Case: 19-1361   Document: 64     Page: 1   Filed: 04/08/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

     TECHNICAL CONSUMER PRODUCTS, INC.,
         NICOR, INC., AMAX LIGHTING,
                  Appellants

                            v.

    LIGHTING SCIENCE GROUP CORPORATION,
                     Appellee
              ______________________

                       2019-1361
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 01287, IPR2018-00263, IPR2018-00269.
                  ______________________

                  Decided: April 8, 2020
                 ______________________

    STACIE RACHEL HARTMAN, Steptoe & Johnson LLP,
 Chicago, IL, argued for appellants. Also represented by
 JOHN LLOYD ABRAMIC, KATHERINE H. JOHNSON.

    KAYVAN B. NOROOZI, Noroozi PC, Los Angeles, CA, ar-
 gued for appellee.
                  ______________________

       Before DYK, CHEN, and STOLL, Circuit Judges.
 STOLL, Circuit Judge.
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 2          TECH. CONSUMER PRODS.    v. LIGHTING SCI. GRP. CORP.



      Technical Consumer Products, Inc., Nicor, Inc., and
 Amax Lighting (collectively, “TCP”) petitioned for inter
 partes review of several claims of U.S. Patent
 No. 8,201,968. The Patent Trial and Appeal Board deter-
 mined that TCP did not demonstrate by a preponderance
 of the evidence that claims 1–4, 6, 14, and 15 of the ’968 pa-
 tent were anticipated by U.S. Patent No. 7,670,021
 (“Chou”) or that claims 3, 4, 7, 8, 11, 12, 16, 17, and 19–23
 would have been obvious over Chou alone or in view of
 other prior art references. The Board based its determina-
 tions exclusively on its finding that Chou does not disclose
 a single limitation (hereinafter, the “H/D limitation”) in
 claims 1 and 20 of the ’968 patent, the only independent
 claims at issue.
      The Board’s conclusions regarding the H/D limitation
 resulted from an erroneous interpretation of the claim lan-
 guage and a misunderstanding of our case law. The Board
 did not address any of the parties’ other arguments regard-
 ing the other limitations of claim 1 or of the rest of the chal-
 lenged claims. Because claims 1, 11, 14, 15, 17, and 19–23
 of the ’968 patent were found to be unpatentable on other
 grounds not at issue on appeal, we vacate the Board’s deci-
 sion of no anticipation or obviousness solely as to claims 2–
 4, 6–8, 12, and 16 and remand for consideration of the par-
 ties’ remaining arguments pertaining to those claims.
                         BACKGROUND
                                I
     The ’968 patent is directed to replacement light emit-
 ting diode (LED) light fixtures. The specification explains
 that the advent of LED lighting, and the advantages it of-
 fered over conventional lighting, created a demand for re-
 placement LED light fixtures that could be used to replace
 existing light installations. Because different types of light
 installations used different kinds of housing, manufactur-
 ers of prior art replacement LED light fixtures would cre-
 ate unique designs for each type of installation to
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 accommodate the dimensional requirements of the light
 fixtures being replaced. The ’968 patent seeks to minimize
 the need for such customization by creating “low profile
 downlighting for retrofit applications” that accommodates
 a variety of housing shapes and sizes. ’968 patent col. 1
 ll. 13–14.
     Claim 1 of the ’968 patent illustrates the various fea-
 tures of the claimed light fixture design:
    1. A luminaire, comprising:
    a heat spreader and a heat sink thermally coupled
    to the heat spreader, the heat sink being substan-
    tially ring-shaped and being disposed around and
    coupled to an outer periphery of the heat spreader;
    an outer optic securely retained relative to at least
    one of the heat spreader and the heat sink; and
    a light source disposed in thermal communication
    with the heat spreader, the light source comprising
    a plurality of light emitting diodes (LEDs) that are
    disposed on the heat spreader such that the heat
    spreader dissipates heat from the LEDs;
    wherein the heat spreader, the heat sink and the
    outer optic, in combination, have an overall height
    H and an overall outside dimension D such that the
    ratio of H/D is equal to or less than 0.25;
    wherein the combination defined by the heat
    spreader, the heat sink and the outer optic, is so
    dimensioned as to: cover an opening defined by a
    nominally sized four-inch can light fixture; and,
    cover an opening defined by a nominally sized four-
    inch electrical junction box.
 Id. at col. 10 ll. 20–40 (emphasis added to the disputed H/D
 limitation).
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     Figures 5 and 12 of the ’968 patent show a top view and
 cross-sectional view, respectively, of an embodiment of the
 claimed luminaire 100, including LED 120, heat spreader
 105, heat sink 110, and outer optic 115:




 Id. Fig 5; see also id. at col. 2 ll. 50–52.




 Id. Fig. 12 (annotated by the Board); see also id. at col. 3
 ll. 1–2; J.A. 6.
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     In this embodiment, the heat sink 110 is annularly cou-
 pled to the heat spreader 105, which is covered by the outer
 optic 115. See id. at col. 3 l. 61–col. 4 l. 5. The specification
 describes that in the preferred embodiments, “the combi-
 nation of the heat spreader 105, heat sink 110 and outer
 optic 115, have an overall height H and an overall outside
 dimension D such that the ratio of H/D is equal to or less
 than 0.25” in order to “provide for a low profile lumi-
 naire 100.” Id. at col. 4 ll. 1–5. Figures 4 and 28 depict the
 H and D dimensions, which in these embodiments consti-
 tute the height from the base of the heat sink/spreader to
 the top of the outer optic (H) and the diameter of the circu-
 lar base (D):




 Id. Fig. 4.




 Id. Fig. 28; see also id. at col. 7 ll. 47–51.
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                                II
     Like the ’968 patent, Chou describes the advantages of
 the “[s]uccessful retrofit of an LED lamp to . . . existing and
 new recessed can housings.” Chou col. 2 ll. 9–13. Chou’s
 specification explains that prior art LED devices had prob-
 lems with heat dissipation when installed into recessed can
 housings. Id. at col. 1 ll. 37–52. Chou purportedly solves
 this problem by creating “a recessed light fixture having a
 thermally effective trim” that aids in the dissipation of heat
 from the light source. Id. at col. 1 ll. 17–18.
      The trim of Chou’s light fixture “has thermally conduc-
 tive properties and includes a flange around a perimeter of
 the trim.” Id. at col. 2 ll. 54–55. The light fixture also in-
 cludes “a heatsink mounted to a back surface of the trim,”
 id. at col. 2 ll. 57–58, that is inserted “into the recessed can
 housing,” id. at col. 2 l. 31. The trim 12, flange 22, and heat
 sink 14 are depicted in Figures 4a and 2a:




 Id. Fig. 4a (annotated by TCP); see also id. at col. 7 l. 48–
 col. 8. l. 3; Appellant’s Br. 18.
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 Id. Fig. 2a; see also id. at col. 3 l. 42–col. 4 l. 39.
      In the embodiment depicted in Figures 2a and 4a, “heat
 is transferred directly into trim 12 from the light source.”
 Id. at col. 5 ll. 2–3. “As the temperature of trim 12 in-
 creases, heat is vented from the flange portion of trim 12
 that resides outside the recessed can housing.” Id. at col. 5
 ll. 3–5. While “a portion of the heat residing in trim 12 is
 transmitted into heatsink 14” and “vented into the re-
 cessed housing,” the “majority of heat is dissipated from
 trim 12 outside the housing.” Id. at col. 5 ll. 6–10. Indeed,
 Chou discloses that approximately 65% of the heat gener-
 ated by the LED light source is dissipated through the trim
 and flange, id. at col. 7 ll. 1–3, while 35% of the heat is dis-
 sipated by heat sink 14, id. at col. 7 ll. 11–13.
                                 III
     During prosecution, the examiner initially rejected
 claim 1 of the ’968 patent as anticipated by Chou. J.A. 669.
 The examiner identified Chou’s “heat sink 14” as disclosing
 the claimed heat sink, and “trim 12” as disclosing the
 claimed heat spreader. Id. In response, the applicant
 amended the claim to clarify that the heat sink must be
 “substantially ring-shaped” and “disposed around and cou-
 pled to an outer periphery of the heat spreader.” J.A. 673.
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 8         TECH. CONSUMER PRODS.   v. LIGHTING SCI. GRP. CORP.



 The applicant argued that Chou’s heat sink 14 was neither
 ring-shaped nor coupled to the outer periphery of the heat
 spreader, and therefore did not anticipate claim 1.
 J.A. 679. The applicant also argued that the combination
 of these elements did not disclose the H/D limitation; that
 is, that the “ratio of the combined height of [Chou’s] heat
 sink 14 and the trim 12[,] and of the overall outside dimen-
 sion of the assembly 10,” was not less than 0.25. Id. The
 examiner allowed the amended claim without addressing
 whether Chou’s outer flange 22 satisfied the claimed heat
 sink limitations.
                             IV
     In its petition for IPR, TCP argued that Chou in fact
 anticipates the allowed claim 1 of the ’968 patent. In par-
 ticular, TCP argued that Chou’s outer flange 22, rather
 than heat sink 14, disclosed the claimed heat sink. TCP
 explained that Chou’s outer flange 22 was configured in a
 ring shape around trim 12. Regarding the H/D limitation,
 TCP asserted that the height-to-diameter ratio of the com-
 bination of trim 12, flange 22, and outer optic 23 was less
 than 0.25. TCP did not rely on heat sink 14 for the disclo-
 sure of any of the limitations of claim 1.
     Responding to TCP, patent owner Lighting Science
 Group Corp. (“LSG”) argued that both heat sink 14 and
 trim 12 must be included in the H/D calculation, and that
 when heat sink 14 is included, the height-to-diameter ratio
 is not less than 0.25. According to LSG, Chou’s “heat sink”
 necessarily includes “heat sink 14” in addition to its other
 heat sinking elements. To support its argument, LSG pre-
 sented expert evidence that Chou would not dissipate heat
 sufficiently enough to function were heat sink 14 removed.
     The Board agreed with LSG, finding that “the arrange-
 ment of heat sinking elements disclosed in Chou includes
 both trim 12 and heatsink 14.” Tech. Consumer Prods.,
 Inc. v. Lighting Sci. Grp. Corp., No. IPR2017-01287,
 2018 WL 5733733, at *6 (P.T.A.B. Oct. 31, 2018) (Decision).
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 Citing In re Chudik, 851 F.3d 1365 (Fed. Cir. 2017), the
 Board found that the only way to meet the claim require-
 ments was to remove an essential element of Chou—heat
 sink 14—and thus Chou could not anticipate the claim. Id.
 at *7. The Board also found that the prosecution history
 supported its determination, as the claim was allowed over
 Chou after amendment of the heat sink limitation. Id. Be-
 cause Chou does not disclose the H/D limitation if heat
 sink 14 is included in the calculation of the height-to-diam-
 eter ratio, the Board found that Chou does not anticipate
 claim 1. Id.
     The Board did not address any of the parties’ other ar-
 guments, determining that this finding alone was suffi-
 cient to resolve all of TCP’s anticipation and obviousness
 grounds based on Chou as a primary reference. 1 TCP ap-
 peals.      We have jurisdiction under 28 U.S.C.
 § 1295(a)(4)(A).
                         DISCUSSION
     Whether a prior art reference discloses a particular
 claim limitation presents a question of fact that we review
 for substantial evidence. See Wasica Fin. GmbH v. Conti-
 nental Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir.
 2017); Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d
 1291, 1297 (Fed. Cir. 2012); Golden Bridge Tech., Inc.
 v. Nokia, Inc., 527 F.3d 1318, 1323 (Fed. Cir. 2008). We
 review claim construction incident to the issues of antici-
 pation and obviousness and relying on intrinsic evidence
 de novo. Wasica, 853 F.3d at 1278.
     The sole question presented on appeal is whether the
 Board erred in determining that Chou’s heat sink 14 must
 be included in the calculation of the height-to-diameter


     1   The Board held that claims 1, 11, 14, 15, 17, and
 19–23 were unpatentable on other grounds. LSG did not
 appeal the unpatentability of these claims.
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 ratio recited in claim 1 of the ’968 patent. Because the
 Board’s findings of fact are divorced from the plain lan-
 guage of the claim, and are further premised on an incor-
 rect interpretation of our case law, we hold that they are
 not supported by substantial evidence.
     The H/D limitation requires that “the heat spreader,
 the heat sink and the outer optic, in combination, have an
 overall height H and an overall outside dimension D such
 that the ratio of H/D is equal to or less than 0.25.” ’968 pa-
 tent col. 10 ll. 32–35. The antecedent basis for “the heat
 sink” in the H/D limitation is found earlier in the claims
 and requires “a heat sink thermally coupled to the heat
 spreader, the heat sink being substantially ring-shaped
 and being disposed around and coupled to an outer periph-
 ery of the heat spreader.” Id. at col. 10 ll. 21–24. No other
 heat sink is specified in the claim. Consequently, “the heat
 sink” that is used in the calculation of the height-to-diam-
 eter ratio is the same heat sink that is annularly coupled
 to the heat spreader.
     TCP argued to the Board that Chou’s outer flange 22
 corresponds to the “heat sink” described in the ’968 patent
 claims. In response, LSG did not dispute that outer
 flange 22 is a “heat sink,” or that it is configured in a ring-
 shape around the heat spreader trim 12. Rather, LSG ar-
 gued that both of Chou’s heat sinks, i.e., outer flange 22
 and heat sink 14, must be included in the calculation of the
 H/D limitation’s height-to-diameter ratio. The Board
 agreed.
     This argument, however, contradicts the plain lan-
 guage of claim 1. The claim only requires that a specific
 heat sink—the one annularly coupled to the heat
 spreader—be included in the H/D ratio calculation. The
 claim does not suggest that all heat sinks in the luminaire
 must be included in this calculation, nor does it suggest
 that there must be only one heat sink. Indeed, the “com-
 prising” language in the preamble suggests that there may
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 be additional, unclaimed elements in the device, including
 additional heat sinks. See Crystal Semiconductor Corp.
 v. TriTech Microelecs. Int’l, Inc., 246 F.3d 1336, 1348
 (Fed. Cir. 2001) (explaining that the word “comprising” in
 a claim “creates a presumption that the recited elements
 are only a part of the device, that the claim does not exclude
 additional, unrecited elements” (citing KCJ Corp. v. Kinetic
 Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000))). And
 the figures and specification make clear that outer
 flange 22 and heat sink 14 are separate components of the
 light fixture that dissipate heat in different directions. See
 Chou col. 5 ll. 3–10 (describing how the majority of heat is
 vented through the flange outside the can housing, while a
 portion of the heat is dissipated via heat sink 14 into the
 can housing).
     Reading the H/D limitation to include heat sink 14 is
 also inconsistent with the ’968 patent specification. The
 specification describes the H/D limitation as “provid[ing]
 for a low profile [of the] luminaire.” ’968 patent col. 4 ll. 1–
 5. The embodiments disclosed in the ’968 patent only in-
 clude in the H/D calculation all of the elements of the lumi-
 naire that are external to the can housing, and exclude any
 element that is affixed inside the can housing, such as the
 wire connections or power conditioner 165. See id. Figs. 4,
 28, 30; see also id. at col. 5 ll. 9–15. Neither the claims nor
 the specification of the ’968 patent describe any particular
 dimensional requirements for components that are to be
 fixed within the housing. This makes intuitive sense, as it
 is unclear how the sizing of those elements would contrib-
 ute to, or detract from, the “low profile” of the luminaire.
 That Chou’s heat sink 14 is inserted “into the recessed can
 housing” to install the fixture, Chou col. 2 l. 31, and Chou’s
 outer flange 22 is external to the can housing, suggests
 that Chou’s outer flange 22 is the “heat sink” that claim 1
 contemplates having low profile dimensions.
     Contrary to the Board’s decision, the prosecution his-
 tory does not support a determination that heat sink 14
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 must be included in the calculation of the H/D limitation.
 In fact, the prosecution history makes it clear that heat
 sink 14 is not the heat sink recited by claim 1, as it is not
 configured in a ring shape around and coupled to trim 12.
 See J.A. 679. Importantly, the examiner never addressed
 whether the outer flange 22 could itself be the anticipatory
 “heat sink.”
     LSG argues that the Board specifically found that
 “heatsink 14 and trim 12 (including outer flange 22) are
 part of a singular heat sink in Chou, which cannot be sep-
 arated without rendering Chou inoperable.” Appellee’s
 Br. 15. According to LSG, this finding is supported by sub-
 stantial evidence, including Chou’s disclosure that heat
 sink 14 and outer flange 22 work together to dissipate heat
 from trim 12, as well as expert evidence that Chou could
 not function using only trim 12 and outer flange 22. Citing
 In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013), LSG argues
 that “Chou would not be enabled based on the heat dissi-
 pation capabilities of outer flange 22 alone” because it
 would not function without the additional heat dissipation
 provided by heat sink 14. Appellee’s Br. 20.
      It is well established in our case law that a prior art
 reference must be enabling in order to anticipate a claim.
 See, e.g., Impax Labs., Inc. v. Aventis Pharms. Inc.,
 468 F.3d 1366, 1381 (Fed. Cir. 2006) (“[A] prior art refer-
 ence must be enabling so that the claimed subject matter
 may be made or used by one skilled in the art.” (citations
 omitted)); Bristol–Myers Squibb Co. v. Ben Venue Labs.,
 Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001) (“To anticipate,
 the reference must also enable one of skill in the art to
 make and use the claimed invention.” (citing In re
 Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985))). In Morsa,
 we made clear that “an examiner must determine if prior
 art is enabling by asking whether a person of ordinary skill
 in the art could make or use the claimed invention without
 undue experimentation based on the disclosure of that par-
 ticular document.” 713 F.3d at 110 (emphasis in original).
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 In so stating, we rejected the idea that an examiner can
 assess enablement by comparing the disclosures of a prior
 art reference to the disclosures of the patent application it
 purportedly anticipates. Id. In other words, what matters
 for enablement is that the allegedly anticipatory invention
 disclosed by a prior art reference is enabled by that prior
 art reference. Whether that invention is in fact anticipa-
 tory is a separate question.
     Here, the invention disclosed in and enabled by Chou
 clearly includes heat sink 14. TCP does not argue other-
 wise. Instead, TCP argues that the relevant heat sink for
 anticipation and obviousness is outer flange 22. TCP’s in-
 validity theory does not require that heat sink 14 be re-
 moved from Chou’s light fixture. It simply requires
 considering only the specific heat sink required by
 claim 1—the one annularly coupled to the heat spreader—
 when assessing whether the H/D limitation is satisfied.
 Even accepting all of LSG’s evidence regarding the opera-
 tion of Chou as true, this does not change the fact that
 claim 1 incorporates only one particular heat sink in its cal-
 culation of the claimed height-to-dimension ratio. This is
 a matter of claim construction, not enablement.
     LSG vociferously argues that the Board found that
 there is only one heat sink in Chou, of which both outer
 flange 22 and heat sink 14 are a part. The Board’s decision
 is not so clear on this point, however. The Board described
 that the “arrangement of heat sinking elements disclosed
 in Chou includes both trim 12 and heatsink 14,” Decision,
 2018 WL 5733733, at *6, and determined based on this
 finding that Chou cannot anticipate the H/D limitation
 without “tearing the invention apart,” id. at *7 (quoting
 Chudik, 851 F.3d at 1374). The Board relied primarily on
 Chudik in reaching this conclusion. Like Morsa, however,
 Chudik does not support the Board’s conclusion.
     In Chudik, the patent claim at issue related to a medi-
 cal device used in shoulder replacement surgery. Id.
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 at 1367. The claim required that a “protruding surface” of
 the device be “arranged to engage the surface” of a partic-
 ular cavity. Id. at 1368. The “protruding surface” in the
 purportedly anticipatory prior art reference was incapable
 of engaging the surface of the cavity because an anchoring
 element of the device was in the way. Id. at 1373–74. We
 held that 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. Id.
     As described above, 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 irrel-
 evant 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.
      It is worth noting that the Board reached nearly the
 opposite result in assessing Chou’s disclosure of a nearly
 identical claim limitation in a related patent. See Tech.
 Consumer Prods. Inc. v. Lighting Sci. Grp. Corp.,
 No. IPR2017-01280, 2018 WL 5733727 (P.T.A.B. Oct. 31,
 2018) (TCP II). When considering whether Chou disclosed
 a heat spreader, heat sink, and outer optic that “have an
 overall height H such that the ratio of H/D is equal to or
 less than 0.25,” the Board in TCP II found that Chou’s
 flange portion 22 and trim 12 mapped to the heat sink and
 heat spreader elements of the claim. Id. at *10. In doing
 so, the Board rejected LSG’s identical argument regarding
 heat sink 14, finding that “Chou’s flange 22 of trim 12
 teaches a discrete ‘heat sink’ commensurate with claim 1”
 and that heat sink 14 was merely an additional, unrecited
 element. Id. It is difficult to reconcile these seemingly in-
 consistent findings, and we agree with the Board’s analysis
 in TCP II.
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                         CONCLUSION
     The Board’s determination that Chou does not disclose
 the H/D limitation in claim 1 of the ’968 patent is not sup-
 ported by substantial evidence. For the reasons described
 above, we vacate the Board’s decision of no anticipation or
 obviousness of claims 2–4, 6–8, 12, and 16 of the ’968 patent
 and remand for consideration of the parties’ remaining ar-
 guments.
                VACATED AND REMANDED
                            COSTS
     Costs to Appellants.
