Amp Plus, Inc., Dba Elco Lighting v. Dmf, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
AMP PLUS, INC., DBA ELCO LIGHTING,
Appellant
v.
DMF, INC.,
Appellee
______________________
2023-1997
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01094.
______________________
Decided: March 19, 2025
______________________
G UY RUTTENBERG, Ruttenberg IP Law, PC, Los Ange-
les, CA, argued for appellant. Also represented by BRUCE
D ONOVAN K UYPER.
D AVID W. L ONG, Ergoniq LLC, McLean, VA, argued for
appellee. Also represented by BEN M. D AVIDSON, Davidson
Law Group, Calabasas, CA; K EVIN B. L AURENCE , Laurence
& Phillips IP Law, Washington, DC.
______________________
Before L OURIE, BRYSON, and REYNA, Circuit Judges.
Case: 23-1997 Document: 50 Page: 1 Filed: 03/19/2025

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AMP PLUS, INC. v. DMF, INC. 2
REYNA, Circuit Judge.
AMP Plus, Inc., doing business as ELCO Lighting, ap-
peals from a final written decision of the Patent Trial and
Appeal Board, which found that ELCO failed to show claim
22 of U.S. Patent No. 9,964,266 was unpatentable as obvi-
ous. We affirm.
BACKGROUND
Appellee DMF, Inc. (“DMF”) owns U.S. Patent No.
9,964,266 (“’266 patent”), which relates to a compact re-
cessed lighting system that can be installed in a standard
electrical junction box. J.A. 154, Abstract. At issue on ap-
peal is claim 22 of the ’266 patent, which recites, in rele-
vant part, that the compact recessed lighting system
comprises:
a plurality of wires connected to the driver
and connected to a first connector . . . cou-
pled to a second connector . . . wherein the
second connector is coupled to electricity
from an electrical system of a building in
which the compact recessed lighting sys-
tem is installed.
J.A. 167, 11:35–43. The parties refer to this limitation as
“Limitation M.”
On May 17, 2019, Appellant AMP Plus, Inc., doing
business as ELCO Lighting (“ELCO”), petitioned the Pa-
tent Trial and Appeal Board (“Board”) for inter partes re-
view of certain claims of the ’266 patent, raising three
grounds of unpatentability. J.A. 61. Ground one argued
that claim 17 and several other claims, not including claim
22, were anticipated by Imtra 2011.1 J.A. 77. Ground two
1 This is a brochure titled “Advanced LED Solu-
tions – Imtra Marine Lighting.” J.A. 391. The brochure
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AMP PLUS, INC. v. DMF, INC. 3
argued that claim 22 and other claims were rendered obvi-
ous by Imtra 2011 in view of a second brochure, Imtra
2007.2 Id. ELCO’s petition argued that under this ground,
Limitation M in claim 22 was obvious because:
Imtra 2011 discloses that the “fixture is
equipped with an 18 awg Triplex cable tail
for direct hook up to an AC J-box.” (Imtra
2011, p. 6) The use of interlocking or key
connectors (interlocking connectors) and
junction boxes in connection with lighting
fixtures were known to a POSITA. A
POSITA would know that wire connections
between the fixture and the power source
can be made in a variety of ways, including
a keyed output connector. (Bretschneider,
¶158-159).
J.A. 124–25. Finally, ground three argued that claim 22
and other claims were rendered obvious by Imtra 2011,
Imtra 2007, and Gifford.3 J.A. 77.
The Board issued its final written decision finding
(1) Imtra 2011 anticipated claim 17 and (2) ELCO failed to
show unpatentability of all other claims. AMP Plus, Inc. v.
DMF, Inc., No. IPR2019–01094, 2020 WL 6811241, at *17,
*24 (P.T.A.B. Nov. 19, 2020). ELCO then appealed to this
court, where we affirmed as to all claims except for claim
22. AMP Plus, Inc. v. DMF, Inc., No. 2021–1595, 2022 WL
16844516, at *7 (Fed. Cir. Nov. 10, 2022). We noted that
discusses LED and halogen lighting fixtures available for
use in a variety of marine applications. J.A. 392–403.
2 This is a brochure titled “Imtra Marine Light-
ing – Spring 2007.” J.A. 431. It discusses LED and halogen
lighting fixtures available for use in a variety of marine ap-
plications. J.A. 432–38.
3 U.S. Patent No. 9,366,418.
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AMP PLUS, INC. v. DMF, INC. 4
“the Board never explicitly addressed the patentability of
claim 22,” and we therefore vacated and remanded for the
Board to address the parties’ arguments concerning this
claim. Id. at *3.
On remand, the Board issued a final written decision,
concluding that ELCO failed to show the unpatentability
of claim 22. J.A. 3. The Board noted that ELCO’s petition
presented “no analysis” of the portion of Limitation M con-
cerning “coupl[ing] to electricity from an electrical system
of a building in which the compact recessed lighting system
is installed.” J.A. 7 (alteration in original). The Board
stated that:
[ELCO] appears to vaguely suggest that
the marine recessed lighting systems dis-
closed in Imtra 2011 could be installed in a
building, but such suggestion is unsup-
ported by evidence. The portions of Imtra
2011 and Dr. Bretschneider’s Declaration
[that ELCO] relies on fail to address instal-
lation of Imtra 2011’s marine lighting sys-
tem in a building.
J.A. 8–9. The Board concluded that:
In view of [ELCO]’s failure to direct us to
evidence sufficient to establish a person of
ordinary skill in the art could have and
would have installed the marine recessed
lighting system disclosed in Imtra 2011 in
a building, we find [ELCO] fails to show ob-
viousness of claim 22 over the combination
of Imtra 2011 and Imtra 2007 by a prepon-
derance of the evidence.
J.A. 9.
ELCO appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
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AMP PLUS, INC. v. DMF, INC. 5
D ISCUSSION
As a threshold matter, DMF argues that we lack juris-
diction over this appeal because ELCO failed to timely file
a notice of appeal that complied with the regulatory re-
quirements at 37 C.F.R. § 90.2(a)(3)(ii). Appellee Br. 18.
DMF’s argument is unpersuasive.
“When Congress enacts a jurisdictional requirement, it
mark[s] the bounds of a court’s power: A litigant’s failure
to follow the rule deprives a court of all authority to hear a
case.” Harrow v. Dep’t of Def., 601 U.S. 480, 484 (2024)
(internal quotations omitted; alteration in original). Dif-
ferent from this is a procedural requirement that Congress
enacts to govern the litigation process. Id. at 483. A court
will treat a procedural requirement as jurisdictional only if
Congress “clearly states that it is.” Id. at 484 (internal quo-
tations omitted) (holding that the 60-day deadline for filing
an appeal under 5 U.S.C. § 7703(b)(1) is non-jurisdictional
because the statute makes “no mention of the Federal Cir-
cuit’s jurisdiction, whether generally or over untimely
claims”). Setting aside that the provision at issue is a reg-
ulation issued by an executive agency, and not a statute
enacted by Congress, this regulation makes no clear state-
ment, let alone discusses, this court’s authority to hear an
appeal of an inter partes review. 37 C.F.R. § 90.2(a)(3)(ii)
(noting that a notice of appeal from an inter partes review
“must provide sufficient information to allow the [PTO] Di-
rector to determine whether to exercise the right to inter-
vene in the appeal . . . .”). Thus, this regulatory provision
is not jurisdictional in nature. Any failure by ELCO to
timely file a notice of appeal in compliance with this provi-
sion does not affect our authority to review this appeal.4
4 Moreover, it is undisputed that ELCO did timely
file a notice of appeal, albeit without the information re-
quired under 37 C.F.R. § 90.2(a)(3)(ii). ELCO then later
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AMP PLUS, INC. v. DMF, INC. 6
Turning to ELCO’s arguments, ELCO first argues that
the Board erred in not determining that claim 22 was an-
ticipated by Imtra 2011 because the Board previously de-
termined claim 17 was anticipated. Appellant Br. 13.5
ELCO’s argument is meritless. ELCO’s petition did not
challenge claim 22 as anticipated by Imtra 2011 but rather
as obvious under separate grounds. J.A. 77. ELCO cannot
raise a new ground of unpatentability on appeal. See
35 U.S.C. § 312(a)(3); Henny Penny Corp. v. Frymaster
LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019).
Second, ELCO argues that the Board’s determination
that ELCO failed to show obviousness of Limitation M of
claim 22 under ground two was unsupported by substantial
evidence. Appellant Br. 15. According to ELCO, its peti-
tion sufficiently showed that this limitation was obvious.
Id. at 15–18. We disagree. The petition provides an anal-
ysis of why Limitation M was obvious over Imtra 2011 and
Imtra 2007, ground two of the petition. J.A. 124. This
analysis, however, does not discuss Limitation M’s require-
ment for “coupl[ing] to electricity from an electrical system
of a building in which the compact recessed lighting system
is installed.” J.A. 167, 11:41–43; see J.A. 124. Additionally,
the one page of Imtra 2011 and the two paragraphs of the
expert declaration this analysis cites to do not discuss in-
stallation of recessed lighting in a building, as required
filed a corrected notice of appeal with the missing infor-
mation with each of the Board and the PTO. J.A. 9071.
The PTO responded to ELCO that the “corrected notice pro-
vides us the information we need to make our decision.” Id.
Thus, any harm in ELCO not providing sufficient infor-
mation in its initial notice of appeal was harmless.
5 As previously noted, the Board initially found, and
we affirmed on appeal, that claim 17 was anticipated by
Imtra 2011. AMP Plus, Inc., 2020 WL 6811241, at *17;
AMP Plus, Inc., 2022 WL 16844516, at *7.
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AMP PLUS, INC. v. DMF, INC. 7
under Limitation M. See J.A. 124–25 (quoting J.A. 396 (pg.
6 of Imtra 2011); citing J.A. 244 (¶¶158–159 of Bretschnei-
der declaration)). Thus, the petition and the supporting
documentation relied on by the petition are substantial ev-
idence supporting the Board’s determination that ELCO
failed to show the unpatentability of Limitation M of claim
22.
ELCO’s position boils down to an invitation for this
court to comb through other sections of its petition and find
support for its obviousness argument for Limitation M of
claim 22. ELCO’s position goes too far. An obviousness
analysis should not be rigid. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 415 (2007). However, the law of obviousness
does not require the court, or the Board, to develop argu-
ments for a limitation that the petition simply did not
make.
CONCLUSION
We have considered ELCO’s remaining arguments and
find them unpersuasive. For the reasons provided, we af-
firm.
AFFIRMED
COSTS
Costs for DMF.
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