DCT
1:18-cv-00360
Surfacide LLC v. Skytron LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Surfacide, LLC (Delaware)
- Defendant: Skytron, LLC (Delaware)
- Plaintiff’s Counsel: Young Conaway Stargatt & Taylor, LLP; Robins Kaplan LLP
- Case Identification: 1:18-cv-00360, D. Del., 07/23/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the defendant, Skytron, LLC, is a Delaware limited liability company and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s UV-C disinfection systems, which use multiple light emitters, infringe a patent related to multi-tower hard-surface disinfection systems.
- Technical Context: The technology involves using multiple, coordinated ultraviolet-C (UV-C) light towers to disinfect surfaces in environments like hospital rooms, a method intended to overcome shadowing issues inherent in single-emitter systems.
- Key Procedural History: The complaint alleges that the defendant, Skytron, acquired the accused technology in 2016 and, during that acquisition, performed a "detailed review of the '567 patent and its file history," which forms the basis for the willfulness allegations. This filing is a First Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-08 | '567 Patent Priority Date |
| 2013-11-05 | '567 Patent Issue Date |
| 2016 | Defendant allegedly acquired accused technology and reviewed the '567 Patent |
| 2018-07-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,575,567 - "Hard-Surface Disinfection System," issued November 5, 2013.
The Invention Explained
- Problem Addressed: The patent addresses the problem that single UV light sources used for disinfection cast shadows, which can leave areas untreated and still contaminated with multi-drug resistant organisms (MDROs) (’567 Patent, col. 1:50-52). It also notes the safety problem that UV radiation is harmful to humans, necessitating a system that can be operated without a person in the room (’567 Patent, col. 1:55-59).
- The Patented Solution: The invention is a system comprising multiple, independently placeable UV light towers that can be positioned throughout a room to eliminate shadowed areas (’567 Patent, col. 2:1-4). The system is operated by a remote control station, which allows an operator to activate and deactivate the towers from a safe location outside the room and can include safety features like motion detectors to automatically shut down the system if entry is detected (’567 Patent, Abstract; col. 2:26-43).
- Technical Importance: This multi-emitter, remotely-controlled approach was designed to provide more thorough and safer hard-surface disinfection compared to prior art single-emitter systems (’567 Patent, col. 1:60-64).
Key Claims at a Glance
- The complaint asserts independent claims 1 (system) and 13 (method).
- Independent Claim 1 (as corrected) requires:
- A plurality of independently placeable light towers.
- A control station in data communication with the light towers.
- The control station is capable of remotely controlling activation and deactivation of the light towers.
- Independent Claim 13 (as corrected) requires:
- Positioning a plurality of independently placeable light towers throughout an enclosed space.
- Supplying energy to the light towers.
- Establishing data communication between a control station and the light towers.
- Remotely controlling the light towers using the data communication.
- The complaint also asserts dependent claims 3, 7-8, 11-12, and 16-19, and reserves the right to assert others (Compl. ¶17).
III. The Accused Instrumentality
Product Identification
- Skytron's IPT 2280 Syndicate UCV disinfection system (Compl. ¶17).
Functionality and Market Context
- The accused product is described as a "paired system" with a "dual-emitter platform" designed for "whole-room treatment" (Compl. ¶19). The system includes two mobile light towers and is operated via a "military-grade handheld controller" (Compl. ¶¶20, 21; p. 6). This controller communicates with the towers and a cloud-based management system called "Steri-Trak," which enables scheduling, data collection, and documentation of disinfection cycles (Compl. ¶21; p. 6). An image provided in the complaint shows the two mobile light towers that comprise the accused system (Compl. p. 5). The complaint alleges the system is sold across the United States (Compl. ¶18).
IV. Analysis of Infringement Allegations
'567 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of independently placeable light towers | The IPT 2280 Syndicate system is described as a "paired system" and a "dual-emitter platform" that includes two light towers. | ¶20 | col. 2:1-4 |
| a control station in data communication with the plurality of light towers | The system includes a "Wireless Handheld Controller" and the "Steri-Trak Disinfection Documentation System," which are alleged to be in data communication with the light towers. An included diagram shows the "Hand Held Controller" (Compl. p. 6, Fig. 3). | ¶21 | col. 3:34-36 |
| wherein said control station is capable of remotely controlling activation and deactivation of said plurality of light towers | The handheld controller is used to operate the system, including initiating, pausing, and canceling treatment cycles for the paired towers. A screenshot from the user manual shows the controller interface for selecting treatment with one or two devices (Compl. p. 7, Fig. 16). | ¶22 | col. 2:30-32 |
Identified Points of Contention
- Scope Questions: A central question may be whether Skytron's combination of a handheld controller and a separate cloud-based management system ("Steri-Trak") constitutes a single "control station" as contemplated by the patent. The patent primarily discloses a physical "control station or cart" (’567 Patent, col. 3:34-36), raising the question of whether a distributed, multi-component architecture falls within the claim's scope.
- Technical Questions: The complaint alleges infringement of dependent claim 7, which requires a "motion detector" (Compl. ¶24). The complaint provides a diagram from an owner's manual highlighting "MOTION SENSORS" on the accused tower (Compl. p. 9). The case may require evidence establishing that these sensors perform the specific function of the claimed "motion detector," which is to cut power to all towers upon detecting a person entering the room (’567 Patent, col. 2:33-37).
V. Key Claim Terms for Construction
The Term: "control station"
- Context and Importance: The definition of this term is critical, as it forms a core limitation of the asserted independent claims. Whether Skytron's architecture (handheld remote plus cloud service) meets this limitation will be a primary focus of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the "control panel" as having capabilities beyond simple activation, such as displaying various parameters and wirelessly uploading data to a hospital information system (’567 Patent, col. 3:10-23). This may support an argument that "control station" should be interpreted functionally to encompass any combination of components that perform these control and data management tasks.
- Evidence for a Narrower Interpretation: The patent consistently refers to a singular "control station or cart 100" and depicts it as a single, integrated physical unit in Figures 1 and 2 (’567 Patent, Fig. 1; col. 3:34-35). This could support an argument that the term is limited to the single-cart embodiment shown and does not read on a distributed system.
The Term: "independently placeable"
- Context and Importance: This term defines the required relationship between the multiple light towers. Its construction is key to determining whether the "paired" nature of the accused Syndicate system meets the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s summary explains that the towers "can be placed in several areas of a room such that nearly all shadowed areas are eliminated" (’567 Patent, col. 2:2-4). This suggests the term relates to the physical ability to position the towers separately to achieve a technical goal, not necessarily requiring complete operational or software independence.
- Evidence for a Narrower Interpretation: The specification discloses an embodiment where towers can be "daisy-chained" for power (’567 Patent, col. 3:65-67). A party could argue that such electrical or required software inter-dependencies, as may exist in a "paired system," mean the towers are not truly "independently placeable."
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement, stating that Skytron provides customers with product literature, owner's manuals, and technical support that instruct and encourage end-users to operate the Syndicate system in a manner that directly infringes method claim 13 (Compl. ¶37). The complaint alleges this was done with knowledge of the patent since at least 2016 (Compl. ¶37).
Willful Infringement
- Willfulness is alleged based on Skytron's purported pre-suit knowledge of the ’567 Patent. The complaint specifically alleges that Skytron "performed a detailed review of the '567 patent and its file history" during its acquisition of the accused technology in 2016 and proceeded to commercialize the product in "reckless disregard" of Surfacide's rights (Compl. ¶¶36, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "control station", which is primarily disclosed in the patent as an integrated physical cart, be construed to cover the accused system’s distributed architecture of a handheld remote and a separate cloud-based management platform?
- A key evidentiary question will concern willfulness: what evidence will emerge to substantiate or rebut the specific allegation that Skytron conducted a "detailed review" of the ’567 patent and its file history in 2016? The outcome of this factual dispute will be central to the claims for enhanced damages.