Case 3:09-cv-02495-GEB-DEA Document 104-12 Filed 01/03/11 Page 1 of 75 PageID: 4478
`
`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 DR. ALFRED DUCHARME ON VALIDITY
`
`Richmond, Exh. 2004, p.1
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`

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`Case 3:09-cv-02495-GEB-DEA Document 104-12 Filed 01/03/11 Page 2 of 75 PageID: 4479
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`TABLE OF CONTENTS
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`I. INTRODUCTION ..................................................................................................3
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`II. MATERIALS REVIEWED ..................................................................................3
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`III. PROFESSIONAL BACKGROUND...................................................................5
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`IV. CLAIM CONSTRUCTION.................................................................................7
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`V. THE FOUR SEASON SOLAR LIGHTS DO NOT ANTICIPATE THE
`
`ASSERTED CLAIMS ...............................................................................................9
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`VI. THE FOUR SEASON SOLAR LIGHTS AND THE PIEPGRAS ‘358
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`PUBLICATION DO NOT RENDER ‘827 PATENT CLAIMS 30-31 AND 34
`
`OBVIOUS UNDER THE REASONING IN THE LAURENT DECLARATION.19
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`VII. THE VARYING INTENSITY TAUGHT IN PIEPGRAS DOES NOT
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`RENDER ANY OF THE ASSERTED CLAIMS OBVIOUS.................................23
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`A. The Scope and Content of the Prior Art ..........................................................24
`
`1. The Four Season Solar Lights.......................................................................24
`
`2. The Piepgras ‘358 Publication ......................................................................25
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`B. The Differences Between the Claimed Invention and the Prior Art ...............29
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`C. The Level of Ordinary Skill in the Art ............................................................30
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`VIII. SECONDARY CONSIDERATIONS ............................................................41
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`IX. CONCLUSION..................................................................................................53
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`
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`2
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`Richmond, Exh. 2004, p.2
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`

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`I, Dr. Alfred Ducharme, hereby declare:
`
`I. INTRODUCTION
`1.
`
`I have been retained as an expert by the defendants in this litigation, Simon
`
`Nicholas Richmond and Adventive Ideas, LLC. (“Defendants”). In this declaration
`
`I provide my expert opinion on the validity of the patents asserted in the litigation.
`
`2.
`
`I understand the litigation includes an allegation by Defendants that certain
`
`products of the plaintiff, International Development Corporation, infringe the
`
`claims of U.S. Patent Nos. 7,196,477 B2 (the “’477 patent”) and U.S. Patent No.
`
`7,429,827 B2 (the “’827 patent”) to defendant Simon Nicholas Richmond. I
`
`understand that the defendants have asserted claims 1-9, 13-16, 20-22, and 26 of
`
`the ‘477 patent and claims 27-35 of the ‘827 patent (the “Asserted Claims”).
`
`II. MATERIALS REVIEWED
`3.
`
`I have reviewed the following materials in preparation for this declaration:
`
`• U.S. Patent No. 7,196,477 B2 to Simon Nicholas Richmond (the
`
`“’477 patent”).
`
`• U.S. Patent No. 7,429,827 B2 to Simon Nicholas Richmond (the
`
`“’827 patent”).
`
`• WIPO publication 2003/026358 to Piepgras et al. (the “Piepgras ‘358
`
`publication”).
`
`• U.S. Patent No. 7,064,498 (the “Dowling patent”).
`
`
`
`3
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`Richmond, Exh. 2004, p.3
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`

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`• U.S. Patent No. 6,016,038 (the “Mueller patent”).
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`• U.S. Patent No. 5,062,028 (the “Frost patent”).
`
`• U.S. Patent No. 7,497,588 (the “Browder patent”).
`
`• The transcript of the November 4, 2010, Markman hearing in this
`
`litigation (“Markman Transcript”).
`
`• The Court’s November 12, 2010, Markman Order (“Markman Order”)
`
`and Markman Opinion.
`
`• Plaintiff’s Memorandum of Law in Support of its Partial Motion for
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`Summary Judgment of Invalidity.
`
`• The July 20, 2010, Declaration of Duane G. Laurent in Support of the
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`Plaintiff International Development LLC’s opening Markman Brief
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`(“Laurent Markman Declaration”)(Doc. 60-9).
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`• The December 10, 2010, Declaration of Duane G. Laurent in Support
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`of the Plaintiff’s Motion for Partial Summary Judgment Based on
`
`Invalidity (“Laurent Declaration”).
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`• The December 10, 2010, Declaration of Zachary W. Hilton in Support
`
`of Plaintiff’s Motion for Summary Judgment of Invalidity and
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`accompanying exhibits.
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`• The December 9, 2010, Declaration of Chi-Gon Chen and
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`accompanying exhibits.
`
`
`
`4
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`Richmond, Exh. 2004, p.4
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`

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`• The December 9, 2010, Declaration of John Browder and
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`accompanying exhibits.
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`• The transcript of the Deposition of Simon Nicholas Richmond in this
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`litigation.
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`• The transcript of the Deposition of John Browder in this litigation.
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`• The Declaration of Simon Nicholas Richmond In Response to Motion
`
`for Summary Judgment which will be submitted concurrently with
`
`this declaration (“Richmond Declaration”).
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`• The expert report of Dr. Frank D. Tinari, Ph.D dated December 21,
`
`2010, entitled “An Appraisal of Economic Loss to Simon N.
`
`Richmond and Adventive Ideas, Inc.”
`
`• Customer comments regarding the IDC “Spectrum” solar lights at
`
`issue, on the website “qvc.com”.
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`• Other documents in the prosecution of the ‘477 and ‘827 patents and
`
`other documents filed in this litigation.
`
`III. PROFESSIONAL BACKGROUND
`4.
`
`I am an expert in optical and electrical devices and an Associate Professor
`
`and Assistant Dean at the College of Engineering and Computer Science at the
`
`University of Central Florida. I have doctoral degree in Electrical Engineering
`
`with a specialization in Photonics, which is the study of the generation,
`
`
`
`5
`
`Richmond, Exh. 2004, p.5
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`

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`Case 3:09-cv-02495-GEB-DEA Document 104-12 Filed 01/03/11 Page 6 of 75 PageID: 4483
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`manipulation and detection of light. I created the University of Central Florida’s
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`undergraduate degree program in Photonics, and I have taught a variety of
`
`university courses in photonics and electronics. A copy of my resume and
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`curriculum vitae is attached as Exhibit A.
`
`5.
`
`Before joining the University of Central Florida, I was an engineer in the
`
`optical industry for eight years. I am an inventor in the following twenty-one
`
`United States patents: 7,659,674, 7,572,028, 7,520,634, 7,387,405, 7,350,936,
`
`7,255,457, 7,242,152, 7,186,003, 7,161,556, 7,135,824, 7,132,785, 7,088,040,
`
`7,064,498, 7,014,336, 6,975,079, 6,956,500, 6,897,624, 6,608,453, 6,100,540,
`
`6,049,297, and 5,997,155. All but three of these patents involve lighting.
`
`6.
`
`From 1999 to mid 2002, I was an engineer at Color Kinetics Incorporated
`
`(“Color Kinetics”), a lighting company which is now Philips Solid-State Lighting.
`
`Color Kinetics was known worldwide as the center of LED innovation at this time.
`
`U.S. Patent No. 7,064,498, entitled Light-Emitting Diode Based Products
`
`(“Dowling”), describes some of this work.
`
`7.
`
`At Color Kinetics I worked with Colin Piepgras, George Mueller, Ihor A.
`
`Lys, Kevin J. Dowling, and Frederick M. Morgan. These individuals are the
`
`inventors in the Piepgras ‘358 publication, which I understand IDC has contended
`
`is important to this litigation. The Piepgas ‘358 publication is another Color
`
`Kinetics invention from the same body of work as the Dowling patent. My co-
`
`
`
`6
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`Richmond, Exh. 2004, p.6
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`

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`inventors in the Dowling patent include all of the inventors in the Piepgras ‘358
`
`Publication.
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`IV. CLAIM CONSTRUCTION
`8.
`
`I understand that the claims of a patent have the meaning that would be
`
`given to them by one of ordinary skill in the art at the time the invention was made.
`
`I also understand that the claim constructions given in the Court’s November 12,
`
`2010, Markman Order are controlling for the purposes of this declaration.
`
`9.
`
`Accordingly, in interpreting the claims of the ‘477 and ‘827 patents I have
`
`applied the claim constructions given by the Court in the Markman Order. For
`
`claim terms where the Court has provided no construction, I have applied the
`
`constructions I find would be applied by one of ordinary skill in the art at the time
`
`the invention was made. I found that all claim terms for which the Court has
`
`provided no construction have a meaning which is apparent to one of ordinary skill
`
`from reading the patent specifications.
`
`10. The Markman Order construes “including a varying color” to mean “the
`
`colors produced include a color that changes over time by varying the intensity of
`
`one or more of the lamps with time” and “to produce a varying color” to mean “the
`
`colors produced include a color that changes over time by varying the intensity of
`
`one or more of the lamps with time.”
`
`
`
`7
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`Richmond, Exh. 2004, p.7
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`

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`11. The Markman Transcript at pages 21-23 further clarifies the meaning of
`
`“varying color” as provided in the Markman Order’s construction. The Court
`
`proposed the construction of “including a varying color” to the parties, to which
`
`Mr. Shiells for the defendants remarked that “varying” did not mean a color that
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`“goes on and off, red, blue.” The Court replied that “varying” meant varying
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`“[o]ver time, as opposed to instantaneously, i.e. turning a switch.” Mr. Hilton for
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`the plaintiff indicated “[t]here’s nothing in the claim language that refers to the
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`time in which, what the time period is.” The Court replied “[v]arying means
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`varying. It doesn’t mean instantaneously on, off, or binary.”
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`12. Accordingly, under the Markman order, both alone and as clarified by the
`
`Markman Transcript, “varying” excludes an instantaneous or binary color change
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`resulting from instantaneously turning one LED off and turning another LED on,
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`successively, each at a fixed intensity.
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`13. The Markman Order construes “independently control delivery of power to
`
`each of said lamps so as to vary the intensity of light emitted over time to produce
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`a continuous color changing cycle” to mean “the light sub-circuit delivers power to
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`one or more of the lamps so that one or more of the lamps illuminate at varying
`
`intensities over time, resulting in a monochrome or the mixing of the different
`
`colors such that they produce a continuous color changing cycle.” By analogy to
`
`the Court’s construction of “varying”, the Court’s construction of “varying
`
`
`
`8
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`Richmond, Exh. 2004, p.8
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`

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`intensities” excludes an instantaneous change from a maximum intensity to no
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`intensity at all. Such a “binary” change would produce a “discrete” color change
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`rather than the “continuous color changing cycle” required by the claim
`
`construction.
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`V. THE FOUR SEASON SOLAR LIGHTS DO NOT ANTICIPATE THE
`ASSERTED CLAIMS
`
`
`I understand that the plaintiff in this litigation, International Development
`
`14.
`
`Corporation (“IDC”), claims to have sold three of its products, the Sphere Four
`
`Season Solar Light, the Beacon Four Season Solar Light, and the Mediterranean
`
`Four Season Solar Light (collectively the “Four Season Solar Lights”) in 2001 and
`
`2002. I understand that IDC Model Nos. 6800, 6860, 6880, and 6890 refer to the
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`Sphere Four Season Solar Light, IDC Model Nos. 6803, 6805, 6825, 6845, 6865,
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`6885, and 6895 refer to the Beacon Four Season Solar Light, and IDC Model Nos.
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`6801, 6861, and 6881 refer to the Mediterranean Four Season Solar Light. The
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`different model numbers of the Four Season Solar Lights refer to identical products
`
`in all respects pertinent to the discussion herein, and will be considered
`
`collectively.
`
`15. The Laurent Declaration argues the Four Season Solar Lights anticipate the
`
`Asserted Claims, meaning that he asserts that the Four Season Solar Lights contain
`
`each and every element of the Asserted Claims. Exhibit A to the Chen Declaration
`
`
`
`9
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`Richmond, Exh. 2004, p.9
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`

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`contains circuit schematics for the Mediterranean Four Season Solar Light and
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`Sphere Four Season Solar Light. Exhibit B to the Chen Declaration contains a
`
`circuit schematic for the Mediterranean Four Season Solar Light. Exhibit C to the
`
`Chen Declaration contains a circuit schematic for the Beacon Four Season Solar
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`Light. These schematics are respectively attached as Exhibits B-1, B-2, and B-3 to
`
`this declaration.
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`16.
`
`I have considered the circuit schematics and the description of the Four
`
`Season Solar Lights in the Laurent Declaration. I conclude IDC’s argument the
`
`claims are anticipated is demonstrably false.
`
`17. The Asserted Claims contain the following limitations:
`
`Claim
`
`Limitation
`
`‘477 patent independent claims 1 and
`
`“at least two lamps of different colours
`
`20, and dependent claims 2-9, 13-16,
`
`to produce a desired colour including a
`
`21-22, and 26
`
`varying colour”
`
`‘827 patent independent claim 27 and
`
`“at least two lamps of different colours
`
`dependent claims 28-31
`
`to produce a varying colour”
`
`‘827 patent independent claim 32 and
`
`“a light sub-circuit to independently
`
`dependent claims 33-34
`
`control delivery of power to each of said
`
`lamps so as to vary intensity of light
`
`emitted over
`
`time
`
`to produce a
`
`
`
`10
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`Richmond, Exh. 2004, p.10
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`

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`‘827 patent independent claim 35
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`“a plurality of lamps of different colors
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`continuous color changing cycle”
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`to produce a varying color”
`
`
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`18. Thus, all Asserted Claims except Claims 32-34 require at least two lamps
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`that can produce a “varying” color. Claims 32-34 require a light sub-circuit that
`
`can “vary intensity of the light emitted [by at least two lamps] over time to produce
`
`a continuous color changing cycle”. Thus, for the reasons given in paragraphs 10-
`
`13 above, all Asserted Claims require a device to be able to vary the intensity of a
`
`lamp with time, as distinguished from turning each light on instantaneously, then
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`off instantaneously, one successively after another.
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`19. The concept of varying the intensity of light emitted by at least two lamps to
`
`produce a changing color is described at column 6, lines 6-9 of the ‘477 patent and
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`column 7, lines 15-18 of the ‘827 patent. The patents explain this concept as “a
`
`constantly changing lighting effect” produced by “ramping up and ramping down
`
`the intensity of light displayed by” three LEDs.
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`20. A device that can only turn lamps of different colors instantaneously on then
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`instantaneously off, successively, does not meet the limitations of the Asserted
`
`Claims because it cannot vary the intensity of any lamp with time. Each of the
`
`
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`11
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`Richmond, Exh. 2004, p.11
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`

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`three Four Season Solar Light models is such a device, and therefore cannot
`
`anticipate the Asserted Claims.
`
`21. An LED is an electrical circuit element which emits light when provided
`
`with electrical power. The intensity of the light is directly proportional to the
`
`amount of power provided to the LED. That is, delivering more power will cause
`
`the LED to emit light with more intensity and delivering less power will cause the
`
`LED to emit light with less intensity. An LED which receives no power will emit
`
`no light and can be said to be “off.”
`
`22. At least some of the Four Season Solar Lights have three LEDs of different
`
`colors. The lights have a switch that permits the user to select between four modes
`
`of operation. Three of the modes of operation correspond to the three LED colors.
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`In any of these modes, the Four Season Solar Light will continuously illuminate
`
`one of the three colored LEDs with a fixed intensity. The fourth mode is a
`
`multiple-color mode which causes the Four Season Solar Light to alternate
`
`between the three colored LEDs, turning each on, one at a time, in sequence. Only
`
`the multiple-color mode will be discussed further.
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`23. A 4017 decade counter is a common digital electronic component which
`
`stores a number from 1 to 10 and has ten output signals, one for each number
`
`between 1 and 10. Each output is a binary digit, either a “0” or a “1”. A 4017
`
`decade counter cannot produce an output which is not a binary 0 or a binary 1.
`
`
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`12
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`Richmond, Exh. 2004, p.12
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`

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`24. At any given time, one of the output signals, the output signal corresponding
`
`to the stored number, will be a binary 1. The other nine output signals,
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`corresponding to the nine numbers which are not stored, will be a binary 0.
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`Therefore, one can tell which digit is stored by finding which output signal has the
`
`high voltage.
`
`
`
`Figure 1: three example 4017 decade counters from left to right storing the number
`2, 5, and 8. Only the output for the stored number is a binary 1. All other outputs
`are binary 0s.
`
`25. As stated in the Laurent Declaration at paragraphs 51, 71, and 91, each of
`
`the Four Season Solar Lights contains a single 4017 decade counter that controls
`
`the three LEDs. The different product lines use different variations of a 4017
`
`decade counter, a HCF4017BE, a CD4017, and a MC14017BCP, but the
`
`differences between the variations are irrelevant to their operation.
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`
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`13
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`Richmond, Exh. 2004, p.13
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`

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`
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`Figure 2: the 4017 decade counters shown in Exhibits B-1, B-2, and B-3. While
`the leftmost counter does not clearly show a “4017” label, I recognize it as a 4017
`decade counter from its layout and by comparison to the other 4017 decade
`counters.
`
`26. Each Four Season Solar Light uses a 4017 decade counter in the same
`
`manner. In the multiple-color mode the output signals of the 4017 decade counter
`
`control the power to each of the LEDs. Each LED is associated an output signal of
`
`the 4017 decade counter. When the associated output signal is a binary 1, the LED
`
`will receive a fixed amount of power, causing the LED to emit light. If the output
`
`is a 0, the LED will receive no power and will not emit light.
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`
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`14
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`Richmond, Exh. 2004, p.14
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`

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`
`
`Figure 3: the effect of the output of the 4017 decade counters in the circuit
`schematics. Counter-clockwise from top-left are the circuit schematics in Exhibits
`B-1, B-2, and B-3. The output of the 4017 decade counter (orange lines) switches
`on one of the three transistors, which in turn delivers a fixed amount of power (red
`lines) to one of the three LEDs (red circles).
`
`27. According to the schematics in Figure 3, only the 4017 decade counter
`
`outputs for the numbers 2, 5, and 8 are connected to the rest of the circuit. In a
`
`circuit built literally according to these schematics, each time the 4017 decade
`
`counter counts from 1 to 10, the LEDs will only illuminate when the 4017 decade
`
`counter is at 2, 5, and 8. At all other times the LEDs will be off. This irregular
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`turning off of all of the LEDs is not mentioned in the discussion of the Four Season
`
`Garden Lights in the Laurent Declaration.
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`28. There is no component in the Four Season Solar Lights which varies the
`
`power delivered to any LED with time, and consequently the Four Season Solar
`
`
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`15
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`Richmond, Exh. 2004, p.15
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`

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`Lights do not produce a color that “changes over time by varying the intensity of
`
`one or more of the lamps with time,” as construed by the Court. In the Four
`
`Season Solar Lights, the power delivery is binary: a fixed amount of power is
`
`delivered to an LED when its respective 4017 decade counter output is a 1, and no
`
`power is delivered to an LED when its respective 4017 decade counter output is a
`
`0. Thus, the LED turn on and off instantaneously, one after another, in a binary
`
`fashion. The LEDs in the Four Season Solar Light circuits must always be in one
`
`of two states: emitting light at a fixed intensity or not emitting light at all.
`
`29. The Laurent Declaration acknowledges that the circuit in the Four Season
`
`Solar Lights uses a decade counter to control the LEDs, which inherently produces
`
`a binary, instantaneous change in each LED from “on” to “off,” but ignores that
`
`this construction precludes the Four Season Lights from producing a color that
`
`“changes over time by varying the intensity of one or more of the lamps with time”
`
`as “varying” was construed by the Court. The following quotations are from the
`
`Laurent Declaration. I completely disagree that the circuitry described by Dr.
`
`Laurent is capable of producing light of “varying” color.
`
`Product
`Sphere Four
`Season Solar
`Light
`
`¶ Quotation
`33 “circuitry in the [Sphere Four Season Solar Light] can address
`the red, white and blue (or red, amber and blue) LED diodes
`in a sequential, cyclic pattern, causing the individual color
`intensities to vary with time in a red-white-blue repeating
`pattern.”
`40 “when the user sets the mode switch to ‘MULTI,’ the three
`LEDs in the [Sphere Four Season Solar Light] emit light in a
`
`
`
`16
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`Richmond, Exh. 2004, p.16
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`

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`
`
`Beacon Four
`Season Solar
`Light
`
`Mediterranean
`Four Season
`Solar Light
`
`cyclic pattern – red, white, then blue – that repeats
`continuously until the batteries are unable to provide power
`for the circuit to operate.”
`47 “With the power switch in the [Sphere Four Season Solar
`Light] set to ‘ON,’ the mode switch set to ‘MULTI,’ and the
`photo-detector exposed to a low light level, the [Sphere Four
`Season Solar Light] first illuminates the red lamp, followed by
`the white (or amber) lamp, and then the blue lamp, before the
`cycle repeats over and over again until the battery is
`exhausted or the light level becomes high.”
`53 “circuitry in the [Beacon Four Season Solar Light] can
`address the green, red and amber LED diode pairs in a
`sequential pattern, causing the individual color intensities to
`vary with time in a green-red-amber repeating pattern.”
`60 “when the user sets the mode switch to ‘MULTI,’ the three
`lamps in the [Beacon Four Season Solar Light] emit light in a
`cyclic pattern – amber, red, and green – that repeats
`continuously until the batteries are unable to provide power
`for the circuit to operate.”
`67 “With the power switch in the [Beacon Four Season Solar
`Light] set to ‘ON,’ the mode switch set to ‘MULTI,’ and the
`photo-detector exposed to a low light level, the [Beacon Four
`Season Solar Light] first illuminates the amber lamp, followed
`by the red lamp, and then the green lamp, before the cycle
`repeats over and over again until the battery is exhausted or
`the light level becomes high.”
`73 “circuitry in the [Mediterranean Four Season Solar Light] can
`address the green, red and amber LED diode pairs in a
`sequential pattern, causing the individual color intensities to
`vary with time in a green-red-amber repeating pattern.”
`80 “when the user sets the mode switch to ‘MULTI,’ the three
`lamps in the [Mediterranean Four Season Solar Light] emit
`light in a cyclic pattern – amber, red, and green – that repeats
`continuously until the batteries are unable to provide power
`for the circuit to operate.”
`87 “With the power switch in the [Mediterranean Four Season
`Solar Light] set to ‘ON,’ the mode switch set to ‘MULTI,’
`and the photo-detector [17] exposed to a low light level, the
`[Mediterranean Four Season Solar Light] first illuminates the
`
`
`
`17
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`Richmond, Exh. 2004, p.17
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`

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`
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`amber lamp, followed by the red lamp, and then the green
`lamp, before the cycle repeats over and over again until the
`battery is exhausted or the light level becomes high.”
`
`
`
`30. At no time does Dr. Laurent indicate that any LED produces light of more
`
`than one intensity or of any color other than the colors of the three LEDs in the
`
`respective Four Season Solar Light.
`
`31. The Four Season Solar Lights cannot produce a “varying” color that varies
`
`intensity over time, as construed by the Court, because of the binary nature of the
`
`output of a 4017 decade counter. Each output can only be a 1, indicating the LED
`
`should illuminate at a fixed intensity, or a 0, indicating the LED should not
`
`illuminate, and the change between these states occurs instantaneously.
`
`32. According to the Laurent Declaration, the instantaneous, full on, fixed
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`intensity, illumination of a single LED, followed by immediately turning off that
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`LED and instantaneously turning on another LED, at fixed intensity (as in the Four
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`Season Solar Light), constitutes a “varying” color or “vary[ing] intensity of the
`
`light emitted [by at least two lamps] over time to produce a continuous color
`
`changing cycle” as required by the Asserted Claims. Dr. Laurent’s position is
`
`incorrect and such a conclusion cannot be supported under the Court’s Markman
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`Order. The only changing color which the Four Season Solar Lights are capable of
`
`is the very definition of a “binary,” instantaneous, change in color excluded by the
`
`Court’s Markman Order. One output of a 4017 decade counter changes from a
`
`
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`18
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`Richmond, Exh. 2004, p.18
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`binary 1 to a binary 0, instantaneously turning a lamp from a fixed intensity to off,
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`and another output changes to a binary 1, instantaneously turning another lamp full
`
`on at a fixed intensity, then off.
`
`33. The Four Season Solar Lights cannot vary the intensity of any lamp with
`
`time, as the LEDs only go from an “on” state to an “off” state. The Four Season
`
`Solar Lights also cannot produce a continuous color changing cycle. Instead, the
`
`color changing cycle alternates through three discrete colors, each being
`
`instantaneously turned on or off, which is not a “varying” color or a “continuous
`
`color changing cycle.”
`
`34. Because the Four Season Solar Lights cannot vary the intensity of any lamp
`
`with time and cannot produce a continuous color changing cycle, I conclude the
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`Four Season Solar Lights do not anticipate any of the Asserted Claims.
`
`VI. THE FOUR SEASON SOLAR LIGHTS AND THE PIEPGRAS ‘358
`PUBLICATION DO NOT RENDER ‘827 PATENT CLAIMS 30-31 AND 34
`OBVIOUS UNDER THE REASONING IN THE LAURENT
`DECLARATION
`
`
`35. The Laurent Declaration further claims that ‘827 patent claims 30-31 and 34
`
`are rendered obvious by the Four Season Solar Lights and the Piepgras ‘358
`
`Publication. I have considered the Four Season Solar Lights and the Piepgras ‘358
`
`Publication and I conclude they do not render claims 30-31 and 34 obvious.
`
`
`
`19
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`Richmond, Exh. 2004, p.19
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`

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`36. Claim 30 requires the use of diodes which emit red, blue, and green light.
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`Red, blue, and green LEDs together are not a part of any of the Four Season Solar
`
`Lights. The Laurent Declaration relies upon the Four Season Solar Lights as
`
`containing the limitations of independent claim 27, on which claim 30 depends,
`
`including varying the intensity of one or more lamps. The Laurent Declaration
`
`relies upon the Piepgras ‘358 Publication as disclosing the use of red, blue, and
`
`green LEDs together.
`
`37. Claims 31 and 34 require varying the frequency of the varying changes to
`
`light intensity. Varying the frequency of changes to light intensity is not part of
`
`the Four Season Solar Lights. Claims 27 and 32 both require varying the intensity
`
`of one or more lamps. Claim 31 recites producing a continuous color changing
`
`cycle and claim 34 requires production of a continuous color changing cycle
`
`through its dependency on claim 32. The Laurent Declaration contends that the
`
`Four Season Solar Lights vary the intensity of one or more lamps with time and
`
`produce a continuous color changing cycle, which is an incorrect conclusion.
`
`Based on that incorrect conclusion, Dr. Laurent asserts it would have been obvious
`
`to one of ordinary skill to incorporate the varying of frequency from the Piepgras
`
`’358 publication into the Four Season Solar Lights. However, as discussed above,
`
`the Four Season Solar Lights do not do so, and are not capable of producing a “a
`
`color that changes over time by varying the intensity of one or more of the lamps
`
`
`
`20
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`Richmond, Exh. 2004, p.20
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`

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`Case 3:09-cv-02495-GEB-DEA Document 104-12 Filed 01/03/11 Page 21 of 75 PageID: 4498
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`with time.” Altering the Four Season Solar Light to produce a “varying color” that
`
`“changes over time by varying the intensity of one or more lamps with time”
`
`would require a complete redesign, not a simple modification within the ordinary
`
`skill of those in the solar garden light art.
`
`38. As discussed above, Dr. Laurent has incorrectly evaluated the scope and
`
`content of the prior art, namely the Four Season Solar Lights. Attempting to
`
`combine the red, blue, and green LEDs (which the Four Season Solar Lights donot
`
`have) from the Piepgras ‘358 publication into one of the Four Season Solar Lights
`
`to meet the limitations of claim 30, as proposed by Dr. Laurent in hindsight, does
`
`nothing to remedy the inability of the Four Season Solar Lights to vary the
`
`intensity of one or more lamps with time or produce a continuous color changing
`
`cycle. In any event, there would also be no motivation to make the Dr. Laurent’s
`
`proposed alteration. The reason red, green, and blue LEDs are used together in the
`
`Piepgras ‘358 publication is to allow creation of a wide variety of desired colors,
`
`by mixing the respective colors at varying intensities. Choosing to use red, green,
`
`and blue LEDs together (instead of red, white and blue, for example, or any one of
`
`the many other possible LED colors), is pointless in the Four Season Solar Lights,
`
`since they do not perform “varying the intensity of one or more lamps with time”
`
`and do not have more than one LED on at a time, precluding mixing to produce
`
`colors other than the colors of each of the individual LEDs alone. Since each of
`
`
`
`21
`
`Richmond, Exh. 2004, p.21
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`the Four Season Solar Lights is designed to never have more than one LED on at a
`
`time and does not and cannot produce a “varying color” by “varying the intensity
`
`of one or more lamps with time,” it would not be obvious to use red, green, and
`
`blue LEDs together.
`
`39. Varying the frequency of the oscillator in the Four Season Solar Lights, as
`
`proposed by Dr. Laurent, does nothing to remedy the inability of the Four Season
`
`Solar Lights to vary the intensity of one or more lamps over time or produce a
`
`continuous color changing cycle. The lamps would still simply go “on” and “off”
`
`successively, one at a time, though more slowly or more quickly. That would not
`
`“produce a color that changes over time by varying the intensity of one or more of
`
`the lamps with time” or produce a continuous color changing cycle.
`
`40. The obviousness analysis in the Laurent Declaration is fundamentally flawed
`
`because it relies on the Four Season Solar Lights varying the intensity of one or
`
`more lamps with time and producing a continuous color changing cycle, which the
`
`Four Season Solar Lights do not do. Dr. Laurent’s argument that it would be
`
`obvious to combine the Four Season S