DCT
1:18-cv-24649
NuVinAir LLC v. Pristine Solutions Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NuVinAir, LLC (Texas)
- Defendant: Pristine Solutions, Inc. (Florida)
- Plaintiff’s Counsel: Shutts & Bowen LLP; Carstens & Cahoon, LLP
- Case Identification: 1:18-cv-24649, S.D. Fla., 11/05/2018
- Venue Allegations: Venue is based on Defendant having a principal office and registered agent within the Southern District of Florida, constituting a regular and established place of business, and allegedly selling the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s vehicle odor control product, when used by customers, infringes a patent related to methods for the air-borne, chemical-based cleaning of vehicle interiors.
- Technical Context: The technology addresses the sanitization and deodorization of enclosed spaces, such as vehicle cabins, using a gaseous agent dispersed as an airborne spray to treat surfaces.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant approximately one month before filing suit. Notably, subsequent to the filing of this complaint, the asserted patent underwent an ex parte reexamination, which concluded on January 4, 2023, with the issuance of a certificate amending the asserted claims. This post-filing event significantly narrows the scope of the asserted claims and will likely be a central issue in the litigation, potentially giving rise to a defense of intervening rights.
Case Timeline
| Date | Event |
|---|---|
| 2015-11-10 | '959 Patent Priority Date |
| 2018-03-27 | U.S. Patent No. 9,925,959 ('959 Patent) Issued |
| 2018-09-28 | Cease and desist letter sent by Plaintiff to Defendant |
| 2018-10-01 | Cease and desist letter received by Defendant |
| 2018-11-05 | Complaint Filing Date |
| 2023-01-04 | '959 Patent Ex Parte Reexamination Certificate Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,925,959 - "SYSTEMS FOR AIR-BORNE CLEANING OF SURFACES," Issued March 27, 2018
The Invention Explained
- Problem Addressed: The patent describes the problem of microbial and viral contaminants, as well as undesirable odors, persisting on surfaces within enclosed vehicle cabins, which can spread disease and lower a vehicle's resale value ('959 Patent, col. 1:24-49; col. 2:4-8).
- The Patented Solution: The invention is a method for cleaning a vehicle cabin by sealing it and placing a portable apparatus inside ('959 Patent, Abstract). The apparatus contains water and a solid or gel pack which, when combined and agitated, releases a gaseous cleaning agent (e.g., chlorine dioxide) as an "air-borne spray" that permeates the cabin and coats surfaces to reduce contamination ('959 Patent, col. 2:26-50). The patent describes embodiments where a motor-driven impeller creates a vortex to facilitate the release of the agent ('959 Patent, col. 2:30-35).
- Technical Importance: The technology provides a method to decontaminate and deodorize the entirety of a vehicle's interior, including textured surfaces and crevices, which may not be effectively cleaned by simple wiping ('959 Patent, col. 1:59-65).
Key Claims at a Glance
- The complaint asserts independent Claim 1.
- The essential elements of Claim 1 (as originally issued and asserted in the complaint) are:
- A method for cleaning a cabin interior of a car, truck, SUV or tractor-trailer rig of a microbial or viral contamination.
- sealing the cabin... from the outside environment and starting an air recirculation system of the cabin;
- placing a portable apparatus inside the sealed cabin interior, the apparatus comprising: a container having therein water with a solid or a gel pak that releases a gaseous cleaning agent upward and out of the container; and
- maintaining the cabin closed while allowing the gaseous cleaning agent to dwell for an effective time... to reduce a microbial and viral load on interior surfaces.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Defendant's "vehicle odor control product," identified in an accompanying photograph as "Pristine Clean" (Compl. ¶7).
Functionality and Market Context
- The accused product is described as involving "chemical gel packs supplied with mixing container" (Compl. ¶9). The complaint includes a screenshot from Defendant's website that outlines a four-step process: (1) a tablet is activated by water; (2) a "disinfecting vapor" is created; (3) the vapor fills the room to target the odor source; and (4) the vapor "eliminates bacteria" (Compl. ¶14, p. 6). The complaint alleges this is a "competing product" designed to copy Plaintiff's technology (Compl. ¶1). The complaint provides photographs of the accused "Pristine Clean" product, showing its packaging and contents, including a container and chemical packets (Compl. ¶7).
IV. Analysis of Infringement Allegations
'959 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for cleaning a cabin interior... the system comprising: sealing the cabin... and starting an air recirculation system of the cabin; | The complaint alleges that customers use the accused product in a manner that performs these steps as part of an infringing method (Compl. ¶8, ¶10). | ¶8, ¶10 | col. 8:24-26 |
| placing a portable apparatus inside the sealed cabin interior, the apparatus comprising: a container having therein water with a solid or a gel pak that releases a gaseous cleaning agent upward and out of the container; | Defendant's product is a kit containing a mixing container and chemical packs (identified as tablets on its website) which, when combined with water, release a cleaning vapor (Compl. ¶9, ¶14). A screenshot from the Defendant's website illustrates this process of activating tablets in water to create a vapor (Compl. ¶14). | ¶7, ¶9, ¶14 | col. 8:27-31 |
| and maintaining the cabin closed while allowing the gaseous cleaning agent to dwell for an effective time in the sealed cabin interior to reduce a microbial and viral load on interior surfaces within the sealed cabin. | The infringing method, allegedly induced by Defendant, includes allowing the generated vapor to dwell in the closed cabin to clean surfaces (Compl. ¶8, ¶10). | ¶8, ¶10 | col. 8:32-36 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint alleges that end-users are induced to perform the step of "starting an air recirculation system." A key question will be what evidence, such as specific instructions on packaging or the website, Plaintiff can produce to demonstrate that Defendant instructs or encourages users to perform this specific, required step of the claim.
- Technical Questions: The primary point of contention, arising from the post-filing reexamination, will be a technical mismatch. The amended claim, now the operative one for the litigation, requires an "impeller" to agitate the water. The complaint does not allege that the accused "Pristine Clean" product, which appears to be a passive container-and-tablet system, contains an impeller or any similar active agitation mechanism.
V. Key Claim Terms for Construction
The Term: "starting an air recirculation system of the cabin"
- Context and Importance: This is an active step required by the asserted claim. Its presence or absence in the instructions provided for the accused product is critical for the inducement allegation. Practitioners may focus on this term because the evidence provided in the complaint (the website screenshot) does not explicitly mention this step.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification states that the method "may further comprise turning on an air circulation system of the cabin," which could be argued as describing a preferred, but not universally essential, aspect of the overall process ('959 Patent, col. 3:8-10).
- Evidence for a Narrower Interpretation: The plain language of Claim 1 uses the conjunctive "and," linking the "sealing" step with the "starting an air recirculation system" step, suggesting both are mandatory requirements for infringement of the claim as written ('959 Patent, col. 8:24-26).
The Term: "portable apparatus"
- Context and Importance: The definition of "apparatus" is central, particularly given that the reexamined claims add specific structural limitations (e.g., "impeller," "lid removably coupled") to it. The dispute may turn on whether the Defendant’s simple container constitutes the "apparatus" of the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The original claim language only requires the apparatus to comprise "a container having therein water with a solid or a gel pak," a broad definition that would appear to read on the accused product ('959 Patent, col. 8:28-31).
- Evidence for a Narrower Interpretation: The patent's detailed description and figures heavily emphasize an embodiment that includes an electric motor and a rotating "impeller" to create a vortex ('959 Patent, col. 2:58-62; Fig. 3B). A party could argue that this more complex, active device represents the true scope of the patented "apparatus."
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on Defendant allegedly instructing customers on how to use the product through its website and other means (Compl. ¶10). Contributory infringement is based on the allegation that Defendant's product is a material part of the patented invention and is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶9).
- Willful Infringement: The complaint alleges willfulness based on Defendant's continued infringement after receiving a cease and desist letter on October 1, 2018, which provided actual notice of the '959 Patent and the alleged infringement (Compl. ¶11).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be the impact of claim amendments: The '959 patent claims were significantly narrowed during a post-filing reexamination to require features like an "impeller." The dispositive question will be whether the accused product, which appears to be a passive chemical-and-container system, can infringe the amended claims. This raises a secondary question of whether the doctrine of intervening rights could shield the Defendant from damages incurred before the claims were amended.
A key evidentiary question will be one of inducement: Assuming the case proceeds on the original claims for some period, can the Plaintiff provide sufficient evidence that Defendant specifically instructed or encouraged its customers to perform every step of the claimed method, including the "starting an air recirculation system" step, which is absent from the evidence presented in the complaint?