955 F.3d 16
Fed. Cir.2020Background:
- TCP (Technical Consumer Products, Nicor, Amax Lighting) petitioned for IPR challenging claims of U.S. Patent No. 8,201,968 (the ’968 patent), owned by Lighting Science Group (LSG).
- Claim 1 requires: a heat spreader, a substantially ring-shaped heat sink disposed around and coupled to the heat spreader, an outer optic, LEDs on the heat spreader, and that the combination of the heat spreader, the heat sink, and the outer optic has overall height H and outside dimension D with H/D ≤ 0.25.
- Chou (prior art) discloses a trim (heat spreader) with an outer flange (flange 22) and a separate heatsink (heatsink 14) that sits inside the recessed can; Chou teaches most heat dissipated via the flange outside the can.
- The PTAB found Chou did not anticipate/obviously render obvious the challenged claims because it treated Chou’s flange and heatsink 14 as a single inseparable heat sink and thus included heatsink 14 in the H/D calculation, making H/D > 0.25.
- The Federal Circuit held the Board erred: claim language and the specification show the H/D ratio applies to the specifically claimed heat sink (the ring-shaped heat sink annularly coupled to the heat spreader), not to every heat-dissipating element in the prior art assembly.
- The court vacated the Board’s no-anticipation/obviousness decision as to claims 2–4, 6–8, 12, and 16 and remanded for consideration of the parties’ remaining arguments; other claims were already held unpatentable on separate grounds and not appealed.
Issues:
| Issue | TCP's Argument | LSG's Argument | Held |
|---|---|---|---|
| Whether Chou must be read to include both Chou’s flange and heatsink 14 when computing the claimed H/D ≤ 0.25 ratio | Chou’s outer flange 22 maps to the claimed ring-shaped heat sink; compute H/D using trim 12 + flange 22 + outer optic | Chou’s workable heat-sinking structure includes both flange 22 and heatsink 14; both must be included in H/D so Chou does not meet ≤ 0.25 | Vacated Board: H/D is calculated using the specific claimed heat sink (the annular heat sink coupled to the spreader); Board erred in requiring inclusion of heatsink 14; remand for further consideration of remaining arguments |
Key Cases Cited
- In re Chudik, 851 F.3d 1365 (Fed. Cir. 2017) (prior art that must be physically altered to meet a claim does not anticipate)
- In re Morsa, 713 F.3d 104 (Fed. Cir. 2013) (enablement of a prior-art disclosure must be assessed from that reference alone)
- Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017) (standard of review for anticipation and fact findings)
- Impax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d 1366 (Fed. Cir. 2006) (prior art reference must be enabling to anticipate)
- Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001) (‘‘comprising’’ permits additional unclaimed elements)