`
`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 9,964,266
`______________
`
`
`DECLARATION OF JAMES R. BENYA
`
`
`
`
`

`

`Table of Contents
`
`
`I.
`II.
`
`Professional Background ............................................................... 1
`Directions and Assumptions .......................................................... 2
`A.
`Reviewing and Citing to Patents. ........................................ 3
`1.
`A Patent’s File History .............................................. 3
`2.
`Patent Claim Terms ................................................... 4
`Patent Infringement / Practicing A Claimed Invention ....... 4
`B.
`Invalidity Based on Prior Art .............................................. 5
`C.
`D. Anticipation ......................................................................... 6
`E.
`Obviousness ......................................................................... 6
`1.
`Objective Evidence of Nonobviousness ................... 7
`2.
`Copying ..................................................................... 8
`3.
`Industry Praise ........................................................... 8
`III. Materials Considered ..................................................................... 9
`IV. The ’266 Patent ............................................................................ 11
`A.
`’266 Patent Field of Technology and the Person of
`Ordinary Skill In The Art .................................................. 12
`Standard Junction Box ...................................................... 39
`B.
`Light Source Module ......................................................... 52
`C.
`D. Driver ................................................................................. 52
`E.
`Unified Casting .................................................................. 68
`F.
`Reflector ............................................................................ 81
`G.
`Lens ................................................................................... 81
`H.
`Trim ................................................................................... 82
`V. Objective Evidence of Nonobviousness ...................................... 83
`A. DMF’s DRD2 Products ..................................................... 84
`1.
`Industry Praise for DMF’s Patented DRD2 Module
` ................................................................................. 85
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`B.
`
`2.
`
`2.
`3.
`
`4.
`
`ELCO Copied DMF’s Patented DRD2 Products .............. 88
`1.
`ELCO Developed the Accused ELL LED Products
`by Copying DMF’s DRD2 Products ....................... 88
`ELCO’s Accused Residential ELL Module Is A
`Copy of DMF’s Patented DRD2 Product ............. 113
`ELCO Trims .......................................................... 120
`3.
`VI. DMF’s DRD2 Products and ELCO’s Copy Thereof Practice the
`Claimed Invention of the ‘266 Patent .................................................. 123
`A.
`Independent Claim 1 ....................................................... 123
`1.
`“A compact recessed lighting system, comprising:”
` ............................................................................... 123
`“a light source module for emitting light;” ........... 123
`“a driver for powering the light source module to
`emit light, the driver including an electronic device
`to at least one of supply and regulate electrical
`energy to the light source module;” ...................... 124
`“a unified casting with a heat conducting closed rear
`face, a heat conducting sidewall and an open front
`face wherein the heat conducting sidewall is joined
`to the heat conducting closed rear face at one end
`and defines the open front face of the unified casting
`at another end,” ..................................................... 125
`“wherein the heat conducting sidewall has a first
`dimension between the heat conducting closed rear
`face and the open front face of less than 2 inches and
`extends 360 degrees around a center axis of the
`unified casting to define a first cavity that extends
`forward from the heat conducting closed rear face to
`the open front face of the unified casting and
`outward to the heat conducting sidewall,” ............ 126
`“wherein the light source module and the driver are
`positioned inside the first cavity while being coupled
`to the heat conducting closed rear face of the unified
`casting” .................................................................. 126
`
`5.
`
`6.
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`9.
`
`10.
`
`7.
`
`8.
`
`“such that the light source module is closer to the
`closed rear face of the unified casting than the open
`front face of the unified casting, and” ................... 130
`“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; and” ................................................. 131
`“a reflector positioned inside the first cavity of the
`unified casting and coupled to and surrounding the
`light source module such that the reflector directs
`light produced by the light source module into an
`area surrounding the compact recessed lighting
`system while enclosing the driver from exposure to
`the area surrounding the compact recessed lighting
`system,” ................................................................. 132
`“wherein the heat conducting closed rear face and
`the heat conducting sidewall of the unified casting
`significantly dissipate heat generated by the light
`source module during operation of the light source
`module.” ................................................................ 134
`Dependent Claim 2 .......................................................... 145
`B.
`Dependent Claim 4 .......................................................... 145
`C.
`D. Dependent Claim 5 .......................................................... 146
`E.
`Dependent Claim 6 .......................................................... 147
`F.
`Dependent Claim 7 .......................................................... 147
`G. Dependent Claim 8 .......................................................... 147
`H. Dependent Claim 13 ........................................................ 148
`I.
`Dependent Claim 14 ........................................................ 149
`J.
`Dependent Claim 15 ........................................................ 150
`K. Dependent Claim 16 ........................................................ 150
`L.
`Independent Claim 17 ..................................................... 151
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`M. Dependent Claim 19 ........................................................ 152
`N. Dependent Claim 21 ........................................................ 153
`1.
`Independent Claim 22 ........................................... 154
`2.
`Dependent Claim 25 ............................................. 156
`3.
`Independent Claim 26 ........................................... 156
`O. Dependent Claim 28 ........................................................ 158
`P.
`Dependent Claim 29 ........................................................ 159
`Q. Dependent Claim 30 ........................................................ 160
`VII. Asserted Prior Art ...................................................................... 160
`A.
`Imtra 2011 (Ex. 1005) ..................................................... 160
`1.
`Sardinia 120 VAC Family .................................... 162
`2.
`Ventura Low-Voltage DC Family ........................ 166
`3.
`Portland Low-Voltage DC Family ........................ 172
`4.
`Hatteras Low-Voltage DC Family ........................ 175
`Imtra 2007 (Exhibit 1006) ............................................... 180
`B.
`U.S. Patent No. 9,366,418 (“Gifford” Ex. 1007) ............ 182
`C.
`VIII. Three Alleged Invalidity Grounds ............................................. 193
`A. Ground 1: Alleged Anticipation by Imtra 2011 .............. 194
`1.
`Individual Product Families of Imtra 2011 ........... 195
`2.
`Limitation B – “driver” ......................................... 198
`3.
`Limitation H (Claims 1 and 26), Claim 9, Claim 11,
`Claim 19, Claim 21, Claim 25 – “plurality of
`elements” ............................................................... 199
`Ground 2: Alleged Obviousness by Imtra 2011 in view of
`Imtra 2007 ....................................................................... 204
`1.
`“driver” .................................................................. 205
`2.
`“plurality of elements” .......................................... 205
`Ground 3: Alleged Obviousness by Imtra 2011 and Imtra
`2007 in view of Gifford ................................................... 208
`
`C.
`
`B.
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`1.
`2.
`
`“driver” limitation ................................................. 210
`“plurality of elements” .......................................... 211
`a)
`Attach Imtra Directly To Junction Box ...... 211
`b)
`Attach Imtra Device to Gifford Adaptor
`Apparatus .................................................... 214
`Imtra 2011 Components Inside Gifford
`Adapter Apparatus ...................................... 216
`
`c)
`
`
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`1.
`
`I, James R. Benya, hereby declare under penalty of perjury that the
`
`following statements are true and correct to the best of my knowledge, and that,
`
`if called as a witness, I could and would testify competently as follows:
`
`2.
`
`I was asked to review and render an independent professional
`
`engineering opinion on whether certain claims of U.S. Patent No. 9,964,266
`
`(“the ‘266 Patent”, Ex. 1001) owned by DMF, Inc. (“DMF” or “Patent Owner”)
`
`are invalid as alleged by Petitioner AMP Plus, Inc. d/b/a ELCO Lighting
`
`(“ELCO” or “Petitioner):
`
`● Independent Claim 1 and Dependent Claims 2, 4-8 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.
`
`Professional Background
`
`I.
`
`3.
`
`I am the Principal Illuminating Engineer and Lighting Designer for
`
`Design Services, Inc. (DSI) dba the Benya Burnett Consultancy in Davis, CA.
`
`DSI is a woman owned small business corporation owned by my wife, Deborah
`
`Burnett.
`
`4.
`
`I am a registered professional engineer in the State of California
`
`(E12078). My registration is current.
`
`5.
`
`I have knowledge and experience in the general field of lighting in
`
`buildings including degrees in electrical engineering and computer science, 45
`
`years of practical experience as a professional engineer and lighting designer,
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`and recognition by my industry evidenced by my election as a Fellow of the
`
`Illuminating Engineering Society (IES) in 1991 and as a Fellow of the
`
`International Association of Lighting Designers (IALD) in 2005.
`
`6. My practice is broad, as I provide private and independent
`
`professional advice as the designer of lighting for buildings and structures,
`
`lighting product designer, codes and standards developer, subject matter expert
`
`research and consulting, peer reviewer, product development advisor, expert
`
`witness on a variety of legal matters, author of technical papers and articles,
`
`college level educator and lecturer, and an active member of committees of the
`
`IES and IALD.
`
`7. My product work has resulted in three patents for lighting products
`
`in which I am named inventor, and I’ve made contributions to the development
`
`of products of other inventors primarily in assisting them with understanding
`
`the importance and value of their products and how to improve them to enhance
`
`that value in the marketplace.
`
`8. My CV is provided as Exhibit 2002 that provides more information
`
`about my professional credentials and experience.
`
`II. Directions and Assumptions
`
`9.
`
`Counsel for DMF provided me with some directions in conducting
`
`my review, which mainly concern legal issues of patent law, as discussed
`
`below.
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`A. Reviewing and Citing to Patents.
`
`10.
`
`I was informed that a patent is written and should be read from the
`
`viewpoint of a person skilled in the technical area to which the patent relates.
`
`11.
`
`I was informed that a patent has two primary parts: a specification
`
`and the patent claims. The specification is the drawings and words of the patent
`
`that precede the patent claims. The specification provides a written description
`
`of the invention and different examples or “embodiments” of the invention.
`
`The patent claims are the numbered sentences at the end of the patent that
`
`define the metes and bounds of what the patent covers.
`
`12.
`
`I was informed that patent attorneys typically refer to a patent by
`
`its last three digits. For example, the patent at issue is U.S. Patent No.
`
`9,964,266 and would be referred to as “the ’266 Patent.” I use that convention
`
`here.
`
`13.
`
`I was informed that patent attorneys often reference a specific
`
`place within a patent by using the column and line numbers printed on each
`
`page. One convention is to refer to places in the patent using the convention
`
`“C:L”, where “C” is the column number and “L” is the line number. For
`
`example, a location at Column 2, Line 1 of the ’266 Patent may be cited as
`
`“’266 Patent at 2:1.” I use that convention here.
`
`1.
`
`A Patent’s File History
`
`14.
`
`I was informed that a patent has what is called a “file history” or
`
`“prosecution history”, which is back-and-forth correspondence between the
`
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`person applying for a patent (also called the “patent applicant” or “patentee”)
`
`and the U.S. Patent & Trademark Office (also called “the Patent Office”,
`
`“USPTO” or “PTO”). During the patent application process, one or more
`
`examiners at the Patent Office may reject patent application claims for different
`
`reasons, such as the patent application claims being unpatentable because they
`
`read onto prior art patents or other references. The patent applicant may
`
`respond by amending the claims, arguing why the claims are not disclosed by
`
`the prior art or otherwise.
`
`2.
`
`Patent Claim Terms
`
`15.
`
`I was informed that the terms used in patent claims should be
`
`interpreted based on their ordinary meaning to a person skilled in the art as
`
`informed by the patent specification and the patent file history.
`
`16.
`
`I also was informed that the term “comprising” is used in patent
`
`claims like the word “including”. If the preamble of a patent claim ends with
`
`the term “comprising”—e.g., the first part of Claim 1 that states “A compact
`
`recessed lighting system, comprising:”—then a device that meets all limitations
`
`of that claim is infringed even if the device has other components.
`
`B.
`
`Patent Infringement / Practicing A Claimed Invention
`
`17.
`
`I was informed that determining whether a device practices a
`
`claimed invention may be relevant to determining whether an accused product
`
`infringes a patent or whether a patent claim is valid (such as whether a product
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`that practices the claimed invention has received industry praise or has been
`
`copied by a competitor, as discussed further below).
`
`18.
`
`I was informed that a patent claim is met literally by a device (i.e.,
`
`the device infringes or practices the claimed invention) when every limitation of
`
`the patent claim reads onto elements of the device. Even if a claim is not met
`
`literally by a device because one or more limitations of the claim are not found
`
`in that device, the patent claim may be met equivalently by that device under
`
`what is called the Doctrine of Equivalents. If a claim limitation is not met
`
`literally, it may be met equivalently if there is no substantial difference between
`
`the claim limitation and an element of the device. A claim limitation may be
`
`met equivalently if an element of the device performs substantially the same
`
`function in substantially the same way to achieve substantially the same result
`
`as the claim limitation.
`
`C.
`
`Invalidity Based on Prior Art
`
`19.
`
`I was informed that a party may show that a patent claim is invalid
`
`if it was anticipated or would have been obvious in view of prior art.
`
`20.
`
`I was informed that a party may show that an alleged reference is
`
`prior art by showing that it was, for example, published before the effective
`
`filing date of a patent claim. The effective filing date of a patent claim is at
`
`least the filing date of the patent application from which the patent was granted.
`
`The effective filing date for a patent claim will be an even earlier date if that
`
`patent application relates to and claims the benefit of an earlier filed application
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`date that discloses the subject matter of the patent claim. In this case, the ’266
`
`Patent was filed on February 19, 2014 and claims the benefit of a provisional
`
`application (61/843,278) filed on July 5, 2013.
`
`D. Anticipation
`
`21.
`
`I was informed that one way a party may show that a patent claim
`
`is invalid is by showing that the patent claim was anticipated by alleged prior
`
`art. A party asserting that a patent claim was anticipated must show that a
`
`single prior art reference disclosed every claim limitation arranged or combined
`
`in the same way as recited in the patent claim.
`
`E. Obviousness
`
`22.
`
`I was informed that another way that a party may show that a
`
`patent claim is invalid is by showing that the patent claim would have been
`
`obvious in view of alleged prior art. A party asserting that a patent claim would
`
`have been obvious in light of prior art must show that the differences between
`
`the patent claim and the prior art are such that the claimed invention as a whole
`
`would have been obvious before the effective filing date of the patent claim to a
`
`person having ordinary skill in the art to which the claimed invention pertains.
`
`An obviousness analysis considers the scope and content of the prior art, the
`
`differences between the prior art and the claims, the level of ordinary skill in the
`
`art, and any objective indicia of non-obviousness.
`
`23.
`
`I was informed that a party asserting that a patent claim would
`
`have been obvious must show that a person of ordinary skill at the time of the
`
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`effective filing of the patent claim would have selected, combined and modified
`
`the subject matter of the asserted prior art references in the manner of the patent
`
`claim with a reasonable expectation of success. When challenging the validity
`
`of a patent claim on obviousness grounds, the party must show that it is not
`
`using hindsight where the challenged patent is being used as a blueprint or
`
`template to guide the party to pick-and-choose references to combine. The
`
`reason for combining different prior art references is a critical component of an
`
`obviousness analysis and a party challenging the validity of a patent claim as
`
`being obvious should provide an explicit analysis of the prior art motivation to
`
`combine references.
`
`1. Objective Evidence of Nonobviousness
`
`24.
`
`I was informed that objective evidence of nonobviousness is a
`
`fundamental part of the overall obviousness analysis that should be considered.
`
`I was informed that objective evidence of nonobviousness plays an important
`
`role as a guard against prohibited hindsight and may often be the most probative
`
`and cogent evidence in the record. Objective evidence of nonobviousness
`
`includes whether others in the industry have copied the claimed invention and
`
`whether the claimed invention has received industry praise.
`
`25.
`
`I was informed that there should be a nexus between the claimed
`
`invention and objective evidence of nonobviousness. If the objective evidence
`
`is tied to a specific product and that product embodies the claimed features, and
`
`is coextensive with them, then the objective evidence is entitled to a rebuttable
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`presumption of nexus. But when, for example, the patented invention is only a
`
`small component of the product tied to the objective evidence, there is no
`
`presumption of nexus. The objective evidence must be directed to what was not
`
`known in the prior art; what was not known in the prior art, however, may well
`
`be the novel combination or arrangement of known individual elements, the
`
`claimed invention as a whole.
`
`2.
`
`Copying
`
`26.
`
`I was informed that copying of a claimed invention by a competitor
`
`(such as ELCO) is relevant objective evidence of whether that claimed
`
`invention would have been obvious. Evidence of copying may include internal
`
`documents, direct evidence such as photos of patented features or disassembly
`
`of products, or access and similarity to a patented product. Where there is
`
`evidence of actual copying efforts by a competitor, that evidence is always
`
`relevant and should be considered.
`
`3.
`
`Industry Praise
`
`27.
`
`I was informed that whether the claimed invention received
`
`industry praise is relevant objective evidence of whether the claimed invention
`
`would have been obvious. Relevant industry praise may exist where the scope
`
`of the patent claim is commensurate in scope with a product that has received
`
`industry praise and the evidence of industry praise is generally directed to the
`
`product as a whole.
`
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`III. Materials Considered
`
`28.
`
`In performing my analysis, I reviewed and considered the
`
`information that I reference or cite herein including the Exhibits submitted with
`
`this Report and the following and their attachments:
`
`● File History of U.S. Patent No. 9,964,266 (Ex. 2044)
`● Expert Report of Eric Bretschneider, Ph. D. of November 15, 2019
`● Benya Report of November 16, 2019
`● Benya Rebuttal Report of December 6, 2019
`● Rebuttal Expert Report of Eric Bretschneider, Ph. D. of December 6,
`2019
`● DMF’s Complaint (Dkt. #1.0) and all exhibits filed with the Complaint
`(Dkt. #1.1 to 1.21)
`● ELCO’s Amended Answer and Counterclaims (Dkt. #18.0) and all
`exhibits filed with the Amended Answer and Counterclaims (Dkt. #18.1)
`● DMF’s Answer to Amended Counterclaims (Dkt. #15)
`● DMF DRD2M7930 Module and DRD2TRJDSWH trim
`● U.S. Patent No. 9,964,266 (“the ‘266 Patent”) (Dkt. #1.1) (Exhibit 1 of
`the Complaint) (Production Nos. 266PAT 01 to 15).
`● U.S. Patent Application Publication No. US 2015/0009676 (Dkt. #1.3)
`(Exhibit 3 of the Complaint) (Production Nos. PUB976 01 to 08)
`● File history for U.S. Patent Application No. 61/843,278 (“the ‘278
`Application”) (Production Nos. FH271APP 001 to 034)
`● File history for U.S. Patent Application No. 14/184,601 (“the ‘601
`Application”) (Production Nos. FH266PAT 0001 to 1512)
`● ELCO website page printout (https://elcolighting.com/products/ell-led-
`module (July 2018)) (Dkt. #1.11) (Exhibit 11 of Complaint)
`● Specification Sheet for ELCO ELL LED Module
`(https://elcolighting.com/printpdf/products/ell-led-module (Aug. 2018))
`(Dkt. #1.14) (Exhibit 14 of Complaint)
`● ELCO Installation Instructions for ELL LED Module (Dkt. #1.15)
`(Exhibit 15 of Complaint)
`● ELCO Flyer for ELL LED Module and Trims (Dkt. #1.16) (Exhibit 16 of
`Complaint)
`
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`● Specification Sheet for ELCO ELL4810 W Trim
`(https://elcolighting.com/printpdf/products/uno%E2%84%A2-4-diecast-
`round-reflector-trim (Aug. 2018)) (Dkt. #1.17) (Exhibit 17 of Complaint)
`● Specification Sheet for ELCO ELJ4S Hanger Junction Box
`(https://elcolighting.com/printpdf/products/new-construction-fire-rated-
`junction-box-surface-mount-trim (Aug. 2018)) (Dkt. #1.19) (Exhibit 19 of
`Complaint)
`● ELCO website page printout with information on ELCO ELJ4S junction
`box (https://elcolighting.com/products/new-construction-fire-rated-
`junction-box-surface-mount-trim (July 2018)) (Dkt. #1.20) (Exhibit 20 of
`Complaint)
`● ELCO E.L.L. LED Modules 1130 and 0827 (Physical Device)
`● Samples of Version 1, Version 2 and Version 3 ELL Modules
`● Samples of DMF DRD2 Modules and Trims
`● ELCO 6813W Trim (Physical Device)
`● U.S. Patent No. 5,942,726 (Reiker)
`● U.S. Patent No. 6,491,413 (Benesohn)
`● U.S. Patent No. 8,201,968 (Maxik)
`● U.S. Patent No. 8,454,204 (Chang)
`● U.S. Patent Application Published No. 2009/0034261A1 (Grove)
`● U.S. Published Patent Application No. 2010/0302778A1 (Dabiet)
`● U.S. Published Patent Application No. 2011/0267828A1 (Bazydola)
`● U.S. Published Patent Application No. 2012/0140442A1 (Woo)
`● U.S. Published Patent Application No. 2013/0010476A1 (Pickard)
`● Deposition of Mr. Ardestani and Exhibits
`● Deposition of Mr. Steve Cohen and Exhibits
`● Deposition of Mr. Nguyen and Exhibits
`● Deposition of Mr. Brandon Cohen and Exhibits
`● Deposition of Mr. Kelly and Exhibits
`● Deposition of Mr. Danesh and Exhibits
`● Deposition of Mr. Cajumban and Exhibits
`● Deposition of Mr. Chen and Exhibits
`● Deposition of Mr. Chevalier and Exhibits, including Declaration of Colby
`Chevalier
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`● Deposition of Mr. Braitmayer and Exhibits
`● Deposition of Dr. Bretschneider
`● IES Lighting Handbook Applications Volume 1981 (Bretschneider
`Ex. C)
`● ANSI/IES RP-16-10 Nomenclature and Definitions for Illumination
`Engineering (Bretschneider Ex. Q)
`● ANSI/IES Online Nomenclature and Definitions for Illumination
`Engineering”
`● UL 1598 “Luminaires” (Bretschneider Ex. I)
`● UL 8750 Light Emitting diode (LED) Equipment for Use in Lighting
`(Bretschneider Ex. O)
`● U.S. Patent No. 2,179,161 (Rambusch)
`● U.S. Patent No. 7,102,172 (Lynch)
`● U.S. Patent No. 9,366,418 (Gifford)
`● U.S. Patent No. 9,226,661 (Kim)
` Excerpt of file history of U.S. Patent No. 9,226,661 (Kim)
`● Imtra Lighting Catalog 2011 (Bretschneider Ex. W)
`● Imtra Marine Lighting Spring 2007 Catalog (Bretschneider Ex. X)
`● Physical sample of Imtra Hatteras product provided by ELCO’s counsel
`● Cree LMH2 Product (Bretschneider Ex. GG)
`
`IV. The ’266 Patent
`
`29.
`
`I reviewed the ’266 Patent (Ex. 1001) and its file history
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`(Ex. 2044). The ’266 Patent, entitled “Unified Driver and Light Source
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`Assembly For Recessed Lighting,” concerns recessed lighting systems that are
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`designed to be installed in a ceiling or a wall of a building.1 Below is FIG. 1 of
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`the issued ’266 Patent with color and labeling added, which illustrates one
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`example (or “embodiment”) of an LED module of the ’266 Patent:
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`1 Ex. 1001, 1:12-46.
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` Junction Box Casting Driver LED Reflector Lens Trim
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`
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`30-
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`FIG. 1 shows a junction box 2 (labeled “Junction Box” in the
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`image above), a light source module 3 (labeled “LED” and highlighted orange
`
`in the image above), a driver 4 (labeled “Driver” and highlighted green in the
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`image above), a unified casting 5 (labeled “Casting” and highlighted black in
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`the image above), reflector 6 (labeled “Reflector” in the images above), a lens 7
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`(labeled “Lens” and highlighted light grey in the image above) and a trim 8
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`(labeled “Trim” in the image above).2 I discuss each of these further below-
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`A.
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`’266 Patent Field of Technology and the Person of Ordinary
`Skill In The Art
`
`31.
`
`The ’266 Patent field of technology is recessed lighting systems for
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`buildings, which is a specialized area requiring special expertise and
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`consideration not found in other lighting areas. Recessed lighting for residential
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`or commercial buildings must comply with a myriad of safety and other
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`building codes and standards that can vary from one geographic location to
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`2 Ex. 1001, 216—10.
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`another. A person of ordinary skill in the technology of the ’266 Patent would
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`need experience and working knowledge of the safety and other building codes
`
`and standards governing recessed lighting in residential and commercial
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`buildings, which impacts recessed lighting design and terminology.
`
`32. The ’266 Patent explains that “[r]ecessed lighting systems
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`generally consists of a trim, a light source module, a driver, and a ‘can’
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`housing.”3 The ’266 Patent explains that the ’266 Patent recessed lighting
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`system “provides a more compact and cost effective design while complying
`
`with all building and safety codes/regulations”4 and that the design accounts for
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`“complying with all building and safety regulations.”5 The ’266 Patent explains
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`that its design provides for a compact structure that not only fits into a
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`traditional “can” housing used in buildings, but also has the flexibility to fit into
`
`a standard junction box (so the additional cost and 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
`
`
`
`3 Ex. 1001, 1:28-30.
`4 Ex. 1001, 2:10-13.
`5 Ex. 1001, Abstract.
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`safety codes/regulations. This configuration also allows the
`lighting system to achieve a UL fire-rating of at least two hours.6
`***
`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.7
`***
`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.8
`***
`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). 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 1 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.9
`
`***
`
`
`
`6 Ex. 1001, Abstract.
`7 Id., 2:10-13.
`8 Id., 3:3-6.
`9 Ex. 1001, 4:66-5:10.
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`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.10
`***
`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.11
`
`***
`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. This configuration also allows the recessed
`lighting system 1 to achieve a UL fire-rating of at least two
`hours.12
`33. The ’266 Patent explains that a junction box may have “a fire
`
`rating of up to two hours as described in the National Electrical Code (NEC)