First Light Technologies Inc v. Trojan Technologies Group ULC

1. Case Identification

• Case #: IPR2022-00506
• Patent #: 8,167,654
• Filed: January 28, 2022
• Petitioner(s): First Light Technologies, Inc.
• Patent Owner(s): Trojan Technologies Group, ULC
• Challenged Claims: 1-5, 8-24

2. Patent Overview

• Title: Radiation Lamp and Radiation Source Module Incorporating Same
• Brief Description: The ’654 patent discloses a lamp device, particularly for use in fluid treatment systems like UV water disinfection, having a specific configuration of elongate electrical connectors designed to provide a reliable and secure electrical connection.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8-19, 23, and 24 are obvious over Ellner in view of Titchener.

• Prior Art Relied Upon: Ellner (Patent 4,700,101) and Titchener (Patent 7,033,203).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ellner, a pre-AIA patent describing a rugged UV lamp for water purification, discloses nearly all limitations of independent claims 1, 23, and 24. Specifically, Ellner was alleged to teach a lamp device with multiple pairs of elongate electrical terminal pins that are aligned in a spaced relationship orthogonal to the lamp’s longitudinal axis, with the ends of all connectors in substantial alignment along an orthogonal plane. The primary feature not disclosed by Ellner was the requirement that these connectors form an "oblique angle" with the longitudinal axis. To supply this missing element, Petitioner relied on Titchener, which addresses the known problem of accidental connector disconnection. Titchener was asserted to expressly teach electrical connectors with male coupling parts formed at an oblique angle to the longitudinal axis to ensure a secure, reliable connection. Petitioner further argued that this combination teaches the features of various dependent claims, such as parallel connectors (taught by both references), a base portion with an undulating shape comprising peaks and valleys (taught by Titchener), and male connector portions (taught by both).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Titchener’s known angled connector design with Ellner’s UV lamp to improve the reliability of the electrical connection and prevent accidental disconnection, a known problem in the field. Petitioner characterized this modification as a simple substitution of one known element (angled connectors) for an existing one (straight connectors) to obtain predictable and improved results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination, as it involved applying a known technique for improving connector security to a known device ready for such an improvement.

Ground 2: Claims 20-22 are obvious over Ellner in view of Titchener and Solymar.

• Prior Art Relied Upon: Ellner (Patent 4,700,101), Titchener (Patent 7,033,203), and Solymar (Patent 5,166,527).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Ellner and Titchener, which Petitioner argued discloses a connector base with a single peak and valley as taught by Titchener. To meet the limitations of claims 20-22, which require a connector base having a plurality of peaks and valleys, Petitioner introduced Solymar. Solymar, another patent in the field of UV lamps, was asserted to teach a connector with a stepped wall featuring multiple sections (i.e., a plurality of peaks and valleys) designed to provide a physical obstruction against electrical arcing.
  • Motivation to Combine: A POSITA seeking to further improve the design of the lamp connector taught by the Ellner and Titchener combination would be motivated to incorporate Solymar’s teaching of multiple peaks and valleys. This modification would add another known benefit—arc prevention—to the secure connection already provided by the base combination.
  • Expectation of Success: Petitioner asserted that the combination was a predictable application of known design elements from the same field of art, which would be expected to enhance the connector’s overall performance and safety.

4. Key Claim Construction Positions

• Petitioner proposed that the claim term "aligned in a spaced relationship with respect to a line orthogonal to the longitudinal axis" should be construed to mean "the connectors are spaced in a direction orthogonal to the longitudinal axis." No other specific constructions were argued to be necessary.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors, asserting that the parallel district court litigation was in its earliest stages, with no scheduling order issued or discovery conducted. Petitioner stated its intent to file for a stay and stipulated that it would withdraw any identical invalidity grounds from the district court if the IPR is instituted, thereby avoiding duplicative efforts.
• Petitioner also argued against denial under 35 U.S.C. §325(d), contending that although Titchener was presented to the examiner during prosecution, the primary reference, Ellner, was not. Petitioner asserted that the Office erred by focusing its analysis on a different, less relevant primary reference (Ciancanelli) and never properly considered the obviousness combination of Titchener with a strong primary reference like Ellner. This was claimed to be a material error in the previous examination warranting review.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 and 8-24 of the ’654 patent as unpatentable under 35 U.S.C. §103.