`
`
`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 IPR2014-00938
`Patent No. 7,429,827
`__________________________
`
`
`PATENT OWNER’S 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 24 – 30 AND 35 OF U.S. PATENT NO. 7,429,827)
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`Case IPR2014-00938
`Patent No. 7,429,827
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`
`Table of Contents
`
`
`INTRODUCTION .............................................................................................. 1
`
`I.
`
`II. THE LEVEL OF SKILL IN THE ART ............................................................. 3
`
`III. PETITIONER’S ASSESSMENT OF THE LEVEL OF ORDINARY
`SKILL IN THE ART IS TOO HIGH...............................................................10
`
`IV. DR. SHACKLE IS NOT QUALIFIED TO TESTIFY ....................................14
`
`V. CLAIM CONSTRUCTION .............................................................................15
`
`A. “Varying Colour” .....................................................................................15
`
`B. “Lamp” .....................................................................................................19
`
`C. “Desired Colour” ......................................................................................19
`
`D. “Securing Means” .....................................................................................19
`
`E. “Switch Being Accessible by a User” ......................................................20
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`VI. THE BOARD SHOULD FIND CHALLENGED CLAIMS 24 - 30
`PATENTABLE ................................................................................................21
`
`A. GROUNDS 1 and 2 (Claims 24 – 26, 27 – 29 and 35) ............................21
`
`1. Chliwnyj and Pu Would Not Have Been Combined to Teach the
`Claimed Accessible Switch of Claims 27 and 35 .............................21
`
`2. Chliwnyj and Pu Would Not Have Been Combined to Teach the
`Claimed Selection Switches of Claim 24 .........................................29
`
`B. GROUND 3: The Blue and Green LED of Lau is Not Combinable
`with the Limited Gamut of Color Comprising the Disclosed Red,
`Amber, or Yellow LEDs of Chliwnyj ......................................................31
`
`VII. CONCLUSION ................................................................................................42
`
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`PATENT OWNER’S RESPONSE
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`
`Table of Authorities
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`Case IPR2014-00938
`Patent No. 7,429,827
`
`
`Cases
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`567 F.3d 1314 (Fed. Cir. 2009) ..................................................................... 31
`
`IDC, LLC v. Adventive, et al.,
`
`09-cv-2495 (D.N.J.) ............................................................................. 4, 16, 20
`
`In re Cortright,
`
`165 F.3d 1353 (Fed. Cir. 1999) ..................................................................... 15
`
`In re NTP, Inc.,
`
`654 F.3d 1279 (Fed. Cir. 2011) ..................................................................... 15
`
`In re Suitco Surface, Inc.,
`
`603 F.3d 1255 (Fed. Cir. 2010) ..................................................................... 15
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007)................................................................................... 3, 30
`
`Microsoft Corp. v. Proxyconn, Inc.,
`
`Case No. 2015-1542 (Fed. Cir. June 16, 2015) ............................................. 15
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 3
`
`Ryko Mfg. Co. v. Nu-Star, Inc.,
`
`950 F.2d 714 (Fed. Cir. 1991) ......................................................................... 3
`
`Shaw Indus. Grp, Inc. v. Automated Creel Systems, Inc.,
`
`IPR2013-00132, Paper No. 44 (PTAB July 24, 2014) .................................. 31
`
`
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`PATENT OWNER’S RESPONSE
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`Case IPR2014-00938
`Patent No. 7,429,827
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`
`I.
`
`INTRODUCTION
`On December 16, 2014, the Board instituted the 936 IPR against U.S. Pat.
`
`No. 7,429,827 (the “827 Patent”) on the following Grounds 1-3 (938 IPR, Decision
`
`(Paper 20), at 20, cited here as “Dec. [page]), and declined to institute review of
`
`the remaining grounds. Simon Nicholas Richmond (“Patent Owner”) respectfully
`
`submits the following timely Response to the Petition filed by Petitioner upon
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`which the Board has instituted IPR of Claims 24 – 30 (the “Challenged Claims”) of
`
`827 Patent.
`
`Petitioner misapplies the reference Pu (Exs. 1008, 1009) in combination
`
`with the references Chliwnyj (Ex. 1005) and Wu (Ex. 1006) as support for
`
`selection and accessible switches of Claims 24 and 27, and 35, respectfully. There
`
`is no rationale that would have made it obvious to use switches that are accessible
`
`and capable of selection of different modes in the memorial devices disclosed in
`
`Chliwnyj. To the contrary, the evidence of record shows that it would be contrary
`
`to the stated object of the invention to “provide a solar-powered simulated-flame
`
`memorial with full power management to keep the ‘eternal flame’ going as long as
`
`possible” with a switch that is accessible and capable of selection. Persons of
`
`ordinary skill would have been deterred from implementing switches placed in the
`
`manner disclosed in Pu, because the locations of switches would have failed to
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`yield predictable results, and, in fact, would have changed how the device of
`
`Chliwnyj in a manner that is contrary to the teachings of Chliwnyj.
`
`Patent Owner will show the Board, through the following arguments and the
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`additional evidence submitted, including the declaration of Patent Owner’s expert
`
`Dr. Alfred Ducharme (cited as “Duchm. Dec. [paragraph no.]”), that persons of
`
`ordinary skill and creativity in the art (“POSA”) could not have with a reasonable
`
`expectation of success utilized the claimed “three lamps comprising a diode that
`
`emits red light, a diode that emits blue light and a diode that emits green light” of
`
`Claim 30 in Chliwnyj. Chliwnyj teaches a flame simulation utilizing a limited
`
`color gamut composed of the combinations of red, amber, and orange colors. The
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`Board in finding that “red, blue, and green can be used to create any color” did not
`
`consider that the lighting effect of Chliwnyj is not intended to produce “any color,”
`
`but to produce a flame simulation that “uses multiple LEDs as controlled lighting
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`elements to give the appearance of flame motion, typically when viewed through a
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`diffuser.” Chliwnyj, 5: 12 – 14. The addition of the light sources producing the
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`colors blue and green would have departed from the limited gamut of color range
`
`disclosed in Chliwnyj, which is essential to Chlinwyj’s operation.
`
`Furthermore, Petitioner has incorrectly assessed the level of skill in the art as
`
`too high, and this has led the Board to an incorrect conclusion of obviousness. It
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`would have been unpredictable from the perspective of person of ordinary skill in
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`the art whether using the randomly generated light output of three LEDs
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`comprising a wide gamut of color to create the appearance of flame motion.
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`Accordingly, there would have been no expectation of success, and Claim 30 is not
`
`obvious.
`
`Patent Owner respectfully requests that the Board deny Petitioner’s requests
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`for a finding of invalidity and confirm the validity of Claims 24 – 30, and 35.
`
`II. THE LEVEL OF SKILL IN THE ART
`“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). In determining the level of ordinary skill in the art the following factors
`
`are probative: the educational level of the inventor, type of problems encountered
`
`in the art, prior art solutions to those problems, rapidity with which innovations are
`
`made, sophistication of the technology involved, and the educational level of active
`
`workers in the field. Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`
`1991). A person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). These factors
`
`are not exhaustive and serve as merely a guide for determining the level of
`
`ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256
`
`(Fed. Cir. 2007).
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`The primary area of expertise of a person of ordinary skill in the art is that of
`
`a person having knowledge of electrical engineering, in particular the ability to
`
`recognize how a pre-designed circuit may operate and the ability to combine such a
`
`circuit into a pre-designed solar garden light having a desired lighting effect,
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`making only simplistic changes to the exterior aesthetic of the product to make the
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`product appealing to consumers. Duchm. Dec. 39. But a person of ordinary skill
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`and creativity in the art does not have the ability to re-design the aesthetic effect of
`
`a solar garden light by either mechanical or electrical means. Id. And, as shown
`
`below, the level of skill does not reach that of a degreed electrical engineer, as
`
`proposed by Petitioner. Id.
`
`In contrast to the lack of experience of Petitioner’s expert (Dr. Shackle), Mr.
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`Simon Richmond, the named inventor and Patent Owner, has over ten (10) years of
`
`relevant experience in solar powered lights and consumer products. See Exh. 2003,
`
`Declaration of Simon Nicholas Richmond (cited as “Richm. Decl.”), IDC, LLC v.
`
`Adventive, et al., 09-cv-2495 (referred to as the “IDC Lawsuit”), Doc. 104-13, ¶¶
`
`5-6 (D.N.J. 01/03/2011).
`
`In the IDC Lawsuit, Mr. Richmond testified that “in [his] experience and
`
`opinion, at the time of the invention, the level of ordinary skill in the field of
`
`designing solar garden lights was relatively low-- the equivalent of an industrial
`
`designer skilled at making basic, functional solar garden lights with various
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`ornamentation, with only basic knowledge of the electrical circuits and
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`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
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`assemble them into a functional solar garden light.” Duchm. Dec. 41 (citing
`
`Richm. Decl. ¶ 9). Mr. Richmond does not state, however, that he is formerly
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`educated in industrial design, having received his experience at HPM where he was
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`“almost solely responsible for product development of low voltage garden lights
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`and, later, solar garden lighting”, or that he has any formal education in electronics,
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`besides “a physics course in high school, which covered to some extent, electronic
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`circuits.” See id. (citing Richm. Decl. ¶¶3 – 7). Mr. Richmond’s opinion is still
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`relevant and applicable to the obviousness challenge being made in this IPR.
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`Duchm. Dec. 41. After examination of the qualifications of exemplary active
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`workers in the field, including Mr. Richmond himself, and other probative factors,
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`the level of skill is not an industrial designer or a degreed electrical engineer, but is
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`rather a lower level of skill that includes some but not all skills of industrial
`
`designers and degreed electrical engineers. See id.
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`Unlike a person that is qualified as an industrial designer, persons of
`
`ordinary skill in the art of design of solar garden lights only address a subset of
`
`product design, the typical problems sought to be overcome by POSAs are those
`
`related to the physical ornamentation of solar garden lights, such as shapes and
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`types of lenses, poles and the like, which would partially be the work of industrial
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`designers,
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`rather
`
`than being
`
`focused on problems with
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`the
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`relatively
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`unsophisticated electrical circuits required for solar garden lights. Duchm. Dec. 42.
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`Changes made to the physical ornamentation are simple, and are aimed at making
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`the product appealing to the consumer without engaging in any significant re-
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`design. Id.
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`Typically, persons of ordinary skill are deterred by their limited mechanical
`
`and electrical skills, costs, and limited production schedules (as examples) from
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`engaging or attempting to engage in significant re-design of prior art products.
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`Duchm. Dec. 43. To meet the electrical requirements of a typical solar garden
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`light, the POSA need only know the basics of electrical components and circuits
`
`that are commonly used in solar garden lights, how to make minor modifications
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`for size of solar cell, number of LEDs, etc., which does not require the level of
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`skill claimed by Dr. Shackle. Id. The POSA and having ordinary creativity would
`
`not focus their creativity on designing different, physical ornamental designs,
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`providing lighting displays having more complexity, requiring more complex
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`circuits and higher cost, or providing lighting displays that create a different
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`aesthetic from that utilized in the prior art. Id.
`
`A POSA, however, is capable of implementing a circuit for a specified
`
`function, and selecting and employing electrical components to perform those
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`functions, but only once they are told what is the function the circuit must perform.
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`Duchm. Dec. 44. Such is the teaching provided in the 827 Patent.
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`Once given the functions that a circuit was to perform (i.e., for example,
`
`circuit 61 used to control the LED lamps to ramp up and ramp down the intensity
`
`of the lamps, as taught by the 477 Patent, see 477 Patent, col. 6, lines 1- 9), it
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`would then have been a routine matter requiring only reasonable experimentation
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`to take the description of the function or functions to an electrical circuit designer
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`or programmer in order to have that person modify, program, or otherwise
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`manufacture the electrical component, including the software or methods
`
`implementing equivalent steps. Duchm. Dec. 45 (citing Richm. Decl. ¶ 16.)
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`However, absent the disclosure of the 827 Patent, a person skilled in the art of solar
`
`garden lights would not undertake such a fundamentally new development. Id.
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`Such a practice is evident by the disclosure of the Browder reference (Ex.
`
`2028, U.S. Patent No. 7,497,588), which was prior art to the 477 Patent and from
`
`testimony of Mr. Browder himself. Duchm. Dec. 46. For example, the Browder
`
`patent discloses and claims a circuit that powers the voice recording 24, the timer
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`28 and the lamp 26. Browder patent, col. 2, lines 45 – 47. There is no disclosure in
`
`the Browder patent of associated software or methods implementing equivalent
`
`steps for the circuit of the Browder patent. Id.; see also Ex. 2004, ¶ 72 (citing
`
`Browder’s testimony that “he did not physically make the products which are
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`covered by the patents that name him as an inventor. Instead, he testifies that the
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`products were made by a manufacturer”).
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`The reference Wu is another example of the level of skill and creativity in
`
`the art. Duchm. Dec. 47. Dr. Shackle purports that Wu teaches a “light triggered
`
`switch” in Circuit Element A of Figure 3. In his opinion, “[h]e just put it in there,
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`and any engineer could look at it and in a flash say that’s a light triggered
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`switch…[Wu] never described how it worked.” Deposition of Peter W. Shackle,
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`Phd, Vols. 1 and 2 (April 22 and 23, 2015) (Exs. 2022, 2023, cited as “Shackle
`
`Dep. [page:line]”)159:22 – 160:2. Persons skilled in the art had the limited
`
`electrical skills to cut and paste pre-configured and known circuits together to
`
`construct working electrical models of their designs. Duchm. Dec. 47.
`
`At the time of the invention, solar garden lights were fairly unsophisticated
`
`technology. Duchm. Dec. 48. Solar garden lights typically were comprised of a
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`body, a post with a spike, a housing for light bulbs, like LEDs, a solar cell, a
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`battery, and an electrical circuit (including associated switches) tying the solar cell,
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`the battery and the LEDs. Id.
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`In contrast to Dr. Shackle’s statements in his declaration, if a person of
`
`ordinary skill in the art sought to differentiate his product from competitors’
`
`products, he or she would do so by altering the outer physical appearance of a
`
`product in merely a simplistic manner, not by choosing a different lighting effect,
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`by making electrical or mechanical changes outside his skill, which amounts to a
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`re-creation of the prior art into a new design with only unpredictable results.
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`Duchm. Dec. 49. For example, a person skilled in the art may choose a specific
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`design made up of two different pre-existing products from a catalog produced by
`
`a manufacturer, and then request from the manufacturer that it make the new
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`product. Id. If such changes were not within the mechanical or electrical skill of
`
`the manufacturer, or if the product was not cost effective to make, or if there was a
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`demanding production schedule in place, the skilled person may make a different
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`more simplistic choice. Id.
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`The parties agree that though a person may be aware that certain skills, like
`
`industrial design, such knowledge might not rise to the level of skill in those areas.
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`See Shackle Dep. 329:19-339:4. Such is the case with a POSA in the field of solar
`
`garden lights, who is aware and appreciates the importance of industrial design and
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`circuit design skills (and can utilize others to provide ordinary skill in these areas)
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`but is not himself fully skilled in these areas. Duchm. Dec. 49. Thus, a person of
`
`ordinary skill is not an industrial designer, as proposed by Patent Owner in his
`
`Preliminary Response, or a degreed electrical engineer. Id. Thus, the ordinary
`
`level of skill and creativity does not reach as high as that of an industrial designer,
`
`as proposed by Patent Owner in his Preliminary Response, or a degreed electrical
`
`engineer, as proposed by Petitioner. Id.
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`III. PETITIONER’S ASSESSMENT OF THE LEVEL OF ORDINARY
`SKILL IN THE ART IS TOO HIGH
`The Shackle Declaration (¶ 36) states that “given the relevant field and
`
`relevant timeframe of the ‘827 patent, a person of ordinary skill in the art would
`
`have: 1) a graduate degree in electrical or electronics engineering or physics with
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`demonstrable experience in circuit design, or 2) a bachelor's degree in electrical or
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`electronics engineering or physics with two years industrial experience and
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`demonstrable experience in circuit design.” This assessment is too high. Duchm.
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`Dec. 50.
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`The Board indicated it would consider “the prior art references before us to
`
`provide guidance as to the level of ordinary skill in the art.” Dec. 10. A handful of
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`the inventors of the prior art patents in this case are electrical engineers. Dr.
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`Ducharme is a named inventor on the Dowling patent and has a PhD in electrical
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`engineering from University of Central Florida. Duchm. Dec. 52. Dr. Dowling
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`also has a PhD in Robotics from Carnegie Mellon. Id. Dr. Shackle, Petitioner’s
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`proffered expert, has a PhD in physics and testified (Shackle Dep. 322:4 – 323:21)
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`that his 57 patents to his name resulted from the unusual circumstance of him
`
`being ordinarily skilled in several different fields. See also Shackle Dep. 52:1 – 3
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`where Dr. Shackle acknowledges that his PhD is in a technical field having a
`
`greater degree of education than most people. Shackle Dep. 52:1 - 3. Shackle’s 57
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`patents places him in a rare category of only 0.15% of all inventors (Ex. 2026, pg.
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`53). With 42 patents, Chliwnyj is no ordinarily skilled person since he is with only
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`4% of all inventors (10 – 50 Patents), and with only one solar-powered patent (Ex.
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`1020) can hardly be considered an active worker in the field. Duchm. Dec. 52.
`
`These persons (including Dr. Ducharme) are far more skilled than the ordinarily
`
`skilled persons in the art of design of solar powered lighting devices intended for
`
`consumer use. Id. To the contrary, the ordinary level of skill, and particularly the
`
`ordinary level of creativity, is very low in this field. Id.
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`At the time of the invention, almost all consumer-installed solar powered
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`garden lights that were sold in volume in the U.S. were primarily developed and
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`manufactured in low labor cost regions of Southeast Asia. Duchm. Dec. 53.
`
`Indeed, a review of patents relating to solar powered garden lighting and assigned
`
`to IDC, for example, will reveal a vast majority are design patents designed by a
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`Chinese manufacturer. Id. The few utility patents that IDC has, for example,
`
`appear to be relatively simple, mechanically and electrically. Id.
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`The mechanical and electrical creativity and innovation in the art of solar
`
`garden lights is low enough that industrial designers are over qualified as a person
`
`of ordinary skill in the art. Duchm. Dec. 53 - 54. Dr. Shackle also confirms that in
`
`designing solar garden lights, like wind chimes, there are aspects of mechanical,
`
`electrical and industrial design. Shackle Dep. 325:14 – 20. But such a person of
`
`ordinary skill in the art does not necessarily need to be a degreed person in all
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`these fields to qualify as a person of ordinary skill in the art. Duchm. Dec. 54. This
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`is consistent with Dr. Ducharme’s experience with the ordinarily low level of
`
`mechanical and electrical innovation in the art of solar garden lights, whose aim is
`
`to design lighting devices having a pleasing look. Id.
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`The addresses of several of the inventors of record are in China or Taiwan,
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`which is consistent with Mr. Richmond’s testimony that the majority of solar
`
`garden lights are manufactured, and often designed, in China. See, e.g., Wu
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`(“Inventor: Chih-Hsien Wu, Taipai (TW)”); Xu (Ex. 2037, 2038) (Name of
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`Patentee: “Hangzhou Zhenqi Electrical Equipment Co., Ltd.” of Zhejiang
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`Province, China); see also Duchm. Dec. 55.
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`Other inventors listed on patent references relied upon by Petitioner also fail
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`to meet the improperly high standard of skill proposed by Petitioner. For example,
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`a news article regarding Mr. Norton indicates he is a sports broadcaster/announcer
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`and has business selling convertible benches. Duchm. Dec. 56 (citing Exh. 2024).
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`A resume of Mr. Steven M. Kube posted on-line reports that his education level is
`
`at the community college level—“Business, Public Speaking/Communications,
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`Music Recording Technology.” Id. (citing Ex. 2025). It is apparent that none of
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`these individuals were educated as electrical engineers or that they needed to be to
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`invent the disclosed inventions of each reference. Id.
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`Dr. Chliwnyj, the named inventor of the 5,924,784 patent primarily relied
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`upon by defendants, is an extraordinarily prolific inventor named on 41 other
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`patents, most of which are assigned to IBM and involve very complex electronics.
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`Duchm. Dec. 57. Since none of Dr. Chliwnyj’s other patents involve solar lighting,
`
`he is hardly to be considered representative of the “ordinary” skill in the art of
`
`solar lighting, and with only one patent in solar lighting can hardly be considered
`
`an active worker in the field. Id.
`
`However, assuming that the Board adopts Dr. Shackle’s hypothetical person
`
`of ordinary skill in the art the design of solar lights as being an electrical engineer
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`with either an undergraduate or graduate degree, such an electrical engineer would
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`have even less skill and creativity applicable to the inventions disclosed and
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`claimed in the 827 Patent, which involve solar lights and which require
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`simultaneously solving technical and aesthetic problems using mechanical,
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`materials science and optical solutions, which are areas of expertise generally
`
`lacking in electrical engineers, even those with advanced degrees. Duchm. Dec. 58.
`
`An ordinarily skilled electrical engineer will have a very low level of skill
`
`regarding optical effects of particular designs and a very low level of ordinary
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`creativity regarding how to create desired optical and aesthetic effects in a
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`mechanical design that uses particular materials and their properties, which is what
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`the claimed subject matter of the solar lights of the present invention requires.
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`Duchm. Dec. 59 – 64 (citing Ex. 2036 showing that “none of my course work,
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`including the electro-optics course, covered lighting design, including the
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`integration of aesthetics, either by mechanical means or by electrical means …into
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`consumer products, including solar garden lights”). Accordingly, Dr. Shackle has
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`assessed an incorrect and too-high level of skill in the art at the time of the
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`invention and that incorrect assessment has led Dr. Shackle to incorrect
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`conclusions as to alleged invalidity. See Duchm. Dec. 65.
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`IV. DR. SHACKLE IS NOT QUALIFIED TO TESTIFY
`Patent Owner continues and re-asserts his objection to the qualifications of
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`Dr. Shackle to testify as an expert in the level of skill and knowledge of persons
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`skilled in the art of the invention of the 477 Patent, the 827 Patent and the 370
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`Patent, which were first presented in Patent Owner’s Preliminary Response. By
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`example, Dr. Shackle has never designed a solar light. Shackle Dep. 275: 1- 4 (see
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`also Duchm. Dec. 32 - 36). His deposition confirms that Dr. Shackle has never
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`supervised engineers in the design of solar lights (Shackle Dep. 48: 8 – 11)
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`designed or supervised others in designing a solar light to provide power to run a
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`motor, a buzzer, a sound system, a beeper, or recharge a battery, or had experience
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`with photodiodes that produce power to drive a light. Shackle Dep. 48: 12 – 20; 49:
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`1 – 8; 275: 1- 4; 11:21 – 25; Duchm. Dec. 32 – 36. Dr. Shackle also admits that he
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`conducted a retrospective review of prior art that was presented to him for
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`formulating his opinion. Shackle Dep. 278:23 – 279:2. In contrast, Patent Owner
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`asserts that Dr. Ducharme is qualified in these areas and, even if the testimony of
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`Dr. Shackle is admitted, Dr. Ducharme’s testimony should be given greater weight.
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`See Duchm. Dec. 5 – 19 (citing his education as a Phd “in Electrical Engineering
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`with a specialization in Photonics,” experience consumer product design obtained
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`“as an engineer at Color Kinetics Incorporated,” and as “an expert in the design of
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`mechanical devices that include aesthetic features” through the development of
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`aerial drone systems at the company he founded Hoverfly). Patent Owner reserves
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`his right to present arguments as to the admissibility of Dr. Shackle’s testimony
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`and any other objectionable evidence presented by Petitioner in a motion to
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`exclude, according to the current scheduling timeline in place.
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`V. CLAIM CONSTRUCTION
`“Varying Colour”
`A.
`In applying the broadest reasonable construction standard, “claims should
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`always be read in light of the specification and teachings in the underlying patent.”
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`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Recently, the
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`Federal Circuit vacated and
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`remanded
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`the Board’s determination of
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`unpatentability, because the determination was based on an “unreasonably broad
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`construction” of certain claim terms:
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`Even under the broadest reasonable interpretation, the Board’s construction
`“cannot be divorced from the specification and the record evidence,” In re
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`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and “must be consistent
`with the one that those skilled in the art would reach,” In re Cortright, 165
`F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is “unreasonably
`broad” and which does not “reasonably reflect the plain language and
`disclosure” will not pass muster. Suitco, 603 F.3d at 1260. Microsoft Corp.
`v. Proxyconn, Inc. 2015-1542, 2015-1543 (Fed. Cir. June 16, 2015).
`In this IPR, the Board construed “varying color” to mean “a perceptible
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`changing of color over time.” Dec. 8. Patent Owner respectfully disagrees with the
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`Board that this is the correct construction. Based on the plain and ordinary
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`meaning of the term in view of the specification, which was confirmed in the IDC
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`Lawsuit by Patent Owner’s evidence and testimony, including a stipulation by the
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`parties, regarding how persons of ordinary skill would have interpreted the term,
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`the correct construction of “varying color” is “color that changes over time by
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`varying the intensity of one or more of the lamps with time.” See Ex. 2005 pg. 2,
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`Markman Order. This claim construction is further confirmed and applied in the
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`IDC Lawsuit by the Court’s Memorandum Opinion regarding validity of the 477
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`and 827 Patents. See Ex. 2007. Dr. Shackle’s deposition testimony further confirms
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`Patent Owner’s construction when he states (at least) the following (see also
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`Duchm. Dec. 69):
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`• At Shackle Dep. 59: 5 – 8, Dr. Shackle agrees that the common
`ordinary meaning of the term “varying” is “changing over time.” Dr.
`Shackle also agrees that “varying” is a “present participle [that] ends
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`with i-n-g.” Shackle Dep. 68: 25 – 69:2. A present participle implies
`action that is going on at that “instant.” Shackle Dep. 70:9 – 17. And
`he agreed that “when a person perceives varying color they are
`perceiving it in the present when they are observing it.” Shackle Dep.
`71: 7 – 10. Dr. Shackle “stand[s] by” what his opinion was regarding
`the meaning of varying color, presented in his declaration. Shackle
`Dep. 180:19 – 25.
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`• At Shackle Dep. 59: 9 – 14, Dr. Shackle agrees that traffic lights go
`through discrete colors. And in the reference Pu, he agrees that once
`the color has been changed to the next color, the next color is steady
`for a while. Shackle Dep. 62:21 – 25. In Pu, the changing of colors
`cannot be changing faster than a few seconds at a time, since a user
`uses his finger to stop the display to select a desired color. Shackle
`Dep. 63:18 – 64:13. If Pu displayed colors at 2 seconds “red, yellow,
`green, red, yellow, green,” that would “be flashing and flickering” and
`be “very annoying and not be pleasing.” Shackle Dep. 66: 7 – 18.
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`• At Shackle Dep. 72: 1 – 6, Dr. Shackle agrees that the purpose of the
`477 and 827 Patents is reflected by the title of the patents, “Solar
`Powered Light Assembly to Produce Light of Varying Colors.” The
`477 Patent at column 6 beginning with the first line describes how the
`patent teaches color, Dr. Shackle acknowledges, and at line 129 the
`patent discloses an integrated circuit that varies the frequency and
`intensity of light emitted by the LEDs to produce a constantly
`changing kaleidoscopic effect. Shackle Dep. 72:15 – 73:14. He also
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`agrees that the 477 Patent describes a push-button to stop varying
`color; when the color is stopped, it is not varying color. Shackle Dep.
`75:21 – 76:18.
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`• At Shackle Dep. 78