PTAB

IPR2019-01094

AMP Plus Inc v. DMF Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Unified Driver and Light Source Assembly for Recessed Lighting
  • Brief Description: The ’266 patent discloses a compact, recessed LED lighting system where the light source module and driver are integrated within a single, heat-conducting casting designed to fit inside a standard electrical junction box.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-11, 13, 15-17, 19, 21, and 26 are anticipated by Imtra 2011.

  • Prior Art Relied Upon: Imtra 2011 (a 2011 marine lighting sales catalog).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Imtra 2011, a publicly available sales catalog, disclosed every limitation of the challenged independent claims. Specifically, it showed a compact, recessed LED downlight (the Portland PowerLED) with a light source and integrated driver contained within a unified, die-cast aluminum housing that serves as a heat sink. Petitioner contended this housing met the "unified casting" limitation, including a closed rear face and sidewalls. Crucially, Petitioner asserted that Imtra 2011's cutaway diagrams showed the light source positioned closer to the closed rear face of the housing than the open front face—a limitation added during prosecution to achieve allowance. The catalog also allegedly disclosed dimensions (e.g., recessed depth of 0.92 inches) that would allow the device to fit within a standard junction box and included mounting holes for installation.
    • Key Aspects: The core of this ground was that a single prior art product catalog disclosed every element of the claims, including the specific geometric limitation that the examiner relied upon for patentability.

Ground 2: Claims 1-2, 4-11, 13-17, 19, 21-22, 25-26, and 28-30 are obvious over Imtra 2011 in view of Imtra 2007.

  • Prior Art Relied Upon: Imtra 2011 and Imtra 2007 (a 2007 marine lighting sales catalog).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground served as an alternative to anticipation, arguing that to the extent any feature was ambiguously disclosed in Imtra 2011, it was explicitly shown or clarified by Imtra 2007. Petitioner argued that Imtra 2007, an earlier catalog for the same product line, provided clearer diagrams confirming the position of the LED module close to the rear wall of the heat-sink housing. Furthermore, Imtra 2007 was used to explicitly disclose additional features recited in dependent claims, such as rabbet recesses in the housing for retaining a lens or trim plate (relevant to claims 14 and 29) and mounting holes on the housing's flange.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the two catalogs because they described the same family of products over a five-year period. A POSITA seeking to understand the product's features would naturally consult related product literature to gain a complete technical picture and understand all available design options for the same product.
    • Expectation of Success: Success would be expected as the combination merely involved consulting different product brochures for the same or similar products to confirm and understand existing features, not inventing a new configuration.

Ground 3: Claims 1-2, 4-11, 13-17, 19, 21-22, 25-26, and 28-30 are obvious over Imtra 2011 and Imtra 2007 in view of Gifford.

  • Prior Art Relied Upon: Imtra 2011, Imtra 2007, and Gifford (Patent 9,366,418).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was asserted to address any potential argument that the Imtra references failed to explicitly teach mounting the lighting device to a standard junction box via tabs or the use of interlocking electrical connectors. Petitioner argued Gifford remedied these potential deficiencies by teaching an adapter apparatus for recessing a compact lighting system within a standard electrical junction box. Gifford explicitly disclosed using screw fasteners to mount the fixture to the tabs of a junction box. Gifford also taught the use of interlocking and twist-type connectors for connecting the fixture's driver to the building's main power conductor within the junction box.
    • Motivation to Combine: A POSITA, starting with the compact Imtra light designed for shallow-depth installations, would be motivated to find a conventional method for installing it in a standard junction box, a common component in residential and commercial construction. Gifford provided a known, off-the-shelf solution for this exact problem. Similarly, a POSITA would look to the art for standard, safe ways to connect the device to a power source, leading them to the interlocking connectors taught by Gifford.
    • Expectation of Success: A POSITA would have a high expectation of success, as this combination involved applying a well-understood mounting and connection solution (Gifford) to a known compact light fixture (Imtra) to achieve the predictable result of a safely installed and powered recessed light.

4. Key Claim Construction Positions

  • "driver": Petitioner argued that the term "driver" should be given its plain and ordinary meaning as defined within the claims themselves: "the driver including an electronic device to at least one of supply and regulate electrical energy to the light source module." Petitioner anticipated that the Patent Owner would attempt to improperly narrow the term to a device that receives "building main voltage" (e.g., 120 VAC). Petitioner contended this limitation was not required by the claim language, the specification (which explicitly mentioned DC voltage), or extrinsic industry standards, and therefore should be rejected.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-11, 13-17, 19, 21-22, 25-26, and 28-30 of the ’266 patent as unpatentable.