Signify Challenges PTAB Ruling in Luminex Patent Case

One day after EdisonReport covered Luminex International’s appeal to the Federal Circuit, Signify filed its own response. The company is asking the U.S. Patent and Trademark Office Director to review the Patent Trial and Appeal Board’s (PTAB) decision.

The case involves claims 13 and 15 of U.S. Patent No. 10,299,336. The PTAB found those claims unpatentable as “obvious” in a challenge from Luminex and Menard, Inc. Signify argues the Board went too far by creating a new theory that the petitioners never raised.

Dispute Over the Petition

Luminex’s petition relied on U.S. Patent No. 7,192,160 (Reiff). That patent describes a fixture that switches between a white fluorescent light and a colored LED used for military applications. The petition focused on anticipation, claiming Reiff already disclosed the invention.

Signify says the PTAB stretched a few stray words in the filing into a new obviousness argument. In its request, the company stated: “The Final Written Decision presents an important policy issue—whether the Board may create an unpatentability ground never explained in the Petition.”

What Is at Stake

The disputed claims require switching between two white light sources with different correlated color temperatures (CCT). Signify argues Reiff does not teach that feature. The company also claims the Board shifted the burden of proof, forcing Signify to disprove an argument that the petitioners never made.

If the Director agrees, claims 13 and 15 could be restored. Other claims in the patent have already been upheld. The ruling could also set a wider precedent. It may define how far the PTAB can go in reframing petitioners’ arguments during inter partes review.

Read the full Signify response here.