IP Law Daily Divided panel reverses, remands noninfringement judgment in energy-efficient lighting patent dispute
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Monday, July 16, 2018

Divided panel reverses, remands noninfringement judgment in energy-efficient lighting patent dispute

By Joseph Arshawsky, J.D.

The federal district court in Wilmington, Delaware, erred in construing "attachment surface," in a patent for energy-efficient lighting apparatuses, adopting the patentee’s construction of "layer of the housing to which the illumination surface is secured," a divided panel of the U.S. Court of Appeals for the Federal Circuit has ruled. Because the court’s entry of judgment of noninfringement was based on its erroneous construction, the Federal Circuit vacated the judgment and remanded the case for further proceedings, awarding costs to the patentee (Blackbird Tech LLC v. ELB Electronics, Inc., July 16, 2018, Moore, K.).

Blackbird Tech LLC ("Blackbird") owns U.S. Patent No. 7,086,747 ("the ’747 patent"), directed to energy-efficient lighting apparatuses. Blackbird sued ELB Electronics, Inc., ETi Solid State Lighting Inc., and Feit Electric Company, Inc., for infringement of claim 12 of the ’747 patent. The district court entered judgment of noninfringement of claim 12, based on its construction of "attachment surface." Claim 12 describes an energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising a housing having an attachment surface and an illumination surface, and a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface. Because the court erred in construing "attachment surface," the Federal Circuit vacated and remanded.

Attachment surface. The parties disputed the meaning of "attachment surface," specifically whether the attachment surface must be secured to the ballast cover. Blackbird proposed construing "attachment surface" as "layer of the housing to which the illumination surface is secured," and the defendants proposed "layer of the housing that is secured to the ballast cover and to which the illumination surface is secured." The district court construed "attachmentsurface" as "layer of the housing that is secured to the ballast cover." After this claim construction, Blackbird stipulated to noninfringement and this appeal followed.

The Federal Circuit held that the district court erred in construing "attachment surface" to be secured to the ballast cover. "By its plain language, claim 12 does not require the attachment surface to be secured to the ballast cover." It does not require the attachment surface be secured to anything other than the illumination surface. The Federal Circuit did "not agree that this fastener limitation should be imported into the claim. "We cannot discern, nor does any party argue that there is, a technologically significant reason to have the fastening mechanism secure the attachment surface to the ballast cover." Without any evidence that the fastener is important, essential, or critical to the invention, it should not be read in as a claim limitation.

During the prosecution history, the fastener limitation was originally present in claim 12 and it was expressly eliminated during prosecution for Section 112 reasons. "As a factual matter, no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expresslyremoved from the claim to secure patentability with the examiner’s blessing and agreement."

Dissenting opinion. CircuitJudge Jimmie Reyna dissented because he concluded that the district court correctly construed "attachment surface" to mean "layer of the housing that is secured to the ballast cover." The word "retrofit" in the preamble of claim 12 implies securing the lighting apparatus to something, it is reasonable to conclude that the "attachment surface" is involved with achieving the retrofit function. Regarding the prosecution history, Judge Reyna contended an ambiguous amendment, such as here, should not negate the evidence in the specification and the conclusion implicit in the claim language that the attachment surface is secured to the ballast cover. "Because the intrinsic record fully supports the construction of attachment surface as being secured to the ballast cover, I respectfully dissent," Judge Reyna said.

The case is No. 2017-1703.

Attorneys: Sean Kevin Thompson (Blackbird Tech LLC) for Blackbird Tech LLC d/b/a Blackbird Technologies. John Hintz (Maynard, Cooper & Gale, PC) for ELB Electronics, Inc. and Feit Electric Co. Inc. Philip A. Rovner (Potter Anderson & Corroon, LLP) for ETi Solid State Lighting Inc.

Companies: Blackbird Tech LLC d/b/a Blackbird Technologies; ELB Electronics, Inc.; Feit Electric Co. Inc.; ETi Solid State Lighting Inc.

MainStory: TopStory Patent FedCirNews

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