DCT

1:23-cv-10335

Surfacide LLC v. Uvc Cleaning Systems Inc

Key Events

Complaint

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Surfacide, LLC (Delaware)
- Defendant: UVC Cleaning Systems, Inc. (Pennsylvania)
- Plaintiff’s Counsel: Larkin Hoffman Daly & Lindgren LTD.
Case Identification: 1:23-cv-10335, E.D. Mich., 02/08/2023
Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan because the Defendant is a Michigan corporation that resides in the district and has allegedly committed acts of infringement there.
Core Dispute: Plaintiff alleges that Defendant’s M15 and M20 ultraviolet cleaning towers, when used together as a system, infringe five patents related to multi-emitter hard-surface disinfection technology.
Technical Context: The technology concerns systems of multiple, coordinated UV-C light towers used to disinfect surfaces in environments like hospitals, which aim to improve effectiveness by minimizing shadows cast by single-emitter devices.
Key Procedural History: The complaint alleges a history of pre-suit correspondence, beginning with a letter from Plaintiff’s counsel to Defendant on June 30, 2020, identifying the patents-in-suit. Following a denial of infringement from Defendant, Plaintiff’s counsel sent a second letter on July 18, 2022, which included claim charts. This history forms the primary basis for the complaint's allegations of willful infringement.

Case Timeline

Date	Event
2009-12-08	Priority Date for all Patents-in-Suit
2014-11-25	U.S. Patent No. 8,895,939 Issued
2016-03-01	U.S. Patent No. 9,279,059 Issued
2017-03-14	U.S. Patent No. 9,592,312 Issued
2017-10-10	U.S. Patent No. 9,782,505 Issued
2020-02-25	U.S. Patent No. 10,568,981 Issued
2020-06-30	Plaintiff sends initial notice letter to Defendant
2020-09-22	Defendant’s counsel responds, denying infringement
2022-07-18	Plaintiff sends second letter with claim charts
2022-09-20	Defendant responds by resending 2020 denial
2023-02-08	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,895,939 - Hard-Surface Disinfection System

Patent Identification: U.S. Patent No. 8,895,939, “Hard-Surface Disinfection System,” issued November 25, 2014. (Compl. ¶9).

The Invention Explained

Problem Addressed: The patent’s background section describes the challenge of using single UV light sources for disinfection, which cast shadows that prevent complete surface coverage, and the inherent safety risks of exposing humans to high-intensity UV radiation. (’939 Patent, col. 2:5-14).
The Patented Solution: The invention is a system of multiple, independently mobile UV light towers that can be placed throughout a room to eliminate shadows. The system is operated by a remote controller, ensuring no operator is present during activation, and includes a safety feature, such as a motion detector, to automatically shut down all towers if a person enters the space. (’939 Patent, Abstract; col. 2:20-43).
Technical Importance: This coordinated, multi-tower approach was designed to provide more thorough and reliable disinfection of complex environments like hospital rooms compared to then-existing single-emitter devices. (’939 Patent, col. 1:21-27).

Key Claims at a Glance

The complaint asserts independent claim 1. (Compl. ¶55).
The essential elements of claim 1 are:
- A disinfection system comprising a plurality of independently placeable light towers.
- Each tower includes a communications module that sends and receives data from the other towers.
- Each tower includes an ultraviolet light source.
- A controller is in data communication with the towers and is capable of remote activation and deactivation.
- A safety feature is capable of shutting off the towers if movement is detected in the space.

U.S. Patent No. 9,279,059 - Hard-Surface Disinfection System

Patent Identification: U.S. Patent No. 9,279,059, “Hard-Surface Disinfection System,” issued March 1, 2016. (Compl. ¶12).

The Invention Explained

Problem Addressed: As a continuation of the application leading to the ’939 Patent, this patent addresses the same problems of incomplete disinfection due to shadows and the risk of human exposure to UV light. (’312 Patent, col. 2:6-13, noting the ’312 Patent is a continuation of the application for the ’059 Patent).
The Patented Solution: The solution claimed is a disinfection system with at least two mobile light towers, each having a UV source and a communications module. The claim specifies that each tower has a base assembly with its own power supply and a mobility mechanism, reinforcing the concept of independent placement. The system is defined by the capability of all towers being controlled remotely from a single controller. (Compl. ¶77).
Technical Importance: This patent further specifies the physical architecture of the individual towers within the multi-emitter system, focusing on the components that enable both independent mobility and coordinated remote control. (Compl. ¶77).

Key Claims at a Glance

The complaint asserts independent claim 1. (Compl. ¶77).
The essential elements of claim 1 are:
- A disinfection system comprising at least two independently placeable light towers.
- Each tower includes at least one UV light source and a communications module capable of sending and receiving data with the other tower.
- Each tower includes a base assembly that supports the light source, contains a power supply, and has a mobility mechanism.
- All towers are capable of being controlled remotely from a single controller.

U.S. Patent No. 9,592,312 - Hard-Surface Disinfection System

Patent Identification: U.S. Patent No. 9,592,312, “Hard-Surface Disinfection System,” issued March 14, 2017. (Compl. ¶15).
Technology Synopsis: This patent refines the multi-tower system by adding a quality control element. It claims a system of energy emitter assemblies where each assembly includes a dedicated "monitoring system" that measures the output of its energy emitter and compares it against a threshold value, with status updates sent to a remote controller. (’312 Patent, Abstract; Compl. ¶99).
Asserted Claims: Independent claim 20 is asserted. (Compl. ¶99).
Accused Features: The accused UVC Systems are alleged to function as a plurality of energy emitter assemblies, each with a monitoring system that measures UV output, and a remote controller that receives status updates. (Compl. ¶¶105, 107).

U.S. Patent No. 9,782,505 - Hard-Surface Disinfection System

Patent Identification: U.S. Patent No. 9,782,505, “Hard-Surface Disinfection System,” issued October 10, 2017. (Compl. ¶18).
Technology Synopsis: This patent focuses on the physical configuration of the disinfection units. It claims a system of independently placeable assemblies, each specifically defined as having a base and an "elongate energy emitter extending vertically from said base," in addition to a communications module and remote controller. (’505 Patent, Abstract; Compl. ¶123).
Asserted Claims: Independent claim 1 is asserted. (Compl. ¶123).
Accused Features: The accused UVC Systems are alleged to comprise a plurality of assemblies with a base and a vertically extending UV emitter, which are linked and controlled remotely. (Compl. ¶¶126-128).

U.S. Patent No. 10,568,981 - Hard-Surface Disinfection System

Patent Identification: U.S. Patent No. 10,568,981, “Hard-Surface Disinfection System,” issued February 25, 2020. (Compl. ¶21).
Technology Synopsis: This patent integrates elements from prior family members, claiming a system of assemblies where each unit includes a base, a vertically extending emitter, a "fluency sensor," and a communications module. The fluency sensor is recited as monitoring the power output to ensure it remains above a threshold, combining the physical structure, communication, and quality control features into a single claim. (’981 Patent, Abstract; Compl. ¶146).
Asserted Claims: Independent claim 1 is asserted. (Compl. ¶146).
Accused Features: The accused UVC Systems are alleged to have assemblies that each include a fluency sensor to monitor power output and a communications module for linked, remote operation. (Compl. ¶¶148, 151).

III. The Accused Instrumentality

Product Identification

Defendant’s M15 and M20 Tower products, collectively referred to as the "Accused UVC Systems." (Compl. ¶30).

Functionality and Market Context

The Accused UVC Systems are mobile ultraviolet light towers designed for hard-surface decontamination. (Compl. ¶30). The complaint alleges they are marketed and sold as "systems" that can be linked together, with marketing materials promoting the ability to "Link up to 8 units to run as a group." (Compl. ¶¶24, 37).
Functionally, the towers are alleged to feature an "Integrated wireless link" for simultaneous operation, are controlled by a "3-button proprietary remote control," and include "UVC Emitters" that extend vertically from a wheeled base. (Compl. ¶¶32, 34, 37, 38).
The complaint alleges the systems include safety and monitoring features, including "multiple dual motion sensor technology" to shut off the units upon detecting motion and a "monitoring system/fluency sensor" that "automatically determine[s] the correct UVC dosage" by monitoring accumulated UV light. (Compl. ¶¶39, 40). The complaint includes a photograph of the accused M15 and M20 Tower products, showing their vertical lamp configuration on a wheeled base (Compl. ¶30). It also provides a diagram from Defendant's website illustrating how multiple units can be wirelessly linked to disinfect larger or multiple rooms simultaneously (Compl. ¶28).

IV. Analysis of Infringement Allegations

'939 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A disinfection system...comprising: a plurality of independently placeable light towers...	The Accused UVC Systems are sold as systems and consist of a plurality of towers with mobility mechanisms, making them independently placeable.	¶¶56-57	col. 2:20-22
...a communications module that sends and receives data from communications modules on the other of said plurality of independently placeable light towers...	The accused towers feature an "Integrated wireless link" allowing them to be "linked and 'run as a group'," which allegedly involves sending and receiving data.	¶¶36-37, 58	col. 7:41-45
...an ultraviolet light source...	The accused towers include "UVC Emitters," which are ultraviolet light sources.	¶¶34, 59	col. 5:46-48
...a controller in data communication with the plurality of light towers, wherein said controller is capable of remotely controlling activation and deactivation of said light towers...	The linked accused towers can be remotely controlled by a "3-button proprietary remote control."	¶¶38, 60	col. 2:50-54
...a safety feature capable of shutting off said plurality of independently placeable light towers if moving is detected in said space.	The accused towers include "multiple dual motion sensor technology" that shuts off the system if motion is detected in the treatment area.	¶¶39, 61	col. 2:55-59

Identified Points of Contention:
- Scope Questions: A central question may be whether Defendant's sale of individual towers that are capable of being linked constitutes direct infringement of a "system" claim. The complaint's focus on Defendant's marketing of the products "as systems" (Compl. ¶¶24-26) suggests Plaintiff is preparing to argue that the product as offered for sale is the claimed system.
- Technical Questions: What evidence demonstrates that the accused "wireless link" facilitates the two-way "sends and receives data" function required by the claim? The court may need to examine if the communication is merely a one-way broadcast of an "on/off" signal or if it involves a bidirectional data exchange between the towers.

'059 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A disinfection system comprising: at least two independently placeable light towers...	The Accused UVC Systems are sold for use in multiples and are independently placeable via mobility mechanisms.	¶¶26, 32, 79	col. 2:10-13
...each of said at least two light towers including: at least one ultraviolet light source; a communications module capable of sending and receiving data from at least the communication module of the other light tower...	The accused towers each have a UV light source and are configured to be linked and controlled as a group, which implies a communications module.	¶¶34, 80, 84	col. 5:46-48; col. 7:42-45
...a base assembly supporting the at least one ultraviolet light source and including: a power supply for the at least one ultraviolet light source; a mobility mechanism allowing the base assembly to be moved across a floor independently...	The accused towers have a base, a "Hospital Grade" power cord, and casters for mobility.	¶¶32-33, 35, 81-83	col. 4:52-56
...wherein all of the at least two light towers are capable of being controlled remotely from a single controller.	The Accused UVC Systems are configured to be "controlled remotely from a single controller."	¶84	col. 2:50-54
Note: As the '059 Patent specification was not provided, citations refer to the specification of U.S. Patent No. 9,592,312, a continuation of the application that matured into the '059 Patent.

Identified Points of Contention:
- Scope Questions: What is the scope of "controlled remotely from a single controller"? A potential dispute may arise over whether the accused "3-button proprietary remote control" (Compl. ¶38) meets this limitation, or if the claim, in the context of the specification, requires a more advanced controller with individualized command-and-control functions.
- Technical Questions: Similar to the '939 Patent, a key question will be whether the accused system's wireless link is "capable of sending and receiving data." The complaint's allegations focus on remote control, and evidence will be needed to establish that the communication is bidirectional as required by the claim.

V. Key Claim Terms for Construction

For U.S. Patent No. 8,895,939

The Term: "controller"
Context and Importance: The definition of "controller" is critical, as Defendant may argue its simple remote does not meet this limitation. Practitioners may focus on this term because the infringement theory depends on mapping the accused remote control to this claim element, while the patent specification provides a potentially narrower description.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself is broad, reciting "a controller in data communication with the plurality of light towers" without specifying its form, complexity, or location. (’939 Patent, col. 16:59-62).
- Evidence for a Narrower Interpretation: The detailed description extensively discusses the controller as part of a "control station or cart 100" featuring a "control panel 140" and a "display 142" used to monitor and control complex parameters. (’939 Patent, col. 4:37-44; Fig. 1). This could support an argument that the term is limited to this more sophisticated cart-based embodiment.

For U.S. Patent Nos. 8,895,939 and 9,279,059

The Term: "communications module that sends and receives data" / "capable of sending and receiving data"
Context and Importance: This term is central to infringement of both lead patents. The allegations rest on the accused towers' ability to "link" and "run as a group." If the underlying technology does not support two-way communication, the infringement claim may fail.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "data" is not explicitly defined in the claims. The specification notes that communication can occur via various standard wireless media like radio or WiFi, suggesting flexibility. (’939 Patent, col. 7:42-45). This could support a broad reading where "data" includes simple acknowledgement or status signals.
- Evidence for a Narrower Interpretation: The specification describes communication in the context of substantive functions, such as one tower signaling others to shut down after detecting motion or sending power output status to the controller. (’939 Patent, col. 7:45-49; col. 6:1-3). This may support a narrower construction where "data" must be more substantive than simple "on/off" commands and relate to the system's operational or safety status.

VI. Other Allegations

Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant causes its customers to directly infringe by providing instructions and marketing that promote operating the individual towers together as a claimed "system." (Compl. ¶¶27, 37, 53, 75).
Willful Infringement: The complaint claims willful infringement based on alleged pre-suit knowledge. It pleads that Defendant received letters from Plaintiff's counsel on June 30, 2020, and July 18, 2022, which identified the patents-in-suit and, in the second instance, provided claim charts establishing notice. The complaint alleges that Defendant’s infringement after receiving these notices has been knowing and deliberate. (Compl. ¶¶42-49, 64-65).

VII. Analyst’s Conclusion: Key Questions for the Case

A core issue will be one of system infringement: can Plaintiff prove that Defendant directly infringes "system" claims by selling individual towers? This will likely turn on evidence of how the products are marketed, bundled, and instructed to be used, as well as on the construction of the term "controller" and whether the accused remote control satisfies that limitation as claimed.
A key evidentiary question will be one of technical capability: does the accused "wireless link" feature the bidirectional "sending and receiving [of] data" required by the claims, or is it a one-way broadcast of control signals? The outcome will depend on factual evidence regarding the actual communication protocol used in the Accused UVC Systems.
A third question concerns the patent portfolio strategy: how will the subtle but distinct limitations across the five asserted patents (e.g., the addition of a "monitoring system" or "fluency sensor") map to the specific features of the accused products? The case may evolve into a granular, feature-by-feature battle, where infringement could be found for certain patents but not others depending on the evidence presented for the accused towers' specific functionality.