Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERATION BRANDS LLC,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2016-01546
`Patent 8,967,844 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Petitioner, Generation Brands LLC (“GB”), filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1–3, 5, 7, 9, 10, 12, 14,
`16, 17, and 20–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844
`patent”) pursuant to 35 U.S.C. §§ 311–319. GB proffered a Declaration of
`Jonathan Leeper (Ex. 1002) with its Petition. Patent Owner, Lighting
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERATION BRANDS LLC,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2016-01546
`Patent 8,967,844 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Petitioner, Generation Brands LLC (“GB”), filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1–3, 5, 7, 9, 10, 12, 14,
`16, 17, and 20–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844
`patent”) pursuant to 35 U.S.C. §§ 311–319. GB proffered a Declaration of
`Jonathan Leeper (Ex. 1002) with its Petition. Patent Owner, Lighting
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`Science Group Corp. (“LSG”), filed a Preliminary Response (Paper 10,
`“Prelim. Resp.”) to the Petition.
`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
`partes review unless the information in the Petition and Preliminary
`Response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we institute an inter partes review as
`to 1–3, 5, 7, 9, 10, 12, 14, 16, 17, and 20–24 of the ’844 patent on certain
`grounds of unpatentability presented.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following proceedings related to the ’844
`
`patent (Pet. 1–2; Paper 7, 2–3):
`Lighting Sci. Grp. Corp. v. Sea Gull Lighting Prods. LLC, Case No.
`6:16-cv-00338 (M.D. Fla. filed Feb. 25, 2016);
`Lighting Sci. Grp. Corp. v. U.S.A. Light & Elec., Inc., Case No. 6:16-
`cv-00344 (M.D. Fla. filed Feb. 26, 2016);
`Lighting Sci. Grp. Corp. v. Hyperikon, Inc., Case No. 6:16-cv-00343
`(M.D. Fla. filed Feb. 26, 2016);
`Lighting Sci. Grp. Corp. v. Nicor Inc., Case No. 6:16-cv-00413 (M.D.
`Fla. filed Mar. 10, 2016);
`Lighting Sci. Grp. Corp. v. Sunco Lighting, Inc., Case No. 6:16-cv-
`00677 (M.D. Fla. filed Apr. 21, 2016);
`Lighting Sci. Grp. Corp. v. Panor Corp., Case No. 6:16-cv-00678
`(M.D. Fla. filed Apr. 21, 2016);
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`Lighting Sci. Grp. Corp. v. S E L S, Inc., Case No. 6:16-cv-00679
`(M.D. Fla. filed Apr. 21, 2016);
`Lighting Sci. Grp. Corp. v. EEL Co., Ltd., Case No. 6:16-cv-00680
`(M.D. Fla. filed Apr. 21, 2016);
`Lighting Sci. Grp. Corp. v. Globalux Lighting LLC, Case No. 6:16-cv-
`00681 (M.D. Fla. filed Apr. 21, 2016);
`Lighting Sci. Grp. Corp. v. Hubbell Inc., Case No. 6:16-cv-01084
`(M.D. Fla. filed June 22, 2016);
`Lighting Sci. Grp. Corp. v. American De Rosa Lamparts, LLC, Case
`No. 6:16-cv-01087 (M.D. Fla. filed June 21, 2016);
`Lighting Sci. Grp. Corp. v. Titch Indus., Inc., Case No. 6:16-cv-1228
`(M.D. Fla. filed July 7, 2016);
`Lighting Sci. Grp. Corp. v. Tech. Consumer Prods., Inc., Case No.
`6:16-cv-01255 (M.D. Fla. filed July 13, 2016);
`Lighting Sci. Grp. Corp. v. Satco Prods., Inc., Case No. 6:16-01256
`(M.D. Fla. filed July 13, 2016);
`Lighting Sci. Grp. Corp. v. Amax Lighting., Case No. 6:16-cv-01321
`(M.D. Fla. filed July 22, 2016); and
`Lighting Sci. Grp. Corp. v. Shenzhen Jiawei Photovoltaic Lighting,
`Case No. 5:16-cv-03886 (N.D. Cal. filed July 11, 2016).
`
`GB also filed another petition for inter partes review of U.S. Patent
`No. 8,201,968 B2 (“the ’968 patent”), which also is owned by LSG, in co-
`pending Case IPR2016-01478. See Pet. 1. The provisional and non-
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`B.
`
`provisional applications from which the ’968 patent issued are in the priority
`chain of the ’844 patent. See Ex. 1001, at [60], [63].1
`
`The ’844 patent
`The ’844 patent relates to “low profile downlighting for retrofit
`applications.” Ex. 1001, 1:17–19. Figures 5 and 12 of the ’844 patent are
`reproduced below.
`
`
`
`
`1 Due to an apparent typographical error, the ’968 patent is not identified on
`the front of the ’844 patent, but the reference to “application No.
`12/775,310” substantiates this relationship. See Ex. 1001, at [63]; see also
`id. at 1:7–13.
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`
`Figure 5 depicts the separated components of luminaire 100, whereas Figure
`12 depicts a section view of assembled luminaire 100. Id. at 3:63–65, 4:14–
`15. Luminaire 100 includes heat spreader 105, heat sink 110, and outer
`optic 115, light source 120, and electrical supply line 125. Id. at 5:37–44.
`Light source 120, which may be a plurality of LEDs, is disposed in thermal
`communication with heat spreader 105. Id. at 5:37–44, 6:11–14. Heat sink
`110 is thermally coupled to and disposed diametrically outboard of heat
`spreader 105. Id. at 5:37–44. In addition, outer optic 115 is securely
`retained relative to at least one of heat spreader 105 and heat sink 110. Id.
`The combination of heat spreader 105, heat sink 110, and outer optic 115 has
`an overall height H and an overall outside dimension/diameter D such that
`the ratio of H/D is less than or equal to 0.25 (e.g., when H=1.5 inches and
`D=7 inches). Id. at 5:44–50.
`Luminaire 100 may also include a power conditioner. Id. at 6:36–38.
`The power conditioner may be a circuit board having electronic components
`for receiving alternating current (AC) voltage from supply line 125 and
`delivering direct current (DC) voltage to the LEDs. Id. at 6:38–46. In one
`embodiment, the electronics of the power conditioner are contained within a
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`housing to form block-type power conditioner 165, which can be disposed
`on the back surface the heat spreader 105. Id. at 6:53–56, Fig. 11. In this
`configuration, block-type power conditioner 165 can be configured and
`sized to fit within the interior space of an industry-standard nominally sized
`can-type light fixture or an industry-standard nominally sized wall/ceiling
`junction box. Id. at 6:56–59.
`The ’844 patent issued from an application that was filed on
`December 19, 2013, and claims priority back through a continuation
`application and a continuation-in-part application to a provisional
`application filed on October 5, 2009. Id. at [22], [60], [63]. Neither party
`put forth arguments at this stage regarding the priority status of the
`challenged claims under 35 U.S.C. §§ 119(e) and 120. As discussed below,
`GB attempts to establish that, at a minimum, its asserted references qualify
`as prior art relative to the October 5, 2009, filing date of the provisional
`application that ultimately led to the ’844 patent.2
`
`
`C.
`
`Claim 1
`Claims 1 and 24 of the ’844 patent are independent. Claims 2, 3, 5, 7,
`9, 10, 12, 14, 16, 17, and 20–23 depend directly or indirectly from claim 1.
`Claim 1 is illustrative of the challenged claims and recites:
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the face of
`the ’844 patent includes a priority claim to applications filed before the
`effective date of the applicable AIA amendments, we shall assume for
`purposes of this Decision that the pre-AIA versions of 35 U.S.C. §§ 102 and
`103 apply.
`
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`1. A luminaire, comprising:
`a heat spreader and a heat sink, the heat sink being
`substantially ring-shaped and being disposed around and in
`thermal communication with an outer periphery of the heat
`spreader;
`a light source disposed in thermal communication with
`the heat spreader, the light source comprising a plurality of light
`emitting diodes (LEDs) that are disposed in thermal
`communication with the heat spreader such that the heat
`spreader facilitates transfer of heat from the LEDs to the heat
`sink;
`
`an outer optic disposed in optical communication with
`the plurality of LEDs; and
`a power conditioner disposed and configured to receive
`AC voltage from an electrical supply and to provide DC voltage
`for the plurality of LEDs;
`wherein the power conditioner is disposed, configured
`and sized to fit at least partially within an interior space of: a
`nominally sized can light fixture; and, a nominally sized
`electrical junction box.
`Id. at 14:32–51.
`
`Prior Art
`GB relies on the following prior art:
`U.S. Patent No. 7,670,021 B2 to Chou, filed May 20,
`2008, issued Mar. 2, 2010 (Ex. 1012, “Chou”);
`U.S. Patent No. 7,980,736 B2 to Soderman et al., filed
`Nov. 13, 2007, issued July 19, 2011 (Ex. 1013, “Soderman”);
`Silescent Lighting Corporation, S100 LP2 Product Sheet
`and Installation Guide (Ex. 1014, “Silescent”);
`U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10,
`2008, issued May 25, 2010 (Ex. 1015, “Zhang”); and
`
`D.
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`E.
`
`U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22,
`2008, issued Aug. 9, 2011 (Ex. 1016, “Wegner”).
`
`The Asserted Grounds
`GB challenges claims 1–3, 5, 7, 9, 10, 12, 14, 16, 17, and 20–24 of the
`’844 patent on the following grounds (Pet. 18):
`Reference(s)
`Basis
`
`Claim(s) Challenged
`
`Chou and Wegner
`
`Chou, Wegner, and
`Zhang
`Soderman, Chou, and
`Silescent
`Soderman, Zhang,
`Chou, and Silescent
`Soderman, Wegner,
`Chou, and Silescent
`Zhang
`
`Zhang and Wegner
`
`35 U.S.C. § 103(a) 1–3, 5, 7, 9, 12, 14,
`16, and 21–24
`35 U.S.C. § 103(a) 10
`
`35 U.S.C. § 103(a) 1–3, 5, 7, 9, 12, 14,
`16, and 20–24
`35 U.S.C. § 103(a) 10
`
`35 U.S.C. § 103(a) 17
`
`35 U.S.C. § 103(a) 1, 2, 9, 10, 16, 21, and
`22
`35 U.S.C. § 103(a) 17
`
`35 U.S.C. § 103(a) 20
`
`Zhang, Wegner, and
`Soderman
`
`The Board has broad discretion to institute inter partes review as to
`some asserted grounds of unpatentability and not others. See 37 C.F.R.
`§ 42.108(a). This discretion is based upon and consistent with the statutory
`requirement that inter partes reviews take into account “the efficient
`administration of the Office” and “the ability of the Office to timely
`complete proceedings.” 35 U.S.C. § 316(b). It is similarly based upon and
`
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`consistent with the regulatory requirement that the Board “secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1(b). Accordingly, “the Board may choose to institute some grounds
`and not institute others as part of its comprehensive institution decision.”
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1368 (Fed. Cir. 2016).
`GB effectively asserts the challenged claims of the ’844 patent are
`unpatentable over three sets of grounds, with each set having a different
`primary reference. GB has not, however, identified the relative strengths or
`weaknesses of these sets of grounds or stated a preference for any of the
`grounds. To preserve the Board’s resources, we confine our analysis to
`those grounds having Chou or Zhang as the primary reference. See
`37 C.F.R. § 42.108(a).
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`GB proposes interpretations for several claim terms in the ’844 patent:
`“heat spreader,” “heat sink,” “integrally formed,” “ring-shaped,” “nominally
`
`F.
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`sized can light fixture,” “nominally sized electrical junction box,” and
`“diametrically outboard.” Pet. 15–18. LSG only responds regarding “heat
`spreader” and “heat sink” by arguing that these two terms need no
`construction. Prelim. Resp. 4. For purposes of this Decision, and based on
`the current record, we determine that none of these terms requires explicit
`construction at this time. 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”).
`
`
`A.
`
`II. ANALYSIS
`We now consider some of GB’s asserted grounds to determine
`whether GB has met the “reasonable likelihood” threshold standard for
`institution under 35 U.S.C. § 314(a).
`
`Obviousness Ground Based on Chou and Wegner
`GB contends claims 1–3, 5, 7, 9, 12, 14, 16, and 21–24 would have
`been obvious over Chou and Wegner. Pet. 19–35. LSG disputes GB’s
`contention. Prelim. Resp. 4–23.
`
`Chou
`1.
`Chou is a U.S. patent directed to “a recessed light fixture having a
`thermally effective trim.” Ex. 1012, 1:16–18. Figures 2a and 2b of Chou
`are reproduced below.
`
`10
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`Figures 2a and 2b depict perspective and cross-sectional views, respectively,
`of “a recessed can light fixture including a thermally conductive trim and
`heat sink for redistributing heat.” Id. at 3:1–6. Fixture 10 includes light
`source 15, which can be “a light engine that includes a plurality of LEDs.”
`Id. at 4:15–17, 8:53–54. Light source 15 is mounted on a front surface of
`trim 12, into which heat from light source 15 is transferred. Id. 4:15–16,
`7:45–47. Heat is subsequently transferred to both flange portion 22 of trim
`12 and to heatsink 14. Id. at 7:45–47, 7:63. “Although some heat is vented
`into the recessed housing via heatsink 14, a majority of heat is dissipated
`from trim 12 outside the housing.” Id. at 5:8–10, 7:14–19.
`
`11
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`Fixture 10 also includes optical lens 23 and electrical socket 16 for
`connecting the light source to an electricity source. Id. at 4:17–18, 8:17–23.
`In addition, an AC-to-DC converter circuit may be connected between
`socket 16 and the light source, and the conversion circuit can include circuit
`board 17. Id. at 4:22–27.
`GB notes that Chou issued from an application filed on May 20, 2008,
`but GB does not take a position about how Chou qualifies as prior art.
`Pet. 9. For purposes of this Decision, we find that, at least, Chou qualifies as
`prior art under 35 U.S.C. § 102(e) because Chou’s application date was
`before the October 5, 2009, filing date of the provisional application that led
`to the ’844 patent. Ex. 1001, at [60]; Ex. 1012, at [22].
`
`2. Wegner
`Wegner is a U.S. patent directed to “a light emitting diode downlight
`can fixture for a recessed luminaire.” Ex. 1016, 1:31–33. Wegner describes
`Edison base adapter 1520 as allowing for retrofitting an LED module in an
`existing, non-LED fixture. Id. at 10:4–6, Fig. 16. For certain applications
`where a direct wired connection is desired, Wegner describes removing the
`Edison base adapter and connecting the remaining wires to the wiring of an
`existing fixture. Id. at 11:3–32, Fig. 14.
`GB notes that Wegner issued from an application filed on
`September 22, 2008, but GB does not take a position about how Wegner
`qualifies as prior art. Pet. 14. For purposes of this Decision, we find that, at
`least, Wegner qualifies as prior art under 35 U.S.C. § 102(e) because
`Wegner’s application date was before the October 5, 2009, filing date of the
`
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`provisional application that led to the ’844 patent. Ex. 1001, at [60];
`Ex. 1016, at [22].
`
`Claims 1, 2, 7, 9, 14, 16, and 22
`3.
`In its obviousness analysis for claim 1, GB maps “the interior portion
`of [Chou’s] trim 12” to the recited “heat spreader” of claim 1. Pet. 19 (citing
`7:44–46; 7:63–8:1, Figs. 2b, 4a, 4b). GB also maps Chou’s flange
`portion 22 of trim 12 to the recited “heat sink.”3 Id. at 20 (citing Ex. 1012,
`5:1–5, 7:63–8:3, Fig. 4a). GB also cites Chou for teaching an LED light
`source that is in thermal communication with trim 12. Id. at 21–22 (citing
`Ex. 1012, 4:14–17, 5:1–5, 7:37–40, 7:44–46, 7:63–8:1, 8:44–48, Figs. 2b,
`4b). GB quotes Chou for the proposition that heat from the LED light
`source “is transferred into trim 12 at the attachment point. From there, the
`heat is transferred into . . . the flange of trim 12.” Id. at 19 (quoting Ex.
`1012, 7:44–46). Regarding the requirement that the heat sink is
`“substantially ring-shaped” and “in thermal communication with an outer
`periphery of the heat spreader,” GB contends Chou teaches that trim 12 is
`thermally conductive and that it “includes a flange around a perimeter of the
`trim.” Id. at 21 (quoting Ex. 1012, 2:54–55 and citing Ex. 1012, 5:50–51,
`Figs. 2b, 4a, 4b). GB explains that the inner portion of Chou’s trim 12 and
`flange portion 22 are in thermal communication because they are the same
`piece of metal. Id. (citing Ex. 7:24–25, 7:49–50). Furthermore, for the
`
`
`3 GB contends Chou’s “heatsink 14” is a “secondary” heat sink and an
`“unclaimed element ha[ving] no bearing on obviousness in this case.”
`Pet. 20 n.17.
`
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`recited “outer optic,” GB cites Chou’s lens 23. Id. at 22 (citing Ex. 1012,
`8:16–23, Fig. 2b).
`Regarding the recited “power conditioner,” GB cites Chou’s teaching
`that “an AC to DC converter circuit may be connected between socket 16
`and the light source to convert the AC power source into a DC source.” Id.
`(quoting Ex. 1012, 4:22–26). GB contends Chou’s power conditioner would
`“fit at least partially within an interior space of[] a nominally sized can light
`fixture” based on Chou’s teachings that fixture 10 is configured to fit within
`5-inch and 6-inch can light fixtures. Id. at 23 (citing Ex. 1012, 3:65–66).
`GB explains that “power conversion circuit board 17 is positioned within
`secondary heatsink 14 and therefore must fit within a 5-inch can.” Id. (citing
`Ex. 1012, 4:28, 4:46–54, Fig. 2b).
`In addition, GB contends it would have been obvious to modify
`Chou’s heatsink 14 and driver such that the power conditioner would “fit at
`least partially within an interior space of . . . a nominally sized electrical
`junction box” in accordance with clam 1. See id. at 23–26. Specifically, GB
`proposes “selecting an alternative driver and heat sink scaled/sized to fit in
`the shallower dimension of an electrical junction box.” Id. at 23–24 (citing
`Ex. 1002 ¶ 57; Ex. 1018 (“DiLouie”), 28). In support of the modification,
`GB cites Chou’s teaching that “fixture 10 may be configured to be installed
`into a recessed can housing having other geometries.” Id. at 23 (quoting Ex.
`1012, 3:67–4:1) (emphasis added by GB). GB also contends an ordinarily
`skilled artisan would have known about power conditioners sized to fit in a
`junction box, though GB acknowledges that smaller power conditioners
`might have “a lower total power output and lesser heat sinking requirements
`than a physically larger driver.” Id. at 24 (citing Ex. 1002 ¶¶ 57–58). GB
`
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`further acknowledges that an ordinarily skilled artisan would have employed
`“an appropriately reduced number of LEDs (thus consuming less power) in
`order to match/accommodate the heat dissipating characteristics of the
`smaller driver, heat sink, and volume.” Id. at 24–25 (citing Ex. 1002 ¶ 60).
`GB additionally cites Wegner for teaching the removal of Chou’s male
`Edison base “to expose and connect wires in an LED light fixture.” Id. at 25
`(citing Ex. 1002 ¶ 61; Ex. 1016, 11:3–32).
`GB contends an ordinarily skilled artisan would have been motivated
`to modify Chou’s power conditioner to fit in a nominally sized junction box
`to serve “not just [the] retrofit but also [the] new construction market[s]”
`because “4-inch, 5-inch, and 6-inch junction boxes were widely used and
`well known in new construction applications at the time.” Id. at 25–26
`(citing Ex. 1002 ¶ 62). GB also contends substituting an “available smaller
`driver[] and correspondingly smaller secondary heat sink would have
`yielded the predictable result of the driver and accompanying heat sink
`fitting inside a nominally sized junction box.” Id. at 24 (citing Ex. 1002
`¶ 59).
`
`Considering GB’s analysis and submitted evidence, and the arguments
`presented in LSG’s Preliminary Response, we are satisfied there is a
`reasonable likelihood that GB would prevail in showing claim 1 would have
`been obvious over Chou and Wegner. We add the following for additional
`explanation.
`LSG argues Chou only teaches “alternative attachment mechanisms,
`or attachment clips, [but] not alternative housings, as Petitioner suggests.”
`Prelim. Resp. 6 (citing Ex. 1012, 4:1–7). Based on Chou’s anticipated
`development of “new recessed housings . . . with different geometries,” LSG
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`contends an ordinarily skilled artisan would have had no motivation to look
`to existing junction box housings. Id. at 6–7 (quoting Ex. 1012, 4:1–7). We
`do not agree with LSG’s characterization of Chou, however. First, Chou’s
`discussion of attachment mechanisms (see Ex. 1012, 4:1–7) does not detract
`from Chou’s express teaching on installing LED fixtures in can housings
`having other geometries (see Ex. 1012, 3:67–4:1). Second, we are
`persuaded by GB’s rationale that an ordinarily skilled artisan considering
`Chou’s allusion to “other geometries” would have found it obvious to
`modify Chou’s heatsink 14 and driver for disposition in a junction box.4 See
`Pet. 23–25; Ex. 1002 ¶¶ 56–63. We do not agree that an ordinarily skilled
`artisan would have read “other geometries” so narrowly as to confine him or
`herself to the geometries of can housings.
`LSG also characterizes GB’s unpatentability ground as including
`DiLouie based on a citation to this reference in LSG’s analysis. Id. at 7
`(citing Pet. 23). LSG contends GB has provided no motivation to combine
`DiLouie with Chou. Id. at 7–8. We may consider record evidence outside
`of the asserted ground, such as DiLouie, that demonstrates the knowledge
`and perspective of one of ordinary skill in the art, particularly when it
`explains why an ordinarily skilled artisan would have been motivated to
`combine or modify the cited references to arrive at the claimed invention.
`See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed.
`Cir. 2015); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). As
`
`4 Mr. Leeper’s testimony establishes that an ordinarily skilled artisan would
`have known of power conditioners without heat sinks and that certain drivers
`“did not require substantial heat sinking.” Ex. 1002 ¶ 60 n.6 (citing
`Ex. 1015, Fig. 3; Ex. 1017, Fig. 2). In addition, “heat could be dissipated
`out through the trim into the room.” Id.
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`such, GB’s reference to DiLouie properly establishes that an ordinarily
`skilled artisan would have known that power conditioners for LED fixtures
`could be sized to fit in a junction box, which supports GB’s proposed
`modification of Chou. See Pet. 23–24 (citing Ex. 1002 ¶¶ 57–59; Ex. 1018,
`28). LSG also argues DiLouie “does not discuss dimensions of a light
`fixture or what parts of the unmentioned light fixture would reside in a
`junction box.” Id. at 8–9 (citing Pet. 24; Ex. 1018, 28). But GB does not
`rely on DiLouie to establish fixture dimensions. Furthermore, the cited
`portion of DiLouie refers to fitting an LED driver inside a junction box (see
`Ex. 1018, 28), which undermines LSG’s argument to the contrary.
`LSG also argues GB does not indicate how its proposed “reduction in
`LEDs would affect the light output of Chou and how a lower output would
`be acceptable for the marketplace.” Prelim. Resp. 8 (internal quotation
`omitted). Yet GB relies on a technical explanation, rather than a market-
`based motivation, to support this modification. Specifically, GB contends
`that, to the extent necessary, an ordinarily skilled artisan would have reduced
`the number of LEDs “to match/accommodate the heat dissipating
`characteristics of the smaller driver, heat sink, and volume.” Pet. 25–26
`(citing Ex. 1002 ¶ 60). This explanation is supported by, at least, Mr.
`Leeper’s testimony. See Ex. 1002 ¶ 60 & n.6. In addition, LSG challenges
`GB’s purported motivation to combine Wegner with Chou as being based on
`serving retrofit and construction markets; LSG contends GB has provided no
`data regarding market designs or needs. Prelim. Resp. 9. We determine that
`GB has made a sufficient showing at this stage regarding a market-based
`motivation (see Ex. 1002 ¶ 62), though we anticipate that such evidence will
`
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`be further developed and more completely evaluated in the context of a trial
`when the ultimate determination of obviousness is made.
`LSG argues that GB’s reckoned knowledge of an ordinarily skilled
`artisan on LED fixture design (see Pet. 25) and Chou’s teachings (see Ex.
`1012, 5:11) suggest that Chou “has already employed the smallest heat
`sinking system, LED driver, and number of LEDs to provide sufficient
`illumination.” Id. But LSG’s argument does not consider that an ordinarily
`skilled artisan would have known to make various design choices to account
`for different spatial configurations. GB’s evidence establishes as much. See
`Ex. 1002 ¶¶ 57–63.
`LSG additionally argues Wegner “does not teach connection to a
`junction box at all,” but rather relates to existing recessed can light fixtures.
`Prelim. Resp. 9–10 (citing Pet. 14). GB does not rely on Wegner for
`teaching the modification of Chou to fit a junction box, however. Instead,
`GB cites Wegner for teaching the removal of the male Edison base. See Pet.
`25 (citing Ex. 1002 ¶ 61). Accordingly, LSG’s argument does not
`undermine GB’s obviousness showing at this stage.
`Having considered GB’s evidence and LSG’s arguments in its
`Preliminary Response, we determine GB has established sufficiently at this
`stage that Chou and Wegner teach every limitation of claim 1. GB has also
`provided a sufficient rationale for its proposed combination. Thus, for the
`foregoing reasons, GB demonstrates a reasonable likelihood of prevailing in
`showing that claim 1 would have been obvious over Chou and Wegner.
`LSG does not address separately GB’s explanations and supporting evidence
`regarding claims 2, 7, 14, 16, and 22. Based on the record before us, GB has
`demonstrated a reasonable likelihood that it will prevail on its assertion that
`
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`claims 2, 7, 14, 16, and 22 would have been unpatentable over Chou and
`Wegner. See Pet. 26–28, 30–32.
`
`Claims 3 and 5
`4.
`Claim 3 depends from claim 2 and recites “the heat spreader, the heat
`sink and the outer optic, in combination, further has an overall height H such
`that the ratio of H/D is equal to or less than 0.25.” Ex. 1001, 14:59–62.
`Regarding this limitation, GB cites Chou’s description that “trim 12 includes
`a thermally conductive material such as aluminum, and has an outer
`diameter of 200 mm, an inner diameter of 130 mm and a depth of 42 mm.”
`Pet. 27 (quoting Ex. 1012, 5:24–27 and citing Ex. 1012, Fig. 4a). GB
`characterizes this 42 mm depth as being “the trim depth protruding from the
`ceiling surface” and contends it is “used in all the subsequent calculations of
`heat dissipation by the trim.” Id. (citing Ex. 1012, 5:27–28). Based on these
`dimensions, GB argues Chou’s “height to diameter (H/D) ratio is 42/200 =
`0.21, which is less than 0.25.” Id.
`LSG argues that GB’s ratio calculation is wrong because the ratio
`should include the dimensions of Chou’s heatsink 14 in the overall height H.
`Prelim. Resp. 12–14. LSG also argues that Chou is not clear on what
`measurement constitutes the depth of 42 mm, and, in any event, Chou does
`not support GB’s contention that Chou’s depth is “the trim depth protruding
`from the ceiling surface.” Id. at 14–15. And, even if GB’s “protruding from
`the ceiling surface” definition were applied, LSG contends that this
`definition does not account for the height of the interior portion of Chou’s
`trim 12. Id. at 16–17.
`
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`Although LSG purports to show ambiguity in Chou’s “depth
`measurement,” Chou expressly refers to the 42 mm depth as applying to
`trim 12. Ex. 1012, 5:24–27. GB maps the interior portion of trim 12 to the
`recited “heat spreader” and flange portion 22 of trim 12 to the recited “head
`sink.” Pet. 19–20. GB additionally notes Chou’s “optic does not protrude
`beyond trim 12,” so GB contends that the depth of trim 12 accounts for the
`entire height measurement for “the heat spreader, the heat sink and the outer
`optic” in claim 3. Id. at 27. We are persuaded by GB’s analysis that Chou’s
`“depth” and “outer diameter” dimensions—as applied to the recited ratio—
`teach the ratio limitation in claim 3. And, even if there is some slight
`ambiguity as to the definition of “depth” in Chou, we are satisfied at this
`stage that Chou teaches a ratio in the recited range. See In re Harris, 409
`F.3d 1339, 1341 (Fed. Cir. 2005) (“Even without complete overlap of the
`claimed range and the prior art range, a minor difference shows a prima
`facie case of obviousness.”); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
`2003) (“[A] prima facie case of obviousness exists when the claimed range
`and the prior art range do not overlap but are close enough such that one
`skilled in the art would have expected them to have the same properties.”).
`We also do not agree with LSG that Chou’s heatsink 14 should factor into
`the analysis (see Prelim. Resp. 12–14), because GB does not rely on heatsink
`14 in its obviousness analysis. See Pet. 20 n.17; see also Ex. 1002 ¶ 60 n.6
`(Mr. Leeper testifying that power conditioners can be sufficiently cooled
`without a large secondary heat sink).
`Thus, for the foregoing reasons, GB demonstrates a reasonable
`likelihood of prevailing in showing that claim 3 would have been obvious
`over Chou and Wegner. LSG relies on the same arguments regarding claim
`
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`5. See Prelim. Resp. 10–11. Based on the record before us, GB has
`demonstrated a reasonable likelihood that it will prevail on its assertion that
`claim 5 would have been unpatentable over Chou and Wegner.
`
`Claims 9, 12, 21, 23, and 24
`5.
`Claim 9 depends from claim 1 and recites “the power conditioner is
`configured and sized to fit completely within an interior space of a
`nominally sized can light fixture, and, a nominally sized electrical junction
`box.” Ex. 1001, 15:12–16. GB contends Chou’s power conditioner fits
`within a 5-inch or 6-inch light can. Pet. 23 (citing Ex. 1012, 3:65–66, 4:28,
`4:46–54, Fig. 2b), 29. GB argues “it would have been would have been
`obvious to one of ordinary skill to scale these components (and the LEDs as
`necessary) to likewise fit completely within a nominally sized can and
`electrical junction box.” Id. at 23–25 (citing Ex. 1002 ¶¶ 57–60), 29 (citing
`Ex. 1002 ¶ 74). LSG relies on the same arguments it made with respect to
`claim 1, as discussed above. See Prelim. Resp. 17–18.
`Claim 12 depends from claim 1 and recites “the heat sink forms a trim
`plate that is disposed completely external of the can light fixture or the
`electrical junction box.” Ex. 1001, 15:24–27 (emphasis added). GB cites
`Chou’s trim 12, and specifically flange 22 of trim 12, for teaching this
`limitation. Pet. 30 (citing Ex. 1012, 4:46–54, 5:10–11, 7:63, Figs. 2b, 3, 4a,
`12, 30). LSG argues “the heat sink of Chou properly includes ‘heatsink
`14,’” which “is not a trim plate nor is it disposed completely external of the
`can light fixture.” Prelim. Resp. 20–21. As stated above, however, GB does
`not rely on Chou’s heatsink 14 in its analysis. See Pet. 20 n.17; see also
`Ex. 1002 ¶ 60 n.6.
`
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`Claim 21 depends from claim 1 and recites “the nominally sized can
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