`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`
`AMP PLUS, INC. dba ELCO LIGHTING,
`Petitioner
`
`
`v.
`
`
`DMF, INC.,
`Patent Owner
`
`________________________________
`
`
`
`Case No. IPR2019-01094
`Patent No. 9,964,266
`
`
`________________________________
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`

`

`Table Of Contents
`
`B.
`
`II.
`
`Table of Authorities ................................................................................................. iv
`I.
`Factual Background ......................................................................................... 1
`A.
`Industry Praise for—and ELCO’s Copying of—DMF’s Patented DRD2
`Product ................................................................................................... 2
`District Court Litigation ........................................................................ 5
`1.
`Preliminary Injunction ................................................................ 5
`2.
`Claim Construction ..................................................................... 6
`3.
`Current Case Status ..................................................................... 6
`‘266 Patent Field of Technology and Person of Ordinary Skill ...................... 6
`A.
`‘266 Patent specification explains importance of building codes to the
`claimed invention .................................................................................. 7
`‘266 Patent File History explains importance of building codes to the
`claimed invention ................................................................................10
`ELCO’s expert concedes
`importance of building codes
`in
`understanding the ‘266 Patent invention .............................................18
`There are important differences between recessed lights and surface
`mounted lights .....................................................................................19
`Only a few, not all, junction boxes can be used to mount a light fixture
` .............................................................................................................22
`Low-voltage devices do not require a junction box ............................24
`The prior art did not teach mounting recessed lights inside junction
`boxes ....................................................................................................25
`III. References Cited in the Petition ....................................................................28
`A.
`Imtra 2011 (Ex. 1005) .........................................................................28
`B.
`Imtra 2007 Catalog (Ex. 1006) ............................................................30
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`G.
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`Gifford Patent (Ex. 1007) ....................................................................30
`C.
`IV. Summary of Arguments .................................................................................33
`V.
`Claim Construction ........................................................................................34
`A.
`Legal Principles ...................................................................................34
`B.
`“standard junction box” .......................................................................36
`1.
`Building main power ................................................................. 36
`2.
`Industry-specified size .............................................................. 37
`“driver” ................................................................................................40
`C.
`“unified casting” ..................................................................................43
`D.
`VI. Ground 1: The Petition Fails to Show that the Challenged Claims
`are Anticipated by Imtra 2011. ......................................................................43
`A.
`Petitioner’s Ground 1 Fails As A Matter of Law ................................43
`B.
`Imtra 2011 Does Not Anticipate Any Challenged Claim ...................46
`1.
`Limitation B – “driver” ............................................................. 46
`2.
`Limitation H (Claims 1 and 26), Claim 9, Claim 11,
`Claim 19, Claim 21, Claim 25 – “plurality of elements”
` ................................................................................................... 47
`VII. Ground 2: Alleged Obviousness by Imtra 2011 in view of Imtra
`2007 ...............................................................................................................52
`A. Obviousness Standards. .......................................................................52
`B.
`Objective Evidence of Nonobviousness Rebut any Prima Facie
`Showing of Obviousness .....................................................................53
`“driver” ................................................................................................54
`“plurality of elements” ........................................................................55
`
`C.
`D.
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`VIII. Ground 3: Alleged Obviousness by Imtra 2011 and Imtra 2007 in
`view of Gifford ..............................................................................................58
`A.
`“driver” limitation ...............................................................................59
`B.
`“plurality of elements” ........................................................................60
`IX. Conclusion .....................................................................................................63
`
`
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`Table of Authorities
`
`Cases
`Applied Med. Res. Corp. v. United States Surgical Corp.,
`147 F.3d 1374 (Fed. Cir. 1998) .....................................................................42
`CFMT Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .....................................................................53
`Connell v. Sears, Roebuck & Co.,
`722 F.3d 1542 (Fed. Cir. 1983) .....................................................................45
`In re Royka,
`490 F.2d 981 (CCPA 1974) ...........................................................................53
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) .....................................................................53
`InTouch Technologies, Inc. v. VGO Communications,
`751 F.3d 1327 (Fed. Cir. 2014) .....................................................................53
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007).......................................................................................53
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .....................................................................45
`Orexo AB v. Actavis Elizabeth LLC,
`903 F.3d 1265 (Fed. Cir. 2018) .....................................................................53
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc). ............................................. 34, 42
`Polaris Industries, Inc. v. Arctic Cat.,
`882 F.3d 1056 (Fed. Cir. 2018) .....................................................................54
`WBIP, LLC v. Kohler,
`829 F.3d 1317 (Fed. Cir. 2016) .....................................................................54
`
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`Statutes
`35 U.S.C. § 313 .......................................................................................................... 1
`
`Rules
`37 C.F.R. § 42.100(b) ....................................................................................... 34, 35
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.200(b) ..............................................................................................35
`37 C.F.R. § 42.300(b) ..............................................................................................35
`
`Other Authorities
`Trial Practice Guide Update,
`84 Fed. Reg. 33,925 at 16 (July 16, 2019) ....................................................35
`
`
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`Patent Owner DMF Inc. (“DMF”) submits this response1 to the Petition for
`
`inter partes review (“IPR”) filed May 17, 20192 (Paper 1, herein “petition” or
`
`“Pet.”) by AMP Plus, Inc. dba ELCO Lighting (“ELCO” or “Petitioner”) for
`
`DMF’s U.S. Patent No. 9,964,266 (“the ʼ266 Patent”, Ex. 1001). ELCO’s Petition
`
`seeks review of the following ‘266 Patent claims:
`
`● Independent Claim 1 and dependent Claims 2, 4-11 and 13-16
`● Independent Claim 17 and dependent Claims 19 and 21
`● Independent Claim 22 and dependent Claim 25
`● Independent Claim 26 and dependent Claims 28-30
`
`Factual Background
`
`The ’266 Patent concerns a compact recessed lighting system for residential
`
`
`I.
`
`
`
`and commercial buildings that must comply with myriad building codes.3 The
`
`innovative compact design not only may be installed into a traditional “can” used
`
`in recessed lighting to house the lighting device (which also requires a separate
`
`junction box to connect the lighting device to building main power in order to
`
`comply with building codes), but the innovative compact design also can be
`
`installed in the standard junction box alone—without using a “can” to house the
`
`
`1 See 35 U.S.C. § 313; 37 C.F.R. § 42.107
`2 See Notice of Filing Date (Paper 3) (petition given May 17, 2019 filing
`
`3 Ex. 2001 at ¶¶31-41, 45.
`
`date).
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`device—“while still complying with all building and safety codes/regulations.” 4
`
`Patent Figure 1 is provided below with color and labeling added illustrating
`
`components:
`
`
`Industry Praise for—and ELCO’s Copying of—DMF’s Patented
`DRD2 Product
`
`
`
`A.
`
`
`
`The ‘266 Patent is based on DMF’s DRD2 recessed lighting product that
`
`practices the claimed invention. DMF’s DRD2 received significant industry praise
`
`and awards following its introduction into the market, such as the device enabling
`
`use in a hanger junction box: “With this unique design there’s no need for costly
`
`
`4 Ex. 1001, 2:10-13, 7:15-24, Abstract; Ex. 2090 at ¶32, ; Ex. 2015 at 4.
`
`
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`fire-boxing, eliminating the need to involve other trades for installation, reducing
`
`construction time, materials and cost.”5 The declaration of DMF’s technical
`
`expert, Mr. James Benya, submitted herewith (Ex. 2090, ¶¶120-122) provides a
`
`detailed explanation and evidence showing that DMF’s DRD2 product received
`
`industry praise coextensive with the claimed invention.
`
`
`
`After DMF introduced the DRD2 product and it received significant praise
`
`in the market, ELCO designed and started selling a copy of the DRD2 as ELCO’s
`
`ELL Module. Below is an image comparing the ‘266 FIG. 1 embodiment, the
`
`DRD2 and the ELCO ELL Module:
`
`
`5 Ex. 2052 (2016 Illuminating Engineering Society Progress Report).
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`The declaration of DMF’s technical expert Mr. Benya provides a detailed
`
`
`
`explanation and evidence showing that:
`
`● ELCO actively copied DMF’s DRD2 product (Ex. 2090, ¶¶123-147)
`
`● ELCO’s resultant ELL Module is a copy of DMF’s DRD2 product (Ex.
`2010, ¶¶148-160)
`
`● All challenged ‘266 Patent claims read onto both DMF’s DRD2 product
`and ELCO’s ELL Module product (Ex. 2090, ¶¶161-247).
`
`● ELCO’s copying is coextensive with the claimed invention (Ex. 2090,
`¶¶159-160)
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`B. District Court Litigation
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`
`
`On August 15, 2018, DMF filed a Complaint (Ex. 2003) alleging that
`
`ELCO’s ELL Modules infringe the ʼ266 Patent, which case is captioned DMF, Inc.
`
`v. AMP Plus, Inc. dba Elco Lighting and Elco Lighting, Inc., Case No. 2:18-cv-
`
`07090 (C.D. Cal) and is pending before Judge Christina A. Snyder.
`
`1.
`
`Preliminary Injunction
`
`
`
`On March 7, 2019, the Court enjoined ELCO from selling the accused
`
`infringing ELCO ELL Modules because, among other things, ELCO failed to raise
`
`a substantial question of invalidity based on the same Imtra 2011 (Ex. 1005) prior
`
`art at issue here, stating: “the Imtra product is designed to receive low-voltage,
`
`direct current from a boat, and is not designed to be connected to the higher, main
`
`voltage of a residential or commercial building.”6 The district court criticized
`
`ELCO’s obviousness positions because ELCO “appears to impermissibly use the
`
`ʼ266 Patent as a template to combine elements of prior art references” (as ELCO
`
`does here).7 Further, the district court found that “the preliminary record indicates
`
`that ELCO intentionally copied DMF’s product.”8
`
`
`
`6 Ex. 2008 at 16.
`7 Id. at 18.
`8 Ex. 2008 at 27.
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`2.
`
`Claim Construction
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`
`
`The district court held a Markman claim construction hearing on July 29,
`
`2019, and issued a Claim Construction Order (Ex. 2015) on August 8, 2019. All of
`
`the district court’s claim constructions were consistent with DMF’s proposed
`
`constructions, including for the three claim terms at issue here: “standard junction
`
`box”, “driver” and “unified casting”. Following the Board’s institution decision on
`
`November 21, 2019 (Paper 21) that raised new claim construction arguments about
`
`the terms “standard junction box” and “driver”, on December 13, 2019 the District
`
`Court issued an Order that reconsidered and confirmed its construction of those
`
`terms.
`
`3.
`
`Current Case Status
`
`
`
`Fact and expert discovery concluded in 2018 and a jury trial is scheduled to
`
`start March 31, 2020. DMF has filed a pending summary judgment motion that the
`
`‘266 Patent is not invalid based on the same prior art—Imtra 2011 (Ex. 1005),
`
`Imtra 2007 (Ex. 1006) and Gifford (Ex. 1007)—and invalidity Grounds 1-3 at
`
`issue here. The final brief for that motion will be filed within a few days and a
`
`hearing held on March 9, 2020.
`
`II.
`
`
`
` ‘266 Patent Field of Technology and Person of Ordinary Skill
`
`The ‘266 Patent field of technology is not general illumination, but recessed
`
`lighting systems for buildings, which is a specialized area requiring special
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`expertise and consideration not found in other lighting areas.9 Recessed lighting
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`for residential or commercial buildings must comply with a myriad of safety and
`
`other building codes and standards that can vary from one geographic location to
`
`another. 10 A person of ordinary skill in the technology of the ‘266 Patent would
`
`need experience and working knowledge of the safety and other building codes and
`
`standards governing recessed lighting in residential and commercial buildings,
`
`which impacts recessed lighting design and terminology.11
`
`A.
`
`‘266 Patent specification explains importance of building codes to
`the claimed invention
`
`
`
`The ‘266 Patent specification explains that the ‘266 Patent recessed lighting
`
`system “provides a more compact and cost effective design while complying with
`
`all building and safety codes/regulations”12 and that the design accounts for
`
`“complying with all building and safety regulations.”13 The ‘266 Patent explains
`
`that, unlike prior recessed lights, the patented invention provides for a compact
`
`structure that not only fits into a traditional “can” housing used in buildings, but
`
`also has the flexibility to fit into a standard junction box (so the additional cost and
`
`
`9 Ex. 2090, ¶31 (Benya Decl.).
`10 Id.
`11 Id.
`12 Ex. 1001, 2:10-13.
`13 Ex. 1001, Abstract.
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`complexity of using a “can” housing can be avoided) “while still complying with
`
`all building and safety codes/regulations”:
`
`Based on this configuration, the lighting system provides a compact
`design that allows the combined casting, light source module, driver,
`and reflector to be installed in a standard junction box instead of a
`“can” housing structure to reduce the overall cost of the lighting
`system while still complying with all building and safety
`codes/regulations. This configuration also allows the lighting system
`to achieve a UL fire-rating of at least two hours.14
`***
`As will be described in further detail below, the recessed lighting
`system 1 provides a more compact and cost effective design while
`complying with all building and safety codes/regulations.15
`***
`The size of the cavity 12 may be pursuant to popular industry
`specifications for junction boxes and in compliance with all applicable
`building and safety codes/regulations.16
`***
`This compact structure allows the light source module 3 and the driver
`4 to be contained within the unified casting 5, which in turn may fit
`inside a standard junction box (i.e., junction box 2) and/or a 4-8 inch
`recessed fixture (both incandescent and non-incandescent).
`
`
`14 Ex. 1001, Abstract.
`15 Id., 2:10-13.
`16 Id., 3:3-6.
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`Accordingly, the recessed lighting system 1 can operate without the
`use of a “can” housing structure. This simplified and more compact
`structure reduces the cost and complexity of installing the recessed
`lighting structure into an existing/pre-installed junction box. Further,
`this configuration allows the recessed lighting system 1 to achieve a
`UL fire-rating of at least two hours.17
`***
`Further, this compact design allows the recessed lighting system 1 to
`utilize a standard sized junction box (e.g., junction box 2) instead of a
`“can” housing structure.18
`
`***
`By shielding the driver 4 from the outside environment, the reflector 6
`reduces the risk of fire or other dangers and ensure the recessed
`lighting system 1 complies with building and safety
`codes/regulations.19
`
`***
`Based on this configuration, the compact recessed lighting system 1
`provides a more compact design that allows the combined unified
`casting 5, light source module 3, driver 4, and reflector 6 to be
`installed in a standard junction box instead of a “can” housing
`structure to reduce the overall cost of the recessed lighting system 1
`while still complying with all building and safety codes/regulations.
`
`
`
`17 Id., 4:66-5:10.
`18 Id., 5:39-41
`19 Id., 6:7-11.
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`
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`This configuration also allows the recessed lighting system 1 to
`achieve a UL fire-rating of at least two hours.20
`
`B.
`
` ‘266 Patent File History explains importance of building codes to
`the claimed invention
`
`
`
`In the ’266 Patent file history (Ex. 2044), the patent applicant amended
`
`patent claims to include reference to a standard junction box and simultaneously
`
`explained the importance of building codes related thereto, such as in an
`
`amendment to Application Claim 1 (which became Issued Claim 1):
`
`1. (Currently Amended) A compact recessed lighting system,
`comprising:
`
`…
`wherein the unified casting includes a plurality of elements
`
`positioned proximate to the open front face so as to align with
`corresponding tabs of a standard junction box and thereby facilitate
`holding the unified casting up against the standard junction box when
`the unified casting is installed in the standard junction box;21
`When making the foregoing claim amendments to add the standard junction box,
`
`the patent applicant explained that residential and commercial building codes are
`
`
`20Ex. 1001, 7:15-24.
`21 Ex. 2044, FH266PAT 1042; see also id., FH266PAT 1043 (amending
`Application Claims 2-4 to add standard junction box), FH266PAT 1045 (amending
`Application Claim 22-23 to add standard junction box).
`
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`important considerations in understanding the role of the standard junction box in
`
`the claimed invention for housing the device and splicing to “building power”:
`
`To begin the January 24, 2018 interview at the USPTO,
`
`Inventor Michael Danesh gave a presentation on the technical subject
`matter underlying the claims, including a description of the state-of-
`the-art in residential and commercial lighting at the time of his
`inventions. Inventor Danesh described to the Examiners his
`recognition of various challenges arising from applicable building
`codes and fire-related safety standards for recessed lighting
`(particularly in multiple dwelling units or “multifamily
`construction”), which in part provide the basis for Inventor Danesh’s
`innovative lighting solutions. Given this context, Inventor Danesh
`then demonstrated his award-winning lighting products embodied by
`the claims and provided product samples to the Examiners to more
`closely scrutinize.
`
`***
`Next, Inventor Danesh and Mr. Teja [patent counsel] turned the
`
`Examiners’ attention to the role of a standard-sized junction box in
`the context of Inventor Danesh’s innovations as embodied in the
`claims. Reiterating his earlier discussion, Inventor Danesh again
`demonstrated for the Examiners that the claimed heat conducting
`unified casting, which includes an LED module and a driver disposed
`in a cavity of the unified casting, has a particular configuration and
`dimensions to facilitate recessing the unified casting substantially
`inside a standard-sized junction box located behind a wall or a ceiling
`of a built environment. In such an assembly of the unified casting and
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`the standard-sized junction box, the LED module is located well
`within the standard-sized junction box and behind an exposed surface
`of the wall or ceiling (as opposed to a surface mount lighting fixture).
`The heat conducting unified casting also includes a pair of elements
`(e.g., screw holes) positioned around a front facing flange of the
`unified casting to specifically align with corresponding tabs of the
`standard-sized junction box – this facilitates easy mounting of the
`casting inside the junction box (see elements 27A, 27B and 10A, 10B
`in Fig. 1). The junction box itself has an approved Underwriters
`Laboratories (UL) fire rating (eg., at least 2 hours), such that it meets
`applicable building codes and fire-resistant safety standards.
`
`Inventor Danesh reiterated to the Examiners that such an
`assembly of a standard-sized junction box containing the heat
`conducting unified casting with the LED module and driver, as shown
`in Fig. 3 of the present application, significantly facilitates installation
`of LED lighting in built environments by reducing the time and labor
`costs typically associated with ensuring that recessed lighting adheres
`to applicable building codes and fire safety standards. Inventor
`Danesh explained that his assembly obviates the need for
`conventional sheet metal recessed fixtures that have both a “can” in
`which a lighting component is placed, and a separate junction box for
`accommodating wire splices to building power; instead, in Inventor
`Danesh’s assembly, only one “housing” is required for both the light
`components and wire splicing to building power.
`
`More importantly, Inventor Danesh’s assembly mitigates the
`labor-intensive construction of separate fire-boxes (i.e., wood frames
`with one or more layers of fire-rated drywall) for each recessed
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`lighting fixture (see photo below of an example fire box that Inventor
`Danesh demonstrated for the Examiners’ review) in particular, with
`Inventor Danesh’s assembly, such costly and cumbersome fire-boxes
`are no longer needed for various types of recessed lighting
`installations in certain built environments.
`
`
`
`In the single-housing solution provided by Inventor Danesh’s
`
`innovative assembly, building wiring carrying the AC “mains”
`voltage may be coupled to the driver inside the unified casting via
`wire nuts or connectors inside the junction box, as illustrated in Fig. 1
`of the present application. In the context of a built environment
`including multiple lighting fixtures, the wiring for multiple junction
`boxes containing respective unified castings may be daisy-chained
`together and thereby meet both applicable building and electrical
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`codes and fire safety standards without requiring the labor-intensive
`construction of multiple fire-boxes.
`
`Examiner Negron again noted that, based on his personal
`experience with installation of LED lighting, he believed that he
`recalled similar fixtures for surface mount and recessed lighting – but
`on further contemplation, Examiner Negron clarified that, as far as he
`could recall, the prior conventional lighting with which he was
`familiar either required a fire-box, or did not [emphasis in original]
`contemplate an LED module that was disposed inside and itself
`recessed within a standard junction box, together with wire splices
`to building power.22
`When amending claims to add the “standard junction box” limitations, the
`
`
`
`patent applicant also distinguished the ‘266 Patent’s recessed lighting system for
`
`buildings from prior art that did not consider “building codes or fire safety
`
`standards”:
`
`… However, Dabiet makes no mention of the junction box 30
`
`being a standard-sized junction box, and is silent as to the dimensions
`of the junction box. Similarly, Dabiet makes no mention of any
`mounting tabs on the junction box for mounting anything to a front
`open face of the junction box itself; instead, Dabiet discloses and
`illustrates that the mounting housing flange 26 of the mounting
`housing 20, and not the junction box 30, includes four holes to receive
`screws 42a (shown in Fig. 4) for attaching the lighting housing 40 to
`the mounting housing flange 26.
`
`22 Ex. 2044, FH266PAT 1053-56.
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`…
`It is particularly noteworthy that nowhere in the reference does
`
`Dabiet disclose or suggest a recessed lighting system to be disposed
`behind a wall or ceiling of a building, nor does Dabiet mention
`anything whatsoever about building codes or fire safety standards;
`Dabiet does not even use the words “wall,” “ceiling,” “building” or
`“fire.”
`
`…
`Furthermore, claims 1 and 35 recite limitations relating to the
`
`configuration of a unified casting containing a light source module
`with respect to a standard-sized junction box. Specifically, claim 1
`recites that “the unified casting includes a plurality of elements
`positioned proximate to the open front face so as to align with
`corresponding tabs of a standard junction box and thereby facilitate
`holding the unified casting up against the standard junction box when
`the unified casting is installed in the standard junction box.” Claim 35
`similarly recites “a substantially heat conducting unified casting
`including a plurality of elements positioned on the casting so as to
`align with corresponding tabs of the standard-sized junction box.” As
`noted above, Dabiet makes no mention of the junction box 30 being a
`standard-sized junction box, and is silent as to the dimensions of
`the junction box. Similarly, Dabiet makes no mention of any
`mounting tabs on the junction box which align with any elements of a
`casting containing a light source module.
`…
`Chang is directed to a recessed LED lighting fixture installed in
`
`a conventional “can” typically found in recessed lighting fixtures
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`(Chang, col. 4, lines 3-7; “The lighting fixture 10 is installed inside a
`housing or ‘can’ 2 already in place in the home that is being
`retrofitted. The can 26 is a standard piece of hardware in residential
`home and commercial building construction that contains the
`recessed lighting fixture …”). Chang makes no mention of a
`standard-sized junction box.23
`
`On February 5, 2020, the Board issued an Order (Paper 27) that denied
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`
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`Patent Owner DMF’s motion to rehear institution. The Board concluded that the
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`‘266 Patent claims, including use of a “standard junction box”, was not limited to
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`“buildings” because the patentee in the file history “repeatedly referred to ‘built
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`environments,’” rather than to “buildings.”24 This was a new argument not raised
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`by Petitioner; indeed, Petitioner did not even refer to the file history to construe
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`“driver” or “standard junction box”.
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`
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`The Board ruling refers to incomplete excerpts found at pages 247-248 of
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`the file history (Ex. 2044; corresponds to Ex. 2044.2 at FH266PAT FH266PAT
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`1054-1055). An image of those excerpts is shown highlighted below in full
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`context which shows that the phrase “built environment” expressly used in the
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`specific context of “standard-sized junction boxes” used in “buildings” (green and
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`23 Ex. 2044, FH266PAT 1060, 1062, 1063-1064.
`24 Paper 27 at 7-8.
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`red highlighting showing critical, contextual text that was omitted; page break
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`omitted):
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`In full context, therefore, the ‘266 Patent file history statements show that the
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`critical “role of the standard-sized junction box in the context of Inventor Danesh’s
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`innovations as embodied in the claims” was permitting compliance with “building
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`codes” and splicing to “building power” using an innovative recessed lighting
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`device designed to fit inside the standard junction box, rather than requiring a
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`separate “can” to house the device.25
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`C. ELCO’s expert concedes importance of building codes in
`understanding the ‘266 Patent invention
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`
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`In deposition cross-examination, ELCO’s proposed expert Dr. Bretschneider
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`conceded that, to understand the ‘266 Patent invention, it is important for a person
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`of ordinary skill to be familiar with building codes:
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`Q. To understand the invention of the ‘266 patent, do you
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`believe it’s important for a person of skill in the art to be familiar with
`building codes?
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`A. With respect to the ‘266 patent, they – it does mention being
`familiar with building codes. The safety codes, however, are much
`more important, because, inevitably, the building codes ask for
`compliance to UL standards in particular. And the building codes
`deal with bringing power to lighting fixtures an may also have call-
`outs for fire ratings. But even with the fire ratings, the reference is
`back to a UL fire rating.
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`…
`Q. … Do you think it’s important for someone of person – of
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`ordinary skill in the art for the ‘266 patent to have an understanding of
`the UL standards?
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`…
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`25 Ex. 2090, ¶¶___
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`A. I would say yes, but for designing any lighting product, if it
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`doesn’t comply with UL, you can design it. You won’t be able to sell
`it.26
`D. There are important differences between recessed lights and
`surface mounted lights
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`
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`The ‘266 Patent is entitled “Unified Driver And Light Source Assembly For
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`Recessed Lighting” and ‘266 Patent claims are directed to “A compact recessed
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`lighting system, comprising: …”.27 The ‘266 Patent explains that “[r]ecessed
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`lighting systems generally consists of a trim, a light source module, a driver, and a
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`‘can’ housing.”28 Recessed lighting devices are distinctly different from surface
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`mounted devices, which are governed by different building codes and standards.29
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`Recessed lighting devices are placed inside a bulky “can” light fixture so that the
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`light source is above the ceiling and the “can” has a separate junction box in which
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`the wires are connected to building mains voltage.30 In contrast, surface mounting
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`lighting devices are mounted so that the light source is positioned below the
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`ceiling.31
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`26 Ex. 2047,27:7-29:1.
`27 Ex. 1001, Title, Independent Claims 1, 17 and 22.
`28 Ex. 1001, 1:28-30.
`29 Ex. 2090, ¶45.
`30 Ex. 1002, ¶¶28-29.
`31 Ex. 1002, ¶39 (“Ceiling mounted light fixtures are a separate class of
`luminaires …”)
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`In the ‘266 Patent file history, the patentee distinguished its recessed lighting
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`system from a surface mount lighting fixture:
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`In such an assembly of the unified casting and the standard-sized
`junction box, the LED module is located well within the standard-
`sized jun