Challenges Ahead for Kennall?
One of the major components of Kenall’s licensed and patented Indigo-Clean® technology has been deemed “unpatentable” by a panel of federal patent judges.
Back story:
Kenall has long been a leader in healthcare lighting. The company was one of the first larger lighting companies to promote a lighting disinfection narrative with accompanying product families. In 2015 they launched their very popular Indigo-Clean® family of products. The products have been largely well received by the industry and marketed as a smart solution to provide continuous disinfection to healthcare facilities and other applications.
Kenall licenses some of the Indigo-Clean® technology from the University of Strathclyde, a public university in Scotland. The university owns at least three patents relating to light disinfection, including U.S. Patent No. 9,839,706, (the ‘706 patent). Together, Kenall and the University of Strathclyde have been committed to protecting the intellectual property. One of the key patented attributes is that the disinfecting light that has a wavelength of 405nm.
In 2018, Kenall and the University of Strathclyde filed a lawsuit against Visa Lighting for patent infringement relating to light disinfection. That case was settled in May 2020. The ’706 patent and two other patents were cited in two other separate patent cases against Clear-Vu Lighting in 2018 and 555 Int’l, Inc. in 2017.
To be clear, 405nm light is NOT ultraviolet light. The light is indigo-colored light in the visible light spectrum and has been proven to kill staph such as MRSA and other pathogens. We couldn’t find any evidence that 405nm light deactivates viruses including COVID-19.
The recent developments:
- In 2018, Clear Vu filed a motion with United States Patent & Trademark Office challenging three Strathclyde patents -- including the ‘706 patent. An Inter Partes Review was launched to explore the enforceability of the patents.
- In 2019, the patent judges dismissed the motion on 2 of the 3 Inter Partes Reviews. The denial cited procedural reasons and not technical reasons relating to the intellectual property. The judges claimed that the plaintiff failed to show "that the Petitions name all real parties in interest" and "that the proceedings are not time barred."
- July 2020: The review of the ‘706 Patent was before a panel of three Administrative Patent Judges from the Patent Trial and Appeal Board which issued a decision holding that the ‘706 Patent’s claims were unpatentable.
- On September 8, 2020 the University of Strathclyde filed an appeal of the PTAB’s decision to the U.S. Court of Appeals for the Federal Circuit..
The impact:
- If the appeal is unsuccessful, this could cause the door (not floodgates) to open a crack for other companies to make 405nm products with less intellectual property (IP) conflict.
- The other two University of Strathclyde patents that are related to the ‘706 patent could potentially be challenged again. (U.S. Patents 8,398,264 and 9,039,966).
- Other companies like Kenall may also have IP in this area that may create obstacles, too.
- In order for 405nm technology to become free game for other fixture manufacturers, it would likely take a number of other patents to be successfully contested. This ruling on the ‘706 patent certainly creates some favorable arguments in favor of other similar patents being challenged.
- Even if all of the currently patented technology is someday deemed unpatentable, this doesn’t spell doom for Kenall nor does it indicate that the company has done anything wrong. In the event that all of the technology is no longer protected by patents it will simply allow for more competitors to enter the space with similar technology. Those companies will still have to contend with Kenall’s strong market share and 5+ year head start with the Indigo-Clean® family.
When we contacted Kenall for comment, a representative informed us that the company “can’t comment on pending litigation involving the University of Strathclyde.” Attorneys representing the University of Strathclyde provided information and clarifications relating to the proceedings. Our September 15 emails to Clear-Vu attorneys went unreturned. Indigo-Clean® is a registered trademark of Kenall.
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