IN THE 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.
`
`______________
`
`U.S. Patent No. 8,362,700 to Richmond.
`IPR Case No. Unassigned
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1–11, 13–15, 24–34, and 45–47 of U.S. PATENT NO. 8,362,700)
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`TABLE OF CONTENTS
`INTRODUCTION ....................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8................................. 2
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))................................ 2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... 3
`C.
`Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§ 42.8(b)(3-4)) ................................................................................... 5
`Service Information Under 37 C.F.R. § 42.8(b)(4)............................. 5
`D.
`III. GROUNDS FOR STANDING (§ 42.104(a))............................................... 6
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b))............................................ 6
`V.
`OVERVIEW OF THE ’700 PATENT ......................................................... 7
`VI.
`PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME ...................................................... 7
`VII. TECHNICAL FUNDAMENTALS OF THE CLAIMED SUBJECT
`MATTER..................................................................................................... 8
`VIII. PROSECUTION HISTORY........................................................................ 8
`IX.
`STATE OF THE ART RELATIVE TO THE ’700 PATENT....................... 9
`A.
`Technical Background ..................................................................... 10
`B.
`Background of the Technology........................................................ 12
`C.
`Summary of the Prior Art................................................................. 14
`1.
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1005)............... 14
`U.S. Patent Application Publication No. US
`2.
`2003/0201874 A1 (“Wu”) (Ex. 1006) .................................... 15
`Chinese Patent Publication No. CN 2522722Y (“Pu”)
`(Exs. 1007 and 1008)............................................................. 15
`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1010)....................... 15
`AU Patent App. No. 2002100505 A4 (“Richmond App.
`505”) (Ex. 1011).................................................................... 16
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1012) ................... 16
`Chinese Patent Publication No. CN 2541713Y (“Xu”)
`(Exs. 1013 and 1014)............................................................. 16
`CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ........................................................................................... 17
`XI. UNPATENTABILITY GROUNDS........................................................... 18
`
`6.
`7.
`
`3.
`
`4.
`5.
`
`X.
`
`ii
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`B.
`
`C.
`
`A.
`
`Ground 1: Claims 1–11, 26–34, and 45–47 are rendered
`obvious under 103(a) by Wu in view of Chliwnyj............................ 19
`Ground 2: Claims 13 and 15 are rendered obvious under 103(a)
`by Wu in view of Chliwnyj further in view of Pu ............................ 43
`Ground 3: Claim 14 is rendered obvious under 103(a) by Wu in
`view of Chliwnyj further in view of Pu further in view of Xu.......... 46
`Ground 4: Claims 24 and 25 are rendered obvious under 103(a)
`by Wu in view of Chliwnyj further in view of Lau........................... 48
`Ground 5: Claims 45 and 47 are rendered obvious under 103(a)
`by Richmond App. 505 in view of Shalvi ........................................ 50
`XII. REDUNDANCY ....................................................................................... 59
`Ground 5: Richmond and Shalvi are not redundant.................................... 59
`XIII. CONCLUSION ......................................................................................... 59
`XIV. APPENDIX OF EXHIBITS....................................................................... 61
`
`D.
`
`E.
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`Jiawei Technology (HK) Ltd.1, Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., Atico International (Asia) Ltd.,
`
`and Atico International USA, Inc., Chien Luen Industries Co., Ltd., Inc. (Chien
`
`Luen Florida), and Chien Luen Industries Co., Ltd., Inc. (Chien Luen China),
`
`Coleman Cable, LLC2, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test
`
`Rite Products Corp. (collectively “Petitioner”) petitions for inter partes review,
`
`seeking cancellation of claims 1–11, 13–15, 24–34, and 45–47 of U.S. Patent No.
`
`8,362,700 to Richmond (“the ’700 patent,” Ex. 1001) purportedly owned by
`
`SIMON NICHOLAS RICHMOND (“Patentee”).
`
`The challenged claims are directed to solar powered lighting systems that
`
`“employ lighting devices to produce a variable colour.” The ’700 patent purports
`
`to be predicated on the discovery of combining variable lighting effects with a
`
`lighting assembly. As evidenced by the prior art references cited in this Petition
`
`and the Declaration of Dr. Peter W. Shackle,
`
`the connection between solar
`
`1 Jiawei Technology (HK) Ltd. contests that service was proper in the district court
`
`case, but in any event, the earliest possible service for any Jiawei entity listed is in
`
`Footnote 4.
`
`2 Coleman Cable, LLC was formerly Coleman Cable, Inc.
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`powered lights and producing variable color in lighting devices was well-known in
`
`the art at the time of the invention and obvious to combine the prior art.
`
`In this Petition, Petitioner presents several references that render obvious the
`
`challenged claims of the ’700 patent. Section VIII of this Petition summarizes the
`
`prosecution history of the ’700 patent. Section XI sets forth the detailed grounds
`
`for invalidity of the challenged claims. The Declaration of Dr. Peter W. Shackle
`
`accompanies this showing. (“Shackle Decl.,” Ex. 1002).
`
`Petitioner is reasonably likely to prevail in showing at least one of the
`
`challenged claims is not patentable, therefore, inter partes review of the ’700
`
`patent should be instituted.
`
`II.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner certifies that
`
`the following are real parties-in-interest: Jiawei
`
`Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei
`
`Photovoltaic Lighting Co., Ltd. (“Jiawei”), Ace Hardware Corp. (“Ace”), Atico
`
`International (Asia) Ltd., and Atico International USA, Inc. (“Atico”), Chien Luen
`
`Industries Co., Ltd., Inc. (Chien Luen Florida), and Chien Luen Industries Co.,
`
`Ltd., Inc. (Chien Luen China) (“Chien Luen”), Coleman Cable, LLC (“Coleman”),
`
`CVS Pharmacy, Inc. (“CVS”), Lowe’s Home Centers, LLC (“Lowe’s”), Menard,
`
`Inc. (“Menards”), Nature’s Mark, Orgill, Inc. (“Orgill”), Rite Aid Corp. (“Rite
`
`2
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`Aid”), Smart Solar, Inc. (“Smart Solar”), Test Rite Products Corp. (“Test Rite”),
`
`True Value Company (“True Value”), and Walgreen Co.
`
`(“Walgreens”)
`
`(collectively “Real Parties-in-Interest3”).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`On March 27, 2013, the purported Patent Owner sued multiple Petitioners in
`
`the U.S. District Court for the District of New Jersey alleging infringement of
`
`several patents, including the ’700 patent. On May 6, 2013, the purported Patent
`
`Owner filed an Amended Complaint alleging infringement of the ’700 patent. The
`
`earliest service date of the Amended Complaint served on the Petitioners identified
`
`above was June 11, 2013.4 This Petition has been filed within one year of
`
`Petitioner being served a complaint alleging infringement of the ’700 patent. 35
`
`3 Petitioner certifies that the following are real parties-in-interest, such that, the
`
`parties have at least been provided a draft of this petition and the opportunity to
`
`comment on it prior to filing this petition.
`
`4 The service date for each real party-in-interest is identified for the convenience of
`
`the Board: June 11, 2013 (Menards, Lowe’s, and Walgreens); June 12, 2013
`
`(Smart Solar); June 13, 2013 (Ace, CVS, Jiawei Technology (USA) Ltd., Orgill,
`
`True Value, Chien Luen, and Rite Aid); July 3, 2013 (Coleman); and no service
`
`date (Nature’s Mark, and Test Rite).
`
`3
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The purported Patent Owner identified no
`
`claims for infringement in the Amended Complaint. At the time of this filing, the
`
`Court has not issued a Scheduling Order and the purported Patent Owner has
`
`served no infringement contentions relative to the ’700 patent.
`
`The purported Patent Owner also filed additional
`
`lawsuits alleging
`
`infringement of the ’700 patent in several related judicial matters in the District of
`
`New Jersey. On March 27, 2013, the purported Patent Owner filed the following
`
`related cases in the District of New Jersey: On March 27, 2013, the purported
`
`Patent Owner filed the following related cases in the District of New Jersey: Case
`
`No. 3:13-cv-1944 (MLC); Case No. 3:13-cv-1949 (MLC); Case No. 3:13-cv-1950
`
`(MCL); Case No. 3:13-cv-1951 (MLC); Case No. 3:13-cv-1952 (MLC); Case No.
`
`3:13-cv-1953 (MLC); Case No. 3:13-cv-1954 (MLC); Case No. 3:13-cv-1957
`
`(MLC); Case No. 3:13-cv-1958 (MLC); and Case No. 3:13-cv-1960 (MLC). On
`
`May 6, 2013, Case No. 3:13-cv-2916 (MLC) was also filed in the District of New
`
`Jersey. The court consolidated all related Civil Action Nos. 13-1944 (MLC), 13-
`
`1949 (MLC), 13-1950 (MLC), 13-1951 (MLC), 13-1952 (MLC), 13-1953 (MLC),
`
`13-1954 (MLC), 13-1957 (MLC), 13-1958 (MLC), 13-1959 (MLC), 13-1960
`
`(MLC) and 13-2961 (MLC) for case management and pretrial discovery on April
`
`15, 2014, which applied retroactively from the date of the original Consolidated
`
`Order dated August 20, 2013, into Civil Action No. 13-1944 (MLC).
`
`4
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`The ’700 patent is being asserted in these proceedings, with two other
`
`patents within the same patent family as the ’700 patent—namely, U.S. Patent Nos.
`
`7,196,477 and 7,429,827. All of the above cases are pending.
`
`Petitions have been concurrently filed on this day on patents that are part of
`
`the ’700 patent family—U.S. Patent Nos. 7,196,477 and 7,429,827—IPR Case
`
`numbers have not been assigned.
`
`C. Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§ 42.8(b)(3-4))
`
`Petitioner appoints Mark C. Nelson (Reg. No. 43,830) of Dentons US LLP
`
`as lead counsel, and appoints Lissi Mojica (Reg. No. 63,421), Kevin Greenleaf
`
`(Reg. No. 64,062), and Daniel Valenzuela (Reg. No. 69,027) of Dentons US LLP,
`
`as back-up counsel. A Power of Attorney for each Petitioner identified in Section I
`
`is filed concurrently.
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Dentons US LLP, 233 South Wacker Drive, Suite 7800, Chicago,
`
`IL 60606-6306. Petitioner consents to service by email at
`
`mark.nelson@dentons.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
`
`iptdocketchi@dentons.com.
`
`5
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`III.
`
`GROUNDS FOR STANDING (§ 42.104(a))
`
`Petitioner certifies that the ’700 patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ’700 patent on the grounds identified in this Petition.
`
`IV.
`
`OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’700 patent’s challenged claims is requested on
`
`the grounds for unpatentability listed in the index below.
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Index of References
`Wu and Chliwnyj
`
`Wu, Chliwnyj and
`Pu
`Wu, Chliwnyj, Pu,
`and Xu
`Wu, Chliwnyj and
`Lau
`Richmond App.
`505 and Shalvi
`
`Claims Challenged
`1–11, 26–34, and
`45–47
`13 and 15
`
`14
`
`24–25
`
`45 and 47
`
`Chliwnyj, Wu, Lau, Richmond App. 505, Pu, and Xu were not cited or relied
`
`upon by the examiner during prosecution of the ’700 patent. At no time did the
`
`Applicant refer the references to the PTO. Shalvi was cited in the IDS but not
`
`relied on by the examiner. To support the proposed grounds of unpatentability, this
`
`6
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`Petition is accompanied by the declaration of technical expert Dr. Peter W.
`
`Shackle. (Shackle Decl., Ex. 1002.)
`
`V.
`
`OVERVIEW OF THE ’700 PATENT
`
`The ’700 patent was filed on December 23, 2010 and is a continuation-in-
`
`part of U.S. Patent No. 7,429,827, which is a continuation-in-part of U.S. Patent
`
`No. 7,196,477. The ’700 patent claims foreign priority to an Australian patent
`
`application filed on December 23, 2003. (Richmond App. 383, Ex. 1004.).
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME
`
`The field for the ’700 patent is solar powered lights and more particularly
`
`but not exclusively to solar powered lighting that produces a light of varying color.
`
`(’700 patent, Ex. 1001, Col. 1:19–21.). Within a field, the level of ordinary skill in
`
`the art is evidenced by the prior art references of record. See In re GPAC Inc., 57
`
`F.3d 1573, 1579 (Fed. Cir. 1995) (determining the Board did not err in adopting
`
`the approach that the level of skill in the art was best determined by the references
`
`of record). With that in mind, as of the earliest effective filing date of the ’700
`
`patent claims, a person of ordinary skill in the art typically would have possessed:
`
`1) a graduate degree in electrical or electronics engineering or physics with
`
`demonstrable experience in the circuit design, or 2) a bachelor's degree in electrical
`
`or electronics engineering or physics with at least two years industrial experience
`
`7
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`and demonstrable experience in the circuit design.
`
`VII.
`
`TECHNICAL FUNDAMENTALS OF THE CLAIMED
`SUBJECT MATTER
`
`The ’700 patent’s challenged claims are directed to the interplay between a
`
`solar lighting device and electronic circuitry to produce varying color changing
`
`effects using a plurality of light emitting elements. (Shackle Decl., Ex. 1002, ¶ 66.)
`
`The ’700 patent discloses electrical components and circuitry to power light
`
`sources through solar power and a rechargeable battery to produce varying colors.
`
`The lighting device also charges the battery during the day and the battery later
`
`powers the light emitting elements to emit light in ambient conditions. (Shackle
`
`Decl., Ex. 1002, ¶ 67.)
`
`VIII.
`
`PROSECUTION HISTORY
`
`The ’700 patent was filed on December 23, 2010 and issued on January 29,
`
`2013. The ’700 patent claims foreign priority to Australian Patent Application No.
`
`2003271383 filed on December 23, 2003 (Richmond App. 383, Ex. 1004.) During
`
`prosecution, all claims were initially subject
`
`to a restriction and/or election
`
`requirement under an Office Action dated March 30, 2012. The examiner
`
`identified two distinct inventions; a lighting device with a solar cell mounted with
`
`connections to recharge the battery (Invention I) and a lighting device with a
`
`volatile memory retained for causing operation of a circuit to produce the desired
`
`8
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`fixed color of light (Invention II). Richmond provisionally elected to prosecute
`
`claims (1–34) in Invention I, but requested reconsideration of the election
`
`requirement. The examiner acquiesced and the entire set of claims remained
`
`available for further prosecution.
`
`In an Office Action dated July 13, 2012, the examiner allowed claims 35–44,
`
`and 47–49. The remaining claims were rejected or objected to by the examiner.
`
`Specifically, claims 1–3, 18–19, 23, 26, and 28–34 were rejected under the
`
`doctrine of non-statutory obviousness-type double patenting as being unpatentable
`
`over claims 32–34 of U.S. Patent No. 7,429,827, a parent of the ’700 patent. To
`
`overcome this rejection, Richmond filed a terminal disclaimer. In addition, the
`
`examiner rejected claims 45–46 as being obvious in light of U.S. Patent No.
`
`7,186,003 to Dowling et al. Richmond canceled these claims to render the rejection
`
`moot. The PTO issued a notice of allowance on September 25, 2012. (’700 File
`
`History, Ex. 1003.)
`
`IX.
`
`STATE OF THE ART RELATIVE TO THE ’700 PATENT
`
`The ’700 patent is broadly directed to a lighting device having a lens,
`
`rechargeable battery, solar cell, and circuitry to produce light of varying color.
`
`(’700 Patent, Col. 1:45–67.) The ’700 patent purports to overcome disadvantages
`
`well–known in the art for light emitting diodes systems, such as difficulty in
`
`producing a uniform desired color and difficulty of adjusting the light functions.
`
`9
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`(’700 Patent, Col. 1:34–37.) The ’700 patent admits that light devices that employ
`
`LEDs to produce a variable color are well known. (’700 Patent, Col. 1:25–26.) The
`
`Patentee also admits that using solar-powered garden lights using rechargeable
`
`batteries is well known in the art. (’700 Patent, Col. 1:28–33.) The prior art teaches
`
`using a plurality of different colored LEDs and ramping and/or controlling power
`
`to the light sources to vary intensity to create color varying. The prior art also
`
`teaches switches that allow a user to select a desired color and teaches circuitry
`
`with programs in memory to produce a multitude of desired lighting patterns.
`
`Together the prior art renders obvious all of the challenged claims of the ’700
`
`patent.
`
`A. Technical Background
`
`Light is one of many forms of electromagnetic radiation, which is controlled
`
`by its frequency. (Shackle Decl., Ex.
`
`1002, ¶¶ 38-39.) The light spectrum
`
`spans from deepest red color having a
`
`wavelength of around 780 nm to the
`
`deepest
`
`violet
`
`color
`
`having
`
`a
`
`wavelength of around 400 nm. See id.
`
`at 3.1. (Shackle Decl., Ex. 1002, ¶ 40.)
`
`Figure A shows a spectrum of visible sunlight. Note there is light at every
`
`10
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`wavelength. See id. at 6.6. (Shackle Decl., Ex. 1002, ¶ 41.)
`
`The human eye only perceives three primary colors. See id. at 2.5. All other
`
`colors are made up from combinations of these wavelengths. See id. For example,
`
`a fluorescent lamp can emit the primary colors of red, green and blue, plus some
`
`yellow. The human eye perceives this combination as white light. With solid state
`
`(LED) lighting, LEDs that are respectively red, green, and blue can be combined in
`
`specific proportions and are interpreted by the human eye as white light. (Shackle
`
`Decl., Ex. 1002, ¶ 42.)
`
`Dr. Shackle’s declaration contains a figure showing the overlap of red, blue
`
`and green light, including creating white light by adding three colors together. Id.
`
`at 6.7. (Shackle Decl., Ex. 1002, ¶ 43.) To create varying color that can cover the
`
`spectrum of colors, one or more of the LEDs is varied in intensity, and the human
`
`eye perceives a varying color. See id. 6.8. (Shackle Decl., Ex. 1002, ¶¶ 44-45.)
`
`The human eye cannot perceive rapid variations in intensity above 200 Hz,
`
`essentially no one can detect the fluctuation by directly looking at it. See id. at
`
`7.69. The width of each pulse is varied; this is called pulse width modulation
`
`(PWM). See id. When PWM is done, the human eye perceives a light that grows
`
`bright and dim, depending on the width of the pulse, even though electronic
`
`instruments may record that the peak of each pulse is actually the same. See id. A
`
`pulse width modulator is commonly used to control the LED’s intensity. A color
`
`11
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`spectrum is achieved by continuously changing intensity level by varying the level
`
`of power to each LED. The result is a mixture of colors; for example, if red, blue
`
`and green light is used, that combination can produce color changes across the
`
`color spectrum. (Shackle Decl., Ex. 1002, ¶¶ 45-46.)
`
`A light sensitive switch comprises at a minimum a) a light responsive
`
`element that can be a photodiode, phototransistor, photovoltaic cells, or any other
`
`circuit element
`
`that changes some parameter of its circuit characteristics in
`
`response to light; b) a power switch that operates to activate or deactivate a circuit
`
`in response to a signal from the light responsive element. There is no requirement
`
`for any mechanical switch. (Shackle Decl., Ex. 1002, ¶¶ 50-52.)
`
`B. Background of the Technology
`
`Solar powered lights produce light using stored energy obtained from
`
`sunlight. Solar
`
`lights may involve a combination of elements such as a
`
`photovoltaic cell, a rechargeable battery, a lamp and ambient light sensing control
`
`circuitry used to determine when to turn the lamp on, and lighting circuitry often
`
`using integrated circuits to determine which colors and patterns to display.
`
`(Shackle Decl., Ex. 1002, ¶ 53.)
`
`A first key ingredient for solar powered lighting is a compact, lightweight
`
`rechargeable battery. Nickel metal hydride batteries were first released in 1989 and
`
`were soon improved upon by the lithium ion battery, which first became available
`
`12
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`in 1991. See, e.g., U.S. Patent No. 5,062,028 to Frost,
`
`issued October
`
`1991(generally describing a solar lamp on a ground stake powered by rechargeable
`
`nickel metal hydride batteries). (Shackle Decl., Ex. 1002, ¶ 54.)
`
`A second key ingredient for solar powered lighting is the availability and
`
`effectiveness of photovoltaic cells. By the year 2000, a relatively small solar cell
`
`could generate enough power in one day to keep a discharge lamp operating for
`
`several hours during the night. (Shackle Decl., Ex. 1002, ¶ 55.)
`
`Early attempts at making a solar powered light used a lead acid battery, as
`
`described by Doss in U.S. Patent No. 4,841,416, filed in March 1988 and issued in
`
`June 1989. This product used a 12V incandescent lamp. Also with an incandescent
`
`lamp but now with a battery the shape and size of a nickel metal hydride battery is
`
`the invention described by Frost in U.S. Patent No. 5,062,028, which was filed in
`
`August 1989 and issued in October 1991. (Shackle Decl., Ex. 1002, ¶ 56.)
`
`The next technology leap to affect the business of solar powered lighting
`
`was the improvement of LED lamp efficacy. LED devices had been around since
`
`1962, but in the 1960s and 1970s they were only bright enough to make indicator
`
`lights and low powered displays such as on calculators. However with continual
`
`R&D, in the time interval from 1965 to 1990 the light output per LED that could
`
`be obtained had increased 1000 times so that during the 1990s it was now possible
`
`to make a useful luminaire with an efficacy already many times that of an
`
`13
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`incandescent lamp, and outputs of several lumens could be produced from an LED
`
`lamp. (Shackle Decl., Ex. 1002, ¶ 58.)
`
`In 1999, another technology line was evolving as engineers were realizing it
`
`was possible to switch LEDs on and off so rapidly (say 1000 times /sec) that the
`
`human eye would detect instead a steady light with a brightness corresponding to
`
`the fraction of time the LED was switched on. By operating a red, a blue, and a
`
`green LED simultaneously, any desired color could be synthesized. This could be
`
`accomplished by using an inexpensive microcontroller, for example, the Philips
`
`51LPC family has three PWM (pulse width modulator) outputs that can output
`
`pulses with a width under program control. (Shackle Decl., Ex. 1002, ¶ 60.)
`
`C. Summary of the Prior Art
`
`The prior art references relied upon disclose a lighting device that produces
`
`varying color recited in the challenged claims. The references comprise Exhibits
`
`1005–1015.
`
`1.
`
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1005)
`
`Chliwnyj was filed on August 15, 1996, issued on July 20, 1999 and is prior
`
`art under 35 U.S.C. § 102(b). Chliwnyj discloses an illumination device using solar
`
`cells, a rechargeable battery, a plurality of colored lamps, and an integrated circuit
`
`including a pulse width modulator to drive the plurality of different colored LEDs
`
`to produce a varying color. The device is suitable for outdoor areas such as
`
`14
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`memorial site, e.g., a garden environment. (Chliwnyj, Ex. 1005, Background of the
`
`Invention.) (Shackle Decl., Ex. 1002, ¶ 80.)
`
`2.
`U.S. Patent Application Publication No. US 2003/0201874
`A1 (“Wu”) (Ex. 1006)
`
`Wu was filed on April 24, 2002, published on October 30, 2003 and is prior
`
`art under 35 U.S.C. § 102(e). Wu discloses a garden illumination device using
`
`solar energy to illuminate light emitting elements of different colors. The device is
`
`suitable for outdoor areas such as courtyards, parks and scenic environments. (Wu,
`
`Ex. 1006, Background of the Invention.) (Shackle Decl., Ex. 1002, ¶ 81)
`
`3.
`Chinese Patent Publication No. CN 2522722Y (“Pu”) (Exs.
`1007 and 1008)
`
`Pu was filed on November 22, 2001, published on November 27, 2002 and
`
`is prior art under 35 U.S.C. § 102(b). Pu discloses a solar powered light comprising
`
`a battery, solar cell, and exposed switches for controlling power to the battery and
`
`selecting a desired color. Pu teaches that the solar can flash multiple colors or
`
`select a desired light color. (Pu, Exs. 1007 and 1008, Specifications at 1/3–3/3.)
`
`(Ex. 1009, Pu Certification.) (Shackle Decl., Ex. 1002, ¶ 81.)
`
`4.
`
`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1010)
`
`Lau was filed on September 22, 2000, issued on August 13, 2002 and is
`
`prior art under 35 U.S.C. § 102(b). Lau discloses a night light that contains an
`
`array of differently colored light emitting diodes, including red, blue and green,
`
`15
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`used to entertain and soothe the viewer. Lau teaches that the night light can output
`
`a display of light dynamically but can be frozen in a desired fixed light pattern or
`
`color. (Lau, Ex. 1010, Background of the Invention.) (Shackle Decl., Ex. 1002,
`
`¶¶ 83.)
`
`5.
`AU Patent App. No. 2002100505 A4 (“Richmond App.
`505”) (Ex. 1011)
`
`Richmond App. 505 was filed on June 19, 2002, published November 21,
`
`2002 and is prior art under 35 U.S.C. §102(b). Richmond App. 505 discloses an
`
`outdoor light device suitable for illuminating portions of an outdoor area such as a
`
`garden. (Richmond App. 505, Ex. 1011, Field of the Invention.) (Shackle Decl.,
`
`Ex. 1002, ¶ 84.)
`
`6.
`
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1012)
`
`Shalvi was filed on July 9, 1997, issued September 19, 2000 and is prior art
`
`under 35 U.S.C. § 102(b). Shalvi discloses an outdoor solar lamp using solar cells,
`
`rechargeable battery, and lamp drive circuitry. (Shalvi, Ex. 1012, Col. 1:15–19.)
`
`(Shackle Decl., Ex. 1002, ¶ 85.)
`
`7.
`Chinese Patent Publication No. CN 2541713Y (“Xu”) (Exs.
`1013 and 1014)
`
`Xu was filed on January 28, 2002, published March 26, 2003 and is prior art
`
`under 35 U.S.C. § 102(a). Xu discloses an outdoor color-changing solar powered
`
`lamp specifically teaching an obvious design choice to place a switch on an
`
`16
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`exposed downwardly facing surface. (Xu, Exs. 1013 and 1014, Abstract and Figure
`
`1.) (Ex. 1015, Xu Certification.) (Shackle Decl., Ex. 1002, ¶ 86.)
`
`X.
`
`CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3)
`
`Per the claim construction standard for an inter partes review, Petitioner
`
`bases this petition upon the broadest reasonable interpretation of the claim
`
`language. Because the standard for claim construction at the Patent Office differs
`
`from that used during a U.S. district court litigation, see In re Am. Acad. of Sci.
`
`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioners expressly
`
`reserve the right to argue a different claim construction in litigation for any term of
`
`the ’700 patent in such proceeding. Solely for the proceeding only, under the
`
`broadest reasonable interpretation standard, Petitioner proposes that all claims
`
`should be entitled to their plain and ordinary meaning, except for the limitations
`
`addressed below.
`
`The term “constant colour” is in dependent claims 13 and 15. The claims
`
`state “circuit having at least two lamps of different colours to produce a constant
`
`colour” and is construed to mean, “to produce a color that is constant that does not
`
`change over time.”
`
`The term “varying colour” is in independent claim 47. Claim 47 requires a
`
`circuit having at least two lamps of different colors. (’700 Patent, Ex. 1001, Col.
`
`17
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`14:13–37.) The claims state “including a varying colour,” and is construed to
`
`mean, “colors produced include a color that changes over time by varying the
`
`intensity of one or more of the lamps with time.”
`
`The term “switch being accessible by a user” is in independent claim 45 and
`
`dependent claims 3, 11, 14, and 34. The term is construed to mean, “the switch is
`
`accessible to the user without substantial effort, tools, or destruction.” Therefore, a
`
`switch need not be exposed and the user can disassemble the device, e.g., remove a
`
`few screws, unscrew the lens, etc., to gain access to the switch.
`
`The term “securing means” is in dependent claim 3 and invokes 35 U.S.C.
`
`§ 112, ¶ 6. (35 U.S.C. § 112, ¶ 6.) Claim 3 states “securing means to releasably
`
`engage the rim so that the cap assembly can be selectively removed from the lens”
`
`and is construed to mean, “inward projecting flange segments that engage with
`
`outward extending flange segments of the rim to be secured thereto or equivalents
`
`thereof.” (’700 Patent, Ex. 1001, Col. 4:65–67.)
`
`XI.
`
`UNPATENTABILITY GROUNDS
`
`The references reviewed below render the claimed subject unpatentable
`
`under 35 U.S.C. § 103. As detailed below,
`
`the Petitioner has a reasonable
`
`likelihood of prevailing as to each of the following grounds of unpatentability.
`
`Throughout the grounds, the figures have been annotated to identify elements of
`
`the claim in the prior art and emphasis added to the evidence to support the
`
`18
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`challenge.
`
`A. Ground 1: Claims 1–11, 26–34, and 45–47 are rendered obvious
`under 103(a) by Wu in view of Chliwnyj
`
`U.S. Patent No.
`8,362,700
`[1.0] A lighting
`device, said
`device
`including:
`
`Wu in view of Chliwnyj
`[1.0] Wu discloses a lighting device.
`
`“A shrew-expelling device with an illumination function, the
`device is comprised of an electric circuitry, a main stem and a
`housing; wherein, the electric circuitry includes a power
`supplying circuit, a sound emitting circuit and a light emitting
`circuit, the power supplying circuit generates electricity in
`taking advantage of a solar–energy powered electricity
`generating element.” (Wu, Ex. 1006, Abstract).
`
`[1.1] a lens;
`
`(Shackle, Decl., Ex. 1002, ¶¶ 90-91.)
`[1.1] Wu discloses a lens.
`
`“The housing 30 is provided with a transparent lamp shade 31
`in the form of a bowel, the lamp shade 31 is provided on the
`bottom thereof with a connecting pipe 32 to be connected with a
`connecting portion 23 of a rod 21 of the main stem 20, thereby,
`the lamp shade 31 is connected with the main stem 20; and the
`lamp shade 31 is provided on the top thereof with an annular
`connecting cover 33 which is connected on the top thereof with
`a transparent semispherical hood 34.” (Wu, Ex. 1006, ¶ 18)
`(emphasis added).
`
`“Referring to FIG. 2, when in assembling of the present
`invention, the battery seat 22, the electric circuit board 11 and
`the solar–energy powered electricity generating element 12 are
`respectively thread connected with the electric circuit base 35
`and the power generating base 36, and then are placed in the
`lamp shade 31, they are combined with the lamp shade 31 when
`the transparent hood 34 and the annular connecting cover 33
`are engaged with each other, then a washer 38 is sealed
`thereon.” (Wu, Ex. 1006, ¶ 19) (emphasis added).
`
`19
`
`

`

`PRIVILEGED & CONFIDENTIAL – ATTORNEY WORK PRODUCT
`
`[1.2] a circuit
`