S Edward Neister v. Larson Electronics LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: High Energy Ozone LLC d/b/a Far-UV Sterilray and S. Edward Neister (New Hampshire)
  • Defendant: Larson Electronics LLC (Texas)
  • Plaintiff’s Counsel: King & Spalding LLP
• Case Identification: 3:21-cv-01166, N.D. Tex., 03/09/2022
• Venue Allegations: Venue is based on Defendant’s principal place of business being located in the Northern District of Texas and the alleged commission of infringing acts within the district.
• Core Dispute: Plaintiffs allege that Defendant’s far-ultraviolet (far-UV) sanitation lighting products infringe three patents related to methods for using specific UV wavelengths to deactivate microorganisms.
• Technical Context: The technology involves using excimer lamps that produce far-UV light, particularly at a 222 nanometer (nm) wavelength, for disinfection, a field that saw significantly increased market interest following the COVID-19 pandemic.
• Key Procedural History: Plaintiffs allege providing pre-suit notice to Defendant of the asserted patent family in an October 2020 letter. The original complaint was filed in May 2021. This Second Amended Complaint was filed primarily to add the ’951 patent, which issued in February 2022. Subsequent to the filing of this complaint, two of the asserted patents were subject to Inter Partes Review (IPR) proceedings. U.S. Patent No. 8,975,605 underwent IPR2022-00682, resulting in the cancellation of claims 1, 2, 5, and 6. U.S. Patent No. 11,246,951 underwent IPR2023-00695, resulting in the cancellation of claims 1-5 and 7-18. These cancellations bear directly on the viability of the infringement counts for the ’605 and ’951 patents as pleaded.

Case Timeline

Date	Event
2005-01-31	Earliest Priority Date for ’642 and ’951 Patents
2009-01-29	Earliest Priority Date for ’605 Patent
2015-03-10	Issue Date: U.S. Patent No. 8,975,605
2017-07-11	Issue Date: U.S. Patent No. 9,700,642
2020-06-01	Alleged Launch of Accused Products (approx.)
2020-10-01	Plaintiffs sent pre-suit notice letter to Defendant
2021-05-21	Original Complaint filed
2022-02-15	Issue Date: U.S. Patent No. 11,246,951
2022-03-09	Second Amended Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,975,605 - "Method and Apparatus for Producing a High Level of Disinfection in Air and Surfaces"

The Invention Explained

• Problem Addressed: The patent’s background describes prior art germicidal UV lamps (emitting at 254 nm) as having impractically long treatment times (tens to hundreds of seconds) for disinfecting large volumes of air or surfaces (ʼ605 Patent, col. 1:33-41).
• The Patented Solution: The invention proposes a method using a non-coherent light source to generate photons of "at least two single line wavelengths" selected from 222 nm, 254 nm, and 282 nm (ʼ605 Patent, col. 10:1-3). The specification posits that combining wavelengths that target different absorption bands of a microorganism's DNA and proteins can achieve a much faster kill rate—specifically, a ninety percent kill in less than one second (ʼ605 Patent, col. 10:7-10; col. 2:5-12).
• Technical Importance: The technology aimed to dramatically increase the speed and efficacy of UV disinfection by moving from a single-wavelength approach to a multi-wavelength attack on microbial components (ʼ605 Patent, col. 3:1-7).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶ 64). Note: Claims 1, 2, 5, and 6 were subsequently cancelled in an IPR proceeding.
• The essential elements of asserted claim 1 are:
  • A process for destroying or deactivating DNA organic bonds and proteins of microorganisms.
  • Generating photons of at least two single line wavelengths from a non-coherent light source, with the wavelengths being selected from at least two of 222 nm, 254 nm, and 282 nm.
  • Directing the photons to a substance to be disinfected.
  • Exposing the surface to achieve a ninety percent kill of microorganisms in less than one second.

U.S. Patent No. 9,700,642 - "Method and Apparatus for Sterilizing and Disinfecting Air and Surfaces and Protecting a Zone from External Microbial Contamination"

The Invention Explained

• Problem Addressed: The patent identifies a need for disinfection methods that are safe for direct application to living tissue, noting that conventional UV-C light (e.g., 254 nm) is harmful to human skin and eyes (ʼ642 Patent, col. 2:1-15; col. 7:40-47).
• The Patented Solution: The invention claims a process of using specific far-UV wavelengths—222 nm or 282 nm—to destroy the DNA or RNA of microorganisms on human or animal skin (ʼ642 Patent, col. 14:31-39). The specification teaches that these wavelengths are highly absorbed by proteins and do not penetrate the epidermis, making them safer for disinfecting living tissue compared to traditional germicidal wavelengths (ʼ642 Patent, col. 9:39-44).
• Technical Importance: The invention describes a method for in-situ disinfection of living tissue, enabling applications in occupied spaces or for direct medical treatment without the harm associated with conventional UV light (ʼ642 Patent, col. 7:5-10).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶ 87).
• The essential elements of asserted claim 1 are:
  • A process for destroying a DNA or RNA of a microorganism on a substance or surface.
  • Generating photons of at least one wavelength (222 nm or 282 nm) corresponding to a peak adsorption wavelength of DNA or RNA.
  • Directing the photons to the substance or surface to be disinfected to destroy chemical bonds in the microorganism.
  • Wherein the substance or surface to be disinfected is human or animal skin.

U.S. Patent No. 11,246,951 - "Method and Apparatus for Sterilizing and Disinfecting Air and Surfaces and Protecting a Zone from External Microbial Contamination"

Technology Synopsis

This patent, related to the ’642 patent, discloses a method for disinfecting human or animal tissue by generating photons at a 222 nm wavelength (ʼ951 Patent, col. 19:20-30). This wavelength is described as corresponding to a peak absorption of proteins, DNA, or RNA, allowing for the destruction of microorganisms without damaging the underlying tissue (ʼ951 Patent, Abstract).

Asserted Claims

The complaint asserts independent claim 1 (Compl. ¶ 111). Note: Claims 1-5 and 7-18 were subsequently cancelled in an IPR proceeding, leaving only claim 6, which was not asserted in the complaint.

Accused Features

The accused products, which use 222 nm light and are marketed for use in occupied spaces, are alleged to perform the claimed method of disinfecting human or animal tissue (Compl. ¶¶ 115-117).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant's far-UV sanitation products, which are categorized as "Microplasma Boards," "Excimer Lamps," and "Excimer Bulbs," along with the lighting fixtures that incorporate them (Compl. ¶ 47). Specific examples include recessed can lights, handheld sanitizers, and sanitation portals designed for entry/exit points (Compl. ¶¶ 33, 40, 44).

Functionality and Market Context

The accused products are lighting units that employ Krypton-Chloride (KrCl) excimer lamps or microplasma boards to generate far-UV light at a 222 nm wavelength for disinfection (Compl. ¶¶ 28, 30-31). A key feature promoted by Defendant is that the light is "eye and skin safe for humans," which allows the products to be used in occupied areas such as offices, schools, and hospitals without requiring the spaces to be vacated (Compl. ¶¶ 29, 45). The complaint alleges Defendant began selling these products around June 2020 to capitalize on pandemic-driven demand for sanitation technology (Compl. ¶ 27). The complaint includes a photograph of Defendant's "Sanitation Portal" product depicted in a public transit setting to illustrate its use in occupied, high-traffic areas (Compl. ¶ 44).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,975,605 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
generating photons of at least two single line wavelengths from a non-coherent light source selected from the group consisting of at least two wavelengths being of 222 nm, 254 nm, and 282 nm;	Defendant's products use non-coherent KrCl excimer lamps that are alleged to produce a dominant 222 nm peak as well as secondary emission peaks, including one near 257 nm, thus meeting the "at least two" wavelength requirement.	¶¶ 48-49, 65	col. 2:5-12
directing the photons to a substance to be disinfected...	The accused products are lighting fixtures designed to irradiate air and surfaces for the purpose of disinfection.	¶ 66	col. 1:15-18
exposing the surface... [to] achieve[] a ninety percent kill of microorganisms in a time period of less than one second.	On "information and belief," the complaint alleges this is met, citing Defendant's marketing that products "inactivate 99% viruses" and have "no waiting period associated with UV treatment."	¶ 67	col. 4:65-67

Identified Points of Contention (’605 Patent):

• Scope Questions: A central question for the infringement analysis of the now-cancelled claim 1 was whether the spectral output of the accused KrCl lamps, which includes a dominant peak and lower-intensity side emissions, qualifies as "at least two single line wavelengths." The complaint presented a spectral graph from a third-party source to support its allegation that KrCl lamps produce multiple distinct peaks (Compl. ¶ 48). A defense might have argued this constitutes a single primary emission with a spectral tail, not the combination of discrete wavelengths taught by the patent.
• Technical Questions: What evidence supports the claim that the accused products achieve a 90% kill rate in "less than one second"? The complaint’s allegation relies on "information and belief" and inferences from marketing claims, which raises an evidentiary question regarding actual performance versus marketing language (Compl. ¶ 67).

U.S. Patent No. 9,700,642 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
generating photons of at least one wavelength... being at least one of 222 nm and 282 nm;	Defendant's accused products are explicitly marketed as utilizing "far-UV 222 nm light" generated by excimer lamps or microplasma boards.	¶¶ 29, 88	col. 14:34-35
directing the photons to the substance or surface to be disinfected...	The products are lighting fixtures designed to direct UV light into a space to disinfect air and surfaces.	¶ 89	col. 14:36-37
wherein the substance or surface to be disinfected is human or animal skin.	Defendant markets its products as "eye and skin safe for humans" and "recommended for use" in "occupied areas" (e.g., daycares, offices), which the complaint alleges means human skin is an intended or inevitable surface for disinfection.	¶¶ 45, 90	col. 14:38-39

Identified Points of Contention (’642 Patent):

• Scope Questions: Does marketing a product as "skin safe" for use in "occupied areas" satisfy the claim limitation that the disinfected surface is human or animal skin? The dispute may focus on whether the claim requires the deliberate targeting of skin for disinfection, or if incidental exposure in an occupied environment is sufficient to meet the limitation.
• Technical Questions: What is the intended and actual function of the accused products? Defendant argued in pre-suit correspondence that its products were for "upper room air" disinfection, not for directing light at skin (Compl. ¶ 54). The case may turn on evidence of how the products are actually used by customers and whether that use involves the direct, functional disinfection of skin as contemplated by the patent.

V. Key Claim Terms for Construction

Term (from ’605 Patent): "at least two single line wavelengths"

• Context and Importance: For the now-cancelled claims of the ’605 patent, the definition of this term was critical. Infringement depended on whether the emissions from a single KrCl lamp—a primary 222 nm peak with secondary emissions—could meet this requirement.
• Intrinsic Evidence for a Broader Interpretation: The specification discusses the benefits of combining FUV photons with UV-C photons to create a higher level of disinfection, without strictly requiring two separate physical lamps (ʼ605 Patent, col. 1:15-22). The claims do not specify a minimum relative intensity for the second wavelength.
• Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly describes the concept as a "dual-single line lamp" and refers to combining different "chambers" or "sources," which may suggest two intentionally and distinctly generated wavelengths rather than a primary peak with artifacts (ʼ605 Patent, col. 2:6-12; col. 11:65-67).

Term (from ’642 Patent): "wherein the substance or surface to be disinfected is human or animal skin"

• Context and Importance: The viability of the infringement claim for the ’642 patent hinges on the construction of this "wherein" clause. Practitioners may focus on this term because it distinguishes the invention from general-purpose air and surface sanitizers.
• Intrinsic Evidence for a Broader Interpretation: The patent's specification repeatedly emphasizes the safety and efficacy of applying the claimed wavelengths directly to human tissue for disinfection, for example, a doctor disinfecting hands (ʼ642 Patent, col. 9:1-6). This could support a reading that any application where skin is foreseeably disinfected falls within the claim.
• Intrinsic Evidence for a Narrower Interpretation: The language requires that skin is the surface being disinfected, not merely that it is present in the environment. This could support a narrower reading that the process must be one of treating skin itself as the target, such as disinfecting a wound or a specific patch of skin, rather than disinfecting a room that happens to contain people (ʼ642 Patent, col. 8:55-61).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all three asserted patents. The inducement theory is based on Defendant allegedly providing instructions, marketing materials, and product specifications that encourage and guide customers to use the Accused Products in an infringing manner (e.g., in occupied spaces where skin is exposed) (Compl. ¶¶ 74-75, 98).

Willful Infringement

Willfulness is alleged for all three asserted patents. The allegations are predicated on Defendant's alleged pre-suit knowledge via an October 2020 notice letter regarding the patent family, and its continued alleged infringement after the complaint was filed (Compl. ¶¶ 51, 80, 103, 130).

VII. Analyst’s Conclusion: Key Questions for the Case

• A Threshold Procedural Question: The most significant development in this case is the post-complaint cancellation of the asserted claims for two of the three patents-in-suit ('605 and '951) in IPR proceedings. A primary question for the court will be to determine the remaining scope of the case, as the infringement counts for these two patents as pleaded appear to be moot.
• A Core Issue of Definitional Scope: For the remaining ’642 patent, the case will likely turn on a question of claim construction: can a UV disinfection product marketed as "skin-safe" for use in "occupied areas" be found to infringe a claim requiring that "the substance or surface to be disinfected is human or animal skin," or does the claim require a more direct and intentional targeting of skin for disinfection?
• An Evidentiary Question of Intent and Use: Related to the above, a key evidentiary battle will likely concern the intended versus actual use of the accused products. The court will need to weigh evidence from marketing materials, user manuals, and customer practices to determine whether the products are used to perform the specific process of disinfecting human skin, as claimed in the '642 patent.