Technology Information Law Blog by Charles Gideon Korrell

On March 19, 2025, the United States Court of Appeals for the Federal Circuit issued its decision in AMP Plus, Inc. v. DMF, Inc., affirming the Patent Trial and Appeal Board’s (PTAB) ruling that AMP Plus, doing business as ELCO Lighting, failed to prove claim 22 of U.S. Patent No. 9,964,266 was unpatentable as obvious. This case highlights the rigorous evidentiary requirements for demonstrating obviousness in inter partes review (IPR) proceedings and serves as a cautionary tale for petitioners relying on implicit reasoning rather than explicit proof.

Obviousness and the Challenge to Claim 22

ELCO argued that claim 22 of DMF’s patent should be invalidated as obvious in view of two prior art references: Imtra 2011 and Imtra 2007. The key limitation in dispute—referred to as “Limitation M”—requires that the compact recessed lighting system be “coupled to electricity from an electrical system of a building.”

PTAB found that ELCO failed to present sufficient evidence demonstrating that a person of ordinary skill in the art (POSITA) would have modified the marine lighting systems disclosed in Imtra 2011 to be installed in a building. The Federal Circuit affirmed this conclusion, emphasizing that an obviousness argument must be supported by more than assumptions or conclusory statements.

The Federal Circuit’s Analysis of ELCO’s Argument

ELCO’s IPR petition asserted that “wire connections between the fixture and the power source can be made in a variety of ways” and that the use of junction boxes in lighting systems was well known. However, PTAB determined—and the Federal Circuit agreed—that ELCO never specifically addressed how the prior art actually disclosed or suggested adapting the marine lighting system for a building’s electrical infrastructure.

The court underscored several key deficiencies in ELCO’s argument:

1. Lack of Direct Evidence – The cited portions of the Imtra 2011 brochure and supporting expert testimony never explicitly discussed installation in a building’s electrical system. Instead, the reference described marine applications, leaving a gap in ELCO’s argument about how or why a POSITA would have been motivated to adapt it for use in buildings.
2. Failure to Establish Motivation to Combine – While ELCO asserted that modifying a marine lighting system for a building would have been an obvious design choice, PTAB found—and the Federal Circuit agreed—that ELCO did not provide sufficient evidence of a motivation to make that change. As the Supreme Court held in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), an obviousness analysis must consider whether a POSITA would have been motivated to make the modification, not just whether they could have.
3. Improper Reliance on Expert Testimony – ELCO relied on its expert’s declaration to argue that a POSITA would recognize the adaptability of marine lighting systems to buildings. However, the Federal Circuit found that the cited paragraphs of the expert report did not actually support this assertion, as they failed to address the specific limitation at issue—installation in a building’s electrical system.
4. The Importance of Addressing Every Claim Limitation – The court reaffirmed the principle that every limitation in a claim must be shown to be disclosed or suggested by the prior art. Because ELCO failed to adequately address Limitation M, its obviousness argument fell short, regardless of the strength of its other arguments.

Lessons for Patent Practitioners and Petitioners

This decision reinforces a fundamental rule in patent litigation and IPR proceedings: Obviousness cannot be assumed; it must be demonstrated with clear, persuasive evidence. Key takeaways include:

• IPR petitions must explicitly address each claim limitation. Courts and PTAB will not fill in evidentiary gaps left by a petitioner’s argument.
• Obviousness requires more than a general assertion of industry knowledge. Petitioners must show both how the prior art discloses a limitation and why a POSITA would have been motivated to modify it in the claimed manner.
• Expert testimony must be specific and directly tied to claim limitations. Vague or conclusory statements from experts will not suffice to establish obviousness.

Conclusion

The Federal Circuit’s ruling in AMP Plus v. DMF underscores the challenges in proving obviousness in IPR proceedings. While ELCO had strong prior art references, its failure to explicitly demonstrate how a POSITA would have modified marine lighting for building use proved fatal to its case. For future patent challengers, this case serves as a reminder that thorough, well-supported arguments are critical in overcoming the presumption of patent validity.

By Charles Gideon Korrell