Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date: October 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EDEN PARK ILLUMINATION, INC.,
`LARSON ELECTRONICS LLC, and FAR UV TECHNOLOGIES, INC.,
`Petitioner,
`v.
`S. EDWARD NEISTER,
`Patent Owner.
`
`IPR2022-00682
`Patent 8,975,605 B2
`
`
`
`
`
`
`
`
`
`Before, JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and
`JULIA HEANEY, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Date: October 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EDEN PARK ILLUMINATION, INC.,
`LARSON ELECTRONICS LLC, and FAR UV TECHNOLOGIES, INC.,
`Petitioner,
`v.
`S. EDWARD NEISTER,
`Patent Owner.
`
`IPR2022-00682
`Patent 8,975,605 B2
`
`
`
`
`
`
`
`
`
`Before, JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and
`JULIA HEANEY, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2022-00682
`Patent 8,975,605 B2
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`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Eden Park Illumination, Inc., Larson Electronics LLC, and Far UV
`Technologies, Inc. (collectively, “Petitioner”) filed a Petition (Paper 4,
`“Pet.”) requesting an inter partes review of claims 1, 2, 5, and 6 (“the
`challenged claims”) of U.S. Patent No. 8,975,605 B2 (Ex. 1001, “the ’605
`patent”). S. Edward Neister (“Patent Owner”) filed a Preliminary Response.
`Paper 9 (“Prelim. Resp.”). We instituted an inter partes review. Paper 10
`(“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 20, “PO Resp.”), Petitioner filed a Reply (Paper 21, “Pet. Reply”),
`Patent Owner filed a Sur-reply (Paper 22, “PO Sur-reply”), and Petitioner
`filed a Sur-sur-reply (Paper 28, “PET Sur-sur-reply”).1 We held an oral
`hearing on August 9, 2023, and a transcript is in the record. Paper 31
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We determine that
`Petitioner has shown by a preponderance of the evidence that the challenged
`claims of the ’605 Patent are unpatentable.
`Related Proceedings
`B.
`The parties identify the following as related proceedings: (1) Healthe,
`Inc. v. High Energy Ozone LLC, No. 6:20-cv-02233 (M.D. Fla.); (2) High
`Energy Ozone LLC v. Larson Electronics LLC, No. 3:21-cv-01166 (N.D.
`
`
`1 Petitioner’s unopposed motion for leave to file a Sur-sur-reply and
`Exhibit 1042 as supplemental information pursuant to 37 C.F.R. § 42.123(b)
`is granted for the reasons given by Petitioner. Paper 27.
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`Tex.); (3) High Energy Ozone LLC v Eden Park Illumination, Inc.,
`No. 1:21-cv-02753 (N.D. Ill.) (administratively closed); (4) High Energy
`Ozone LLC v Eden Park Illumination, Inc., No. 3:22-cv-00425 (N.D. Tex.);
`(5) High Energy Ozone LLC v. Far UV Technologies, No. 4:21-cv-00345
`(W.D. Miss) (administratively closed); and (6) High Energy Ozone LLC v.
`Far UV Technologies, No. 3:22-cv-00280 (N.D. Tex.). Pet. 44–45;
`Paper 7, 1.
`The parties also identify as a related matter (because of common
`parties, inventor, and assignee) IPR2022-00381 (U.S. Patent No. 9,700,642).
`Pet. 45; Paper 7, 1.
`The ’605 patent
`C.
`The ’605 patent, titled “Method and Apparatus for Producing a High
`Level of Disinfection in Air and Surfaces,” issued on March 10, 2015.
`Ex. 1001, codes (45), (54). The ’605 patent issued from a continuation of an
`application filed January 29, 2009. Id. code (63).
`The ’605 patent explains that in the past, a method of “sterilizing and
`disinfecting air has been based predominately on using commercially
`available germicidal ultra-violet (GUV) lamps” and that “[t]hese lamps are
`either pulsed or continuously excited.” Ex. 1001, 1:24–27. Lamps that are
`continuously excited are mercury based and emit principally at 254 nm. Id.
`at 1:27–28. According to the ’605 patent, though such a treatment method
`“is effective for treating the room air of individual rooms, it is not practical
`for treating large flowing volumes of air that pass quickly down large ducts.”
`Id. at 1:36–39. This is because of the long treatment time that is required.
`Id. at 1:39–40. The ’605 patent also explains that “[c]laims have been made
`that germicidal UV-C (GUV) radiation is used to deactivate DNA
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`[deoxyribonucleic acid]” because “the mercury lamp emission at 254 nm is
`close to a good DNA absorption band.” Id. at 1:55–58. However, “[n]o
`claims are made that combine different wavelength UV photons to produce a
`higher level of deactivation of microorganisms” and “no claims are made
`that combine FUV [(Far UV)] photons with UV-C photons to produce a
`higher level of deactivation of microorganisms.” Id. at 1:58–62. The ’605
`patent discloses that recently, new UV emitting lamps based on the
`excitation of excimers are becoming commercially available in which the
`emitters produce single line or narrow spectral emission at a wavelength
`determined by the gas composition of the lamp. Id. at 2:4–8. However,
`“[n]o patent has been found that teaches the use of FUV sources coupled
`with UV-C sources with supporting equipment that can effectively and
`efficiently disinfect and sterilize large volumes of air, large and small
`surfaces, and food stuffs in various stages of preparation.” Id. at 2:11–17.
`The ’605 patent discloses that researchers understand that GUV
`photons produce strong covalent bonds such as those in dimers. Ex. 1001,
`2:33–40. According to the ’605 patent, “GUV light is known to produce
`[t]hymine, cytosine-thymine, and cytosine dimers” and “[a]fter the
`formation of the dimer, further replication of the DNA stops.” Id.
`at 2:40–43. The ’605 patent further discloses that:
`It has been fairly well established that the peptide bonds in
`all proteins are responsible for the peak absorption at two
`different wavelength regions; namely at 200 nm and at 280 nm.
`The peak absorption at either 200 nm and/or near 280 nm is also
`exhibited by all nitrogenous bases in the DNA as well as the
`proteins that form the outer cellular membrane of bacteria, spores
`and viruses. This occurs as well for nucleoproteins, diglycine,
`triglycine, and bovine albumin . . . . Amino acids have a peak
`absorption band near 260 nm. A UV lamp emitting at 222 nm
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`and/or 282 nm will produce the greatest photon absorption by the
`nitrogenous bases and proteins. A UV-C lamp emitting at 260
`nm will produce the greatest photon absorption by the amino
`acids in the DNA. Consequently these three wavelengths are
`primary absorption bands
`that permit destruction of
`microorganisms.
`Id. at 3:58–4:8.
`The ’605 patent describes a method that uses “a dual-single lined
`lamp that emits at least two narrow wavelength bands of ultra-violet photons
`that match closely to the maximum absorption bands for DNA
`chromophores of nitrogenous bases, proteins, amino acids and other
`component bonds of microorganisms” with a preference of “a multi-
`wavelength narrow line source emitting at least two different wavelengths.”
`Ex. 1001, 4:57–64. Three tests were conducted in regard to
`microorganisms’ exposure to certain wavelengths: (1) with a combination
`of 222 nm and 254 nm photons or with only 282 nm photons on Serratia
`marcescens; (2) with only 282 nm photons or with a combination of 282 nm
`and 254 nm photons on Aspergillus Niger; and (3) with a combination of
`222 nm and 254 nm photons or with a combination of 282 nm and 254 nm
`photons on Escherichia coli. Id. at 4:15–31. The ’605 patent discloses that
`the results of these tests “showed significant reduction in living organisms
`when multi-wavelength narrow line photons were used compared to single
`wavelength photons” and that “[t]hese tests also demonstrated that the
`correct combination of dual-single line photons were significant and
`dependant on each organism.” Id. at 4:43–48.
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`Illustrative Claim
`D.
`Petitioner challenges claims 1, 2, 5, and 6 of the ’605 patent.
`Independent claim 1 is the independent claim challenged and is reproduced
`below.
`
`1. [1pre] A process for destroying or deactivating the
`DNA organic bonds and proteins of microorganisms comprising
`the steps of:
`[1a] 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;
`[1b] directing the photons to a substance to be disinfected,
`whereby the photons destroy or deactivate the DNA organic
`bonds and proteins of microorganisms;
`[1c] 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.
`Ex. 1001, 9:22–10:9 (bracketed text added to correspond with Petitioner’s
`designation of claim elements); see Pet. 16–21.
`Asserted Challenges to Patentability
`E.
`Petitioner raises the following challenges to patentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 2
`103
`Brown-Skrobot,2 Clauβ3
`
`
`2 Ex. 1004, US 2005/0079096 A1, published Apr. 14, 2005 (“Brown-
`Skrobot”).
`3 Ex. 1005, Clauβ, M., Mannesmann, R., & Kolch, A., Photoreactivation of
`Escherichia coli and Yersinia enterolytica after Irradiation with a 222 nm
`Excimer Lamp Compared to a 254 nm Low-pressure Mercury Lamp,
`33 ACTA HYDROCHIMICA ET HYDROBIOLOGICA 579–84 (2005) (“Clauβ”).
`Petitioner refers to this reference as “Clauss.”
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`Claim(s) Challenged
`5, 6
`
`Pet. 2–3.
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Brown-Skrobot, Clauβ, Liang4
`
`Testimonial Evidence
`F.
`The record includes three declarations of Oliver R. Lawal submitted
`by Petitioner (Exs. 1003, 1037, and 1042) and Mr. Lawal’s deposition
`testimony submitted by Patent Owner (Ex. 2002). The record also includes
`two declarations of Mark T. Hernandez, Ph.D., submitted by Patent Owner
`(Exs. 2001, 2017) and Dr. Hernandez’ deposition testimony submitted by
`Petitioner (Ex. 1041).
`
`II. ANALYSIS
`Principles of Law
`A.
`“In an IPR [(inter partes review)], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review). Furthermore, a petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`
`4 Ex. 1006, US 2005/0163648 A1, published July 28, 2005 (“Liang”).
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`Obviousness is a question of law based on underlying determinations
`of fact. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Richardson-
`Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997). A claim is
`unpatentable as obvious, under 35 U.S.C. § 103, if the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness.5 Graham, 383 U.S. at 17–18. Consideration of the
`Graham factors “helps inform the ultimate obviousness determination.”
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc), cert. denied, 138 S. Ct. 420 (2017). To prevail in an inter partes
`review, Petitioner must explain how the proposed combinations of prior art
`would have rendered the challenged claims unpatentable. Subsumed within
`the Graham factors are the requirements that all claim limitations be found,
`either expressly or inherently, in the prior art references and that the skilled
`artisan would have had a reasonable expectation of success in combining the
`prior art references to achieve the claimed invention. Pfizer, Inc. v. Apotex,
`Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
`
`
`5 In this case, the parties have not asserted or otherwise directed our
`attention to any objective evidence of nonobviousness.
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`Level of Ordinary Skill in the Art
`B.
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (“POSITA”) at the time
`of the invention. Graham, 383 U.S. at 17.
`Petitioner contends that a POSITA “would have had at least a
`bachelor’s degree in an engineering discipline, such as biological, chemical,
`environmental, electrical, mechanical, and/or systems engineering, or an
`equivalent degree such as one in physics or similar subject matter.” Pet. 9
`(citing Ex. 1003 ¶ 20). “Such a person would also have had two to three
`years of work or research experience with UV disinfection technology
`and/or systems and would be familiar with the fundamentals of UV excimer
`lamps,” but “less education could be compensated by more experience and
`vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed
`definition. See PO Resp. 8.
`We determine that Petitioner’s proposed definition is consistent with
`the prior art of record, and apply it for this Decision. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings on ordinary skill level are not required “where the prior art itself
`reflects an appropriate level and a need for testimony is not shown” (quoting
`Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed.
`Cir. 1985))).
`Claim Construction
`C.
`We construe claim terms according to the standard set forth in Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc);
`37 C.F.R. § 42.100(b) (2023). Under Phillips, we give claim terms “their
`ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he
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`ordinary and customary meaning of a claim term is the meaning that the
`term would have to a person of ordinary skill in the art in question at the
`time of the invention.” Id. at 1313. “Importantly, the person of ordinary
`skill in the art is deemed to read the claim term not only in the context of the
`particular claim in which the disputed term appears, but in the context of the
`entire patent, including the specification.” Id.
`“The Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.”
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting
`Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)). Except for the claim term discussed below, we determine that no
`other claim terms require express construction for purposes of resolving the
`controversy.
`“a . . . light source”
`1.
`Claim element [1a] recites “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.” Ex. 1001, 9:25–10:2.
`Patent Owner contends that “a . . . light source” means a single light
`source, such that claim 1 requires a single light source that emits two or
`more single line wavelengths. PO Resp. 8–11; PO Sur-reply 3–5. More
`particularly, Patent Owner argues that “a ‘source’ . . . is defined as . . . a
`single lamp.” PO Resp. 10.6 Petitioner disagrees, arguing that “‘a non-
`
`
`6 At the hearing, Patent Owner changed its position, conceding that a single
`source may include multiple lamps, so long as they are in the same location
`and connected to the same power source. Tr. 22:12–14, 23:11–12,
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`coherent light source’ should be construed to mean ‘one or more non-
`coherent light sources’” and, at a minimum, the limitation encompasses a
`“source” comprising one or more lamps. Pet. Reply 2. We agree with
`Petitioner.
`It is a well-settled principle of claim construction that “an indefinite
`article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in
`an open-ended claim containing the transitional phrase ‘comprising.’” KCJ
`Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “The
`exceptions to this rule are extremely limited: a patentee must ‘evince[] a
`clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Baldwin Graphic Sys., Inc. v.
`Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ, 223 F.3d
`at 1356)). “An exception to the general rule that ‘a’ . . . means more than
`one only arises where the language of the claims themselves, the
`specification, or the prosecution history necessitate a departure from the
`rule.” Id. at 1342–43; see also ABS Glob., Inc. v. Cytonome/St, LLC,
`No. 2022-1761, 2023 WL 6885009, at *4 (Fed. Cir. Oct. 19, 2023)
`(discussing and applying the general rule).
`Patent Owner argues that the specification requires a single light
`source that emits two or more wavelengths. PO Resp. 9–10 (citing
`Ex. 1001, 1:20–23, 2:62–67, 4:62–64,7 7:35–36, Fig. 7); PO Sur-reply 3–5
`(additionally citing Ex. 1001, 7:47–8:15). We disagree. As discussed
`below, none of the cited specification passages show a clear intent to depart
`
`
`25:19–26. Patent Owner’s concession undermines the construction Patent
`Owner proposed in the briefs, which is what we address here.
`7 Patent Owner mistakenly cites Ex. 1001, 6:62–64 when quoting column 4,
`lines 62–64. PO Resp. 10.
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`from the general rule for the indefinite article “a” in the phrase, “a non-
`coherent light source.”
`Patent Owner relies on the specification’s description of an “apparatus
`[that] consists of two separate chambers that produce the different
`wavelengths during the same excitation process.” PO Resp. 9; Ex. 1001,
`1:20–23. In contrast, claim 1 recites a “process for destroying or
`deactivating the DNA organic bonds and proteins of microorganisms”
`including the step of “generating photons of at least two single line
`wavelengths from a non-coherent light source.” Id. at 9:22–26. Claim 1 is
`not limited to an apparatus having two separate chambers that produce
`different wavelengths during the same excitation process. The specification
`passage relied upon by Patent Owner describes a preferred embodiment
`having “two separate chambers,” which is “merely illustrative” and should
`not be read into the claims. Id. at 1:20–23, 7:32–46, 9:15–17; In re Am.
`Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have
`cautioned against reading limitations into a claim from the preferred
`embodiment described in the specification, even if it is the only embodiment
`described, absent clear disclaimer in the specification.”); see also ABS Glob.,
`2023 WL 6885009, at *5 (“[T]he singular-only meaning is not demanded by
`the specification’s embodiments, described as nothing more than
`examples.”).
`Moreover, the preceding sentence of the specification is more
`pertinent to claim 1. Ex. 1001, 1:17–20 (“The method utilizes multi-
`wavelength UV photons that combine the effects of Far UV photons with
`UV-C photons to produce a higher level of disinfection than possible with
`either source separately.”). Like claim 1, this sentence describes a method.
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`Notably, it describes the method as combining a source of Far UV photons
`with a source of UV-C photons. Id. In other words, the invention combines
`two sources of photons having two different wavelengths. Id.
`Elsewhere the specification similarly describes the improvement as
`resulting from the combination of sources of photons having different
`wavelengths. For example, when describing the prior art’s shortcomings,
`the ’605 patent states: “No claims are made that combine different
`wavelength UV photons to produce a higher level of deactivation of
`microorganisms. Furthermore, no claims are made that combine FUV
`photons with UV-C photons to produce a higher level of deactivation of
`microorganisms.” Ex. 1001, 1:58–62. Immediately following this
`description of the prior art’s shortcomings, the ’605 patent discloses that the
`invention improves upon the prior art by combining a source of far UV
`photons with a source of UV-C photons. “A source of Far UV photons
`targets a nitrogenous base absorption band . . . while a source of UV-C
`photons target[s] other nitrogenous base absorption peaks . . . . The
`application of multi-wavelength but narrow line UV photons produces an
`improvement . . . compared to using either source of photons separately.”
`Id. at 1:62–2:3. The foregoing characterization of the invention provides
`strong support for Petitioner’s position that “a source” means one or more
`sources.
`The ’605 patent includes additional descriptions suggesting that the
`invention improves upon the prior art by combining multiple sources of UV
`radiation at different wavelengths. For example, the ’605 patent states,
`“While FUV photons have shown to be effective in breaking bonds, it is
`possible that the correct dual wavelength combination of FUV and UV-C
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`could be just as or more effective.” Ex. 1001, 3:3–6. In another description
`of the prior art’s shortcomings, the ’605 patent states, “No one has done a
`detailed study of the effectiveness of inactivation for the different single line
`UV emitters working in combination.” Id. at 3:16–19. This statement
`suggests that “different single line UV emitters working in combination” is
`within the scope of what the inventor contemplated as his invention.
`The ’605 patent reinforces this suggestion when describing tests
`conducted to “test the concept” of the invention. Ex. 1001, 4:8–53. For
`example, the ’605 patent states, “Petrie dishes were inoculated with each
`organism and exposed to different combinations of UV photons.” Id.
`at 4:11–13. “The left side of the dish was exposed with a combination of
`222 nm plus 254 nm photons. The right side of the dish was exposed with
`only 282 nm photons. The multi-wavelength side produced a significant
`improvement.” Id. at 4:16–20. The ’605 patent summarizes by stating, “All
`tests were done using single line photon sources that emitted near the peak
`absorption of the two absorption bands of the DNA nitrogenous bases and
`the single absorption band of the DNA amino acids.” Id. at 4:36–39
`(emphasis added). This statement provides strong evidence that the
`invention encompasses generating photons of at least two single line
`wavelengths from multiple sources.
`Patent Owner relies on the following passage from the specification:
`[C]ritical to this patent is that the multi-wavelength source
`produces two different narrow spectral width (commonly
`referred to as single line) emissions that correspond to at least
`two peak absorption chromophores of the microorganism’s
`DNA. This source is now referred to in the rest of the patent as
`a dual-single line lamp.
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`Ex. 1001, 2:62–67; PO Resp. 9–10; PO Sur-reply 3. According to Patent
`Owner, this passage provides a “clear and unambiguous definition” and
`shows that the “dual-single line lamp” is “critical” and “not merely one
`embodiment.” PO Sur-reply 1, 3. Patent Owner argues that “[t]he
`description of the ‘source’ as ‘multi-wavelength’ would make no sense if the
`claimed ‘source’ could in fact be two separate single-wavelength sources.”
`Id.
`
`We disagree with Patent Owner’s interpretation. The quoted passage
`provides a definition of “a dual-single line lamp,” not the claim term “a non-
`coherent light source.” Although the ’605 patent frequently refers to “a
`dual-single line lamp” (e.g., Ex. 1001, 7:35–36), that term is not used in the
`claims. The quoted passage discusses criticality of a source’s emissions,
`including their narrow spectral width and correspondence with the
`wavelengths absorbed by the target microorganism. Id. at 2:62–66. The
`passage does not show criticality of the physical configuration of the
`emissions’ source.
`Patent Owner also relies on Figure 7 and the description of “a multi-
`wavelength narrow line source emitting at least two different wavelengths.”
`Ex. 1001, 4:62–64, Fig. 7; PO Resp. 10; see page 11 n.7, supra. These
`portions of the specification describe and illustrate a preferred embodiment
`and do not justify departing from the general rule that the indefinite article
`“a” means “one or more.” ABS Glob., 2023 WL 6885009, at *4–5. Nor do
`they define a “source” as a single lamp, as argued by Patent Owner. PO
`Resp. 10.
`Patent Owner argues that claim 1 distinguishes between the singular
`and the plural by reciting “at least two single line wavelengths from a non-
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`coherent light source.” PO Sur-reply 4 (citing Harari v. Lee, 656 F.3d 1331,
`1341 (Fed. Cir. 2011)). In Harari, the Court determined that “[t]he plain
`language of the claim clearly indicates that only a single bit line is used
`when accessing a number of cells.” Id., 656 F.3d at 1341. The Court cited
`three separate claim recitations, each of which “expressly distinguishes
`between the singular and plural.” Id. Following an extensive discussion of
`the specification, the Court concluded that “the correct and only reasonable
`construction of the claim terms ‘a bit line’ and ‘said bit line’ . . . is that [the
`claim] requires that a single bit line activates multiple memory cells.” Id.
`We disagree with Patent Owner that the facts of this case justify a
`departure from the general rule that, in a patent claim, the indefinite article
`“a” means “one or more.” In contrast to Harari, the ’605 patent does not
`emphasize that two or more wavelengths must be generated by a single light
`source or lamp. Instead, the ’605 patent describes a method of combining a
`source of Far UV photons with a source of UV-C photons. Ex. 1001,
`1:17–20, 1:62–2:3, 4:36–39. Although the preferred embodiment uses a
`“dual-single line lamp” (id. at 2:62–66, 7:4–6, Fig. 7), we do not read
`claim 1 as limited to this embodiment.
`Furthermore, we agree with Petitioner that the ’605 patent’s “dual-
`single line lamp” could be considered as including two “sources.” Pet.
`Reply 4. The lamp is described as having two chambers, which contain
`different gas mixtures to produce different wavelength photons when the
`lamp is electrically excited. Ex. 1001, 7:37–67, Fig. 7. Consistent with
`the ’605 patent’s description of combining a source of Far UV photons with
`a source of UV-C photons, the Figure 7 embodiment could be considered a
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`combination of two sources of UV light generated by different gas mixtures.
`Ex. 1001, 1:17–20, 1:62–2:3, 4:36–39.
`For these reasons, we do not construe “a . . . light source” in claim 1
`as limited to a single light source, as argued by Patent Owner.
`Petitioner’s Challenge based on Brown-Skrobot and Clauβ
`D.
`Petitioner contends that claims 1 and 2 are unpatentable as obvious
`based on Brown-Skrobot and Clauβ. Pet. 10–26. Patent Owner opposes.
`PO Resp. 12–29. We provide an overview of the references before turning
`to the parties’ contentions.
`Brown-Skrobot (Ex. 1004)
`1.
`Brown-Skrobot is titled “Method and Apparatus of Sterilization Using
`Monochromatic UV Radiation Source” and describes an apparatus for
`delivering UV radiation to a medical device for sterilization. Ex. 1004,
`code (54), ¶ 22. Brown-Skrobot defines “monochromatic ultraviolet
`radiation” as “radiation having a wavelength or wavelengths between from
`160 to 400 nm, and the majority of the radiation is concentrated within a
`bandwidth of 3 nm.” Id. ¶ 33. Preferably, “the majority of radiation is
`within a bandwidth of 2 nm, more preferably within 1 nm.” Id. According
`to Brown-Skrobot, “[t]he preferred monochromatic UV radiation has the
`majority wavelength or wavelengths within about 220 to 320 nm, more
`preferably within 240 to 280 mm.” Id.
`Brown-Skrobot discloses various sources of monochromatic UV
`radiation, including excimer lamps. Ex. 1004 ¶ 34. Brown-Skrobot
`provides examples of gas mixtures used in excimer lamps that produce
`monochromatic UV radiation, including krypton and chlorine (KrCl), xenon
`and iodine (XeI), and xenon and bromine (XeBr). Id. ¶ 38. Brown-Skrobot
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`discloses that multiple monochromatic UV radiation sources can be used
`together to provide the same or different amounts of energy at different
`wavelengths. Id. ¶ 42. According to Brown-Skrobot, “[t]he different
`wavelengths may provide increased levels of sterility.” Id. The
`monochromatic UV radiation sources may be used in conjunction with other
`structural and optical elements, such as reflectors, to direct the radiation at
`the target. Id. ¶ 40.
`Brown-Skrobot also discloses that “[n]on-ionizing radiation such as
`monochromatic ultraviolet (UV) light is known to damage the DNA of
`exposed cells. The UV radiation causes thymine to dimerize which inhibits
`replication of DNA during cell reproduction.” Ex. 1004 ¶ 6.
`Clauβ (Ex. 1005)
`2.
`Clauβ is titled “Photoreactivation of Escherichia coli and Yersinia
`enterolytica after Irradiation with a 222 nm Excimer Lamp Compared to
`a 254 nm Low-pressure Mercury Lamp.” Ex. 1005, 579. Clauβ explains
`that “monochromatic emission of 254 nm almost corresponds with the
`maximum of DNA absorption at approx. 260 nm” and that “[t]his absorption
`causes damage to DNA by altering nucleotide base pa[i]ring, especially 6-4
`photoproducts and thymine dimers formation,” which can lead to cell death.8
`Id. at 580. Clauβ further explains that UV radiation can also damage
`proteins and their constituent amino acids and that “proteins show
`absorption maxima at 220 nm and 280 nm.” Id. Clauβ discusses
`photoreactivation as a repair mechanism for DNA damage and observes that
`
`
`8 We understand that 6-4 photoproducts and thymine dimers are both
`structural alterations of DNA formed in a photochemical reaction induced by
`UV radiation that results in the coupling of consecutive nucleotide bases on
`a strand of DNA. See https://en.wikipedia.org/wiki/Pyrimidine_dimer.
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`“[d]ue to the fact that the photoreactivation only repairs DNA damage[,] it
`would be interesting to investigate the photoreactivation of bacteria after
`irradiation with wavelengths in the range of the absorption maxima of
`proteins.” Id.
`Clauβ describes experiments comparing photoreactivation of bacteria
`after irradiation with a KrCl excimer lamp at a wavelength of 222 nm (near
`protein absorption maximum) and a low-pressure mercury lamp at a
`wavelength of 254 nm (near DNA absorption maximum). Ex. 1005,
`580–582, Figs. 2, 3 (inactivation curves for E. coli ATCC 11229 and
`Y. enterolytica ATCC 4780 at 222 nm and 254 nm with and without
`photoreactivation). Based on these experiments, Clauβ observes, “When the
`photoreactivation after irradiation is excluded, the mercury lamp with 254
`nm clearly shows better results regarding inactivation. Whereas, on the
`other hand with photoreactivation afterwards the excimer lamp with 222 nm
`wavelength obviously shows better results.” Id. at 582.
`Clauβ concludes that “without photoreactivation the inactivation with
`UV radiation with 254 nm wavelength near the absorption maxima of DNA
`is most effective” and “[t]o get the same inactivation results with 222 nm
`wavelength the necessary irradiation has to be 50% higher.” Ex. 1005, 583.
`Clauβ further concludes,
`But when the bacteria get the chance to photoreactivate, the
`ratios change. With photoreactivation and irradiation with
`254 nm the bacteria has to be irradiated 300% more to obtain the
`same reduction as without photoreactivation. At 222 nm a higher
`irradiation of only 25% for E. coli and 50% for Y. enterolytica
`are necessary
`to get
`the same
`inactivation as without
`photoreactivation.
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