DCT
2:18-cv-01337
Kenall Mfg Co v. Clear Vu Lighting LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kenall Manufacturing Company (Illinois) and University of Strathclyde (United Kingdom)
- Defendant: Clear-Vu Lighting LLC (New York)
- Plaintiff’s Counsel: Davis & Gilbert LLP; Marshall, Gerstein & Borun LLP
- Case Identification: 2:18-cv-01337, E.D.N.Y., 06/20/2018
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant Clear-Vu has its principal place of business and a regular and established place of business within the district, and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiffs allege that Defendant’s disinfecting light fixtures infringe three patents related to methods and devices for inactivating pathogenic bacteria using specific wavelengths of visible light.
- Technical Context: The technology addresses the need for continuous environmental disinfection in healthcare and other public settings by using specific wavelengths of visible light (e.g., 405 nm) to kill pathogens like MRSA without the use of chemicals or harmful UV radiation.
- Key Procedural History: This First Amended Complaint follows a cease-and-desist demand that was allegedly refused by the Defendant. The asserted patents are licensed by the University of Strathclyde to Kenall Manufacturing. The most recently issued patent, the '706 patent, is a continuation of the application for the '966 patent and is subject to a terminal disclaimer. Post-filing, the '706 patent was subject to an Inter Partes Review (IPR), which concluded with a certificate confirming the patentability of claims 1-4.
Case Timeline
| Date | Event |
|---|---|
| 2005-07-29 | '966 & '706 Patents Priority Date |
| 2007-10-31 | '264 Patent Priority Date |
| 2013-03-19 | U.S. Patent 8,398,264 Issued |
| 2015-05-26 | U.S. Patent 9,039,966 Issued |
| 2017-11-17 | Alleged knowledge date for '966 Patent willfulness |
| 2017-12-12 | U.S. Patent 9,839,706 Issued |
| 2018-06-20 | Complaint Filing Date |
| 2018-12-12 | Inter Partes Review (IPR2019-00431) filed for '706 Patent |
| 2022-08-18 | '706 Patent IPR Certificate Issued, confirming claims 1-4 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,398,264 - "Lighting Device", issued March 19, 2013
The Invention Explained
- Problem Addressed: The patent addresses the challenge of continuous decontamination in occupied spaces, noting that existing methods like UV light or chemical fumigation are toxic to humans and require the area to be sealed off and uninhabited. (’264 Patent, col. 1:10-29).
- The Patented Solution: The invention is a lighting device that combines two types of light-emitting elements. A "first-element" emits visible light in a narrow, bacteria-inactivating wavelength (e.g., centered at 405 nm), while a "second-element" emits general illumination light (e.g., white light) at longer wavelengths. The key innovation is that the general illumination element has a higher illuminance (lux) than the disinfecting element, effectively masking the violet disinfecting light and creating a combined output that is not disturbing to the human eye, allowing for continuous operation. (’264 Patent, Abstract; col. 2:41-55).
- Technical Importance: This design enabled the deployment of continuous, low-level disinfection technology in active environments like hospital rooms, offering a way to combat environmental pathogen transmission without disrupting normal operations. (’264 Patent, col. 2:25-34).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 30. (Compl. ¶¶22, 26).
- Claim 1 recites:
- A lighting device with at least one first-element that emits visible light at a wavelength and irradiance sufficient to inactivate pathogenic bacteria;
- At least one second element that emits light of one or more longer wavelengths than the first-element;
- Wherein the second element has a higher illuminance than the first element.
- Claim 30 recites:
- A lighting device with a first-element that emits visible light at a wavelength and intensity sufficient to inactivate pathogenic bacteria;
- A second-element that emits light of different wavelengths than the first-element;
- Wherein the second element is operable to provide environmental illumination.
U.S. Patent No. 9,039,966 - "Inactivation of Gram-Positive Bacteria", issued May 26, 2015
The Invention Explained
- Problem Addressed: The patent notes that prior art photodynamic therapies for destroying bacteria required the application of external photosensitising agents to the target area, which is a significant practical limitation for general environmental disinfection. (’966 Patent, col. 2:1-11; Compl. ¶12).
- The Patented Solution: The invention is a method for disinfecting non-living surfaces, air, or materials by exposing specific Gram-positive bacteria (including MRSA) to visible light in a narrow wavelength range of 400-420 nm without using a photosensitiser. A critical aspect of the claimed method is that the target surfaces are not simultaneously exposed to a "disinfecting dose" of light at wavelengths above 500 nm. (’966 Patent, Abstract; col. 6:62-7:7).
- Technical Importance: By eliminating the need for a chemical photosensitiser, the invention provides a simpler, more direct method of using light for decontamination in settings where bacteria are present on non-living surfaces. (’966 Patent, col. 2:12-17, 38-46).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶30).
- Claim 1 recites:
- A method for disinfecting air, contact surfaces, or materials by inactivating MRSA;
- The method comprises exposing the MRSA to visible light without using a photosensitiser;
- The visible light consists of wavelengths in the range of 400-420 nm;
- The method is performed outside a human body on non-living surfaces;
- The air, surfaces, or materials are not exposed to a disinfecting dose of light at a wavelength above 500 nm.
Multi-Patent Capsule: U.S. Patent No. 9,839,706 - "Inactivation of Gram-Positive Bacteria", issued December 12, 2017
- Technology Synopsis: This patent, which is a continuation of the application leading to the ’966 Patent, describes methods and systems for disinfecting air and non-living surfaces. It claims the inactivation of a specific group of Gram-positive bacteria (including MRSA, CONS, Streptococcus, etc.) by exposing them to visible light in the 400-420 nm range without a photosensitiser. (’706 Patent, Abstract; col. 2:49-62).
- Asserted Claims: The complaint asserts independent claims 1 (a method) and 3 (a system). (Compl. ¶¶37, 43).
- Accused Features: The complaint alleges that Defendant's products, which use "405nm LED disinfecting technology," infringe by performing the claimed method and embodying the claimed system for disinfecting surfaces and inactivating the specified bacteria. (Compl. ¶¶39-41, 45-46).
III. The Accused Instrumentality
Product Identification
- The "orLED light fixture" and any similar products from Defendant Clear-Vu. (Compl. ¶18).
Functionality and Market Context
- The Accused Products are light fixtures marketed to various industries for the dual purpose of providing ambient illumination and killing harmful germs in environments such as operating rooms. (Compl. ¶20). They are alleged to incorporate "405nm LED disinfecting technology" that uses "precisely engineered wavelengths of visible light" to kill bacteria. (Compl. ¶24). The complaint states the products have at least two operating modes, "ECOMODE" and "WHITE LIGHT MODE." (Compl. ¶25). The complaint provides a downward-facing image of the accused "orLED light fixture," showing a recessed, rectangular lighting panel. (Compl. p. 5).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,398,264 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lighting device with at least one first-element that emits visible light at a wavelength and irradiance sufficient to inactivate... | The Accused Products are lighting devices that include "405nm LED disinfecting technology" using "precisely engineered wavelengths... [to] kill[] bacteria." | ¶24 | col. 2:56-62 |
| ...and at least one second element that emits light of one or more longer wavelengths to that of the first-element... | The Accused Products allegedly include a second element that emits light of longer wavelengths, as demonstrated by the product's "WHITE LIGHT MODE." | ¶25 | col. 2:50-55 |
| ...wherein the at least one second element has a higher illuminance than that of the at least one first element. | This is allegedly demonstrated by the existence of the product's "ECOMODE" and "WHITE LIGHT MODE." | ¶25 | col. 2:46-55 |
Identified Points of Contention
- Technical Questions: The complaint alleges the "higher illuminance" limitation is met by the existence of two modes, but provides no quantitative data. A key factual dispute will be whether photometric measurements of the Accused Products show that the light output associated with the "second element" (e.g., WHITE LIGHT MODE) actually has a higher lux value than the output of the "first element" (e.g., ECOMODE).
- Scope Questions: Does the accused device's use of distinct modes ("ECOMODE" and "WHITE LIGHT MODE") meet the claim requirements? The defense may argue these are mutually exclusive operational states, whereas the patent specification describes a blended, simultaneous output from both elements to create a non-disturbing light. (’264 Patent, col. 2:41-46).
U.S. Patent No. 9,039,966 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for disinfecting... by inactivating... MRSA... said method comprising exposing the MRSA to visible light without using a photosensitiser... | The Accused Products are used for "continuous surface disinfection" for non-living surfaces to kill bacteria such as MRSA and do not use a photosensitiser. | ¶¶32-33 | col. 2:18-24 |
| ...wherein the visible light for inactivating the MRSA consists of wavelengths in the range of 400-420 nm... | The products use "405nm LED disinfecting technology," which is a wavelength that falls within the claimed 400-420 nm range. | ¶34 | col. 2:55-56 |
| ...and the air, contact surfaces or materials are not exposed to a disinfecting dose of light at a wavelength above 500 nm. | The complaint alleges on information and belief that the Accused Products do not expose the environment to a disinfecting dose of light above 500 nm. | ¶36 | col. 7:5-7 |
Identified Points of Contention
- Technical Questions: The allegation for the negative limitation ("not exposed to a disinfecting dose of light... above 500 nm") is made on "information and belief" and lacks factual support. (Compl. ¶36). The defense will likely challenge this, requiring Plaintiff to produce technical evidence regarding the spectral output and bactericidal efficacy of the Accused Product's "WHITE LIGHT MODE," which presumably uses wavelengths above 500 nm.
- Scope Questions: The meaning of "disinfecting dose" will be a critical issue for claim construction. If the Accused Product's standard white light provides any measurable bactericidal effect, the defense may argue it delivers a "disinfecting dose," thereby taking the product outside the scope of this claim.
V. Key Claim Terms for Construction
Term: "higher illuminance" (’264 Patent, Claim 1)
- Context and Importance: This quantitative term is a central limitation of claim 1. Infringement depends on proving that the accused device’s general lighting element is measurably brighter (in lux) than its disinfecting element.
- Intrinsic Evidence for a Broader Interpretation: The plain language does not require a specific ratio, suggesting any amount greater than the first element's illuminance would meet the limitation. The specification provides an example where adding white light increases the illuminance from "2 to 6 lux" to "10-20 lux," supporting a functional rather than a strictly fixed-ratio interpretation. (’264 Patent, col. 4:26-33).
- Intrinsic Evidence for a Narrower Interpretation: The specification states that an illuminance "at least three times" that of the inactivating element is preferable. (’264 Patent, col. 2:53-55). A defendant could argue this phrase limits the scope to a significant, not a de minimis, difference in illuminance, tied to the patent's goal of making the light "non-disturbing." (col. 2:40-41).
Term: "disinfecting dose" (’966 Patent, Claim 1)
- Context and Importance: This term appears in a negative limitation ("not exposed to a disinfecting dose of light at a wavelength above 500 nm"). The viability of the infringement claim hinges on this term's definition, as the accused product's white light mode almost certainly emits light above 500 nm.
- Intrinsic Evidence for a Broader Interpretation (favors Defendant): The patent does not explicitly define a threshold for a "disinfecting dose." A defendant could argue that any statistically significant reduction in bacterial count constitutes a "disinfecting dose," potentially placing the accused product's normal operation outside the claim scope.
- Intrinsic Evidence for a Narrower Interpretation (favors Plaintiff): The patent repeatedly emphasizes the novelty of using the 400-420 nm range for inactivation without a photosensitiser. (’966 Patent, col. 2:55-56). Plaintiff may argue that in the context of the patent, a "disinfecting dose" implies a level of efficacy comparable to that achieved in the claimed narrow band, and that any incidental, less potent effect from broad-spectrum white light does not meet this threshold.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on Clear-Vu's alleged acts of providing promotional and instructional literature that encourages customers to use the products in an infringing manner. (Compl. ¶¶60, 74, 88). Contributory infringement is premised on the allegation that the products have no substantial non-infringing use. (Compl. ¶¶60, 74, 88).
- Willful Infringement: Willfulness is alleged for all three patents. For the ’966 Patent, the allegation is based on pre-suit knowledge as of November 17, 2017. (Compl. ¶73). For the ’264 and ’706 Patents, the allegation is based on knowledge as of the filing of the complaint. (Compl. ¶¶59, 87). The claim is further supported by the allegation that Clear-Vu refused to cease its activities after receiving a demand from Plaintiffs. (Compl. ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of negative limitation proof: Can Plaintiffs prove the factual assertion that the accused light fixture, when operating in its standard illumination mode, does not deliver a "disinfecting dose" of light above 500 nm? The definition of "disinfecting dose" and the technical evidence presented will be pivotal to resolving infringement of the '966 and '706 patents.
- A second core issue will be one of operational interpretation: For the '264 patent, does the accused product's use of distinct "ECOMODE" and "WHITE LIGHT MODE" satisfy the claim requirement for a device with two integrated elements, one having a "higher illuminance"? Or will the court find that these are mutually exclusive operational states that do not map onto the blended-light system described in the patent?