Filed on behalf of Wangs Alliance Corporation
`By: David C. Radulescu, Ph.D., Reg. No. 36,250
`Angela Chao, Reg. No. 71,991
`RADULESCU LLP
`Empire State Building
`350 Fifth Avenue, Suite 6910
`New York, NY 10118
`Tel: 646-502-5950
`david@radulescullp.com
`angela@radulescullp.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`WANGS ALLIANCE CORPORATION D/B/A WAC LIGHTING CO.
`Petitioner
`
`v.
`
`Patent Owner of
`U.S. Patent No. 7,038,399 to Ihor A. Lys, Kevin J. Dowling, and
`Frederick M. Morgan
`_____________________
`
`Inter Partes Review Case No. Unassigned
`_____________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,038,399
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Page 1 of 65
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`PHILIPS EXHIBIT 2001
`WAC v. PHILIPS
`IPR2016-01453
`
`

`
`
`
` 
`I.
`
`II.
`
`III.
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`MANDATORY NOTICES AND FEES ........................................................ 1
`
`CERTIFICATION OF GROUNDS FOR STANDING ................................. 2
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................. 2
`
`A. Prior Art Patents and Printed Publications ......................................... 3
`
`B. Grounds for Challenge ....................................................................... 3
`
`IV.
`
`CLAIM CONSTRUCTION ........................................................................... 4
`
`A. “Duty Cycle” ...................................................................................... 4
`
`V.
`
`OVERVIEW OF THE ‘399 Patent ................................................................ 5
`
`A. Background ......................................................................................... 5
`
`B. Summary of Alleged Invention of the ’399 Patent ............................ 6
`
`C. Prosecution History ............................................................................ 8
`
`VI.
`
`OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES ................ 9
`
`A. Summary of the Prior Art ................................................................... 9
`
`B. References Are Not Cumulative ......................................................... 9
`
`C. Overview of Hochstein (Ex. 1003)................................................... 10
`
`D. Overview of Bogdan (Ex. 1004) ...................................................... 13
`
`E. Overview of Faulk (Ex. 1005) .......................................................... 15
`
`VII.
`
`SPECIFIC GROUNDS FOR PETITION .................................................... 16
`
`A. Ground 1: Claims 7, 8, 17, 28, and 34 are anticipated by
`Hochstein .......................................................................................... 16
`
`1. Independent Claim 7 .................................................................. 16
`
`i
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`Page 2 of 65
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`2. Dependent Claim 8 .................................................................... 25
`
`3. Independent Claim 17 ................................................................ 26
`
`4. Dependent Claim 28 .................................................................. 28
`
`5. Independent Claim 34 ................................................................ 30
`
`B. Ground 2: Claims 7, 8, 17, 28, and 34 are obvious over Bogdan
`in view of Hochstein. ........................................................................ 32
`
`1. Independent Claim 7 .................................................................. 32
`
`2. Dependent Claim 8 .................................................................... 46
`
`3. Independent Claim 17 ................................................................ 46
`
`4. Dependent Claim 28 .................................................................. 49
`
`5. Independent Claim 34 ................................................................ 50
`
`C. Ground 3: Claims 7, 8, 17, 18, 28, and 34 are obvious over
`Hochstein in view of Faulk. ............................................................. 52
`
`1. Dependent Claim 18 .................................................................. 55
`
`VIII. CONCLUSION ............................................................................................. 59
`
`
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`
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`ii
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`Page 3 of 65
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`

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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`Cases
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ............................................................................ 4
`
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ............................................................................ 4
`
`Rules/Statutes
`
`35 U.S.C. 102 ................................................................................................... 3, 9, 13
`
`35 U.S.C. §§ 311-319 .............................................................................................. 59
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`37 C.F.R. § 42.1-.80 ..........................................................................................passim
`
`37 C.F.R. § 42.100-.123 ....................................................................................passim
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ......................................................................... 4
`
`iii
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`Page 4 of 65
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`

`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`
`I. MANDATORY NOTICES AND FEES
`A. Real Parties-in-Interest
`
`Wangs Alliance Corporation d/b/a WAC Lighting Co. is the real party-in-
`
`interest.
`
`B. Related Matters
`
`The following matter may affect or be affected by a decision herein:
`
`Koninklijke Philips N.V. et al. v. Wangs Alliance Corporation, Case No. 14-cv-
`
`12298-DJC (D. Mass.). Additionally, the Patent Owner is suing the Petitioner
`
`and/or other parties under one or more of U.S. Patent Nos. 6,013,988; 6,147,458;
`
`6,586,890; 6,250,774; 6,561,690; 6,788,011; 7,352,138; 6,094,014; and 7,262,559,
`
`all of which generally relate to light emitting diodes (“LEDs”). On the same week
`
`as this petition, the Petitioner is also filing additional petitions for Inter Partes
`
`Review for six other patents asserted by the Patent Owner against the Petitioner:
`
`U.S. Patent Nos. 6,013,988; 6,147,458; 6,586,890; 6,250,774; 6,561,690; and
`
`7,352,138.
`
`C. Counsel
`
`Lead counsel in this case is David Radulescu, Ph.D. (PTO Reg. No. 36,250);
`
`backup counsel is Angela Chao (PTO Reg. No. 71,991). Powers of attorney
`
`accompany this Petition.
`
`
`
`1
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`Page 5 of 65
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`D.
`
`Service Information
`
`Email: david@radulescullp.com; angelaradulescullp.com
`
`Address: Radulescu LLP, The Empire State Building, 350 Fifth Avenue,
`
`Suite 6910, New York, NY 10118
`
`Telephone: (646) 502-5950
`
`Facsimile: (646) 502-5959
`
`Please direct all correspondence to lead counsel at the above address. The
`
`Petitioner consents to email service at the above addresses.
`
`E.
`
`Payment
`
`Under 37 C.F.R § 42.103(a), the Office is authorized to charge the fee set
`
`forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 506352 as well as any
`
`additional fees that might be due in connection with this Petition.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`The Petitioner certifies pursuant to 37 C.F.R § 42.104(a) that the patent for
`
`which review is sought is available for inter partes review and that the Petitioner
`
`is not barred or estopped from requesting an inter partes review challenging the
`
`patent claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), the Petitioner challenges
`
`claims 7, 8, 17, 18, 28, and 34 of U.S. Patent No. 7,038,399 (the “’399 Patent”) (Ex.
`
`1001).
`
`
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`2
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`Page 6 of 65
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`
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`A.
`Prior Art Patents and Printed Publications
`The Petitioner relies upon the patents and printed publications listed in the
`
`Table of Exhibits, including:
`
`1.
`
`U.S. Patent No. 5,661,645 to Hochstein, (“Hochstein” (Ex. 1003)),
`
`which is prior art under § 102(b).
`
`2.
`
`U.S. Patent No. 6,225,759 (“Bogdan” (Ex. 1004)), which is prior art at
`
`least under § 102(e) and/or § 102(b).
`
`3.
`
`U.S. Patent No. 5,818,705 (“Faulk” (Ex. 1005)), which is prior art
`
`under § 102(b).
`
`B. Grounds for Challenge
`
`The Petitioner requests cancellation of claims 7, 8, 17, 18, 28, and 34 of the
`
`’399 Patent (“challenged claims”) as unpatentable under 35 U.S.C. §§ 102 and/or
`
`103. This Petition, supported by the declaration of Robert Neal Tingler (“Tingler
`
`Decl.” (Ex. 1006)), filed herewith, demonstrates that there is a reasonable likelihood
`
`that the Petitioner will prevail with respect to at least one challenged claim and that
`
`each challenged claim is not patentable. See 35 U.S.C. § 314(a).
`
`Ground 1: Claims 7, 8, 17, 28, and 34 are anticipated by Hochstein.
`
`Ground 2: Claims 7, 8, 17, 28, and 34 are obvious over Bogdan in view of
`Hochstein.
`
`Ground 3: Claims 7, 8, 17, 18, 28, and 34 are obvious over Hochstein in
`view of Faulk.
`
`
`
`3
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`
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`Page 7 of 65
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`

`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`
`IV. CLAIM CONSTRUCTION
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification in which it appears.” 37 C.F.R. § 42.100(b). The
`
`broadest reasonable construction is the broadest reasonable interpretation of the
`
`claim language. See In re Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984).
`
`Any claim term which lacks a definition in the specification is therefore also given a
`
`broad interpretation. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
`
`Cir. 2007).1 Should the Patent Owner contend that the claims have a construction
`
`different from their broadest reasonable construction in order to avoid the prior art,
`
`the appropriate course is for the Patent Owner to seek to amend the claims to
`
`expressly correspond to its contentions in this proceeding. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012).
`
`A.
`“Duty Cycle”
`Duty cycle means “the ratio of pulse duration to pulse period, expressed as a
`
`percentage.” Wiley Electrical and Electronics Engineering Dictionary (Steven M.
`
`
`1 Petitioner adopts the “broadest reasonable construction” standard as required by
`
`the governing regulations. 37 C.F.R. § 42.100(b). Petitioner reserves the right to
`
`pursue different constructions in a district court, where a different standard is
`
`applicable.
`
`
`
`4
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`Page 8 of 65
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`Kaplan, 2004) (definition of “duty cycle”) (Ex. 1006); see also McGraw-Hill
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`Dictionary of Scientific and Technical Terms (4th Ed.) (1989) (definition of “duty
`
`cycle”) (“2. The ratio of working time to total time for an intermittently operating
`
`device, usually expressed as a percent”); ’399 Patent, 13:13-20 (“In one
`
`implementation, the dimmer circuit may output an A.C. signal 500 having a duty
`
`cycle of as low as 50% ‘on’ (i.e., conducting) that provides sufficient power to
`
`cause light to be generated by the LED-based light source 104. In yet another
`
`implementation, the dimmer circuit may provide an A.C. signal 500 having a duty
`
`cycle of as low as 25% or less ‘on’ that provides sufficient power to the light source
`
`104.”) (Ex. 1001).
`
`V. OVERVIEW OF THE ‘399 PATENT
`A.
` Background
`The ’399 patent is purportedly directed to solving certain problems associated
`
`with powering newer lighting sources, such as light emitting diode (LED) based
`
`sources, that are deployed in conventional A.C. power circuits which traditionally
`
`provided power to older lighting sources such as incandescent light bulbs. ’399
`
`Patent, 1:25-29; 2:50-56 (Ex. 1001). In particular, the ’399 patent addresses the
`
`problem of using devices such as conventional A.C. dimmer switches to control
`
`LED lights. Id. 2:57-64. Although conventional dimmer switches can control
`
`conventional incandescent lights without any additional circuitry, LEDs are
`
`5
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`Page 9 of 65
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`generally are incompatible with conventional A.C. dimmer switches. Id. 1:53-63;
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`9:4-13. As a result, LED light sources cannot easily be substituted for conventional
`
`light sources in lighting systems using conventional A.C. dimmer switches. Id.
`
`9:13-16.
`
`Summary of Alleged Invention of the ’399 Patent
`
`B.
`The ’399 patent purports to relate to a circuit arrangement and method for
`
`providing power to LED-based light sources via an alternating current (AC) power
`
`source and for facilitating the use of AC power circuits that provide signals “other
`
`than standard line voltages.” ’399 Patent at Abstract (Ex. 1001); Tingler Decl. ¶ 29
`
`(Ex. 1006). An AC dimmer circuit may provide such a signal “other than a standard
`
`line voltage,” which signal may be used to control one or parameters of light, such
`
`as its intensity or color. ’399 Patent at Abstract (Ex. 1001); Tingler Decl. ¶ 29 (Ex.
`
`1006). Figure 1 of the ’399 patent shows examples of such signals, where signal
`
`302 represents a standard AC line voltage and signals 307 and 309 represent
`
`dimmer output signals:
`
`6
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`Page 10 of 65
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`
`
`’399 Patent at Figure 1 (Ex. 1001); Tingler Decl. ¶ 29 (Ex. 1006). The dimmer
`
`circuit adjusts the amplitude (307) of signal 308 and the duty cycle (306) of signal
`
`309. ’399 Patent, 2:17-29 (Ex. 1001); Tingler Decl. ¶ 29 (Ex. 1006).
`
`The signals in Figure 1 cannot be directly applied to an LED light source.
`
`Thus, the ’399 patent discloses the use of a controller to receive an AC signal and
`
`provide power to an LED light source. ’399 Patent, 12:50-54, 14:6-9 (Ex. 1001);
`
`Tingler Decl. ¶ 30 (Ex. 1006). The controller includes a rectifier to convert an AC
`
`input to DC output, a low pass filter to filter out high frequencies such as noise on
`
`the input line, and a DC converter which converts a source of direct current from
`
`one voltage level to another and provides a stable DC voltage as a power supply for
`
`the LEDs. ’399 Patent, 12:61-13:8 (Ex. 1001); Tingler Decl. ¶ 30 (Ex. 1006).
`
`Additionally, the controller includes an adjustment circuit that conditions the signal
`
`7
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`Page 11 of 65
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`output from the DC converter, providing a variable drive signal to the LEDs based
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`on variations in the input AC signal from the dimmer circuit. ’399 Patent, 14:11-18
`
`(Ex. 1001); Tingler Decl. ¶ 30 (Ex. 1006). This arrangement is shown in Figure 5:
`
`’399 Patent, Figure 5 (Ex. 1001). The ’399 patent discloses pulse width modulation
`
`(PWM), among other power regulation techniques, for conditioning the signal. ’399
`
`
`
`Patent, 10:43-50 (Ex. 1001).
`
`C.
`
`Prosecution History
`
`8
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`Page 12 of 65
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`
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`The ’399 patent claims priority to two provisional applications: No.
`
`60/391,627, filed on June 36, 2002, and No. 60/379,079, filed on May 9 2002.
`
`The ’399 patent also claims priority (continuation in part) to U.S. Application No.
`
`09/805,368, and U.S. Application No. 09/805,590, both filed on March 13, 2001.
`
`During the prosecution of the ’399 patent, original claims 1-2, and 33-34 were
`
`rejected as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 5,430,356 to
`
`Ference et al.; claims 1-2, 9, 11-15, 19, 33-34, 39, 53, and 64 were rejected under 35
`
`U.S.C. 102(e) as anticipated by U.S. Patent No. 6,495,964, to Muthu et al. PH
`
`7/10/05 Office Action (Ex. 1002). After Patent Owner withdrew these claims and
`
`amended some of the others, the remaining claims were allowed. PH 11/18/05
`
`Amendment (Ex. 1002); PH 2/6/06 Office Action (Ex. 1002). None of the prior art
`
`relied upon herein was of record during the prosecution of the ’399 Patent.
`
`VI. OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES
`A.
`Summary of the Prior Art
`As shown below, there is nothing new or non-obvious in the Patent Owner’s
`
`claims. The claimed methods and apparatus for controlling the power of an LED
`
`light installed in an AC power circuit was well known.
`
`B. References Are Not Cumulative
`Hochstein, Bogdan, and Faulk should not be considered cumulative because
`
`their focus and type of disclosure are different. Hochstein and Bogdan disclose the
`
`9
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`Page 13 of 65
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`
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`central concept behind the ’399 patent – using a controller to control the power of a
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`light source deployed in an AC power circuit – but are nevertheless different. In
`
`particular, Hochstein is directed to supplying regulated voltage DC electrical power
`
`to an LED array using a filter to ensure that interference does not feed back into the
`
`power lines and cause problems to other circuitry on the line. Bogdan discloses a
`
`dimmer circuit for controlling an electrical lighting device having an input AC
`
`waveform and an encoding circuit, and a decoder and controller for receiving the
`
`dimmer signal and powering the light source. Bogdan does not explicitly disclose
`
`powering an LED light source per se. Faulk is generally directed to a space-
`
`efficient AC power supply adapter that converts AC to DC power using a full wave
`
`diode bridge rectifier and an electromagnetic interference (EMI) filter. Like
`
`Bogdan, Faulk does not explicitly disclose powering an LED light source.
`
`Importantly, a most appropriate prior art reference may not be apparent until it is
`
`known if and how the Patent Owner intends to respond, whether the Patent Owner
`
`will seek to amend claims, and whether the Patent Owner will argue for independent
`
`patentability of dependent claims, and which ones.
`
`C. Overview of Hochstein (Ex. 1003)
`U.S. Patent No. 5,661,645 to Hochstein, entitled “Power Supply for Light
`
`Emitting Diode Array,” filed on June 27, 1996, and issued on August 26, 1997, is a
`
`prior art reference to the ’399 patent under 35 U.S.C. § 102(b). (The ’399 patent’s
`
`10
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`Page 14 of 65
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`
`
`earliest claim of priority is a continuation-in-part claim to a pair of March 13, 2001,
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`applications.) Hochstein was not cited during the prosecution of the ’399 patent.
`
`Like the ’399 patent, Hochstein discloses a circuit that supplies a regulated DC
`
`voltage to an LED array in an AC power system.
`
`Hochstein “relates generally to an apparatus for generating power to a light
`
`emitting diode array and, in particular, to a power supply for operating light
`
`emitting diode array traffic signals.” Hochstein, 1:5-8 (Ex. 1003); Tingler Decl. ¶ 39
`
`(Ex. 1006). Hochstein addresses the issue of retrofitting conventional traffic signals
`
`with LED lighting sources and improving the power factor (the ratio of real power
`
`to real power plus reactive power) of the LED loads. Hochstein, 1:62-2:42 (Ex.
`
`1003).
`
`More particularly, Hochstein discloses, “an apparatus for supplying regulated
`
`voltage [DC] electrical power to an LED array,” where the apparatus includes:
`
` (1) “a rectifier having and an output, the rectifier being responsive to [AC]
`
`power at the input for generating rectified [DC] power at the output”;
`
`(2) “a power factor correction converter having an input connected to the
`
`rectifier output and an output, the power factor correction converter being
`
`responsive to the rectified [DC] power at the power factor correction converter input
`
`for generating regulated voltage”;
`
`(3) “[DC] power at the power factor correction output”; and
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`11
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`(4) “an LED array having an input connected to the power factor correction
`
`converter output for receiving the [DC] power to illuminate the LED array.”
`
`Hochstein at 3:18-31 (Ex. 1003); Tingler Decl. ¶ 39 (Ex. 1006). In addition,
`
`Hochstein discloses that, “the power factor correction converter can be a power
`
`factor correcting and voltage regulating buck/boost switchmode converter.
`
`Hochstein, 3:31-33 (Ex. 1003); Tingler Decl. ¶ 39 (Ex. 1006).
`
`Hochstein’s apparatus additionally employs an electromagnetic interference
`
`(E.M.I.) filter that “keeps conducted interference from feeding back into the power
`
`lines where it might cause problems to other circuitry on the line.” Hochstein, 5:31-
`
`36 (Ex. 1003); Tingler Decl. ¶ 39 (Ex. 1006).
`
`Hochstein’s apparatus is shown in his Figure 5:
`
`Hochstein, Figure 5 (Ex. 1003); Tingler Decl. ¶ 39 (Ex. 1006).
`
`
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`12
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`In reference to Figure 5, Hochstein further discloses that “[a] negative
`
`polarity output of the converter 38 is connected by a negative polarity converter
`
`output line 44 to the second input line 20 of the LED array 12 through an optional
`
`pulse width modulated (P.W.M.) modulator 46.” Hochstein, 5:61-65 (Ex. 1003);
`
`Hochstein at 5:31-36 (Ex. 1003); Tingler Decl. ¶ 40 (Ex. 1006). The output voltage
`
`from the buck/boost switchmode converter may be fed through the PWM
`
`modulator. Hochstein, 5:66-6:1 (Ex. 1003); Tingler Decl. ¶ 40 (Ex. 1006). The
`
`switchmode power converter in Hochstein has an “inherent pulse modulating
`
`nature” that is used “to provide voltage regulation to the LED array.” Hochstein,
`
`6:17-30 (Ex. 1003); Tingler Decl. ¶ 40 (Ex. 1006).
`
`D. Overview of Bogdan (Ex. 1004)
`U.S. Patent No. 6,225,759 to Bogdan, entitled “Method and Apparatus for
`
`Controlling Lights,” filed on March 11, 1999, and issued on May 1, 2001, is a prior
`
`art reference to the ’399 patent under at least 35 U.S.C. § 102(e) or § 102(b).
`
`(The ’399 patent’s earliest claim of priority is a continuation-in-part claim to a pair
`
`of March 13, 2001, applications.) If Patent Owner’s claim of priority is successful,
`
`then Bogdan is prior art under § 102(e), if not, Bogdan is prior art under § 102(b)).
`
`Bogdan was not cited during the prosecution of the ’399 patent. Bogdan discloses
`
`dimmer and lighting control circuitry to solve similar problems for controlling gas
`
`13
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`Page 17 of 65
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`discharge lamp ballasts as those addressed in the ’399 patent for controlling LED
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`light sources.
`
`Bogdan’s apparatus includes “a dimmer circuit for controlling an electrical
`
`lighting device having a load input” which further includes “a power input terminal”
`
`with “an input AC waveform” and “an encoding circuit . . . for selectively wave
`
`chopping the half cycles of said input AC waveform . . . .” Bogdan, 2:42-51 (Ex.
`
`1004); Tingler Decl. ¶ 87 (Ex. 1006). “The transmitted AC power waveform is
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`used to power the electrical lighting device by connection to a decoder. The
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`decoder decodes the transmitted AC power waveform by generating a voltage pulse
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`waveform having pulse widths corresponding to the duration of the zero crossing
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`step delays . . . . A load controller receives the decoder output and appropriately
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`controls the operation of the electrical lighting device.” Bogdan at Abstract (Ex.
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`1004); Tingler Decl. ¶ 87 (Ex. 1006). Bogdan’s solution is in Figure 1:
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`Bogdan, Figure 1(Ex. 1004); Tingler Decl. ¶ 87 (Ex. 1006).
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`14
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`
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`Although Bogdan does not explicitly disclose an LED as the electrical
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`lighting device, as discussed below, it would have been obvious to a person of
`
`ordinary skill in the art at the time of the ’399 invention to modify the apparatus of
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`Bogdan, in view of Hochstein, to utilize LEDs as the lighting device.
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`E. Overview of Faulk (Ex. 1005)
`U.S. Patent No. 5,818,705 to Faulk, entitled “ Portable Computer Having
`
`Built-In AC Adapter Incorporating A Space Efficient Electromagnetic Interference
`
`Filter,” filed on March 16, 1997, and issued on October 6, 1998, is a prior art
`
`reference to the ’399 patent under 35 U.S.C. § 102(b). (The ’399 patent’s earliest
`
`claim of priority is a continuation-in-part claim to a pair of March 13, 2001,
`
`applications.) Faulk was not cited during the prosecution of the ‘399 patent.
`
`Faulk generally relates to a space-efficient AC power supply adapter for use
`
`in portable computers that converts from AC to DC power. Tingler Decl. ¶ 160 (Ex.
`
`1006). Faulk discloses reducing the size of what was formerly an external adapter
`
`in order that it could be used within the main housing chassis of the computer. See,
`
`e.g., Faulk at 3:48-53 (Ex. 1005); Tingler Decl. ¶ 161 (Ex. 1006). Faulk’s AC
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`adapter converts “high voltage AC power provided from the AC main, for example,
`
`an electrical outlet, to low voltage DC power . . . .” Faulk at 2:55-57 (Ex. 1005);
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`Tingler Decl. ¶ 160 (Ex. 1006). The power supply disclosed in Faulk utilizes a full
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`15
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`Page 19 of 65
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`
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`wave diode bridge rectifier and a space efficient EMI filter. See, e.g., Faulk at
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`Abstract, Figure 5; 9:56-61 (Ex. 1005); Tingler Decl. ¶ 160 (Ex. 1006).
`
`
`
`VII. SPECIFIC GROUNDS FOR PETITION
`Pursuant to Rule 42.104(b)(4)-(5), the below section, and as confirmed in the
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`Declaration of Robert Neal Tingler (Ex. 1006), demonstrate in detail how the prior
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`art discloses each and every limitation of the claims of the ’399 patent, and how
`
`those claims are rendered obvious by the prior art.
`
`A. Ground 1: Claims 7, 8, 17, 28, and 34 are anticipated by
`Hochstein
`
`1.
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`Independent Claim 7
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`(a) An illumination apparatus, comprising:
`
`Hochstein discloses an illumination apparatus. Hochstein discloses a “a
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`regulated voltage, switchmode power supply 10…connected to LED array 12.”
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`Hochstein, 5:3-5 (Ex. 1003); Tingler Decl. ¶ 42 (Ex. 1006).
`
`(b)
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`at least one LED
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`Hochstein discloses at least one LED. As shown in Figure 5, Hochstein
`
`discloses series-parallel LED array strings. Hochstein, Figure 5 (Ex. 1003); Tingler
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`Decl. ¶¶ 42, 43 (Ex. 1006).
`
`(c)
`
`at least one controller coupled to the at least one LED
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`16
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`Page 20 of 65
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`
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`Hochstein discloses at least one controller coupled to the at least one LED.
`
`Indeed, Hochstein discloses a controller that contains each of the elements in the
`
`embodiment disclosed in the ’399 patent specification. According to the ’399
`
`patent, the controller “is configured to receive an A.C. signal 500 via the connector
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`202 and provide operating power to the LED-based light source 104 [and] includes
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`various components to ensure proper operation of the lighting unit for A.C. signals
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`500 that are provided by a dimmer circuit . . . . To this end, according to the
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`embodiment of FIG. 3, the controller 204 includes a rectifier 404, a low pass (i.e.,
`
`high frequency) filter 408 and a DC converter 402.” ’399 Patent, 12:51-63 (Ex.
`
`1001); Tingler Decl. ¶ 44 (Ex. 1006). Additionally, “the controller 204A shown in
`
`FIG. 5 includes an additional adjustment circuit 208 that further conditions a signal
`
`output from the DC converter 402. The adjustment circuit 208 in turn provides a
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`variable drive signal to the LED-based light source 104 . . . .” ’399 Patent, 14:11-16
`
`(Ex. 1001); Tingler Decl. ¶ 44 (Ex. 1006).
`
`Hochstein discloses a controller (red box) connected to at least one LED 14:
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`17
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`Page 21 of 65
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`
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`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`
`
`Hochstein, Figure 5 (Ex. 1001); Tingler Decl. ¶ 45 (Ex. 1006). As is apparent, the
`
`controller of Hochstein contains each of the components that the controller
`
`disclosed in the ’399 patent contains: a rectifier 32, a low pass (i.e., high frequency)
`
`filter 28 and a DC converter 38. Tingler Decl. ¶ 45 (Ex. 1006).
`
`(d)
`
`and configured to receive a power-related signal from an
`alternating current (A.C.) power source that provides
`signals other than a standard A.C. line voltage,
`
`Hochstein discloses that the controller is configured to receive a power-
`
`related signal from an AC power source that provides signals other than a standard
`
`AC line voltage. Indeed, the power-related signals in Hochstein are the same types
`
`of power-related signals disclosed in the specification of the ’399 patent. According
`
`to the ’399 patent, the power-related signal that provides signals other than a
`
`standard AC line voltage may come from an AC dimmer circuit. ’399 Patent, 3:20-
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`18
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`Page 22 of 65
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`
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`23, 3:25-26, 3:30-33 (Ex. 1001); Tingler Decl. ¶ 46 (Ex. 1006). The ’399 patent
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`provides several examples of AC dimmer output signals, including an “increase or
`
`decrease [in] voltage amplitude” and “adjust[ing] the duty cycle of the A.C. dimmer
`
`output signal (e.g., by ‘chopping-out’ portions of A.C. voltage cycles).” ’399
`
`Patent, 1:66-2:6 (Ex. 1001); Tingler Decl. ¶ 46 (Ex. 1006). The ’399 patent
`
`provides a specific example concerning the dimming of traffic lights, wherein an
`
`AC dimmer circuit in such a scenario “provides a duty cycle-controlled (i.e., angle
`
`modulated) A.C. signal 309 such as that shown in FIG. 1” which chops off portions
`
`of voltage cycles. ’399 Patent, 9:17-49 (Ex. 1001); Tingler Decl. ¶¶[46-47 (Ex.
`
`1006).
`
`Like the ’399 patent, Hochstein discusses as an example the dimming of
`
`traffic lights such that his controller is configured to receive such power-related
`
`signals:
`
`LED signals can be dimmed by reducing the average current through
`the LED array. A problem arises however because existing traffic
`signal controllers dim incandescent signals by providing half-wave
`rectified a.c. to the devices. Normally the traffic lamps are powered by
`switched a.c. line power which has, in virtually all cases, a sinusoidal
`wave form. Simply rectifying this power allows the traffic signal
`controller to reduce the average voltage and current to the load in a loss
`free manner. This technique has been in common use for many years
`and has become the “defacto” standard dimming technique.
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`Hochstein, 10: 39-49 (Ex 1003); Tingler Decl. ¶ 48 (Ex. 1006). As explained by
`
`U.S. Patent No. 7,038,399, Claims 7, 8, 17, 18, 28, and 34
`Petition for Inter Partes Review
`
`Tingler, like the amplitude and angle modulated signals in the examples of the ’399
`
`patent, the half-wave rectified signals, “have the effect of adjusting the average
`
`voltage applied to the light source(s), which in turn adjusts the intensity of light
`
`generated by the source(s).” ’399 Patent, 2:30-33 (Ex. 1001); Tingler Decl. ¶ 49
`
`(Ex. 1006).
`
`Thus, Hochstein addresses the same problem as the ’399 patent: replacing
`
`incandescent lamps that are dimmed, such as traffic signals, with LEDs. Hochstein,
`
`10:51-61 (Ex. 1003); Tingler Decl. ¶ 50 (Ex. 1006). And, more importantly,
`
`Hochstein provides the same solution as the ’399 patent: providing a half wave
`
`detector circuit 88 that “can determine whether the traffic signal controller is
`
`sending a ‘dimming’ command.” Hochstein, 10:64-66; Figure 5 (Ex. 1003); Tingler
`
`Decl. ¶ 50 (Ex. 1006). Since Hochstein’s controller detects a half wav