Trials@uspto.gov
`Tel: 571–272–7822
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`
`
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`Paper 22
`Entered: December 16, 2014
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`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.
`_______________
`
`IPR2014-00937
`Patent 8,362,700 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and BARRY L.
`GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`IPR2014-00937
`Patent 8,362,700 B2
`
`I. INTRODUCTION
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`Petitioner filed a revised petition to institute an inter partes review (Paper
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`14, “Pet.”) of claims 1–11, 13–15, 24–34, and 45–47 of U.S. Patent No. 8,362,700
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`B2 (Ex. 1001, “the ’700 patent”). Pet. 1. Petitioner included a declaration of Dr.
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`Peter Shackle (Ex. 1002). Patent Owner filed a Preliminary Response. Paper 21
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`(“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted “unless . . . there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” We have reviewed the Petition, Preliminary Response, and the
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`evidence cited therein. For the reasons discussed below, we determine that
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`Petitioner has not demonstrated a reasonable likelihood of showing that any of the
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`challenged claims of the ’700 patent are unpatentable.
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`A. Related Matters
`
`
`
`Petitioner states that Patent Owner has asserted a number of lawsuits against
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`the Petitioner companies alleging infringement of the ’700 patent. Pet. 3–4; Paper
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`18, 3; Paper 20, 3–4. Petitioner also asserts it is challenging two other patents in
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`the same family as the ’700 patent: U.S. Patent No. 7,196,477 (IPR2014-00936)
`
`and U.S. Patent No. 7,429,827 (IPR2014-00938). Pet. 5; Paper 20, 1.
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`
`
`The ’700 patent is a continuation-in-part of the ’827 patent, which is a
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`continuation-in-part of the ’477 patent.
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`B. The ’700 Patent (Ex. 1001)
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`
`
`The ’700 patent describes a solar powered light that produces light of
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`varying color. Ex. 1001, 1:19–21. According to the ’700 patent, producing light
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`of a variable color is known, and solar powered “garden lights” are known. Id. at
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` 2
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`

`

`IPR2014-00937
`Patent 8,362,700 B2
`
`1:25–33. The claimed invention “overcome[s] or substantially ameliorate[s] at
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`least one of the . . . disadvantages” of the prior art, which includes “difficulty in
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`adjusting the various lighting functions” and “not producing a uniform desired
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`colour.” Id. at 1:34–36.
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`C. Exemplary Claims
`
`
`
`Of the claims challenged, claims 1, 45, 46, and 47 are independent. Claims
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`1 and 45 are reproduced below.
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`1. A lighting device, said device including:
`a lens;
`a circuit comprising:
`at least two light sources of different colors mounted to
`direct light through at least part of said lens;
`an activation sub-circuit to provide power to said light
`sources only at low light levels;
`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.
`
`
`45. A lighting device, said device comprising:
`a lens;
`a circuit including:
`at least two electrical light sources of different colors
`mounted to direct light through at least part of said
`lens;
`an activation sub-circuit to provide power to said
`electrical light sources only at low ambient light
`levels;
`a light sub-circuit to independently control delivery of
`
` 3
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`

`

`IPR2014-00937
`Patent 8,362,700 B2
`
`power to each of said at least two electrical light sources
`so as to vary the perceived intensity of light emitted
`over time by said at least two electrical light sources
`to produce a color changing cycle of more than two
`colors;
`connections for at least one rechargeable battery to power
`said circuit;
`at least one solar cell mounted so as to be exposed to
`sunlight and electrically connected to said connections
`to charge said at least one rechargeable battery; and
`at least one user-operated switch operable to control said
`circuit, With said at least one switch being accessible
`by said user thereby enabling said user to manipulate
`said at least one switch to control delivery of power to
`said at least two electrical light sources.
`
`D. Prior Art and Asserted Grounds
`
`References
`
`Basis under
`35 U.S.C.
`
`Claims Challenged
`
`Wu1 and Chliwnyj2
`
`Wu, Chliwnyj, and Pu3
`Wu, Chliwnyj, Pu, and Xu4
`Wu, Chliwnyj, and Lau5
`Richmond6 and Shalvi7
`
`§ 103
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`1–11, 26–34, and
`45–47
`13 and 15
`14
`24 and 25
`45 and 47
`
`
`1 U.S. Patent Application Publication No. US 2003/0201874 A1, published Oct.
`30, 2003, filed Apr. 24, 2002 (Ex. 1006).
`2 U.S. Patent No. 5,924,784, issued July 20, 1999 (Ex. 1005).
`3 Chinese Patent Publication No. CN 2522722Y, published Nov. 27, 2002 (Ex.
`1008) (certified translation).
`4 Chinese Patent Publication No. CN 2541713Y, published Mar. 26, 2003 (Ex.
`1014) (certified translation).
`5 U.S. Patent No. 6,431,719, issued Aug. 13, 2002 (Ex. 1010).
`6 Australian Patent App. No. AU 2002100505 A4, published Nov. 21, 2002 (Ex.
`1011).
`7 U.S. Patent No. 6,120,165, issued Sept. 19, 2000 (Ex. 1012).
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` 4
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`

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`IPR2014-00937
`Patent 8,362,700 B2
`
`II. ANALYSIS
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`A. Claim Construction
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`Petitioner and Patent Owner propose constructions for the terms “constant
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`colour,” “varying color,” “switch being accessible by a user,” and “securing
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`means.” None of these terms need to be construed for purposes of this Decision.
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`B. Petitioner’s Declarant and the Level of
`Ordinary Skill in the Art
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`Patent Owner takes issue with Petitioner’s declarant and Petitioner’s
`
`statement of the level of ordinary skill in the art. Regarding Petitioner’s declarant,
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`Patent Owner argues that Dr. Shackle “lacks essential qualifications regarding
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`photovoltaic . . . cells, solar powered lights, or consumer products.” Prelim. Resp.
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`3. Patent Owner argues that his declaration “should be stricken from the record . . .
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`or otherwise not relied upon as competent evidence.” Id. at 5. Patent Owner’s
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`concern is unfounded, as we will assign appropriate weight to testimony based on
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`the specific topic discussed and the qualifications of the declarant regarding that
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`topic.8 The Board, sitting as a non-jury tribunal with administrative and technical
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`expertise, is well-positioned to determine and assign appropriate weight to
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`evidence presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation,
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`IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also
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`Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is
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`capable of ruling accurately upon the admissibility of evidence is equally capable
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`of sifting it accurately after it has been received.”). At this stage of the proceeding,
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`8 Dr. Shackle holds degrees in physics and has “over twenty years’ experience in
`the field of lighting electronics, with particular emphasis on [LED] drivers and
`electronic ballasts,” including experience in the electronics industry. Ex. 1002
`¶¶ 2–3. He is also a member of the Institute of Electrical and Electronics
`Engineers and the Illuminating Engineering Society. Id. ¶ 4.
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` 5
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`IPR2014-00937
`Patent 8,362,700 B2
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`we evaluate the testimony of Petitioner’s declarant solely to determine whether
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`Petitioner has established a reasonable likelihood of prevailing on its asserted
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`grounds of unpatentability.
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`
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`As to the level of ordinary skill in the art, Petitioner sets forth what it
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`believes to be the level of ordinary skill in the art in terms of academic
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`qualifications. Pet. 7–8. Patent Owner disagrees with Petitioner, and instead
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`proposes that the level of ordinary skill requires some amount of experience with
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`“industrial design of solar garden lights and physical manufacture of the lights.”
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`Prelim. Resp. 6. In determining the level of ordinary skill in the art, a court may
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`consider various factors, including “type of problems encountered in the art; prior
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`art solutions to those problems; rapidity with which innovations are made;
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`sophistication of the technology; and educational level of active workers in the
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`field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom
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`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986)).
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`In view of this encompassing approach, we decline to adopt either proposal over
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`the other at this time, and instead consider both as well as the prior art references
`
`before us to provide guidance as to the level of ordinary skill in the art, unless
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`otherwise indicated in our analysis. See id.; see also Okajima v. Bourdeau, 261
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`F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate
`
`level of skill in the art.).
`
`C. Claims 1–11, 26–34, and 45–47 as Obvious in
`View of Wu and Chliwnyj
`
`1. Wu (Ex. 1006)
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`Wu discloses a solar-powered illumination device. Ex. 1006 ¶ 3. Light-
`
`emitting elements provide different colors by intercrossing various light colors. Id.
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` 6
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`
`
`¶ 22.
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`IPR2014-00937
`Patent 8,362,700 B2
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`2. Chliwnyj (Ex. 1005)
`
`Chliwnyj discloses a microprocessor-based simulated electronic flame. Ex.
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`1005, 5:11–12. The LEDs are a plurality of colors to “enhance[] the effect of
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`flame motion” “due to color changes.” Id. at 5:15–17, 5:21–25, 6:27–37. The
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`LEDs produce a realistic flame effect by continuously, rather than abruptly,
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`changing the frequency of LED modulation. Id. at 7:55–56. The flame effect can
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`mimic a stable flame using small frequency changes and a flame in the wind using
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`large, random frequency changes. Id. at 8:16–34. The individual LEDs are
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`diffused to blend the different colors of light together to give the flame effect. Id.
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`at 8:66–9:10.
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`3. Analysis
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`Independent claims 1, 45, 46, and 47 each recite a light sub-circuit that
`
`controls one or more lamps to produce “a color changing cycle.” In its claim chart,
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`Petitioner provides citations to various portions of Chliwnyj that allegedly disclose
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`this limitation. Pet. 21–23 (claim 1), 39–40 (claims 45, 46, and 47). Petitioner
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`does not provide a claim construction of “color changing cycle,” however, nor
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`does Petitioner explain how it believes that term reads on what Chliwnyj discloses.
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`Those portions of Chliwnyj cited by Petitioner simply describe that the individual
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`LEDs are modulated according to different frequencies. Pet. 22–23 (citing Ex.
`
`1005, 7:55–66). A “cycle” implies some pattern or scheme; some phenomenon
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`that happens and can happen again.9 The scheme that Chliwnyj uses, cited by
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`Petitioner, is with respect to the individual LEDs, such that the intensity of the
`
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`9 A dictionary definition of “cycle” is: “[a] single complete execution of a
`periodically repeated phenomenon.” The American Heritage Dictionary of the
`English Language (2011) (http://search.credoreference.com/content/
`entry/hmdictenglang/cycle/0) (Ex. 3001).
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` 7
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`IPR2014-00937
`Patent 8,362,700 B2
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`individual LEDs varies according to their own schemes. Pet. 22–23 (citing Ex.
`
`1005, 3:13–21, 5:34–41, 7:55–66). These passages do not speak to their combined
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`effect in terms of their resulting color, and, in fact, Chliwnyj admonishes prior art
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`lights that have a perceptible “pattern” in the overall flame effect, instead seeking
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`to simulate a “natural random process.” Ex. 1005, 2:1–19, 41–51; see also Prelim.
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`Resp. 16–21 (arguing that Chliwnyj produces random color variations).
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`It is Petitioner’s burden to explain how the challenged claims are to be
`
`construed and how they read on the prior art. 37 C.F.R. § 42.104(b)(3)–(5).
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`Petitioner has not done so sufficiently on this record with respect to the limitation
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`of claims 1, 45, 46, and 47 requiring a “color changing cycle.” Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood of success in showing the
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`subject matter of claims 1–11, 26–34, and 45–47 would have been obvious in view
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`of Wu and Chliwnyj.
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`D. Claims 13 and 15 as Obvious in View of Wu,
`Chliwnyj, and Pu
`Claim 14 as Obvious in View of Wu, Chliwnyj,
`Pu, and Xu
`Claims 24 and 25 as Obvious in View of Wu,
`Chliwnyj, and Lau
`
`Each of the claims in these grounds depend from claim 1. As we discussed
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`in Section II.C, Petitioner has not demonstrated a reasonable likelihood of showing
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`that the subject matter of claim 1 would have been obvious in view of Wu and
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`Chliwnyj because Petitioner did not address sufficiently the limitation requiring a
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`“color changing cycle.” Petitioner’s discussions of Pu, Xu, or Lau do not remedy
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`that deficiency. Accordingly, Petitioner has not demonstrated a reasonable
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`likelihood of success on these grounds.
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` 8
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`IPR2014-00937
`Patent 8,362,700 B2
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`E. Claims 45 and 47 as Obvious in View of
`Richmond and Shalvi
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`1. Richmond (Ex. 1011)
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`Richmond describes a low-powered light. Ex. 1011, 4:14–15.10 Electro-
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`luminescent film 16 is connected using connector 26 (id. at 5:27–29) and
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`controlled by inverter 14, which can, in turn, be controlled to produce a light
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`pattern (id. at 6:26–31). Richmond describes these patterns as “caus[ing] the light
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`emitting element to flash or to mimic . . . a flame.” Id.
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`2. Shalvi (Ex. 1012)
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`Shalvi describes a solar-powered light that uses light diffusers. Ex. 1012,
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`1:44–53.
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`3. Analysis
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`Independent claims 45 and 47 recite a light sub-circuit that controls one or
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`more lamps to produce a “color changing cycle.” Petitioner relies on certain
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`features of Richmond to disclose a “color changing cycle.” Pet. 54. Specifically,
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`Petitioner points out in its claim chart that inverter 14 may cause “the light output
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`pattern of the light . . . [to] change over time”; that there may be more than one
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`color light element; and that “device 10 may be arranged to emit light of a
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`particular colour or colours by selecting an appropriate light emitting element.” Id.
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`(citing Ex. 1011, 4:12–13, 6:26–28, 6:32–7:3).
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`Patent Owner argues that Richmond does not produce a color changing cycle
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`and instead merely allows a user to plug in different colors into the available light
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`sockets. Prelim. Resp. 42–48. Petitioner, on the other hand, does not provide an
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`explanation of how it reads the “color changing cycle” limitation on Richmond.
`
`
`10 Citations to Richmond are to the page numbers at the top of each page.
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` 9
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`IPR2014-00937
`Patent 8,362,700 B2
`
`Richmond largely describes the operation of its lighting device with respect
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`to a single light element. See generally Ex. 1011. Indeed, Richmond first states
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`that the device may emit light of “a particular colour or colours by selecting an
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`appropriate light emitting element” and then states that “[i]t will also be
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`appreciated that . . . more than one element may be provided.” Id. at 6–7. Thus,
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`we are persuaded by Patent Owner’s argument that “selecting an appropriate light
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`emitting element,” in this context, means installing a single element that has a
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`colour or colours to plug into the device, rather than the light device electrically or
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`electronically selecting among various different light emitting elements already
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`installed. Prelim. Resp. 42 (“[Richmond] teaches [a] user-replaceable light . . . that
`
`can be physically plugged into a ‘connector 26’ by a user”) (quoting Ex. 1011,
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`5:27–29). Notwithstanding, even if Richmond disclosed lighting elements of
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`different colors and the ability to turn on and off the individual lighting elements,
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`Petitioner has not explained how Richmond discloses a “color changing cycle”
`
`using those lighting elements. The flash and flame effects of Richmond discussed
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`above are directed to a single light emitting electrode, which Richmond does not
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`teach or suggest is capable of producing a “color changing cycle” as in claims 45
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`and 47 of the ’700 patent. See Ex. 1011, 6:26–31.
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`Reviewing the portions of Richmond cited by Petitioner, and Petitioner’s
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`arguments and supporting declaration, we determine that Petitioner has not shown
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`a reasonable likelihood that the subject matter of claim 45, or of claim 47, would
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`have been obvious in view of Richmond and Shalvi.
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`III. ORDER
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`In view of the foregoing, it is hereby:
`
`
`
`ORDERED that no inter partes review of the ’700 patent is instituted and
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`that all grounds set forth in the Petition are denied.
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`10
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`

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`IPR2014-00937
`Patent 8,362,700 B2
`
`
`
`Petitioners:
`
`Mark Nelson
`mark.nelson@dentons.com
`
`Daniel Valenzuela
`daniel.valenzuela@dentons.com
`
`Lissi Mojica
`lissi.mojica@dentons.com
`
`Kevin Greenleaf
`kevin.greenleaf@dentons.com
`
`Patent Owner:
`
`Theodore Shiells
`tfshiells@shiellslaw.com
`
`Marcus Benavides
`marcusb@tlpmb.com
`
`
`
`
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`11
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