`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`
`
`PLAINTIFFS’ INITIAL INFRINGEMENT CONTENTIONS
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`)
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`Pursuant to Miscellaneous Order No. 62 ¶ 3-1, Plaintiffs High Energy Ozone LLC d/b/a
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`Far-UV Sterilray (“HEO3”) and S. Edward Neister (“Mr. Neister”) (collectively, “Plaintiffs”),
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`submit their Initial Infringement Contentions as to U.S. Patent Nos. 9,700,642 (the “’642 Patent”)
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`and 8,975,605 (the “’605 Patent”) (collectively, the “Asserted Patents”), on Defendant Larson
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`Electronics LLC (“Larson”).
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`The following Initial Infringement Contentions are based upon the information reasonably
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`available to and located by Plaintiffs to date. This case has only just begun. The pleadings are still
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`open, and Plaintiffs have not yet completed their investigation of the facts relating to this case.
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`Discovery is just beginning and the Court has not construed any claim of any patent. Plaintiffs
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`expressly reserve the right to amend, supplement, or otherwise modify these disclosures as
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`additional information becomes available through discovery, resulting from any Order of this
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`Court construing any relevant claim terms, or any other relevant bases.
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`(a)
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`Asserted Claims
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`Based on presently available information, Plaintiffs contend that Larson infringes at least
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`the following claims (collectively, “Asserted Claims”) of the Asserted Patents.
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`Civil Action No. 3:21-cv-01166-M
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`JURY TRIAL DEMANDED
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`))
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`)))))))
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`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
` Plaintiffs,
`
`
`
`LARSON ELECTRONICS LLC,
`
` Defendant.
`
`v.
`
`1
`
`EXHIBIT 1025
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`
`
`
`
`U.S. Patent No.
`8,975,605
`9,700,642
`
`Asserted Claims
`1
`1, 5, 7, 9, 12, 15, 17
`
`Applicable Statutory Subsection(s)
`35 U.S.C. §§ 271(a)-(c)
`35 U.S.C. §§ 271(a)-(c)
`
`(b)
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`Accused Instrumentality
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`Based on presently available information, Plaintiffs contend that the following apparatus,
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`product, device, process, method, act, or other instrumentality, (the “Accused Instrumentality”),
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`infringe the Asserted Claims (see Exhibits A-F for corresponding descriptions identifying the
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`Accused Instrumentality).
`
`U.S. Patent No. Asserted Claims
`8,975,605
`1
`
`9,700,642
`
`1, 5, 7, 9, 12, 15, 17
`
`Representative Accused Instrumentality (Model Nos.)
`10W Microplasma Board (FRL-EMPFUVC-MP-10-2X2-KT-120V)
`(“Microplasma Board”)
`
`40W UV Excimer Lamp (FRL-EMX-6-40W-FUVC)
`(“Excimer Lamp”)
`90W UV Excimer Lamp (FRL-EMX-18-90W-FUVC)
`(“Excimer Bulb”)
`10W Microplasma Board (FRL-EMPFUVC-MP-10-2X2-KT-120V)
`(“Microplasma Board”)
`40W UV Excimer Lamp (FRL-EMX-6-40W-FUVC)
`(“Excimer Lamp”)
`90W UV Excimer Lamp (FRL-EMX-18-90W-FUVC)
`(“Excimer Bulb”)
`
`As shown in the Complaint (see ¶¶ 30, 35, 40), the products listed above as “Accused
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`Instrumentality” are merely representative of three groups of products accused of infringement by
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`Plaintiffs. Plaintiffs do not intend for the product names or model numbers in this table of Accused
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`Products, or in the appended infringement charts in Exhibits A-F, to be an exhaustive or conclusive
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`list. By identifying product names and model numbers, Plaintiffs intend to include all model
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`numbers and configurations for each identified Accused Instrumentality.
`
`
`
`2
`
`
`
`
`
`(c)
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`Infringement Charts
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`For each of the Asserted Patents, Plaintiffs have attached a corresponding claim chart (see
`
`Exhibits A-F) 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
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`language governed by 35 U.S.C. § 112 ¶ 6. To the extent Larson or the Court interpret any Asserted
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`Claim to include such language, Plaintiffs expressly reserve the right to include contentions to
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`support such interpretation.
`
`These charts are based on information currently available to and located by Plaintiffs.
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`Plaintiffs have not completed their investigation of the facts relating to this case, have not
`
`completed discovery in this action, and have not completed preparation for trial. Therefore,
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`Plaintiffs expressly reserve the right to amend, supplement, or otherwise modify these charts and
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`infringement contentions as additional information becomes available through discovery.
`
`(d)
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`Literal Infringement and/or Doctrine of Equivalents
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`Based on the information currently available, Plaintiffs contend that the Accused
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`Instrumentality literally infringes each of the Asserted Claims. To the extent any claim limitations
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`are not literally infringed, Plaintiffs contend the limitations are infringed under the doctrine of
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`equivalents because (a) the identified features of the Accused Instrumentality are insubstantially
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`different from the literal claim elements, for example because they perform substantially the same
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`function in substantially the same way to achieve substantially the same result; and (b) there are
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`only insubstantial differences between the Asserted Claims and the processes performed by the
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`Accused Instrumentalities, if any.
`
`
`
`3
`
`
`
`
`
`(e)
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`Indirect Infringement
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`Plaintiffs intend to assert only process claims against Larson, and Larson is a manufacturer
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`and or distributor of goods (the Accused Instrumentality) that are specifically designed and
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`intended by Larson to infringe the Asserted Claims of the Asserted Patents. Nor do the Accused
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`Instrumentality have any substantial non-infringing uses. Thus, Plaintiffs contend that Larson is
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`liable for indirectly infringing the Asserted Patents under 35 U.S.C. §§ 271(b) and (c). Plaintiffs
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`will provide additional evidence to support their claims of indirect infringement as discovery
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`progresses.
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`(f)
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`Priority Date
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`Plaintiffs assert that the Asserted Patents are entitled to a priority date of April 12, 2000,
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`when inventor Mr. Neister conceived of the claimed methods and documented them in his lab
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`notebook. Mr. Neister diligently reduced them to practice, as evidenced in the filing of U.S.
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`Provision Patent Application No. 60/593,626 on January 31, 2005, PCT/US2006/003393 on
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`January 31, 2006, and U.S. Pat. App. No. 11/837,667 that matured into U.S. Patent No. 8,753,575
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`(“the ’575 patent”). The ’642 patent is a continuation of the ’575 patent. This is further evidenced
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`in the prosecution of the Asserted Patents and two other patents not asserted here (the ’575 patent
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`and U.S. Patent No. 8,481,985 (“the ’985 patent”)), including the filing of PCT/US2009/032392
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`on January 29, 2009 and U.S. Pat. App. No. 13/145,663 that matured into the ’605 patent. Plaintiffs
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`will produce documents reflecting this conception and development work during discovery.
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`(g) Willful Patent Infringement
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`Plaintiffs intend to seek a factual finding of willful infringement and seek enhanced
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`damages against Larson because Larson knew of the Asserted Patents since at least October 2020
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`when Plaintiffs sent a notice letter to Larson identifying and attaching the Asserted Patents. Larson
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`
`
`4
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`
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`admits that it received this letter. Nonetheless, it proceeded to make, use, offer to sell, and sell the
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`Accused Instrumentality. These acts were malicious, deliberate, consciously wrongful, and done
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`in bad faith to support a factual finding of willful infringement to support enhanced damages under
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`35 U.S.C. § 284.
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`(h) HEO3’s Products that Practice the Patented Methods
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`Plaintiffs intend to rely upon the fact that their own apparatus, product, device, process,
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`method, act, or other instrumentality practices the claimed inventions, according to the following
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`chart.
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`U.S. Patent No.
`8,975,605
`9,700,642
`
`Asserted Claims
`1
`1, 5, 7, 9, 12, 15, 17
`
`HEO3’s Practicing Products
`Excimer Wave Sterilray Luminaire, MicrobeBuster
`Surface Unit, Disinfection Wand, Air Surface
`Disinfection Unit (ASDU), Autonomous Disinfection
`Vehicle (ADV), and GermBuster-Air Canister (Model
`4000).
`
`
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`* * * * *
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`Plaintiffs have not completed their investigation of the facts relating to this case and have
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`not yet started discovery in this action. Furthermore, Larson has not set forth its bases for non-
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`infringement of the asserted claims, nor has the Court construed any term of any asserted claim.
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`Accordingly, Plaintiffs reserve the right to amend, supplement, or otherwise modify these Initial
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`Infringement Contentions as additional information becomes available through discovery,
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`including the right to further articulate their contentions with regards to infringement under the
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`doctrine of equivalents.
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`5
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`
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`Dated: November 24, 2021
`
` /s/ (cid:36)(cid:69)(cid:69)(cid:92)(cid:3)(cid:47)(cid:17)(cid:3)(cid:51)(cid:68)(cid:85)(cid:86)(cid:82)(cid:81)(cid:86)
`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
`(TX Bar No. 24094303)
`Matthew Wood
`(TX Bar No. 24110548)
`KING & SPALDING LLP
`1100 Louisiana Street, Ste. 4100
`Houston, TX 77002
`Phone: (713) 751-3294
`Email: aparsons@kslaw.com
`mwood@kslaw.com
`
`Attorneys for Plaintiffs, High Energy
`Ozone LLC d/b/a Far-UV Sterilray and
`S. Edward Neister
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 24, 2021, I served the foregoing document with
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`attachments on counsel of record for Defendant Larson Electronics LLC via electronic mail.
`
`/s/ Abby L. Parsons
`Abby L. Parsons
`Counsel for Plaintiffs
`
`6
`
`
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