Paper 25
`Trials@uspto.gov
`Entered: January 7, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01639
`Patent 8,967,844 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Petitioner, Satco Products, Inc. (“Petitioner”), filed a Petition
`(Paper 111, “Pet.”) requesting an inter partes review of claims 1–3, 5, 7, 9–
`12, 14–17, and 19–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the
`
`
`1 Petitioner filed the Petition multiple times in response to certain defects
`identified in the Notice of Filing Date Accorded to the Petition. See Paper 5.
`We refer to the version of the Petition at Paper 11.
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting
`Science Group Corp. (“Patent Owner”), filed a Preliminary Response
`(Paper 12, “Prelim. Resp.”) to the Petition. Taking into account the
`arguments presented in the Patent Owner’s Preliminary Response, we
`determined that the information presented in the Petition established that
`there was a reasonable likelihood that Petitioner would prevail in
`challenging claims 1–3, 5, 7, 9–12, 14–17, and 19–24 of the ’844 patent on
`certain grounds of unpatentability presented. Pursuant to 35 U.S.C. § 314,
`we instituted this proceeding on January 12, 2018, as to claims 1–3, 5, 7, 9–
`12, 14–17, and 19–24 of the ’844 patent. Paper 13 (“Institution Decision” or
`“Dec. on Inst.”).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”). Then, in light of the U.S. Supreme
`Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), we
`modified the Institution Decision to institute on all of the grounds presented
`in the Petition. Paper 18 (“SAS Order”). The parties did not seek any
`modifications to the schedule or additional briefing in response to the SAS
`Order. Petitioner subsequently filed a Reply to the Patent Owner Response
`(Paper 19, “Pet. Reply”).
`Petitioner filed Declarations of Victor Roberts, Ph.D., with its Petition
`(Ex. 1002) and its Reply (Ex. 1018). Patent Owner filed a Declaration of
`Eric Bretschneider, Ph.D. (Ex. 2001) with its Response.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–3, 5, 7, 9–12, 14–17, and 19–24 of the ’844 patent. For the reasons
`discussed below, Petitioner has demonstrated by a preponderance of the
`
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`IPR2017-01639
`Patent 8,967,844 B2
`evidence that claims 1–3, 5, 7, 9, 10, 12, 14, 16, 17, and 20–24 of the
`’844 patent are unpatentable.
`
`
`
`
`
`I. BACKGROUND
`Related Proceedings
`The parties identify the following proceedings related to the
`
`’844 patent (Pet. 1; Paper 3, 1–3; Paper 23, 1–3):
`Lighting Sci. Grp. Corp. v. Cree, Inc., Case No. 6:13-cv-00587 (M.D.
`Fla. filed Apr. 10, 2013);
`Lighting Sci. Grp. Corp. v. Cooper Lighting, LLC, Case No. 6:14-cv-
`00195 (M.D. Fla. filed Feb. 6, 2014);
`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);
`Lighting Sci. Grp. Corp. v. S E L S, Inc., Case No. 6:16-cv-00679
`(M.D. Fla. filed Apr. 21, 2016);
`
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`IPR2017-01639
`Patent 8,967,844 B2
`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. Wangs Alliance Corp., Case No. 6:16-cv-
`01320 (M.D. Fla. filed July 22, 2016);
`Lighting Sci. Grp. Corp. v. Amax Lighting, Case No. 6:16-cv-01321
`(M.D. Fla. filed July 22, 2016);
`Lighting Sci. Grp. Corp. v. Halco Lighting Techs., LLC, Case No.
`6:16-cv-02188 (M.D. Fla. filed Dec. 21, 2016);
`Lighting Sci. Grp. Corp. v. Leedarson Lighting Co., Case No. 6:17-
`cv-00826 (M.D. Fla. filed May 9, 2017); 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 Patent
`4
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`IPR2017-01639
`Patent 8,967,844 B2
`Owner, in co-pending IPR2017-01638. See Paper 3, 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 Patent Owner, in
`co-pending IPR2017-01643. See id. The provisional and non-provisional
`applications from which the ’968 patent and ’518 patent issued are in the
`priority chain of the ’844 patent. See Ex. 1001, [60], [63], Cert. of
`Correction.
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting
`(collectively, “TCP”) previously filed another petition for inter partes
`review of the ’844 patent in Case IPR2017-01280.2 See Paper 3, 1. In that
`case, we issued a Final Written Decision holding claims 1–3, 5, 7–9, 11, 12,
`14, 16, 17, 19, and 21–24 of the ’844 patent to be unpatentable. See
`IPR2017-01280, Paper 32. TCP also filed petitions for inter partes review
`of the ’968 patent and the ’518 patent in IPR2017-01287 and IPR2017-
`01285, respectively (see Paper 3, 1), and we have issued Final Written
`Decisions in those cases, as well. See IPR2017-01285, Paper 34;
`IPR2017-01287, Paper 31.
`Generation Brands LLC previously filed petitions for inter partes
`review of the ’844 patent and the ’968 patent in IPR2016-01546 and
`IPR2016-01458, respectively. See id. After our decisions to institute inter
`partes review in these cases, both cases were settled and terminated. See id.
`
`
`2 IPR2018-00261 and IPR2018-00271 were ultimately joined with
`IPR2017-01280, and Jiawei Technology (HK) Ltd., Jiawei Technology
`(USA) Ltd., Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., Leedarson
`Lighting Co., Ltd., and Leedarson America, Inc. were joined as Petitioner
`entities in a limited capacity. See IPR2018-00261, Paper 7; IPR2018-00271,
`Paper 7.
`
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`
`
`IPR2017-01639
`Patent 8,967,844 B2
`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.
`
`
`
`
`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
`
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`IPR2017-01639
`Patent 8,967,844 B2
`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 light emitting diodes
`(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
`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 regarding the priority status of the challenged claims
`
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`IPR2017-01639
`Patent 8,967,844 B2
`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.3
`
`
`
`
`Illustrative Claim
`Claims 1 and 24 of the ’844 patent are independent. Claims 2, 3, 5, 7,
`9–12, 14–17, and 20–23 depend directly or indirectly from claim 1. Claim 1
`is illustrative of the challenged claims and recites:
`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;
`
`
`3 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 it is
`undisputed that the ’844 patent claims have an effective filing date before
`the effective date of the applicable AIA amendments, we apply the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
`8
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`IPR2017-01639
`Patent 8,967,844 B2
`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. 1011, “Chou”);
`U.S. Patent No. 7,980,736 B2 to Soderman et al., filed
`Nov. 13, 2007, issued July 19, 2011 (Ex. 1012, “Soderman”);
`U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10,
`2008, issued May 25, 2010 (Ex. 1013, “Zhang”);
`U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22,
`2008, issued Aug. 9, 2011 (Ex. 1014, “Wegner”);
`U.S. Patent Application Publication No. 2009/0086476
`A1 to Tickner et al., published Apr. 2, 2009 (Ex. 1015,
`“Tickner”);
`U.S. Patent No. 8,777,449 B2 to Van De Ven et al., filed
`Sept. 25, 2009, issued July 15, 2014 (Ex. 1016, “Van De Ven”);
`“OptoElectronix Plug-&-Play LED Light Engine
`Products,” OptoElectronix, Inc., 2008 (Ex. 1017, “ULE5000”).
`
`Instituted Grounds
`We instituted inter partes review of claims 1–3, 5, 7, 9–12, 14–17,
`and 19–24 of the ’844 patent on the following grounds (Dec. on Inst. 30–31;
`Paper 18):
`
`
`
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`IPR2017-01639
`Patent 8,967,844 B2
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Chou and Wegner
`
`Chou, Wegner, and
`Zhang
`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, 2, 9, 10, 16, 21, and
`22
`35 U.S.C. § 103(a) 17
`
`Zhang and Soderman4 35 U.S.C. § 103(a) 20
`
`
`
`35 U.S.C. § 103(a) 1, 2, 7–9, 11, 12, 14–
`17, 19, 21, 22, and 24
`35 U.S.C. § 103(a) 3–55 and 23
`
`Tickner and
`Van De Ven
`Tickner, Van De Ven,
`and ULE5000
`
`
`Claim Interpretation
`Because this inter partes review is based on a petition filed before
`November 13, 2018, we construe the claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016); 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
`
`
`4 Our Institution Decision mistakenly referred to this ground as relating to
`the combination of “Zhang, Wegman, and Soderman.” See Dec. on Inst. 31.
`The parties’ subsequent papers referred to the correct combination, which is
`Zhang and Soderman. See PO Resp. 35; Pet. Reply 23.
`5 Petitioner does not list claim 4 in its summary of the grounds at page 12 of
`the Petition, but Petitioner does provide unpatentability contentions for
`claim 4 at page 42 of the Petition.
`
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`IPR2017-01639
`Patent 8,967,844 B2
`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 proposes interpretations for several claim terms in the
`’844 patent: “heat spreader,” “heat sink,” “integrally formed,” and “ring-
`shaped.” Pet. 11–12. Patent Owner does not dispute Petitioner’s
`constructions and states that it “addresses the claims under Petitioner’s
`proposed constructions.” PO Resp. 4. Based on the entire trial record, we
`determine that none of these terms requires explicit construction. 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.”).
`
`
`II. ANALYSIS
`
`
`
`Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
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`IPR2017-01639
`Patent 8,967,844 B2
`considerations.6 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA
`1978)). We analyze Petitioner’s obviousness grounds with the principles
`identified above in mind.
`
`Level of Skill in the Art
`Petitioner’s declarant, Dr. Roberts, testifies that an ordinarily skilled
`artisan
`would have [had] at least at least a bachelor’s degree in either
`mechanical or electrical engineering and at least 3-4 years of
`experience designing light fixtures based on light emitting
`diodes (LEDs), or basic knowledge of the operational
`characteristics of LEDs and 3-4 years of experience designing
`equipment that uses power semiconductors and heat sinks.
`Ex. 1002 ¶ 22. Citing testimony from Dr. Bretschneider, Patent Owner
`contends an ordinarily skilled artisan “would have [had] at least a B.S.
`degree or equivalent in electrical engineering, mechanical engineering,
`chemical engineering, physics, or a related field and at least 2-3 years of
`experience in designing LED lighting products or fixtures.” PO Resp. 4
`(citing Ex. 2001 ¶¶ 22–23).
`In its Reply, Petitioner suggests that Dr. Bretschneider’s inclusion of a
`degree in chemical engineering is “motivated by self-interest” because
`Dr. Bretschneider has that degree. Pet. Reply 4 n.2. As such, Petitioner
`
`
`6 Patent Owner has not put forth any evidence or argument related to
`secondary considerations of nonobviousness.
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`Patent 8,967,844 B2
`disputes that a chemical engineer with 2–3 years of experience in the LED
`industry would qualify as an ordinarily skilled artisan. Id. at 4 (citing
`Ex. 1018 ¶ 8).
`The parties’ definitions of the level of skill differ in the number of
`years of experience and in whether a background degree is required. We are
`not persuaded by Dr. Roberts’s testimony insofar as it does not explain why
`a similar length of relevant experience (3–4 years) is required regardless of
`whether the person has a degree. Nor does Dr. Roberts explain why the type
`of experience—“experience designing light fixtures based on light emitting
`diodes (LEDs)” versus “experience designing equipment that uses power
`semiconductors and heat sinks”—would impact the need for a background
`degree. In that respect, we find Dr. Bretschneider’s testimony about
`educational background more internally consistent and persuasive. We also
`have considered Petitioner’s argument and Dr. Roberts’s testimony disputing
`the inclusion of a chemical engineering degree. See Pet. Reply 4; Ex. 1018
`¶ 8. Petitioner presents no evidence other than the unsubstantiated
`implication of Dr. Bretschneider’s bias and self-interest to support its
`position.7 See Pet. Reply 3–4; see also Ex. 1018 ¶ 8 (Dr. Roberts testifying,
`
`7 Petitioner contends we should accord “almost no weight” to
`Dr. Bretschneider’s testimony based on his “long-standing and ongoing
`relationships with the Patent Owner[] and the inventors.” Pet. Reply 3–4.
`Although Petitioner is correct that Dr. Bretschneider was once employed by
`Patent Owner (see Ex. 2001, 43), Petitioner puts forth no evidence of his
`“ongoing” ties to Patent Owner or other evidence of conflicts that would
`taint his testimony. We also note that Petitioner could have, but did not,
`pursue its bias theory by cross-examining Dr. Bretschneider. Under these
`circumstances, we decline to discount Dr. Bretschneider’s testimony based
`on Petitioner’s mere implication of bias. We do address Dr. Bretschneider’s
`testimony on its merits, however, as discussed below.
`13
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`Patent 8,967,844 B2
`without explanation, that he found the inclusion of a degree in chemical
`engineering “highly unlikely”). In the absence of any persuasive evidence to
`support Petitioner’s position, we do not credit Petitioner’s argument.
`Regarding the difference in years of experience, both declarants agree
`that three years of experience is appropriate. We apply Dr. Bretschneider’s
`description of the type of relevant experience because Dr. Roberts does not
`explain why he included two different types of experience in his definition.
`Thus, we define the person of ordinary skill in the art as having a bachelor’s
`degree in electrical engineering, mechanical engineering, chemical
`engineering, physics, or a related field, and three years of experience in
`designing LED lighting products or fixtures. We are satisfied that this
`definition comports with the qualifications a person would have needed to
`understand and implement the teachings of the ’844 patent and the prior art
`of record.
`
` Obviousness Ground Based on Chou and Wegner
`Petitioner contends claims 1–3, 5, 7, 9, 12, 14, 16, and 21–24 would
`have been obvious over Chou and Wegner. Pet. 13–22. Patent Owner
`disputes Petitioner’s contentions. PO Resp. 4–25.
`
`Chou
`1.
`Chou is a U.S. patent directed to “a recessed light fixture having a
`thermally effective trim.” Ex. 1011, 1:16–18. Figures 2a and 2b of Chou
`are reproduced below.
`
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`IPR2017-01639
`Patent 8,967,844 B2
`
`
`
`
`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.
`
`15
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`IPR2017-01639
`Patent 8,967,844 B2
`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. 6. Patent Owner does not dispute the prior art status of Chou.
`We determine that 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, [60];
`Ex. 1011, [22].
`
`2. Wegner
`Wegner is a U.S. patent directed to “a light emitting diode downlight
`can fixture for a recessed luminaire.” Ex. 1014, 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. 8. Patent Owner does not dispute the
`prior art status of Wegner. We determine that Wegner qualifies as prior art
`under 35 U.S.C. § 102(e) because Wegner’s application date was before the
`
`16
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`IPR2017-01639
`Patent 8,967,844 B2
`October 5, 2009, filing date of the provisional application that led to the
`’844 patent. Ex. 1001, [60]; Ex. 1014, [22].
`
`Claim 1
`3.
`In its obviousness analysis for claim 1, Petitioner maps the recited
`“heat spreader” of claim 1 to “the interior portion of [Chou’s] trim 12.”
`Pet. 19 (citing Ex. 1011, 7:44–46; 7:63–8:1, Figs. 2b, 4a, 4b). Petitioner
`also maps the recited “heat sink” to Chou’s flange portion 22 of trim 12. Id.
`(citing Ex. 1011, 5:1–5, 7:63–8:3, Fig. 4a). Petitioner cites Chou for
`teaching an LED light source that is in thermal communication with trim 12.
`Id. at 14 (citing Ex. 1011, 4:14–17, 5:1–5, 7:37–40, 7:44–46, 7:63–8:1,
`8:44–48, Figs. 2b, 4b). Petitioner also 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 13 (quoting Ex. 1011, 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 14 (quoting Ex. 1011, 2:54–55 and citing
`Ex. 1011, 7:50–51, 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. Id. (citing
`Ex. 1011, 7:24–25, 7:49–50). Furthermore, for the recited “outer optic,”
`Petitioner cites Chou’s lens 23. Id. at 15 (citing Ex. 1011, 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
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`IPR2017-01639
`Patent 8,967,844 B2
`socket 16 and the light source to convert the AC power source into a DC
`source.” Id. (quoting Ex. 1011, 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. (citing
`Ex. 1011, 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. 1011, 4:28, 4:46–54, Fig. 2b).
`In addition, 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 15–16. 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 15
`(citing Ex. 1002 ¶ 61). 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. (quoting Ex. 1011,
`3:67–4:1). Petitioner also contends that power conditioners come 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 15–16 (citing Ex. 1002
`¶¶ 57–58). Petitioner further acknowledges that an ordinarily skilled artisan
`would have reduced “the 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 16 (citing Ex. 1002 ¶ 61).
`Petitioner additionally cites Wegner for teaching the removal of Chou’s
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`IPR2017-01639
`Patent 8,967,844 B2
`male Edison base “to expose and connect wires in an LED light fixture.” Id.
`(citing Ex. 1002 ¶ 60; Ex. 1014, 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.
`(citing Ex. 1002 ¶ 61). 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. (citing Ex. 1002 ¶ 58).
`Patent Owner disputes Petitioner’s obviousness showing as to the
`junction box limitation. Patent Owner contends Chou’s “other geometries”
`teaching “only applies to 5-inch and 6-inch recessed can housings having
`non-standard cross-sections.” PO Resp. 6–7 (citing Ex. 1011, 3:65–66, 4:5–
`7; Ex. 2001 ¶ 98). Patent Owner argues that Chou does not discuss junction
`boxes even though Petitioner acknowledges that junction boxes were widely
`used and well known. Id. at 6 (citing Pet. 16). Patent Owner also cites
`Figures 3 and 8 of Chou for their alleged depiction of a junction box
`attached to the outside of the can structure, which Patent Owner contends
`reflects the state of the art at the time of the ’844 patent. Id. at 7 (citing
`Ex. 1011, Figs. 3, 8; Ex. 2001 ¶ 24). As such, Patent Owner contends Chou
`“provides no basis to conclude that its fixture could, or should, be installed
`in both” junction boxes and can housings. Id. at 7–8 (citing Ex. 2001 ¶¶ 96–
`98).
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`IPR2017-01639
`Patent 8,967,844 B2
`We agree with Petitioner (Pet. Reply 5–7), however, that an ordinarily
`skilled artisan would not have read Chou as narrowly as Patent Owner
`contends. Not only does Chou state that its fixture “may be configured to be
`installed into a recessed can housing having other geometries,” but it also
`refers to “recessed housings . . . developed with different geometries.”
`Ex. 1011, 3:65–4:7 (emphasis added). In light of this express teaching in
`Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch
`can lights, or even can lights in general. Junction boxes represent another
`geometry that can serve as a recessed housing for an LED light fixture. In
`addition, the fact that certain figures of Chou might depict a junction box
`external to a can light does not mean that junction boxes are excluded from
`the universe of “recessed housings” contemplated in the quotation above.
`We also note that Dr. Bretschneider’s testimony against extending Chou’s
`teaching to “other geometries” merely rehashes the specific embodiments of
`Chou; Dr. Bretschneider does not provide a reason why ordinarily skilled
`artisans would have confined themselves strictly to the embodiments of
`Chou, and no more. See Ex. 2001 ¶ 98.
`Patent Owner also contends Petitioner has provided no reason or
`motivation to combine Wegner with Chou. PO Resp. 9–11. Patent Owner
`contends an ordinarily skilled artisan would not have combined Wegner with
`Chou because Wegner pertains to a light with a tall reflector, which must be
`installed in a can light fixture (and not a junction box). Id. at 11–12 (citing
`Ex. 2001 ¶¶ 66–67, 99–103). Yet Petitioner cites Wegner only for its
`teaching of removing an Edison base from an LED light fixture to facilitate
`direct wiring, and not for anything to do with reflectors. Pet. 16 (citing
`Ex. 1002 ¶ 60; Ex. 1014, 11:3–32). As such, Patent Owner’s arguments
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`IPR2017-01639
`Patent 8,967,844 B2
`regarding Wegner’s light reflectors amounts to a bodily incorporation
`argument, which is not the test for obviousness. See In re Keller, 642 F.2d
`413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
`of a secondary reference may be bodily incorporated into the structure of the
`primary reference.”). We are persuaded that, based on Wegner, an
`ordinarily skilled artisan would have known to remove the Edison base of
`Chou’s fixture regardless of the type of reflector and housing used in
`Wegner’s fixture. See Ex. 1002 ¶ 60. Regarding motivation, Petitioner
`posits a market-based rationale, namely, that an ordinarily skilled artisan
`would have been motivated to make a version of Chou’s luminaire to fit
`nominally sized junction boxes to serve the new construction market.
`Pet. 16 (citing Ex. 1002 ¶ 61). Dr. Roberts testifies that the Edison base
`would have been removed to make Chou