USPTO Appeal Adjusts ‘Adapted For” Language in Preamble of Jam Strait Automotive Lighting Patent Case against Osram Sylvania

The United States Patent Trademark Office (USPTO) recently released a paper on its final written decision “Adapted For” Language in Preamble IPR2014-00703, according to a report by The National Law Review.

The Board has investigated the case law and statements in the specification and reached the conclusion that the declamation of “adapted for” in a preamble constitutes a limitation meaning more than merely “capable of”.

In the Final Written Decision, the USPTO Appeal Board concluded that claims 30 and 31 of the ‘625 patent owned by Jam Strait were shown to be unpatentable under 35 U.S.C. § 103(a) as obvious over Laforest. However, the Board did not find evidence that Osram Sylvania had demonstrated the claims in 30 and 31 were unpatentable as obvious under 35 U.S.C. § 103(a) over either Alvarez or Horowitz, however.

To sum up the lawsuit, The Board initially focused on claim construction using the Broadest Reasonable Interpretation (BRI) standard. By doing so, the Board construed the recitation of “[a]n LED light bulb adapted for use in standard automotive mini wedge type bulb sockets” in the preamble of claim 30 to be a claim limitation meaning “an LED light bulb designed to fit into sockets configured to receive a mini-wedge type bulb.” The statements in the specification led the Board to conclude “the claimed LED light bulb is more than merely ‘capable of’ fitting into a mini-wedge socket—it is designed to do so.”

“Electrical control means” was also scrutinized by The Board to=be a means-plus-function limitation having “one or more resistors, or equivalents thereof” as its corresponding structure. Additionally, the Board construed ‘mounted on the printed circuit board” to mean that at least all of the electrical leads of the electrical control means need to be attached to the PCB.

The Board went on to find that claims 30 and 31 of the ‘625 patent are unpatentable under 35 U.S.C. § 103(a) as being obvious over Laforest. Even though the Board did not find Laforest clearly express the wedge socket onto which connector support 10 fits in a mini-wedge type socket,” the Board has agreed with Osram Sylvania that   “it would have been obvious for a person of ordinary skill in the art to modify Laforest’s socket to be configured in the required dimensions.”

However, the Board was not persuaded by Osram Sylvania that it was sufficiently demonstrated that claims 30 and 31 were unpatentable as obvious under 35 U.S.C. § 103(a) over either Alvarez or Horowitz. 

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