April 8, 2020
Erroneous Patent Claim Interpretation and Misunderstanding of Case Law Results in Reversal of No Anticipation
In Technical Consumer Products, Inc. v. Lighting Science Group Corp., [2019-1361] (April 8, 2020) the Federal Circuit, citing an “erroneous interpretation of the claim language and a misunderstanding of our case law,” vacated the Board’s decision of no anticipation or obviousness solely as to claims 2–4, 6–8, 12, and 16 of U.S. Patent No. 8,201,968 directed to replacement light emitting diode (LED) light fixtures, and remanded.
At issue was whether the prior art met the height-to-dimension ratio of the claimed low profile light fixture. According to the Federal Circuit, the Board’s conclusion that prior art did not meet the height-to-dimension ratio resulted from the erroneous inclusion of the extra heat sink in the prior art reference into the calculation. Only the claimed elements needed to be included in the calculation.
The Federal Circuit said that this was not a case like Chudik, where the prior art reference did not anticipate the claim because it could only meet the claim language if the anchoring element was physically removed, thus distorting the original design. The Federal Circuit said that under a proper reading of claim 1, heat sink 14 need not be physically removed from Chou for Chou to anticipate the claim. Rather, heat sink 14 is irrelevant to the calculation of the height-to-dimension ratio, or any of the other claim limitations, because it is not the “heat sink” contemplated by claim 1 and claim 1 does not require a single heat sinking element.
Ironically, the Federal Circuited notes, the Board reached nearly the opposite result in assessing Chou’s disclosure of a nearly identical claim limitation in a related patent.
The Federal Circuit said that it is difficult to reconcile these seemingly inconsistent findings, and it agreed with the Board’s analysis in the earlier case.