PTAB

IPR2016-01478

Generation Brands LLC v. Lighting Science Group Corp

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1. Case Identification

2. Patent Overview

  • Title: Low Profile Light
  • Brief Description: The ’968 patent discloses a low-profile LED lighting fixture designed for efficient heat dissipation. The invention comprises a heat spreader, a substantially ring-shaped heat sink disposed around the heat spreader, an outer optic, and an LED light source, all configured to have a low height-to-diameter ratio and cover a standard electrical junction box.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 6, and 14-15 under 35 U.S.C. §102 by Chou

  • Prior Art Relied Upon: Chou (Patent 7,670,021).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chou, which discloses a low-profile ceiling LED luminaire, teaches every limitation of the challenged claims. The core of the argument was that Chou’s single metal “trim 12” component performs the functions of both the claimed heat spreader and heat sink. The flat, interior portion of trim 12, where the LEDs are mounted, functions as the heat spreader by conducting heat outward. The outer, ring-shaped “flange 22” portion of the same trim 12 functions as the heat sink by dissipating that heat into the ambient air. Petitioner contended this single, integrally formed component meets the limitations of a "heat spreader and a heat sink" as claimed, satisfying independent claim 1 and dependent claim 2. Chou was also asserted to disclose the required low height-to-diameter ratio (0.21), dimensions to cover a standard junction box, and other limitations found in the dependent claims.
    • Key Aspects: The central contention was that the Examiner during prosecution failed to recognize that Chou's "trim 12" itself constituted the claimed heat sink, instead focusing only on a separate, secondary "heatsink 14" disclosed in Chou.

Ground 2: Anticipation of Claims 1, 2, 6, 11, and 14-15 under §102 by Roberge

  • Prior Art Relied Upon: Roberge (Patent 7,828,465).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Roberge’s low-profile LED fixture anticipates the claims using a similar structural argument as with Chou. Roberge’s single "frame or ‘heat sink’ 320" was argued to comprise two distinct functional portions. The flat, middle plane of the frame, sandwiched between the LED module and power module, acts as the claimed heat spreader. The peripheral ring of fins on the same frame acts as the claimed ring-shaped heat sink, which is disposed around the heat spreader portion. Roberge explicitly discloses a height-to-diameter ratio of 0.25 (2" height / 8" diameter) and its design for attachment to a standard 4-inch junction box. Petitioner argued that Roberge also teaches the dependent claim limitations, including an inner optic and an AC/DC power conditioner supported by the heat spreader.

Ground 3: Obviousness of Claims 1, 5, 14-15, and 19-23 over Soderman in view of Silescent

  • Prior Art Relied Upon: Soderman (Patent 7,980,736) and Silescent (a product installation and data sheet for the commercial embodiment of Soderman).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Soderman discloses the core structure of the claimed invention, including a "mounting assembly 18" (the heat spreader) that transfers heat to a surrounding ring-shaped "cover structure 20" (the heat sink). While Soderman teaches a low-profile fixture, it does not explicitly disclose the height-to-diameter ratio or dimensions to cover a 4-inch junction box. The Silescent product literature, disclosing the commercial embodiment of Soderman, supplies these missing details, teaching an H/D ratio of 0.101 (0.80"/7.90") and its compatibility with standard junction boxes. Silescent also explicitly discloses the AC/DC power conditioner required by claims 15 and 19.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Soderman with Silescent because Silescent is the commercial embodiment of the Soderman patent, with both being authored by the same inventor. A POSITA would look to the product literature to understand how to implement the patented device with specific, functional dimensions and power supplies, making the combination a matter of routine design implementation.
    • Expectation of Success: Combining the explicit dimensions from Silescent with the structure of Soderman would predictably result in a functioning, low-profile fixture with the claimed characteristics, as Silescent is simply the physical realization of Soderman's teachings.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 11 and 16 over Chou in view of Roberge and Love (Patent 6,616,291) respectively; claims 1, 2, 6, 11, and 14-15 as obvious over Roberge; claim 16 as obvious over Roberge in view of Love; and various claims as obvious over Soderman/Silescent in further view of Chou or Roberge.

4. Key Claim Construction Positions

  • "heat spreader" and "heat sink": Petitioner proposed a functional construction based on the specification. The "heat spreader" is the component that moves heat from the heat source (LEDs) to the heat sink, while the "heat sink" is the component that dissipates the heat into the air. This construction allows a single, unitary prior art component (like Chou's trim or Roberge's frame) to be mapped to both claimed elements based on the distinct functions of its different portions.
  • "integrally-formed": Proposed to mean "formed together as one thing." This supports the argument that the single-piece trim in Chou and frame in Roberge meet the limitation of claim 2.
  • "ring-shaped": Proposed to mean "generally round with a hole in the middle." This broad construction was argued to encompass the structures in the prior art, which may not be perfectly circular.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5, 6, 11, 14-16, and 19-23 of the ’968 patent as unpatentable.