PTAB

IPR2023-01015

Uv Engineering Solutions LLC v. Trojan Technologies Group ULC

Log In
Key Events
Petition
petition

1. Case Identification

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, featuring a specific configuration of electrical connectors. The claimed invention centers on the geometric arrangement of these connectors, including their alignment relative to the lamp's longitudinal axis and their orientation at an oblique angle to ensure a reliable connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ellner and Titchener - 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, which concerns a rugged UV lamp for water purification, discloses all elements of the independent claims except for the connectors forming an oblique angle with the longitudinal axis. Ellner teaches a lamp device with multiple terminal pins (the claimed "elongate electrical connectors") that are aligned in a spaced relationship orthogonal to the lamp's axis, with their ends in substantial alignment. Titchener, which addresses the need for reliable electrical connections that resist loosening, expressly discloses connector pairs with male coupling parts configured at an oblique angle to prevent accidental unplugging. Petitioner asserted that modifying Ellner's straight terminal pins to be angled as taught by Titchener renders the claims obvious. For dependent claims, Titchener was also cited for teaching connectors with an undulating cross-section comprising peaks and valleys.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ellner and Titchener to improve the reliability of the electrical connection in Ellner's UV lamp, which is intended for rugged use. Petitioner contended that applying the known technique of angled connectors from Titchener to prevent disconnection in the known lamp device of Ellner is a simple substitution of one known element for another to solve a known problem and achieve predictable results.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in modifying Ellner’s terminal pins to be angled as shown in Titchener. This modification would predictably result in a more robust and reliable connection without altering the fundamental operation of the UV lamp.

Ground 2: Obviousness over Ellner, Titchener, and Solymar - 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 builds upon the combination of Ellner and Titchener from Ground 1 and adds Solymar to address the limitations of claims 20-22, which require the connector's base to have a "plurality of peaks and a plurality of valleys." While Titchener teaches a single peak and valley, Solymar, which relates to UV lamps for water purifiers, explicitly discloses a connector with a stepped wall structure comprising multiple peaks and valleys. This structure serves as a physical obstruction to prevent electrical arcing between connectors.
    • Motivation to Combine: A POSITA, having combined Ellner and Titchener to create a secure connection, would be further motivated to incorporate features to prevent electrical arcing, a known issue in connector design. Petitioner argued a POSITA would look to a reference like Solymar and incorporate its teaching of multiple peaks and valleys to enhance the safety and reliability of the connector design derived from Ellner and Titchener.
    • Expectation of Success: A POSITA would reasonably expect that modifying the connector base of the Ellner/Titchener combination to include the multiple peaks and valleys taught by Solymar would predictably provide an effective barrier against electrical arcing, thereby improving the overall design.

4. Key Claim Construction Positions

  • Petitioner proposed a construction for the term "aligned in a spaced relationship with respect to a line orthogonal to the longitudinal axis."
  • Proposed Construction: "the connectors are spaced in a direction orthogonal to the longitudinal axis."
  • This construction was offered to clarify the spatial relationship of the connectors, which is a central element of the independent claims. Petitioner stated that other terms should be given their plain and ordinary meaning.

5. Arguments Regarding Discretionary Denial

  • §314(a) / Fintiv Factors: Petitioner argued that discretionary denial under Fintiv would be inappropriate because there has never been any district court litigation between Petitioner and Patent Owner concerning the ’654 patent. The only related litigation involved a different party (First Light Technologies, Inc.) and was dismissed along with a prior IPR before any substantive matters were decided. Petitioner contended that instituting this review would be an efficient use of Board resources with no risk of duplicative efforts.
  • §325(d) / Same Art or Arguments: Petitioner argued that denial under §325(d) is unwarranted because the primary reference, Ellner, was never presented to or considered by the USPTO during the original prosecution. Although Titchener was before the examiner, it was only considered in combination with a different, less relevant reference. Petitioner asserted the examiner never properly considered the patentability of the claims over the specific combination of Ellner and Titchener, constituting a material error by the Office that justifies a new review.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of Patent 8,167,654 as unpatentable under 35 U.S.C. §103.