High Energy Ozone v. Larson Electronics: UV Ozone Patents Stayed at PTAB
High Energy Ozone LLC and inventor S. Edward Neister filed suit in the Northern District of Texas against Larson Electronics, asserting three UV ozone generation patents against Larson’s Excimer Bulbs, Lamps, and Microplasma Board. After 1,076 days, the court administratively closed the case pending PTAB resolution of IPR2023-00695 — leaving patent validity and infringement unresolved on the merits.
Three UV Ozone Patents on Hold: PTAB to Shape District Court Outcome
High Energy Ozone LLC and named inventor S. Edward Neister filed Case No. 3:21-cv-01166 on May 21, 2021 in the Northern District of Texas before Judge Barbara M. G. Lynn. The complaint alleged patent infringement by Larson Electronics LLC — a Texas-based industrial lighting supplier — asserting three issued patents: US11246951B2, US9700642B2, and US8975605B2, all covering UV ozone generation technology. The accused products include Larson’s Excimer Bulbs, Excimer Lamps, and Microplasma Board.
The case did not proceed to judgment. On April 4, 2023, the court granted a Joint Motion to Stay, with both parties agreeing to pause proceedings pending inter partes review of the lead patent, US11246951B2, in IPR2023-00695 before the Patent Trial and Appeal Board. The court subsequently directed the Clerk to administratively close the consolidated cases for statistical purposes — a procedural step that does not constitute a dismissal or final judgment, and the litigation can be reopened depending on the IPR outcome.
The decision to stay rather than proceed suggests both parties saw strategic value in awaiting PTAB review — commonly observed when IPR institution signals credible invalidity arguments that could narrow or eliminate district court claims. The public record does not reveal the specific invalidity grounds raised in IPR2023-00695 or any licensing discussions. The ultimate resolution of infringement and damages claims remains entirely dependent on PTAB proceedings and any subsequent district court activity.
Filing to Case Stayed in 1076 days
1,076 days — nearly 3 years before administrative closure; above median for N.D. Tex. patent cases
Administrative closure explained: stay pending PTAB IPR2023-00695
A stay is not a dismissal — litigation is suspended, not ended
An administrative closure pending IPR is a procedural housekeeping measure. The district court retains jurisdiction, and either party can move to reopen proceedings. The stay was jointly requested, suggesting both sides agreed the PTAB outcome on US11246951B2 would materially affect the scope — or viability — of the district court claims. No merits ruling on infringement or validity was made.
Proceedings suspendedPTAB outcome is decisive for High Energy Ozone’s infringement claims
If IPR2023-00695 results in claim cancellation of US11246951B2, High Energy Ozone’s lead patent would be invalidated, materially weakening or collapsing the district court case. If claims survive IPR — even in amended form — the plaintiff retains the ability to reopen and pursue infringement. The two co-asserted patents (US9700642B2, US8975605B2) are not confirmed subjects of the IPR, leaving their status in the district court uncertain until proceedings resume.
Outcome contingent on PTABLarson Electronics gains breathing room — and a validity lever
For Larson Electronics, the stay and IPR filing represent a cost-efficient avenue to challenge the asserted patent’s validity before the PTAB, which applies a lower claim-construction burden than district court. A successful IPR cancelling claims of US11246951B2 could eliminate the most commercially threatening patent. Even partial claim cancellation may narrow the infringement theory, reducing exposure for the Excimer product lines. Larson’s counsel — Fish & Richardson and Sidley Austin — are experienced IPR practitioners.
IPR as defensive strategyUV ozone technology freedom-to-operate remains unresolved
The stay leaves the competitive landscape in the UV ozone and excimer lamp sector in a state of uncertainty. Companies developing or commercialising excimer lamp, UV ozone, or microplasma board technology should monitor IPR2023-00695 closely. A PTAB institution decision finding substantial question of patentability would signal meaningful validity risk across all three asserted patents. Product development timelines and FTO analyses should account for the possibility of resumed litigation.
Watch IPR2023-00695Full party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | High Energy Ozone LLC | Company | UV ozone generation technology licensor — holder of US11246951B2, US9700642B2, and US8975605B2Search in Eureka ↗ |
| Co-Plaintiff | S Edward Neister | Individual | Search in Eureka ↗ |
| Defendant | Larson Electronics, LLC | Company | Larson Electronics LLC — Texas-based industrial lighting and electrical equipment manufacturerSearch 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 | Jill R. Carvalho | 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 David Wood | Attorney | Counsel for High Energy Ozone LLCSearch in Eureka ↗ |
| Plaintiff law firm | King & Spalding LLP | Law Firm | Representing High Energy Ozone LLCSearch in Eureka ↗ |
| Defendant counsel | Collin J. Marshall | Attorney | Counsel for Larson Electronics, LLCSearch in Eureka ↗ |
| Defendant counsel | David B. Conrad | Attorney | Counsel for Larson Electronics, LLCSearch in Eureka ↗ |
| Defendant counsel | Lance Eric Wyatt , Jr. | Attorney | Counsel for Larson Electronics, LLCSearch in Eureka ↗ |
| Defendant counsel | Neil J McNabnay | Attorney | Counsel for Larson Electronics, LLCSearch in Eureka ↗ |
| Defendant law firm | Fish & Richardson PC | Law Firm | Representing Larson Electronics, LLCSearch in Eureka ↗ |
| Defendant law firm | Sidley Austin LLP | Law Firm | Representing Larson Electronics, LLCSearch 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 rather than a merits ruling. The joint motion to stay is consistent with both parties recognising the efficiency of resolving patent validity at the PTAB before expending district court resources on claim construction and infringement. Administrative closure preserves the court’s docket without prejudicing either party’s substantive rights. The outcome of IPR2023-00695 — institution, final written decision, and any Federal Circuit appeal — will be determinative for whether, and in what form, this case resumes.
US11246951B2, US9700642B2 & US8975605B2 — UV ozone generation technology
The three asserted patents — US11246951B2 (application filed July 2017), US9700642B2 (application filed April 2014), and US8975605B2 (application filed July 2013) — form a chronological family covering UV ozone generation technology including excimer lamp systems and microplasma-based devices. The patents span nearly a decade of prosecution and represent incremental claim refinements across what appears to be a consistent inventive concept attributed to S. Edward Neister. The lead patent, US11246951B2, is the subject of IPR2023-00695.
UV ozone and excimer lamp technology is used in industrial sterilisation, surface treatment, semiconductor fabrication, and air/water purification applications. As commercial demand for UV-based disinfection and treatment solutions has grown, patent enforcement in this space has intensified. The assertion of all three patents against Larson’s Excimer Bulbs, Lamps, and Microplasma Board suggests a comprehensive enforcement strategy designed to capture the full product range — and to make any design-around effort more complex by requiring clearance across multiple patent generations.
Should you run an FTO against US11246951B2 and the Neister UV ozone family?
Any company developing, manufacturing, or commercialising excimer lamp systems, UV ozone generators, or microplasma-based UV products should assess freedom-to-operate against the Neister patent family. The three asserted patents cover a range of claim scopes across different filing dates, and the stay means no court has yet construed the claims — leaving the scope of protection uncertain. Companies in semiconductor surface treatment, industrial sterilisation, or UV water treatment should treat this family as a live enforcement risk until the PTAB issues a final written decision in IPR2023-00695.
PatSnap Eureka’s FTO Search Agent can map your product’s technical features against the claim sets of US11246951B2, US9700642B2, and US8975605B2 simultaneously — identifying claim overlap, prosecution history estoppel, and prior art cited in IPR proceedings. Tracking the IPR2023-00695 docket within Eureka alerts you the moment claim amendments or cancellations change your exposure profile, enabling proactive design-around decisions before district court proceedings resume.
Run a freedom-to-operate analysis on US11246951B2 to assess your product’s exposure
Run FTO in Eureka →Similar UV ozone and excimer lamp patent cases in U.S. district courts
Explore comparable UV ozone generation and excimer lamp patent infringement actions in U.S. district courts, including cases stayed pending PTAB IPR proceedings.
What this case signals for the UV ozone and excimer lamp IP landscape
A stayed district court case with an active PTAB IPR is a live validity referendum — and the result will set the enforcement posture for this patent family.
Joint stays signal credible IPR invalidity arguments — monitor institution decisions
When both parties agree to a stay pending IPR, it typically signals that the defendant’s invalidity arguments have sufficient traction that the patent holder prefers to avoid a potentially adverse claim construction ruling. Competitors should track IPR2023-00695 institution and final written decision dates to gauge remaining enforceability of the US11246951B2 patent family.
Three-patent assertion strategy adds complexity to any design-around effort
With US11246951B2, US9700642B2, and US8975605B2 all asserted, designing around a single patent may not provide full clearance. The two older patents (granted 2016 and 2015) covering related UV ozone generation methods could survive even a successful IPR against the lead patent, leaving residual infringement exposure for excimer and microplasma board product manufacturers.
High v Larson — key questions answered
The case is administratively closed in the Northern District of Texas. On April 4, 2023, the court granted a Joint Motion to Stay, suspending proceedings pending resolution of IPR2023-00695 before the Patent Trial and Appeal Board, which involves lead patent US11246951B2. No merits judgment has been entered.
High Energy Ozone LLC and S. Edward Neister asserted three patents: US11246951B2 (application No. US15/645480), US9700642B2 (application No. US14/254957), and US8975605B2 (application No. US13/936306). All three relate to UV ozone generation technology, including excimer lamp and microplasma-based systems.
The accused products are Larson Electronics’ Excimer Bulbs, Excimer Lamps, and Microplasma Board. These are industrial UV lighting and ozone generation products sold by Larson Electronics LLC, a Texas-based electrical equipment manufacturer.
IPR2023-00695 is an inter partes review petition filed at the Patent Trial and Appeal Board challenging US11246951B2. The district court stayed the infringement case pending the IPR outcome. If claims are cancelled at the PTAB, the infringement case for that patent would effectively collapse. Surviving claims could lead to the case being reopened and proceeding to claim construction and trial.
No. Administrative closure in the context of a litigation stay is a docket management procedure — it does not constitute a dismissal or final judgment. The Northern District of Texas retains jurisdiction, and either party may move to reopen the case. The closure was ordered solely for statistical reporting purposes pending the PTAB IPR proceedings.
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