UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner
`
`______________
`
`Case IPR2014-00938
`Patent 7,429,827
`____________
`
`REVISED PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 24–35 of U.S. PATENT NO. 7,429,827)
`
`Richmond, Exh. 2020, p.1
`
`

`

`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)) .................................................5
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b)) ..............................................6
`V.
`OVERVIEW OF THE ’827 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 ’827 PATENT ........................9
`A.
`Technical Background...........................................................................9
`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) ......................................14
`Chinese Patent Publication No. CN 2522722Y (“Pu”)
`(Exs. 1007 and 1008) ................................................................15
`U.S. Patent No. 7,064,498 (“Dowling”) (Ex. 1010).................15
`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1011).........................15
`Australian Patent App. No. AU 2002100505 A4
`(“Richmond App. 505”) (Ex. 1012)..........................................15
`7.
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1013).....................16
`CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ...............................................................................................16
`XI. UNPATENTABILITY GROUNDS..............................................................17
`
`4.
`5.
`6.
`
`3.
`
`X.
`
`ii
`
`Richmond, Exh. 2020, p.2
`
`

`

`B.
`
`C.
`
`A.
`
`Ground 1: Claims 24–26 are rendered obvious by Chliwnyj in
`view of Wu further in view of Pu and further in view of
`Dowling ...............................................................................................18
`Ground 2: Claims 27–29 and 31–35 are rendered obvious by
`Chliwnyj in view of Wu ......................................................................31
`Ground 3: Claim 30 is rendered obvious by Chliwnyj in view of
`Wu further in view of Lau...................................................................43
`Ground 4: Claims 27 and 35 are Obvious by Richmond App.
`505 in view of Shalvi ..........................................................................45
`XII. REDUNDANCY ...........................................................................................52
`Ground 4: Richmond App. 505 and Shalvi are not redundant ......................52
`XIII. CONCLUSION..............................................................................................53
`XIV. APPENDIX OF EXHIBITS ..........................................................................55
`
`D.
`
`iii
`
`Richmond, Exh. 2020, p.3
`
`

`

`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 24–35 of U.S. Patent No. 7,429,827 to Richmond
`
`(“the ’827 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 ’827 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.
`
`Richmond, Exh. 2020, p.4
`
`

`

`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 ’827 patent. Section VIII of this Petition summarizes the
`
`prosecution history of the ’827 patent. Section XI sets forth the detailed grounds
`
`for invalidity of the challenged claims. This showing is accompanied by the
`
`Declaration of Dr. Peter W. Shackle. (“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 ’827
`
`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., Smart
`
`2
`
`Richmond, Exh. 2020, p.5
`
`

`

`Solar, Inc. (“Smart Solar”), Test Rite Products Corp., 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 ’827 patent. On May 6, 2013, the purported Patent
`
`Owner filed an Amended Complaint alleging infringement of the ’827 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 ’827 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
`
`Richmond, Exh. 2020, p.6
`
`

`

`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 ’827 patent.
`
`The purported Patent Owner also filed additional
`
`lawsuits alleging
`
`infringement of the ’827 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
`
`Richmond, Exh. 2020, p.7
`
`

`

`The ’827 patent is being asserted in these proceedings with two other patents
`
`within the same patent family as the ’827 patent—namely, U.S. Patent Nos.
`
`7,196,477 and 8,362,700. All of the above cases are pending.
`
`Petitions have been concurrently filed on this day on two other patents that
`
`are part of the ’827 patent family—U.S. Patent Nos. 7,196,477 and 8,362,700—
`
`IPR Case numbers have not been assigned.
`
`Lead and Back-Up Counsel and Service Information (37
`C.
`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.
`
`III.
`
`GROUNDS FOR STANDING (§ 42.104(a))
`
`5
`
`Richmond, Exh. 2020, p.8
`
`

`

`Petitioner certifies that the ’827 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 ’827 patent on the grounds identified in this Petition.
`
`IV.
`
`OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’827 patent’s challenged claims is requested on
`
`the grounds for unpatentability listed in the index below.
`
`Ground
`1
`
`Basis
`
`§ 103(a)
`
`Index of References
`
`Claims
`Challenged
`
`Chliwnyj, Wu, Pu, and
`Dowling
`
`24–26
`
`2
`
`3
`
`4
`
`§ 103(a)
`
`Chliwnyj and Wu
`
`27–29 and 31–
`35
`
`§ 103(a)
`
`§ 103(a)
`
`Chliwnyj, Wu,
`and Lau
`
`30
`
`Richmond App. 505
`and Shalvi
`
`27 and 35
`
`Chliwnyj, Wu, Lau, Pu, and Richmond App. 505 were not cited or relied
`
`upon by the examiner during prosecution of the ’827 patent. At no time did the
`
`Applicant refer the references to the PTO. Dowling and Shalvi were cited in an
`
`IDS but not relied on by the examiner during the prosecution of the ’827 patent. To
`
`support the proposed grounds of unpatentability, this Petition is accompanied by
`
`6
`
`Richmond, Exh. 2020, p.9
`
`

`

`the declaration of technical expert Dr. Peter W. Shackle. (Shackle Decl., Ex. 1002.)
`
`V.
`
`OVERVIEW OF THE ’827 PATENT
`
`The ’827 patent was filed on April 7, 2005 and is a continuation-in-part of
`
`U.S. Patent No. 7,196,477 (the “’477 Patent”) filed on February 26, 2004. The
`
`’827 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 ’827 patent is solar powered lights and more particularly
`
`but not exclusively to solar powered lighting that produces a light of varying color.
`
`(’827 patent, Ex. 1001, Col. 1:11-13.) Within a given 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 ’827 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
`
`electrical or electronics engineering or physics with at least two years industrial
`
`experience and demonstrable experience in the circuit design.
`
`7
`
`Richmond, Exh. 2020, p.10
`
`

`

`VII.
`
`TECHNICAL FUNDAMENTALS OF THE CLAIMED
`SUBJECT MATTER
`
`The ’827 challenged claims are directed to the interplay between a solar
`
`garden light apparatus and electronic circuitry to produce a varying color changing
`
`effect using a plurality of light emitting elements. (Shackle Decl., Ex. 1002, ¶ 66.)
`
`The ’827 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 low ambient conditions.
`
`(Shackle Decl., Ex. 1002, ¶ 67.)
`
`VIII.
`
`PROSECUTION HISTORY
`
`The ’827 patent was filed on April 7, 2005 and issued on September 30,
`
`2008. During prosecution, rejections were made based on double-patenting in light
`
`of Richmond’s ’477 patent and certain other references. In an Office Action dated
`
`March 17, 2008, the examiner rejected claims 42–58 on the grounds of non-
`
`statutory obviousness-type double patenting as unpatentable over claims of
`
`the ’477 patent in view of U.S. Patent No. 6,384,570 to Frost. Claims 73–76 were
`
`rejected based on double patenting as unpatentable over claims of the ’477 patent
`
`in view of Frost and in further view of U.S. Patent No. 6,517,217 to Liao. Claims
`
`30–41 and 59–72 were allowed. To traverse these rejections, Richmond canceled
`
`the claims so rejected and added new claims (77–85) and filed a terminal
`
`8
`
`Richmond, Exh. 2020, p.11
`
`

`

`disclaimer to render any double-patenting rejection moot. In light of the terminal
`
`disclaimer and the cancelation of claims rejected, the examiner issued a notice of
`
`allowance on August 7, 2008. (Ex. 1003, ’827 File History.)
`
`IX. STATE OF THE ART RELATIVE TO THE ’827 PATENT
`
`The ’827 patent is broadly directed to a lighting device having a lens,
`
`rechargeable battery, solar cell, and circuitry to produce light of varying color.
`
`(’827 Patent, Col. 1:39–59.) The ’827 patent attempts to overcome disadvantages
`
`of well-known in the art light emitting diodes system that produce variable color
`
`by producing uniform desired color and the ease of adjusting the various light
`
`functions. (’827 Patent, Col. 1:17–20.) The ’827 patent admits “the invention of
`
`LED systems to produce variable color” is well known. (’827 Patent, Col. 1:17–
`
`18.) The Patent Owner also admits that using solar-powered garden lights using
`
`rechargeable batteries is also well known in the art. (’827 Patent, Col. 1:20–25.)
`
`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 discloses switches that allow a user to select a desired
`
`color and power the circuitry on and off. The prior art 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 ’827 patent.
`
`A.
`
`Technical Background
`
`9
`
`Richmond, Exh. 2020, p.12
`
`

`

`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, ¶¶ 39–40.) Figure A shows a spectrum of visible
`
`sunlight. Note there is light at every 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, ¶ 44.)
`
`Dr. Shackle’s declaration contains a figure showing the overlap of red, blue
`
`10
`
`Richmond, Exh. 2020, p.13
`
`

`

`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.)
`
`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
`
`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
`
`11
`
`Richmond, Exh. 2020, p.14
`
`

`

`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
`
`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
`
`12
`
`Richmond, Exh. 2020, p.15
`
`

`

`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
`
`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
`
`13
`
`Richmond, Exh. 2020, p.16
`
`

`

`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
`
`1005–1013.
`
`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
`
`memorial site, e.g., a garden environment. (Chliwnyj, Ex. 1005, Background of the
`
`Invention.) (Shackle Decl., Ex. 1002, ¶¶ 61, 77.)
`
`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 specifically discloses a device with an
`
`illumination function using solar energy to illuminate a light emitting element. The
`
`device is suitable for outdoor areas such as courtyards and parks and scenic
`
`environments. (Wu, Ex. 1006, Background of the Invention.) (Shackle Decl., Ex.
`
`1002, ¶ 78.)
`
`14
`
`Richmond, Exh. 2020, p.17
`
`

`

`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 1/3–3/3.) (Pu,
`
`Ex. 1009, Pu Certification) (Shackle Decl., Ex. 1002, ¶ 79.)
`
`4.
`
`U.S. Patent No. 7,064,498 (“Dowling”) (Ex. 1010)
`
`Dowling was filed on March 13, 2001, issued on June 20, 2006 and is prior
`
`art under 35 U.S.C. § 102(e). Dowling discloses a color varying circuit using a
`
`microcontroller and pulse width modulator including volatile memory. (Dowling,
`
`Ex.1010, Figure 1.) (Shackle Decl., Ex. 1002, ¶ 80.)
`
`5.
`
`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1011)
`
`Lau was filed on September 22, 2000, issued on August 13, 2002 and is
`
`prior art under 35 U.S.C. § 102(b). Lau is a night light that contains an array of
`
`differently colored light emitting diodes used to entertain and soothe the viewer.
`
`Lau teaches that the night light can output a display of dynamic light that can be
`
`frozen in a desired light pattern. (Lau, Ex. 1011, Background of the Invention.)
`
`(Shackle Decl., Ex. 1002, ¶ 81.)
`
`6.
`
`Australian Patent App. No. AU 2002100505 A4
`
`15
`
`Richmond, Exh. 2020, p.18
`
`

`

`(“Richmond App. 505”) (Ex. 1012)
`
`Richmond App. 505 was filed on June 19, 2002, published on 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. 1012, Field of the Invention.) (Shackle Decl.,
`
`Ex. 1002, ¶ 82.)
`
`7.
`
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1013)
`
`Shalvi was filed on July 9, 1997, issued on 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, a lens, and lamp drive circuitry. (Shalvi, Ex. 1013, Col.
`
`1:15–19.) (Shackle Decl., Ex. 1002, ¶ 83.)
`
`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. Solely for purposes of the proceeding, 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 “lamp” is in independent claims 24, 27, 32, and 35. The claims
`
`state “circuit having (including) at least two (a plurality of) lamps of different
`
`colours” and is construed to mean, “an electrical device, the primary purpose of
`
`16
`
`Richmond, Exh. 2020, p.19
`
`

`

`which is to create light of a single color, and which is physically connected to a
`
`source of electricity.” (Shackle Decl., Ex. 1002, ¶ 73.)
`
`The term “desired colour” is in independent claim 24. The claim states
`
`“circuit including at least two lamps of different colours to produce a desired
`
`colour” and is construed to mean, “to produce a color that is desired by the user or
`
`intended by the designer.” (Shackle Decl., Ex. 1002, ¶ 74.)
`
`The term “varying colour” is in independent claim 24, 27, 32, and 35. The
`
`claims state “including a varying colour,” and is construed to mean, “colors
`
`produced change over time by varying the intensity of one or more of the lamps
`
`with time.” (Shackle Decl., Ex. 1002, ¶ 75.)
`
`The term “switch being accessible by a user” is in independent claims 27
`
`and 35 and dependent claim 33. 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 a lens, etc., to gain access to the switch. (Shackle Decl., Ex.
`
`1002, ¶ 76.)
`
`XI.
`
`UNPATENTABILITY GROUNDS
`
`The references
`
`reviewed below render
`
`the claimed subject matter
`
`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
`
`17
`
`Richmond, Exh. 2020, p.20
`
`

`

`unpatentability. Throughout the grounds, the figures are annotated to identify
`
`elements of the claims in the prior art and emphasis is added to the evidence to
`
`support the challenge.
`
`A. Ground 1: Claims 24–26 are rendered obvious by Chliwnyj
`in view of Wu further in view of Pu and further in view of
`Dowling
`
`U.S. Patent
`No. 7,429,827
`[24.0] A
`lighting device
`to produce light
`of varying
`colour, said
`device
`comprising:
`
`Chliwnyj in view of Wu further in view of Pu and further in
`view of Dowling
`[24.0] Chliwnyj discloses a lighting device to produce light of
`varying colour.
`
`“The preferred embodiment has a plurality of lighting elements
`in a plurality of colors which are modulated in intensity by a
`control circuit with a stored program. The control program
`includes stored amplitude waveforms for the generation of a
`realistic flame simulation. The program further contains random
`elements to keep the flame constantly changing.” (Chliwnyj, Ex.
`1005, Abstract).
`
`“The turning on and turn off of the LEDs, caused by a pulse
`width modulation of an LED current, tends to broaden the
`spectrum of the LEDs. This leads to an increased apparent
`brightness of the flame. Super BriteTM light emitting diodes
`(Super BriteTM LEDs), which may be supplied by high power
`AlInGaP amber and reddish-range LED lamps, have a wider
`spectrum than other LEDs. Super BriteTM LEDs may also
`enhance the flame motion due to color changes.” (Chliwnyj, Ex.
`1005, Col. 5:18–25).
`
`“The controlling program comprises stored instructions for
`generating the amplitude modulated time waveforms for
`controlling the current to the lighting elements. Pulse Width
`modulation (PWM) may be performed in either hardware or
`program code, provided that sufficient microprocessor
`“bandwidth” may be available to perform the program-code
`operations. Drivers provide the necessary drive current for the
`
`18
`
`Richmond, Exh. 2020, p.21
`
`

`

`respective lighting element.” (Chliwnyj, Ex. 1005, Col. 5:34–
`41).
`
`“As shown in FIG. 2, a combination of flame-simulation
`circuitry and program-coded power management may
`incorporate photovoltaic panels 16, charging circuits 18, and
`rechargeable batteries 17. Microprocessor 1 may control pulse
`width modulator 19 which in turn drives LEDs 20 to create a
`realistic simulated flame. This results in a simulated flame for
`use, for example, in cemeteries as a memorial marker. With
`sufficient power generating capacity the flame may run day and
`night, creating in effect an “eternal flame.” (Chliwnyj, Ex. 1005,
`Col. 5:63–Col. 6:4).
`
`Figure 2 is a function block diagram of a solar-powered flame-
`simulation circuitry. Figure 2 discloses a Pulse Width Modulator
`(PWM) to control each LED to produce a varying color.
`
`[24.1] a lens
`generally
`enclosing a
`chamber;
`
`(Shackle Decl., Ex. 1002, ¶¶ 88–94.)
`[24.1] Wu discloses a lens generally enclosing a chamber.
`
`See Figures 1a and 2.
`
`19
`
`Richmond, Exh. 2020, p.22
`
`

`

`[24.2] a circuit
`including: at
`least two
`lamps of
`different
`colours to
`produce a
`desired colour,
`
`(Shackle Decl., Ex. 1002, ¶¶ 95–96.)
`[24.2] Chliwnyj discloses a circuit including at least two lamps
`of different colours to produce a desired colour.
`
`“A microprocessor-based simulated electronic flame in its best
`mode uses multiple LEDs as controlled lighting elements to give
`the appearance of flame motion, typically when viewed through
`a diffuser. The plurality of controlled lights allow the simulated
`flame motion. Additionally, the use of a plurality of colors also
`enhances the effect of flame motion.” (Chliwnyj, Ex. 1005, Col.
`5:11–17).
`
`“FIG. 1 shows a functional block diagram of a microprocessor-
`based prototype circuit comprising a flame simulation circuitry.
`The device 8 initially consisted of a set of five Super BriteTM
`LEDs 7a, 7b, 7c, 7d, and 7e (LEDs 7a–e) in 2 or 3