Eden Park Illumination, Inc., Larson
`Electronics LLC, and Far UV Technologies
`
`v.
`S. Edward Neister
`
`Petitioners’ Demonstratives
`IPR2022-00682
`Patent No. 8,975,605
`Before Jeffrey W. Abraham, Elizabeth M. Roesel, and Julia Heaney
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`EDEN PARK 1043
`Eden Park et al. v. Neister et al.
`IPR2022-00682
`
`1
`
`
`Electronics LLC, and Far UV Technologies
`
`v.
`S. Edward Neister
`
`Petitioners’ Demonstratives
`IPR2022-00682
`Patent No. 8,975,605
`Before Jeffrey W. Abraham, Elizabeth M. Roesel, and Julia Heaney
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`EDEN PARK 1043
`Eden Park et al. v. Neister et al.
`IPR2022-00682
`
`1
`
`
`
`Table of Contents
`
`Slide No.
`Instituted grounds …………………………………………………………… 3
`Issues for discussion …………………………………………………........
`4
`Overview …………………………………………………………………………… 5
`Issue 1: The specification and legal precedent require “a non-
`coherent light source” to be construed to mean “one or more non-
`coherent light sources” ….............................................................…. 13
`Issue 2: Brown-Skrobot in view of Clauss renders obvious
`disinfecting surfaces and substances using at least two single line
`wavelengths of 222 nm, 254 nm and 282 nm (Claims 1 and 2)……. 25
`Issue 3: Brown-Skrobot in view of Clauss renders obvious directing
`an air stream to the generated photons of at least two wavelengths of
`either 222 nm, 254 nm, and 282 nm, and exposing the air stream to
`the generated photons (Claims 5 and 6)……………………………………. 71
`
`2
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`2
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`
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`Instituted Grounds
`
`* Independent claim noted in red
`
`Ground
`1
`
`Claims
`1 and 2
`
`§ 103 Basis
`Brown-Skrobot in view of Clauss
`
`2
`
`5 and 6
`
`Brown-Skrobot and Clauss with Liang
`
`Petition, 2-3
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`3
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`3
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`
`
`Issues for Discussion
`
`1. The specification and legal precedent require a “non-
`coherent light source” to be construed to mean “one or
`more non-coherent light sources” or at least require one
`or more lamps.
`
`2. Brown-Skrobot in view of Clauss renders obvious
`disinfecting surfaces and substances using at least two
`single line wavelengths of 222 nm, 254 nm and 282 nm
`(Claims 1 and 2)
`
`3. Brown-Skrobot and Clauss in view of Liang renders
`obvious exposing an air stream to UV photons long
`enough to disinfect it in a single pass, using at least two
`single line wavelengths of 222 nm, 254 nm and 282 nm
`(Claims 5 and 6)
`
`4
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`4
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`
`
`Overview
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`5
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`
`
`The ’605 Patent
`
`EX. 1001, Cover; Petition 3
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`6
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`6
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`
`
`The ’605 Patent – Claims 1-2
`
`EX. 1001, 9:22–10:11; Petition, 16–26
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`7
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`7
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`
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`The ’605 Patent – Claims 5-6
`
`EX. 1001, 10:16-25; Petition, 33–37
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`8
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`8
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`
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`The ’605 Patent – Assumptions
`
`EX. 1001, 1:55–2:3; Petition, 5–7
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`9
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`9
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`
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`The ’605 Patent – Assumptions
`
`EX. 1001, 2:4–17; Petition, 6; Pet. Reply, 16-18
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`10
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`10
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`
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`Prior Art, Claims 1 and 2
`
`• Ground 1 challenging Claims 1 and 2 relies on Brown-
`Skrobot and Clauss, which were published more than
`one year prior to Jan. 29, 2009, making them prior art at
`least under pre-AIA § 102(a), (b) and post-AIA § 102(a)
`
`Reference
`
`Prior Art
`
`Qualifying Date
`
`Brown-Skrobot
`(EX. 1004)
`
`pre-AIA §§ 102(a), (b) &
`post-AIA § 102(a)(1)
`
`Published: April 4, 2005
`
`Clauss
`(EX. 1005)
`
`pre-AIA §§ 102(a), (b) &
`post-AIA § 102(a)(1)
`
`Public Availability:
`January 2006
`
`Petition, 10–12
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`11
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`11
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`
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`Prior Art, Claims 5 and 6
`
`• Ground 2 challenging Claims 12-18 relies on Brown-
`Skrobot, Clauss, and Liang which were published more
`than one year prior to Jan. 29, 2009, making them prior
`art at least under pre-AIA § 102(a), (b) and post-AIA §
`102(a)
`Reference
`
`Qualifying Date
`
`Prior Art
`
`Brown-Skrobot
`(EX. 1004)
`
`pre-AIA §§ 102(a), (b) &
`post-AIA § 102(a)(1)
`
`Published: April 14, 2005
`
`Clauss
`(EX. 1005)
`
`Liang
`(EX. 1006)
`
`pre-AIA §§ 102(a), (b) &
`post-AIA § 102(a)(1)
`
`Public Availability:
`January 2006
`
`pre-AIA §§ 102(a), (b) &
`post-AIA § 102(a)(1)
`
`Published: July 28, 2005
`
`Petition, 10–12, 26–30
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`12
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`12
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`
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`Issue 1
`
`The specification and legal precedent
`require “a non-coherent light source” to
`be construed to mean “one or more
`non-coherent light sources”
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`13
`
`
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`Claim Construction: Summary of Arguments
`
`•
`
`“A” or “an” refers to “one or more.”
`
`• Requiring a “single source” would read out a preferred
`embodiment.
`
`• Arguing that the lamps constitute a “single” source is an
`artificial characterization.
`
`• The ’605 Patent does not claim a “dual-single line lamp.”
`
`Pet. Reply, 2-6
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`14
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`14
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`
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`Claim Construction: “A” or “an” refers to “one or more.”
`
`• “a non-coherent light source” means “one or more non-
`coherent light sources”
`
`EX. 1001, 9:22-27, 10:1–2
`
`Pet. Reply, 2
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`15
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`15
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`
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`Claim Construction: “A” or “an” refers to “one or more.”
`
`“[The] indefinite article ‘a’ or ‘an’
`in patent parlance
`carries the meaning of ‘one or more’ in open-ended
`claims containing the transitional phrase ‘comprising.’
`. . .
`[This instruction] is best described as a rule, rather than
`merely as a presumption or even a convention.”
`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
`1342 (Fed. Cir. 2008) (citation omitted) (emphasis added).
`
`Pet. Reply, 3
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`16
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`16
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`
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`Claim Construction: “A” or “an” refers to “one or more.”
`
`The ’605 Patent does not fall within Harari v. Lee’s
`“extremely limited” exception. The claim in Harari
`recites:
`“a method comprising accessing a number of
`control gates and a bit line to activate a number
`of cells. . . . [This language] clearly indicates that
`only a single bit line is used when accessing a
`number of cells.”
`
`656 F.3d 1331, 1341 (Fed. Cir. 2011) (emphasis in original).
`
`Pet. Reply, 3–4
`
`17
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`17
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`
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`Claim Construction: “A” or “an” refers to “one or more.”
`
`The ’605 Patent does not fall within Harari v. Lee’s
`“extremely limited” exception. 656 F.3d at 1341. The
`’605 Patent differs:
`
`• All claims are open-ended “comprising” claims. (EX1001,
`claims.)
`• The ’605 Patent’s specification does not define “a non-
`coherent light source.”
`• The specification does not suggest the language is limited to
`a “single” lamp.
`
`Pet. Reply, 3–4
`
`18
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`18
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`
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`Claim Construction: requiring a “single source” would
`read out a preferred embodiment.
`
`A construction requiring a “single” source would
`improperly exclude an embodiment.
`
`“We normally do not construe claims in a
`manner that would exclude the preferred
`embodiment, especially where it is the only
`disclosed embodiment.”
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1311
`(Fed. Cir. 2014) (emphasis added).
`
`Pet. Reply, 4–5
`
`19
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`19
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`
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`Claim Construction: requiring a “single source” would
`read out a preferred embodiment.
`
`• The ’605 patent describes the “dual-single line lamp”:
`
`• Photons at two different
`wavelengths emanate from
`two different locations or
`sources (EX1037, ¶ 4.)—i.e.,
`from each of the “two
`separate chambers.” (Id.
`(distinguishing between the
`chambers with “A1” and
`“A2”).)
`
`EX1001, 1:20–22
`
`EX1037, ¶ 4
`
`Pet. Reply, 4–5
`
`20
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`20
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`
`
`Claim Construction: requiring a “single source” would
`read out a preferred embodiment.
`
`• The ’605 patent describes the “dual-single line lamp”:
`
`• Both lamps exciting
`simultaneously is no different
`than flipping the “on” switch
`on two separate lamps. (See
`EX1037, ¶¶ 4-5.)
`
`EX1001, 1:20–22
`
`EX1037, ¶ 4
`
`Pet. Reply, 4–5
`
`21
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`21
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`
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`Claim Construction: arguing that the lamps constitute a
`“single” source is an artificial characterization.
`
`• Using two separate
`lamps has the same
`effect as using the dual-
`single line lamp. (See
`EX1037, ¶¶ 6-7.)
`
`Pet. Reply, 5
`
`22
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`22
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`
`
`Claim Construction: the ’605 Patent does not claim a
`“dual-single line lamp.”
`
`• The parent patent claims the “dual-single line lamp” (See
`EX1038, Claim 1.)
`
`EX. 1038; Pet. Reply, 5–6
`
`23
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`23
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`
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`Claim Construction: “a non-coherent light source” should
`be construed to mean “one or more non-coherent light
`sources”
`
`•
`
`“A” or “an” refers to “one or more.”
`
`• Requiring a “single source” would read out a preferred
`embodiment.
`
`• Arguing that the lamps constitute a “single” source is an
`artificial characterization.
`
`• The ’605 Patent does not claim a “dual-single line lamp.”
`
`In light of proper claim construction, prior art will
`render the ’605 patent obvious.
`
`Pet. Reply, 2-6
`
`24
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`24
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`
`
`Issue 2
`
`Brown-Skrobot in view of Clauss renders
`obvious disinfecting surfaces and
`substances using at least two single line
`wavelengths of 222 nm, 254 nm and 282
`nm (Claims 1 and 2)
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`25
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Brown-Skrobot teaches sterilizing medical devices using
`“monochromatic UV radiation” sources, preferably 220 to
`320 nm, including KrCl excimer lamps.
`• Brown-Skrobot teaches combining “different wavelengths”
`to “provide increased levels of sterility.”
`• Clauss teaches using KrCl lamp (222 nm) and low-
`pressure mercury lamp (254 nm), with differential effects
`from photoreactivation
`In combination, Brown-Skrobot’s method of sterilization is
`performed using Clauss’s KrCl lamp (222 nm) and low-
`pressure mercury lamp (254 nm)
`
`•
`
`Petition, 12–15
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`26
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`26
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Brown-Skrobot teaches sterilizing medical equipment
`using “one or more” “monochromatic UV light sources”
`
`EX. 1004, ¶ 0002; Petition 16
`
`EX. 1004, ¶ 0034; Petition, 16
`
`27
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`27
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Brown-Skrobot
`teaches using KrCl
`excimer lamps
`
`EX. 1004, ¶ 0038; Petition, 18–19, 21
`
`28
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`28
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot teaches using monochromatic radiation
`“[p]referably … from 220 and 320 nm.”
`
`EX. 1004, ¶ 0033; Petition, 11, 13, 18
`
`29
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`29
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot invites using “multiple monochromatic
`radiation sources” together to accomplish sterilization
`
`EX. 1004, ¶ 0042; Petition, 11, 15, 17–18
`
`30
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`30
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Clauss compares KrCl (222 nm) and low-pressure
`mercury (254 nm) lamps, concluding 254 nm is better in
`the absence of photoreactivation, and 222 nm is better
`when photoreactivation is a concern.
`
`EX. 1005, 583; Petition, 11–12
`
`31
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`31
`
`
`
`Brown-Skrobot + Clauss: discloses achieving 90% kill of
`microorganisms in less than one second
`• The combination teaches exposing a surface using 222
`nm and 254 nm photons that achieve a 90% kill of
`microorganisms in a time period of less than one second.
`
`EX. 1004, 0031; Petition, 22-23
`
`32
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`32
`
`
`
`Brown-Skrobot + Clauss: discloses achieving 90% kill of
`microorganisms in less than one second
`• The combination teaches exposing a surface using 222
`nm and 254 nm photons that achieve a 90% kill of
`microorganisms in a time period of less than one second.
`
`EX. 1005, 582; Petition, 23
`
`33
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`33
`
`
`
`Brown-Skrobot + Clauss: discloses achieving 90% kill of
`microorganisms in less than one second
`• The combination teaches exposing a surface using 222
`nm and 254 nm photons that achieve a 90% kill of
`microorganisms in a time period of less than one second.
`
`EX. 1003, ¶ 106; Petition, 23-24
`
`34
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`34
`
`
`
`Brown-Skrobot + Clauss: discloses achieving 90% kill of
`microorganisms in less than one second
`• The combination teaches exposing a surface using 222
`nm and 254 nm photons that achieve a 90% kill of
`microorganisms in a time period of less than one second.
`
`EX. 1003, ¶ 108; Petition, 23-25
`
`35
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`35
`
`
`
`Brown-Skrobot + Clauss: discloses achieving 90% kill of
`microorganisms in less than one second
`
`EX. 1003, ¶ 109; Petition, 23-25
`
`36
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`36
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`
`
`Brown-Skrobot + Clauss: discloses using reflectors to
`direct photons to a desired surface
`
`• Brown-Skrobot discloses using excimer lamps with
`reflectors.
`
`EX. 1004, 0040; Petition, 26
`
`37
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`37
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• A POSITA would have combined Brown-Skrobot and
`Clauss based on their common UV sources within a
`preferred range
`
`Brown-Skrobot discloses KrCl,
`XeI, and XeBr sources (above)
`EX. 1004, ¶ 0038; Petition, 13–14
`
`Clauss discloses a KrCl and
`mercury source (right)
`EX. 1005, 581; Petition, 13–14
`
`38
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`38
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• A POSITA would have been motivated to supplement
`Brown-Skrobot with Clauss because it would yield
`predictable results
`
`Petition, 14
`
`39
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`39
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• A POSITA would have understood and appreciated the
`predictable advantages of combining Brown-Skrobot and
`Clauss
`
`Petition, 15
`
`40
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`40
`
`
`
`Combining 222 nm and 254 nm would yield predictable
`advantages
`
`•
`
`•
`
`•
`
`•
`
`•
`
`It is often desirable to produce a germicidal lamp that has the
`capability of emitting multiple bands of ultraviolet radiation …
`- EX. 1030, 1:23-26
`“[D]ifferent wavelengths which when used together will successfully
`sterilize all the microorganisms, that might not otherwise be
`sterilized.”
`
`- EX. 1004, ¶ 0042
`“[B]actericidal action at 254-nm radiation could be improved by
`supplementary radiation from excimer lamps”
`
`- EX. 1008, 1529
`“Synergy was demonstrated between radiations at 222 and 254 nm
`…”
`
`- EX. 1008, 1533
`“We assume that synergy occurred, because … some of the bacteria
`that survive 222-nm irradiation were damaged and were further
`killed by subsequent 254-nm radiation.”
`
`- EX. 1008, 1533
`
`Petition, 15
`
`41
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`41
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`
`
`Patent Owner’s Arguments
`
`1. Brown-Skrobot teaches away from 222 nm and 282 nm light from
`light sources other than lasers?
`2. Clauss does not teach the use of 222 nm and 254 nm light in
`combination?
`3. No motivation to combine Brown-Skrobot and Clauss?
`4. 222 nm excimer lamps were rare and expensive?
`5. POSITA would not have known how to account for factors affecting
`kill rate?
`
`POR, 12–29; Sur-reply, 3–19
`
`42
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`42
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Petitioners’ Rebuttal:
`o Brown-Skrobot teaches away from 222 nm and 282
`nm light from light sources other than lasers?
`o Brown-Skrobot expressly discloses a “[p]referred” range
`with these wavelengths and excimer lamps that produce
`them
`
`EX. 1004, [0033]; Petition 13-14, 16-17
`
`EX. 1004, ¶ 0038; Petition, 13–14, 16–17
`
`43
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`43
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot repeatedly discloses using excimer lamps,
`including 222 nm, 254 nm, and 282 nm lamps.
`
`EX. 1004, [0040]; Pet. Reply, 8-10
`
`EX. 1004, ¶ 0054; Pet. Reply, 8–10
`
`44
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`44
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot repeatedly discloses using excimer lamps,
`including 222 nm, 254 nm, and 282 nm lamps.
`
`EX. 1004, ¶ 0034; Petition, 13, 18; Pet. Reply, 8
`
`EX. 1004, ¶ 0022; Pet. Reply, 8
`
`45
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`45
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot repeatedly discloses using excimer lamps,
`including 222 nm, 254 nm, and 282 nm lamps.
`
`EX. 1004, Claims 10, 12; Pet. Reply, 8–9
`
`46
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`46
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Petitioners’ Rebuttal:
`o Clauss does not teach the use of 222 nm and
`254 nm light in combination?
`— Both Brown-Skrobot and Clauss disclose why a
`POSITA would use both
`
`Pet. Reply, 10–16
`
`47
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`47
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot explains a POSITA would be motivated to
`use multiple wavelengths for more efficient disinfection;
`for example, different organisms are sensitive to different
`wavelengths.
`
`EX. 1004, ¶ 0042; Pet. Reply, 13–14
`
`48
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`48
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Petitioners’ Rebuttal:
`o No motivation for POSITA to combine Brown-
`Skrobot and Clauss?
`— Both Brown-Skrobot and Clauss disclose 222 nm light for
`disinfection, and Brown-Skrobot teaches adding additional
`monochromatic sources
`— Combining Clauss’s specific implementation details with
`Brown-Skrobot’s disclosure would have been combination
`of prior art elements according to known methods; and
`— Combination would have yielded predictable results to
`successfully disinfect
`— Using multiple wavelengths had known advantages
`
`Petition, 12-15; Pet. Reply, 10–16
`
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`49
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`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Brown-Skrobot and Clauss both recognize a problem of
`photoreactivation (i.e. when a microorganism repairs its
`DNA using visible light after exposure to UV light)
`
`EX. 1004, ¶ 0058; Pet. Reply, 11–12
`
`EX. 1005, 582; Pet. Reply, 13–14
`
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`50
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Patent Owner’s expert claims that a POSITA would have
`been satisfied with the solution offered by Brown-Skrobot
`
`EX. 2001, ¶ 43; Pet. Reply, 10–14
`
`51
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`51
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• A POSITA would have understood that Brown-Skrobot’s
`testing data invited improvement:
`
`EX. 1004, [0070]; Pet. Reply, 10
`
`EX. 1004, ¶ 0069; Pet. Reply, 10
`
`EX. 1004, ¶ 0079; Pet. Reply, 10
`
`52
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`52
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• A POSITA would have understood that Brown-Skrobot’s
`solution was impractical and imperfect
`
`EX. 1037, ¶ 13; Pet. Reply, 12–13
`
`53
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`53
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• A POSITA would have been motivated to combine
`Brown-Skrobot and Clauss to develop a more permanent
`and effective solution
`
`EX. 1037, ¶ 14; Pet. Reply, 12–13
`
`54
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`54
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Patent Owner’s expert claims that Brown-Skrobot taught
`away from using 222 nm light
`
`POR, 15
`
`55
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`55
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Patent Owner fails to recognize two of the claimed
`wavelengths are still in the prior art
`• A POSITA would realize that since the limitations do not
`apply to metal devices, the potential dangers with
`polymers does not teach away from 222 nm light
`
`Pet. Reply, 15
`
`56
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`56
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Prior art (Sizer) teaches of the beneficial effects of 222
`nm light in sterilizing polymers
`
`EX. 1040, abstract; Pet. Reply, 15
`
`57
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`57
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Petitioners’ Rebuttal:
`o 222 nm excimer lamps were rare and
`expensive?
`— The ’605 patent and both experts
`acknowledged they were attainable
`
`Pet. Reply, 16-18
`
`58
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`58
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Evidence makes clear 222 nm KrCl lamps were attainable
`
`Pet. Reply, 16
`
`Pet. Reply, 17
`
`59
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`59
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`•
`
`’642 Patent admits commercial availability of lamps.
`
`EX. 1001, 2:4-6; Pet. Reply, 16-18
`
`60
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`60
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`• Both experts testified about the availability of these lamps
`
`Petitioners’ Expert
`EX. 2002, 51:10-16; POR, 28-29
`
`Patent Owner’s Expert
`EX. 1041, 83:17-21; Pet. Reply, 17
`
`61
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`61
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Prior art shows these lamps were commercially available
`
`EX. 1005, 583; Reply, 16-17
`
`EX. 1008, 1530; Reply, 17
`
`EX. 1003, APPXC, 553; Reply, 17
`
`62
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`62
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Petitioners’ Rebuttal:
`o POSITA would not have known how to
`account for facts affecting kill rate?
`— Differences in absorption based on treatment
`media were well-known to a POSITA
`— POSITA’s understanding of differences in
`absorption based on treatment medium would
`have accounted for cellular dehydration
`— POSITA at the time of the invention would have
`understood how to apply modeling tools if
`necessary to achieve the target disinfection rate
`
`Pet. Sur-Sur-Reply, 1-3
`
`63
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`63
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Patent Owner’s argument citing the Beer-Lambert Law
`proves that a POSITA would have known of differences in
`absorption based on treatment media.
`
`PO Sur-Reply, 18
`
`Ex. 1042, ¶ 4
`
`64
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`64
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Clauss recognized the known differences in absorption
`based on treatment media
`
`EX1005, 583
`
`65
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`65
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• POSITA would have accounted for these differences in
`translating Clauss and Ramsey’s findings to air and
`surfaces
`
`Ex. 1042, ¶ 4
`
`66
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`66
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Patent Owner’s expert’s statement calls into question
`Patent Owner’s statement re a POSITA’s consideration of
`UV damage to fully hydrated microorganisms versus
`microorganisms exposed to air
`
`Pet. Sur-Sur-Reply, 2
`
`67
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`67
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• POSITA still would have understood the effects
`of differences in absorption based on treatment
`medium used
`
`Ex. 1042, ¶ 5
`
`68
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`68
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Patent Owner’s expert’s argument against usage of the
`law of inverse proportionality based on non-specific
`handbook
`• No disclosure of what distance is considered “short,” nor
`why Clauss and Ramsey’s systems or modifications
`qualify as “short”
`
`Ex. 1042, ¶ 6. Pet. Sur-Sur-Reply, 2-3
`
`69
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`69
`
`
`
`Brown-Skrobot + Clauss: disinfecting surfaces using two
`of 222 nm, 254 nm and 282 nm wavelengths
`
`• Patent Owner’s evidence points to modeling tools
`that were known to POSITA
`
`Pet. Sur-Sur-Reply, 3
`
`70
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`70
`
`
`
`Issue 3
`
`Liang in view of Brown-Skrobot and
`Clauss renders obvious directing an
`air stream to the generated photons
`of at least two wavelengths of either
`222 nm, 254 nm, and 282 nm, and
`exposing the air stream to the
`generated photons (Claims 5 and 6).
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`71
`
`
`
`Brown-Skrobot + Clauss + Liang: disinfecting air stream
`using two of 222, 254, and 282 nm wavelengths
`
`•
`
`•
`
`Liang supplies the missing limitation of “exposing the air stream to
`the generated photons.” (EX1003, ¶¶ 112–23.)
`Brown-Skrobot + Clauss meet remaining limitations:
`o Brown-Skrobot teaches sterilizing medical devices using
`“monochromatic UV radiation” sources, preferably 220 to 320
`nm, including KrCl excimer lamps.
`o Brown-Skrobot teaches combining “different wavelengths” to
`“provide increased levels of sterility.”
`o Clauss teaches using KrCl lamp (222 nm) and low-pressure
`mercury lamp (254 nm), with differential effects from
`photoreactivation
`In combination, Brown-Skrobot’s method of sterilization is
`performed using Clauss’s KrCl lamp (222 nm) and low-pressure
`mercury lamp (254 nm)
`
`o
`
`Petition, 26–37
`
`72
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`72
`
`
`
`Overview of Liang: Description
`
`EX. 1006, ¶ 0012
`
`EX. 1006, 2 fig. 1
`
`Petition, 26
`
`73
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`73
`
`
`
`Overview of Liang: Previous devices either did not have
`enough exposure time or the UV dosage was too small.
`
`EX. 1006, ¶ 0009
`
`EX. 1006, ¶ 0009
`
`Petition, 27
`
`74
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`74
`
`
`
`Overview of Liang: Liang adds more lamps, increases the
`exposure length.
`
`EX. 1006, ¶ 0012
`
`EX. 1006, ¶ 0047
`
`Petition, 27
`
`75
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`75
`
`
`
`Overview of Liang: Liang adds more lamps, increases the
`exposure length.
`
`Basic Formula: (Id.)
`(UV Power) X (Exposure Time) > (UV Death Value)
`
`EX. 1006, ¶ 0048
`
`EX. 1006, ¶ 0048
`
`Petition, 27
`
`76
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`76
`
`
`
`Four Reasons to Combine Brown-Skrobot and Clauss
`with Liang.
`
`1. Liang would have motivated POSITAs to optimize it to
`maximize the killing of the microorganisms in the air.
`2. POSITAs would have sought to produce such devices and
`methods using known techniques.
`3. POSITAs would have understood and appreciated that
`using a UV light source comprising multiple wavelengths
`would yield certain predictable advantages.
`4. Liang would have motivated POSITAs to apply Brown-
`Skrobot and Clauss to Liang because all three teach uses in
`medical contexts.
`
`Petition, 30–33
`
`77
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`77
`
`
`
`1. Liang would have motivated POSITAs to optimize it to
`maximize the killing of the microorganisms in the air.
`
`Liang criticizes prior art for not killing enough microorganisms
`in air:
`
`Liang notes the risks caused by microorganisms:
`
`EX. 1006, ¶ 0009
`
`EX. 1006, ¶ 0004
`
`Petition, 30-31
`
`78
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`78
`
`
`
`2. POSITAs would have sought to produce such devices
`and methods using known techniques.
`
`• POSITAs would want to minimize photoreactivation
`effect. (Id.)
`
`• POSITAs would have known from Clauss that using
`excimer lamps prevents photoreactivation. (Id.;
`EX1005, 583.)
`
`EX. 1003, ¶ 83
`
`EX. 1005, 583
`79
`Petition, 31–32
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`79
`
`
`
`3. POSITAs would have known the advantages of using a
`UV light source comprising multiple wavelengths.
`• POSITAs would have known 254 nm light and 222 nm light
`inactivates microorganisms
`
`• As discussed, POSITAs would have been motivated to
`combine Brown-Skrobot and Clauss to increase sterility for
`microorganisms sensitive to different wavelengths. (Supra
`Issue 2; see also EX1004, ¶ 0042.)
`
`EX. 1003, ¶ 84
`
`Petition, 32–33
`
`80
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`80
`
`
`
`4. Motivation to use Liang with Brown-Skrobot to
`sterilize in medical contexts.
`
`EX. 1004, ¶ 0042
`
`EX. 1006, ¶ 0013
`
`Petition, 33
`
`81
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`81
`
`
`
`Claim 5: Claim Language
`
`EX. 1001, 10:16-20; Petition, 33–35
`
`82
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`82
`
`
`
`Claim 5: Analysis Summary
`
`It would have been obvious to combine Brown-Skrobot and
`Clauss’ multiple wavelengths with Liang’s teachings
`regarding air streams for Claim 5’s limitations.
`
`• The combination discloses directing (and exposing) an air
`stream to UV photons.
`
`• The combination discloses using at least two wavelengths.
`
`• The combination discloses generating photons of
`wavelengths of 222, 254, and 282 nm.
`
`Petition, 33–35
`
`83
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`83
`
`
`
`Claim 5: the combination discloses directing (and
`exposing) an air stream to UV photons.
`• Liang teaches “an air
`sterilizing method and
`apparatus to destroy all live
`microorganisms in the air
`in large volumes[.]”
`(EX1006, ¶ 0012.)
`
`• Liang’s “circuitous
`sterilizing chamber”
`“increase[s] both the
`traveling time of the
`sterilized air and the
`number of UV lamps
`installed[.]” (Id., ¶ 0049.)
`
`
`
`EX. 1006, 4 fig. 3EX 6 fi
`
`
`
`
`
`Petition, 33
`
`84
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`84
`
`
`
`Claim 5: the combination discloses directing (and
`exposing) an air stream to UV photons.
`
`POSITAs would
`recognize Liang’s
`use of 253.7 nm
`light as 254 nm
`light.
`
`EX. 1006, ¶ 0013
`
`EX. 1003, ¶ 114
`
`Petition, 33–34
`
`85
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`85
`
`
`
`Claim 5: the combination discloses using at least two
`wavelengths.
`
`EX. 1004, ¶ 0042
`
`Id.
`
`Petition, 34
`
`86
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`86
`
`
`
`Claim 5: the combination discloses generating photons of
`wavelengths of 222, 254, and 282 nm.
`
`Brown-Skrobot teaches using lamps at these wavelengths:
`
`EX. 1004, ¶ 0038
`
`EX. 1003, ¶ 116
`
`Petition, 34
`
`87
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`87
`
`
`
`Claim 5: it would have been obvious to combine Brown-
`Skrobot and Clauss with Liang.
`
`EX. 1003, ¶ 117
`
`EX. 1006, ¶ 0009
`
`Petition, 35
`
`88
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`88
`
`
`
`Claim 6: Claim Language
`
`EX. 1001, 10:21-25; Petition, 35–37
`
`89
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`89
`
`
`
`Claim 6a: determining required activity time to disinfect
`the air stream.
`
`POSITAs would have known how to determine the
`required activity time to disinfect the air stream.
`
`• Liang teaches that more than a “wink” is needed to kill
`all microorganisms.
`
`• Liang discloses a formula contemplating exposure time
`and UV death values.
`
`• POSITAs can find known UV death values in charts like
`in Johnson.
`
`Petition, 35-36
`
`90
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`90
`
`
`
`Claim 6a: determining required activity time to disinfect
`the air stream.
`
`Liang teaches that more than a “wink” is needed to kill all
`microorganisms:
`
`EX. 1006, ¶ 0048
`
`Petition, 36
`
`91
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`91
`
`
`
`Claim 6a: determining required activity time to disinfect
`the air stream.
`
`Liang discloses a formula contemplating exposure time and
`UV death values:
`
`EX. 1006, ¶ 0048
`
`Petition, 36
`
`92
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`92
`
`
`
`Claim 6a: determining required activity time to disinfect
`the air stream.
`
`POSITAs can find known UV death values in charts like in
`Johnson. (See, e.g., EX1015, 4:35–47 tbl. 2.)
`
`Id.
`
`Petition, 36
`
`93
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`93
`
`
`
`Claim 6a: determining required activity time to disinfect
`the air stream.
`
`EX. 1003, ¶ 121
`
`Petition, 36
`
`94
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`94
`
`
`
`Claim 6b: directing the photons to achieve disinfection of
`the air stream in a single pass.
`
`POSITAs would have known how to direct the
`photons to disinfect the air stream in a single pass.
`
`• Liang uses a “circuitous chamber(s)” to increase
`exposure to UV radiation.
`
`• Liang points out that prior art systems had sterilizing
`paths that were too short to kill enough microorganisms.
`
`
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