Federal Circuit reverses PTAB, citing “erroneous interpretation” of claim language and “misunderstanding” of precedent

Tech Con Prod v Light Science, Appeal No. 2019-1361, Fed. Cir. April 8, 2020.

Lighting Science Group Corp. (“LSG”) owns US patent no. 8,201,968 (the “‘968 patent”) directed to retrofit LED light fixtures that accommodate a variety of housing shapes and sizes, while yet maintaining a low profile when installed.  To this end, the claim recites a height/diameter ratio of the parts of the fixture that would extend beyond the installed surface – the heat sink, heat spreader and outer optic.  Technical Consumer Products, Inc. et al (“TCP”) petitioned for inter partes review based on a reference (“Chou”) that had been applied as anticipatory during prosecution.  PTAB determined that TCP did not establish that the claims of the ‘968 patent were anticipated by Chou, based solely on their finding that Chou did not disclose the H/D ratio recited in the claims.

Chou is also directed to retrofit LED lamps.  Chou describes a flange around the perimeter of the trim that is thermally conductive, but also teaches a heat sink that would be internal in the recessed can housing into which the Chou fixture was installed.  Chou discloses that 65% of the heat generated by the LED light source is dissipated through the trim and flange, with the remaining 35% dissipated by the heat sink.

The Examiner originally read Chou’s heat sink on the heat sink of the ‘968 claims, and the trim as disclosing the claimed heat spreader.  In response, Applicant amended the claim to require that the heat sink must be ring shaped and “disposed around and coupled to an outer periphery of the heat spreader.”  Applicant argued that Chou’s heat sink was neither of these things, and further argued that the combination of elements did not meet the recited H/D limitation, and the claims were allowed.

In its IPR petition, TCP argued that Chou did indeed anticipate claim 1 of the ‘968 patent when properly construed to read Chou’s outer flange on the claimed heat sink.  Further, TCP argued that the combination of Chou’s trim, flange and outer optic met the H/D recitation.  LSG responded that Chou’s heat sink must be included in the H/D calculation, as the Chou device would not function if the heat sink were removed.  Specifically, and citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013), LSG argued that “Chou would not be enabled based on the heat dissipation capabilities of outer flange 22 alone” because it would not function without the additional heat dissipation provided by heat sink 14.

PTAB agreed with LSG.  Unfortunately, the Federal Circuit did not.

Noting that claim 1 of the ‘968 patent recites the transitional phrase “comprising,”, the Federal Circuit held:

…LSG argued that both of Chou’s heat sinks, i.e., outer flange 22 and heat sink 14, must be included in the calculation of the H/D…The Board agreed.  This argument, however, contradicts the plain language of claim 1.  The claim only requires that a specific heat sink – the one annularly coupled to the heat spreader – be included in the H/D ratio calculation.  The claim does not suggest that all heat sinks in the luminaire must be included in this calculation, nor does it suggest that there must be only one heat sink.

The Federal Circuit rejected LSG’s argument that Chou was not enabled as follows:

Here, the invention disclosed in and enabled by Chou clearly includes heat sink 14.  TCP does not argue otherwise.  Instead, TCP argues that the relevant heat sink for anticipation and obviousness purposes is outer flange 22.  TCP’s invalidity theory does not require that heat sink 14 be removed from Chou’s light fixture.  It simply requires considering only the specific heat sink required by claim 1 – the one annularly coupled to the heat spreader – when assessing whether the H/D limitation is satisfied…This is a matter of claim construction, not enablement.

It is worth noting that the Court also held the Board to account for inconsistently interpreting Chou’s disclosure in proceedings for a related patent:

…the Board rejected LSG’s identical argument regarding heat sink 14, finding that “Chou’s flange 22 of trim 12 teaches a discrete ‘heat sink’ commensurate with claim 1” and that heat sink 14 was merely an additional, unrecited element.  Id.  It is difficult to reconcile these seemingly inconsistent findings, and we agree with the Boards analysis in TCP II.

Sadly, emphasis added.  If only….