Complaint in Kenall MFG Co Et Al V Visa Lighting

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN
KENALL MANUFACTURING CO. and )

UNIVERSITY OF STRATHCLYDE )
)
Plaintiffs, ) Case No.______________
)
v. )
)
OLDENBURG GROUP INCORPORATED )
d/b/a VISA LIGHTING )
)
Defendant.
COMPLAINT
Plaintiffs Kenall Manufacturing Co. (“Kenall”) and University of Strathclyde
(“Strathclyde”) (collectively “Plaintiffs”), by their undersigned attorneys, for their Complaint
against Oldenburg Group Incorporated dba Visa Lighting (“Visa Lighting” 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 Visa Lighting’s actions,
including making, using, importing, selling, and/or offering for sale one or more products in
violation of U.S. Patent Nos. 8,398,264 (“the ’264 Patent”), 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, founded in 1963, has created unique and long-lasting lighting products for decades. As a
1
Case 2:18-cv-01352-WED Filed 08/31/18 Page 1 of 22 Document 1
leader in its field, Kenall is one of the most respected independent lighting manufacturers in the
industry.
3. Strathclyde, a world-renowned, top research university, is 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, Oldenburg Group Incorporated d/b/a Visa Lighting is a
corporation organized and existing under the laws of the state of Wisconsin, having its principal
place of business at 1717 W. Civic Drive, Milwaukee, Wisconsin 53209.
JURISDICTION AND VENUE
5. 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.
6. Personal jurisdiction exists over Visa Lighting because it is incorporated in this
State and 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.
7. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and 1400(b)
because (i) Visa Lighting has its principal place of business in this District, and (ii) Visa Lighting
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.
2
FACTUAL BACKGROUND
The Asserted Patents
8. On March 19, 2013, the United States Patent and Trademark Office issued the
’264 Patent, entitled “Lighting Device.” The ’264 Patent issued to John Anderson, Michelle
Maclean, Scott 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 Patent.
Strathclyde has licensed the ’264 Patent to Kenall. A copy of the ’264 Patent is attached as
Exhibit 1.
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
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 2.
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 3.
11. As described in the specifications of the ’966 and ’706 Patents, prior art
techniques for using light energy to destroy harmful bacteria (such as MRSA) required use of
photosensitizing agents in combination with the light energy to treat bacteria in living tissue.
See, e.g., ’966 Patent, 1:50-61 and 2:1-9. In the prior art, the conventional range of light used
3
was 450 nm to 850 nm, and the need for photosensitizing agents was a significant limitation for
those techniques. Id.
12. The claims of the ’966 and ’706 Patents describe methods of and systems for
disinfecting air, contact surfaces, or materials without using a photosensitizer. The ’966 and
’706 Patents also require the unconventional limitation that the surface and materials are non-
living. See ’966 Patent, 6:62-7:7; ’706 Patent, 7:17-8:25.
13. The claims of the ’966 and ’706 Patents also describe using a precise,
unconventional range of light wavelengths for inactivating MRSA or other Gram-positive
bacteria which are part of the white-light spectrum and, for all conventional white-light sources,
constitute only a small fraction (1-2%) of the light output in this range. See ’966 Patent, 3:64-4:1
and 6:62-7:7; ’706 Patent, 7:17-8:25.
14. Kenall licenses the technology of the patents-in-suit from Strathclyde to provide
its products that practice the inventions of the Asserted Patents, which 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. Kenall’s products use safe, engineered light wavelengths
to automatically and continuously disinfect air and surfaces in both unoccupied and occupied
hospital wards and rooms, safely in the presence of patients and staff.
15. Kenall has been praised by media outlets, such as USA Today, Business Wire,
and the Huffington Post for its disinfectant lighting solutions.
16. To the extent required by law, Plaintiffs have complied with the provisions of
35 U.S.C. § 287.
4
Visa Lighting’s Accused Products
17. On information and belief, Visa Lighting makes, uses, sells, offers for sale, and/or
imports products with one or more features that incorporate disinfecting technology that
practices the claimed inventions of the Asserted Patents, including without limitation at least the
“Symmetry,” “Jasper,” “Cade,” “Cantena,” and/or “Latitude” light fixtures shown below and any
similar products (“Accused Products”).
18. On information and belief, Visa Lighting makes, uses, sells, offers for sale, and/or
imports the Accused Products in this District and state and throughout the United States.
19. 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 hospitals.
5
20. Excerpts from Visa Lighting’s website, literature, and specifications are attached
hereto as Exhibit 4.
The ’966 Patent, Claim 1:
21. 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.
22. On information and belief, Visa Lighting 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.
23. 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 as a “High-efficiency Disinfecting Source
for continuous disinfection technology to safely disinfect surfaces” that are non-living, such as
surgical instruments and floors. See Ex. 4, pp. 1, 11, 23. Defendant further describes, “[t]he
illumination we use for working, playing, and learning touches the same surfaces we do—all day
long. By using light fixtures that emit safe, germicidal wavelengths from true white light, you
can protect and use the space at the same time.” Ex. 4, p. 1.
24. With respect to the Accused Products, Defendant touts, “this technology has
already been proven to kill . . . gram negative and gram positive bacteria [including]
Staphylococcus aureus (incl. MRSA).” Ex. 4, p. 4.
6
25. On information and belief, the Accused Products expose the MRSA to visible
light and do not use a photosensitiser. See, e.g., Ex. 4, pp. 1, 11.
26. Defendant describes its products as using “particular wavelengths that cause
harmful microorganisms to die,” that “unlike UV light, 400-405 nm wave lengths do not cause
damage to [humans]” and shows:
Ex. 4, p. 7.
27. On information and belief, the Accused Products include a first mode “HDS (Eco
Mode)” and a second mode “White Light Disinfection” and both provide “continuous
disinfection” See, e.g., Ex. 4, pp. 3, 15, 19-26. On information and belief, both modes include
visible light for inactivating MRSA in the range of 400-420nm. Ex. 4, pp. 3, 7, 10. The Accused
Products infringe the Asserted Patents when operating in either mode.
28. 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
7
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.
Patent by at least making, using, selling, offering for sale, and/or importing the Accused Products
to perform the claimed method steps.
31. 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 as a “High-efficiency Disinfecting Source for continuous disinfection technology to
safely disinfect surfaces” that are non-living, such as surgical instruments and floors. See Ex. 4,
pp. 1, 11, 23. Defendant further describes the Accused Products, “[t]he illumination we use for
working, playing, and learning touches the same surfaces we do—all day long. By using light
fixtures that emit safe, germicidal wavelengths from true white light, you can protect and use the
space at the same time.” Ex. 4, p. 1.
33. On information and belief, the Accused Products expose Gram-positive bacteria
(including at least MRSA), to visible light and do not use a photosensitiser.
8
Ex. 4, p. 7.
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
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.
Patent by at least making, using, selling, offering for sale, and/or importing the Accused
Products.
38. For example, the Accused Products disinfect air, contact surfaces, or materials
because the Accused Products kill and/or inactivate numerous bacteria, including Gram-positive
9
bacteria (including at least MRSA), and are used in applications outside the human body as a
“High-efficiency Disinfecting Source for continuous disinfection technology to safely disinfect
surfaces” that are non-living, such as surgical instruments and floors. See Ex. 4, pp. 1, 11, 23.
Defendant further describes the Accused Products, “[t]he illumination we use for working,
playing, and learning touches the same surfaces we do—all day long. By using light fixtures that
emit safe, germicidal wavelengths from true white light, you can protect and use the space at the
same time.” Ex. 4, p. 1.
40. On information and belief, the Accused Products expose the Gram-positive
bacteria (including at least MRSA) to visible light and do not use a photosensitiser.
Ex. 4, p. 7.
10
43. One or more of the Accused Products infringe at least claim 1 of the ’264 Patent,
which recites:
A lighting device with at least one first-element that emits visible light at a
wavelength and irradiance sufficient to inactivate one or more pathogenic
bacterial species, and at least one second element that emits light of one or more
longer wavelengths to that of the first-element, wherein the at least one second
element has a higher illuminance than that of the at least one first element.
Patent at least by making, using, selling, offering for sale, and/or importing one or more of the
Accused Products.
45. For example, the Accused Products include a lighting device with at least one
first-element that emits visible light at a wavelength and irradiance sufficient to inactivate one or
more pathogenic bacterial species. See, e.g., Ex. 4, pp. 1, 2, 4. Defendant describes the Accused
Products as disinfecting “. . . any place that your eyes can see is being illuminated, which means
disinfection is occurring. If there is light reaching that surface, that means that the 405nm
wavelength of light is reaching that surface.” Ex. 4, p. 11.
46. On information and belief, one or more of the Accused Products include a second
element that emits light of one or more longer wavelengths to that of the first-element that has a
higher illuminance than that of the at least one first-element, as demonstrated by the Accused
Product’s HDS Eco Mode and White Light Disinfection mode. See, e.g., Ex. 4, pp. 22, 26, shown
below:
11
47. One or more of the Accused Products infringe at least claim 30 of the ’264 Patent,
which recites:
A lighting device with at least one first-element that emits visible light at a
wavelength and intensity sufficient to inactivate one or more pathogenic bacterial
species, and at least one second-element that emits light of different wavelengths
to that of the first-element, wherein the at least one second element is operable to
provide environmental illumination.
Patent at least by making, using, selling, offering for sale, and/or importing one or more of the
Accused Products.
49. For example, the Accused Products include a lighting device with at least one
first-element that emits visible light at a wavelength and intensity sufficient to inactivate one or
more pathogenic bacterial species. See, e.g., Ex. 4, pp. 1, 2, 4. Defendant describes the Accused
Products as disinfecting “. . . any place that your eyes can see is being illuminated, which means
disinfection is occurring. If there is light reaching that surface, that means that the 405nm
wavelength of light is reaching that surface.” Ex. 4, p. 11.
12
50. On information and belief, one or more of the Accused Products include a second
element that emits light of different wavelengths to that of the first-element wherein the at least
one second element is operable to provide environmental illumination, as demonstrated by the
Accused Product’s HDS Eco Mode and White Light Disinfection mode. See, e.g., Ex. 4, pp. 22,
26, shown below:
Visa Lighting’s Actions
51. Visa Lighting published and distributed literature, instructions, and order sheets
about the Accused Products to its existing and potential customers and, on information and
belief, made statements to existing and potential customers in the marketplace, including at
tradeshows, about the application, efficacy, and technology of the Accused Products and how
they are used.
52. Visa Lighting has infringed the Asserted Patents at least by using one or more of
the Accused Products at tradeshow(s) to demonstrate and promote the Accused Products to
existing and potential customers.
53. On information and belief, for any Accused Products that Visa Lighting contends
to have not yet made, used, sold, offered for sale, and/or imported, Visa Lighting has engaged in
13
substantial and meaningful preparation for activity directed toward making, using, selling, and/or
offering for sale, and/or importation of such products, before patent expiration.
54. On information and belief, for example, through Visa Lighting’s marketing and
promotional efforts, the making, using, selling, offering for sale, and/or importation of the
Accused Products is imminent.
55. Despite notice from Plaintiffs that Visa Lighting’s products infringe the patents-
in-suit, at least as early as June 22, 2018, and Plaintiffs’ request to cease making, using, selling,
offering for sale, and/or importing the Accused Products, Visa Lighting has refused to change its
announced course of action.
COUNT I
INFRINGEMENT OF THE ’264 PATENT
56. Plaintiffs re-allege the allegations in paragraphs 1-55 as though fully set forth
herein.
57. The ’264 Patent is valid, enforceable, and legally issued from the United States
Patent and Trademark Office.
58. Without a license or permission from Plaintiffs, Visa Lighting has infringed, is
currently infringing, and unless enjoined will continue to infringe the ’264 Patent in violation of
35 U.S.C. § 271.
59. Visa Lighting has directly infringed the ’264 Patent by making, using, selling,
offering to sell, and/or importing one or more of the Accused Products.
60. On information and belief, Visa Lighting has willfully infringed and continues to
willfully infringe the ’264 Patent despite knowledge of the ’264 Patent and despite an objectively
high likelihood that the making, using, selling, offering for sale, or importing of one or more of
the Accused Products would infringe one or more claims of the ’264 Patent.
14
61. Visa Lighting has indirectly infringed and continues to indirectly infringe at least
claim 1 and claim 30 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. On information and belief, Visa
Lighting 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 ’264 Patent, and thereby intended
such infringement. Visa Lighting 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 Visa Lighting’s infringing products in a manner that
infringes the ’264 Patent and/or through its offer to sell one or more of the Accused Products to
such persons where that product has no substantial, non-infringing use.
62. Visa Lighting’s acts of infringement have caused damage to Plaintiffs and
Plaintiffs are entitled to recover from Visa Lighting the damages sustained as a result of Visa
Lighting’s infringement in an amount subject to proof at trial.
63. Plaintiffs have suffered and will continue to suffer irreparable injury and damages
as a result of Visa Lighting’s infringement of the ’264 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 ’264 PATENT
64. Plaintiffs re-allege the allegations in paragraphs 1-63 as though fully set forth
herein.
65. These claims arise under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
2202.
15
66. 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.
67. 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 ’264 Patent.
68. Visa Lighting’s actions demonstrate that infringement of the ’264 Patent is
imminent.
69. 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 ’264
Patent.
COUNT III
70. Plaintiffs re-allege the allegations in paragraphs 1–69 as though fully set forth
herein.
35 U.S.C. § 271.
offering to sell, and/or importing the Accused Products to practice the claimed method steps.
16
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.
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, Visa Lighting 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. Visa Lighting
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 Visa Lighting’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.
as a result of Visa Lighting’s infringement of the ’966 Patent for which Plaintiffs are entitled to
17
COUNT IV
herein.
2202.
imminent.
Patent.
COUNT V
84. Plaintiffs re-allege the allegations in paragraphs 1– 83 as though fully set forth
herein.
18
35 U.S.C. § 271.
offering for sale, or importing the Accused Products.
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.
claim 1 or claim 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, Visa Lighting 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. Visa
Lighting has accomplished this indirect infringement by instructing and encouraging those
persons by means of promotional and instructional literature, among other things, to use Visa
Lighting’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.
19
as a result of Visa Lighting’s infringement of the ’706 Patent for which Plaintiffs are entitled to
COUNT VI
herein.
2202.
imminent.
Patent.
JURY DEMAND
Plaintiffs demand a trial by jury on all issues so triable.
20
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs respectfully request that this Court grant the following relief:
A. Judgment that the Asserted Patents are valid, enforceable, and that Visa Lighting
has directly infringed, contributorily infringed, and induced infringement of the Asserted Patents;
B. Visa Lighting 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 Visa Lighting’s acts of patent infringement are willful;
D. A declaration under 28 U.S.C. § 2201 that if Visa Lighting, 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 Visa Lighting’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.
21
Date: August 31, 2018
Respectfully submitted,
s/ Joseph T. Miotke___________________
Benjamin T. Horton (IL Bar No. 6286428)
Tiffany D. Gehrke (IL Bar No. 6299836)
MARSHALL GERNSTEIN & BORUN LLP
6300 Willis Tower
233 S. Wacker Dr.
Chicago, IL 60606
Tel: 312-474-6300
Fax: 312-474-0448
Email: bhorton@marshallip.com
tgehrke@marshallip.com
and
Joseph T. Miotke (Wis. Bar No. 1033986)

Matthew J. Hills (Wis. Bar No. 1086335)
DEWITT ROSS & STEVENS S.C.
13845 Bishop’s Drive, Suite. 300
Brookfield, WI 53005
Tel: 262-754-2840
Fax: 262-754-2845
Email: jtm@dewittross.com
mjh@dewittross.com
ATTORNEYS FOR PLAINTIFFS
22

Complaint in Kenall MFG Co Et Al V Visa Lighting

Uploaded by

Document Information

Original Title

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 MFG Co Et Al V Visa Lighting

Uploaded by

Copyright:

Available Formats

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF WISCONSIN

KENALL MANUFACTURING CO. and )

Plaintiffs Kenall Manufacturing Co. (“Kenall”) and University of Strathclyde

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

NATURE OF THE ACTION

9,839,706 (“the ’706 Patent”) (collectively “Asserted Patents”).

3. Strathclyde, a world-renowned, top research university, is incorporated by Royal

1XQ, Scotland, United Kingdom.

4. On information and belief, Oldenburg Group Incorporated d/b/a Visa Lighting is a

place of business at 1717 W. Civic Drive, Milwaukee, Wisconsin 53209.

JURISDICTION AND VENUE

1338(a), 2201, and 2202.

6. Personal jurisdiction exists over Visa Lighting because it is incorporated in this

offers for sale infringing products to consumers in this District.

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

infringement in and has significant contacts with this District.

The Asserted Patents

those techniques. Id.

living. See ’966 Patent, 6:62-7:7; ’706 Patent, 7:17-8:25.

unconventional range of light wavelengths for inactivating MRSA or other Gram-positive

and 6:62-7:7; ’706 Patent, 7:17-8:25.

hospital acquired infections, such as methicillin-resistant Staphylococcus aureus (“MRSA”),

and the Huffington Post for its disinfectant lighting solutions.

similar products (“Accused Products”).

The ’966 Patent, Claim 1:

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

to perform the claimed method steps.

Staphylococcus aureus (incl. MRSA).” Ex. 4, p. 4.

damage to [humans]” and shows:

Products infringe the Asserted 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

to perform the claimed method steps.

human body as a “High-efficiency Disinfecting Source for continuous disinfection technology to

space at the same time.” Ex. 4, p. 1.

Staphylococcus aureus (incl. MRSA).” Ex. 4, p. 4.

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

damage to [humans]” and shows:

Products infringe the Asserted Patents when operating in either mode.

The ’706 Patent, Claim 3:

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

“High-efficiency Disinfecting Source for continuous disinfection technology to safely disinfect

same time.” Ex. 4, p. 1.

Staphylococcus aureus (incl. MRSA).” Ex. 4, p. 4.

damage to [humans]” and shows:

Products infringe the Asserted Patents when operating in either mode.

The ’264 Patent, Claim 1:

wavelength of light is reaching that surface.” Ex. 4, p. 11.

wavelength of light is reaching that surface.” Ex. 4, p. 11.

one second element is operable to provide environmental illumination, as demonstrated by the

26, shown below:

Visa Lighting’s Actions

they are used.

existing and potential customers.

Accused Products is imminent.

announced course of action.

Patent and Trademark Office.

offering to sell, and/or importing one or more of the Accused Products.

encouraging those persons by means of demonstration and/or promotional and instructional

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

Lighting’s infringement in an amount subject to proof at trial.