DCT
1:19-cv-00066
Pure Maintenance Holdings v. Clark
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pure Maintenance Holdings, LLC (Utah)
- Defendant: Jerel Clark (Utah); JD Clark Enterprises, Inc. (Utah); Viper Restoration, Inc. (Wyoming); Adrenalin Enterprises, Inc. (Utah)
- Plaintiff’s Counsel: Maschoff Brennan
- Case Identification: 1:19-cv-00066, D. Utah, 06/28/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of patent infringement in the district, maintain a regular and established place of business in the district, and are subject to personal jurisdiction there.
- Core Dispute: Plaintiff alleges that Defendants' fogging systems and sterilization services infringe patents related to a two-stage method for atomizing and applying multiple cleaning agents.
- Technical Context: The technology involves systems for mold remediation and sterilization, which use a "dry fog" to apply chemicals sequentially without wetting surfaces, a method significant for treating indoor environments.
- Key Procedural History: The complaint alleges that Defendants Jerel Clark and JD Clark Enterprises entered into a license agreement with Plaintiff, gaining access to Plaintiff's patented technology and proprietary information. After the license was terminated, Defendants allegedly deconstructed and copied Plaintiff's "Fogger Unit" and began offering competing services, giving rise to claims for patent infringement, breach of contract, and trademark infringement. Plaintiff alleges it provided Defendants with notice of the asserted patents on March 4, 2019, prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-08 | Priority Date for ’239 and ’283 Patents |
| 2016-01-19 | U.S. Patent No. 9,238,239 Issues |
| 2016-12-13 | U.S. Patent No. 9,517,283 Issues |
| 2017-08-01 | Plaintiff and Defendants Clark/JD Clark enter into a License Agreement |
| 2018-07-18 | Plaintiff and Defendant Clark enter into a Debt Settlement Agreement |
| 2019-03-04 | Plaintiff sends notice letter to Defendants regarding the Asserted Patents |
| 2019-06-12 | Plaintiff sends second letter regarding trademark infringement |
| 2019-06-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,238,239 - "Atomizing Sterilization of a Plurality of Cleaning Agents" (Issued Jan. 19, 2016)
The Invention Explained
- Problem Addressed: The patent describes conventional sterilization systems as inefficient for sequential application of multiple agents, such as a short-term sterilant followed by a long-term protectant. These systems often require separate equipment, produce large liquid droplets (>10 microns) that can damage surfaces and provide incomplete coverage, and struggle to atomize high-viscosity fluids. (Compl., Ex. 1, ’239 Patent, col. 3:21-68).
- The Patented Solution: The invention is a method and system that uses a single apparatus to sequentially apply multiple cleaning agents as a "dry fog." It employs pressurized gas to atomize the agents at a nozzle, creating fine particles that effectively fill a space without leaving wet residue. A key feature is the ability to rinse the system between applications, allowing a long-term agent to be applied after a short-term agent without interference. (’239 Patent, Abstract; col. 4:45-49; Fig. 1).
- Technical Importance: This approach allows for a comprehensive, multi-stage treatment (e.g., sterilize then protect) from a single, mobile unit, improving efficiency and effectiveness in fields like mold remediation. (’239 Patent, col. 3:1-20).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶135, 136).
- Essential Elements of Claim 1:
- A method for multi-agent dry fogging, comprising:
- pressurizing a first agent and a second agent to respective pressure ranges;
- pressurizing a gas to a gas pressure range;
- atomizing at least one of the agents at a nozzle by mixing with the gas;
- applying the atomized mixture to fog a space, with the first and second agents applied for distinct durations;
- rinsing out a remnant of at least one of the agents; and
- switching to select a function (e.g., atomizing the first agent, the second agent, both, or rinsing).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,517,283 - "Atomizing Sterilization of a Plurality of Cleaning Agents" (Issued Dec. 13, 2016)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’239 Patent, this patent addresses the same technical challenges of effectively applying multiple, distinct cleaning agents in sequence. (Compl., Ex. 2, ’283 Patent, col. 3:40-col. 4:10).
- The Patented Solution: The ’283 Patent claims a more specific version of the same technological solution. The method explicitly defines the chemical nature of the agents and structures the process into distinct stages, ensuring a sterilant is applied first, the system is rinsed, and then a protective agent is applied as a separate dry fog. (’283 Patent, Abstract; col. 11:18-col. 12:50).
- Technical Importance: By claiming specific agent types ("sterilant" and "non-depleting solution") and application stages, the patent aims to protect the core commercial embodiment of the two-step sterilization and protection process. (’283 Patent, col. 4:35-col. 5:44).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶144, 145).
- Essential Elements of Claim 1:
- A method for multi-agent dry fogging, comprising:
- pressurizing a first agent comprising a "sterilant";
- pressurizing a second agent comprising a "non-depleting solution for protection against microorganism growth";
- pressurizing a gas;
- atomizing the first agent with the gas in a "first application stage" to create a "first dry fog";
- rinsing out a remnant of the first agent;
- switching to select a function; and
- atomizing the second agent with the gas in a "second application stage" to create a "second dry fog."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendants' "fogger units and associated services," offered under brand names including "Zero Mold" and "Sterile Home." (Compl. ¶8, 64, 135, 144).
Functionality and Market Context
- The complaint alleges that Defendants, after their license to use Plaintiff's technology was terminated, manufactured "fogger units that copies" Plaintiff's "Pure Maintenance Fogger Unit." (Compl. ¶63). The associated services are alleged to be "identical to Pure Maintenance's products and services," involving a two-step fogging process. (Compl. ¶70). This process is described as first applying a sterilant ("InstaPURE") and then a long-term antimicrobial agent ("EverPure"). (Compl. ¶43-44). The complaint includes a screenshot from Plaintiff's marketing video which describes the first agent application as a "dry fog" that destroys "every mold spore and bacteria." (Compl. ¶43). A second screenshot describes the next application as an "antimicrobial that will prevent the microorganisms from ever returning." (Compl. ¶44). The complaint alleges Defendants copied this video, replacing Plaintiff's branding with their own. (Compl. ¶69).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The following tables are constructed based on the complaint's narrative allegations that Defendants' methods are copies of Plaintiff's methods, as described in the complaint. (Compl. ¶63, 70, 74).
’239 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for multi-agent dry fogging... | Defendants provide services using fogger units to apply multiple agents for sterilization. | ¶70, 135 | col. 11:18-20 |
| pressurizing a first agent...; pressurizing a second agent... | Defendants' copied fogger units allegedly pressurize a first agent (a sterilant) and a second agent (a long-term cleaner). | ¶43-44, 63, 74 | col. 11:21-24 |
| pressurizing a gas to a gas range of pressure; | The process involves atomizing agents "under pressure with a gas." | ¶43-44 | col. 11:25-26 |
| atomizing at least one of the first and second agents at a nozzle to mix with the pressurized gas; | The process involves "atomizing the first agent" and later "atomize a second agent under pressure with a gas." | ¶43-44 | col. 11:27-29 |
| applying the atomized mixture to fog a space... | The described method involves "filling your home with dry fog." A screenshot from a marketing video allegedly copied by Defendants illustrates this process. | ¶43, 69 | col. 11:30-34 |
| rinsing out a remnant of at least one of the first and second agents; | The method involves "rinsing the first agent from the applicator." | ¶44 | col. 11:35-37 |
| switching to select a function... | The method involves "switching the applicator in order to atomize a second agent." | ¶44 | col. 11:38-44 |
’283 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| pressurizing a first agent ... wherein the first agent comprises a sterilant; | The first applied agent is described as a "sterilant" marketed as "InstaPURE." | ¶43 | col. 12:13-15 |
| pressurizing a second agent ... wherein the second agent comprises a non-depleting solution for protection against microorganism growth; | The second applied agent is described as a "long-term cleaning agent" and an "antimicrobial that will prevent the microorganisms from ever returning." | ¶44 | col. 12:16-19 |
| atomizing the first agent at a nozzle to mix with the pressurized gas in a first application stage to disperse the first agent in a first dry fog... | The first step is called the "first dry fog application" and is depicted in a screenshot from a marketing video. | ¶43, 69 | col. 12:22-26 |
| rinsing out a remnant of the first agent; | The method involves "rinsing the first agent from the applicator." | ¶44 | col. 12:27-28 |
| switching to select a function... | The process involves "switching the applicator" after the first application and rinsing. | ¶44 | col. 12:29-33 |
| atomizing the second agent at the nozzle to mix with the pressurized gas in a second application stage to disperse the second agent in a second dry fog... | The process involves a "next application" of the second agent after the first. | ¶44 | col. 12:34-39 |
- Identified Points of Contention:
- Evidentiary Questions: The core of the dispute rests on the allegation that Defendants' fogger units and methods are direct copies. A primary point of contention will be the factual evidence demonstrating that the accused products and services actually perform every step of the asserted claims, including the distinct pressurizing, atomizing, rinsing, and switching steps.
- Technical Questions: Does the accused process create a "dry fog" as described in the patents (i.e., with a mean particle diameter between 1 and 15 microns)? (’283 Patent, col. 9:8-12). What is the specific mechanism and agent used for "rinsing" in the accused process, and does it meet the claim limitation of "rinsing out a remnant"?
V. Key Claim Terms for Construction
The Term: "dry fog"
- Context and Importance: This term is central to both asserted claims and appears to distinguish the invention from conventional "wetting" sprays. Its definition will be critical for determining whether the accused method, which is described as a "dry fog application" (Compl. ¶43), falls within the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification suggests "dry fog" is a specific technical outcome, stating it "has the advantage of further reach" and "preventing wetting and deterioration of objects." (’239 Patent, col. 9:35-40). It also ties the fog to a "mean diameter of particles ... between 1 and 10 microns." (’239 Patent, col. 9:45-47). This may support a construction limited to fogs with specific, non-wetting physical properties.
- Evidence for a Broader Interpretation: The term is not explicitly defined with a precise boundary. A party could argue that any atomized mist that is less "wet" than a conventional spray could be considered a "dry fog" in the context of the patent.
The Term: "rinsing out a remnant"
- Context and Importance: This step is crucial for enabling the sequential application of different chemicals without cross-contamination, a key described advantage. Whether Defendants' process includes an action that meets this limitation will be a focal point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification describes using a specific "rinsing agent," such as "tap water or purified water" or a "solvent," to "flush" the system. (’239 Patent, col. 4:45-49; col. 7:25-31). This may support a construction requiring the use of a distinct liquid flushing agent.
- Evidence for a Broader Interpretation: A party could argue that "rinsing" does not strictly require a liquid agent and could encompass purging the lines with pressurized gas or another substance sufficient to remove the "remnant" of the first agent before the second is applied. The claim language itself does not specify the rinsing medium.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by instructing others, presumably customers or franchisees, to use the accused fogger units and services in an infringing manner. (Compl. ¶136, 145). The alleged copying and use of Plaintiff's marketing materials could be presented as evidence of such instructions. (Compl. ¶69-70).
- Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge of the asserted patents. This knowledge is alleged to stem from a notice letter sent on March 4, 2019, as well as the parties' prior licensing relationship. (Compl. ¶45, 78, 82). The allegation is that Defendants' infringement continued "notwithstanding notice" and in "deliberate disregard" of Plaintiff's rights. (Compl. ¶140-141, 149-150).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual proof: Can Plaintiff produce sufficient evidence to demonstrate that Defendants' accused fogger units and service methods are, in fact, direct copies that practice every element of the asserted claims, particularly the specific sequence of applying a sterilant, "rinsing out a remnant," and then applying a "non-depleting" protectant?
- The case will also turn on a question of claim construction: How will the court define the terms "dry fog" and "rinsing out a remnant"? A narrow construction requiring specific particle sizes or a liquid rinsing agent could provide a non-infringement defense if Defendants' process differs, whereas a broader construction may favor the Plaintiff.
- A third key question relates to intent: Given the parties' prior licensing history and the explicit pre-suit notice, the inquiry into willfulness will be significant. The court will need to examine whether Defendants' alleged post-notice conduct constituted objective or subjective recklessness regarding Plaintiff's patent rights.