The Fall of a Patent
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.
Licensing Offer
During the height of COVID-19, Far-UV Sterilray offered Katie Webb a licensing deal to avoid litigation:
- $1 Million Deal: If Quanta X Technology agreed to sell only Far-UV Sterilray branded products.
- $2 Million Deal: If Quanta X Technology wanted to sell their own product, QuantaGuard, using FAR UVC technology.
Webb’s LinkedIn message also pointed to her determination to continue informing the public about FAR UV technology despite the legal threats. She referenced the significant financial and human costs associated with Neister’s actions, expressing relief that the PTAB’s decision ultimately invalidated his patent claims.
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.
The Appeal and Dismissal
Following the PTAB’s decision, S. Edward Neister filed a notice of appeal on December 26, 2023, challenging the PTAB’s findings. However, the appeal faced a significant setback. Neister failed to file the required brief within the time permitted by the Federal Circuit Rules, leading to the dismissal of the appeal on May 7, 2024. This dismissal was final, solidifying the PTAB’s decision and preventing further legal action based on the invalidated patent claims. 24-1317.ORDER.5-7-2024_2314105
Implications of the Decision
The decision to invalidate the ’605 patent has several significant implications:
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.
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.
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.
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.
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.
