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
`The 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. 7,358,679 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. 7,358,679
`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
`
` 
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` 
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`
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`Page 1 of 73
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`PHILIPS EXHIBIT 2015
`WAC v. PHILIPS
`IPR2016-01455
`
`

`
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES AND FEES ......................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Parties-in-Interest .......................................................................... 1
`
`Related Matters ...................................................................................... 1
`
`Counsel .................................................................................................. 1
`
`Service Information ............................................................................... 1
`
`Payment ................................................................................................. 2
`
`II.
`
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 2
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
`
`A.
`
`Prior Art Patents and Printed Publications ............................................ 3
`
`B. Grounds for Challenge .......................................................................... 3
`
`IV. OVERVIEW OF THE ’679 PATENT ............................................................ 4
`
`A.
`
`B.
`
`C.
`
`Background ........................................................................................... 4
`
`Summary of Alleged Invention of the ’679 Patent ............................... 4
`
`Prosecution History ............................................................................... 7
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 10
`
`A.
`
`B.
`
`C.
`
`“Conventional MR16 Socket” ............................................................. 10
`
`“Alternating Current (A.C.) Dimmer Circuit” .................................... 13
`
`“Duty Cycle” ....................................................................................... 15
`
`VI. EFFECTIVE FILING DATE OF THE CLAIMS OF THE ’679 PATENT . 16
`
`VII. OVERVIEW OF THE PRIOR ART ............................................................. 16
`
`i
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`Page 2 of 73
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`

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`A. U.S. Patent No. 5,661,645 to Hochstein ............................................. 16
`
`B. U.S. Patent No. 6,211,626 to Lys et al. ............................................... 19
`
`C. U.S. Patent No. 4,293,796 to McMorrow ........................................... 20
`
`D.
`
`TNY 264/266-268 TinySwitch-II Family Datasheet .......................... 22
`
`VIII. UNPATENTABILITY OF THE CHALLENEGED CLAIMS .................... 23
`
`A. Ground 1: Claims 1, 11, 1719, 2633, 38, and 4344 are Obvious
`over Hochstein in view of Lys ............................................................ 24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 1 ...................................................................................... 25
`
`Claim 11 .................................................................................... 34
`
`Claim 17 .................................................................................... 39
`
`Claim 18 .................................................................................... 40
`
`Claim 19 .................................................................................... 41
`
`Claim 26 .................................................................................... 42
`
`Claim 38 .................................................................................... 44
`
`Claim 43 .................................................................................... 45
`
`Claim 44 .................................................................................... 46
`
`10. Claim 45 .................................................................................... 47
`
`B. Ground 2: Claims 3–6 are Obvious over Hochstein and Lys in view of
`McMorrow ........................................................................................... 47
`
`1.
`
`2.
`
`3.
`
`Claim 3 ...................................................................................... 49
`
`Claim 4 ...................................................................................... 55
`
`Claim 5 ...................................................................................... 55
`
` 
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`Page 3 of 73
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`

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`4.
`
`Claim 6 ...................................................................................... 56
`
`C. Ground 3: Claims 27-33 are Obvious over Hochstein and Lys in view
`of TNY Datasheet ................................................................................ 56
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 27 .................................................................................... 58
`
`Claim 28 .................................................................................... 62
`
`Claim 29 .................................................................................... 62
`
`Claim 30 .................................................................................... 63
`
`Claim 31 .................................................................................... 64
`
`Claim 32 .................................................................................... 64
`
`Claim 33 .................................................................................... 65
`
`IX. REFERENCES ARE NOT CUMULATIVE OR REDUNDANT ................ 65
`
`X.
`
`CONCLUSION .............................................................................................. 66
`
`
`
`
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`Page 4 of 73
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`

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`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 judicial matters may affect or be affected by a decision in this
`
`inter partes review:
`
`Koninklijke Philips N.V. et al. v. Wangs Alliance Corporation d/b/a WAC
`
`Lighting Co., No. 1:12-cv-12298 (D. Mass) (stayed).
`
`The following administrative matters may affect or be affected by a decision
`
`in this inter partes review:
`
`IPR2015-01293; U.S. Patent No. 7,352,138.
`
`IPR2015-01294; U.S. Patent No. 7,039,399.
`
`Additionally, this Petition is being filed concurrently with a second petition
`
`for inter partes review of the same patent.
`
`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.
`
`D.
`Service Information
`Email: david@radulescullp.com; angela@radulescullp.com
`
` 
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`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 address.
`
`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 1, 3–6, 11, 17–19, 26–33, 38, and 43–45 of U.S. Patent No. 7,358,679 (the
`
`“’679 Patent”) (Ex. 1001). Petitioner notes that its inter partes review challenges
`
`to the related U.S. Patent Nos. 7,039,399 (to which the ‘679 Patent claims priority)
`
`and 7,352,138 were instituted on all grounds in IPR2015-01294 and IPR2015-
`
`01293, respectively.
`
` 
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`2
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`A.
`
`Prior Art Patents and Printed Publications
`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. 6,211,626 to Lys et al. (“Lys,” Ex. 1004),
`
`which is prior art under § 102(b).
`
`3. U.S. Patent No. 4,293,796 to McMorrow (“McMorrow,” Ex.
`
`1005), which is prior art under § 102(b).
`
`4. TNY264/266-268 TinySwitch-II Family Datasheet (March
`
`2001, Rev. A) (“TNY Datasheet,” Ex. 1006), which is prior
`
`art under §§ 102(a), (b).
`
`B. Grounds for Challenge
`The Petitioner requests cancellation of claims 1, 3–6, 11, 17–19, 26–33, 38,
`
`and 43–45 of the ’679 Patent (“challenged claims”) as unpatentable under 35
`
`U.S.C. § 103. This Petition, supported by the Declaration of Peter Shackle, Ph.D.
`
`(“Shackle Decl.” (Ex. 1007)), 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 1, 11, 17–19, 26, 38, and 43–45 are obvious over Hochstein in
`
`view of Lys.
`
` 
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`3
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`Ground 2: Claims 3–6 are obvious over Hochstein and Lys in view of McMorrow.
`
`Ground 3: Claims 27-33 are obvious over Hochstein and Lys in view of TNY
`
`Datasheet.
`
`IV. OVERVIEW OF THE ’679 PATENT
`A. Background
`The ’679 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. ’679 Patent, 1:26-30; 2:51-57 (Ex. 1001). In particular, the ’679 patent
`
`addresses the problem of using devices such as conventional A.C. dimmer switches
`
`to control LED lights. Id. 2:58-65. At the time of the alleged ‘679 invention,
`
`conventional dimmer switches could control conventional incandescent lights
`
`without any additional circuitry, but LEDs were initially incompatible with
`
`conventional A.C. dimmer switches. Id. 1:54-64; 10:34-43. As a result, LED light
`
`sources could not easily be substituted for conventional light sources in lighting
`
`systems using conventional A.C. dimmer switches. Id. 10:43-46.
`
`B.
`Summary of Alleged Invention of the ’679 Patent
`The ’679 patent describes methods and apparatuses “for providing
`
`controllable power via an A.C. power source to LED-based lighting devices having
`
`an MR16 configuration.” ’679 patent, Abstract. In lighting applications, “[m]any
`
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`4
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`Page 8 of 73
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`types of conventional dimmers are known that allow a user to adjust the light
`
`output of one or more light sources via some type of user interface . . .”. Id., 1:41-
`
`43. A.C. dimmers, which the ’679 patent admits are conventional, receive A.C.
`
`line voltage as an input and “provide[] an A.C. signal output having one or more
`
`variable parameters that have the effect of adjusting the average voltage of the
`
`output signal . . .”. Id. 1:54-60. The ’679 patent describes known A.C. dimmers
`
`that can be implemented in several different ways, such as increasing or decreasing
`
`the voltage amplitude of the A.C. dimmer output signal or, more commonly,
`
`adjusting the duty cycle of the A.C. dimmer output signal using a triac or gate turn-
`
`off thyristors to “chop off” portions of A.C. voltage cycles. Id. 1:56-2:17. Figure
`
`1 of the ’679 patent shows examples of such signals, where signal 302 represents
`
`standard A.C. line voltage and signals 308 (adjusting voltage amplitude) and 309
`
`(chopping out portions of voltage cycles) represent possible dimmer output signals:
`
`
`
`’679 Patent at Figure 1, 2:18-30 (Ex. 1001); Shackle Decl. ¶ 28 (Ex. 1007).
`
`The ’679 patent discloses the use of a controller to receive an A.C. signal
`
`and provide power to an LED light source. ’679 Patent, 12:6-10 (Ex. 1001);
`
` 
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`5
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`Shackle Decl. ¶ 29 (Ex. 1007). The controller (labeled 204A in Figure 5, below)
`
`includes a “rectifier” to convert an A.C. input to D.C. output, a “low pass filter” to
`
`filter out high frequencies such as noise on the input line, and a “D.C. converter”
`
`which converts a source of direct current from one voltage level to another and
`
`provides a stable D.C. voltage as a power supply for the LEDs. ’679 Patent, 12:61-
`
`13:8 (Ex. 1001); Shackle Decl. ¶ 29 (Ex. 1007). Additionally, the “controller”
`
`includes an “adjustment circuit” that conditions the signal output from the D.C.
`
`converter, providing a variable drive signal to the LEDs based on variations in the
`
`input A.C. signal from the dimmer circuit. ’679 Patent, 15:36-48; 15:59-66 (Ex.
`
`1001); Shackle Decl. ¶ 29 (Ex. 1007).
`
`
`
`’679 Patent, Figure 5 (Ex. 1001). 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
`
` 
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`6
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`conventional MR16 socket.” ’679 patent, 16:13-18 (Ex. 1001); Shackle Decl. ¶ 30
`
`(Ex. 1007).
`
`
`
`’679 patent, Figure 6A (Ex. 1001).
`
`C.
`Prosecution History
`The ’679 patent is a continuation-in-part of, and claims priority to, U.S.
`
`Patent No. 7,038,399 (Ex. 1012, “the ’399 patent”), which is also subject to inter
`
`partes review (IPR2015-01294). The ’679 patent also claims priority to three
`
`provisional applications: No. 60/558,235, filed on March 31, 2004 (Ex. 1013), No.
`
`60/391,627, filed on June 26, 2002 (Ex. 1014), and No. 60/379,079, filed on May
`
`9, 2002 (Ex. 1015).
`
`The application that led to the ’679 patent was filed on March 31, 2005, with
`
`67 claims. On November 30, 2006, the Examiner issued an Office Action rejecting
`
`claims 10 and 37, allowing claims 1-9 and 57-67, and objecting to claims 11-36
`
`and 38-56. According to the Examiner, claims 10 and 37 were rejected under 35
`
` 
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`7
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`U.S.C. § 102(b) as anticipated by U.S. Patent No. 5,924,784 to Chliwnyj et al. (Ex.
`
`1017). According to the Examiner, Chliwnyj’s housing (envelope 60 in Figure 5)
`
`includes at least one connection to engage mechanically and electrically with a
`
`conventional MR16 socket. Nov. 30, 2006 Office Action, at 3 (Ex. 1002). Figure
`
`5 of Chliwnyj is reproduced below:
`
`
`
`Additionally, the Examiner stated that Chliwnyj discloses that a controller is
`
`configured to receive a power related signal from an alternating current power
`
`source that provides signals other than a standard A.C. line voltage. Id.
`
`In a Response dated Feb. 27, 2007, the Applicant traversed the rejection,
`
`arguing that “Chliwnyj fails to disclose or suggest either a conventional MR16
`
`socket or a power-related signal from an A.C. power source that provides signals
`
`other than a standard A.C. line voltage.” Feb. 27, 2007 Response, at 16 (Ex.
`
`1002). The Applicant also argued that the Edison base style lamp disclosed in
`
`Figure 5 of Chliwnyj, which includes a standard screw-type base 64, “clearly
`
`cannot engage mechanically and electrically with a conventional MR16 socket
`
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`and, in fact, Chliwnyj is completely silent with respect to MR16 bulbs or sockets
`
`(see Applicants’ Fig. 6A for an example of an MR16 bulb having a bi-pin base
`
`connector).” Id. (emphasis in original).
`
`A second Office Action issued on May 16, 2007, allowing claims 1-9, 11-
`
`36, and 38-66, while rejecting claims 10, 37, 68, and 69. Claims 68 and 69 were
`
`rejected under 35 U.S.C. § 112(2) as being indefinite. Claims 10 and 37 were
`
`rejected under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application
`
`Serial No. 11/467,713, which would later issue as U.S. Patent No. 7,350,936. The
`
`Applicant submitted a Response on August 9, 2007, summarizing a telephone
`
`conversation with the Examiner which indicated that amendments to claims 10 and
`
`37 to add limitations previously presented in claims 68 and 69 related to the X10
`
`communication standard protocol would place them in condition for allowance.
`
`Aug. 9, 2007 Response, at 16 (Ex. 1002).
`
`Thereafter, the Examiner issued another Office Action on November 1,
`
`2007, rejecting the originally-allowed claims 1-9, 11-36, and 38-67 for
`
`nonstatutory obviousness-type double patenting based on claims 1 and 4-5 of the
`
`parent ’399 patent. Nov. 1, 2007 Office Action, at 2 (Ex. 1002). In response, the
`
`Applicant filed a terminal disclaimer, disclaiming the terminal part of the statutory
`
`term of the ’679 patent that extends beyond the expiration date of the ’399 patent.
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`Nov. 30, 2007 Terminal Disclaimer (Ex. 1002). Thereafter, a Notice of Allowance
`
`issued.
`
`V. 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). 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.
`“Conventional MR16 Socket”
`The claim term “conventional MR16 socket” should be construed to mean
`
`“socket that accepts an MR16 bulb having a bi-pin base connector.”
`
`The specification of the ‘679 patent supports this construction. For instance,
`
`the ‘679 patent shows an MR16 bulb with a bi-pin base connector in Figure 6A.
`
` 
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`10
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`The ‘679 patent states:
`
`
`
`FIG. 6A illustrates an LED-based lighting unit 200B according to
`another embodiment of the present invention, in which the lighting
`unit is depicted generally to resemble a conventional MR16 bulb
`having a bi-pin base connector 202A configured
`to engage
`mechanically and electrically with a conventional MR16 socket.
`
`’679 Patent, 16:13-18 (Ex. 1001). The ‘679 patent thus describes a “conventional
`
`MR16 socket” as a socket that engages mechanically and electrically with a
`
`“conventional MR16 bulb having a bi-pin base connector.”
`
`The prosecution history of the ‘679 patent also supports this construction. In
`
`traversing the rejection over Chliwnyj, the Applicant argued that the Edison base
`
`style lamp disclosed in Figure 5 of Chliwnyj “clearly cannot engage mechanically
`
`and electrically with a conventional MR16 socket . . . . (see Applicants’ Fig. 6A
`
`for an example of an MR16 bulb having a bi-pin base connector).” Feb. 27, 2007
`
`Response, at 16 (Ex. 1002). (emphasis in original). Thus, the Applicant identified
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`a socket that accepts a bi-pin base connector as the “convention MR16 socket” of
`
`the invention.
`
`Other Philips patents that share inventors and subject matter with the ‘679
`
`patent also confirm WAC’s construction of a “conventional MR16 socket.” For
`
`instance, U.S. Patent No. 6,211,626 to Lys (“Lys”), which is the subject of
`
`Grounds 1 and 2 below and is attached as Exhibit 1004, discloses that a
`
`conventional MR16 socket is a socket that accepts an MR16 bulb with a bi-pin
`
`connector. Lys is directed to similar subject matter as the ‘679 patent, and
`
`specifically discloses a retrofit LED light for fixtures including MR16 bulbs. See,
`
`e.g., Lys, 30:31-58 (Ex. 1004). Lys was issued in April 2001, so its disclosure
`
`would inform a person of ordinary skill in the art of the contemporaneous meaning
`
`of “conventional MR16 socket”:
`
`Another embodiment of a light module 100 is depicted in FIG. 20. . . .
`In particular, in an embodiment of the invention illustrated in FIG. 20,
`an array of LEDs 644, which can be the circular array 37 depicted in
`FIG. 8 or another array, may be disposed on a platform 642 that is
`constructed
`to
`plug
`into
`a
`fixture,
`such
`as
`an MR-
`16 fixture for a conventional halogen lamp. In other embodiments of
`the invention, the platform 642 may be shaped to plug, screw or
`otherwise connect into a power source with the same configuration as
`a conventional light bulb, halogen bulb, or other illumination source.
`In the embodiment of FIG. 20, a pair of connectors 646 connect to a
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`power source, such as an electrical wire, in the same manner as
`connectors for a conventional halogen bulb in an MR-16 fixture.
`
`
`
`Lys, 30:31-47; Fig. 20 (Ex. 1004). This disclosure conveys to a person of ordinary
`
`skill in the art the understanding that the “conventional” connectors for an MR16
`
`bulb are bi-pin connectors, which naturally plug into a bi-pin socket.
`
`These disclosures support the construction of “conventional MR16 socket”
`
`as “socket that accepts an MR16 bulb having a bi-pin base connector.” Shackle
`
`Decl. ¶ 34 (Ex. 1007).
`
`B.
`“Alternating Current (A.C.) Dimmer Circuit”
`The claim term “alternating current (A.C.) dimmer circuit” should be
`
`construed to mean “circuit for dimming a light source that receives an A.C. signal
`
`and controls power delivered to the light source.”
`
`Though the specification of the ’679 patent contains to two examples of
`
`A.C. signals being output from the dimmer circuit (signals 308 and 309 in Figure
`
`1), there is no definition in the specification or file history of the ’679 patent that
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`limits the term “A.C. dimmer circuit” to require it to produce A.C. output signals.
`
`The broadest reasonable interpretation of the term is as proposed by Petitioner.
`
`The ’679 patent’s description of the claimed “A.C. dimmer circuit” provides
`
`that the light sources of such a system are “on A.C. power circuits,” which
`
`confirms that an A.C. dimmer circuit is a circuit that receives an input from an
`
`A.C. power signal, that is, an A.C. power signal. ’679 Patent, 1:65-2:17 (Ex.
`
`1001).
`
`Additionally, conventional A.C. dimmers which separately and
`
`independently adjust the duty cycle of positive and negative half-cycles of an A.C.
`
`voltage were well-known by persons of ordinary skill in the art well before the
`
`priority date of the ‘679 patent, and are included in the definition of the claim term
`
`“alternating current (A.C.) dimmer circuit.” Such conventional A.C. dimmers
`
`could be implemented, for example, using triacs with triggering points at suitable
`
`points in the A.C. voltage cycle. See, e.g., Dalnodar (Ex. 1009), Fig. 5b; 5:51-
`
`6:37; Shackle Decl. ¶ 37 (Ex. 1007).
`
`These disclosures support the construction of “A.C. dimmer circuit” as
`
`“circuit for dimming a light source that receives an A.C. signal and controls power
`
`delivered to the light source.” Shackle Decl. ¶ 36 (Ex. 1007).
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`C.
` “Duty Cycle”
`The claim term “duty cycle” should be construed as “the ratio of pulse
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`duration to pulse period, expressed as a percentage.”
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`This definition comports with the definition as understood by persons of
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`ordinary skill in the art. See, e.g., Wiley Electrical and Electronics Engineering
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`Dictionary (definition of “duty cycle”) (Ex. 1010); see also ‘679 Patent, 14:42-49
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`(Ex. 1001) (“In one implementation, the dimmer circuit may output an A.C. signal
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`500 having a duty cycle of as low as 50% ‘on’ (i.e., conducting) that provides
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`sufficient power to cause light to be generated by the LED-based light source 104.
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`In yet another implementation, the dimmer circuit may provide an A.C. signal 500
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`having a duty cycle of as low as 25% or less ‘on’ that provides sufficient power to
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`the light source 104.”).)
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`Additionally, it would have been well-known by a person of ordinary skill in
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`the art at the time of the alleged ‘679 invention that when an A.C. signal which
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`pulses both in the positive polarity and in the negative polarity is being modulated
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`by a triac, the modulation of positive and negative half cycles may differ. See, e.g.,
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`Dalnodar, Fig. 5b; 5:51-6:37 (Ex. 1009); Shackle Decl. ¶ 40 (Ex. 1007). In the
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`context of duty cycle applied to an A.C. waveform as discussed below, it is
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`typically the duty cycle of the positive half cycles which are being discussed, and
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`that the duty cycle of the negative half cycles is the same unless specified
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`otherwise. Shackle Decl. ¶ 40 (Ex. 1007).
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`The disclosures above support the construction of “duty cycle” as “the ratio
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`of pulse duration to pulse period, expressed as a percentage.”
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`VI. EFFECTIVE FILING DATE OF THE CLAIMS OF THE ’679
`PATENT
`As discussed at length in Section VI of the co-filed petition for inter partes
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`review of the ’679 patent, each claim of the ’679 patent contains a limitation
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`relating to a housing that engages with a “conventional MR16 socket,” and is
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`therefore entitled to an earliest effective filing date no earlier than March 31, 2004.
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`However, as each of the prior art references relied upon in this Petition is prior art
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`to the ’679 patent under 35 U.S.C. § 102(b) even assuming arguendo that the
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`claims of the ’679 patent are entitled to the earliest possible provisional date of
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`May 9, 2002, the analysis will be omitted from this Petition. Petitioner reserves all
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`rights to challenge the effective filing date of the claims of the ’679 patent.
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`VII. OVERVIEW OF THE PRIOR ART
`A. U.S. Patent No. 5,661,645 to Hochstein
`U.S. Patent No. 5,661,645 to Hochstein, entitled “Power Supply for Light
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`Emitting Diode Array,” filed on June 27, 1996, and issued on August 26, 1997, is a
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`prior art reference to the ’679 patent under 35 U.S.C. § 102(b). Hochstein was not
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`cited during the prosecution of the ’679 patent. Like the ’679 patent, Hochstein
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`discloses a circuit that supplies a regulated D.C. voltage to an LED array in an
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`A.C. power system.
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`Hochstein “relates generally to an apparatus for generating power to a light
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`emitting diode array and, in particular, to a power supply for operating light
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`emitting diode array traffic signals.” Hochstein, 1:5-8 (Ex. 1003); Shackle Decl. ¶
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`45 (Ex. 1007). Hochstein addresses the issue of retrofitting conventional traffic
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`signals with LED lighting sources and improving the power factor (the ratio of real
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`power to the volt-ampere product) of the LED loads. Hochstein, 1:62-2:42 (Ex.
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`1003); Shackle Decl. ¶ 47 (Ex. 1007).
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`More particularly, Hochstein discloses “an apparatus for supplying regulated
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`voltage [D.C.] electrical power to an LED array,” where the apparatus includes:
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` (1) “a rectifier having an input and an output, the rectifier being responsive
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`to [A.C.] power at the input for generating rectified [D.C.] power at the output”;
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`(2) “a power factor correction converter having an input connected to the
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`rectifier output and an output, the power factor correction converter being
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`responsive to the rectified [D.C.] power at the power factor correction converter
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`input for generating regulated voltage”;
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`(3) “[D.C.] power at the power factor correction output”; and
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`(4) “an LED array having an input connected to the power factor correction
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`converter output for receiving the [D.C.] power to illuminate the LED array.”
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`Hochstein at 3:18-31 (Ex. 1003); Shackle Decl. ¶ 45 (Ex. 1007).
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`Hochstein’s apparatus is shown in Figure 5:
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`
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`Hochstein, Figure 5 (Ex. 1003); Shackle Decl. ¶ 45 (Ex. 1007).
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`In reference to Figure 5, Hochstein further discloses that “[a] negative
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`polarity output of the converter 38 is connected by a negative polarity converter
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`output line 44 to the second input line 20 of the LED array 12 through an optional
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`pulse width modulated (P.W.M.) modulator 46.” Hochstein, 5:61-65; 5:31-36 (Ex.
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`1003); Shackle Decl. ¶ 46 (Ex. 1007). The output voltage from the buck/boost
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`switchmode converter may be fed through the PWM modulator. Hochstein, 5:66-
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`6:1 (Ex. 1003); Shackle Decl. ¶ 46 (Ex. 1007). The switchmode power converter
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`in Hochstein has an “inherent pulse modulating nature” that is used “to provide
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`voltage regulation to the LED array.” Hochstein, 6:17-30 (Ex. 1003); Shackle
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`Decl. ¶ 46 (Ex. 1007).
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`B. U.S. Patent No. 6,211,626 to Lys et al.
`U.S. Patent No. 6,211,626 to Lys, entitled “Illumination Components,” filed
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`on Dec. 17, 1998 and issued on April 3, 2001, is a prior art reference under 35
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`U.S.C. § 102(b). Lys was not cited during prosecution of the ’679 patent;
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`however, it was submitted to the USPTO in an Information Disclosure Statement
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`and it is mentioned in the specification of the ’679 patent at 8:27-28 as being
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`“incorporated by reference” into the ’679 patent. Lys is assigned to Philips and
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`shares inventors Lys and Morgan with the ‘679 Patent.
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`Lys discloses a light module 100 in Figures 20 and 21 that includes an LED
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`array that “can be plugged into a conventional halogen fixture.” Lys, 30:49-50
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`(Ex. 1004). Like the ’679 patent, this is a retrofit solution that allows the user to
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`use the same fixtures and wiring. Shackle Decl. ¶ 47 (Ex. 1007). In one example,
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`the array of LEDs can be “constructed to plug into a fixture, such as an MR-16
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`fixture for a conventional halogen lamp.” Lys, 30:39-40 (Ex. 1004). “In the
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`embodiment of FIG. 20, a pair of connectors 646 connect to a power source, such
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`as an electrical wire, in the same manner as connectors for a conventional halogen
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`bulb in an MR-16 fixture.” Id., 30:44-47 (Ex. 1004). The electrical connections
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`646 are part of the platform 642 which bears the LED array.
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`Lys also discloses an “LED system 120” in Figure 3 that includes a set of
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`red LEDs, a set of blue LEDs, and a set of green LEDs. Lys, 10:58-59 (Ex. 1004).
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`This multi-colored LED system may also be constructed using “single LEDs
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`containing multiple color-emitting semiconductor dies.” Lys, 11:2-4.
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`C. U.S. Patent No. 4,293,796 to McMorrow
`U.S. Patent No. 4,293,796 (“McMorrow”) is a prior art reference to the ‘679
`
`patent under §§102(a) and (b). McMorrow is titled “Traffic Light Dimming
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`Technique and Circuitry.” McMorrow was filed on January 7, 1980, and issued on
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`October 6, 1981. McMorrow was not cited during the prosecution of the ‘679
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`patent.
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`McMorrow discloses “[a] traffic light control circuit of the type utilizing
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`solid state thyristor switches with their control terminals driven by a diode bridge
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`trigger network that includes switches for selectively interrupting one or both legs
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`of the trigger network for energizing the traffic lights with either full wave power
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`for normal daytime operation or half-wave power for night time operation at
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`reduced brightness, thereby providing power savings for night time operations.”
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`McMorrow, Abstract (Ex. 1005). The alleged invention “relates generally to
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`dimming control systems…for traffic control signal lamps.” Id., 1:6-9 (Ex. 1005).
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`McMorrow, like Hochstein as discussed above, relates to dimming for traffic
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`control signal lamps. McMorrow discloses that its A.C. dimmer circuit includes
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`triacs responsive to a user interface to variably control a duty cycle of an A.C.
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`signal. McMorrow, Fig. 1; 3:28-4:4 (Ex. 1005); Shackle Decl. ¶¶ 92-95 (Ex.
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`1007). The waveforms generated by the circuit of McMorrow are shown in the
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`annotated figure