throbber
In re: Bruce Wesson
`
`Patent No.: 6,786,625
`
`Issued: September 7, 2004
`
`For: LED LIGHT MODULE
`FOR VEHICLES
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EXPERT DECLARATION OF PETER W. SHACKLE, Ph.D., FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,786,625
`
`
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 2180-02
`
`Customer No.: 20306
`
`Real Party in Interest:
`OSRAM SYLVANIA Inc.
`
`1
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`
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`
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`OSIX 1002.001
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`

`

`I, Peter W. Shackle, Ph.D., declare and state as follows:
`
`I.
`
`INTRODUCTION
`
`1.
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`I have been retained as an expert witness for the inter partes review
`
`(“IPR”) of U.S. Patent No. 6,786,625 (“the ’625 patent”; OSIX 10011) filed by
`
`OSRAM SYLVANIA Inc. (“OSI”). More specifically, I have been asked to render
`
`opinions for this IPR as to the patentability of claims 30-31 (“the Challenged
`
`Claims”) of the ’625 patent.
`
`II. QUALIFICATIONS
`
`2.
`
`I hold a bachelor’s degree in physics from the University of
`
`Birmingham (United Kingdom) and a Ph.D. in physics from the University of
`
`Cambridge (United Kingdom).
`
`3.
`
`I have over twenty years’ experience in the field of lighting
`
`electronics, with particular emphasis on light emitting diode (“LED”) drivers and
`
`electronic ballasts. I am currently the President of Photalume, a consulting
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`company I founded in 2012. Before that, I was Director of Power Supply Products
`
`at Light-Based Technologies, and I also served as Chief Technology Officer for
`
`Lightech Electronics, Inc. Additionally, I held vice president positions at Fulham
`
`
`1 Exhibits OSIX 1001-27 refer to exhibits cited in OSI’s Petition for Inter Partes
`
`Review of the ’625 patent.
`
`
`
`2
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`OSIX 1002.002
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`

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`Co, Inc., Universal Lighting Technologies, and Robertson Worldwide.
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`4.
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`I am an elected senior life member of the Institute of Electrical and
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`Electronics Engineers, and I am a member of the Illuminating Engineering Society.
`
`5.
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`I am a named inventor of fifty-five U.S. patents, and I have three
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`patent applications pending before the U.S. Patent and Trademark Office. I have
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`also authored eight publications in refereed journals and nine publications in trade
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`journals, the most recent of which pertains to LED technology. My curriculum
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`vitae is attached as Exhibit A.
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`III. PRIOR TESTIMONY
`
`6.
`
`In the past six years, I have not testified as an expert at trial or by
`
`deposition.
`
`IV. COMPENSATION
`
`7.
`
`I am being compensated for the time that I spend consulting on this
`
`case at the rate of $350.00 per hour. My compensation is not dependent upon the
`
`outcome of this IPR.
`
`V. MATERIALS CONSIDERED
`
`8.
`
`In developing my opinions for this IPR, I reviewed, among other
`
`things, the ’625 patent, its prosecution history, numerous prior art references in the
`
`relevant field of automotive lamps and lighting, and materials cited herein.
`
`
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`3
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`OSIX 1002.003
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`

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`VI. SUMMARY OF OPINIONS
`
`9.
`
`My opinions related to the issue of patentability of the ’625 patent are
`
`based upon the claim constructions set forth in OSI’s Petition for inter partes
`
`review of the ’625 Patent (“the Petition”). To the extent that a claim construction
`
`is not provided in the Petition for a particular claim limitation or element, I used
`
`the ordinary and customary meaning of the word(s), as would be understood by a
`
`person of ordinary skill in the art in the context of the field of the invention at the
`
`time of the invention, to construe such a claim term or element.
`
`10.
`
`For the reasons explained below, the Challenged Claims are
`
`unpatentable as anticipated by and/or obvious over the prior art.
`
`11.
`
`The Challenged Claims are anticipated by French Patent Application
`
`Publication No. 2 576 719 to Laforest et al. (“Laforest,” OSIX 1017; OSIX 1018),
`
`which has a publication date of January 25, 1985. Laforest, entitled “LED
`
`connector support and motor vehicle dashboard using the same,” identifies Jaeger
`
`as the applicant and lists Jean-Louis Laforest and Jean-Philippe Vanpe as
`
`inventors.
`
`
`
`12.
`
`13.
`
`In the alternative, the Challenged Claims are obvious over Laforest.
`
`The Challenged Claims are anticipated under 35 U.S.C. § 102(e) by
`
`U.S. Patent Application Publication No. 2003/0102820
`
`to Sivacumarran
`
`(“Sivacumarran,” OSIX 1018), which was filed on December 12, 2001, and
`
`
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`4
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`OSIX 1002.004
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`

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`published on June 5, 2003. Sivacumarran, entitled “Lamps,” lists Karthigesu
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`Sivacumarran as the inventor.
`
`14.
`
`In
`
`the alternative,
`
`the Challenged Claims are obvious over
`
`Sivacumarran.
`
`15.
`
`Claim 30 is anticipated by U.S. Patent No. 6,252,350 to Alvarez
`
`(“Alvarez,” OSIX 1020), which was filed on July 31, 1998, and issued on June 26,
`
`2001. Alvarez, which is entitled “Surface Mounted LED Lamp,” identifies Andres
`
`Alvarez as the inventor.
`
`16.
`
`17.
`
`In the alternative, claim 30 is obvious over Alvarez.
`
`Claim 30 is anticipated by U.S. Patent No. 6,357,902 to Horowitz
`
`(“Horowitz,” OSIX 1021), which was filed on September 25, 2000, and issued on
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`March 19, 2002. Horowitz, which is entitled “After Market LED Taillight Bulb,”
`
`identifies Brian Horowitz as the inventor.
`
`18.
`
`19.
`
`In the alternative, claim 30 is also obvious over Horowitz.
`
`I reserve the right to amend and/or supplement this declaration in
`
`light of additional relevant evidence, arguments, or testimony presented, for
`
`example, during discovery for this IPR.
`
`VII. LEGAL STANDARDS
`
`20.
`
`I understand that a patent claim can be unpatentable under the United
`
`States patent laws for various reasons, including, for example, anticipation or
`
`
`
`5
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`OSIX 1002.005
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`obviousness in light of the prior art. In arriving at my opinions, I have applied the
`
`following legal standards and analyses regarding patentability.
`
`A. Burden of Proof
`I understand that OSI has the burden to prove a challenge of
`21.
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`unpatentability by a preponderance of the evidence. I also understand that this is a
`
`lower standard than the clear and convincing evidence standard required to prove
`
`invalidity in patent litigation before a Federal District Court.
`
`B. Claim Construction
`I understand that the assignee of the ’625 patent, Jam Strait, Inc. (“the
`22.
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`Patent Owner”), has alleged that OSI infringes at least claim 30 of the ’625 patent
`
`in a Complaint filed in the U.S. District Court for the Eastern District of Louisiana
`
`(“the Underlying Litigation”). See generally OSIX 1003. I understand that the
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`Patent Owner and OSI have presented their respective constructions of claim 30 of
`
`the ’625 patent to the District Court in the Underlying Litigation.
`
`23.
`
`I also understand that the claim construction standard used in an inter
`
`partes review differs from the claim construction standard used by the District
`
`Court. Specifically, I understand that the Patent Trial and Appeals Board
`
`(“PTAB”) applies the “broadest reasonable interpretation” of the claims presented
`
`for review in a petition for inter partes review, which differs from the construction
`
`standard used by the District Court. As such, I understand that the construction of
`
`
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`6
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`OSIX 1002.006
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`a claim term under the “broadest reasonable interpretation” may differ from the
`
`proposed construction of a claim term in the Underlying Litigation.
`
`24.
`
`I understand that the preamble of a claim is not given patentable
`
`weight when it does not limit the structure of the claimed invention. For example,
`
`when the preamble recites an intended use for the claimed invention, the preamble
`
`is not entitled to patentable weight. MPEP § 2111.02(I). I also understand that the
`
`preamble is not given patentable weight “if the body of a claim fully and
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`intrinsically sets forth all the limitations of the claimed invention.” MPEP
`
`§ 2111.02(II). Further, I understand that an “adapted for” clause “may raise a
`
`question as to the limiting effect of the language.” MPEP § 2111.04.
`
`C. Anticipation
`I understand that a claim is anticipated by a prior art reference if the
`25.
`
`prior art reference discloses every element in the claim. Such a disclosure can be
`
`express (it says it or shows it), or it can be inherent (the element must necessarily
`
`be there even if the prior art does not say it or show it). If the claim is anticipated,
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`the claim is unpatentable.
`
`26.
`
`I understand that the first step in an anticipation analysis is to
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`construe the claim, and the second step is to compare the construed claim to the
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`prior art reference.
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`
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`7
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`OSIX 1002.007
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`D. Obviousness
`I understand that a patent claim may be unpatentable for obviousness
`27.
`
`even if it is not anticipated by the prior art. I understand that a patent claim is
`
`obvious if the differences between the claimed invention and the prior art are such
`
`that the subject matter of the claimed invention, as a whole, would have been
`
`obvious to a person of ordinary skill in the art at the time the invention was made.
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`If the claim is obvious, the claim is unpatentable.
`
`28.
`
`I understand that before an obviousness determination is made, the
`
`level of ordinary skill in the art must be considered, and the scope and content of
`
`the prior art must be considered, as well. I understand that to determine the scope
`
`and content of the prior art, one must determine what prior art is reasonably
`
`pertinent to the particular problem the inventor faced. I understand that prior art is
`
`reasonably pertinent if it is in the same field as the claimed invention, or is from
`
`another field that a person of ordinary skill in the art would look to in trying to
`
`solve the problem.
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`29.
`
`I understand that a patent claim may be obvious if the prior art would
`
`have suggested to, motivated, or provided a reason to a person of ordinary skill in
`
`the art to combine certain prior art references to arrive at the elements of the claim.
`
`I also understand that one can look at interrelated teachings of multiple patents, the
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`effects of demands known to the design community or present in the marketplace,
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`
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`8
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`OSIX 1002.008
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`and the background knowledge possessed by a person having ordinary skill in the
`
`art—all in order to determine whether there was an apparent reason to combine the
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`known elements in the fashion claimed by the patent at issue. I further understand
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`that a person of ordinary skill is a person of ordinary creativity, not an automaton.
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`This person of ordinary creativity works in the contexts of a community of
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`inventors and of the marketplace. The obviousness inquiry needs to reflect these
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`realities within which inventions and patents function. In order to arrive at a
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`conclusion that an invention is obvious, it can be helpful to identify a reason that
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`would have prompted a person of ordinary skill in the relevant field to combine the
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`elements in the way the claimed invention does.
`
`VIII. TECHNOLOGY OVERVIEW
`
`30. Automotive lamps (also referred to as bulbs or light bulbs) have been
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`used for decades to meet different lighting applications in vehicles. For most of
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`the history of the automobile, automotive lamps have been incandescent lamps.
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`And since incandescent lamps have a finite life, aftermarket lamps are generally
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`available for most makes and models, thereby allowing users to replace burned-out
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`or defective lamps without needing to replace the entire lamp assembly (i.e., the
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`socket and socket housing).
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`31.
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`In the United States, the Society of Automotive Engineers (“SAE”)
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`9
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`OSIX 1002.009
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`publishes a handbook that includes standards for automotive lamps and sockets.2
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`The lamps are categorized according to application, and each lamp within a given
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`category is identified by a part number. While the lamps within a given category
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`may serve a similar purpose, they typically vary in one or more physical or
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`electrical aspects. For example, two lamps within a given category may have a
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`different base, a different filament height, a different power rating, filament type,
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`candela (i.e., luminosity), etc.
`
`32.
`
`For example, the 1999 SAE Handbook identifies a variety of
`
`miniature lamp bulbs. OSIX 1022. As seen from Figure 3 (OSIX 1022.003), there
`
`are eight different bulbs types and seven different base types for miniature lamps,
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`with each bulb type having between two and five different part numbers (e.g.,
`
`lamps). Table 1 (OSIX 1022.002) identifies the correspondence of the figures to a
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`given base type and an “old designation” of the bulb.
`
`33.
`
`The filament in a standard incandescent bulb is, essentially, a resistor.
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`Thus, the filament for a given lamp typically depends on the voltage of the
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`electrical system in which the lamp will be used and the desired luminosity of the
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`lamp. As a general matter, the higher-powered the lamp, the shorter its lifespan.
`
`
`2 The American National Standards Institute (“ANSI”) also publishes the standards
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`for these lamps.
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`
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`10
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`OSIX 1002.010
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`

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`34. With the development of LED lighting technology, LED lamps are
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`now used to replace incandescent lamps. LED lamps may offer advantages over
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`incandescent lamps, such as providing equivalent (or greater) light output at
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`significantly lower power consumption, reduced heat generation, and longer life
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`span. If an LED lamp and an incandescent lamp have the same base, the LED
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`lamp can generally replace the incandescent lamp.
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`35.
`
`LED lamps cannot, however, be operated at the same voltages and
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`currents as incandescent lamps. For instance, LEDs are typically rated for currents
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`that are less than or equal to 350 mA and applied voltages that are less than or
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`equal to 150 mV. Exceeding the ratings of an LED may damage or destroy the
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`LED, and can also lead to other safety risks, such as excessive heat that could
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`cause a fire.
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`36.
`
`To replace incandescent lamps, which operate with applied voltages
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`anywhere between 6 V and 120 V or more, LED lamps often require additional
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`circuitry to maintain the current through and voltage drop across the LED within
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`the rated limits of the LED. This can be accomplished with simple circuits, such as
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`resistors in series with an LED, or more advanced controllers, which use active
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`components that react to changes in the applied voltage (or current) to maintain a
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`relatively constant current through and voltage drop across the LED.
`
`
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`11
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`OSIX 1002.011
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`

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`IX. OPINIONS REGARDING THE ’625 PATENT
`
`A. The ’625 Patent
`The ’625 patent, entitled “LED Light Module for Vehicles,” was
`37.
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`filed as U.S. Patent Application No. 10/123,542 (“the ’542 application,”
`
`OSIX 1005) on April 16, 2002, and issued on September 7, 2004. The ’625 patent
`
`lists Bruce Wesson as its sole inventor, and has thirty-eight total claims, among
`
`which claims 1, 5, 8, 12, 13, 16, 17, 28, 30, 32, and 35 are independent.
`
`38.
`
`The ’625 patent is a continuation-in-part of U.S. Patent No.
`
`6,371,636 (“the ’636 application,” OSIX 1007). The ’636 patent, entitled “LED
`
`Light Module for Vehicles,” was filed as U.S. Patent Application No. 09/578,813
`
`(“the parent ’813 application,” OSIX 1006) on May 24, 2000, and issued on April
`
`16, 2002. Like the ’625 patent, the ’636 patent lists Bruce Wesson as the sole
`
`inventor. Both the ’636 patent and the ’625 patent claim priority to U.S.
`
`Provisional Patent Application No. 60/135,797 (“the ’797 provisional application,”
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`OSIX 1008), which was filed on May 24, 1999.
`
`39.
`
`The ’625 patent also claims priority to U.S. Provisional Patent
`
`Application No. 60/345,788 (“the ’788 provisional application,” OSIX 1009),
`
`which was filed on December 31, 2001, and U.S. Provisional Patent Application
`
`No. 60/346,666 (“the ’666 provisional application,” OSIX 1010), which was filed
`
`on January 8, 2002. Each application lists Bruce Wesson as the sole inventor.
`
`
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`12
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`OSIX 1002.012
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`40.
`
`Based on the content of the priority documents, I understand that the
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`earliest effective filing date of the Challenged Claims is December 31, 2001.
`
`Level of Ordinary Skill in the Art
`
`B.
`41. With respect to the invention claimed in the ’625 patent, a person of
`
`ordinary skill in the art at the time of the invention3 would have a bachelor’s
`
`degree in electrical engineering or some formal post-secondary education in
`
`electronics or electrical engineering and several years’ experience working in the
`
`field.
`
`C.
`42.
`
`Scope and Nature of the Prior Art
`
`The relevant prior art in this case is directed to replacement lamps,
`
`particularly automotive replacement lamps and replacement lamps using LEDs in
`
`lieu of standard incandescent filaments.
`
`D. Claim Construction
`For purposes of this declaration and my opinions regarding the
`43.
`
`patentability of the Challenged Claims, I have used the broadest reasonable
`
`interpretation of the Challenged Claims, as set forth in the Petition. I understand
`
`
`3 As used herein, the term “one of ordinary skill in the art” refers to a person
`
`having the level of ordinary skill in the art at the time of the effective filing date of
`
`the Challenged Claims (December 31, 2001).
`
`
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`13
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`OSIX 1002.013
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`that the broadest reasonable interpretation of the Challenged Claims is based on the
`
`interpretations of claim 30 asserted by the Patent Owner in the Underlying
`
`Litigation. Since the PTAB may determine that one or more of the Patent Owner’s
`
`proposed constructions are not reasonable in view of the specification, I have also
`
`considered the narrower, alternative constructions presented in the Petition that are
`
`based on OSI’s claim construction positions in the Underlying Litigation.
`
`44.
`
`To the extent that the Petition does not provide a claim construction
`
`for a particular claim term or element, I used the ordinary and customary meaning
`
`of the words, as would be understood by a person of ordinary skill in the art in the
`
`context of the field of the invention at the time of the invention, to construe such a
`
`claim term or element.
`
`45.
`
`The preamble of claim 30 recites “an LED light bulb adapted for use
`
`in standard automotive mini wedge type sockets.” As noted above, I understand
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`that the preamble of the claim is not entitled to any patentable weight if it defines
`
`an intended use for the claimed invention and/or does not limit the claimed
`
`invention to a particular structure. Accordingly, I understand that the preamble of
`
`claim 30 may not constitute a limitation of the claim.
`
`46.
`
`To the extent that the preamble is interpreted as a claim limitation,
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`the term “standard automotive mini wedge type sockets” does not appear in the
`
`specification of the ’625 patent. Additionally, there does not appear to be a
`
`
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`14
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`OSIX 1002.014
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`

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`standard definition of “automotive mini wedge type sockets.” For instance,
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`Table 1 of the 1999 SAE handbook identifies the bases for miniature incandescent
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`lamps as of the effective filing date of the ’625 patent (see OSIX 1022.002):
`
`
`
`As seen from the table, four base types are identified as “wedges” under “old base
`
`designations”: W-1 Wedge, W-2 Wedge, SC Wedge, and DC Wedge. “Mini
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`wedge,” however, is not one of these bases.
`
`47. However, in discussing the “Background of the Invention,” the
`
`specification of the ‘625 patent admits that it was known that “LED bulbs designed
`
`to replace vehicle incandescent bulbs require bases similar to the standard bayonet
`
`or the wedge bases.” OSIX 1001, col. 1, lns. 54-56. In column 14, line 6 – column
`
`16, line 16 (“the Relevant Disclosure”), the ’625 patent describes several
`
`embodiments of “a mini wedge bulb [] of the present invention.” Additionally, the
`15
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`OSIX 1002.015
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`

`

`’625 patent states that each “mini wedge bulb [] can replace any 3 digit automotive
`
`bulb.” OSIX 1001, col. 14, lns. 28-29, 62-63; col. 15, lns. 26-27 (emphasis added).
`
`Three-digit automotive lamps can have a variety of bases, such as a wedge base
`
`(e.g., 161, 168, 194 lamps), a miniature bayonet base (e.g., 313, 755, 756, and 757
`
`lamps), a rigid loop base (e.g., 561, 563, and 567 lamps), or an end cap base (e.g.,
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`560 and 578 lamps). OSIX 1026.006-07; see also OSIX 1027.004-06.
`
`48.
`
`Thus, in view of the specification of the ’625 patent, a person of
`
`ordinary skill in the art would have understood “standard automotive mini wedge
`
`type sockets” to mean “sockets configured to receive a three-digit automotive
`
`incandescent lamp.”
`
`E. Challenges under Laforest
`Laforest Anticipates the Challenged Claims
`1.
`49. Under the broad constructions of the claim terms proposed by the
`
`Patent Owner, Laforest anticipates the Challenged Claims.4
`
`50.
`
`Laforest describes an LED lamp, which is referred to as “an LED
`
`connector support,” that is intended as a replacement for incandescent lamps used
`
`“to illuminate motor vehicle dashboards and/or to display various data on these
`
`dashboards.” OSIX 1018.002, lns. 5-6; p. 003, lns. 1-9.
`
`
`4 Cites to Laforest refer to the translated document (OSIX 1018).
`
`
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`16
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`OSIX 1002.016
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`51. Annotated versions of Figures 1 and 2 of Laforest show the
`
`correspondence between Laforest and the Challenged Claims:
`
`At Least One LED
`
`Electrical
`Control Means
`
`Upper
`Side
`
`Rear Side
`
`Bulb Body
`
`Front Side
`
`Printed
`Circuit Board
`
`At Least One Pair of
`Electrical Conductors
`
`
`
`Annotated Figure 2 (left) and 3 (right) of Laforest
`
`52. As shown in the annotated figures, the LED connector support (10)
`
`includes a printed circuit board (small support plate 11), with an LED (20) being
`
`mounted on the upper side of a rectangular main body (12) of the printed circuit
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`board. Electrically-conductive elements (14, 15, and 16) form a path on the
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`printed circuit board that electrically connects the LED (20) and a current-limiting
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`resistor (30) in series. A pair of electrical conductors (electrical traces 17, 18) on
`
`the plug (13) of the small support plate (11) connect the circuit to a power source
`
`
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`17
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`OSIX 1002.017
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`

`

`when inserted into a socket (60).
`
`53.
`
`The following claim chart sets forth in more detail where each
`
`element of the Challenged Claims is met by Laforest:
`
`Claim Language
`
`An LED light bulb
`adapted for use in
`standard automotive
`mini wedge type bulb
`socket comprising:
`
`
`
`a bulb body comprising
`a printed circuit board
`having a front side, a
`
`
`
`Laforest Disclosure (OSIX 1018)
`Claim 30
`To the extent that the PTAB determines that this term
`is a limitation, Laforest discloses an LED light bulb
`(connector support 10) adapted for use in sockets for
`motor vehicle dashboard, which include standard
`automotive mini wedge type bulb sockets. See Figs. 1-
`3; p. 002, lns. 1-2 (“The present invention relates to
`devices for lighting and/or illuminated display for
`motor vehicle dashboards.”); p. 002, lns. 23-25 (“[T]he
`Applicant has posed the problem of designing a
`connector support for an LED compatible with
`standard sockets, positively ensuring a correct supply
`polarity for the LEDs when they are installed.”);
`p. 003, lns. 1-9 (“The problem thus posed is resolved
`according to the present invention by an LED
`connector support designed to be used in a motor
`vehicle dashboard that comprises a small support plate
`of an electrically-insulating material onto which is
`mounted an LED and that bears electrically-conductive
`elements connected to the LED terminals, these
`electrically-conductive elements defining two parallel
`electrically-conductive traces designed to be brought to
`bear, respectively, against the electrical contacts of a
`socket when the small support plate is engaged in the
`socket, the connector support also having an
`asymmetry with regard to a central axis extending
`parallel to the traces and coinciding with the socket
`axis to form a polarizing coding ensuring the LED
`power supply polarity.”).
`Laforest discloses a bulb body (small support plate 11)
`comprising a printed circuit board (small support plate
`11) having a front side, a rear side, and an upper side
`
`18
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`OSIX 1002.018
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`

`

`rear side, and an upper
`side;
`
`at least one light
`emitting diode mounted
`on the upper side of the
`printed circuit board
`
`
`
`
`
`
`and electrically coupled
`with the printed circuit
`board;
`
`electrical control means
`
`
`
`
`
`
`
`(rectangular main body 12 and plug 13) that can be
`inserted into a socket (60). See Figs. 1-3; p. 004, lns.
`21-25 (“Connector support 10 comprises a flat small
`support plate 11, made of an electrically-insulating
`material, provided on one of its faces with electrically-
`conductive elements 14, 15 and 16, as shown in Figure
`2. Small support plate 11 provided with electrically-
`conductive elements 14, 15 and 16 is preferably
`created using conventional printed circuit
`manufacturing techniques.”); p. 004, ln. 26 – p.005,
`ln. 1 (“Small support plate 11 more precisely
`comprises a generally rectangular main body 12. . . as
`well as a plug 13 . . , and has parallel electrically
`conductive traces 17, 18 . . . designed to be brought to
`bear, respectively, against electrical contacts [] of a
`socket [60] mounted on a motor vehicle dashboard,
`when the small support plate is engaged in the socket
`. . . .”).
`Laforest discloses a light emitting diode (LED 20)
`mounted on an upper side of the printed circuit board
`(rectangular main body 10). See Figs. 1-3; p. 005, lns.
`4-5 (“LED 20 . . . [is] arranged on the face of small
`support plate 11 opposite electrically-conductive strips
`14, 15, 16 and the connection pins or terminals of the
`aforesaid components are engaged in the through-holes
`formed in small plate 11 opposite electrically-
`conductive strips 14, 15, 16 to be soldered thereon.”).
`
`Laforest also discloses that the light emitting diode
`(LED 20) is electrically coupled with the printed
`circuit board. See Figs. 1-3; p. 005, lns. 8-10 (“[A]
`first pin 21 of LED 20 is soldered onto the electrically-
`conductive strip 16 extended by trace 18, the second
`pin 22 of LED 20 being soldered onto strip 14 . . . .”).
`Laforest discloses an electrical control means; in
`particular, Laforest discloses a resistor (resistor 30)
`that is in series with the light emitting diode (LED 20),
`thereby providing electrical control for the light
`emitting diode. See Figs. 1-3; p. 004, lns. 19-20
`
`19
`
`OSIX 1002.019
`
`

`

`
`
`
`
`
`
`mounted on the printed
`circuit board electrically
`connected between the
`printed circuit board and
`at least one pair of
`electrical conductors.
`
`An LED light bulb as in
`claim 30, wherein the
`printed circuit board
`acts as a body for the
`bulb.
`
`(“These figures show a connector support 10 according
`to the present invention onto which an LED 20 and a
`resistor 30 are soldered.”); p. 005, lns. 12-13 (“LED
`and current-limiting resistor 30 are connected in series
`between electrically-conductive traces 17 and 18.”).
`
`Laforest further discloses that the resistor (resistor 30)
`is mounted on the printed circuit board (rectangular
`main body 12) and electrically connected between the
`printed circuit board (rectangular main body 12) and at
`least one pair of electrical conductors (parallel
`electrically-conductive traces 17, 18). See Figs. 1-3;
`p. 004, ln. 30 – p. 005, ln. 3 (“[e]lectrically-conductive
`traces 17 and 18 are designed to come to bear,
`respectively, against electrical contacts [62, 63] of a
`socket 60 mounted on the motor vehicle dashboard
`when small plate 11 is engaged in socket 60 by a
`translational movement parallel to traces 17 and 18.);
`p. 4, ln. 20 (“Resistor 30 is soldered onto small plate
`11 parallel to traces 17 and 18.”).
`Claim 31
`Laforest discloses that printed circuit board (small
`support plate 11) acts as a body for the bulb (connector
`support 10). See Figs. 1-3; p. 004, lns. 21-25
`(“Connector support 10 comprises a flat small support
`plate 11, made of an electrically-insulating material,
`provided on one of its faces with electrically-
`conductive elements 14, 15 and 16, as shown in Figure
`2. Small support plate 11 provided with electrically-
`conductive elements 14, 15 and 16 is preferably
`created using conventional printed circuit
`manufacturing techniques.”); p. 005, lns. 25-26
`(“[C]onnector support 10 is designed to be engaged in
`a socket 60.); p. 007, lns. 2-3 (“[S]mall plate 11 should
`be engaged in socket 60 to come into contact with
`traces 17, 18 and electrical contacts 62, 63.”).
`
`
`54.
`
`
`
`Laforest does not expressly identify the type of the disclosed socket
`
`20
`
`OSIX 1002.020
`
`

`

`(60) it discloses. However, Laforest states that the “[t]he present invention more
`
`precisely relates to an LED connector support and a motor vehicle dashboard using
`
`the same.” OSIX 1018.002, lns 3-4. Additionally, Laforest states that the
`
`disclosed LED connector “addresses the problem of replacing [] conventional
`
`filament lamps by LEDs.” OSIX 1018.002, lns 3-4.
`
`55. As of the earliest effective filing date of the ’625 patent, a number of
`
`vehicles used three-digit automotive incandescent lamps for instrument panel (i.e.,
`
`dashboard) lighting. The ’625 patent directs the reader to OSI’s online catalog to
`
`identify the incandescent lamps used in a particular vehicle. OSIX 1001, col. 24,
`
`lns. 38-40. From this catalog, one can see that three-digit automotive incandescent
`
`lamps were used for instrument panel lighting in the following model year 2000
`
`vehicles: Chevrolet S10, Chevrolet Tahoe, Chrysler 300M, Chrysler Concorde,
`
`Chrysler Sebring, Dodge Intrepid, Ford Contour, Ford Crown Victoria, Ford
`
`Escort, Ford Expedition, Ford Explorer, Ford F-150, Ford Mustang, Ford Taurus,
`
`Honda Accord, Honda Civic, Toyota 4Runner, Toyota Camry, Toyota Land
`
`Cruiser, Toyota Tacoma, and Toyota Tundra.5 See OSIX 1023 (identifying 161,
`
`
`5 The cited vehicles are not an exclusive listing of model year 2000 vehicles that
`
`use three-digit automotive incandescent lamps for instrument panel lighting.
`
`
`
`
`
`21
`
`OSIX 1002.021
`
`

`

`168, and 194 lamps as replacements for instrument panel lights for model year
`
`2000 vehicles). Thus, if the PTAB determines that the preamble limits the
`
`Challenged Claims, Laforest discloses an LED lamp (connector support 10)
`
`configured to be inserted, or wedged, into a socket configured to receive a three-
`
`digit automotive incandescent lamp.
`
`56.
`
`Indeed, a person of ordinary skill in the art would have understood
`
`Laforest to disclose “[a]n LED light bulb adapted for use in standard automotive
`
`mini wedge type bulb sockets” under a narrower interpretation of this limitation.
`
`In the 1999 SAE Handbook, the standards for miniature lamp bulbs identified in
`
`Table 3 of the “miniature lamps” section indicates that the 161, 168, and 194
`
`incandescent lamps are the same bulb type (T-3¼) and have the same base type
`
`(W2.1x9.2d) (see OSIX 1022.003):
`
`
`Instead, the list is representative of vehicles in which an LED lamp could replace
`
`the identified three-digit automotive incandescent lamps.
`
`
`
`22
`
`OSIX 1002.022
`
`

`

`
`
`57. Accordingly, a person of ordinary skill in the art would have
`
`understood that Laforest discloses an LED light bulb (LED connector support 10)
`
`that is adapted for use in sockets configured to receive a three-digit automotive
`
`incandescent lamp having a W2.1x9.2d base type. Thus, Laforest discloses this
`
`limitation recited in the preamble of claim 30, even under a narrower
`
`interpretation.
`
`58.
`
`Laforest also discloses a current-limiting resistor (30) that is
`
`electrically connected between the printed circuit board (11) and an electrical
`
`conductor (electrically-conductive trace 17) in a pair of electrical conductors
`
`(electrically-conductive traces 17 and 18). While Laforest does not expressly state
`
`that the current-limiting resistor limits the voltage drop across the LED (20), a
`
`person of ordinary skill in the art would have understood that the resistor is in
`
`
`
`23
`
`OSIX 1002.023
`
`

`

`series with an electrical load (e.g., the LED 20) and would inherently perform this
`
`function.
`
`59. Under Ohm’s law, a potential difference (V) across the resistor
`
`depends on the current through

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