UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND THE 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 IPR2014-00937
`Patent 8,362,700
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`REVISED PETITION FOR INTER PARTES REVIEW UNDER 35
`U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ. (CLAIMS
`1–11, 13–15, 24–34, AND 45–47 OF U.S. PATENT NO. 8,362,700)
`
`
`
`
`
`
`

`

`Table of Contents
`I. 
`Introduction ....................................................................................................... 1 
`Patent Owner’s Objection to Petitioner’s Expert Declaration.......................... 3 
`II. 
`Preliminary Response to Petitioner’s POSA .................................................... 5 
`III. 
`IV.  Preliminary Response to Petitioner’s Claim Construction ............................... 7 
`A.  “constant colour” ..................................................................................... 8 
`B.  “Varying color” and the 700 Varying Color Limitations ........................ 8 
`C.  “switch being accessible by a user” ....................................................... 12 
`D.  “securing means” ................................................................................... 12 
`Petitioner’s Grounds 1 – 4 for Unpatentability are Insufficient to
`V. 
`Demonstrate a Reasonably Likelihood that Petitioner Will Prevail Against
`the Challenged Claims .............................................................................................. 13 
`A.  Legal Standards ...................................................................................... 13 
`B.  The Relevant Prosecution History of the 700 Patent ............................. 14 
`C.  The Assertions of Ground 1 Are Insufficient to Support
`Institution of an IPR ............................................................................... 16 
`1.  Chliwnyj Does Not Teach the 700 Varying Color Limitations ........ 16 
`2.  The Asserted Combination of References in Ground 1 Do Not
`Teach or Suggest Modifying Wu to Include “An Activation
`Sub-circuit to Provide Power to Said Light Sources Only at
`Low Light Levels” ............................................................................ 22 
`3.  Wu and AU 505 are Each Cumulative of Shalvi and Zhang
`reviewed in prior Office proceedings with Respect to the
`“User Operated Switch” of Claims 3 and 45 and with Respect
`to the “Light Sensitive Switch” of Claim 21 .................................... 26 
`4.  The Asserted Wu Reference Does Not Teach an Accessible
`“user operated switch” ...................................................................... 29 
`ii
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`
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`

`

`D.  The Assertions of Ground 2 Are Insufficient to Support
`Institution ............................................................................................... 32 
`E.  The Assertions of Ground 3 Are Insufficient to Support
`Institution ............................................................................................... 33 
`F.  The Assertions of Ground 4 Are Insufficient to Support
`Institution ............................................................................................... 34 
`G.  Wu Cited is Cumulative of a Prior Office Proceeding .......................... 37 
`H.  Chliwnyj Cited in Grounds 1 – 4 is Cumulative of a Prior Office
`Proceeding .............................................................................................. 39 
`VI.  The Assertions of Invalidity in Ground 5 of the Petition Should Not be
`Instituted ......................................................................................................... 42 
`VII.  AU 505 is Much Less Material Than Prior Art Considered During the
`Original Prosecution, such as Dowling .......................................................... 48 
`VIII.  Secondary Considerations Defeat Likelihood of Proving Obviousness ........ 50 
`IX.  CONCLUSION ............................................................................................... 55 
`X.  Appendix of Exhibits ...................................................................................... 57 
`
`
`
`
`
`
`iii
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`

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`I.
`
`
`Introduction
`Petitioner, comprised of 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, LLC2, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test
`
`Rite Products Corp. (collectively “Petitioner”), seeks to cancel as unpatentable
`
`Claims 1–11, 13–15, 24–34, and 45–47 of U.S. Patent No. 8,362,700 (the “700
`
`Patent,” see Exhibit (“Exh.”) 1001). The Petition for inter partes review (“IPR”)
`
`in this case (referred to as the “Petition” and cited as “Pet., #”) is substantively
`
`defective.
`
`Petitioner fails to demonstrate that there “is a reasonable likelihood that [the
`
`Petitioner] would prevail with respect to at least one of the claims challenged in
`
`[the Petition].” 35 U.S.C. § 314. The newly cited art “Chliwnyj” (Exh. 1005, U.S.
`
`Pat. No. 5,924,784), “Wu” (Exh. 1006, US Pat. Pub. No. US 2003/0201874), “Pu”
`
`(Exh. 1008, Chinese Pat. Pub. No. CN 2522722Y, Translation), “Xu” (Exh. 1014,
`
`Chinese Pat. Publ. No. CN 2541713, Translation), “Lau” (Exh. 1010, US Pat. No.
`
`6,431,719), and “AU 505” (Exh. 1011, AU Pat. App. No. 2002100505 A4), Shalvi
`
`(Exh. 1012, US Pat. No. 6,120,165), is either less material than or cumulative of
`
`the prior art cited during the original prosecution and none of this newly-cited art
`
`
`
`1
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`

`

`discloses, among other claimed elements, “ramp up and ramp down intensity of
`
`light emitted over time by said at least two light sources to produce a color
`
`changing cycle of more than two colors” of Claims 1 and 46 and “to vary the
`
`perceived intensity of light emitted over time by said at least two electrical
`
`light sources to produce a [continuous] color changing cycle of more than two
`
`colors” of Claims 45 and 47 (Claim 47 includes the term in brackets
`
`“continuous.”) referred to here as the “700 Varying Color Limitations.” In fact,
`
`Shalvi (Exh. 1012) relied upon by Petitioner is the self-same prior art cited during
`
`the original prosecution. In many instances, the newly-cited prior art, including
`
`Chliwnyj, Wu and others, is relied upon for the same features as the originally
`
`cited prior art and frequently so admitted by Petitioner.
`
`As to limitations requiring “an activation sub-circuit to provide power to
`
`said light sources only at low light levels” of Claims 1 and 45 – 47 and their
`
`dependents (challenged in Grounds 1 – 5); an accessible “user operated switch” of
`
`Claim 3 (Ground 1) and Claim 45 (Ground 5); a “light sub-circuit [that] delivers
`
`electric power so that said at least two light sources produce a constant color” of
`
`Claim 13 and a “first switch being operable to select a constant color” of Claim 15,
`
`each challenged in Ground 2; and “said at least two light sources compris[ing] at
`
`least a diode that emits red light and a diode that emits blue light” of Claim 24 and
`
`a further “diode that emits green light” of Claim 25, the newly-cited prior art is
`
`
`
`2
`
`

`

`cumulative to prior art already considered by the Examiner. The combination
`
`would not have been obvious for the same reasons that resulted in the original
`
`grant, because prior art teaches away from the proposed combination, and for
`
`others reasons, including ample evidence of secondary considerations. For these
`
`reasons, and others explained below, Petitioner has failed to show “a reasonable
`
`likelihood that [the Petitioner] would prevail with respect to at least one of the
`
`claims challenged in [the Petition].” 35 U.S.C. § 314.
`
`II.
`
`Patent Owner’s Objection to Petitioner’s Expert Declaration
`Patent Owner objects to Petitioner’s reliance on the declaration of Dr.
`
`Shackle (Exh. 1002) on the basis that he lacks essential qualifications regarding
`
`photovoltaic (i.e. solar) cells, solar powered lights, or other consumer products.
`
`The 700 Patent clearly recites that the claimed inventions relate to solar powered
`
`consumer products, namely “solar powered lights that produce light of varying
`
`colour.” See 700 Patent, 1: 20 – 21, and Figures 1 – 9, “the device 10…is
`
`configured as a garden light.” Id. 4: 31 - 32.
`
`Despite Dr. Shackle’s declaration that he has “over twenty years experience
`
`in the field of lighting electronics, with particular emphasis on light emitting diode
`
`(“LED”) drivers and electronic ballasts” (Exh. 1002, ¶ 3), he does not mention any
`
`experience with respect to solar powered lights, solar cells, photovoltaic cells, or
`
`any other solar powered products, or any consumer products. As such, Dr. Shackle
`
`
`
`3
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`

`

`is not qualified to render an opinion in these fields of art, or as to the ordinary level
`
`of skill in these fields.
`
`By contrast, Mr. Simon Richmond, the named inventor, has over ten (10)
`
`years of relevant experience in solar powered lights and consumer products. See
`
`Exh. 2002, Declaration of Simon Nicholas Richmond (“Richm. Decl.”), IDC, LLC
`
`v. Richmond, et al., 09-cv-2495 (“IDC Case”), Doc. 104-13, ¶¶ 5-6 (D.N.J.
`
`01/03/2011).
`
`Dr. Alfred Ducharme, whose pre-existing declaration is also provided, is a
`
`named inventor on U.S. Pat. No. 7,064,498 (see Exh. 2003, “the Dowling patent”)
`
`(reciting application in “a variety of consumer products and other household
`
`items”) (Abstract), and many other color-changing LED lighting patents, and was
`
`the Principal Optical Engineer – Engineering/Business Development for Color
`
`Kinetics Inc., Boston, MA, the assignee of the Dowling patent. See also Dr.
`
`Ducharme’s Professional Background. Exh. 2004, Declaration of Dr. Alfred
`
`Ducharme on Validity (“Ducharme Decl.”), IDC Case, Doc. 104-12, p.5 (D.N.J.
`
`01/03/2011). Dr. Ducharme led Color Kinetics’ LED Strategies Group; performed
`
`all optical design needs for all product lines, as well as created and designed all
`
`new consumer products. Ducharme Decl., “Exhibit A” p.55. Dr. Ducharme also
`
`wrote and won a DOE Phase I SBIR proposal for the development of a system to
`
`
`
`4
`
`

`

`project uniform illumination for the performance evaluation of photovoltaic cells.
`
`Exh. 2004, p.56 emphasis added).
`
`Because Dr. Shackle lacks essential qualifications regarding photovoltaic
`
`cells and consumer products, his declaration should be stricken from the record for
`
`failing to meet the requirements for competent expert testimony, or otherwise not
`
`relied upon as competent evidence.
`
`III. Preliminary Response to Petitioner’s POSA
`“It is the person of ordinary skill in the field of the invention through whose
`
`eyes the claims are construed.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`
`Cir. 2005). Patent Owner disagrees with Petitioner’s assertion that “as of the
`
`earliest effective filing date of the 700 Patent claims, a person of ordinary skill in
`
`the art (‘POSA’) 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 [sic] electrical or electronics engineering or
`
`physics with at least two years industrial experience and demonstrable experience
`
`in the circuit design.” Pet., 7. As pointed out above, Dr. Shackle lacks any
`
`experience with solar powered lights, solar cells, photovoltaic cells, any other solar
`
`powered products, or any consumer products and is, therefore not qualified to
`
`render an opinion in these fields of art, the ordinary level of skill in these fields, or
`
`how a person of ordinary skill in this art would interpret the claim terms or read the
`
`prior art.
`
`
`
`5
`
`

`

`
`
`Contrary to Dr. Shackle’s unsupported contention, the level of ordinary skill
`
`in the art is industrial design of solar garden lights and physical manufacture of the
`
`lights. See, e.g., Richm. Decl. ¶¶ 9 and Ducharme Decl. ¶¶ 64. Richmond himself
`
`does not possess the electrical engineering degrees that Dr. Shackle claims are
`
`required of “ordinary” skilled artisans in this field. Richm. Decl., ¶ 4.
`
`To demonstrate the ordinary skill in the art, Patent Owner relies on
`
`attestations contained in the Richmond and Ducharme Declarations, as each
`
`possesses the relevant qualifications. See Richm. Decl. ¶ 9 – 21, and Ducharme
`
`Decl. ¶¶ 58 – 79, respectively. As Richmond testifies, 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. Richm. Decl ¶ 9. A
`
`person ordinarily skilled in the art of solar garden lights would be primarily
`
`focused on the physical and ornamental components, such as shapes and types of
`
`lenses, poles and the like, rather than on the unsophisticated electrical circuits
`
`required for solar garden lights. Richm. Decl ¶ 11.
`
`
`
`6
`
`

`

`Accordingly and in contrast to Petitioner’s proposed level of ordinary skill
`
`(provided solely by Dr. Shackle, who lacks the necessary qualifications to render
`
`an opinion on the subject), the primary area of expertise of a POSA is industrial
`
`design of solar garden lights and physical manufacture of the lights, not primarily
`
`electrical engineering or software programming for electrical components.
`
`IV. Preliminary Response to Petitioner’s Claim Construction
`In applying the broadest reasonable construction standard, claim terms are
`
`given their ordinary and customary meaning, in the context of the entire disclosure
`
`as would be understood by one of ordinary skill in the art. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “A claim must be read in accordance
`
`with the precepts of English grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed.Cir.
`
`1983).1
`
`
`1 Patent Owner responds
`
`to each of Petitioner’s proposed claim
`
`constructions with, in some cases, his own proposed claim constructions. In the
`
`cases where Patent Owner proposed the same or substantially the same
`
`construction as Petitioner, Patent Owner does not by implication intend to adopt
`
`the same reasoning or evidence for or acquiesce to any supporting argument in
`
`favor of Petitioner’s proposed construction. If an IPR is instituted, Patent Owner
`
`reserves his right to support any construction below with further evidence,
`
`including expert testimony, in the Patent Owner’s Response.
`
`
`
`7
`
`

`

`A.
`“constant colour”
`Patent Owner proposes that the term “constant colour” as used in Claims 13
`
`and 15 means: “to produce a color that is constant that does not change over time.”
`
`B.
`“Varying color” and the 700 Varying Color Limitations
`Patent Owner proposes the following construction of the 700 Varying Color
`
`Limitations:
`
` “ramp up and ramp down intensity of light emitted over time by said at least
`two light sources to produce a color changing cycle of more than two colors”
`of Claims 1 and 46 means “a color that continuously changes over time by
`ramping up and ramping down intensity of light emitted by said at least two
`light sources to produce a series of changing colors that repeats;”
` “to vary the perceived intensity of light emitted over time by said at least two
`electrical light sources to produce a [continuous] color changing cycle of more
`than two colors” of Claims 45 and 47 (Claim 47 includes the term in brackets
`“continuous”) means “a color that continuously changes over time by varying
`the intensity of one or more of the lamps with time to produce a series of
`changing colors that repeats”; and
` “varying colour” of claim 47 means “a color that continuously changes over
`time by varying the intensity of one or more of the lamps with time.”
`The term “varying colour,” which also appears in Claim 47, has been
`
`construed in a prior litigation proceeding as meaning “a color that continuously
`
`changes over time by varying the intensity of one or more of the lamps with time.”
`
`See Exh. 2005, Markman Order, Docket No. 81, Case No. 3:09-cv-02495-GEB,
`
`
`
`8
`
`

`

`IDC Case, (Nov. 12, 2010).2
`
` Patent owner adds
`
`the underlined
`
`term
`
`“continuously” to the New Jersey court’s construction in the IDC Case, because
`
`the varying change in color was understood in the Markman proceedings to be
`
`continuous. Exh. 2006 Markman Hearing Transcript Excerpt, IDC Case, pg. 2, ll.
`
`13 – 14, Nov. 4, 2010. For example, Judge Brown in the IDC Case clarified that
`
`“Varying means varying. It doesn’t [mean] instantaneously on, off, or binary.” Id.
`
`Thus, Patent Owner neither adds nor subtracts from the court’s construction with
`
`this clarification.3
`
`
`
`2 The Markman decision in the IDC Case is not binding upon Petitioner or
`
`the Board, and the portion of the Markman ruling relating to the construction of
`
`“varying color” is not binding on Patent Owner because it was based upon a
`
`stipulation by the parties in the IDC Case. See Exh. 2005, p.2-3); see also
`
`Otherson v. Department of Justice, INS, 711 F.2d 267, 274-75 (D.C.Cir. 1983).
`
`Nevertheless, the Board may give the prior Markman order deference.
`
`3 See also Exh. 2007, Memorandum Opinion in IDC Case, Docket No. 119,
`
`pg. 7 (“it would be a somewhat strained conclusion for the jury to find that ‘a color
`
`changes over time by varying the intensity of one or more lamps with time’ to
`
`apply to something that, in the normal human perception looks like binary
`
`blinking. The ‘varying color’ was intended to be observed by humans—if they
`
`
`
`9
`
`

`

`This clarification is further consistent with the broadest reasonable meaning
`
`of the term varying color that is consistent with ordinary grammar. To determine
`
`the meaning of “varying colour,” we look first at the ordinary meaning of the term
`
`“varying.” “Vary” means “to change or alter.” (Dictionary.com, def. 1 (verb))
`
`(Exh. 2008). Grammatically, the use of the “-ing” suffix forms the “present
`
`participle” (Dictionary.com, def. 2) (Exh. 2009) of the verb, “denoting repetition or
`
`duration of an activity or event.” (Dictionary.com, def. 1) (Exh. 2010). By use of
`
`the present participle form of “vary,” i.e., “varying colour,” as opposed to
`
`“variable” or “varied” colour, for example, the ordinary rules of grammar require
`
`that “varying colour” be construed as color engaged in a continuous process of
`
`“changing over a duration of time,” rather than, in the words of the Judge Brown,
`
`“instantaneously on, off, or binary.” See also Exh. 2007, Memorandum Opinion,
`
`p.7.
`
`The language of the 700 Varying Color Limitations is consistent with the
`
`construction given by the court of “varying color” in the IDC Case, because each
`
`claim specifies that the claimed color changing occurs “over time.”
`
`
`
`cannot perceive its variance or the change in intensity over time, then the purpose
`
`of the invention would be frustrated.”).
`
`
`
`10
`
`

`

`Claims 1 and 46 indicate a ramping up and ramping down “over time” to
`
`produce a “color changing” cycle. The ordinary meaning of “ramp” is “a sloping
`
`surface connecting two levels.” (Dictionary.com, def. 1 (noun) (Exh. 2001). This
`
`language essentially refers to the continuous manner in which the varying color is
`
`produced, as recited in 6: 6-9 of the ‘477 Patent (which is common to the ‘700
`
`Patent) (emphasis added):
`
`The integrated circuit varies the frequency and intensity of light emitted
`by the LEDs 34A, 34B, and 34C to produce a constantly changing
`kaleidoscopic effect. The light device 10 displays a constantly changing
`lighting effect that cycles through the light spectrum by ramping up and
`ramping down the intensity of light displayed by the LEDs 34A, 34B,
`and 34C.
`In a similar manner to the term “varying”, the term “changing,” especially
`
`the use of the “present participle” of the verb “changing” which “denote[s]
`
`repetition or duration of an activity or event,” would indicate to a POSA that the
`
`broadest reasonable interpretation is that the changes are continuous. (See –ing
`
`definition, Dictionary.com) (Exh. 2009). Claims 45 and 47 each recite the terms
`
`“to vary,” “over time,” and “continuous color changing” which would indicate to a
`
`POSA that the changes or variations of color are continuous.
`
`Furthermore, the ordinary meaning of the term “cycle” is “a “series of
`
`occurrences that repeats.” (Dictionary.com, def. 1 (noun) (Exh. 2011). The term
`
`
`
`11
`
`

`

`cycle, therefore, would indicate that the pattern of color changing repeats in a
`
`predictable manner.
`
`Accordingly, Claims 1 and 46 of the 700 Patent specifically require that the
`
`color changing cycle be accomplished by ramping up and ramping down intensity
`
`of light emitted over time in a series of changing colors that repeats by said at
`
`least two light sources. Similarly, Claims 45 and 46 of the 700 Patent specifically
`
`require that the color changing cycle be accomplished by varying the intensity of
`
`one or more of the lamps with time to produce a series of changing colors that
`
`repeats.
`
`C.
`“switch being accessible by a user”
`Patent Owner proposes the following construction of the term “switch being
`
`accessible by a user” as used in Claims 27, 33, and 35: “the switch is accessible to
`
`the user without substantial effort, tools, or destruction.”
`
`D.
`“securing means”
`Patent Owner proposes the following construction of the term “securing
`
`means” in Claim 1: “the structure that engages cap assembly to the lens to secure
`
`the cap assembly with respect to the lens.” See 700 Patent, 4: 48 – 57.
`
`Petitioner asserts that this language invokes 35 U.S.C. § 112 para. 6.
`
`However, this claim language does not use conventional means-plus-function
`
`language. Petitioner has put forth no evidence that this language was intended to
`
`invoke Section 112(6). See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
`
`
`
`12
`
`

`

`1580, 1584 (Fed. Cir. 1996) (“it is fair to say that the use of the term “means”
`
`(particularly as used in the phrase “means for”) generally invokes section 112(6)
`
`and that the use of a different formulation generally does not”).
`
`V.
`
`Petitioner’s Grounds 1 – 4 for Unpatentability are Insufficient to
`Demonstrate a Reasonably Likelihood that Petitioner Will Prevail
`Against the Challenged Claims
`A. Legal Standards
`Each of Petitioner’s Grounds 1 – 5 rely on § 103(a) to assert that the stated
`
`combinations would have rendered each of the limitations of each claim obvious.
`
`Such a showing requires that Petitioner meet the basic requirements of Graham
`
`and KSR. Graham et al. v. John Deere Co., 383 U.S. 1 (1966), and KSR
`
`International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See also 37 C.F.R. §
`
`42.104(b)(4-5). Petitioner has failed to do so.
`
`None of the newly-cited prior art in the Petition discloses the 700 Varying
`
`Colors Limitations of Claims 1 and 45 – 47, and none is more pertinent than the
`
`prior art already considered during prosecution, including Dowling. As to
`
`limitations requiring a “an activation sub-circuit to provide power to said light
`
`sources only at low light levels” of Claims 1 and 45 – 47 and their dependents
`
`(challenged in Grounds 1 – 5); an accessible “user operated switch” of Claim 3
`
`(Ground 1) and Claim 45 (Ground 5); a “light sub-circuit [that] delivers electric
`
`power so that said at least two light sources produce a constant color” of Claim 13
`
`and a “first switch being operable to select a constant color” of Claim 15, each
`
`
`
`13
`
`

`

`challenged in Ground 2; and “said at least two light sources compris[ing] at least a
`
`diode that emits red light and a diode that emits blue light” of Claim 24 and a
`
`further “diode that emits green light” of Claim 25 the newly-cited prior art is
`
`cumulative to prior art already considered by the Examiner, including Dowling,
`
`Shalvi and Zhang. There is also no motivation to include such exposed or
`
`accessible switches in a solar light and the prior art includes teachings against
`
`doing so.
`
`Under 35 U.S.C. § 325(d), a ground for invalidity set forth in a petition for
`
`IPR should be rejected if “the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis
`
`added). “A piece of prior art is not material to patent prosecution when it is
`
`cumulative of information already before the examiner.” Rothman v. Target Corp.,
`
`556 F.3d 1310, 1326 (Fed. Cir. 2009).
`
`Ultimately, the Board should “secure the just, speedy and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b). This goal cannot be
`
`accomplished by reconsidering old arguments in the context of cumulative art.
`
`B.
`
`The Relevant Prosecution History of the 700 Patent
`According to the PTO, the asserted claims of the 700 Patent were allowed
`
`based on their recitation of the following:
`
`Prior art of record fails to disclose or fairly suggest, alone or in
`combination, a lighting device, said device including; an activation
`
`
`
`14
`
`

`

`sub-circuit to provide power to said light sources only at low light
`levels; and particularly including "a light sub-circuit to independently
`control delivery of power to each of said at least two light sources so as
`to ramp up and ramp down intensity of light emitted over time by said
`at least two light sources to produce a color changing cycle of more
`than two colors; connections for at least one rechargeable battery to
`power said circuit; and at least one solar cell mounted so as to be
`exposed to light and operatively associated with said connections to
`charge said battery" in combination with the remaining claimed
`limitations as recited in claim 1. Exh. 2012, 700 Patent FH, Not. of
`Allowance, Sept. 25, 2012 (underlining is the PTO’s).
`The claims of the 700 Patent were allowed after the applicant filed a
`
`terminal disclaimer to overcome rejections on the ground of nonstatutory
`
`obviousness-type double patenting over claims of the “827 Patent” (U.S. Patent
`
`No. 7,429,827, Appl. No. 11/102,229). Thus, the claims of the 700 Patent were
`
`allowed over the same prior art cited by the examiner in the 827 Patent prosecution
`
`history, which in turn includes the prior art of the “477 Patent” (U.S. Patent No.
`
`7,196,477, Appl. No. 10/789,488) prosecution history. See 700 Patent (citing each
`
`application as a parent of the 700 Patent).
`
`The 700 Patent was also allowed over many other prior art references.
`
`Many of these references were relied upon by International Development, LLC
`
`(“IDC”) in the IDC Case (IDC, LLC v. Richmond, et al., 09-cv-2495, D.N.J.).
`
`IDC’s material evidence and legal arguments of invalidity of the 477 Patent and
`
`
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`the 827 Patent were also disclosed to the PTO in the prosecution of the 700 Patent.
`
`These included IDC’s Motion for Partial Summary Judgment of Invalidity (Doc.
`
`89), and Patent Owner Richmond’s response (Doc. 104), among other pleadings,
`
`motions, and orders from the IDC Case, including the Judge’s Memorandum
`
`Opinion denying IDC’s motion for summary judgment on invalidity. Exh. 2005
`
`(Doc. 119).
`
`C. The Assertions of Ground 1 Are Insufficient to Support Institution
`of an IPR
`1.
`Chliwnyj Does Not Teach the 700 Varying Color Limitations
`Petitioner’s assertion that “Chliwnyj teaches a variable color lighting
`
`device” (Pet., 41) is unsupportable. Dr. Shackle does not affirmatively show that
`
`Chliwnyj necessarily produces “ramp up and ramp down intensity of light emitted
`
`over time by said at least two light sources to produce a color changing cycle of
`
`more than two colors”—the 700 Varying Color Limitations— and he fails to
`
`account for “random effects” being employed to produce the light, which renders
`
`the result unpredictable. Dr. Shackle cites, inter alia, the following from
`
`Chliwnyj:
`
` “[a]nother object of the present invention is to provide a flame
`simulation with the use of a pulse width modulation (PWM)
`technology to turn LEDs on and off at a frequency that is far above
`the ability of the human eye to resolve. The use of PWM is an
`economical and a very low–power approach to controlling current in
`electronic circuits. The use of PWM also yields a wide range of
`
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`apparent and continuous brightness levels.” (Chliwnyj, Ex. 1005,
`Col. 3:13–21.) See Shackle Decl., ¶ 104.
` “[a] significant advantage of the invention is the smooth change in
`the frequency of modulation of a single LED with time. Like a real
`flame the change in frequency is continuous and not abrupt. The
`modulation of a LED is accomplished by indexing through a stored
`sine wave table with a pointer as described above. At the end of a
`full cycle of the stored waveform the change requested flag is
`checked to see if a change is pending. If so the divisor for the
`counter for stepping through the waveform is incremented or
`decremented as required. The pointer is updated. This has the net
`effect of having the slowly modulated LEDs change smoothly in
`frequency over time.” (Chliwnyj, Ex. 1005, Col. 7:55–66) (emphasis
`added). See Shackle Decl., ¶ 105 (emphasis added).
`None of the above-cited portions of Chliwnyj expressly state that the
`
`produced color “ramp up and ramp down intensity of light emitted over time by
`
`said at least two light sources to produce a color changing cycle of more than two
`
`colors,” as opposed to instantaneously. And, none address the following
`
`exemplary discussions regarding the use of “random elements” to keep the flame
`
`“constantly changing”:
`
`“[t]he 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
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`the flame constantly changing.” Chliwnyj, Abstract. See also
`discussion at col. 7: 36 – 67 and 8: 1 – 65.
`Since, in Chliwnyj, “random elements” keep the flame “constantly
`
`changing,” fluctuations in color referred to by Dr. Shackle are random fluctuations,
`
`leaving the question of whether the color of Chliwnyj’s flame would, or would not
`
`be changing over any duration of time, to be determined by mere possibilities or
`
`probabilities. Even if the random elements produced any change in color at any
`
`given time, it is conjecture whether a random change in color, if it occurred, would
`
`be perceived as an “instantaneous” or “binary” change in color, rather than
`
`“varying color,” as properly construed in accordance with its broadest reasonable
`
`meaning.
`
`Dr. Shackle also makes the following assertion:
`
`In my opinion, Figure 2 below discloses a circuit that comprises a
`microcontroller and Pulse Width Modulator (PWM) capable of
`ramping up and down the intensity of each LED to produce a color
`changing cycle of more than two colors. The PWM is used to vary the
`power to each LED to ramp up and down the intensity of each light
`over time. Shackle Decl. ¶ 103 (emphasis added).
`Since, in Chliwnyj, it is random elements that keep the flame constantly
`
`changing, the supposed “capability” of ramping up and down of intensity of each
`
`LED referred to by Dr. Shackle are random occurrences. As such, Dr. Shackle’s
`
`assertions regarding the alleged teachings of Chliwnyj fall short of an affirmative
`
`
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`statement that Chliwnyj necessarily produces a “vary