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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

KENALL MANUFACTURING COMPANY )

and UNIVERSITY OF STRATHCLYDE )
)
Plaintiffs, ) C.A. No. ___________________
)
v. ) JURY TRIAL DEMANDED
)
VITAL VIO, INC. )
)
Defendant. )

COMPLAINT

Plaintiffs Kenall Manufacturing Company (“Kenall”) and University of Strathclyde

(“Strathclyde”) (collectively “Plaintiffs”), by their undersigned attorneys, for their Complaint

against Defendant Vital Vio, Inc. (“Vital Vio” or “Defendant”) herein allege:

NATURE OF THE ACTION

1. This is an action for patent infringement under the patent laws of the United

States, 35 U.S.C. § 100 et seq., including 35 U.S.C. § 271, arising from Vital Vio’s actions,

including making, using, selling, and offering for sale one or more products in violation of U.S.

Patent Nos. 8,398,264 (“the ’264 Patent”) and 9,039,966 (“the ’966 Patent”).

2. This is also an action for false advertising under Section 43(a) of the Lanham Act,

15 U.S.C. § 1125(a), and the Delaware Deceptive Trade Practices Act, DEL. CODE ANN. TIT. 6

§ 2531 et seq. (2009).

THE PARTIES

3. Kenall is a corporation organized and existing under the laws of the State of

Illinois, having its principal place of business at 10200 55th Street, Kenosha, WI 53144. Kenall

is engaged in the business of providing intelligent, durable, and sustainable solutions to complex

lighting problems.

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4. Strathclyde, incorporated by Royal Charter of Queen Elizabeth II, is a charitable

body registered in Scotland with registration number SC015263, having its principal place of

business at 16 Richmond Street, Glasgow G1 1XQ, Scotland, United Kingdom.

5. On information and belief, Vital Vio is a corporation organized and existing under

the laws of the State of Delaware, having its principal place of business at 291 River Street, Suite

202, Troy, NY 12180.

JURISDICTION AND VENUE

6. This Court has subject-matter jurisdiction over this action pursuant to 15 U.S.C.

§ 1121 and 28 U.S.C. §§ 1331, 1338(a) for Lanham Act claims, 28 U.S.C. §§ 1331, 1338(a) for

patent infringement claims, and 28 U.S.C. §§ 1338(b), 1367 for claims arising under Delaware

law.

7. This Court has personal jurisdiction over Vital Vio because it is a Delaware

corporation. Vital Vio has purposefully conducted and continues to conduct business in this

District, including by having availed itself of the rights, protections, and benefits of Delaware

law, such that it should reasonably anticipate being haled into court in this District. On

information and belief, Vital Vio has contacts with the State of Delaware, by, among other

things, offering infringing products for sale to residents of Delaware and to others with the intent

that those products are distributed and used in Delaware.

8. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(c) and 1400(b).

THE PATENTS-IN-SUIT

9. On March 19, 2013, the United States Patent and Trademark Office issued U.S.

Patent No. 8,398,264, entitled “Lighting Device.” The ’264 Patent issued to John Anderson,

Michelle MacLean, Scott John MacGregor, and Gerald Alexander Woolsey. At the time of its

issue, the ’264 patent was assigned to Strathclyde. Strathclyde currently holds title to the ’264

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patent. Strathclyde has licensed the ’264 patent to Kenall. A copy of the ’264 patent is attached

as Exhibit A.

10. On May 26, 2015, the United States Patent and Trademark Office issued U.S.

Patent No. 9,039,966, entitled “Inactivation of Gram-Positive Bacteria.” The ’966 Patent issued

to John Anderson, Michelle MacLean, Scott John MacGregor, and Gerald Alexander Woolsey.

At the time of its issue, the ’966 patent was assigned to Strathclyde. Strathclyde currently holds

title to the ’966 patent. Strathclyde has licensed the ’966 patent to Kenall. A copy of the ’966

patent is attached as Exhibit B.

FACTUAL BACKGROUND

11. Plaintiffs re-allege the allegations in paragraphs 1–10 as though fully set forth

herein.

12. On information and belief, Vital Vio approached Strathclyde at least as early as

February 8, 2013 acknowledging Strathclyde’s work in disinfectant lighting technology and

expressing interest in it.

13. On March 19, 2013, the ’264 Patent was granted and published.

14. On information and belief, Vital Vio again approached Strathclyde on or about

May 31, 2013, admitting Vital Vio had been using Strathclyde’s technology, and further

requested a license to practice the inventions of the ’264 Patent and the patent application that

eventually matured into the ’966 Patent.

15. On information and belief, at least as early as October 2014, Vital Vio again

represented that Vital Vio’s disinfectant lighting products, including the VVLD22 and/or

equivalent (collectively “the infringing products”), practiced the inventions of one or more

claims of the ’264 Patent and/or one or more claims of the application that eventually matured

into the ’966 Patent.

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16. Though it had not secured a license to the ’264 Patent or ’966 Patent, Vital Vio

nevertheless went on to promote, demonstrate, and/or offer for sale its infringing products on

television and in the news, including at least appearances on ABC channel 7, Los Angeles in

October 2014, and CNBC in December 2014.

17. Though it had not secured a license to the ’264 Patent or ’966 Patent, Vital Vio

went on to demonstrate its infringing products at trade shows, including at least a trade show for

the Association for Professionals in Infection Control and Epidemiology (APIC) in Springfield,

MA in approximately April 2015.

18. On information and belief, Strathclyde declined to license the ’264 Patent and the

application that eventually matured into the ’966 Patent to Vital Vio. Strathclyde communicated

this rejection to Vital Vio at least as early as May 2015.

19. Kenall put Vital Vio on notice of Kenall’s rights in the ’264 Patent and ’966

Patent, and further identified Vital Vio’s infringement of the ’264 Patent and ’966 Patent, in

correspondence dated June 18, 2015 and thereafter.

20. On information and belief, despite Vital Vio knowing that it infringed the ’264

Patent and the ’966 Patent, Vital Vio continued making, using, selling, and offering for sale its

infringing products.

21. After failing to secure a license to the ’264 Patent or ’966 Patent, and after being

put on notice of Kenall’s rights in the ’264 Patent and ’966 Patent, Vital Vio nevertheless

demonstrated its infringing products at trade shows, including at least at trade shows for the

Association for Professionals in Infection Control and Epidemiology (APIC) in Springfield, MA

in approximately April 2015, and Nashville, TN on or about June 27-29, 2015.

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22. On information and belief, after failing to secure a license to the ’264 Patent or

’966 Patent, and after being put on notice of Kenall’s rights in the ’264 Patent and ’966 Patent,

Vital Vio nevertheless continues to offer for sale and sell its infringing products to various

persons in the United States.

DISINFENCTANT LIGHTING PRODUCTS AND VITAL VIO’S FALSE AND

MISLEADING STATEMENTS

23. Disinfectant lighting methods, other than the patented methods of the ’264 and

’966 Patents, are typically not continuous, rather they are used at discrete moments in time (i.e.

episodically). One such episodic method for disinfecting a room is a robot that enters a room

and blasts it with ultraviolet light. Robots like these may achieve a 99% reduction in harmful

bacteria.

24. Ultraviolet light, however, can be harmful to humans. In addition, a 99%

reduction in bacteria resulting from an ultraviolet robot is a short-lived result, as harmful bacteria

quickly begin to re-populate the space as soon as the ultraviolet light is no longer present.

25. New disinfectant lighting technology, like that patented in the ’264 and ’966

Patents, however, uses light fixtures that emit non-ultraviolet, visible light to safely,

automatically, and continuously kill harmful bacteria, and that technology may operate 24 hours

a day, 7 days a week, in a manner that does not adversely affect human health.

26. Though highly effective, disinfectant lighting technology that automatically and

continuously kills harmful bacteria is imperfect. In a controlled, laboratory setting using petri

dish samples, Strathclyde documented a 99% reduction in harmful bacteria. But in actual,

commercial environments, such as hospitals and other healthcare facilities where disinfectant

lighting products are intended to be used, customers can expect a much lower best-case

realization of harmful bacteria reduction: between 80% and 90%.

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27. As part of Vital Vio’s previous, current, and ongoing efforts to offer for sale and

sell its infringing products, Vital Vio published and distributed literature, as well as website

advertisements, and, upon information and belief, made statements to customers and potential

customers in the marketplace, about the capabilities of its infringing products in actual,

commercial environments.

28. Vital Vio’s literature states, among other things, that:

 “kill[s] 99% of bacteria and spores every day with white LED light, rather than

with dangerous chemicals or UV”;

 “VV fixtures achieve … 99% disinfection after 16 hours”; and

 Vital Vio’s device attains “99-100% killing efficiency of C. Difficile, MRSA, and

S. pyogenes.”

29. Vital Vio’s websites (e.g. www.vitalvio.com) state, among other things, that Vital

Vio’s disinfectant lighting products, such as VVLD22:

 “[k]ills 99% of microorganisms or more”;

 “99.9% reductions in MRSA, E. Coli, and Salmonella”; and

 realizes “99.9% disinfection after 12 hours [for a hospital room].”

30. Upon information and belief, Vital Vio has communicated to customers and

potential customers in the healthcare industry that Vital Vio’s disinfectant lighting products, such

as the VVLD22 and similar products, are capable of a 99% reduction of harmful bacteria in areas

such as hospital rooms.

COUNT I - INFRINGEMENT OF U.S. 8,398,264

31. Plaintiffs re-allege the allegations in paragraphs 1–30 as though fully set forth

herein.

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32. Without license or authority, Vital Vio has used the inventions claimed in at least

claim 1 of the ’264 Patent to make, use, sell, and offer for sale its infringing products within the

United States.

33. In doing so, Vital Vio has directly infringed, and continues to directly infringe,

the ’264 Patent.

34. On information and belief, since at least 2013, Vital Vio has known of the ’264

Patent and has known that Vital Vio’s infringing products infringe claims of the ’264 Patent.

35. Kenall sent correspondence to Vital Vio dated June 18, 2015, further putting Vital

Vio on notice of the ’264 Patent and that Vital Vio’s infringing products infringe the ’264 Patent.

36. Vital Vio has indirectly infringed and continues to indirectly infringe at least

claim 1 of the ’264 Patent by actively and intentionally inducing direct infringement by its

customers and others within the United States, and/or intentionally contributing to their direct

infringement of the ’264 Patent. Vital Vio has accomplished this indirect infringement by

instructing and encouraging those persons, by means of promotional and instructional literature,

among other things, to use Vital Vio’s infringing products in a manner that infringes the ’264

Patent, and/or through its sale and offer for sale of infringing products to such persons, where

that product has no substantial, non-infringing use.

COUNT II - INFRINGEMENT OF U.S. 9,039,966

37. Plaintiffs re-allege the allegations in paragraphs 1–36 as though fully set forth

herein.

38. Without license or authority, Vital Vio has within the United States used the

inventions claimed in at least claim 1 of the ’966 Patent to make, use, sell, and offer for sale

infringing products.

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39. In doing so, Vital Vio has directly infringed, and continues to directly infringe,

the ’966 Patent.

40. Vital Vio has known of the application that matured into the ’966 Patent since at

least 2013.

41. On information and belief, since at least as early as February 12, 2015, Vital Vio

has known of the claims of ’966 Patent and that Vital Vio infringing products infringe claims of

the ’966 Patent.

42. Kenall sent correspondence to Vital Vio dated June 18, 2015, further putting Vital

Vio on notice of the ’966 Patent and that Vital Vio’s infringing products infringe the ’264 Patent.

43. Vital Vio has indirectly infringed and continues to indirectly infringe at least

claim 1 of the ’966 Patent by actively and intentionally inducing direct infringement by its

customers and others within the United States, and/or intentionally contributing to their direct

infringement of the ’966 Patent. Vital Vio has accomplished this indirect infringement by

instructing and encouraging those persons, by means of promotional and instructional literature,

among other things, to use Vital Vio’s infringing products in a manner that infringes the ’966

Patent, and/or through its sale and offer for sale of disinfectant lighting products to such persons,

where that product has no substantial, non-infringing use.

COUNT III – LANHAM ACT

44. Plaintiffs re-allege the allegations in paragraphs 1–43 as though fully set forth

herein.

45. In the statements set forth in paragraphs 27-29 above in Vital Vio’s advertising

literature and website, Vital Vio falsely represented and advertised to customers and potential

customers factual attributes of Vital Vio’s infringing products. Among Vital Vio’s

misrepresentations were those claiming that its infringing products achieve a 99% reduction in

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harmful bacteria in real-world, commercial environments like hospitals and healthcare facilities

(the “99% Claims”). These representations imply scientific substantiation.

46. On information and belief, Vital Vio has not established a scientific basis for the

99% Claims, as outlined in paragraphs 27-29 above.

47. On information and belief, Vital Vio’s statements, as outlined in paragraphs 27-29

above, at best, rely on testing in highly controlled, laboratory environments and those results do

not support the 99% Claims, including the effects of visible light on harmful bacteria in a

hospital or healthcare facility settings.

48. Vital Vio, through the 99% Claims, as outlined in paragraphs 27-29 above, gives

the false and misleading impression that Vital Vio’s infringing products achieve a 99% reduction

in harmful bacteria in a hospital or healthcare facility setting, similar to the capabilities of the

episodic method of using an ultraviolet robot to disinfect.

49. Vital Vio’s commercial advertising and promotion of the 99% Claims, as outlined

in paragraphs 27-29 above, misrepresent the nature, characteristics, and qualities of Vital Vio’s

infringing products.

50. Vital Vio’s 99% Claims, as outlined in paragraph 27-29 above, are false or

misleading descriptions of fact, or false or misleading representations of fact.

51. Kenall believes that it is or is likely to be damaged by Vital Vio’s 99% Claims, as

outlined in paragraph 27-29 above

52. These false and/or misleading advertising and promotional statements, the 99%

Claims, as outlined in paragraphs 27-29 above, are material to consumer purchasing decisions,

and have caused and are causing actual consumer confusion and damages to Kenall which cannot

be calculated.

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53. For at least these reasons, Vital Vio’s 99% Claims, as outlined in paragraphs 27-

29 above, violate Sec. 43(a)(1)(B) of the Lanham Act and give rise to this cause of action. 15

U.S.C. § 1125(a)(1)(B).

54. Harm to Kenall will continue unless this Court enjoins Vital Vio from making

such false and/or misleading claims, including the 99% Claims.

55. Unless this Court enjoins Vital Vio from continuing to make these false and/or

misleading claims, including the 99% Claims, and orders their retraction, Vital Vio’s conduct

will continue to mislead the public and cause Kenall to suffer a loss of consumer confidence,

sales, and profits.

56. Vital Vio’s false or misleading statements, including the 99% Claims, are willful,

with malicious and deceptive intent, making this an exceptional case.

COUNT IV – UNFAIR COMPETITION

Delaware Deceptive Trade Practices Act

DEL. CODE ANN. TIT. 6 § 2531 et. seq. (2009)

57. Plaintiffs re-allege the allegations in paragraphs 1–56 as though fully set forth

herein.

58. Vital Vio’s statements, as outlined in paragraphs 27-29 above, contain false

and/or misleading statements regarding the nature, characteristics, benefits, uses, or qualities of

goods in commerce, namely, Vital Vio’s infringing products.

59. Vital Vio’s statements, as outlined in paragraphs 27-29 above, create a likelihood

of confusion and misunderstanding.

60. Vital Vio’s statements, as outlined in paragraphs 27-29 above, are material to

consumer purchasing decisions, and have caused and are causing actual consumer confusion and

damages to Kenall.

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61. Vital Vio’s statements, as outlined in paragraphs 27-29 above, violate the

Delaware Deceptive Trade Practices Act and the common law of Delaware.

62. Unless this Court enjoins Vital Vio from continuing to make these false and/or

misleading claims and orders their retraction and/or correction, the false and/or misleading

statements will continue to deceive the public and cause Kenall to suffer a loss of consumer

confidence, sales, profits, and goodwill, all of which will irreparably harm Kenall.

63. Vital Vio’s false statements are willful, with malicious and deceptive intent,

making this an exceptional case.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray that this Court grant the following relief:

A. Judgment that the ’264 and ’966 Patents are valid, enforceable, and infringed by

Vital Vio;

B. Injunctive relief prohibiting Vital Vio, its officers, agents, servants, employees,

subsidiaries and affiliated companies, and those persons acting in active concert or participation

therewith, from engaging in the aforesaid unlawful acts of patent infringement;

C. Judgment that Vital Vio’s acts of patent infringement are willful;

D. An award of damages not less than a reasonable royalty arising out of Vital Vio’s

acts of patent infringement, together with pre-judgment and post-judgment interest;

E. Judgment that the damages so adjudged be trebled in accordance with 35 U.S.C.

§ 284;

F. An award of Kenall’s attorneys’ fees, costs, and expenses incurred in this action

in accordance with 35 U.S.C. § 285;

G. A permanent injunction ordering that Vital Vio, its agents, servants, employees,

representatives, subsidiaries, and affiliates refrain from directly or indirectly publishing or

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otherwise disseminating any materials containing any of the false or misleading claims described

in the complaint;

H. Judgment awarding Plaintiffs damages or other monetary relief for Vital Vio’s

false and/or misleading statements as described in the complaint;

I. An award that any such damages or monetary relief for Vital Vio’s false or

misleading statements be trebled and awarded to Plaintiffs;

J. An award of Kenall’s attorneys’ fees, costs, and expenses incurred in this action;

and

K. Such further and other relief as this Court deems just and proper.

ASHBY & GEDDES

/s/ Andrew C. Mayo

Steven J. Balick (#2114)

Of Counsel: Lauren E. Maguire (#4261)
Andrew C. Mayo (#5207)
BENJAMIN T. HORTON 500 Delaware Avenue, 8th Floor
JOHN R. LABBE P.O. Box 1150
MARSHALL, GERSTEIN & BORUN LLP Wilmington, DE 19899
233 South Wacker Drive (302) 654-1888
6300 Willis Tower sbalick@ashby-geddes.com
Chicago, IL 60606-6357 lmaguire@ashby-geddes.com
(312) 474-6300 amayo@ashby-geddes.com
bhorton@marshallip.com
jlabbe@marshallip.com Attorneys for Plaintiffs
Kenall Manufacturing, Inc. and
Dated: September 15, 2015 University of Strathclyde

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