High Energy Ozone v. Far UV Technologies: UV Disinfection Patents Stayed for PTAB Review
High Energy Ozone LLC and co-plaintiff S. Edward Neister filed suit in the Northern District of Texas against Far UV Technologies, asserting three UV disinfection patents covering products including the Krypton Shield and Krypton-11. After 817 days, the consolidated cases were stayed pending PTAB inter partes review of the lead patent, US11246951B2, in IPR2023-00695.
UV Disinfection Patent Fight Pivots to PTAB as Court Stays Action
Filed on February 4, 2022, in the Northern District of Texas before Judge Barbara M. G. Lynn, this case pits High Energy Ozone LLC and inventor S. Edward Neister against Far UV Technologies, a manufacturer of far-UV disinfection products marketed under the Krypton brand. Plaintiffs assert three patents — US11246951B2, US9700642B2, and US8975605B2 — covering UV-based disinfection apparatus and methods, alleging that the Krypton Shield, Krypton-11, Krypton-36, Krypton-M, and Krypton-PLUS products infringe their claimed technology.
The district court proceedings were consolidated and then stayed on April 4, 2023, following a joint motion by both parties. The stay was granted pending resolution of inter partes review IPR2023-00695 before the Patent Trial and Appeal Board, which targets the lead patent US11246951B2. The court directed the Clerk to administratively close the consolidated cases for statistical purposes, meaning the closure does not reflect a merits determination — the dispute remains live, subject to the PTAB outcome.
The 817-day duration before administrative closure is consistent with the typical timeline for patent suits that migrate to PTAB review, where the parties jointly agree that IPR resolution is the most efficient path. The joint nature of the stay motion suggests both sides recognised that PTAB’s validity assessment of US11246951B2 could be dispositive. What remains publicly unknown is whether settlement discussions are ongoing in parallel, and how a PTAB decision — whether confirming or cancelling claims — will affect the two remaining asserted patents not subject to the IPR.
Filing to Case Stayed in 817 days
817 days — longer than the median U.S. patent case duration before disposition
Case stayed for IPR: what the PTAB process means for both parties
A stay routes the validity fight to the PTAB
When a district court grants a stay pending inter partes review, it pauses all litigation activity — discovery, claim construction, trial scheduling — until the PTAB issues a final written decision. Here, IPR2023-00695 targets US11246951B2. If the PTAB cancels asserted claims, those claims cannot be relitigated in district court. If claims survive, the stay lifts and litigation resumes. The joint motion suggests both parties saw strategic value in resolving validity first.
IPR2023-00695 pendingPlaintiffs face validity scrutiny on the lead patent
For High Energy Ozone and Neister, the stay is a double-edged development. A favourable PTAB outcome — confirming US11246951B2 claims — would return the case to district court with validity pressure reduced, strengthening the infringement posture. However, the IPR process is generally unfavourable to patent holders statistically, with a significant proportion of instituted IPRs resulting in at least partial claim cancellation. The two remaining patents (US9700642B2 and US8975605B2) are not directly before the PTAB in this IPR.
Validity under PTAB reviewFar UV Technologies secures a litigation pause via IPR
By successfully advancing the IPR route — reflected in the joint stay motion — Far UV Technologies has deferred district court exposure including damages accrual risk during the stay period. A successful IPR cancelling US11246951B2 claims would remove the lead patent from the suit entirely, potentially undermining the broader infringement theory. However, the defendant still faces two additional asserted patents not captured by IPR2023-00695, meaning full resolution is not guaranteed by the PTAB proceeding alone.
Litigation exposure deferredFar-UV disinfection IP landscape hangs on PTAB’s findings
The UV disinfection sector — energised by pandemic-era demand — has seen intensifying patent activity. A PTAB decision cancelling claims in US11246951B2 would narrow the IP perimeter around ozone and far-UV disinfection methods, creating broader freedom to operate for competing manufacturers. Conversely, claim confirmation would signal durable enforceability of this patent family, raising the stakes for any company commercialising Krypton-style far-UV devices. Competitors and investors in the disinfection technology space should monitor the IPR2023-00695 docket closely.
UV disinfection FTO at riskFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | High Energy Ozone LLC | Company | UV disinfection patent holder — asserting US11246951B2, US9700642B2, and US8975605B2Search in Eureka ↗ |
| Co-Plaintiff | S Edward Neister | Individual | Search in Eureka ↗ |
| Defendant | Far UV Technologies | Company | Far UV Technologies — manufacturer of Krypton-brand far-UV disinfection productsSearch in Eureka ↗ |
| Plaintiff counsel | Abby L. Parsons | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff counsel | Brent P. Ray | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff counsel | Julia Kolibachuk | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff counsel | Matthew Swift | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff counsel | Michael Dale Pospisil | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff law firm | King & Spalding LLP | Law Firm | Representing High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff law firm | Pospisil Swift LLC | Law Firm | Representing High Energy Ozone LLCSearch in Eureka ↗ |
| Defendant counsel | Benjamin Allen Stelter-Embry | Attorney | Counsel for Far UV TechnologiesSearch in Eureka ↗ |
| Defendant counsel | Collin J. Marshall | Attorney | Counsel for Far UV TechnologiesSearch in Eureka ↗ |
| Defendant counsel | David B. Conrad | Attorney | Counsel for Far UV TechnologiesSearch in Eureka ↗ |
| Defendant counsel | Lance Eric Wyatt , Jr. | Attorney | Counsel for Far UV TechnologiesSearch in Eureka ↗ |
| Defendant law firm | Fish & Richardson PC | Law Firm | Representing Far UV TechnologiesSearch in Eureka ↗ |
| Defendant law firm | Protzman Law Firm LLC | Law Firm | Representing Far UV TechnologiesSearch in Eureka ↗ |
| Defendant law firm | Sidley Austin LLP | Law Firm | Representing Far UV TechnologiesSearch in Eureka ↗ |
| Presiding judge | Judge Barbara M. G. Lynn | Judge | Texas Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order reflects a procedural stay, not a merits ruling. The direction to administratively close the cases ‘for statistical purposes’ is standard practice in the Northern District of Texas when a stay is indefinite — it does not constitute a dismissal or final judgment. Both parties retain all substantive rights. The outcome of IPR2023-00695 will govern whether US11246951B2 claims survive, and the district court case will resume — or be terminated — accordingly. The phrasing ‘consolidated cases remain stayed’ confirms that multiple related docket numbers are affected by this single order.
US11246951B2 — UV disinfection apparatus and methods (lead asserted patent)
US11246951B2, with application number US15/645480, is the lead patent in this dispute and the subject of PTAB IPR2023-00695. The patent family spans three granted patents with application dates ranging from 2013 (US8975605B2, app. US13/936306) to 2014 (US9700642B2, app. US14/254957) and 2017 (US11246951B2, app. US15/645480), suggesting a continuation-based prosecution strategy building on a core inventive concept in UV and ozone-based disinfection technology. The patents collectively cover apparatus and methods for deploying germicidal UV irradiation, relevant to the Krypton-brand product line asserted to infringe.
The commercial relevance of this patent family has been amplified by the global surge in demand for non-chemical disinfection solutions following the COVID-19 pandemic. Far-UV technology — particularly at 222nm — has attracted significant investment and product development activity, making enforceable patents in this space commercially consequential. The three-patent assertion strategy by High Energy Ozone suggests the plaintiffs have constructed a layered IP position intended to cover multiple product configurations and use scenarios, complicating design-around efforts for any competitor in the far-UV disinfection market.
Should you run an FTO against US11246951B2 and its family patents?
Any company developing, manufacturing, or distributing far-UV or ozone-based disinfection products — including devices operating on similar principles to the Krypton Shield, Krypton-11, Krypton-36, Krypton-M, or Krypton-PLUS — should treat this patent family as an active FTO risk. The PTAB stay means US11246951B2 is under active validity challenge, but US9700642B2 and US8975605B2 remain fully enforceable pending the stay’s lift. R&D and product teams should not assume PTAB cancellation of the lead patent resolves all exposure.
PatSnap Eureka’s FTO Search Agent allows IP teams to map claims across all three asserted patents simultaneously, identify prior art relevant to each application date, and model design-around options against the specific claim language in each grant. With IPR2023-00695 actively pending, Eureka can also track the PTAB docket in real time — alerting your team the moment a final written decision issues so you can reassess your FTO position before the district court stay lifts and enforcement activity resumes.
Run a freedom-to-operate analysis on US11246951B2 to assess your product’s exposure
Run FTO in Eureka →Similar UV disinfection patent disputes in U.S. district courts
Explore related patent infringement cases involving UV disinfection and germicidal irradiation technology litigated in U.S. district courts, including N.D. Texas.
What this case signals for the UV disinfection IP landscape
The PTAB stay reveals how UV disinfection patent disputes are increasingly fought on validity grounds before claim construction even begins.
Joint stays signal mutual uncertainty — monitor the IPR docket
When both plaintiff and defendant jointly move for a stay pending IPR, it typically signals that both sides recognise validity as genuinely contested. Patent counsel and R&D teams in the UV disinfection space should track IPR2023-00695 closely — a final written decision from the PTAB will materially reshape the enforceability of this patent family and any FTO analysis relying on it.
Two patents remain outside IPR scope — enforcement risk persists
US9700642B2 and US8975605B2 are asserted but not part of the current PTAB proceeding. Even if US11246951B2 is cancelled at the PTAB, Far UV Technologies and similarly positioned manufacturers will still face potential infringement exposure under the surviving patents once the stay lifts. Freedom-to-operate analysis must account for all three patents independently.
High v Far — key questions answered
The case is administratively closed as of May 1, 2024, but not dismissed. The N.D. Texas court stayed the consolidated proceedings pending resolution of PTAB inter partes review IPR2023-00695, which challenges US11246951B2. The case will resume once a final written decision issues from the PTAB.
Three patents are asserted: US11246951B2 (app. US15/645480), US9700642B2 (app. US14/254957), and US8975605B2 (app. US13/936306). All relate to UV-based disinfection apparatus and methods. Only US11246951B2 is currently subject to inter partes review in IPR2023-00695 before the PTAB.
The accused products are Far UV Technologies’ Krypton Shield, Krypton-11, Krypton-36, Krypton-M, and Krypton-PLUS — a line of far-UV germicidal disinfection devices. These products are alleged to infringe one or more claims of the three asserted patents.
The stay suspends all district court proceedings, including damages accrual arguments tied to litigation timelines. No liability finding can issue while the stay is in effect. If the PTAB cancels the asserted claims of US11246951B2, those claims cannot support an infringement judgment. However, liability exposure under US9700642B2 and US8975605B2 persists regardless of the IPR outcome.
If the PTAB issues a final written decision confirming US11246951B2’s claims, the district court stay would likely lift and litigation would resume before Judge Lynn. If Far UV Technologies is a real party in interest in the IPR, statutory estoppel under 35 U.S.C. § 315(e)(2) may bar it from raising invalidity grounds in district court that it raised or reasonably could have raised in the IPR proceeding.
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