DCT
8:16-cv-01476
TOMI Environmental Solutions Inc v. Sixlog Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TOMI Environmental Solutions Inc. (Florida)
- Defendant: Sixlog Corp (Delaware); Astro Pak Corp (Delaware)
- Plaintiff’s Counsel: Morgan Lewis & Bockius LLP
- Case Identification: 2:16-cv-05916, C.D. Cal., 08/08/2016
- Venue Allegations: Venue is alleged to be proper in the Central District of California as it is the principal place of business for both defendants, where they conduct systematic business and have purposefully directed activities.
- Core Dispute: Plaintiff alleges that Defendants’ biological decontamination services and related equipment infringe two patents covering technology for generating an activated mist, and further alleges false advertising and trademark-related claims.
- Technical Context: The technology at issue involves systems that generate and apply an "activated ionized hydrogen peroxide" mist to decontaminate surfaces from biological and chemical agents.
- Key Procedural History: The complaint alleges a prior business relationship where Plaintiff sold equipment to Defendants. The dispute appears to have arisen after Defendants allegedly began removing Plaintiff’s branding from this equipment, manufacturing their own infringing versions, and marketing the technology as their own proprietary and patented process.
Case Timeline
| Date | Event |
|---|---|
| 1999-05-06 | Priority Date for ’487 and ’592 Patents |
| 2005-11-29 | U.S. Patent No. 6,969,487 Issues |
| 2006-03-07 | U.S. Patent No. 7,008,592 Issues |
| 2010-01-01 | Alleged earliest date of Defendants' knowledge of the patents |
| 2016-08-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,969,487 - "Denaturing of a Biochemical Agent Using an Activated Cleaning Fluid Mist" (Issued Nov. 29, 2005)
The Invention Explained
- Problem Addressed: The patent identifies a need for a more effective and versatile method of neutralizing harmful biochemical agents, particularly in the context of bioterrorism, where conventional decontamination methods are inadequate for widespread or difficult-to-reach contamination (’487 Patent, col. 1:40-61).
- The Patented Solution: The invention is a method that generates an "activated cleaning fluid mist" containing reactive hydroxyl species, such as ionized hydrogen peroxide. This mist is produced at or near standard atmospheric pressure, allowing it to be dispersed broadly like an airborne agent to neutralize contaminants on contact, even in open spaces or hidden locations, without leaving persistent harmful residues (’487 Patent, Abstract; col. 2:1-18). The general process involves providing a cleaning fluid, generating a mist from it, and then "activating" the mist with an energy source before contacting it with a target agent (’487 Patent, Fig. 1).
- Technical Importance: This technology offered a method for decontamination that did not require a vacuum or sealed chamber and used an active agent that decomposes into harmless byproducts (water and oxygen), making it suitable for a wider range of civilian and military applications (’487 Patent, col. 3:44-64).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶34).
- Independent Claim 1 recites a method for denaturing a biochemical agent with the following essential elements:
- Providing a source of a cleaning fluid.
- Producing an activated cleaning fluid mist from the fluid using electric or photonic energy.
- The mist must comprise activated hydroxyl species, be in an activated state at substantially one atmosphere ambient pressure, and include fine droplets of the cleaning fluid.
- Contacting the mist to a biochemical agent.
U.S. Patent No. 7,008,592 - "Decontamination Apparatus and Method Using an Activated Cleaning Fluid Mist" (Issued Mar. 7, 2006)
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenge as its parent ’487 Patent: the need for improved decontamination of microbiological organisms in various environments, including those affected by biological warfare or bioterrorism (’592 Patent, col. 1:36-53).
- The Patented Solution: This patent focuses on the apparatus used to perform the decontamination. It claims a device comprising a cleaning fluid source, a mist generator that operates at ambient pressure, and an "activator" that uses an energy source to excite the cleaning fluid mist into a highly reactive state (e.g., an ion, plasma, or free radical state) (’592 Patent, Abstract; col. 2:20-27). This apparatus is the physical embodiment of the method described in the '487 Patent.
- Technical Importance: By claiming a tangible apparatus, the patent covers the deployable hardware that makes the decontamination method practical, from handheld wands to larger systems integrated into building ventilation (’592 Patent, col. 7:46-61; col. 8:8-14).
Key Claims at a Glance
- The complaint asserts at least independent claims 1 and 14 (Compl. ¶¶42-43).
- Independent Claim 1 recites a decontamination apparatus with the following essential elements:
- A source of a cleaning fluid.
- A mist generator that outputs a mist at substantially one atmosphere ambient pressure.
- An activator positioned to activate the mist, producing an activated mist with species excited to an ion, plasma, or free radical state.
- Independent Claim 14 recites a method for decontamination, very similar to claim 1 of the ’487 Patent, with the key elements of producing an activated mist with species excited to an ion, plasma, or free radical state at ambient pressure and contacting it with a location to be decontaminated.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants' "decontamination and sterilization services" and the associated "decontamination equipment" that Defendants allegedly use, manufacture, sell, or lease (Compl. ¶¶17, 34, 42-43).
Functionality and Market Context
The complaint alleges that Defendants provide commercial biological decontamination services using technology that creates an "ionized hydrogen peroxide" mist, which they market under the acronym "iHP" (Compl. ¶¶16, 20). Defendants' marketing materials, attached as exhibits to the complaint, allegedly describe this technology as a "patented misting system" and a "revolutionary new advancement" (Compl. ¶¶22, 25). The complaint includes a screenshot from SixLog’s website claiming "our patented misting system" (Compl. ¶25, Ex. 6). Plaintiff asserts that Defendants are direct competitors and that the "iHP" technology they market is, in fact, Plaintiff's patented technology (Compl. ¶¶8, 22). The complaint also presents photographic evidence of what is alleged to be Plaintiff's equipment rebranded with Defendant SixLog's logo (Compl. ¶18, Ex. 3).
IV. Analysis of Infringement Allegations
’487 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a source of a cleaning fluid; | Defendants' services and equipment use a cleaning fluid to produce an ionized hydrogen peroxide mist for decontamination. | ¶¶10, 20 | col. 2:32-34 |
| producing an activated cleaning fluid mist... using an activating energy selected from the group consisting of electric and photonic energy, | Defendants' services utilize equipment to create an "activated cleaning fluid mist," described as "iHP (ionized hydrogen peroxide) technology." The complaint alleges this is TOMI's patented process, which uses such energy. | ¶¶10, 22, 24 | col. 2:25-29 |
| said activated cleaning fluid mist comprising activated hydroxyl species wherein at least a portion of the activated cleaning fluid mist is in an activated state at substantially one atmosphere ambient pressure and said activated cleaning fluid mist includes fine droplets... | Defendants' marketing of their process as "ionized hydrogen peroxide" is alleged to correspond to the claimed "activated hydroxyl species." The complaint alleges infringement of the patented process, which operates at ambient pressure. | ¶¶10, 20, 34 | col. 2:25-31; col. 12:20 |
| contacting the activated cleaning fluid mist to a biochemical agent. | Defendants' business is providing "biological decontamination and sterilization services," which inherently involves contacting the mist with biochemical agents. | ¶¶16, 20, 34 | col. 2:29-31 |
’592 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A decontamination apparatus comprising: a source of a cleaning fluid; | The equipment made, used, or sold by Defendants for their "iHP" services necessarily includes a source for the hydrogen peroxide-based cleaning fluid. | ¶¶17, 42 | col. 2:28-29 |
| a mist generator having an input flow of the cleaning fluid and an output flow of a mist... at substantially one atmosphere ambient pressure; and | Defendants' equipment, described in marketing as a "misting system," is alleged to be the same as or a copy of TOMI's apparatus, which includes a mist generator operating at ambient pressure. A screenshot from SixLog's website states it uses "our patented misting system." | ¶¶17, 25, 42 | col. 2:22-24 |
| an activator positioned to activate the mist... to produce an activated cleaning fluid mist including activatable species excited to an ion, plasma or free radical state. | The equipment is used to create "ionized hydrogen peroxide," which the complaint alleges meets the claim's requirement of creating excited species. A website screenshot claims it is "our proprietary iHP® (ionized hydrogen peroxide) technology." | ¶¶17, 20, 24, 42 | col. 2:25-27; col. 10:4-6 |
Identified Points of Contention
- Technical Questions: A central question will be what evidence demonstrates that Defendants' "iHP" process and equipment—particularly any equipment they manufactured themselves—actually generates a mist with the specific chemical properties ("activated hydroxyl species," "excited to an ion, plasma or free radical state") required by the claims. The complaint's allegations rely significantly on Defendants' marketing language as admissions of these technical features.
- Scope Questions: The infringement analysis may turn on the scope of the term "activated." The court will need to determine if the process used by Defendants falls within the definition of activation as described and claimed in the patents, which specify the use of "electric and photonic energy."
V. Key Claim Terms for Construction
The Term: "activated cleaning fluid mist" / "activated hydroxyl species"
- Context and Importance: This is the core technical concept of the patents. The definition of "activated" will be critical in determining whether Defendants' "iHP" process infringes. Practitioners may focus on this term because the dispute centers on whether Defendants' technology is the same as the patented technology.
- Intrinsic Evidence for a Broader Interpretation: The specification provides examples of activated species, including "hydroxyl ions, hydroxyl free radicals, or other reactive hydroxyl components," which could support a broad definition covering various reactive states of hydrogen peroxide (’487 Patent, col. 2:30-32).
- Intrinsic Evidence for a Narrower Interpretation: The claims and specification repeatedly link "activation" to specific energy inputs (e.g., electric, photonic) that create an "ion, plasma, or free radical state" (’487 Patent, Claim 1; ’592 Patent, Claim 1; ’592 Patent, col. 10:4-6). This could support a narrower construction limited to species created by these specific means.
The Term: "substantially one atmosphere ambient pressure"
- Context and Importance: This term distinguishes the invention from prior art systems that operated in a vacuum. Its construction is important to define the operational environment of the claimed method and apparatus.
- Intrinsic Evidence for a Broader Interpretation: The specification notes that the mist generator may create a "small positive pressure to propel the activated cleaning fluid mist," but clarifies this does not change the fact that the operational environment is at ambient pressure, supporting a flexible interpretation that allows for minor pressure differentials (’487 Patent, col. 3:53-61).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue that "substantially" has limits and that a system using a pressure differential significant enough to be a primary functional mechanism would fall outside the claim scope. The patent emphasizes that it avoids the need for "vacuum chambers or pressure chambers" (’487 Patent, col. 9:51-56).
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide customers with infringing equipment and instruct them on its use, including through marketing materials (’487 Compl. ¶35; ’592 Compl. ¶44). Contributory infringement is based on allegations that the decontamination equipment is not a staple article of commerce, is not suitable for substantial non-infringing use, and was especially adapted for infringement (’487 Compl. ¶36; ’592 Compl. ¶45).
Willful Infringement
The complaint alleges willful infringement based on Defendants' purported knowledge of the patents "for years," stating that "at least as early as 2010, Defendants referred to the technology at issue as a 'patented misting system'" (’487 Compl. ¶37; ’592 Compl. ¶46). This alleges pre-suit knowledge and deliberate conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical proof: can Plaintiff produce evidence, beyond Defendants' own marketing claims, that the accused "iHP" process and equipment actually function in a manner that meets the specific limitations of the asserted claims, particularly regarding the creation of an "activated" mist with excited species?
- The case will also involve a question of claim construction: how broadly will the court define the central term "activated"? The outcome may depend on whether the term is construed to cover any process that "ionizes" hydrogen peroxide, as Defendants' marketing suggests, or if it is limited to the specific energetic activation methods detailed in the patent specifications.
- Finally, a key factual question centers on the origin of the accused technology: is Defendants' "iHP" service, as alleged, fundamentally based on Plaintiff's patented technology through the use and copying of Plaintiff's equipment, or did Defendants develop a distinct, non-infringing alternative? The allegations of rebranding and false patent marking will be central to this narrative.