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` Entered: February, 15 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WANGS ALLIANCE CORPORATION d/b/a WAC LIGHTING CO.,
`Petitioner,
`
`v.
`
`PHILIPS LIGHTING NORTH AMERICA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2016-01455
`Patent 7,358,679 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN, and GARTH D.
`BAER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`INTRODUCTION
`I.
`Wangs Alliance Corporation d/b/a WAC Lighting Co. (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims
`1, 3–6, 11, 17–19, 26, 38, and 43–45 of U.S. Patent No. 7,358,679 B2 (Ex.
`1001, “the ’679 patent”) pursuant to 35 U.S.C. § 311 et seq. Patent Owner,
`Philips Lighting North America Corporation, filed a Preliminary Response
`to the Petition. (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35
`U.S.C. § 314 and 37 C.F.R. § 42.4(a). After considering the Petition, the
`Preliminary Response, and associated evidence, we conclude that Petitioner
`has not demonstrated a reasonable likelihood that it would prevail in
`showing unpatentability of claims 1, 3–6, 11, 17–19, 26, 38, and 43–45.
`
`A. Related Proceedings
`Petitioner reports the following pending litigation matter related to
`this case: Koninklijke Philips N.V. et al. v. Wangs Alliance Corporation,
`Case No. 14-cv-12298-DJC (D. Mass.). Pet. 1. IPR2015-01293 and
`IPR2015-01294 (previously decided), and IPR2016-01453 (filed
`concurrently and previously decided) are also related to this case. Id.
`
`B. The ʼ679 Patent
`The ’679 patent discloses a method and apparatus “for providing
`controllable power via an A.C. power source to LED-based lighting devices
`having an MR16 configuration.” Ex. 1001, Abstract. The methods and
`apparatus of the ’679 patent’s invention “facilitate the use of LED-based
`light sources on A.C. power circuits that provide either a standard line
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`voltage or signals other than standard line voltages.” Id. at 2:54–57. The
`’679 patent discloses that
`methods and apparatus of the invention particularly facilitate the
`use of LED-based light sources on A.C. power circuits that are
`controlled by conventional dimmers (i.e, “A.C. dimmer
`circuits”). In one aspect, methods and apparatus of the present
`invention facilitate convenient substitution of LED-based light
`sources in lighting environments employing A.C. dimming
`devices and conventional light sources. In yet other aspects,
`methods and apparatus according to the present invention
`facilitate the control of one or more parameters relating to the
`light generated by LED-based light sources (e.g., intensity, color,
`color temperature, temporal characteristics, etc.) via operation of
`a conventional A.C. dimmer and/or other signals present on the
`A.C. power circuit.
`Id. at 2:58–3:4.
`Figure 1, below, shows an example operation of conventional A.C.
`dimming devices. Id. at 9:36–37.
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`Figure 1 “shows . . . voltage waveform 302 (e.g., representing a standard line
`voltage) that may provide power to one or more conventional light sources”
`and “a generalized A.C. dimmer 304 responsive to user interface 305.” Id.
`at 2:22–24. “[D]immer 304 is configured to output the waveform 308, in
`which the amplitude 307 of the dimmer output signal may be adjusted via
`the user interface 305.” Id. at 2:24–27. Dimmer 304 may also be
`“configured to output the waveform 309, in which the duty cycle 306 of the
`waveform 309 may be adjusted via the user interface 305.” Id. at 2:27–30.
`Figure 5, below, shows one embodiment of the invention using an
`LED-based light source. Id. at 9:46–48.
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`Figure 5 illustrates an LED-based lighting unit 200A that is suitable for
`operation by a dimmer circuit. Id. at 15:35–38. Figure 5 shows adjustable
`light output that may be controlled via a dimmer, with controller 204A. Id.
`Figure 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 variable drive signal to the LED-based light
`source 104, based on variations in the A.C. signal 500 (e.g., variations in the
`average voltage of the signal) in response to user operation of the dimmer.”
`Id. at 15:41–48.
`The ’679 patent also illustrates an LED-based lighting unit that
`resembles “a conventional MR16 bulb having a bi-pin base connector 202A
`configured to engage mechanically and electrically with a conventional
`MR16 socket.” Id. at 16:13–18. Figure 6A, below, shows an LED-based
`lighting unit. Id. at 9:53–54.
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`The “MR16 socket is connected to a source of A.C. power such that the A.C.
`signal 500A received by the unit 200B is a phase-angle modulated signal on
`the order of approximately 12 Volts A.C. (e.g., which may be derived, in
`turn, from a line voltage controlled via a switch and/or dimmer).” Id. at
`16:20–24.
`
`C. Illustrative Claims
`Independent claims 1 and 11 are illustrative of the challenged claims
`and reproduced below (Ex. 1001, 28:25–37, 29:31–45):
`1. An apparatus, comprising:
`at least one LED;
`a housing in which the at least one LED is disposed, the
`housing
`including at
`least one connection
`to engage
`mechanically and electrically with a conventional MR16 socket;
`and
`
`at least one controller coupled to the housing and the at
`least one LED and configured to receive first power from an
`alternating current (A.C.) dimmer circuit, the A.C. dimmer
`circuit being controlled by a user interface to vary the first power,
`at least one controller further configured to provide second
`power to the at least one LED based on the first power.
`
`11. An apparatus, comprising:
`at least one LED;
`a housing in which the at least one LED is disposed, the
`housing
`including at
`least one connection
`to engage
`mechanically and electrically with a conventional MR16 socket;
`and
`
`at least one controller coupled to the housing and the at
`least one LED 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, the at least one
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`controller further configured to provide power to the at least one
`LED based on the power-related signal,
`wherein the A.C. power source is an (A.C.) dimmer
`circuit.
`
`D. Asserted Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability for the challenged claims of the ’679 patent as follows
`(Pet. 3–4):
`
`Reference[s]
`
`Basis
`
`Schie1
`
`Schie
`
`Schie and Dalnodar2
`Lys,3 Dalnodar, and
`Schie
`
`35 U.S.C. § 102(e)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
`
`Claim[s] Challenged
`1, 11, 17–19, 26,
`38, and 43–45
`1, 11, 17–19, 26,
`38, and 43–45
`3–5
`
`6
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`II. ANALYSIS
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`
`1 U.S. Patent No. 6,940,733 to Schie et al., filed August 22, 2003, issued
`Sep. 6, 2005 (“Schie,” Ex. 1003).
`2 U.S. Patent No. 5,504,400 to Dalnodar, issued Apr. 2, 1996 (“Dalnodar,”
`Ex. 1004).
`3 U.S. Patent No. 6,211,626 to Lys et al., issued Apr. 3, 2001 (“Lys,” Ex.
`1005).
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under this standard, we
`interpret claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). We presume that claim terms have their ordinary and customary
`meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`2016) (“Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”); 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.” (internal quotation marks omitted)).
`Based on the current record, we conclude that no express claim
`construction is necessary for our determination of whether to institute inter
`partes review of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. &
`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.”).
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`B. Grounds based on Schie (Ex. 1003)
`Each of the challenged grounds presented by Petitioner relies on Schie
`as prior art to the ’679 patent. Below we address the parties’ contentions
`regarding the priority date of the challenged claims of the ’679 patent and
`the priority date of Schie.
`1. Priority Date of the ’679 Patent
`To obtain benefit under 35 U.S.C. § 120, a party must establish that an
`earlier U.S. application complies with the first paragraph of 35 U.S.C. § 112
`with respect to each claim for which benefit is desired. See 35 U.S.C. § 120;
`see also 37 C.F.R. § 1.78; see also Tronzo v. Biomet, Inc., 156 F.3d 1154,
`1158 (Fed. Cir. 1998) (discussing requirements of claiming benefit of
`priority date of earlier application under 35 U.S.C. § 120). The test for
`written description is an objective inquiry into the four corners of the
`specification from the perspective of a person of ordinary skill in the art.
`Using this test, the invention must be described in a manner sufficient to
`demonstrate that the inventor actually invented the claimed invention. Ariad
`Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010). To satisfy
`35 U.S.C. § 112, first paragraph, the written description must convey with
`reasonable clarity to those skilled in the art that the inventor was in
`possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d
`1555, 1563–64 (Fed. Cir. 1991). One shows “possession” of the invention
`by describing the invention using such descriptive means as words,
`structures, figures, diagrams, formulas, etc., that fully set forth the claimed
`invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
`1997); see also Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291,
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`1302–03 (Fed. Cir. 1999) (“Different claims of [a CIP] application may
`therefore receive different effective filing dates. . . . Subject matter that
`arises for the first time in [a] CIP application does not receive the benefit of
`the filing date of the parent application.”). A prior application, however,
`need not contain precisely the same words as are found in the asserted
`claims. See Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995);
`Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
`(holding that the disclosure does not have to provide in haec verba support
`in order to satisfy the written description requirement). In addition,
`“[e]ntitlement to a filing date does not extend to subject matter which is not
`disclosed, but would be obvious over what is expressly disclosed.” In re
`Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting Lockwood v. Am.
`Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)). The issue of
`whether the written description requirement has been satisfied is a question
`of fact. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir.
`1993).
`The ’679 patent states that it “claims the benefit, under 35 U.S.C.
`§119(e), of U.S. Provisional Application Ser. No. 60/558,235, filed Mar. 31,
`2004, entitled ‘Methods and Apparatus for Providing Power to Lighting
`Devices’” and
`also claims the benefit, under 35 U.S.C. §120, as a continuation-
`in-part (CIP) of U.S. Non-provisional application Ser. No.
`10/435,687, filed May 9, 2003, entitled “Method and Apparatus
`for Providing Power to Lighting Devices,” which is now U.S.
`Pat. No. 7,038,399, which in turn claims priority to U.S.
`Provisional Application Ser. No. 60/379,079, filed May 9, 2002,
`entitled “Systems and Methods for Controlling LED Based
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`Lighting,” and U.S. Provisional Application Ser. No.
`60/391,627, filed Jun. 26, 2002, entitled “Switched Current
`Sink.”
`Ex. 1001, 1:7–20. Thus, the ’679 patent, filed March 31, 2005, claims
`priority as follows:
`• March 31, 2004, for Provisional Application No. 60/558,235
`(Ex. 1010, “the ’235 provisional”);
`• May 9, 2003, for U.S. Patent No. 7,038,399 (Ex. 1009, “the
`’399 patent”);
`• June 26, 2002, for Provisional Application No. 60/391,627
`(Ex. 1011, “the ’627 provisional”); and
`• May 9, 2002, for Provisional Application No. 60/379,079 (Ex.
`1012, “the ’079 provisional”).
`Petitioner argues that because each of the challenged claims of the
`’679 patent recites a “conventional MR16 socket,” these claims are entitled
`to priority no earlier than March 31, 2004, the date of the ’235 application
`(Ex. 1010), which contains sufficient support for the MR16 claim limitations
`of the ’679 patent. Pet. 3, 16. Petitioner argues that the predecessor ’399
`patent (Ex. 1009) and the ’627 and ’079 provisionals (Ex. 1011, Ex. 1012)
`do not disclose an MR16 socket. Pet. 17, 23–24. Specifically, Petitioner
`contends that the general types of power connections of lighting systems
`discussed in the ’079 provisional (Ex. 1012) and the ’399 patent (Ex. 1009)
`do not disclose “a housing in which the at least one LED is disposed, the
`housing including at least one connection to engage mechanically and
`electrically with a conventional MR16 socket” as claimed in the ’679 patent,
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`and therefore, the claims of the ’679 patent are not entitled to the May 9,
`2002 filing date of the ’079 provisional. Pet. 23–24 (citing Ex. 1006 ¶¶ 47–
`48); see Pet. 18–19 (noting that ’399 patent never refers to an MR16 socket
`in examples of power connectors for light housing shapes and connectors
`types); Ex. 1009, 12:32–46 (describing connector types for light housings).
`Patent Owner argues that the ’399 patent and ’079 provisional provide
`adequate written support for the “conventional MR16 socket” limitations of
`the challenged claims. Prelim. Resp. 12–18. Patent Owner argues that the
`’399 specification depicts a conventional incandescent light bulb having a
`screw-type base connector, but contemplates other housing shapes and
`connectors, including multi-pin and conventional halogen type sockets.
`Prelim. Resp. 13. The ’399 patent states in full that:
`FIG. 3 illustrates an LED-based lighting unit 200 according to
`one embodiment of the present invention. For purposes of
`illustration, the lighting unit 200 is depicted generally to
`resemble a conventional incandescent light bulb having a screw-
`type base connector 202 to engage mechanically and electrically
`with a conventional light socket. It should be appreciated,
`however, that the invention is not limited in this respect, as a
`number of other configurations including other housing shapes
`and/or connector types are possible according to other
`embodiments.
` Various examples of power connector
`configurations include, but are not limited to, screw-type
`connectors, wedge-type connectors, multi-pin type connectors,
`and the like, to facilitate engagement with conventional
`incandescent, halogen, fluorescent or high intensity discharge
`(HID) type sockets. Such sockets, in turn, may be connected
`directly to a source of A.C. power (e.g., line voltage), or via a
`switch and/or dimmer to the source of A.C. power.
`Ex. 1001, 13:60–14:10 (emphasis added).
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`Patent Owner argues that “[t]hese disclosures in the ’399 patent—
`including “multi-pin type connectors” and “halogen . . . type sockets”—
`reasonably convey to a personal of ordinary skill the use of conventional
`MR16 bulbs having bi-pin connectors because of its wide acceptance as a
`commonly used and standardized halogen incandescent bulb.” Prelim.
`Resp. 14. Thus, Patent Owner contends that an ordinarily skilled artisan
`would have understood the inventors possessed the claims that include a
`conventional MR16 socket, which is widely known as a conventional multi-
`pin type connector for halogen type sockets. Id.
`Patent Owner further contends that the ’079 provisional contains the
`same disclosure as the ’399 patent, stating that “‘[t]he power adapter may be
`an incandescent-style base, halogen-style base, fluorescent style base,
`compact fluorescent-style base, high intensity discharge (HID) style base,
`screw base, wedge base, pin base or other adapter to allow the lighting
`system 200 to be connected to a power system.” Prelim. Resp. 16–17
`(quoting Ex. 1012, 12:24–27). Patent Owner further notes that the ’079
`provisional describes that “[s]uch an adapter may be used to connect an LED
`lighting system to a conventional control system, power system, or socket.”
`Prelim. Resp. 17 (quoting Ex. 1012, 12:27–28). Finally, Patent Owner notes
`that claim 59 in the ’079 provisional, expressly recites that “the power
`connector comprises a halogen-style lamp base.” Prelim. Resp. (quoting Ex.
`1012, 27:2–3).
`In sum, Patent Owner contends that these express disclosures of a
`genus of connectors—including “pin base” and “halogen-style lamp base”—
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`conveys to a person of ordinary skill in the art that inventor possessed the
`specific MR16 species of connector. Prelim. Resp. 17–18.
`Upon review of the record and evidence, we agree with Patent Owner
`that the ’399 patent and ’079 provisional satisfy the written description
`requirement showing that the inventors possessed the conventional MR16
`socket claimed in the ’679 patent. In this case, the ’079 provisional and ’399
`patent disclose the general types of connectors and housing using terms a
`person of ordinary skill in the art would understand include the general types
`of lighting of which the MR16 is just one variant. See Ex. 2001, 7.24
`(discussing “standard MR16 lamps” using “a 2-pin or turn-and-lock base”);
`Prelim. Resp. 6 n.6 (providing citations for MR16 bulbs as being well
`known and conventional). The general housing disclosures in the ’399
`patent and ’079 provisional provide sufficient detail necessary to convey to a
`person of ordinary skill in the art that the scope of the claims include non-
`screw type bases such as halogen and pin-type bases and connectors. See
`also Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336,
`1347 (Fed. Cir. 2013) (“[I]n some cases, broad or generic disclosures can
`adequately describe particular constituent species.”); Cordis Corp. v.
`Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (“A
`specification may . . . contain a written description of a broadly claimed
`invention without describing all species that [the] claim encompasses.”
`(alteration in original)); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
`1336, 1351 (Fed. Cir. 2010) (en banc) (noting that level of detail required to
`establish possession of the claimed subject matter as of the filing date
`“varies depending on the nature and scope of the claims and on the
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`complexity and predictability of the relevant technology”). The disclosure
`of the type of bulb housing, e.g. halogen, and type of connectors, e.g. pin-
`type, is adequate written description support for the particular type of
`housing claimed in the ’679 patent.
`Contrary to Petitioner’s contentions, we do not find that the lack of
`express reference to a conventional MR16 socket in either the ’399 patent or
`’079 provisional indicates that such a socket is new matter or shows that the
`inventor did not possess the inclusion of an MR16 socket. Pet. 17. We are
`also not persuaded by Petitioner’s conclusory declarant testimony, which
`does not address the multi-pin or halogen type bulb disclosures and instead
`observes that the ’079 provisional and ’399 patent do not expressly mention
`or describe an MR16 bulb. Ex. 1006 ¶¶ 44–48.
`We disagree with Petitioner’s assertion that the ’679 patent priority is
`limited to the ’235 provisional (as new matter) based on the lack of express
`disclosure of the conventional MR16 socket in the ’079 provisional and the
`’399 patent. Pet. 16–17 (discussing new matter in ’235 provisional), 18–34
`(describing lack of express disclosure in ’079 provisional and ’399 patent).
`Finally, we also disagree with Petitioner’s argument that the ’399
`patent and ’079 provisional do not provide adequate written description of
`the “conventional MR16 socket” through incorporation by reference. Pet.
`19–20. To incorporate material by reference, “the host document must
`identify with detailed particularity what specific material it incorporates and
`clearly indicate where that material is found in the various documents.”
`Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
`2000). We agree with Patent Owner that the ’399 patent and ’079
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`provisional properly incorporate the identified applications and patents with
`particular, clear references to incorporate the entire document. See Ex.
`1009, 1:8–14, 7:46–8:21; Ex. 1012, 1:4–23; see Harari v. Lee, 656 F.3d
`1331, 1335–36 (Fed. Cir. 2011). The ’399 patent states that “[t]he following
`patents and patent applications are hereby incorporated herein by reference,”
`and identifies a list of patents/applications by title, number, and filing/issue
`date. Ex. 1009, 7:46–8:21. The ’079 provisional expressly states that “[t]his
`application is related to and hereby incorporates by reference herein the
`entire disclosure of the following U.S. Patent Applications” and provides
`two applications that refer to MR16 lighting and provide a figure showing
`and MR16 type housing and connector. Ex. 1012, 1:4–23; see Pet. 19–20
`(citing Ex. 1015 ¶ 0305; Ex. 1016, Figure 9, 11:32–35 and acknowledging
`the two cited documents refer to MR16 lighting). Accordingly, we find that
`the references incorporated into the ’079 provisional (and ’399 patent) also
`provide sufficient written description support for the “conventional MR16
`socket” limitations of the ’679 patent.
`Petitioner does not challenge the written description support for any
`other limitations of the challenged claims, apart from the “conventional
`MR16 socket” limitation. Pet. 16–24. Patent Owner, however, provides a
`thorough and persuasive chart showing written description support in the
`’399 patent and ’079 provisional for each of the challenged claims of the
`’679 patent. Prelim. Resp. 29–62 (chart with citations to the ’399 patent and
`’079 provisional for claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679
`patent).
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`Based on the foregoing, we find that the priority date of the
`challenged claims of the ’679 patent is the date of the ’079 provisional, May
`9, 2002, as both the ’399 patent and the ’079 provisional provide adequate
`written description support for the “conventional MR16 socket limitation” of
`the challenged claims.
`2. Schie (Ex. 1003) as Prior Art to the ’679 Patent
`Given our finding above that the priority date of ’679 patent is May 9,
`2002, we find that Petitioner has not shown that Schie, with an earliest
`available priority date of August 22, 2002 (Pet. 24–39; Prelim. Resp. 1–2), is
`prior art to the ’679 patent under 35 U.S.C. § 102(e). Because each of
`Petitioner’s grounds for challenging the ’679 patent relies on Schie (Pet. 3–
`4, 41–67), we find that Petitioner has not demonstrated a likelihood that it
`would prevail in showing that claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of
`the ’679 patent are unpatentable.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the Petition fails to
`establish a reasonable likelihood of prevailing on the asserted grounds that
`claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679 patent are
`unpatentable.
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`IV. ORDER
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`Accordingly, it is
`ORDERED that the petition is denied as to all challenged claims and
`no trial is instituted.
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`IPR2016-01455
`Patent 7,358,679 B2
`
`PETITIONER:
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`David Radulescu
`david@radip.com
`
`Angela Chao
`angela@radip.com
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`PATENT OWNER:
`
`C. Brandon Rash
`brandon.rash@finnegan.com
`
`Kenie Ho
`kenie.ho@finnegan.com
`
`19
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