`571.272.7822
`
`Paper No. 56
`Filed: February 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SURE-FIRE ELECTRICAL CORPORATION,
`Petitioner,
`
`v.
`
`YONGJIANG YIN and SHENZHEN EL LIGHTING CO. LTD.,
`Patent Owner.
`
`Case IPR2014-01448
`Patent 7,671,279 B2
`
`Before DEBRA K. STEPHENS, JENNIFER S. BISK, and PETER P.
`CHEN, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I.
`
`INTRODUCTION
`A. Background
`Sure-Fire Electrical Corp. (“Petitioner”)1, filed an Inter Partes Review
`Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1 and 7
`
`
`1 Along with Petitioner, Best Buy Stores, L.P. and BestBuy.com
`(collectively “Best Buy”), filed the Petition for Inter Partes Review (Paper
`1). On May 1, 2015, Patent Owner and Best Buy jointly filed a motion to
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`Patent 7,671,279 B2
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`(the “challenged claims”) of U.S. Patent 7,671,279 B2 (Exhibit 1001, “the
`’279 Patent”). Petitioner relied on the following references: US 6,957,001
`B2 (iss. Oct. 18, 2005) (“He”) (Ex. 1004); US 3,942,859 (iss. Mar. 9, 1976)
`(“Korodi”) (Ex. 1005); and Anton Gustafsson and Magnus Gyllenswärd, The
`Power-Aware Cord: Energy Awareness through Ambient Information
`Display, CHI 2005, 1423–26 (Apr. 2–7, 2005) (“Gustafsson”) (Ex. 1003).
`Yongjiang Yin and Shenzhen El Lighting Co. Ltd. (collectively “Patent
`Owner”), filed a Patent Owner’s preliminary response thereto (Paper 10,
`“Prelim. Resp.”).
`On March 4, 2015, we instituted an Inter Partes review of claims 1
`and 7 based upon Petitioner’s assertion that claims 1 and 7 are unpatentable
`under 35 U.S.C. § 103(a), for obviousness over Gustafsson and He (Paper 13
`(“Inst. Dec.”)).
`In response to Petitioner’s Request for Rehearing under 37 C.F.R.
`§ 42.71(d) filed March 18, 2015 (Paper 15) (“Req. for Reh’g”), we modified
`our inter partes review based on Petitioner’s assertion that claims 1 and 7
`are unpatentable under 35 U.S.C. § 103(a), for obviousness over He and
`Korodi (Paper 25 (“Dec. on Req. for Reh’g”)).
`Accordingly, we instituted trial for both challenged claims, claims 1
`and 7, on the grounds of unpatentability below.
`
`
`Claims
`
`Basis
`
`References
`
`§ 103(a)
`
`Gustafsson and He
`
`Claims 1 and 7
`
`terminate proceedings between them (Paper 21). We granted that
`termination (Paper 24); thus, Best Buy is no longer a party to this review.
`
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`Claims
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`Basis
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`References
`
`§ 103(a)
`
`He and Korodi
`
`Claims 1 and 7
`
`After institution of trial, Patent Owner filed a Patent Owner’s
`Response (Paper 27 (“PO Resp.”)) and Petitioner filed a Reply to the Patent
`Owner’s Response (Paper 38 (“Pet. Reply”)).
`An oral hearing was held on January 11, 2016, a transcript of which
`has been entered into the record (Paper 54 (“Tr.”)).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons given herein, Petitioner has shown by a preponderance of the
`evidence that the challenged claims are unpatentable.
`
`B. Related Matters
`Patent Owner and Petitioner both identify, as a related matter, the co-
`pending district court case asserting the ’279 Patent, in Shenzhen EL
`Lighting Technology Co., LTD et al. v. Sure-Fire Electrical Corp. et al., No.
`1:14-cv-00727-PAB (D. Colo.) (Pet. 7; Paper 8, 1, § II).
`
`C. ’279 Patent (Ex. 1001)
`The ’279 Patent, titled “CURRENT-SEEN CABLE,” issued on March
`2, 2010 (Ex. 1001). The ’279 Patent describes an electroluminescence
`power or signal cable (id. at Abstract, 1:15–29). According to the ’279
`Patent, a purpose of the invention is to provide a current-seen cable which
`combines an electroluminescence cable and various power or signal cords,
`having a simple structure and a visual indicator of its live state (id. at 1:33–
`37).
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`Specifically, the ’279 Patent describes a cable which includes a main
`power or signal cord and a plurality of electroluminescence cords (id. at
`Abstract, 1:41–43).
`Figure 1 is reproduced below:
`
`
`Figure 1, reproduced above, is a schematic diagram of an example
`configuration (id. at 2:15–16). In Figure 1, electroluminescence cored bars
`(or electroluminescence cored cords) 1, 2, 3 are made of metal foil strip 8
`(see Fig. 2) or metal foil wire 9 (see Fig. 3) coated with insulating medium
`layer 10, layer 11 (which is a mixture of fluorescent powder and binder), and
`transparent conductive layer 12 (Ex. 1001, 4:9–16, Fig. 1). An insulated
`power cord forms a central axis, and includes live wire 4, zero phase wire 6,
`and insulation layer 13 (id. at 4:18–20). Bare metal wire 5 intertwists
`helically the insulated power cord (id. at 4:20–21). Electroluminescence
`cored bars 1, 2, 3 intertwist helically on the central axis so that transparent
`conductive layer 12 is in contact with bare metal wire 5 (id. at 4:21–25).
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`The whole cable is encapsulated by transparent plastics layer 7 to form a
`current-seen cable (id. at 4:25–27).
`Metal base strips for each of electroluminescence cored bars 1, 2, 3
`are connected to AC output line of outputs 32, 31, 30 of AC drivers 28 via a
`wire (id. at 4:38–48). Bare metal wire 5, as a central axis, is connected to
`another AC (alternating current) output line of outputs 32, 31, and 30
`connected to AC drivers 28 (id. at 48–50). Input power ends of driver 28 are
`connected to live wire 4 and zero phase line 6 of the power (id. at 4:50–53).
`In another embodiment, three electroluminescence cords 40, 41, and
`42 are intertwisted helically, forming an electroluminescence cable (id. at
`6:10–12). A main cord is arranged in the central axis of the formed
`electroluminescence cable or lateral to the electroluminescence cable (id. at
`6:18–20).
`
`
`D. Claims
`Both of the challenged claims, claims 1 and 7, are independent claims.
`Claims 1 and 7 are reproduced below:
`1.
`A current-seen cable, includes a driver, a main cord, a
`bare metal wire, a plurality of electroluminescence cored bars
`or electroluminescence cored cords and an outer transparent
`plastic layer, wherein said a plurality of electroluminescence
`cored bars or electroluminescence cored cords are arrayed
`abreast and are intertwisted helically in sequence to form an
`electroluminescence cable, the bare metal wire is arranged in
`the center of the current-seen cable or lateral to the current seen
`cable and is in contact with a conductive layer of each
`electroluminescence cored bar or electroluminescence cored
`cord; a metal base strip of each electroluminescence cored bar
`or a conductive wire of each electroluminescence cored cord
`and the bare metal wire are connected to each corresponding
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`end of a multi-group AC output of the driver respectively; the
`main cord is arranged in the centre axis of the current-seen
`cable or lateral to the current-seen cable; said current-seen
`cable, said bare metal wire and said main cord are encapsulated
`in the outer transparent plastics layer; every
`electroluminescence cored bar or electroluminescence cored
`cord is driven by the driver and emits light in sequence when
`the main cord and the driver are live.
`
`7. A current-seen cable, includes a driver, a main cord
`surrounded by an insulation layer, a plurality of
`electroluminescence cored cords which comprise a conductive
`wire surrounded by an insulating coat, an electroluminescence
`powder coat coated on said insulating coat and a transparent
`conductive layer coated on said electroluminescence powder
`coat, and an outer transparent plastic layer, wherein said
`plurality of electroluminescence cored cords are arrayed abreast
`and are intertwisted helically in sequence to form an
`electroluminescence cable; the main cord is arranged in the
`center of the electroluminescence cable or lateral to the
`electroluminescence cable; said electroluminescence cable and
`said main cord are encapsulated in the outer transparent plastic
`layer; every electroluminescence cored cord is driven by the
`driver and emits in sequence when the main cord and the driver
`are live.
`
`(Ex. 1001, 7:20–40, 8:8–23).
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1277–1279 (Fed. Cir. 2015), cert.
`granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S.
`Jan. 15, 2016) (No. 15-446) (“Congress implicitly approved the broadest
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`reasonable interpretation standard in enacting the AIA,”2 and “the standard
`was properly adopted by PTO regulation”).
`
`1. “said plurality of electroluminescence cored cords are
`arrayed abreast and are intertwisted helically in sequence”
`In our analysis in the Decision to Institute, we interpreted the
`limitations “intertwisted” and “abreast” (Inst. Dec. 7–8). We agreed with
`Patent Owner that intertwisted should be interpreted as “twisted together”
`and “abreast” as “beside one another with bodies in line” (id.; Prelim. Resp.
`25). Therefore, we interpreted “said plurality of electroluminescence cored
`cords are arrayed abreast and are intertwisted helically in sequence” as the
`electroluminescence cored cords are set beside one another in line and
`twisted together (Dec. 7–8). Neither party contests this construction (see
`e.g., PO Resp. 4) and we discern no reason to deviate from this construction.
`
`2. “emits light in sequence” and “emits in sequence”
`Claim 1 recites “every electroluminescence cored bar or . . . cord is
`driven by the driver and emits light in sequence when the main cord and the
`driver are live,” and claim 7 recites “every electroluminescence cored cord is
`driven by the driver and emits in sequence when the main cord and the
`driver are live” (Ex. 1001, 7:37–40, 8:21–23 (emphasis added)).
`In the Patent Owner’s Response, Patent Owner contends “emits light
`in sequence” should be interpreted as “emits and dies light of each
`electroluminescent cored bar or cord in succession, one after the other” (PO
`Resp. 43) (emphasis added). Patent Owner points to various portions of the
`’279 Specification as supporting this interpretation (id. at 44–47; Ex. 1001,
`
`
`2 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
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`1:10–12, 1:40–2:8, 4:38–5:17) as well as discussion in the prosecution
`history (PO Resp. 48–49; Response to Office Action dated June 22, 2009
`(Ex. 1002)).
`Petitioner counters the ’279 Patent does not support Patent Owner’s
`interpretation and Patent Owner’s interpretation is not the broadest
`reasonable construction (Pet. Reply 17–20). Specifically, Petitioner asserts
`Patent Owner relies almost exclusively on a description of one embodiment,
`although not every embodiment describes the process of “emits and dies
`light in sequence” (id. at 17–18). Instead, Petitioner contends, several other
`embodiments are not limited to “emits and dies” light in sequence (id. at 18
`(emphasis added)). Additionally, Petitioner argues the prosecution history
`does not support the interpretation of “emits light in sequence” as “emits and
`dies light in sequence” because the portions relied upon by Patent Owner are
`directed to distinguishing claim 7 over the cited prior art and do not provide
`an interpretation or even discuss the limitation “emits light in sequence” (id.
`at 18–19). Petitioner further argues no reason exists to introduce extrinsic
`evidence, such as expert testimony, to interpret this limitation (id. at 20).
`We decline to adopt Patent Owner’s proposed claim construction.
`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). An inventor may rebut the presumption by providing a definition of
`the term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
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`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993).
`Initially, we note Patent Owner chose not to recite “emits and dies” in
`its claims, but instead, recited only “emits.” Patent Owner has not proffered
`any evidence or argument as to why “emits and dies” used in the ’279 Patent
`Specification, would have been abbreviated to “emits” in recitation of the
`claims. Nor is the term “emits” defined explicitly in the ’279 Patent
`Specification. Thus, we begin with the assumption that the term “emits”
`does not include “and dies,” as that comports with the plain and ordinary
`meaning of the word “emits”
`Thus, taking the plain and ordinary meaning at the time of the
`invention, we interpret “emits light in sequence” as “throws off or gives off
`or out light in a continuous or connected series” and interpret “emits in
`sequence” as “throws off or gives off or out, in a continuous or connected
`series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th
`ed. 2000)). Patent Owner has not proffered sufficient evidence or argument
`that “emits light in sequence” and “emits in sequence” should be read more
`narrowly than the plain and ordinary meaning as suggested by Patent Owner.
`Specifically, Patent Owner’s assertion that the Specification supports the
`proposed interpretation of “emits light in sequence” as “emits and dies light
`in sequence” is misplaced. The Specification of the ’279 Patent does not
`explicitly define “emits light in sequence” as “emits and dies light in
`sequence.” Nor is any explicit definition provided for “emits light in
`sequence” or “emits in sequence.” Patent Owner would have us import
`limitations disclosed in several of the embodiments, including Embodiment
`1, to interpret “emits” as “emits and dies light in sequence” or “emits and
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`dies in sequence” (PO Resp. 44–47). However, as noted by Petitioner (Pet.
`Reply 17–20), the Specification of the ’279 Patent describes several other
`embodiments which do not limit the term “emits light in sequence” or “emits
`in sequence” to “emits and dies light in sequence” or “emits and dies in
`sequence.” For example, the Specification of the ’279 Patent describes, in
`the Description of the Invention and in Embodiments 3 and 6–8, emitting
`light “section by section” (id. at Abstract, 5:37–41, 6:39–42, 57–61).
`Indeed, these embodiments along with Embodiment 4 do not describe that
`the cable emits and dies light (id. at 5:19–7:18). Moreover, the Specification
`describes emitting light may be in a variety of forms (id. at 1:63–67).
`Patent Owner additionally asserts “Patent Owner specifically
`disclaimed emission of light over the full length of the cable, but rather
`limited the patent to segment by segment illumination along the length of the
`cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43).
`Patent Owner identified pages 9–10 of the Response to Office Action filed
`September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO
`Resp. 48–49). However, we agree with Petitioner that the statements in the
`Response to Office Action do not disclaim subject matter, nor do these
`statements provide an explicit definition of “emits,” “emits light in
`sequence, and “emits in sequence.” Indeed, the discussion, limited to claim
`7, discusses the object of the invention and distinguishes the invention as
`recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930)
`(Resp. to OA 9–10). This discussion does not qualify as “clear and
`unmistakable” disavowing statements as required to meet the “demanding
`standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No.
`2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016).
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`We, therefore, determine the term “emits light in sequence” and
`“emits in sequence” used in the claims, should not be interpreted as “emits
`and dies light of each electroluminescent cored bar or cord in succession,
`one after the other,” but instead, should be interpreted giving the terms their
`ordinary and customary meaning as understood by an ordinarily skilled
`artisan at the time of the invention, in light of the Specification.
`It follows, we determine the construction of “emits light in sequence”
`is “to throw off or give off or out light in a continuous or connected series”
`and “emits in sequence” is “to throw off or give off or out, in a continuous or
`connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377,
`1065 (10th ed. 2000)).
`
`B. Obviousness over He and Korodi
`Petitioner argues claims 1 and 7 of the ’279 Patent are obvious over
`He and Korodi (Pet. 34–49).
`
`1. Overview of He (Exhibit 1003)
`He describes a color-changing and multi-colored electroluminescence
`cable (Ex. 1004, Abstract). A plurality of electroluminescent filaments are
`insulated from each other and helically wound on the outer side of the axis
`(id.).
`
`Figure 1 is reproduced below:
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`Figure 1, reproduced above, is a schematic diagram illustrating the
`structure of an individual electroluminescent filament of He (id. at 3:25–27).
`As illustrated, the electroluminescent filament comprises color polymer
`casing tube disposed on transmission wires 5 and 5’, and the outer surface of
`conductive layer 4 (id. at 3:54–56). Transmission wires 5 and 5’ are wound
`at intervals on conductive layer 4 (id. at 3:52–53). Conductive layer 4 is
`coated on light emitting layer 3, which is coated on medium insulating layer
`2 (id. at 3:50–51). Medium insulating layer 2 is coated on core wire 1 which
`is led out as an electrode (id. at 3:46–47).
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`Figure 2 is reproduced below:
`
`
`Figure 2, reproduced above, is a schematic diagram of an embodiment
`of the electroluminescent cable (id. at 3:28–30). Electroluminescence cable
`12 comprises a transparent polymer casing tube 11 disposed on the outer
`side of a group of electroluminescent filaments 10 (id. at 4:21–23). The
`group of electroluminescent filaments includes individual
`electroluminescent filaments 8 insulated from each other and helically
`wound on the outer side of core wire 9 which acts as a central axis (id. at
`4:16–19). Each of the electroluminescent filaments 8 connects with
`programmable electronic elements that control each electroluminescent
`filament 8, respectively, to emit light according to a predetermined program
`that controls color, saturation, luminance, and other aspects (id. at 4:25–39).
`When the electroluminescent filaments are activated, each
`electroluminescent filament will emit light in sequence so the light-emitting
`cable can emit changeable colors and brightness (id. at 4:39–42).
`
`
`2. Overview of Korodi (Exhibit 1005)
`Korodi describes a safety power conductor that includes light-emitting
`means used for signaling the location of the conductor and the presence of
`an electrical potential in the conductor with respect to ground (Ex. 1005,
`Abstract). A power cord, to be used as domestic extension cords, heavier
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`industrial cords, or cords used in inaccessible areas, comprising a conductor,
`having an insulated covering, is illuminated laterally by light that is emitted
`when current is applied (id. at Abstract, 1:15–19, 1:56–62, 3:39–44).
`Figure 1 is reproduced below.
`
`
`
`Figure 1, reproduced above, is a side view of an embodiment of
`Korodi’s invention. As shown in Figure 1, electrical line or cable 1 has a
`pair of parallel electrical conductors 2 and 3 separated and insulated by
`insulating covering 4 (id. at 2:55–59). Insulating covering 4 is at least
`partially transparent to light, and that transparent zone extends between
`optical fibers 10 in channel 19 and the external surface of the cable covering
`(id. at 2:55–59, 3:32–44). This structure permits transmission of light from
`bulb 9, via optical fibers 10, to the exterior of the cable along its length (id.
`at 3:32–38). The conductor, including the light-emitting means, signal
`location of the conductor and presence of an electrical potential in the
`conductor with respect to an electrical base or ground (id. at Abstract).
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`3. Analysis
`a. “emits light in sequence” and “emits in sequence”
`Petitioner asserts He teaches using programmable electronic circuitry
`(the driver) to light electroluminescent (or electroluminescence) wires in
`sequence when the main cord and driver are live (Pet. 42). Petitioner
`specifically points to He’s disclosure that color, saturation, luminance, and
`other aspects are controllable such that each filament of the cable will emit
`light in sequence (id. (citing Ex. 1004, 4:38–42)).
`Patent Owner argues He’s sequence limitation relates to blending
`multi-colored electroluminescent filaments for creating various colors and
`brightness, in contrast to the ’279 Patent’s spatio-temporal sequence that
`does not energize the electroluminescent filaments simultaneously (PO
`Resp. 50).
`We do not agree He requires blending of colors as asserted by Patent
`Owner. Patent Owner points to He’s description that describes its system
`has control over color, saturation, and luminance, and contends, as a result,
`that He’s multi-colored electroluminescent filaments are blended together,
`rather than distinct (Ex. 2015 ¶ 54). However, He discloses “the color,
`saturation, luminance and other aspects are controllable. Through the
`control of the programmable electronic elements, each filament of the cable
`will emit light in sequence such that the light-emitting cable can be formed
`with changeable colors and brightness” (Ex. 1004, 2:17–21) (emphasis
`added). Moreover, Patent Owner’s proffered Declarant, Dr. Robert T.
`Weverka, testifies that even blending to achieve a color such as purple,
`would require turning the electroluminescent filaments on or off to achieve
`colors such as turning off a green filament (Ex. 1016, 112:5–114:1). Thus,
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`we find He teaches the color, saturation, luminance and other aspects of the
`electroluminescence cable are controllable through control of the
`programmable electronic elements which in turn, control each filament of
`the cable to emit light in sequence (id. at 4:35–42). Therefore, we find He
`teaches every electroluminescence filament emits light in sequence.
`Accordingly, we find He teaches or at least suggests the
`programmable electronic elements (driver) control each electroluminescent
`filament respectively by controlling color, saturation, and luminance, so
`each electroluminescent filament may emit or not emit light according to a
`predetermined program (Ex. 1004, 4:26–30). As He describes controlling
`the color of the cable, we find an ordinarily skilled artisan would have found
`it obvious upon reading He, that the cable may change from, for example,
`red to blue. As a result, we find specific electroluminescent filaments would
`emit light depending on the color, the specific electroluminescent filament
`emits. In the example, one filament may emit red light and be on when the
`cable emits red light, but that filament will not emit light when the cable is
`to emit blue light. Instead, a second filament will emit blue light.
`Furthermore, we agree with Petitioner and find no evidence in the
`record that any reason has been articulated or evidence shown, why an
`ordinarily skilled artisan would not possess the skill to modify He’s ability
`to control each electroluminescent filament which emits light in a sequence,
`to control each electroluminescent filament to be on or off, and to control
`each electroluminescent filament to emit light in a continuous or connected
`series. Indeed, we are not persuaded an ordinarily skilled artisan would have
`found it “uniquely challenging” or “difficult for one of ordinary skill in the
`art” to exercise control over the filaments, to turn the electroluminescent
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`filaments on or off in a continuous or connected series (a sequence), to
`achieve a particular lighting effect, given He’s teaching of control of the
`electroluminescent filaments. See Leapfrog Enters., Inc. v. Fisher-Price,
`Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor are we persuaded the
`modification represented an unobvious step over the prior art. See id.
`Accordingly, we find He teaches each electroluminescent filament throws
`off or gives off or out light in a continuous or connected series.
`Thus, we find He teaches or at least suggests “every
`electroluminescence cored bar or electroluminescence cored cord is driven
`by the driver and emits light in sequence when the main cord and the driver
`are live,” as recited in claim 1 and “every electroluminescence cored cord is
`driven by the driver and emits in sequence when the main cord and the
`driver are live,” as recited in claim 7.3
`
`
`b. Obvious to Combine
`Petitioner states He provides an illuminated electroluminescent cable
`“that fits seamlessly with the illuminated power cords disclosed in Korodi”
`(Pet. 35). According to Petitioner, He discloses a cable with EL wires
`intertwisted helically on a metal core wire and circuitry for driving the wires
`such that light appears to flow through the cable (id.). Petitioner then asserts
`
`
`3 Even if we were to adopt Patent Owner’s proffered interpretation of “emits
`and dies light of each electroluminescent cored bar or cord in succession,
`one after the other,” we conclude, based on the findings and reasoning set
`forth above, an ordinarily skilled artisan would have found it obvious to
`modify He to set the predetermined program to control each
`electroluminescent filament to “emit and die” light in succession, one after
`the other.
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`an ordinarily skilled artisan would have found replacing the aluminum core
`wire in He with a power cord, thereby “creating an improved illuminated
`cable using EL wires that light in sequence to indicate the presence of
`current,” to be obvious (id. at 36). Petitioner further contends that
`combining the teachings of He and Korodi would have been the merger of
`familiar elements according to their established functions, known methods,
`and predictable results (id.).
`Patent Owner argues (i) He and Korodi are non-analogous art (PO
`Resp. 33–34); (ii) Petitioner provides no articulation of any motivation to
`combine the teachings of He and Korodi beyond conclusory statements
`(Prelim. Resp. 30); (iii) the proposed combination would render both
`references inoperable, Petitioner provided no evidence that the teaching of
`He and Korodi are “readily compatible” or evidence the teachings would
`have been a predictable variation of devices, and the proposed combination
`would not result in the claimed invention disclosed in the ’279 Patent (PO
`Resp. 33–34); and (iv) He teaches against combination with Korodi (id.).
`Patent Owner initially argues He and Korodi are non-analogous art
`(PO Resp. 37–40). A reference qualifies as prior art for an obviousness
`determination under § 103 only when it is analogous to the claimed
`invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314,
`1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In
`re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the
`scope of analogous prior art: (1) whether the art is from the same field of
`endeavor, regardless of the problem addressed and, (2) if the reference is not
`within the field of the inventor’s endeavor, whether the reference still is
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`reasonably pertinent to the particular problem with which the inventor is
`involved.” Bigio, 381 F.3d at 1325 (citations omitted).
`Patent Owner contends He discloses multi-colored EL wires being
`blended to produce an array of different colors along the length of the cable
`unlike the ’279 Patent which requires that only one EL wire is live at any
`one given time (PO Resp. 34–35, 38–39). Patent Owner further argues the
`differences between He and the claimed invention and asserts Petitioner has
`failed to indicate why an ordinarily skilled artisan would look to He (id.).
`Patent Owner additionally argues Korodi does not teach or suggest use of
`the light to communicate direction of current flow (id. at 39–40).
`We determine He and Korodi are analogous art to that of the ’279
`Patent. Moreover, Patent Owner does not even sufficiently articulate from
`what field of endeavor Patent Owner believes applies to each of the ’279
`Patent, He, and Korodi (see PO Resp. 37–40).
`Nonetheless, even in light of Patent Owner’s assertions as to what the
`references teach, we agree with Petitioner that the ’279 Patent, He, and
`Korodi are from the same field of endeavor –– the field of lighted cables
`(Pet. Reply 15). Specifically, we find He is related to color-changing and
`multi-colored electroluminescent cables –– lighted cables (Ex. 1004,
`Abstract). We further find Korodi is related to electrical cables that include
`light-emitting means capable of transmitting light (Ex. 1005, Abstract, 2:55
`– 3:4). The ’279 Patent is directed to a current-seen cable that emits light to
`indicate the live state of the cable (Ex. 1001, Abstract, 1:33–37). Moreover,
`Patent Owner’s own Declarant, Dr. Weverka, agrees all three references are
`from the field of lighted cables (Ex. 1016, 44:10–12, 104:12–14, 123:16–
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`21). Accordingly, we determine He, Korodi, and the ’279 Patent are from
`the same filed of endeavor and thus, are analogous art.
`Patent Owner further argues Petitioner has not articulated a
`motivation to combine He with Korodi (PO Resp. 40). Patent Owner’s
`Declarant, Dr. Weverka states as He teaches use of multi-colored EL
`filaments to produce a variety of colors, and Korodi teaches the use of a
`central lighting source to show existence of a potential, an ordinarily skilled
`artisan would not have been motivated to combine the references to produce
`a current seen cable that produces the visual of current flow across the length
`of the power cable (Ex. 2015 ¶ 77).
`Patent Owner does not directly address the specific teaching and
`combination as asserted by Petitioner. Petitioner’s justification for
`combining He’s and Korodi’s teachings is not that Korodi be physically
`inserted into He (Pet. 36–38, 41). The test for obviousness is not whether
`the features of a secondary reference may be bodily incorporated into the
`structure of the primary reference; nor is it that the claimed invention must
`be expressly suggested in any one or all of the references. Rather, the test is
`what the combined teachings of the references would have suggested to
`those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
`1981) (citations omitted).
`Nonetheless, we find Petitioner has articulated reasoning with a
`rational underpinning as to why an ordinarily skilled artisan would have
`been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104).
`Specifically, Petitioner contends an ordinarily skilled artisan would have
`been motivated to combine the teachings of He and Korodi because “such a
`modification is both a predictable variation and an incremental
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`improvement” (Pet. 35). According to Petitioner, an ordinarily skilled
`artisan would have found it obvious and “straight-forward” to replace the
`aluminum core wire in He with a power cord to create an improved
`illuminated cable using electroluminescent wires that light in sequence (id.