PTAB

IPR2015-00266

Product Miniature, Inc. v. POP DISPLAYS USA LLC

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1. Case Identification

2. Patent Overview

  • Title: Low Voltage Retail Display Assembly
  • Brief Description: The ’935 patent discloses a low-voltage retail display assembly for use in stores. The system features a pair of energized vertical standards that conduct power to conductive shelf support brackets, which in turn power an illumination structure (e.g., an array of LEDs) on the shelf, thereby eliminating the need for conventional wiring to each shelf.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 2, 5, and 6 over Griesshammer

  • Prior Art Relied Upon: Griesshammer (EP Patent No. 1 688 070).
  • Core Argument for this Ground: Petitioner argued that Griesshammer, a reference not considered during prosecution, single-handedly rendered the claims obvious because it taught all key features, including the "insulating rail cover" limitation that was the stated basis for allowance.
    • Prior Art Mapping: Petitioner asserted that Griesshammer disclosed a low-voltage illuminated display with all the core components of claim 1: conductive vertical supports with slots, conductive brackets, an illumination structure with an LED array, and a low-voltage power supply. Critically, Griesshammer taught that its conductive supports could be "provided with a protective or decorative surface coating." Petitioner contended this coating met the "insulating rail cover" limitation of the ’935 patent. For dependent claims 2 and 6, which add that the rail cover has slots, Petitioner argued it would be obvious to form openings in the coating to allow the brackets to pass through and make the necessary electrical contact with the underlying standard.
    • Motivation to Combine (for §103 grounds): Not applicable, as this is a single-reference ground.

Ground 2: Obviousness of Claim 1 over Piepszownik in view of Ter-Hovhannisian

  • Prior Art Relied Upon: Piepszownik (FR Patent No. 2 731 885) and Ter-Hovhannisian (Patent 7,121,675).
  • Core Argument for this Ground: Petitioner contended that Piepszownik, another reference not considered during prosecution, disclosed the fundamental system including the insulating cover. Ter-Hovhannisian, a reference cited during prosecution, provided the conventional teaching of using LEDs on a circuit board, making the combination obvious.
    • Prior Art Mapping: Piepszownik was argued to disclose a low-voltage illuminated display with energized standards and brackets. It explicitly taught that the posts can be "covered with an insulating material except at the level of their mutual contact surfaces," which Petitioner asserted directly disclosed the "insulating rail cover" limitation. Piepszownik used a fluorescent lamp, but Ter-Hovhannisian taught that it is conventional for display light units to comprise an array of LEDs assembled on a printed circuit board.
    • Motivation to combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would be motivated to modify the display of Piepszownik by replacing its fluorescent lamp with the LED-on-circuit-board configuration from Ter-Hovhannisian. This substitution would be driven by the well-known advantages of LEDs, including lower power consumption, longer life, reduced size, and greater durability.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as the combination merely involved substituting one known, conventional light source for another in a standard display system to achieve predictable benefits.

Ground 3: Obviousness of Claim 3 over Slesinger in view of Maheu

  • Prior Art Relied Upon: Slesinger (Patent 6,231,205) and Maheu (Patent 7,798,338).

  • Core Argument for this Ground: Petitioner argued that Slesinger, which was a primary reference during prosecution, taught nearly all elements of claim 3. Maheu was asserted to supply the final missing element: a specific bracket for mounting the display to a conventional retail gondola.

    • Prior Art Mapping: Slesinger was shown to disclose a low-voltage display system with conductive standards, brackets, wiring, and a power supply, which mapped to most limitations of claim 3. However, claim 3 specifically recites a "hang bracket" and "horizontal member" configured to hang the display from peg holes on a gondola wall. Petitioner argued Maheu disclosed this exact feature—a "universal mounting bracket" with a horizontal portion and prongs designed for attaching displays to standard retail pegboards.
    • Motivation to combine (for §103 grounds): A POSITA would combine the references because both concern retail display systems. Slesinger specified its display was for a "retail environment," and Maheu taught a standard method for mounting such displays. It would be a simple, commonsense modification to add Maheu's mounting bracket to Slesinger's display to allow it to be used on a common retail gondola.
    • Expectation of Success (for §103 grounds): The proposed modification involved applying a known mounting solution (Maheu) to a display system (Slesinger) for its intended and obvious purpose, presenting a straightforward design choice with a high likelihood of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Claim 3 over Griesshammer and Maheu; Claims 4 and 7 over Piepszownik alone; and Claim 5 over Griesshammer and Slesinger, all relying on similar prior art teachings and design modification theories.

4. Key Technical Contentions

  • "Insulating Rail Cover" as the Point of Novelty: Petitioner's core technical contention was that the patentability of the challenged claims hinged entirely on the "insulating rail cover" limitation. Petitioner argued this feature was added during prosecution solely to overcome prior art rejections and was identified by the examiner as the reason for allowance. The introduction of new prior art, specifically Griesshammer (teaching a "protective... surface coating") and Piepszownik (teaching posts "covered with an insulating material"), was argued to directly teach this limitation and thus undermine the patent's validity.
  • POSITA and Industry Standards: Petitioner defined a POSITA as having at least an associate degree in mechanical engineering and five to seven years of experience in display system design. It was argued that such a person would be familiar with common industry practices and safety standards, such as UL standards requiring the enclosure of live electrical parts, further reinforcing the obviousness of covering conductive standards with an insulating material for safety and decorative purposes.

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-7 of Patent 8,646,935 as unpatentable.