B-K Lighting, Inc. v. Vision3 Lighting
930 F. Supp. 2d 1102
C.D. Cal.2013Background
- BK-Lighting and Fresno Valves & Castings dispute validity, unenforceability, and infringement of the '084 patent.
- The court previously held the patent invalid for obviousness; the Federal Circuit partially affirmed, partly vacated, and remanded.
- The '084 patent covers an adjustable light-mixture mount with a first resistance means using a tapered opening and tapered post.
- Markman construed the ‘first resistance means’ as a tapered opening and a tapered post with frictional pivoting.
- On remand, the court considers additional obviousness arguments, enablement, best mode, inventorship, inequitable conduct, and infringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the remaining claims’ obviousness unresolved on remand? | FVC argues remaining claims are obvious via other prior art combinations. | BK contends Hydrel-based showing resolved; mandate scope restricts issues. | Denies summary judgment on obviousness; triable issues remain. |
| Does Kelly anticipate claims 3, 12, and 15? | FVC asserts Kelly discloses all elements including first resistance means. | BK shows Kelly lacks rotation of stud member; no anticipation. | BK granted; Kelly does not anticipate claims 3, 12, 15. |
| Is the patent enabled for enablement under 35 U.S.C. § 112? | FVC claims substantial undirected experimentation would be required. | B-K contends routine skill could enable practice; some experimentation acceptable. | Triable issues remain; no SJ for enablement. |
| Is there proper best mode invalidity under § 112? | FVC claims best mode was known but not disclosed by BK inventor. | No clear and convincing evidence BK knew a best mode. | BK granted summary judgment on best mode. |
| Is there true inventorship/inequitable conduct invalidating the patent? | FVC asserts misnaming of inventors undermines enforceability. | BK contends no clear and convincing evidence of improper inventorship or intent. | BK granted summary judgment on false inventorship and inequitable conduct. |
Key Cases Cited
- Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008) (mandate and scope of remand; issues decided on appeal foreclose later review)
- Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379 (Fed. Cir. 1999) (mandate rule and scope of remand duties)
- Laitram Corp. v. NEC Corp., 115 F.3d 947 (Fed. Cir. 1997) (scope of review under mandate; issues decided may not be reconsidered)
- Tronzo v. Biomet, Inc., 236 F.3d 1342 (Fed. Cir. 2001) (mandate scope and remand boundaries; issues undecided on appeal may be revisited)
- Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475 (Fed. Cir. 1998) (broad mandate authority and remand limitations)