S Edward Neister v. Far Uv Technologies

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: Far UV Technologies, et al. (Missouri)
  • Plaintiff’s Counsel: King & Spalding LLP
• Case Identification: 3:22-cv-00280, N.D. Tex., 03/25/2022
• Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because the Defendant is incorporated in Missouri and maintains its principal place of business in the district.
• Core Dispute: Plaintiffs allege that Defendant’s far-ultraviolet (UV) light disinfection products infringe three patents related to methods and apparatuses for using specific UV wavelengths to deactivate microorganisms.
• Technical Context: The technology concerns the use of far-UV light, particularly from excimer lamps emitting at 222 nanometers (nm), for rapid and safe sanitization of air and surfaces, a market that gained prominence during the COVID-19 pandemic.
• Key Procedural History: The complaint alleges that Defendant had pre-suit notice of the patents as early as June 2018 through a trade show interaction, licensing discussions involving a future employee, and a formal notice letter. The complaint also notes a parallel lawsuit by Plaintiffs against Healthe, Inc. involving the same patents. Subsequent to the filing of this complaint, the asserted independent claims of two patents-in-suit (Claim 1 of the '605 patent and Claim 1 of the '951 patent) were cancelled in inter partes review (IPR) proceedings.

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	’605 Patent Issued
2016-01-01	Defendant Far UV Founded (approx.)
2017-07-11	’642 Patent Issued
2018-03-01	Licensing discussions with Defendant's future VP (approx.)
2018-06-13	Plaintiff and Defendant's CEO meet at APIC Show
2018-06-19	Plaintiff's counsel sends notice letter to Defendant
2018-12-13	Application for ’951 Patent Published
2022-02-15	’951 Patent Issued
2022-03-25	Complaint Filing Date

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

(Issued March 10, 2015)

The Invention Explained

• Problem Addressed: The patent describes prior art germicidal UV lamps (typically mercury-based, emitting at 254 nm) as being impractical for many applications due to the long exposure times—tens to hundreds of seconds—required to kill microorganisms (’605 Patent, col. 1:23-41).
• The Patented Solution: The invention proposes a process using a non-coherent light source (such as an excimer lamp) to generate photons of at least two distinct "single line" wavelengths that are specifically chosen to match different absorption peaks of a microorganism's DNA and proteins (e.g., 222 nm, 254 nm, and 282 nm) (’605 Patent, claim 1). By targeting multiple absorption bands simultaneously, the process claims to achieve a very high kill rate (90%) in less than one second, a significant speed improvement over the prior art (’605 Patent, col. 4:65-67).
• Technical Importance: The claimed multi-wavelength approach represented a method to dramatically reduce disinfection times, making UV technology viable for rapid, point-of-use applications on surfaces and in high-volume air streams (’605 Patent, col. 2:10-18).

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of "one or more claims" (Compl. ¶44-45).
• Essential elements of independent claim 1 include:
  • 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, selected from a group including 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

(Issued July 11, 2017)

The Invention Explained

• Problem Addressed: The patent addresses the challenge of disinfecting surfaces in a way that is not only effective against microorganisms but also safe for direct application to living tissue, a limitation of conventional UV-C light which is harmful to human and animal skin (’642 Patent, col. 2:3-10).
• The Patented Solution: The invention claims a process of using photons of at least one specific wavelength (222 nm or 282 nm) that corresponds to a peak adsorption wavelength of DNA or RNA to disinfect a target (’642 Patent, claim 1). Critically, the process is specified for use "wherein the substance or surface to be disinfected is human or animal skin," leveraging the property that these far-UV wavelengths do not penetrate the outer layers of skin and are therefore safer for use in occupied spaces or for direct treatment (’642 Patent, col. 9:1-12).
• Technical Importance: The technology enabled the use of UV disinfection in environments with human presence and for direct therapeutic or preventative applications on skin, which was not feasible with prior art UV systems (’642 Patent, col. 8:45-54).

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of "one or more claims" (Compl. ¶73-74).
• Essential elements of independent claim 1 include:
  • A process for destroying DNA or RNA of a microorganism on a substance or surface.
  • Generating photons of at least one wavelength (at least one of 222 nm and 282 nm) corresponding to a peak adsorption wavelength of DNA or RNA.
  • Directing the photons to the substance or surface.
  • 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

(Issued February 15, 2022)

Technology Synopsis

This patent, a continuation-in-part of the application that led to the ’642 patent, claims a similar process for disinfecting living tissue. The asserted claim recites a process for destroying proteins, DNA, or RNA of a microorganism on human or animal tissue by generating and directing photons with a wavelength of 222 nm (’951 Patent, claim 1). The key inventive concept, like that of the ’642 patent, is the use of a specific, skin-safe UV wavelength for direct disinfection of living tissue (Compl. ¶106).

Asserted Claims

The complaint asserts independent claim 1 and alleges infringement of "one or more claims" (Compl. ¶105-106).

Accused Features

The complaint alleges that Defendant’s products, which use 222 nm light and are marketed for use in occupied areas, are used to disinfect human tissue when operated as directed (Compl. ¶107-109).

III. The Accused Instrumentality

Product Identification

The complaint identifies the Krypton Shield, Krypton-11, Krypton-36, Krypton-M, and Krypton-PLUS products (collectively, the "Accused Products") (Compl. ¶33).

Functionality and Market Context

• The Accused Products are described as sanitization equipment, including portable floor lamps, handheld wands, and other disinfection lights, that utilize far-UV light for disinfection (Compl. ¶28-32).
• Technically, the products are alleged to use "222nm Wavelength (Far UV)" light sources to achieve disinfection of air and surfaces (Compl. ¶28-32). The complaint alleges, on information and belief, that these products incorporate far-UV lamps sourced from a third party, Eden Park Illumination (Compl. ¶33).
• The complaint highlights marketing claims that the products are "safe for human exposure" and can be used to sanitize "while space is occupied," yielding "over 3 log+ (99.9%) disinfection" (Compl. ¶28, ¶29).

IV. Analysis of Infringement Allegations

’605 Patent 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;	On information and belief, the Accused Products use lamps from Eden Park Illumination which produce UV light in multiple wavelengths, including a primary peak at 222 nm and other secondary peaks. A graph from Eden Park's website shows multiple UV wavelength peaks.	¶34, ¶46	col. 2:60-67
directing the photons to a substance to be disinfected, whereby the photons destroy or deactivate the DNA organic bonds and proteins of microorganisms;	The Accused Products are marketed for the purpose of disinfecting substances, such as surfaces in "most occupied and high-traffic areas."	¶47	col. 4:47-52
exposing the surface to be disinfected to the generated photons of at least two wavelengths, wherein the exposing achieves a ninety percent kill of microorganisms in a time period of less than one second.	On information and belief, exposure to light from the products achieves the claimed kill rate and time. Defendant markets the products as achieving "over 3 log (99.9%) cumulative disinfection."	¶48	col. 4:65-67

• Identified Points of Contention:
  • Scope Questions: A central question is whether the spectral output of the accused lamps, as depicted in the complaint, meets the "at least two single line wavelengths" limitation. The provided graph shows a dominant 222 nm peak and other, much lower-intensity emissions. The court may need to determine if these secondary emissions qualify as a "single line wavelength" under the patent's definition or if they are merely broadband noise. The visual evidence presented shows a graph from Eden Park's website with a dominant peak labeled "1" at 222 nm and two smaller, broader peaks labeled "2" and "3" at higher wavelengths (Compl. ¶34).
  • Technical Questions: The allegation that the accused products achieve a "ninety percent kill... in a time period of less than one second" is pleaded on "information and belief" (Compl. ¶48). This raises the question of what factual evidence Plaintiff will produce to substantiate this specific performance limitation, as the marketing materials cited do not specify a time frame.

’642 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
generating photons of at least one wavelength corresponding to a peak adsorption wavelength of DNA or RNA, the at least one wavelength being at least one of 222 nm and 282 nm;	The Accused Products are described and marketed as using a "222 nm light source."	¶75	col. 3:55-65
directing the photons to the substance or surface to be disinfected, whereby the photons are selected to destroy a plurality of chemical bonds within the DNA or RNA of the microorganisms;	The Accused Products are marketed for use in disinfecting occupied and high-traffic areas.	¶76	col. 4:16-23
wherein the substance or surface to be disinfected is human or animal skin.	When used as directed in "occupied" areas, the Accused Products allegedly direct photons used for disinfection to exposed human skin. This is inferred from marketing the products as safe for use in occupied spaces.	¶77, ¶86	col. 9:1-4

• Identified Points of Contention:
  • Scope Questions: The infringement theory hinges on the "human or animal skin" limitation. The complaint infers that use in an "occupied" space necessarily results in the disinfection of human skin. A likely point of contention will be whether this limitation requires the intended target of disinfection to be skin, or if incidental exposure of occupants in a room being sanitized is sufficient to meet the claim.

V. Key Claim Terms for Construction

"at least two single line wavelengths" (’605 Patent, claim 1)

• Context and Importance: This term is critical to the infringement analysis for the ’605 Patent. The Plaintiff's case relies on the allegation that the accused lamps produce more than just the 222 nm peak. The definition of "single line wavelength" will determine if the secondary, lower-intensity emissions shown in the complaint's visual evidence (Compl. ¶34) can be counted toward meeting this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification discusses emitters that produce "single line or narrow spectral emission" (’951 Patent, col. 2:29-32), which could suggest that a narrow band of wavelengths, not just a purely monochromatic line, falls within the scope.
  • Evidence for a Narrower Interpretation: The claim uses the precise term "single line," which is distinct from "narrow band." A defendant may argue this requires two discrete, sharp, and intentionally generated spectral lines, rather than one primary line and residual broadband emissions.

"wherein the substance or surface to be disinfected is human or animal skin" (’642 Patent, claim 1)

• Context and Importance: This "wherein" clause is the key distinguishing feature of the ’642 patent's asserted claim. The infringement case depends on whether the accused products, marketed for general room sanitization, are considered to perform this claimed step.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff could argue that any process that directs the photons toward a space known to be occupied, resulting in the disinfection of skin, meets the limitation, regardless of whether skin is the primary target.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of skin-focused applications, such as a doctor disinfecting hands, treating wounds, or treating eye infections (’951 Patent, col. 9:1-12, col. 10:42-57). This may support an interpretation that the process must be one where human or animal skin is the intended object of disinfection.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement, stating that Defendant provides "manuals, training, guides, marketing material, and/or demonstrations" that encourage customers to use the Accused Products in a manner that directly infringes the patents (Compl. ¶61-62, ¶90-91). Contributory infringement is also alleged on the basis that the products are specially made for an infringing use and are not staple articles of commerce (Compl. ¶64-65, ¶93-94).

Willful Infringement

The complaint makes specific allegations to support willfulness, claiming Defendant had pre-suit knowledge of the patents since at least June 2018. This is based on an alleged in-person meeting between company representatives at a trade show and a subsequent notice letter from Plaintiff's counsel (Compl. ¶35, ¶37).

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

This case presents several critical questions for the court, significantly impacted by the post-filing cancellation of the primary asserted claims of the '605 and '951 patents.

• A primary issue will be one of procedural consequence: given that the asserted independent claims of the ’605 and ’951 patents have been cancelled via IPR, the viability of those infringement counts is in serious doubt. The litigation will likely focus on the remaining ’642 patent and any other asserted valid claims.
• A key question of claim scope will be central to the ’642 patent: can the limitation "wherein the substance or surface to be disinfected is human or animal skin" be met by marketing a product for use in "occupied spaces," or does it require a more specific targeting of skin as the object of disinfection?
• A dispositive technical question for the now-cancelled ’605 patent claim was whether the accused lamps, with one dominant spectral peak and lower-level emissions, could be found to generate the "at least two single line wavelengths" required by the claim.