AMP Plus Inc v. DMF Inc

1. Case Identification

• Patent #: 9,964,266
• Petitioner(s): AMP PLUS, INC. dba ELCO LIGHTING
• Patent Owner(s): DMF, Inc.
• Challenged Claims: 1, 2, 4-11, 13-17, 19, 21-22, 25, 26, and 28-30

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 comprising a light source module, a driver, and a reflector contained within a "unified casting." The assembly is designed to be installed within a standard-sized electrical junction box.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Kim (Patent 9,222,661) and Gifford (Patent 9,366,418).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kim disclosed most of the claimed elements, including a compact lighting system with a housing (sidewall) coupled to a heat sink (closed rear face) to form a unified casting. Kim’s device contained a light source, a driver, and a reflector, with the light source positioned closer to the heat-conducting rear face. However, Petitioner argued Kim did not explicitly teach mounting the device to a standard junction box. Gifford was alleged to supply this missing element by teaching a compact lighting system adapter designed to be recessed within a standard ceiling junction box, including elements (holes) for attaching to the junction box tabs.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would be motivated to combine the references because Kim taught a compact lighting device for ceiling installation but did not specify the mounting method. Gifford provided a known, conventional method for mounting such a device in a standard junction box. A POSITA would combine Kim’s lighting assembly with Gifford’s mounting solution to achieve the predictable result of making the Kim device installable in a common junction box.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as mounting lighting fixtures in junction boxes is a routine and well-established practice, and the combination involves applying known mounting techniques to a known type of lighting assembly.

Ground 2: Anticipation by Kim - Claims 17 and 22 are anticipated by Kim.

• Prior Art Relied Upon: Kim (Patent 9,222,661).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim alone taught every limitation of independent claims 17 and 22. Unlike claim 1, these claims do not include the limitation requiring a plurality of elements for mounting the casting to a standard junction box (limitation [H]). Petitioner contended that Kim disclosed all other features, including the unified casting, a light source and driver positioned inside with the light source closer to the rear face, a reflector, and heat dissipation features. For claim 22, Kim was also alleged to disclose the LED module, fins on the casting’s sidewall, and keyed connectors.

Ground 3: Obviousness over Kim, Gifford, and/or Chang - Claims 7 and 14-16 are obvious over the combination of Kim in view of Gifford and/or Chang.

• Prior Art Relied Upon: Kim (Patent 9,222,661), Gifford (Patent 9,366,418), and Chang (Patent 8,454,204).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented to address specific dependent claim limitations should the Patent Owner argue they are not taught by Kim or Gifford. Petitioner asserted Chang explicitly disclosed features common in the art, such as heat sink fins on the housing (claim 7), a rabbet feature for attaching components (claim 14), a twist-lock connector (claim 15), and a detachable trim ring (claim 16).
  • Motivation to Combine: A POSITA would be motivated to modify the Kim device with the known features from Chang to improve the device for its intended purpose. For example, adding a trim ring via a twist-lock mechanism, as taught by Chang, is a common and required feature for recessed lighting to conceal the installation hole and meet safety standards.
  • Expectation of Success: A POSITA would expect success in adding these conventional features from Chang to the Kim device, as they are standard components used for their recognized functions in lighting systems.

4. Key Claim Construction Positions

• "unified casting": This term was central to the petition. Petitioner argued it should be construed as "a structure formed from a single element or from multiple elements brought together to form the structure," which is multi-functional (acting as both housing and heat sink) but not necessarily a single, monolithic piece.
  • Supporting Arguments: Petitioner pointed to the ’266 patent specification, which stated the casting may be "formed through the welding of metal sheets" and can be made of "metals, polymers, metal alloys, and/or other materials." Petitioner argued these descriptions explicitly contemplated a structure made of multiple pieces and/or materials.
  • Relevance: This construction was critical because the primary prior art, Kim, disclosed a lighting assembly where the housing and heat sink were two separate components joined together. A narrow construction of "unified casting" as a single piece would make Kim less relevant.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) because the primary prior art references relied upon (Kim and Chang) were never presented to or considered by the Examiner during the original prosecution of the ’266 patent.
• While a similar reference (Woo) was before the Examiner, Petitioner contended it was never the basis for a rejection, and the prosecution record contained only a scant analysis of it. Petitioner asserted that this inter partes review (IPR), with new art, expert testimony, and more developed arguments, was not substantially the same as what the Patent Office previously considered.

6. Relief Requested

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