Can you patent a wavelength?

I came across some recent commentary on LinkedIn about intellectual property (IP) ownership and patent infringement, which led me to find a release that states New Hampshire-based Far-UV Sterilray has filed a counter-suit against “Healthe, Inc. for patent infringement in the United States District Court Middle District of Florida, Orlando Division, and sued Far UV Technologies for patent infringement and other torts on May 17, 2021 in the United States District Court for the Western District of Missouri.” You can read the Far-UV Sterilray press release on the company’s website. There was some online debate regarding the validity of the patent infringement claims, and viability of related litigation, from parties not currently named in the suits. Prior to this May litigation announcement, Healthe, Inc. had filed a pre-emptive claim for damages and jury trial against Far-UV Sterilray.

These are sources provided for context only. I do not imply any support for parties involved in potential litigation. LEDs Magazine has no skin in the game when it comes to patents and technology litigation. What sparked my interest was the central claim of the original poster, who declared the heart of the matter was about claiming ownership of a wavelength. Far ultraviolet C-band (far UV-C), to be more specific. 222 nm, to get even more granular. I wanted to have a more academic or even hypothetical conversation: Can you patent a wavelength? How could one claim inventorship or IP ownership of something made of photons?

Far be it from me to assume I am an expert in interpreting patent claims or IP ownership. So I contacted someone who can fairly make such a claim. Marshall Honeyman, a patent attorney, has contributed several articles to LEDs Magazine and has spoken at our Strategies in Light conference, sharing his legal expertise and knowledge as a former patent examiner at the US Patent & Trademark Office (USPTO). Last year, Marshall contributed an article that provided an entertaining yet informative “what if?” approach to potential UV disinfection technology patent filing challenges. Previously, he explained the America Invents Act and advised a proactive approach to patent strategy. I lay before you his established credentials!

Marshall and I agreed that the scope of this conversation was not to interpret this specific lawsuit and its plaintiffs’ or defendants’ claims but simply to use it as a way to understand how a patent works and to clarify, for general audience understanding, what it does and does not cover. Of the initial question, he said, “There are two ways you can patent something like that — one is as a process and the other is as a device or a system,” he explained. “No, you can’t patent a wavelength. It has existed before… it’s not novel.” Marshall continued, “That’s nothing that is patentable. But if you were using that wavelength for a particular purpose in a process, [then] you might be able to claim” that process in a patent.

I observed that the patent claims can be rather confusing. I consider myself pretty well read and I still had questions. So I asked Marshall if he could elaborate on what requirements would need to be met by a plaintiff to establish patent infringement.

Marshall commented, “You know, there’s language from a patent case… I think it was Giles Rich, he’s a famous patent judge. He said, ‘The name of the game is the claim.’ And the point of that was that when you deviate from what is expressed in the claims in a patent, there can be all kinds of uncertainty. You can’t figure out what a patent covers by looking at the general disclosures or figures. A patent claim is [just] a list of components [or steps] that are combined in a particular way.” And the claims define the property right. Not the other stuff.

The claims each have elements that are itemized, and each one of those elements, e.g., A, B, C, D, and so on must all exist in the allegedly infringing thing for infringement to exist. To use an analogy, he explained, “Some of us own a home or some property, and [the property title and documentation] has a property description in it. And that property description carves out the [boundaries and features] of that property — in real terms because it’s an actual plot of land. And patent claims do this same thing by expressing different process steps in a combination, or different system components in a combination.”

And in order for you to infringe, “you have to be either executing every step that they express in a patent claim, or you have to use every single component they’re using in the same orientations and things that are expressed in the claim,” Marshall said, outlining the loops or potential escape routes in a hypothetical patent dispute.

At the end of the conversation, I re-stated the query as: If I were to clearly demonstrate that my product has similar or duplicate features covered in elements A, B, and C, but not similar or duplicate to those in element D, does my product infringe on your patent? Smiling, Marshall shook his head. Technically you wouldn’t infringe, but might if you have something that is equivalent to “D.” “That’s the dirty work that has to get done by the patent attorneys with the courts in figuring out what is covered, what’s in, and what’s out,” Marshall concluded.

Being a language geek, I find it fascinating how levels of interpretation can be used to bolster the ownership of concepts and their execution. Am I alone?

Disclaimer: The information and comments contained herein do not represent any statements or interest in any pending litigation by Erise LLP. All comments contained herein are stated as opinion, commentary, or established procedural fact by the individual(s) quoted herein and author of this piece.

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