DCT
4:20-cv-04120
Uv Partners Inc v. Proximity Systems Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UV Partners, Inc. (Michigan)
- Defendant: Proximity Systems, Inc. (Texas)
- Plaintiff’s Counsel: Porter Hedges LLP; Warner Norcross + Judd LLP
- Case Identification: 4:20-cv-04120, S.D. Tex., 02/03/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the Southern District of Texas and has committed acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s UV-CLEAN disinfecting light products infringe patents related to portable, mountable ultraviolet light systems for disinfecting surfaces like keyboards and monitors.
- Technical Context: The technology concerns the use of ultraviolet-C (UV-C) light devices to automatically disinfect high-touch surfaces in environments such as healthcare and offices, a market that has seen increased attention for its role in pathogen control.
- Key Procedural History: The complaint details a prior business relationship where Defendant was a distributor for Plaintiff’s products, beginning in 2015. This relationship allegedly gave Defendant intimate knowledge of Plaintiff's patented technology. The parties terminated their relationship via a Settlement Agreement in September 2018, which the complaint notes expressly carved out Plaintiff’s claims for patent infringement from any release of liability.
Case Timeline
| Date | Event |
|---|---|
| 2010-05-10 | Priority Date for ’624, ’652, and ’699 Patents |
| 2015-05-29 | Distributor Agreement executed between Plaintiff and Defendant |
| 2016-04-08 | Defendant executes promissory note to invest in Plaintiff |
| 2017-04-17 | Plaintiff's employee Michael Grover terminates employment |
| 2017-07-11 | Executive teams meet to discuss promotion of Plaintiff's technology |
| 2018-02-13 | Defendant allegedly distributes marketing for accused products at Plaintiff's customer training |
| 2018-02-27 | U.S. Patent No. 9,901,652 issues |
| 2018-03-02 | Plaintiff contacts Defendant regarding distributor obligations and patent portfolio |
| 2018-09-18 | Parties execute Settlement Agreement, terminating business relationship |
| 2019-09-17 | U.S. Patent No. 10,413,624 issues |
| 2022-01-11 | U.S. Patent No. 11,219,699 issues |
| 2022-02-03 | Second Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,413,624 - "Portable Light Fastening Assembly"
- Issued: September 17, 2019
The Invention Explained
- Problem Addressed: The patent addresses the need for a non-permanent, portable way to attach specialized lighting, such as germicidal UV light, to electronic devices to disinfect them without being a burden to the user for mobility or storage (’624 Patent, col. 1:28-36).
- The Patented Solution: The invention is a portable light assembly with a UV light source in a lamp housing. This housing connects to an attachment device that allows it to be removably fastened to different objects, like a monitor or a table stand. The core of the fastening mechanism is an "engagement member" that can be removably secured within a separate "receptacle housing," enabling the lamp to be held in a fixed position and easily moved between different mounting locations (’624 Patent, Abstract; Fig. 51).
- Technical Importance: This modular design provides a flexible way to apply targeted surface disinfection to a variety of high-touch electronic interfaces in different environments, such as retail point-of-sale systems or office workstations (’624 Patent, col. 8:26-37).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶36).
- The essential elements of independent claim 1 are:
- A lamp housing.
- An attachment device extending from the lamp housing configured to removably affix the assembly to a table stand or a monitor.
- An ultra-violet (UV) light source at least partially enclosed in the lamp housing.
- The attachment device includes a support member and a paired engagement member configured to be removably fastened within a receptacle housing for affixing the assembly.
- The complaint reserves the right to assert additional claims, including dependent claims 2 and 5-15 (Compl. ¶44).
U.S. Patent No. 9,901,652 - "Portable Light Fastening System"
- Issued: February 27, 2018
The Invention Explained
- Problem Addressed: The patent identifies the challenge of disinfecting high-touch human interface devices (like keyboards and touch screens) where sprays or wipes are impractical, particularly in multi-user environments like hospitals or libraries where contagion transmission is a risk (’652 Patent, col. 13:10-21).
- The Patented Solution: The invention is a germicidal system with a UV light source in a housing that removably attaches to a human interface device. A key feature is a sensor coupled to the housing that is configured to detect movement. This sensor turns the UV light off when a predetermined movement is measured, which serves as a safety feature to prevent user exposure to UV radiation (’652 Patent, Abstract; col. 6:16-20). The system is designed to project an illumination pattern that "substantially corresponds to the touch surface" to be disinfected (’652 Patent, col. 6:1-3).
- Technical Importance: This automated, sensor-driven approach allows for unattended disinfection cycles between uses, reducing the risk of pathogen transmission without requiring manual cleaning or exposing users to UV light (’652 Patent, col. 6:10-16).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶51).
- The essential elements of independent claim 1 are:
- A housing defining an aperture.
- An ultra-violet (UV) light source in the housing, configured to project an illumination pattern.
- An attachment device extending from the housing.
- A sensor coupled to the housing.
- The attachment device is configured to removably attach to a separate human interface device for disinfecting its touch surface.
- When attached, the illumination pattern substantially corresponds to the touch surface.
- The sensor is configured to measure movement of the attachment device relative to the human interface device and to turn the UV light source off when a predetermined movement is measured.
- The complaint reserves the right to assert additional claims, including claim 5 (Compl. ¶60).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 11,219,699, "Standalone Portable UV Lamp," issued January 11, 2022.
- Technology Synopsis: This patent describes a standalone UV lamp designed to be placed on a surface, such as a desk, to disinfect an adjacent human interface device like a keyboard. The invention uses a surface stand, a support member, and a shade that cooperatively define a downward-projecting UV illumination profile (’699 Patent, Abstract). A sensor detects human proximity to automatically disable the light source as a safety measure, allowing for automated, iterative disinfection cycles when no user is present (’699 Patent, col. 21:35-49).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶68).
- Accused Features: The UV-CLEAN Surface Mount and UV-CLEAN Standalone products are accused of infringing the ’699 Patent (Compl. ¶64).
III. The Accused Instrumentality
Product Identification
- Defendant’s "UV-CLEAN" product line, including the UV-CLEAN Standalone (UVC-SA), Surface Mount (UVC-SM), and Clamp Mount (UVC-CM) (Compl. ¶11).
Functionality and Market Context
- The complaint alleges that the accused products are UV-C disinfection devices designed for workplace environments (Compl. ¶¶10-11). The Surface Mount is a free-standing unit that sits over a keyboard for automated cleaning cycles. The Clamp Mount attaches under a monitor to disinfect the work surface below. The Standalone model is designed to disinfect mobile devices placed on its tray (Compl. ¶11).
- A product image in the complaint shows the different mounting configurations for the accused products. (Compl. p. 10).
- The complaint alleges that the accused products are "identical to UV Angel's product offerings in many respects" and incorporate "copycat design" features, suggesting they compete directly in the market for surface disinfection solutions (Compl. ¶¶11-12).
IV. Analysis of Infringement Allegations
’624 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lamp housing | The accused product has a lamp housing that encloses the UV bulb. An annotated image highlights this component in blue. (Compl. p. 11). | ¶38 | col. 5:43-44 |
| an attachment device extending from the lamp housing configured to removably affix the portable light fastening assembly to at least one of a table stand and a monitor | The accused product’s bracket assembly extends from the lamp housing and is configured to removably affix the device to a table stand or a monitor bracket. | ¶39 | col. 5:44-48 |
| an ultra-violet (UV) light source at least partially enclosed in the lamp housing | The accused product’s UV bulb is partially enclosed in the lamp housing. | ¶40 | col. 5:50-51 |
| wherein the attachment device includes a support member and a paired engagement member is configured to be removably fastened within the receptacle housing for removably affixing the portable light fastening assembly... | The accused product's bracket assembly allegedly includes a main bracket (red), supporting side arms (green) that form a U-shaped receptacle housing, and an engagement member (monitor bracket or table stand) paired to it. An exploded diagram illustrates these color-coded components. (Compl. p. 12). | ¶41 | col. 18:30-38 |
| wherein the engagement member is configured to be removably fastened within the receptacle housing for removably affixing the portable light fastening assembly... | Both the monitor bracket and table stand engagement members are allegedly configured to be removably fastened with screws within the U-shaped receptacle housing. | ¶42 | col. 19:10-21 |
Identified Points of Contention:
- Scope Questions: A central question may be whether the accused product's main bracket assembly, which receives different mounting options, constitutes the claimed "receptacle housing," and whether the stand and monitor mounts are "paired engagement member[s]" as those terms are used in the patent. The defense may argue that the accused structure is a simpler, unpatentable combination of a light and a bracket, while the plaintiff will argue it maps directly onto the claimed modular system.
- Technical Questions: The complaint alleges the accused bracket arms form a "U-shaped receptacle housing." The court may need to determine if this open-sided structure meets the claim requirement of an engagement member being fastened within a receptacle housing.
’652 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing defining an aperture | The accused product has a housing that defines an aperture through which UV light is projected. | ¶53 | col. 5:53-54 |
| an ultra-violet (UV) light source at least partially enclosed in the housing and configured to project an illumination pattern | The accused product's UV-C bulb is enclosed in the housing and configured to project an illumination pattern of UV-C light. | ¶54 | col. 5:59-63 |
| an attachment device extending from the housing | The accused product has a main bracket that extends from the rear of the housing. | ¶55 | col. 5:55-58 |
| a sensor coupled to the housing | The accused product has a motion sensor coupled to the housing. An annotated diagram identifies the motion sensor on the front of the device. (Compl. p. 17). | ¶56 | col. 6:3-6 |
| wherein the attachment device is configured to removably attach to a separate human interface device for disinfecting a touch surface | The accused product is configured to removably attach to a computer workstation to disinfect its touch surface. | ¶57 | col. 5:55-58 |
| wherein when the attachment device is attached to the human interface device, the illumination pattern substantially corresponds to the touch surface | The complaint provides diagrams showing the "COVERAGE AREA" of the UV-C bulb's illumination pattern, which allegedly corresponds to the touch surface of a computer workstation. (Compl. p. 18). | ¶58 | col. 6:1-3 |
| wherein the sensor is configured to measure movement of the attachment device relative to the human interface device and to turn the UV light source from on to off when a predetermined movement is measured | The accused product’s motion sensor allegedly detects movement of the attachment device relative to the computer workstation and has a movement-based UV auto shut-off feature. | ¶59 | col. 10:60-64 |
Identified Points of Contention:
- Scope Questions: The interpretation of "movement of the attachment device relative to the human interface device" will be critical. The complaint alleges a general-purpose motion sensor meets this limitation. The defense may argue this claim language requires a more specific sensor, like an accelerometer, that can distinguish between general ambient motion (a person walking by) and movement of the device itself (e.g., the monitor it is attached to being bumped).
- Technical Questions: An evidentiary question may arise as to what the accused product's sensor actually measures. Does it only detect ambient motion in its field of view, or does it contain technology (e.g., an inertial sensor) capable of detecting its own movement relative to the object it is mounted on, as the claim requires?
V. Key Claim Terms for Construction
Patent ’652, Claim 1
- The Term: "movement of the attachment device relative to the human interface device"
- Context and Importance: This term defines the trigger for the system's primary safety feature. The infringement analysis will likely turn on whether the accused product's general-purpose motion sensor, which detects human presence, performs the function described by this more specific language. Practitioners may focus on this term because it appears to describe a specific technical function beyond simple motion detection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses using a sensor to detect a user's presence to prevent UV exposure, which could support interpreting "movement" broadly to include any motion indicating a user is nearby (’652 Patent, col. 6:16-20).
- Evidence for a Narrower Interpretation: The specification explicitly discloses an "accelerometer" as a means to detect "quick movement" of the attachment device itself, suggesting that "movement of the attachment device" could be construed more narrowly to mean the device's own physical displacement, rather than just ambient motion in the vicinity (’652 Patent, col. 10:60-64).
Patent ’624, Claim 1
- The Term: "receptacle housing"
- Context and Importance: This term is central to the claimed modular attachment mechanism. The dispute may center on whether the accused product's U-shaped bracket, which is open on multiple sides, qualifies as a "housing."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "receptacle housing," which may support giving the term its plain and ordinary meaning, potentially encompassing a structure that receives and holds another component.
- Evidence for a Narrower Interpretation: Figure 51 shows the receptacle housing 5117 as a distinct, box-like component with an opening 5119 at the top, which could support a narrower construction requiring a more enclosed structure than the accused product's open bracket (’624 Patent, Fig. 51; col. 18:60-64).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. It claims Defendant induces infringement by providing materials like websites and promotional videos that encourage and instruct customers on how to use the infringing products (Compl. ¶¶36, 50, 66). Contributory infringement is alleged on the basis that the accused products were especially made to practice the patents, have no substantial non-infringing uses, and that Defendant knew they would be used to infringe (Compl. ¶¶35, 49, 65).
- Willful Infringement: The complaint alleges willful and deliberate infringement for all asserted patents. This allegation is based on Defendant's alleged pre-suit knowledge of Plaintiff's technology and patent portfolio, gained through their prior distributor relationship starting in 2015, as well as actual notice of pending applications and issued patents during that relationship (Compl. ¶¶7, 17, 31, 45, 61, 81).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to hinge on the specific interpretation of claim terms related to both the mechanical structure and the electronic safety features of the patented inventions. The history of a prior business relationship between the parties adds a layer of context to the allegations of copying and willfulness. Key questions for the court will likely include:
- A core issue will be one of structural scope: Does the accused product's open, U-shaped bracket and interchangeable mounts meet the ’624 patent’s more specific claim requirements of a "receptacle housing" and a "paired engagement member" that is fastened "within" it, or is the structure fundamentally different from what is claimed?
- A key technical question will be one of functional operation: Does the accused product’s general-purpose motion sensor, which detects human presence for an "auto shut-off," perform the specific function of measuring "movement of the attachment device relative to the human interface device" as required by the ’652 patent, or is there a mismatch between the claimed safety mechanism and the one actually implemented?
- A central theme will be knowledge and intent: Given the prior distributor relationship, the court will have to examine what knowledge Defendant possessed regarding Plaintiff’s technology and patent portfolio, and whether its actions, as alleged in the complaint, rise to the level of willful infringement.