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. (SHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (SHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent owner
`
`______________
`
`Case IPR2014-00938
`Patent 7,429,827
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`______________
`
`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. (SHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (SHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent owner
`
`______________
`
`Case IPR2014-00938
`Patent 7,429,827
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`THE LEVEL OF SKILL IN THE ART ..........................................................2
`
`A.
`
`B.
`
`Petitioner Correctly Assessed the Level of Ordinary Skill in the
`Art..........................................................................................................2
`
`Dr. Shackle is Qualified to Testify........................................................7
`
`III. CLAIM CONSTRUCTION ............................................................................9
`
`A.
`
`B.
`
`C.
`
`“varying colour”....................................................................................9
`
`“lamp,” “desired colour,” and “securing means”................................10
`
`“switch being accessible by the user” .................................................11
`
`IV. CLAIMS 24-30 AND 35 ARE UNPATENTABLE. ....................................13
`
`A.
`
`1.
`
`2.
`
`B.
`
`Grounds 1 and 2: Claims 24-26, 27-29, and 35 are obvious in
`view of Chliwnyj and Pu.....................................................................14
`
`Pu discloses a “switch being accessible to the user” of claims
`27-29 and 35........................................................................................14
`
`Chliwnyj and Pu disclose the “selection switch … to select a
`desired lighting effect” of claims 24-26..............................................19
`
`Ground 3: It would have been obvious for Chliwnyj to include
`“three lamps comprising a diode that emits red light, a diode
`that emits blue light and a diode that emits green light” in view
`of Lau because Chliwnyj may use “a number of suitable colors” ......21
`
`V.
`
`PO FAILED TO PROFFER ANY RELEVANT SECONDARY
`CONSIDERATIONS.....................................................................................25
`
`VI. CONCLUSION..............................................................................................25
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioners respectfully submit that the Board should find that all of the
`
`instituted claims are obvious in view of the cited references. Patent Owner’s
`
`(“PO’s”) arguments to the contrary are factually and legally incorrect.
`
`First, as with IPR2014-00936 and IPR2014-00935, PO ignores the majority
`
`of the prior arts’ disclosure. For example, PO’s almost exclusive focus on the
`
`eternal flame embodiment of Chliwnyj leads to the incorrect conclusion that a
`
`person of ordinary skill in the art at the time of the alleged invention (a “POSA”)
`
`would not have combined Chliwnyj with Pu because a user would not be expected
`
`to interact with an eternal flame. But Chliwnyj’s disclosure is broad, including
`
`embodiments that specifically teach user interaction. PO’s argument, therefore,
`
`must be rejected.
`
`Second, PO argues it would not have been known to substitute red, green,
`
`and blue LEDs in Chliwnyj because Chliwnyj’s simulated flame is limited to
`
`yellow/orange. This argument fails because Chliwnyj discloses the use of a
`
`“plurality of colors,” that LEDs are available in a “number of suitable colors,” and
`
`that the invention is not limited to any particular LEDs or electric lamps. Dr.
`
`Ducharme agrees that Chliwnyj did not rule out any color. Duchm. Depo., (Ex.
`
`1046), at 138:13-24. PO makes a related argument that the results of substituting
`
`red, green, and blue LEDs in Chliwnyj would have been unpredictable. But this
`
`1
`
`
`
`argument fails because Chliwnyj’s waveforms are of a constant shape. They are
`
`stored in the microprocessor and do not depend on color. Utilizing different LED
`
`colors, therefore, will simply result in a differently colored flame, the color of
`
`which would have been predictable based upon known color relationships.
`
`Finally, PO’s attempt to define the level of ordinary skill in the art such that
`
`a POSA would be little more than an automaton should be rejected. As set forth
`
`below and in the accompanying Supplemental Declaration of Dr. Peter Shackle
`
`(“Shackle II”), the level of ordinary skill in the art is higher than PO suggests.
`
`II.
`
`THE LEVEL OF SKILL IN THE ART
`
`PO argues that Petitioner has incorrectly assessed the level of skill in the art
`
`and that Petitioner’s expert (Dr. Shackle) is unqualified to testify because he
`
`allegedly lacks certain qualifications and allegedly employed “retrospective”
`
`analysis, which PO equates with impermissible hindsight. PO Resp. at 10-15;
`
`Duchm. Decl. (Ex. 2021), at ¶¶ 32-66. PO is incorrect.
`
`A.
`
`Petitioner Correctly Assessed the Level of Ordinary Skill in
`the Art.
`
`Courts may consider many factors in accessing the level of skill in the
`
`pertinent art, including (i) the kinds of problems existing in the art, (ii) the known
`
`solutions to those problems, (iii) the rate at which new innovations are made in the
`
`field, (iv) the sophistication of the technology, and (v) the educational level of
`
`active workers working in the field. Custom Accessories, Inc. v. Jeffrey-Allan
`
`2
`
`
`
`Indus., Inc., 807 F.2d 955, 962-63 (Fed. Cir. 1986). The importance of each factor,
`
`to the extent it is even present, will vary from case to case. Id.
`
`Applying these factors to this case, Petitioner’s proffered level of skill in the
`
`art should be adopted. First, the ’827 patent describes disadvantages in the prior art
`
`relating to the “difficulty in adjusting the various lighting functions and not
`
`producing a uniform desired colour [of light] when required to do so.” Ex. 1001,
`
`1:25-28. These problems relate to specifics of the electronic circuitry. Shackle II
`
`(Ex. 1047), at ¶18; see also Declaration of Peter Shackle (“Shackle I”) (Ex. 1002),
`
`at ¶¶ 66-69. Indeed, although the ’827 patent discloses both mechanical and
`
`electrical elements, a large part of the specification relates to describing the
`
`particulars of electronic circuitry (e.g., the power supply circuit, the boost-up
`
`circuit, and the light circuit). See Ex. 1001, 5:7-7:65; Shackle II (Ex. 1047), at ¶ 18.
`
`The patent’s description also includes selected component values for certain
`
`resistors, inductors, and capacitors. Id. at 5:30-6:27; Shackle II, at ¶ 18.
`
`Patents are written to describe to one of ordinary skill in the art how to build
`
`the inventions without undue experimentation. In re Nelson, 280 F.2d 172, 181
`
`(1960). A degreed electrical engineer or physicist (or the equivalent) with
`
`industrial and circuit design experience would be able to understand the patent’s
`
`descriptions and drawings (particularly Figure 9). Shackle II (Ex. 1047), at ¶¶ 19,
`
`29; Shackle Decl. (Ex. 1002), at ¶ 36. But PO’s POSA would not have been able to
`
`3
`
`
`
`design or understand the circuitry (e.g., he/she would not have been able to identify
`
`inconsistencies between how the electrical connections of Figure 9 are drawn as
`
`Dr. Ducharme admits). See generally Duchm. Depo. (Ex. 1046), at 80:1-89:18 (a
`
`POSA would not understand which of the circuit wires in Figure 9 were connected
`
`and which were not connected (e.g., id. at 88:9-89:12)); Shackle II (Ex. 1047), at ¶
`
`19.
`
`Second, other references (e.g., Chliwnyj) identify numerous objects of the
`
`invention (i.e., problems that the invention solves) that relate to the specifics of the
`
`circuitry and/or use of pulse-width-modulation. Shackle II (Ex. 1047), at ¶ 21;
`
`Shackle I (Ex. 1002) at ¶¶80, 92-96; Chliwnyj (Ex. 1005), at 2:53-4:37. Similarly,
`
`Dowling discusses an alleged need to incorporate programmable, multi-colored
`
`lighting systems, including systems that operate autonomously and systems that are
`
`associated with wired or wireless computer networks. Shackle II (1047), at ¶ 21;
`
`’827 Petition, Ex. 1010, at 2:51-56. The complexity of the problems described in
`
`this art and the purported solutions in the ’827 patent and prior art, therefore,
`
`demonstrate that a POSA in the relevant art (the scope of which PO does not
`
`dispute) would have a higher skill-set than PO’s proposed POSA, who would not
`
`have been able to fully understand and appreciate the scientific and engineering
`
`principles applicable to these problems. Shackle II (Ex. 1047), at ¶ 22.
`
`4
`
`
`
`Third, generally speaking, the technology is not overly sophisticated and
`
`was known prior to the filing of the PO’s patent application. Id. at ¶ 24; see
`
`generally Duchm. Depo. (Ex. 1046), at 52:21-57:17 (admitting that stakes, using
`
`solar cells to power lights, switches to turn off/on solar lights, rechargeable
`
`batteries, light sensitive switches, and using different colored LEDs were known in
`
`the art prior to December 2003 (the date the earliest application to which the ’827
`
`patent could claim priority was filed)). Dr. Shackle agrees. Shackle II (Ex. 1047),
`
`at ¶ 24. That said, as stated above, some of the circuitry involved, although
`
`generally known, could not have been implemented by PO’s POSA in a solar light
`
`because PO’s POSA would not understand how the circuitry works. Id. at ¶ 24.1
`
`Fourth, with respect to educational level of active workers working in the
`
`field, PO cites to Richmond’s testimony and prior art references in support of its
`
`proposed POSA. Id. at ¶ 25; Duchm. Decl. (Ex. 2021), at ¶¶ 56-58. PO, however,
`
`does not provide the full story. For example, although relying on Richmond’s
`
`Declaration to support his purported POSA, Dr. Ducharme agrees that Mr.
`
`Richmond would not be able to design the circuitry of Figure 9 of the ’477 patent
`
`1 The rate at which innovations are made in this field does not appear to be
`
`exceptionally fast or exceptionally slow based. Shackle II (Ex. 1047), at ¶ 23.
`
`5
`
`
`
`other than in an overly simplistic way. See Duchm. Depo. (Ex. 1046), at 48:22-
`
`51:12 (Mr. Richmond could design the circuit at a basic block level (i.e., it has a
`
`“battery, solar cell light switch, light, light needs to vary in color.” … “[D]o you
`
`believe that [] is the most specific level of detail that Mr. Richmond would be
`
`capable of…”? Answer: “Yes”). Id. at 51:8-12. This “block diagram” level of
`
`design does not even demonstrate that Mr. Richmond could have conceived the
`
`purported inventions (see Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F. 2d
`
`1367, 1376 (Fed. Cir. 1986) (defining conception as the “formation in the mind of
`
`the inventor, of a definite and permanent idea of the complete and operative
`
`invention, as it is hereafter to be applied in practice”), let alone reduced them to
`
`practice. And, in any event, the level of skill of the inventor of the patent at issue is
`
`not a determinative factor in determining the level of ordinary skill in the relevant
`
`art. Custom, 807 F.2d at 962.
`
`That many of the inventors of the cited art are at least degreed EEs further
`
`counsels against adopting PO’s definition of a POSA. For example, a majority the
`
`nine inventors of the Dowling patent (Ex. 1010) have at least BS degrees in
`
`engineering or a hard science. Shackle II (Ex. 1047), at ¶ 26; Duchm. Depo. (Ex.
`
`1046), at 96:18-98:21; see also Exs. 1048-1053. Mr. Watts (the inventor of the
`
`Norton patent (’370 Petition, Ex. 1011) also had a BS of science), Mr. Chliwnyj
`
`had a B.S. in EE, Ms. Felder (named on the Frost patent (’477 IPR Ex. 1010) has a
`
`6
`
`
`
`B.S. in Chemistry, and one of the inventors on the Plamp patent (Ex. 2035) has a
`
`B.S.E.E. Shackle II, (Ex. 1047), at ¶ 27; see also Exs. 1054-1057. And while PO
`
`makes much that Mr. Browder apparently did not physically make his products
`
`(Duchm. Decl. (Ex. 2021), at ¶ 48), Dr. Ducharme admits that Browder (Ex. 2028)
`
`does not relate to the circuitry of the solar light. Shackle II (Ex. 1047), at ¶ 28;
`
`Duchm. Depo. (Ex. 1046), at 89:25-94:5 (“this patent is not covering the electronic
`
`circuitry of the light.” (Id. at 94:1-5)). Dr. Ducharme also agreed that the claims of
`
`the patent do not require that
`
`the devices be manufactured in China,
`
`the
`
`supervision of engineers, or working with designers. (Duchm. Depo. (Ex. 1046), at
`
`42:23-44:24) (referring to the ’477 patent but equally relevant to the ’827). These
`
`factors are thus not relevant.
`
`In sum, after considering all of the factors, Petitioner’s proposed POSA is
`
`the correct POSA (Shackle II (Ex. 1047, at ¶ 29); though, as discussed below, the
`
`claims of the ’827 patent would have been obvious under either party’s definition
`
`of the POSA.
`
`B.
`
`Dr. Shackle is Qualified to Testify.
`
`PO criticizes Dr. Shackle’s qualifications because (i) he has purportedly
`
`never supervised engineers in the design of solar lights or had experience with
`
`photodiodes or consumer products, and (ii) Dr. Shackle allegedly employed
`
`hindsight analysis. PO Resp. at 14-15. PO’s criticism is unfounded.
`
`7
`
`
`
`Dr. Shackle has a Ph.D. in physics and has worked in the lighting industry
`
`for over twenty years. Shackle I and II, (Exs. 1002, 1047) at ¶ 3. He is a recognized
`
`lifetime member of the Institute of Electrical and Electronics Engineers and a
`
`member of the Illuminating Engineering Society. Shackle I and II, (Exs. 1002,
`
`1047) at ¶ 4. Dr. Shackle has experience in photovoltaics, photodiodes, pulse-
`
`width-modulation and LED drivers in the lighting context, and the design of
`
`critical parts of consumer products. Shackle II (Ex. 1047), at ¶ 34. Moreover, the
`
`level of skill PO’s POSA needs in photovoltaic cells and consumer products is very
`
`low: “know[ing] that they could convert sun to power,” and knowing “that [these
`
`products] are consumer products.” Duchm. Depo. (Ex. 1046), at 30:17-32:6. And,
`
`because the claims are apparatus claims (Ex. 1001 at 9:1-12:57), the supervision of
`
`engineers and/or consumer product experience is of questionable relevance.
`
`Regardless, however, Dr. Shackle more than meets these qualifications. Shackle II
`
`(Ex. 1047), at ¶¶ 34-39, 41.
`
`Second, Dr. Shackle did not employ hindsight.
`
`Id. at ¶ 40. During
`
`deposition, PO’s counsel coined the undefined phrase “retrospective review” and
`
`now attempts to equate that phrase to impermissible hindsight. (PO Resp. at 14-15,
`
`citing Shackle Depo. (Ex. 2023), at 278:23-279:2). But when the entirety of the
`
`line of questioning is
`
`reviewed,
`
`it
`
`is clear
`
`that Dr. Shackle understood
`
`“retrospective review” to mean that he obtained and studied the prior art. Shackle
`
`8
`
`
`
`II (Ex. 1047), at ¶ 40; Shackle Depo. (Ex. 2023), at 277:19-279:10. This analysis
`
`was done very much like Dr. Ducharme’s retrospective analysis―obtain the prior
`
`art, study it, and render an opinion. Duchm. Depo. (Ex. 1046), at 12:16-14:8
`
`(indicating that Ducharme had not read the majority of the references before this
`
`proceeding). Dr. Shackle did not employ hindsight in his analysis. Shackle II (Ex.
`
`1047), at ¶ 40.
`
`III. CLAIM CONSTRUCTION
`
`Claims should be interpreted using the broadest reasonable interpretation in
`
`light of the specification. 37 C.F.R. § 42.100(b). It is improper to incorporate
`
`exemplary embodiments in to the claim terms. See In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004).
`
`A.
`
`“varying colour”
`
`The Board construed “varying color” as “a perceptible changing of color
`
`over time.” (Dec., Paper 21 at 8). Petitioners agree with that construction for the
`
`purposes of this proceeding.
`
`PO begins by rehashing arguments that the Board already rejected. First,
`
`“varying color” is not a term of art as the Board already found. Dr. Ducharme
`
`admits as much when he states that “varying color” is simply “transitioning from
`
`one color to another.” Duchm. Depo. (Ex. 1046), at 99:17-24. Dr. Ducharme then
`
`describes “varying color” as “changing color” by “ramping up and ramping
`
`9
`
`
`
`down,” (see generally id. at 99:25-103:12), but confirms that none of the claims
`
`contain the ramping up and ramping down limitation. Id. at 104:13-105:6. Finally,
`
`he states that the proper place to look for the definition of “varying” as in “varying
`
`color” is in “a general dictionary [defining] ‘varying.’” Id. at 105:7-24. Numerous
`
`general dictionaries define “varying” in a way consistent with the Board’s
`
`definition: “diverse, differing, diverging; see changing, different” (Ex. 1058), “1.
`
`To make or cause changes in characteristics or attributes; modify or alter…” (Ex.
`
`1059), and “to change or alter, as in form, appearance, character, or substance.”
`
`(Ex. 1060). Thus, both Dr. Ducharme’s testimony and the plain and ordinary
`
`meaning support the Board’s construction.
`
`Second, Dr. Shackle’s deposition testimony does not
`
`support PO’s
`
`construction. Nor is it inconsistent with the Board’s construction. Shackle II (Ex.
`
`1047), at ¶ 44. In any event, expert testimony is entitled to little weight in claim
`
`construction. Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005)
`
`(“conclusory, unsupported assertions by experts as to the definition of a claim term
`
`are not useful to a court”).
`
`B.
`
`“lamp,” “desired colour,” and “securing means”
`
`The Board did not construe “lamp” because it was not at issue during the
`
`Decision. Petitioner maintains its original construction. Revised Petition at 16;
`
`Shackle I (Ex. 1002) at ¶ 75.
`
`10
`
`
`
`Petitioner agrees that a “desired colour” is a color “that is desired by the
`
`user or intended by the designer.” Dr. Ducharme, however, testified that “desired
`
`color” means “any color that those two lamps can produce.” Shackle II (Ex. 1047),
`
`at ¶ 47; Duchm. Depo. (Ex. 1046), at 211:11-19. Claim 24 recites “at least two
`
`lamps of different colours to produce a desired colour.” Dr. Ducharme’s attempt to
`
`conflate “desired colour” with “varying colour” is not in agreement with the PO’s
`
`original construction or with the construction Dr. Ducharme offered in his
`
`declaration, and is incorrect. Shackle II (Ex. 1047), at ¶¶ 48-49.
`
`Petitioner agrees with the Board’s construction of “securing means.”
`
`C.
`
`“switch being accessible by the user”
`
`The Board did not construe the term “switch being accessible by a user.”
`
`The patent does not define “accessible,” but states that having switches on a
`
`downwardly facing surface enables the user to control the device via “readily”
`
`accessible switches, without needing to remove the cap assembly 24. Ex. 1001,
`
`8:3-8. The word “accessible,” however, has a well understood meaning “easily
`
`approached or entered.” See Ex. 1061 (“capable of being reached”); see also Ex.
`
`1062 (“approachable, open, obtainable, attainable”). In the context of a mechanical
`
`device, a POSA would have understood “accessible” to mean that the user could
`
`reach the switch to operate it without substantial or significant effort. Shackle II
`
`(Ex. 1047), at 76.
`
`11
`
`
`
`Dr. Shackle previously indicated a “switch being accessible to the user”
`
`meant “the switch is accessible to the user without substantial effort, tools, or
`
`destruction.” Shackle I (Ex. 1002), at ¶ 76. Dr. Shackle further clarified this
`
`definition noting that it did not preclude the user needing to remove a few screws
`
`or unscrew a lens. Id.
`
`Dr. Ducharme’s deposition testimony supports Petitioner’s proposed
`
`construction. See Duchm. Depo. (Ex. 1046), at 58:11-16 (noting a user accessible
`
`switch is a “switch the user can access”). He further agreed that the contents of a
`
`glove compartment would be “accessible” even though one had to use a tool (i.e.,
`
`at key) (id. at 59:2-17), and that batteries would be accessible even though one
`
`may need to use a screw driver to unscrew screws. Id. at 64:5-65:7. This testimony
`
`accords with the plain and ordinary meaning of “accessible,” but contradicts Dr.
`
`Ducharme’s declaration (Ex. 2021, at ¶¶ 76-77).
`
`Based on the plain ordinary meaning of “accessible,” a POSA would
`
`understand that the broadest reasonable interpretation of “switch accessible to the
`
`user” is obtainable or reachable by the user without substantial effort or destroying
`
`the device. The use of simply tools (e.g., a screwdriver or a key) does not preclude
`
`the switch from being accessible to the user as Dr. Shackle previously indicated.
`
`Shackle I and II (Exs. 1002, 1047), at ¶ 51.
`
`12
`
`
`
`Petitioner notes that PO engages in claim construction during various
`
`portions of its arguments. Petitioner further addresses those constructions in its
`
`arguments below in connection with rebutting PO’s positions. Petitioner reserves
`
`the right to adopt a different construction under the Phillips standard in litigation.
`
`IV. CLAIMS 24-30 AND 35 ARE UNPATENTABLE.
`
`“One must consider what the references as a whole would have taught to a
`
`person of ordinary skill in the art, recognizing that it is often necessary and within
`
`the level of ordinary skill to modify the teachings of two references in order to
`
`combine them.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-
`
`established that a determination of obviousness based on teachings from multiple
`
`references does not require an actual, physical substitution of elements.”). “The
`
`test for obviousness is not whether the features of a secondary reference may be
`
`bodily incorporated into the structure of the primary reference. . . . Rather, the test
`
`is what the combined teachings of the references would have suggested to those of
`
`ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). PO’s
`
`analysis ignores this law and instead focuses almost exclusively on what specific
`
`embodiments (e.g., the eternal flame embodiment of Chliwnyj) allegedly taught or
`
`did not teach and a non-existent requirement of actual, physical substitution of
`
`elements.
`
`13
`
`
`
`A.
`
`Grounds 1 and 2: Claims 24-26, 27-29, and 35 are obvious
`in view of Chliwnyj and Pu.
`
`1.
`
`Pu discloses a “switch being accessible to the user” of claims
`27-29 and 35.
`
`PO’s argument against combining Chliwnyj with Pu is basically the same as
`
`its
`
`argument
`
`in IPR2014-00936; namely,
`
`that Chliwnyj’s
`
`eternal
`
`flame
`
`embodiment is the only relevant embodiment and thus providing a “switch being
`
`accessible to the user” is antithetical. See PO Response, at 21-29. PO also argues
`
`that Pu does not specifically disclose where its SW1 and SW2 switches are placed.
`
`Id. at 25. Both arguments lack merit.
`
`To begin, Chliwnyj’s disclosure is broad. Chliwnyj identifies many objects
`
`of his invention, including “to provide new and improved decorative lighting
`
`devices” (Ex. 1005, at 2:57-62), and “to provide a flame simulation which may
`
`have a variety of decorative, memorial, and ornamental lighting applications. (id. at
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`2:62-67). This flame simulation may derive its electrical power from a variety of
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`alternative sources (AC, DC, battery, solar rechargeable sources). Id. at 3:5-9; see
`
`also Shackle II (Ex. 1047), at ¶ 54. Chliwnyj further taught that there were many
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`variations available to circuit designers to control the current through the LEDs (id.
`
`at 14:62-63), and stressed that the detailed descriptions in his specification were
`
`“illustrative,” not limiting. Id. at 16:1-5. Dr. Ducharme testified that he did not
`
`14
`
`
`
`considered these statements in formulating his opinion. Duchm. Depo. (Ex. 1046),
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`at 156:14-157:25.
`
`Dr. Ducharme admits that the eternal flame is only one of Chliwnyj’s
`
`numerous embodiments. Id. at 127:2-128:20. Nonetheless he focuses mainly on the
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`eternal flame embodiment: “the embodiment of Chliwnyj that Petitioner relies on
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`in technologically incompatible with a switch that is accessible.” (PO Response, at
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`25). Limiting the analysis to the eternal flame embodiment is error. “The fact that a
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`specific [embodiment] is taught
`
`to be preferred is not controlling, since all
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`disclosures of the prior art, including preferred embodiments, must be considered.”
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`Merck & Co. v. Bio craft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
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`Lambert, 545 F.3d 747, 750 (CCPA 1976)).
`
`PO attempts to justify its argument against combining Chliwnyj with Pu by
`
`arguing that Chliwnyj
`
`taught away from accessible switches. This argument
`
`ignores Chliwnyj’s disclosure. Chliwnyj teaches that the flame pattern may be
`
`controlled by a simple user interface. Ex. 1005, at 4:3-5; 14:12-15. Dr. Ducharme
`
`recognized that a switch is a type of user interface. Duchm. Depo. (Ex. 1046), at
`
`133:20-134:14; 135:3-10. Chliwnyj’s relaxation light embodiment, for example,
`
`describes adding a simple keypad (small switch array) for selection of pleasing
`
`effects. Ex. 1005, at 14:12-41. Such a switch is meant to be accessible to permit the
`
`user to interact with the device. Shackle II (Ex. 1047), at ¶ 55. Similarly,
`
`15
`
`
`
`Chliwnyj’s flame simulated memorial candle embodiment describes a switch
`
`located in a hollow base. Ex. 1005, at 10:60-11:4. This switch, although not
`
`viewable from above the device, would be accessible because Chliwnyj does not
`
`require that the hollow base have a cover or other fastening. Shackle II (Ex. 1047),
`
`at ¶ 55.
`
`Moreover, even if the cover or base were fastened, the switch would still be
`
`accessible unless the cover or fastening required the user to utilize substantial
`
`effort or destroy the device to reach them. Shackle II (Ex. 1047), at ¶ 55. Dr.
`
`Ducharme also recognized that a switch, although hidden from view, could still be
`
`accessible. See Duchm. Depo. (Ex. 1046), at 61:7-65:7 (admitting that a battery
`
`compartment could be accessible even though one had to, for example, remove a
`
`doll’s clothes to reach it, or to contact the manufacturer to learn the location of the
`
`compartment (“Once it was in front of me. I knew it was there … it was accessible
`
`to me.” (64:17-65:7)).
`
`PO’s teach-away argument also ignores the law. “[T]he ‘mere disclosure of
`
`alternative designs does not teach away’ … just because better alternatives exist …
`
`does not mean that an inferior combination is inapt for obviousness purposes.” In
`
`re Mouttet, 686 F.3d at 1344 (preferred optical circuit with more interconnect
`
`possibilities did not teach away from non-preferred arithmetic/logic system having
`
`electrical circuitry with wire sets); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (all
`
`16
`
`
`
`disclosures in a reference “must be evaluated for what they fairly teach one of
`
`ordinary skill in the art”).
`
`PO’s other switch-related arguments should also be rejected. First, PO
`
`argues that Pu does not expressly or impliedly teach an “accessible switch.” PO
`
`Response, at 25. This is incorrect. Pu teaches switches SW1 and SW2. SW1 allows
`
`the user to control power to the battery and lamps. SW2 is a selector switch
`
`allowing the user to select a desired color at any time. One or ordinary skill in the
`
`art, whether Petitioner’s POSA or PO’s POSA, would have understood that
`
`permitting such user access meant that the switches were accessible. Shackle II
`
`(Ex. 1047), at ¶ 59.
`
`Next PO argues that there is no need for an accessible switch in a solar light
`
`because, according to Dr. Ducharme, one may not needed and it may be more
`
`convenient or beneficial not to have one. PO Response, at 28; Duchm. Decl. (Ex.
`
`2021), at ¶ 91. But Dr. Ducharme testified that the converse of his statement is
`
`equally true (agreeing that “a switch may be needed and it may be convenient and
`
`beneficial to have one” in certain cases). Duchm. Depo. (Ex. 1046), 168:6-21.
`
`There are many reasons to have switch accessible to the user in a solar garden
`
`light. For example, a switch might be provided to activate it once it is installed, a
`
`consumer may want to change the color, change the mode of operation, or have the
`
`ability to turn the lights off at night. Shackle II (Ex. 1047), at ¶ 62-63.
`
`17
`
`
`
`PO (through Dr. Ducharme) also enumerates the purported disadvantages of
`
`hidden switches. But a hidden switch can still be accessible, and, in any event,
`
`neither Chliwnyj’s nor Pu’s switches are hidden. Chliwnyj’s key pad (array switch)
`
`is not hidden. Pu’s switches are supposed to be manipulated by the user. A POSA
`
`would have understood Pu’s disclosure to mean the switch was accessible. Shackle
`
`II (Ex. 1047), at ¶ 59. Also, for each disadvantage of a “hidden” switch, one can
`
`enumerate an advantage: easy access, ability to power circuit on/off to conserve
`
`power, protection from the elements and unauthorized use, protection from
`
`damage, to maintain a certain design aesthetic, etc. Id. at 62.
`
`In sum, POSA under either PO’s or Petitioner’s definition would have
`
`understood that switches could be located in multiple places, and that their location
`
`could be moved from top to bottom or side to side based on a variety of factors
`
`including, for example, the need for easy access, protection from the elements, and
`
`likelihood of tampering. Shackle II (Ex. 1047), at ¶ 64. Such a POSA would have
`
`further understood that Chliwnyj’s simulated flame was meant for decorative
`
`products of all types, not simply an eternal flame, and that Chliwnyj’s decorative
`
`devices contemplated user access by means of a user interface, including a switch.
`
`Id. A POSA would have further understood that for a switch to act as a user
`
`interface, the switch would have been “accessible” to the user and that the location
`
`of such a switch was a matter of design choice. Id. Because this POSA would have
`
`18
`
`
`
`understood that if a user was going to use a switch to, for example, power on the
`
`device or chose a lighting effect, the user must be able to gain access to the switch,
`
`he or she would also have understood that Pu taught a user accessible switch. Id.
`
`The location of the switch would also have given a predictable result
`
`because it is well known that for low voltage circuits operating at DC or low
`
`frequencies, mechanical switches can be physically located at multiple possible
`
`locations without affecting their electrical operation. Id.; see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 416 (2007); Leapfrog Enterprises, Inc. v. Fisher-Price,
`
`Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007); Agrizap, Inc. v. Woodstream Corp.,
`
`520 F.3d 1337, 1344 (Fed. Cir. 2008).
`
`B.
`
`Chliwnyj and Pu disclose the “selection switch … to select a
`desired lighting effect” of claims 24-26.
`
`PO argues that a POSA would not look to Chliwnyj’s user interface to
`
`control the operation of the simulated flame to select a desired lighting effect, or
`
`combine Chliwnyj with Pu selection of a light color. PO Resp. at 29-31. PO is
`
`incorrect.
`
`Chliwnyj
`
`teaches that his simulated electronic flame has a variety of
`
`decorative and ornamental lighting applications. Ex. 1005, 2:57-67. Chliwnyj then
`
`sets forth several specific embodiments, but notes that those embodiments are
`
`“illustrative”, not limiting. Id. at 16:1-5. Chliwnyj further describes that a user
`
`interface (e.g., a keypad) may be used to permit
`
`the user to “control some
`
`19
`
`
`
`parameters of the simulation” (id. at 14:12-15; 4:3-5), and that the user may use
`
`such an interface to select a mode.
`
`Id. at 8:19-25 (“The mode that was
`
`selected…”). Chliwnyj also teaches a variety of lighting effects. Id. at 2:20-23
`
`(stating that what is needed is an electronic flame or candle simulation with time-
`
`changing simulated flame patterns, possibly including color patterns, to better
`
`engender soothing and visually pleasing lighting effects.). Chliwnyj, therefore,
`
`specifically contemplates the use of a user interface (e.g., a switch) to permit the
`
`user to interact with and control the simulated flame in a way the user finds
`
`pleasing. Shackle II (Ex. 1047), at ¶ 66.
`
`Pu teaches two switches, one that controls the power to the device and the
`
`other that permits the user to select a lighting effect (e.g., a continuous red mode, a
`
`continuous green mode, or to cycle through all three colors in turn). Ex. 1008 at
`
`Specifications 3/3; Shackle II (Ex. 1047), at ¶ 67. And, while Chliwnyj expresses a
`
`preference for a random flame, Chliwnyj does not teach away from a user selecting
`
`a particular color. Id. at ¶ 67; See Merck, 874 F.2d at 807 (that a specific
`
`embodiment is taught as preferred is not controlling since “all disclosures in the
`
`prior art, including preferred embodiments, must be considered”); In re Mouttet,
`
`686 F.3d at 1344 (“[T]he ‘mere disclosure of alternative designs does not teach
`
`away’ … just because better alternatives exist … does not mean that an inferior
`
`combination is inapt for obviousness purposes.”); In re Boe, 355 F.2d 961, 965
`
`20
`
`
`
`(CCPA 1966) (all disclosure
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