By Cheryl Beise, J.D.
In a consolidated patent infringement suit asserted by GE Lighting Solutions against several LED lighting products manufacturers, the federal district court in Cleveland correctly determined that the asserted claims of one patent-in-suit were invalid as indefinite, but erred in finding the asserted claims of a second patent were indefinite, the U.S. Court of Appeals for the Federal Circuit has decided (GE Lighting Solutions, LLC v. Lights of America, Inc. October 27, 2016, Hughes, T.).
GE Lighting Solutions LLC filed lawsuits in the Northern District of Ohio against Lights of America, Inc.; Lighting Science Group Corp.; CRS Electronics; Feit Electric Co., Inc.; MSI, LLC; and Technical Consumer Products, Inc., charging them with infringement of two patents directed to dissipating heat from light emitting diode (LED) lamps: U.S. Patent Nos. 6,787,999 (the ’999 patent) and 6,799,864 (the ’864 patent). The district court consolidated the proceedings, and after construing two disputed claim terms, granted summary judgment to the defendants, finding that the asserted claims of both patents were invalid as indefinite under 35 U.S.C. §112 ¶ 2.
The ’864 patent. GE asserted claims 1, 4–8, 10, 12, and 14–16 of the ’864 patent. The asserted claims all require a thermally "elongated" conductive core, which draws heat from the LEDs and dissipates it into the air. The district court first construed "elongated" to mean "extending in length" and then held that the asserted claims were indefinite because a person of ordinary skill in the art could not be reasonably certain of the claim scope.
The Federal Circuit agreed with the district court. When including a term of degree, such as "elongated," the patent must provide "some standard for measuring that degree," the court said. Absent some form of "objective boundaries," a claim is indefinite. GE’s expert admitted that an ordinarily skilled artisan could not, without additional information, differentiate an "elongated" core from a "non-elongated" core. The core’s dimensions were not described in the specification or in the claims. In addition, during prosecution, GE distinguished two prior art references (Reisenauer and Serizawa) as not containing an "elongated" element. But the disk of Reisenauer and the plate in Serizawa were both extended in length, which created an unresolved ambiguity as to how the prior art elements are not considered to be "elongated," the court observed.
The ’999 patent. GE asserted claims 8, 9, and 12 of the ’999 patent, which cover an LED lamp that contains a heat sink with an LED module on one side and an electronic module on the other side. The district court construed "heat sink" to mean "to receive and dissipate heat from," according to its plain and ordinary meaning.
The district court’s construction was not erroneous, but it’s finding of indefiniteness based thereon was. The district court recognized that "[t]he claims, specification and prosecution history demonstrate that any amount of heat transfer is sufficient for ‘heat sink (verb).’" "Thus, whether a component heat sinks another component is an objectively defined fact: either heat is transferred between the components and heat sink, or it is not," the Federal Circuit said. Because the verb "to heat sink" creates no "zone of uncertainty," the asserted claims of the ’999 patent were not indefinite.
The Federal Circuit affirmed the finding of indefiniteness as to the ’864 patent, but reversed it as to the ’999 patent and remanded the case.
Attorneys: Richard L Rainey (Covington & Burling LLP) for GE Lighting Solutions, LLC. Garret A. Leach (Kirkland & Ellis LLP) for Lights of America, Inc.; Lighting Science Group Corp.; Feit Electric Company, Inc.; MSI, LLC; and Technical Consumer Products, Inc.
Companies: GE Lighting Solutions, LLC; Lights of America, Inc.; Lighting Science Group Corporation; Feit Electric Company, Inc.; MSI, LLC; Technical Consumer Products, Inc.
MainStory: TopStory Patent FedCirNews
Interested in submitting an article?
Submit your information to us today!Learn More