The Fall of a Patent: S. Edward Neister Loses Case on FAR UVC Disinfection Technology

In the ever-evolving world of technology and intellectual property, the patent landscape is constantly being shaped and reshaped by legal battles and innovative breakthroughs. One recent case that has captured the attention of the tech community is the inter partes review (IPR) of U.S. Patent No. 8,975,605 B2, owned by S. Edward Neister. This patent, titled “Method and Apparatus for Producing a High Level of Disinfection in Air and Surfaces,” has been challenged and ultimately found unpatentable by the Patent Trial and Appeal Board (PTAB). Here’s a closer look at the details of this case and its implications.

Threats Against Quanta X Technology During the Pandemic

During the COVID-19 pandemic, Quanta X Technology, led by CEO Katie Webb, faced legal threats from High Energy Ozone LLC (dba Far-UV Sterilray) for using Far UVC light technology. On November 24, 2021, Michael J. Olsen, Chief Marketing Officer of Far-UV Sterilray, sent a notice to Quanta X Technology asserting that their products potentially infringed on patents owned by S. Edward Neister. The letter proposed a supply agreement or licensing deal to avoid litigation, emphasizing the company’s intent to protect its patent rights and market position.  Read Threats Against Quanta X Technology For Offering Far UVC Lights During Pandemic To Save Lives

Katie Webb’s Response:

Katie Webb highlighted concerns about inequitable conduct, First Amendment rights, and anti-competitive practices:

• Inequitable Conduct: Allegations that Far-UV Sterilray withheld critical prior art from the USPTO, particularly concerning 222nm Peak KrCl Excilamps demonstrated in 2003.
• First Amendment: Advocacy for the right to advertise Far UV technology as a pandemic countermeasure without legal threats.
• Anti-SLAPP and FDUTPA: Emphasis on defending against strategic lawsuits aimed at stifling free speech and fair competition.

Webb encouraged the far UV industry to unite against what she describes as bullying and deceitful practices by continuing to advertise and innovate, despite legal threats.

The Patent in Question

The ’605 patent, issued on March 10, 2015, describes a method for sterilizing and disinfecting air using ultraviolet (UV) light. The technology aimed to enhance the disinfection process by combining different UV wavelengths, specifically Far UV and UV-C photons, to achieve a higher level of microorganism deactivation. This multi-wavelength approach promised to be more effective than traditional methods using single UV wavelengths.

The Challenge

The petitioners, Eden Park Illumination, Inc., Larson Electronics LLC, and Far UV Technologies, Inc., challenged the patent, arguing that the claims were unpatentable based on prior art. The petitioners filed an inter partes review (IPR2022-00682) requesting the review of claims 1, 2, 5, and 6 of the ’605 patent. They cited prior works by Brown-Skrobot and Clauß, which discussed similar methods of using UV light for disinfection, arguing that Neister’s claims were obvious in light of these references.

The Proceedings

The PTAB instituted the inter partes review and conducted a thorough examination of the evidence presented by both parties. Neister, the patent owner, filed responses and sur-replies defending the novelty and non-obviousness of his patent claims. The petitioners, on the other hand, provided compelling arguments and evidence to support their case.

The Decision

On October 24, 2023, the PTAB issued its final written decision, concluding that the petitioners had demonstrated by a preponderance of the evidence that the challenged claims were unpatentable. The board determined that the combination of prior art references cited by the petitioners rendered Neister’s claims obvious.

Implications of the Decision

The decision to invalidate the ’605 patent has several significant implications:

1. Impact on UV Disinfection Technology: The invalidation of Neister’s patent opens up the field for other companies to develop and market similar UV disinfection technologies without the fear of infringing on his patent. This could potentially lead to more innovation and advancements in this area.
2. Strengthening of Prior Art: The case highlights the importance of thorough prior art research during the patent application process. The PTAB’s reliance on existing literature and patents to determine obviousness reinforces the need for patent applicants to ensure that their inventions are truly novel and non-obvious.
3. Legal Precedents: This decision adds to the body of legal precedents concerning the evaluation of obviousness in patent claims. It serves as a reminder to inventors and companies about the challenges of securing and defending patents in a highly competitive and innovative environment.
4. Encouraging Open Competition: By invalidating a patent that was deemed to cover obvious technology, the decision encourages open competition and prevents the monopolization of fundamental technological concepts. This can be beneficial for consumers and the industry as a whole, fostering a more dynamic market.

Ultraviolet (UV) lighting, hailed for its germicidal properties, is at the center of a heated legal dispute involving prominent UV lighting companies and Dr. S. Edward Neister, backed by High Energy Ozone LLC d/b/a Far-UV Sterilray. As these entities battle over patent rights, the key question emerges: Who truly holds the rightful claim to certain UV technologies?

Case Overview

Ultraviolet (UV) lighting, known for its effectiveness in sterilization and disinfection, became crucial during the COVID-19 pandemic. However, the technology’s potential to save lives was mired in a legal battle over patent rights. At the heart of this dispute are Dr. S. Edward Neister and High Energy Ozone LLC (doing business as Far-UV Sterilray) on one side, and a group of UV lighting companies on the other.

1. The Main Players

• Dr. S. Edward Neister & High Energy Ozone LLC d/b/a Far-UV Sterilray: Defend the legitimacy of U.S. Patent Nos. 8,975,605 and 9,700,642, which revolve around methods of UV sterilization.
• Quartet of UV Lighting Companies: Eden Park Illumination, Inc., Larson Electronics LLC, Far UV Technologies, Inc., and Ushio America, Inc. These companies challenge the validity of the patents held by Neister.

2. Crux of the Dispute

The core of the disagreement lies in the legitimacy of Neister’s patent claims, particularly concerning the process for destroying the DNA or RNA of microorganisms on a substance or surface. The UV companies argue that Neister’s evidence, including a report, a single lab notebook page, and undated photos, does not convincingly support his claims, deeming the patents erroneous and obvious in light of prior art.

3. Historical Precedence and UV Technology

Expert opinions play a pivotal role in this legal tussle:

• Oliver R. Lawal, UV lighting expert and CEO of AquiSense Technologies, Inc., asserted that germicidal ultraviolet sterilization is not a new concept, with literature on UV disinfection dating back to the 1930s.
• Jacob R. Munford, an information specialist, supported Lawal’s claim by providing historical professional literature, further complicating the patents’ originality claims.

4. The Legal Front

The legal proceedings have expanded across multiple avenues:

• Fish & Richardson P.C.: Lawyers for the UV companies argue for invalidating Neister’s patents.
• King & Spaulding LLP: Represents Dr. Neister and Far-UV Sterilray, defending the patents’ legitimacy.
• U.S. District Court for the Northern District of Texas: In parallel litigation, Larson advised Judge Barbara M.G. Lynn about the ongoing patent reviews. To avoid conflicting judgments, Judge Lynn has temporarily halted the Texas case.

5. Recent Developments

On October 24, 2023, a pivotal decision was made by the Patent Trial and Appeal Board (PTAB). The PTAB found that Eden Park Illumination, Inc., Larson Electronics LLC, and Far UV Technologies, Inc., demonstrated by a preponderance of evidence that the challenged claims of U.S. Patent No. 8,975,605 were unpatentable. This decision marks a significant setback for Neister and Far-UV Sterilray.

Implications of the Decision

The invalidation of Neister’s patent has far-reaching implications:

• Impact on UV Disinfection Technology: The decision opens the field for other companies to develop and market similar UV disinfection technologies without fear of infringing on Neister’s patent. This could lead to more innovation and advancements in UV disinfection.
• Strengthening of Prior Art: The case underscores the importance of thorough prior art research during the patent application process. The PTAB’s reliance on existing literature to determine obviousness reinforces the need for patent applicants to ensure their inventions are truly novel and non-obvious.
• Encouraging Open Competition: By invalidating a patent deemed to cover obvious technology, the decision encourages open competition and prevents the monopolization of fundamental technological concepts. This benefits consumers and the industry by fostering a more dynamic market.
• Public Health and Safety: The decision removes a significant barrier to the widespread use of FAR UV technology, which could have been critical in combating the spread of COVID-19. Companies can now freely develop and deploy these technologies, potentially saving lives by reducing the transmission of infectious diseases.

Recovering Damages from the Threat of Legal Action

For companies that were deterred by the legal threat posed by Neister’s patents, there are steps they can take to recover damages:

• Legal Recourse: Companies may seek legal recourse to claim damages if they can prove that the threat of litigation prevented them from using FAR UV technology.
• Licensing Opportunities: With the patents invalidated, companies can now freely innovate and may explore licensing agreements with other patent holders or develop their own proprietary technologies.
• Market Expansion: Businesses can focus on expanding their market presence and developing new products without the fear of patent infringement, thus recouping potential losses through increased sales and market share.

Conclusion

The case of S. Edward Neister and his ‘605 patent serves as a poignant example of the complexities involved in patent law and the rigorous scrutiny that patents undergo in the face of legal challenges. While Neister’s loss might seem like a setback, it underscores the resilience of the patent system in ensuring that only truly novel and non-obvious inventions are granted protection. As the field of UV disinfection continues to evolve, we can expect more innovations and legal battles that will shape the future of this critical technology.

ptab-filings_IPR2022-00682_33

The document you provided is a Notice of Appeal filed by S. Edward Neister in response to the final written decision issued by the Patent Trial and Appeal Board (PTAB) on October 24, 2023, which determined that the claims of U.S. Patent No. 8,975,605 B2 were unpatentable.

Key points from the document:

• Patent Owner: S. Edward Neister.
• Petitioners: Eden Park Illumination, Inc., Larson Electronics LLC, Far UV Technologies, and Ushio America, Inc.
• Case Information: The notice pertains to case IPR2022-00682 concerning U.S. Patent No. 8,975,605.
• Appeal Filed: The appeal was filed on December 26, 2023, within the 63-day window allowed for filing appeals after the PTAB’s final decision.
• Issues on Appeal: The appeal will address the PTAB’s determination that the claims were unpatentable and the Board’s rulings on claim construction.

Implications of the Appeal

The appeal means that the PTAB’s decision is not yet final, and the case will be reviewed by the Federal Circuit. During this period, Neister retains the ability to potentially influence the outcome depending on the appeal’s decision. This appeal process could delay any final resolution regarding the patent’s status and Neister’s ability to sue for infringement based on this patent.

While the PTAB’s decision on October 24, 2023, initially invalidated the patent claims, the filing of the appeal means the legal status of the patent is still in flux. Until the Federal Circuit makes a final decision, Neister retains the right to challenge the invalidation of his patent claims. As a result, companies should stay updated on the appeal’s outcome to understand fully when and if Neister can no longer sue over selling FAR UVC lights.

24-1317.ORDER.5-7-2024_2314105

The document is an order from the United States Court of Appeals for the Federal Circuit regarding the appeal case of S. Edward Neister v. Eden Park Illumination, Inc., Larson Electronics LLC, and Far UV Technologies, Inc., case number 2024-1317. Here are the key points:

1. Nonprecedential Order: The order is nonprecedential, meaning it is not intended to be used as a precedent in future cases.
2. Parties Involved:
   • Appellant: S. Edward Neister
   • Appellees: Eden Park Illumination, Inc., Larson Electronics LLC, Far UV Technologies, Inc.
3. Origin of the Appeal: The appeal was filed from a decision by the Patent Trial and Appeal Board (PTAB) in case number IPR2022-00682.
4. Order Content:
   • The appellant, S. Edward Neister, failed to file the required brief within the time permitted by the Federal Circuit Rules.
   • As a result, the court has dismissed the notice of appeal for failure to prosecute in accordance with the rules.
   • The dismissal is final and issued as a mandate on May 7, 2024.

Implications of the Order

The dismissal of Neister’s appeal means that the PTAB’s final written decision, which found the claims of U.S. Patent No. 8,975,605 B2 unpatentable, stands unchallenged. This dismissal effectively ends Neister’s legal recourse through the appeal process in this particular case, solidifying the PTAB’s decision and preventing further legal action based on the invalidated patent claims.

Conclusion

As of May 7, 2024, S. Edward Neister can no longer sue over the selling of FAR UV-C lights based on the invalidated claims of U.S. Patent No. 8,975,605 B2. This dismissal brings closure to the patent dispute, allowing other companies to use and develop FAR UV technology without the threat of litigation from Neister on the basis of this patent.