OCTOBER 2022 - FOR IMMEDIATE RELEASE: A settlement has been reached to resolve all claims asserted in the lawsuit filed in the United States District Court for the District of Kansas by William G. Gardner III and Way Too Cool, LLC against Engenious Designs, LLC. At issue in the lawsuit was infringement of U.S. Patent No. U.S. Patent No. 7,781,751 (the '751 Patent), entitled "Portable Wavelength Transforming Converter for UV LEDs," which issued on August 24, 2010 to Gardner, and U.S. Patent No. 7,485,883 (the '883 Patent), entitled "Variable Wavelength Radiation Source," which issued on February 3, 2009, also to Gardner, (collectively, the "Patents"), and defamation asserted by Gardner. Also at issue was the enforceability and validity of the Patents raised by Engenious Designs.
As part of the settlement, Engenious Designs does not dispute that the '751 and '883 Patents are valid and enforceable. In lieu of a license or royalty fee to be paid to Way Too Cool under the Patents, the Parties have agreed that six percent (6%) of revenues received by Engenious Designs for sales of its portable UV LED fixtures and flashlights with filters and batteries accused of infringing the '751 Patent will be paid to the Fluorescent Mineral Society until the '751 Patent expires, for the promotion, innovation and advancement of the fluorescent mineral hobby and community, and development of new designs. Rhett Peterson of Engenious Designs has agreed to step down as President of the FMS as well as Administrator of the Fluorescent Mineral Facebook page.
Bill Gardner founded Way Too Cool in 1998. Way Too Cool offers retail and custom, built-to-order, ultraviolet (UV) lamp fixtures and flashlights. For more than 20 years, Way Too Cool's lamps have been an indispensable tool for fluorescent rock and mineral collecting. Mr. Gardner holds an AS in engineering, and a BA in geology specializing in mineralogy, and was licensed as a Reactor Operator by the Nuclear Regulatory Commission. Mr. Gardner has two mining Claims for fluorescent minerals - the Purple Passion mine and the Hogan Claim. Mr. Gardner has been granted five US Patents in the UV field starting in 2003, and he has licensed the use of his patents to more than five companies to promote research and development in the field. Way Too Cool was the first company to sell filtered UV LED flashlights beginning in 2006. For more information go to www.fluorescents.com.
Engenious Designs, LLC was founded in 2016 by Rhett Peterson and Nicholas Brown with the goal of using their electrical and mechanical engineering backgrounds to bring cutting edge, reliable, and affordable UV light fixtures, flashlights, and custom solutions to the fluorescent rock and mineral collecting community. They have designed and manufactured dozens of state-of-the-art UV lights and have plans for many more next-generation designs already in development. For more information and purchasing options, go to Engenious Designs LLC (engeniousdesigns.com).
Things are not what they seem. Any comments presenting my point of view have been deleted or not posted on the Facebook pages so only one side has been presented to you, and it has been heavily slanted against me. I urge you to ask more questions to find the truth about the things that were posted, (or are currently being posted), on Facebook and other social media.
Here are excerpts from a letter to Rhett Peterson dated 3-8-2018
Back in February 2008, I filed for a US Patent on the use of wavelength changing filters for UV LEDs and it issued in August of 2010. US Patent #7781751. My position is that the colored filter glass changes the wavelength by absorbing the visible light and converting it to heat or re-emitting it as infra-red - hence the wavelength change. My patent is much more detailed because it also allows for the use of phosphors and other wavelength changing materials as well.
I am willing to license people if they want to use my patent but I do not appreciate people deliberately infringing on it.
HOWEVER, there are many people out there - including some in the FMS, who are selling the flashlights with the filter already installed. That does infringe on my patent. Patents by their very nature are almost impossible to defend, or stop people from infringing. Here is my plan to try to stop or limit the infringement.
First, I am spreading the word that I do have a patent and I am appealing to people to do the right thing and not knowingly infringe on a patent. It does say something about a person's character if they clearly and knowingly infringe on a patent.
Second, I am having the factory make me some generic flashlights using the same components as the Convoy S2+ and I am having the filters installed at the factory.
I am selling them wholesale for $35 per set - in sets containing 10 flashlights, 20 batteries, and 10 chargers.
I expect that with a wholesale price of $35 - with the filter installed, with 2 batteries, and a charger, I will be able to limit the people who are currently infringing the patent because it will be cheaper for them to buy the flashlight sets from me rather than buying the individual parts and making their own sets for resale.
I am working today through Sunday, but I may be able to answer the phone depending on where I am in the power plant. My cell is 602-616-1742.
Here is an excerpt from a letter to Mark Cole dated 10-1-2018
Mark, you have publicly stated that you are concerned that my patent(s) will stifle R&D. In fact, just the opposite should be the case. I would like to propose a cooperative venture not just to you, but to everyone in the fluorescent mineral hobby/business. I am hopeful that collectively we can create some very cool UV products designed specifically for our uses in this mineral collecting field.
I propose to encourage more R&D by using licenses of my patents to protect anyone with valuable R&D so that other people cannot steal the ideas and sell similar products. I am ready, willing, and able to license others to use my patents. The benefit to a licensee is patent protection, without having to spend many thousands of dollars to have a patent granted, nor waiting years to get the patent through the entire process. Additionally, a person may have some really cool ideas that would infringe on an existing patent so that they do not bother to develop the idea. Via a license agreement, those ideas can be turned into reality and the person with the idea can profit from them.
The license contract can be written to protect a special design for a flashlight, or other battery-operated UV LED device, and to prevent anyone else from making that or a similar design. For example, IF a person makes a UV C flashlight using a particular host flashlight for the body and using a particular brand of UV C LED, the licensing process can prevent anyone else from duplicating that product or products. If a person wants to make a flashlight with a white LED at one end and a UV LED at the other, that person can be assured that no one will be able to copy it. If a person wants to make a headlamp, no one can make the same design. If someone approaches me with a product that they want to license, I would check against the other licenses to ensure that the new product, or product line, does not conflict with another person's license. As a Licensee a person gets the benefit of having patent protection without the huge upfront cost and hassle of actually getting a patent. I have already gotten the patent. By participating in this co-operative venture, each licensee can also maximize profits by stopping some of the illegal sales.
Richard and Bess Shields already have a license for filtered UV LED flashlights. I am currently drafting a license for a person who is working on UV C LED flashlights. A third person who has a PhD in Optics has agreed to get a license and as part of the terms he will write a Technical paper for publication in a top Optics magazine with a complete explanation and data of how the absorption filter converts/transforms the emission from the primary UV LED. A fourth person is designing a very simple experiment that anyone can perform to show that the absorption filter converts/transforms most of the absorbed energy into infrared radiation.
Additionally, I have other US patents related to UV lamp fixtures and I am willing to license other people to use those patents as well. I am hoping that we can figure out ways to use my various patents to motivate the creative talents in this group to generate a large variety of really useful UV products which will make things better for all of us.
It is very expensive to get patents and I have many tens of thousands of dollars invested in the granting of my various patents. There are also maintenance fees for patents. This year alone, I have spent over $10,000 in maintenance fees and consultations with patent attorneys and advisors.
Mark, I do not want to initiate lawsuits that have the potential to tear the fluorescent community apart. The only people who "win" in a lawsuit are the lawyers. I am asking you to please consider the benefits to the community of encouraging R&D using licenses for the use of my patent(s).
Please respond to me in writing or via e-mail by 10/15/2018.
Sincerely,
Bill Gardner
Here are excerpts from a letter to Rhett Peterson dated 1-6-19
I have US Patent #7781751 Titled "Portable Wavelength Transforming Converter For UV LEDs" issued in August of 2010. The UV LED patent is a continuation in part of a previous patent dealing mostly with phosphor and other wavelength transforming materials (WT). The UV LED patent was written specifically with two main goals;
I would like to offer you an opportunity to license my patents. You have recently started selling battery operated filtered UV LED products and I believe that my UV LED patent can be used to protect us both from other people selling copies of our various products. I will be at the 22nd Street Show at Booth A21 this year and Erik will also be at the 22nd Street Show. I welcome the opportunity to correspond/discuss the idea of you licensing my patents and I hope that we can reach an agreement.
Here is a link to an excellent explanation of how the absorbed light energy converts/transforms into infrared radiation photons - http://elte.prompt.hu/sites/default/files/tananyagok/InfraredAstronomy/ch03s02.html
"A molecular vibration is excited when the molecule absorbs a quantum of energy,"
"the vibrational transitions of molecules result in infrared photons [as in absorption filters - added],"
"Molecular transitions result in emission or absorption of photons: the electronic transitions in UV or optical, vibrational transitions in infrared, rotational transitions in microwave range."
In UV fluorescence of rocks and minerals, the energy of the UV is absorbed by electrons causing them to oscillate between a high energy state and a lower energy state. The electrons emit visible light photons to shed the energy as they drop from a higher energy state to a lower energy state.
Similarly, in an absorption filter, some of the visible light and some of the ultraviolet energy is absorbed by the molecular bonds causing them to oscillate between a higher energy state and a lower state. The molecular bonds emit infrared photons to shed the energy as they drop from a higher energy state to a lower energy state.
People claim that my patent stifles R&D for UV LEDs. If there are people out there who really want to do research and development, then all they need to do is get a license from me to use my various patents - and not just the patent about UV LEDs - any of my patents.
Richard and Bess Shields have a license for using my patent for filtered UV LED flashlights and it is specifically limited to the models of flashlights we were jointly selling under the business name Purple Passion Company.
In conclusion, I would very much appreciate a chance to discuss the possibility of us reaching an agreement for you to license the use of my patents for some of the products you make and sell.
Sincerely,
William Gardner
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Revised: 2022-10-25