Trials@uspto.gov
`Tel: 571–272–7822
`
`
`
`
`Paper 20
`Entered: December 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.,
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`IPR2014-00938
`Patent 7,429,827 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES and BARRY L.
`GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`IPR2014-00938
`Patent 7,429,827 B2
`
`I. INTRODUCTION
`
`Petitioner filed a revised petition to institute an inter partes review (Paper
`
`13, “Pet.”) of claims 24–35 of U.S. Patent No. 7,429,827 B2 (Ex. 1001, “the ’827
`
`patent”). Pet. 1. Petitioner included a declaration of Dr. Peter Shackle (Ex. 1002).
`
`Patent Owner filed a Preliminary Response. Paper 19 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`
`partes review may not be instituted “unless . . . there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” We have reviewed the Petition, Preliminary Response, and the
`
`evidence cited therein. For the reasons discussed below, we determine that
`
`Petitioner has demonstrated a reasonable likelihood of showing that claims 24–30
`
`and 35 of the ’827 patent are unpatentable. We further determine that Petitioner
`
`has not demonstrated a reasonable likelihood of showing that claims 31–34 are
`
`unpatentable.
`
`A. 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 also asserts it is challenging two other patents in the same
`
`family as the ’827 patent: U.S. Patent No. 7,196,477 (IPR2014-00936) and U.S.
`
`Patent No. 8,362,700 (IPR2014-00937). 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.
`
`B. The ’827 Patent (Ex. 1001)
`
`
`
`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
`
` 2
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`

`IPR2014-00938
`Patent 7,429,827 B2
`
`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 art, which includes “difficulty in
`
`adjusting the various lighting functions” and “not producing a uniform desired
`
`colour.” Id. at 1:26–35.
`
`C. Exemplary Claims
`
`
`
`Of the claims challenged, claims 24, 27, 32, and 35 are independent. Claims
`
`24 and 32 are 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.
`
`
`
`32. A lighting device to produce light of varying color,
`said device including:
`a lens;
`a circuit having
`
` 3
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`

`

`IPR2014-00938
`Patent 7,429,827 B2
`
`at least two lamps of different colors mounted to direct
`light through said lens,
`an activation sub-circuit to provide power to said lamps
`only at low light levels, and
`a light sub-circuit to independently control delivery of
`power to each of said lamps so as to vary intensity of
`light emitted over time to produce a continuous color
`changing cycle,
`connections for at least one rechargeable battery to power
`said circuit, and
`at least one solar cell mounted so as to be exposed to
`light and operatively associated with said connections
`to charge said battery; and a spike for positioning said
`connections above a ground surface.
`
`D. Prior Art and Asserted Grounds
`
`References
`
`Chliwnyj1, Wu2, Pu3, Dowling4
`Chliwnyj and Wu
`Chliwnyj, Wu, and Lau5
`Richmond6 and Shalvi7
`
`Basis under
`35 U.S.C.
`§ 102
`§ 103
`§ 103
`§ 102
`
`Claims Challenged
`
`24–26
`27–29 and 31–35
`30
`27 and 35
`
`
`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 U.S. Patent No. 6,431,719 B1, issued Aug. 13, 2002 (Ex. 1011).
`6 Australian Patent App. No. AU 2002100505 A4, published Nov. 21, 2002 (Ex.
`1012).
`7 U.S. Patent No. 6,120,165, issued Sept. 19, 2000 (Ex. 1013).
`
` 4
`
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`

`

`IPR2014-00938
`Patent 7,429,827 B2
`
`II. ANALYSIS
`
`A. Petitioner’s Prior Civil Action
`
`
`
`Under 35 U.S.C. § 315(a)(1), no inter partes review may be instituted if a
`
`petitioner filed a civil action challenging the validity of a claim of a patent before
`
`filing its petition. Patent Owner alleges that Petitioner filed a civil action
`
`challenging the validity of at least one claim of the ’827 patent before the Petition
`
`was filed. Prelim. Resp. 4. That action was voluntarily dismissed under Federal
`
`Rule of Civil Procedure 41(a)(1). Id. at 4–5. Patent Owner maintains, however,
`
`that this dismissal is not effective to remove the jurisdictional bar of § 315(a)(1).
`
`Id. at 5–15.
`
`
`
`In scenarios analogous to this one, panels of the Board have held that these
`
`earlier court filings, later dismissed without prejudice, are treated as if they had
`
`never existed, and do not bar petitions for inter partes review under § 315(a)(1).
`
`See, e.g., Cyanotech Corp. v. Bd. of Trs. of the Univ. of Ill., Case IPR2013-00401,
`
`slip op. at 9–12 (PTAB Dec. 19, 2013) (Paper 17); Clio USA, Inc. v. Procter &
`
`Gamble Co., Case IPR2013-00450, slip op. at 5–8 (PTAB Jan. 9, 2014) (Paper
`
`14); Butamax™ Adv. Biofuels LLC v. Gevo, Inc., Case IPR2013-00539, slip op. at
`
`6–8 (PTAB Mar. 4, 2014) (Paper 9). For the same reasons, we hold that the
`
`Petitioner is not barred under § 315(a)(1) because the earlier district court case was
`
`dismissed without prejudice under Federal Rule of Civil Procedure 41(a)(1).
`
`B. 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). 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
`
` 5
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`IPR2014-00938
`Patent 7,429,827 B2
`
`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Further, “the specification and
`
`prosecution history only compel departure from the plain meaning in two
`
`instances: lexicography and disavowal.” GE Lighting Solutions, LLC v. Agilight,
`
`Inc., slip op. 2013–1267 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Entm’t
`
`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). The standards for lexicography
`
`and disavowal are exacting, and require clear intent to define or narrow a term.
`
`Thorner, 669 F.3d at 1365–66.
`
`Petitioner and Patent Owner propose constructions for “lamp,” “desired
`
`colour,” “varying colour,” and “switch being accessible by a user”. Pet. 16–17;
`
`Prelim. Resp. 20–24. Of those, we do not construe “lamp” or “switch being
`
`accessible by a user” because those limitations are not at issue at this time.
`
`1. Desired Colour
`
`
`
`The phrase “at least two lamps of different colours to produce a desired
`
`colour” is found in independent claim 24. Neither party provides any explanation
`
`nor analysis as to what is a “desired colour,” but both parties propose a “desired
`
`colour” is a color “that is desired by the user or intended by the designer.” Pet. 17;
`
`Prelim. Resp. 22. We agree, and adopt this construction for purposes of this
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`Decision.
`
`2. Varying Colour
`
`
`
`Independent claims 27 and 35 require “at least two lamps of different
`
`colours to produce a varying colour.” Dependent claim 26 recites that the “desired
`
`colour” includes a “varying colour.” Independent claims 24 and 32 only mention
`
`the term in the preamble: “[a] lighting device to produce light of varying colour.”
`
`Petitioner proposes that “varying colour” means that “colors produced
`
`change over time by varying the intensity of one or more of the lamps with time,”
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` 6
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`IPR2014-00938
`Patent 7,429,827 B2
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`but provides no explanation for why we should adopt this construction. Pet. 17.
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`Patent Owner proposes a similar construction but argues that the color must also
`
`“continuously” change over time. Prelim. Resp. 22–24. We decline to adopt either
`
`construction. We explain our construction first and then turn to why we do not
`
`adopt the parties’ constructions.
`
`The claims do not shed light on the meaning of “varying colour,” other than
`
`to say that it is something that the lighting device produces. The term “varying
`
`colour” is not defined in the ’827 patent, and only appears in the detailed
`
`description once: “the battery powers the light circuit during the night to produce
`
`light of varying colours and the user can optionally select a desired colour by
`
`pushing the push button.” Ex. 1001, 7:33–36 (item numbers omitted). Based on
`
`the context of this passage, the lighting device must produce light that can be
`
`perceived as more than one color, to give effect to the latter portion of the passage
`
`(i.e., to allow the user to choose one of the colors).
`
`Another portion of the ’827 patent sheds light on the meaning of “varying
`
`colour.” In the background section, the ’827 patent refers to other patents that are
`
`known to produce a “variable colour.” Id. 1:17–20. We have reviewed these
`
`patents and do not find sufficient evidence to conclude that “varying colour” has a
`
`particular meaning in the art; instead these patents simply describe devices that use
`
`LEDs to effect different colors. See generally Ex. 3001–3004.8
`
`Lastly, we note that the ’827 patent describes an exemplary way to effect
`
`“varying colour.” Specifically, the ’827 patent describes how an integrated circuit
`
`controls the intensity of light emitted by three LEDs to “produce a constantly
`
`changing kaleidoscopic effect” and “cycle[] through the light spectrum” “by
`
`
`8 The citation to U.S. Patent No. 6,608,458 appears to be in error, as that patent is
`directed to an electric motor, and we did not see any discussion of LEDs.
`
` 7
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`IPR2014-00938
`Patent 7,429,827 B2
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`ramping up and ramping down the intensity of light displayed by the LEDs.” Ex.
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`1001, 7:10–18. Notably, the ’827 patent does not discuss the “kaleidoscopic
`
`effect” or “cycle[]” as being “varying colour.” In addition, one may achieve
`
`“varying colour” without the particular ramping up and down of intensity example
`
`discussed in the specification (e.g., coarse, step-wise intensity changes). We
`
`decline to incorporate this exemplary embodiment into the claims to interpret the
`
`term “varying colour” to mean a particular way of varying color. See In re Bigio,
`
`381 F.3d 1320, 1325 (Fed. Cir. 2004) (in declining to limit “hair brush” to scalp
`
`hair, the court held that “[a]bsent claim language carrying a narrow meaning, the
`
`PTO should only limit the claim based on the specification or prosecution history
`
`when those sources expressly disclaim the broader definition.”).
`
`Accordingly, on this record, we determine that the broadest reasonable
`
`interpretation of “varying colour” in view of the specification is “a perceptible
`
`changing of color over time.”
`
`We decline to adopt Petitioner’s construction because it focuses on how to
`
`vary a color rather than what “varying colour” is; the claims are not method claims.
`
`We also note that Petitioner’s declarant, Dr. Shackle, provides no explanation as to
`
`how he arrived at the same construction as Petitioner, and his statement is likewise
`
`unpersuasive. See Ex. 1002 ¶ 75.
`
`We decline to adopt Patent Owner’s construction because we are not
`
`persuaded that the color must vary “continuously.” The claims do not recite the
`
`term “continuously” or include other language that might indicate a need for the
`
`color to change “continuously” over time. Further, although not clear from Patent
`
`Owner’s arguments, or the word “continuously” itself, it appears that by adding the
`
`word “continuously,” Patent Owner is attempting to limit the claims to a certain
`
`manner in which a user perceives the transitions between colors. See, e.g., Prelim.
`
` 8
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`

`IPR2014-00938
`Patent 7,429,827 B2
`
`Resp. 59–60 (disparaging a product that has “‘instantaneous’ color changing” as
`
`opposed to a “varying color”). As we discussed above, however, the specification
`
`of the ’827 patent does not use the term “varying colour” to describe color
`
`transitions but rather the resulting color (Ex. 1001, 7:33–36, “to produce light of
`
`varying color”). Further, the specification of the ’827 patent does not contrast
`
`lighting devices having different color transition schemes, such as to clue in a
`
`person of ordinary skill in the art that particular ways of “varying colours” are or
`
`are not countenanced. Accordingly, on this record, we decline to adopt either
`
`party’s proposed construction of “varying colour.”
`
`C. Petitioner’s Declarant and the Level of
`Ordinary Skill in the Art
`
`Patent Owner takes issue with Petitioner’s declarant and Petitioner’s
`
`statement of the level of ordinary skill in the art. Regarding Petitioner’s declarant,
`
`Patent Owner argues that Dr. Shackle “lacks essential qualifications regarding
`
`photovoltaic . . . cells, solar powered lights, or consumer products.” Prelim. Resp.
`
`17. Patent Owner argues that his declaration “should be stricken from the record . .
`
`. or otherwise not relied upon as competent evidence.” Id. at 17. Patent Owner’s
`
`concern is unfounded, as we will assign appropriate weight to testimony based on
`
`the specific topic discussed and the qualifications of the declarant regarding that
`
`topic.9 The Board, sitting as a non-jury tribunal with administrative and technical
`
`expertise, is well-positioned to determine and assign appropriate weight to
`
`evidence presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation,
`
`
`9 Dr. Shackle holds degrees in physics and has “over twenty years’ experience in
`the field of lighting electronics, with particular emphasis on [LED] drivers and
`electronic ballasts,” including experience in the electronics industry. Ex. 1002 ¶¶
`2–3. He is also a member of the Institute of Electrical and Electronics Engineers
`and the Illuminating Engineering Society. Id. ¶ 4.
`
` 9
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`IPR2014-00938
`Patent 7,429,827 B2
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`IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also
`
`Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is
`
`capable of ruling accurately upon the admissibility of evidence is equally capable
`
`of sifting it accurately after it has been received.”). At this stage of the proceeding,
`
`we evaluate the testimony of Petitioner’s declarant solely to determine whether
`
`Petitioner has established a reasonable likelihood of prevailing on its asserted
`
`grounds of unpatentability.
`
`
`
`As to the level of ordinary skill in the art, Petitioner sets forth what it
`
`believes to be the level of ordinary skill in the art in terms of academic
`
`qualifications. Pet. 7. Patent Owner disagrees with Petitioner, and instead
`
`proposes that the level of ordinary skill requires some amount of experience with
`
`“industrial design of solar garden lights and physical manufacture of the lights.”
`
`Prelim. Resp. 19–20 (emphasis omitted). In determining the level of ordinary skill
`
`in the art, a court may consider various factors, including “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)). In view of this encompassing approach, we decline to
`
`adopt either proposal over the other at this time, and instead consider both as well
`
`as the prior art references before us to provide guidance as to the level of ordinary
`
`skill in the art, unless otherwise indicated in our analysis. See id.; see also
`
`Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art itself
`
`can reflect the appropriate level of skill in the art.).
`
`
`
`10
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`IPR2014-00938
`Patent 7,429,827 B2
`
`D. Obviousness of Claims 24–26 in View of
`Chliwnyj, Wu, Pu, and Dowling
`
`1. Overview of References
`
`a. Chliwnyj (Ex. 1005)
`
`
`
`Chliwnyj discloses a microprocessor-based simulated electronic flame. Ex.
`
`1005, 5:11–12. The 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 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, 4.10 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.
`
`
`10 Our citations to Pu are to the page numbers stamped on the exhibit.
`
`
`
`11
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`IPR2014-00938
`Patent 7,429,827 B2
`
`2. Analysis
`
`
`
`Petitioner addresses claims 24–26 in a claim chart. Pet. 18–29. In general,
`
`Petitioner cites to Chliwnyj for the limitations directed to the 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). 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 invention to “plug[] together the different known features of the available
`
`lighting products.” Id. at 31 (citing Ex. 1002 ¶ 131). Petitioner identifies that Wu
`
`and Pu teach how to produce and select certain lighting effects, while Petitioner
`
`identifies that Dowling shows a feature likely present in Chliwnyj anyway. Id. at
`
`29–30. On the present record, we agree with Petitioner and conclude it has shown
`
`a reasonable likelihood of prevailing in establishing the unpatentability of claims
`
`24–26.
`
`
`
`Patent Owner raises two main arguments with respect to this ground. The
`
`first is that Chliwnyj does not describe “varying colour” (Prelim. Resp. 28–33),
`
`and the second is that Chliwnyj and Pu are not combinable (id. at 33–35). We
`
`address each argument in turn.
`
`a. “varying colour”
`
`Patent Owner argues that, although the term “varying colour” is found only
`
`in the preamble of claim 24, the preamble of claim 24 is limiting. Patent Owner
`
`argues that claim 26, which depends from claim 24, specifically includes the term
`
`“varying colour,” such that “the claimed circuit [of claim 24] must be programmed
`
`
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`12
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`IPR2014-00938
`Patent 7,429,827 B2
`
`to produce a varying color.” Prelim. Resp. 28–29 (emphasis removed). Patent
`
`Owner’s argument is unpersuasive. We agree with Patent Owner that the scope of
`
`the device in claim 24 must be broad enough to encompass a circuit that produces
`
`“varying colour” because claim 26 subsequently requires “varying colour.” That
`
`does not mean, however, that the device in claim 24 is restricted to a circuit that
`
`produces “varying colour,” as Patent Owner argues, because independent claims
`
`are broader than their respective dependent claims. See 35 U.S.C. § 112. The
`
`body of claim 24 fully sets forth a lighting device, and the preamble merely sets
`
`forth the purpose of that device: to produce light of varying colour. Specifically,
`
`the two lamps of different colors are what allows the device to produce light of
`
`varying color. Accordingly, claim 24 “defines a structurally complete invention in
`
`the claim body and uses the preamble only to state a purpose or intended use for
`
`the invention, [thus,] the preamble is not a claim limitation.” Rowe v. Dror, 112
`
`F.3d 473, 478 (Fed. Cir. 1997). Further, we are not apprised of any disclosure in
`
`the specification of the ’827 patent that would constrain us to read the circuit of
`
`claim 24 in the manner proposed by Patent Owner.
`
`Even if the preamble were to be given the weight Patent Owner argues,
`
`Petitioner’s assertion that Chliwnyj discloses a lamp providing varying colours is
`
`persuasive, on this record. See Pet. 18–19. Petitioner asserts that the LEDs
`
`“enhance the flame motion due to color changes.” Pet. 18 (quoting Ex. 1005,
`
`5:18–25). We understand these color changes to be a perceptible changing of color
`
`over time of the flame, caused by the summation of the individual LED colors by
`
`the diffuser. Ex. 1005, 8:66–9:17 (“The inner diffuser could be flame shaped to
`
`combine the light from the individual LEDs into more of a point source.”). Thus,
`
`on this record, we are persuaded that the changing color of the flame in Chliwnyj is
`
`a “varying colour.”
`
`
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`IPR2014-00938
`Patent 7,429,827 B2
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`b. Combination of Chliwnyj and Pu
`
`Patent Owner’s second main argument is that Chliwnyj and Pu are not
`
`combinable because, according to Patent Owner, neither reference teaches or
`
`suggests to put an accessible switch in a solar-powered eternal-flame memorial
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`(Prelim. Resp. 33) and because Chliwnyj allegedly teaches against such a switch
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`(id. at 34–35). We first note that our reviewing courts have held that the
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`obviousness inquiry is not predicated on an explicit teaching, suggestion, or
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`motivation found within the references themselves. See, e.g., KSR Int'l Co. v.
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`Teleflex, Inc., 550 U.S. 398, 419 (2007) (holding a rigid insistence on teaching,
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`suggestion, or motivation is incompatible with its precedent concerning
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`obviousness). In addition, our reviewing court has held that discussions of some
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`ways to solve a problem necessarily do not teach away from other ways to solve
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`that problem, and that a teaching away requires an actual discrediting of the
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`solution claimed. See, e.g., DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
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`567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away […] if it
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`merely expresses a general preference for an alternative invention but does not
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`‘criticize, discredit, or otherwise discourage’ investigation into the invention
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`claimed.”) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
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`Accordingly, Patent Owner’s arguments are not persuasive.
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`Further, claim 24 merely requires a selection switch, and Petitioner has
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`asserted that Pu teaches a particular switch useful in lighting devices that vary
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`colors to allow a user to select a particular lighting effect. Pet. 24–25, 29–30.
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`Petitioner also asserts that Chliwnyj discloses a user interface for selecting
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`parameters of the flame simulation (i.e., a particular lighting effect). Pet. 25 (citing
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`Ex. 1005, 4:3–5, 14:12–14, 58:56–60). On the record before us, Petitioner has
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`made a sufficient threshold showing that including a switch to select a lighting
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`effect would have been obvious to a person of ordinary skill in the art.
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`c. Conclusion for Claims 24–26
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`
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`Having considered the Petition, Preliminary Response, and the evidence
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`cited therein, we determine that Petitioner has demonstrated a reasonable
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`likelihood of showing that the subject matter of claims 24–26 would have been
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`obvious in view of Chliwnyj, Wu, Pu, and Dowling.
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`E. Obviousness of Claims 27–29 and 31–35 in
`View of Chliwnyj and Wu
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`Independent claims 27 and 35 are directed to a lighting device to produce
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`light of varying color, whereas independent claim 32 is directed to the same, but by
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`producing a “color changing cycle.” Given the differences in scope, we address
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`these claims separately.
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`1. Claims 27–29 and 35
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`Petitioner asserts that the subject matter of claims 27–29 and 35 would have
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`been obvious in view of Chliwnyj and Wu. Pet. 31–43. Specifically, Petitioner
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`asserts that Chliwnyj describes each feature of the claims except for a lens (id. at
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`31–32, 40), spike/post (id. at 32–33, 39–40), and circuit to turn on the light at low
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`light levels (id. at 36–37), which Petitioner asserts are described by Wu. See id. at
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`41–43. Petitioner reasons that it would have been obvious to include a lens and
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`spike/post in the lighting device of Chliwnyj because it was well known to mount
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`lighting devices in that manner to illuminate an area. Id. at 41–42. Petitioner
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`reasons that it would have been obvious to include a switch to turn on the light
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`only at night because it was well known to provide illumination in low light levels.
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`Id. at 42–43.
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`Having considered the Petition, Preliminary Response, and the evidence
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`cited therein, we determine that Petitioner has demonstrated a reasonable
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`likelihood of showing the subject matter of claims 27–29 and 35 would have been
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`obvious in view of Chliwnyj and Wu.
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`2. Claims 31–34
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`Claims 31 and 32 recite that the intensity of the lamps is varied “to produce
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`a continuous color changing cycle.” Claims 33 and 34 depend from claim 32. In
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`its claim chart, Petitioner provides citations to various portions of Chliwnyj that
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`allegedly disclose this limitation. Pet. 35–36 (claim 31), 38–39 (claim 32).
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`Petitioner does not provide a claim construction of “color changing cycle,”
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`however, nor does Petitioner explain how it believes that term reads on what
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`Chliwnyj discloses. Regarding changing colors, those portions of Chliwnyj cited
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`by Petitioner simply describe that there are color changes. Pet. 38 (citing Ex.
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`1005, 5:11–17). A “cycle” implies some pattern or scheme; some phenomenon
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`that happens and can happen again.11 Thus, even if Chliwnyj produces a plurality
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`of colors and we were to consider that to be “changing colors,” that does not mean
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`that Chliwnyj produces a color changing cycle. The scheme that Chliwnyj uses,
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`cited by Petitioner, is with respect to the individual LEDs, such that the intensity of
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`the individual LEDs varies according to their own schemes. Pet. 36, 38 (citing Ex.
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`1005, 3:13–21, 5:34–41, 7:55–66). These passages do not speak to their combined
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`effect with respect to their resulting color, and, in fact, Chliwnyj admonishes prior
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`art lights that have a perceptible “pattern” in the overall flame effect, instead
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`11 A dictionary definition of “cycle” is: “[a] single complete execution of a
`periodically repeated phenomenon.” The American Heritage Dictionary of the
`English Language (2011) (Ex. 3005).
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`seeking to simulate a “natural random process.” Ex. 1005, 2:1–19, 41–51; see also
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`Prelim. Resp. 29–33 (arguing that Chliwnyj produces random color variations).
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`It is Petitioner’s burden to explain how the challenged claims are to be
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`construed and how they read on the prior art. 37 C.F.R. § 42.104(b)(3)–(5).
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`Petitioner has not done so sufficiently on this record with respect to the limitation
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`of claims 31 and 32 requiring a “color changing cycle.” Accordingly, Petitioner
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`has not demonstrated a reasonable likelihood of success in showing the subject
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`matter of claims 31–34 would have been obvious in view of Chliwnyj and Wu.
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`F. Obviousness of Claim 30 in View of Chliwnyj,
`Wu, and Lau
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`
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`Claim 30 depends from independent claim 27 and specifies that there are
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`red, blue, and green LEDs. Petitioner asserts that Lau describes independently
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`driven red, blue, and green LEDs. Pet. 43–44. Petitioner asserts that substituting
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`these colors is an equivalent to the colors of Chliwnyj because red, blue, and green
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`can be combined to create any color. Id.; see also Ex. 1002 ¶¶ 42–44 (explaining
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`how these primary colors can be mixed to create any color). According to
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`Petitioner, “one of ordinary skill in the art would know that using the combination
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`of red, blue, and green light mixed in different amounts can provide essentially the
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`color spectrum of perceivable colors to the human eye.” Pet. 44–45 (citing Ex.
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`1002 ¶¶ 194–97).
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`
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`Patent Owner argues that Chliwnyj does not consider blue and green LEDs
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`and that their use would have unpredictable results. Prelim. Resp. 48–50. Patent
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`Owner fails to address Petitioner’s assertion, however, that red, blue, and green can
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`be used to create any color. Based on the arguments presented in the Petition, we
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`do not understand Petitioner to be proposing, for example, a blue flame. Further,
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`even if Petitioner had so argued, Patent Owner assumes that blue and green flames
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`“do not simulate or resemble a flame,” but flames are well known to be various
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`colors, including blue and green. Lastly, Patent Owner’s arguments that neither
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`Chliwnyj nor the cited prior art explicitly suggest or teach modifying Chliwnyj to
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`include different flame colors is contrary to relevant obviousness case law. See,
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`e.g., KSR, 550 U.S. at 419 (holding a rigid insistence on teaching, suggestion, or
`
`motivation is incompatible with its precedent concerning obviousness); id. at 418
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`(“the [obviousness] analysis need not seek out precise teachings directed to the
`
`specific subject matter of the challenged claim, for a court can take account of the
`
`inferences and creative steps that a person of ordinary skill in the art would
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`employ”); Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
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`2009) (“while an analysis of obviousness always depends on evidence . . . it also
`
`may include recourse to logic, judgment, and common sense available to the
`
`person of ordinary skill that do not necessarily require expli