, 542 (1987)).  Parties in a patent dispute, like parties in any type of case, “seeking a 
preliminary injunction must establish that [they are] likely to succeed on the merits, that [they 
are] likely to suffer irreparable harm in the absence of preliminary relief, that the balance of 
equities tips in [their] favor, and that an injunction is in the public interest.”  Id. at 20.  These 
factors are referred to as the “Winter factors.”  See, e.g., Global Health Council v. Trump, 153 
F.4th 1, 12 (D.C. Cir. 2025) (referring to the factors courts weigh in deciding whether to issue a 
preliminary injunction as the “Winter factors”).  “[I]t remains an open question [in this Circuit] 
whether the ‘likelihood of success’ factor is ‘an independent, free-standing requirement,’ or 
whether, in cases where the other three factors strongly favor issuing an injunction, a plaintiff 
need only raise a ‘serious legal question’ on the merits.”  Id. (quoting Aamer v. Obama, 742 F.3d 
1023, 1043 (D.C. Cir. 2014)).  But, where a party has not shown that it is likely to succeed on the 
merits, and the other three Winter factors do not “strongly favor” the issuance of an injunction, a 
preliminary injunction should not issue.  Id. (holding that “the district court abused its discretion 
in granting a preliminary injunction” in a case where the movant “failed to show they are likely 
to succeed on the merits and the other Winter factors [did] not ‘strongly favor’ the issuance of an 
injunction”).   
III. ANALYSIS 
The defendant contends that the Court should grant its motion for a preliminary 
injunction because:  (1) it is highly likely to succeed on the merits, see Def.’s PI Mot. at 14; (2) it 
will suffer irreparable harm in the absence of an injunction, see id. at 29; (3) the balance of the 
equities sharply favors the defendant, see id. at 37; and (4) an injunction is in the public interest, 
see id. at 38.  The Court will address each preliminary injunction factor in turn. 
 
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A. Likelihood of Success on the Merits 
 
In deciding whether a movant has established that it is likely to succeed on the merits at 
the preliminary injunction stage of a patent infringement case, the patentee “must show that it 
will likely prove infringement, and that it will likely withstand challenges . . . to the validity of 
the patent.”  Tinnus Enter., LLC v. Telebrands Corp., 846 F.3d 1190, 1202 (Fed. Cir. 2017); see 
BlephEx, LLC v. Myco Indus., Inc., 24 F.4th 1391, 1398–99 (Fed. Cir. 2022) (citing Entegris, 
Inc. v. Pall Corp., 490 F.3d 1340, 1351 (Fed. Cir. 2007) (explaining that a “patent holder seeking 
a preliminary injunction bears the burden of establishing a likelihood of success on the merits 
with respect to the patent’s validity”).  To counter a patentee’s position, the “accused infringer 
‘can defeat a showing of likelihood of success on the merits by demonstrating a substantial 
question of validity or infringement.’”  Tinnus Enter., LLC, 846 F.3d at 1202 (quoting Trebro 
Mfg., Inc., 748 F.3d at 1165).  The accused infringer “bears the initial burden ‘to come forward 
with evidence of invalidity[.]’”  BlephEx, LLC, 24 F.4th at 1399 (quoting Titan Tire Corp. v. 
Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009)).  If the accused infringer 
provides such evidence, the Court will then “consider ‘the evidence on both sides of the validity 
issue’ to determine if the [accused] infringer has raised a substantial question of validity.”  Id. 
(quoting Titan Tire Corp., 566 F.3d at 1379).  To raise a substantial question of validity, the 
accused infringer “need only assert a defense that the [patentee] cannot show lacks substantial 
merit.”  Id. (internal brackets and quotations omitted).  If an accused infringer makes this 
showing, “the preliminary injunction should not issue.”  Id.   
1. Whether the Accused Product Infringes Any Claim in the Defendant’s Patent 
 
The defendant first contends that the plaintiff’s “product is a clear infringement of not 
just one, but many claims of the” defendant’s patent.  Def.’s PI Mot. at 14.  The defendant asks 
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the Court to compare independent claim 1 of the defendant’s patent with the Accused Product 
because, according to the defendant, the Accused Product “include[s] each and every aspect of 
representative claim 1.”  Id. at 15, 22–23 (arguing that “[b]ecause subsequent claims 2–5 and 8–
18 are dependent claims which merely recite additional features of independent claim 1, claim 1 
is representative for the infringement analysis.”).  The plaintiff disagrees with the defendant, 
arguing that its Accused Product “does not include each feature of independent claim 1 of the 
[defendant’s] patent[,]” and therefore “cannot be found to infringe . . . dependent claims 2–5 and 
8–18[.]”  Pl.’s Opp’n at 33.  Accordingly, the Court will assess whether the defendant is likely to 
succeed on the merits of its argument that the plaintiff is infringing claim 1 of its patent because, 
if so, the plaintiff would also be infringing not only claims 2–5 and 8–18, but also claims 6 and 
7.
7  
35 U.S.C. § 271 prohibits the infringement of a patent.8  The “claims” in a patent 
“measure the invention.”  Brumfiel, Tr. for Ascent Tr. v. IBG LLC, 97 F.4th 854, 879 (Fed. Cir. 
2024) (citing Cont’l Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 419 (1908)).  Thus, “each 
element contained in a patent claim is deemed material to defining the scope of the patent 
invention, and a patentee’s rights extend only to the claimed combination of elements, and no 
further.”  Id. (citation modified) (citing Limelight Networks, Inc. v. Akamai Techs., Inc., 572 
U.S. 915, 921 (2014)).   
 
7 Claims 6 and 7 in the defendant’s patent also refer to claim 1, the Court therefore includes claims 6 and 7 here 
because if the defendant is not likely to succeed on the merits in showing that the plaintiff is infringing claim 1, it 
follows that the defendant would likely not succeed on the merits in showing that the plaintiff is infringing claims 6 
and 7.  
 
8 35 U.S.C. § 271(a) provides that “whoever without authority makes, uses, offers to sell, or sells any patented 
invention, within the United States or imports into the United States any patented invention during the term of the 
patent therefor[e], infringes the patent.” 
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An “infringement and validity analyses must be performed on a claim-by-claim basis.”  
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001).  “[I]n 
cases involving multiple patent claims, . . . the patentee must demonstrate that it will likely prove 
infringement of one or more claims of the patents-in-suit, and that at least one of those same 
allegedly infringed claims will also likely withstand the validity challenges presented by the 
accused infringer.”  Id.  Whether an accused product infringes a patent is a question of fact that 
involves a two-step process.  See, e.g., Tinnus Enter., LLC, 846 F.3d at 1203; Amazon.com, Inc., 
239 F.3d at 1351.  The Court’s first step is to “constru[e] the claims” of the patent, and the 
second step is to “compar[e] the properly construed claims to the accused product.”  Tinnus 
Enter., LLC, 846 F.3d at 1203 (citing Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 
808 F.3d 1313, 1316 (Fed. Cir. 2015)).   
In construing claim 1 of the defendant’s patent, the Court will accord the terms of the 
claim “their ordinary and customary meaning [based on] a person having ordinary skill in the art 
at the time of the effective date of the patent application.”  Ericsson, Inc. v. D-Link Sys., Inc., 
773 F.3d 1201, 1217 (Fed. Cir. 2014).  “To ascertain the scope and meaning of . . . claim[ 1], 
[the Court] look[s] to the words of the claim[ itself], the specification, the prosecution history, 
and any relevant extrinsic evidence.”  Id. at 1217–18.  However, the specification9 “is the single 
best guide to the meaning of a disputed term[,]” and is usually dispositive.  Phillips v. AWH 
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).   
To reiterate, claim 1 of the defendant’s patent states the following: 
 
9 “The function of a patent specification is twofold: (1) to explain and describe the invention in such terms that any 
person skilled in the art to which it appertains may make and use it after the expiration of the term of the patent; and 
(2) to inform the public during the life of the patent of the limits of the monopoly asserted. ”  John Gladstone Mills 
III et al., 4 Patent Law Fundamentals § 13:17 (2d ed. 2009).  “As used in the Patent Act, the term ‘specification’ is 
clearly inclusive of the claims. In practice, however, the term ‘specification’ is often used to connote the descriptive 
part of the specification which precedes the claims.”  Id. 
 
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1. A disposable apparatus attachable to a nose of a wearer and configured for 
use with a magnet positioned adjacent to the nose of the wearer, the disposable 
apparatus comprising:  
 
a flexible base layer including a first surface and an opposing second surface, the 
first surface having an adhesive disposed thereon  to enable the first surface to 
be selectively attachable to the nose of the wearer;  
 
a metallic element coupled to the second surface of the base layer and being 
configured to interact with the magnet when the magnet is positioned 
adjacent the nose of the wearer and the flexible base layer is attached to the 
nose of the wearer, the interaction between the metallic element and the 
magnet imparting a dilating force on the nose of the wearer causing the nose of 
the wearer to dilate; and  
 
an outer layer coupled to the base layer and extending over the metallic 
element to at least partially cover the metallic element;  
 
at least a portion of the flexible base layer extending radially outward beyond the 
metallic element to define a flexible peripheral portion;  
 
the metallic element being configured to allow for movement of the magnet  
relative to the metallic element when the magnet is magnetically engaged with 
the metallic element;  
 
the disposable apparatus, while being attached to the nose of the wearer, being 
selectively transitional between an active state and an inactive state, in the 
active state, the metallic element magnetically interacts with the magnet to 
impart the dilating force on the nose of the wearer, in the inactive state, the 
metallic element is magnetically decoupled from the magnet to cease imparting 
of the dilating force on the nose of the wearer. 
 
Answer, Ex. 1 (the defendant’s patent) at 15 (emphasis added).  The plaintiff contends that the 
Accused Product does not infringe claim 1 because the Accused Product does not practice the 
bolded and underlined portions of the above quoted language of claim 1.  See Pl.’s Opp’n at 32.  
The plaintiff does not dispute each paragraph separately, but instead separates its arguments into 
two groups:  (1) arguments that pertain to the magnet included in claim 110, and (2) arguments 
 
10 This includes paragraphs 1, 3, 6, and 7 of claim 1 listed above. 
 
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that pertain to the adhesive layer in claim 1.11  See id. at 33–35.  In construing claim 1 and 
applying that construction to the Accused Product, the Court will address the disputed 
paragraphs in the two groups as argued by the plaintiff.12 
As to the first group, the plaintiff argues that “[t]he [a]ccused [p]roduct does not include a 
‘magnetic nasal band’” and the plaintiff has “never offered for sale or sold a ‘nasal band,’ 
‘magnetic nasal band,’ ‘bridge member,’ or other device that magnetically couples to the 
[a]ccused product.”  Id. at 34 (quoting Second Habib Decl. ¶ 2).  The defendant correctly 
responds that it is “irrelevant whether [the plaintiff] has ever sold a magnetic nasal band with 
which its nasal adhesives are configured to be used.”  Def.’s Reply at 7.  By its plain terms, the 
defendant argues, claim 1 provides that the “disposable apparatus” that attaches to the nose of the 
wearer is “configured for use with a magnet.”  Answer, Ex. 1 (the defendant’s patent) at 15.  The 
defendant further notes that the language of claim 1 does not describe the magnet itself, but 
merely describes what the disposable apparatus is to be “configured” with.  Id.  In other words, 
although the disposable apparatus is to be used with a magnet, claim 1 only describes the 
disposable apparatus itself and not the magnet.  The Court agrees with the defendant’s 
construction of claim 1.  Instead of reading each sentence of claim 1 as a whole, the plaintiff is 
attempting to piecemeal certain portions of the sentence to fit its argument.  The Court declines 
to adopt the plaintiff’s piecemeal interpretation.   
 
11 This includes paragraphs 2 and 4 of claim 1 listed above.  
 
12 As the defendant highlights, the plaintiff has “offered zero explanation as to how” paragraph 4 of claim 1 does not 
infringe on the defendant’s patent, Def.’s Reply at 9, and the Court cannot seek to fill that void by providing what 
has not been included in this argument.  Therefore, because the plaintiff failed to explain or support its perfunctory 
argument the Court need not address it.  See Johnson v. Panetta, 953 F. Supp. 2d 244, 250 (D.D.C. 2013) 
(“[P]erfuntory and underdeveloped arguments, and arguments that are unsupported by pertinent authority, are 
deemed waived.”); Rivera-Gomez v. de Castro, 843 F.2d 631, 635 (1st Cir. 1988) (explaining that it is the party’s 
task to spell out its arguments squarely and distinctly).   
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It is clear by the ordinary language of claim 1, i.e., “[a] disposable apparatus attachable to 
a nose of a wearer and configured for use with a magnet[,]” Am. Compl., Ex. A (the defendant’s 
patent) at 15 (emphasis added), is not language that describes the magnet, but is instead language 
that describes what the “disposable apparatus” is to be used with, i.e. a magnet.  Id.  Paragraphs 
3, 6, and 7 are no different.  Paragraphs 3 and 6 explicitly use the “configured to” language to 
describe how the metallic element in the disposable apparatus relates to the magnet element 
introduced in later claims of the defendant’s patent.  Id.  And, although paragraph 7 of claim 1 
does not use the same “configured to” language, it describes the disposable apparatus in its 
“active state” (when it is coupled with a separate magnet) versus its “inactive state” (when it is 
decoupled from the separate magnet).  Id.  Thus, the plain and ordinary language of claim 1 
makes clear that the product claimed is not the magnet, but the disposable apparatus itself.   
In applying that construction to the Accused Product, the plaintiff does not contend that 
the Accused Product has any use other than being designed for use with a magnet.  This fact 
defeats the plaintiff’s argument.  See Ericsson, Inc., 773 F.3d at 1217 (explaining that when “the 
accused device is actually used in an infringing manner and can be so used without significant 
alterations[,]” the Federal Circuit’s “case law supports finding infringement”).  The plaintiff 
attempts to avoid this fact by contending that its Accused Product “is not limited to the 
[defendant’s] breathing system[,] . . . but rather . . . may be readily used in conjunction with a 
variety of applicator types[,]” 2d Habib Decl. ¶ 6.  However, the plaintiff has failed to provide 
any evidence that its Accused Product is designed to be configured with anything other than a 
magnet.  And, specifically, included in the plaintiff’s First Amended Complaint is an image of 
the Accused Product’s application steps, which states in step 1 that a “[m]agnetic nasal band and 
applicator [are] not included.”  Am. Compl. ¶ 5; Am. Compl., Ex. B at 16 (same); see id. at 14 
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(including a close-up image of the Accused Product with a description underneath stating “[t]hin 
adhesive patch with metal disc attaches to magnetic nasal band”); id. at 15 (showing images of 
the Accused Product coupled with a black band attached to the Accused Product and arching 
over the wearers’ nose); id. at 17 (same).   
The Federal Circuit has held that “an accused product may be found to infringe if it is 
reasonably capable of satisfying the claim limitation.”  Versata Software, Inc. v. SAP Am., Inc., 
717 F.3d 1255, 1262 (Fed. Cir. 2013) (citing Finjan, Inc. v. Secure Computing Corp., 626 F.3d 
117, 1204 (Fed. Cir. 2010)) (internal citations omitted).  Moreover, evidence showing that if the 
“user followed the accused infringer’s own instructions, the system would operate in an 
infringing manner[,]” has been the basis for the Federal Circuit concluding that an accused 
product infringed a patent.  Compare Ericsson, Inc., 773 F.3d at 1217 (discussing the Federal 
Circuit’s reasoning in Versata Software, Inc., 717 F.3d at 1263); with id. at 1216 (explaining the 
Federal Circuit’s decision in Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 
555 F.3d 984 (Fed. Cir. 2009), where an accused product did not infringe the patent at issue 
because the apparatus was never “placed in the infringing configuration”).  Therefore, in 
construing and applying the paragraphs of claim 1 describing the magnet being configured with 
the disposable apparatus, the Court finds that the defendant will likely prove infringement 
because claim 1 describes the disposable apparatus itself and the Accused Product is designed to 
be used in an infringing manner.   
As to the second group of arguments regarding the adhesive layer in claim 1, the plaintiff 
di
rects the Court to paragraph two of claim 1, which states that the defendant’s product consists 
of “a flexible base layer including a first surface and an opposing second surface, the first surface 
having an adhesive disposed thereon to enable the first surface to be selectively attachable to 
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the nose of the wearer[.]”  Pl.’s Opp’n at 34; see Answer, Ex. 1 at 15.  The plaintiff contends that 
the adhesive layer in the Accused Product is not “disposed thereon[,]” but instead “[t]he adhesive 
is the layer.”  Pl.’s Opp’n at 33; see id. at 35 (arguing that although the Accused Product 
“include[s] an adhesive, [ ] there is [ ] no adhesive ‘disposed thereon’ with respect to the 
purported first surface of the adhesive itself”); Hr’g Tr. 11:21–22 (counsel for the plaintiff 
explaining that it is “not contesting . . . that [it] ha[s] adhesives in the [A]ccused [P]roduct”).  In 
other words, the plaintiff contends that there is nothing to be disposed of in regards to the 
adhesive on the Accused Product.  The defendant responds that the Accused Product does in fact 
have an adhesive layer which “is what makes it possible to secure [the Accused Product] . . . to a 
wearer’s nose.”  Def.’s Reply at 8–9 (providing an alleged image of the Accused Product with 
sticky residue apparent on the layer closest to a surface).   
To determine 
 the scope and meaning of the language “disposed thereon” in claim 1, the 
Court is guided by the language of the specification.  See Phillips, 415 F.3d at 1315 (citing 
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (explaining that the 
specification “is the single best guide to the meaning of a disputed term”)).  The specification 
states that “each nasal element may be secured to the wearer’s nose via an adhesive layer located 
on the underside of the nasal element.”  Am. Compl., Ex. A (the defendant’s patent) at 14.  In 
addition it states “[e]ach nasal element may be configured for a one-time use[,] and thus several 
nasal elements may be packaged and sold as a set.”  Id.  The specification further states that the 
“base layer” of “a nasal element” “may include a peel-off liner which may be removed to expose 
adhesive for securing the nasal element to the user’s nose.”  Id.  And it states that “[t]he peel-off 
liner may include a single continuous strip or a segmented strip.”  Id.  The Court concludes that 
the specification makes clear that the “disposed thereon” language of claim 1 refers to the “peel-
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off liner” that the nasal tab is removed from, which exposes the adhesive layer so that a wearer 
may fasten the nasal tab to the wearer’s nose.  Accordingly, the Court finds that the plaintiff’s 
Accused Product clearly includes “an adhesive disposed thereon[,]” as the plaintiff concedes that 
there is an “adhesive on [the] first surface of [the] base layer” of the Accused Product.  Pl.’s 
Opp’n at 33–34.   
Based on the foregoing analysis, the Court concludes that the defendant is likely to 
succeed in proving that the plaintiff is directly infringing claim 1 of its patent, and therefore is 
also infringing claims 2–18 of the defendant’s patent.  
2. Whether the Defendant’s Patent Is Vulnerable to a Validity Challenge 
 
The plaintiff contends that despite the defendant’s arguments that it is infringing the 
defendant’s patent, the defendant’s patent is invalid for two reasons, and therefore a preliminary 
injunction should not be issued.  First, the plaintiff argues that the defendant’s patent is “invalid 
as indefinite under 35 U.S.C. § 112[,]” Pl.’s Opp’n at 35, because it is “unclear whether the 
[language] ‘a flexible base layer’ and ‘the base layer’ [in claim 1] is referring [to] the same layer 
or [ ] two separate layers,” id. at 36; see Am. Compl., Ex. A (the defendant’s patent) at 15.  The 
plaintiff challenges the clarity of this language, arguing that the terms “‘the base layer’ [and ‘the 
interaction’ both] lack[] [a] sufficient antecedent basis.”  Pl.’s Opp’n at 36–37.13  The defendant 
responds that the terms “the base layer” and “the interaction” both have a clear antecedent basis, 
and that the plaintiff’s argument “demonstrates a fundamental misunderstanding of the law.”  
 
13 Because “[a] claim is indefinite when it contains words or phrases whose meaning is unclear[,]” Manual of Patent 
Examining Procedure ch. 2173.05(e) (9th ed. Rev. Nov. 2024), a claim may be found to be indefinite if it lacks an 
antecedent basis to a term or phrase.  For example, “where a claim refers to ‘said lever’ or ‘the lever,’ where the 
claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the 
limitation was making reference[,]” the lack of clarity could cause the claim to be indefinite.  Id.  In applying this 
principle to the plaintiff’s arguments, the plaintiff seems to argue that the reference to “the base layer” and “the 
interaction” in claim 1 are phrases that lack clear meaning and cause claim 1 to be indefinite.   
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Def.’s Reply at 13.  Second, the plaintiff argues that the defendant’s patent is invalid as obvious 
“in view of the prior art[,]” namely “U.S. Patent No. 7,793,661 to Macken (‘Macken’) in view of 
U.S. Patent Publication No. 2005/0139215A1 to Riach JR. ([‘]Riach’).”  Pl.’s Opp’n at 37.  The 
defendant argues that the plaintiff “fails to show obviousness where it improperly attempts to 
combine [the] prior art[ of Macken and Riach] [ ] but there [was] no motivation to combine these 
references and, even if there was, taken together they still fail to teach all the limitations of the 
[defendant’s p]atent.”  Def.’s Reply at 14. 
A “patent carries with it a presumption of validity under 35 U.S.C. § 282.”  Tinnus Enters ., 
LLC, 846 F.3d at  1205.  “The burden on the accused infringer to show a substantial question of 
invalidity at the preliminary injunction stage is lower than what is required to prove invalidity at 
trial.”  Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1006 (Fed. Cir. 2009).  
During the preliminary injunction stage of a case, “[v]ulnerability is the issue . . . , while validity 
is the issue at trial.”   Amazon.com, Inc., 239 F.3d at  1359.  Thus, in order to preclude a 
preliminary injunction from being issued, the plaintiff must at least show that the defendant’s 
patent is vulnerable to a validity challenge.  Once the plaintiff makes that showing, the defendant 
“must show it will likely withstand the challenges to the validity of the patent to obtain a 
preliminary injunction.”  Natera, Inc. v. NeoGenomics Lab., Inc., 106 F.4th 1369, 1376–77 (Fed. 
Cir. 2024).  The Court will address the plaintiff’s validity challenge arguments in turn, beginning 
first with indefiniteness and then addressing obviousness.  
a. Indefiniteness  
35 U.S.C. § 112(a) requires that a “specification” in a patent  
contain a written description of the invention, and of the manner and process of 
making and using it, in such full, clear, concise, and exact terms as to enable any 
person skilled in the art to which it pertains, or with which it is most nearly 
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connected, to make and use the same, and shall set forth the best mode 
contemplated by the inventor or joint inventor of carrying out the invention. 
 
Therefore, “a patent is invalid for indefiniteness if its claims, read in light of the specification 
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those 
skilled in the art about the scope of the invention.”  Nautilus, Inc. v. Biosig Instruments, Inc., 572 
U.S. 898, 901 (2014).  Additionally, “a patent must be precise enough to afford clear notice of 
what is claimed, thereby apprising the public of what is still open to them.”  Id. at 909 (internal 
brackets and quotations omitted).  At the same time, “the definiteness requirement must take into 
account the inherent limitations of language” and “[s]ome modicum of uncertainty . . . is the 
‘price of ensuring the appropriate incentives for innovation.’”  Id.  (quoting Festo Corp. v. 
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 732 (2002)); see In re Packard, 751 F.3d 
1307, 1313 (Fed. Cir. 2014) (explaining that the definiteness “requirement is not a demand for 
unreasonable precision” and that “verbal precision” in ever y case is not possible “in a patent 
system that actually works, in practice”).   
Focusing on the following language, the plaintiff argues that it is “unclear whether the 
recited ‘a flexible base layer’ and ‘the base layer’ are referring [to] the same layer or to two 
separate layers.”  Pl.’s Opp’n at 36. 
[A] flexible base layer including a first surface and an opposing second surface, 
the first surface having an adhesive disposed thereon to enable the first surface to 
be selectively attachable to the nose of the wearer;  
 
a metallic element coupled to the second surface of the base layer and being 
configured to interact with the magnet when the magnet is positioned adjacent the 
nose of the wearer  and the flexible base layer is attached to the nose of the 
wearer, the interaction between the metallic element and the magnet imparting a 
dilating force on the nose of the wearer causing the nose of the wearer to dilate[.] 
 
Am. Compl., Ex. A (the defendant’s patent) at 15 (emphasis added).  The plaintiff contends that 
“the interaction” in the above-quoted language lacks a sufficient antecedent basis.  Pl.’s Opp’n at 
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37.  The plaintiff cites the Federal Circuit’s unpublished opinion in Tuna Processors, Inc. v. 
Hawaii Int’l. Seafood, Inc., 327 F. App’x. 204, 210 (Fed. Cir. 2009), to  contend that “every term 
referring to an element of the claimed invention must first be introduced with an indefinite article 
such as ‘a’ or’ an’ and then subsequently must be referred to with a definite article such as ‘the’ 
or the term ‘said.’”  Pl.’s Opp’n at 36.  But nowhere in the Federal Circuit’s opinion does the 
court indicate that this drafting practice takes precedence over the plain language of the claim as 
a whole.  In fact, in Tuna Processors, Inc., the Federal Circuit analyzed the chronological 
reference of the disputed term throughout each step of the claim before explaining that 
“traditional claim drafting practice  . . . support[ed the court’s] conclusion.”  327 F. App’ x. at 
210; cf. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987) 
(explaining that an antecedent basis can be present even by implication).   
When analyzing the disputed language, it is clear that each disputed term does in fact 
h
ave a proper antecedent basis.  To start, “a flexible base layer” is described as including two 
surfaces—“a first surface and an opposing second surface .”  Am. Compl., Ex. A at 15.  The first 
surface being the adhesive surface that attaches to the nose of the wearer.  Id.  The “second 
surface” of “the base layer” being the surface that has the metallic element that “interact[s]” with 
“the magnet.”  Id.  It is therefore clear from the language itself what is claimed in the disputed 
paragraphs, and the Court is not persuaded by the plaintiff’s flawed interpretation, since it is 
understood that “[i]nherent components of elements recited have antecedent basis in the 
recitation of the components themselves.”  Manual of Patent Examining Procedure 
ch. 2173.05(e) (9th ed. Rev. Nov. 2024); see, e.g., Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 
(Fed. Cir. 2001) (explaining that “the limitation the outer surface of said sphere would not 
require an antecedent recitation that the sphere have an outer surface”) (internal quotations 
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omitted)).  Additionally, “the failure to provide explicit antecedent basis for terms does not 
always render a claim indefinite.”  Manual of Patent Examining Procedure ch. 2173.05(e) (9th 
ed. Rev. Nov. 2024).  Instead, “[i]f the scope of a claim would be reasonable ascertainable by 
those skilled in the art, then the claim is not indefinite.”  Id.  Accordingly, the Court finds that 
the plaintiff’s indefiniteness argument fails to support its position that the defendant’s patent is 
vulnerable to a validity challenge. 
b. Obviousness 
The plaintiff contends that the defendant’s patent is obvious in light of the Macken patent 
and the Riach patent application and therefore a preliminary injunction should not issue.  See 
generally Pl.’s Opp’n at 37–40.  The defendant responds that the plaintiff’s obviousness 
argument fails “at least because there is no motivation to combine the [Macken patent or the 
Riach patent application,] Def.’s Reply at 14, but also because the Riach patent application 
“teaches away from the limitations of the” defendant’s patent, id. at 15.  Moreover, the defendant 
argues that the plaintiff’s obviousness argument also fails because the plaintiff has failed “to 
show that these two pieces of prior art in combination teach all the limitations of the” 
defendant’s patent.  Id. at 16.   
A claim is invalid for obviousness “if the differences between the claimed invention and the 
prior art are such that the claimed invention as a whole would have been obvious before the 
effective filing date of the claimed invention to a person having ordinary skill in the art to which 
the claimed invention pertains.”  35 U.S.C. § 103(a).  “In determining whether there would have 
been a motivation to combine prior art references to arrive at the claimed invention, a challenger 
must show a reason why a skilled artisan would have made the combination.”  Natera, 106 F.4th 
at 1376; Amazon.com, Inc., 239 F.3d at 1364 (“The relevant inquiry is what a hypothetical 
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ordinarily skilled artisan would have gleaned from the cited references at the time that the patent 
application leading to the [ ] patent was filed.”).  This is a question of law based on underlying 
factual determinations.  Id.; Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 
1360 (Fed. Cir. 2012) (same).     
Before discussing the plaintiff’s obviousness argument, a brief overview of the Macken 
patent and the Riach patent application is required.  The Macken patent is described as “[a]n 
anti-snoring device that attaches to a specific area of the neck.”  Pl.’s Opp’n, Ex. 4 (Macken 
Patent) at 2.  “The attachment means can be an adhesive, a clip or an implant.”  Id.  The device 
works by “exert[ing] a predetermined pulling force on this area of the neck, causing this area of 
the neck to expand outward from its normal position.”  Id.  “In the preferred embodiment [of the 
anti-snoring device], adhesive patches are attached to the skin to cover two responsive points 
along the left and right edges of the trachea.”  Id. at 11.  “The pulling force to expand these areas 
is generated by a separate springy connector that pulls both patches apart with a predetermined 
force.”  Id.  Specifically, claim 1 of the Macken patent describes “an adhesive skin connecting 
member disposed on said inside surface between said first and second ends[.]”  Id. at 15.  Claim 
3 states, in part, “wherein said skin connecting member comprises an adhesive disposed on said 
inside surface of said arch[,]” and claim 4 states that the “said adhesive is a double-sided 
adhesive tape.”  Id.   
The Riach patent application describes an “invention [ ] related to a magnetic nose pad 
apparatus for use with a non-invasive magnetic method for sinus therapy.”  Pl.’s Opp’n, Ex. 5 
(Riach Application) at 8.  The patent application explains that the sinus therapy is meant to 
“cause[] a reduction in blood aggregation of the blood in the nose/sinus area veins and 
capillaries . . . [,which is designed to] improv[e] circulation throughout the nose/sinus area as 
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non-aggregated blood is better able to transfer oxygen, antibodies and immune system agents 
throughout the nose/sinus area.”  Id.  Specifically, claims 1, 5, and 6 of the Riach patent 
application detail a disposable adhesive strip “for sinus therapy comprising: a retaining device 
adapted to fit on a user[’]s nose, [with] said retaining clip having at least one magnet oriented to 
project a magnetic north filed into the users nose and/or sinus area.”  Id. at 9.  Additionally, 
according to claim 3 of the Riach Application, the nosepiece of the apparatus is comprised of “at 
least two magnets wherein one magnet is located on each side of the nosepiece.”  Id.  Claim 4 
states that the apparatus “is a[n] unshaped clip comprising a pair of nose pads and one pad is 
located on each leg of the clip and there is a magnet on each nose pad.”  Id.   
The plaintiff notes that the United States Patent and Trademark Office (hereinafter 
referred to as the “Patent Office”) explained in a “Detailed Action” that now-claim 1 of the 
defendant’s patent was initially rejected by the Patent Office after the Patent Office found that 
the Macken patent taught claim 1 of the defendant’s patent.  See Pl.’s Opp’n at 37–38; 2d 
Watkins Decl., Ex. 6 (Office Action Summary) at 4–5.  According to the plaintiff, following the 
rejection, the inventor of the defendant’s patent amended now-claim 1 and resubmitted the 
application resolving the grounds for the earlier rejection by the Patent Office.  2d Watkins 
Decl., Ex. 7 (Response to Office Action Summary) at 3, 9.  Subsequently, the Patent Office 
accepted the amended claims in a Notice of Allowance concluding that the Macken patent 
“fail[ed] to teach or render obvious the overall claim invention” described in claim 1 because  
[t]he prior art of [the] Macken [patent] teaches a metallic element [  ] that is not 
covered by an outer layer. Macken teaches that a metallic element with a hole and 
[a] spherical magnetic element. The spherical magnetic element being drawn into 
the hole of the metallic element with no other material between. 
 
2d Watkins Decl., Ex. 8 (Notice of Allowance) at 7.   
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The plaintiff contends that the Riach application “provid[es] the one missing limitation 
that the [patent] examiner was looking for [when considering the defendant’s patent application], 
which was an outer layer coupled to the base layer and extending over” the metallic element.  
Hr’g Tr. at 19:17–19; Pl.’s Opp’n at 38.  The plaintiff argues that the device described in the 
Riach application “helps expand the nasal passages[,]” which in turn would “help [the wearer] 
breathe better.”  Hr’g Tr. at 16:17–22.  The defendant responds that the plaintiff has failed to 
“explain why a person of ordinary skill in the art would combine the[ Macken patent and the 
Riach application] that solve entirely different problems in entirely different ways.”  Def.’s 
Reply at 15.  The Court agrees with the defendant.   
At the outset, the Court notes that the invention described in the Riach application 
stimulates blood flow via “at least one magnet oriented to direct a north magnetic field towards 
the nose/sinus area(s)” of the wearer.  2d Watkins Decl., Ex. 5 (Riach Application) at 8.  Thus, 
the purpose of the magnet(s) in the device described in the Riach application is performing an 
entirely different function than the magnets included in the defendant’s medical device, i.e., the 
magnets are not aiding in the expansion of the wearer’s nasal passage.  But, more importantly, 
the Court notes that the Riach application does not include the “one missing limitation that,” 
Hr’g Tr. at 19:17–19, was not included in the Macken patent.  Specifically, the plaintiff contends 
that the missing limitation in the Macken patent that would have made the defendant’s patent 
obvious was the fact that the Macken patent did not describe “an outer layer to cover the steel 
disk of Macken at least partially,” Pl.’s Opp’n at 40, but neither does the Riach application.  See 
generally 2d Watkins Decl., Ex. 5 (Riach Application).  Moreover, as the defendant notes, the 
magnets detailed in the Riach application are to be placed on the same side of the wearer’s nose 
to stimulate blood flow, whereas the magnets in the defendant’s medical device are placed on the 
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wearer so that the magnets interact with an additional magnetic strip.  See Def.’s Reply at 15 
(arguing that “the Riach reference actually teaches away from the limitations of the” defendant’s 
patent).   
The Riach application describes that the magnet(s) in that device may be mounted “by, 
f
or example, adhering at least one magnet(s) with a suitable adhesive, molding the magnet into 
the nose area . . . or by the creation of a suitable hole into which the magnet(s) is/are press fit and 
or adhered.”  2d Watkins Decl., Ex. 5 (Riach Application) at 9.  Or, if the wearer were to use a 
“nose clip,” the nose clip could be “coupled with two nose pads . . . containing magnets.”  Id.  
“In an alternative embodiment, the magnets may be mounted on the form of adhesive nose 
channel expanding devices commonly used by athletes.”  Id.  These descriptions, therefore, do 
not describe that the magnet is covered by an outer layer as the plaintiff contends.  See 
Broadcom Corp. v. Int’l Trade Comm’n, 28 F. 4th 240, 251 (Fed. Cir. 2022) (affirming the 
United States Patent and Trademark Office Patent Trial and Appeal Board’s finding of no 
invalidity for obviousness where cited prior art references did not teach one of the limitations of 
the patent-at-issue).   
Additionally, the
  Court does not find that the plaintiff has shown that a person of ordinary 
skill in the art at the time of the invention would have combined the teachings of the Macken 
patent with the teachings of the Riach application.  This case is unlike other Federal Circuit cases 
where the court found that the patent-at-issue was vulnerable to a validity challenge.  For 
example, in Amazon.com, Inc., the court concluded that the patent-at-issue was vulnerable to a 
validity challenge because the prior art considered by the court similarly included a “single 
action ordering technology,” 239 F.3d at 1360, 1365, or “a multiple-step ordering process[,]” id. 
at 1363, or the ability to store “purchaser data on [a] server system for subsequent retrieval 
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indexed by an identifier transmitted from the client system,” id. at 1363–64, among other 
features that the patent-at-issue contained.  The court held that the features included in the prior 
art considered in that case were similar to the claims in the patent-at-issue and thus made the 
patent-at-issue vulnerable to a validity challenge.  Id. at 1366.  On the other hand, this case is 
more akin to Natera, Inc., where the Federal Circuit held that a challenger of a patent “failed to 
articulate a reason why a skilled artisan would have been motivated to” use a feature of a 
different patent to create the patent-at-issue when the challenger “put forth little more than [a] 
conclusory argument with no meaningful supporting documentation.”  106 F.4th at 1377.  Here, 
besides highlighting the Macken patent—which the Patent Office already decided did not teach 
the defendant’s patent—and including the Riach Application, the plaintiff has not explained the 
reason or motivation a person of ordinary skill in the art at the time of the invention would have 
possessed and therefore would have combined these two prior arts.  See BlephEx, LLC, 24 F.4th 
at 1403 (holding that an obviousness argument failed when the challenger “failed to present any 
evidence regarding the factual considerations underlying the obviousness inquiry, including 
whether a skilled artisan would have been motivated to modify the device” in the prior art).  
Lastly, the
 plaintiff does not deny, as it must,  that a patent is presumed valid, Hr’g Tr. at 
15:15–16, but contends that here the Patent Office did not locate the prior art of Riach because 
“[t]hey don’t [ ] have time to spend tens of hours searching for prior art.”  Id. at 15:17–23.  The 
plaintiff argues that if the Patent Office had been aware of the Riach Application, the 
combination of the prior art in the Riach Application and the Macken patent would have made 
the defendant’s patent “obvious to one having ordinary skill in the art at the time of the 
invention.”  Pl.’s Opp’n at 40.  The Court is not persuaded by this argument after having 
reviewed the prior art itself and concluding that the Riach Application fails to include any similar 
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claims as the defendant’s patent besides the use of magnets and adhesive on the nose of a wearer 
in totally different ways and for a wholly different purpose.   
Accordingly, the Court finds that the plaintiff has not shown that the validity of the 
defendant’s patent is vulnerable, either to an indefiniteness challenge or an obviousness 
challenge, and therefore, the Court finds that the defendant is likely to succeed on the merits of 
its patent infringement claim.  
B. Irreparable Harm 
 
The Court next assesses whether the defendant will suffer irreparable harm in the absence 
of a preliminary injunction.  According to the defendant, the plaintiff’s alleged infringement 
“inflicts myriad forms of irreparable harm on” it, including:  (1) “erod[ing the defendant]’s 
reputation as an innovator and provider of highly effective, high-quality products;” (2) 
“erod[ing] the price for [the defendant]’s products;” (3) “turn[ing] consumers off of [the 
defendant]’s innovative technology by misleading them into believing that [the plaintiff]’s poor 
quality [ ] products reflect the value of [the defendant]’s innovation[;]” and (4) “causing [the 
defendant] to lose customers and goodwill.”  Def.’s PI Mot. at 29.  In a brief response, the 
plaintiff does not seem to refute most of the alleged irreparable harms that the defendant 
contends it will suffer, but instead argues that the defendant “sat on its hands for” eleven months 
after learning that the plaintiff’s product was being sold on Amazon before filing its preliminary 
injunction motion, and therefore, the plaintiff contends that the defendant “cannot now 
demonstrate irreparable harm.”  Pl.’s Opp’n at 31.  Additionally, the plaintiff contends that the 
defendant “advance[ed]” “negative product reviews” against the plaintiff’s product on Amazon 
and should not “be permitted to load the deck with its own invective.”  Id.  The Court disagrees 
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with the plaintiff and finds that the defendant has shown that it will suffer irreparable harm in the 
absence of a preliminary injunction.  
In order to establish irreparable injury, a party must meet a “high standard.”  Chaplaincy 
of Full Gospel Churches v. England, 454 F.3d 290, 297 (D.C. Cir. 2006).  The alleged injury 
“must be both certain and great,” “actual and not theoretical,” and “of such imminence that there 
is a ‘clear and present’ need for equitable relief.”  Id. at 297–98 (quoting Wis. Gas Co. v. Fed. 
Energy Regul. Comm’n, 758 F.2d 669, 674 (D.C. Cir. 1985) (per curiam)).  Furthermore, the 
alleged injury “must be beyond remediation”; in other words, the party alleging irreparable 
injury must establish that “[t]he possibility [of] adequate compensatory or other corrective 
relief . . . at a later date . . . weighs heavily against a claim of irreparable harm.”  Id. at 297–98. 
(quoting Wis. Gas Co., 758 F.2d at 674); Sampson v. Murray, 415 U.S. 61, 90, 94 (1974) (“The 
key word in this consideration is irreparable. Mere injuries, however substantial, in terms of 
money, time and energy necessarily expended in the absence of a stay, are not enough.”) 
(quoting Va. Petroleum Jobbers Ass’n v. Fed. Power Comm’n, 259 F.2d 921, 925 (D.C. Cir. 
1958)).  Additionally, at the preliminary injunction stage of a patent infringement case, the 
movant must “establish a causal nexus between the alleged infringement and the alleged harm.”  
Natera, Inc., 106 F.4th at 1378.  For example, evidence of head-to-head competition and lost 
market share can support a showing of irreparable harm.  Id. (citing TEK Glob., S.R.L. v. Sealant 
Sys. Int’l, Inc., 920 F.3d 777, 793 (Fed. Cir. 2019)); see Acumed LLC v. Stryker Corp., 551 F.3d 
1323, 1328 (Fed. Cir. 2008) (“The essential attribute of a patent grant is that it provides a right to 
exclude competitors from infringing the patent”) (citing 35 U.S.C. § 154(a)(1)).  
At the outset, the defendant contends that the plaintiff’s Accused Product directly 
competes with a product that “is at the core of the [defendant]’s business.”  Def.’s PI Mot. at 30, 
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32.  The defendant argues that the plaintiff’s product harms the defendant’s “reputation as an 
innovator by creating a perception among consumers that [the defendant] is not the exclusive 
source of the technology in the [defendant’s] [p]atent[,]” thereby “degrad[ing] [the defendant’s] 
reputation for quality and effectiveness.”  Id. at 31.  The Court agrees that the record before it 
supports the defendant’s position.  Specifically, the defendant reiterates that it does not license its 
patent to be sold by any other supplier.  Id. at 31–32.  This is because the defendant seeks to 
“protect the quality of [its] products” since, according to the defendant, the quality of its products 
is the reason for the defendant’s success.  Id. at 32.  Courts have concluded that evidence that a 
patentee does not license its product is a factor that supports a showing of an irreparable injury 
experienced by the patentee in a patent infringement case.  See Natera, Inc., 106 F.4th at 1379 
(holding that the district court did not err in considering the patentee’s unwillingness to license 
its patent); Presidio Components, Inc. v. Am. Technical Ceramics Corp., 702 F.3d 1351, 1363 
(Fed. Cir. 2012) (same).14   
 
14 As noted earlier, the plaintiff contends that the defendant has not demonstrated irreparable harm because the 
defendant “sat on its hands for” eleven months before seeking a preliminary injunction.  Pl.’s Opp’n at 31.  The 
defendant responds that it has been “picking off hundreds of infringers at a time[,]” “all of whom are copying 
aspects of [the defendant’s] Breathing Strips after the product went viral on social media” via Amazon’s APEX 
program.  Def.’s Reply at 17–18.  Additionally, the defendant explains that it filed an APEX complaint against the 
plaintiff on Amazon after becoming aware that the plaintiff had “new stock” and was allegedly selling an infringing 
version of the defendant’s product.  Id. at 19.  And, Amazon subsequently took down the plaintiff’s Amazon page as 
a result of the defendant’s APEX complaint.  Id.  However, four months later, the defendant “notice[d] that [the 
plaintiff’s] nasal adhesives [were] back on Amazon[,]” causing the defendant to “file another APEX complaint 
against [the plaintiff].”  Id.  The defendant contends that these actions demonstrate that it “has been diligently 
working to stop [the plaintiff]’s infringement since [it] first learned of its” Accused Product.  Id. at 20.  The Court 
agrees and finds that the defendant has not unduly delayed its effort to enjoin the plaintiff from selling the Accused 
Product.  As the defendant rightfully relies on an analogous situation, the Federal Circuit has concluded that when a 
patentee is “involved in ongoing infringement litigation over related patents during the” period before it moves for a 
preliminary injunction, the court has held that the patentee did not “unreasonabl[y] delay” in bringing its patent 
infringement suit.  See Natera, Inc., 106 F.4th at 1380 (holding that seven months delay was not unreasonable).  
Other members of this court have concluded the same.  See Texas Child.’s Hosp. v. Burwell, 76 F. Supp. 3d 224, 
244–45 (D.D.C. 2014) (finding that the plaintiff “diligent[ly] pursued [ ] a variety of avenues” in the three years 
before filing its preliminary injunction motion and therefore the court declined to find that the plaintiff unreasonably 
delayed its motion).   
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Additionally, because the defendant holds itself out in the market as the seller of an 
exclusive, patented product—but the plaintiff sells the Accused Product which purportedly is the 
same as the product sold by the defendant—the defendant credibly contends that it is being 
portrayed as dishonest to consumers, thereby ruining its reputation in the market.  See Def.’s PI 
Mot. at 32; Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922, 930 (Fed. Cir. 2012) 
(affirming a district court’s finding of irreparable harm when the testimony included evidence 
that a patentee was “precluded from marketing to potential and existing customers that it [was] 
the exclusive market leader”).  Further, the plaintiff is allegedly selling a product of poorer 
quality than the defendant’s product and taking potential customer sales away from the 
defendant, compounding the reputational and economic harm the defendant will face if the 
plaintiff continues to sell its Accused Product.  See Def.’s PI Mot. at 33–34; Celsis In Vitro, Inc., 
664 F.3d at 930 (affirming a district court’s holding that a patentee would suffer irreparable harm 
because of the “damage to ongoing customer relationships, loss of customer goodwill, . . . and 
loss of business opportunities”).  Illustrating this harm, the defendant asserts that “there is 
already actual confusion and degradation of [the defendant]’s reputation” based on customer 
reviews that warn other consumers that the defendant’s “spreader apparatus [i.e., the magnetic 
nasal strip, is] useless” because the plaintiff’s Accused Product does not stay on the wearer’s 
nose throughout the night.  Def.’s PI Mot. at 33 (citing David Decl., Ex. C (1-star Amazon 
Reviews for Nasal Strips Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore 
Reduction, Bash Stack) at 7 (emphasis omitted); see David Decl., Ex. B (Amazon Product Page 
for Nasal Strips Refill Pack – 30-Day Count – Enhanced Breathing, Sleep Aid & Snore 
Reduction, Bash Stack )at 9 (showing a customer review of the plaintiff’s product in which a 
customer writes that “the magnet part works well, but [the Accused Product] do[es] not stick 
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well to [the customer’s] nose [and] comes unattached f[rom] [the] nose, thus, making the whole 
system not work well”); id. at 10 (listing another customer review which states that the Accused 
Product does not stick to the wearer’s nose “especially once under a little tension from the 
magnet”); id. at 5 (listing customer review which states “[t]hey work with proper placement and 
prep but definitely not as good as the brand name which is what [I’]d thought [I’]d ordered”); id. 
at 3 (showing that Amazon listed the defendant’s magnetic nasal strip in the “product videos” 
section of the plaintiff’s Amazon page); see also 2d Habib Decl. ¶ 14 (explaining that Amazon, 
“without instruction by [the plaintiff,]” “added” the defendant’s “product marketing video” on 
the Accused Product’s Amazon page).
15  
Moreover, the defendant contends that its reputation is particularly sensitive at this time 
because the defendant is still in the early growth stage of selling its medical device.  Def.’s PI 
Mot. at 34–35.  The defendant explains that the plaintiff’s “sale of its infringing nasal adhesives 
 
15 The plaintiff argues that the Court should discredit the defendant’s contention that customer reviews show that the 
plaintiff is tarnishing the defendant’s reputation because the defendant’s own CEO wrote a negative review of the 
Accused Product on the plaintiff’s Amazon page and therefore the defendant’s alleged injury is a product of its own 
doing.  See Pl.’s Opp’n at 31.  To support its contention, the plaintiff cites a declaration attached to its memorandum 
in opposition to the defendant’s motion to dismiss.  See id. (citing Plaintiff’s Memorandum In Opposition To 
Defendant’s Motion to Dismiss For Lack Of Personal Jurisdiction Pursuant To Federal Rule Of Civil Procedure 
12(b)(2) And Transfer Pursuant To 28 U.S.C. § 1406, Or Alternatively Defendant’s Motion To Transfer Pursuant To 
28 U.S.C. § 1404, Ex.2 (Declaration Of Seth A. Watkins In Support Of Plaintiff’s Opposition To Defendant’s 
Motion To Dismiss For Lack Of Personal Jurisdiction Pursuant To Federal Rule of Civil Procedure 12(b)(2) And 
Transfer Pursuant To 28 U.S.C. § 1406, Or Alternatively Defendant’s Motion To Transfer Pursuant To 28 U.S.C. 
§ 1404) ¶ 9, ECF No. 8-3).  The Court finds the plaintiff’s argument unpersuasive for two reasons.  First, the 
defendant’s CEO’s negative review of the Accused Product was a negative review that directly critiqued the 
Accused Product.  See id.  The defendant’s CEO’s review of the Accused Product described it as:  “[v]ery poor 
quality and not safe. . . . This is a cheap knockoff of Intake refills. The mystery adhesive is really poor quality and 
isn’t something I’d want to put on my face. The metal is cheaply made with sharp edges that can cut you… Go get 
the real thing and be cautious out there.”  Id.  This review was not a declaration against the defendant’s interest, but 
instead was a direct negative critique of the Accused Product.  Second, the plaintiff supports its argument by citing 
briefing that is moot in light of the plaintiff’s Amended Complaint.  This is so because when the plaintiff filed its 
Amended Complaint, the briefing regarding the defendant’s motion to dismiss the plaintiff’s first Complaint, 
including the plaintiff’s opposition to the defendant’s motion to dismiss, became moot.  See Min. Order (Sept. 23, 
2025); Barnes v. District of Columbia, 42 F. Supp. 3d 111, 117 (D.D.C. 2014) (“When a plaintiff files an amended 
complaint as of right within 21 days after the filing of the motion to dismiss under Rule 12(b), (e), or (f), the 
amended complaint becomes the operative pleading”); Johnson v. Panetta, 953 F. Supp. 2d 244, 250 (D.D.C.2013) 
(amended complaint timely filed by Court-ordered deadline rendered defendant’s motion to dismiss moot).  
 
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began . . . just as [the defendant] went viral on social media and marketplace recognition was 
affording [the defendant] the opportunity to recoup its development costs and build a broad base 
of consumers.”  Id. at 35 (citing Herbert Decl. ¶¶ 7–8).  The defendant argues that once it losses 
its good reputation in the market, money damages would not be able to cure its harm.  Id. at 35–
36.  This is yet another factor which supports a finding that the defendant will face irreparable 
harm in the absence of a preliminary injunction.  See Celsis In Vitro, Inc., 664 F.3d at 931 
(affirming a finding of irreparable harm when the patentee was in “the growth stage of a 
product” because “it is particularly crucial to be able to distinguish oneself from competitors” 
during that stage which “includes building the brand, expanding the customer base, and 
establishing one’s reputation and leadership in the market.”).  
Lastly, the defendant argues 
 that the plaintiff is “actively eroding [the defendant’s] 
price[]” for its refill tabs the longer “the infringing product remains on the market.”  Def.’s PI 
Mot. at 34.  This is because the defendant offers customers who have opted-in to receive 
scheduled, ongoing, purchases of its refill tabs, i.e., subscribers of the defendant’s refill tabs, a 
discounted price of $24.99 from the initial purchasing price of $32.99.  See id. at 35; see David 
Decl., Ex. A (Intake Breathing Technology, www.intakebreathing.com (Sept. 16, 2025)) at 7.  
Meanwhile, the plaintiff’s Accused Product is regularly priced at $24.99—therefore offering a 
“nearly 25% lower price than the price” the defendant charges for the same product without a 
subscription.  Def.’s PI Mot. at 35.  The defendant explains that it is irreparably harmed by the 
plaintiffs pricing structure because its “subscription model allows [it] to build a large base of 
return customers and provides [it] with a steady source of sales, which is jeopardized by [the 
plaintiff’s] infringement.”  Id. at 35–36.  Therefore, according to the defendant, the plaintiff is 
“eroding the marketplace rate for [the defendant]’s technology” and potentially taking “hundreds 
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of sales per customer from” the defendant.  Id. at 36.  Additionally, the defendant contends that 
the plaintiff is “bring[ing] down consumer[s’] expectations for what the technology should cost.”  
Id.  The Court finds that this evidence shows that the defendant’s product is suffering from price 
erosion due to the Accused Product’s pricing scheme.  See Celsis In Vitro, Inc., 664 F.3d at 930 
(affirming a finding of irreparable harm when the patentee “had a general no-discount policy to 
maintain its premium product pricing that it was forced to break in order to compete with” the 
infringer).   
For all of the foregoing reasons, the  Court finds that the factors asserted by the 
defendant—direct competition, reputational harm, loss of goodwill, and price erosion—
demonstrate that it will suffer irreparable harm if a preliminary injunction is not issued.  See 
Natera, Inc., 106 F.4th at 1379 (holding that lost business partnerships, relationships, 
opportunities, and market share are factors that supported the finding of irreparable harm); Celsis 
In Vitro, Inc., 664 F.3d at 930 (“Price erosion, loss of goodwill, damage to reputation, and loss of 
business opportunities are all valid grounds for finding irreparable harm.”).     
C. The Balance of Equities 
 
Having concluded that the defendant is likely to succeed on the merits and that it will 
face irreparable harm in the absence of a preliminary injunction, the third factor the Court must 
assess in deciding whether to issue a preliminary injunction is determining whether the balance 
of equities counsels in favor of the request.  See Winter, 555 U.S. at 20.  The defendant argues 
that “[b]ecause [its] main business is selling its patented product, the balance of the equities 
favors the patentee, especially because any losses alleged by the infringer upon a preliminary 
injunction would also be incurred by the patentee absent a preliminary injunction.”  Def.’s PI 
Mot. at 37 (emphasis omitted).  The plaintiff responds, arguing that the balance of equities do not 
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favor the issuance of a preliminary injunction because it “would be unable to sell its Accused 
Product, and it would suffer losses despite it being unlikely that it infringes the patent-in-suit.”  
Pl.’s Opp’n at 41.  The Court disagrees with the plaintiff and finds that the balance of equities 
clearly favors the issuance of a preliminary injunction, especially because the Court has 
concluded that the plaintiff is likely infringing the defendant’s patent and causing the defendant 
irreparable harm. 
Importantly, the defendant holds a patent in the nasal adhesive product that it sells, unlike 
the plaintiff who does not hold a patent in the Accused Product.  Thus, any alleged harm the 
plaintiff may experience from being enjoined from selling, importing, or using the Accused 
Product will also, if not even to a greater degree, be experienced by the defendant.  As the 
Federal Circuit explained in Celsis In Vitro, any alleged harm by an accused infringer is “of 
lesser scope than the harm to the [patentee] and also protectable by a bond.”  664 F.3d at 931.  
Accordingly, as described below, the Court can order, pursuant to Federal Rule of Civil 
Procedure 65(c), that the defendant post security for any “costs and damages sustained by” the 
plaintiff in the event that it is ultimately determined that it was wrongfully enjoined from selling, 
importing, or using its Accused Product.  Moreover, any alleged losses the plaintiff may 
experience during the existence of the injunction is a result of the plaintiff’s “own calculated risk 
in selling a product with knowledge of [the defendant’s] patent.”  Celsis In Vitro, Inc., 664 F.3d 
at 931.  For these reasons, the Court concludes that the balance of equities favors the issuance of 
a preliminary injunction.   
D. The Public Interest 
 
The final preliminary injunction factor that the Court must consider is whether a 
preliminary injunction would be in the public interest.  See Trebro Mfg., Inc., 748 F.3d at 1171 
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(citing Winter, 555 U.S. at 20).  The defendant argues that granting it a preliminary injunction 
would be in the public interest because “the public has an ‘interest in the judicial protection of 
property rights in inventive technology’” and that interest “outweighs any interest the public has 
in purchasing cheaper infringing products.”  Def.’s Reply at 23 (quoting Douglas Dynamics, 
LLC v. Buyers Prods. Co., 717 F.3d 1336, 1346 (Fed. Cir. 2013)); Def.’s PI Mot. at 39.  
Additionally, the defendant argues that the plaintiff’s “infringement is actively harming 
consumers by misleading them into buying [the Accused Product] that does not work.”  Def.’s PI 
Mot. at 38.  Moreover, according to the defendant, the plaintiff’s infringement “is likely to cause 
confusion and deceive consumers” because the plaintiff “mak[es] misleading references to [the 
defendant’s] own product” in the plaintiff’s marketing, despite the fact that the plaintiff does not 
sell the defendant’s product.  Id. at 39.  And, the plaintiff does not refute most of these specific 
arguments made by the defendant.  Instead, the plaintiff simply argues that “this case involves a 
private dispute” and so “[t]here is no compelling need . . . for an extraordinary remedy [such as] 
a preliminary injunction.”  Pl.’s Opp’n at 41.  The plaintiff’s position is unpersuasive. 
The Court finds that the public interest favors the issuance of a preliminary injunction, 
l
argely because the public has an interest in securing a patentee’s right to protect its invention 
through the exclusion of other competitors.  See Celsis In Vitro, Inc., 664 F.3d at 931–32 
(explaining that the public interest is served when a patentee’s investment, research, and 
development is “encouraged and protected by the exclusionary rights conveyed in valid 
patents”).  As the defendant notes, this is a bedrock principle of patent law.  See Def.’s Reply at 
23–24; see Shaw v. Cooper, 32 U.S. 292, 318 (1833) (“The policy of granting exclusive 
privileges in certain cases, was deemed of so much importance in a national point of view, that 
power was given to congress in the federal constitution.”).  Therefore, contrary to the plaintiff’s 
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contention, matters involving patent law are not “private dispute[s,]” Pl.’s Opp’n at 41, in which 
the courts need not involve themselves.  Instead, “patent law was designed for the public 
benefit,” Copper, 32 U.S. at 320, which, in exchange for “the profits arising from the sale of the 
thing invented[,]” the public receives “the exercise of [the] genius and skill [of the inventor] in 
making discoveries which may be useful to society.”  Id.  Accordingly, the public interest clearly 
weighs in favor of issuing the preliminary injunction requested by the defendant.16 
E. Security 
 
The last matter the Court must address is the amount, if any, the defendant should be 
required to post as security “to pay the costs and damages sustained by” the plaintiff if it is later 
found to “have been wrongfully enjoined.”  Fed. R. Civ. P. 65(c).  This issue has not been 
briefed by either party, so the Court will allow the parties to submit supplemental briefing 
regarding the appropriate amount, if any, the defendant should be ordered to post as security 
 
16 The Court appreciates the plaintiff’s concern about compliance with the District’s Local Civil Rules and this 
Court’s General Order, but for several reasons, the Court will not deny the issuance of the preliminary injunction in 
this case based on the plaintiff’s argument that the defendant allegedly failed to confer with it before filing its 
motion for a preliminary injunction.  See Pl.’s Opp’n at 21.  First, the Court has concluded that each Winter 
preliminary injunction factor weighs in favor of the issuance of a preliminary injunction in this case.  Second, the 
plaintiff’s declaration represents that the defendant notified the plaintiff on September 8, 2025, that the defendant 
intended to file a motion for a preliminary injunction and asked whether the plaintiff had “any room” to settle “in 
lieu of that.”  Pl.’s Opp’n at 20–21 (citing 2d Watkins Decl. ¶ 4).  Then again on the afternoon before the defendant 
filed its motion for a preliminary injunction, counsel for the defendant emailed counsel for the plaintiff and alerted 
plaintiff’s counsel that the defendant intended to file a motion for preliminary injunction if the plaintiff did not 
“agree to immediately cease offering for sale [the Accused Product].”  Id. at 21 (citing 2d Watkins Decl. ¶ 6).  
Counsel for the plaintiff contends that he “was neither in the office nor working on the afternoon or evening of 
Friday, September 19, 2025.”  Id.  Despite the plaintiff’s counsel’s representations, the Court finds that the 
defendant did in fact alert the plaintiff that it intended to file a motion for preliminary injunction if the plaintiff did 
not “agree to immediately cease offering for sale [the Accused Product,]” Id. at 21, at least eleven days before the 
defendant filed its motion.  Third, at the outset of this dispute between the parties, after Amazon sent the plaintiff the 
email alerting the plaintiff that the defendant accused it of infringing the defendant’s patent, the parties engaged in 
discussions on three different days regarding the “infringement allegation made to Amazon[].”  Am. Compl. ¶ 8.  At 
the culmination of those discussions, on about July 23, 2025, the defendant “declined to retract the infringement 
allegation it made to Amazon[] concerning the Accused Product . . . and [ ] declined any resolution other than the 
cessation of sales of the Accused Product by” the plaintiff.  Id.  Finally, the plaintiff has not indicated that it intends 
to cease offering for sale or importing its Accused Product in the event that the defendant agreed to withdraw its 
motion for preliminary injunction.  For these reasons, the Court is not persuaded by the plaintiff’s argument that the 
defendant did not essentially comply with Local Civil Rule 7(m) and the Court’s General Order before filing its 
motion for a preliminary injunction, as the objective of both were satisfied.   
 
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before the Court makes that determination.  See Sanofi–Synthelabo v. Apotex, Inc., 470 F.3d 
1368, 1386 (Fed. Cir. 2006) (“The amount of a bond is a determination that rests within the 
sound discretion of a trial court.”).  
IV. CONCLUSION 
Because the defendant has not only shown that it is likely to succeed on the merits, but 
has also shown that it is likely to suffer irreparable harm in the absence of a preliminary 
injunction, and that the balance of equities and the public interest favor the issuance of a 
preliminary injunction, the Court enjoins the plaintiff from offering for sale, selling, importing, 
and/or using the Accused Product during the pendency of this litigation, unless otherwise ordered 
by the Court.  
SO ORDERED this 27th day of April, 2026.
17 
            
        REGGIE B. WALTON 
        United States District Judge 
 
 
 
17 The Court will contemporaneously issue an Order consistent with this Memorandum Opinion.  
Case 1:25-cv-02443-RBW     Document 41     Filed 04/27/26     Page 39 of 39

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