throbber
Paper 69
`Trials@uspto.gov
`Entered: December 15, 2015
`Tel: 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 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 7,429,827 B2
`_______________
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`Granting Motion to Seal
`37 C.F.R. § 42.55
`Denying-in-Part and Dismissing-in-Part Motions to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`

`
`IPR2014-00938
`Patent 7,429,827 B2
`
`I. BACKGROUND
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`With respect to the grounds asserted in this trial, we have considered the
`papers submitted by the parties and the evidence cited therein. For the
`reasons discussed below, we determine that Petitioner has shown, by a
`preponderance of the evidence, that the subject matter of claims 24–30 and
`35 of U.S. Patent No. 7,429,827 B2 (Ex. 1001, “the ’827 patent”) is
`unpatentable. In addition, we deny-in-part and dismiss-in-part Petitioner’s
`and Patent Owner’s Motions to Exclude Evidence, and we grant Petitioner’s
`Motion to Seal.
`
`A. Procedural History
`
`Petitioner filed a revised Petition to institute an inter partes review
`(Paper 13, “Pet.”) of claims 24–35 of the ’827 patent on June 30, 2014. Pet.
`1. Patent Owner filed a Preliminary Response. Paper 19 (“Prelim. Resp.”).
`We instituted an inter partes review of claims 24–30 and 35 of the ’827
`patent on December 16, 2014. Paper 20 (“Dec. on Inst.”). Patent Owner
`then filed his Response to Petitioner’s Petition (Paper 34, “PO Resp.”), to
`which Petitioner filed its Reply (Paper 50, “Pet. Reply”). An oral hearing
`was held on September 21, 2015. Paper 68 (“Tr.”).
`Patent Owner alleged that Petitioner failed to list all real parties in
`interest, and we authorized the parties to brief the issue. Paper 37 (Motion
`to Terminate); Paper 44 (Opposition); Paper 47 (Reply). We denied Patent
`Owner’s Motion to Terminate. Paper 57.
`
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`IPR2014-00938
`Patent 7,429,827 B2
`There are several outstanding motions decided herein. Patent Owner
`filed a Motion to Exclude Evidence. Paper 54 (“PO Mot. Excl.”); see also
`Paper 62 (Petitioner’s Opposition, “Pet. Opp. PO Mot. Excl.”); Paper 64
`(Patent Owner’s Reply, “PO Reply PO Mot. Excl.”). Likewise, Petitioner
`filed a Motion to Exclude Evidence. Paper 56 (“Pet Mot. Excl.”); see also
`Paper 59 (Patent Owner’s Opposition, “PO Opp. Pet. Mot. Excl.”); Paper 63
`(Petitioner’s Reply, “Pet. Reply Pet. Mot. Excl.”). Lastly, Petitioner filed a
`Motion to Seal. Paper 43 (“Pet. Mot. Seal”). Patent Owner did not file an
`opposition to Petitioner’s Motion to Seal.
`
`B. Related Matters
`
`Petitioner states that Patent Owner has asserted a number of lawsuits
`against the Petitioner companies alleging infringement of the ’827 patent.
`Paper 18, 3–4; Paper 17, 3. Petitioner and Patent Owner also are involved in
`other inter partes reviews: IPR2014-00935 (Patent 8,089,370 B2)
`(instituted), IPR2014-00937 (U.S. Patent No. 8,362,700 B2, “the ’700
`patent”) (denied), and IPR2014-00936 (U.S. Patent No. 7,196,477, “the ’477
`patent”) (instituted). Pet. 5; Paper 17, 2. The ’700 patent is a continuation-
`in-part of the ’827 patent, which is a continuation-in-part of the ’477 patent.
`
`C. The ’827 Patent
`
`The ’827 patent describes a solar powered light that produces light of
`varying color. Ex. 1001, 1:11–13. According to the ’827 patent, producing
`light of a varying color is known, and solar powered “garden lights” are
`known. Id. at 1:17–25. The claimed invention “overcome[s] or
`substantially ameliorate[s] at least one of the . . . disadvantages” of the prior
`
` 3
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`IPR2014-00938
`Patent 7,429,827 B2
`art, which includes “difficulty in adjusting the various lighting functions”
`and “not producing a uniform desired colour.” Id. at 1:26–35.
`
`D. Exemplary Claims
`
`Of the claims in this trial, claims 24, 27, and 35 are independent.
`Claim 24 is reproduced below.
`24. A lighting device to produce light of varying
`colour, said device comprising:
`a lens generally enclosing a chamber;
`a circuit including:
`at least two lamps of different colours to produce a
`desired colour, the lamps being mounted to
`direct light into said chamber;
`connections for at least one rechargeable battery to
`power the circuit;
`a solar cell mounted on a surface so as to be
`exposed to light and operatively associated with
`the connections to charge the battery;
`a light sub-circuit having an integrated circuit for
`controlling said lamps to produce lighting
`effects, and a selection switch, said selection
`switch being connected to said integrated
`circuit and operable to select a desired lighting
`effect; and
`a volatile memory retained for a period of time and
`associated with said integrated circuit, said
`memory causing operation of said circuit to
`produce said lighting effects.
`
` 4
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`

`
`IPR2014-00938
`Patent 7,429,827 B2
`E. Prior Art and Asserted Grounds
`
`The following grounds were instituted:
`Basis under
`References
`35 U.S.C.
`Chliwnyj,1 Wu,2 Pu,3 and Dowling4 § 103
`Chliwnyj and Wu
`§ 103
`Chliwnyj, Wu, and Lau6
`§ 103
`
`
`Claims In Trial
`24–26
`27–29 and 355
`30
`
`II. MOTIONS
`
`A. Petitioner’s Motion to Seal
`
`Petitioner moves to seal Exhibits 1016 and 1029, portions of Exhibits
`
`1019 and 1040–42, as well as portions of its Opposition to Patent Owner’s
`Motion to Terminate (Paper 44) and Exhibit 1044. Pet. Mot. Seal 2.
`Petitioner proposes entry of the Default Protective Order. Id. at 5; see Office
`Trial Practice Guide, 77 Fed. Reg. 48,769–71 (Aug. 14, 2012). Petitioner
`has provided redacted versions of Exhibits 1019, 1040–1042, and 1044. Pet.
`Mot. Seal 2.
`The Exhibits generally relate to an internal corporate resolution,
`listings of financial account numbers, and invoices for attorney fees. See
`Pet. Mot. Seal 3–4. The redacted versions of these documents, upon which
`
`
`1 U.S. Patent No. 5,924,784, issued July 20, 1999 (Ex. 1005).
`2 U.S. Patent Application Publication No. US 2003/0201874 A1, published
`Oct. 30, 2003, filed Apr. 24, 2002 (Ex. 1006).
`3 Chinese Patent Publication No. CN 2522722Y, published Nov. 27, 2002
`(Ex. 1008) (certified translation).
`4 U.S. Patent No. 7,064,498 B2, issued June 20, 2006, filed Mar. 13, 2001
`(Ex. 1010).
`5 We denied review of claims 31–34. Dec. on Inst. 16–17.
`6 U.S. Patent No. 6,431,719 B1, issued Aug. 13, 2002 (Ex. 1011).
`
` 5
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`IPR2014-00938
`Patent 7,429,827 B2
`we relied in our denial of Patent Owner’s Motion to Terminate (Paper 57),
`sufficiently disclose the basis for our decision, so there is little public
`interest in making the non-redacted versions publicly available.
`Accordingly, Petitioner has shown good cause for sealing Exhibits 1016 and
`1029, and portions of Exhibits 1019, 1040–42, and 1044. We do not seal
`Paper 44 because it was filed publicly, which we deem a withdrawal of the
`Motion as to this paper.
`The parties are reminded that confidential information that is subject
`to a protective order ordinarily becomes public 45 days after final judgment
`in a trial. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761. After
`final judgment in a trial, a party may file a motion to expunge confidential
`information from the record prior to the information becoming public. See
`37 C.F.R. § 42.56.
`
`B. Patent Owner’s Motion to Exclude
`Evidence
`
`Patent Owner first argues that portions of Exhibits 1047 and the
`
`entirety of 1048–1063 should be excluded because they are “exhibits that
`could reasonably have been, but were not, included in an earlier filing.” PO
`Mot. Excl. 2–3. Patent Owner’s argument is that, essentially, because it was
`possible that these documents could have been filed earlier, they cannot later
`be filed. See id. at 1–4. We reject such a literal reading of 37 C.F.R.
`§ 42.23(b). We have reviewed the arguments in Petitioner’s Reply and
`Petitioner’s citations therein to Exhibits 1047–1063, and are persuaded that
`Petitioner presents arguments and evidence that are properly responsive to
`Patent Owner’s arguments and evidence. We find this to be a proper use of
`Reply exhibits and deny Patent Owner’s Motion on this basis.
`
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`IPR2014-00938
`Patent 7,429,827 B2
`Patent Owner then argues that paragraphs 26 and 27 of Exhibit 1047
`should be excluded “because they include hearsay statements and
`[Petitioner’s declarant, Peter W. Shackle, Ph.D.,] offers factual observations
`without laying a proper foundation or otherwise demonstrating personal
`knowledge of the recited facts.” PO Mot. Excl. 4. Patent Owner argues
`Exhibits 1048–1057 should also be excluded for similar reasons. Id. at 5.
`Exhibits 1048–1057 are profiles obtained from websites such as LinkedIn
`and are offered to show the educational background of various inventors.
`See Ex. 1047 ¶¶ 26–27. Because we do not rely on Exhibits 1047–1063, we
`dismiss this aspect of the motion as moot.
`Patent Owner then argues that Exhibits 1058–1060, which contain
`dictionary definitions of the word “varying,” should be excluded under
`Federal Rules of Evidence 401 and 403 “because they lack any probative
`value” and “are unduly prejudicial to Patent Owner.” PO Mot. Excl. 5–6.
`Given that the term “varying” appears in the claims and that Patent Owner
`argues a construction for the term in his Response (PO Resp. 15–19), these
`definitions have probative value. Further, Patent Owner has not offered a
`cogent explanation as to how these dictionary definitions are unduly
`prejudicial. We do not exclude Exhibits 1058–1060.
`Patent Owner argues that various excerpts of the testimony of his
`declarant, Alfred Ducharme, Ph.D., should be excluded from Exhibit 1046.
`PO Mot. Excl. 6–8. Reviewing Patent Owner’s explanation, it appears that
`he is simply arguing that Dr. Ducharme’s testimony should not be treated as
`standing for the notions upon which Petitioner argues. See, e.g., id. at 7
`(“Petitioner cited the above excerpt as support for [a position]. Not only do
`the cited excerpts offer no support for that characterization, but the
`
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`IPR2014-00938
`Patent 7,429,827 B2
`testimony . . . is inadmissible because the question . . . is ambiguous,
`argumentative, and misleading.”). We will make our own judgments as to
`what extent, if any, Dr. Ducharme’s testimony supports Petitioner’s
`positions and to what extent the answer given is based on an unclear or
`ambiguous question, to the extent we rely on that testimony at any point in
`our analysis below. Accordingly, we do not exclude the testimony.
`In view of the above, we deny-in-part and dismiss-in-part Patent
`Owner’s Motion to Exclude.
`
`C. Petitioner’s Motion to Exclude
`
`Petitioner first moves to exclude Exhibits 2042, 2050, 2052, 2054, and
`
`2062. Pet. Mot. Excl. 2–3. This evidence was provided in support of Patent
`Owner’s Motion to Terminate, which we denied on August 21, 2015 (Paper
`57). This evidence was not considered and the Motion was denied. We
`dismiss Petitioner’s Motion as to these Exhibits as moot.
`
`Petitioner next moves to exclude portions of Dr. Shackle’s testimony
`in Exhibits 2022 and 2023 as confusing, misleading, and/or irrelevant. Pet.
`Mot. Excl. 4–7. We decline to exclude this evidence. This panel acts as
`both the gatekeeper of evidence and as the weigher of evidence. Rather than
`excluding evidence that is allegedly confusing, misleading, and/or irrelevant,
`we will simply not rely on it or give it little weight, as appropriate, in our
`analysis. Accordingly, we deny-in-part and dismiss-in-part Petitioner’s
`Motion to Exclude.
`
`D. Patent Owner’s Motion for Observation
`
`Patent Owner filed a Motion for Observation (Paper 55) on the
`cross-examination of Dr. Shackle, which took place after Petitioner filed its
`
` 8
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`IPR2014-00938
`Patent 7,429,827 B2
`Reply. Petitioner filed a Response (Paper 60). We have considered Patent
`Owner’s observations and Petitioner’s responses in rendering our decision.
`
`III. PATENTABILITY ANALYSIS
`
`A. The Level of Ordinary Skill in the Art
`
`The parties differ significantly in their positions as to the level of
`ordinary skill in the art for the ’827 patent. We have reviewed the
`arguments of Patent Owner (PO Resp. 3–14) and Petitioner (Pet. 7; Pet.
`Reply 2–7).
`In general, Patent Owner seeks to define the person of ordinary skill
`in the art as a person having little if any technical skill. PO Resp. 8.
`According to Patent Owner, this person is focused on the “physical
`ornament[al]” design of the products, but not the “relatively unsophisticated
`electrical circuits.” Id. at 5–6; see also id. at 6 (characterizing a person of
`ordinary skill in the art as having “limited mechanical and electrical skills”
`and “only know[ing] the basics of electrical components and circuits that are
`commonly used in solar garden lights”). To that end, a person of ordinary
`skill in the art, according to Patent Owner, only has “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 . . . making only simplistic
`changes to the exterior aesthetic of the product.” Id. at 4.
`Petitioner argues that a person of ordinary skill in the art has technical
`knowledge, such as an electrical engineering background or equivalent
`experience. Pet. 7. In its Reply, Petitioner points out that patent
`specifications are addressed to a person of ordinary skill in the art, and that
`Patent Owner’s proposed person of ordinary skill in the art would seemingly
`
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`IPR2014-00938
`Patent 7,429,827 B2
`be unable to understand the ’827 patent (particularly the circuit diagram in
`Figure 9) and the art of record. Pet. Reply 3–4.
`In determining the level of ordinary skill in the art, a court may
`consider various factors, including the “type of problems encountered in the
`art; prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
`955, 962 (Fed. Cir.1986)). The prior art itself is often the best guide as to
`the level of skill in the art. Id.; Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`The ’827 patent, Chliwnyj, Wu, Lau, and Pu include circuit diagrams.
`The parties seem to be in agreement that a person of ordinary skill in the art
`would be capable of reading the diagrams and understanding what
`function(s) they perform, at least at some level. PO Resp. 4 (a person of
`ordinary skill in the art has “the ability to recognize how a pre-designed
`circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art
`“would [have been] able to understand the patent’s descriptions and
`drawings”). Patent Owner’s position, however, seems to be that although a
`person of ordinary skill in the art would recognize what these circuits do, he
`or she would be unable to make any modifications to those circuits and
`would only be capable of taking them whole cloth and inserting them into
`another device. Patent Owner would seemingly limit the person of ordinary
`skill in the art to ornamental design changes only. We reject the notion that
`a person of ordinary skill in the art would only be capable of making
`ornamental design variations. Under Patent Owner’s proposed level of skill,
`
`
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`IPR2014-00938
`Patent 7,429,827 B2
`any functional modification would be beyond the level of ordinary skill in
`the art and render the modified device patentable (so long as it was not
`anticipated); this proposed level of skill is so low it eviscerates the notion of
`obviousness.
`Instead, upon review of the record before us, we find that a person of
`ordinary skill in the art is able to comprehend what is being shown in the
`prior art and has some ordinary level of creativity with respect to their
`modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
`person of ordinary skill is also a person of ordinary creativity, not an
`automaton”). We agree with Petitioner that a person of ordinary skill in the
`art at the time of the ’827 patent7 would have had a graduate degree in
`electrical or electronics engineering or physics with experience in circuit
`design, or a bachelor’s degree in electrical or electronics engineering or
`physics with at least two years industrial experience and experience in
`circuit design, and apply that level of skill for purposes of this Decision. See
`Ex. 1002 ¶ 36.
`
`B. Dr. Shackle is Qualified to Testify to the
`Level of Ordinary Skill in the Art
`
`Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not
`qualified to testify as to the level of ordinary skill in the art. PO Resp. 14–
`15. Patent Owner argues that, for example, he “has never supervised
`engineers in the design of solar lights.” Id. at 14. Patent Owner argues we
`should give his declarant, Dr. Ducharme, more weight because Dr.
`
`7 The application issuing as the ’827 patent was filed in April 2005 and is a
`continuation-in-part of the application, filed in February 2004 and claiming
`the benefit of a foreign application filed in December 2003, that issued as
`the ’477 patent.
`
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`IPR2014-00938
`Patent 7,429,827 B2
`Ducharme is allegedly better qualified. Id. We weigh competing testimony
`of witnesses on an observation-by-observation basis, based on the witness’s
`skills and experience, as well as the reasoning and evidence they offer with
`respect to that particular observation. Further, we are not persuaded that Dr.
`Shackle would not have been a person of ordinary skill in the art at the time
`of the invention simply for not being a supervisor of engineers designing
`solar lights. Instead, we find that Dr. Shackle has ample experience in the
`field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5;
`Ex. 1047 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr.
`Shackle is qualified to testify).
`
`C. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276 (Fed.
`Cir. 2015). Under the broadest reasonable interpretation standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`We construed the terms “desired colour”8 and “varying colour” in our
`
`Decision on Institution as follows:
`
`
`8 The written description of the ’827 patent generally, but not always, uses
`the British spelling, “colour.” See Ex. 1001, Abstract, claims 28, 31, 32, 35
`(spelling “color”). We use the word “color” unless quoting the claim
`language.
`
`
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`IPR2014-00938
`Patent 7,429,827 B2
`
`“desired color”: a color that is desired by the user or intended by the
`designer;
`“varying colour”: a perceptible changing of color over time.
`Dec. on Inst. 6–9.
`The term “desired colour” is not at issue in this Decision; we do not
`perceive any reason or evidence that now compels any deviation from that
`prior interpretation. Patent Owner proposes a construction of “lamp” (PO
`Resp. 19) but we do not construe this term because it is unnecessary to the
`outcome of this proceeding. We thus turn to Patent Owner’s proposed
`constructions of “varying colour” and “switch being accessible by a user.”
`
`1. “varying colour”
`
`Patent Owner disagrees with our prior construction of “varying
`
`colour.” PO Resp. 15–19. Patent Owner argues that the term should be
`construed as “color that changes over time by varying the intensity of one or
`more of the lamps with time.” Id. at 16.
`
`In our Decision on Institution, we did not adopt Petitioner’s or Patent
`Owner’s proposed constructions of this term because we determined that
`both proposed constructions focused too much on how the varying color was
`created rather than what was varying color. Dec. on Inst. 6–9. Or, to put it
`another way, we determined that the claims required a particular observable
`phenomenon (varying color) from a particular structure (a circuit having at
`least two lamps) but did not limit the manner in which the structures were
`operated to achieve that result. As we stated then, we declined to
`incorporate any particular way to create varying color because the
`specification of the ’827 patent does not so limit the term. Id. at 7–8. For
`
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`IPR2014-00938
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`that reason, we construed “varying colour” as “a perceptible changing of
`color over time.” Id. at 8.
`Patent Owner argues that we should construe the term the same as it
`was construed in a district court action, but Patent Owner offers no
`explanation as to why.9 See PO Resp. 16. Patent Owner previously argued
`that we should not adopt the district court’s construction, but rather a
`modified version thereof, because that construction “is not binding on Patent
`Owner because it was based upon a stipulation by the parties in [that] case.”
`Prelim. Resp. 22 n.14 (emphasis added).10 In either event, district court
`claim construction standards are different from ours and, although it is often
`helpful to consider a district court’s analysis and construction of a term, the
`decision is less helpful here because the parties to that action stipulated to
`the term’s meaning. Nevertheless, we have considered the evidence before
`us regarding the term’s interpretation in the district court proceeding. See n.
`9.
`
`Patent Owner then sets forth a number of bullet points that appear to
`discuss the testimony of Petitioner’s declarant, Dr. Shackle. The first point,
`PO Resp. 16–17, discusses the word “varying” and how it is a present
`participle, implying that Patent Owner is arguing that the term refers to an
`action. The claims are not method claims, however. The word “varying”
`
`9 Patent Owner cites Exhibit 2005, but that is merely the Markman order
`listing the claim constructions; no analysis is present. The Markman
`transcript provided (Ex. 2006) is only an excerpt of one page and, without
`appropriate context, is not useful to us. The memorandum opinion (Ex.
`2007) is a decision by the court to deny summary judgment of invalidity; the
`discussion of “varying colour” is limited to application of the stipulated
`construction.
`10 Petitioner was not a party to that suit. Prelim. Resp. 22.
`
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`IPR2014-00938
`Patent 7,429,827 B2
`modifies the term “colour,” and “varying colour” is claimed as the output of
`a circuit having lamps of different colors. There is nothing from the context
`of the claim or any rule of grammar that mandates that a present participle
`be an action. Indeed, as in the claim here, present participles often act as
`adjectives.11 For example, Petitioner, who argues the prior construction is
`correct, offers a thesaurus entry showing “varying” as a modifier word,
`having synonyms including “differing” and “changing.” Ex. 1058, 3; Pet.
`Reply 10. Our construction of “varying colour” as “a perceptible changing
`of color over time” is consistent with this use of the term.
`We have reviewed the remainder of Patent Owner’s argument and do
`not find it persuasive for Patent Owner’s offered construction. See PO Resp.
`17–19. Thus, for the reasons expressed herein and in our Decision on
`Institution, we interpret “varying colour” to mean a perceptible changing of
`color over time.
`We further note that Patent Owner states that he “will apply the
`Board’s construction,” and makes similar statements in another paper. Id. at
`18; PO Opp. Pet. Mot. Excl. 2 (“the Board in its Decision chose its own
`construction of varying color . . . which for purposes of the IPR proceeding
`neither party contested”). Although we take such stances by the parties into
`consideration,12 preliminary constructions in Decisions on Institution are not
`final and agreements by the parties as to claim construction are not binding
`on us.
`
`
`11 Exciting book, boring flight, differing opinions, interesting argument, etc.
`12 For example, as an indication that the prior construction was correct, was
`not meaningfully incorrect, or is no longer relevant to the outcome of the
`proceeding.
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`IPR2014-00938
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`2. “switch being accessible by a user”
`
`Independent claims 27 and 35 require a “switch being accessible by a
`user” to control power to the lamps. We did not construe this term in our
`Decision on Institution. Patent Owner proposes that the term should be
`construed as “the switch is accessible to the user without substantial effort,
`tools, or destruction.” PO Resp. 20–21. According to Patent Owner, a
`“switch being accessible by a user means that the switch is ‘obtainable’ and
`‘available’ to the user.” Id. Petitioner proposes “[a switch that is]
`obtainable or reachable by the user without substantial effort or destroying
`the device.” Pet. Reply 11–13. The main distinction between the parties’
`proposed interpretations is over the issue of whether tools can be used to
`access an accessible switch. We adopt the agreed-upon aspects of the
`parties’ constructions, as supported by the language of the claims and the
`specification. As to whether tools are permitted, we decline to include such
`a recitation in the interpretation, because the use of a tool may or may not be
`considered “substantial effort” or causing “destruction” of the device,
`depending on how the tool is used. Applying the broadest reasonable
`interpretation in light of the Specification, we interpret “switch being
`accessible by a user” to mean a switch that is obtainable or reachable by a
`user without substantial effort or destroying the lighting device.
`
`D. Overview of the Asserted Prior Art
`
`a. Chliwnyj (Ex. 1005)
`Chliwnyj discloses a microprocessor-based simulated electronic
`
`flame. Ex. 1005, 5:11–12. The light-emitting diodes (LEDs) are a plurality
`of colors to “enhance[] the effect of flame motion” “due to color changes.”
`Id. at 5:15–17, 5:21–25, 6:27–37. The LEDs produce a realistic flame effect
`
`16
`
`
`
`

`
`IPR2014-00938
`Patent 7,429,827 B2
`by continuously, rather than abruptly, changing the frequency of LED
`modulation. Id. at 7:55–56. The flame effect can mimic a stable flame
`using small frequency changes, and a flame in the wind using large, random
`frequency changes. Id. at 8:16–34. The individual LEDs are diffused to
`blend the different colors of light together to give the flame effect. Id. at
`8:66–9:10.
`
`b. Wu (Ex. 1006)
`Wu discloses a solar-powered illumination device. Ex. 1006 ¶ 2.
`
`Light-emitting elements provide different colors by mixing various light
`colors. Id. ¶ 22.
`
`c. Pu (Ex. 1008)
`Pu discloses a solar-powered illumination device. Ex. 1008, 4.13 The
`
`device cycles through various colors, and a user can lock the device to emit
`only one of those colors by activating a switch when that color is emitted.
`Id. at 5.
`
`d. Dowling (Ex. 1010)
`Dowling discloses a variety of applications for programmable LEDs.
`
`Ex. 1010, 4:6–8. A program stored in memory and executed by a processor
`controls the LEDs. Id. at 4:65–67. Dowling discloses how pulse-width
`modulation is known to vary the intensity of various LEDs to mix them
`together to form various colors. Id. at 6:11–26. In this manner colors can be
`faded (washed) from one to another. Id. at 6:32–35; see also id. at 14:12–15
`(allowing the colors to fade according to any desired color combination,
`such as blue and yellow for a “Michigan” color wash). The device acting in
`such a manner may be very small and powered on batteries. Id. at 8:31–42.
`
`13 Our citations to Pu are to the page numbers stamped on the exhibit.
`
`17
`
`
`
`

`
`IPR2014-00938
`Patent 7,429,827 B2
`
`e. Lau (Ex. 1011)
`Lau discloses a night light that “smoothly and continuously chang[es]
`color” using red, green, and blue LEDs. Ex. 1011, 3:13–44. In one mode of
`operation, a user can press a switch to “freeze” the light to the currently
`displayed color. Id. at 3:51–59.
`
`E. The Chliwnyj, Wu, Pu, and Dowling
`Ground: Claims 24–26
`
`Petitioner addresses claims 24–26 in a claim chart. Pet. 18–29. In
`
`general, Petitioner cites to Chliwnyj for the limitations directed to solar-
`powered lamps, desired colour, and varying colour (id.); Wu for the lamps
`being mounted to direct light into the chamber (id. at 21–22); Pu for the
`switch to select a desired light effect (id. at 24–25); and Dowling for a
`volatile memory to cause the circuit to operate to produce the lighting effects
`(id. at 25–28).14 Petitioner provides various reasons why it would have been
`obvious to include the identified features of Wu, Pu, and Dowling with the
`lamp of Chliwnyj. Id. at 29–31. For example, Petitioner asserts that it
`would have been obvious to a person of ordinary skill in the art at the time
`of the invention to “plug[] together the different known features of the
`available lighting products.” Id. at 31 (citing Ex. 1002 ¶ 131). Petitioner
`describes how Wu and Pu teach producing and selecting certain lighting
`effects, and explains how Dowling shows a feature likely present in
`Chliwnyj anyway (volatile memory). Id. at 29–30 (“It would have been
`obvious to one of ordinary skill in the art to look to the combination of
`
`
`14 Although not cited for this position in its Petition and not relied upon
`herein, we note that Dowling also teaches selecting a desired lighting effect.
`See, e.g., Ex. 1010, 7:8–62.
`
`
`18
`
`
`
`

`
`IPR2014-00938
`Patent 7,429,827 B2
`Chliwnyj and Wu in combination with Pu to provide the predictable results
`of having a solar lighting device with circuitry that varies color, circuitry
`that produces a desired lighting effect, and an operable switch to allow a
`user to select a desired lighting effect.”). Petitioner’s analysis is supported
`by the testimony of Dr. Shackle and is persuasive.
`
`Patent Owner sets forth a number of arguments addressing this ground
`at the same time as the next ground (pertaining to claims 27–29 and 35
`based on Chliwnyj and Wu). PO Resp. 21–31. Unlike claim 27, however,
`claims 24–26 challenged in this ground do not include a limitation directed
`to a “switch being accessible by a user.” Most of Patent Owner’s arguments
`are directed to that unclaimed limitation. See id. Patent Owner’s argument
`specifically directed to claim 24 is that Chliwnyj and Pu would not have
`been combined. Id. at 29–31. Some of this argument, however, is directed
`to an accessible switch, and is unpersuasive for being directed to a limitation
`not in the claims. Id. at 30 (“There would have been no reason . . . to allow
`users to use an ‘accessible’ switch”). Another aspect of Patent Owner’s
`argument is that Pu, directed to a solar garden light, is “fundamentally
`different” from the relaxation lighting device of Chliwnyj. Id. at 29. Patent
`Owner continues, “[i]t would be completely against the teachings of
`Chliwnyj to modify [it] to allow selection of a ‘desired lighting effect.’” Id.
`at 30 (citing Ex. 2021 ¶ 95).15 Dr. Ducharme’s testimony, in turn, is nearly
`verbatim Patent Owner’s argument, and is premised, in part, upon the
`
`
`15 Patent Owner cites to “Duchm. Dec.” but provides

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