throbber
Paper 8
`Trials@uspto.gov
`Entered: October 31, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TECHNICAL CONSUMER PRODUCTS, INC., NICOR INC.,
`AMAX LIGHTING, JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PV
`LIGHTING CO., LTD., LEEDARSON LIGHTING CO., LTD., and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-012801
`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
`
`
`
`1 IPR2018-00261 and IPR2018-00271 are joined with IPR2017-01280. All
`citations to the record are made with reference to IPR2018-01280 unless
`otherwise specified.
`
`

`

`IPR2017-01280
`Patent 8,967,844 B2
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting
`(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24
`of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to
`35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp.
`(“Patent Owner”), did not file a Preliminary Response to the Petition. We
`determined that the information presented in the Petition established that
`there was a reasonable likelihood that Lead Petitioner would prevail in
`challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the
`’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
`instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11,
`12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (collectively, “Jiawei”)
`filed a similar petition and motion for joinder in Case IPR2018-00261. See
`IPR2018-00261, Papers 1, 3. We instituted an inter partes review and
`joined Jiawei as parties to this case in a limited capacity. See
`IPR2018-00261, Paper 7. Leedarson Lighting Co., Ltd., and Leedarson
`America, Inc. (collectively, “Leedarson”) also filed a similar petition and
`motion for joinder in Case IPR2018-00271. See IPR2018-00271, Papers 1,
`3. We instituted an inter partes review and joined Leedarson as parties to
`this case in a limited capacity. See IPR2018-00271, Paper 7. Henceforth,
`we refer collectively to Lead Petitioner, Jiawei, and Leedarson as
`“Petitioner.”
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”), and Petitioner filed a Reply to the Patent
`
`2
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`

`IPR2017-01280
`Patent 8,967,844 B2
`Owner Response (Paper 21, “Pet. Reply”). An oral hearing was held on
`September 6, 2018, and a transcript of the hearing is included in the record.
`Paper 31 (“Tr.”).
`Petitioner filed Declarations of Dr. Zane Coleman (Ex. 1002) and
`Daryl Soderman (Ex. 1003) with its Petition. Patent Owner filed a
`Declaration of Eric Bretschneider, Ph.D. (Ex. 2001) with its Patent Owner
`Response. The parties also filed transcripts of the depositions of
`Dr. Coleman (Ex. 2002), Mr. Soderman (Ex. 2004), and Dr. Bretschneider
`(Ex. 1023).
`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 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. For
`the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19,
`and 21–24 of the ’844 patent are unpatentable. Petitioner has not
`demonstrated by a preponderance of the evidence that claim 4 of the
`’844 patent is unpatentable.
`
`
`
`I. BACKGROUND
`
`
`
`Related Proceedings
`The parties identify the following proceedings related to the
`
`’844 patent (Pet. 1–2; Paper 6, 1–3; Paper 25, 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);
`
`3
`
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`

`

`IPR2017-01280
`Patent 8,967,844 B2
`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);
`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);
`
`4
`
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`

`IPR2017-01280
`Patent 8,967,844 B2
`Lighting Sci. Grp. Corp. v. Satco Prods., Inc., Case No. 6:16-cv-
`01256 (M.D. Fla. filed July 13, 2016);
`Lighting Sci. Grp. Corp. v. Amax Lighting, Case No. 6:16-cv-01321
`(M.D. Fla. filed July 22, 2016);
`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. Halco Lighting Techs., LLC, Case No.
`6:16-cv-02188 (M.D. Fla. filed Dec. 21, 2016);
`Lighting Sci. Grp. Corp. v. Shenzhen Jiawei Photovoltaic Lighting,
`Case No. 5:16-cv-03886 (N.D. Cal. filed July 11, 2016); and
`Lighting Sci. Grp. Corp. v. Leedarson Lighting Co., Case No. 6:17-
`cv-00826 (M.D. Fla. filed May 9, 2017).
`
`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 Case IPR2017-01287. See Pet. 1. Petitioner
`additionally filed a petition for inter partes review of U.S. Patent No.
`8,672,518 B2 (“the ’518 patent”), which also is owned by Patent Owner, in
`co-pending Case IPR2017-01285. See id. We instituted inter partes reviews
`in these cases. 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.
`Generation Brands LLC previously filed petitions for inter partes
`review of the ’844 patent and the ’968 patent in IPR2016-01546 and
`IPR2016-01478, respectively. Pet. 1. After our decisions to institute inter
`partes review in these cases, both cases were settled and terminated. See id.;
`Paper 6, 1. Lead Petitioner asserts its Petition in the instant case is
`5
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`

`IPR2017-01280
`Patent 8,967,844 B2
`substantially similar to the petition filed by Generation Brands LLC in
`IPR2016-01546. See Pet. 1.
`Satco Products, Inc., also filed petitions for inter partes review of the
`’844 patent and the ’968 patent in IPR2017-01639 and IPR2017-01638,
`respectively. We instituted inter partes reviews in these cases, which are
`still pending.
`
`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.
`
`
`
`
`
`6
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`

`IPR2017-01280
`Patent 8,967,844 B2
`
`
`Figure 5 depicts the separated components of luminaire 100, whereas
`Figure 12 depicts a section view of assembled luminaire 100. Id. at 3:63–65,
`4:14–15. Luminaire 100 includes heat spreader 105, heat sink 110, and
`outer optic 115, light source 120, and electrical supply line 125. Id. at 5:37–
`44. Light source 120, which may be a plurality of LEDs, is disposed in
`thermal communication with heat spreader 105. Id. at 5:37–44, 6:11–14.
`Heat sink 110 is thermally coupled to and disposed diametrically outboard of
`heat spreader 105. Id. at 5:37–44. In addition, outer optic 115 is securely
`retained relative to at least one of heat spreader 105 and heat sink 110. Id.
`The combination of heat spreader 105, heat sink 110, and outer optic 115 has
`an overall height H and an overall outside dimension/diameter D such that
`the ratio of H/D is less than or equal to 0.25 (e.g., when H=1.5 inches and
`D=7 inches). Id. at 5:44–50.
`Luminaire 100 may also include a power conditioner. Id. at 6:36–38.
`The power conditioner may be a circuit board having electronic components
`for receiving alternating current (AC) voltage from supply line 125 and
`delivering direct current (DC) voltage to the LEDs. Id. at 6:38–46. In one
`embodiment, the electronics of the power conditioner are contained within a
`
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`IPR2017-01280
`Patent 8,967,844 B2
`housing to form block-type power conditioner 165, which can be disposed
`on the back surface of 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
`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
`
`
`
`
`Illustrative Claim
`Claims 1 and 24 of the ’844 patent are independent. Claims 2–5, 7–9,
`11, 12, 14, 16, 17, 19, and 21–23 depend directly or indirectly from claim 1.
`Claim 1 is illustrative of the challenged claims and recites:
`
`
`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 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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`

`

`IPR2017-01280
`Patent 8,967,844 B2
`1. A luminaire, comprising:
`a heat spreader and a heat sink, the heat sink being
`substantially ring-shaped and being disposed around and in
`thermal communication with an outer periphery of the heat
`spreader;
`a light source disposed in thermal communication with
`the heat spreader, the light source comprising a plurality of light
`emitting diodes (LEDs) that are disposed in thermal
`communication with the heat spreader such that the heat
`spreader facilitates transfer of heat from the LEDs to the heat
`sink;
`
`
`
`an outer optic disposed in optical communication with
`the plurality of LEDs; and
`a power conditioner disposed and configured to receive
`AC voltage from an electrical supply and to provide DC voltage
`for the plurality of LEDs;
`wherein the power conditioner is disposed, configured
`and sized to fit at least partially within an interior space of: a
`nominally sized can light fixture; and, a nominally sized
`electrical junction box.
`Id. at 14:32–51.
`
`Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 7,670,021 B2 to Chou, filed May 20,
`2008, issued Mar. 2, 2010 (Ex. 1012, “Chou”);
`U.S. Patent No. 7,980,736 B2 to Soderman et al., filed
`Nov. 13, 2007, issued July 19, 2011 (Ex. 1013, “Soderman”);
`Silescent Lighting Corporation, S100 LP2 Product Sheet
`and Installation Guide (Ex. 1014, “Silescent”);3
`
`3 Petitioner refers to Silescent as a single reference even though it appears to
`comprise two separate documents: a product sheet and an installation guide.
`Compare Ex. 1014, 1–2, with id. at 3–4. In addition, we follow Petitioner’s
`9
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`

`IPR2017-01280
`Patent 8,967,844 B2
`U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10,
`2008, issued May 25, 2010 (Ex. 1015, “Zhang”); and
`U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22,
`2008, issued Aug. 9, 2011 (Ex. 1016, “Wegner”).
`
`Instituted Grounds
`We instituted inter partes review of claims 1–5, 7–9, 11, 12, 14, 16,
`17, 19, and 21–24 of the ’844 patent on the following grounds (Dec. on
`Inst. 26):
`Reference(s)
`
`
`
`Basis
`
`Claim(s) Challenged
`
`Chou and Wegner
`
`Chou, Zhang, and
`Wegner
`Zhang
`
`Zhang, Soderman, and
`Silescent
`Zhang and Wegner
`
`35 U.S.C. § 103(a) 1–3, 5, 7, 8, 9, 11, 12,
`14, 16, and 21–24
`35 U.S.C. § 103(a) 8
`
`35 U.S.C. § 103(a) 1, 2, 8, 9, 16, 21, and
`22
`35 U.S.C. § 103(a) 3 and 4
`
`35 U.S.C. § 103(a) 11, 17, and 19
`
`
`
`
`
`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)
`(2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). Under the broadest reasonable interpretation standard, and absent
`
`
`page numbering convention for the installation guide even though each page
`numbered by Petitioner appears to span two pages of the installation guide.
`10
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`

`IPR2017-01280
`Patent 8,967,844 B2
`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).
`We determine that no terms require 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
` Obviousness Ground Based on Chou and Wegner
`Petitioner contends claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24
`would have been obvious over Chou and Wegner. Pet. 19–35. Patent
`Owner disputes Petitioner’s contention.4 PO Resp. 5–28.
`
`Principles of Law
`1.
`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
`
`
`4 Patent Owner states several times that Petitioner has not shown “clear and
`convincing evidence” of unpatentability. See PO Resp. 15, 16, 32, 34. That
`is not the correct evidentiary standard. Petitioner need only prove
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`11
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`

`IPR2017-01280
`Patent 8,967,844 B2
`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
`considerations.5 See Graham v. John Deere Co. of Kansas City, 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
`2.
`Petitioner’s declarant, Dr. Coleman, testifies that an ordinarily skilled
`artisan “would have had at least a bachelor’s degree in either mechanical
`engineering, electrical engineering, or physics and at least 3-4 years of
`experience designing light fixtures.” Ex. 1002 ¶ 21. 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. 4–5 (citing Ex. 2001 ¶¶ 22–23).
`The parties’ definitions of the level of skill differ in minor respects,
`including the number of years of experience and whether or not a
`
`5 Patent Owner has not put forth any evidence or argument related to
`secondary considerations of nonobviousness.
`12
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`IPR2017-01280
`Patent 8,967,844 B2
`background in chemical engineering should be included. At his deposition,
`Dr. Bretschneider testified that he included a degree in chemical engineering
`in his definition because that degree confers expertise in heat transfer.
`Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the
`difference in years of experience, both declarants agree that three years of
`experience is appropriate. For these reasons, 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.
`
`Chou
`3.
`Chou is a U.S. patent directed to “a recessed light fixture having a
`thermally effective trim.” Ex. 1012, 1:16–18. Figures 2a and 2b of Chou
`are reproduced below.
`
`
`
`13
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`IPR2017-01280
`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. at 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.
`Fixture 10 also includes optical lens 23 and electrical socket 16 for
`connecting the light source to an electricity source. Id. at 4:17–18, 8:17–23.
`In addition, an AC-to-DC converter circuit may be connected between
`socket 16 and the light source, and the conversion circuit can include circuit
`board 17. Id. at 4:22–27.
`Petitioner notes that Chou issued from an application filed on May 20,
`2008, but Petitioner does not take a position about how Chou qualifies as
`prior art. Pet. 9. Patent Owner does not dispute the prior art status of Chou.
`
`14
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`IPR2017-01280
`Patent 8,967,844 B2
`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. 1012, [22].
`
`4. Wegner
`Wegner is a U.S. patent directed to “a light emitting diode downlight
`can fixture for a recessed luminaire.” Ex. 1016, 1:31–33. Wegner describes
`Edison base adapter 1520 as useful for retrofitting an LED module in an
`existing, non-LED fixture. Id. at 10:4–6, Fig. 16. For certain applications
`where a direct wired connection is desired, Wegner describes removing the
`Edison base adapter and connecting the remaining wires to the wiring of an
`existing fixture. Id. at 11:3–32, Fig. 14.
`Petitioner notes that Wegner issued from an application filed on
`September 22, 2008, but Petitioner does not take a position about how
`Wegner qualifies as prior art. Pet. 15. 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
`October 5, 2009, filing date of the provisional application that led to the
`’844 patent. Ex. 1001, [60]; Ex. 1016, [22].
`
`Claim 1
`5.
`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. 17 (citing 7:44–46, 7:63–8:1, Figs. 2b, 4a, 4b). Petitioner also maps the
`
`15
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`

`IPR2017-01280
`Patent 8,967,844 B2
`recited “heat sink”6 to Chou’s flange portion 22 of trim 12. Id. at 18–19
`(citing Ex. 1012, 5:1–5, 7:63–8:3, Fig. 4a). Petitioner also cites Chou for
`teaching an LED light source that is in thermal communication with trim 12.
`Id. at 21–22 (citing Ex. 1012, 4:14–17, 5:1–5, 7:37–40, 7:44–46, 7:63–8:1,
`8:44–48, Figs. 2b, 4b). Petitioner quotes Chou for the proposition that heat
`from the LED light source “is transferred into trim 12 at the attachment
`point. From there, the heat is transferred into . . . the flange of trim 12.” Id.
`at 17 (quoting Ex. 1012, 7:44–46). Regarding the requirement that the heat
`sink is “substantially ring-shaped” and “in thermal communication with an
`outer periphery of the heat spreader,” Petitioner contends Chou teaches that
`trim 12 is thermally conductive and that it “includes a flange around a
`perimeter of the trim.” Id. at 19 (quoting Ex. 1012, 2:54–55 and citing
`Ex. 1012, 5:50–51, Figs. 2b, 4a, 4b). Petitioner explains that the inner
`portion of Chou’s trim 12 and flange portion 22 are in thermal
`communication because they are the same piece of metal or are multiple
`pieces combined. Id. at 19–20 (citing Ex. 7:23–26, 7:49–50, Fig. 2b).
`Furthermore, for the recited “outer optic,” Petitioner cites Chou’s lens 23.
`Id. at 21 (citing Ex. 1012, 8:16–23, Fig. 2b).
`Regarding the recited “power conditioner,” Petitioner cites Chou’s
`teaching that “an AC to DC converter circuit may be connected between
`socket 16 and the light source to convert the AC power source into a DC
`source.” Id. (quoting Ex. 1012, 4:22–26). Petitioner contends Chou’s power
`conditioner would “fit at least partially within an interior space of[] a
`
`
`6 Petitioner contends Chou’s “heatsink 14” is a “secondary” heat sink and an
`“unclaimed element ha[ving] no bearing on obviousness in this case.”
`Pet. 19 n.8.
`
`16
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`
`

`

`IPR2017-01280
`Patent 8,967,844 B2
`nominally sized can light fixture” based on Chou’s teachings that fixture 10
`is configured to fit within 5-inch and 6-inch can light fixtures. Id. at 22
`(citing Ex. 1012, 3:65–66). Petitioner explains that “power conversion
`circuit board 17 is positioned within secondary heatsink 14 and therefore
`must fit within a 5-inch can.” Id. (citing Ex. 1012, 4:28, 4:46–54, Fig. 2b).
`Petitioner contends it would have been obvious to modify Chou’s
`heatsink 14 and driver such that the power conditioner would “fit at least
`partially within an interior space of . . . a nominally sized electrical junction
`box” in accordance with clam 1. See id. at 22–25. Specifically, Petitioner
`proposes “selecting an alternative driver and heat sink scaled/sized to fit in
`the shallower dimension of an electrical junction box.” Id. at 22–23 & n.10
`(citing Ex. 1002 ¶ 49; Ex. 1017 (“Johnson”), 4:11–14, 5:2–4, Fig. 2;
`Ex. 1018 (“DiLouie”), 28). In support of the modification, Petitioner cites
`Chou’s teaching that “fixture 10 may be configured to be installed into a
`recessed can housing having other geometries.” Id. at 22 (quoting Ex. 1012,
`3:67–4:1) (emphasis added by Petitioner). Petitioner also contends an
`ordinarily skilled artisan would have known about power conditioners sized
`to fit in a junction box, though Petitioner acknowledges that smaller power
`conditioners might have “a lower total power output and lesser heat sinking
`requirements than a physically larger driver.” Id. at 23 (citing Ex. 1002
`¶ 49). Petitioner further acknowledges that an ordinarily skilled artisan
`would have employed “more efficient LEDs or an appropriately reduced
`number of LEDs (thus consuming less power) in order to match/
`accommodate the heat dissipating characteristics of the smaller driver, heat
`sink, and volume.” Id. at 24 (citing Ex. 1002 ¶ 52). Petitioner additionally
`cites Wegner for teaching the removal of Chou’s male Edison base “to
`
`17
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`

`IPR2017-01280
`Patent 8,967,844 B2
`expose and connect wires in an LED light fixture.” Id. (citing Ex. 1002
`¶ 53; Ex. 1016, 11:3–32).
`Petitioner contends an ordinarily skilled artisan would have been
`motivated to modify Chou’s power conditioner to fit in a nominally sized
`junction box to serve “not just [the] retrofit but also [the] new construction
`market[s]” because “4-inch, 5-inch, and 6-inch junction boxes were widely
`used and well known in new construction applications at the time.” Id. at
`24–25 (citing Ex. 1002 ¶ 54). Petitioner also contends substituting an
`“available smaller driver[] and correspondingly smaller secondary heat sink
`would have yielded the predictable result of the driver and accompanying
`heat sink fitting inside a nominally sized junction box.” Id. at 23 (citing
`Ex. 1002 ¶¶ 50–51).
`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. 1012, 3:65–66, 4:5–
`7; Ex. 2001 ¶ 132). 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 7 (citing Pet. 24). 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 7–8
`(citing Ex. 1012, 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 8 (citing Ex. 2001
`¶¶ 130–132).
`
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`IPR2017-01280
`Patent 8,967,844 B2
`We agree with Petitioner (Pet. Reply 8–9), 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 also
`“recessed housings . . . developed with different geometries.” Ex. 1012,
`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. See Ex. 1023,
`30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures
`attached to junction boxes were known with “certain parts” inside the box).
`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.
`In addition, Patent Owner contends Petitioner has provided no reason
`or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent
`Owner also 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 ¶¶ 74–75, 133–137). Yet Petitioner only cites
`Wegner 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. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s
`arguments 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
`
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`

`IPR2017-01280
`Patent 8,967,844 B2
`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 ¶ 53. 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. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base
`would have been removed to make Chou’s luminaire work in a junction box.
`Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting
`to modify Chou for use in junction boxes would have known to make this
`modification.
`Patent Owner argues that Petitioner’s proposed modifications—
`namely, “(1) reducing the size of LED driver 17, (2) reducing the size of
`heatsink 14, and (3) reducing the number of LEDs”—would result in an
`entirely new luminaire. PO Resp. 13–15 (citing Pet. 23–24; Ex. 2001
`¶ 138). Patent Owner contends an ordinarily skilled artisan
`would not [have] beg[u]n with a LED light fixture (1) including
`an oversized LED Driver, (2) requiring a bulky heat sink that
`itself is too big for even a 4-inch can light fixture for heat
`dissipation, (3) equipped with an oversized LED package, and
`(4) taught to be installed in can light fixtures that already
`include an integral junction box.
`Id. at 14 (citing Ex. 2001 ¶ 138). As such, Patent Owner argues Petitioner’s
`proposed modifications are “steeped in hindsight bias.” Id.
`Despite Patent Owner’s argument that an ordinarily skilled artisan
`would not have designed an LED fixture starting with Chou’s teachings, we
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`

`IPR2017-01280
`Patent 8,967,844 B2
`nonetheless must consider Chou “for everything it teaches by way of
`technology” and not just for the “invention [Chou] is describing and
`attempting to protect.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076
`(Fed. Cir. 2015) (quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d
`898, 907 (Fed. Cir. 1985) (emphases in original)). Accordingly, Petitioner
`utilizes Chou for its teaching of a number of the limitations in claim 1.
`Beyond these teachings, Petitioner provides reasons why and how an
`ordinarily skilled artisan would have modified Chou’s specific application in
`can light housings so that the same teachings would be applied to junction
`boxes. See Pet. 22–25. In particular, Petitioner presents testimony from
`Dr. Coleman establishing that an ordinarily skilled artisan would have
`known to modify the number and type of LEDs, the size of the driver, and
`the size of the secondary heat sink as design choices attendant to producing
`an LED light fixture. See Ex. 1002 ¶¶ 49–52. Dr. Bretschneider’s testimony
`supports this notion. See Ex. 2001 ¶ 108 (“In designing any new LED, a[n
`ordinarily skilled artisan] would have to pick an LED for the application,

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