United States: A "Driver" In Claim Construction: Claim Differentiation And Intrinsic Evidence In The Specification Are Important Factors For Defining Language In A Claim

Holding

In AMP Plus, Inc. v. DMF, Inc., No. 21-1595 (Fed. Cir. Nov. 10, 2022), the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's ("the Board") decision that claim 17 was anticipated and that the remaining challenged claims were not unpatentable as obvious. The Board also vacated and remanded the decision by the Board that independent claim 22 was not unpatentable for obviousness, ruling that the Board had failed to explicitly address the patentability of claim 22.

Background

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 DMF, Inc. Id. at *2. The '266 patent is generally directed to a "compact recessed lighting system" that can be installed in a standard electrical junction box. Id.

In the IPR petition, ELCO asserted that claims 1, 2, 4–11, 13, 15–17, 19, 21, and 26 in the '266 patent were anticipated by a product catalog published in 2011 by Imtra Corporation ("Imtra 2011"), which detailed various lighting fixtures for boats. Id. at *5. ELCO also asserted that claims 1, 2, 4–11, 13–17, 19, 21, 22, 25, 26, and 28–30 were obvious in view of either: (1) Imtra 2011 and a second Imtra catalogue published in 2007 ("Imtra 2007″), or (2) Imtra 2011 and Imtra 2007, in further view of U.S. Patent No. 9,366,418 ('Gifford'), which described a non-recessed lighting system that can be attached to a standard junction box. Id.

The Board found that Imtra 2011 disclosed all limitations of claim 17, and that claim 17 was thus anticipated by Imtra 2011. Id. at *6. The Board also found that Imtra 2011 failed to disclose the additional "plurality of elements" limitation included in the remaining claims at issue, including claim 22. Id. The Board further determined that: (1) Imtra 2007 did not disclose the "plurality of elements" limitation that was missing from Imtra 2011, and (2) 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. Accordingly, the challenged claims other than claim 17 were held not unpatentable as obvious. Id.

In a procedural oddity, the Board failed to provide an opinion regarding the obviousness of claim 22, which resulted in the Federal Circuit vacating and remanding the Board's decision on claim 22. Id. at *7-8.

Federal Circuit Decision

On Appeal, ELCO argued that the Board erred in finding that there was no motivation to combine Gifford with Imtra 2011 and Imtra 2007, specifically arguing that the Board failed to consider the Gifford reference "as a whole" and instead improperly focused on Gifford being limited to "non-recessed lighting". Id. at 8. The Federal Circuit was not persuaded and ruled that the Board had carefully weighed the record evidence in determining whether a skilled artisan would have been motivated to combine the Imtra references with Gifford. Id. The Federal Circuit specifically explained that the Board rejected ELCO's expert'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." Id. at *9.

In a cross-appeal, DMF argued 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 petition improperly mixed and matched features of different products disclosed in the Imtra 2011 catalog; and (2) the Board adopted a faulty construction of the claim term "driver," as recited in claim 17. DMF also argued that the Board erred in determining that claim 17 was obvious. Id. at *10.

Regarding the "mixed and matched features" argument, the Federal Circuit agreed that ELCO cited various pages of the Imtra 2011 catalog that describe several different products. However, the Court also found that the various pages referred to the same general "Imtra PowerLED" product, and that each page presented a feature of that same general "Imtra PowerLED" lighting system tied to the limitations of claim 17. Id. at *12. The Court thus held that ELCO did not impermissibly mix and match disclosures from Imtra 2011 to arrive at an anticipatory reference, and that the Board did not err in finding that there was no reason that "the general disclosures regarding Imtra LEDs" should be "limited to the specific products on the same page." Id.

With respect to the claim term "driver" in claim 17, the Board adopted ELCO's construction of that term, construing "driver" to mean "an electronic device to supply, regulate, or supply and regulate electrical energy to a light source module." Id. at *13. DMF argued for a narrower construction requiring the driver to be connected to a building's main power source. Id. The Federal Circuit found that the intrinsic evidence did not suggest that a "driver" is limited to a device that is connected to a building's main power source. Instead, the Court pointed out that the specification indicated that the driver may be installed in "any structure" and is therefore not limited to traditional buildings that would contain a building main power source. Id.

Specifically, DMF criticized the three aspects of the Board's claim construction analysis. First, DMF challenged the Board's reliance on technical dictionaries. The Federal Circuit rejected DMF's contention and found that the Board primarily used intrinsic evidence, relying on technical dictionaries only in providing a summary of ELCO's arguments. Id. at 13.

Second, DMF asserted that because there are other differences in scope between claims 17 and 22, the Board improperly invoked the presumption of claim differentiation when the Board considered that claim 22 explicitly recites a connection to building main power. The Federal Circuit reiterated that "[i]t is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous," citing Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021). Id. at *14. The Court agreed with ELCO that if a driver were limited to embodiments connected to a building main power source, the "building" limitation of claim 22 would be superfluous. Id.

Third, DMF cited the prosecution history of the '266 patent to support its narrower term construction. DMF pointed to an examiner interview where the inventor indicated that "building wiring carrying the AC 'mains' voltage may be coupled to the driver inside the unified casting." However, the Court found the statement is best read as a non-limiting description of the location of a driver in certain contexts, and it does not rise to the level of an "unequivocal[] and unambiguous[]" disavowal as to the scope of the term "driver." Id.

Accordingly, the Federal Circuit rejected DMF's arguments for a narrower construction of "driver" and affirmed the Board's decision that claim 17 was unpatentable as anticipated.

Takeaways

This case reminds practitioners that there is some flexibility to mix and match separate examples from the same reference for novelty challenges, as long as those examples are "directly related to each other by the teachings of the cited reference" and do not amount to "picking, choosing, and combining various disclosures not directly related to each other." Id. at *11. In this case, the Federal Circuit agreed that the IPR petitioner cited to several different products disclosed in the same reference, but also ruled that the mixing and matching was permissible because each of the individual products cited in the reference exemplified features also included in a common, general product disclosed in the reference. If facing an anticipation rejection during prosecution, analyze whether the examiner has mixed related examples or if the rejection has gone too far and amounts to "picking and choosing" unrelated disclosures.

Additionally, the case demonstrates to patent owners the importance of carefully defining terms in the specification and then using them consistently. If the term "driver" is meant to specifically mean a "driver to be connected to a building's main power source," then include that specific definition in the specification or in narrower claim language. An applicant may be its own lexicographer, so long as the meaning of the terms used in the specification are clear. Likewise, rather than indicating in the specification that the driver may be installed in "any structure," limit the scope of the specification to a "driver" as established in the definitions. Use unequivocal and unambiguous language in the prosecution history to disavow the broader scope of the term "driver."

This case also cautions patent drafters that even a single word in a claim may affect the claim construction of other claims. The Federal Circuit reaffirmed that courts will avoid construing terms in a way that "renders them void, meaningless, or superfluous." Intel, 21 F. 4th 801, 810. In this case, the word "building" was used to modify "driver" in claim 22 but not used in other claims, thus prohibiting the patent owner from arguing that the "driver," as a general term, had to be connected to a building's main power source throughout the claims.