Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: November 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TECHNICAL CONSUMER PRODUCTS, INC.,
`NICOR INC., and AMAX LIGHTING,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01280
`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
`
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of
`U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to
`35 U.S.C. §§ 311–319. Petitioner proffered a Declaration of Dr. Zane
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: November 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TECHNICAL CONSUMER PRODUCTS, INC.,
`NICOR INC., and AMAX LIGHTING,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01280
`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
`
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of
`U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to
`35 U.S.C. §§ 311–319. Petitioner proffered a Declaration of Dr. Zane
`
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`Coleman (Ex. 1002) with its Petition. Patent Owner, Lighting Science
`Group Corp. (“LSG”), did not file a Preliminary Response 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 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent on all
`grounds of unpatentability presented.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following proceedings related to the
`
`’844 patent (Pet. 1–2; Paper 6, 1–3):
`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).
`
`Petitioner 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 IPR2017-01287. See Pet. 1. Petitioner additionally filed
`a petition for inter partes review of U.S. Patent No 8,672,518 B2 (“the
`’518 patent”), which also is owned by LSG, in co-pending Case IPR2017-
`01285. See id. The provisional and non-provisional applications from
`3
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`which the ’968 patent and ’518 patent issued are in the priority chain of the
`’844 patent. See Ex. 1001, at [60], [63], Cert. of Correction.
`Generation Brands LLC previously filed petitions for inter partes
`review of the ’844 patent and the ’968 patent in IPR2016-01546 and
`IPR2016-01478, respectively. Pet. 1. After our decisions to institute inter
`partes review in these cases, both cases were settled and terminated. See id.;
`Paper 6, 1. Petitioner asserts its Petition in the instant case is substantially
`similar to the Petition filed by Generation Brands LLC in IPR2016-01546.
`See Pet. 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.
`
`B.
`
`
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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
`puts 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,
`Petitioner 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.1
`
`
`C.
`
`Claim 1
`Claims 1 and 24 of the ’844 patent are independent. Claims 2–5, 7–9,
`11, 12, 14, 16, 17, 19, and 21–23 depend directly or indirectly from claim 1.
`Claim 1 is illustrative of the challenged claims and recites:
`
`
`1 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;
`
`D.
`
`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
`Petitioner 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”);2
`
`2 Petitioner refers to Silescent as a single reference even though it appears to
`comprise two separate documents: a product sheet and an installation guide.
`Compare Ex. 1014, 1–2 with id. at 3–4. In addition, we follow Petitioner’s
`7
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`U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10,
`2008, issued May 25, 2010 (Ex. 1015, “Zhang”); and
`U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22,
`2008, issued Aug. 9, 2011 (Ex. 1016, “Wegner”).
`
`The Asserted Grounds
`Petitioner challenges claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–
`24 of the ’844 patent on the following grounds (Pet. 16):
`Reference(s)
`Basis
`Claim(s) Challenged
`
`E.
`
`Chou and Wegner
`
`Chou, Zhang, and
`Wegner
`Zhang
`
`Zhang, Soderman, and
`Silescent
`Zhang and Wegner
`
`35 U.S.C. § 103(a) 1–3, 5, 7, 8, 9, 11, 12,
`14, 16, and 21–24
`35 U.S.C. § 103(a) 8
`
`35 U.S.C. § 103(a) 1, 2, 8, 9, 16, 21, and
`22
`35 U.S.C. § 103(a) 3 and 4
`
`35 U.S.C. § 103(a) 11, 17, and 19
`
`F.
`
`
`
`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
`
`
`page numbering convention for the installation guide even though each page
`numbered by Petitioner appears to span two pages of the installation guide.
`8
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`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).
`Petitioner does not propose interpretations for any claim terms. For
`purposes of this Decision, we determine that no terms require 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 Petitioner’s asserted grounds to determine whether
`Petitioner has met the “reasonable likelihood” threshold standard for
`institution under 35 U.S.C. § 314(a).
`
`Obviousness Ground Based on Chou and Wegner
`Petitioner contends claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24
`would have been obvious over Chou and Wegner. Pet. 19–35.
`
`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.
`
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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.
`
`10
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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.
`Petitioner notes that Chou issued from an application filed on May 20,
`2008, but Petitioner 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.
`Petitioner notes that Wegner issued from an application filed on
`September 22, 2008, but Petitioner does not take a position about how
`Wegner qualifies as prior art. Pet. 15. 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
`
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`date of the provisional application that led to the ’844 patent. Ex. 1001, at
`[60]; Ex. 1016, at [22].
`
`Claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24
`3.
`In its obviousness analysis for claim 1, Petitioner maps “the interior
`portion of [Chou’s] trim 12” to the recited “heat spreader” of claim 1.
`Pet. 17 (citing 7:44–46; 7:63–8:1, Figs. 2b, 4a, 4b). Petitioner also maps
`Chou’s flange portion 22 of trim 12 to the recited “heat sink.”3 Id. at 18–19
`(citing Ex. 1012, 5:1–5, 7:63–8:3, Fig. 4a). Petitioner 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). Petitioner 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 17 (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,” Petitioner contends Chou teaches that
`trim 12 is thermally conductive and that it “includes a flange around a
`perimeter of the trim.” Id. at 19 (quoting Ex. 1012, 2:54–55 and citing
`Ex. 1012, 5:50–51, Figs. 2b, 4a, 4b). Petitioner 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 or are multiple
`pieces combined. Id. at 19–20 (citing Ex. 7:23–26, 7:49–50, Fig. 2b).
`
`
`3 Petitioner contends Chou’s “heatsink 14” is a “secondary” heat sink and an
`“unclaimed element ha[ving] no bearing on obviousness in this case.”
`Pet. 19 n.8.
`
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`Furthermore, for the recited “outer optic,” Petitioner cites Chou’s lens 23.
`Id. at 21 (citing Ex. 1012, 8:16–23, Fig. 2b).
`Regarding the recited “power conditioner,” Petitioner 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). Petitioner 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 22
`(citing Ex. 1012, 3:65–66). Petitioner 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).
`Petitioner 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 22–25. Specifically, Petitioner
`proposes “selecting an alternative driver and heat sink scaled/sized to fit in
`the shallower dimension of an electrical junction box.” Id. at 22–23 (citing
`Ex. 1002 ¶ 49; Ex. 1018 (“DiLouie”), 28). In support of the modification,
`Petitioner cites Chou’s teaching that “fixture 10 may be configured to be
`installed into a recessed can housing having other geometries.” Id. at 22
`(quoting Ex. 1012, 3:67–4:1) (emphasis added by Petitioner). Petitioner also
`contends an ordinarily skilled artisan would have known about power
`conditioners sized to fit in a junction box, though Petitioner acknowledges
`that smaller power conditioners might have “a lower total power output and
`lesser heat sinking requirements than a physically larger driver.” Id. at 23
`
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`(citing Ex. 1002 ¶¶ 49). Petitioner further acknowledges that an ordinarily
`skilled artisan would have employed “more efficient LEDs or 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 (citing Ex. 1002 ¶ 52). Petitioner
`additionally cites Wegner for teaching the removal of Chou’s male Edison
`base “to expose and connect wires in an LED light fixture.” Id. (citing
`Ex. 1002 ¶ 53; Ex. 1016, 11:3–32).
`Petitioner 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
`24–25 (citing Ex. 1002 ¶ 54). Petitioner 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 23 (citing
`Ex. 1002 ¶¶ 50–51).
`Thus, Petitioner has established sufficiently at this stage that the
`combination of Chou and Wegner teaches every limitation of claim 1.
`Supported by the testimony of Dr. Coleman, Petitioner also has provided a
`sufficient rationale for its proposed combination and modifications,
`including the disposition of Chou’s secondary heat sink and driver within a
`nominally sized junction box (see Ex. 1002 ¶ 49; Ex. 1018, 28), and the use
`of wiring for Chou’s luminaire in a junction box (see Ex. 1002 ¶ 53;
`Ex. 1016, 11:3–32). Considering Petitioner’s analysis and submitted
`
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`evidence, we are satisfied there is a reasonable likelihood that Petitioner
`would prevail in showing claim 1 would have been obvious over Chou and
`Wegner.
`Claims 2, 3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–23 depend directly or
`indirectly from claim 1, and Petitioner identifies evidence indicating that the
`combination of Chou and Wegner also teaches the limitations in these
`claims. See Pet. 25–34. Claim 24 incorporates limitations similar to those
`of claims 1, 2, and 12. See id. at 34–36. Therefore, on this record, Petitioner
`has shown sufficiently that the combination of Chou and Wegner teaches the
`limitations in claims 2, 3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24. Accordingly,
`we determine that Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 2, 3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24
`would have been obvious over Chou and Wegner.
`
`B.
`
`Obviousness Ground Based on Chou, Zhang, and Wegner
`Petitioner contends that claim 8 would have been obvious over Chou,
`Zhang, and Wegner. Pet. 36–37.
`
`Zhang
`1.
`Zhang is a U.S. patent directed to “a recessed lighting fixture that
`provides improved heat dissipation and grounding.” Ex. 1015, 1:15–17.
`Figures 2 and 3 of Zhang are reproduced below.
`
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`Figures 2 and 3 depict trim unit 50 for a recessed light fixture having trim
`ring 52, baffle 54, and heat sink 56. Id. at 7:55–8:1. Trim unit 50 also
`includes trim cup 72. Id. at 8:31–34. A plurality of LEDs 57 are mounted to
`trim cup 72 within baffle 54. Id. at 7:65–8:1, 8:10–14, 9:44–48. Heat is
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`transferred from the LEDs to the trim cup. Id. at 12:42–48. In turn, heat is
`transferred to the baffle and heat sink of the trim unit, from which it can be
`dissipated into the surrounding room via the trim ring portion of the trim
`unit. Id. at 7:9–13, 7:65–8:1.
`Zhang also describes the LEDs being “located within LED lenses”
`and a tempered glass plate disposed below the LEDs. Id. at 9:41–44.
`Petitioner notes that Zhang issued from an application filed on
`October 10, 2008, but Petitioner does not take a position about how Zhang
`qualifies as prior art. Pet. 14. For purposes of this Decision, we find that, at
`least, Zhang qualifies as prior art under 35 U.S.C. § 102(e) because Zhang’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. 1015, at [22].
`
`Claim 8
`2.
`Claim 8 depends from claim 1 and recites “the LEDs are disposed on
`one side of the heat spreader and the power conditioner is disposed on
`another opposing side of the heat spreader.” Ex. 1001, 15:8–11. In the
`Chou-Wegner ground, Petitioner cites Chou’s Figure 3 for teaching that light
`source 15 is disposed on the lower side of the heat spreader (i.e., the inner
`portion of trim 12), whereas circuit board 17 is disposed on the upper side of
`the heat spreader.4 Pet. 28–29. For the instant ground, Petitioner adds
`Zhang “[t]o the extent the Board finds Chou does not disclose the limitation”
`in claim 8. Id. at 37. In particular, Petitioner cites Zhang’s Figure 13 and
`
`4 On this basis, we institute inter partes review of claim 8 as obvious over
`the combination of Chou and Wegner. See supra § II.A.3.
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`contends “LEDs on the underside of the printed circuit board 96 . . . are on
`the lower side of the trim cup 112 (heat spreader) and the driver 68 is on the
`opposing (upper) side of the trim cup 112 (heat spreader).” Id. Petitioner
`further contends an ordinarily skilled artisan would have been motivated to
`dispose the LEDs and the power conditioner in this way so the power
`conditioner would not block the light from the LEDs, and because the heat
`spreader could conduct heat away from both elements. Id.
`Thus, Petitioner persuasively shows that Zhang also teaches the
`limitations in claim 8, and that an ordinarily skilled artisan would have had
`reason to combine Zhang with Chou and Wegner. Accordingly, we
`determine Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that claim 8 would have been obvious over Chou, Zhang, and
`Wegner.
`
`C. Obviousness Ground Based on Zhang
`Petitioner contends that claims 1, 2, 8, 9, 16, 21, and 22 would have
`been obvious over Zhang. Pet. 38–51.
`In its obviousness analysis for claim 1, Petitioner cites Zhang’s
`recessed lighting fixture, which utilizes a plurality of LEDs 57 that are
`mounted on a printed circuit board. Pet. 41 (citing Ex. 1015, 8:10–12, 9:44–
`48). Zhang’s fixture includes tempered glass plate 106 below the LEDs,
`which Petitioner maps to the recited “outer optic” of claim 1. Id. (citing
`Ex. 1002 ¶ 105; Ex. 1015, 9:41–44, Figs. 5, 8).
`Petitioner cites Zhang’s trim cup for the recited “heat spreader.” Id. at
`38 (citing Ex. 1015, 12:43–48). Petitioner notes that the LEDs are mounted
`to the trim cup, which is made of a thermally conductive material such that
`
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`the LEDs are in thermal communication with the trim cup. Id. at 38, 41
`(citing Ex. 1015, 8:37–38, 9:44–48, 12:43–48, Fig. 5). Petitioner maps
`Zhang’s trim unit, which comprises trim ring 52, baffle 54, and heat sink 56,
`and which also is made of thermally conductive material, to the recited “heat
`sink” of claim 1. Id. at 38–40 (citing Ex. 1015, 3:6–18, 4:23–29, 7:3, 8:34–
`36, 8:58–61, Figs. 1, 1A, 3, 5). Petitioner notes the trim unit is circular, so
`Petitioner contends the trim unit is “substantially ring-shaped” in accordance
`with claim 1. Id. at 40 (citing Ex. 1002 ¶ 101; Ex. 1015, Figs. 2, 3).
`Petitioner further contends “[t]he interior perimeter of the baffle cavity (i.e.,
`the upper portion of the integrated trim unit) surrounds the exterior perimeter
`of the bottom of the trim cup on which the LEDs are mounted.” Id. (citing
`Ex. 1015, Fig. 5). Petitioner notes the heat sink and baffle draw heat from
`the trim cup, and then the trim ring dissipates heat into the room. Id. at 39–
`41 (citing Ex. 1002 ¶ 102; Ex. 1015, 7:8–13, 7:65–8:1, 12:43–48, Fig. 3).
`Accordingly, Petitioner contends Zhang’s trim unit is “in thermal
`communication with an outer periphery” of Zhang’s trim cup 72. Id. at 40
`(citing Ex. 1002 ¶ 102).
`For the recited “power conditioner,” Petitioner cites Zhang’s
`teachings on a driver (e.g., driver 42) that “provides the necessary electrical
`energy to cause the LEDs to emit light.” Id. at 42 (quoting Ex. 1015, 7:26–
`29 and citing Ex. 1015, 5:37–39, 8:24–26). Citing testimony from
`Dr. Coleman, Petitioner contends an ordinarily skilled artisan would have
`understood Zhang’s references to the driver and to the processing of
`electrical energy as “disclosing an AC-to-DC power converter” because
`“LED fixtures operating off of AC power must have some means to convert
`the AC power to unidirectional, limited-current power.” Id. (citing Ex. 1002
`
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`¶ 106). Regarding claim 1’s limitation on disposing the power conditioner
`within a nominally sized can, Petitioner contends “Zhang discloses driver 42
`on top of the trim cup and completely within the internal space 49 of
`recessed can 36.” Id. at 43 (citing Ex. 1015, 6:66–67, 7:26–30, Fig. 1A).
`For disposition within a junction box, Petitioner relies on Dr. Coleman’s
`testimony that it would have been obvious for an ordinarily skilled artisan
`“to select a[n] AC/DC power conditioner from the many available at the
`time that would have fit inside an electrical junction box.” Id. at 63 (citing
`Ex. 1002 ¶ 109; Ex. 1018, 28). Similar to the analysis for the Chou-Wegner
`ground, Petitioner contends an ordinarily skilled artisan would have been
`motivated by market forces (in the “the new construction/junction box
`market”) to make a driver that fit inside a junction box. Id. at 44–45 (citing,
`inter alia, Ex. 1002 ¶ 109). Petitioner also contends an ordinarily skilled
`artisan would have known to reduce the size of Zhang’s trim cup and to
`reduce the number of LEDs to accommodate this modification. Id. at 44–45
`& n.16 (citing Ex. 1002 ¶ 109).
`Having considered Petitioner’s evidence, we determine Petitioner has
`shown that Zhang—as modified in the ground—teaches every limitation of
`claim 1. Petitioner also has provided a sufficient rationale for its proposed
`modification. Thus, for the foregoing reasons, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claim 1 would have been
`obvious over Zhang.
`Claims 2, 8, 9, 16, 21, and 22 depend from claim 1, and Petitioner
`identifies evidence indicating that Zhang also teaches the limitations in these
`claims. See Pet. 45–51. Accordingly, we determine that Petitioner
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`demonstrates a reasonable likelihood of prevailing in showing that claims 2,
`8, 9, 16, 21, and 22 would have been obvious over Zhang.
`
`D. Obviousness Ground Based on Zhang, Soderman, and Silescent
`Petitioner contends that claims 3 and 4 would have been obvious over
`Zhang, Soderman, and Silescent. Pet. 71.
`
`Soderman
`1.
`Soderman is a U.S. patent directed to “a light fixture assembly
`comprising an illumination assembly incorporating a light emitting diode
`(LED) array electrically connected to a source of electrical energy by a
`conductor assembly segregated from conductive transfer to a heat sink
`portion of the light fixture.” Ex. 1016, 1:8–12. Soderman describes
`mounting the fixture to a housing or junction box using, inter alia,
`connectors passing through “appropriately disposed and dimensioned
`apertures” in a mounting assembly. Id. at 8:1–13, 9:15–34.
`Petitioner notes that Soderman issued from an application filed on
`November 13, 2007, but Petitioner does not take a position about how
`Soderman qualifies as prior art. Pet. 11. For purposes of this Decision, we
`find that, at least, Soderman qualifies as prior art under 35 U.S.C. § 102(e)
`because Soderman’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. 1013, at [22].
`
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`Silescent
`2.
`The first two pages of Silescent appear to be marketing materials for a
`product from Silescent Lighting Corporation known as the S100 LP2 Light,
`whereas the remaining pages of Silescent appear to be an installation guide
`for the same product. See Ex. 1014. The marketing materials are not
`marked with a date, but the installation guide bears a “June, 2009” date. See
`id. at 3. Petitioner contends the entirety of Silescent was “publicly
`distributed on or before June 2009.” Pet. 11–12 (citing Ex. 1003 ¶ 3). In
`support of this contention, Petitioner proffers a Declaration of Daryl
`Soderman, the President of Silescent Corporation. See Ex. 1003 ¶ 1.
`Mr. Soderman testifies that the papers comprising the asserted Silescent
`reference “were made available to the public at least as early as June 2009.”
`Id. ¶ 3. Mr. Soderman further testifies that his business “distributed such
`installation guides and specification sheets . . . to customers, typically along
`with the product or product samples.” Id. ¶ 4.
`Petitioner has the initial burden of production to establish that there is
`prior art that renders the challenged claims unpatentable. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327
`(Fed. Cir. 2008)). Because Silescent is not a patent, Petitioner apparently
`attempts to qualify Silescent as a “printed publication” under § 102(a) that
`was available before the October 5, 2009, filing date of the provisional
`ap
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