Trials@uspto.gov
`571-272-7822
`
`
`Paper 60
`Entered: November 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WANGS ALLIANCE CORPORATION d/b/a WAC LIGHTING CO.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2015-01287
`Patent 6,013,988
`
`____________
`
`
`
`Before, GLENN J. PERRY, TREVOR M. JEFFERSON, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`
`IPR2015-01287
`Patent 6,013,988
`
`Wangs Alliance Corporation (“Petitioner”) filed a Petition to institute
`
`inter partes review of claims 1 and 2 of U.S. Patent No. 6,013,988 (“the
`’988 patent”) pursuant to 35 U.S.C. § 311−319. Paper 2 (“Pet.”).
`Koninklijke Philips N.V. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition
`and the Preliminary Response, we instituted trial as to claims 1 and 2. Paper
`8 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 22, “PO Resp.”); and Petitioner filed a Reply (Paper 35,
`“Reply”). Patent Owner also filed Motions for Observations on Cross
`Examination of Petitioner’s Reply Witness Mr. Tingler. Paper 51 (“Mot. for
`Obs.”). Petitioner responded to Patent Owner’s Motion for Observations.
`Paper 55 (“Resp. Obs.”). Petitioner also filed a Motion to Exclude (Paper
`45, “Mot. to Exclude”), which Patent Owner opposes (Paper 50, “Opp. Mot.
`to Exclude”).1
`An oral hearing was held on August 23, 2016.2
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`herein, and in view of the record in this trial, we determine that Petitioner
`has shown by a preponderance of the evidence that claims 1 and 2 of the
`’988 patent are unpatentable.
`
`
`
` 1
`
` Petitioner also filed a Reply in support of its Motion to Exclude. Paper 54
`(“Reply Mot. to Exclude”).
`2 A transcript of the oral hearing is entered in the record as Paper 58 (“Tr.”).
`
`2
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`IPR2015-01287
`Patent 6,013,988
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`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner states that the patent-at-issue is the subject matter of a
`district court case filed in the U.S. District Court for the District of
`Massachusetts (Case No. 14-cv-12298-DJC). Pet. 1.
`
`B. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We instituted trial based on the following grounds (Dec. 21–22):
`Reference[s]
`
`Hochstein3 and Hildebrand4
`
`Basis
`§ 103
`
`Claims
`1 and 2
`
`Perry5
`
`§ 102
`
`1
`
`C. THE ’988 PATENT (EX. 1001)
`
`The ’988 patent is directed to a circuit arrangement for operating a
`semiconductor light source, or light emitting diode (“LED”) lights. Ex.
`1001, 1:11−18. The ’988 patent describes that control units in existing
`signaling systems often conduct “leakage current” when the control unit is in
`a non-conducting, or off, state. Id. at 1:36–38.
`Figure 1 of the ’988 patent, reproduced below, illustrates the control
`unit VB and semiconductor light source LB, or LED light.
`
`
`
` 3
`
` U.S. Patent No. 5,661,645 (Exhibit 1003) (“Hochstein”).
`4 U.S. Patent No. 5,075,601 (Exhibit 1005) (“Hildebrand”).
`5 U.S. Patent No. 6,150,771 (Exhibit 1004) (“Perry”).
`
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`IPR2015-01287
`Patent 6,013,988
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`Figure 1 depicts connection terminals A and B, input filter means I,
`self-regulating current-conducting network II, converter III, and output
`terminals C and D. Id. at 2:55−62. Figure 2, reproduced below, shows an
`embodiment of the self-regulating current-conducting network II. Id. at
`2:63−3:13.
`
`
`According to the embodiment depicted in Figure 2 above, when the
`
`control unit is switched on, the voltage at the positive pole + will rise, and
`switch SR becomes conducting, cuting off MOSFET 1, resulting in self-
`regulating, current-conducting network II being deactivated. Id. at 3: 21−25.
`
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`IPR2015-01287
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`D. CLAIMS-AT-ISSUE
`
`The challenged claims are reproduced below.
`1. A circuit arrangement for operating a semiconductor light
`source, said circuit arrangement comprising:
`
`connection terminals for connecting the circuit arrangement
`to outputs from a control unit for controlling the
`semiconductor light source;
`
`input filter means coupled to the connection terminals;
`
` a
`
` converter comprising a control circuit, said converter being
`coupled to output means of the input filter means; and
`
`output terminals for coupled to output means of said
`converter for connecting said circuit arrangement to the
`semiconductor light source,
`
`characterized in that said converter comprises a switched-
`mode power supply for providing power to said
`semiconductor light source, said switched-mode power
`supply having a switching element which is cyclically
`switched on and off by said control circuit, and the circuit
`arrangement further comprises a self-regulating current-
`conducting network coupled between said filter means and
`said converter, said self-regulating current-conducting
`network draining off a leakage current in the control unit
`when said control unit is in a non-conducting state.
`
`2. The circuit arrangement as claimed in claim 1,
`characterized in that the circuit arrangement comprises
`means [f]or deactivating the self-regulating current-
`conducting network [w]hen the converter is switched on.
`
`5
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`IPR2015-01287
`Patent 6,013,988
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`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2142–43 (2016). We presume that claim terms have their
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`meaning that the term would have to a person of ordinary skill in the art in
`question.’” (citation omitted)).
`In our Decision on Institution, we construed three terms: input filter
`means, output means, and means for deactivating. Dec. 6−12. The parties
`appear to not dispute the Board’s construction of these terms, but the parties
`do dispute the application of the Board’s construction of “input filter means”
`to the prior art. PO Resp. 50; Reply 20−21; Tr. 10:18−14:5, 26:8−29:25.
`Our claim construction analysis, therefore, begins by reviewing, on the full
`record before us, the construction of “input filter means,” in light of the
`parties’ dispute.
`
`1. “input filter means”
`In our Decision on Institution, we determined, first, that the term
`“input filter means” was not a means-plus-function term. Dec. 6−7. In
`particular, we were persuaded by Patent Owner’s argument and evidence
`that the term recites sufficient structure. Id. We noted that Patent Owner
`relied on testimony of Dr. Batarseh, Exs. 1008–09, and Dr. Smith, Ex. 2002,
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`to allege that an “input filter” identifies structure to a person of ordinary skill
`in the art. Id. at 6. We stated,
`We agree with Patent Owner that the term “input filter
`means” is not a means-plus-function term because it recites
`sufficient structure. Although the term is presumptively a
`means-plus-function claim limitation under 35 U.S.C. § 112,
`paragraph 6, the presumption can be rebutted “if the evidence
`intrinsic to the patent and any relevant extrinsic evidence so
`warrant.” Personalized Media Commc’ns, LLC v. Int’l Trade
`Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998). In this case,
`“input filter means” are not associated with a recited function
`and “input filter” is itself a structure. See York Prod., Inc., Inc.
`v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed.
`Cir. 1996) (“Without a ‘means’ sufficiently connected to a
`recited function, the presumption in use of the word ‘means’
`does not operate.”). Notwithstanding that an “input filter” is
`not a specific structure, it is sufficient “if the claim term is used
`in common parlance or by persons of skill in the pertinent art to
`designate structure, even if the term covers a broad class of
`structures and even if the term identifies the structures by their
`function.” Lighting World v. Birchwood Lighting, 882 F.3d
`1354, 1359–1360 (Fed. Cir. 2004).
`Furthermore, the evidence of record shows that the term
`“filter” has generally understood meaning, even though the
`noun is derived from the function it performs. For example, as
`evidence of the meaning of “filter,” a dictionary defines the
`word as “[a]n electric circuit or device which selectively
`transmits or rejects signals in one or more intervals of
`frequencies.” Definition filter, WILEY ELECTRICAL AND
`ELECTRONICS ENGINEERING DICTIONARY, 285 (Steven M.
`Kaplan, 2004) (Ex. 1011). See also Definition filter, MCGRAW-
`HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, 715
`(4TH ed., 1989) (“In general, a selective device that transmits a
`desired range of matter or energy while substantially
`attenuating all other ranges.”) (Ex. 1012). In the context of
`claim 1, and guided by the evidence of the meaning of “filter,”
`the term “input filter means” means an electronic circuit or
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`device that selectively transmits or rejects signals in one or
`more intervals or frequencies. The word “input” connotes that
`the claimed filter is located at the input stage of the circuit
`arrangement. See Ex. 1001, Fig. 1, 4:11−14 (describing
`terminal A as an input terminal). The location of the filter,
`however, need not be clarified further because the claim recites
`the devices and terminals the input filter means is coupled to,
`according to the claims, e.g., coupled to the connection
`terminals.
`Therefore, in accordance with the ordinary and
`customary meaning of the claim, and consistent with the
`specification (Ex. 1001, 2:19−24) for purposes of this Decision,
`we construe “input filter means” as an electronic circuit or
`device that selectively transmits or rejects signals in one or
`more intervals or frequencies.
`
`Id. at 6−8. The dispute during the trial phase focuses on whether an “input
`filter means” requires that the device operate “based on frequency.” That is,
`Patent Owner contends that the “only way a circuit can be ‘selective’ is to
`behave differently for signals in different intervals of frequencies.” PO
`Resp. 51. Additionally, Patent Owner argues that an “input filter is
`necessarily frequency dependent.” Id. Patent Owner supports these
`statements by citing generally to an excerpt of a book titled “Fundamentals
`of Power Electronics,” dated 2001, and filed as Exhibit 2003. The Patent
`Owner response, however, does not explain how the excerpt, focused on
`input filter design, supports these statements. Id. To be sure, the first page
`of book’s excerpt states that “[i]t is nearly always required that a filter be
`added at the power input of a switching converter,” and we assume that this
`is relevant to the claims-at-issue via the claimed “converter,” which
`“comprises a switched mode power supply.” Ex. 2003, 3; Ex. 1001,
`
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`IPR2015-01287
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`5:22−23. The book’s excerpts also point out that an input filter allows
`compliance with regulations that limit conducted electromagnetic
`interference or EMI, and it does so by attenuating switching harmonics. Ex.
`2003, 3. A filter suitable for attenuating harmonics is described as an L-C
`low-pass filter. Id. at 4. According to the explanation in the cited book, the
`current harmonics that have certain amplitudes are attenuated, and each
`harmonic is associated with a specific angular frequency. Id.
`Patent Owner also provides testimony from Dr. Regan Zane, who
`opines that an “input filter means” is a frequency filter or is frequency
`dependent. Ex. 2013 ¶¶ 144–45. Dr. Zane relies on the book excerpt quoted
`above. Dr. Zane also describes the basic operation of a low-pass filter and
`states that the role of an “input filter transmits the D.C. signals and
`attenuates the current ripple harmonics from the switching function.” Id.
`¶¶ 145−46. Dr. Zane takes issue with the Board’s interpretation of an input
`filter as not being limited to suppressing voltage surges based on frequency
`because our construction may encompass a filter that operates on one or
`more intervals of frequencies. Id. ¶ 147.
`Finally, Patent Owner alleges that the parties agree that an ‘“input
`filter means’ must be frequency dependent.” PO Resp. 50. Further, Patent
`Owner asserts that Dr. Robert N. Tingler, Petitioner’s declarant, agreed that
`an input filter means “transmits or rejects signals depending on what their
`frequencies are.” PO Resp. 51 (citing Ex. 2015, 36:5−10). Petitioner argues
`that it does not agree with Patent Owner’s position, and that Patent Owner
`mischaracterizes Mr. Tingler’s testimony. Reply 21−22.
`
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`IPR2015-01287
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`
`At the heart of this dispute is the simple fact that the specification of
`the ’988 patent does not describe any embodiment or operation of the input
`filter means. At most, the ’988 patent specification states that the input filter
`may include a rectifier. Ex. 1001, 2:21−24. But neither the specification nor
`the claims describes the “input filter means” in any appreciable detail
`sufficient to discern which signals it selectively transmits or rejects and how
`it does so. The omission is not fatal, for the dictionary definitions we relied
`on to construe the term in our Decision on Institution were sufficient to
`discern that a person of ordinary skill in the art ascribed structure to the
`term. Dec. 7−8. The dispute centers on whether the dictionary definitions
`accurately reflect the understanding of a person of ordinary skill in the art.
`Given the dearth of intrinsic evidence on this issue, we evaluate the extrinsic
`evidence presented by the parties, and discussed above, to discern the role of
`frequency in the construction of “input filter means.” See Phillips v. AWH
`Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (“[E]xtrinsic evidence in the
`form of expert testimony can be useful to a court for a variety of purposes,
`such as to provide background on the technology at issue, to explain how an
`invention works, to ensure that the court’s understanding of the technical
`aspects of the patent is consistent with that of a person of skill in the art, or
`to establish that a particular term in the patent or the prior art has a particular
`meaning in the pertinent field.”).
`Upon review of Dr. Zane’s testimony and the statements in the book
`excerpt described above, we find that it was known to a person of ordinary
`skill in the art to use an EMI filter as an input filter in switch-mode power
`supply applications, like the one claimed. In fact, the book excerpt states
`
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`that it is “nearly always required.” The record also shows that a low-pass
`filter is suitable for the application as an EMI filter because it attenuates
`harmonics of certain amplitudes, and each harmonic is characterized by a
`certain frequency. See Ex. 2003, 3−4. The input filter, thus, would be
`configured to select which harmonics to reject, which are identified by phase
`angle or frequency. Id. Dr. Zane also opines that the input filter “‘rejects’
`the undesired higher frequency signal content.” Ex. 2013 ¶ 145. Therefore,
`Patent Owner and its declarant provide extrinsic evidence that tends to show
`“input filter means” that transmit or reject signals based on frequency.
`Petitioner, on the other hand, argues that an input filter is not required
`to transmit or reject signals based on frequency. Reply 21. Petitioner states
`that an input filter merely must select which signals to transmit and which
`signals to reject, but does not require “a selection of frequency intervals on
`which to operate.” Id. Petitioner also proffers cross-examination testimony
`of Mr. Tingler explaining that an input filter would have different structures
`depending on the function. Ex. 2015, 54:3−55:3. For example, if trying to
`attenuate a certain band of frequencies from going out onto the AC mains,
`that would be one design, but if filtering out incoming transients and their
`effects or noise, then the input filter would be so designed. Id. We note,
`however, that Mr. Tingler’s explanations are provided without reference to
`the context of the ’988 patent. That is, what constitutes an input filter,
`indeed, may be different depending on the application. But in the context of
`the claimed device, we are not persuaded that an “input filter means” could
`be any structure that simply rejects unwanted signals.
`
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`
`Having reviewed the arguments and evidence, as summarized above,
`we credit Dr. Zane’s testimony on this issue. We also rely on the book
`excerpt discussed above for its disclosure about input filter design in the
`context of a switched mode power supply. Specifically, we find that in the
`context of the ’988 patent, an input filter transmits or rejects certain signals,
`where those signals are selected because they are undesirable harmonics.
`We also find that those harmonics are identified by frequency. Accordingly,
`the “input filter means” is properly construed as an electronic circuit or
`device that selectively transmits or rejects signals in one or more intervals of
`frequencies. More particularly, whether a signal is rejected or transmitted is
`a function of the frequency of that signal.
`2. “output means”
`In our Decision on Institution we determined that “output means” is
`not a means-plus-function term. We found persuasive Patent Owner’s
`arguments that the term “output means” does not recite a function and that
`“output” recites sufficient structure. Prelim. Resp. 19−20 (arguing that
`“output” means output connection or connections of a circuit). In particular,
`we found that “output” refers to the signal delivered out of the circuit or
`device. We stated,
`The claim supports this interpretation when it recites two
`“output means:” “output means of the input filter means” and
`“output means of said converter.” Regarding the “input filter
`means,” the claim requires the converter to couple to the input
`filter’s output, which is described in the specification as “a
`positive pole + and a negative pole – .” Ex. 1001, 2:60−62,
`3:3−6, 3:20−21. Regarding the “converter,” the claim requires
`that output terminals of the circuit arrangement couple to the
`output of the converter. The word “output” is a noun that takes
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`its name from the function it performs: delivery of an output
`signal or data. See Definition output, WILEY ELECTRICAL AND
`ELECTRONICS ENGINEERING DICTIONARY, 541 (Steven M.
`Kaplan, 2004) (Ex. 3001) (defining output (2) as “[t]he energy,
`voltage, current, or other signal delivered or produced by a
`component, circuit device, piece of equipment, system, or
`process. For example, a voltage output taken from an electronic
`device. Also, to deliver or provide such a signal.”).
`We do not agree with Patent Owner that “output means”
`are an output connection because the claim recites specific
`connection terminals and output terminals as providing
`connection (“connection terminals for connecting” and “output
`terminals . . . for connecting”). Furthermore, the dictionary
`definition of output referred to above defines the noun as either
`the signal that is provided by the circuit or the terminals from
`which such a signal is delivered. Id. (see definition number 4,
`“[t]he terminals of a component, circuit, device, or piece of
`equipment from which an output (2) is delivered. Also called
`output terminals.”). The claim distinctly recites terminals as
`output terminals, i.e., output terminals coupled to output means.
`Construing the “output means” as an output connection would
`make redundant the “output terminals,” which are recited
`precisely for the purpose of connecting the circuit to the
`semiconductor light source. Therefore, in accordance with the
`ordinary and customary meaning of the term “output,” the claim
`language, and in the context of the specification, we construe
`“output means” as the signal that is delivered.
`
`Dec. 8−9. Patent Owner’s Response maintains the position that the parties
`agree that “output means” should be construed as “terminals or wires at the
`output.” PO Resp. 4−5. Patent Owner also argues that the Board’s
`construction at institution is at odds with our finding that “output” recites
`sufficient structure. Id. at 5. Notwithstanding the argument presented by
`Patent Owner, we see no reason to revisit this construction. First, there is no
`material difference between “output terminals” and “terminals at the
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`output.” Again we rely on the claim language, which specifically uses
`different words for “outputs,” “output terminals,” and “output means.” Yet
`these would all refer to the same structure if we followed the parties’
`proposal. Neither party presents evidence that these structures are different.6
`And further, if the “output means” were terminals, the claim would be
`inconsistent with Figure 1, which does not show the converter (III) coupled
`to terminals at the output of the input filter means (I), for there is an
`intervening self-regulating current conducting network (II) coupled
`therebetween. Second, neither party has presented argument that the scope
`of this term is in actual dispute for purposes of determining its applicability
`to the prior art of record. Vivid Techs., Inc. v. Am. Science & Eng’g, Inc.,
`200 F.3d 795, 803, (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”). Accordingly, we maintain that “output means,” consistent
`with the broadest reasonable interpretation in the context of the
`specification, is the signal that is delivered.
`3. “means [f]or deactivating”
`During institution, we construed this term as a means-plus-function
`term. Dec. 10−12. We determined that the means for deactivating is a
`
`
`
` 6
`
` Patent Owner in passing refers to the prosecution history of the ’988
`patent, but does not explain the relevance of the cited amendment or how it
`sheds light on the meaning of “output means.” Further, Applicants
`statement that amendments were made to include descriptive language
`connecting the recited components does not explain what are “output
`means.” Ex. 1002, Paper 11, Amendment (7/6/1999), 10.
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`transistor and a voltage divider that deactivate the self-regulating current
`conducting network when the converter is switched on, and where the
`“means for deactivating” is separate and distinct from the “self-regulating
`current-conducting network.” Id. Neither party has challenged the Board’s
`determination, and we see no reason to change it. See, e.g., PO Resp. 5−6.
`Accordingly, we adopt the above stated construction of means for
`deactivating.
`
`4. Other Claim Terms
`Petitioner proposed a construction for the term “leakage current” in
`the Petition. Patent Owner maintained in its Preliminary Response that the
`term did not require construction in order for the Board to resolve the
`parties’ dispute. Prelim. Resp. 20. We agreed with Patent Owner and did
`not construe the term. In its Response, Patent Owner provides a
`construction for the term “leakage current” but does not offer any
`explanation or reasoning for that construction. Furthermore, we do not see
`any dispute that necessitates a determination of the scope of this term.
`Accordingly, we do not construe “leakage current” or any other claim term.
`
`B. SCOPE OF PETITIONER’S REPLY
`
`During trial, Patent Owner argued that certain content in Petitioner’s
`
`Reply is impermissible argument because it is outside the scope of a proper
`Reply under 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments
`raised in the corresponding opposition, patent owner preliminary response,
`or patent owner response.”). Patent Owner was allowed to file a notice
`indicating the specific portions in the Reply that it contends exceed the
`proper scope. Paper 47. Petitioner was allowed to respond by pointing out
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`to what statements or content in the Patent Owner Response it objected.
`Paper 53.
`
`Our Trial Practice Guide points out that,
`[w]hile replies can help crystalize issues for decision, a reply
`that raises a new issue or belatedly presents evidence will not
`be considered and may be returned. The Board will not attempt
`to sort proper from improper portions of the reply. Examples of
`indications that a new issue has been raised in a reply include
`new evidence necessary to make out a prima facie case for the
`patentability or unpatentability of an original or proposed
`substitute claim, and new evidence that could have been
`presented in a prior filing.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14,
`2012). With the above guidelines in mind, we are not persuaded that the
`excerpts of the Reply identified by Patent Owner should not be considered in
`deciding this matter.
`
`First, Patent Owner points to sections in the Reply that delve into the
`explanation of Petitioner’s contention regarding design choice and the
`motivations to combine. See Paper 47, 2 (identifying Section II.B). We do
`not find either the materials or the evidence presented to be outside the scope
`of a proper reply. These sections do not include evidence necessary to make
`a case of unpatentability as the contentions thereby expanded upon were
`presented in the Petition and accompanying filings. Nor do we find that this
`evidence could have been presented earlier given that they are responsive to
`Patent Owner’s arguments that the alleged motivations are deficient or
`improperly asserted. See PO Resp. 12−14.
`
`Second, Patent Owner points to portions of the Declaration of Mr.
`Tingler as new evidence that should be stricken from the record. Paper 47,
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`2. For the same reasons as stated above, we do not find the Declaration as
`espousing evidence that could have been presented in a prior filing. The
`evidence is responsive to arguments made by Patent Owner and evidence
`presented regarding the alleged inoperability of Hochstein. The evidence is
`also responsive to arguments that Philips reduced to practice the ’988 patent
`prior to the critical date of Perry. Neither of these contentions could have
`been anticipated prior to filing the Petition. Nor do we find that the objected
`to portions of Mr. Tingler’s Declaration are necessary to make out a case of
`unpatentability.
`
`Accordingly, we consider hereunder the Reply and the supporting
`Declaration in full.
`
`C. PRINCIPLES OF LAW
`
`A claim is anticipated, and, thus, unpatentable, if a single prior art
`
`reference discloses each and every element of the claimed invention. See
`Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
`Additionally, a claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`IPR2015-01287
`Patent 6,013,988
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`D. THE LEVEL OF SKILL IN THE ART
`
`In determining the level of ordinary skill in the art at the time of the
`
`invention, we note that various factors may be considered, including the
`“type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986)).
`
`Petitioner asserts, through its declarant, Mr. Robert Tingler, that a
`person of ordinary skill in the art would have had at least,
`(i) a bachelor degree in electrical engineering and/or physics
`with at least 3 years of industrial experience designing power
`supply circuitry, or (ii) the equivalent relevant industrial
`experience, including circuit design experience, for a person
`lacking a formal degree, which would be about 3-5 years in the
`industry, or (iii) a person of substantially higher graduate
`education in optoelectronics, such as a Masters or a Doctoral
`degree.
`
`Ex. 1006 ¶ 15. Mr. Tingler also opines that a person of ordinary skill in the
`art would “understand legacy lighting circuits and circuit requirements such
`as for incandescent lighting control and the corresponding lighting circuitry
`and requirements for powering LED arrays for the application areas
`generally covered by the patents at issue,” and would “be familiar with
`switch mode power supply concepts and their common embodiments at the
`time.” Id.
`
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`Patent Owner, through its declarant, Dr. Regan Zane, disagrees with
`Mr. Tingler that the proffered level of skill is “lower than the level required
`to be aware of all pertinent art and think along conventional wisdom in the
`art.” Ex. 2013 ¶ 24. Dr. Zane opines that a person of ordinary skill in the art
`would have “at least a Bachelor’s degree in Electrical Engineering or related
`field and at least five years of training or additional work experience in the
`area of power electronics or a related field. More hands-on and design
`experience would compensate for less formal education, and vice versa.” Id.
`¶ 23. Notwithstanding the disagreement, Dr. Zane testified that regardless of
`which level or ordinary skill in the art was applied, his opinions would not
`change. Ex. 1024, 18:16−19:6.
`
`We credit the testimony of Mr. Tingler regarding the level of a person
`of ordinary skill in the art. First, the ’988 patent is directed to circuit
`arrangement for operating a semiconductor light source. Ex. 1001, 1:10−12.
`The ’988 patent also describes that “it is necessary for the circuit
`arrangement to provide retrofit possibilities in respect [to] existing signalling
`systems.” Id. at 1:25−31. Furthermore, the patent alludes to the incorrect
`outcome of a status test because of leakage current in the non-conducting
`state of a solid state relay in the control unit that controls the signaling light.
`Id. at 1:32−41. Therefore, we find that the ’988 patent specification and the
`problem and solution addressed by the claimed circuit arrangement is based
`on an understanding of legacy lighting circuits and its controls in connection
`with powering of LED light sources.
`
`The prior art of record also reflects the level of a person of ordinary
`skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
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`2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`For example, the references are directed to circuit arrangements in power
`supplies for LED arrays. Ex. 1003, [54], Abstract; Ex. 1004, [54], Abstract;
`see also Ex. 1005, [54], 1:6−10 (addressing power supply for a traffic or
`pedestrian crossing signal for “attenuating the effects of leakage currents
`when a particular signal is switched to its off state”). The references also
`refer to the application of the power supplies in traffic signals and the
`problems arising from the retrofitting of these traffic signals with LED
`signal lights. See, e.g., Ex. 1003,