PTAB

IPR2022-00682

Eden Park Illumination Inc v. Neister S Edward

Log In

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Producing a High Level of Disinfection in Air and Surfaces
  • Brief Description: The ’605 patent describes a method for disinfecting substances, surfaces, and air using a non-coherent, multi-wavelength ultraviolet (UV) light source. The invention purports to be more effective than prior art mercury-based lamps by emitting at least two narrow wavelength bands that correspond to the maximum absorption bands of microorganism DNA and proteins.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brown-Skrobot and Clauss - Claims 1-2 are obvious over Brown-Skrobot in view of Clauss.

  • Prior Art Relied Upon: Brown-Skrobot (Application # 2005/0079096) and Clauss (a December 2005 journal article titled "Photoreactivation of Escherichia coli...").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Brown-Skrobot and Clauss teaches all limitations of claims 1 and 2. Brown-Skrobot taught a method for sterilization using one or more monochromatic UV radiation sources to provide increased levels of sterility, expressly suggesting sources in the 220-320 nm range, including KrCl excimer lamps (~222 nm). Clauss taught a direct comparison of a 222 nm KrCl excimer lamp and a conventional 254 nm low-pressure mercury lamp for germicidal use. Petitioner contended the combination of these non-coherent lamp sources meets the claim limitation of generating photons from at least two single line wavelengths selected from the claimed group (222 nm and 254 nm). The limitation of achieving a ninety percent kill in less than one second was argued to be obvious, as Clauss provided experimental data showing a 90% kill of Yersinia enterolytica at a UV dose of ~20 J/m². At the irradiance disclosed in Clauss, this would take approximately 0.95 seconds. Petitioner asserted a POSITA would have known to achieve this result by simply increasing the UV intensity, for example, by moving the lamp closer to the target surface.
    • Motivation to Combine: Petitioner provided several motivations for a person of ordinary skill in the art (POSITA) to combine the references. First, Brown-Skrobot’s explicit teaching to use multiple monochromatic sources to increase sterility would motivate a POSITA to seek other known germicidal sources, such as the 254 nm mercury lamp studied in Clauss. Second, the combination was presented as a simple application of known methods to yield a predictable result. Finally, a POSITA would combine the sources to achieve the known synergistic germicidal effect of using both 222 nm and 254 nm wavelengths, which overcomes the "photoreactivation" repair mechanism in bacteria that can limit the effectiveness of 254 nm radiation alone.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because both 222 nm and 254 nm wavelengths were well-known to be effective for disinfection. Combining them would predictably result in enhanced sterilization by targeting different cellular components (proteins and DNA, respectively).

Ground 2: Obviousness over Brown-Skrobot, Clauss, and Liang - Claims 5-6 are obvious over Brown-Skrobot, Clauss, and Liang.

  • Prior Art Relied Upon: Brown-Skrobot (Application # 2005/0079096), Clauss (a December 2005 journal article), and Liang (Application # 2005/0163648).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Brown-Skrobot and Clauss, adding Liang to address the limitations of claims 5 and 6 related to disinfecting an air stream. Liang disclosed an "air sterilizing method and apparatus" that used high-intensity UV radiation (~254 nm) to destroy microorganisms in large volumes of air, including in a single pass. Petitioner argued that claim 5 was met by incorporating the superior dual-wavelength (222 nm and 254 nm) disinfection method from the Brown-Skrobot/Clauss combination into Liang's air sterilization system. Claim 6, requiring determining the required activity time and achieving disinfection in a single pass, was allegedly rendered obvious by Liang’s teaching of a formula (UV power x exposure time > death value) to calculate the required UV dosage and its disclosure of a system designed to kill all microorganisms passing through the chamber.
    • Motivation to Combine: Petitioner argued a POSITA would combine the teachings to improve the efficacy of Liang’s air sterilizer. Liang’s primary goal was to achieve a maximum kill rate (higher than 99.999%), criticizing prior art for being insufficient. A POSITA, aware of the enhanced sterilization effects of the Brown-Skrobot/Clauss combination (e.g., overcoming photoreactivation), would be motivated to apply this superior method to Liang’s device to better achieve its stated objective of maximum sterility in an air stream.
    • Expectation of Success: There would be a high expectation of success in applying a known, more effective surface disinfection technique to the air sterilization application taught by Liang, as it represented a predictable improvement to an existing system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors. The core arguments were that the parallel district court litigations were in very early stages, with minimal investment by the parties and no trial date set. Petitioner contended that institution would advance judicial efficiency by increasing the likelihood of a stay and narrowing the issues for trial. Furthermore, Petitioner asserted there would be no overlap in issues, as it would stipulate not to pursue in district court any invalidity grounds on which IPR is instituted.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and a final written decision canceling claims 1-2 and 5-6 of the ’605 patent as unpatentable under 35 U.S.C. §103.