throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
`COLEMAN CABLE, LLC, JIAWEI TECHNOLOGY (HK) LTD., JIAWEI
`TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PHOTOVOLTAIC
`LIGHTING CO, LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., SMART SOLAR, INC, AND TEST RITE
`PRODUCTS CORP.
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
`
`Case IPR2014-00935
`Patent 8,089,370
`
`Second Declaration of Dr. Peter Shackle
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`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † R
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`I.
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`INTRODUCTION
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`1.
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`My name is Peter W. Shackle. I have been retained by counsel for
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`Petitioners as an expert witness in the above-captioned proceeding. I have been
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`asked to provide analysis and my opinion about
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`the state of the art of the
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`technology described in U.S. Patent No. 8,089,370 (the ’370 Patent”) and on the
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`patentability of claims 1-6, 7, 9, 10, 14, 17-20, 23, 28, 43, 45 and 48-50 (“the
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`instituted claims”) of the ’370 patent.
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`2.
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`I reside at 112 Aspen Way, Rolling Hills Estates, CA 90274. I hold a
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`bachelor’s degree in physics from the University of Birmingham (United
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`Kingdom) and a Ph.D. in physics from the University of Cambridge (United
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`Kingdom).
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`3.
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`I have over
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`twenty years’ experience in the field of
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`lighting
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`electronics, with particular emphasis on light emitting diode (“LED”) drivers and
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`electronic ballasts. I am the President of Photalume, a consulting company I
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`founded in 2012. Before that, I was Director of Power Supply Products at Light-
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`Based Technologies, and I also served as Chief Technology Officer for Lightech
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`Electronics, Inc. Additionally, I held vice president positions at Fulham Co, Inc.,
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`Universal Lighting Technologies, and Robertson Worldwide.
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`4.
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`I am an elected senior life member of the Institute of Electrical and
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`Electronics Engineers, and I am a member of the Illuminating Engineering Society.
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`5.
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`I am a named inventor of fifty-seven U.S. patents, and I have three
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`patent applications pending before the U.S. Patent and Trademark Office. I have
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`also authored eight publications in peer-reviewed journals and nine publications in
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`trade journals, the most recent of which pertains to LED technology. A copy of my
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`curriculum vitae was attached to my original declaration (Ex. 1002) at Appendix
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`A.
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`6.
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`This declaration is a supplement
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`to my earlier declaration. This
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`declaration addresses issues raised by Dr. Ducharme, who I understand is patent
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`owner's expert, in his declaration and, where appropriate, statements made by Dr.
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`Ducharme during his deposition, both of which I have read.
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`II. LEGAL PRINCIPLES
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`7.
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`My first declaration included statements
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`reciting certain legal
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`principles which were provided to me by counsel. I considered and applied those
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`principles in performing my analysis and in forming my opinions. Below are some
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`additional legal principles that I have considered and applied in forming my
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`opinions set forth below.
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`8.
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`I understand that courts consider many factors in accessing the level
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`of skill in the relevant art, including the kinds of problems that existed in the art,
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`known solutions to those problems, the rapidity at which innovations are made in
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`the field, the sophistication of the technology, and the educational level of active
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`2
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`workers in the field. The importance of each factor, to the extent it is present,
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`varies from case to case. The level of skill in the art of the inventor of the patent at
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`issue is not determinative in determining the level of ordinary skill in the relevant
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`art.
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`9.
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`Patents are written to describe to one of ordinary skill in the art how to
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`build the inventions without undue experimentation.
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`10.
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`I understand that patents, as well as other prior art references, may and
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`often do, disclose multiple embodiments. I understand that when considering
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`obviousness, one must consider what the references as a whole would have taught
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`a person of ordinary skill in the art, recognizing that it is often necessary and
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`within the level of ordinary skill to modify the teachings of two references in order
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`to combine them. I further understand that although a specific embodiment may be
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`taught to be preferred, all disclosures of the prior art, including none preferred
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`embodiments must be considered. The disclosure of alternative designs in a prior
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`art reference does not teach away just because alternatives exist. Nor does it mean
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`that an inferior combination is inapt for obviousness purposes. All disclosures in a
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`prior art reference must be evaluated for what they fairly teach one of ordinary
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`skill in the art.
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`3
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`11.
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`I understand that it is not permissible to read limitations into the
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`claims. I also understand that a patentee may be his or her own lexicographer and
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`define the meaning of claim term.
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`12.
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`I understand if a person of ordinary skill can implement a predictable
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`variation, 35 U.S.C. § 103 obviousness likely bars its patentability. For the same
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`reason, if a technique has been used to improve one device, and a person of
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`ordinary skill in the art would recognize that it would improve similar devices in
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`the same way, using the technique is obvious unless its actual application is
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`beyond his or her skill. A court must ask whether the improvement is more than
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`the predictable use of prior art elements according to their established functions.
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`When a work is available in one field of endeavor, design incentives and other
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`market forces can prompt variations of it, either in the same field or a different one.
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`13.
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`I understand that where there are a “finite number of identified
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`predictable solutions,” a person of ordinary skill has good reason to pursue the
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`known options.
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`14.
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`I understand there is no rigid test for obviousness. I further understand
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`that the combination of familiar element according to known methods is likely to
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`be obvious when it does no more than yield predictable results. I understand that
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`the fact that a combination was “obvious to try” might show that it was obvious
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`under 35 U.S.C. § 103, and that a court can take into account the inferences and
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`creative steps that a person of ordinary skill would employ. It is my understanding
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`that any need or problem known in the field of endeavor at the time of the
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`invention that is addressed by the patent can provide a reason for combining the
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`elements in the manner claimed.
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`15.
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`I understand that a determination of obviousness based on the
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`teachings from multiple references does not require an actual, physical substitution
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`of elements. I further understand that the test for obviousness is not whether the
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`features of a second reference may be bodily incorporated into the structure of the
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`first reference, but rather what the combined teachings of the references would
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`have suggested to one of ordinary skill in the art.
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`16.
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`I understand that the question of obviousness is not whether the
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`combination was obvious to the patentee but whether the combination was obvious
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`to a person with ordinary skill in the art at the time of the invention. Employing
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`hindsight bias is not permitted; the analysis must focus on what would have been
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`obvious to one of ordinary skill in the art at the time of the invention.
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`17.
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`I understand that so-called secondary considerations may be relevant
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`to the analysis. I have read the Board's decision indicating that because the patent
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`owner did not provide a sufficient nexus between the claimed subject matter and
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`the allegedly successful product
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`the Board did not consider patent owner's
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`secondary considerations. I have read Dr. Ducharme's declaration,
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`the patent
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`5
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`owner's response, and Dr. Ducharme's deposition transcripts (as well as attended
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`the first day of Dr. Ducharme's deposition) and the Board's rejection of patent
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`owner's secondary considerations was not addressed. It is thus my understanding
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`that there are no secondary considerations that the patent owner has raised that
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`need to be addressed. I reserve the right to address such considerations in the
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`future, however.
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`III. THE LEVEL OF SKILL IN THE ART
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`18.
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`The ’370 patent describes disadvantages in the prior art relating to
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`wind chimes that “cannot be heard through a closed window nor can it be seen in
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`the dark, limiting its effectiveness as a wind indicator.” 1:28-33. The alleged
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`solution to this problem of adding lights to the wind chime generally relates to the
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`specifics of the circuitry. I have reviewed the ’370 patent and a large part of the
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`specification relates to describing the particulars of electronic circuitry. See, e.g.,
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`7:15-9:13 (e.g., a light circuit, an activation circuit, a power supply circuit, a boost
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`up circuit, an intermediary circuit, and a light sensitive switch. See generally 2:62-
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`6:9 and 6:24-47. The patent's description also includes selected component values
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`for certain resistors, inductors, and capacitors. ’370 patent, FIG. 3.
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`19.
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`In my opinion, a person of ordinary skill in the art according to the
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`patent owner's definition (the “PO's POSA”) would not be able to design or fully
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`understand the circuitry of the ’370 patent. For example, the PO's POSA would not
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`understand the circuit in FIG. 3. Dr. Ducharme admitted this during his deposition.
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`‘477/’827 Ducharme Depo. (Ex. 1074), at 80:1-89:18 generally and specifically at
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`88:9-89:12, discussing Figure 9 with respect to the '477 patent, which is Figure 3
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`of the '370 patent)). Even Dr. Ducharme, who holds a Ph.D., testified he could not
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`explain the operation of the circuit of Figure 3 without performing a simulation. Id.
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`123:8-124:5. This further supports my opinion of the appropriate level of skill in
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`the art.
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`20.
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`Several of the prior art references have comparable schematics and
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`many of them have detailed engineering drawings illustrating the structure of the
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`assembly of these products. Some of the drawings include three dimensional
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`structures, some include artistic renderings, and even software listings are
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`included. To understand the electrical, mechanical, and software described in the
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`art, the POSA would need to have breadth and scope of education provided by a
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`university or its equivalent. This is one of the reasons that I believe a POSA in this
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`field would have had a university degree, as well as some practical experience with
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`these products post-university.
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`21.
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`Other references in this field also relate to solving problems that
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`required an understanding of electronic circuitry. The Chliwnyj patent (Ex. 1020),
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`for example, identifies numerous objects of the invention that relate to the specifics
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`of the circuitry and/or use of pulse-width-modulation. See generally Chliwnyj, at
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`2:53-4:37. Additional discussion of Chliwnyj appears in my first declaration at
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`¶¶ 80, 92-96. The Dowling patent (Ex. 2004) also discusses a need to incorporate
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`programmable, multi-colored lighting systems,
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`including systems that operate
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`autonomously and systems that are associated with wired or wireless computer
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`networks.
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`22.
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`Based on the problems described in the patent and other art, as well as
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`the solutions provided, it is my opinion that a POSA would have a higher skillset
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`than the POSA proposed by the patent owner, who would not, in my opinion, be
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`able to fully understand and appreciate the scientific and engineering principles
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`applicable to these problems.
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`8
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`23.
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`In my opinion the rate at which innovations occur in this field is
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`neither exceedingly fast nor exceedingly slow. I base this opinion on my review of
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`the prior art and my 30 years of experience in this field, including experience
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`involving the design of lighting circuits, color changing displays, photodiodes, and
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`other components of consumer lighting products.
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`24.
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`It is my opinion that the technology is not overly sophisticated. I also
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`agree with Dr. Ducharme that the technology (e.g., using solar cells to power
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`lights, using switches to turn solar lights on and off, rechargeable batteries, light
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`sensitive switches, and using different colored LEDs were known prior to the time
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`of the alleged invention of the ’370 patent. ’477/’827 Ducharme Depo. (Ex. 1074),
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`at 52:21-57:17. Some of the circuitry, however, although it was generally known,
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`could not have been implemented by PO's proposed POSA, who would not have
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`been able to fully understand and appreciate the scientific and engineering
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`principles to these problems.
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`25. Dr. Ducharme sets forth several examples of persons working in the
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`field (e.g., inventors of prior art patents) who have a lower level of education than I
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`proposed for a POSA. Ducharme Decl., Ex. 2022, ¶¶ 39-65. Dr. Ducharme testified
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`that he never spoke to these people and thus does not know the true extent of their
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`expertise. ‘477/’827 Ducharme Depo. (Ex. 1074), at 98:23-99:13. Dr. Ducharme
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`also agreed that Mr. Richmond would not be able to design the circuitry of Figure
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`9
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`3 of his patent (similar to Figure 9 of the ’477 patent), but could only provide a
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`very basic block level design “battery, solar cell light switch, light, light needs to
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`vary in color.” ‘477/’827 Ducharme Depo., (Ex. 1074), at 51:8-12.
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`26.
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`I have reviewed the cited art and attempted to determine the
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`educational backgrounds of the named inventors. In the Dowling patent cited by
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`patent owner, for example, it appears that at least six of the nine inventors have at
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`least a B.S. degree in a hard science: Kevin Dowling (B.S. Mathematics, MS/Ph.D.
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`Robotics), Frederick Morgan (B.S. Physics and M.S. Computer Engineering), Ihor
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`Lys (B.S., M.S., and Ph.D.
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`in Electrical and Computer Engineering), Mike
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`Blackwell (B.S. and M.S. Electrical and Computer Engineering), George Mueller
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`(B.S. Electrical and Computer Engineering), and Albert Ducharme who is patent
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`owner's expert in this case, who I understand also has a Ph.D. Dr. Ducharme
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`testified similarly. See generally ‘477/’827 Ducharme Depo. (Ex. 1074), at 97:4-
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`98:20 (discussing backgrounds of some of the above individuals). The results of
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`this research are attached as Exs. 1076-1081.
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`27.
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`The inventors of other prior art patents also have degrees in hard
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`science. For example, Alex Chliwnyj has a B.S. in Electrical Engineering. Steven
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`Watts, a named inventor on U.S. Patent App. No. 2006/0139912 (Ex. 1011 in the
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`935 IPR) to Norton holds a B.S. in EET (software engineer) from Weber State.
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`Bethanne Felder named in the Frost patent (Ex. 1010) has a B.S. in Chemistry, and
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`10
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`LaDell Swiden, named in U.S. Patent No. 5,225,170 (the Plamp patent (Ex. 2035
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`in the 938 IPR)) has a B.S. in electrical engineering. The results of this research are
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`attached as Exs. 1070-1071 and 1082-1085.
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`28. Dr. Ducharme also made errors in his analysis. For example, he
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`indicated that Mr. Browder's education and testimony was one of the things he
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`relied on for his opinion of the level of skill of a POSA. Mr. Browder's patent does
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`not relate to the circuitry of a solar powered light, but rather to a simple circuit to
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`permit a potential purchaser of the light to turn it off and on in a store display. Dr.
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`Ducharme now agrees. ’477 Ducharme Depo, (Ex. 1075) at 89:25-94:5 and
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`specifically at 94:1-5.
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`29.
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`In sum, the PO’s POSA would not fully understand and appreciate all
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`of the issues. While some of the persons working in the field may be below the
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`level of skill of my proposed POSA, many are well above my proposed skill level.
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`Taking each of these factors into account, it is my opinion that my proposed POSA
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`is the correct POSA for this field. The varied disciplines present in the prior art
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`(e.g., mechanical/industrial, electrical, and solar power lighting) further justifies
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`the appropriate level of skill for a POSA being a bachelor’s degree plus two years
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`of relevant experience or education .
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`11
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`IV. MY QUALIFICATIONS
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`30. My qualifications are listed in my first declaration at paragraphs Ex.
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`1002 at paragraphs 2-5, and Appendix A. Because Dr. Ducharme set forth several
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`criticisms of me, I describe additional qualifications below.
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`31.
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`Dr. Ducharme criticized my qualifications because I had purportedly
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`not supervised engineers, constructed products in China, and did not have
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`experience with photodiodes or consumer products. Ex. 2022, ¶ 34.
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`32.
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`The claims of the ’370 patent do not require the supervision of
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`engineers or that the products be made in China. The claims of the ’370 patent do
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`not require that
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`the devices be manufactured in China,
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`the supervision of
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`engineers, or experience working with engineers. See ’477 Ducharme Depo., (Ex.
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`1074), at 42:23-44:12 (the ’370 patent covers technology similar to the ’477
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`patent). Dr. Ducharme also testified that in his opinion a POSA would only need to
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`know that photovoltaic cells could convert sunlight into power, that solar cells can
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`be used as a power source, and that the products involved in this case were
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`consumer products. ’477 Ducharme Depo., (Ex. 1074), at 30:17-32:6. I meet these
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`qualifications because, as discussed further below.
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`33.
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`I also have other experience relevant to this technology. My doctorate
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`in physics enables me to understand all of the technology involved in the design
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`and manufacture of solar cells, including using them in solar-powered outdoor
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`lighting products.
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`34. During my April 3-4, 2015 deposition, I recited additional experience.
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`Shackle Depo. (Ex. 2022), at 10:18-12:22). I have experience with photovoltaics,
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`in the work associated with U.S. patent 4,167,748. In this work I designed a
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`silicon photodiode, and integrated it into a single silicon chip with two high
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`voltage transistors and a resistor. This work involved an in-depth knowledge of the
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`physics and operation of a silicon solar cell. The resulting product succeeded and
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`was manufactured in high volume as a component in telephone exchanges.
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`35. Also, while working at Telmos in Sunnyvale California, I designed a
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`multi-element photovoltaic stack device intended to power the gates of power field
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`effect transistors which needed to be driven with optical isolation. This multi-
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`element stack produced a voltage of about 10V when illuminated with light. This
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`product was manufactured at
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`the time by Telmos. From the two preceding
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`examples, I refute specifically the statement by Dr. Ducharme I have no experience
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`with solar cells, photovoltaic cells or other solar powered products.
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`36. Not previously mentioned in my initial declaration or explicit in my
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`curriculum vitae were the details of my responsibilities for engineering at
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`Lightech, Inc. While at Lightech, I prepared a “LED Wall Washer” demonstration
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`lighting display for Trade Shows. Specifically for the Frankfurt Light and Building
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`Exposition in 2010, I designed and had built a large color changing light wall
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`washer demonstration utilizing the same electronic technology related to color
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`changing described in the patent at issue. The wall washer utilized LED drivers
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`using a Pulse Width Modulation.
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`I assert
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`this activity represents relevant
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`experience in the field of invention.
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`37. Dr. Ducharme opined that I have no experience in the design of
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`consumer products. I have 20 years of experience in the design of electronic
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`ballasts and LED drivers, including large numbers of such products used in task
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`lights, torchieres, table lamps, and decorative lighting for the home. Hence, I have
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`experience in the design of the most critical parts of such commonplace consumer
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`products.
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`38.
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`To the extent relevant, I also have experience regarding Chinese
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`manufacture of product. In my work as V.P. of Advanced Technology for each
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`company, Robertson Worldwide, Fulham Lighting, and Lightech Electronics, all
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`the products I designed were transferred for manufacture in China at various
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`factories. Hence,
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`I have experience with the design and manufacture of
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`photovoltaic products and with transferring products to China for manufacture.
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`39. Dr. Ducharme contends that degreed engineers have “even less skills
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`and creativity” than (presumably) the general population. Ducharme Decl. (Ex.
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`2022), at ¶ 58. Dr. Ducharme admitted that he was not an expert in electrical
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
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`engineering course offerings at universities or on courses offered by universities in
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`general. ‘477/’827 Ducharme Depo., (Ex. 1074), at 45:4-13. Dr. Ducharme also
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`admitted that he did not have experience in the market of solar garden lights. 8/4
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`Ducharme Depo., Ex. 1061, 201:1-2. Since no evidence is presented for this
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`assertion, in my opinion no weight should be attributed to this statement.
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`40.
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`Dr. Ducharme also alleges that I employed hindsight in my analysis.
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`This is not
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`true. While I responded yes to counsel's question regarding the
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`undefined (and objected to) term “retrospective review” of the prior art, my
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`response did not mean that I employed hindsight. What I thought I was answering
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`was did I obtain the prior art, study it, and provide an opinion, which I did. Much
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`of the prior art was provided to me by counsel. I reviewed it once I received it,
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`hence retrospectively. As I stated in my first declaration and reiterate here, I did
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`not apply hindsight in my analysis. My opinions are based on the understanding of
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`a POSA at the time of the inventions were made, and are based on the prior art not
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`on the deficiencies of the subject patent.
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`41.
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`Based on all of the above, it is my opinion that I am qualified to
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`testify.
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`V.
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`SUMMARY OF OPINIONS
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`42.
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`It is my opinion that Petitioner has demonstrated that claims 1-7, 9-10,
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`14, 17-20, 23, 28, 43, 45 and 48-50 are unpatentable in view of the prior art
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`15
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`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`Norton, Kao, Marchese, Chen, Ouyang, Kuelbs, and Chliwnyj under
`
`the
`
`obviousness standard of 35 U.S.C. § 103 and anticipation standard of 35 U.S.C. §
`
`102 based on the following grounds:
`
`" claims 1 and 48 under 35 U.S.C. § 102 based on Norton
`
`" claims 1 and 48 under 35 U.S.C. § 103 based on Norton
`
`" claim 2 under 35 U.S.C. § 103 based on Norton and Kao
`
`" claim 3 under 35 U.S.C. § 103 based on Norton and Marchese
`
`" claims 4, 49, and 50 under 35 U.S.C. § 103 based on Norton and Chen
`
`" claims 5, 6, 7, 9, 10, 17, 18, 19, 20, and 23 under 35 U.S.C. § 103
`
`based on Kube and Ouyang
`
`" claims 28, 43, and 45 under 35 U.S.C. § 103 based on Kube, Ouyang,
`
`and Kuelbs
`
`" claim 14 under 35 U.S.C. § 103 based on Kube, Ouyang, and
`
`Chliwnyj
`
`43. A person of ordinary skill in the art would have been motivated to
`
`combine Norton and Kao based on their teachings, and that combination renders
`
`claim 2 obvious. A person or ordinary skill in the art would have also combined
`
`Norton and Marchese based on their teachings to render claim 3 obvious. A person
`
`or ordinary skill in the art would have also combined Norton and Chen based on
`
`their teachings to render claims 4, 49, and 50 obvious. A person or ordinary skill in
`
`16
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † RX
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`the art would have also combined Kube and Ouyang based on their teachings to
`
`render claims 4, 49, and 50 obvious. A person or ordinary skill in the art would
`
`have also combined Kube, Ouyang, and Kuelbs based on their teachings to render
`
`claims 4, 49, and 50 obvious. A person or ordinary skill in the art would have also
`
`combined Kube, Ouyang, and Chliwnyj based on their teachings to render claims
`
`4, 49, and 50 obvious
`
`VI. CLAIM CONSTRUCTION
`
`A.
`
`“
`
`”
`
`44. As explained in my earlier declaration, a surround frame is “a frame
`
`disposed at least partially around the lens.” Ex. 1002, ¶ 86. Exemplary shapes of
`
`“surround frames” include spheroidal and cylindrical shapes, but any shape that is
`
`at least partially around the lens would also be a “surround frame,” under the
`
`broadest reasonable interpretation. I based my opinion on the following disclosure
`
`of the ’370 patent:
`
`17
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † RY
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`In this embodiment a surround frame 270 encircles the lens portion
`214. The surround frame 270 adds a decorative element but also
`provides some impact protection for the lens portion 214 should the
`fixture topple over and fall. The frame may be any decorative shape
`such as a sun, flower, moon, insect, or geometric shape. The surround
`frame may partially or fully encircle the lens portion 214 and may
`surround the lens portion 214 in two or three dimensions.
`
`Ex. 1001, 20:63-21:6.
`
`Modifications and variations as would be apparent to a skilled
`addressee are deemed to be within the scope of the present invention.
`
`18
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † RZ
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`Although the invention has been described in language specific to
`structural features and/or methodological acts, it is to be understood
`that the invention defined in the appended claims is not necessarily
`limited to the specific features or acts described. Rather, the specific
`features and acts are disclosed as exemplary forms of implementing
`the claimed invention.
`
`Ex. 1001, 27:13-21.
`
`45. A person of ordinary skill in the art, as of the priority date of the ’370
`
`patent, would have understood the above disclosure to encompass embodiments
`
`other than that depicted in FIG. 11 because “modifications and variations would be
`
`apparent” to a person of ordinary skill in the art.
`
`46.
`
`In the context of the ’370 patent, FIG. 11 illustrates a two-dimensional
`
`“surround frame.” Two-dimensional objects are purely theoretical and would not
`
`make sense; therefore, a person of ordinary skill in the art would have interpreted
`
`the disclosed “two-dimensional” embodiments as being substantially planar, like
`
`the sun 270 in FIG. 11. 8/4 Ducharme Depo., Ex. 1061, 14:21-16:2. Therefore, a
`
`two-dimensional surround frame is one that is substantially planar, in addition to
`
`being “a frame disposed at least partially around the lens.”
`
`47. A person of ordinary skill in the art would have recognized that the
`
`’370 patent places no restrictions on the disclosed three-dimensional embodiment.
`
`Indeed,
`
`I understand that
`
`the patent owner has accused non-planar,
`
`three-
`
`19
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † SQ
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`dimensional, decorative structures, such as the lady bug light below, as having
`
`“surround frames”:
`
`Ex. 1059
`
`48.
`
`Based on the patent owner’s Ex. 2042, I understand that the patent
`
`owner accused the device above of including a “surround frame,” but Dr.
`
`Ducharme disagrees with patent owner’s assessment. 8/4 Ducharme Depo., Ex.
`
`1061, 209:24-211:6 (examining Ex. 1059). I understand that the standards used to
`
`assess infringement differ from the standards relied on in IPRs. I do not know how
`
`20
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † SR
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`those standards differ; therefore, I did not perform an infringement analysis.
`
`However, under the broadest reasonable interpretation, a person of ordinary skill in
`
`the art would have understood the device in Ex. 1059 to include a “surround
`
`frame” because it includes a ladybug frame disposed at least partially around the
`
`lens.
`
`49.
`
`In addition,
`
`the ’370 patent states that
`
`the surround frame may
`
`“partially or fully encircle the lens.” The ’370 patent places no restriction on how
`
`many degrees a frame must encircle a lens to be transformed from a frame to a
`
`“surround frame.” Based on the disclosure of the ’370 patent, a person of ordinary
`
`skill in the art would not have placed a minimum bound on how much a frame
`
`must encircle a lens to constitute a “surround frame” because the ’370 patent
`
`includes no such restriction.
`
`50.
`
`Finally, the ’370 patent states, “[t]he frame may be any decorative
`
`shape such as a sun, flower, moon, insect, or geometric shape.” ’370 patent, Ex.
`
`1001, at 21:66-22:1. A person of ordinary skill in the art would have understood
`
`this disclosure to include hyperbolic or spherical,
`
`three-dimensional surround
`
`frames that completely or partially envelop or wrap around a lens. Norton discloses
`
`examples, including a flower surround frame and a jack-o-lantern surround frame
`
`(external protective element 2), below:
`
`21
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † SS
`
`

`
`Declaration of Peter Shackle
`Case No.: IPR2014-00935
`
`Norton, FIG. 1
`
`Norton, FIG. 7
`
`51.
`
`Therefore, a person of ordinary skill
`
`in the art would not have
`
`interpreted “surround frame” as arbitrarily narrowly as Dr. Ducharme does:
`
`An open structural peripheral border that encircles the lens while
`residing primarily in a plane passing through the lens, the degree of
`completeness being at least 270 degrees (like a doorway surround
`frame that is complete except for one side), the peripheral border
`being primarily either linearly one-dimensional or two-dimensional in
`the plane in which it primarily resides, any degree of thickness in a
`third dimension being relatively small such that the peripheral border
`does not substantially conceal or cover the lens outside of plane in
`which the peripheral border primarily resides.
`
`A POSA could not have applied this construction with reasonable certainty.
`
`22
`
`kŠ‚ ˜ † Š † • ‚ O f™ ‰ Šƒ Š• RQXT q‚ ˆ † ST
`
`

`
`kŠ‚˜†Š †• ‚O f™‰ŠƒŠ• RQXT q‚ˆ† SU
`
`23
`
`frame;
`surround
`partofsaid
`belowatleast
`framefrom
`saidsurround
`leastpartof
`illuminateat
`lensto
`throughsaid
`passes
`saidlight
`thatsomeof
`portionsuch
`saidriser
`frameand
`connecting
`ofsaid
`intersection
`the
`proximateto
`saidlamp
`attachedto
`frame
`asurround
`middle,andwithsubstitutedmyconstructionontheright:
`Belowisachartillustratingtheclaimlanguageontheleft,substitutedwithpatentowner’sconstructioninthe
`
`outsideofplaneinwhichtheperipheralborderprimarilyresides”;
`suchthattheperipheralborderdoesnotsubstantiallyconcealorcoverthelens
`resides,anydegreeofthicknessinathirddimensionbeingrelativelysmall
`linearlyone-dimensionalortwo-dimensionalintheplaneinwhichitprimarily
`completeexceptforoneside),theperipheralborderbeingprimarilyeither
`completenessbeingatleast270degrees(likeadoorwaysurroundframethatis
`residingprimarilyinaplanepassingthroughthelens,thedegreeof
`partofsaid“openstructuralperipheralborderthatencirclesthelenswhile
`planeinwhichtheperipheralborderprimarilyresides”frombelowatleast
`peripheralborderdoesnotsubstantiallyconcealorcoverthelensoutsideof
`degreeofthicknessinathirddimensionbeingrelativelysmallsuchthatthe
`dimensionalortwo-dimensionalintheplaneinwhichitprimarilyresides,any
`oneside),theperipheralborderbeingprimarilyeitherlinearlyone-
`atleast270degrees(likeadoorwaysurroundframethatiscompleteexceptfor
`primarilyinaplanepassingthroughthelens,thedegreeofcompletenessbeing
`ofsaid“openstructuralperipheralborderthatencirclesthelenswhileresiding
`suchthatsomeofsaidlightpassesthroughsaidlenstoilluminateatleastpart
`proximatetotheintersectionofsaidconnectingframeandsaidriserportion
`planeinwhichtheperipheralborderprimarilyresides”attachedtosaidlamp
`peripheralborderdoesnotsubstantiallyconcealorcoverthelensoutsideof
`degreeofthicknessinathirddimensionbeingrelativelysmallsuchthatthe
`dimensionalortwo-dimensionalin

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