Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 24
`Filed: September 8, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OSRAM SYLVANIA INC.,
`Petitioner,
`
`v.
`
`JAM STRAIT, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2014-00703
`Patent 6,786,625 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MIRIAM L. QUINN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571.272.7822
`
`
`Paper No. 24
`Filed: September 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OSRAM SYLVANIA INC.,
`Petitioner,
`
`v.
`
`JAM STRAIT, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2014-00703
`Patent 6,786,625 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MIRIAM L. QUINN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-00703
`Patent 6,786,625 B2
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`I.
`
`INTRODUCTION
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`Osram Sylvania Incorporated1 filed a Petition to institute an inter
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`partes review of claims 30 and 31 of U.S. Patent No. 6,786,625 B2 (“the
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`’625 patent”) pursuant to 35 U.S.C. § 311–19. Paper 5 (“Petition” or
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`“Pet.”). We instituted trial (Paper 10, “Dec. on Inst.”) on the following
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`grounds:
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`a) Obviousness of claims 30 and 31 over Laforest;2
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`b) Obviousness of claims 30 and 31 over Alvarez;3 and
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`c) Obviousness of claims 30 and 31 over Horowitz.4
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`Jam Strait, Inc.5 filed a Patent Owner Response addressing the above-
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`referenced grounds. Paper 13 (“PO Resp.”). Patent Owner relies on a
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`Declaration of Mr. Bruce Wesson to support the rebuttal to Petitioner’s
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`challenges of unpatentability. Ex. 2001 (“Bruce Decl.”).
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`Petitioner filed a Reply to Patent Owner’s Response. Paper 15 (“Pet.
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`Reply”). An oral hearing was held on June 18, 2015, as scheduled, and a
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`transcript of that hearing has been entered into the record. Paper 23 (“Tr.”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). Pursuant to
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`35 U.S.C. § 318(a), this decision is “a final written decision with respect to
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`the patentability of any patent claim challenged by the petitioner.”
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`
`1 Hereinafter referred to as “Petitioner.”
`2 French Patent Application Pub. No. 2 576 719 to Laforest, et al.
`(Ex. 1017). A certified translation of this reference was provided as
`Exhibit 1018. Therefore, hereinafter, all references to “Laforest” are with
`respect to the translation, Exhibit 1018.
`3 U.S. Patent No. 6,252,350 B1 (Ex. 1020) (“Alvarez”).
`4 U.S. Patent No. 6,357,902 B1 (Ex. 1021) (“Horowitz”).
`5 Hereinafter referred to as “Patent Owner.”
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`2
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`IPR2014-00703
`Patent 6,786,625 B2
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`Petitioner has demonstrated by a preponderance of the evidence that
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`claims 30 and 31 of the ’625 patent are unpatentable.
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`A. THE ’625 PATENT (EX. 1001)
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`The ’625 patent, titled “LED LIGHT MODULE FOR VEHICLES,”
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`issued on September 7, 2004. LED is an acronym for Light Emitting Diode.
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`See Ex. 1001, Abstract. The ’625 patent describes an LED lamp module for
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`use in a vehicle’s tail, brake, or turn signal lamp fixtures. Id. at 1:28–33.
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`“LED bulbs designed to replace vehicle incandescent bulbs require bases
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`similar to the standard bayonet or the wedge bases.” Id. at 1:54–56. A mini-
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`wedge bulb is described with reference to Figures 33, 34, and 35, for
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`example, reproduced below.
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`
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`Figures 33, 34, and 35 of the ’625 patent, reproduced above, illustrate
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`bulb 410 including four LEDs 421 in a “2x2” array mounted on a printed
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`circuit board (PCB). Id. at 14:6–9. “Resistors 416 and 417 limit current
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`through and voltage drop across the LEDs to acceptable levels for the ratings
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`of the LEDs 421.” Id. at 14:12–14. The ’625 patent further describes that
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`the mini-wedge LED bulb can replace any 3-digit automotive bulb. Id. at
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`14:28–30. One example provided of a mini-wedge LED bulb that can
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`replace standard 3-digit incandescent light bulbs is the LED bulb identified
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`3
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`IPR2014-00703
`Patent 6,786,625 B2
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`by the part number “194-XX.” Id. at 24:37–41, 49–67 (Table). As for
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`shape, the ’625 patent states that the outline of PCB 420 (shown in Figures
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`34–35 above), is “preferably approximately the same as the smaller 3[-]digit
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`incandescent bulbs such as 194.” Id. at 14:36–37.
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`Claim 30 is an independent claim, and claim 31 depends from
`
`claim 30. Illustrative claim 30 is reproduced below:
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`30. An LED light bulb adapted for use in standard automotive
`mini wedge type bulb sockets comprising:
`a bulb body comprising a printed circuit board having a
`front side, a 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;
`and
`electrical control means mounted on the printed circuit
`board electrically connected between the printed circuit board
`and at least one pair of electrical conductors.
`
`
`II. ANALYSIS
`
`This case presents at least two issues. The first issue is whether the
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`LED lamps disclosed in the asserted references teach or suggest “[a]n LED
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`light bulb adapted for use in standard automotive mini wedge type bulb
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`sockets.” (Emphasis added.) A second issue involves whether the prior art
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`teaches or suggests a resistor that is “mounted on” a printed circuit board as
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`required by claim 30.
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`A. CLAIM INTERPRETATION
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`The Board interprets claims using the “broadest reasonable
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`construction in light of the specification of the patent in which [they]
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`appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
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`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
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`4
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`IPR2014-00703
`Patent 6,786,625 B2
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`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the
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`meaning that the term would have to a person of ordinary skill in the art in
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`question.”) (internal citation and quotation marks omitted). An inventor,
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`however, also may act as his or her own lexicographer and give a claim term
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`a special meaning. Even where, as here, no such lexicographic definition is
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`presented, it is appropriate, nevertheless, to rely on the written description
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`for guidance in determining claim meaning. See id. Indeed, the construction
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`that stays true to the claim language and most naturally aligns with the
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`inventor’s description is likely to be the correct construction. Renishaw PLC
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`v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
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`The claims have been given their ordinary meaning as would be
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`understood by a person of ordinary skill in the art in light of the ’625 patent.
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`We address that meaning for three terms: the preamble of claim 30,
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`“electrical control means,” and “mounted on the printed circuit board.”
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`1. Preamble of Claim 30: “An LED light bulb adapted for use in
`standard automotive mini wedge type bulb sockets”
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`In our Decision on Institution, the Board determined that the preamble
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`of claim 30 is a claim limitation. “A claim’s preamble may limit the claim
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`when the claim drafter uses the preamble to define the subject matter of the
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`claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir.
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`2011). The preamble is generally construed to be limiting if it “‘recites
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`essential structure or steps, or if it is necessary to give life, meaning, and
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`vitality to the claim.’” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d
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`1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v.
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`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). For example,
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`where the specification underscores structure recited in the preamble as
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`5
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`Patent 6,786,625 B2
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`important, the preamble may operate as a claim limitation. Catalina Mktg.,
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`289 F.3d at 808.
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`The challenged claims are directed to a specific LED light bulb, one
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`that can be inserted in a standard automotive mini-wedge socket. The
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`’625 patent states that the “present invention” is an LED “vehicle lamp
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`module adapted for mounting in standard vehicle brake/tail lamps or turn
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`signal assemblies to replace standard vehicle incandescent bulbs.” Ex. 1001,
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`4:39–42. The adaptation of the LED light bulb to fit a specific socket
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`constrains the fit of the recited PCB in the “bulb body” and the “electrical
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`control means” that are mounted onto that PCB, such that the light bulb has
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`the dimensions of a mini-wedge bulb. The specification of the ’625 patent
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`reflects this importance when describing that the PCB of the mini-wedge
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`bulb of the “present invention” has the dimensions (thickness and height) of
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`a standard automotive mini-wedge light bulb with the 194-part number, such
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`that it can fit into the same socket as 3-digit incandescent mini-wedge bulbs
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`with the 194-part number. See id. at 14:6–7, 36–44; 14:62–15:3.
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`Furthermore, we noted that the use of “adapted for” in the preamble
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`denotes that the LED light bulb is designed or made to fit into a mini-wedge
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`type bulb socket. See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014).
`
`As stated above, the ’625 patent describes that the mini-wedge type bulb has
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`the same dimensions as a 194-part number light bulb, i.e., a 3-digit
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`incandescent light bulb. See Ex. 1001, 14:6–7, 36–44; 14:62–15:3. Further,
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`the specification describes that the mini-wedge light bulb can replace any
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`3-digit automotive bulb. Id. at 14:28–29. We interpreted these statements
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`as an indication that the claimed LED light bulb is more than merely
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`“capable of” fitting into a mini-wedge socket—it is designed to do so.
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`6
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`Patent 6,786,625 B2
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`Based on the guidance provided by the ’625 patent, we construed the
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`preamble to mean “an LED light bulb designed to fit into sockets configured
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`to receive a three-digit automotive incandescent lamp.” Dec. on Inst. 7.
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`During trial, Patent Owner argued that none of the bulbs disclosed in
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`the asserted prior art are “for use in standard automotive mini-wedge type
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`bulb sockets.” See PO Resp. 12 (with respect to Laforest), 13 (with respect
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`to Alvarez), 14 (with respect to Horowitz). Although these references show
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`a wedge base, Patent Owner argued that the size of the bulbs disclosed did
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`not meet the claim, because the claim is directed to a “mini-wedge” type. Id.
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`Our construction of the preamble, however, restated the recited “mini-wedge
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`type socket” as a “three-digit incandescent lamp” relying on statements in
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`the specification that described the invention in terms of the 194-part
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`number and the replacement of any three-digit automotive bulb. See
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`Ex. 1001, 14:28–29; but see Ex. 1001, 14:36–37 (stating that the outline of
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`the PCB is preferably “approximately the same as the smaller 3[-]digit
`
`incandescent bulbs such as 194”) (emphasis added). Indeed, Patent Owner’s
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`position, clarified during oral argument, is that, as stated in the specification,
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`mini-wedge type bulbs and three-digit incandescent light bulbs are
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`“synonymous.” Tr. 34:1–17. Patent Owner also argued that this position is
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`based on the inventor’s understanding at the time the patent was drafted, and
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`that if that understanding was incorrect, Patent Owner would agree that
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`claim 30 is directed to bulbs that are adapted for use in standard automotive
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`mini-wedge type bulb sockets, and not any three-digit bulb socket. Id.
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`In support of a revision of the Board’s claim construction, Petitioner
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`argued at oral argument that the term “mini-wedge” bulb is narrower in
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`scope than “three-digit” bulb. Tr. 14:5–19. This position is supported by
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`7
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`IPR2014-00703
`Patent 6,786,625 B2
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`the record. For example, Dr. Peter Shackle, Petitioner’s expert, explains that
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`there is no standard definition of “automotive mini wedge type [bulb]
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`sockets.” Ex. 1002 ¶ 46. And he states that three-digit automotive lamps
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`can have a variety of bases, including wedge bases for 161-, 168-, and 196-
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`type lamps. Id. ¶ 47 (citing Exs. 1026 and 1027 as factual support).
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`Furthermore, the specification, describes the “mini wedge” embodiment as
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`having dimensions of a “smaller 3[-]digit incandescent bulb.” Ex. 1001,
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`14:36–37. We are persuaded by Petitioner’s evidence and the statements in
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`the specification regarding the dimensions of the PCB, that the preamble
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`construction should be modified to reflect the express recitation of a mini-
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`wedge type bulb.
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`Patent Owner also argued at oral argument that the preamble
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`contemplates that the LED light bulb must be as bright as an incandescent
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`light bulb because of the words “[LED light bulb] adapted for use.”
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`Tr. 30:20–22 (emphasis added). This argument finds no support either in the
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`claim or the specification. First, the claim language broadly refers to the use
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`of the bulb in a specific socket. Ex. 1001, 30:4–5. There is no reference to
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`either functionality or specifications of brightness. The word “use” alone is
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`insufficient to require any specific threshold of brightness as the claims
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`expressly recite the number of LEDs, “at least one light emitting diode.” Id.
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`30:7–8. Furthermore, the specification broadly describes that there is a
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`range of brightness levels depending on the color of the bulb, such as hyper-
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`bright red and super-bright white. See id. at 14:30–35.
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`
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`Accordingly, we construe the preamble to mean: an LED light bulb
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`designed to fit into sockets configured to receive a mini-wedge type bulb.
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`8
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`IPR2014-00703
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`2. “electrical control means”
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`In our Decision on Institution we adopted Petitioner’s proposed
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`construction of the term as a means-plus-function term, with the identified
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`structure being “one or more resistors, or equivalents thereof.” Pet. 18–20
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`(citing Ex. 1001, 6:11–12, 17–19, 22–24, 28–30; 14:12–14, 46–48; 15:10–
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`12, 44–46; 16:12–16 (“Resistors 416 and 417 could be replaced with a
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`single, larger value resistor . . . .”). The function recited in the claims is
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`“electrical control” as it is the only function that is attributed to the means.
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`Neither party has expressed any disagreement with the construction of
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`“electrical control means” that was adopted by the Board. That construction,
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`therefore, is appropriate also with respect to this Final Decision.
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`3. “mounted on the printed circuit board”
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`The words “mounted on” are recited twice in independent claim 30:
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`“at least one light emitting diode mounted on the upper side of the printed
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`circuit board” and “electrical control means mounted on the printed circuit
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`board.” Ex. 1001, 30:7–9, 11–12. Neither party proposed a construction for
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`the term “mounted on.” But the parties’ application of the term differs in
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`scope. For example, Petitioner argues that “mounted on” does not require
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`that both leads of a resistor are connected to a PCB. Tr. 21:3–15. Yet Patent
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`Owner argues that both leads of the resistor would need to be connected to
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`the PCB to meet the claim. Tr. 38:21–39:2. On this issue, we agree with
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`Patent Owner that a resistor “mounted on” the PCB requires at least that
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`both leads of the resistor are connected to the PCB. This understanding
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`stems from the ordinary meaning of the term as understood by those of
`
`ordinary skill in the art. First, we note that the ordinary meaning of the word
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`9
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`IPR2014-00703
`Patent 6,786,625 B2
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`“mount” is “to fix securely to a support.”6 The specification confirms this
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`definition by describing consistently how the LEDs and resistors are
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`“mounted on” the PCB. See e.g., Ex. 1001, 14:6–9 (LEDs mounted on a
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`PCB); 14:15–17 (resistors can be thru hole resistors or they can be surface
`
`mounted on the PCB). The diagrams all show that both electrical leads from
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`these devices are fixed onto the PCB. For example, Figure 37 illustrates
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`resistor 456 placed flat on the PCB with the leads coupled to it. Ex. 1001,
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`Fig. 37. Figure 38 also shows the profile of the PCB illustrating LEDs 421
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`and resistors 456 and 457 connected to the PCB. Other embodiments of the
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`’625 patent also confirm this understanding. For example, Figures 7 and 8
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`depict one embodiment in which one lead of control circuitry 84 is
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`connected to the LED, with control circuitry 84 suspended in the body cavity
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`to allow for air cooling. Ex. 1001, 9:37–42. Additionally, the second lead
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`of control circuitry 84 is neither shown nor described as being connected to
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`the PCB. Another, similar, embodiment is shown in Figure 18, and is
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`described as “suspended control circuitry.” Id. at 5:42–44. These
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`descriptions lead us to conclude that the applicant used the term “mounted
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`on the printed circuit board” to mean an installation of a device with its
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`electrical connections, or leads, affixed to the PCB, and wherein the control
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`circuitry is not suspended in a cavity. Compare this with a connection where
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`at least one lead of the control circuitry is not affixed to a PCB, a connection
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`described as suspended—not “mounted on.” Accordingly, guided by the use
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`of the term “mounted on” in the specification and the term’s ordinary
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`meaning as understood by a person of ordinary skill in the art, we conclude
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`6 See mount definition, THE AMERICAN HERITAGE COLLEGE DICTIONARY,
`891 (Houghton Mifflin 3rd ed. 1997) (Ex. 3001).
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`10
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`IPR2014-00703
`Patent 6,786,625 B2
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`that “mounted on the printed circuit board” means that, at a minimum, all of
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`the electrical leads of the electrical control means must be affixed to the
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`PCB.
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`B. RELEVANT LEGAL PRINCIPLES
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`To prevail in its challenges to the patentability of claims, Petitioner
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`must establish facts supporting its challenges by a preponderance of the
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`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable
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`under 35 U.S.C. § 103(a) if the differences between the claimed subject
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`matter and the prior art are such that the subject matter, as a whole, would
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`have been obvious at the time the invention was made to a person having
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`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations including: (1) the
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`scope and content of the prior art; (2) any differences between the claimed
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`subject matter and the prior art; (3) the level of skill in the art; and (4) where
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`in evidence, so-called secondary considerations including commercial
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`success, long-felt but unsolved needs, failure of others, and unexpected
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`results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (“the Graham
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`factors”). The level of ordinary skill in the art usually is evidenced by the
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`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
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`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
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`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`For an obviousness analysis, prior art references must be “considered
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`together with the knowledge of one of ordinary skill in the pertinent art.”
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
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`571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into
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`account not only specific teachings of the reference but also the inferences
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`which one skilled in the art would reasonably be expected to draw
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`therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). That is because
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`an obviousness analysis “need not seek out precise teachings directed to the
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`specific subject matter of the challenged claim, for a court can take account
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`of the inferences and creative steps that a person of ordinary skill in the art
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`would employ.” KSR, 550 U.S. at 418; see also Translogic Tech., 504 F.3d
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`at 1262.
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`C. LEVEL OF ORDINARY SKILL IN THE ART
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`Petitioner proposes a particular level of ordinary skill in the art to
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`which Patent Owner disagrees, without providing any evidence supporting
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`such disagreement. Ex. 1002 ¶ 41; PO Resp. 18. In light of the evidence
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`before us, we find that the references themselves represent the level of
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`ordinary skill in the art, and that we need not explicate it further. See
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`Okajima, 261 F.3d at 1355; GPAC, 57 F.3d at 1579 (finding that the Board
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`of Patent Appeals and Interferences did not err in concluding that the level
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`of ordinary skill was best determined by the references of record); Oelrich,
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`579 F.2d at 91 (“[T]he PTO usually must evaluate . . . the level of ordinary
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`skill solely on the cold words of the literature.”).
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`D. LAFOREST
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`Petitioner has asserted that Laforest’s teachings combined with the
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`knowledge of a person of ordinary skill in the art account for all the features
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`of claims 30 and 31 of the ’625 patent, and that one of ordinary skill in the
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`art would have had sufficient motivation to modify Laforest as asserted.
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`1. Overview of Laforest (Exhibit 1018)
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`Laforest is directed to an LED connector support for use in a
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`dashboard of an automobile. Ex. 1018, 2:1–2.7 The connector support
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`comprises a plate of an electrically-insulating material onto which is
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`mounted an LED. Id. at 2:3. Figure 1, reproduced below, illustrates one
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`embodiment of the LED connector support.
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`
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`Figure 1, reproduced above, shows LED 20 and resistor 30 that are
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`soldered to connector support 10. Id. at 3:19–20. Small support plate 11
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`comprises rectangular main body 12. Id. at 3:26–27. One face of small
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`support plate 11 has electrically-conductive elements. Id. at 3:21–23.
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`Figure 2, reproduced below, depicts electrically-conductive elements 15 and
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`16.
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`7 Identified page numbers in Laforest refer to the page number provided in
`the header of the reference.
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`13
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`According to Figure 2, reproduced above, LED 20 is soldered to
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`electrically-conductive strip 14, and one end of resistor 30 is soldered to
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`electrically-conductive strip 14 with the other end soldered to strip 15, so
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`that LED 20 and resistor 30 are connected in series. See id. at 4:8–13.
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`
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`Petitioner asserts that Laforest discloses each limitation of claims 30
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`and 31. Pet. 27–30. Specifically, Petitioner provides an annotated diagram
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`of Laforest illustrating how Laforest teaches the claim elements. Id. at 27.
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`That diagram is reproduced below for ease of reference.
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`14
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`The diagram above shows Petitioner-annotated Figures 2 and 3 of
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`Laforest identifying that LED 20 teaches the “at least one LED,” resistor 30
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`teaches the “electrical control means,”8 connector support 10 teaches the
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`“bulb body,” and electrically-conductive traces 17 and 18 teach the “at least
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`
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`one pair of electrical conductors.” See Pet. 27.
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`2. Reasons to Modify Laforest
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`Laforest contemplates the use of connector support 10 for an
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`automobile dashboard. Ex. 1018, 2:1–2. Nevertheless, Laforest does not
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`expressly disclose that the wedge socket onto which connector support 10
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`fits is a mini-wedge type socket. Petitioner asserts that it would have been
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`obvious for a person of ordinary skill in the art to modify Laforest’s socket
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`8 There is no dispute that the “electrical control means” in Laforest are
`“mounted on” the PCB.
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`15
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`to be configured in the required dimensions. Pet. 32–33. It is clear from
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`Laforest that fitting LED bulbs to standard sockets was a known problem.
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`See Ex. 1018, 1:23–25 (“the Applicant has posed the problem of designing a
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`connector support for an LED compatible with standard sockets”). Although
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`the solution provided by Laforest involves ensuring also the correct polarity
`
`of an LED, thereby making the body of the support asymmetrical, Laforest
`
`teaches the overall motivation of replacing conventional lamps with LEDs
`
`because of advantages of style, reliability, and reduction of heat dissipation.
`
`Id. at 1:78. It further provides that fitting the LED lamps in standard
`
`sockets in automobiles was desirable because of the high cost of providing
`
`special LED-adapted sockets. Id. at 1:14–16.
`
`For additional evidence of motivation, Petitioner relies on U.S. Patent
`
`No. 6,342,762 B1, issued to Young et al. (“Young,” Ex. 1024). Pet. 33–34.
`
`Young is titled “AMBER VEHICLE LAMP,” and describes incandescent
`
`light bulbs. See Ex. 1024 1:14–17, 2:14–15. The relevant teaching of
`
`Young pertains to the description of the base suitable for the vehicle lamp.
`
`In particular, Young states that: “A base is attached to the press seal region
`
`to provide a convenient mechanical coupling and electrical connection for
`
`the bulb. Several base designs are known. The particular choice of the base
`
`design is felt to be [a] matter of design choice.” Id. at 2:21–25. Petitioner
`
`further asserts that one of Young’s embodiments discloses a mini-wedge
`
`lamp. See Pet. 33 (citing to Ex. 1024, Figs. 1–3, Ex. 1002 ¶ 68).
`
`Dr. Shackle supports Petitioner’s assertion by pointing out that Young’s
`
`Figure 3 discloses a lamp with a W2.1x9.2d base, i.e., a mini-wedge lamp.
`
`Ex. 1002 ¶ 69. Thus, motivated by either Laforest or Young, or both,
`
`16
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`IPR2014-00703
`Patent 6,786,625 B2
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`Petitioner argues that a person of ordinary skill in the art would modify the
`
`base of Laforest as the claim requires. Pet. 33.
`
`3. Patent Owner’s Arguments
`
`In its Preliminary Response, Patent Owner argued that there are
`
`insufficient reasons to modify Laforest. In the Patent Owner response
`
`submitted pursuant to 37 C.F.R. § 42.120, Patent Owner proffers the same
`
`arguments, but with supporting evidence: declaration testimony of Bruce
`
`Wesson, the named inventor of the ’625 patent. See Ex. 2001. For the
`
`reasons that follow, we conclude that Laforest teaches all the limitations
`
`recited in the body of the claim, and that a person of ordinary skill in the art
`
`would have had adequate reason to modify those teachings to meet the
`
`preamble of the claim.
`
`a.
`
`Physical Characteristics of Laforest’s Bulb
`
`Patent Owner argues that Laforest’s bulb is not for use in automotive
`
`mini-wedge type bulb sockets because the disclosed bulb is smaller than a
`
`mini-wedge type bulb. PO Resp. 12. According to Patent Owner, Laforest’s
`
`connector is only 2.5 mm wide, corresponding to a micro wedge socket size.
`
`Id. This argument is unpersuasive because it is directed to distinguishing
`
`Laforest individually, and not in combination with the teachings and reasons
`
`for the modification of the socket as asserted by Petitioner. That is,
`
`Petitioner has asserted that the Laforest bulb would render obvious the
`
`claims because it would have been obvious to modify the base, such that the
`
`bulb would fit into a standard mini-wedge socket. Pet. 33–34. As discussed
`
`above, Petitioner presented evidence in Laforest and in Young that such a
`
`motivation was known in the art at the time of the invention. Therefore, an
`
`argument that Laforest’s bulb or socket is smaller than a mini-wedge type
`
`17
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`IPR2014-00703
`Patent 6,786,625 B2
`
`bulb is not persuasive. For it is not Laforest’s socket size or bulb size that is
`
`relevant to the claim, but, rather, the modified Laforest bulb, as asserted,
`
`which Petitioner contends would render the claims obvious. See In re Merck
`
`& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
`
`cannot be established by attacking references individually where the
`
`rejection is based upon the teachings of a combination of references.”).
`
`Furthermore, we do not find persuasive Patent Owner’s arguments
`
`regarding the size of Laforest’s bulb, because Laforest does not disclose any
`
`dimensions for the disclosed embodiments. Patent Owner’s Declarant
`
`appears to have measured the drawing in Figure 1 of Laforest to arrive at the
`
`conclusion of the dimensions of the bulb. See Ex. 2001, 10 (“It measures
`
`however in my copy 0.35” and the base measures 0.2000.””). There is no
`
`evidence, however, that Laforest’s figures are drawn to scale.
`
`b. Modifications to the Automobile
`
`Patent Owner also argues that plugging the Laforest bulb into a
`
`standard automotive mini-wedge type bulb socket would require a
`
`modification of the automobile. PO Resp. 12. In particular, Patent Owner’s
`
`Declarant states that the vehicle’s dash-socket-mounting hole in Laforest
`
`would have to be modified by removing the socket, cutting an opening,
`
`checking for clearance, re-installing the socket, and inserting the LED.
`
`Ex. 2001, 10. The reasons for the alleged modification are that Laforest’s
`
`resistor 30 causes the bulb body to be asymmetrical, requiring a slot 74, as
`
`shown in Figure 4 of Laforest. Id. Also, the contacts shown in Laforest are
`
`wired on the same side, instead of one on each side. Id. at 11. These
`
`arguments are insufficient to rebut the evidence of record that a person of
`
`ordinary skill in the art would have been motivated to modify the base of
`
`18
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`IPR2014-00703
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`Laforest so the bulb fits into a standard automotive mini-wedge type socket.
`
`In particular, the testimony of Mr. Wesson is not persuasive because it does
`
`not explain how the alleged modifications—removing the socket, cutting an
`
`opening, etc.—present any complexity that would have been uniquely
`
`challenging or beyond the level of an ordinarily skilled artisan. See
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
`
`2007).
`
`Additionally, the modification of Laforest’s base has been shown to
`
`implement a known modification—an improvement of LED light bulbs to fit
`
`a standard socket, including a mini-wedge socket. This improvement was
`
`applied to other bulbs in the prior art as discussed in Young, and “we do not
`
`ignore the modifications that one skilled in the art would make to a device
`
`borrowed from the prior art.” In re Icon Health and Fitness, Inc., 496 F.3d
`
`1374, 1382 (Fed. Cir. 2007) (citing Optivus Tech., Inc. v. Ion Beam Apps.,
`
`S.A., 469 F.3d 978, 989–90 (Fed. Cir. 2006)). In particular, we also
`
`recognize that:
`
`[I]f a technique has been used to improve one device, and a
`person of ordinary skill in the art would recognize that it would
`improve similar devices in the same way, using the technique is
`obvious unless its actual application is beyond his or her skill
`. . . . [A] court must ask whether the improvement is more than
`the predictable use of prior[-]art elements according to their
`established functions.
`
`
`KSR, 550 U.S. at 417.
`
`With a modified base so the bulb fits into a standard mini-wedge type
`
`socket, the modified Laforest bulb would render obvious the claims,
`
`regardless of whether that modified bulb may not fit perfectly into Laforest’s
`
`unmodified socket.
`
`19
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`c.
`
`Alleged Inoperability
`
`Whether an alleged modification would have been obvious also
`
`depends on whether that modification would render the prior art inoperable
`
`for its intended purpose. See In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed.
`
`Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (“a
`
`proposed modification [is] inappropriate for an obviousness inquiry when
`
`the modification rendered the prior art reference inoperable for its intended
`
`purpose”). Patent Owner argues that the alleged modification of Laforest
`
`would be “likely inoperable” because the heat generated by resistor 30
`
`would “likely cause the LED to fail after a short period of time.” PO
`
`Resp. 13. According to Mr. Wesson, “there are no means [in Laforest] for
`
`dissipating the heat generated by this resistor.” Ex. 2001, 13. We are not
`
`persuaded by these arguments.
`
`First, the claims do not recite any particular operational characteristic,
`
`such as brightness, durability, or quality of service of the claimed LED bulb.
`
`As we discussed above in our claim construction analysis of the preamble
`
`limitation, there is no claim requirement of any specific brightness. See
`
`supra, Section II.A.1. Likewise, being able to fit into a mini-wedge type
`
`socket does not limit the claims to a particularly durable bulb. Indeed, the
`
`claims make no mention of any improvements or operational values for the
`
`electronic control means such that the claim requires a light bulb with any
`
`specific duration. That is, alleging that heat dissipation is a particular
`
`characteristic of the claimed LED bulb has no support in the claim language.
`
`Furthermore, we find the testimony of Mr. Wesson in this regard
`
`speculative. The statement that the modified Laforest b
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