Paper 13 Tel: Entered: August 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE

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1 Paper 13 Tel: Entered: August 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NORA LIGHTING, INC. Petitioner, v. JUNO MANUFACTURING, LLC, Patent Owner. Case IPR Before JOSIAH C. COCKS, JAMES A. TARTAL, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Petitioner, Nora Lighting, Inc. ( Petitioner ), filed a Petition (Paper 7, Pet. ) 1 requesting inter partes review of claims 1 6 of U.S. Patent No. 5,505,419 to Gabrius ( the 419 patent, Ex. 1001). Patent Owner, Juno Manufacturing LLC ( Patent Owner ), filed a Preliminary Response (Paper 12, Prelim. Resp. ). We have jurisdiction under 35 U.S.C To institute an inter partes review, we must determine that the argument and evidence presented in the Petition shows a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. 314(a). For the reasons set forth below, we do not institute an inter partes review for the challenged claims. A. Related Matters Petitioner identifies the following district court proceedings as related matters: (1) Juno Manufacturing LLC v. Nora Lighting, Inc., CV RGK (C.D. Cal) (filed Aug. 20, 2014) and (2) Juno Lighting, LLC v. Nora Lighting, Inc., CV RGK (C.D. Cal) (filed Feb. 11, 2013) (dismissed). B. The 419 Patent (Ex. 1001) The 419 patent is titled Bar Hanger for a Recessed Light Fixture Assembly, and relates to an apparatus with elongated arms for suspending a light fixture. Ex. 1001, at [57]. A problem in the art is that it is necessary to shorten the bar hangers when they are too long for the distance between support members such as rafters or joists. It was previously known and 1 We refer throughout to the Corrected Petition as the Petition. 2

3 considered typical that the installer will use a hacksaw to cut through the bar hanger to shorten the bar hanger. Id. at 1: Such a technique has associated costs in time, effort, and potential bending and damage to the bar hanger. Id. at 1: The disclosed improvement of the 419 patent is that the arms have scores formed therein that may be selectively fractured to shorten the arms at the score. Id. at 1: The 419 patent further discloses that the scores communicate with apertures to facilitate fracture. Id. at 3: Figure 1 of the 419 patent is depicted below: Figure 1 depicts bar hangers 38 and 40, mounted on a pair of joists 24, with recessed light fixture assembly 20. Id. at 2: Figure 6, below, provides more detail: 2 As discussed infra, Petitioner relies on the description of hacksaw use in the Background of the Invention of the 419 patent as admitted prior art as part of its case-in-chief for obviousness of independent claim 1 over the prior art. See Pet. 18 (claim chart). 3

4 Figure 6 depicts arm 126 (of bar hanger 40) which has scores 142, 144 and associated break apertures 146, 148. Id. at 1:12 16, 4: C. Illustrative Claims Claim 1, reproduced below, is the sole independent claim and is illustrative of the subject matter at issue. 1. A bar hanger for use in a recessed light fixture assembly to support the assembly on a support member comprising; an elongated arm having its length substantially greater than its width, a stiffener rib formed integral with said elongated arm, said stiffener rib extending substantially the length of the arm to make the arm substantially rigid along its length, a mounting ear fixed on one end of said arm, said mounting ear being adapted to be connected to a fastener to secure the ear to a support member, a 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, whereby said arm and stiffener rib may be selectively fractured at the score and the break aperture to shorten the length of the arm. D. Previous Ex Parte Reexamination As noted by both Petitioner (Pet. 6 8) and Patent Owner (Prelim. Resp. 1 2, 16 20), the patentability of claims 1 6 of the 419 patent was previously before the Office in the following proceeding: Ex Parte Reexamination, Control No. 90/012,825 (the Reexamination ). 4

5 1. The Request for Reexamination The Request for Ex Parte Reexamination ( Request, Ex. 2011) stated that it was filed on behalf of Nora Lighting, Inc., on April 2, Ex. 2011, 51. The Request alleged that claims 1 6 were unpatentable as obvious over U.S. Patent No. 4,972,339, also to Gabrius ( Gabrius 339, Ex. 1010) and one or more of Kent 3, Kusmer 4, Wenman 5, Hickey 6, and Chan 7. Ex. 2011, The Request stated that Gabrius 339 was applied during the original prosecution and discloses many of the elements of claims 1 6. Id. at 9. The Request relied on the other references, e.g., Kent, for the disclosure of a score with apertures for fracturing. Id.; see also id. at (discussing other references). 2. Gabrius 339 (Ex. 1010) Gabrius 339 discloses a recessed light fixture assembly that uses a pair of bar hanger brackets, and an elongated arm slidably connected to each pair of bar hanger brackets, to mount a fixture. Ex. 1010, 2: Each elongated arm has a stop engageable with a lock to limit movement of the bar hanger in one direction. Id. Each elongated arm also has a mounting ear on one end. Id. at 2: Kent, US 3,773,029, iss. Nov. 20, Kusmer, US 4,408,262, iss. Oct. 4, 1983 (Ex. 1009). 5 Wenman, US 4,754,377, iss. June 28, 1988 (Ex. 1008). 6 Hickey, US 5,354,952, iss. Oct. 11, Chan, US 5,222,800, iss. June 29,

6 3. Claims Confirmed over Gabrius 339 The Office conducted the ex parte reexamination and confirmed the patentability of the claims. See Ex. 2008, 2 3 ( Notice of Intent to Issue Reexamination Certificate, mailed Apr. 11, 2014); Ex ( Ex Parte Reexamination Certificate, iss. Apr. 25, 2014). In 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. Ex. 2008, 4. 8 grounds: E. The Alleged Grounds of Unpatentability Petitioner contends that claims 1 6 are unpatentable on the following References Basis Claims challenged Budnick 9 and Cassidy Budnick and Canham Budnick and Wenman Budnick and Kusmer The page numbers herein refer to the pagination of the Exhibit as submitted rather than to the internal pagination of the document. 9 Budnick, US 3,104,087, iss. Sept. 17, 1963 (Ex. 1005). 10 Cassidy, US 3,334,851, iss. Aug. 8, 1967 (Ex. 1006). 11 Canham, US 3,794,181, iss. Feb. 26, 1974 (Ex. 1007). 6

7 II. ANALYSIS A. Claim Construction We determine that none of the terms in the challenged claims requires express construction at this time, as neither of the parties has requested construction of claim language for purposes of this Decision. B. Obviousness over Budnick and Cassidy Relying on the Declaration of Jesa Kreiner (Ex. 1014), Petitioner contends that Budnick and Cassidy render obvious claims 1 6. Pet Patent Owner disagrees. Prelim. Resp For the reasons stated herein, we do not institute an inter partes review of claims 1 6 as obvious over Budnick and Cassidy. 1. Overview of Budnick (Ex. 1005) Budnick discloses an adjustable length bar hanger for installing electrical outlet boxes and fixtures between a pair of joists. Ex. 1005, 1: In particular, Budnick adjusts the length of the arms telescopically. Id. at 2: Budnick s bar hanger is made up of longitudinal inner and outer slider members designed for telescopic sliding engagement. Id. Budnick discloses that box 10 (or a fixture) may be affixed to bar hanger 11 by clamping device 13. Id. at 2: Clamping device 13 of Budnick is depicted in Figure 2, below: 7

8 As shown in Figure 2, clamping device 13 includes positioning carrier 27, clamping saddle 16, hollow body 44, and screw 32. Id. at 2:25 45, 3:9 16, 4:19 28, Fig. 2. Bar hanger 11 suspends positioning carrier 27, which is received by saddle 16, which in turn is attached to box 10 by hollow body 44 and screw 32. Id. Saddle 16 has wall portions 37, which may be snapped off at break lines 64. Id. at 6:66 74, Fig Overview of Cassidy (Ex. 1006) Cassidy discloses a cable hanger for holding conductors on a fixed structure. Ex. 1006, Title, 1:9 11. In particular, Cassidy discloses that the cable hanger consists of a vertical elongate channel member and a flexible 8

9 band, which is completely looped around the channel so as to provide a support for the cables or other conductors. See id. at 1:29 33, Fig. 3, Fig. 5. Figures 3 and 5 of Cassidy are depicted below: Figures 3 and 5 of Cassidy As shown in Figures 3 and 5, channel member 13 has one of its parts secured to an external hanger supporting structure. Id. at 1: Channel member 13 includes apertures 16, such that band 4 may be threaded through one of the apertures 16 to support cables 5, 5. Id. at 4:2 14. The apertures are stamped with scores 17 at the edges so that unused apertures of the vertical channel member may be broken off along the score lines. Id. at 4: Analysis Petitioner contends that claims 1 6 are unpatentable as obvious over Budnick and Cassidy. Pet Patent Owner disagrees. Prelim. Resp As to a score in said arm extending across the length of the arm, and a break aperture in the stiffener rib extending through the rib and 9

10 communicating with the score, as recited by claim 1, Petitioner relies on (1) a combination of the statement in the Specification of the 419 patent (Ex. 1001, 1:33 35) that it is typical for an installer to use a hacksaw to shorten a bar hanger and (2) the disclosure of score lines 64 in Budnick. Pet Petitioner relies in the alternative on score lines 17 of Cassidy for the disclosure of score lines. Id. at 19. Petitioner also relies on Cassidy for the disclosure of score lines and intersecting apertures to facilitate fracture. Pet. 20. Petitioner contends that 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. See id. at (citing KSR Int l, Co. v. Teleflex, Inc., 550 U.S. 398, 417, 421 (2007)), Petitioner adds that [r]emoving or displacing material of a component weakens that component, allowing the component to be more easily broken at the removal location. Pet. 17. Patent Owner argues that Budnick is substantially the same as Gabrius 339 which has been considered by the PTO twice, i.e., during examination and reexamination. Prelim. Resp Patent Owner observes that the break lines of Budnick are disclosed with respect to clamping device 13 and are not used to shorten the telescoping arms. Id. at 16. Patent Owner asserts 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 10

11 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. Id. at 17. Patent Owner thus submits that Budnick is duplicative of Gabrius 339. Id. at 16. Patent Owner argues that Petitioner s Declarant does not provide any new evidence, either. Id. at Our discretion as to whether to institute an inter partes review under 35 U.S.C. 314(a) is guided, in part, by the further language of 35 U.S.C. 325(d), which provides: In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. 325(d); see generally Integrated Global Concepts, Inc. v. Advanced Messaging Tech., Inc., Case IPR , slip. op. 7 8 (Paper 16) (Dec. 22, 2014) (declining to institute proceeding on claim where same prior art and substantially the same arguments were presented to the Office previously in reexamination). We agree 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. As with Gabrius 339, Budnick simply discloses a hanger arm. Budnick does not disclose apertures in a stiffener rib for shortening. As with the Reexamination, Petitioner relies on other references with apertures associated with score lines. None of these references discloses apertures in hanger arms of the type in question here, i.e., hanger arms that extend horizontally to suspend a fixture therefrom. Thus, although the references are not the same as those submitted for ex parte reexamination, the nature of the evidence as to the 11

12 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. Likewise, contrary to Petitioner s assertions (Pet. 8), we find the material presented in the Declaration to be substantially similar to that which was previously presented to the Office. See 35 U.S.C. 325(d). We have carefully reviewed the materials presented in the Petition and associated exhibits, and we exercise our discretion under 35 U.S.C. 314(a) not to institute an inter partes review for independent claim 1, or claims 2 6, which depend therefrom, over Budnick and Cassidy. 35 U.S.C. 325(d). C. Obviousness over Budnick and One of Canham, Wenman, or Kusmer Petitioner contends that claims 1 6 of the 419 patent are obvious over Budnick and one of Canham, Wenman, or Kusmer. Pet Overview of Canham (Ex. 1007) Canham discloses a toothbrush holder, which comprises a disc (with holes to receive toothbrushes) and a bracket arm to mount on a wall. Ex. 1007, 1: The disc also contains attachment apertures aligned with score lines to facilitate fracturing the disc along the diameter. Id. at 2: Overview of Wenman (Ex. 1008) Wenman discloses a thermally protected recessed lighting fixture. Ex. 1008, at [54]. The light fixture has side flanges which can be separated from a main plate by a separation line for installation into an existing ceiling. Id.at 2:51 68, Fig. 1, Fig

13 3. Overview of Kusmer (Ex. 1009) Kusmer discloses a plaster frame for recessed lighting. Ex. 1009, at [57]. The frame includes brackets which can be separated from a member along junctions. Id. at 3:22 42, Fig Analysis Petitioner s reasoning for its assertion of obviousness over Budnick and one of Canham, Wenman, or Kusmer is similar to that set forth above for the proposed ground of obviousness over Budnick and Cassidy. Pet Indeed, Petitioner relies on Canham, Wenman, and Kusmer interchangeably with Cassidy for the disclosure of score lines and associated apertures. See id. at (Claim Chart). None of the references discloses apertures in a hanger arm, as recited. We decline to institute an inter partes review of claims 1 6 over Budnick and one of Canham, Wenman, or Kusmer for the same reasons as for the asserted ground over Budnick and Cassidy. See 35 U.S.C. 314(a), 325(d). The arguments presented in these grounds are substantially similar to arguments that have already been presented to the Office. III. CONCLUSION Petitioner s arguments are substantially similar to arguments that have previously been presented to the Office. We exercise our discretion under 35 U.S.C. 314(a) and do not institute an inter partes review on any of the asserted grounds. See 35 U.S.C. 325(d). IV. ORDER In view of the foregoing, it is hereby ORDERED that the Petition is DENIED and an inter partes review is NOT INSTITUTED. 13

14 PETITIONER: Robert A. Schroeder Katherine B. Sales Douglas H. Morseburg LECH TISHMAN FUSCALDO & LAMPL PATENT OWNER: Rodney Tullett Chun Ng PERKINS COIE LLP 14