A "Driver" In Claim Construction: Claim Differentiation And Intrinsic Evidence In The Specification Are Important Factors For Defining Language In A Claim

• Published date: 21 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Leo Huang, Mark Hanson and Thomas Irving

Holding

In AMP Plus, Inc. v. DMF, Inc., No. 21-1595 (Fed. Cir. Nov. 10, 2022), the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's ("the Board") decision that claim 17 was anticipated and that the remaining challenged claims were not unpatentable as obvious. The Board also vacated and remanded the decision by the Board that independent claim 22 was not unpatentable for obviousness, ruling that the Board had failed to explicitly address the patentability of claim 22.

Background

AMP Plus, Inc., d/b/a ELCO Lighting ("ELCO") petitioned for inter partes review ("IPR") of U.S. Patent No. 9,964,266 ("the '266 patent"), which is owned by DMF, Inc. Id. at *2. The '266 patent is generally directed to a "compact recessed lighting system" that can be installed in a standard electrical junction box. Id.

In the IPR petition, ELCO asserted that claims 1, 2, 4-11, 13, 15-17, 19, 21, and 26 in the '266 patent were anticipated by a product catalog published in 2011 by Imtra Corporation ("Imtra 2011"), which detailed various lighting fixtures for boats. Id. at *5. ELCO also asserted that claims 1, 2, 4-11, 13-17, 19, 21, 22, 25, 26, and 28-30 were obvious in view of either: (1) Imtra 2011 and a second Imtra catalogue published in 2007 ("Imtra 2007″), or (2) Imtra 2011 and Imtra 2007, in further view of U.S. Patent No. 9,366,418 ('Gifford'), which described a non-recessed lighting system that can be attached to a standard junction box. Id.

The Board found that Imtra 2011 disclosed all limitations of claim 17, and that claim 17 was thus anticipated by Imtra 2011. Id. at *6. The Board also found that Imtra 2011 failed to disclose the additional "plurality of elements" limitation included in the remaining claims at issue, including claim 22. Id. The Board further determined that: (1) Imtra 2007 did not disclose the "plurality of elements" limitation that was missing from Imtra 2011, and (2) a skilled artisan would not have been motivated to combine the Gifford reference with Imtra 2011 and Imtra 2007 to develop the claimed invention. Id. Accordingly, the challenged claims other than claim 17 were held not unpatentable as obvious. Id.

In a procedural oddity, the Board failed to provide an opinion regarding the obviousness of claim 22, which resulted in the Federal Circuit vacating and remanding the Board's decision on claim 22. Id. at *7-8.

Federal Circuit Decision

On Appeal, ELCO argued that the Board erred in finding that there was no...