`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
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`
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`
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`Civil Action No. 3:21-cv-01166-M
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`JURY TRIAL DEMANDED
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`PLAINTIFFS’ FIRST SUPPLEMENTAL INFRINGEMENT CONTENTIONS
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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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`8,975,605 (the “’605 Patent”), and 11,246,951 (the “’951 patent”) (collectively, the “Asserted
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`Patents”), on Defendant Larson Electronics LLC (“Larson”).1
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`The following First Supplemental Infringement Contentions are based upon the
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`information reasonably available to and located by Plaintiffs to date. This case has only just begun.
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`The pleadings are still open, and Plaintiffs have not yet completed their investigation of the facts
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`relating to this case. Discovery is just beginning and the Court has not construed any claim of any
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`patent. Plaintiffs expressly reserve the right to amend, supplement, or otherwise modify these
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`disclosures as additional information becomes available through discovery, resulting from any
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`Order of this Court construing any relevant claim terms, or any other relevant bases.
`
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`1 Plaintiffs filed a First Amended Complaint (“FAC”) on January 18, 2022 to identify a newly issued patent from the
`United States Patent and Trademark Office. That patent issued on February 15, 2022 as U.S. Patent No. 11,246,951.
`These First Supplemental Infringement Contentions include asserted claims of that patent.
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`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
` Plaintiffs,
`
`
`
`LARSON ELECTRONICS LLC,
`
` Defendant.
`
`v.
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`EXHIBIT 1026
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`1
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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.
`
`U.S. Patent No.
`8,975,605
`9,700,642
`11,246,951
`
`Asserted Claims
`1
`1, 5, 7, 9, 12, 15, 17
`1-4, 7, (cid:20)(cid:19)-14, 16-17
`
`Applicable Statutory Subsection(s)
`35 U.S.C. §§ 271(a)-(c)
`35 U.S.C. §§ 271(a)-(c)
`35 U.S.C. §§ 271(a)-(c)
`
`(b)
`
`Accused Instrumentality
`
`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-I for corresponding descriptions identifying the
`
`Accused Instrumentality).
`
`U.S. Patent No.
`8,975,605
`
`Asserted Claims
`1
`
`9,700,642
`
`1, 5, 7, 9, 12, 15, 17
`
`11,246,951
`
`1-4, 7, (cid:20)(cid:19)-14, 16-17
`
`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”)
`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”)
`
`2
`
`2
`
`
`
`As shown in the First Amended Complaint (see, e.g., ¶¶ 31, 36, 41, 47), the products listed
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`above as “Accused Instrumentality” are merely representative of three groups of products accused
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`of infringement by Plaintiffs. Plaintiffs do not intend for the product names or model numbers in
`
`this table of Accused Products, or in the appended infringement charts in Exhibits A-I, to be an
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`exhaustive or conclusive list. By identifying product names and model numbers, Plaintiffs intend
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`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-I) 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 Larson 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
`
`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)
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`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
`
`3
`
`3
`
`
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`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
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`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 Larson, and Larson is a manufacturer
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`and or distributor of goods (the Accused Instrumentality) that are specifically designed and
`
`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.
`
`(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.
`
`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, and the ’951 patent is a
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`continuation of the ’642 patent. This is further evidenced in the prosecution of the Asserted Patents
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`and two other patents not asserted here (the ’575 patent and U.S. Patent No. 8,481,985 (“the ’985
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`patent”)), including the filing of PCT/US2009/032392 on January 29, 2009 and U.S. Pat. App. No.
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`4
`
`4
`
`
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`13/145,663 that matured into the ’605 patent. Plaintiffs will produce documents reflecting this
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`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 (or in
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`the case of the ’951 patent, the published patent application). Larson admits that it received this
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`letter. Nonetheless, it proceeded to make, use, offer to sell, and sell the Accused Instrumentality.
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`These acts were malicious, deliberate, consciously wrongful, and done in bad faith to support a
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`factual finding of willful infringement to support enhanced damages under 35 U.S.C. § 284.
`
`(h)
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`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.
`
`U.S. Patent No.
`8,975,605
`9,700,642
`11,246,951
`
`Asserted Claims
`1
`1, 5, 7, 9, 12, 15, 17
`(cid:20)(cid:16)4, 7, (cid:20)(cid:19)-14, 16-17
`
`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).
`
`* * * * *
`
`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 First
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`5
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`5
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`
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`Supplemental Infringement Contentions as additional information becomes available through
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`discovery, including the right to further articulate their contentions with regards to infringement
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`under the doctrine of equivalents.
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`Dated: February 22, 202(cid:21)
`
`/s/ Abby L. Parsons
`Brent P. Ray (pro hac vice)
`(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 (pro hac vice)
`(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
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`6
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 22, 2022, 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
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`7
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`7
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