Takeaway: The Board may decline to institute inter partes review where the proposed grounds for unpatentability are substantially similar to arguments that have already been presented to the Office.

In its Decision, the Board denied Petitioner’s request for inter partes review of claims 1-6 of U.S. Patent No. 5,505,419. The ’419 patent relates to a hanger for suspending a light fixture.

The Board began by reviewing the proceedings in a prior ex parte reexamination concerning the challenged claims. The request for ex parte reexamination, which was filed on behalf of Petitioner, alleged that the challenged claims were unpatentable as obvious over the Gabrius ’339 patent and one or more of Kent, Kusner, Wenman, Hickey, and Chan. The USPTO conducted the ex parte reexamination and confirmed the patentability of the claims. “[I]n the Notice of Intent to Issue a Reexamination Certificate, the Examiner found that none of the prior art references taught an aperture in a stiffener rib to facilitate shortening an arm, and that there was no suggestion to place an aperture in a stiffener rib for facilitation of shortening the arm.”

In this proceeding, Petitioner alleges that the challenged claims are obvious over: (1) Budnick and Cassidy, (2) Budnick and Canham, (3) Budnick and Wenman, and (4) Budnick and Kusmer.

The Board first considered whether the claims were unpatentable over Budnick and Cassidy. Petitioner argued that the “score in said arm extending across the length of the arm, and a break aperture in the stiffener rib extending through the rib and communicating with the score” recited in claim 1 was disclosed by (1) a combination of a statement in the Specification of the challenged patent that lighting fixture installers typical use a hacksaw to shorten a bar hanger and (2) the disclosure of score lines in Budnick. In the alternative, Petitioner also relied on Cassidy for “the disclosure of score lines and intersecting apertures to facilitate fracture.” According to Petitioner, “the effect of using score lines in a hanger arm and communicating apertures in a hanger arm in order to break and remove the hanger arm and stiffener rib would have been predictable, that it would have been an obvious application of one technique that has improved one device to improve a similar device, and that a person of ordinary skill is not an automaton.”

In response, Patent Owner argued that “Budnick is substantially the same as Gabrius ’339 which has been considered by the PTO twice, i.e., during examination and reexamination.” Patent Owner further argued that “the break lines of Budnick . . . are not used to shorten the telescoping arms,” that neither Gabrius ’339 nor Budnick includes a mechanism to shorten the hanger arms, that it would not have been obvious to put apertures in the arms of Gabrius ’339 because apertures would weaken the arms, and that for the same reasons, a person of ordinary skill in the art would not have been motivated to put these same items into the arms of Budnick.”

The Board “agree[d] with Patent Owner that Budnick is duplicative of Gabrius ’339, and that Petitioner’s arguments are substantially similar to those presented in the Request for Ex Parte Reexamination.” The Board determined that “although the references are not the same as those submitted for ex parte reexamination, the nature of the evidence as to the prior art at the time of the invention and the arguments presented are substantially the same as that which already has been presented to the Office in reexamination.” Accordingly, the Board exercised its discretion under 35 U.S.C. § 314(a) not to institute review of the challenged claims over Budnick and Cassidy.

The Board then considered Petitioner’s arguments concerning the remaining grounds and declined to institute an IPR on those grounds “for the same reasons as for the asserted ground over Budncik and Cassidy.” Thus, the Board did not institute an IPR on any of the asserted grounds.

Nora Lighting, Inc. v. Juno Manufacturing, LLC, IPR2015-00601
Paper 13: Decision Denying Institution of Inter Partes Review
Dated: August 12, 2015
Patent: 5,05,419
Before: Josiah C. Cocks, James A. Tartal, and James A. Worth
Written by: Worth
Related Proceedings: Juno Manufacturing LLC v. Nora Lighting, Inc., CV 14-06546-RGK (C.D. Cal) (filed Aug. 20, 2014); Juno Lighting, LLC v. Nora Lighting, Inc., CV13-00981-RGK (C.D. Cal) (filed Feb. 11, 2013) (dismissed)