PTAB

IPR2021-00646

IDEAL Industries Lighting LLC v. RAB Lighting Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: LED Light Fixture with Integrated Cooling Housing
  • Brief Description: The ’816 patent discloses an LED light fixture featuring a central "light package housing" containing light emitters. This is surrounded by a "cooling housing" designed for heat dissipation, which includes a plurality of cooling fins, an outer rim, and a radial ring fin support structure that creates channels for airflow.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Ter-Hovhannisyan - Claims 1-20

  • Prior Art Relied Upon: Ter-Hovhannisyan (Application # 2011/0309751).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ter-Hovhannisyan, which discloses an industrial LED light, anticipates or renders obvious all limitations of the challenged claims. Ter-Hovhannisyan’s environmentally sealed enclosure around its LEDs was alleged to be the claimed "light package housing." Its surrounding outer heat sink system was mapped to the "cooling housing," which includes cooling fins, a rim (the mechanical connection between upper and lower heat sinks), and a radial ring fin support. For independent claims 12 and 20, Petitioner asserted that Ter-Hovhannisyan’s gaps and vents form the claimed "vertical cooling channels" and that the concave interior of its heat sink serves as the "bottom side of the radial ring fin support" that redirects airflow radially inward. Petitioner further contended that dependent claim limitations, such as the flat top for ceiling mounting (claims 5 and 15) and the cylindrical shape of the housing (claims 7 and 17), are also expressly or inherently disclosed.
    • Motivation to Combine (for §103 grounds): In the alternative, Petitioner argued that modifying Ter-Hovhannisyan would have been obvious. For example, if the reference’s separate upper and lower fins are not considered a single "plurality of cooling fins," a person of ordinary skill in the art (POSITA) would combine them into continuous fins to simplify the structure and manufacturing process.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success in making such modifications, as they involved well-known design choices like altering a die-cast mold, which would predictably improve heat dissipation and simplify manufacturing without changing the fixture's function.

Ground 2: Obviousness over Ter-Hovhannisyan in view of Hsu - Claims 7 and 17

  • Prior Art Relied Upon: Ter-Hovhannisyan (Application # 2011/0309751) and Hsu (Application # 2010/0110691).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed the limitation in claims 7 and 17 that the "light package housing is about cylindrical." Petitioner argued that while Ter-Hovhannisyan’s housing is already "about cylindrical," a POSITA would have also looked to references like Hsu, which explicitly discloses a cylindrical LED housing with a substantially uniform diameter. The combination addresses any alleged deficiency in Ter-Hovhannisyan regarding this feature.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Ter-Hovhannisyan with Hsu’s teachings to improve heat dissipation. Modifying Ter-Hovhannisyan’s tapered inner heat sink to be uniformly cylindrical, as taught by Hsu, would increase the size of the air intake gaps and the surface area of the cooling fins, improving both convective and radiant heat transfer. Reducing manufacturing cost by using a simple, common cylindrical shape provided additional motivation.
    • Expectation of Success (for §103 grounds): Success was reasonably expected because modifying the shape of Ter-Hovhannisyan’s die-cast heat sink to be cylindrical was a minor, predictable design change that used conventional manufacturing techniques.

Ground 3: Obviousness over Ter-Hovhannisyan in view of Miller - Claim 11

  • Prior Art Relied Upon: Ter-Hovhannisyan (Application # 2011/0309751) and Miller (Application # 2010/0124058).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed the limitation in claim 11 requiring the cooling fins to have a "top edge... that is about coplanar with the top surface of the lighting package housing." Petitioner asserted that if Ter-Hovhannisyan was viewed as not meeting this limitation, Miller explicitly teaches it. Miller discloses an LED lighting assembly where the top edges of the radial cooling fins are shown to be about coplanar with the top surface of the heat sink that forms the LED housing.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references to improve thermal performance. Modifying the fins of Ter-Hovhannisyan to be coplanar with the top housing surface, as taught by Miller, would increase the surface area of the fins available for convective and radiative heat transfer, leading to more effective cooling.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success because the modification merely involved extending the fin length in the die-cast mold, a conventional and well-understood manufacturing adjustment with a predictable outcome of improved heat dissipation.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and §314(a) (based on Fintiv factors).
  • §325(d): Petitioner contended denial would be improper because the primary reference, Ter-Hovhannisyan, was not considered during prosecution and is not cumulative of the art that was considered. Specifically, Ter-Hovhannisyan allegedly discloses the very features (a rim and radially spanning fins) that the applicant used to overcome the examiner’s rejection based on the Lopez reference.
  • §314(a) (Fintiv): Petitioner argued the Fintiv factors strongly favor institution. The district court trial was scheduled for March 2023, well after the statutory deadline for a Final Written Decision in the IPR. Furthermore, investment in the parallel litigation was minimal, and no invalidity contentions had been served, meaning there was no overlap between the proceedings.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’816 patent as unpatentable under 35 U.S.C. §§ 102 and 103.