DCT
2:23-cv-03709
Trutek Corp v. Cho
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Trutek Corp. (New Jersey)
- Defendant: Yeong Wan Cho, Salvacion USA, Inc. (New Jersey), Salvacion International, LLC (Wyoming), et al.
- Plaintiff’s Counsel: Law Office of Keith Altman
- Case Identification: 2:23-cv-03709, D.N.J., 07/11/2023
- Venue Allegations: Venue is asserted based on the New Jersey residence of individual defendant Yeong Wan Cho, the incorporation and established place of business of defendant Salvacion USA in New Jersey, and the allegation that the tort of patent infringement occurred within the district.
- Core Dispute: Plaintiff alleges that Defendants' Covixyl nasal spray infringes a patent related to electrostatically charged topical formulations for blocking airborne particles, and further alleges trade secret misappropriation and breach of contract stemming from a prior business relationship.
- Technical Context: The technology involves topical preparations, such as gels or sprays applied to the skin near the nostrils, that create an electrostatic field to attract, trap, and neutralize airborne pathogens and irritants.
- Key Procedural History: The complaint alleges a detailed history between Plaintiff and Defendant Yeong Wan Cho, beginning with a 2019 Confidential Disclosure Agreement (CDA) and subsequent distribution agreements. Plaintiff alleges that Defendants used confidential information obtained through this relationship to develop the accused product and file their own patent applications, forming the basis for claims of willful infringement and trade secret misappropriation.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-07 | U.S. Patent No. 8,163,802 Earliest Priority Date |
| 2012-04-24 | U.S. Patent No. 8,163,802 Issued |
| 2019-03-04 | Confidential Disclosure Agreement executed between Trutek and Defendant Cho |
| 2019-05-12 | Distribution Agreement executed between Trutek and Jintec (Defendant Cho's company) |
| 2019-11-06 | Second Distribution Agreement executed between Trutek and Jintec |
| 2020-08-27 | Defendant Salvacion USA, Inc. incorporated |
| 2020-11-01 | Defendant Salvacion USA filed for FDA approval for Covixyl-G (approx. date) |
| 2021-08-01 | Accused Covixyl product launched (approx. date) |
| 2023-07-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,163,802 - "Electrostatically Charged Multi-Acting Nasal Application, Product, and Method"
The Invention Explained
- Problem Addressed: The patent’s background section identifies the inefficiency of conventional methods like dust masks for preventing the inhalation of harmful airborne particles, particularly motile microorganisms (’802 Patent, col. 2:11-42). It notes that prior electrostatic compositions were passive, unable to prevent trapped particles from being dislodged and subsequently inhaled (’802 Patent, col. 2:43-58).
- The Patented Solution: The invention is a "multi-acting" topical formulation applied near the nostrils. It creates a positive electrostatic field to attract and trap negatively charged airborne particles. Critically, the formulation also contains a biocidic agent designed to actively "inactivate, kill, or render harmless" the trapped microorganisms, providing a more robust barrier than trapping alone (’802 Patent, Abstract; col. 3:35-40). The formulation is designed to form an adhesive and cohesive thin film that holds the captured particles in place (’802 Patent, col. 6:23-30).
- Technical Importance: By combining passive electrostatic capture with an active biocidal function, the invention purported to offer a more effective prophylactic measure against airborne pathogens than purely physical or electrostatic filters.
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 2 (a formulation) (Compl. ¶90).
- Independent Claim 1 (Method):
- A method for electrostatically inhibiting harmful particulate matter from infecting an individual through nasal inhalation
- Wherein a formulation is applied to skin or tissue of nasal passages in a thin film
- Comprising the steps of: (a) electrostatically attracting the particulate matter; (b) holding the particulate matter in place by adjusting the adhesion and cohesion of the film; and (c) inactivating the particulate matter by adding at least one ingredient to render it harmless.
- Independent Claim 2 (Formulation):
- A formulation for electrostatically inhibiting harmful particulate matter
- Comprising at least one cationic agent and at least one biocidic agent
- Wherein the formulation, once applied: (a) electrostatically attracts the particulate matter; (b) holds the particulate matter in place; and (c) inactivates and renders the particulate matter harmless.
III. The Accused Instrumentality
Product Identification
- Covixyl Nasal Spray, also referred to in the complaint as Covixyl-G and Covixyl-V (the "Accused Product") (Compl. ¶¶42, 89).
Functionality and Market Context
- The complaint describes the Accused Product as a nasal antiseptic solution whose main ingredient is benzalkonium chloride (Compl. ¶42). The product packaging for an earlier version, Covixyl-G, shows it is a "Nasal Antiseptic Solution" (Compl. ¶42, Ex. 5).
- The formulation allegedly uses a "nanotechnology" delivery system in the form of an "oil-in-water nanoemulsion" (Compl. ¶42).
- Plaintiff alleges its own laboratory testing confirmed that the Accused Product "exhibits a surface electrostatic charge," "forms a thin film that adheres to surfaces such as skin or tissue," and is "sufficiently viscous to remain active" for several hours (Compl. ¶51).
- The product is marketed as helping to "Block Airborne Viruses" and is allegedly sold online, including through amazon.com (Compl. ¶¶46, 50). Photographs of the Covixyl product packaging state it "Helps Block Airborne Viruses" (Compl. ¶46, Ex. 7).
IV. Analysis of Infringement Allegations
’802 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A formulation... comprising at least one cationic agent and at least one biocidic agent | The Accused Product contains benzalkonium chloride, which the complaint alleges functions as both a cationic and biocidic agent. | ¶¶42, 43, 90 | col. 6:35-39 |
| wherein said formulation, once applied: a) electrostatically attracts the particulate matter to the thin film | Plaintiff's testing allegedly determined the Accused Product exhibits a surface electrostatic charge that attracts harmful particles. | ¶51 | col. 6:40-41 |
| b) holds the particulate matter in place by adjusting the adhesion of the thin film... and by adjusting the cohesion of the formulation | Plaintiff's testing allegedly confirmed the product is "sufficiently viscous to remain active in the user's nostrils for several hours." | ¶51 | col. 6:42-48 |
| c) inactivates the particulate matter and renders said particulate matter harmless | The benzalkonium chloride in the Accused Product allegedly deactivates germs via membrane disruption. | ¶¶43, 90 | col. 6:49-51 |
Note: The infringement allegations for method claim 1 are substantively identical to the formulation claim 2 elements presented above, focusing on the use of the product rather than the product itself (Compl. ¶¶51, 90).
- Identified Points of Contention:
- Scope Questions: The case may turn on the construction of functional claim limitations. A question for the court is whether the Accused Product's alleged electrostatic charge and viscosity are sufficient to meet the claimed functions of "electrostatically attracting" and "holding" particles.
- Technical Questions: The complaint's infringement theory rests heavily on Plaintiff's own internal testing (Compl. ¶51). A central evidentiary question will be whether discovery and expert analysis validate these claims regarding the Accused Product's electrostatic properties, its adhesive and cohesive characteristics as a thin film, and the biocidal efficacy of its formulation.
V. Key Claim Terms for Construction
The Term: "inactivating the particulate matter" / "render said particulate matter harmless"
Context and Importance: This limitation defines the "multi-acting" aspect of the invention, which distinguishes it from purely physical barriers. Its construction is central to infringement, as it defines the required biocidal effect. Practitioners may focus on this term because the degree of efficacy required (e.g., killing vs. inhibiting replication) is not explicitly quantified in the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses varied and broad language, including "neutralized, killed, inactivated, and rendered harmless" ('802 Patent, col. 3:39-40) and making organisms "less harmful" (Abstract), which may support a construction that does not require 100% sterilization.
- Evidence for a Narrower Interpretation: The patent discloses specific biocidic agents, such as Benzalkonium Chloride and Lysine HCL ('802 Patent, cl. 9). A defendant may argue the term's scope should be informed by the known mechanisms of these exemplary agents. The complaint itself points to a specific mechanism of "membrane disruption" (Compl. ¶43), which could be used to argue for a narrower construction if that is the primary mechanism disclosed or enabled.
The Term: "cationic agent"
Context and Importance: This is a required component of formulation claim 2 and is the basis for the electrostatic function. The dispute will likely focus on whether the amount and function of benzalkonium chloride in the Accused Product meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification explicitly lists "Benzalkonium Chloride" as a suitable "Cationic, Quaternary, Biocide" agent in an example formulation ('802 Patent, Table 2). Claim 6 also expressly identifies Benzalkonium Chloride as a cationic agent.
- Evidence for a Narrower Interpretation: A defendant could argue that the term must be construed in the context of the overall formulation's ability to create a functionally effective electrostatic field, not merely the presence of a known cationic substance. The analysis may therefore depend on factual questions of concentration and interaction with other ingredients in the accused formulation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants Salvacion USA and Salvacion International induced infringement by "specifically encouraging and inducing others to use the patented invention within the United States" (Compl. ¶92). Similar allegations are made against individual Defendants Cho and Gaffar (Compl. ¶¶59, 63).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’802 Patent. The complaint asserts that Defendant Cho, a principal of Salvacion USA, was made aware of the patent and its underlying technology during business negotiations with Plaintiff that began in 2019, long before the accused infringement began (Compl. ¶¶39, 65, 91).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of causation and proof: The patent infringement claims are deeply intertwined with allegations of trade secret misappropriation and breach of a Confidential Disclosure Agreement. A central question for the court will be whether Plaintiff can establish that the accused Covixyl formulation was in fact derived from its proprietary technology, a finding that would heavily influence the analysis of willfulness and potential damages.
- A key evidentiary question will be one of functional performance: Does the Accused Product’s formulation actually achieve the functional results required by the claims? The case will likely require competing expert testimony to determine if the Covixyl spray generates a sufficient electrostatic charge to "attract" particles, possesses the requisite viscosity and adhesion to "hold" them, and demonstrates the biocidal efficacy to "inactivate" them as claimed in the ’802 Patent.