DCT
1:18-cv-24657
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-24657, S.D. Fla., 11/06/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant's business address being located within the district, constituting a regular and established place of business, and on Defendant’s alleged sales and offers for sale of the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s in-vehicle odor control product and its method of use infringe a patent related to systems for the air-borne cleaning of vehicle cabin surfaces.
- Technical Context: The technology concerns apparatus and methods for dispersing a chemical agent, such as chlorine dioxide, within a sealed vehicle cabin to decontaminate surfaces and eliminate odors.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant on September 28, 2018, which was received on October 1, 2018. Subsequently, the asserted patent underwent an ex parte reexamination, resulting in a Reexamination Certificate issued on January 4, 2023, which amended the asserted claims. The amendments made during reexamination, particularly to the asserted independent claim, may be central to the dispute.
Case Timeline
| Date | Event |
|---|---|
| 2015-11-10 | ’959 Patent Priority Date |
| 2018-03-27 | ’959 Patent Issue Date |
| 2018-09-28 | Plaintiff sends cease and desist letter |
| 2018-10-01 | Defendant receives cease and desist letter |
| 2018-11-06 | Complaint Filing Date |
| 2023-01-04 | ’959 Patent Reexamination Certificate Issue Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,925,959 - "SYSTEMS FOR AIR-BORNE CLEANING OF SURFACES"
- Patent Identification: 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 identifies a need to effectively clean and decontaminate surfaces within passenger vehicles to reduce microbial or viral loads and remove undesirable odors, particularly in pre-owned cars where simple wiping is insufficient for textured surfaces or hard-to-reach areas ('959 Patent, col. 1:39-50, col. 2:3-8).
- The Patented Solution: The invention is a method and system for dispersing a gaseous cleaning agent throughout a sealed vehicle cabin. The described embodiment involves placing a portable, motorized apparatus inside the vehicle. This apparatus contains water and a chemical pack (solid or gel). A motor-driven impeller agitates the water, creating a vortex that accelerates the release of the gaseous agent, which is then emitted as an airborne spray to coat and decontaminate interior surfaces ('959 Patent, Abstract; col. 2:25-44; Fig. 2A).
- Technical Importance: The technology provides a method for treating an entire enclosed space, including porous and complex surfaces, rather than relying on manual, surface-by-surface application of cleaning agents ('959 Patent, col. 1:56-65).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 ('Compl. ¶¶ 5, 7, 8). It is noted that the complaint quotes the original version of claim 1. However, a subsequent Reexamination Certificate amended this claim, and the amended version is controlling for the litigation.
- Amended Independent Claim 1 (per Reexamination Certificate US 9,925,959 C1):
- A method comprising selecting a portable apparatus which itself comprises:
- A container with an opening of a first size, containing water and a solid or gel pack that releases a gaseous cleaning agent;
- An impeller within the container; and
- A removable lid with an aperture of a second, smaller size, from which an airborne spray is emitted during operation.
- Sealing the cabin interior with the portable apparatus inside;
- Agitating the water and the pack with the impeller;
- Starting an air recirculation system of the cabin; and
- Maintaining the cabin closed for an effective time to reduce malodor or microbial/viral load.
- A method comprising selecting a portable apparatus which itself comprises:
III. The Accused Instrumentality
Product Identification
- Defendant’s "vehicle odor control product," marketed as "Pristine Clean" (Compl. ¶7). The product is described as comprising "chemical gel packs supplied with mixing container" (Compl. ¶9).
Functionality and Market Context
- The accused product is a system used for odor removal in vehicles (Compl. ¶7). According to Defendant’s website, the process involves dropping "water-activated tablets" into a container of water, which "create a chemical reaction" that releases a "disinfecting vapor" (Compl. p. 6). The complaint includes a photograph showing the packaging for the "Pristine Clean" product, which appears to be a small box containing the active agent (Compl. ¶7). The complaint alleges this is a "competing product" designed to copy Plaintiff's technology (Compl. ¶1).
IV. Analysis of Infringement Allegations
’959 Patent Infringement Allegations
| Claim Element (from Amended Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| selecting a portable apparatus comprising: a container... containing water and a solid or a gel pack that releases a gaseous cleaning agent... an impeller within the container... | Defendant offers for sale a "vehicle odor control product" comprising a "mixing container" and "chemical gel packs" or "water-activated tablets" that release a vapor. The complaint does not allege the presence of an impeller. | ¶7, ¶9, p. 6 | col. 6:13-20 |
| sealing the cabin interior from an outside environment with the portable apparatus inside; | The complaint alleges that customers perform the claimed method, which includes sealing the vehicle cabin and placing the apparatus inside. | ¶8 | col. 5:1-5 |
| agitating the water and the solid or gel pack with the impeller; | The complaint does not provide specific factual allegations for this element. Defendant's website describes a "chemical reaction" from "water-activated tablets," not mechanical agitation with an impeller. | p. 6 | col. 6:29-33 |
| starting an air recirculation system of the cabin; | The complaint alleges that customers perform this step as part of the infringing use. | ¶8 | col. 5:1-9 |
| maintaining the cabin interior closed while allowing the gaseous cleaning agent to dwell for an effective time... | The complaint alleges that customers perform this step as part of the infringing use. | ¶8 | col. 6:1-10 |
- Identified Points of Contention:
- Technical Questions: A primary question is whether the accused product functions in the manner required by the amended claim. The claim explicitly requires "agitating the water and the solid or gel pack with the impeller." The complaint and its exhibits, such as a screenshot of the accused product's website, describe a passive "chemical reaction" initiated by adding a tablet to water (Compl. p. 6). The complaint provides no evidence that the accused product contains or uses an impeller for mechanical agitation. The patent, by contrast, teaches a motor-driven impeller as the means of agitation ('959 Patent, col. 2:60-62). This presents a potential mismatch in technical operation.
- Scope Questions: The dispute may turn on the construction of "agitating... with the impeller." The court will need to determine whether the bubbling from a passive chemical reaction can meet this limitation. The patent's explicit reference to an "impeller" and the amendment of the claim during reexamination to include this term suggest a specific mechanical meaning was intended, potentially to distinguish over prior art.
V. Key Claim Terms for Construction
- The Term: "agitating the water and the solid or gel pack with the impeller"
- Context and Importance: The presence and function of an "impeller" appear to be a central feature of the patented invention, and this limitation was added to the controlling version of claim 1 during reexamination. Infringement will likely depend entirely on whether the accused product, which appears to use a passive chemical reaction, can be found to perform this step. Practitioners may focus on this term because the reexamination history likely created a significant estoppel argument against a broad interpretation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide a basis for a broad interpretation of this specific limitation. A party might theoretically argue that "agitating" is a general term, but the claim links it specifically to the action of an "impeller."
- Evidence for a Narrower Interpretation: The patent specification repeatedly and consistently describes a specific mechanical structure: a "spindle with an impeller, driven by the electric motor" ('959 Patent, col. 3:51-54) that "rotates" to create a "vortex" ('959 Patent, col. 6:29-33). Figures 3A and 3B explicitly show the motor (in base 220), spindle (226), and impeller (230) as distinct components that actively mix the liquid ('959 Patent, Figs. 3A, 3B). This evidence strongly supports a narrow construction requiring a rotating, motor-driven mechanical agitator.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement (Compl. ¶7). The inducement allegation is based on Defendant allegedly "specifically instructing customers" on the infringing method through its website and verbally (Compl. ¶10). The website screenshot showing a "SIMPLE 4-STEP PROCESS" is offered as evidence of these instructions (Compl. p. 6). Contributory infringement is alleged on the basis that the accused product is a material part of the invention and not a staple article of commerce (Compl. ¶9).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’959 Patent. The complaint states that a cease and desist letter was sent on September 28, 2018, and that Defendant’s allegedly infringing activities continued after receipt of that letter (Compl. ¶11).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and technical operation: Can the limitation "agitating the water... with the impeller," which was added during reexamination and is described in the patent as a specific motor-driven mechanical action, be met by the accused product's passive, water-activated chemical reaction?
- A key evidentiary question will be one of factual proof: Can Plaintiff provide evidence that the accused "Pristine Clean" product contains a physical "impeller" and that it is used to "agitate" the water and chemical agent? The complaint, as filed, does not contain such evidence, creating a significant potential hurdle for its infringement case under the amended claims.