trials@uspto.gov
`571-272-7822
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`IPR2014-00703, Paper No. 23
`July 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`OSRAM SYLVANIA INC.,
`Petitioner,
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`v.
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`JAM STRAIT, INC.,
`Patent Owner.
`____________
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`IPR2014-00703
`Patent 6,786,625 B2
`____________
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`Held: June 18, 2015
`____________
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`BEFORE: MIRIAM L. QUINN, BART A. GERSTENBLITH,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
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`
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`The above-entitled matter came on for hearing on Thursday, June
`18, 2015, commencing at 2:02 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2014-00703, Paper No. 23
`July 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OSRAM SYLVANIA INC.,
`Petitioner,
`
`v.
`
`JAM STRAIT, INC.,
`Patent Owner.
`____________
`
`IPR2014-00703
`Patent 6,786,625 B2
`____________
`
`Held: June 18, 2015
`____________
`
`
`
`
`
`BEFORE: MIRIAM L. QUINN, BART A. GERSTENBLITH,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Thursday, June
`18, 2015, commencing at 2:02 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2014-00703
`Patent 6,786,625 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ERIC R. MORAN, ESQUIRE
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`McDonnell Boehnen Hulbert & Berghoff LLP
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`300 South Wacker Drive
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`Chicago, Illinois 60606-6709
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`ON BEHALF OF THE PATENT OWNER (via telephone):
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`SETH M. NEHRBASS, ESQUIRE
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`Garvey, Smith, Nehrbass & North
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`3838 N. Causeway Boulevard
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`Suite 3290
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`Metaine, Louisiana 70002
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`IPR2014-00703
`Patent 6,786,625 B2
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` P R O C E E D I N G S
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`JUDGE QUINN: We are here for the oral hearing in
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`IPR2014-00703, Osram Sylvania, Petitioner, versus Jam Strait,
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`Inc., Patent Owner.
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`All demonstratives that will be used at this hearing
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`should have been provided to the court reporter. If not, you may
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`do so at this time.
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`MR. MORAN: We've already done so, Your Honor.
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`JUDGE QUINN: Just a few instructions before we
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`begin. There will be no objections to demonstratives or,
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`otherwise, presentation evidence submitted today. Any
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`observations as to the demonstratives or any other argument must
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`be made during the time that the party has for an argument today.
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`For example, if Petitioner has some objection as to the
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`Patent Owner's argument today, that objection must be made
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`during Petitioner's time.
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`MR. MORAN: We understand.
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`JUDGE QUINN: At this point we would like Petitioner
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`to state his appearance for the record.
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`MR. MORAN: Your Honor, my name is Eric Moran.
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`I'm with the firm, McDonnell Boehnen Hulbert & Berghoff, and
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`we represent the Petitioner Osram Sylvania.
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`JUDGE QUINN: And for Patent Owner.
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`Patent 6,786,625 B2
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`MR. MORAN: I could introduce backup counsel, Jay
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`Schafer, also with McDonnell Boehnen Hulbert & Berghoff, and
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`in-house counsel for Osram Sylvania, Ed Podszus, is here as well.
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`JUDGE QUINN: Welcome to the hearing.
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`For Patent Owner who do we have on the phone line
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`attending the conference?
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`MR. NEHRBASS: We have Seth Nehrbass, Your
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`Honor.
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`JUDGE QUINN: Okay. Presiding at this hearing we
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`have Judges Bart Gerstenblith and Judge Jeffrey Abraham, both
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`present in the courtroom. I am Judge Miriam Quinn. I'm
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`presiding over the Dallas Satellite Office.
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`At this point I'd like to ask Petitioner -- both parties
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`actually have 45 minutes for their total argument time. Petitioner
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`may reserve some of that time for rebuttal.
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`MR. MORAN: We'd like to reserve 10 minutes for
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`rebuttal, Your Honor.
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`JUDGE QUINN: Okay. You may begin.
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`MR. MORAN: Good afternoon, Your Honors. The
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`'625 patent and each asserted prior art bulb is directed to LED
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`bulbs designed as replacements for existing standard incandescent
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`bulbs. As replacements, each is designed to fit into an existing
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`standard bulb socket.
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`We have a number of slides that we're going to present
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`for you today. As we -- so everyone can follow along. As we
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`Patent 6,786,625 B2
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`move from slide to slide, I will try to identify the slide number to
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`which I'm referring so that we're all looking at the same thing
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`since obviously Your Honor is not in the room.
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`The preamble of Claim 30 recites, an LED light bulb
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`adapted for use in standard automotive mini-wedge type bulb
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`sockets. So the preamble of Claim 30 specifically identifies
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`standard automotive mini-wedge sockets.
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`Slide 2. Standard automotive mini-wedge incandescent
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`sockets were well-known in the art as of December 2001. It was
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`also known in the art as of December 2001 to modify the base of
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`automotive incandescent bulbs to fit a particular socket.
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`Slide 3. According to prior art reference Young, the
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`particular choice of the base design is felt to be a matter of design
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`choice. Young depicts three embodiments that differ in base
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`type. Figure 1 shows a wedge, Figure 2 shows a bayonet and
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`Figure 3 shows a mini-wedge.
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`JUDGE QUINN: I have a question for you. There has
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`been a lot of argument by Patent Owner that the base of the prior
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`art presented in this case is not a mini-wedge, even though there
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`have been assertions by Petitioner that they are three-digit
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`incandescent light bulbs.
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`Are these synonymous terms, and if they're not, what is
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`the overlap between these terms?
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`MR. MORAN: Mini-wedge bulbs are a subset of
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`three-digit bulbs, so three-digit bulbs is a little bit of a broader
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`Patent 6,786,625 B2
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`term than mini-wedge and each prior art reference that we are
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`asserting in this case is directed to a wedge bulb, a bulb with a
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`wedge base, but each is also directed to an LED bulb that's used
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`as a replacement for an incandescent bulb.
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`And anytime an LED bulb is used as a replacement
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`bulb, the base of the LED has to match the base of the
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`incandescent bulb it is replacing, and so to the extent that one of
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`skill in the art at the time of Claims 30 and 31 is designing a
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`replacement LED bulb, one of skill in the art would know to
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`match the base of that bulb to the socket into which the bulb
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`would be fit.
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`JUDGE QUINN: So to the extent that they're all in
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`some way or another depicting a wedge base, it is not necessarily
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`a mini-wedge; is that correct?
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`MR. MORAN: Not necessarily, Your Honor. None of
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`the prior art references identify the specific wedge to which it is
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`directed.
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`One of the prior art references, Alvarez, looks very
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`similar to a wedge base, but it doesn't actually use the term --
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`excuse me, it looks very similar to a mini-wedge base, but it
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`doesn't use the term mini-wedge.
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`The Horowitz reference, that base appears to be a
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`wedge base, just not a mini-wedge, but a wedge.
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`The Laforest reference, Patent Owner characterized that
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`reference as having a micro-wedge base.
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`So in each situation a bulb with a wedge base will be fit
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`into a mating socket, a matching socket, and whether that socket
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`is a micro-wedge, a mini-wedge, a wedge, that socket and base
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`have to match each other and one of skill in the art would know
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`that mini-wedge sockets existed well before the time of invention
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`of Claims 30 and 31 and so somebody designing a light bulb, an
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`LED light bulb as a replacement for these incandescent bulbs
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`with mini-wedge bases would know to design the LED bulb with
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`a wedge that matched a mini-wedge socket.
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`JUDGE QUINN: So your contention has been that it's a
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`matter of design choice to select whichever base is needed for the
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`design, correct?
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`MR. MORAN: Yes, Your Honor.
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`JUDGE QUINN: And I'm looking at slide 3 you were
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`just referring to and that's why it triggered my memory to ask you
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`this.
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`Other than Young, do you have any rationale
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`identifying the information and the support for why it would be a
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`design choice?
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`MR. MORAN: Yes, Your Honor. If we can skip ahead
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`to slide 4.
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`Slide 4 references the Laforest prior art reference. The
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`prior art Laforest reference is directed to LEDs compatible with
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`standard sockets and Laforest teaches that the benefits that result
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`from a design, a design of LED bulbs compatible with standard
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`IPR2014-00703
`Patent 6,786,625 B2
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`sockets include a low cost due to the use of standard sockets and
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`simplification of maintenance operations.
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`And so if an LED bulb is designed with a base that
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`matches an existing socket, the socket -- when the LED bulb is
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`installed in an automobile, for example, the socket does not need
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`to be changed out. The socket remains the same. The
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`incandescent bulb is pulled out, the LED bulb is put into the
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`socket and so one of skill in the art at the time when replacing an
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`incandescent bulb with an LED bulb -- and if we can skip ahead
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`to slide 6.
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`JUDGE QUINN: But wait, but there's a difference
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`between replacing the light bulb part or the light part of the light
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`bulb and replacing parts that are known to work in a certain way
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`and rearranging them such that it would be expected so they
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`would operate the same way. A bayonet type of socket works a
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`certain way and a mini-wedge socket works a different way.
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`So where is this rearrangement shown in Young, does
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`Young show that you can put the exact same light filament
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`structure on any socket as needed?
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`MR. MORAN: That's correct, yes. And the bases
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`function in the same way. The bases serve to allow electric
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`current to get from the socket to the filament of the light bulb and
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`so how the bases are actually -- how the bases function to connect
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`the bulb to the socket may be different. A bayonet is twisted. A
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`mini-wedge and wedge are sort of wedged into the socket. They
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`IPR2014-00703
`Patent 6,786,625 B2
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`fit into the socket. But at the end of the day, electricity still goes
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`from the base to the filament and no matter -- excuse me, from
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`the socket to the filament regardless of the type of base that's
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`used.
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`JUDGE QUINN: But they have to perform. In order
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`for something to fall under a design choice, it has to perform the
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`exact same way and in having a one LED light structure like
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`Laforest arguably does not perform the same as a four LED light
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`structure, like the one in the invention.
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`MR. MORAN: Well, the claim of the invention, Claim
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`30 states at least one light emitting diode and Laforest includes
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`one light emitting diode.
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`If I may turn to the patent for a moment. This is -- bear
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`with me, if you will, Your Honor. Figures 39 through 41 of the
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`patent, although they show in the actual -- in Figures 40 and 41,
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`although they show four LEDs, if you look at the circuit diagram
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`in Figure 39, this embodiment, this particular embodiment of
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`Figures 39 through 41 only has one LED that's needed with
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`reference to numeral 421 in Figure 39.
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`And if you go to the text in the specification, if you will,
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`the text states -- and I'm looking at column 15, line 7, Figures 39,
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`40 and 41 show another mini-wedge bulb 480 of the present
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`invention designed for single element operation. Bulb 480
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`includes a single LED 421, so the patent drafter just made an
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`error. The patent drafter showed in Figures 40 and 41 the same
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`four LEDs as show in Figures 34 and 35.
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`In fact, if you look at Figures 37 and 38 and compare
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`that to Figure 36, which is the circuit diagram that goes with
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`Figures 37 and 38, there should only be two LED bulbs depicted
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`in Figures 37 and 38 when, in fact, there are four just like in the
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`first embodiment, which is Figures 34 and 35.
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`I hope that was clear, but there's an error in drafting the
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`patent, so certainly our position is -- and I think it's very clear
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`from Claim 2, the claim requires at least one light emitting diode
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`and the Patentee has shown in Figures 39 through 41 an
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`embodiment that just has one light emitting diode and so the --
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`JUDGE QUINN: The Patentee has also -- the Patent
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`Owner has also made an argument notwithstanding that if you
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`need one LED, that LED needs to be strong enough for the use of
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`a brake light or taillight indicators, taillight or turn signals,
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`whereas Laforest is using it as an internal display in a dashboard.
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`It doesn't need to be as strong; so you have different requirements
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`to select a circuit. What do you respond to that?
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`MR. MORAN: Well, nothing in the claim requires the
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`LED light bulb to be any particular strength. The claim requires
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`an LED light bulb adapted for use in standard automotive
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`mini-wedge type bulb sockets and standard automotive
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`mini-wedge type bulb sockets were used as indicator lights, as
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`lights that don't need to be high-powered lights at the time of
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`Claims 30 and 31. So I think Laforest is a reference that
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`discloses every element of this claim.
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`JUDGE QUINN: Except it's not a mini-wedge.
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`MR. MORAN: You're exactly right, yes, except for the
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`base.
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`JUDGE QUINN: Okay. And do you know what base
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`does Laforest disclose?
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`MR. MORAN: Patent Owner identified the base as a
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`micro-wedge, meaning that it was a smaller wedge than a
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`mini-wedge, so I'm not sure if that's correct or not, but he did
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`mention that in -- it was either in the declaration of Mr. Wesson
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`or it was in Patent Owner's response.
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`JUDGE QUINN: Are there any dimensions disclosed
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`in Laforest?
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`MR. MORAN: There are not.
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`JUDGE QUINN: Thank you.
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`MR. MORAN: If we can turn to slide 4 getting back to
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`Laforest, and I don't want to belabor the point, but Laforest
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`identifies the advantages of an LED bulb with a base that matches
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`the bases of existing standard incandescent bulbs.
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`JUDGE QUINN: Did you cite this in your petition?
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`MR. MORAN: Yes, Your Honor, I believe we did.
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`Would you like me to pull out the petition?
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`JUDGE QUINN: Yes, please.
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`MR. MORAN: Okay. In the petition on -- in the claim
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`chart for Laforest, so this is page 27 of the petition, we cite page
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`2, lines 23 through 25, and state, the applicant has posed the
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`problem of designing a connector support for an LED compatible
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`with standard sockets, positively ensuring a correct supply
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`polarity for the LEDs when they're installed. The callout from
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`Laforest on slide 5 goes into the next paragraph after the
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`paragraph that we cited in our claim chart.
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`And so Laforest identifies the benefits that result from a
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`design that matches standard sockets to be lower cost and
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`simplification of maintenance operations.
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`Slide 5. Like each of Petitioner's prior art references,
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`the '625 patent is also directed to replacing incandescent bulbs
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`with LED light bulbs. And consistent with the prior art, the '625
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`patent states, LED bulbs designed to replace vehicle incandescent
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`bulbs require bases similar to the standard bayonet or the wedge
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`bases.
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`Slide 6. According to Laforest, advantages of LEDs
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`include style, reliability and reduction of heat.
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`According to the prior art Alvarez reference, the LED is
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`an attractive alternative because of its high reliability and longer
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`life expectancy. Moreover, the LED can also be easily retrofitted
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`into incandescent bulb applications.
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`Slide 7. Interestingly, Patent Owner in Patent Owner's
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`response recognized that some of the prior art cited by Petitioner
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`might encourage others to make various LED light bulbs for
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`automotive use.
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`Slide 8. Petitioner is challenging two claims,
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`Independent Claim 30 and Dependent Claim 31.
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`Slide 9. The earliest effective filing date of these claims
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`is December 31, 2001. The relevant disclosure in the
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`specification includes Figures 33 through 42 in column 14, line 6,
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`to column 16, line 16.
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`JUDGE QUINN: There have been some allegations
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`that the invention was conceived and reduced to practice earlier
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`than this. Are any of the references inconsistent with an earlier
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`invention date?
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`MR. MORAN: Your Honor, not the earlier invention
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`date alleged by Patent Owner, which was I believe July 4, 2001.
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`Slide 10. The '625 patent describes four embodiments
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`of a mini-wedge bulb according to the present invention. Here,
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`we've shown, for example, Figures 33 through 35. Figures 34
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`and 35 show LED 421, printed circuit board 420, resistors 416
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`and 417 and conductors 431 and 432.
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`Slide 11. Each disclosed mini-wedge embodiment is
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`nearly identical.
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`Slide 12. With respect to claim construction, the Board
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`construed the preamble to mean an LED light bulb designed to fit
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`into sockets configured to receive a three-digit automotive
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`incandescent lamp.
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`IPR2014-00703
`Patent 6,786,625 B2
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`The Board adopted Petitioner's proposed construction of
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`electrical control means as a means-plus-function term with the
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`function being electrical control and the structure being one or
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`more resistors or equivalents thereof.
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`JUDGE QUINN: Now here's the question, given that
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`the preamble also expressly refers to mini-wedge type sockets
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`and in your statement that a three-digit automotive incandescent
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`lamp is much broader than a mini-wedge, a mini-wedge could be
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`a three-digit automotive incandescent lamp, but not the opposite.
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`Should we revise this to make it more consistent with the actual
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`preamble which expressly requires a mini-wedge type socket?
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`MR. MORAN: Yeah, I think that would be an
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`appropriate revision of your claim construction. I mean,
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`interestingly, the patent states that, as Your Honors pointed out in
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`the Institution Decision, the patent states, mini-wedge bulb 410
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`can replace any three-digit automotive bulb and so your claim
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`construction appears to be consistent with that statement in the
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`patent, but it's our understanding that the term mini-wedge is
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`more narrow than three-digit bulb.
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`Slide 13. Two claims are at issue here, Claims 30 and
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`31, and three prior art references are involved in this petition,
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`Laforest, Alvarez and Horowitz.
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`Slide 14. In the Patent Owner's response, Patent Owner
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`relies almost exclusively on the declaration of Mr. Bruce Wesson.
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`Mr. Wesson is the named inventor of the '625 patent and is Patent
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`IPR2014-00703
`Patent 6,786,625 B2
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`Owner's co-founder, president and majority owner. The Patent
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`Owner has not challenged Petitioner's evidence of a motivation to
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`modify the prior art references' LED bulbs.
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`Slide 15. Let's turn to the Laforest reference. Slide 16.
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`JUDGE QUINN: Now let me ask you, concerning what
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`you just said about the Patent Owner's declarant's status as an
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`inventor and co-founder of the company, I didn't see any
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`statement or argument in your reply that there is any reason to
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`doubt Mr. Wesson's testimony or give it less weight based on his
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`status as inventor or Patent Owner co-founder. So are you
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`making any of those allegations today?
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`MR. MORAN: No, Your Honor, we're just pointing out
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`that the status of Mr. Wesson and his relationship to the Patent
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`Owner and his role with respect to the Patent Owner.
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`Okay. Slide 16. It is Petitioner's position that Laforest
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`includes all the claim limitations of Claims 30 and 31, except for
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`the size and shape of the claimed LED light bulb base. At the
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`time of the invention of Claims 30 and 31, the standard
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`automotive mini-wedge bulbs and sockets were well-known and
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`it would have been obvious to one of skill in the art to modify
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`Laforest's bulb to fit a standard automotive mini-wedge bulb.
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`Slide 17. A claim limitation that differs from the prior
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`art only in size, dimension or shape is not patentably
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`distinguishing unless the limitation provides an unexpected result.
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`IPR2014-00703
`Patent 6,786,625 B2
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`Here, the mini-wedge limitation does not provide an unexpected
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`result. Mini-wedge sockets were well-known at the time.
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`Slide 18. Okay. This shows Figures --
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`JUDGE QUINN: Well, there's one thing I want to ask
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`you about this because it may be very easy to just make
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`something bigger, but we see some allegations by Patent Owner
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`that it's not that simple because of the heat dissipation. So should
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`we consider that as part of the design constraints that one of skill
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`in the art would have had to deal with in order to determine
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`whether it is obvious or not to increase the size of a mini -- or a
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`micro to a mini or otherwise?
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`MR. MORAN: Your Honor, the claim does not include
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`any of those limitations. The claims at issue here do not include
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`-- really just include an LED bulb, a printed circuit board, a light
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`emitting diode and a resistor and none of those limitations that
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`Patent Owner wants to point out are found in the claim.
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`And each of the elements in the claim, however, is
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`found in Laforest and Laforest includes a bulb body comprising a
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`printed circuit board having a front side, a rear side and an upper
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`side, at least one light emitting diode mounted on the upper side
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`of the printed circuit board and electrically coupled with the
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`printed circuit board.
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`Laforest includes an electrical control means, which it
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`identifies as a resistor, mounted on the printed circuit board and
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`IPR2014-00703
`Patent 6,786,625 B2
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`electrically connected between the printed circuit board and at
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`least one pair of electrical conductors.
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`JUDGE QUINN: Right. I mean, I understand that
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`some of the components are there except for the dimensions of
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`the mini-wedge, and to modify Laforest you'd have to modify
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`Laforest, not just an issue of replacing Laforest's body with
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`something else. You'd have to enlarge it.
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`So wouldn't that be also a consideration that one of skill
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`in the art, an electrician, an electrical engineer looking at this
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`would understand that there are other aspects of the design that
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`are important in one making heat dissipation.
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`MR. MORAN: Nothing that one of skill in the art could
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`not have overcome by simply testing different combinations of
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`easily available LEDs with easily available resistors. The actual
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`step of increasing the size of the base of Laforest would just be a
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`matter of cutting the printed circuit board to match the size of the
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`bulb socket into which the printed circuit board will be inserted.
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`And Patent Owner discussed in his declaration, Mr.
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`Wesson's declaration how Mr. Wesson did exactly that. Mr.
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`Wesson took a printed circuit board and took a saw and cut that
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`printed circuit board to the size of a mini-wedge bulb socket. Mr.
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`Wesson took a number of different resistors, tried combining
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`them with a number of different LEDs, all commonly available. I
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`believe he testified that he got each at Radio Shack until he found
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`IPR2014-00703
`Patent 6,786,625 B2
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`a combination that suited the particular purpose for which he was
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`trying to build an LED bulb, and all of that is within --
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`JUDGE QUINN: So I take it --
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`MR. MORAN: I'm sorry, I didn't mean to cut you off,
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`but I was just going to say all of that is within the realm of what
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`one of skill in the art could do at the time of the invention of
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`Claims 30 and 31 and does not constitute any sort of different
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`step.
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`Slide 19. In deposition, Mr. Wesson admitted that the
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`Laforest reference discloses the LED light bulb of Claim 30
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`except for the size and shape of the base. The Patent Owner
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`doesn't dispute this point.
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`Your Honor, I'm going to skip ahead in the interest of
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`time. The Patent Owner -- let's skip ahead to slide 26.
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`The Patent Owner raises an alleged inoperability of
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`Laforest and under an obviousness analysis a reference need not
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`work to qualify as prior art. It qualifies as prior art regardless for
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`whatever is disclosed therein.
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`If we could skip ahead to slide 28. The Patent Owner
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`raises a point with respect to the location of the contacts on the
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`base of Laforest. Again, location of contacts is a design choice
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`based on the intended use of the light bulb and there's no dispute
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`that Laforest meets the claim limitation of electrical control
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`means electrically connected between the printed circuit board
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`IPR2014-00703
`Patent 6,786,625 B2
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`and at least one pair of electrical conductors regardless of contact
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`location.
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`Slide 29. And just to emphasize that point, it was
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`known in the art at the time of invention of Claims 30 and 31 that
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`mini-wedge lamps have contacts on opposite sides of the base
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`and so it would have been well within the skill of one in the art to
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`match the contacts in a bulb base to the contacts of a bulb socket.
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`Okay. Let's jump ahead to slide 31 and we'll turn to the
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`Alvarez reference and we'll jump ahead to slide 33.
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`Alvarez discloses each element of Claim 30 except for
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`an express disclosure of a base specifically adapted for
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`automotive mini-wedge sockets.
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`JUDGE QUINN: I have a question for you on that slide
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`you were just on, slide 29. You're saying that in your first bullet
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`point that it was known in the art that mini-wedge lamps have
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`contacts on opposite sides and then you could match those
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`locations. I looked through your citations to the deposition of Mr.
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`Wesson and he did not state that. So what other evidence do you
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`have, just the handbook?
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`MR. MORAN: I believe that point is supported by the
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`handbook, yes, Your Honor. I can pull that reference, however,
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`and confirm.
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`JUDGE QUINN: Well, the handbook just shows you
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`what the standard socket looked like, so what you're trying to say
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`is that you would know something more than that. You would
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`IPR2014-00703
`Patent 6,786,625 B2
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`know to modify the base to match the contacts and you relied on
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`the deposition of Mr. Wesson for that statement.
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`MR. MORAN: Okay. The passage that we cited to in
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`Mr. Wesson's deposition, Your Honor, discussed how he made --
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`that his prototype mini-wedge bulb in the deposition -- and I'm
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`looking at page 42, line 5. We asked Mr. Wesson in that same
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`paragraph, you also state that you soldered the wires close to and
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`parallel to the left and right edges of the bases; is that right?
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`Answer, yes. Did you solder the wires in that location or in those
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`locations to match the contacts in a mini-wedge bulb? Answer,
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`yes.
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`And we continue on, and to be clear, mini-wedge bulbs
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`existed at the time of your invention of Claims 30 and 31, right?
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`Answer, right. They were commonly known at the time.
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`Answer, yes.
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`And so what one of skill in the art did at that time to
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`design a bulb base adapted for use in a standard automotive
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`mini-wedge bulb is to match the contacts of the base to the
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`location of the contacts in the socket and there's no other way for
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`the bulb to work unless the contacts and the base match the
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`contacts in the bulb's socket.
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`Could we turn back to slide 33? Okay. The parties do
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`not dispute that Alvarez -- that Figure 3 of Alvarez discloses a
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`bulb body, a printed circuit board, at least one LED mounted on
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`IPR2014-00703
`Patent 6,786,625 B2
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`the upper side of the printed circuit board and at least one pair of
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`electrical conductors.
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`JUDGE QUINN: Counsel, how are you construing
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`mounted on?
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`MR. MORAN: Well, it's our understanding -- I think
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`the question you're asking is whether mounted on can encompass
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`a resistor with only one lead connected to a printed circuit board
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`as, for example, shown in the Horowitz reference and the
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`specification of the '625 patent envisions both through hole
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`resistors and surface mount resistors, but the specification of the
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`'625 patent nor does the claim require mounted on to require both
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`leads of a through hole resistor to be connected to a printed
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`circuit board and so our construction of mounted is broad enough
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`to encompass a resistor with either one lead or two leads
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`connected to the printed circuit board.
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`JUDGE QUINN: So you're saying even though the
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`word mounted on requires some direct physical relationship to the
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`PCB that that connection can be just one lead of the resistor and
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`not both.
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`MR. MORAN: I don't believe there's any place in the
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`patent that requires it to be two leads of the resistor.
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`Can we turn to slide 39? Again, I'm going to jump
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`ahead, Your Honor.
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`Although Alvarez does not expressly mention
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`mini-wedge sockets, Alvarez teaches modifying the LED light
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`IPR2014-00703
`Patent 6,786,625 B2
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`bulb base to fit prior art incandescent sockets. According to
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`column 4, lines 12 through 19 of Alvarez, the base is preferably
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`identical with prior art incandescent lamp structures such that the
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`surface mounted LED lamp can be inserted into a socket which is
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`designed to receive an incandescent lamp.
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`This approach allows the conventional incandescent
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`lamp to be replaced with a variety of different LED surface
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`mounted lamp structures without modification to the socket
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`which holds the lamp.
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`Let's jump ahead to slide 46.
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`And, Your Honor, I'm afraid I'm nearly out of time, but
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`I do want to touch, then, on the Horowitz reference.
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`Slide 48. Okay. The parties don't dispute that Horowitz
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`discloses each element of Claim 30 except for a base adapted for
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`mini-wedge sockets. Horowitz discloses a bulb body, a printed
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`circuit board, at least one LED mounted on the upper side of the
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`printed circuit board, electrical control means and at least one pair
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`of electrical conductors.
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`JUDGE QUINN: Well, that's not entirely true. I
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`believe Patent Owner has challenged whether the resistors in
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`Horowitz are mounted on the PCB because they are -- you called
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`it — spaced or floating, something like that.
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`MR. MORAN: The Petitioner has made the point
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`regarding mark mounting, but Petitioner agrees that Horowitz
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`discloses an electrical control means and the question is whether
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`IPR2014-00703
`Patent 6,786,625 B2
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`Horowitz discloses an electrical control means that is mounted on
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`the printed circuit board, you're right.
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`And if we can, turn to slide 56. We'll just make the
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`point real quick that Horowitz does not disclose resistors that are
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`exposed, floating or not secured. According to Horowitz
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