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 IPR2015-TBD
`Patent 7,429,827
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,429,827
`(CLAIMS 31–34)
`
`

`
`TABLE OF CONTENTS
`INTRODUCTION ....................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8................................. 2
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))................................ 2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... 3
`C.
`Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§ 42.8(b)(3–4))................................................................................... 4
`Service Information (37 C.F.R. § 42.8(b)(4))..................................... 4
`D.
`PAYMENT OF FEES.................................................................................. 5
`III.
`IV. GROUNDS FOR STANDING (§ 42.104(a))............................................... 5
`V.
`OVERVIEW OF CHALLENGE (§ 42.104(b))............................................ 5
`VI. OVERVIEW OF THE ’827 PATENT ......................................................... 6
`VII. PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME ...................................................... 6
`VIII. TECHNICAL FUNDAMENTALS OF THE CLAIMED SUBJECT
`MATTER..................................................................................................... 7
`PROSECUTION HISTORY........................................................................ 7
`STATE OF THE ART RELATIVE TO THE ’827 PATENT....................... 8
`A.
`Technical Background ....................................................................... 9
`B.
`Background of the Technology .........................................................12
`C.
`Summary of the Prior Art..................................................................14
`1.
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1105)................14
`U.S. Patent Application Publication No. US
`2.
`2003/0201874 A1 (“Wu”) (Ex. 1106) .....................................15
`3.
`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1107) ........................15
`XI. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ............................................................................................16
`XII. UNPATENTABILITY GROUND..............................................................21
`A.
`Ground 1: Chliwnyj in view of Wu and Lau Renders Obvious
`Claims 31–34....................................................................................22
`XIII. THE ARGUMENTS AND PRIOR ART PRESENTED IN THIS
`PETITION ARE NOT SUBSTANTIALLY SIMILAR TO THOSE IN
`THE ’938 IPR.............................................................................................51
`
`IX.
`X.
`
`ii
`
`

`
`XIV. CONCLUSION ........................................................................................ ..52XIV. CONCLUSION ........................................................................................ ..52
`
`
`
`XIV. CONCLUSION ..........................................................................................52
`XV. APPENDIX OF EXHIBITS........................................................................54
`
`
`
`XV. APPENDIX OF EXHIBITS ...................................................................... ..54XV. APPENDIX OF EXHIBITS ...................................................................... ..54
`
`iii
`
`
`
`iiiiii
`
`

`
`I.
`
`INTRODUCTION
`
`Jiawei Technology (HK) Ltd.1, Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., Atico International (Asia) Ltd.,
`
`and Atico International USA, Inc., Chien Luen Industries Co., Ltd., Inc. (Chien
`
`Luen Florida), and Chien Luen Industries Co., Ltd., Inc. (Chien Luen China),
`
`Coleman Cable, LLC2, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test
`
`Rite Products Corp. (collectively “Petitioner”) petitions for inter partes review
`
`under 35 U.S.C. §§ 311–312 and 37 C.F.R.§ § 42.100–106, 108 of Claims 31–34
`
`of U.S. Patent No. 7,429,827 (“the ’827 Patent”) (Exhibit 1101). The ’827 Patent
`
`issued on September 30, 2008, to Richmond. The ’827 Patent is purportedly owned
`
`by SIMON NICHOLAS RICHMOND (“Patentee”).
`
`This petition proposes one ground that matches a ground in IPR2014-00938,
`
`but adds claims 31–34 to that ground. This petition uses the same ground to
`
`provide substantially different arguments demonstrating that, despite the patent
`
`owner’s unforeseeable construction of “continuous color changing cycle,” the prior
`
`1 Jiawei Technology (HK) Ltd. contests that service was proper in the district court
`
`case, but in any event, the earliest possible service for any Jiawei entity listed is in
`
`FN 4.
`
`2 Coleman Cable, LLC was formerly Coleman Cable, Inc.
`
`

`
`art teaches this limitation under any construction. ’938 IPR, paper 20 at 17. Under
`
`the patent owner’s construction, a cycle implies a perceptible pattern that happens
`
`and can happen again. Id. at 16. The Petitioner could not have foreseen the Board
`
`requiring construction of a term that was never in dispute between the parties, and
`
`the Board should have instead applied its plain and customary meaning. Therefore,
`
`in view of the unanticipated importance of the term “color changing cycle,” the
`
`petitioner asks the Board to consider how the substantially different arguments
`
`presented in this petition demonstrate a reasonably likelihood of prevailing on
`
`claims 31–34.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner certifies that
`
`the following are real parties-in-interest: Jiawei
`
`Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei
`
`Photovoltaic Lighting Co., Ltd. (“Jiawei”), Ace Hardware Corp. (“Ace”), Atico
`
`International (Asia) Ltd., and Atico International USA, Inc. (“Atico”), Chien Luen
`
`Industries Co., Ltd., Inc. (Chien Luen Florida), and Chien Luen Industries Co.,
`
`Ltd., Inc. (Chien Luen China) (“Chien Luen”), Coleman Cable, LLC (“Coleman”),
`
`CVS Pharmacy, Inc. (“CVS”), Lowe’s Home Centers, LLC (“Lowe’s”), Menard,
`
`Inc. (“Menards”), Nature’s Mark, Orgill, Inc. (“Orgill”), Rite Aid Corp., Smart
`
`Solar, Inc. (“Smart Solar”), Test Rite Products Corp., True Value Company (“True
`
`2
`
`

`
`Value”), and Walgreen Co.
`
`(“Walgreens”)
`
`(collectively “Real Parties-in-
`
`Interest3”).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`On March 27, 2013, the purported Patent Owner sued multiple Petitioners in
`
`the U.S. District Court for the District of New Jersey alleging infringement of
`
`several patents, including the ’827 patent. On May 6, 2013, the purported Patent
`
`Owner filed an Amended Complaint alleging infringement of the ’827 patent. The
`
`earliest service date of the Amended Complaint served on the Petitioners identified
`
`above was June 11, 2013.4 This original petition was filed within one year of
`
`Petitioner being served a complaint alleging infringement of the ’827 patent. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The purported Patent Owner identified no
`
`3 Petitioner certifies that the following are real parties-in-interest, such that, the
`
`parties have at least been provided a draft of this petition and the opportunity to
`
`comment on it prior to filing this petition.
`
`4 The service date for each real party-in-interest is identified for the convenience of
`
`the Board: June 11, 2013 (Menards, Lowe’s, and Walgreens); June 12, 2013
`
`(Smart Solar); June 13, 2013 (Ace, CVS, Jiawei Technology (USA) Ltd., Orgill,
`
`True Value, Chien Luen, and Rite Aid); July 3, 2013 (Coleman); and no service
`
`date (Nature’s Mark and Test Rite).
`
`3
`
`

`
`claims for infringement in the Amended Complaint. At the time of this filing, the
`
`Court has not issued a Scheduling Order and the purported Patent Owner has
`
`served no infringement contentions relative to the ’827 patent.
`
`The purported Patent Owner also filed additional
`
`lawsuits alleging
`
`infringement of the ’827 patent in several related judicial matters in the District of
`
`New Jersey. See Ex. 1108, Related Matters.
`
`The ’827 patent is being asserted in these proceedings with two other patents
`
`within the same patent family as the ’827 patent—namely, U.S. Patent Nos.
`
`7,196,477 and 8,362,700. U.S. Patent No. 7,196,477 (IPR2014-00936) was
`
`instituted on all claims and U.S. Patent No. 8,362,700 (IPR2014-00937) was not
`
`instituted but a motion for rehearing is pending.
`
`C.
`
`Lead and Back-Up Counsel and Service Information
`(37 C.F.R. § 42.8(b)(3–4))
`
`Petitioner appoints Mark C. Nelson (Reg. No. 43,830) of Dentons US LLP
`
`as lead counsel, and appoints Lissi Mojica (Reg. No. 63,421), Kevin Greenleaf
`
`(Reg. No. 64,062), and Daniel Valenzuela (Reg. No. 69,027) of Dentons US LLP,
`
`as back-up counsel. A Power of Attorney for each Petitioner identified in Section I
`
`is on file in IPR2014-00938.
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Dentons US LLP, 233 South Wacker Drive, Suite 7800, Chicago,
`
`4
`
`

`
`IL 60606-6306. Petitioner consents to service by email at
`
`mark.nelson@dentons.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
`
`iptdocketchi@dentons.com.
`
`III.
`
`PAYMENT OF FEES
`
`The undersigned submits the fee required by 37 C.F.R. § 42.15(a) for this
`
`Petition for
`
`inter partes review of claims 31–34. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to Deposit Account No 19-3140.
`
`IV.
`
`GROUNDS FOR STANDING (§ 42.104(a))
`
`Petitioner certifies that the ’827 patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ’827 patent on the ground identified in this Petition.
`
`Petitioner files an accompanying Motion for Joinder with this petition within the
`
`allowed statutory time period.
`
`V.
`
`OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’827 patent’s challenged claims is requested on
`
`the ground for unpatentability listed in the index below.
`
`5
`
`

`
`Ground
`
`Basis
`
`Index of References
`
`Claims
`Challenged
`
`1
`
`§ 103(a)
`
`Chliwnyj, Wu and Lau
`
`31–34
`
`The petition also relies on the supporting declaration of technical expert Dr. Peter
`
`W. Shackle. (Shackle Decl., Ex. 1102.)
`
`VI.
`
`OVERVIEW OF THE ’827 PATENT
`
`The ’827 patent was filed on April 7, 2005, and is a continuation-in-part of
`
`U.S. Patent No. 7,196,477 (the “’477 Patent”) filed on February 26, 2004. The
`
`’827 patent claims foreign priority to an Australian patent application filed on
`
`December 23, 2003 (Richmond App. 383, Ex. 1104.)
`
`The Board previously instituted review of claims 24–30 and 35, which are
`
`substantially similar to claims 31–34.
`
`VII.
`
`PERSON OF ORDINARY SKILL IN THE RELEVANT
`FIELD AND THE RELEVANT TIMEFRAME
`
`The field for the ’827 patent is solar powered lights and more particularly
`
`but not exclusively to solar powered lighting that produces a light of varying color.
`
`(’827 patent, Ex. 1101, 1:11–13.) Within a given field, the level of ordinary skill in
`
`the art is evidenced by the prior art references of record. See In re GPAC Inc., 57
`
`F.3d 1573, 1579 (Fed. Cir. 1995) (determining the Board did not err in adopting
`
`the approach that the level of skill in the art was best determined by the references
`
`6
`
`

`
`of record). With that in mind, as of the earliest effective filing date of the ’827
`
`patent claims, a person of ordinary skill in the art typically would have possessed:
`
`1) a graduate degree in electrical or electronics engineering or physics with
`
`demonstrable experience in the circuit design, or 2) a bachelor’s degree electrical
`
`or electronics engineering or physics with at least two years industrial experience
`
`and demonstrable experience in the circuit design.
`
`VIII.
`
`TECHNICAL FUNDAMENTALS OF THE CLAIMED SUBJECT
`MATTER
`
`The ’827 challenged claims are directed to the interplay between a solar
`
`light apparatus and electronic circuitry to produce a varying color changing effect
`
`using a plurality of light emitting elements. (Shackle Decl., Ex. 1102, ¶ 75.) The
`
`’827 patent discloses electrical components and circuitry to power light sources
`
`through solar power and a rechargeable battery to produce varying colors. The
`
`lighting device also charges the battery during the day and the battery later powers
`
`the light emitting elements to emit light when it detects low ambient light levels.
`
`(Shackle Decl., Ex. 1102, ¶ 76.)
`
`IX.
`
`PROSECUTION HISTORY
`
`The ’827 patent was filed on April 7, 2005, and issued on September 30,
`
`2008. During prosecution, rejections were made based on double-patenting in light
`
`of Richmond’s ’477 patent and certain other references. In an Office Action dated
`
`7
`
`

`
`March 17, 2008, the examiner rejected claims 42–58 on the grounds of non-
`
`statutory obviousness-type double patenting as unpatentable over claims of
`
`the ’477 patent in view of U.S. Patent No. 6,384,570 to Frost. Claims 73–76 were
`
`rejected based on double patenting as unpatentable over claims of the ’477 patent
`
`in view of Frost and in further view of U.S. Patent No. 6,517,217 to Liao. Claims
`
`30–41 and 59–72 were allowed. To traverse these rejections, Richmond canceled
`
`the claims so rejected and added new claims (77–85) and filed a terminal
`
`disclaimer to render any double-patenting rejection moot. In light of the terminal
`
`disclaimer and the cancelation of claims rejected, the examiner issued a notice of
`
`allowance on August 7, 2008. (Ex. 1103, ’827 File History.)
`
`X.
`
`STATE OF THE ART RELATIVE TO THE ’827 PATENT
`
`The ’827 patent is broadly directed to a lighting device having a lens,
`
`rechargeable battery, solar cell, and circuitry to produce light of varying color.
`
`(’827 Patent, 1:39–59.) The ’827 patent allegedly attempts
`
`to overcome
`
`disadvantages of well-known in the art light emitting diodes system that produce
`
`variable color by producing uniform desired color when desired and the ease of
`
`adjusting the various light functions. (’827 Patent, 1:17–20.) The ’827 patent
`
`admits “the invention of LED systems to produce variable color” is well known
`
`prior art. (’827 Patent, 1:17–18.) The Patent Owner also admits that using solar-
`
`powered lights using rechargeable batteries is also well known in the art. (’827
`
`8
`
`

`
`Patent, 1:20–25.) The prior art teaches using a plurality of different colored LEDs
`
`and ramping and/or controlling power to the light sources to vary intensity and
`
`frequency to create color varying and color changing cycles; discloses switches
`
`that allow a user to select a desired color and power the circuitry on and off; and
`
`teaches circuitry with programs in memory to produce a multitude of desired
`
`lighting patterns. Together the prior art renders obvious all of the challenged
`
`claims of the ’827 patent.
`
`A.
`
`Technical Background
`
`Light is one of many forms of electromagnetic radiation, which is controlled
`
`by its frequency. (Shackle Decl., Ex.
`
`1102, ¶¶ 40–41.) The light spectrum
`
`spans from deepest red color having
`
`a wavelength of around 780 nm to
`
`the deepest violet color having a
`
`wavelength of around 400 nm.
`
`(Shackle Decl., Ex. 1102, ¶¶ 43–
`
`44.) Figure A shows a spectrum of visible sunlight. Note there is light at every
`
`wavelength. (Shackle Decl., Ex. 1102, ¶ 43.)
`
`The human eye only perceives three primary colors. All other colors are
`
`made up from combinations of these wavelengths. A fluorescent lamp can emit the
`
`9
`
`

`
`primary colors of red, green and blue, plus some yellow. The human eye perceives
`
`this combination as white light. With solid state (LED) lighting, LEDs that are
`
`respectively red, green, and blue can be combined in specific proportions and are
`
`interpreted by the human eye as white light. (Shackle Decl., Ex. 1102, ¶ 44.)
`
`Dr. Shackle’s declaration contains a figure showing the overlap of primary
`
`colors red, blue and green light, including creating white light by adding the three
`
`colors together. (Shackle Decl., Ex. 1102, ¶ 45.) To create varying color that can
`
`cover a spectrum of colors, one or more of the LEDs is varied in intensity, and the
`
`human eye perceives a varying color. (Shackle Decl., Ex. 1102, ¶ 46.)
`
`A continuous color changing cycle or varying color can be done by simply
`
`switching each of three LEDs (e.g., Red, Green, and Blue) on or off, which can
`
`produce a matrix of seven colors. For example, if Red and Blue are switched on
`
`and Green is off, then the resulting color is Magenta; if Red and Green are both
`
`switched on and Blue is off, then the resulting color is yellow; if Red, Blue and
`
`Green are all switched on, then the resulting color is white, etc. To produce over
`
`seven colors, each LED must be able to be driven to change in brightness or
`
`intensity, not just switched on or off. (Shackle Decl., Ex. 1102, ¶ 47.)
`
`Using pulse width modulation (PWM) for varying color and producing
`
`continuous color changing cycles was well known in the prior art and can be used
`
`to produce a spectrum of colors. Dowling, filed March 13, 2001 and issued June
`
`10
`
`

`
`20, 2006, states, “[t]he ’038 patent discloses LED control through a technique
`
`known as Pulse-Width Modulation (PWM). This technique can provide, through
`
`pulses of varying width, a way to control the intensity of the LED's as seen by the
`
`eye. Other techniques are also available for controlling the brightness of LED's and
`
`may be used with the invention. By mixing several hues of LED's, many colors can
`
`be produced that span a wide gamut of the visible spectrum. Additionally, by
`
`varying the relative intensity of LED's over time, a variety of color-changing and
`
`intensity varying effects can be produced. Other techniques for controlling the
`
`intensity of one or more LEDs are known in the art, and may be usefully employed
`
`with the systems described herein. In an embodiment,
`
`the processor 2 is a
`
`Microchip PIC processor 25 12C672 that controls LEDs through PWM, and the
`
`LEDs 4 are red, green and blue.” U.S. Patent No. 7,064,498 at 6:1-26; (Shackle
`
`Decl., Ex. 1102, ¶ 48.)
`
`The human eye cannot perceive rapid variations in intensity above 200 Hz,
`
`essentially no one can detect the fluctuation by directly looking at it. The width of
`
`each pulse is varied; this is called pulse width modulation. When pulse width
`
`modulation is done, the human eye perceives a light that grows bright and dim,
`
`depending on the width of the pulse, even though electronic instruments may
`
`record that the peak of each pulse is actually the same. A pulse width modulator is
`
`commonly used to control the LED’s intensity. A color spectrum is achieved by
`
`11
`
`

`
`continuously varying the level of power to each LED. The result is a mixture of
`
`colors; for example, if additive primary colors, i.e., red, blue and green light are
`
`used, that combination can produce color changes across the color spectrum.
`
`(Shackle Decl., Ex. 1102, ¶¶ 51-53.)
`
`A light sensitive switch comprises at a minimum a) a light responsive
`
`element that can be a photodiode, phototransistor, photovoltaic cells, or any other
`
`circuit element
`
`that changes some parameter of its circuit characteristics in
`
`response to light and b) a power switch that operates to activate or deactivate a
`
`circuit in response to a signal from the light responsive element. The light sensitive
`
`is not required to be a mechanical switch. (Shackle Decl., Ex. 1102, ¶ 58.)
`
`B.
`
`Background of the Technology
`
`Solar powered lights produce light using stored energy obtained from
`
`sunlight. Solar
`
`lights may involve a combination of elements such as a
`
`photovoltaic cell; a rechargeable battery; a lamp and ambient light sensing control
`
`circuitry, used to determine when to turn the lamp on;, and lighting circuitry often
`
`using integrated circuits,
`
`to determine which colors and patterns to display.
`
`(Shackle Decl., Ex. 1102, ¶ 61.)
`
`A first key ingredient for solar powered lighting is a compact, lightweight
`
`rechargeable battery. Nickel metal hydride batteries were first released in 1989 and
`
`were soon improved upon by the lithium ion battery, which first became available
`
`12
`
`

`
`in 1991. See, e.g., U.S. Patent No. 5,062,028 to Frost,
`
`issued October 1991
`
`(describing a solar lamp on a ground stake powered by rechargeable nickel metal
`
`hydride batteries). (Shackle Decl., Ex. 1102, ¶ 62.)
`
`A second key ingredient for solar powered lighting is the availability and
`
`effectiveness of photovoltaic cells. By the year 2000, a relatively small solar cell
`
`could generate enough power in one day to keep a discharge lamp operating for
`
`several hours during the night. (Shackle Decl., Ex. 1102, ¶ 63.)
`
`Early attempts at making a solar powered light used a lead acid battery, as
`
`described by Doss in U.S. Patent No. 4,841,416, filed in March 1988 and issued in
`
`June 1989. This product used a 12V incandescent lamp. Also with an incandescent
`
`lamp but now with a battery the shape and size of a nickel metal hydride battery is
`
`the invention described by Frost in U.S. Patent No. 5,062,028, which was filed in
`
`August 1989 and issued in October 1991. (Shackle Decl., Ex. 1102, ¶ 64.)
`
`The next technology leap to affect the business of solar powered lighting
`
`was the improvement of LED lamp efficacy. LED devices had been around since
`
`1962, but in the 1960s and 1970s, they were only bright enough to make indicator
`
`lights and low powered displays such as on calculators. However with continual
`
`R&D, in the time interval from 1965 to 1990, the light output per LED that could
`
`be obtained had increased 1000 times so that during the 1990s, it was now possible
`
`to make a useful
`
`luminaire with an efficacy already many times that of an
`
`13
`
`

`
`incandescent lamp, and outputs of several lumens could be produced from an LED
`
`lamp. (Shackle Decl., Ex. 1102, ¶ 66.)
`
`In 1999, another technology line was evolving as engineers were realizing it
`
`was possible to switch LEDs on and off so rapidly (say 1000 times /sec) that the
`
`human eye would detect a steady light with a brightness corresponding to the
`
`fraction of time the LED was switched on. By operating a red, a blue, and a green
`
`LED simultaneously and out of phase, any desired color or a color spectrum
`
`changing over time could be synthesized as taught in Morrison, U.S. Patent No.
`
`6,241,362 filed July 19, 1999 (Ex. 1114). This could be accomplished by using an
`
`inexpensive microcontroller, for example, the Phillips 51LPC family has three
`
`PWM outputs that can output pulses with a width under program control. (Shackle
`
`Decl., Ex. 1102, ¶ 68.)
`
`C.
`
`Summary of the Prior Art
`
`The prior art references relied upon disclose a lighting device that produces
`
`varying color recited in the challenged claims. The references comprise Exhibits
`
`1105–1107.
`
`1.
`
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1105)
`
`Chliwnyj was filed on August 15, 1996, issued on July 20, 1999 and is prior
`
`art under 35 U.S.C. § 102(b). Chliwnyj discloses an “microprocessor-based
`
`electronic light pattern apparatus” using solar cells, a rechargeable battery, a
`
`14
`
`

`
`plurality of colored lamps, and an integrated circuit
`
`including a pulse width
`
`modulator to drive the plurality of different colored LEDs to produce a varying
`
`color and “relaxing light pattern.” (Chliwnyj, Ex. 1105, claim 45.) The PWM
`
`drives the intensity of LEDs to go up and down in a sinusoidal cycle or pattern—
`
`the sinusoidal cycle or pattern defined by intensity values in a sine wave table
`
`stored in a circular buffer. (Id., 6:63–7:6.) Increasing or decreasing the rate of
`
`traversing the sine wave table results in similar changes in frequency of the
`
`intensity sine wave of the LEDs. The illumination device is suitable for outdoor
`
`areas such as memorial site, e.g., a garden environment. (Chliwnyj, Ex. 1105,
`
`Background of the Invention.) (Shackle Decl., Ex. 1102, ¶ 89.)
`
`2.
`U.S. Patent Application Publication No. US
`2003/0201874 A1 (“Wu”) (Ex. 1106)
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`Wu was filed on April 24, 2002, published on October 30, 2003 and is prior
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`art under 35 U.S.C. § 102(e). Wu specifically discloses a device with an
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`illumination function using solar energy to illuminate a light emitting element. The
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`device is suitable for outdoor areas such as courtyards and parks and scenic
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`environments. (Wu, Ex. 1106, Background of the Invention.) (Shackle Decl., Ex.
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`1102, ¶ 90.)
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`3.
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`U.S. Patent No. 6,431,719 (“Lau”) (Ex. 1107)
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`Lau was filed on September 22, 2000, issued on August 13, 2002 and is
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`prior art under 35 U.S.C. § 102(b). Lau is a night light that contains an array of
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`differently colored light emitting diodes used to entertain and soothe the viewer.
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`Lau teaches that the night light can output a display of dynamic light that can be
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`frozen in a desired light pattern. (Lau, Ex. 1107, Background of the Invention.)
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`(Shackle Decl., Ex. 1102, ¶ 91.)
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`XI.
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`CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3)
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`Per the claim construction standard for an inter partes review, Petitioner
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`bases this petition upon the broadest reasonable interpretation of the claim
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`language. Solely for purposes of the proceeding, under the broadest reasonable
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`interpretation standard, Petitioner proposes that all claims should be entitled to
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`their plain and ordinary meaning, except for the limitations addressed below.
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`A.
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`Lamp
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`The term “lamp” is in independent claim 32. The claim states “circuit
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`having at least two lamps of different colours” and is construed to mean, “an
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`electrical device, the primary purpose of which is to create light of a single color,
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`and which is physically connected to a source of electricity.” (Shackle Decl., Ex.
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`1102, ¶ 82.)
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`B.
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`Varying colour/color
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`The term “varying colour” is in independent claim 32. For purposes of this
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`proceeding, the petitioner adopts the construction previously adopted by the Board:
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`“perceptible changing of color over time.” IPR2014-00936 at 8; (see also Shackle
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`Decl., Ex. 1102, ¶ 83.)
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`C.
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`Switch being accessible by a user
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`The term “switch being accessible by a user” is in independent claim 27 and
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`dependent claim 33. The term is construed to mean, “the switch is accessible to the
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`user without substantial effort, tools, or destruction.” Therefore, a switch need not
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`be exposed and the user can disassemble the device, e.g., remove a few screws,
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`unscrew a lens, etc., to gain access to the switch. (Shackle Decl., Ex. 1102, ¶ 88.)
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`D.
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`Continuous color changing cycle
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`The term “continuous color changing cycle” is in independent claim 32 and
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`dependent claim 31. Petitioner cannot be sure how the Board will define this claim
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`limitation because, despite stating, “A ‘cycle’ implies some pattern or scheme;
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`some phenomenon that happens and can happen again,” the Board stated, “we did
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`not adopt any construction of the term by Patent Owner.” IPR20014-00938, paper
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`20 at 16, and paper 27 at 3. The Board’s decision that the relied-upon prior art does
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`not teach a “color changing cycle” without clearly defining it places the petitioner
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`in the difficult situation of applying the prior art three possible constructions.
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`The broadest reasonable construction of “continuous color changing cycle”
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`is “a series of perceptible changes of color over time, with or without repetition.”
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`First, the petitioner’s construction is consistent with the patent owner’s
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`admission, that “varying color” and “color changing cycle” “mean[] substantially
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`the same thing.” Ex. 1109 at 24. Therefore, the constructions of the two terms
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`should be substantially the same, with the difference, if any, lying with the word
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`“cycle.”
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`The ’827 patent does not define explicitly the term “cycle” in the
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`specification. Instead, the ’827 patent merely mentions the term “cycle[]” once,
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`stating, “[t]he light device 10 displays a constantly changing lighting effect that
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`cycles through the light spectrum by ramping up and ramping down the intensity of
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`light displayed by the LEDs 34A, 34B, and 34C.” 7:15–18 (emphasis added). Here,
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`the ’827 patent requires “constantly changing” the lighting effect—the opposite of
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`“happens and can happen again” in the same way each time. The statement in the
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`’827 patent, “cycles through the light spectrum,” does not set forth a clear,
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`deliberate, and precise choice of a single definition. Renishaw PLC v. Marposs
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`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (patent owner can be its
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`own lexicographer it defines a term “with reasonable clarity, deliberateness, and
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`precision.”) Similarly, claims 31 and 32 mandate that the light patterns must
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`“vary” instead of “happen and can happen again.” The claims do not require
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`repeating the same variations of intensity or frequency over consecutive cycles,
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`even if one definition “implies” it.
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`The petitioner also agrees with the following analysis in IPR2014-00877,
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`which analyzed a similar situation where a patent did not define the word “cycle”:
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`Furthermore, one general dictionary includes a definition of ‘cycle’ as
`‘a set of things that a machine does as part of a process,’ providing an
`example of such a cycle for a household product without reference to
`repetition of events. Ex. [1110]. Both this definition and the ’688
`patent’s disclosure are, thus, consistent with the construction proposed
`by Petitioner.
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`Accordingly, for purposes of this decision, we adopt Petitioner’s
`proposed construction for ‘cycle’ as ‘a series of events, with or
`without repetition.’
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`Paper 10 at 6–7 (emphasis added). Therefore, for purposes of this proceeding, the
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`broadest
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`reasonable interpretation of “color changing cycle” combines the
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`constructions of “varying color” and “cycle,” i.e., “a series of perceptible changes
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`of color over time, with or without repetition.” (Shackle Decl., Ex. 1102, ¶ 84.)
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`Second,
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`in IPR2014-00938 (’938 IPR),
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`the patent owner proposed the
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`following construction: “ramping up and ramping down intensity of light emitted
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`over time in a series of changing colors that repeats by said at least two light
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`sources.” ’938 IPR, paper 19 at 12; see also Ex. 1111 cited at Ex. 2011 in
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`IPR2014-00937 (emphasis added to show unforeseeably imported limitation.) The
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`only basis the patent owner has for adding a repetition requirement
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`to the
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`construction is a new cherry-picked definition that is inconsistent with another,
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`broader definition that the patent owner relied on in litigation. Ex. 1112 at 34–35
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`(FN 23). As explained above, this is not the broadest reasonable interpretation
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`because broader definitions exist in reputable dictionaries and persons of ordinary
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`skill in the art would have understood that cycles can repeat, but do not have to.
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`(Shackle Decl., Ex. 1102, ¶ 85.)
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`Third, at the time of filing this petition, the Board chose not to construe
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`“color changing cycle,” but said the following: “A ‘cycle’ implies some pattern or
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`scheme; some phenomenon that happens and can happen again” and “Chliwnyj
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`admonishes prior art lights that have a perceptible ‘pattern’ in the overall flame
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`effect, instead seeking to simulate a ‘natural random process.’ Ex. [1105], 2:1–19,
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`41–51” ’938 IPR, paper 20 at 7 and 16 (emphasis added); see also, ex. 1113
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`(Board’s dictionary definition of cycle.) The Board stated, “the term ‘cycle’
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`implied some pattern, and that the prior art to which Petitioner cited admonishes
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`patterns [and] the form of repetition, if any, implied by the term ‘cycle,’ was not
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`germane.” ’938 IPR, paper 27 at 3. Therefore, the Board seems to agree that the
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`word “cycle” is a series of events, with or without repetition. The Board also seems
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`to believe that a cycle requires “some pattern or scheme,” but the Board gave no
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`rationale for using these words, and the petitioner cannot locate any as the ’827
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`patent does not use these words and no definition of record used those words.
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`Petitioner believes that the Board, based on the evidence before it at the time,
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`believed that the broadest reasonable interpretation of “color changing cycle” is “a
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`pattern or scheme of perceptible changes of color over time, with or without
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`repetition.” (Shackle Decl., Ex. 1102, ¶ 86.)
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`In summary,