throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: January 12, 2018
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Petitioner, Satco Products, Inc. (“Petitioner”), filed a Petition
`
`(Paper 111, “Pet.”) requesting an inter partes review of claims 1–3, 5, 7, 9–
`
`
`1 Petitioner filed the Petition multiple times in response to certain defects
`being identified in the Notice of Filing Date Accorded to the Petition. See
`Paper 5. For purposes of this Decision, we refer to the version of the
`Petition at Paper 11. In addition, Petitioner filed a motion asking us to
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`12, 14–17, and 19–24 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 Victor Roberts, Ph.D. (Ex. 1002) with its Petition. Patent
`
`Owner, Lighting Science Group Corp. (“Patent Owner”), filed a Preliminary
`
`Response (Paper 12, “Prelim. Resp.”) to the Petition.
`
`We have authority to determine whether to institute an inter partes
`
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`
`§ 314(a), we 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, 9–12, 14–17, and 19–24 of the
`
`’844 patent on certain grounds of unpatentability presented.
`
`
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`
`The parties identify the following proceedings related to the
`
`A.
`
`
`
`’844 patent (Pet. 1; Paper 3, 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);
`
`
`excuse its late response to the identified defects. See Papers 6, 10.
`Petitioner’s motion is granted.
`
`2
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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);
`
`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);
`
`3
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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
`
`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, at [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. See Paper 3, 1. TCP also
`
`filed petitions for inter partes review of the ’968 patent and the ’518 patent
`
`in IPR2017-01287 and IPR2017-01285, respectively. See id. We instituted
`
`inter partes review in all three of these cases, and each case is pending.
`
`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.
`
`
`
`4
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`B.
`
`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
`
`5
`
`
`

`

`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 at this stage regarding the priority status of the
`
`6
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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.2
`
`
`
`
`
`C.
`
`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;
`
`
`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.
`
`7
`
`
`

`

`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.
`
`
`
`D.
`
`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”).
`
`
`
`E.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1–3, 5, 7, 9–12, 14–17, and 19–24 of the
`
`’844 patent on the following grounds (Pet. 12):
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Chou and Wegner
`
`35 U.S.C. § 103(a) 1–3, 5, 7, 9, 12, 14,
`16, and 21–24
`
`8
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Chou, Wegner, and
`Zhang
`
`Zhang
`
`35 U.S.C. § 103(a) 10
`
`35 U.S.C. § 103(a) 1, 2, 9, 10, 16, 21, and
`22
`
`Zhang and Wegner
`
`35 U.S.C. § 103(a) 17
`
`Zhang, Wegner, and
`Soderman
`
`35 U.S.C. § 103(a) 20
`
`Tickner and
`Van De Ven
`
`35 U.S.C. § 103(a) 1, 2, 7–9, 11, 12, 14–
`17, 19, 21, 22, and 24
`
`Tickner, Van De Ven,
`and ULE5000
`
`35 U.S.C. § 103(a) 3–53 and 23
`
`
`
`
`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
`
`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).
`
`
`3 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.
`
`9
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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 only responds regarding “heat spreader” and
`
`“heat sink” by arguing that these two terms should be given their plain and
`
`ordinary meaning. 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”).
`
`
`
`II. ANALYSIS
`
`We now consider Petitioner’s asserted grounds and Patent Owner’s
`
`arguments in the Preliminary Response to determine whether Petitioner has
`
`met the “reasonable likelihood” threshold standard for institution under
`
`35 U.S.C. § 314(a).
`
`
`
`A. 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 does
`
`not address Petitioner’s contention in the Preliminary Response. Prelim.
`
`Resp. 1 n.1.
`
`
`
`10
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`1.
`
`Chou
`
`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.
`
`
`
`
`
`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
`11
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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.
`
`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 contest that Chou is prior art. 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. 1011, at [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
`
`12
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`Wegner qualifies as prior art. Pet. 8. Patent Owner does not contest that
`
`Wegner is prior art. 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
`
`provisional application that led to the ’844 patent. Ex. 1001, at [60];
`
`Ex. 1014, at [22].
`
`
`
`3.
`
`Claims 1–3, 5, 7, 9, 12, 14, 16, and 21–24
`
`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. 19 (citing Ex. 1011, 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.” Id.
`
`(citing Ex. 1011, 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 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 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
`
`13
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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
`
`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. 1012, 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 16–17 (citing Ex. 1002
`
`¶ 58). Petitioner further acknowledges that an ordinarily skilled artisan
`
`14
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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 16 (citing
`
`Ex. 1002 ¶ 61). 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 ¶ 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).
`
`Thus, Petitioner has established sufficiently at this stage that the
`
`combination of Chou and Wegner teach every limitation of claim 1.
`
`Supported by the testimony of Dr. Roberts, Petitioner also has provided a
`
`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 ¶ 58), and the use of wiring for Chou’s
`
`luminaire in a junction box (see id. ¶ 60; Ex. 1014, 11:3–32). Considering
`
`Petitioner’s analysis and submitted 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.
`
`15
`
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`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`Claims 2, 3, 5, 7, 9, 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. 17–20. Claim 24 incorporates limitations similar to those
`
`of claims 1, 2, and 12. See id. 20–22. Therefore, on this record, Petitioner
`
`has shown sufficiently that the combination of Chou and Wegner teaches the
`
`limitations in claims 2, 3, 5, 7, 9, 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, 9, 12, 14, 16, and 21–24 would have been
`
`obvious over Chou and Wegner.
`
`
`
`B. Obviousness Ground Based on Chou, Wegner, and Zhang
`
`Petitioner contends that claim 10 would have been obvious over
`
`Chou, Wegner, and Zhang. Pet. 22–23. Patent Owner does not address
`
`Petitioner’s contention in the Preliminary Response. Prelim. Resp. 1 n.1.
`
`
`
`1.
`
`Zhang
`
`Zhang is a U.S. patent directed to “a recessed lighting fixture that
`
`provides improved heat dissipation and grounding.” Ex. 1013, 1:15–17.
`
`Figures 2 and 3 of Zhang are reproduced below.
`
`16
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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
`
`
`
`17
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`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. 7. Patent Owner does not contest that Zhang is
`
`prior art. 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. 1013, at [22].
`
`
`
`2.
`
`Claim 10
`
`Claim 10 depends from claim 1 and recites “an inner optic disposed
`
`over the plurality of LEDs between the plurality of LEDs and the outer
`
`optic.” Ex. 1001, 15:17–19. Building on its analysis for claim 1, Petitioner
`
`cites Zhang’s description of LED lenses 108 for the recited inner optic.
`
`Pet. 22 (citing Ex. 1013, 9:42–44). Petitioner contends an ordinarily skilled
`
`artisan would have “recognized that an additional optic, as taught in Zhang,
`
`could be added to Chou in order to advance the goal suggested by Chou:
`
`further modifying the raw light from the LED (e.g. directing, diffusing,
`
`coloring, collimating) or to further the well-understood goal of protecting the
`
`LEDs.” Id. at 23 (citing Ex. 1002 ¶ 98; Ex. 1011, 8:21–26).
`
`18
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`Dr. Roberts’s testimony establishes that an additional optic would
`
`have been known to further well-understood design goals. See Ex. 1002
`
`¶¶ 97–99; see also Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003
`
`(Fed. Cir. 2016) (“For the technique’s use to be obvious, the skilled artisan
`
`need only be able to recognize, based on her background knowledge, its
`
`potential to improve the device and be able to apply the technique.”). At this
`
`stage, we are persuaded by Petitioner’s rationale and determine that
`
`including an inner optic over a plurality of LEDs would have amounted to
`
`nothing more than a “predictable use of prior art elements according to their
`
`established functions.” KSR, 550 U.S. at 417.
`
`Therefore, based on the current record, we determine Petitioner
`
`demonstrates a reasonable likelihood of prevailing in showing that claim 10
`
`would have been obvious over Chou, Wegner, and Zhang.
`
`
`
`C. Obviousness Ground Based on Zhang
`
`Petitioner contends that claims 1, 2, 9, 10, 16, 21, and 22 would have
`
`been obvious over Zhang. Pet. 23–29. Patent Owner does not address
`
`Petitioner’s contention in the Preliminary Response. Prelim. Resp. 1 n.1.
`
`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. 25 (citing Ex. 1013, 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 ¶ 107; Ex. 1013, 9:41–44, Figs. 5, 8).
`
`Petitioner cites Zhang’s trim cup for the recited “heat spreader.” Id. at
`
`23 (citing Ex. 1013, 12:43–48). Petitioner notes that the LEDs are mounted
`
`19
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`to the trim cup, which is made of a thermally conductive material such that
`
`the LEDs are in thermal communication with the trim cup. Id. at 23, 25
`
`(citing Ex. 1013, 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 is also made of thermally conductive material, to the recited “heat
`
`sink” of claim 1. Id. at 23–24 (citing Ex. 1013, 3:6–18, 4:23–29, 7:3, 8:34–
`
`36, 8:58–61, Figs. 1, 1A, 3, 5). Petitioner also notes the trim unit is circular,
`
`so Petitioner contends the trim unit is “substantially ring-shaped” in
`
`accordance with claim 1. Id. at 24 (citing Ex. 1002 ¶ 103; Ex. 1013, 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. at 25 (citing Ex. 1013, 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 24–25 (citing Ex. 1002 ¶ 104; Ex. 1013, 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. Id. at
`
`25 (citing Ex. 1002 ¶ 104).
`
`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 25–26 (quoting Ex. 1013,
`
`7:26–29 and citing Ex. 1013, 5:37–39, 8:24–26). Citing testimony from
`
`Dr. Roberts, 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.” Id. at 26
`
`(citing Ex. 1002 ¶ 108). Regarding claim 1’s limitation on disposing the
`
`20
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`power conditioner within a nominally sized can, Petitioner contends “Zhang
`
`already discloses driver 42 on top of the trim cup and completely within the
`
`internal space 49 of recessed can 36.” Id. (citing Ex. 1013, 6:66–67, 7:26–
`
`30, Fig. 1A). For disposition within a junction box, Petitioner relies on
`
`Dr. Roberts’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 26 (citing Ex. 1002 ¶ 110). 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 26–27 (citing,
`
`inter alia, Ex. 1002 ¶ 110). 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 27 &
`
`n.27 (citing Ex. 1002 ¶ 110).
`
`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
`
`demonstrates a reasonable likelihood of prevailing in showing that claims 2,
`
`8, 9, 16, 21, and 22 would have been obvious over Zhang.
`
`21
`
`
`

`

`IPR2017-01639
`Patent 8,967,844 B2
`
`D. Obviousness Ground Based on Zhang and Wegner
`
`Petitioner contends that claim 17 would have been obvious over
`
`Zhang, and Wegner. Pet. 30–31. Patent Owner does not address
`
`Petitioner’s contentions in the Preliminary Response. Prelim. Resp. 1 n.1.
`
`Regarding claim 17, Petitioner cites, inter alia, Zhang’s teachings
`
`related to adapter 60 for the recited accessory kit and its Edison base. Id. at
`
`30 (citing Ex. 1013, 8:22–26, 9:11–12, Fig. 3). Petitioner contends it would
`
`have been obvious to modify Zhang to include the accessory kit because
`
`Zhang includes almost all elements of the kit. Id. (citing Ex. 1002 ¶ 126).
`
`The only missing element of the kit, a connector, is taught by Wegner and
`
`would have made Zhang’s adapter 60 detachable and easier to install, a
`
`desirable improvement. Id. at 31 (citing Ex. 1002 ¶¶ 129–130; Ex.

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