`571-272-7822
`
`
`Paper 10
`Entered: September 19, 2014
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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 MICHELLE R. OSINSKI, BART A. GERSTENBLITH, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00703
`Patent 6,786,625 B2
`
`I.
`
`INTRODUCTION
`
`Osram Sylvania Inc.1 filed a Corrected Petition to institute an inter
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`partes review of claims 3031 of U.S. Patent No. 6,786,625 B2 (“the
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`’625 patent”) pursuant to 35 U.S.C. §§ 311319. Paper 5 (“Petition” or
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`“Pet.”). Jam Strait, Inc.2 filed a Preliminary Response to the Petition.
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`Paper 9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
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`which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Petitioner asserts that claims 30-31 (“the challenged claims”) are
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`unpatentable under either 35 U.S.C. § 102 or 35 U.S.C. § 103(a) by each of
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`the following four references: Laforest,3 Sivacumarran,4 Alvarez,5 and
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`Horowitz.6
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`We determine that, based on the record before us, there is a reasonable
`
`likelihood that Petitioner will prevail in establishing the unpatentability of
`
`all the challenged claims. Accordingly, we grant the petition for inter
`
`
`1 Hereinafter referred to as “Petitioner.”
`2 Hereinafter referred to as “Patent Owner.”
`3 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 translation in Exhibit 1018.
`4 U.S. Patent Application Pub. No. 2003/0102820 A1 (Ex. 1019)
`(“Sivacumarran”).
`5 U.S. Patent No. 6,252,350 B1 (Ex. 1020) (“Alvarez”).
`6 U.S. Patent No. 6,357,902 B1 (Ex. 1021) (“Horowitz”).
`
`
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`2
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`Case IPR2014-00703
`Patent 6,786,625 B2
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`partes review of the ’625 patent as to claims 3031 on the obviousness
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`grounds discussed below.
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`A. THE ’625 PATENT (EX. 1001)
`
`The ’625 patent, titled “LED Light Module for Vehicles,” issued on
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`September 7, 2004. LED is an acronym for Light Emitting Diode. See
`
`Ex. 1001, Abstract. The ’625 patent describes an LED lamp module for use
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`in a vehicle’s tail, brake, or turn signal lamp fixtures. Id. at col. 1, ll. 2833.
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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 col. 1, ll. 5456.
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`A mini-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 illustrate bulb 410 including
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`four LEDs 421 in a “2 x 2” array mounted on a printed circuit board (PCB).
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`Id. at col. 14, ll. 6-9. “Resistors 416 and 417 limit current through and
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`voltage drop across the LEDs to acceptable levels for the ratings of the
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`LEDs 421.” Id. at col. 14, ll. 1214. The ’625 patent further describes that
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`the mini-wedge bulb can replace any 3-digit automotive bulb. Id. at col. 14,
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`3
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`Case IPR2014-00703
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`ll. 2830. An example of a 3-digit incandescent light bulb that may be
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`replaced by the mini-wedge bulb is the LED bulb identified by the part
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`number “194-XX.” Id. at col. 24, ll. 3740, 4967 (Table). As for shape,
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`the ’625 patent states that the outline of PCB 420 (shown in Figures 3435
`
`above) is “preferably approximately the same as the smaller 3[-]digit
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`incandescent bulbs such as 194.” Id. at col. 14, ll. 3637.
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`B. ILLUSTRATIVE CLAIM
`
`Challenged claim 30 is an independent claim, and claim 31 depends
`
`from claim 30. We reproduce below illustrative claim 30:
`
`1. 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.
`
`C. CLAIM INTERPRETATION
`
`Before addressing the specific asserted grounds, we review the scope
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`of the challenged claims, vis-à-vis interpretation of claim terms relevant to
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`our threshold determination of whether to institute trial. Consistent with the
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`statute, case law, and legislative history of the America Invents Act (“AIA”),
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`the Board interprets claims using the “broadest reasonable construction in
`
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`
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`4
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`Patent 6,786,625 B2
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`48,756, 48,766 (Aug. 14, 2012). We presume that claim terms have their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question.’” (citation omitted)).
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`Although Petitioner submits proposed constructions for seven terms,
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`we determine that only two of those terms are relevant to our determination
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`of whether to institute trial: the preamble of claim 30 and “electrical control
`
`means.”
`
`We analyze each of these claim terms in turn.
`
`1.
`
`Preamble of Claim 30: “An LED light bulb adapted for use in
`standard automotive mini wedge type bulb sockets”
`
`Petitioner contends that the preamble states the intended use of the
`
`alleged invention, and thus carries no patentable weight, or in the alternative,
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`that the construction is “[a]n LED light bulb capable of being inserted, or
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`wedged, into sockets configured to receive a three-digit automotive
`
`incandescent lamp.” Pet. 12. Patent Owner addresses neither of Petitioner’s
`
`contentions, but argues that the asserted grounds fail because the references
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`do not disclose the preamble. Prelim. Resp. 14. At this stage of the
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`proceeding, we are not persuaded that the preamble is only an intended use
`
`of the invention. Further, we are not persuaded that Petitioner’s proposed
`
`construction reflects the broadest reasonable interpretation in light of the
`
`specification.
`
`First, we determine that the preamble is a limitation. “A claim’s
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`preamble may limit the claim when the claim drafter uses the preamble to
`
`define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd.,
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`5
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`Patent 6,786,625 B2
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`655 F.3d 1278, 1284 (Fed. Cir. 2011). The preamble is generally construed
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`to be limiting if it “‘recites essential structure or steps, or if it is necessary to
`
`give life, meaning, and vitality to the claim.’” NTP, Inc. v. Research In
`
`Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg.
`
`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). For
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`example, where the specification underscores structure recited in the
`
`preamble as important, the preamble may operate as a claim limitation.
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`Catalina Mktg., 289 F.3d at 808. The challenged claims are directed to a
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`specific LED light bulb, one that can be inserted in a mini-wedge socket.
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`The ’625 patent states that the “present invention” is an LED “vehicle lamp
`
`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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`col. 4, ll. 3942. The adaptation of the LED light bulb to fit a specific
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`socket is not just an intended use, as Petitioner argues, it constrains the fit of
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`the recited PCB in the “bulb body” and the “electrical control means” that
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`are mounted onto that PCB such that the light bulb has the dimensions of a
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`mini-wedge bulb. The specification of the ’625 patent reflects this
`
`importance when describing that the PCB of the mini wedge bulb of the
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`“present invention” has the dimensions (thickness and height) of the light
`
`bulb with the 194-part number, such that it can fit into the same socket as
`
`bulbs with the 194-part number. See id. at col. 14, ll. 67, 36-44; col. 14,
`
`l. 62col. 15, l. 3.
`
`Second, as to the proper scope of the phrase, we are not persuaded
`
`that Petitioner’s proposed construction is adequate. Petitioner proposes that
`
`the phrase “adapted for” in the preamble denotes that the LED light bulb is
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`“capable of being inserted, or wedged.” Pet. 12. In this instance, the
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`6
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`specification of the ’625 patent compels us to conclude that “adapted to” has
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`a narrower meaning, that the LED light bulb is designed or made to fit into a
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`mini-wedge type bulb socket. See In re Giannelli, 739 F.3d 1375, 1380
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`(Fed. Cir. 2014). As stated above, the ’625 patent describes that the mini-
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`wedge type bulb has dimensions to fit into a 194-part number light bulb, i.e.,
`
`a 3-digit incandescent light bulb. See Ex. 1001, col. 14, ll. 67, 3644;
`
`col. 14, l. 62col. 15, l. 3. Further, the specification describes that the mini
`
`wedge light bulb can replace any 3-digit automotive bulb. Id. at col. 14,
`
`ll. 2829. These statements reflect that the claimed LED light bulb is more
`
`than merely “capable of” fitting into a wedge socket—it is designed to do so.
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`Therefore, Petitioner’s proposed construction does not reflect the broadest,
`
`but reasonable interpretation of the preamble phrase in light of the
`
`specification. Based on the foregoing, and for purposes of this Decision, we
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`construe the preamble to mean “an LED light bulb designed to fit into
`
`sockets configured to receive a three-digit automotive incandescent lamp.”
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`2.
`
`“electrical control means”
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`Petitioner contends that this term is a means-plus-function term, under
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`35 U.S.C. § 112, ¶ 6. We agree with Petitioner. Pet. 1718. Petitioner
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`further contends that the function is “electrical control” and that the structure
`
`is “one or more resistors, or equivalents thereof.” Id. at 1820. Having
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`reviewed the arguments and support for those arguments presented in the
`
`Petition, we are persuaded that, at this juncture, Petitioner’s proposed
`
`construction for “electrical control means” is appropriate. For purposes of
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`this Decision, we adopt Petitioner’s proposed construction.
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`7
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`II. ANALYSIS
`
`We now turn to Petitioner’s asserted grounds of unpatentability and
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`Patent Owner’s arguments in its Preliminary Response. In the analysis that
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`follows, we may discuss facts as they have been presented thus far in this
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`proceeding. Any inferences or conclusions drawn from those facts are
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`neither final nor dispositive of any issue on which we institute trial.
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`A. ANTICIPATION GROUNDS
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`First, we turn our attention to a dispositive issue concerning
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`Petitioner’s assertions of anticipation. Petitioner bases anticipation
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`challenges on four prior art references: Laforest, Sivacumarran, Alvarez,
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`and Horowitz. Pet. 2657. With regard to the Sivacumarran anticipation
`
`ground, Petitioner admits that the reference does not explicitly disclose
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`automotive use, and fails to explain, as it did with the other references, how
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`Sivacumarran discloses the preamble-recited use in standard automotive
`
`wedge type bulb sockets to a person of ordinary skill in the art. See id.
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`at 3738 (omitting arguments of how Sivacumarran discloses use in
`
`standard automotive mini wedge sockets to a person of ordinary skill in the
`
`art). Accordingly, we are not persuaded that Petitioner has made a threshold
`
`showing of a reasonable likelihood of prevailing in its contention that
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`Sivacumarran anticipates claims 3031.
`
`For the anticipation challenges regarding Laforest, Alvarez, and
`
`Horowitz, Petitioner argues that the LED light bulbs described in those
`
`references disclose the recited use, in standard automotive wedge type bulb
`
`sockets, to a person of ordinary skill in the art. Id. at 3031 (argument
`
`directed to Laforest); id. at 4345 (argument directed to Alvarez); id.
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`8
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`Case IPR2014-00703
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`at 5354 (argument directed to Horowitz). Petitioner relies on the
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`Declaration of Dr. Shackle and other extrinsic evidence. See, e.g., id. at 30
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`(supporting declaration of Dr. Shackle with online replacement catalogs
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`submitted as Exhibits 1023 and 1025). The use of extrinsic evidence to
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`show anticipation is not precluded. The rule requiring that every element of
`
`the claim appear in a single reference is flexible to accommodate the
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`situation when common knowledge is not recorded in the reference.
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`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
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`1991). That rule, however, goes to showing anticipation with extrinsic
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`evidence when the reference is silent about an inherent characteristic. Id.
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`“Such evidence must make clear that the missing descriptive matter is
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`necessarily present in the thing described in the reference, and that it would
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`be so recognized by persons of ordinary skill.” Id. (emphasis added). The
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`Petition merely states that “a person of ordinary skill in the art would have
`
`known that three-digit incandescent lamps . . . were used for dashboard and
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`instrument panel lighting.” Pet. 3031. That argument fails to point out that
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`the recited use (in standard automotive mini wedge type bulb sockets) was
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`necessarily present for each of the LED light bulbs described in these
`
`references. Accordingly, we are not persuaded that Petitioner has shown a
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`reasonable likelihood that claims 3031 are anticipated by any of Laforest,
`
`Alvarez, or Horowitz.
`
`We now turn to the analysis of the asserted obviousness grounds.
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`B. OBVIOUSNESS GROUNDS BASED ON LAFOREST, ALVAREZ, AND HOROWITZ
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`We have considered the arguments and evidence presented, and we
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`determine that there is a reasonable likelihood that Petitioner will prevail on
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`
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`9
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`its assertion that the challenged claims are unpatentable based on each of
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`three obviousness grounds: Laforest, Alvarez, and Horowitz.
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`1.
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`Petitioner’s Evidence Regarding Laforest
`
`Laforest discloses the design for a connector support for an LED lamp
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`that is compatible with standard sockets used in automobile dashboards.
`
`Ex. 1018, p. 1, ll. 2330.7 Petitioner provides annotated Figures 1 and 2 of
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`Laforest, reproduced below, illustrating the correspondence between
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`Laforest’s LED lamp and the claim limitations. Pet. 27.
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`Figures 2 and 3 of Laforest show a schematic perspective view of an
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`LED connector support and assembly of an LED connector support in a
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`socket. Ex. 1008, p. 3, ll. 1114. The annotated Figures 2 and 3, above,
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`
`
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`7 Citations to Laforest identify the page number and line numbers of the
`translation filed as Exhibit 1018.
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`10
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`together with the claim charts at pages 2730 of the Petition, show in detail
`
`Petitioner’s evidence supporting its contention that Laforest teaches all the
`
`limitations of the challenged claims. With respect to the specific
`
`obviousness challenge based on Laforest, Petitioner asserts that Laforest’s
`
`LED lamp is intended for use in an automobile dashboard, and it would have
`
`been obvious to “modify the dimension of . . . plug (13) such that . . .
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`connector support (10) could be inserted, or wedged, into a socket
`
`configured to receive a three-digit automotive incandescent bulb.” Pet. 33.
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`The modification of an incandescent lamp base to fit a particular socket was
`
`known, as evidenced by U.S. Patent No. 6,342,762 B1 (Ex. 1024)
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`(“Young”). Id. at 33. Further, Petitioner alleges that the ’625 patent admits
`
`that it was known that “LED bulbs designed to replace vehicle incandescent
`
`bulbs require bases similar to the standard bayonet or the wedge bases.” Id.
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`at 3334.
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`2.
`
`Petitioner’s Evidence Regarding Alvarez
`
`Alvarez is directed to an LED lamp employing surface mount
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`technology. Ex. 1020, col. 1, ll. 47. Petitioner provides annotated Figure 3
`
`of Alvarez, reproduced below, illustrating the correspondence between
`
`Alvarez’s LED lamp and the claim limitations. Pet. 41.
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`Figure 3 of Alvarez shows a view of a surface mount LED mounted
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`on a printed circuit board in a lamp housing. Ex. 1020, col. 2, ll. 4751.
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`Annotated Figure 3 above, together with the claim charts at pages 4143 of
`
`the Petition, show in detail Petitioner’s evidence supporting its contention
`
`that Alvarez teaches all the limitations of the challenged claims. Petitioner
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`has two contentions supporting its challenge of obviousness over Alvarez.
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`First, Petitioner contends that it would have been obvious to a person of
`
`ordinary skill in the art to use two resistors instead of one. Pet. 4748.
`
`Second, Petitioner contends that lamp assembly (30) would have been
`
`recognized by one of ordinary skill in the art as a replacement for three-digit
`
`automotive incandescent lamps. Pet. 48. To support this second contention,
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`Petitioner, again, relies on Young and on admissions stated in the
`
`specification of the ’625 patent.
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`3.
`
`Petitioner’s Evidence Regarding Horowitz
`
`Horowitz is directed to “light bulb assemblies for vehicles, and in
`
`particular, . . . taillight assembly for an automobile wherein a light emitting
`
`diode assembly is mounted within a durable water-resistant structure that is
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`used in conjunction with existing light bulb mounts present in the
`
`automobile.” Ex. 1021, col. 1, ll. 611. Petitioner provides annotated
`
`Figure 1 of Horowitz, illustrating the correspondence between Horowitz’s
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`LED lamp and the claim limitations. Pet. 50.
`
`
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`Figure 1 of Horowitz shows a view of the components of the light
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`assembly comprising an LED assembly to be joined with a plug member
`
`using two side housing members. Ex. 1021, col. 2, ll. 6567. Annotated
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`Figure 1 above, together with the claim charts at pages 5052 of the Petition,
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`show in detail Petitioner’s evidence supporting its contention that Horowitz
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`teaches all the limitations of the challenged claims.
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`Petitioner has two contentions supporting its challenge of obviousness
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`13
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`over Horowitz. First, Petitioner contends that although Horowitz does not
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`describe connecting a second resistor to the second wire, it would have been
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`obvious to modify the Horowitz lamp assembly to include two resistors
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`(electrical components 140) connected to each wire in a pair of wires 170.
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`Pet. 55 (pointing to the argument made with regard to Alvarez). Second,
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`Petitioner contends that it would have been obvious to a person of ordinary
`
`skill in the art to modify the the lamp assembly (100) so as to be adapted to
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`replace three-digit automotive incandescent lamps. Pet. 56. To support this
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`second contention, Petitioner, again, relies on Young and on admissions
`
`stated in the specification of the ’625 patent.
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`4.
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`Patent Owner’s Preliminary Response Arguments
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`Patent Owner contends that none of Laforest, Alvarez, and Horowitz
`
`disclose the preamble limitation. In particular, the LED lamps disclosed in
`
`these references are argued as being of dimensions different from the size of
`
`what Patent Owner contends is a mini-wedge socket. See, e.g., Prelim.
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`Resp. 2 (arguing that Laforest’s socket size is apparently only 2.5 mm wide,
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`¼ of the size of a mini-wedge bulb of 10 mm). In addition to disputing size,
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`Patent Owner argues that Laforest’s lamp is a retrofit, not a bulb; that the
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`contacts in Laforest’s lamp are wired opposite from a mini-wedge bulb; and
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`that modifications needed to Laforest would not encourage one to design an
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`LED light bulb as recited. Id.
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`We are not persuaded at this juncture by Patent Owner’s argument for
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`two reasons. First, the distinctions Patent Owner argues draw on features
`
`not recited and not commensurate with the meaning of the preamble
`
`limitation, as we have determined above. Second, to the extent Patent
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`Owner’s arguments are directed to the lack of motivation of a person of
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`14
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`ordinary skill in the art, those arguments are undeveloped and unsupported
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`at this stage of the proceeding. Stating, without support, that one would not
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`be encouraged to design the recited LED light bulb because it “requires a
`
`modification of the automobile” is insufficient, at this juncture, to overcome
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`the threshold evidence Petitioner has presented in the Petition.
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`Based on the information presented thus far in this proceeding, we are
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`persuaded that Petitioner has shown sufficient evidence of a reasonable
`
`likelihood that it will prevail as to its contentions that claims 30 and 31 are
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`unpatentable as obvious over each: Laforest, Alvarez, and Horowitz.
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`C. ANALYSIS OF OBVIOUSNESS GROUND BASED ON SIVACUMARRAN
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`Petitioner asserts a ground based on obviousness over Sivacumarran
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`and argues that this ground differs from Laforest because Sivacumarran
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`discloses two pairs of electrical conductors and that Sivacumarran does not
`
`disclose automotive use. Pet. 38. These reasons do not persuade us that the
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`Sivacumarran ground is not redundant of the other references discussed
`
`above. First, our construction of “electrical control means” is met by a
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`structure of one or more resistors, which Laforest discloses. Second,
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`Sivacumarran appears to be weaker than Laforest since Sivacumarran does
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`not disclose automotive use. Therefore, we determine that this ground is
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`redundant in light of our determination that there is a reasonable likelihood
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`that the challenged claims are unpatentable over the obviousness grounds
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`based on Laforest, Alvarez, and Horowitz, as discussed above. See 37
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`C.F.R. § 42.108. Accordingly, we need not consider the argument presented
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`15
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`in the preliminary response (see Prelim. Resp. 1) that Sivacumarran is not
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`prior art.8
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`III. CONCLUSION
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`For the foregoing reasons, we institute inter partes review of the
`
`’625 patent based on the following asserted grounds below: claims 3031
`
`would have been obvious over Laforest; claims 3031 would have been
`
`obvious over Alvarez; and claims 3031 would have been obvious over
`
`Horowitz.
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`The Board has not made a final determination on the patentability of
`
`any challenged claim.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is granted as to claims 3031 of the
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`’625 patent;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’625 patent is hereby instituted with trial commencing
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`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of trial; and
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`FURTHER ORDERED that the trial is limited to the grounds identified in
`the Conclusion.
`
`
`8 We note that Patent Owner filed an Exhibit 1, without labeling the
`document filed as such, to support the Preliminary Response. That filing
`fails to comply with 47 C.F.R. § 42.63(c) (specifying that the range of
`exhibits for patent owner is 20002999). The Board directs Patent Owner to
`Rule 42.63(c) and all other rules concerning the appropriate identification of
`exhibits, including 42.63(d)(e). Future filings by Patent Owner that violate
`these rules will be expunged.
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`PETITIONER:
`
`Paul H. Berghoff (Lead Counsel)
`McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, IL 60606
`berghoff@mbhb.com
`
`Eric R. Moran (Back-up Counsel)
`moran@mbhb.com
`John M. Schafer (Back-up Counsel)
`Schafer@mbhb.com
`
`
`PATENT OWNER:
`
`Seth Nehrbass (Lead Counsel)
`GARVEY, SMITH, NEHRBASS & NORTH, L.L.C.
`3838 N. Causeway Blvd., Suite 3290
`Metairie, LA 70002
`SethNehrbass@gsnn.us
`
`Mackenzie Rodriguez (Back-up Counsel)
`mrodriguez@gsnn.us
`
`Kenneth Tolar (Back-up Counsel)
`tolar@cavtel.net
`
`
`
`
`17
`
`