Authored by: Jeremy J. Gustrowsky
In AMP Plus, Inc. v. DMF, Inc., the Federal Circuit recently affirmed a decision by the Patent Trial and Appeal Board (PTAB) regarding a dispute over U.S. Patent No. 9,964,266, which covers a compact recessed lighting system designed for installation in standard electrical junction boxes. AMP Plus, doing business as ELCO Lighting, had challenged several claims of this patent through an inter partes review, arguing that certain claims were unpatentable based on prior art. While the Board found one claim anticipated by the prior art, it ultimately upheld the validity of claim 22, a decision that ELCO appealed.
A key issue on appeal was whether ELCO could argue that claim 22 was anticipated by a particular reference (Imtra 2011) when it had not made that argument in its original petition to the PTAB. The Federal Circuit made it clear that parties cannot raise new grounds of unpatentability on appeal that were not previously presented to the Board. This rule is grounded in both statute and precedent, ensuring that the appeal process does not become a venue for new arguments that the Board never had a chance to consider.
The court also addressed a procedural challenge from DMF, which argued that ELCO’s appeal should be dismissed for failing to include certain information in its notice of appeal. The Federal Circuit held that this requirement was procedural, not jurisdictional, meaning that even if ELCO’s notice was initially incomplete, it did not strip the court of its authority to hear the case—especially since ELCO later corrected the deficiency.
Ultimately, the Federal Circuit found that ELCO had not provided sufficient evidence or argument in its original petition to show that the lighting system described in the prior art could be installed in a building as required by claim 22. The court declined to search through the record for arguments ELCO had not clearly made, reinforcing the importance of fully developing arguments before the PTAB early in the process rather than hoping for the chance to do so later. The Board’s decision upholding claim 22 was therefore affirmed.