Filed on behalf of Satco Products, Inc.
`By: Robert S. Rigg (Reg. No. 36,991)
`John K. Burke (Reg. No. 70,606)
`Sudip K. Mitra (Reg. No. 75,900)
`VEDDER PRICE P.C.
`222 N. LaSalle St., Suite 2600
`Chicago, Illinois 60601
`Tel: (312) 609-7500
`rrigg@vedderprice.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`SATCO PRODUCTS, INC.
`Petitioner
`v.
`LIGHTING SCIENCE GROUP CORPORATION
`Patent Owner
`____________________________________________
`Case IPR2017-01639
`Patent 8,967,844 B2
`____________________________________________
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,967,844
`
`CHICAGO/#3154022
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`
`By: Robert S. Rigg (Reg. No. 36,991)
`John K. Burke (Reg. No. 70,606)
`Sudip K. Mitra (Reg. No. 75,900)
`VEDDER PRICE P.C.
`222 N. LaSalle St., Suite 2600
`Chicago, Illinois 60601
`Tel: (312) 609-7500
`rrigg@vedderprice.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`SATCO PRODUCTS, INC.
`Petitioner
`v.
`LIGHTING SCIENCE GROUP CORPORATION
`Patent Owner
`____________________________________________
`Case IPR2017-01639
`Patent 8,967,844 B2
`____________________________________________
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,967,844
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`TABLE OF CONTENTS
`
`IPR2017-01639
`U.S. Patent 8,967,844
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`Page
`
`I.
`II.
`III.
`
`IV.
`
`B.
`
`C.
`
`2.
`
`INTRODUCTION ................................................................................ 1
`SUMMARY OF THE ARGUMENT ................................................... 2
`DR. BRETSCHNEIDER’S OPINIONS SHOULD NOT BE
`AFFORDED ANY WEIGHT BECAUSE OF HIS PRIOR
`RELATIONSHIP WITH LIGHTING SCIENCE GROUP
`CORPORATION.................................................................................. 3
`CHOU IN LIGHT OF WEGNER RENDERS CLAIMS 1–3, 5,
`7, 9, 12, 14, 16 AND 21–24 OBVIOUS .............................................. 4
`PATENT OWNER’S ARGUMENT ON
`A.
`ANTICIPATION ARE MISPLACED AS PETITIONER
`CHALLENGED THE CLAIMS UNDER
`OBVIOUSNESS AND NOT ANTICIPATION ........................ 4
`CHOU IN LIGHT OF WEGNER RENDERS THE
`CHALLENGED CLAIMS OBVIOUS ...................................... 5
`CHOU DISCLOSES AN H/D RATIO THAT IS EQUAL
`OR LESS THAN 0.25 AND RENDERS CLAIMS 3
`AND 5 OBVIOUS ..................................................................... 8
`1.
`THERE IS NO DISPUTE AS TO THE
`PARAMETERS OF THE H/D RATIO AND
`WHAT IS INCLUDED IN THAT RATIO BASED
`ON THE CLAIMS AND THE SPECIFICATION
`OF THE ’844 PATENT ................................................... 8
`THE ‘844 PATENT DOES NOT REQUIRE
`INCLUDING THE HEIGHT OF SECONDARY
`HEAT SINK 14 OF CHOU TO CALCULATE
`THE OVERALL HEIGHT (H) FOR THE H/D
`LIMITATION OF THE ’844 PATENT ........................ 10
`CHOU AND WEGNER RENDER CLAIM 12
`OBVIOUS ................................................................................ 13
`CHOU RENDERS CLAIM 21 OBVIOUS ............................. 14
`-i-
`
`D.
`
`E.
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`TABLE OF CONTENTS
`(continued)
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`IPR2017-01639
`U.S. Patent 8,967,844
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`Page
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`CHOU RENDERS CLAIM 23 OBVIOUS ............................. 15
`F.
`CHOU RENDERS CLAIM 24 OBVIOUS ............................. 16
`G.
`CHOU IN LIGHT OF WEGNER AND ZHANG RENDERS
`CLAIM 10 OBVIOUS ....................................................................... 16
`CLAIMS 1, 2, 9, 10, 16, 21 AND 22 ARE RENDERED
`OBVIOUS BY ZHANG ..................................................................... 17
`A.
`PATENT OWNER’S ARGUMENT ON
`ANTICIPATION ARE MISPLACED AS PETITIONER
`CHALLENGED THE CLAIMS UNDER
`OBVIOUSNESS AND NOT ANTICIPATION ...................... 18
`ZHANG RENDERS THE CHALLENGED CLAIMS
`OBVIOUS ................................................................................ 18
`ZHANG IN LIGHT OF WEGNER RENDERS CLAIM 17
`OBVIOUS .......................................................................................... 21
`ZHANG IN LIGHT OF SODERMAN RENDERS CLAIM 20
`OBVIOUS .......................................................................................... 22
`THE ABSENCE OF SECONDARY CONSIDERATIONS
`ALSO SUPPORTS OBVIOUSNESS ................................................ 23
`CONCLUSION .................................................................................. 24
`
`B.
`
`V.
`
`VI.
`
`VII.
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`VIII.
`
`IX.
`
`X.
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`IPR2017-01639
`U.S. Patent 8,967,844
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,967,844
`Declaration of Victor Roberts in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,967,844 (“Roberts Decl.”)
`Preliminary Amendment
`Office Action (FAOM)
`Reply to Office Action (FAOM)
`Notice of Allowance
`Petition to Withdraw
`Office Action
`Reply to Office Action
`Notice of Allowance
`U.S. Patent No. 7,670,021 (“Chou”)
`U.S. Patent No. 7,980,736 (“Soderman”)
`U.S. Patent No. 7,722,227 (“Zhang”)
`U.S. Patent No. 7,993,034 (“Wegner”)
`U.S. Patent Pub No. 2009/0086476 (“Tickner”)
`U.S. Patent No. 8,777,449 (“Van De Ven”)
`OptoElctronix ULE5000 Series Data Sheet
`Declaration of Dr. Victor Roberts in Support of Petitioner’s Reply
`to the Patent Owner’s Response to Petition for Inter Partes Review
`Of U.S. Patent No. 8,967,844 (“Roberts Rebuttal Decl.”)
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
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`TABLE OF AUTHORITIES
`
`IPR2017-01639
`U.S. Patent 8,967,844
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` Page(s)
`
`Cases
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) .......................................................................... 12
`
`Abtox, Inc. v. Exitron Corp.,
`122 F.3d 1019, 43 USPQ2d 1545 (Fed. Cir. 1997) ............................................ 14
`
`Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc.,
`752 F.3d 967 (Fed. Cir. 2014) ............................................................................ 23
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 24
`
`Crystal Semiconductor Corp. v. TriTech Microelectronics Intern.,
`Inc.,
`246 F.3d 1336 (Fed. Cir. 2001) .......................................................................... 14
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 23
`
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973, 52 USPQ2d 1109 (Fed. Cir. 1999) .............................................. 14
`
`Ethicon, Inc. v. U.S. Surgical Corp.,
`135 F.3d 1456 (Fed. Cir. 1998) ............................................................................ 3
`
`In re ICON Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ...................................................................... 7, 19
`
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351, 55 USPQ 2d 1835 (Fed. Cir. 2000) ........................................... 14
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`SAS Inst., Inc. v. Iancu,
`2018 WL 1914661 (U.S. Apr. 24, 2018) .............................................................. 1
`iv
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 13
`
`Statutes
`
`35 U.S.C. §103 ........................................................................................................... 2
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`REVISIONS TO MANDATORY DISCLOSURES
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`IPR2017-01639
`U.S. Patent 8,967,844
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`Designation of Lead and Backup Counsel.1 Pursuant to the previously
`
`filed Power of Attorney (Paper No. 2), John K. Burke (Reg. No. 70,606) and Sudip
`
`K. Mitra (Reg. No. 75,900), both of Vedder Price P.C., are designated as additional
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`backup counsel for Petitioner in this proceeding.
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`1 37 C.F.R. § 42.8(b)(3) and (4).
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`IPR2017-01639
`U.S. Patent 8,967,844
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`I.
`
`INTRODUCTION
`
`On January 12, 2018, the Patent Trial and Appeal Board (the “Board”)
`
`instituted inter partes review of claims 1–3, 5, 7, 9–12, 14–17 and 19–24 (the
`
`“challenged claims”) of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844
`
`patent”). Inst. Dec., Paper 13 at 28. In its decision on Institution, the Board
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`determined that Petitioner had demonstrated a reasonable likelihood that the
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`challenged claims of the ’844 patent are rendered obvious by combinations of
`
`Chou, Wegner, Zhang and Soderman. Patent Owner filed a response to the
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`Board’s institution of the inter partes review on March 30, 2018. (Paper 17,
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`“Patent Owner Response”). On May 3, 2018, in light of the recent Supreme Court
`
`decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018), the Board
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`modified the Institution Decision to include all of the challenged claims and all of
`
`the grounds presented in the Petition. Paper 18.
`
`Patent Owner’s arguments ignore common sense and the established law on
`
`obviousness while relying on overly narrow interpretations of the teachings of the
`
`prior art and thereby fail on the merits. The various prior art references on which
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`Petitioner relies disclose, alone or in combination, all of the elements of the
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`challenged claims. The challenged claims are therefore unpatentable.
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`II.
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`SUMMARY OF THE ARGUMENT
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`IPR2017-01639
`U.S. Patent 8,967,844
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`The ’844 patent is invalid as obvious over the prior art. As explained in the
`
`Petition and supported by Dr. Robert’s declaration (Ex. 1018), a person of ordinary
`
`skill in the art (“POSITA”) looking at the state of the art in 2009 would have been
`
`motivated to create a luminaire with a power conditioner suitable for installation in
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`both can fixtures and junction boxes, as recited in the ’844 patent.
`
`First, Patent Owner’s Response misconstrues the law of obviousness by
`
`asserting anticipation when the challenge is based on obviousness. Second, Patent
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`Owner never disputes the motivation to combine identified by Petitioner and
`
`Dr. Roberts identified and ignores the stated motivations and asserts that a
`
`POSITA would have combined the prior art references to arrive at the claimed
`
`invention. Third, Patent Owner relies on an overly narrow interpretation of what
`
`the prior art teaches and ignores the breadth of what can be used to motivate a
`
`POSITA to combine the prior art references. A predictable variation of a
`
`combination is evidence of obviousness, and if a POSITA could implement the
`
`variation, 35 U.S.C. §103 bars its patentability.
`
`As discussed in detail below, all of the cited prior art references either alone
`
`or in combination renders the challenged claims 1–3, 5, 7, 9–12, 14–17 and 19–24
`
`of the ’844 patent obvious under 35 U.S.C. § 103.
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`III. DR. BRETSCHNEIDER’S OPINIONS SHOULD NOT BE
`AFFORDED ANY WEIGHT BECAUSE OF HIS PRIOR
`RELATIONSHIP WITH LIGHTING SCIENCE GROUP
`CORPORATION.
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`IPR2017-01639
`U.S. Patent 8,967,844
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`Dr. Bretschneider’s opinions, on which Patent Owner’s Response relies,
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`deserve almost no weight because of Dr. Bretschneider’s long-standing and
`
`ongoing relationships with the Patent Owners and the inventors. Dr. Bretschneider
`
`was employed as a Product Development Manager and the Vice President of
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`Research by Patent Owner during the 2008–2011 time period. Ex. 2001 at 43. He
`
`was primarily tasked with developing solid state lighting products. Id.
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`The ’844 patent claims priority back to the Provisional Patent Application
`
`Serial No. 61/248,665, which was filed on October 5, 2009—shortly after
`
`Dr. Bretschneider began working as Patent Owner’s employee. Ex. 1001 at 1. His
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`prior relationship with Patent Owner and his involvement with the design and
`
`development of solid state lighting product for Patent Owner affects Dr.
`
`Bretschneider’s ability to act as an independent, unbiased expert for the ’844
`
`patent. See, Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir.
`
`1998) (citation omitted) (holding that interests of expert witnesses who were
`
`employees of plaintiff affected the weight of their testimony).
`
`By contrast, Petitioner’s expert Dr. Roberts has no such conflicts of interest
`
`and has provided his unbiased and independent expert opinion.
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`Additionally, with respect to the level of skill required by a POSITA in
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`IPR2017-01639
`U.S. Patent 8,967,844
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`relation to the ’844 patent, Dr. Bretschneider also opines that a Person of Ordinary
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`Skill in the Art (POSITA) in relation to the ’844 Patent could have a “B.S. degree
`
`or equivalent in . . . chemical engineering, . . . and at least 2-3 years of experience
`
`in designing LED lighting products or fixtures.” Ex. 2001, ¶¶ 22–23. We disagree
`
`that a chemical engineer with only two to three years of experience in the LED
`
`industry would qualify as a POSITA.2. Ex. 1018 ¶ 8.
`
`IV. CHOU IN LIGHT OF WEGNER RENDERS CLAIMS 1–3, 5, 7, 9, 12,
`14, 16 AND 21–24 OBVIOUS.
`
`Petitioner contends that U.S. Patent No. 7,670,021 to Chou (Ex. 1008,
`
`hereinafter “Chou”) renders claims 1–3, 5, 7, 9, 12, 14, 16 and 21–24 obvious. Ex.
`
`1008 at 4. Because claims 2–3, 5, 7, 9, 12, 14, 16 and 21–23 depend from claim 1,
`
`Petitioner incorporates its arguments for claim 1 for the dependent claims 2–3, 5,
`
`7, 9, 12, 14, 16 and 21–23.
`
`A.
`
`PATENT OWNER’S ARGUMENT ON ANTICIPATION ARE
`MISPLACED, AS PETITIONER CHALLENGED THE CLAIMS
`UNDER OBVIOUSNESS AND NOT ANTICIPATION.
`
`Patent Owner contends that since the ’844 patent was explicitly allowed
`
`over Chou during prosecution, Petitioner has a heavier burden to demonstrate
`
`
`2 This opinion is perhaps motivated by self-interest, based on Dr. Bretschneider’s
`own undergraduate degree in chemical engineering.
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`anticipation in this petition. Paper But Petitioner did not put forth any
`
`anticipation argument based on Chou for the challenged claims. Rather,
`
`Petitioner has relied on obviousness to demonstrate that Chou in light of Wegner
`
`renders the challenged claims invalid. Petitioner has no implied burden to
`
`demonstrate invalidity based on a ground that Petitioner did not even assert for
`
`the challenged claims. Further, the instituted grounds for the ’844 patent are also
`
`based on obviousness and not anticipation. Paper 13 at 30–31.
`
`B. CHOU IN LIGHT OF WEGNER RENDERS THE
`CHALLENGED CLAIMS OBVIOUS.
`
`Patent Owner’s argument fails
`
`to negate Petitioner’s showing of
`
`obviousness. Patent Owner argues that the last limitation in claim 1, which recites
`
`“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” is not obvious over Chou in light of
`
`Wegner. Ex. 1008, 6–18. To the contrary, Chou’s LED lightbulb can be
`
`configured for installation in other can housings and junction boxes. First, Chou’s
`
`disclosure is not limited to any specific installations within can housings. Chou
`
`specifically teaches that the “fixture 10 can be configured to be installed into a
`
`recessed can housing having other geometries.” Ex.1008, 3:67–4:1. A POSITA
`
`would understand that the fixture could be configured to fit into any recessed
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`housing of other geometries, including a junction box. Structurally, other than size
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`IPR2017-01639
`U.S. Patent 8,967,844
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`and geometry, a junction box is a recessed housing having a square or rectangular
`
`geometry. A POSITA would understand that the teaching of Chou is broader than
`
`the overly narrow teaching that Patent Owner applies—limiting the teaching to a 5
`
`or 6 in recessed can. Instead, the teaching of Chou is simply the ability to
`
`configure a fixture to fit within a recessed housing, of which a junction box is one.
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`Chou further teaches that the disclosed fixture can be used in a retrofit application
`
`comprising new and existing can housings. Ex. 1008, 2:6–13.
`
`Patent Owner’s arguments that Chou cannot be modified by a POSITA to fit
`
`into a junction box or a can housing with a different geometry is both contrary to
`
`the case law and without merit. In KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
`
`401 (2007), the U.S. Supreme Court while rejecting the Federal Circuit’s rigid
`
`application of the “teaching, suggestion and motivation” (“TSM”) test also
`
`indicated that the obviousness analysis can take into account inferences and
`
`creative steps that would have been employed by a POSITA. In the Court’s own
`
`words,
`
`[t]o determine whether there was an apparent reason to combine the
`known elements in the way a patent claims, it will often be necessary
`to look to interrelated teachings of multiple patents; to the effects of
`demands known to the design community or present in the
`marketplace; and to the background knowledge possessed by a person
`having ordinary skill in the art. To facilitate review, this analysis
`should be made explicit. But it need not seek out precise teachings
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`directed to the challenged claim's specific subject matter, for a court
`can consider the inferences and creative steps a person of ordinary
`skill in the art would employ.
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`Id. at 401; See also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382
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`(Fed. Cir. 2007) (holding that one skilled in the art would have sized prior art
`
`components appropriately for ICON’s
`
`invention,
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`therefore producing an
`
`embodiment that made ICON’s claim obvious).
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`A POSITA looking at Chou would know how to modify a power conditioner
`
`and dimension it to produce an embodiment that is configured and sized to fit at
`
`least partially within an interior space of a nominally sized can light fixture and a
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`nominally sized electrical junction box. In his declaration, Dr. Roberts also
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`explains how a POSITA would have obtained the claimed subject matter based on
`
`his or her motivation, knowledge, and the disclosures in the prior art. Ex. 1018,
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`¶¶ 41–42, 70 and 84.
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`Finally, Patent Owner’s suggestions
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`that
`
`the obvious modifications
`
`discussed above would either “create an entirely new luminaire” or “would likely
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`instead render Chou inadequate for its application” (Paper 17 at 13–16) is also
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`without merit. There is no requirement in the claims or specification of the ’844
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`patent for a particular level of lumens, power and heat dissipation or efficiency of
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`the light fixture. As explained by Dr. Roberts, the ’844 patent does not teach how
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`the recited low profile fixture is designed, nor does it teach the details of its heat
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`sink or the amount of power it can dissipate. Ex. 1014 at ¶ 11. Without such
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`U.S. Patent 8,967,844
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`teachings in the ’844 patent, Patent Owner’s arguments that a modified Chou
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`fixture would be would either “create an entirely new luminaire” or “would likely
`
`instead render Chou inadequate for its application,” have no legal or factual basis.
`
`C. CHOU DISCLOSES AN H/D RATIO THAT IS EQUAL OR
`LESS THAN 0.25 AND RENDERS CLAIMS 3 AND 5
`OBVIOUS.
`Claim 3 recites “The luminaire of claim 2, wherein the heat spreader, the
`
`heat sink and the outer optic, in combination, further have an overall height H
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`such that the ratio of H/D is equal to or less than 0.25.” Ex. 1001 (’844 patent) at
`
`claim 3.
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`Claim 5 recites “The luminaire of claim 3, wherein the heat spreader, the
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`heat sink and the outer optic, in combination, further have an overall height H
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`such that the ratio of H/D is equal to or less than 0.25.” Id. at claim 5.
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`As detailed below, Chou renders obvious both claims 3 and 5.
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`1.
`
`THERE IS NO DISPUTE AS TO THE PARAMETERS OF THE
`H/D RATIO AND WHAT IS INCLUDED IN THAT RATIO
`BASED ON THE CLAIMS AND THE SPECIFICATION OF THE
`’844 PATENT.
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`First, claims 3 and 5 explicitly define the H/D limitation as the ratio of the
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`overall height H (which is limited to the heat spreader, heat sink and the outer
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`optic) and an overall outside dimension D, such that the ratio of H/D is equal to
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`or less than 0.25. Ex. 1001, claims 3 and 5.
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`The specification of the ’844 patent further supports the Petitioner’s
`
`definition of the H/D term. The specification of the ’844 patent describes a low-
`
`profile luminaire 100, including the heat spreader 105, heat sink 110 and outer
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`optic 115, that create the overall height H and an overall outside dimension D
`
`such that the ratio of H/D is equal to or less than 0.25. Ex. 1001 at 4:1–5. The
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`heat sink in the claim is defined as the heat sink in contact with the heat spreader.
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`As illustrated in FIG. 12 of the ’844 patent (shown below) the luminaire 100 has
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`the back surface of the heat spreader 105 substantially planar with the back
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`surface of the heat sink 110, thereby permitting the luminaire 100 to sit
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`substantially flush on the surface of the ceiling/wall material. Ex. 1001 at 8:55–
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`59, FIG. 12.
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`Finally, FIG. 28 of the ’844 patent also supports Petitioner’s arguments.
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`FIG. 28 (as shown below) illustrates the parameters used to calculate an overall
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`height H and an overall outside dimension D such that the ratio of H/D is equal
`
`to or less than 0.25. (’844 patent, 8:55-59, 7:47-50, 9:43-46, FIG. 28.)
`
`Therefore, the claims and the specification clearly defines the H/D ratio for the
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`’844 patent (as shown below).
`
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`As shown above, the luminaire of the ’844 patent sits substantially flush on
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`the surface of the ceiling/wall material and the overall height (H) is calculated by
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`using that portion of the fixture that resides below the surface and not above. (Ex.
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`1001, 8:55–59, 7:47–50, 9:43–46, FIG. 12 and FIG. 28.) Therefore, contrary to
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`Patent Owner’s assertion, the ’844 patent does not require those parts of the fixture
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`that reside in or above the ceiling for calculating the overall height H for the H/D
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`limitation.
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`2.
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`IPR2017-01639
`U.S. Patent 8,967,844
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`THE ‘844 PATENT DOES NOT REQUIRE INCLUDING THE
`HEIGHT OF SECONDARY HEAT SINK 14 OF CHOU TO
`CALCULATE THE OVERALL HEIGHT (H) FOR THE H/D
`LIMITATION OF THE ’844 PATENT.
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`As discussed above, the ’844 patent teaches where the luminaire sits
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`substantially flush on the surface of the ceiling/wall material the overall height (H)
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`is calculated by using that portion of the fixture that resides below the surface.
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`(Ex. 1001, 8:55–59, 7:47–50, 9:43–46, FIG. 12 and FIG. 28.)
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`Chou discloses an overall height H and an overall dimension D such that the
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`ratio of H/D is equal to or less than 0.25 using the same methodology defined in
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`the ’844 patent. Chou discloses a heat spreader thermally coupled to a heat sink.
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`FIG. 2b of Chou illustrates a cross-sectional view of a recessed can light fixture
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`including a thermally conductive trim and heat sink for redistributing heat (as
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`shown below).
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`The device in Chou is mounted on the ceiling such that the outer flange of
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`trim 12 may contact a structural surface that surrounds the recessed housing such
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`as a ceiling or wall surface. As clips 18 expand and exert force against an interior
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`surface of the recessed can housing (such as apertures 19), clips 18 exert force on
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`fixture 10 and, specifically, pull the flange portion of trim 12 against the surface
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`surrounding the recessed can application. (Ex. 1011, 4:45–50.) Therefore, when
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`the luminaire in Chou sits substantially flush on the surface of the ceiling, the
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`overall height (H) — similar to the ’844 patent — can be calculated by using that
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`portion of the fixture that resides below the surface of the ceiling. As stated by Dr.
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`Roberts, the definition of “overall height” given by the inventors in the ’844 patent
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`does not include any part of the luminaire that extends above the lower surface of
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`the ceiling. (Ex. 1018, ¶¶ 55–56.) Therefore, contrary to Patent Owner’s assertion,
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`Chou does not require including the height of the heat sink 14 to calculate the
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`parameter H of the H/D limitation.
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`3.
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`Patent Owner Confuses Enablement with Obviousness
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`Patent Owner’s non-anticipation argument for claims 3 and 5 should be
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`disregarded. (Paper 17, 28–24.) For example, Patent Owner argues that to
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`calculate the H/D ratio Chou’s “heat sink 14” must be included and without it
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`Chou is allegedly not enabled. The test for obviousness is not the same as
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`anticipation and a prior art reference does not need to meet the enablement
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`requirement in order to be used as a reference in an obviousness determination.
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`A non-enabling reference may qualify as prior art for the purpose of determining
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`obviousness of a patent. ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350
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`(Fed. Cir. 2015). Patent Owner further argues that the “heat sink 14” should be
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`included, as removing it will alter the device of Chou and thereby fail to meet the
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`alleged anticipation. A party may use a portion of what a reference teaches for
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`purposes of obviousness. Patent Owner again asserts the wrong standard of
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`anticipation. Petitioner is asserting that Chou renders claims 3 and 5 obvious and
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`not that Chou anticipates claims 3 and 5.
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`D. CHOU AND WEGNER RENDER CLAIM 12 OBVIOUS.
`Claim 12 claims the luminaire of claim 1 wherein “the heat sink forms a trim
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`plate that is disposed completely external of the can light fixture or the electrical
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`junction box.” (’844 patent at claim 12.)
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`As discussed above, Chou dissipates heat in two ways. The first is through a
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`metal trim 12 on the underside of the fixture referred to as flange 22. (Chou at
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`3:44–47, 4:4–16, Fig. 2b at 12, 5:1–11, 7:44–46.) The second way in which Chou
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`dissipates heat is through an additional, secondary heat sink 14, mounted on the top
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`side of the fixture, which extends up into a conventional ceiling “can.” (Ex. 1011,
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`U.S. Patent 8,967,844
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`Fig. 2b, 3, 8; 4:40–54). Patent Owner, in an effort to discredit Chou, does not
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`contest this disclosure but instead argues that the secondary heat sink 14 residing
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`inside a can fixture negates the fact that in Chou the flange 22 functions primarily
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`as a heat sink independent of any other heat sink.
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`Claim 1 from which claim 12 depends recites the term “A luminaire
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`comprising.” Claim language itself sets the claim scope. Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996). Courts have consistently
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`emphasized that the indefinite articles “a” or “an,” when used in a patent claim,
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`mean “one or more” in claims containing open-ended transitional phrases such as
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`“comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356, 55 USPQ
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`2d 1835, 1839 (Fed. Cir. 2000); see Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
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`973, 977, 52 USPQ2d 1109, 1112 (Fed. Cir. 1999); Abtox, Inc. v. Exitron Corp.,
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`122 F.3d 1019, 1023, 43 USPQ2d 1545, 1548 (Fed. Cir. 1997). It is therefore
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`irrelevant that Chou includes an additional heat dissipation structure in addition to
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`the trim 12 including the flange portion 22. See Crystal Semiconductor Corp. v.
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`TriTech Microelectronics Intern., Inc., 246 F.3d 1336 (Fed. Cir. 2001).
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`E. CHOU RENDERS CLAIM 21 OBVIOUS.
`Dependent claim 21 further limits the luminaire of claim 1 by “the nominally
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`sized can light fixture is a nominally sized four-inch can light fixture, and the
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`nominally sized electrical junction box is a nominally sized four-inch electrical
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`junction box.” ( Ex. 1001, claim 21.)
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`Patent Owner mistakenly asserts that Petitioner makes no argument that
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`Chou in light of Wegner meets this limitation. Contrary to Patent Owner’s
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`arguments, the petition clearly states that, for the same reasoning as claim 1, “it
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`would have been obvious to modify Chou by selecting a suitably sized driver and
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`heat sink from the many available at the time, scaled/sized to fit in a junction box –
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`including a 4-inch box.” (Pet., 19). In addition, as discussed above, a POSITA
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`looking at Chou would have learned to modify a power conditioner and dimension
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`it to produce an embodiment that is configured and sized to fit at least partially
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`within an interior space of a nominally sized can light fixture and a nominally
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`sized electrical junction box. In his declaration, Dr. Roberts also explained how a
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`POSITA would have obtained the claimed subject matter based on his motivation,
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`his or her knowledge, and the disclosures in the prior art. (Ex. 1002, ¶¶41–42, 70
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`and 84.)
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`F. CHOU RENDERS CLAIM 23 OBVIOUS.
`Dependent claim 23 further limits the luminaire of claim 1 by “wherein the
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`heat sink also serves as a trim plate; the combination of the trim plate and the
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`outer optic have an overall height H; the trim plate has an overall diameter D; and
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`the ratio of H/D is equal to or less than .25.” (Ex. 1001, claim 23.)
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`Patent Owner, in an effort to discredit Petitioner, repeats the same argument
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`made for claims 1, 3, 5 and 12, which Petitioner already addressed above. Patent
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`Owner’s arguments cannot defeat Petitioner’s obviousness arguments for claim 23
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`for the same reason that the Patent Owner’s response to claims 1, 3, 5 and 12 were
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`insufficient to negate Petitioner’s obviousness assertion for those claims.
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`G. CHOU RENDERS CLAIM 24 OBVIOUS.
`Independent claim 24 is identical to claim 2, with the additional limitation of
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`claim 12, both depending from claim 1.
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`Patent Owner again offers no new argument and repeats arguments from
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`claim 1, which Petitioner already addressed above. Therefore, Patent Owner’s
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`arguments cannot defeat Petitioner’s obviousness arguments for claim 24 for the
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`same reason that Patent Owner’s response to claims 1 and 12 was insufficient to
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`negate Petitioner’s obviousness assertion for those claims.
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`V. CHOU IN LIGHT OF WEGNER AND ZHANG RENDERS CLAIM 10
`OBVIOUS.
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`Claim 10 claims the luminaire of claim 1, further comprising “an inner optic
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`disposed over the plurality of LEDs between the plurality of LEDs and the outer
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`optic.” (’844 patent at claim 10.)
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`First, as discussed above, Chou in light of Wegner renders claim 1 obvious.
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`Second, Patent Owner again advances a meritless argument to discredit
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`Petitioner — primarily that Petitioner is not clear which of U.S. Patent No.
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`7,722,227 (Ex. 1013, hereinafter, “Zhang”) Zhang’s alleged optics (tempered glass
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`plate 106 or lens 108) a POSITA would purportedly add to Chou’s can light
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`fixture. (Ex. 1013 at 26.) As stated in the declaration attached with this response,
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`Patent Owner must not have read Dr. Robert’s initial declaration in support of the
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`petition. In his declaration on June 16, 2017, Dr. Robert clearly explains the
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`following: “Zhang teaches the use of an inner optic in conjunction with an outer
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`optic. Zhang states: ‘A tempered glass plate 106 is disposed in the cavity 110 of
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`the baffle 98 below the LED light sources (not shown) which are located within
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`LED lenses 108.’ The tempered glass plate 106 is an outer optic, placed further
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`away from the LEDs, while the lens 108 are inner optics, closer to the LEDs.”
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`[(Ex. 1002, ¶ 96, Ex. 1013,9:42–44). Therefore contrary to Patent Owner’s
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`assertion, Petitioner’s reference to the inner optic 108 of Zhang, not glass plate
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`106.
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`Third, Petitioner’s suggested motivation is correct. As the Supreme Court
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`has explained, it will often be necessary to look to interrelated teachings of
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`multiple patents; to the effects of demands known to the design community or
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`present in the marketplace; and to the background knowledge possessed by a
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`person having ordinary skill in the art. KSR at 401. A POSITA would have
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`recognized that an additional optic, as taught in Zhang, could be added to Chou in
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`order to advance the goal suggested by Chou: further modifying the raw light from
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`the LED. (Ex. 1018, ¶ 98; Ex. 1011, 8:21–26.)
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`VI. CLAIMS 1, 2, 9, 10, 16, 21 AND 22 ARE RENDERED OBVIOUS BY
`ZHANG.
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`Petitioner contends that Zhang renders claims 1, 2, 9, 10, 16, 21 and 22
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`obvious. (Ex. 1013). Because claims 2, 9
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