Trials@uspto.gov Paper 65
`Tel: 571–272–7822 Entered: December 21, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`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 B2
`_______________
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`Tel: 571–272–7822 Entered: December 21, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`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 B2
`_______________
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`IPR2014-00935
`Patent 8,089,370 B2
`
`
`I. INTRODUCTION
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. With respect to the
`grounds asserted in this trial, we have considered the papers submitted by the
`parties and the evidence cited therein. For the reasons discussed below, we
`determine that Petitioner has shown, by a preponderance of the evidence, that the
`subject matter of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50 of U.S.
`Patent No. 8,089,370 B2 (Ex. 1001, “the ’370 patent”) is unpatentable. In
`addition, we deny-in-part and dismiss-in-part both Petitioner’s and Patent Owner’s
`Motions to Exclude Evidence, and we grant Petitioner’s Motion to Seal.
`
`A. Procedural History
`
`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. (collectively “Petitioner”) filed a Corrected Petition to institute an
`inter partes review (Paper 10, “Pet.”) of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43,
`45 and 48–50 of the ’370 patent. Pet. 1. Petitioner included a declaration of Peter
`W. Shackle, Ph.D. (Ex. 1002). We instituted an inter partes review of all the
`challenged claims, claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50, on
`December 22, 2014. Paper 19 (“Dec. on Inst.”). Patent Owner then filed its
`Response to Petitioner’s Petition (Paper 29, “PO Resp.”), to which Petitioner filed
`its Reply (Paper 44, “Pet. Reply”). An oral hearing was held on September 21,
`2015. Paper 64 (“Tr.”).
`Patent Owner alleged that Petitioner failed to list all real parties in interest,
`and we authorized the parties to brief the issue. Paper 32 (Motion to Terminate);
`Paper 38 (Opposition); Paper 42 (Reply). We denied the Motion to Terminate.
`2
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`Paper 52.
`There are several outstanding motions decided herein. Patent Owner filed a
`Motion to Exclude Evidence. Paper 50 (“PO Mot. Excl.”); see also Paper 57
`(Petitioner’s Opposition, “Pet. Opp. to PO Mot. Excl.”); Paper 60 (Patent Owner’s
`Reply, “PO Reply in support of PO Mot. Excl.”). Likewise, Petitioner filed a
`Motion to Exclude Evidence. Paper 49 (“Pet Mot. Excl.”); see also Paper 54
`(Patent Owner’s Opposition, “PO Opp. to Pet. Mot. Excl.”); Paper 59 (Petitioner’s
`Reply, “Pet. Reply in support of Pet. Mot. Excl.”). Lastly, Petitioner filed a
`Motion to Seal. Paper 36 (“Pet. Mot. Seal”). Patent Owner did not file an
`opposition.
`
`B. Related Proceedings
`Petitioner states that Patent Owner has filed a number of lawsuits alleging
`infringement of the ’370 patent. Pet. 3–4. Petitioner also filed three petitions for
`inter partes review of patents, owned by the same Patent Owner as named in this
`Petition, involving similar technology to that disclosed in the ’370 patent. These
`three inter partes reviews are IPR2014-00936 (instituted); IPR2014-00937
`(denied); and IPR2014-00938 (instituted).
`C. The ’370 Patent
`The ’370 patent is titled “Illuminated Wind Indicator.” Ex. 1001, 1. The
`disclosed illuminated wind indictor is a modified wind chime having a solar
`powered, rechargeable light emitting pendulum. In this manner, power can be
`accumulated during the day and used to provide illumination at night. Id. at col. 5,
`ll. 11–16.
`As shown in Figure 1 of the ’370 patent, reproduced below, wind indicator
`10 includes light device 12 and chime portion 14, light device 12 and chime
`portion 14 being suspended on support 16 provided with spike 18. Id. at col. 5, ll.
`
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`3
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`IPR2014-00935
`Patent 8,089,370 B2
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`22–26.
`
`
`
`Fig. 1 from the ’370 patent
`is a perspective view of wind indicator 10.
`As shown generally in Figure 1, light device 12 includes housing 20, lid 22,
`and light source 24. Id. at col. 5, ll. 27–31. Solar panels 30 convert solar energy to
`electrical power. Id. at col. 5, ll. 38–39. Chime portion 14 includes chime
`members 44 and a pendulum assembly suspended from housing portion 20. Id. at
`col. 5, ll. 57–60. In the example shown in Figure 1, the pendulum assembly
`includes striker disc 46 suspended using electrical wires 48, which pass from light
`4
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`IPR2014-00935
`Patent 8,089,370 B2
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`device 12 through striker disc 46 to pendulum 50. Id. at col. 5. ll. 60–64.
`Electrical wires 48 may be electrically connected to second light emitting element
`52 disposed inside pendulum 50. Id. at col. 5, l. 65–col. 6, l. 1.
`D. Illustrative Claim
`Among the challenged claims, claims 1, 5, 17, 18, 19, 28, 43 and 45 are
`independent claims. Claim 1 is directed to a “solar lamp;” claim 5 is directed to an
`“illuminated wind indicator;” claim 17 is directed to a “solar light module for
`illuminating a wind chime;” claim 18 is directed to a “lighting apparatus;” and
`claims 19, 28, 43 and 45 are directed to an “illuminated wind indicator.” Claim 1
`is illustrative of the claimed invention and is reproduced below.
`
`1. A solar lamp comprising:
`
`a riser portion;
`
`a connecting frame connected to said riser portion;
`
`at least one light source, wherein said at least one light
`source emits light directed above at least part of said riser
`portion;
`
`an at least partially light transmissive lens extending to cover
`at least part of said at least one light source and wherein light
`emitted from said at least one light source causes at least part of
`said lens to illuminate;
`
`a surround frame attached to said lamp proximate to the
`intersection of said connecting frame and said riser portion such
`that some of said light passes through said lens to illuminate at
`least part of said surround frame from below at least part of said
`surround frame;
`
`electrical connections for at least one rechargeable power
`source, wherein said riser portion positions said connections
`above a ground surface;
`
`an activation circuit to provide power to said at least one
`light source from said at least one rechargeable power source
`only at low light levels; and
`
`at least one photovoltaic panel, wherein said at least one
`photovoltaic panel is electrically connected to said at least one
`light source via said at least one rechargeable power source,
`
`
`
`5
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`IPR2014-00935
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`
`converting solar energy into electrical energy, storing said
`electrical energy and providing said electrical energy to said at
`least one light source.
`
`Date
`Filed June 11, 2004
`Pub. June 29, 2006
`Filed June 16, 2004
`Pub. Dec. 22, 2005
`Pub. Nov. 3, 1993
`
`Filed Apr. 27, 2004
`Pub. Jan. 6, 2005
`Issued Feb. 7, 1978
`
`Exhibit Number
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1014
`
`Ex. 1016
`
`Ex. 1017
`
`E. References Relied Upon
`Petitioner relies upon the following prior art references:
`
`Reference
`Norton,
`U.S. 2006/0139912 A1
`Kube,
`U.S. 2005/0279403 A1
`Ouyang (translation),
`CN 2145314Y
`Kao,
`U.S. 2005/0003120 A1
`Marchese
`U.S. Pat. No. 4,072,855
`Chen
`U.S. Pat. No. D469,909 S
`Kuelbs
`U.S. Pat. No. 6,830,009 B1
`Chliwnyj
`U.S. Pat. No. 5,924,784
`Petitioner also relies on the declaration testimony of Dr. Shackle. Exs. 1002,
`
`Issued Feb. 4, 2003
`
`Ex. 1018
`
`Issued Dec. 14, 2004
`
`Ex. 1019
`
`Issued July 20, 1999
`
`Ex. 1020
`
`1073.
`
`
`
`
`
`
`6
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`IPR2014-00935
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`
`F. The Instituted Grounds
`The following grounds of unpatentability were instituted for trial:
`
`Claim(s) Challenged
`
`1 and 48
`
`2
`
`3
`
`4, 49, and 50
`
`5, 6, 7, 9, 10, 17, 18, 19,
`20 and 23
`28, 43, and 45
`
`14
`
`Statutory Basis under
`35 U.S.C.
`§ 102(e) and § 103
`
`References
`
`Norton
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Norton and Kao
`
`Norton and Marchese
`
`Norton and Chen
`
`Kube and Ouyang
`
`Kube, Ouyang, and
`Kuelbs
`Kube, Ouyang, and
`Chliwnyj
`
`II. MOTIONS
`A. Petitioner’s Motion to Seal
`Petitioner moves to seal Exhibits 1027 and 1040, portions of Exhibits 1030,
`1051–1053, and 1055, and portions of its Opposition to Patent Owner’s Motion to
`Terminate, which are asserted to include confidential information. Pet. Mot. Seal
`2. Petitioner submitted non-confidential versions of Exhibits 1030, 1051–1053,
`and 1055 that have been redacted to remove the confidential information. Id.
`Petitioner also requests entry of the Default Protective Order. Id. at 5.
`Patent Owner did not file an opposition to the Motion to Seal.
`Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
`inter partes review are open and available for access by the public; and a party
`may file a concurrent motion to seal and the information at issue is sealed pending
`
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`IPR2014-00935
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`the outcome of the motion. It is, however, only “confidential information” that is
`protected from disclosure. 35 U.S.C. § 316(a)(7).
`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
`§ 42.54. Petitioner, as the moving party, has the burden of proof in showing
`entitlement to the requested relief. 37 C.F.R. § 42.20(c).
`The Exhibits generally relate to an internal corporate resolution, listings of
`financial account numbers, and invoices for attorney fees. See Pet. Mot. Seal 3–4.
`Counsel for Petitioner asserts that, to their knowledge, the documents sought to be
`sealed have not been published or otherwise made public. Id. at 4–5.
`Exhibit 1027 is a Southwire Holding Company corporate resolution, which
`Petitioner characterizes as an “internal document.” Id. at 3.
`Exhibit 1030 includes payment records to Dentons Canada LLP and Dentons
`US LLP and includes payment amount information.
`Exhibit 1040 is asserted to be a “confidential” internal announcement
`regarding an internal “Fast Forward” program.
`Exhibit 1051 includes copies of invoices to Coleman Cable, Inc. from
`Dentons US LLP for payments for this inter partes review proceeding, as well as
`related e-mails, and includes payment amounts and financial account number
`information.
`Exhibit 1052, in which financial account number information has been
`redacted, includes wire transfer records from Coleman Cable to Dentons US LLP
`including payment amount information.
`Exhibit 1053, in which financial account number information has been
`redacted, includes a copy of a check and a related letter regarding payments from
`Coleman Cable, LLC for this inter partes review proceeding and includes payment
`amount information.
`
`
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`IPR2014-00935
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`
`Exhibit 1055 refers to the financial, payment, and other information in the
`documents discussed above.
`Petitioner asserts that the financial, payment, and other information in the
`documents sought to be sealed is “confidential and highly sensitive commercial
`information.” Id. Petitioner also asserts that “[d]isclosure of the above
`information could put Coleman and Southwire at a commercial disadvantage, for
`instance in subsequent negotiations with other suppliers.” Id. at 4.
`The redacted versions of these documents, upon which we relied in our
`denial of Patent Owner’s Motion to Terminate (Paper 52), sufficiently disclose the
`basis for our decision, so there is little public interest in making the non-redacted
`versions publicly available. Accordingly, Petitioner has shown good cause for
`sealing Exhibits 1027 and 1040, and portions of Exhibits 1030, 1051–1053, and
`1055. We do not seal Petitioner’s Opposition to Patent Owner’s Motion to
`Terminate (Paper 38) because it was filed publicly, which we deem to be a
`withdrawal of the Motion as to this paper.
`Accordingly, we grant Petitioner’s Motion to Seal.
`The parties are reminded that confidential information that is subject to a
`protective order ordinarily becomes public 45 days after final judgment in a trial.
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761. After final judgment
`in a trial, a party may file a motion to expunge confidential information from the
`record prior to the information becoming public. See 37 C.F.R. § 42.56.
`B. Patent Owner’s Motion to Exclude Evidence
`Patent Owner moves to “exclude inadmissible evidence filed with
`Petitioner’s Reply.” PO Mot. Excl. 1. Patent Owner argues that (i) certain exhibits
`should be struck because they are belated, (ii) other exhibits violate the Federal
`Rules of Evidence, and (iii) portions of the cross-examination of its declarant,
`
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`IPR2014-00935
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`Alfred Ducharme, Ph.D., should be excluded because the questions were allegedly
`misleading, argumentative, ambiguous, and/or compound.
`Patent Owner, as the moving party, has the burden of proof in showing
`entitlement to the requested relief. 37 C.F.R. § 42.20(c).
`1. Reply Exhibits
`Patent Owner first argues that Exhibits 1063–72, 1073 (¶¶ 26, 27, 35–38,
`44–58, 60, and 74), and 1075–83 (the “Reply Exhibits”) “are belated” (id. at 2) and
`should be excluded “for a failure to comply with 37 C.F.R. § 42.23(b) (‘A reply
`may only respond to arguments raised in the corresponding opposition or patent
`owner response.’)” (id. at 3). According to Patent Owner, these exhibits should be
`excluded because they are “exhibits that could reasonably have been, but were not,
`included in an earlier filing.” Id. at 2 (emphasis added). This is not the standard
`that determines whether information in the Reply is responsive to arguments in
`Patent Owner’s Response. Patent Owner does not address the substance of why
`these documents allegedly are not responsive to the arguments in Patent Owner’s
`Response. The fact that “various internet profiles” (id. at 3) and additional
`information about “Dr. Shackle’s experience” (id.) existed at the time the Petition
`was filed, and thus theoretically could have been filed earlier, does not establish
`that they are not responsive to arguments raised in Patent Owner’s Response.
`Dr. Shackle testifies that his Second Declaration (Ex. 1073) “addresses
`issues raised by Dr. Ducharme, who I understand is patent owner’s expert, in his
`declaration and, where appropriate, statements made by Dr. Ducharme during his
`deposition.” Ex. 1073 ¶ 6. Patent Owner’s Reply also suggests that the Reply
`Exhibits are merely evidence responding to the continuing dispute about the merits
`of the case discussed in Patent Owner’s Response. See, e.g., PO Reply in support
`of PO Mot. Excl. 3–4 (arguing the merits of Petitioner’s assertion of obviousness
`
`
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`10
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`IPR2014-00935
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`of the wind chime claims based on the Kube and Ouyang references).
`We have reviewed the arguments in Petitioner’s Reply and Petitioner’s
`citations therein to the Reply Exhibits and are persuaded that the Reply Exhibits
`are responsive to Patent Owner’s arguments and evidence in Patent Owner’s
`Response. Accordingly, we deny Patent Owner’s Motion to Exclude the Reply
`Exhibits.
`
`2. Federal Rules of Evidence
`Patent Owner seeks to exclude a number of exhibits because they allegedly
`do not comply with Federal Rules of Evidence (“FRE”) 401 (relevance), 403
`(prejudice, confusion, delay, cumulativeness), 602 (personal knowledge), and 801
`and 802 (hearsay). PO Mot. Excl. 5–6.
`a. Personal Knowledge and Hearsay
`Patent Owner asserts that “Exhibits 1064, 1070, 1072, 1073 (¶¶ 26, 27), and
`1076–83 violate FRE 602, 801, and 802, and thus, should be excluded from further
`consideration.” Id. at 5.
`Patent Owner seeks to exclude paragraphs 26 and 27 of Exhibit 1073
`(Second Declaration of Dr. Shackle) because, according to Patent Owner, “they
`include hearsay statements and Dr. Shackle offers factual observations without
`laying a proper foundation or otherwise demonstrating personal knowledge of the
`recited facts.” in violation of Federal Rules of Evidence 602, 702, 703, 801, and
`802. Id. at 4. Patent Owner also argues that “Exhibits 1069–71 and 1076–83,”1
`which are profiles obtained from websites such as LinkedIn and are offered to
`show the educational background of various inventors, are hearsay and thus should
`
`1 Patent Owner’s reference to Exhibit 1069 appears to be an error. Exhibit 1069 is
`not referred to in paragraphs 26 and 27 of Exhibit 1073, and it is not a “profile,” as
`characterized by Patent Owner. Exhibit 1069 relates to “Hybrid Axial Flux
`Machines.”
`
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`IPR2014-00935
`Patent 8,089,370 B2
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`be excluded. Id. Additionally, Patent Owner asserts we should exclude Exhibit
`1064 because it contains hearsay. Id. at 5.
`Because we do not rely on Exhibits 1064, 1070, 1071, 1073 (¶¶ 26, 27), and
`1076–1083, we dismiss this aspect of the motion as moot.
`b. Relevance and Prejudice
`Patent Owner asserts that Exhibits 1063–1068, 1072, 1073 (¶¶ 44–58, 60,
`and 74), and 1075 “lack any probative value in violation of FRE 401 and are
`unduly prejudicial to Patent Owner in violation of FRE 403.” PO Mot. Excl. 6.
`As characterized by Patent Owner, Exhibits 1063, 1065–67, and 1072 relate
`to Petitioner’s argument and construction of the term “surround frame” in the
`challenged claims and “whether the prior art, namely the reference Norton, teaches
`a surround frame.” Id. Exhibits 1066 and 1068 (dictionary definitions) and
`Exhibit 1067 (list of synonyms for the term “surround”) also are relevant to the
`issues in this case. Patent Owner objects to Dr. Shackle’s Second Declaration (Ex.
`1073), paragraphs 44–58, 60, and 74, because it relies on Exhibits 1063–68 and
`1072.
`Exhibit 1064 (website document concerning wind chimes) and Exhibit 1075
`(Lighting Handbook) also are relevant to the subject matter of this case.
`According to Patent Owner, “[a]ny probative value of Exhibits 1063, 1065,
`and 1072 is strongly outweighed by the unfair prejudice to Patent Owner resulting
`in confusing of the issues, misleading the Board, undue delay, and wasting time, in
`violation of FRE 403.” Id. We disagree.
`The evidence at issue in Patent Owner’s Motion regarding the construction
`of the term “surround frame” and lighting technology clearly is relevant to the
`issues in this case. It is well-settled that judges are free to consult dictionaries at
`any time in order to better understand the underlying technology as long as “the
`
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`dictionary definition does not contradict any definition found in or ascertained by a
`reading of the patent documents.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1585 n.6 (Fed. Cir. 1996); see generally infra Section III.A.
`A motion to exclude is not a vehicle for addressing the weight to be given
`evidence. In considering whether evidence is probative, confusing, or misleading,
`we consider the forum in which the motion is presented. “The Board is comprised
`of a tribunal of judges ‘of competent legal knowledge and scientific ability.’
`35 U.S.C. § 6(a). There is no jury to impress, convince, or confuse in our
`proceedings. Moreover, we are capable of assigning the weight to be given
`evidence, including assigning ‘no weight.’” FLIR Sys., Inc. v. Leak Surveys, Inc.,
`Case IPR2014-00411, slip op. at 5 (PTAB Sept. 3, 2015) (Paper 113). Similar to a
`district court in a bench trial, the Board, sitting as a non-jury tribunal with
`administrative expertise, is well-positioned to determine and assign appropriate
`weight to evidence presented. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d
`215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the
`admissibility of evidence is equally capable of sifting it accurately after it has been
`received . . . .”).
`Based on the analysis above, we deny Patent Owner’s Motion to Exclude as
`to Exhibits 1063–1068, 1072, 1073 (¶¶ 44–58, 60, and 74), and 1075.
`3. Cross-Examination Testimony
`Patent Owner argues that four excerpts of the cross-examination, deposition
`testimony of its declarant, Dr. Ducharme, in Exhibits 1061 and 1062, should be
`excluded. PO Mot. Excl. 9–14. For each of the four excerpts, Patent Owner
`asserts that Dr. Ducharme’s testimony should not be treated as standing for the
`notions upon which Petitioner argues, and that it is inadmissible. See, e.g., id. at
`10 (“In addition to the cited excerpts not offering support for Petitioner’s
`
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`mischaracterization, the testimony . . . is inadmissible because the question was
`ambiguous and misleading,” and the line of questioning “has low probative value
`and is confusing and results in undue prejudice . . . .”). As discussed above, we
`will make our own judgments as to what extent, if any, Dr. Ducharme’s testimony
`supports the parties’ respective positions and whether the testimony is competent,
`material, and convincing, or whether testimony is based on an unclear, ambiguous
`question, or prejudicial. Accordingly, we deny Patent Owner’s motion to exclude
`the four excerpts from Dr. Ducharme’s deposition testimony.
`In summary, we deny-in-part and dismiss-in-part Patent Owner’s Motion to
`Exclude.
`
`C. Petitioner’s Motion to Exclude Evidence
`Petitioner, as the moving party, has the burden of proof in showing
`entitlement to the requested relief. 37 C.F.R. § 42.20(c).
`Petitioner first moves to exclude Exhibits 2054, 2062, 2064, 2066, and 2076
`in their entirety, portions of Papers 29 and 32, which are Patent Owner’s Response
`and Patent Owner’s Motion to Terminate, respectively, and evidence submitted
`with Patent Owner’s observations. Pet Mot. Excl. 2.
`1. Exhibits 2054, 2062, 2064, 2066, and 2076
`According to Petitioner, Exhibits 2054, 2062, 2064, 2066, and 2076 should
`be excluded because they are “inadmissible hearsay.” Id. at 2. Petitioner also
`asserts that Patent Owner’s Motion to Terminate, Paper 32, pages 8–9, should be
`excluded because it is argument that relies on Exhibits 2054, 2062, 2064, 2066,
`and 2076. Id. at 3.
`Patent Owner asserts that this matter is moot because we denied the Motion
`to Terminate. PO Opp. Pet. Mot. Excl. 2.
`
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`Petitioner argues that Patent Owner possesses a right to appeal denial of the
`Motion to Terminate, and therefore, the issue is not moot. Pet. Reply in support of
`Pet. Mot. Excl. 1.
`We denied Patent Owner’s Motion to Terminate on August 21, 2015 (Paper
`52). Accordingly, we dismiss Petitioner’s Motion as to these Exhibits and portions
`of Paper 32 as moot.
`2. Testimony Regarding “Retrospective Review”
`Petitioner moves to exclude under FRE 402 and 403 as confusing,
`misleading, and irrelevant selected portions of: (1) Dr. Shackle’s deposition
`testimony in Ex. 2024;2 (2) Patent Owner’s Response; and (3) Dr. Ducharme’s
`declaration testimony in Ex. 2022 ¶ 35. Pet. Mot. Excl. 4. Petitioner argues that
`this evidence represents “only snippets” of the testimony regarding Patent Owner’s
`argument that Dr. Shackle used “hindsight” and a “retrospective review” in
`forming his opinions. Id.
`We deny Petitioner’s Motion to Exclude this evidence. This panel acts as
`both the gatekeeper of evidence and as the weigher of evidence. We base our
`decision on the totality of the evidence, including the full deposition transcripts
`filed in this proceeding. Rather than excluding evidence that is allegedly
`confusing, misleading, and/or irrelevant, we will give it appropriate weight in our
`analysis, including, if appropriate, no weight.3
`
`
`2 Deposition Testimony of Dr. Peter W. Shackle, Vol. 2, pages 196–361.
`3 “The trial judge is in the best position to weigh considerations such as the
`closeness of the case, the tactics of counsel, the conduct of the parties, and any
`other factors that may contribute to a fair allocation of the burdens of litigation as
`between winner and loser.” S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 781
`F.2d 198, 201 (Fed. Cir. 1986).
`
`
`
`15
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`
`3. Dr. Shackle’s Deposition Testimony
`Concerning the “Unified Glare Rating” Formula
`Petitioner moves to exclude under FRE 402 and 403 as being irrelevant
`cross-examination testimony of Dr. Shackle concerning an equation called the
`“Unified Glare Rating” formula. Pet. Mot. Excl. 4–5. We deny Petitioner’s
`Motion to Exclude this cross-examination testimony evidence.
`The ’370 patent does not use the word “glare.” Dr. Ducharme, Patent
`Owner’s declarant, testified that the ’370 patent uses glare to illuminate the
`chimes. Ex. 2022 ¶ 170. Dr. Shackle testified on cross-examination that he was
`“not aware” of “something called a Unified Glare Rating.” Ex. 2084, p. 100, ll. 6–
`8. Petitioner argues, without citation of evidentiary support, that the Unified Glare
`Rating “is used to assess glare caused by street lights that use 200+ watts of energy
`from an AC voltage source.” Pet. Mot. Excl. 5. Petitioner bases its assertion that
`Dr. Shackle’s testimony on this topic is irrelevant because “garden lights or wind
`chimes typically use about 1 watt of energy from a relatively small battery.” Id.
`Again, Petitioner cites no evidence to support its position. Thus, based on the
`evidence before us, the evidence does not establish that Dr. Shackle’s testimony on
`the Unified Glare Rating formula is irrelevant.
`As explained above, we base our decision on the totality of the evidence,
`weigh the evidence Petitioner moves to exclude in the context of other evidence,
`and give the evidence Petitioner moves to exclude appropriate weight in our
`analysis, including no weight.
`In summary, we deny-in-part and dismiss-in-part Petitioner’s Motion to
`Exclude.
`
`
`
`16
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`
`D. Patent Owner’s Motion for Observation
`Patent Owner filed a Motion for Observation (Paper 51) on the
`cross-examination of Dr. Shackle, which took place after Petitioner filed its Reply.
`Petitioner filed a Response (Paper 56). We have considered Patent Owner’s
`observations and Petitioner’s responses in rendering our decision.
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim Construction); In re
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hen
`interpreting a claim, words of the claim are generally given their ordinary and
`accustomed meaning, unless it appears from the specification or the file history
`that they were used differently by the inventor.” In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. Id.
`Only terms which are in controversy need to be construed, and then only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`We determine that the term “surround frame,” used in claims 1, 4, 49, and
`50, and the term “emits light,” used in claims 1, 5, 7, 9, 10, 11, 18, 19, 23, 24, and
`28, require specific construction.
`1. Surround Frame
`Counsel for Patent Owner acknowledged that the construction of the term
`“surround frame” is the “controlling issue” with respect to the challenges to claims
`17
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`1–4 and 48–50. Tr. 47, l. 22–48, l. 2. As we discuss below, the construction of
`this term involves consideration of the difference between two-dimensional and
`three-dimensional objects, and the difference between a structure that surrounds an
`object and one that encircles an object. Our task is made more challenging because
`of the minimal intrinsic evidence related to this issue.
`To ascertain the scope and meaning of the claim term “surround frame,” we
`look to the words of the claims themselves, the specification, the prosecution
`history, and any relevant extrinsic evidence. In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1286 (Fed. Cir. 2015). The specification is always highly relevant
`to the claim construction analysis. “Usually, it is dispositive; it is the single best
`guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`a. The Claims
`Four claims, claims 1, 4, 49 and 50, contain a specific recitation of some
`feature of the “surround frame.” Claims 2, 3, and 48 depend from claim 1. Thus,
`the claims that include directly or through dependency a “surround frame” element
`are claims 1–4, and 48–50. With respect to the surround frame, claim 1 recites:
`a surround frame attached to said lamp proximate to the
`intersection of said connecting frame and said riser portion such
`that some of said light passes through said lens to illuminate at
`least part of said surround frame from below at least part of said
`surround frame.
`Thus, claim 1 does not recite a specific shape, structure, orientation, or material for
`the “surround frame.” It merely states where the “surround frame” is attached, in
`relation to the lamp, connecting frame, and riser portion, and the functional result
`of that attachment, that some light passes through the lens “to illuminate at least
`part of said surround frame from below.”
`
`
`
`18
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`
`Claim 4, dependent from claim 1, further recites that the lens is substantially
`spherical and that the “surround frame at least partially encircles said lens.” See
`also Ex. 1001, col. 22, ll. 1–2 (“The surround frame may partially or fully encircle
`the lens portion 214 . . . .”).
`Claim 49, dependent from claim 4, further recites a specific shape for the
`“surround frame,” which includes a shape “selected from the group consisting of
`an insect, flower, geometric shape, and astronomical shape.” See also id., col. 21,
`l. 66–col. 22, l. 1 (“The frame may be any decorative shape such as a sun, flower,
`moon, insect, or geometric shape.”).
`Claim 50, dependent from claim 1, also recites that the lens is substantially
`spherical (see claim 4) and further recites that the “surround frame at least
`partially surrounds said lens.” The only difference between claim 50 and claim 4
`is that claim 50 states that the surround frame “surrounds” the lens, whereas claim
`4 states that the surround frame “encircles” the lens. Under the patent law doctrine
`of claim differentiation, this would suggest that “encircles” and “surrounds” have
`different meanings.
`We recognize that the doctrine of claim differentiation is “based on the
`common sense notion that different words or phrases used in separate claims are
`presumed to indicate that the claims have different meanings and scope.” Karlin
`Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999). The
`doctrine is “not a hard and fast rule, but instead ‘a rule of thumb that does not
`trump the clear import of the specification.’” Starhome GmbH v. AT & T Mobility
`LLC, 743 F.3d 849, 858 (Fed. Cir. 2014) (quoting Edwards Lifesciences LLC v.
`Cook Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009)). We conclude that claim
`differentiation applies in this context, primarily because the Specification supports
`such a reading, as explained below. Independent claim 1, which only recites a
`
`
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`IPR2014-00935
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`“surround frame,” is broader than dependent claims 4 and 50, and the terms
`“surround” and “encircle” in claims 4 and 50 mean different things, with
`“surround” being the broade
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