Sterisil v. Proedge Dental Products Et. Al.

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Civil Action Case Number 13-1210

STERISIL, INC., a Colorado

Corporation,

Plaintiff,

v.

PROEDGE DENTAL PRODUCTS, INC.,

a Colorado Corporation, and

MARK A. FRAMPTON, an individual,

Defendants.

COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF

This is an action by Sterisil, Inc., (“Sterisil”) to recover damages arising from

patent infringement by defendants ProEdge Dental Products, Inc. (“ProEdge”) and Mark

A. Frampton, an individual (“Frampton”), and to enjoin future infringements, as well as

for loss profits arising from the infringement. In furtherance of this action, Sterisil hereby

complains and alleges as follows:

THE PARTIES

1. Sterisil, Inc., is a corporation organized and existing under the laws of the State of

Colorado, having a registered address and place of business of 835 S Hwy 105, Unit D,

Palmer Lake, CO 80133.

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2. Plaintiff, Sterisil, is the current assignee of all right, title, and interest in the

patent-in-suit, U.S. Patent No. 6,991,736 (“the ‘736 Patent) issued January 31, 2006,

titled “Structure And Process For Continuously Treating Dental Unit Water”, including

the right to bring and maintain this action. A true and correct copy of the ‘736 patent is

attached hereto as Exhibit 1.

3. Based on information and belief, ProEdge Dental Products, Inc. (“ProEdge”)

is a corporation organized and existing under the laws of the State of Colorado, and has

its corporate headquarters at 7348 South Alton Way, Unit 9-D, Centennial, Colorado

80112, and has a sales office in this District.

4. Defendant ProEdge is a Colorado corporation that is actively engaged in

business in Colorado. ProEdge was formed in 2001 with the name “ConFirm Dental

Products, Inc.” (“ConFirm”) by a Margaret S. Cottrell of Colorado. After 2001, ConFirm

changed its name to its current business name of ProEdge Dental Products, Inc.

5. Defendant Frampton is the Chief Operating Officer of ProEdge, and is a

resident of Parker, Colorado. Since at least January 31, 2006, Frampton has been

responsible for ProEdge’s marketing of a product sold under the trademark “BluTab”,

which is designed and manufactured for practicing the method protected by the ‘736

patent.

JURISDICTION AND VENUE

6. This Court has jurisdiction in this action under 28 U.S.C. §§ 1331, 1338,

2201, and 2202 as this action arises under the patent laws of the United States, 35 U.S.C.

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§ 101 et seq., as this action presents a justiciable case or controversy over the

infringement of the ‘736 patent.

7. This cause of action for patent infringement arises under the Patent Laws of

the United States, Title 35 U.S.C. §§ 101 and 271. Venue is proper in this judicial district

pursuant to 28 U.S.C. § 1391 and 28 U.S.C. § 1400 because ProEdge has its principal

place of business in Colorado, and because Frampton is a resident of Colorado.

8. This Court also has specific jurisdiction over ProEdge and Frampton because

ProEdge and Frampton have engaged in acts of patent infringement in this district by

causing the manufacture and sole use of a product (sold under the trademark “BluTab”)

that is specially manufactured for practicing, and marketed directing other to practice, the

methods claimed in the ‘736 patent with the use of the BluTab product.

9. BluTab has no substantial non-infringing use, and thus BluTab is specially

manufactured and sold with directions specifically instructing end users to use the

BluTab product in a manner that infringes the methods claimed in the ‘736 patent.

THE TECHNOLOGY AT ISSUE

10. While carrying out dental procedures, dentists are routinely faced with the

need to rinse areas of a patient’s mouth water. The water used by the dentist during dental

procedures (“dental water”) is delivered from a container or reservoir that supplies water.

The dental water in the container may be sterilized, distilled or simply potable water. The

dental water is delivered from the container or reservoir through a water line that is

connected to a nozzle or other dental instrument that is operated by the dentist or the

dentist’s assistant. Despite the fact that the dental water being used is potable and may be

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sterilized or distilled, bacteria and other microorganisms can colonize the lines and other

components of dental water system. Prior to the invention disclosed in the patent-in-suit,

dental water was often treated with chemicals that could kill the colonies of bacteria and

other microorganisms, but the harshness of the chemicals could also irritate a patient’s

gums, erode enamel, or diminish the effectiveness of adhesives and amalgams used in

dental procedures.

11. Mr. Brad Downs, a chemical engineer who had worked for the Army Corps of

Engineers in water treatment projects and in designing drinking water disinfection

products, learned of the problems associated with chemicals added to dental water. After

studying the problems faced by dentists and patients with the use of dental water, he

conceived of a method that permitted the use of the antibacterial properties of silver to

kill bacteria and other microorganisms in dental water. Mr. Downs’ invention would

avoid the problems associated with harsh chemicals, while killing bacteria and other

microorganisms in dental water and dental water lines. In 2001 Mr. Downs filed a patent

application for his invention. The application later matured into the ‘736 patent as well as

into patents in France, Germany, Great Britain, and Italy. In 2004 Seterisil’s progress in

the development of its patented system was recognized with the University of Colorado’s

Bard Center for Entrepreneurship’s “Best Bioscience Award”.

12. Silver is a metallic chemical element. The fact that silver is a “chemical

element” means that silver is a pure substance, and is made up of a single atom. Silver

can act as an anti-microbial agent in water if it is dissolved in the water, but under normal

conditions silver does not dissolve in water. Thus, prior to Mr. Downs’ invention, silver

was not considered to be very useful in treating dental water, particularly in its normal

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metallic state. However, Mr. Downs observed that silver could be dissolved in water if

the silver atom is in an “ionic” or “ionized” form. Silver atoms include particles called

“electrons”. Silver is in an “ionic” or “ionized” form when at least one particle, called an

“electron” is removed from the silver atom. A “silver ion” is silver in an “ionic” or

“ionized” form (silver atoms that have had at least one electron removed).

13. Mr. Downs also observed that that silver ions can be produced and the silver

ions dissolved in water if the silver is provided as what is referred to as silver citrate.

Silver citrate releases ionic or ionized silver as it dissolves in water. Mr. Downs took

advantage of this fact in arriving at the method that is patented by the ‘736 patent. Thus,

the method disclosed and patented by the ‘736 patent uses silver citrate, or organic acid

compounds and/or salts, preferably silver-citric acid compounds and/or special “salts”, to

deliver ionic or ionized silver into dental water in the proper amounts to give the dental

water antibacterial and anti-microbial properties.

14. Mr. Downs’ invention is used in a water reservoir that can hold a tablet, or

other permeable element, that contains silver citrate. The table dissolves in water in the

reservoir, and the tablet thus delivers ionic or ionized silver to the water. The ionic or

ionized silver kills bacteria and other microorganisms in the dental water, while avoiding

the use of excessive amounts of chemicals that may harm to the patient, dental

procedures, or dental equipment.

15. The ‘736 patent was duly and legally issued by the United States Patent and

Trademark Office on January 31, 2006.

16. The ‘736 patent is presumed enforceable and, pursuant to 35 U.S.C. § 282 the

‘736 patent carries a presumption of validity.

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17. Frampton learned of Sterisil’s patented method and products from Mr. Downs.

18. In May 2005, Frampton filed an application for a patent (the “Frampton

application”) with the U.S. Patent Office, claiming the invention of a specific

composition of silver citrate, and ProEdge, under the direction of Frampton, began selling

a silver citrate product used for delivering silver in ionic or ionized form to dental water

in December of 2005.

19. The U.S. Patent Office rejected the claims of the Frampton application as

describing an obvious composition. ProEdge and Frampton capitulated to the rejection

and abandoned the Frampton application.

20. In rejecting the claims of the Frampton application the U.S. Patent Office also

found that it would be obvious to add what is known as a “surfactant” to silver citrate.

21. ProEdge and Frampton did not object to, or rebut, the U.S. Patent Office’s

conclusion that it would be obvious to add a surfactant to silver citrate.

22. ProEdge and Frampton became aware of the ‘736 patent as early as February

21, 2006.

23. In February 2006, shortly after the ‘736 patent issued, Plaintiff notified

ProEdge and Frampton of the existence of the ‘736 patent, and provided ProEdge and

Frampton with a copy of the ‘736 patent. In response to this notice, ProEdge and

Frampton sent a letter through ProEdge’s attorney, Mr. James L. Brown of Swanson &

Bratschun, L.L.C. In the response letter, attorney Brown asserted that (1) they (ProEdge

and Frampton) were aware of the ‘736 patent, (2) they did not infringe the ‘736 patent

(without support for the conclusion), and (3) that Mr. Downs should not continue to let

others know of his position regarding infringement by defendants, otherwise “the

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principals of Sterisil, Inc. may incur personal and corporate tort liability for interfering

with the contractual and business relationships of [ProEdge], if losses are incurred as a

result misrepresentations made to third parties.” See attached Exhibit 2, hereinafter “the

Brown letter”.

24. Despite being aware of Plaintiff’s assertions of infringement, defendants have

not commenced any legal action seeking a declaration of invalidity or of non-


25. At least since the issuance of the ‘736 patent, ProEdge and Frampton have

sold and continue to sell a product for delivering ionic or ionized silver into dental water

for the purpose of purifying the dental water and killing bacteria in dental water. The

product is sold under the trademark “BluTab”. The packaging of the BluTab product,

attached hereto as Exhibit 3, asserts that the active ingredient in the product is silver.

26. The BluTab product is designed to release silver in ionic or ionized form

when placed in water.

27. The Attached Exhibit 4 is a publication by ProEdge, asserting that ProEdge’s

BluTab releases silver in ionic form.

28. The BluTab product is used solely for delivering ionic or ionized silver into

dental water for the purpose of purifying the dental water and killing bacteria and other

microorganisms in dental water.

29. The BluTab product includes silver citrate.

30. When a tablet of BluTab is placed in a container with water, the silver citrate

in BluTab releases silver ions into the water in the container.

31. The BluTab product includes a colorant.

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32. The BluTab product includes a flavorant and/or odorant.

33. The packaging of the BluTab product recites silver as being the active

ingredient of the BlueTab product, and when used in accordance to the instructions

provided with the BluTab product, BluTab delivers the silver in ionic or ionized form to

dental water.

34. The use of the BluTab product as directed by packaging instructions (Exhibit

3) causes the end user to mix silver citrate in tablet form with a source water to release

microbiocidally effective amounts of silver ions into source water, which provides

residual disinfection properties in the source water, creating dental water which the user

then delivers though a dental unit water line to a dental instrument.

35. The use of the BluTab product as directed by packaging instructions results in

the infringement of the process patented by the ‘736 patent.

36. There is no substantial noninfringing use for the BluTab.

37. BluTab is not a staple article or commodity.

38. BluTab and Plaintiff’s products are the only commercially available silver

citrate based products, for addition to dental water, marketed for the purpose of killing

bacteria and other microorganisms in dental water lines in the United States.

FIRST CLAIM FOR RELIEF

(Induced Infringement of U.S. Patent No. 6,991,736 Under 35 U.S.C. § 271(b) By

ProEdge)

39. Sterisil repeats and re-alleges each and every allegation contained in the above

paragraphs as if fully set forth herein.

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40. ProEdge has in the past and are presently inducing infringement of the ‘736

Patent by making, using, selling, and/or offering to sell in the United States the BluTab

product, which is especially made for infringing patented invention of the ‘736 Patent.

41. ProEdge induces infringement by selling BluTab tables with instructions that

direct purchasers to place tablets containing silver citrate in dental water in a manner that

infringes one or more claims of the ‘736 patent.

42. ProEdge specifically intend for their customers and/or end users of the BluTab

product to directly infringe one or more of the claims of the ‘736 patent.

43. ProEdge continued to sell the BluTab product with instructions that would

cause the end user or consumer of the BluTab productto place tablets containing silver

citrate in dental water, which results in the release of ionic or ionized silver, in a manner

that directly infringes one or more of the claims of the ‘736 patent.

44. ProEdge has the BluTab product specially manufactured to its specifications

in a manner that results in the BluTab product having no substantial non-infringing uses.

45. Beyond selling and/or offering to sell directly to third parties such as dentists,

dental offices, dental clinics, or other purchasers in this District, such as via the Internet

(as shown in Exhibit 5) for direct sales from this District, ProEdge also sells to

intermediaries as sales representatives, wholesalers and distributors who are located in

this District and sells directly and/or indirectly to customers in this District in a manner

that infringes the ‘736 Patent, in violation of 35 U.S.C. § 271.

46. ProEdge, upon information and belief, has also attended trade shows and

made sales demonstrations within this District in order to sell BluTab, so that purchasers

will infringe the ‘736 patent when used. Such sales, offers for sale and end use by

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customers of ProEdge cause direct infringement, as well as cause infringement by

inducing infringement of the ‘736 Patent, in violation of 35 U.S.C. § 271(b).

47. ProEdge’s infringement of the ’736 patent has caused and will continue to

cause damage to Sterisil in an amount to be determined at trial.


cause irreparable injury to Sterisil as to which there exists no adequate remedy at law,

and such infringement will continue unless enjoined by this Court.

49. ProEdge’s infringement of the ’736 patent is or has been willful in that

ProEdge continued to sell the BluTab product with knowledge of the ‘736 patent and

despite an objectively high likelihood that its actions caused direct infringement of the

‘736 patent.

SECOND CLAIM FOR RELIEF

(Contributory Infringement of U.S. Patent No. 6,991,736 Under 35 U.S.C. § 271(c)

By ProEdge)



51. ProEdge with full knowledge of the ‘736 patent, in the past has been and

presently continues to contribute to the infringement of the ‘736 Patent by making, using,

selling, and/or offering to sell in and to the United States the BluTab product, which is

made specifically for infringing patented invention of the ‘736 Patent, and by selling the

BluTab product with instructions for use such that the end user will infringe the claims of

the ‘736 patent, and such direct infringement by the end user has occurred and continues

to occur throughout the United States.

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52. The BluTab product is specially made for use in the water treatment method

claimed in the ‘736 patent.

53. ProEdge specifically intended that its customers and/or end users of the

BluTab product directly infringe one or more of the claims of the ‘736 patent.

54. ProEdge continued to sell the BluTab product with instructions that would

cause the end user or consumer of the BluTab product to place tablets containing silver

citrate in dental water, which results in the release of ionic or ionized silver, in a manner

that directly infringes one or more of the claims of the ‘736 patent.

55. ProEdge has the BluTab product specially manufactured to its specifications,

and sold by ProEdge in a manner that results in the BluTab product having no substantial

non-infringing uses.


dental offices, dental clinics, or other purchasers in this District, such as via the internet

as shown in Exhibit 5, ProEdge also sells to intermediaries as sales representatives,

wholesalers and distributors who are located in this District and sell to directly and/or

indirectly to customers in this District in a manner infringing the ‘736 Patent, in violation

of 35 U.S.C. § 271.

57. ProEdge, upon information and belief, has also been present at trade shows

and made sales demonstrations within this District. Such manufacture, sale, offer for sale

and use by ProEdge causes direct infringement, as well as infringes by contributory

infringement of the ‘736 Patent, in violation of 35 U.S.C. § 271(c).


cause damage to Sterisil in an amount to be determined at trial.

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cause irreparable injury to Sterisil as to which there exists no adequate remedy at law,

and the infringement will continue unless enjoined by this Court.

60. ProEdge’s infringement of the ’736 patent is or has been willful in that it

continued to sell the BluTab product with knowledge of the ‘736 patent and despite an

objectively high likelihood that its actions caused infringement of the ‘736 patent.

THIRD CLAIM FOR RELIEF

(Induced Infringement of U.S. Patent No. 6,991,736 Under 35 U.S.C. § 271(b) By

ProEdge and Frampton Acting Jointly)



62. Patent infringement is a strict liability tort.

63. Frampton, through ProEdge, arranged for the formulation and special

manufacture of the BluTab product and, packaging and made the decision for ProEdge to

sell and continue to offer for sale the BleTab product.

64. ProEdge and Frampton have in the past and are presently induced

infringement of the ‘736 Patent by making, using, selling, and/or offering to sell in the

United States the BluTab product, which is especially made for infringing patented

invention of the ‘736 Patent.

65. ProEdge and Frampton induce infringement by selling BluTab tables with

instructions that direct purchasers to place tablets containing silver citrate in dental water,

which results in the release of ionic or ionized silver, in a manner that infringes the steps

of one or more of the claims of the ‘736 patent.

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66. ProEdge and Frampton specifically intend for their customers and/or end users

of the BluTab product to directly infringe one or more of the claims of the ‘736 patent.

67. ProEdge and Frampton and Frampton continued to sell the BluTab product

with instructions that would cause the end user or consumer of the BluTab product to

directly infringe one or more of the claims of the ‘736 patent.

68. ProEdge and Frampton have the BluTab product specially manufactured to

their specifications and sold by them in a manner that results in the BluTab product

having no substantial non-infringing uses.



as shown in Exhibit 5 for direct sales from this District, ProEdge and Frampton also sell

to intermediaries as sales representatives, wholesalers and distributors who are located in

this District and sell to directly and/or indirectly to customers in this District in a manner

infringing the ‘736 Patent, in violation of 35 U.S.C. § 271.

70. ProEdge and Frampton, upon information and belief, have also attended trade

shows and made sales demonstrations within this District. Such sale, offers for sale and

use by ProEdge and Frampton causes direct infringement of the ‘736 patent by end users

and induces infringement of the ‘736 Patent, in violation of 35 U.S.C. § 271(b).

71. ProEdge and Frampton’s infringement of the ’736 patent has caused and will

continue to cause damage to Sterisil in an amount to be determined at trial.


continue to cause irreparable injury to Sterisil as to which there exists no adequate

remedy at law, and will continue unless enjoined by this Court.

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73. ProEdge and Frampton’s infringement of the ’736 patent is or has been willful

in that defendants continued to sell the BluTab product with knowledge of the ‘736 patnet

and despite an objectively high likelihood that their actions caused direct infringement of

the ‘736 patent.

FOURTH CLAIM FOR RELIEF

(Contributory Infringement of U.S. Patent No. 6,991,736 Under 35 U.S.C. § 271(c)

By ProEdge and Frampton Acting Jointly)



75. Patent infringement is a strict liability tort.

76. Frampton, through ProEdge, arranged for the formulation and special

manufacture of the BluTab product and packaging, and made the decision for ProEdge to

sell and continue to offer for sale the BleTab product.

77. ProEdge and Frampton, with full knowledge of the ‘736 patent, in the past

have been and presently continue to contribute to the infringement of the ‘736 Patent by

making, using, selling, and/or offering to sell in and to the United States the BluTab

product, which is made specifically for infringing patented invention of the ‘736 Patent,

and by selling the BluTab product with instructions for use such that the end user will

infringe the claims of the ‘736 patent, and such direct infringement by the end user has

occurred and continues to occur throughout the United States.

78. The BluTab product is specially made for use in the water treatment method

claimed in the ‘736 patent.

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79. ProEdge and Frampton specifically intend for their customers and/or end users

of the BluTab product to place tablets containing silver citrate in dental water, which

results in the release of ionic or ionized silver, in a manner that infringes one or more of

the claims of the ‘736 patent.

80. ProEdge and Frampton and Frampton continued to sell the BluTab product

with instructions that would cause the end user or consumer of the BluTab product to

directly infringe one or more of the claims of the ‘736 patent.

81. ProEdge and Frampton have the BluTab product specially manufactured to

their specifications and sold by them in a manner that results in the BluTab product

having no substantial non-infringing uses.



as shown in Exhibit 5 for direct sales into this District, ProEdge and Frampton also sell to

intermediaries as sales representatives, wholesalers and distributors who are located in

this District and sell to directly and/or indirectly to customers in this District in a manner

infringing the ‘736 Patent, in violation of 35 U.S.C. § 271.

83. ProEdge and Frampton, upon information and belief, have also attended trade

shows and made sales and offers for sale through demonstrations within this District.

Such sales, offers for sale and directed use causes direct infringement, as well as

infringement by contributory infringement of the ‘736 Patent, in violation of 35 U.S.C. §

271(c).


continue to cause damage to Sterisil in an amount to be determined at trial.

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continue to cause irreparable injury to Sterisil as to which there exists no adequate

remedy at law. ProEdge and Frampton’s infringement will continue unless enjoined by

this Court.

86. ProEdge and Frampton’s infringement of the ’736 patent is or has been willful

in that defendants continued to sell the BluTab product with knowledge of the ‘736

patenet and despite an objectively high likelihood that their actions constituted


WHEREFORE, Sterisil demands judgment against ProEdge and Frampton as

follows:

A. Permanently enjoining ProEdge and/or Frampton, and its officers, agents,

servants, employees, attorneys, and all those persons in privity or in active concert or

participation with them, from further manufacture, importation, sale, offer for sale, and/or

use of a

product which infringes, contributorily infringes, or induces infringement of the

‘736 Patent.

B. Permanently enjoining ProEdge and/or Frampton, and its officers, agents,

servants, employees, attorneys, and all those persons in privity or in active concert or

participation with them, from further acts of infringement of the ‘736 Patent.

C. Ordering an accounting of damages.

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D. Awarding damages in an amount to be determined at trial, but adequate to compensate

Sterisil for ProEdge and/or Frampton’s infringement, contributory infringement, and

inducement of infringement of the ‘736 Patent.

E. Increasing the damages up to three times the amount found or assessed for

ProEdge and/or Frampton’s willful acts of infringement.

F. Awarding prejudgment interest and costs.

G. Finding this to be an exceptional case and awarding reasonable attorneys’ fees to

Sterisil.

H. Such other and further relief as this Court deems necessary and appropriate.

Respectfully submitted,

DATED this 7th

day of May, 2013.

RAMON L. PIZARRO

s/Ramon Pizarro

Ramon L. Pizarro

3515 South Tamarac Drive, STE 200

Denver, CO 80237

Phone: (303) 785-2819 (Direct)

Phone: (303) 779-9551 (Main)

Fax: (303) 689-9627

Email: [email protected]

ATTORNEY FOR PLAINTIFF

STERISIL, INC.

DEMAND FOR JURY TRIAL

Plaintiff demands trial by jury on all claims and issues so triable.

Address of Plaintiff:

835 S Hwy 105, Unit D

Palmer Lake, CO 80133

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TABLE OF EXHIBITS

Exhibit 1:

United States Patent No. 6,991,736

Exhibit 2:

Letter of James L. Brown, Esq., dated Feb. 26, 2006

Exhibit 3:

Packaging of ProEdge BluTab Product

Exhibit 4:

ProEdge Publication Re BluTab Product

Exhibit 5:

ProEdge Internet Marketing of ProEdge BluTab Product

Sterisil v. Proedge Dental Products Et. Al.

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Transcript of Sterisil v. Proedge Dental Products Et. Al.