Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 1 of 13 PageID: 4553
`
`Donald J. Cox, Jr.
`DNJ Attorney ID: DC1284
`Law Offices of Donald Cox, LLC
`103 Carnegie Center, Suite 300
`Princeton, NJ 08540
`Tel: (609) 921-1166
`Fax: (609) 921-8131
`coxd@iplawonline.com
`Attorneys for Defendants
`Simon Nicholas Richmond and
`Adventive Ideas, LLC
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF NEW JERSEY
`-----------------------------------------------------------
`INTERNATIONAL DEVELOPMENT
`CORPORATION
`
`Civil Action No. 3:09-CV-
`02495-GEB
`
`Plaintiff,
`
`v.
`
`
`SIMON NICHOLAS RICHMOND AND
`ADVENTIVE IDEAS, LLC
`
`
`Defendants.
`-----------------------------------------------------------
`
`
`DECLARATION OF SIMON NICHOLAS RICHMOND
`
`
`I, Simon Nicholas Richmond, hereby declare:
`
`
`I.
`
`INTRODUCTION
`
`
`1.
`
`I am the inventor and owner of the two patents for garden solar lights,
`
`U.S. Patent Nos. 7,196,477 B2 (the “’477 patent”) and U.S. Patent No.
`
`7,429,827 B2 (the “’827 patent”), which are at issue in this litigation.
`
`
`
`1
`
`Richmond, Exh. 2002, p.1
`
`
`
`Donald J. Cox, Jr.
`DNJ Attorney ID: DC1284
`Law Offices of Donald Cox, LLC
`103 Carnegie Center, Suite 300
`Princeton, NJ 08540
`Tel: (609) 921-1166
`Fax: (609) 921-8131
`coxd@iplawonline.com
`Attorneys for Defendants
`Simon Nicholas Richmond and
`Adventive Ideas, LLC
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF NEW JERSEY
`-----------------------------------------------------------
`INTERNATIONAL DEVELOPMENT
`CORPORATION
`
`Civil Action No. 3:09-CV-
`02495-GEB
`
`Plaintiff,
`
`v.
`
`
`SIMON NICHOLAS RICHMOND AND
`ADVENTIVE IDEAS, LLC
`
`
`Defendants.
`-----------------------------------------------------------
`
`
`DECLARATION OF SIMON NICHOLAS RICHMOND
`
`
`I, Simon Nicholas Richmond, hereby declare:
`
`
`I.
`
`INTRODUCTION
`
`
`1.
`
`I am the inventor and owner of the two patents for garden solar lights,
`
`U.S. Patent Nos. 7,196,477 B2 (the “’477 patent”) and U.S. Patent No.
`
`7,429,827 B2 (the “’827 patent”), which are at issue in this litigation.
`
`
`
`1
`
`Richmond, Exh. 2002, p.1
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 2 of 13 PageID: 4554
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`2.
`
`I am the owner of Adventive Ideas, LLC (“Adventive”). IDC
`
`originally brought this lawsuit making various claims, asserting that each of
`
`the ‘477 and ‘827 patents is invalid or not infringed, and including that
`
`Adventive and I made a “false” allegation of infringement. Adventive and I
`
`have asserted counterclaims that IDC infringes claims 1-9, 13-16, 20-22, and
`
`26 of the ‘477 patent and claims 27-35 of the ‘827 patent (the “Asserted
`
`Claims”). This declaration will address the validity issue.
`
`II. PROFESSIONAL BACKGROUND
`
`3.
`
`I am the sole inventor on fourteen (14) United States utility and design
`
`patents, most of which relate to solar garden lights. I submit this declaration
`
`as an expert in the pertinent art of solar garden lights.
`
`4.
`
`I received an undergraduate education at the University of New South
`
`Wales in Sydney, Australia, where I received a bachelor’s degree in
`
`commerce, which consisted of mostly business-related courses covering
`
`topics such as accounting, economics, statistics, taxation, and Australian
`
`business law. I further received a masters degree in business administration
`
`(MBA) from New York University, where my course load included a
`
`technical course related to assessing technologies and applying the
`
`technologies in a commercial strategic business environment. I took a
`
`
`
`2
`
`Richmond, Exh. 2002, p.2
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 3 of 13 PageID: 4555
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`physics course in high school, which covered, to some extent, electronic
`
`circuits.
`
`5.
`
`I was engaged as an employee at HPM at the time of the invention of
`
`the subject matter of the ‘477 patent. While at HPM, I participated in the
`
`commercial development of commercial embodiments of the inventions
`
`disclosed in the ‘477 and ‘827 patents. HPM develops, produces, markets
`
`and distributes a wide variety of electronic and electrical equipment in
`
`Australia and also arranges for contract manufacturing of its products in
`
`China. At the time I joined HPM in 1993, HPM had approximately 1,000
`
`employees and was one of the largest manufacturers and marketers of
`
`electronic and electrical products in Australia. During my time with HPM, I
`
`held the positions of Director of Corporate Development and Director of
`
`Product Development. These positions involved establishing and
`
`maintaining relationships with foreign manufacturers and US and South
`
`American distributors and suppliers, and being involved in the operation of
`
`all aspects of the business of HPM. For example, I found and selected
`
`suitable suppliers and was involved in commercial negotiations, contract
`
`development discussions, product design, and supplier relationship
`
`management. I spearheaded the outsourcing of product manufacturing to
`
`China.
`
`
`
`3
`
`Richmond, Exh. 2002, p.3
`
`
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`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 4 of 13 PageID: 4556
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`6. While at HPM, I was almost solely responsible for product
`
`development of low voltage garden lights and, later, solar garden lighting. I
`
`was also involved in the development of new electrical accessories such as
`
`plug-in timers, power strips, extension cords, light dimmers.
`
`7.
`
`In about 2004, I chose to move to the United States with my family.
`
`However, at HPM’s request, I stayed on for approximately six additional
`
`months to perform additional work. As partial compensation for this, and
`
`for other services rendered, HPM assigned the United States intellectual
`
`property rights relating to the invention of the Australian provisional patent
`
`application to me, which rights ultimately matured into the ‘477 and ‘827
`
`patents at issue in this case. After I departed from HPM, I continued to
`
`pursue the ‘477 patent application, and later the ‘827 patent application. I
`
`further continued to develop relationships with manufacturers in China and
`
`US distributors, and sold commercial embodiments of the claimed
`
`inventions in the ‘477 and ‘827 patents through trade channels in the U.S.
`
`Thus, I have experience with manufacturers in China of the type used by
`
`IDC, and including at least one of the factories used by IDC as its primary
`
`supplier.
`
`The Level of Ordinary Skill in the Art
`
`
`
`
`4
`
`Richmond, Exh. 2002, p.4
`
`
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`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 5 of 13 PageID: 4557
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`8.
`
`In view of this professional experience acquired over many years, I
`
`am personally familiar with the ordinary level of skill in the pertinent art of
`
`solar garden lights, 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 the educational level of active
`
`workers in the field.
`
`9.
`
`In my experience and opinion, at the time of the invention, the level of
`
`ordinary skill in the field of designing solar garden lights was relatively low-
`
`- the equivalent of an industrial designer skilled at making basic, functional
`
`solar garden lights with various ornamentation, with only basic knowledge
`
`of the electrical circuits and components ordinarily used in solar garden
`
`lights and how to make minor modifications to them, for sizing the solar
`
`cells, batteries, LEDs, etc., and how to assemble them into a functional solar
`
`garden light.
`
`10.
`
`I do not agree with the opinion of Dr. Duane Laurent, the technical
`
`witness named by IDC, as to the level of ordinary skill in the art. It is my
`
`opinion that Dr. Laurent has incorrectly assigned a person of ordinary skill a
`
`higher level of skill in the art at the time of the invention than existed. Dr.
`
`Laurent also has not been consistent in his assessment of the level of
`
`ordinary skill. In Dr. Laurent’s Declaration dated July 20, 2010, he attested
`
`
`
`5
`
`Richmond, Exh. 2002, p.5
`
`
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`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 6 of 13 PageID: 4558
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`that the level of skill may encompass a person with a BSEE (Bachelor of
`
`Science in Electrical Engineering) with one or two years of experience. (July
`
`20, 2010 Laurent Decl. ¶ 4.) In his current Declaration, however, Dr.
`
`Laurent has downgraded the level of skill to an Associate’s Degree in
`
`electrical engineering, or the equivalent education, plus at least one year of
`
`software programming experience. (December 10, 2010 Laurent Decl. ¶ 10.)
`
`In my opinion, even Dr. Laurent’s second attempt to characterize the
`
`ordinary skill in the art is too high and incorrect. In my experience, working
`
`with manufacturers in Asia, primarily China, persons of ordinary skill in the
`
`art of solar garden lights do not routinely employ or need persons having the
`
`high level of education and training Dr. Laurent contends. In this
`
`connection, I point out that I am the sole named inventor on fourteen (14)
`
`United States design and utility patents, twelve (12) of which are solar
`
`garden lights, and I do not have the education or formal training claimed by
`
`Dr. Laurent.
`
`11. The relevant art involved in the ‘477 and ‘827 patents is the creation
`
`of solar powered garden lights, which at the time of my invention employed
`
`relatively unsophisticated technology in terms of electrical circuits
`
`controlling the LED lamps. A person ordinarily skilled in the art of solar
`
`garden lights would be primarily focused on the physical and ornamental
`
`
`
`6
`
`Richmond, Exh. 2002, p.6
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 7 of 13 PageID: 4559
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`components, such as shapes and types of lenses, poles and the like, rather
`
`than on the unsophisticated electrical circuits required for solar garden
`
`lights. To meet the electrical requirements of a typical solar garden light, the
`
`person of ordinary skill in the art of solar garden lights need only know the
`
`basics of electrical components and circuits that are commonly used in solar
`
`garden lights, how to make minor modifications for size of solar cell,
`
`number of LEDs, etc., which does not require the level of skill claimed by
`
`Dr. Laurent.
`
`12. At the time of the invention, almost all consumer-installed solar
`
`powered garden lights (which is the field of the invention) that were sold in
`
`volume in the U.S. were primarily developed and manufactured in low labor
`
`cost regions of Southeast Asia. Indeed, a review of patents relating to solar
`
`powered garden lighting and assigned to IDC, for example, will reveal a vast
`
`majority are design patents designed by a Chinese manufacturer. “Design
`
`patents” are patents that cover the physical and ornamental design of
`
`products, which is the work of an industrial designer or mechanical design
`
`technician, not an electrical engineer. The few utility patents that IDC has,
`
`for example, appear to be relatively simple, mechanically and electrically.
`
`This is consistent with my experience with the ordinarily low level of
`
`mechanical and electrical innovation in the art of solar garden lights.
`
`
`
`7
`
`Richmond, Exh. 2002, p.7
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 8 of 13 PageID: 4560
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`13. The typical problems sought to be overcome by persons of ordinary
`
`skill in the art are related to the physical ornamental design and construction
`
`of the solar garden lights, not the incorporation of new electrical circuits to
`
`change the lighting display. The skills required by such persons are some
`
`Computer Aided Design (CAD) design skills such as AutoCAD and some
`
`knowledge of the manufacturing processes used, such as plastic injection,
`
`die-casting, and metal-stamping.
`
`14. At the time of the invention, the person of ordinary skill in the field of
`
`designing solar garden lights had sufficient on-the-job experience to permit
`
`him or her to design, manufacture, or assemble physical parts such as
`
`plastics moldings, metal stampings, and glass plastic lenses, in various
`
`shapes and sizes required to make and assemble solar garden lights in a
`
`variety of ornamental designs. Persons of ordinary skill could have made
`
`minor modifications to pre-existing solar garden light structures, including
`
`changing the ornamentation, which might lead to selection of appropriate
`
`batteries and solar cells, like the sizing of the solar cells. The person of
`
`ordinary skill in the art would be able to select and assemble the basic
`
`electrical components that are commonly used in a solar light, including
`
`batteries, switches, solar cells, a battery charging circuit, photo sensors, light
`
`emitting diodes, and the wires interconnecting the other components.
`
`
`
`8
`
`Richmond, Exh. 2002, p.8
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 9 of 13 PageID: 4561
`
`However, ordinarily skilled designers of solar garden lights would not seek
`
`to create new lighting displays having greater complexity, which required
`
`more complex electrical circuits, required more power, or increased cost.
`
`15. A person of ordinary skill in the art of solar garden lights is, however,
`
`capable of implementing a circuit to perform a specified function, and
`
`selecting and employing the necessary electrical components to perform
`
`those functions, but only once they are told what is the function the circuit
`
`must perform.
`
`16.
`
`In my experience, at the time of the invention, once given the
`
`functions that a circuit was to perform, it was routine practice for someone
`
`to take the description of the function or functions to an electrical circuit
`
`designer or programmer in order to have that person modify, program, or
`
`otherwise manufacture the electrical component, including the software or
`
`methods implementing equivalent steps.
`
`17. When I first conceived of the solar garden light of the present
`
`invention, having multiple LEDs producing varying color, I explained my
`
`invention of a solar garden light producing varying color by varying the
`
`intensity of the LED lamps with time to Mr. Vincent Dou, who was my
`
`English-speaking contact representing the solar light factory in China used
`
`by HPM at the time. I now know that that factory is the same factory used
`
`
`
`9
`
`Richmond, Exh. 2002, p.9
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 10 of 13 PageID: 4562
`
`by IDC at that time for making IDC’s products, including the Four Season
`
`Solar Light, and which owned or managed by Mr. Chi-Gon Chen. Mr. Dou
`
`indicated at the time that Mr. Chen’s factory was not suitable. It is my belief
`
`that the reason Mr. Dou said that Mr. Chen’s factory was not suitable was
`
`because of skepticism on their part as to whether my invention would work
`
`or be successful, given the lack of success of the IDC Four Season Solar
`
`Light. Mr. Dou arranged for another factory that was willing to produce
`
`working prototypes of and to manufacture the solar garden lights I invented
`
`instead. I now know that Mr. Chen’s factory is the same factory currently
`
`used by IDC to manufacture IDC’s “Spectrum” varying color solar garden
`
`lights that are the subject of this lawsuit.
`
`18.
`
`I am currently aware that IDC previously manufactured and sold a
`
`solar garden light known as the “Four Season Solar Light.” The Four
`
`Season Solar Lights did not vary color by varying the intensity of light with
`
`time, as in the solar garden lights of my present claimed inventions.
`
`19.
`
`I do not agree with the Laurent Declaration at paragraphs 51, 71, and
`
`91 stating that “a person skilled in the art, driven to differentiate his product
`
`from competitors’ products, would seek to add greater complexity in the
`
`lighting display.” Industrial designers of solar garden lights were concerned
`
`with differentiating their products from competitors’ products by making
`
`
`
`10
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`Richmond, Exh. 2002, p.10
`
`
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`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 11 of 13 PageID: 4563
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`minor alterations to the outer physical appearance of the product, and would
`
`not be motivated to increase the complexity of the lighting display, which
`
`would entail more complex electronics and increase the cost of the solar
`
`garden light. Also, altering the lighting display configuration in the manner
`
`suggested by Dr. Laurent, by employing electrical circuits that varied
`
`colored lights but were not designed for solar garden lights, such as the
`
`Piepgras ‘358 publication, would require altering the electrical components
`
`to create a new functionality. Creating such a new functionality would have
`
`been outside the level of skill of those in the art of solar garden lights and
`
`not pertinent to the types of problems normally encountered by those of
`
`ordinary skill in the art of solar garden lights. I also note that the varying
`
`color disclosure of the Piepgras ‘358 publication is substantially similar to
`
`the disclosure of United States Patent No. 7,064,498 (the “Dowling Patent”),
`
`which was considered by the United States Patent and Trademark Office
`
`examiner in granting both my ‘477 and ‘827 patents.
`
`20. The claimed inventions of the ‘477 and ‘827 patents succeeded where
`
`IDC, one of the largest manufacturers and sellers of solar garden lights in the
`
`United States, and IDC’s factories, failed, i.e., with the Four Season Solar
`
`Lights, and IDC no longer sells the Four Season Solar Lights. In contrast to
`
`the Four Season Solar Lights, my invention produces varying color by
`
`
`
`11
`
`Richmond, Exh. 2002, p.11
`
`
`
`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 12 of 13 PageID: 4564
`
`varying the intensity of the LEDs with time. That difference of producing
`
`varying colors by varying the intensity of the LEDs over time vs. the
`
`instantaneous on or off colors of the Four Season Solar Lights resulted in the
`
`products covered by my patents being highly commercially successful,
`
`rather than a commercial failure.
`
`21.
`
`In the art of solar garden lights, although physical ornamentation
`
`changes are made rapidly, innovations in lighting displays used in solar
`
`garden lights proceed very slowly. Solar powered garden lights have been
`
`known at least as early as 1989, the filing date of the patent application that
`
`issued as the Frost patent in 1991, United States Patent No. 5,062,028,
`
`which was considered by the examiner of the United States Patent and
`
`Trademark Office during the prosecution of my patent applications. The
`
`electrical components shown in the 1989 Frost patent application are largely
`
`still found in solar powered garden lights today. The addition of new
`
`features to the electrical circuits of solar powered garden lights occurs very
`
`rarely. The Four Season Solar Lights, for example, are largely the same as
`
`Frost except for their color-changing feature, but were not introduced until
`
`approximately twelve years later. As indicated above, Four Season Solar
`
`Lights appear to have been a commercial failure and are no longer being
`
`sold by IDC.
`
`
`
`12
`
`Richmond, Exh. 2002, p.12
`
`
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`Case 3:09-cv-02495-GEB-DEA Document 104-13 Filed 01/03/11 Page 13 of 13 PageID: 4565
`
`Richmond, Exh. 2002, p.13
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`
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