Federal Circuit Affirms PTAB’s Obviousness Analysis for Recessed Lighting Patent

In AMP Plus, Inc. v. DMF, Inc., No. 2023-1997 (Fed. Cir. Mar. 19, 2025), the Federal Circuit affirmed the PTAB’s finding that claim 22 of U.S. Patent No. 9,964,266 (the ’266 patent”) was unpatentable as obvious.

ELCO filed an IPR seeking to cancel certain claims of DMF’s patent covering a recessed lighting system. In its final written decision, the PTAB found that ELCO proved one claim was unpatentable but failed to prove unpatentability for the other challenged claims, including claim 22, which recited a connector “coupled to electricity from an electrical system of a building.” The PTAB found that ELCO’s petition lacked any meaningful analysis for why the marine lighting brochures it relied on would apply to lighting installed in a building setting.

On appeal, the Federal Circuit agreed that the petition failed to address a critical element of claim 22 and that the Board was not obligated to “comb through other sections of its petition and find support for its obviousness argument.” The court also declined to consider ELCO’s anticipation argument, which had not been raised during the IPR. Because ELCO failed to substantiate how the prior art disclosed the building-specific installation requirement, the Board’s finding of non-obviousness was affirmed in full.