Amp Plus, Inc., Dba Elco Lighting v. DMF, INC., Cross-Appellant 2021-1595, 2021-1636 Appeals from the United States Patent

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
AMP PLUS, INC., DBA ELCO LIGHTING,
Appellant
v.
DMF, INC.,
Cross-Appellant
______________________
2021-1595, 2021-1636
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01094.
______________________
Decided: November 10, 2022
______________________
J OSEPH ROGER RICK T ACHE, Buchalter, A Professional
Corporation, Irvine, CA, argued for appellant. Also repre-
sented by K ARI BARNES , ROGER L. SCOTT .
D AVID W. L ONG, ErgoniQ, LLC, McLean, VA, argued for
cross-appellant. Also represented by BEN M. D AVIDSON,
Davidson Law Group, Calabasas, CA; K EVIN B. L AURENCE ,
Laurence & Phillips IP Law, Washington, DC.
______________________
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AMP PLUS, INC. v. DMF, INC. 2
Before STOLL , BRYSON , and CUNNINGHAM , Circuit Judges.
BRYSON, Circuit Judge.
Appellant 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
appellee DMF, Inc. In its Final Written Decision, the Pa-
tent Trial and Appeal Board determined that a number of
the challenged claims of the ’266 patent were not unpatent-
able, but that claim 17 was unpatentable. Both parties ap-
pealed the Board’s decision. We affirm in part, vacate in
part, and remand.
I
The ’266 patent is generally directed to a “compact re-
cessed lighting system” that can be installed in a standard
electrical junction box. ’266 patent, Abstract. The ’266 pa-
tent discloses a “unified casting” that houses a light source
and a “driver” that powers the light source. Id. at col. 2 ll.
7–10, col. 3, ll. 25–46. The casting, driver, and light source
are all sized so that they can fit within a junction box. See
id. at col. 2, line 65 through col. 3, line 11. Claim 1 of the
’266 patent is representative of the claimed invention. It
recites as follows:
1. A compact recessed lighting system, comprising:
a light source module for emitting light;
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 en-
ergy to the light source module;
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
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AMP PLUS, INC. v. DMF, INC. 3
casting at another end, wherein the heat conduct-
ing 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 con-
ducting sidewall, 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 such that the light
source module is closer to the closed rear face of the
unified casting than the open front face of the uni-
fied casting, and wherein the unified casting in-
cludes a plurality of elements positioned proximate
to the open front face so as to align with correspond-
ing tabs of a standard junction box and thereby fa-
cilitate holding the unified casting up against the
standard junction box when the unified casting is
installed in the standard junction box; and
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,
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.
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AMP PLUS, INC. v. DMF, INC. 4
Id. at claim 1 (emphasis added to disputed limitations).
Claim 22 also plays a role in this appeal. It recites as
follows:
22. A compact recessed lighting system, compris-
ing:
a light source module for emitting light;
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 en-
ergy to the light source module;
a unified casting with a closed rear face, a sidewall
and an open front face wherein the sidewall is
joined to the closed rear face at one end and defines
the open front face of the unified casting at another
end, wherein the sidewall extends 360 degrees
around a center axis of the unified casting to define
a cavity that extends forward from the closed rear
face to the open front face of the unified casting and
outward to the sidewall, wherein the light source
module and the driver are positioned inside the
cavity of the unified casting such that the light
source module is closer to the closed rear face of the
unified casting than the open front face of the uni-
fied casting; and
a reflector positioned inside the cavity of the uni-
fied 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,
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AMP PLUS, INC. v. DMF, INC. 5
wherein:
the light source module is a light emitting diode
(LED) module;
the sidewall of the unified casting has fins formed
on its outside surface; and
the system further comprises a plurality of wires
connected to the driver and connected to a first con-
nector of a pair of complimentary [sic] keyed or in-
terlocking connectors, such that in operation the
first connector is coupled to a second connector of
the pair of complimentary [sic] keyed or interlock-
ing connectors, wherein the second connector is cou-
pled to electricity from an electrical system of a
building in which the compact recessed lighting
system is installed.
Id. at claim 22 (emphasis on disputed limitation).
In its IPR petition, ELCO asserted three prior art ref-
erences. Two of the references, “Imtra 2011” and “Imtra
2007,” were catalogs published by Imtra Corporation de-
tailing various lighting fixtures that Imtra sold for use on
boats or in other marine applications. J.A. 391–403 (Imtra
2011); J.A. 431–38 (Imtra 2007). The third reference, U.S.
Patent No. 9,366,418 (“Gifford”), describes a non-recessed
lighting system that can be attached to a standard junction
box. Gifford, Abstract & Fig. 1. ELCO raised three
grounds of invalidity in the petition: anticipation by Imtra
2011 (“Ground 1”); obviousness in view of the combination
of Imtra 2011 and Imtra 2007 (“Ground 2”); and obvious-
ness in view of the combination of Imtra 2011, Imtra 2007,
and Gifford (“Ground 3”).
In its Final Written Decision, the Board found that
Imtra 2011 disclosed all limitations of the challenged
claims except for the “plurality of elements” limitation. See
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AMP PLUS, INC. v. DMF, INC. 6
AMP Plus, Inc. v. DMF, Inc., No. IPR2019-01094, 2020 WL
6811241, at *17 (P.T.A.B. Nov. 19, 2020). That limitation
is recited in most of the challenged claims, but not in claims
17 and 22. As a result, the Board determined that claim 17
was anticipated by Imtra 2011 and therefore was un-
patentable. Id. ELCO challenged claim 22 only in Grounds
2 and 3, so the Board did not determine whether Imtra
2011 anticipated claim 22 of the ’266 patent. See id.
With respect to ELCO’s obviousness arguments, the
Board first found that the Imtra 2007 catalog did not dis-
close the “plurality of elements” limitation that was miss-
ing from Imtra 2011. Id. at *17–19. The Board also found
that 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. at *19–23. Ac-
cordingly, the Board held that claim 17 was obvious for the
same reasons that it was anticipated and that the remain-
ing challenged claims were not unpatentable as obvious.
Id. at *19, *25. These appeals followed.
II
In its appeal, ELCO challenges two aspects of the
Board’s decision. First, ELCO argues that the Board erred
in failing to find that Claim 22 was unpatentable as obvi-
ous. Second, ELCO argues that the Board erred in finding
that there was no motivation to combine Gifford with the
Imtra 2011 and Imtra 2007 catalogs.
A
The Board did not explicitly address claim 22 in its dis-
cussion of either of the obviousness grounds raised by
ELCO. With respect to Ground 2, the Board focused exclu-
sively on whether the Imtra 2007 reference disclosed the
“plurality of elements” limitation that was missing from
Imtra 2011. Id. at *17–19. Claim 22, however, does not
recite that limitation. And with respect to Ground 3, the
Board’s analysis focused exclusively on whether a skilled
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AMP PLUS, INC. v. DMF, INC. 7
artisan would have been motivated to combine Gifford with
the Imtra references. Id. at *19–23. In short, the Board
never explicitly addressed the patentability of claim 22.
DMF argues that the reason the Board determined
that claim 22 was not unpatentable is that ELCO pre-
sented insufficient evidence that the prior art disclosed the
“electrical system of a building” limitation of claim 22. See
Cross-Appellant’s Br. 30–38. The Board, however, did not
rely on that argument in its obviousness determination,
and that argument therefore cannot serve as a basis for up-
holding the Board’s decision. See In re Applied Materials,
Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012) (“The Board’s
judgment must be reviewed on the grounds upon which the
Board actually relied. . . . Alternative grounds supporting
the Board’s decision generally are not considered.”); see
also SEC v. Chenery Corp., 332 U.S. 194, 196 (1947).
To be sure, the Board referred to claim 22 in its claim
construction analysis, where the Board explained that
claim 22 is limited to lighting systems that are used in
buildings. AMP Plus, 2020 WL 6811241, at *6 n.8, *8–9,
*11. Although the Imtra references are generally directed
to lighting systems used on boats and not in buildings,
ELCO argues that the prior art nevertheless discloses the
“electrical system of a building” limitation, and that we
should therefore hold claim 22 is invalid. See Appellant’s
Reply Br. 9–12.
In light of the Board’s silence regarding the obvious-
ness issue as applied to claim 22, it appears that the Board
may have simply overlooked that claim when determining
whether the challenged claims were obvious in view of
Grounds 2 and 3. That inference is reinforced by the fact
that the Board’s conclusion regarding Ground 2 omits any
reference to claim 22. See AMP Plus, 2020 WL 6811241, at
*19 (“Therefore, we find that Petitioner fails to show obvi-
ousness of claims 1, 2, 4–11, 13–16, 19, 21, 25, 26, and 28–
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AMP PLUS, INC. v. DMF, INC. 8
30 over the combination of Imtra 2011 and Imtra 2007 by
a preponderance of the evidence.”).
Regardless of the reason for the omission, the Board
must rule on the obviousness issue as to claim 22 and must
provide an explanation of its reasoning sufficient “to enable
judicial review and to avoid judicial displacement of agency
authority.” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d
987, 994 (Fed. Cir. 2017). It has not done so with respect
to claim 22. Accordingly, we vacate the Board’s decision
that claim 22 is not unpatentable and remand for the Board
to address the parties’ arguments regarding the patenta-
bility of claim 22.
B
ELCO also argues that the Board erred in finding that
there was no motivation to combine the Gifford reference
with Imtra 2011 and Imtra 2007. Specifically, ELCO ar-
gues that the Board failed to consider the Gifford reference
“as a whole,” but rather found no motivation to combine
“solely because Gifford relates to non-recessed lighting.”
Appellant’s Br. 39, 41. We review the legal determination
of obviousness de novo and any subsidiary factual findings,
including motivation to combine, for substantial evidence.
Adidas AG v. Nike, Inc., 963 F.3d 1355, 1358–59 (Fed. Cir.
2020).
We reject ELCO’s contention that the Board found no
motivation to combine solely because the Gifford reference
relates to non-recessed lighting. To the contrary, the Board
carefully weighed the record evidence in determining
whether a skilled artisan would have been motivated to
combine the Imtra references with Gifford.
Before the Board, ELCO relied heavily on the testi-
mony of its expert, Dr. Eric Bretschneider. The Board re-
jected several aspects of Dr. Bretschneider’s testimony,
however. First, the Board noted that Dr. Bretschneider
cropped Figure 1 of Gifford in a way that did not “fully
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AMP PLUS, INC. v. DMF, INC. 9
characterize the teachings of Gifford.” AMP Plus, 2020 WL
6811241, at *21. Second, Dr. Bretschneider testified that
“Gifford teaches a lighting system that is able to be in-
stalled in a standard junction box.” J.A. 253, ¶ 175. The
Board found that statement to be “incorrect[]” because
“Gifford’s lighting fixture 102 is located on the exterior of
adaptor apparatus 100 and is not recessed.” AMP Plus,
2020 WL 6811241, at *22. Third, the Board rejected Dr.
Bretschneider’s assertion that the “adaptor apparatus” dis-
closed in Gifford was equivalent to the “unified casting”
claimed in the ’266 patent. Id. We discern no error in the
Board’s rejection of those aspects of Dr. Bretschneider’s
testimony.
Additionally, ELCO challenges the Board’s finding that
a skilled artisan would not have been motivated to modify
the Imtra products to fit within a standard junction box.
As the Board noted, the Imtra products contain screw holes
and can be mounted directly to the ceiling. Id. at *19; see
also, e.g., J.A. 4710–11, 6141. The Board thus rejected Dr.
Bretschneider’s analysis as reflecting “faulty reasoning”
that “a POSITA would seek to incur additional expense in
time, labor, and materials to mount an Imtra fixture in a
junction box, rather than simply screw it into the ceiling.”
AMP Plus, 2020 WL 6811241, at *22.
In view of the record evidence, we hold that the Board’s
finding that a skilled artisan would not have been moti-
vated to combine Gifford with the Imtra 2011 and Imtra
2007 references is supported by substantial evidence.1 We
1 We reject ELCO’s argument that Gifford should
have been treated as analogous art. See Appellant’s Br.
34–39. The Board never found that Gifford was non-anal-
ogous art, nor did it exclude the Gifford reference on that
basis. To the contrary, the Board treated Gifford as prior
art and concluded that a skilled artisan would not have
been motivated to combine Gifford’s teachings with the
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AMP PLUS, INC. v. DMF, INC. 10
therefore affirm the Board’s finding that the remaining
challenged claims are not unpatentable.
III
In its cross-appeal, DMF argues that the Board erred
in finding that claim 17 of the ’266 patent was anticipated
by the Imtra 2011 catalog for two reasons: (1) the IPR pe-
tition mixed and matched features of different products
disclosed in the Imtra 2011 catalog; and (2) the Board erred
in construing the term “driver,” which is recited in claim
17. DMF also argues that the Board erred in determining
that claim 17 was obvious.
A
With respect to anticipation, DMF argues that the
Board erred in determining that the Imtra 2011 reference
anticipated claim 17 of the ’266 patent because ELCO’s pe-
tition impermissibly mixed and matched features from dif-
ferent products in the Imtra 2011 catalog. Anticipation is
a question of fact that we review for substantial evidence.
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341
(Fed. Cir. 2016).
The Imtra 2011 catalog discloses several different
lighting products, including the “Sardinia,” “Cyprus,”
“Ventura,” “Portland,” and “Hatteras” product lines. J.A.
396–403. The catalog also discloses information about
“Imtra PowerLED” products, which include the Ventura,
Portland, and Hatteras products. J.A. 395; see also Appel-
lant’s Reply Br. 36. DMF argues that ELCO combined
teachings of the Imtra references. See AMP Plus, 2020 WL
6811241, at *19–23; see also In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (A reference is prior art for purposes
of an obviousness determination “only when analogous to
the claimed invention.”).
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AMP PLUS, INC. v. DMF, INC. 11
various features of those products in a manner that does
not establish anticipation.
We have held that a prior art reference does not antic-
ipate if it contains “multiple, distinct teachings that the ar-
tisan might somehow combine to achieve the claimed
invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008). Rather, the reference “must
clearly and unequivocally disclose the claimed invention or
direct those skilled in the art to the invention without any
need for picking, choosing, and combining various disclo-
sures not directly related to each other by the teachings of
the cited reference.” Id. (cleaned up).
It is true that ELCO’s petition cites to various pages of
the Imtra 2011 catalog that describe several different prod-
ucts from the Sardinia, Cyprus, Ventura, Portland, and
Hatteras lines. See J.A. 96–107. Upon closer examination,
however, it is evident that the portions of the catalog on
which ELCO relied are not unrelated in a way that under-
mines the Board’s anticipation analysis.
The petition divides independent claims 1, 17, and 26
(which it treats as a group) into 11 limitations: the pream-
ble and limitations A through J.2 For the preamble and
limitations A, B, D, F, G, I, and J, ELCO relied on disclo-
sures from page 5 of Imtra 2011, which relates to the Pow-
erLED products generally. J.A. 96–107, 395. For
2 DMF argues that such grouping, as well as
ELCO’s alleged mixing and matching, violates “35 U.S.C.
§ 312(a)(3)’s requirement to state with particularity the
grounds on which a challenge is based.” Cross-Appellant’s
Br. 70–71; see also Cross-Appellant’s Reply Br. 23–25. We
conclude that the Board did not abuse its discretion in find-
ing that ELCO “identifie[d] the grounds for anticipation
with sufficient particularity.” AMP Plus, 2020 WL
6811241, at *13.
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AMP PLUS, INC. v. DMF, INC. 12
limitation C, ELCO also relied on statements regarding the
PowerLED products generally, even though those state-
ments were contained on pages relating to specific prod-
ucts. See J.A. 100; J.A. 398 (“The LEDs inside Imtra
downlights are mounted directly to a [printed circuit
board] . . . .”); J.A. 402 (“The integrated circuit we use in
our PowerLED downlights can provide” a constant current
to the LED “regardless of input voltage.”). Neither Limita-
tion E nor Limitation H (the “plurality of elements” limita-
tion) were at issue with respect to claim 17, and the Board
found that the Imtra 2011 reference did not disclose Limi-
tation H in any event. AMP Plus, 2020 WL 6811241, at
*17.
ELCO’s petition ties each limitation of claim 17 to the
Imtra PowerLED products generally. Therefore, ELCO did
not impermissibly mix and match disclosures from Imtra
2011 to arrive at an anticipatory reference. And the Board
did not err in finding that there was no reason that “the
general disclosures regarding Imtra LEDs” should be “lim-
ited to the specific products on the same page.” Id. at *13.
Accordingly, the Board’s finding that Imtra 2011 was an
anticipatory prior art reference is supported by substantial
evidence.3
B
DMF also argues that the Board erred in its construc-
tion of the term “driver,” as that term is used in claim 17 of
the ’266 patent. The Board adopted ELCO’s construction
of that term, construing “driver” to mean “an electronic
3 DMF initially argued that ELCO should be subject
to judicial estoppel with respect to this issue due to state-
ments ELCO made in a parallel district court proceeding.
Cross-Appellant’s Br. 72–75. DMF expressly abandoned
that argument in its reply brief, however, and we therefore
decline to address it. See Cross-Appellant’s Reply Br. 27.
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AMP PLUS, INC. v. DMF, INC. 13
device to supply, regulate, or supply and regulate electrical
energy to a light source module.” AMP Plus, 2020 WL
6811241, at *12. DMF argues for a narrower construction
requiring the driver to be connected to a building’s main
power source. Cross-Appellant’s Br. 77.
The specification of the ’266 patent contains an explicit
definition of “driver” that closely tracks the Board’s con-
struction. The specification states that “[t]he driver 4 is an
electronic device that supplies and/or regulates electrical
energy to the light source module 3 and thus powers the
light source module 3 to emit light.” ’266 patent, col. 4, ll.
21–24. The specification adds that “[t]he driver 4 may be
any type of power supply, including power supplies that de-
liver an alternating current (AC) or a direct current (DC)
voltage to the light source module 3,” and that the driver
“receives an input current from the electrical system of the
building or structure in which the recessed lighting system
1 is installed.” Id. at col. 4, ll. 24–27, 39–41 (emphasis
added). In view of those disclosures, the intrinsic evidence
does not suggest that a “driver” is limited to a device that
is connected to a building’s main power source. To the con-
trary, the specification indicates that the driver may be in-
stalled in any structure (a term that is not defined in the
’266 patent) and is therefore not limited to traditional
buildings that would contain a building main power source.
DMF argues that three aspects of the Board’s claim
construction analysis were erroneous. First, DMF chal-
lenges the Board’s reliance on extrinsic evidence, such as
technical dictionaries. That argument is unpersuasive,
however, particularly in light of the fact that the Board’s
reliance on technical dictionaries was limited to providing
a summary of ELCO’s arguments. AMP Plus, 2020 WL
6811241, at *10 & n.9. The Board’s construction was pri-
marily based on the intrinsic evidence and the parties’ ex-
perts’ testimony about that evidence. See id. at *10–12.
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AMP PLUS, INC. v. DMF, INC. 14
Second, DMF asserts that because there are other dif-
ferences in scope between claims 17 and 22, the Board im-
properly invoked the presumption of claim differentiation
when the Board considered that claim 22 explicitly recites
a connection to building main power. That argument is un-
persuasive. The Board did not purport to rely on the pre-
sumption of claim differentiation when it invoked claim 22
in construing the term “driver.” See id. at *11. Moreover,
even when claim differentiation does not apply, differences
between claims may “provide[] guidance as to the scope” of
a patent’s claims. See Netflix, Inc. v. DivX, LLC, No. 2021-
1931, 2022 WL 2298983, at *4 (Fed. Cir. June 27, 2022).
Indeed, “[i]t is highly disfavored to construe terms in a way
that renders them void, meaningless, or superfluous.” Intel
Corp. v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021).
As ELCO points out, if a driver—which is required by claim
22—were limited to embodiments connected to a building
main power source, the “building” limitation of claim 22
would be superfluous. We therefore disagree with DMF
that it was inappropriate for the Board to consider claim
22 in construing the term “driver.”
Third, DMF argues that the Board improperly dis-
counted the prosecution history of the ’266 patent. DMF
points to an interview between the inventor of the ’266 pa-
tent and the patent examiner during which the inventor
indicated that in his solution, “building wiring carrying the
AC ‘mains’ voltage may be coupled to the driver inside the
unified casting.” J.A. 4637. That statement in the prose-
cution history, however, is best read as a non-limiting de-
scription of the location of a driver in certain contexts. It
does not rise to the level of an “unequivocal[] and unambig-
uous[]” disavowal as to the scope of the term “driver,” of the
sort we have required to find a prosecution disclaimer. See
Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,
1095 (Fed. Cir. 2013).
We find DMF’s arguments for a narrower construction
of “driver” to be unpersuasive, and we therefore affirm the
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AMP PLUS, INC. v. DMF, INC. 15
Board’s decision finding claim 17 to be unpatentable. Be-
cause we affirm the Board’s determination that claim 17 is
anticipated, we need not reach DMF’s arguments regard-
ing obviousness. See Connell v. Sears, Roebuck & Co., 722
F.2d 1542, 1548 (Fed. Cir. 1983) (“Though it is never nec-
essary to so hold, a disclosure that anticipates under § 102
also renders the claim invalid under § 103, for anticipation
is the epitome of obviousness.” (cleaned up)).
IV
For the reasons stated, we vacate the Board’s decision
that claim 22 is not unpatentable for obviousness and re-
mand for further proceedings regarding that claim. We af-
firm the Board’s decision with respect to all other
challenged claims.
In light of the disposition of this case, DMF’s motions
to include documents in the appendix (ECF No. 16) and to
strike portions of ELCO’s reply brief (ECF No. 39) are both
denied as moot.
No costs.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
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