S Edward Neister v. Eden Park Illumination Inc

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: Eden Park Illumination, Inc. (Delaware / Illinois)
  • Plaintiff’s Counsel: King & Spalding LLP
• Case Identification: 3:22-cv-00425, N.D. Tex., 03/25/2022
• Venue Allegations: Venue is alleged to be proper as Defendant maintains a place of business in the district and has committed alleged acts of infringement there.
• Core Dispute: Plaintiffs allege that Defendant’s far-UVC lamps, which are marketed for disinfection, infringe three patents directed to methods of using specific ultraviolet wavelengths to deactivate microorganisms.
• Technical Context: The technology involves using far-ultraviolet C (far-UVC) light, particularly at the 222 nanometer (nm) wavelength, for germicidal purposes, a field that gained significant commercial interest for its potential to sanitize air and surfaces safely in the presence of humans.
• Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with notice of the asserted patent family in a June 2018 letter. Subsequent to the filing of this complaint, the asserted claims of all three patents-in-suit were cancelled in inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office (U.S. Patent Nos. 8,975,605, 9,700,642, and 11,246,951), a development that presents a fundamental challenge to the continuation of the case. The complaint also notes prior litigation against a third party, Healthe, Inc., which allegedly utilized Defendant's lamps.

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	U.S. Patent No. 8,975,605 Issued
2017-07-11	U.S. Patent No. 9,700,642 Issued
2018-06-19	Plaintiffs send notice letter to Defendant
2022-02-15	U.S. Patent No. 11,246,951 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 conventional germicidal UV (GUV) lamps, which primarily emit 254 nm light, as being impractical for disinfecting large volumes of air or most surfaces because of the long exposure times required to be effective (’605 Patent, col. 1:35-44).
• The Patented Solution: The invention proposes a method that uses a non-coherent light source to generate at least two different "single line" wavelengths of UV light simultaneously. By targeting multiple distinct absorption peaks in the DNA, proteins, and other components of a microorganism (e.g., at 222 nm, 254 nm, and 282 nm), the method aims to achieve a much faster and more effective deactivation compared to using a single wavelength alone (’605 Patent, col. 2:59-67; Abstract).
• Technical Importance: The approach represented a shift from relying on a single germicidal wavelength to a multi-pronged attack on microbial biochemistry, suggesting a path to dramatically reduce disinfection times (’605 Patent, col. 4:65-67).

Key Claims at a Glance

• The complaint asserts independent claim 1.
• Claim 1 requires a process for destroying or deactivating microorganisms with the following essential steps:
  • generating photons of at least two single line wavelengths from a non-coherent light source, with the wavelengths selected from the group of 222 nm, 254 nm, and 282 nm;
  • directing the photons to a substance to be disinfected; and
  • exposing the surface to the photons to achieve a ninety percent kill of microorganisms in a time period of less than one second.
• The complaint does not explicitly reserve the right to assert dependent claims.

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 need for a disinfection method that is safe for direct use on or around humans and animals. Conventional UV light is dangerous, but the patent notes that specific far-UVC wavelengths do not penetrate the outer layers of skin or eyes, presenting an opportunity for safe application (’951 Patent, col. 9:1-9, which contains similar specification text).
• The Patented Solution: The invention claims a process for disinfecting human or animal skin by applying photons of a specific wavelength (222 nm or 282 nm) that corresponds to a peak absorption wavelength of microbial DNA or RNA. This allows for the destruction of pathogens on the skin's surface without harming the underlying living tissue, enabling disinfection in occupied spaces or direct treatment of skin and wounds (’951 Patent, Abstract; col. 9:1-15).
• Technical Importance: This technology proposed a method for continuous and direct sanitization of living tissue, a significant departure from conventional UV systems that require unoccupied spaces for safe operation.

Key Claims at a Glance

• The complaint asserts independent claim 1.
• Claim 1 requires a process for destroying DNA or RNA of a microorganism on a substance or surface with the following essential steps:
  • generating photons of at least one wavelength corresponding to a peak absorption wavelength of DNA or RNA, with the wavelength being at least one of 222 nm and 282 nm;
  • directing the photons to the substance or surface to be disinfected; and
  • wherein the substance or surface to be disinfected is human or animal skin.
• The complaint does not explicitly reserve the right to assert dependent claims.

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: Continuing from the same family as the ’642 patent, this invention discloses a process for disinfecting human or animal tissue. It specifically claims the use of 222 nm wavelength photons, which are described as targeting the peak absorption of microbial proteins, DNA, or RNA, to destroy pathogens on a surface without damaging the underlying tissue (’951 Patent, Abstract; col. 10:1-9).
• Asserted Claims: Independent claim 1 is asserted.
• Accused Features: The complaint alleges that when Defendant's lamps are used in "populated" areas as advertised, they direct 222 nm photons to exposed human skin, thereby practicing the claimed method (Compl. ¶84).

III. The Accused Instrumentality

• Product Identification: The accused products are Defendant Eden Park’s "thin 222 nm UV lamps" (Compl. ¶28).
• Functionality and Market Context: The complaint alleges these are excimer lamps designed to emit far-UVC light for germicidal purposes (Compl. ¶1, 28). They are marketed for use in "populated indoor spaces" and for "public space disinfection," leveraging the advertised safety of the 222 nm wavelength, which is known not to penetrate human skin (Compl. ¶29-30). The complaint provides a graph from Defendant's website titled "Public Space Disinfection: 222 nm Wavelength," which shows the spectral output of the lamps (Compl. ¶33). This graph depicts a prominent emission peak at 222 nm, along with smaller, secondary emission peaks at other wavelengths (Compl. ¶33). The complaint alleges these products became particularly relevant during the COVID-19 pandemic (Compl. ¶28).

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;	Eden Park's lamps are alleged to produce UV light in multiple wavelengths, including 222 nm and 254 nm, as shown in a graph from Defendant's website.	¶44; ¶33	col. 10:2-5
directing the photons to a substance to be disinfected, whereby the photons destroy or deactivate the DNA organic bonds and proteins of microorganisms;	The lamps are marketed for use in a variety of indoor spaces for the purpose of disinfection.	¶45	col. 10:6-9
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.	The complaint makes a conclusory allegation that exposure to the lamps achieves the claimed kill rate and time. It references a scientific study that allegedly shows high inactivation rates, though the cited times are in minutes.	¶46	col. 10:10-13

• Identified Points of Contention:
  • Technical Question: What evidence supports the allegation that the accused lamps achieve a 90% kill rate in "less than one second"? The complaint's primary supporting evidence for efficacy is a scientific study that it alleges reports viral inactivation times of "in ~8 minutes" for 90% kill, which appears to directly contradict the claim's temporal limitation (Compl. ¶46). This creates a significant question of fact regarding whether this critical element is met.
  • Scope Question: Does the spectral output of the accused lamps, as depicted in the complaint's visual evidence (Compl. ¶33), meet the "at least two single line wavelengths" limitation? The court may need to determine whether the smaller, secondary peaks shown in the graph qualify as "single line wavelengths" in the context of the patent, or if they are merely harmonic or side-band emissions from a primary 222 nm source.

’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;	Eden Park's accused lamps are described and marketed as a 222 nm light source.	¶61	col. 14:52-56
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; and	The lamps are marketed for use "in populated indoor spaces" such as factories, restaurants, and planes for disinfection.	¶62	col. 14:57-61
wherein the substance or surface to be disinfected is human or animal skin.	The complaint alleges that when the lamps are used as directed in "populated" areas, they necessarily direct photons to the exposed skin of people present in those areas.	¶63	col. 14:62-64

• Identified Points of Contention:
  • Scope Question: A central question is whether marketing a lamp for general use in a "populated" space is sufficient to satisfy the claim limitation "wherein the substance or surface to be disinfected is human or animal skin." A court may have to decide if this element requires an explicit instruction or intent to disinfect skin, or if incidental exposure in an intended environment is sufficient to constitute direct infringement.

V. Key Claim Terms for Construction

• Term: "a time period of less than one second" (’605 Patent, Claim 1)

  • Context and Importance: This quantitative limitation is a cornerstone of the ’605 Patent's alleged advance over the prior art. Practitioners may focus on this term because the evidence cited in the complaint itself appears to show disinfection times measured in minutes, not sub-seconds (Compl. ¶46), making proof of this element a potential dispositive issue.
  • Intrinsic Evidence for a Broader Interpretation: The patent specification contrasts the invention with prior art requiring "10's to 100's of seconds" and states the invention reduces kill times to "0.1 seconds," suggesting the inventors considered such speeds to be a defining feature of the technology (’605 Patent, col. 4:65-67).
  • Intrinsic Evidence for a Narrower Interpretation: A defendant would likely argue that this is a strict, precise, and absolute limit. The term is unambiguous on its face, and the patent repeatedly emphasizes the speed of the invention as a key point of departure, suggesting the inventors intended it to be a hard boundary that must be proven with direct evidence.

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

  • Context and Importance: Plaintiffs' infringement theory for the ’642 and ’951 patents relies on the inference that use in a "populated" area equates to disinfecting skin. The construction of this "wherein" clause will be critical to determining whether the accused activity falls within the scope of the claim.
  • Intrinsic Evidence for a Broader Interpretation: The specification provides numerous examples of disinfecting living tissue, including a doctor's hands, livestock, and wounds, suggesting the inventors envisioned a wide range of applications on living beings (’951 Patent, col. 9:1-15). This could support an interpretation where any application that results in the disinfection of skin in an intended use environment meets the limitation.
  • Intrinsic Evidence for a Narrower Interpretation: The specific examples in the patent often describe a direct, targeted application to a specific surface (e.g., a wand disinfecting a wound, a light source for a surgeon's hands) (’951 Patent, col. 9:1-4; col. 18:55-60). A defendant could argue this implies the claim requires a specific intent to disinfect the skin itself, rather than incidental exposure in a generally sanitized room.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by providing its lamps along with a website, manuals, and marketing materials that instruct and encourage customers to use the products in an infringing manner, such as in populated spaces where human skin is exposed (Compl. ¶47-48, 64-65). It also alleges contributory infringement, stating the lamps are specially made for this infringing use and are not a staple article of commerce suitable for substantial noninfringing use (Compl. ¶50-51, 67-68).
• Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patents since at least June 2018, when Plaintiffs sent a notice letter. The complaint alleges that despite this notice, Defendant continued its allegedly infringing activities in reckless disregard of Plaintiffs' patent rights (Compl. ¶35, 37, 53).

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

• A foundational issue for the entire case, arising from post-filing events, is one of jurisdictional viability: given that the asserted claims of all three patents-in-suit were cancelled in IPR proceedings after the complaint was filed, what legal or factual basis remains for the infringement claims to proceed?
• A key evidentiary question for the ’605 patent is one of performance verification: can Plaintiffs produce evidence demonstrating the accused lamps achieve a 90% microbial kill rate in "less than one second," as the claim requires, particularly when the complaint's own supporting citation points to inactivation times measured in minutes?
• For the ’642 and ’951 patents, a central legal question will be one of infringing act: does the sale of a disinfection lamp marketed for use in "populated" spaces constitute the claimed process of directing photons to "human or animal skin," or does the claim require a more specific, targeted application to meet the elements of direct infringement?