- Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19
Patent outcomesUS 8,967,844 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,967,844
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.