DCT
4:24-cv-01894
Go Fan Yourself LLC v. Illumipure Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Go Fan Yourself, LLC (Delaware)
- Defendant: IllumiPure, Inc. (Texas)
- Plaintiff’s Counsel: Vitale, Vickrey, Niro, Solon & Gasey LLP; Park, Vaughan, Fleming & Dowler LLP
- Case Identification: 4:24-cv-01894, S.D. Tex., 05/20/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant is a Texas corporation with its principal place of business in Houston and has allegedly committed acts of infringement in the district, including making, using, and selling the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s ceiling-mounted air purification products infringe four patents related to integrated systems that use fans and ultraviolet (UV) light to circulate and decontaminate air within a ceiling tile form factor.
- Technical Context: The technology concerns combined HVAC and air purification systems designed to fit within standard commercial ceiling grids, a market driven by the need for improved indoor air quality in public, commercial, and institutional settings.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a notice letter on November 20, 2023, which included claim charts detailing the alleged infringement of the patents-in-suit. After an alleged non-response, a follow-up letter was sent on February 2, 2024. This alleged pre-suit notice forms the basis of the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-28 | Earliest Priority Date for '141, '026, '223, and '336 Patents |
| 2019-06-11 | '141 Patent Issued |
| 2020-06-02 | '026 Patent Issued |
| 2021-06-08 | '223 Patent Issued |
| 2022-02-22 | '336 Patent Issued |
| 2023-11-20 | Plaintiff's First Notice Letter to Defendant |
| 2024-02-02 | Plaintiff's Second Notice Letter to Defendant |
| 2024-05-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,316,141 - “Ceiling Tile with Built-in Air Flow Mechanism and UV Air Purifying Device,” issued June 11, 2019
The Invention Explained
- Problem Addressed: The patent’s background section describes the dual challenges of maintaining indoor air quality and managing heat generated by modern LED lighting systems (’141 Patent, col. 1:26-35, 1:51-57). It notes that poor ventilation can lead to "sick building syndrome" and that excessive heat can degrade the performance and lifespan of LED lights (’141 Patent, col. 1:26-30, 1:61-64).
- The Patented Solution: The invention proposes an integrated device that fits within the footprint of a standard ceiling tile to address these problems simultaneously (’141 Patent, col. 2:46-49). The device uses a fan to circulate air, and this airflow is directed over the LED components for cooling (’141 Patent, col. 6:58-66). The same airflow is passed through a "kill zone" created by an internal UV-C light source, which decontaminates the air by irradiating airborne pathogens like viruses and bacteria (’141 Patent, col. 13:21-31; Fig. 1).
- Technical Importance: This integrated design offers a multi-functional solution for indoor environments by combining air circulation, air purification, and lighting into a single, standardized building component (Compl. ¶¶8-9).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶36).
- The essential elements of claim 11 are:
- An air purifying device comprising:
- a lower baffle configured the size of a ceiling tile, including a fan portion and a vent portion;
- an upper baffle adjacent to the lower baffle, configured to form an air chamber between them;
- a fan in the fan portion of the lower baffle that directs air between the air chamber and the vent portion; and
- a UV-C light fixture in the air chamber that emits UV light to form a kill zone capable of killing microbes in the passing air.
- The complaint reserves the right to assert dependent claims 12-13 (Compl. ¶35).
U.S. Patent No. 10,670,026 - “Ceiling Tile with Built-in Air Flow Mechanism,” issued June 2, 2020
The Invention Explained
- Problem Addressed: The patent addresses the need for effective air circulation and purification in indoor spaces to combat contaminants that cause health problems and reduce productivity (’026 Patent, col. 1:24-35). It further identifies the need for a self-contained "kill chamber" where UV treatment can occur without exposing the room's occupants to UV radiation (’026 Patent, col. 2:38-42).
- The Patented Solution: The invention is an air circulation device housed in a unit shaped like a ceiling tile (’026 Patent, Abstract). It features a fan, a vent, and a baffle that together define an airway. Mounted within this airway is a "UV kill chamber" containing a UV light source and, critically, a "UV-shield" explicitly adapted to block UV light from escaping the device through the airway (’026 Patent, col. 3:20-24; Fig. 1).
- Technical Importance: The inclusion of a dedicated "UV-shield" in the claimed structure suggests an emphasis on safety, ensuring that potentially harmful germicidal UV light is contained within the unit while treating the airflow.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶63).
- The essential elements of claim 1 are:
- An air circulation device, comprising:
- a housing configured in the shape of a housing ceiling tile;
- a first fan mounted to the housing;
- a first vent in the housing;
- a baffle mounted to the housing, defining at least a first airway between the fan and vent;
- a UV kill chamber mounted in the first airway; and
- the UV kill chamber including a UV light source and a UV-shield adapted to block UV light from exiting the airway.
- The complaint reserves the right to assert dependent claims 2 and 7-16 (Compl. ¶62).
U.S. Patent No. 11,028,223 - “Ceiling Tile with Built-in Air Flow Mechanism and UV Air Purifying Device,” issued June 8, 2021
- Technology Synopsis: This patent describes an air purifying device with a face-plate configured to the size of a ceiling tile and a cover that together form an air chamber (’223 Patent, Abstract). A fan directs air through this chamber, where a UV-C light fixture creates a kill zone. The invention specifies a baffle positioned near the kill zone that serves two functions: directing air toward the kill zone and prohibiting UV light from exiting it (’223 Patent, col. 2:25-33).
- Asserted Claims: At least claims 1-9 and independent claim 14 are asserted (Compl. ¶84).
- Accused Features: The Air Guardian device is accused of infringing based on its alleged face-plate, cover, air chamber, fan, UV-C light fixture, and internal baffle (Compl. ¶¶88-92).
U.S. Patent No. 11,255,336 - “Ceiling Tile with Built-in Air Flow Mechanism,” issued February 22, 2022
- Technology Synopsis: This patent discloses an air circulation device with a housing designed to be joined to a building structure (’336 Patent, Abstract). The architecture is similar to the ’026 Patent, comprising a fan, vent, and baffle that define an airway. This airway contains a UV kill chamber that includes a UV light source and a "UV-shield" to block UV light from exiting the device (’336 Patent, col. 3:1-9).
- Asserted Claims: At least claims 1-2, 7, and 10-16 are asserted, with claim 1 being independent (Compl. ¶107).
- Accused Features: The Air Guardian device is accused of infringing based on its alleged housing, fan, vent, baffle, and UV kill chamber with an internal UV light source and shield (Compl. ¶¶111-116).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Air Guardian Air Purification and Disinfection Device" ("Air Guardian") sold by Defendant IllumiPure, Inc. (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the Air Guardian is an air purification device installed in the ceiling tile grid of buildings such as schools, hospitals, and offices (Compl. ¶21). Its technology is described as starting with UV-C light to kill pathogens and particulates within an "inner-chamber design" intended to maximize exposure and destruction in a single pass (Compl. ¶22). An image in the complaint shows the Air Guardian's internal UV-C light fixture, which allegedly forms a "kill zone" within the chamber (Compl. ¶23; p. 5). The device is alleged to use in-ceiling dispersion ports, independent of a central HVAC system, to deliver fresh air (Compl. ¶24).
IV. Analysis of Infringement Allegations
10,316,141 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lower baffle configured the size of a ceiling tile, wherein the lower baffle includes a fan portion and a vent portion; | The Air Guardian allegedly has a lower baffle configured to the size of a ceiling tile, which includes sections for a fan and a vent. | ¶39 | col. 5:8-10 |
| an upper baffle adjacent the lower baffle configured to form an air chamber between the lower baffle and the upper baffle; | The Air Guardian is alleged to have an upper baffle adjacent to the lower baffle, forming an air chamber between the two components, as depicted in annotated images from the complaint. | ¶41, ¶42; p. 8 | col. 12:55-65 |
| a fan positioned in the fan portion of the lower baffle, wherein said fan directs air between the air chamber and the vent portion; and | A fan is allegedly positioned in the fan portion to direct air between the air chamber and the vent portion, as shown in a diagram. | ¶43, ¶44; p. 9 | col. 6:33-37 |
| a UV-C light fixture positioned in the air chamber wherein the UV-C light fixture emits UV light to form a kill zone within the air chamber capable of killing bacteria, viruses or microbes contained in air passing through the kill zone. | A UV-C light fixture is allegedly positioned within the air chamber to create a UV "kill zone" that kills pathogens in the passing air. | ¶45, ¶46; p. 9 | col. 13:21-44 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis may raise the question of whether the term "baffle," which the ’141 Patent specification depicts as a potentially simple structural plate (e.g., ’141 Patent, Fig. 1), can be construed to read on the integrated, molded housing components of the accused Air Guardian device as shown in the complaint's visuals (Compl. p. 8).
- Technical Questions: The complaint alleges a specific airflow path where the fan "directs air between the air chamber and the vent portion" (Compl. ¶43). A potential point of dispute could be whether the actual airflow dynamics within the Air Guardian device correspond to this claimed functional path.
10,670,026 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing configured in the shape of a housing ceiling tile; | The Air Guardian is an air circulation device that allegedly has a housing configured in the shape of a ceiling tile. | ¶65, ¶66 | col. 5:48-51 |
| a first fan mounted to the housing; | The complaint does not provide sufficient detail for analysis of this specific element. | ||
| a first vent in the housing; | The complaint does not provide sufficient detail for analysis of this specific element. | ||
| a baffle, mounted to the housing, and defining at least a first airway between the fan and the first vent; | The Air Guardian allegedly includes a baffle mounted to its housing that defines a first airway between the fan and the vent. | ¶67 | col. 5:58-61 |
| a UV kill chamber mounted in the first airway; and | The Air Guardian allegedly has a UV kill chamber mounted within the first airway. | ¶68 | col. 3:20-24 |
| the UV kill chamber includes a UV light source and a UV-shield adapted to block UV light generated by the UV light source from exiting the first airway. | The UV kill chamber of the accused device allegedly includes a UV light source and a UV-shield that blocks UV light from exiting. | ¶69 | col. 3:20-24 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the construction of "UV-shield." The question for the court will be whether this term requires a distinct component specifically designed for shielding, or if it can be read broadly to cover any part of the device's general housing that incidentally blocks UV light from exiting.
- Technical Questions: The complaint makes a conclusory allegation that the Air Guardian has a "UV-shield" but provides no visual or technical description identifying which component of the accused device performs this function (Compl. ¶69). This lack of detail suggests that the existence and identity of the "UV-shield" will be a key factual dispute.
V. Key Claim Terms for Construction
Term: "baffle" (from the ’141 Patent)
- Context and Importance: This term is fundamental to the claimed structure of the ’141 Patent, defining the components that form the "air chamber" and guide airflow. The construction of "baffle" will be critical to determining if the accused product's integrated housing components meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the term functionally to describe various structures that direct or manage airflow, such as an "upper baffle" and "lower baffles" that "act together to define one or more airway(s)" (’141 Patent, col. 12:55-58). This may support a construction based on the function of guiding air rather than a specific form.
- Evidence for a Narrower Interpretation: Figures in the patent, such as the "troffer baffle 14" in Figure 1 and the baffles in Figure 16A, depict these elements as distinct, often plate-like components. This could support a narrower structural definition that may not encompass a single, complex molded housing.
Term: "UV-shield" (from the ’026 Patent)
- Context and Importance: This term is a key limitation related to the safety and containment features of the claimed device in the ’026 Patent. Infringement will depend on whether any structure in the accused device meets the definition of a "UV-shield."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the ’026 Patent defines the term functionally as being "adapted to block UV light generated by the UV light source from exiting the first airway." This language may support a broad interpretation where any structure that achieves this blocking function qualifies as a "shield."
- Evidence for a Narrower Interpretation: The specification discusses the need for a "virus or bacteria kill chamber" that is "self-enclosed such that any UV light source does not exit" (’026 Patent, col. 2:38-42) and the use of an "extensive system of barriers" to preclude light from exiting (’026 Patent, col. 4:46-52). This context suggests the "UV-shield" may be construed more narrowly as a specific component intentionally designed for blocking UV light, rather than an incidental feature of a general housing.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all four asserted patents, stating that Defendant induces use by its customers (Compl. ¶¶52, 74, 97, 121). The complaint does not, however, allege specific affirmative acts of inducement, such as the creation of instructional user manuals or marketing materials that direct users to operate the device in an infringing manner.
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the patents-in-suit and the infringement allegations (Compl. ¶¶53, 75, 98, 122). This allegation is supported by the claim that Plaintiff sent Defendant a detailed notice letter with claim charts on November 20, 2023, and that Defendant continued its allegedly infringing conduct thereafter (Compl. ¶¶26, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms such as "baffle" ('141 Patent) and "UV-shield" ('026 and '336 Patents), which are rooted in the patents' descriptions of distinct structural components, be construed broadly enough to read on the integrated, multi-functional molded housing of the accused Air Guardian device?
- A key evidentiary question will be one of structural correspondence: what specific components of the accused device, if any, perform the function of the claimed "UV-shield" ('026 and '336 Patents) or the baffle configured to "prohibit the UV light from exiting the kill zone" ('223 Patent)? The complaint's lack of specific visual or technical evidence for these claimed safety features suggests this will be a central point of factual dispute requiring expert testimony and discovery.