Cordelia Lighting Inc v. Cooper Lighting LLC

1. Case Identification

• Case #: IPR2017-01857
• Patent #: 8,348,477
• Filed: July 26, 2017
• Petitioner(s): Cordelia Lighting, Inc.
• Patent Owner(s): Cooper Lighting, LLC
• Challenged Claims: 1-5, 7-16, and 18-19

2. Patent Overview

• Title: Light Emitting Diode Recessed Light Fixture
• Brief Description: The ’477 patent describes a downlight module for a recessed light fixture. The invention's key features include an LED light source package affixed to a substantially planar surface of a heat sink, where the planar surface faces the open end of the module. The module is mounted within a recessed housing using at least two torsion springs coupled to its exterior surface.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5, 7-10, 12-16, and 18-19 under 35 U.S.C. §102 over Zhang

• Prior Art Relied Upon: Zhang (Application # 2009/0097262).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zhang discloses every element of the challenged claims. Specifically, Zhang teaches a recessed LED lighting fixture that functions as a downlight module. It discloses an LED package affixed to a substantially planar interior surface of a heat sink (trim cup 112 and second heat sink 70). Critically, Zhang explicitly teaches the use of at least two torsion springs (80) coupled to the exterior surface of the module, which are configured to be disposed within a recessed housing (36) to mount the fixture. Petitioner contended that Zhang also discloses dependent claim features, including an Edison base adapter, a reflector, and specific color temperatures that would be inherent or obvious for a standard downlight application.

Ground 2: Obviousness of Claims 1-5, 7-16, and 18-19 under 35 U.S.C. §103 over DeCicco in view of Stimac

• Prior Art Relied Upon: DeCicco (Patent 6,588,922) and Stimac (Patent 6,787,999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that DeCicco discloses a recessed lighting fixture that uses "conventional and well known" torsion springs coupled to the exterior of a module to mount it within a housing. However, DeCicco teaches this mounting system for older light sources like incandescent or fluorescent lamps, not LEDs. Stimac, in contrast, teaches a modern LED-based modular lamp designed for retrofitting, which includes a plurality of LEDs on a circuit board coupled to a heat sink to manage thermal output. Stimac also discloses various adapters, including an Edison-type connector, for replacing conventional bulbs with its LED module.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to combine these references to improve the DeCicco fixture. Stimac teaches the known advantages of LEDs, such as durability and long operating life, and provides an LED module specifically for retrofitting older fixtures. A POSITA would therefore substitute the outdated light source in DeCicco with the superior LED light source and heat sink assembly from Stimac.
  • Expectation of Success: This combination would have yielded predictable results. It amounted to a simple substitution of one known light source for another within a conventional mounting system. A POSITA would expect the torsion springs from DeCicco to work equally well with the LED module from Stimac, as the function of the mounting hardware is independent of the light source technology.

Ground 3: Obviousness of Claims 1-5, 7-11, 13-16, and 18-19 under §103 over Lumodan in view of DeCicco

• Prior Art Relied Upon: Lumodan (European Patent Application EP1600691) and DeCicco (Patent 6,588,922).

• Core Argument for this Ground:

  • Prior Art Mapping: Lumodan discloses a downlight module using LEDs mounted on a substrate, a heat sink with a planar surface, and a reflector. While Lumodan teaches using springs to mount the module, it does not specifically disclose the externally-mounted torsion springs recited in the ’477 patent. DeCicco remedies this by teaching the use of "conventional and well known" torsion springs for mounting a light module within a recessed can.
  • Motivation to Combine: A POSITA would be motivated to modify the LED module of Lumodan by incorporating the torsion spring mounting system from DeCicco. This would be done to apply a known, effective mounting method to an LED module to ensure it could be installed in a standard recessed housing, which commonly uses brackets designed for torsion springs.
  • Expectation of Success: The combination would have been a straightforward application of a known mounting element (DeCicco's springs) to a known type of light module (Lumodan's LED assembly), leading to the predictable result of a securely mounted LED downlight.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1 and 12 based on Jones (Patent 5,463,540) in view of Stimac, relying on a similar theory of substituting a modern LED light source into an older fixture design that used torsion springs and an Edison adapter.

4. Key Claim Construction Positions

• Petitioner requested that claim terms be given their broadest reasonable construction, adopting several constructions proposed by the Patent Owner in related litigation.
• "coupled": "directly or indirectly mounted"
• "proximal": "near"
• "reflector": "any material configured to reflect, refract, transmit, or diffuse light, such as gloss white paint or diffuse white paint" (taken from the patent's specification).
• "means for mounting the heat sink and LED package...": Petitioner agreed this means-plus-function limitation has a function of "mounting the heat sink and LED package within a recessed light fixture" and a corresponding structure of "torsion springs."

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Priority Date: A central contention of the petition was that the ’477 patent is not entitled to its earliest claimed priority date of September 21, 2007. Petitioner argued that the earliest provisional applications lacked sufficient written description for key claim limitations, including "a heat sink coupled to the at least one LED package" and the Edison adapter of claim 12. Petitioner asserted the earliest effective filing date is no earlier than August 20, 2008. This argument is critical because it establishes Zhang (which claims priority to October 10, 2007) as qualifying prior art under §102(e) for the anticipation ground.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 7-16, and 18-19 of the ’477 patent as unpatentable.