throbber
Trials@uspto.gov
`Tel: 571–272–7822
`
`Paper 67
`Entered: December 15, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP.,
`SMART SOLAR, INC., and TEST RITE PRODUCTS CORP.,
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`Case IPR2014-00936
`Patent 7,196,477 B2
`_______________
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`Granting Motion to Seal
`37 C.F.R. § 42.55
`Denying-in-Part and Dismissing-in-Part Motions to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`

`
`IPR2014-00936
`Patent 7,196,477 B2
`
`
`I. BACKGROUND
`
`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 1–29 of
`U.S. Patent No. 7,196,477 B2 (Ex. 1001, “the ’477 patent”) is unpatentable.
`In addition, we deny-in-part and dismiss-in-part Petitioner’s and Patent
`Owner’s Motions to Exclude Evidence, and we grant Petitioner’s Motion to
`Seal.
`
`A. Procedural History
`
`Petitioner filed a revised Petition to institute an inter partes review
`(Paper 14, “Pet.”) of the ’477 patent on June 30, 2014. Pet. 1. Patent Owner
`filed a Preliminary Response. Paper 20 (“Prelim. Resp.”). We instituted an
`inter partes review of claims 1–29 of the ’477 patent on December 16, 2014.
`Paper 21 (“Dec. on Inst.”). Patent Owner then filed his Response to
`Petitioner’s Petition (Paper 31, “PO Resp.”), to which Petitioner filed its
`Reply (Paper 48, “Pet. Reply”). An oral hearing was held on September 21,
`2015. Paper 66 (“Tr.”).
`Patent Owner alleged that Petitioner failed to list all real parties in
`interest and we authorized the parties to brief the issue. Paper 34 (Motion to
`Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied
`Patent Owner’s Motion to Terminate. Paper 56.
`
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`Patent 7,196,477 B2
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`
`There are several outstanding motions decided herein. Patent Owner
`filed a Motion to Exclude Evidence. Paper 53 (“PO Mot. Excl.”); see also
`Paper 60 (Petitioner’s Opposition, “Pet. Opp. PO Mot. Excl.”); Paper 62
`(Patent Owner’s Reply, “PO Reply PO Mot. Excl.”). Likewise, Petitioner
`filed a Motion to Exclude Evidence. Paper 55 (“Pet. Mot. Excl.”); see also
`Paper 58 (Patent Owner’s Opposition, “PO Opp. Pet. Mot. Excl.”); Paper 61
`(Petitioner’s Reply, “Pet. Reply Pet. Mot. Excl.”). Lastly, Petitioner filed a
`Motion to Seal. Paper 40 (“Pet. Mot. Seal”). Patent Owner did not file an
`opposition to Petitioner’s Motion to Seal.
`
`B. Related Matters
`
`Petitioner states that Patent Owner has asserted a number of lawsuits
`against the Petitioner companies alleging infringement of the ’477 patent.
`Pet. 3–4; Paper 18, 3; Paper 19, 3–4. Petitioner and Patent Owner also are
`involved in other inter partes reviews: IPR2014-00935 (U.S. Patent No.
`8,089,370 B2) (instituted), IPR2014-00937 (U.S. Patent No. 8,362,700 B2,
`“the ’700 patent”) (denied), and IPR2014-00938 (U.S. Patent No. 7,429,827
`B2, “the ’827 patent”) (instituted). Pet. 4; Paper 19, 1. The ’700 patent is a
`continuation-in-part of the ’827 patent, which is a continuation-in-part of the
`’477 patent.
`
`C. The ’477 Patent
`
`The ’477 patent describes a solar powered light that produces light of
`varying color. Ex. 1001, 1:6–8. According to the ’477 patent, producing
`light of a variable color is known, and solar powered “garden lights” are
`known. Id. at 1:12–20. The claimed invention “overcome[s] or
`substantially ameliorate[s] at least one of the . . . disadvantages” of the prior
`
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`IPR2014-00936
`Patent 7,196,477 B2
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`art, which includes “difficulty in adjusting the various lighting functions”
`and “not producing a uniform desired colour.” Id. at 1:21–30.
`
`D. Exemplary Claims
`
`Of the claims challenged, claims 1 and 20 are independent. Claim 1 is
`reproduced below.
`1. A lighting device to produce light of varying
`colour, said device including:
`a body including a spike;
`a
`lens mounted on
`the body and generally
`enclosing a chamber having an upper rim
`surrounding a top opening, and a bottom
`region;
`a cap assembly including securing means to
`releasably engage the rim so that the cap
`assembly can be selectively removed from the
`lens; said assembly including:
`a base; and
`a circuit having at least two lamps of different
`colours to produce a desired colour including a
`varying colour, the lamps being mounted to
`direct light into said chamber, connections for
`at least one rechargeable battery to power the
`circuit and a solar cell mounted on a surface of
`the assembly so as to be exposed to light and
`operatively associated with the connections to
`charge the battery, and a switch operated to
`control delivery of electric power from the
`battery to operate said circuit, the switch being
`exposed to provide for access thereto by a user.
`
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`IPR2014-00936
`Patent 7,196,477 B2
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`
`E. Prior Art and Asserted Grounds
`
`References
`Chliwnyj,1 Wu,2 and Hung3
`Chliwnyj, Wu, Hung, and Pu4
`Chliwnyj, Wu, Hung, and Xu5
`Chliwnyj, Wu, Hung, Xu, and Pu
`
`
`Basis under
`35 U.S.C.
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1, 2, 4–9, 20–22, and 26
`10–12, 23–25, and 27–29
`3 and 13–16
`17–19
`
`II. MOTIONS
`
`A. Petitioner’s Motion to Seal
`
`Petitioner moves to seal Exhibits 1018 and 1031, portions of Exhibits
`
`1021, 1042–1044, and 1046, and portions of its Opposition to Patent
`Owner’s Motion to Terminate.6 Pet. Mot. Seal 2. Petitioner proposes entry
`of the Default Protective Order. Id. at 5; see Office Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,769–71 (Aug. 14, 2012). Petitioner has provided
`redacted versions of Exhibits 1021, 1042–1044, and 1046. Pet. Mot. Seal 2.
`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. The redacted versions of these documents, upon which
`
`
`1 U.S. Patent No. 5,924,784, issued July 20, 1999 (Ex. 1005).
`2 U.S. Patent Application Publication No. US 2003/0201874 A1, published
`Oct. 30, 2003, filed Apr. 24, 2002 (Ex. 1006).
`3 PCT Application WO 91/02192, published Feb. 21, 1991 (Ex. 1016).
`4 Chinese Patent Publication No. CN 2522722Y, published Nov. 27, 2002
`(Ex. 1008) (certified translation).
`5 Chinese Patent Publication No. CN 2541713Y, published Mar. 26, 2003
`(Ex. 1012) (certified translation).
`6 Petitioner filed two such oppositions, Papers 42 and 43, but neither appears
`to have been filed with confidentiality restrictions.
`
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`we relied in our denial of Patent Owner’s Motion to Terminate (Paper 56),
`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 1018 and
`1031, and portions of Exhibits 1021, 1042–1044, and 1046. We do not seal
`Papers 42 and 43 (which appear to be identical copies) because they were
`filed publicly, which we deem to be a withdrawal of the Motion as to these
`papers.
`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 first argues that Exhibits 1050–1066 should be excluded
`
`because they are “exhibits that could reasonably have been, but were not,
`included in an earlier filing.” PO Mot. Excl. 2. Patent Owner’s argument is
`that, essentially, because it was possible that these documents could have
`been filed earlier, they cannot later be filed. See id. at 1–4. We reject such a
`literal reading of 37 C.F.R. § 42.23(b). We have reviewed the arguments in
`Petitioner’s Reply and Petitioner’s citations therein to Exhibits 1050–1066,
`and are persuaded that Petitioner presents arguments and evidence that are
`properly responsive to Patent Owner’s arguments and evidence. We find
`
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`
`this to be a proper use of Reply exhibits and deny Patent Owner’s Motion on
`this basis.
`Patent Owner then argues that paragraphs 26 and 27 of Exhibit 1050
`should be excluded “because they include hearsay statements and
`[Petitioner’s declarant, Peter W. Shackle, Ph.D.] offers factual observations
`without laying a proper foundation or otherwise demonstrating personal
`knowledge of the recited facts.” PO Mot. Excl. 4. Patent Owner argues
`Exhibits 1051–1060 should also be excluded for similar reasons. Id. at 5.
`Exhibits 1051–1060 are profiles obtained from websites such as LinkedIn
`and are offered to show the educational background of various inventors.
`See Ex. 1050 ¶¶ 26–27. Because we do not rely on Exhibits 1051–1061, we
`dismiss this aspect of the motion as moot.
`Patent Owner then argues that Exhibits 1061–1063, which contain
`dictionary definitions of the word “varying,” should be excluded under
`Federal Rule of Evidence 401 and 403 “because they lack any probative
`value” and “are unduly prejudicial to Patent Owner.” PO Mot. Excl. 5–6.
`Given that the term “varying” appears in the claims and that Patent Owner
`argues a construction for the term in his Response (PO Resp. 14–17), these
`definitions have probative value. Further, Patent Owner has not offered a
`cogent explanation as to how these dictionary definitions are unduly
`prejudicial. We do not exclude Exhibits 1061–1063.
`Patent Owner argues that various excerpts of the testimony of his
`declarant, Alfred Ducharme, Ph.D., should be excluded from Exhibit 1049.
`PO Mot. Excl. 6–12. Reviewing Patent Owner’s explanation, it appears that
`he is simply arguing that Dr. Ducharme’s testimony should not be treated as
`standing for the notions upon which Petitioner argues. See, e.g., id. at 11
`
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`(“Petitioner cited the above excerpt as support for [a position]. Not only do
`the cited excerpts offer no support for that characterization, but the
`testimony . . . is inadmissible because the question . . . is ambiguous,
`argumentative, and misleading.”). We will make our own judgments as to
`what extent, if any, Dr. Ducharme’s testimony supports Petitioner’s
`positions and to what extent the answer given is based on an unclear or
`ambiguous question, to the extent we rely on that testimony at any point in
`our analysis below. Accordingly, we do not exclude the testimony.
`In view of the above, we deny-in-part and dismiss-in-part Patent
`Owner’s Motion to Exclude.
`
`C. Petitioner’s Motion to Exclude
`
`Petitioner first moves to exclude Exhibits 2034, 2042, 2044, 2046, and
`
`2054. Pet. Mot. Excl. 2–3. This evidence was provided in support of Patent
`Owner’s Motion to Terminate, which we denied on August 21, 2015 (Paper
`56). This evidence was not considered and the Motion was denied. We
`dismiss Petitioner’s Motion as to these Exhibits as moot.
`
`Petitioner next moves to exclude portions of Dr. Shackle’s testimony
`in Exhibits 2022 and 2023 as confusing, misleading, and/or irrelevant. Pet.
`Mot. Excl. 4–7. We decline to exclude this evidence. This panel acts as
`both the gatekeeper of evidence and as the weigher of evidence. Rather than
`excluding evidence that is allegedly confusing, misleading, and/or irrelevant,
`we will simply not rely on it or give it little weight, as appropriate, in our
`analysis. Accordingly, we deny-in-part and dismiss-in-part Petitioner’s
`Motion to Exclude.
`
` 8
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`IPR2014-00936
`Patent 7,196,477 B2
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`
`D. Patent Owner’s Motion for Observation
`
`Patent Owner filed a Motion for Observation (Paper 54) on the
`cross-examination of Dr. Shackle, which took place after Petitioner filed its
`Reply. Petitioner filed a Response (Paper 59). We have considered Patent
`Owner’s observations and Petitioner’s responses in rendering our decision.
`
`III. PATENTABILITY ANALYSIS
`
`A. The Level of Ordinary Skill in the Art
`
`The parties differ significantly in their positions as to the level of
`ordinary skill in the art for the ’477 patent. We have reviewed the
`arguments of Patent Owner (PO Resp. 2–12) and Petitioner (Pet. 7–8; Pet.
`Reply 2–7).
`In general, Patent Owner seeks to define the person of ordinary skill
`in the art as a person having little if any technical skill. PO Resp. 8.
`According to Patent Owner, this person is focused on the “physical
`ornament[al]” design of the products, but not the “relatively unsophisticated
`electrical circuits.” Id. at 5; see also id. (characterizing a person of ordinary
`skill in the art as having “limited mechanical and electrical skills” and “only
`know[ing] the basics of electrical components and circuits that are
`commonly used in solar garden lights”). To that end, a person of ordinary
`skill in the art, according to Patent Owner, only has “the ability to recognize
`how a pre-designed circuit may operate and the ability to combine such a
`circuit into a pre-designed solar garden light . . . making only simplistic
`changes to the exterior aesthetic of the product.” Id. at 3.
`Petitioner argues that a person of ordinary skill in the art has technical
`knowledge, such as an electrical engineering background or equivalent
`
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`Patent 7,196,477 B2
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`experience. Pet. 7–8. In its Reply, Petitioner points out that patent
`specifications are addressed to a person of ordinary skill in the art, and that
`Patent Owner’s proposed person of ordinary skill in the art would seemingly
`be unable to understand the ’477 patent (particularly the circuit diagram in
`Figure 9) and the art of record. Pet. Reply 3.
`In determining the level of ordinary skill in the art, a court may
`consider various factors, including the “type of problems encountered in the
`art; prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
`955, 962 (Fed. Cir. 1986)). The prior art itself is often the best guide as to
`the level of skill in the art. Id.; Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`The ’477 patent, Chliwnyj, Wu, Xu, and Pu include circuit diagrams.
`The parties seem to be in agreement that a person of ordinary skill in the art
`would be capable of reading the diagrams and understanding what
`function(s) they perform, at least at some level. PO Resp. 3 (a person of
`ordinary skill in the art has “the ability to recognize how a pre-designed
`circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art
`“would have been able to understand the patent’s descriptions and
`drawings”). Patent Owner’s position, however, seems to be that although a
`person of ordinary skill in the art would recognize what these circuits do, he
`or she would be unable to make any modifications to those circuits and
`would only be capable of taking them whole cloth and inserting them into
`another device. Patent Owner would seemingly limit the person of ordinary
`
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`Patent 7,196,477 B2
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`skill in the art to ornamental design changes only. We reject the notion that
`a person of ordinary skill in the art would only be capable of making
`ornamental design variations. Under Patent Owner’s proposed level of skill,
`any functional modification would be beyond the level of ordinary skill in
`the art and render the modified device patentable (so long as it was not
`anticipated); this proposed level of skill is so low it eviscerates the notion of
`obviousness.
`Instead, upon review of the record before us, we find that a person of
`ordinary skill in the art is able to comprehend what is being shown in the
`prior art and has some ordinary level of creativity with respect to their
`modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
`person of ordinary skill is also a person of ordinary creativity, not an
`automaton.”). We agree with Petitioner that a person of ordinary skill in the
`art at the time of the ’477 patent7 would have had a graduate degree in
`electrical or electronics engineering or physics with experience in circuit
`design, or a bachelor’s degree in electrical or electronics engineering or
`physics with at least two years industrial experience and experience in
`circuit design, and apply that level of skill for purposes of this Decision. See
`Ex. 1002 ¶ 36.
`
`B. Dr. Shackle is Qualified to Testify to the
`Level of Ordinary Skill in the Art
`
`Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not
`qualified to testify as to the level of ordinary skill in the art. PO Resp. 13–
`14. Patent Owner argues that, for example, he “has never supervised
`
`7 The ’477 patent was filed in February 2004 and claims priority to a foreign
`application filed in December 2003.
`
`
`11
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`IPR2014-00936
`Patent 7,196,477 B2
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`engineers in the design of solar lights.” Id. at 13. Patent Owner argues we
`should give his declarant, Dr. Ducharme, more weight because Dr.
`Ducharme is allegedly better qualified. Id. We weigh competing testimony
`of witnesses on an observation-by-observation basis, based on the witness’s
`skills and experience, as well as the reasoning and evidence they offer with
`respect to that particular observation. Further, we are not persuaded that Dr.
`Shackle would not have been a person of ordinary skill in the art at the time
`of the invention simply for not being a supervisor of engineers designing
`solar lights. Instead, we find that Dr. Shackle has ample experience in the
`field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5;
`Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr.
`Shackle is qualified to testify).
`
`C. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276 (Fed.
`Cir. 2015). Under the broadest reasonable interpretation standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`We construed the terms “desired colour,”8 “varying colour,” and
`
`“securing means” in our Decision on Institution as follows:
`
`
`8 The written description of the ’477 patent generally, but not always, uses
`the British spelling, “colour.” See Ex. 1001 (54), (57) (spelling “color”).
`
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`
`“desired color”: a color that is desired by the user or intended by the
`designer;
`“varying colour”: a perceptible changing of color over time;
`“securing means”: function of releasably engaging the rim so that the
`cap assembly can be selectively removed from the lens, and corresponding
`structure of flange segments 36.
`Dec. on Inst. 6–10.
`The terms “desired colour” and “securing means” are not at issue in
`this Decision. We do not perceive any reason or evidence that now compels
`any deviation from our prior interpretations, and apply them for purposes of
`this Decision. Patent Owner proposes a construction of “lamp” (PO Resp.
`17) but we do not construe this term because it is unnecessary to the
`outcome of this proceeding. We thus turn to Patent Owner’s proposed
`construction of “varying colour.”
`
`“varying colour”
`
`Patent Owner disagrees with our prior construction of “varying
`
`colour.” PO Resp. 14–17. Patent Owner argues that the term should be
`construed as “color that changes over time by varying the intensity of one or
`more of the lamps with time.” Id. at 15.
`
`In our Decision on Institution, we did not adopt Petitioner’s or Patent
`Owner’s proposed constructions of this term because we determined that
`both proposed constructions focused too much on how the varying color was
`created rather than what was varying color. Dec. on Inst. 6–8. Or, to put it
`another way, we determined that the claim required a particular observable
`
`We use the word “color” unless quoting the claim language.
`
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`phenomenon (varying color) from a particular structure (a circuit having at
`least two lamps) but did not limit the manner in which the structures were
`operated to achieve that result. As we stated then, we declined to
`incorporate any particular way to create varying color because the
`specification of the ’477 patent does not so limit the term. Id. at 7. For that
`reason, we construed “varying colour” as “a perceptible changing of color
`over time.” Id. at 8.
`Patent Owner argues that we should construe the term the same as it
`was construed in a district court action, but Patent Owner offers no
`explanation as to why.9 See PO Resp. 15. Patent Owner previously argued
`that we should not adopt the district court’s construction, but rather a
`modified version thereof, because that construction “is not binding on Patent
`Owner because it was based upon a stipulation by the parties in [that] case.”
`Prelim. Resp. 22 n.14 (emphasis added).10 In either event, district court
`claim construction standards are different from ours and, although it is often
`helpful to consider a district court’s analysis and construction of a term, the
`decision is less helpful here because the parties to that action stipulated to
`the term’s meaning. Nevertheless, we have considered the evidence before
`
`
`9 Patent Owner cites Exhibit 2006, but that is merely the Markman order
`listing the claim constructions; no analysis is present. The Markman
`transcript provided (Ex. 2007) is only an excerpt of one page and, without
`appropriate context, is not useful to us. The memorandum opinion (Ex.
`2008) is a decision by the court to deny summary judgment of invalidity; the
`discussion of “varying colour” is limited to application of the stipulated
`construction.
`10 Petitioner was not a party to that suit. Prelim. Resp. 22.
`
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`us regarding the term’s interpretation in the district court proceeding. See n.
`9.
`
`Patent Owner then sets forth a number of bullet points that appear to
`discuss the testimony of Petitioner’s declarant, Dr. Shackle. The first point
`discusses the word “varying” and how it is a present participle, implying that
`Patent Owner is arguing that the term refers to an action. See PO Resp. 15.
`The claims are not method claims, however. The word “varying” modifies
`the term “colour,” and “varying colour” is claimed as the output of a circuit
`having lamps of different colors. There is nothing from the context of the
`claim or any rule of grammar that mandates that a present participle be an
`action. Indeed, as in the claim here, present participles often act as
`adjectives.11 For example, Petitioner, who argues the prior construction is
`correct, offers a thesaurus entry showing “varying” as a modifier word,
`having synonyms including “differing” and “changing.” Ex. 1061, 3; Pet.
`Reply 9–10. Our construction of “varying colour” as “a perceptible
`changing of color over time” is consistent with this use of the term.
`We have reviewed the remainder of Patent Owner’s argument and do
`not find it persuasive for Patent Owner’s offered construction. See PO Resp.
`14–17. Thus, for the reasons expressed herein and in our Decision on
`Institution, we interpret “varying colour” to mean a perceptible changing of
`color over time.
`We further note that Patent Owner states that he “will apply the
`Board’s construction,” and makes similar statements in another paper. Id. at
`17; PO Opp. Pet. Mot. Excl. 2 (“the Board in its Decision chose its own
`
`
`11 Exciting book, boring flight, differing opinions, interesting argument, etc.
`
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`construction of varying color . . . which for purposes of the IPR proceeding
`neither party contested”). Although we take such stances by the parties into
`consideration,12 preliminary constructions in Decisions on Institution are not
`final and agreements by the parties as to claim construction are not binding
`on us.
`
`D. The Chliwnyj, Wu, and Hung Ground
`
`Petitioner asserts that claims 1, 2, 4–9, 20–22, and 26 are unpatentable
`
`in view of Chliwnyj, Wu, and Hung. Pet. 17–34. In general, Petitioner cites
`to Chliwnyj for the limitations directed to solar-powered lamps producing
`varying color (see, e.g., id. at 17–18, 21–23), Wu for the limitations directed
`to the body, lens, base, and cap assembly (see, e.g., id. at 18–21, 22), and
`Hung for a switch (see, e.g., id. at 23). Petitioner reasons that it would have
`been obvious to locate the lighting device in Chliwnyj in the solar-powered
`garden light device of Wu because it was well known in the art to use such
`garden lights to illuminate the ground, and it would have been obvious to
`“provide the device of Chliwnyj with a body and spike to place the lighting
`device in the ground in order to provide light at an elevated position relative
`to the ground.” Id. at 30–33. Petitioner reasons that it would have been
`obvious to add the switch of Hung to the lighting device of Chliwnyj
`because it was well known in the art to use switches to control power to the
`circuit as necessary, and the location of the switch would be a matter of
`design choice. Id. at 33–34.
`
`
`12 For example, as an indication that the prior construction was correct, was
`not meaningfully incorrect, or is no longer relevant to the outcome of the
`proceeding.
`
`
`16
`
`
`
`

`
`IPR2014-00936
`Patent 7,196,477 B2
`
`Patent Owner argues that Chliwnyj and Wu are not combinable (PO
`
`Resp. 18–37) and that it would not have been obvious to modify Chliwnyj in
`view of Hung to incorporate an exposed switch (id. at 37–46). These
`arguments are presented as several sub-arguments, which we address in turn.
`
`1. Light Sensitive Switch of Wu
`
`Claims 2 and 21 depend from claims 1 and 20, respectively, and
`
`require “a light sensitive switch that renders the circuit operative at low light
`levels.” Petitioner asserts that Wu teaches a light sensitive switch. Pet. 24
`(citing Ex. 1006 ¶ 20, Fig. 3; Ex. 1002 ¶¶ 124–127). Wu is directed to a
`rodent-expelling device that also has an illumination function. Ex. 1006,
`Abstract. Wu’s device includes three circuits: (A) power-supplying circuit,
`(B) sound-emitting circuit, and (C) light-emitting circuit. Id. ¶ 16. Sound-
`emitting circuit B is intended to expel rodents, whereas light-emitting circuit
`C is intended to provide a pleasing visual effect. Id. ¶¶ 20, 22. Power-
`supplying circuit A includes rechargeable battery 13 and solar panel 12. Id.
`¶ 18. Wu states that during the “daytime . . . the solar-energy powered
`electricity generating element 12 generates power.” Id. ¶ 20. Then, “in a
`particular time (such as at night), the buzzer 14 and the light emitting
`element 15 will [be] automatically activated.” Id. Figure 3, depicting the
`three circuits of Wu, is reproduced below with annotation:
`
`
`17
`
`
`
`

`
`IPR2014-00936
`Patent 7,196,477 B2
`
`
`
`Figure 3 of Wu depicts circuit elements A, B, and C discussed above. A “T”
`shape in circuit C, discussed next, is identified.
`
`Patent Owner’s argument is that Wu does not describe a light-
`activated switch and instead describes each circuit in Wu directly connected
`to the battery (i.e., always on), based on the presence of a “T” shape in each
`circuit, which Patent Owner alleges indicates that the power rail is attached.
`See, e.g., PO Resp. 24. Patent Owner argues that Petitioner’s declarant, Dr.
`Shackle, only performed a high-level review of the circuit in his analysis and
`did not address this “T.” Id. at 22 (arguing that Dr. Shackle “admits that he
`did not even analyze or simulate the circuit” but rather “relied on the ‘well-
`known’ character of pieces of the circuit”). It is Patent Owner’s position,
`based on the testimony of his declarant, Dr. Ducharme, that power circuit A
`in Wu operates to provide solar power if it is producing voltage but
`otherwise uses the batteries to provide power. Id. at 23–24 (citing Ex. 2021
`
`
`18
`
`
`
`

`
`IPR2014-00936
`Patent 7,196,477 B2
`
`¶¶ 86–87). In other words, the circuits are always on so long as there is
`power.
`
`Reviewing the evidence and arguments before us, we find Patent
`Owner’s arguments unpersuasive and instead find that Petitioner has shown,
`by a preponderance of the evidence, that Wu discloses a light sensitive
`switch for turning the device on at night (i.e., when there are low light
`levels). First, Petitioner’s interpretation is more consistent with the textual
`disclosure of Wu, regardless of what is shown in Figure 3. As we will
`explain later, Petitioner’s interpretation is also more consistent with what is
`shown in Figure 3.
`Wu, in its textual description, states that solar energy is collected and
`stored during the daytime. Ex. 1006 ¶ 20; see also id. ¶ 16 (“the power is
`stored in a rechargeable battery 13”). This indicates that energy is not used
`during the daytime, but rather collected. Next, Wu states that the light and
`sound circuits are activated automatically “[w]hen in a particular time (such
`as at night).” Id. ¶ 20. This indicates that the stored energy is used at night
`and that activation is automatic. A solar collector is a device that
`automatically generates power when light shines upon it. See, e.g., id.
`(“solar-energy powered electricity generating element 12 generates power
`by irradiation of the sun light”). Thus, it is a way to implement the
`automatic activation at night, i.e., a low-light-activated switch. The
`testimony of Petitioner’s declarant, Dr. Shackle, is consistent with this
`reading of Wu. See Ex. 1002 ¶¶ 124–127; Ex. 1050 ¶¶ 50–57. The
`testimony of Patent Owner’s declarant, Dr. Ducharme, is also consistent
`with this reading of Wu. See Ex. 1049, 119:4–13 (testifying that “I do
`understand Circuit Element A to be a light sensitive switch,” in isolation);
`
`19
`
`
`
`

`
`IPR2014-00936
`Patent 7,196,477 B2
`
`id. at 54:16–56:20 (testifying that light-sensitive switches were known). In
`view of this evidence, we are persuaded that a person of ordinary skill in the
`art, being a person capable of recognizing circuit elements, even under
`Patent Owner’s proposed level, would recognize that Wu discloses a solar
`switch in order to automatically activate the device at night. See Ex. 2021
`¶¶ 39, 44 (arguing a person of ordinary skill in the art can “recognize how a
`pre-designed circuit may operate” and “is capable of implementing a circuit
`for a specified function . . . once they are told what is the function”).
`
`Patent Owner seeks to muddy this disclosure by pointing to an
`irregularity in Figure 3 of Wu. PO Resp. 23–27. Even considering Figure 3,
`however, we remain persuaded that Wu discloses the power circuit to be
`activated at night. To read Figure

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