Complaint in Kenall v. Clear-Vu Lighting LLC

Case 2:18-cv-01337-WFK-SIL Document 1 Filed 03/02/18 Page 1 of 14 PageID #: 1
IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK
KENALL MANUFACTURING COMPANY )

and UNIVERSITY OF STRATHCLYDE )
)
Plaintiffs, ) Case No. _____
)
v. )
)
CLEAR-VU LIGHTING LLC )
)
Defendant. )
COMPLAINT
Plaintiffs Kenall Manufacturing Company (“Kenall”) and University of Strathclyde
(“Strathclyde”) (collectively “Plaintiffs”), by their undersigned attorneys, for their Complaint
against Clear-Vu Lighting LLC (“Clear-Vu” 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 Clear-Vu’s actions,
including making, using, importing, selling, and/or offering for sale one or more products in
violation of U.S. Patent Nos. 9,039,966 (“the ’966 Patent”) and 9,839,706 (the ’706 Patent”)
(collectively “Asserted Patents”).
THE PARTIES
2. 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, Wisconsin 53144.
Kenall is engaged in the business of providing intelligent, durable, and sustainable solutions to
complex lighting problems.
1
1887105.1 07503-9999-000
3. 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.
4. On information and belief, Clear-Vu is a corporation organized and existing under
the laws of the State of New York, having its principal place of business at 1150 Motor Parkway
Central Islip, New York 11722.
5. On information and belief, Clear-Vu is a subsidiary of Autronic Plastics, Inc. and
shares a production and assembly facility with Autronic Plastics, Inc.
JURISDICTION AND VENUE
6. This action arises under the patent laws of the United States, 35 U.S.C. § 271 et
seq. and for a declaratory judgment of infringement of the Asserted Patents under 28 U.S.C. §§
2201 and 2202. The Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1332,
1338(a), 2201, and 2202.
7. Personal jurisdiction exists over Clear-Vu because it is incorporated in this State
and, upon information and belief, has its principal place of business in this District, and makes,
uses, imports, sells and/or offers for sale infringing products to consumers in this District.
8. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and 1400(b)
because (i) Clear-Vu has its principal place of business in this District, and (ii) Clear-Vu has a
regular and established place of business in this District and has committed acts of infringement
in and has significant contacts with this District.
FACTUAL BACKGROUND
The Asserted Patents
9. On May 26, 2015, the United States Patent and Trademark Office issued the ’966
Patent, entitled “Inactivation of Gram-Positive Bacteria.” The ’966 Patent issued to John
2
1887105.1 07503-9999-000
Anderson, Michelle Maclean, Gerald Alexander Woolsey, and Scott MacGregor. 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 A.
10. On December 12, 2017, the United States Patent and Trademark Office issued the
’706 Patent, entitled “Inactivation of Gram-Positive Bacteria.” The ’706 Patent issued to John
Anderson, Michelle Maclean, Gerald Alexander Woolsey, and Scott MacGregor. At the time of
its issue, the ’706 Patent was assigned to Strathclyde. Strathclyde currently holds title to the
’706 Patent. Strathclyde has licensed the ’706 Patent to Kenall. A copy of the ’706 Patent is
attached as Exhibit C.
11. Kenall’s products that practice the inventions of the Asserted Patents include
without limitation light fixtures that emit visible light that is proven to kill harmful bacteria
linked to hospital acquired infections, such as methicillin-resistant Staphylococcus aureus
(“MRSA”), while providing ambient illumination.
12. To the extent required by law, Plaintiffs have complied with the provisions of 35
U.S.C. § 287.
13. Kenall has been praised by media outlets, such as USA Today, Business Wire,
and the Huffington Post for its development of disinfectant lighting solutions.
Clear-Vu’s Accused Products
14. On information and belief, Clear-Vu makes, uses, sells, offers for sale, or imports
products with one or more features that incorporates disinfectant technology that practices the
claimed inventions of the Asserted Patents, including without limitation the orLED light fixture
shown below and any similar products (“Accused Products”).
3
1887105.1 07503-9999-000
15. On information and belief, Clear-Vu makes, uses, sells, offers for sale, or imports
the Accused Products in this District and State and throughout the United States.
16. The Accused Products are marketed and offered for sale to various industries both
to provide illumination and to kill harmful germs, for example, in spaces like operating rooms.
17. A copy of Clear-Vu’s literature, specifications, and order sheet is attached hereto
as Exhibit B.
The ’996 Patent, Claim 1:
18. The Accused Products infringe at least claim 1 of the ’966 Patent, which recites:
A method for disinfecting air, contact surfaces, or materials by inactivating

methicillin-resistant Staphylococcus aureus (MRSA) in the air, on the contact
surfaces, or on the materials, said method comprising exposing the MRSA to
visible light without using a photosensitiser, wherein the visible light for
inactivating the MRSA consists of wavelengths in the range of 400-420 nm, and
wherein the method is performed outside of a human body, the contact surfaces or
the materials are non-living, and the air, contact surfaces or materials are not
exposed to a disinfecting dose of light at a wavelength above 500 nm.
19. On information and belief, Clear-Vu infringes at least claim 1 of the ’966 Patent
at least by making, using, selling, offering for sale, and/or importing the Accused Products to
perform the claimed method steps.
20. For example, the Accused Products are used to disinfect air, contact surfaces, or
materials because the Accused Products kill and/or inactivate numerous bacteria such as MRSA
and are used in applications outside the human body by “providing continuous surface
4
1887105.1 07503-9999-000
disinfection” for contact surfaces and/or materials that are non-living, such as surgical
instruments and floors.
21. On information and belief, the Accused Products expose the MRSA to visible
light and do not use a photosensitizer.
22. The Accused Products use “precisely engineered wavelengths of visible light” in
the range of 400-420 nm, including “405nm LED disinfecting technology [to] kill[] bacteria.”
See Exhibit B, p. 3 and 12.
23. On information and belief, the Accused Products include a first mode
(ECOMODE) and a second mode (WHITE LIGHT MODE); “both constantly protect the
environment.” See Exhibit B, p.23. On information and belief, both modes include visible light
for inactivating MRSA in the range of 400-420nm. The Accused Products infringe the Asserted
Patents when operating in either mode.
24. On information and belief, the Accused Products do not expose the air, contact
surfaces, or materials to a disinfecting dose of light at a wavelength above 500nm.
A method for disinfecting air, contact surfaces or materials by inactivating one or

more pathogenic Gram-positive bacteria in the air, on the contact surfaces or on
the materials, said method comprising exposing the one or more pathogenic
Gram-positive bacteria to visible light without using a photosensitizer, wherein
the one or more pathogenic Gram-positive bacteria are selected from the group
consisting of Methicillin-resistant Staphylococcus aureus (MRSA), Coagulase-
Negative Staphylococcus (CONS), Streptococcus, Enterococcus, and Clostridium
species, and wherein a portion of the visible light that inactivates the one or more
pathogenic Gram-positive bacteria consists of wavelengths in the range 400-420
nm, and wherein the method is performed outside of the human body and the
contact surfaces or the materials are non-living.
5
1887105.1 07503-9999-000
by at least making, using, selling, offering for sale, and/or importing the Accused Products to
perform the claimed method steps.
27. For example, the Accused Products are used to disinfect air, contact surfaces, or
materials because the Accused Products kill and/or inactivate numerous bacteria, including
Gram-positive bacteria (including at least MRSA), and are used in applications outside the
human body by “providing continuous surface disinfection” for contact surfaces and/or materials
that are non-living, such as surgical instruments and floors.
28. On information and belief, the Accused Products expose Gram-positive bacteria
(including at least MRSA) to visible light and do not use a photosensitizer.
environment.” See Exhibit B, p.23. On information and belief, both modes include visible light
for inactivating Gram-positive bacteria (including at least MRSA) in the range of 400-420nm.
The Accused Products infringe the Asserted Patents when operating in either mode.
A system for disinfecting air, contact surfaces or materials by inactivating one or

more pathogenic Gram-positive bacteria in the air, on the contact surfaces or on
the materials, the system comprising means for exposing said bacteria to visible
light without using a photosensitizer, wherein the one or more pathogenic Gram-
positive bacteria are selected from the group consisting of Methicillin-resistant
Staphylococcus aureus (MRSA), Coagulase-Negative Staphylococcus (CONS),
Streptococcus, Enterococcus and Clostridium species, and wherein a portion of
6
1887105.1 07503-9999-000
the visible light that inactivates the one or more pathogenic Gram-positive
bacteria consists of wavelengths in the range 400-420 nm, and wherein the system
is for use outside of the human body and the contact surfaces or the materials are
non-living.
at least by making, using, selling, offering for sale, and/or importing the Accused Products.
33. For example, the Accused Products disinfect air, contact surfaces, or materials
because the Accused Products kill and/or inactivate numerous bacteria, including Gram-positive
bacteria (including at least MRSA), and are used in applications outside the human body by
“providing continuous surface disinfection” for contact surfaces and/or materials that are non-
living, such as surgical instruments and floors.
35. On information and belief, the Accused Products expose Gram-positive bacteria
(including at least MRSA) to visible light and do not use a photosensitizer.
environment.” See Exhibit B, p.23. On information and belief, both modes include a portion of
visible light in the range of 400-420nm which inactivates pathogenic Gram-positive bacteria
(including at least MRSA). The Accused Products infringe the Asserted Patents when operating
in either mode.
Clear-Vu’s Actions
37. Clear-Vu published and distributed literature and instructions about the Accused
Products to its customers and potential customers and, on information and belief, made
7
1887105.1 07503-9999-000
statements to customers and potential customers in the marketplace, about the application,
efficacy, and technology of the Accused Products and how they are used.
38. On information and belief, Clear-Vu has infringed the Asserted Patents by using
the Accused Products at tradeshow(s) to demonstrate and promote the Accused Products to
customers and potential customers.
39. On information and belief, Clear-Vu has infringed the Asserted Patents by using
the Accused Products in connection with various compliance certifications, such as IP66Military
Standard 461F, and Design Lights Consortium Qualified. See Exhibit B.
40. On information and belief, for any Accused Products that Clear-Vu contends to
have not yet made, used, sold, offered for sale, and/or imported Clear-Vu has engaged in
substantial and meaningful preparation for activity directed toward making, using, selling, or
offering for sale of such products, before patent expiration.
41. On information and belief, for example, through Clear-Vu’s marketing and
promotional effort, the sale, offer for sale, and use of the Accused Products is imminent.
42. Despite demands from Plaintiffs to cease making, using, selling, offering for sale,
and/or importing the Accused Products and unequivocal declaration of Plaintiffs’ intention to
enforce their patent rights, Clear-Vu has refused to change its announced course of its action.
COUNT I
INFRINGEMENT OF THE ’966 PATENT
43. Plaintiffs re-allege the allegations in paragraphs 1–42 as though fully set forth
herein.
44. The ’966 Patent is valid, enforceable, and legally issued from the United States
Patent and Trademark Office.
8
1887105.1 07503-9999-000
45. Without a license or permission from Plaintiffs, Clear-Vu has infringed, is
currently infringing, and unless enjoined will continue to infringe the ’966 Patent in violation of
35 U.S.C. § 271.
46. Clear-Vu has directly infringed the ’966 Patent by making, using, selling, offering
to sell, and/or importing the Accused Products to practice the claimed method steps.
47. On information and belief, Clear-Vu has willfully infringed and continues to
willfully infringe the ’966 Patent despite knowledge of the ’966 Patent (at least as of November
17, 2017) and despite an objectively high likelihood that the making, using, selling, offering for
sale, or importing of the Accused Products would infringe one or more claims of the ’966 Patent.
48. Clear-Vu 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. On information and belief, Clear-Vu knew or should have
known that its acts would result in the actual infringement by one or more of its customers of one
or more of the claims of the ’966 Patent, and thereby intended such infringement. Clear-Vu has
accomplished this indirect infringement by instructing and encouraging those persons, by means
of demonstration and/or promotional and instructional literature, among other things, to use
Clear-Vu’s infringing products in a manner that infringes the ’966 Patent, and/or through its
offer to sell the Accused Products to such persons, where that product has no substantial, non-
infringing use.
49. Clear-Vu’s acts of infringement have caused damaged to Plaintiffs, and Plaintiffs
are entitled to recover from Clear-Vu the damages sustained as a result of Clear-Vu’s
infringement in an amount subject to proof at trial.
9
1887105.1 07503-9999-000
50. Plaintiffs have suffered and will continue to suffer irreparable injury and damages
as a result of Clear-Vu’s infringement of the ’966 Patent, for which Plaintiffs are entitled to
relief. Plaintiffs seek damages, as well as injunctive relief against further infringement.
COUNT II
DECLARATORY JUDGMENT OF INFRINGEMENT OF THE ’966 PATENT
herein.
52. These claims arise under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
2202.
53. There is an actual case or controversy such that the Court may entertain Plaintiffs’
request for declaratory relief consistent with Article III of the United States Constitution, and this
actual case or controversy requires a declaration of rights by this Court.
54. Any manufacture, use, sale, offer for sale, and/or importation of the Accused
Products before patent expiration will constitute direct infringement, active inducement of
infringement, and/or contributory infringement of the ’966 patent.
55. Clear-Vu’s actions demonstrate that infringement of the ’966 Patent is imminent.
56. Plaintiffs are entitled to a declaratory judgment that future make, use, sale, offer
for sale, and importation of the Accused Products before patent expiration will constitute direct
infringement, active inducement of infringement, or contributory infringement of the ’966 patent.
COUNT III
INFRINGEMENT OF THE ’706 PATENT
herein.
10
1887105.1 07503-9999-000
58. The ’706 Patent is valid, enforceable, and legally issued from the United States
Patent and Trademark Office.
59. Without a license or permission from Plaintiffs, Clear-Vu has infringed, is
currently infringing, and unless enjoined will continue to infringe the ’706 Patent in violation of
35 U.S.C. § 271.
60. Clear-Vu has directly infringed the ’706 Patent by making, using, selling, offering
for sale, or importing the Accused Products.
61. On information and belief, Clear-Vu has willfully infringed and continues to
willfully infringe the ’706 Patent despite knowledge of the ’706 Patent (at least as of the date of
the filing of this Complaint) and despite an objectively high likelihood that the making, using,
selling, offering for sale, or importing of the Accused Products would infringe one or more
claims of the ’706 Patent.
62. Clear-Vu has indirectly infringed and continues to indirectly infringe at least
claim 1 or 3 of the ’706 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 ’706 Patent. On information and belief, Clear-Vu knew or should have
known that its acts would result in the actual infringement by one or more of its customers of one
or more of the claims of the ’706 Patent, and thereby intended such infringement. Clear-Vu has
accomplished this indirect infringement by instructing and encouraging those persons, by means
of promotional and instructional literature, among other things, to use Clear-Vu’s infringing
products in a manner that infringes the ’706 Patent, and/or through its offer to sell the Accused
Products to such persons, where that product has no substantial, non-infringing use.
11
1887105.1 07503-9999-000
63. Clear-Vu’s acts of infringement have caused damaged to Plaintiffs, and Plaintiffs
are entitled to recover from Clear-Vu the damages sustained as a result of Clear-Vu’s
infringement in an amount subject to proof at trial.
64. Plaintiffs have suffered and will continue to suffer irreparable injury and damages
as a result of Clear-Vu’s infringement of the ’706 Patent, for which Plaintiffs are entitled to
relief. Plaintiffs seek damages, as well as injunctive relief against further infringement.
COUNT IV
DECLARATORY JUDGMENT OF INFRINGEMENT OF THE ’706 PATENT
herein.
66. These claims arise under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
2202.
67. There is an actual case or controversy such that the Court may entertain Plaintiffs’
request for declaratory relief consistent with Article III of the United States Constitution, and this
actual case or controversy requires a declaration of rights by this Court.
68. Any manufacture, use, sale, offer for sale, and/or importation of the Accused
Products before patent expiration will constitute direct infringement, active inducement of
infringement, and/or contributory infringement of the ’706 patent.
69. Clear-Vu’s actions demonstrate that infringement of the ’706 Patent is imminent.
70. Plaintiffs are entitled to a declaratory judgment that future make, use, sale, offer
for sale, and importation of the Accused Products before patent expiration will constitute direct
infringement, active inducement of infringement, or contributory infringement of the ’706 patent.
JURY DEMAND
Plaintiffs demand a trial by jury on all issues so triable.
12
1887105.1 07503-9999-000
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs incorporate each of the allegations in paragraphs 1 through 63
above and respectfully request that this Court grant the following relief:
A. Judgment that the Asserted Patents are valid, enforceable, and that Clear-Vu has
directly infringed, contributorily infringed, and induced infringement of the Asserted Patents;
B. Clear-Vu and its agents, employees, servants, subsidiaries, divisions, affiliates,
and all persons acting for, with, or in concert with them be temporarily, preliminarily, and
permanently enjoined from engaging in the aforesaid unlawful acts of patent infringement;
C. Judgment that Clear-Vu’s acts of patent infringement are willful;
D. A declaration under 28 U.S.C. § 2201 that if Clear-Vu, its officers agents,
servants, employees, licensees, representatives, and attorneys, and all other persons acting or
attempting to act in active concert or participation with it or acting on its behalf, engage in
making, using, selling, offering for sale or importation of the Accused Products before patent
expiration, it will constitute an act of infringement of the Asserted Patents;
E. An award of damages for past and future damages, costs, expenses, together with
prejudgment and post-judgment interest to compensate for Clear-Vu’s infringement of the
Asserted Patents provided under 35 U.S.C § 284, and increase such award by up to three times
the amount found or assessed in accordance with 35 U.S.C. § 284;
F. A determination that this is an exceptional case within the meaning of 35 U.S.C. §
285 and an award of Plaintiffs’ attorneys’ fees, costs, and expenses incurred in this action; and
G. Such further and other relief as this Court deems just and proper.
13
1887105.1 07503-9999-000
Respectfully submitted,
Date: March 2, 2018 By: /s/ Marc J. Rachman

Marc J. Rachman
Devin A. Kothari
DAVIS & GILBERT LLP
1740 Broadway
New York, New York 10019
T: 212.468.4890
F: 212.468.4888
E: mrachman@dglaw.com
E: dkothari@dglaw.com
OF COUNSEL
Benjamin T. Horton (Pro Hac Vice to be filed)

Tiffany D. Gehrke (Pro Hac Vice to be filed)
Michelle Bolos (Pro Hac Vice to be filed)
MARSHALL GERSTEIN & BORUN LLP
6300 Willis Tower
233 S. Wacker Dr.
Chicago, IL 60606
T: 312.474.6300
F: 312.474.0448
E: bhorton@marshallip.com
E: tgehrke@marshallip.com
E: mbolos@marshallip.com
Attorneys for Plaintiffs
14
1887105.1 07503-9999-000

Complaint in Kenall v. Clear-Vu Lighting LLC

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Complaint in Kenall v. Clear-Vu Lighting LLC

Uploaded by

Copyright:

Available Formats

Case 2:18-cv-01337-WFK-SIL Document 1 Filed 03/02/18 Page 1 of 14 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

KENALL MANUFACTURING COMPANY )

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

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

against Clear-Vu Lighting LLC (“Clear-Vu” or “Defendant”) herein allege:

NATURE OF THE ACTION

(collectively “Asserted Patents”).

complex lighting problems.

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

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

4. On information and belief, Clear-Vu is a corporation organized and existing under

Central Islip, New York 11722.

5. On information and belief, Clear-Vu is a subsidiary of Autronic Plastics, Inc. and

shares a production and assembly facility with Autronic Plastics, Inc.

JURISDICTION AND VENUE

1338(a), 2201, and 2202.

7. Personal jurisdiction exists over Clear-Vu because it is incorporated in this State

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

in and has significant contacts with this District.

The Asserted Patents

linked to hospital acquired infections, such as methicillin-resistant Staphylococcus aureus

(“MRSA”), while providing ambient illumination.

Clear-Vu’s Accused Products

shown below and any similar products (“Accused Products”).

The ’996 Patent, Claim 1:

A method for disinfecting air, contact surfaces, or materials by inactivating

perform the claimed method steps.

instruments and floors.

light and do not use a photosensitizer.

See Exhibit B, p. 3 and 12.

Patents when operating in either mode.

surfaces, or materials to a disinfecting dose of light at a wavelength above 500nm.

The ’706 Patent, Claim 1:

A method for disinfecting air, contact surfaces or materials by inactivating one or

perform the claimed method steps.

that are non-living, such as surgical instruments and floors.

(including at least MRSA) to visible light and do not use a photosensitizer.

See Exhibit B, p. 3 and 12.

The ’706 Patent, Claim 3:

A system for disinfecting air, contact surfaces or materials by inactivating one or

living, such as surgical instruments and floors.

See Exhibit B, p. 3 and 12.

(including at least MRSA) to visible light and do not use a photosensitizer.

customers and potential customers.

Standard 461F, and Design Lights Consortium Qualified. See Exhibit B.

offering for sale of such products, before patent expiration.

Patent and Trademark Office.

45. Without a license or permission from Plaintiffs, Clear-Vu has infringed, is

infringement in an amount subject to proof at trial.

actual case or controversy requires a declaration of rights by this Court.

infringement, and/or contributory infringement of the ’966 patent.

infringement, active inducement of infringement, or contributory infringement of the ’966 patent.

Patent and Trademark Office.

59. Without a license or permission from Plaintiffs, Clear-Vu has infringed, is

for sale, or importing the Accused Products.

claims of the ’706 Patent.

infringement in an amount subject to proof at trial.

actual case or controversy requires a declaration of rights by this Court.

infringement, and/or contributory infringement of the ’706 patent.

infringement, active inducement of infringement, or contributory infringement of the ’706 patent.

Plaintiffs demand a trial by jury on all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs incorporate each of the allegations in paragraphs 1 through 63