DCT
6:23-cv-01040
NuVinAir LLC v. Goldberg
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NuVinAir, LLC (Texas)
- Defendant: Robert Goldberg, individually (South Carolina)
- Plaintiff’s Counsel: Burr & Forman LLP
- Case Identification: 6:23-cv-01040, D.S.C., 03/14/2023
- Venue Allegations: Venue is based on the Defendant's residence and regular and established place of business being located within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant's "PRISTINE PROS" odor control system induces and contributes to the infringement of a patent for a method of cleaning vehicle interiors with a gaseous agent.
- Technical Context: The technology concerns systems for dispersing a chemical cleaning agent as a gas or fine mist within an enclosed vehicle cabin to eliminate odors and microbial contaminants.
- Key Procedural History: The asserted patent, U.S. Patent No. 9,925,959, underwent and survived an ex parte reexamination, which concluded with the issuance of a reexamination certificate and amendments to the asserted claim. The complaint alleges Defendant is a former supplier of Plaintiff’s product and was sent two pre-suit cease and desist letters.
Case Timeline
| Date | Event |
|---|---|
| 2015-11-10 | '959 Patent Priority Date |
| 2018-03-27 | '959 Patent Issue Date |
| 2022-06-29 | First cease and desist letter sent to Defendant |
| 2023-01-04 | '959 Patent Reexamination Certificate Issued |
| 2023-02-17 | Second cease and desist letter received by Defendant |
| 2023-03-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- 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 background describes the difficulty in eliminating microbial and viral contaminants, as well as undesirable odors, from the interior surfaces of vehicles ('959 Patent, col. 1:25-50). It notes that simple wiping is often insufficient for cleaning textured surfaces or hard-to-reach areas and that there is an economic need to clean pre-owned vehicles to improve their resale value ('959 Patent, col. 2:4-15).
- The Patented Solution: The invention is a method and system for dispersing a cleaning agent throughout a sealed vehicle cabin ('959 Patent, col. 1:13-18). A portable apparatus containing water and a solid or gel chemical pack is placed inside the vehicle. An electric motor drives an impeller within the container, agitating the mixture to create a vortex and accelerate the release of a gaseous cleaning agent ('959 Patent, col. 2:30-36). This agent is then emitted as a fine, air-borne spray through a specially designed lid, allowing it to permeate the cabin and coat all interior surfaces, as illustrated in Figure 2B ('959 Patent, Fig. 2B; col. 2:44-50).
- Technical Importance: The invention provides a method for automated, comprehensive deep-cleaning of an entire vehicle cabin, targeting contaminants and odors on surfaces that are inaccessible to manual cleaning methods ('959 Patent, col. 1:13-24).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1, as amended by the ex parte reexamination certificate issued January 4, 2023 (Compl. ¶¶ 6, 7).
- The essential elements of amended Claim 1 are:
- Selecting a portable apparatus comprising a container with water, a chemical pack, an impeller, and a lidded aperture for emitting an air-borne spray.
- Sealing the cabin interior from the outside environment with the apparatus inside.
- Agitating the water and chemical pack with the impeller.
- Starting an air recirculation system of the cabin.
- Maintaining the cabin closed for an effective time to reduce malodor or microbial/viral load.
III. The Accused Instrumentality
- Product Identification: The accused product is an odor control system marketed under the name "PRISTINE PROS" (Compl. ¶7).
- Functionality and Market Context: The complaint describes the accused instrumentality as "chemical packs supplied with mixing container" which are sold to car dealers and rental car fleets (Compl. ¶¶ 7, 10). A photograph of the accused product's packaging, labeled "PRISTINE PROS," is provided in the complaint (Compl. p. 3). The packaging states the product will "ELIMINATE PROBLEM ODORS at their biological source" and "DESTROY Them!" (Compl. p. 3). The complaint alleges that the product is a material component of the patented invention, is not a staple article of commerce, and that Defendant instructs customers on the "methodology" for its use (Compl. ¶¶ 9, 10).
IV. Analysis of Infringement Allegations
The complaint alleges that a customer's use of the accused product satisfies the limitations of Claim 1, but does not provide a detailed, element-by-element mapping of the accused product's features to the claim language (Compl. p. 4). The infringement theory is based on contributory and induced infringement, where the Defendant allegedly supplies a key component of the invention and instructs customers on how to perform the infringing method (Compl. ¶¶ 9, 10).
'959 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| selecting a portable apparatus ... comprising: a container ... comprising: ... water ... a solid or a gel ... pack that releases a gaseous cleaning agent ... an impeller within the container, and a lid removably coupled to the container ... wherein the lid defines an aperture ... such that ... an air borne spray is emitted from the aperture into the cabin; | The complaint alleges that the "PRISTINE PROS" system, consisting of a "mixing container" and "chemical packs," constitutes the claimed portable apparatus. | ¶¶ 7, 9, 10 | col. 3:41-59 |
| sealing the cabin interior from an outside environment with the portable apparatus inside; | The complaint alleges that the "methodology" taught to customers for using the product includes performing the steps of the claimed method, which would include sealing the vehicle cabin. | ¶10; p. 4 | col. 3:1-3 |
| agitating the water and the solid or the gel pack with the impeller; | The complaint's general allegation that customer use satisfies all limitations implies that the "mixing container" includes an impeller and that the instructed "methodology" involves its use for agitation. | ¶10; p. 4 | col. 4:62-5:1 |
| starting an air recirculation system of the cabin; and | The complaint alleges that the instructed "methodology" includes all steps of the claimed method, which would include activating the vehicle's air recirculation system. | ¶10; p. 4 | col. 3:8-10 |
| maintaining the cabin interior closed while allowing the gaseous cleaning agent to dwell for an effective time in the sealed cabin interior to reduce the malodor, or a microbial and viral load on interior surfaces within the sealed cabin. | The complaint alleges that the instructed "methodology" includes allowing the product to operate in the sealed cabin for an effective period. | ¶10; p. 4 | col. 3:11-15 |
- Identified Points of Contention:
- Technical Question: A central question is whether the accused "mixing container" contains an "impeller" as strictly required by the claim. The complaint provides no specific factual allegations or evidence to support the presence of this component, which appears critical to the infringement theory.
- Scope Question: The infringement case depends on proof that Defendant’s instructions to customers direct them to perform all steps of the method claim, including not only using the container and chemicals but also sealing the cabin and activating the vehicle’s air recirculation system. The sufficiency of these alleged instructions will be a key issue.
V. Key Claim Terms for Construction
The Term: "impeller"
- Context and Importance: This structural limitation appears to be dispositive. Infringement requires the accused apparatus to contain an "impeller" for agitation. The complaint's lack of specific allegations regarding this feature suggests that its presence or absence in the accused product will be a primary focus of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "impeller," which may support an argument that the term should be given its plain and ordinary meaning, encompassing any rotating blade structure designed to agitate fluid.
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment of the impeller as having a "'double horse-shoe shape' with one horse shoe ... curved downward, and the other ... curved upward" ('959 Patent, col. 6:25-30; Figs. 3A-3B). A party could argue this detailed description limits the scope of "impeller" to this or structurally similar designs intended to create a vortex.
The Term: "agitating ... with the impeller"
- Context and Importance: This term connects the required structure ("impeller") to a required action ("agitating"). Its construction will determine whether infringement requires active, mechanical mixing, as opposed to passive chemical dissolution or effervescence. This distinction may be critical for differentiating the claimed method from prior art or non-infringing alternatives.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be construed to mean any stirring or mixing of the container's contents caused by the impeller's rotation.
- Evidence for a Narrower Interpretation: The patent summary and detailed description repeatedly mention that the agitation's purpose is to "generate a vortex" ('959 Patent, col. 2:33-34; col. 6:29-32). This could support a narrower construction requiring a specific type or intensity of agitation sufficient to form a vortex that accelerates the release of the gaseous agent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement. Inducement is based on allegations that the Defendant provides "verbally specific" instructions to customers on the methodology of using the product (Compl. ¶10). Contributory infringement is based on the allegation that the accused product is a material part of the invention and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶9).
- Willful Infringement: Willfulness is alleged based on Defendant's status as a "former supplier of NuVinAir's competing Cyclone® product" and the receipt of two cease and desist letters prior to the suit, which allegedly establish knowledge of the patent and the infringing conduct (Compl. ¶11).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can the Plaintiff demonstrate that the accused "PRISTINE PROS" system's "mixing container" actually contains an "impeller" as required by the patent's claims? The complaint's lack of specific factual allegations on this point suggests this will be a primary battleground of the litigation.
- A key question for the indirect infringement claims will be one of causation and intent: what specific "methodology" did the Defendant instruct customers to follow, and does that evidence show that the Defendant knowingly encouraged its customers to perform every step of the patented method, thereby directly infringing the asserted claim?