throbber
Paper No. 68
`Entered: November 20, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 COL, 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.
`____________
`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`____________
`
`Held: September 21, 2015
`____________
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`
`
`BEFORE: WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
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`The above-entitled matter came on for hearing on Monday,
`September 21, 2015, commencing at 9:16 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
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`
`
`MARK C. NELSON, ESQUIRE
`KEVIN GREENLEAF, ESQUIRE
`Salans FMC SNR Denton, McKenna, Long
`2000 McKinney Avenue, Suite 1900
`Dallas, Texas 75201
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`
`
`ON BEHALF OF PATENT OWNER:
`
`THEODORE F. SHIELLS, ESQUIRE
`MARCUS BENAVIDES, ESQUIRE
`Shiells Law Firm and the Law Practice of
`Marcus Benavides
`1910 Pacific Avenue, Suite 14000
`Dallas, Texas 75201
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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
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`P R O C E E D I N G S
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`- - - - -
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`JUDGE SAINDON: Good morning. I'm Judge
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`Saindon. With me today are Judges Arbes and Grossman. We
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`are here for an oral hearing of IPR2014-00935, 936 and 938.
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`Before we get started, there is one administrative matter
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`I would like to take care of. With respect to petitioner's
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`objection, paper 64 in the 936 case, for example, I just wanted to
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`memorialize that we overruled petitioner's first two objections
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`and sustained petitioner's third objection.
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`So what we have here is 90 minutes per side. That's for
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`all arguments, including reply and rebuttal time. You may divide
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`that time up as you see fit. However, with respect to the 936 and
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`938 cases, we ask that the parties focus on the light switch and
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`level of ordinary skill issues. And for 935, we ask the parties
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`focus on the surround frame issues. The 90 minutes will go very
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`fast. So I just wanted to encourage you to focus on those
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`arguments.
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`Petitioner will go first. The way our hearings work is
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`that whoever has the burden goes first and last. And so petitioner
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`has the petition. That's obviously the start of the show, but there
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`are other motions. You don't have to argue those if you wish, but
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`if a party wishes to argue one of the motions, it gets brought up
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`first on their turn and the other side will get a chance to respond.
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`And all of that comes out of your 90 minutes.
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`All right. Petitioner, you'll go first. And if you wish to
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`reserve some time, you may tell me explicitly and I'll reserve it
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`for you. Otherwise whatever you have left over, you can use.
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`MR. NELSON: Good morning, Your Honors. Before
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`we start, we have copies of our presentation that we would like to
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`hand out to the bench. Is that all right?
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`JUDGE SAINDON: Sure.
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`MR. NELSON: Good morning, Your Honors. My
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`name is Mark Nelson and together with my colleague, Kevin
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`Greenleaf, we will be representing petitioners today. I'm going to
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`speak on the 936 and 938 IPRs and my colleague, Kevin, is going
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`to speak on the 935 IPR. With me as well are Juanita DeLoach
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`and Lissi Mojica, who are colleagues and also representing
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`petitioners.
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`We would like to reserve 30 minutes for rebuttal. And
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`Juanita will be trying to keep time, but if Your Honors wouldn't
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`mind telling me when I was at 50 minutes, I would greatly
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`appreciate it.
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`And so turning to the issues at hand here, and Your
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`Honors wanted to focus, if I understood correctly, on the
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`light-sensitive switch issue and also on the level of ordinary skill
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`issue, and then we'll probably touch on some other things.
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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`I have got -- let me go to slide 12 here. So just to orient
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`the Court a little bit with respect to the claim language and I have
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`got them up on the boards here too, the board with the '477
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`patent. Claim 1 is also slide 97 and I have slide 12 here. And as I
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`think the Board maybe recognizes, the dispute here is really
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`severalfold but there's a dispute whether the art teaches the
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`light-sensitive switch that renders the circuit operative at low
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`light level. Petitioners say that it does; patent owner says that it
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`doesn't. And there's a dispute as to level of skill in the art and
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`then there's also some disputes relating to motivations to
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`combine.
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`It's really highlighted in the claim language here. The
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`language that's really disputed here is the switch issue, whether to
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`be motivated to combine -- we have been calling it the Chliwnyj
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`reference. I think patent owner calls it Chliwnyj. So we may
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`have a verb problem here.
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`JUDGE SAINDON: We have been calling it Clooney.
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`MR. NELSON: So the issues with claim 1 and really
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`the independent claim 20 as well for the '477 patent are would
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`you combine the Chliwnyj reference with the various switch
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`references. And then dependent claims 2 and 21 have the
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`light-sensitive switch issue.
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`I do note that there's been a certificate of correction
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`issued on the '477 patent. This slide doesn't reflect that language.
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`I think patent owner's does. With respect to the switch issue, the
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`only difference here is where it says exposed to provide for
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`access thereto, the certificate of correction adds a "by", thereto by
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`a user. I don't think for purposes of this dispute it makes any
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`difference, but we just note that for the record.
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`So turning -- the other claims here, as the panel knows,
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`ground 2, we have a second switch that has the desired fixed
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`color issue. Grounds 2, the switch has to be downward facing,
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`and then ground 4, if you combine the second switch issue, the
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`desired color with having it exposed.
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`The '827 is quite similar. There you've got a selection
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`switch to choose a desired lighting effect. And the lighting effect,
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`claim 25, gives some examples of it. You can have a specific
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`color changing, color brightness, frequency, sequence, et cetera.
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`And then finally, independent claims 27 and 35 on slide
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`17 are basically the same switch issue as the '477 claims except
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`for it talks about the switch being accessible as opposed to
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`exposed. And then claim 30 is the three diodes.
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`So with that, I'll jump into the light-sensitive switch
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`issue. So the presentation here is organized into four blocks, the
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`level of ordinary skill, the light-sensitive switch. So I want to
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`talk first here about -- I want slide 31. First about the
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`light-sensitive switch issue. So patent owner's response basically
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`makes two arguments. It makes the argument that Wu does not
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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`teach a light-sensitive switch that renders the circuit operative at
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`low light levels. And then patent owner says, well, even if Wu
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`did teach such a switch, then a POSA would not have thought it
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`obvious to modify the Chliwnyj reference to operate only at low
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`light levels.
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`So I want to start out with the light-sensitive switch. I
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`don't think there's any dispute here that light-sensitive switches
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`are well-known elements. This is Dr. Ducharme, who is patent
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`owner's expert here. And during deposition I asked him were
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`there light-sensitive switches known prior to the time
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`Mr. Richmond filed his patent application. The witness repeats
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`my question. I respond yes. And then, yes, those were well
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`known, weren't they? I respond, yeah, they were known.
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`So there's no dispute, I don't think --
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`JUDGE GROSSMAN: Counselor, just for the record, it
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`would be helpful if you identify where you are reading from. The
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`record doesn't know what slide you are on and the record doesn't
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`know what page of the Ducharme deposition it is. So when we
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`look at this transcript, we won't know where you are quoting
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`from. So it would be helpful just to make sure our record is clear
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`to identify where you are reading or quoting.
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`MR. NELSON: Thank you, Your Honor. This is slide
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`31. On the right-hand side of this slide -- I'm sorry, this is slide
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`33. On the right-hand side of this slide are the portions in the
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`record where this testimony is found. In this instance, I was
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`reading from Ducharme Deposition Exhibit Number 1049 in the
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`936 IPR, 1046 in the 938 IPR at 54:23 through 55:11.
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`And so there's no dispute that light-sensitive switches
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`were well known. So Wu does teach a light-sensitive switch.
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`This is slide 34. The Wu patent is Exhibit 1006. And I'm
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`referring to what I call Shackle 1 which is Shackle's first
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`declaration at paragraphs 124 and 125.
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`So if you look on the slide 34 here, you see a picture of
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`Wu. And it's a solar-powered lighting device that has a stake to
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`stick in the ground. It's got a lens. It's got solar cells up here.
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`And Dr. Shackle, who is petitioner's expert, says I understand Wu
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`to disclose a circuit that includes a light-sensitive switch that
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`renders the circuit operable at low light levels. This is made plain
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`by the description in Figure 4.
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`And Figure 4, which is on the slide here, says when it,
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`meaning the device in Figure 4, the solar cell, is irradiated by the
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`sun in the daytime, the electrical energy is stored in the
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`rechargeable battery 13, ready for use by the buzzer 14 and the
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`light-emitting element 15. When in a particular time, such as
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`night, the buzzer 14 and the light-emitting element 15 will
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`automatically activate it to generate low frequency sounds that
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`rodents abominate and to generate illumination, thereby, they can
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`provide the effect of expelling rats and illuminating.
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`In the text there you have a solar powered device with a
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`solar cell and a rechargeable battery and the text saying that it
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`charges the battery during the day and at night it turns the thing
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`on. In the text itself there we believe, given how well known the
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`light-sensitive switch elements were, discloses it. But there's
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`more than that.
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`JUDGE ARBES: Before you move on to that, I'd like
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`to hear your understanding of the claim language. The claim
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`language says a light-sensitive switch that renders the circuit
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`operative at low light levels. So does that mean that the
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`light-sensitive switch detects low versus high light levels and
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`when they are low, it renders the circuit operative, it turns the
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`lamps on? Am I reading that right?
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`MR. NELSON: I think that's a fair reading of it, Your
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`Honor. You have a light-sensitive switch and it realizes that there
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`are low light levels.
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`JUDGE ARBES: So there has to be some detection,
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`some differentiation between low light levels and high light
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`levels. And when it detects low, that's when it turns the lamps
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`on?
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`MR. NELSON: When a threshold value, when some
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`value of low light is detected, it would then turn in this case, it's a
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`PNP transistor, on to allow the circuit to operate.
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`JUDGE ARBES: Okay. Where does Wu disclose that
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`sort of detection, that sort of determination of -- it's a low light
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`level, therefore, I need to turn on the lamps?
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`MR. NELSON: I'm not sure if Wu says it like verbatim
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`in the text, but I mean, these are well known, well understood
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`circuit elements. And just the electrical energy is stored in the
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`rechargeable battery and the light-emitting element. When at a
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`particular time, such as night -- I think that people know that
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`night has low light levels -- the light-emitting element will be
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`automatically activated.
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`JUDGE ARBES: How do we know that that
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`determination is coming from a light-sensitive switch as opposed
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`to any other sort of determination like a determination of time, a
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`particular time?
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`MR. NELSON: Well, Wu does not disclose a timer in
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`it. And because light-sensitive switches are well-known
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`elements, Wu doesn't disclose a timer to say at 6:00 p.m. turn this
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`on or at 8:00 p.m. turn this off or at 5:00 -- at noon turn it on. So
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`somebody of ordinary skill reading this reference would
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`understand, first of all, what light-sensitive switches were, how
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`they worked and then also would look at what we'll get to in a
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`minute, the text combined with the figure.
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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`And there isn't any teaching in Wu that we are aware of
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`that says here is a clock that tracks this thing. So they would
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`realize that Wu teaches the light-sensitive switch.
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`So this is, again, Dr. Shackle just identifying the
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`modules here. This is Figure 3 of Wu on slide 35. If I could
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`put -- we have this figure blown up here as well because I think
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`we're going to talk about this in a some detail. Can Your Honors
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`see it from the board here?
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`JUDGE SAINDON: That's fine.
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`MR. NELSON: So this is slide 106 from the
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`presentation is this larger blowup of the board and then it's also
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`here on slide 35. And so what Wu teaches here is three separate
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`modules. And you have got module A, which is the upper
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`module; module B, which is the light module; module C, which is
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`the sound module. And what Wu teaches is those three modules
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`then work together.
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`And Dr. Shackle says module A is the light-sensitive
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`switch. Dr. Shackle then goes through an explanation of how it
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`works here in paragraph 34 of his declaration, his reply
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`declaration, which is Exhibit 1050. I'm on slide 36, at
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`paragraph 54 of Exhibit 1050 of slide 36.
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`And he walks through how this transistor here labels
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`PNP realizes that -- so you asked earlier, Your Honor, how it
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`detects things. And this is, Dr. Shackle explains this in 54, sort of
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`starting on the middle of that paragraph: When light impinges
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`photovoltaic cell 12, it creates a high voltage at the input of the
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`first two-input NAND gate which results in a low output, which
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`is output at the second two-input NAND gate to produce a high
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`output. The high output voltage is then input to the base of the
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`PNP transistor which causes it to be in an off state, causing the
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`collector to have a high impedance. Alternatively, when the light
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`does not impinge on the photovoltaic cell, there is a low input at
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`the input of the first two-input NAND gate which renders a low
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`output for the second two-input NAND gate, thereby causing the
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`PNP transistor to turn on and letting the circuit turn on.
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`Now, patent owners -- I want to get to patent owner's
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`main argument here. Patent owner's main argument here is
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`focused on these little Ts that patent owner will show some slides
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`that Dr. Shackle, our expert, said those were the power supply.
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`And patent owner says all those Ts there are connected here to
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`the battery. I'm on slide 37. They are connected to the battery.
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`And because they are connected to the battery, patent owner
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`interprets this as being directly connected to the battery. Because
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`they are directly connected to the battery, patent owner says, well,
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`that means as long as the battery has charge, this circuit is always
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`on.
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`And that's essentially their argument, is that -- and
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`you'll see their slides, they have little lines drawn here from these
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`

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`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`Ts across. They basically short the circuit out and they say
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`everything is connected to the battery, so it doesn't teach a
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`light-sensitive switch that operates at low light levels because
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`these Ts indicate that everything is directly connected to the
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`battery and that's how it works, according to patent owner.
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`JUDGE GROSSMAN: Can you describe what you are
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`referring to as the Ts? I can see it and I see where the pointer is,
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`but again, our record doesn't see your pointer. So I want to make
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`sure that it's clear, we understand what you think a T is.
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`MR. NELSON: Okay. So referring to here the slide 37,
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`there's yellow highlighting on the Figure 3 from Wu on that slide.
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`And the yellow highlighting are little lines that end in a
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`perpendicular T. So the very tops of those perpendicular Ts are
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`what I'm referring to when I talk about the Ts.
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`JUDGE GROSSMAN: Thank you.
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`MR. NELSON: So the problem with patent owner's
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`argument here is that it doesn't make sense. It doesn't even make
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`sense to its own expert here. And this is slide 38. This is
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`Dr. Ducharme again testifying generally from his deposition at
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`116, line 16 through 117, line 20. And he's asked what is the
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`purpose of the first and second. So we start out up here at line 16,
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`I asked him, So if I understand your view of the circuit as being
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`the whole circuit, you view the circuit as basically being always
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`on and powered from the battery. Is that fair?
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`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
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`And Dr. Ducharme says, I view this circuit as having all
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`those T symbols being connected. And so if the battery has
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`power, then the circuit is on.
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`So I asked him, And under that interpretation, what is
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`the purpose of the first and second NAND gates? So what is the
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`purpose here of these two structures in the circuit?
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`Dr. Ducharme says, They serve no purpose if all these
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`points are connected. They serve no purpose.
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`What about the PNP transistor? What is the purpose of
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`the this? Again, this is the PNP transistor right here labeled PNP
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`on Figure 3 of slide 37. What is the purpose of that?
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`It has no purpose.
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`Do you think it would make sense to have in all these
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`elements in the circuit if they serve no purpose?
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`Does it make sense to me as a designer?
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`I asked him, Yes.
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`His answer, No, it doesn't make any sense to me as a
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`designer.
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`So their own expert says their interpretation of the
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`circuit, if he's the person designing it, wouldn't make any sense.
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`And Dr. Shackle, this is slide 39, Dr. Shackle agrees with that.
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`And I'm reading from paragraph 53 here of the reply brief of
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`Shackle's declaration, his reply declaration and the reply brief at
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`13. A person of ordinary skill would have known that the
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`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`whole -- when the modules are connected to work together, the
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`PNP transistor would not be tied to positive power because
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`otherwise the vast majority of the circuit elements, the resistor,
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`the capacitor, the NAND gates and the PNP transistor, again,
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`going back to the figure here on slide 37, all these elements
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`would serve no purpose.
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`JUDGE ARBES: So counsel, if you are reading these
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`correct, what do the Ts in the figure mean, then?
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`MR. NELSON: The Ts mean, as Dr. Shackle said, they
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`indicate a connection to a power rail, basically, but it doesn't
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`indicate a direct connection to a power rail.
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`JUDGE ARBES: So what kind of connection would it
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`be?
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`MR. NELSON: It would be that, for example, when
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`this is active here, this PNP transistor is basically powered in
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`such a way that it turns the circuit on, it would then -- this module
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`would connect, would be powered up here from the circuit.
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`JUDGE SAINDON: Counsel, in circuit C, I see at the
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`top of the four vertical lines going down to connect the diodes
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`and all the various circuitry, there's four resistors hooked up to
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`that power rail and the T is above one of them indicating that
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`there's a power supply. Now, if those resistors are of a certain
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`value, even if you are connected to a battery, it wouldn't power
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`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`the diodes. Is there any testimony to that regard about how --
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`about what those resistors' function is?
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`MR. NELSON: I'm not sure, Your Honor, that there's
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`testimony in the record from either side as to what the resistors'
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`function is.
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`JUDGE SAINDON: Thank you.
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`MR. NELSON: So kind of going on here, then, what
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`petitioners are relying on is circuit element A as a light-sensitive
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`switch that then is being combined with Chliwnyj to teach the
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`claimed invention.
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`We asked, at the end of the whole section of the
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`deposition on the Wu reference, we asked Dr. Ducharme, can you
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`look at module A in isolation? And in your view, is that a
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`light-sensitive switch as he defines it?
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`Dr. Ducharme says, Yes, if you consider the point
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`between the circuit elements or the circuit blocks A and C as
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`being, you know, that point as being the driving point of block A,
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`and you close that switch, then I do understand circuit element A
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`to be a light-sensitive switch.
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`And that's from Dr. Ducharme's deposition 119, lines 4
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`through 13 of slide 40.
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`JUDGE SAINDON: Counsel, from context, what
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`switch is he talking about, the circuit A or the particular actual
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`switch within circuit A?
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`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
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`MR. NELSON: He is talking about the entire module A
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`circuit here, the module A that is the element that petitioners
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`allege to be the light-sensitive switch. And he's basically
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`admitting that if you look at module A, it's a light-sensitive
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`switch, just as petitioners say it is.
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`So what patent owner seems to be focusing on here, in
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`our view, they are taking a view of the circuit that shorts it out in
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`saying, well, because we are looking at those Ts as being directly
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`connected to power, the circuit is always on and therefore, Wu
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`itself doesn't teach a light-sensitive switch that renders the circuit
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`operative at low light levels.
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`First, I think a person of ordinary skill would know that
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`a light-sensitive switch, that's what it does. Second, the patent
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`owner's interpretation of the circuit doesn't make sense to its own
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`expert as a designer because it would render most of the module
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`A irrelevant, which just doesn't seem to be a correct
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`interpretation. We also believe that it ignores the teaching of the
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`text, particularly paragraph 20, as we pointed out. So for those
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`reasons, we believe Wu teaches a light-sensitive switch.
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`And even if you took patent owner's interpretation as
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`being the right interpretation, its own experts still say that
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`module A teaches a light-sensitive switch and somebody of
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`ordinary skill in the art would know that switch would turn
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`something on at low light levels. We are not -- when you are
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`
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`
`
`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`combining references, I mean, you don't have to make it
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`perfectly -- you don't have to drop module A exactly into
`
`Chliwnyj or there's some modification allowed. And because it's
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`such a well-known circuit element, because persons of ordinary
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`skill in the art would know that and because, in our view, patent
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`owner's argument is incorrect to begin with, we think that it's
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`clear that Wu does disclose a light-sensitive switch.
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`And patent owner makes one other argument sort of
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`relating to that, and this kind of relates to a question that Your
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`Honor asked earlier. Patent owner argues that nighttime is not a
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`particular time or sort of a corollary to that, that the patent says
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`when in a particular time such as night. And this is slide 41,
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`referring to paragraph 20 of the Wu reference. And patent owner
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`seems to be arguing, well, because Wu says a particular time,
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`quote, such as night, end quote, that it's contemplating these other
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`times as well that it could be turned on and that Wu wouldn't
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`work for its intended purpose if you could only turn it on at night
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`because then you couldn't expel rodents during the day.
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`And again, we think that the teaching here is clear from
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`the specification combined with the figure itself and all of the
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`testimony what Wu was doing. And I mean, rodents are
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`generally nocturnal guys here anyway. We think it's clear and
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`that this argument that night isn't a particular time and that that
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`somehow teaches away from making the combination that we are
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`
`
`
`
`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`seeking to make or that Wu doesn't disclose a light-sensitive
`
`switch that renders the circuit operative at low light levels --
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`JUDGE ARBES: Counsel, why do you think it uses the
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`words "particular time"? It seems like in your reading it should
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`say something like when it's dark out, when it's nighttime, it does
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`this sort of action. Why does it say "particular time"?
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`MR. NELSON: I think Wu is a Chinese reference.
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`This is a certified translation of that reference, I believe. I think
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`they probably were a little bit loose in their language. I don't
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`think they were intending to say a timer. If they were, I would
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`assume that there would be a timer disclosed in Wu. We
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`certainly haven't found one. I'm not sure that there's anything in
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`the record indicating that there is one somewhere. I mean, I think
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`that timers are pretty well-known elements. If somebody wanted
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`to put a timer on there, they could have done so. But I don't think
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`that this argument has merit.
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`Also, just to point out something from the record,
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`circuit element C is a multivibrator element. I think it's been
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`clear, but we are relying here in the Wu reference on the module
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`A as the light-sensitive switch. And it's at Shackle deposition
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`159, 12 through 16. That's Exhibit 2022, I'm sorry.
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`So the second thing I want to touch on just briefly and
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`then I'll get to the person and level of ordinary skill, patent owner
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`makes a lot of arguments that it wouldn't be obvious to combine
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`
`
`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`Chliwnyj with Wu. I'll just hit these real briefly. First of all, I
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`think these arguments are largely off base because patent owner
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`is relying on the internal flame embodiment of Chliwnyj. And
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`this is from Dr. Shackle's deposition -- I'm sorry, Dr. Ducharme's
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`deposition, 173:20 through 174:16, slide 43. Basically
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`Dr. Ducharme concluding that he focused on what seemed to be
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`similar. I asked him is that the internal flame embodiment of
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`Chliwnyj. And he says yes.
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`Slide 44, Dr. Ducharme's deposition, 172:9
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`through 173:5, Again, I'm not sure I understand your answer, so
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`basically solar garden light somehow you limited your analysis to
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`Chliwnyj's eternal flame embodiment. Is that what I understand
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`you to be saying?
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`Dr. Ducharme says, That's the one that's most similar.
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`So then I asked him, In your opinions regarding whether
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`it was obvious or not obvious to combine Chliwnyj with different
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`things, you focused on the eternal flame embodiment of
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`Chliwnyj; is that correct? Again, yes.
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`I think that's a significant flaw in patent owner's legal
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`analysis.
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`JUDGE SAINDON: Counsel, what were the other
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`embodiments? They are all flames, right?
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`MR. NELSON: That's a real good question, Your
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`Honor. Let me switch over here for a second. I can borrow one
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` 20
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`
`
`
`
`

`
`IPR2014-00935 (Patent 8,089,370 B2)
`IPR2014-00936 (Patent 7,196,477 B2)
`IPR2014-00938 (Patent 7,429,827 B2)
`
`of patent owner's slides here, if I can. So there are numerous
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`embodiments of Chliwnyj and I'll talk about some of the other
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`ones in a minute. The object of the inventions clearly indicate
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`that Chliwnyj is a broad concept. The title is a simulated flame.
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`One of the embodiments and one of the issues here that I think
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`patent owner is focusing on is are all these things absolutely
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`limited to flames.
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`And this is patent owner's slide 120 citing Chliwnyj
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`14:11 through 41. And this is the relaxation embodiment and this
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`is one that we've cited in several of the desired color type
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`limitations.
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`And what I want to point out here is the embodiment
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`certainly does start out, the final embodiment uses the flame
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`simulation as a relaxation device. But then it starts talking about
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`what the light looks like to the user, the person who is viewing it.
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`And it says, The present embodiment is a relaxation lighting
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`apparatus which produces a gentle rhythmic light pattern.
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`It goes on near the bottom. The appearance in the eye is
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`one of a constantly on light that is modulated in intensity with an
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`apparent continual range of intensity modulation.
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`So this, in our view, this portion of the specification
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`here of Chliwnyj at colum

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