DCT
0:19-cv-02387
Ecolab USA Inc v. Hillyard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiffs: Ecolab USA Inc. (Delaware); Kleancheck Systems, LLC (Massachusetts); Creative Solutions LLC (Maryland)
- Defendant: Hillyard, Inc. (Missouri)
- Plaintiff’s Counsel: Merchant & Gould P.C.
- Case Identification: 0:19-cv-02387, D. Minn., 08/29/2019
- Venue Allegations: Venue is based on Defendant Hillyard's alleged substantial and ongoing business in Minnesota, including the operation of corporate distribution centers and acts of infringement within the district, such as selling or offering the accused system to local customers.
- Core Dispute: Plaintiffs allege that Defendant’s CheckIt Surface Cleaning Validation System infringes three patents related to methods and kits for using invisible, fluorescent markers to audit the thoroughness of surface cleaning.
- Technical Context: The technology provides a method for objectively verifying cleaning quality in hygiene-sensitive environments, such as hospitals, by marking surfaces with a substance visible only under ultraviolet light and later checking for its removal.
- Key Procedural History: The complaint outlines a chain of ownership and licensing for the patents-in-suit. U.S. Patent No. 6,476,385 was assigned from the inventor to Plaintiff Creative Solutions. U.S. Patent Nos. 7,780,453 and 9,624,456 were issued to Plaintiff Kleancheck Systems. The complaint alleges that Kleancheck is the exclusive licensee of the ’385 patent for hospital use, and that Plaintiff Ecolab is the exclusive sublicensee of Kleancheck's rights in the ’385 patent and exclusive licensee of the other two patents.
Case Timeline
| Date | Event |
|---|---|
| 1999-03-22 | U.S. Patent No. 6,476,385 Priority Date |
| 2002-11-05 | U.S. Patent No. 6,476,385 Issue Date |
| 2005-03-30 | U.S. Patent Nos. 7,780,453 & 9,624,456 Priority Date |
| 2010-08-24 | U.S. Patent No. 7,780,453 Issue Date |
| 2017-04-18 | U.S. Patent No. 9,624,456 Issue Date |
| 2019-08-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,476,385 - "CLEANING MANAGEMENT KIT AND METHOD OF USE"
- Patent Identification: U.S. Patent No. 6,476,385, “CLEANING MANAGEMENT KIT AND METHOD OF USE,” issued November 5, 2002. (Compl. ¶9).
The Invention Explained
- Problem Addressed: The patent identifies a deficiency in the cleaning services industry where systems could track the presence of cleaning personnel but failed to "check the actual quality of the cleaning effort." (’385 Patent, col. 1:56-59).
- The Patented Solution: The invention is a kit and method to provide a direct quality assurance measure. The method involves marking a surface with a water-soluble, invisible fluorescent ink before a scheduled cleaning, and then inspecting the area with a handheld ultraviolet light after the cleaning. (’385 Patent, Abstract). If the mark has been removed, the cleaning is verified as complete; if it remains, the area was not properly cleaned, allowing management to objectively audit cleaning thoroughness. (’385 Patent, col. 2:60-68).
- Technical Importance: The invention provided a simple, non-destructive, and economical way for management to ensure that cleaning tasks were not just logged, but physically and effectively performed. (’385 Patent, col. 1:59-64).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶11).
- The essential elements of Claim 1 are:
- A method for verifying cleaning services using an ultraviolet light and a contact marker.
- Marking an area with an invisible fluorescent compound using the contact marker.
- Inspecting the area with the ultraviolet light after the marking to determine if the compound is still present.
- Making a determination, based on the presence or absence of the compound, whether the area was properly cleaned.
U.S. Patent No. 7,780,453 - "MONITORING CLEANING OF SURFACES"
- Patent Identification: U.S. Patent No. 7,780,453, “MONITORING CLEANING OF SURFACES,” issued August 24, 2010. (Compl. ¶25).
The Invention Explained
- Problem Addressed: This patent focuses specifically on healthcare environments, where the spread of dangerous nosocomial pathogens like MRSA and VRE is a critical problem. It notes that while environmental cleaning is a "cornerstone of patient care," the "assessment of actual compliance with such procedures has not been reported," creating a need for a "non-microbiological methodology to evaluate the thoroughness" of hospital cleaning. (’453 Patent, col. 1:39-42, col. 3:24-28).
- The Patented Solution: The patent builds on the earlier concept by describing a comprehensive program for monitoring and improving cleaning. The method involves applying a "transparent indicator material" to "high touch" surfaces in a hospital room, allowing for a cleaning opportunity, and then determining if the material was removed. (’453 Patent, Abstract). The patent also details specific compositions for the indicator material and outlines a programmatic approach involving training, data collection, and feedback to improve hospital hygiene protocols. (’453 Patent, Fig. 15A; col. 6:20-53).
- Technical Importance: This invention formalizes the fluorescent marker concept into a data-driven infection control program, directly linking the cleaning audit to the reduction of specific, dangerous hospital-acquired pathogens. (’453 Patent, col. 2:50-57).
Key Claims at a Glance
- The complaint asserts at least claims 31-34, 37, 40-45, and 47-51, including independent claim 31. (Compl. ¶27).
- The essential elements of Claim 31 are:
- A method for improving the cleaning of environmental surfaces.
- Applying an amount of transparent indicator material to target sites on environmental surfaces.
- The indicator material includes a transparent source of adherence and a carrier.
- Determining if any indicator material remains after an opportunity to clean by environmental services staff.
- The complaint explicitly asserts dependent claims.
U.S. Patent No. 9,624,456 - "MONITORING CLEANING OF SURFACES"
- Patent Identification: U.S. Patent No. 9624456, “MONITORING CLEANING OF SURFACES,” issued April 18, 2017. (Compl. ¶41).
Technology Synopsis
- As a continuation in the same family as the ’453 patent, this patent addresses the same technical problem of objectively monitoring hospital cleaning to prevent the spread of nosocomial infections. (’456 Patent, col. 1:29-45). The patented solution is similarly a method of applying a transparent, fluorescent indicator material to high-touch surfaces and inspecting for its removal after cleaning, with the claims directed to a method of "evaluating cleaning within a hospital" that includes training environmental services staff. (’456 Patent, col. 10:31-50).
Asserted Claims
- The complaint asserts at least claims 1-36, including independent claim 1. (Compl. ¶43).
Accused Features
- The complaint alleges that Defendant’s making, using, selling of, and instructing customers to use, the "CheckIt System" infringes the ’456 patent. (Compl. ¶¶ 44, 49).
III. The Accused Instrumentality
Product Identification
- Defendant’s “CheckIt Surface Cleaning Validation System,” including its related components. (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the CheckIt System is a system and method used to validate the cleaning of surfaces, sold to customers including hospitals and long-term care facilities. (Compl. ¶¶ 11, 16). The complaint states that when the system is used according to Hillyard's own instructions, it infringes the patents-in-suit. (Compl. ¶¶ 14, 30, 46). It is further alleged that the system is a material part of the claimed inventions and has no substantial non-infringing use. (Compl. ¶¶ 14, 30, 46).
Visual Evidence
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,476,385 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| marking an area subject to periodic cleaning with said invisible fluorescent compound using said contact marker; | The CheckIt System is allegedly used to apply a fluorescent marking compound to a surface prior to a cleaning event. | ¶12, ¶14 | col. 6:2-5 |
| inspecting said area subject to periodic cleaning by illumination with said ultraviolet light sometime after the marking process to determine whether said invisible fluorescent compound is still present; | Use of the CheckIt System allegedly involves inspecting the marked area with a UV light to check for any remaining marking compound after cleaning has occurred. | ¶12, ¶14 | col. 6:5-10 |
| whereby a determination that said invisible fluorescent compound is no longer present indicates that said area was properly cleaned... or a determination that said invisible fluorescent compound is still present indicates that said area was not properly cleaned... | The process of using the CheckIt System allegedly allows a user to determine the quality of the cleaning based on the presence or absence of the mark. | ¶12, ¶14 | col. 6:10-18 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges Hillyard directly infringes the method claim by having "used and continues to use its CheckIt System in a method that embodies the invention" (Compl. ¶12). A potential point of contention is whether Hillyard itself performs all steps of the claimed method, or if its liability rests primarily on indirectly infringing through the actions of its customers who purchase the kit.
- Technical Questions: What evidence does the complaint provide that the CheckIt System's applicator qualifies as a "contact marker" as required by the claim? The complaint lacks the technical detail to assess the specific nature of the applicator.
U.S. Patent No. 7,780,453 Infringement Allegations
| Claim Element (from Independent Claim 31) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| applying an amount of transparent indicator material to one or more target sites of one or more environmental surfaces... | The CheckIt System is allegedly used to apply its indicator material to surfaces in environments like hospitals, as directed by Hillyard's instructions. | ¶28, ¶33 | col. 3:30-33 |
| the transparent indicator material including a transparent source of adherence and a carrier; | The complaint alleges that the CheckIt System "comprises a material part of the claimed invention," suggesting its chemical composition includes the required "carrier" and "source of adherence". | ¶30 | col. 6:20-30 |
| determining if any of the transparent indicator material remains on the one or more target sites... after one or more opportunities to clean... by environmental services staff. | The complaint alleges Hillyard instructs its customers, including hospitals with environmental services staff, to use the system in a process that includes inspecting for the mark after cleaning. | ¶32, ¶33, ¶35 | col. 3:33-36 |
- Identified Points of Contention:
- Scope Questions: This is a method claim directed at "improving the cleaning of environmental surfaces." Does the sale of a kit and instructions for its use constitute direct infringement by Hillyard, or will the case depend on proving induced infringement based on the actions of "environmental services staff" at customer facilities? (Compl. ¶35).
- Technical Questions: What is the specific chemical formulation of the CheckIt System's indicator material? Discovery will be necessary to determine if it meets the claim limitations of a "transparent source of adherence" and a "carrier", as those terms are described in the patent.
V. Key Claim Terms for Construction
Term from the ’385 Patent: "contact marker"
- Context and Importance: This term from claim 1 defines the means of application. Its construction is critical because it determines whether the claim is limited to specific types of applicators (e.g., those requiring physical touch) or covers a broader range, such as sprayers. The nature of the CheckIt System's applicator is not detailed in the complaint.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Practitioners may argue the term should be read functionally to mean any device that causes the compound to make contact with the surface. The specification discloses multiple applicator types, including a "pen applicator," "roller applicator," "spray-applicator," and "wax crayon applicator," suggesting the invention is not limited to a single form. (’385 Patent, col. 3:36-54).
- Evidence for a Narrower Interpretation: Practitioners may focus on the literal meaning of "contact," arguing it implies a device that physically touches the surface, such as the pen (2) or crayon (4) shown in Figure 1. The patent separately identifies the "atomizer 8" for spray-application, which could support an argument that a sprayer is distinct from a "contact marker." (’385 Patent, col. 3:48-51).
Term from the ’453 Patent: "transparent indicator material"
- Context and Importance: This term from claim 31 is central to the invention, defining the substance used for marking. Its construction will determine the required properties of the accused product's marking solution. Practitioners may focus on this term because its definition appears to differ from the term "invisible" used in the earlier ’385 patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides an explicit definition: "Transparent refers to capable of transmitting light so that objects and images beyond can be clearly perceived." (’453 Patent, col. 4:60-62). A plaintiff may argue that any material meeting this functional definition, regardless of its specific chemical makeup, falls within the claim scope.
- Evidence for a Narrower Interpretation: A defendant may argue the term must be read in light of the patent's overall disclosure, which requires the material to be inconspicuous on a surface but fluorescent under UV light. (’453 Patent, col. 5:14-19). Furthermore, they may argue the term is limited by the preferred embodiments, which describe a composition comprising a specific "carrier," "source of adherence," and "surfactant." (’453 Patent, col. 6:20-53).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. The factual basis for inducement is the allegation that Hillyard "instructed and continues to instruct" its customers (e.g., hospitals) on how to use the CheckIt System in an infringing manner. (Compl. ¶¶ 17, 33, 49). The basis for contributory infringement is the allegation that the CheckIt System is a "material part of the claimed invention," is not a staple article of commerce, and has "no substantial noninfringing use." (Compl. ¶¶ 14, 30, 46).
- Willful Infringement: The complaint alleges that Hillyard's infringement has been and continues to be willful. This is based on allegations that Hillyard "is and has been aware" of the patents-in-suit and knows that its actions induce its customers to infringe. (Compl. ¶¶ 18, 22, 34, 38, 50, 54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of liability theory: The complaint asserts direct infringement of method claims against Hillyard, a product supplier. The court will need to determine if evidence supports Hillyard's direct performance of the claimed methods or if the case hinges entirely on proving indirect infringement based on the actions of Hillyard's customers.
- The case will also turn on a question of definitional scope: The construction of key terms such as "contact marker" (’385 patent) and "transparent indicator material" (’453 patent) will be critical. How the court defines the boundaries of these terms will likely determine whether the specific features and composition of the accused CheckIt System fall within the scope of the asserted claims.
- A key evidentiary question will be one of technical correspondence: As the complaint lacks granular detail about the accused product, a core question for trial will be what evidence is produced to demonstrate that the composition of the CheckIt System's marking fluid and the design of its applicator map onto the specific technical limitations recited in the asserted claims.