PTAB

IPR2023-00695

Eden Park Illumination Inc v. Neister S Edward

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1. Case Identification

2. Patent Overview

  • Title: METHOD AND APPARATUS FOR STERILIZING AND DISINFECTING AIR AND SURFACES AND PROTECTING A ZONE FROM EXTERNAL MICROBIAL CONTAMINATION
  • Brief Description: The ’951 patent is directed to methods and apparatuses for disinfecting and sterilizing substances and surfaces, including human or animal tissue, using ultraviolet (UV) light. The disclosed technology centers on using UV-emitting lamps based on excimer excitation, with a preferred embodiment that emits a narrow wavelength band of photons at 222 nm to destroy the DNA or RNA of microorganisms.

3. Grounds for Unpatentability

Ground 1: Obviousness over Eckhardt and Sosnin - Claims 1-5 and 7-18 are obvious over Eckhardt in view of Sosnin and the knowledge of a POSITA.

  • Prior Art Relied Upon: Eckhardt (Application # 2003/0031586) and Sosnin (a May 2004 SPIE publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Eckhardt and Sosnin discloses all limitations of the challenged claims. Eckhardt taught a method for disinfecting a region of human tissue, including bare skin and wounds, using "any light source that emits light capable of sterilization or disinfection," including sources that emit narrow-spectrum UVC light in a range of 220 to 310 nm. Sosnin taught the specific use of a krypton chloride (KrCl) excimer lamp that generates photons at a narrow-band wavelength of 222 nm, and demonstrated its high efficacy for sterilizing surfaces by inactivating bacteria such as E. coli and S. aureus. Petitioner contended that applying Sosnin's specific and effective 222 nm light source to Eckhardt's general method of disinfecting human skin renders the process of independent claim 1 obvious. The combination was also argued to teach the limitations of the dependent claims, such as disinfecting a wound (Eckhardt), targeting bacteria (Sosnin), applying a specific dose (Eckhardt, Sosnin), and using a hand-held wand (Eckhardt).
    • Motivation to Combine: Petitioner asserted three primary motivations for a person of ordinary skill in the art (POSITA) to combine the references. First, Eckhardt’s broad teaching of using "any light source" capable of disinfection, and its specific suggestion of using "narrow spectrum light," would have directly motivated a POSITA to seek out known and effective narrow-band UV germicidal sources like the 222 nm excimer lamp taught by Sosnin. Second, the combination would have been a predictable implementation of known elements, as Sosnin’s 222 nm wavelength falls squarely within the germicidal UVC range expressly suggested by Eckhardt (220-310 nm). Third, a POSITA would have been motivated to use 222 nm light on skin because the art established its effectiveness for disinfection and its relative safety due to the low penetration depth of short-wavelength UVC light in human tissue.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining Eckhardt and Sosnin to disinfect human tissue. Sosnin demonstrated that 222 nm excimer lamps were highly effective, achieving 99.9% inactivation of E. coli bacteria. Further, multiple publications available at the time, including reports from the National Institute for Occupational Safety and Health (NIOSH) and the World Health Organization (WHO), indicated that UVC light exposure on skin, particularly at shorter wavelengths, was considered safe at levels sufficient for disinfection. The known germicidal properties and established safety profile would have provided a clear expectation that the combined method would work for its intended purpose.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d) because the arguments presented in the petition are not the same as, or substantially the same as, arguments previously presented to the USPTO. Although Eckhardt and Sosnin were cited in an Information Disclosure Statement (IDS) during prosecution, they were never substantively applied in a rejection or identified as having been overcome for allowance. Petitioner asserted the Examiner made material errors by failing to consider the non-antedatable status of the Eckhardt publication and by overlooking its key teachings regarding skin disinfection.
  • Petitioner also argued against discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. Petitioner contended that the parallel district court litigations have been stayed pending the outcome of other IPRs, meaning there is no scheduled trial date and the investment in the court proceedings has been minimal. Given the early stage of the litigation and the compelling merits of the obviousness ground, Petitioner argued that the Fintiv factors weigh strongly in favor of institution.

5. Relief Requested

  • Petitioner requests that the Board institute an inter partes review of claims 1-5 and 7-18 of the ’951 patent and issue a Final Written Decision cancelling those claims as unpatentable under 35 U.S.C. §103.