IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`Case No. 1:21-cv-02753
`
`JURY TRIAL DEMANDED
`
`))
`
`
`)
`
`)))))))
`
`
`)
`
`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
` Plaintiffs,
`
`
`
`v.
`
`EDEN PARK ILLUMINATION, INC.
`
` Defendant.
`
`PLAINTIFFS’ INITIAL INFRINGEMENT CONTENTIONS
`
`Pursuant to Local Patent Rule 2.2, Plaintiffs High Energy Ozone LLC d/b/a Far-UV
`
`Sterilray (“HEO3”) and S. Edward Neister (“Mr. Neister”) (collectively, “Plaintiffs”), submit their
`
`Initial Infringement Contentions as to U.S. Patent Nos. 9,700,642 (the “’642 Patent”) and
`
`8,975,605 (the “’605 Patent”) (collectively, the “Asserted Patents”), on Defendant Eden Park
`
`Illumination, Inc. (“Eden Park”).
`
`The following Initial Infringement Contentions are based upon the information reasonably
`
`available to and located by Plaintiffs to date. This case has only just begun. The pleadings are still
`
`open, and Plaintiffs have not yet completed their investigation of the facts relating to this case.
`
`Discovery has not yet started and the Court has not construed any claim of any patent. Plaintiffs
`
`expressly reserve the right to amend, supplement, or otherwise modify these disclosures as
`
`additional information becomes available through discovery, resulting from any Order of this
`
`Court construing any relevant claim terms, or any other relevant bases.
`
`(a)
`
`Asserted Claims
`
`Based on presently available information, Plaintiffs contend that Eden Park infringes at
`
`least the following claims (collectively, “Asserted Claims”) of the Asserted Patents.
`
`1
`
`EXHIBIT 1024
`
`
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`Case No. 1:21-cv-02753
`
`JURY TRIAL DEMANDED
`
`))
`
`
`)
`
`)))))))
`
`
`)
`
`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
` Plaintiffs,
`
`
`
`v.
`
`EDEN PARK ILLUMINATION, INC.
`
` Defendant.
`
`PLAINTIFFS’ INITIAL INFRINGEMENT CONTENTIONS
`
`Pursuant to Local Patent Rule 2.2, Plaintiffs High Energy Ozone LLC d/b/a Far-UV
`
`Sterilray (“HEO3”) and S. Edward Neister (“Mr. Neister”) (collectively, “Plaintiffs”), submit their
`
`Initial Infringement Contentions as to U.S. Patent Nos. 9,700,642 (the “’642 Patent”) and
`
`8,975,605 (the “’605 Patent”) (collectively, the “Asserted Patents”), on Defendant Eden Park
`
`Illumination, Inc. (“Eden Park”).
`
`The following Initial Infringement Contentions are based upon the information reasonably
`
`available to and located by Plaintiffs to date. This case has only just begun. The pleadings are still
`
`open, and Plaintiffs have not yet completed their investigation of the facts relating to this case.
`
`Discovery has not yet started and the Court has not construed any claim of any patent. Plaintiffs
`
`expressly reserve the right to amend, supplement, or otherwise modify these disclosures as
`
`additional information becomes available through discovery, resulting from any Order of this
`
`Court construing any relevant claim terms, or any other relevant bases.
`
`(a)
`
`Asserted Claims
`
`Based on presently available information, Plaintiffs contend that Eden Park infringes at
`
`least the following claims (collectively, “Asserted Claims”) of the Asserted Patents.
`
`1
`
`EXHIBIT 1024
`
`
`
`U.S. Patent No.
`8,975,605
`
`Asserted Claims
`1
`
`Applicable Statutory Subsection(s)
`35 U.S.C. §§ 271(a)-(c)
`
`9,700,642
`
`1, 5, 7, 9, 12, 15, 17
`
`35 U.S.C. §§ 271(a)-(c)
`
`(b)
`
`Accused Instrumentality
`
`Based on presently available information, Plaintiffs contend that the following apparatus,
`
`product, device, process, method, act, or other instrumentality, (the “Accused Instrumentality”),
`
`infringe the Asserted Claims (see Exhibits A-B for corresponding descriptions identifying the
`
`Accused Instrumentality).
`
`U.S. Patent No.
`8,975,605
`
`Asserted Claims
`1
`
`Accused Product
`Eden Park Thin 222 nm UV Lamp
`
`9,700,642
`
`1, 5, 7, 9, 12, 15, 17
`
`Eden Park Thin 222 nm UV Lamp
`
`Plaintiffs do not intend for the product names in this table of Accused Products, or in the
`
`appended infringement charts in Exhibits A-B, to be an exhaustive or conclusive list. By
`
`identifying product names, Plaintiffs intend to include all model numbers and configurations for
`
`each identified Accused Instrumentality.
`
`(c)
`
`Infringement Charts
`
`For each of the Asserted Patents, Plaintiffs have attached a corresponding claim chart (see
`
`Exhibits A-B) specifically identifying where each element of each Asserted Claim is found within
`
`each Accused Instrumentality. The Asserted Claims do not include any means-plus-function
`
`language governed by 35 U.S.C. § 112 ¶ 6. To the extent Eden Park or the Court interpret any
`
`Asserted Claim to include such language, Plaintiffs expressly reserve the right to include
`
`contentions to support such interpretation.
`
`These charts are based on information currently available to and located by Plaintiffs.
`
`Plaintiffs have not completed their investigation of the facts relating to this case, have not
`
`2
`
`
`
`completed discovery in this action, and have not completed preparation for trial. Therefore,
`
`Plaintiffs expressly reserve the right to amend, supplement, or otherwise modify these charts and
`
`infringement contentions as additional information becomes available through discovery.
`
`(d)
`
`Literal Infringement and/or Doctrine of Equivalents
`
`Based on the information currently available, Plaintiffs contend that the Accused
`
`Instrumentality literally infringes each of the Asserted Claims. To the extent any claim limitations
`
`are not literally infringed, Plaintiffs contend the limitations are infringed under the doctrine of
`
`equivalents because (a) the identified features of the Accused Instrumentality are insubstantially
`
`different from the literal claim elements, for example because they perform substantially the same
`
`function in substantially the same way to achieve substantially the same result; and (b) there are
`
`only insubstantial differences between the Asserted Claims and the processes performed by the
`
`Accused Instrumentalities, if any.
`
`(e)
`
`Indirect Infringement
`
`Plaintiffs intend to assert only process claims against Eden Park, and Eden Park is a
`
`manufacturer and or distributor of goods (the Accused Instrumentality) that are specifically
`
`designed and intended by Eden Park to infringe the Asserted Claims of the Asserted Patents. Nor
`
`do the Accused Instrumentality have any substantial non-infringing uses. Thus, Plaintiffs contend
`
`that Eden Park is liable for indirectly infringing the Asserted Patents under 35 U.S.C.
`
`§§ 271(b) and (c). Plaintiffs will provide additional evidence to support their claims of indirect
`
`infringement as discovery progresses.
`
`(f)
`
`Priority Date
`
`Plaintiffs assert that the Asserted Patents are entitled to a priority date of April 12, 2000,
`
`when inventor Mr. Neister conceived of the claimed methods and documented them in his lab
`
`3
`
`
`
`notebook. Mr. Neister diligently reduced them to practice, as evidenced in the filing of U.S.
`
`Provision Patent Application No. 60/593,626 on January 31, 2005, PCT/US2006/003393 on
`
`January 31, 2006, and U.S. Pat. App. No. 11/837,667 that matured into U.S. Patent No. 8,753,575
`
`(“the ’575 patent”). The ’642 patent is a continuation of the ’575 patent. This is further evidenced
`
`in the prosecution of the Asserted Patents and two other patents not asserted here (the ’575 patent
`
`and U.S. Patent No. 8,481,985 (“the ’985 patent”)), including the filing of PCT/US2009/032392
`
`on January 29, 2009 and U.S. Pat. App. No. 13/145,663 that matured into the ’605 patent. Plaintiffs
`
`will produce documents reflecting this conception and development work during discovery.
`
`(g) Willful Patent Infringement
`
`Plaintiffs intend to seek a factual finding of willful infringement and seek enhanced
`
`damages against Eden Park because Eden Park knew of the Asserted Patents since at least June
`
`2018 when Eden Park president Cy Herring inspected the HEO3 products at a trade show and
`
`Plaintiffs sent a notice letter to Eden Park identifying and attaching the Asserted Patents. Eden
`
`Park admits that it received this letter. Nonetheless, it proceeded to make, use, offer to sell, and
`
`sell the Accused Instrumentality. These acts were malicious, deliberate, consciously wrongful, and
`
`done in bad faith to support a factual finding of willful infringement to support enhanced damages
`
`under 35 U.S.C. § 284.
`
`(h) HEO3’s Products that Practice the Patented Methods
`
`Plaintiffs intend to rely upon the fact that their own apparatus, product, device, process,
`
`method, act, or other instrumentality practices the claimed inventions, according to the following
`
`chart.
`
`U.S. Patent No.
`8,975,605
`
`Asserted Claims
`1
`
`9,700,642
`
`1, 5, 7, 9, 12, 15, 17
`
`HEO3’s Practicing Products
`Excimer Wave Sterilray Luminaire,
`MicrobeBuster Surface Unit, Disinfection
`Wand, Air Surface Disinfection Unit
`
`4
`
`
`
`U.S. Patent No.
`
`Asserted Claims
`
`HEO3’s Practicing Products
`(ASDU), Autonomous Disinfection Vehicle
`(ADV), and GermBuster-Air Canister
`(Model 4000).
`
`
`
`* * * * *
`
`Plaintiffs have not completed their investigation of the facts relating to this case and have
`
`not yet started discovery in this action. Furthermore, Eden Park has not set forth its bases for non-
`
`infringement of the asserted claims, nor has the Court construed any term of any asserted claim.
`
`Accordingly, Plaintiffs reserve the right to amend, supplement, or otherwise modify these Initial
`
`Infringement Contentions as additional information becomes available through discovery,
`
`including the right to further articulate their contentions with regards to infringement under the
`
`doctrine of equivalents.
`
`Dated: October 26, 2021
`
`
`
`
`
`
`
`
`
` /s/ Brent P. Ray
`Brent P. Ray
`(IL Bar No. 6291911)
`KING & SPALDING LLP
`110 N. Wacker Drive
`Suite 3800
`Chicago, IL 60606
`Phone: (312) 995-6333
`Email: bray@kslaw.com
`
`Abby L. Parsons
`(IL Bar No. 6297018)
`KING & SPALDING LLP
`1100 Louisiana Street, Ste. 4100
`Houston, TX 77002
`Phone: (713) 751-3294
`Email: aparsons@kslaw.com
`Attorneys for Plaintiffs,
`High Energy Ozone LLC
`d/b/a Far-UV Sterilray
`and S. Edward Neister
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 26, 2021, I served the foregoing document with
`
`attachments on counsel of record for Defendant Eden Park Illumination, Inc. via electronic mail.
`
`
`
`
`/s/ Brent P. Ray
`Brent P. Ray
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
