Ge Lighting Solutions LLC v. FarLight LLC

1. Case Identification

• Case #: Unassigned (at time of filing)
• Patent #: 8,220,959
• Filed: January 6, 2014
• Petitioner(s): GE Lighting Solutions, LLC
• Patent Owner(s): Light Transformation Technologies LLC
• Challenged Claims: 1-7

2. Patent Overview

• Title: Highly Efficient Luminaire Having Optical Transformer Providing Precalculated Angular Intensity Distribution and Method Therefore
• Brief Description: The ’959 patent relates to a light transformer device used with light sources like LEDs. The device employs an optic with total internal reflection (TIR) surfaces and an aspheric lens to redirect and redistribute light into a predetermined, low-divergence beam, thereby increasing the efficiency and useful output of the luminaire.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3, 4, 6, and 7 under 35 U.S.C. §102

• Prior Art Relied Upon: Brown (U.K. Patent Application Publication No. 2 282 700).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brown discloses every element of independent claims 1 and 4, as well as dependent claims 3, 6, and 7. The core of the argument rested on Brown’s disclosure of a light-emitting diode optic that uses TIR surfaces to capture and redirect stray light, thereby changing the light’s “angular intensity distribution” into a narrower, more intense beam. Petitioner contended this directly maps to the claimed "light transformer" that "redistributes" light, especially under the claim construction for "redistributes" that the Board had previously adopted in a related proceeding. The argument asserted that the independent claims of the ’959 patent are substantively identical to claim 6 of the parent ’911 patent, which the Board had already found anticipated by Brown in a separate inter partes reexamination.
  • Key Aspects: The Petitioner’s argument heavily leveraged the procedural history of the parent patent. It repeatedly emphasized that the Board, in the reexamination of the ’911 patent, and the PTAB, in an institution decision for a separate IPR on the ’959 patent (IPR2013-00238), had already accepted that Brown teaches these claim limitations.

Ground 2: Obviousness of Claims 2 and 5 under 35 U.S.C. §103

• Prior Art Relied Upon: Brown (U.K. Patent Application Publication No. 2 282 700) and McDermott (Patent 6,048,083).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Brown teaches all limitations of the independent claims 1 and 4, upon which dependent claims 2 and 5 depend. McDermott was argued to supply the additional limitations of claims 2 and 5: a "plurality of light sources" arranged in a "substantially circular array" having a "toroidal shape" to create an "omnidirectional pattern." McDermott explicitly discloses an electronic lighting device with a plurality of LEDs in a circular lamp assembly to concentrate light into a composite beam.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Brown and McDermott because both references address the same fundamental problem: solving the scattered light patterns from LEDs to provide an apparatus with increased light intensity and efficiency. A POSITA would combine Brown’s efficient light-collimating optic with McDermott’s circular array of LEDs to create a superior and more intense lighting device.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination, as it involves integrating known optical components for their predictable functions. Petitioner noted that the PTAB had already reached this conclusion when it instituted IPR2013-00238 on the same combination of references.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term "redistributes," which appears in the limitation "a total internal reflection surface that redirects and redistributes the received light."
  • Proposed Construction: "light, upon reflection, undergoes a change in its angular intensity distribution."
  • Importance: This construction was central to the anticipation argument. Petitioner asserted that the Board had already adopted this construction during the inter partes reexamination of the parent ’911 patent. By defining "redistributes" as a change in angular intensity, Petitioner argued that Brown’s disclosure of modifying luminous intensity plots (making the light beam narrower and more intense) met this limitation, thereby anticipating the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner preemptively addressed the issue of filing a potentially duplicative petition. It acknowledged that another party (Volkswagen Group of America) had previously filed a petition against the same claims of the ’959 patent on the same grounds (IPR2013-00238), and that the PTAB had already instituted that review.
• Petitioner justified filing this subsequent petition by citing a "possible settlement" between the patent owner and the first petitioner, which could terminate the initial IPR. It argued that the one-year statutory time limit for filing an IPR under §315(b) left it with "no choice but to file" to preserve its rights. Petitioner also stated it would not object to its petition being joined with the earlier IPR proceeding.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 of Patent 8,220,959 as unpatentable under 35 U.S.C. §§ 102 and 103.