Takeaway: To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.

In its Decision, the Board declined to institute inter partes review of any of the challenged claims of the ’774 patent.  In particular, the Board found that Petitioner had not shown a reasonable likelihood that it would prevail in showing that the challenged claims were anticipated under 35 U.S.C. § 102(e) or would have been obvious under 35 U.S.C. § 103(a).

The ’774 patent describes a luminaire comprising a housing with a light emission window.  Petitioner challenged claims 1-5, 7, 9, and 11-15 as being anticipated by Turnbull under 35 U.S.C. § 102(e) or as having been obvious over Turnbull and Kish under 35 U.S.C. § 103(a).  Petitioner also challenged claim 6 as having been obvious over Turnbull and Sakai, and claim 10 as having been 10 obvious over Turnbull and Ito, under 35 U.S.C. § 103(a).

As to Petitioner’s assertion that claims 1-5, 7, 9, and 11-15 were anticipated by Turnbull under 35 U.S.C. § 102(e), Petitioner had argued that Turnbull inherently discloses an LED chip supplying a luminous flux of at least 5 lm during operation.  The Board disagreed, finding that the Petition had not included sufficient “evidentiary citations, explanation, or analysis to support the asserted inherent disclosure of an ‘LED chip supplying a luminous flux of at least 5 lm during operation.’”

The Board also found deficiencies in the obviousness challenges.  For example, the Board found that Petitioner and its expert had not provided an evidentiary basis sufficient to show why one skilled in the art “would have combined Turnbull and Kish to achieve the claimed invention with a reasonable expectation of success.”

JST Performance, Inc. d/b/a Rigid Industries v. Koninklijke Philips N.V., IPR2014-00874
Paper 11: Decision Denying Institution of Inter Partes Review 
Dated: December 4, 2014 
Patent: 6,250,774 B1 
Before: Justin Busch, Trenton A. Ward, and Brian P. Murphy 
Written by: Murphy
Related Proceedings: Koninklijke Philips N.V. v. Schreder Lighting LLC, Case No. 1:14-cv-12282-IT (D. Mass.); Koninklijke Philips N.V. v. Wangs Alliance Corp., Case No. 1:14-cv-12298-GAO (D. Mass.)