Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: October 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEIT ELECTRIC COMPANY, INC.,
`Petitioner,
`
`v.
`
`PHILIPS LIGHTING NORTH AMERICA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00790
`Patent 7,038,399 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN and JASON
`REPKO, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
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` Paper 9
`
`
`
` Entered: October 10, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEIT ELECTRIC COMPANY, INC.,
`Petitioner,
`
`v.
`
`PHILIPS LIGHTING NORTH AMERICA CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2018-00790
`Patent 7,038,399 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN and JASON
`REPKO, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2018-00790
`Patent 7,038,399 B2
`
`INTRODUCTION
`I.
`Feit Electric Company Inc. (“Feit Electric” or “Petitioner”) filed a
`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 7, 8,
`17, 18, 19, 34, 35, and 58–60 of U.S. Patent No. 7,038,399 B2 (Ex. 1001,
`“the ’399 patent”). Patent Owner, Philips Lighting North America
`Corporation, filed a Preliminary Response to the Petition. (Paper 7, “Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a).
`Section 314(a) provides that an inter partes review may not be
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” After considering the Petition, the Preliminary Response, and
`associated evidence, we conclude that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing unpatentability of the
`challenged claims.
`
`A. Related Proceedings
`The parties report the following pending litigation matters related to
`the ’399 patent: Koninklijke Philips N.V. et al. v. Wangs Alliance
`Corporation, Case No. 14-cv-12298-DJC (D. Mass.) and LED Lighting
`Devices, LED Power Supplies, and Components Thereof, Case No. 337-TA-
`1081 (ITC). Pet. 2, Paper 3, 2–3. The parties further note the following
`litigation matters related to the ’399 patent: Wangs Alliance Corp. d/b/a
`WAC Lighting Co. v. Philips Lighting North America, No. 17-1532 (Fed.
`Cir.), which was an appeal from Wangs Alliance Corporation v. Philips
`Lighting North America Corporation, Case No. IPR2015-01294 (P.T.A.B.
`Nov. 23, 2016). Id.
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`Patent 7,038,399 B2
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`B. The ʼ399 Patent
`The ’399 patent discloses a method and apparatus for providing power
`to devices via an A.C. power source for LED-based light sources when the
`power circuits provide other than standard line voltages. Ex. 1001, at [57].
`The claimed invention allows LED-based sources to be substituted for other
`light sources, such as incandescent lights, in environments using A.C.
`dimming devices or controls. Id.
`Figure 1, below, shows an example operation of conventional A.C.
`dimming devices. Id. at 8:30–31.
`
`
`Figure 1 shows an example of A.C. dimmer known in the prior art. Id. at
`8:30–31. Figure 1 “shows . . . voltage waveform 302 (e.g., representing a
`standard line voltage) that may provide power to one or more conventional
`light sources.” Id. at 2:18–21. A.C. dimmer 304 responsive to user interface
`305 alters the A.C. signals, such that “dimmer 304 is configured to output
`waveform 308, in which the amplitude 307 of the dimmer output signal may
`be adjusted via the user interface 305.” Id. at 2:23–35. The Specification
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`Patent 7,038,399 B2
`also states that “dimmer 304 is configured to output the waveform 309, in
`which the duty cycle 306 of the waveform 309 may be adjusted via the user
`interface 305.” Id.
`Figure 3, below, shows one embodiment of the invention using an
`LED-based light source. Id. at 8:35–36.
`
`
`Figure 3 illustrates an LED-based lighting unit 200 “depicted generally to
`resemble a conventional incandescent light bulb having a screw-type base
`connector 202 to engage mechanically and electrically with a conventional
`light socket.” Id. at 12:32–37. Lighting unit 200 includes LED-based light
`source 104 and controller 204 configured to receive A.C. signal 500 via
`connector 202 and provide operating power to LED-based light source 104.
`Controller 204 includes components to ensure proper operation of the
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`Patent 7,038,399 B2
`lighting unit for A.C. signals 500 that are provided by a dimmer circuit, such
`as those that output duty cycle-controlled (i.e., angle modulated) A.C.
`signals. Id. at 12:50–60. Controller 204 includes rectifier 404, low pass
`filter 408, and DC converter 402. Id. at 12:61–64.
`
`C. Illustrative Claims
`Claims 7, 8, and 17 are illustrative and reproduced below (Ex. 1001,
`25:41–67, 26:28–59).
`7. An illumination apparatus, comprising:
`at least one LED; and
`at least one controller coupled to the at least one
`LED and configured to receive a power-related signal
`from an alternating current (A.C.) power source that
`provides signals other than a standard A.C. line voltage,
`the at least one controller further configured to provide
`power to the at least one LED based on the power-related
`signal,
`wherein the A.C. power source is an A.C. dimmer
`circuit,
`wherein the A.C. dimmer circuit is controlled by a
`user interface to vary the power-related signal, and
`wherein the at least one controller is configured to variably
`control at least one parameter of light generated by the at
`least one LED in response to operation of the user
`interface, and
`wherein the operation of the user interface varies a
`duty cycle of the power-related signal, and wherein the at
`least one controller is configured to variably control the at
`least one parameter of the light based at least on the
`variable duty cycle of the power-related signal.
`
`The apparatus of claim 7, wherein the at least one
`8.
`parameter of the light that is variably controlled by the at
`least one controller in response to operation of the user
`interface includes at least one of an intensity of the light, a
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`IPR2018-00790
`Patent 7,038,399 B2
`color of the light, a color temperature of the light, and a
`temporal characteristic of the light.
`
`17. An illumination apparatus, comprising:
`at least one LED; and
`at least one controller coupled to the at least one
`LED and configured to receive a power-related signal
`from an alternating current (A.C.) power source that
`provides signals other than a standard A.C. line voltage,
`the at least one controller further configured to provide
`power to the at least one LED based on the power-related
`signal,
`wherein the A.C. power source is an A.C. dimmer
`circuit,
`wherein the A.C. dimmer circuit is controlled by a
`user interface to vary the power-related signal, and
`wherein the at least one controller is configured to variably
`control at least one parameter of light generated by the at
`least one LED in response to operation of the user
`interface, and
`wherein the at least one controller includes:
`an adjustment circuit to variably control the at least
`one parameter of light based on the varying power-related
`signal; and
`power circuitry to provide at least the power to the
`at least one LED based on the varying power-related
`signal.
`
`D. Asserted Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability for the challenged claims of the ’399 patent as follows
`(Pet. 4–5):
`
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`Patent 7,038,399 B2
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`Basis
`35 U.S.C. § 102
`
`Claims Challenged
`7, 8, 17, 34, 35,
`and 58–60
`18 and 19
`7, 8, 17, 18, 19, 34,
`35, and 58–60
`
`References
`Waltz1 and Ference2
`Waltz, Ference, and
`Panagotacos3
`Venkit4 and Okuno5
`
`Petitioner also relies on the Declaration of Peter William Shackle, Ph.D (Ex.
`1003) in support of Petition.
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we assign
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`
`
`1 U.S. Patent No. 5,450,301 to Waltz et al. (Ex. 1005, “Waltz”).
`2 U.S. Patent No. 4,797,599 to Ference et al. (Ex. 1006, “Ference”).
`3 WO Publication No. 2002/023956 to Panagotacos et al. (Ex. 1007,
`“Panagotacos”).
`4 U.S. Patent No. 5,559,395 to Venkitasubrahmanian et al. (Ex. 1008,
`“Venkit”).
`5 U.S. Patent No. 4,298,869 to Okuno (Ex. 1009, “Okuno”).
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`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`Petitioner and Patent Owner have proposed constructions for various
`terms. See Pet. 9–13; Prelim. Resp. 14–22. We need not construe every
`term proposed by the parties if such constructions are not helpful in our
`determination of whether to institute trial.
`1. “controller”
`Independent claims 7, 17, 58 and 59 recite a controller configured to
`perform functions, such as “to receive a power-related signal,” “to provide
`power to the at least one LED,” and “to variably control at least one
`parameter of light.” Ex. 1001, 25:40–61. Petitioner argues that this term is a
`means-plus-function limitation under 35 U.S.C. § 112(f) and is indefinite
`because there is no corresponding structure in the ’399 patent. Pet. 9–10.
`Despite the lack of structure, which was advanced by Petitioner in the
`related ITC litigation, Petitioner without additional analysis states:
`for the sole purposes of analysis of this Petition and the prior art,
`Petitioner treats the ’399 patent’s disclosure of the rectifier and
`filter of Figure 3 and the adjustment circuit of Figure 5 as the
`corresponding structure for the claimed controller. ’399 patent,
`Fig. 3, Fig. 5.
`Pet. 11.
`Conversely, Patent Owner vigorously argues that the plain and
`ordinary meaning applies to “controller” as the term is not subject to means-
`plus-function analysis, and not indefinite as the claims and term itself
`denotes sufficient structure. Prelim. Resp. 15–19. Indeed, Patent Owner
`provides considerable argument and evidence that the claim term
`“controller” should be either construed as the plain and ordinary meaning or,
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`Patent 7,038,399 B2
`in the alternative, if an express construction is required, “circuitry used to
`adjust current or voltage.” Id. at 19–21.
`Patent Owner also notes that the International Trade Commission
`(ITC) construed the terms of the ’399 patent, finding that the term controller
`was not means-plus-function for claims 17 and 18 of the ’399 patent, but
`was a means-plus-function term for claims 7, 8, 47, 48, and 58–60. Prelim.
`Resp. 19–20; Certain LED Lighting Devices, LED Power Supplies, and
`Components Thereof, Case No. 337-TA-1081, Order No. 49 at 43–51 (ITC)
`(Ex. 2001). The ITC did not find the terms indefinite but found that the
`claims and specification provided sufficient structure for the controller
`functions. Id.
`Petitioner makes no attempt to analyze or argue the legal or factual
`issues regarding whether controller falls within means-plus-function analysis
`or recites sufficient structure. Further, Petitioner did not cite this Board’s
`application of the claim term in IPR2015-01294, which did not treat the term
`as a means-plus-function limitation. Because the Petition was filed before
`the ITC issued its claim construction order, Petitioner also fails to address
`the structures or analysis of the ITC’s claim construction order. Patent
`Owner addresses these issues, disputing both Petitioner’s proposed
`construction and the ITC claim construction.
`Upon review of the Petition, Preliminary Response and associated
`evidence, we need not resolve the dispute over “controller,” because under
`Petitioner’s proposed construction of controller as a means-plus-function
`limitation with identified structure, Petitioner has failed to sufficiently or
`persuasively map the prior art to the controller as construed. The Petition
`also fails to demonstrate that the prior art teaches a controller under the plain
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`Patent 7,038,399 B2
`and ordinary meaning of the term. Thus, regardless of the construction
`applied to the term “controller,” Petitioner has failed to articulate with
`particularity how the proposed prior art combinations satisfy the Petitioner’s
`or Patent Owner’s construction.
`2. “alternating current (A.C.) power source that provides
`signals other than a standard A.C. line voltage”
`and “A.C. dimmer circuit”
`Petitioner asserts that the construction of the A.C. power source that
`provides signals other than a standard A.C. line voltage limitation is “A.C.
`power source that provides more than one signal and does not provide
`standard A.C. line voltage.” Pet. 11. In proposing a construction of this
`negative limitation, Petitioner relies on the ’399 patent description of
`embodiments (Ex. 1001, 10:34–43; Ex. 1003 ¶¶ 49–52), and our previous
`Decision regarding the ’399 patent (Wangs Alliance Corporation, IPR2015-
`01294, at 10 (P.T.A.B. November 23, 2016) (Paper 48)). Pet. 11–13.
`Patent Owner argues that Petitioner’s proposed construction differs
`from our previous decision because it does not include this Board’s
`determination that each of the at least two signals from the power source be
`A.C. signals. Prelim. Resp. 22. Accordingly, Patent Owner argues that the
`construction in the prior ’399 Final Written Decision is applicable. Id. at
`22–23 (citing Wangs Alliance Corporation, IPR2015-01294, at 10, 14
`(P.T.A.B. November 23, 2016)).
`We agree with Patent Owner that our prior decision in Wangs Alliance
`Corporation stated that “standard A.C. line voltage” is excluded but the
`claim phrase encompasses all manner of “non-standard A.C. line voltage”
`and requires a “non-standard A.C. signal.” Wangs Alliance Corporation,
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`Patent 7,038,399 B2
`IPR2015-01294, at 11–12. We also determined that the claim phrase
`requires multiple two or more A.C. signals. Id. at 10. Thus, we agree with
`Patent Owner that our prior ’399 decision requires “a power source that
`provides two or more alternating current (A.C.) signals, each being other
`than a sinusoidal wave at a standard frequency and amplitude.” Prelim.
`Resp. 22.
`For the term “A.C. dimmer circuit,” which appears in claims 7, 17, 34,
`and 58–60, our prior ’399 decision also found that
`the term “A.C. dimmer circuit” means “a circuit that provides an
`alternating current (A.C.) dimming signal.” Similarly, we clarify
`our claim construction and determine that the “alternating current
`(A.C.) power source that provides signals other than a standard
`A.C. line voltage” requires an A.C. signal, where the signal is not
`a standard A.C. line voltage.
`Wangs Alliance Corporation, IPR2015-01294, at 14. This construction
`further requires that in addition to the power source, the dimmer circuit
`requires an A.C. signal where the signal is not a standard A.C. line voltage.
`
`B. Principles of Law
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” In Graham v. John Deere Co. of Kansas City, 383
`U.S. 1 (1966), the Court set out a framework for applying the statutory
`language of § 103: under § 103, the scope and content of the prior art are to
`be determined; differences between the prior art and the claims at issue are
`to be ascertained; and the level of ordinary skill in the pertinent art resolved.
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`Patent 7,038,399 B2
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
`of prior art elements would have been obvious is determined by whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions. KSR, 550 U.S. at 417. Reaching this
`conclusion, however, requires more than a mere showing that the prior art
`includes separate references covering each separate limitation in a claim
`under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
`1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
`that a person of ordinary skill at the time of the invention would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id.
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR, 550
`U.S. at 418. An obviousness determination requires finding “both ‘that a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an
`obviousness analysis, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does”). Further, an assertion
`of obviousness “cannot be sustained by mere conclusory statements; instead,
`there must be some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842
`F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine
`“must be supported by a ‘reasoned explanation’” (citation omitted)).
`
`C. Obviousness under Grounds 1, 2, and 3
`1. Overview of Waltz (Ex. 1005)
`Waltz describes circuitry that provides dimming of LED devices from
`full brightness to partial brightness. The dimming of the LEDs is in
`response to a triac power controller that is driven by an A.C. source. Waltz
`describes a display that includes a plurality of LED assemblies, as illustrated
`in Figure 2. Ex. 1005, 1:38–40, 2:23–24.
`2. Overview of Venkit (Ex. 1008)
`Venkit describes lamp ballasts, which are responsive to a phase angle
`controlled A.C. input to control the illumination level of gas discharge
`lamps. Venkit discloses an improved topography and dimming interface for
`a dimming ballast. Ex. 1008, 1:8–12. Venkit describes a controller, as
`illustrated in Figure 1 below.
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`Patent 7,038,399 B2
`Venkit’s controller includes an EMI and triac damping filter “A” connected
`to full bridge input rectifier “B,” which together convert an A.C. power-line
`voltage into a rectified, filtered DC voltage. Ex. 1008, 6:46-63. Circuit “D
`is a ballast circuit for controlling the operation of the lamp and includes a
`D.C.-A.C. converter, or inverter, “E,” resonant tank output circuit “F” and
`controller “G” which controls the inverter. Id.
`3. Controller Limitation
`Under Petitioner’s proposed construction of the term controller, which
`appears in independent claims 7, 17, 58, and 59, Petitioner asserts that “the
`rectifier and filter of Figure 3 and the adjustment circuit of Figure 5 as the
`corresponding structure for the claimed controller” of the ’399 patent. Pet.
`11; Ex. 1001, Fig. 3, Fig. 5. With respect to grounds 1 and 2 which rely on
`Waltz and Ference, Petitioner fails to map the “controller” of the challenged
`claims to the Petitioner’s proposed construction. To teach the controller
`limitation, Petitioner identifies the rectifier bridge 20 and resistor 26 in
`Waltz. Pet. 18 (“As would have been understood by a PHOSITA, Waltz’s
`bridge 20 and series resistor 26 constitute a controller configured to provide
`power to the LEDs based upon the power related signal, because bridge 20
`and series resistor 26 control the power distributed to display 14.” (citing Ex.
`1005, 2:15–19; Ex. 1003 ¶¶ 68–69)). Specifically, Petitioner maps Waltz
`alone to the “at least one controller” limitations. Pet. 19; Ex. 1003 ¶ 71.
`Where Petitioner combines Waltz and Ference, Petitioner cites only the
`bridge 20 and resistor 26 of Waltz as teaching the claim limitations. Pet. 23
`(“Waltz’s bridge 20 and resistor 26—collectively the claimed controller—
`provides power to display 14 . . . .” (citing Ex. 1005, Fig. 1, 2:15–19; Ex.
`1003 ¶¶ 81–82)).
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`Petitioner’s mapping of the claim limitations is not persuasive. It is
`Petitioner’s burden to identify, in the Petition, “in writing and with
`particularity each claim challenged, the grounds on which the challenge to
`each claim is based, and the evidence that supports the grounds for the
`challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Intelligent Bio-
`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (2016) (“It is of
`the utmost importance that petitioners in the IPR proceedings adhere to the
`requirement that the initial petition identify ‘with particularity’ the ‘evidence
`that supports the grounds for the challenge to each claim.’ 35 U.S.C.
`§ 312(a)(3).”). In the present case, Petitioner fails to carry its burden to
`explain how the bridge 20 and resistor 26 of Waltz teach the controller
`limitation, and in particular, the structures that Petitioner identifies as the
`filter of Figure 3 and the adjustment circuit of Figure 5 of the ’399 patent.
`Petitioner’s contentions are conclusory, lacking an analysis of whether or
`how the identified structures in Waltz teach the “controller” structures
`Petitioner cites. 35 U.S.C. § 312(a)(3). Petitioner’s failure to provide
`sufficient or persuasive argument and evidence to support this limitation is
`fatal to application of Waltz and Ference in grounds 1 and 2.
`With respect to ground 3, Petitioner argues that “[a] PHOSITA would
`have understood that [Venkit’s] controller G [in Fig. 1] constitutes the
`claimed controller. Shackle Dec. ¶ 129.” Pet. 46; see Pet. 54. Examining
`Petitioner’s evidence yields further confusion because the declarant’s
`testimony does not identify controller G as the claimed controller of the
`challenged claims. Ex. 1003 ¶ 129. Instead, Petitioner’s declarant identifies
`everything in dashed box D of Figure 1 as the controller. Id. We need not
`address Petitioner’s declarant testimony, which was not discussed in, and
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`indeed was contradicted in the Petition. Compare Pet. 46 with Ex. 1003
`¶ 129. Regardless, Petitioner again fails to offer any explanation or
`discussion of how controller G in Figure 1 of Venkit teaches the structures
`Petitioner identifies as required in the controller of the challenged claims—
`i.e., Figure 3’s filter-rectifier combination and Figure 5’s adjustment circuit.
`In the absence of this articulated or persuasive explanation for this mapping,
`Petitioner has failed to identify with particularity how Venkit teaches or
`suggests the structures of the controller of the challenged claims. 35 U.S.C.
`§ 312(a)(3).
`Although Petitioner advances a single claim construction for
`“controller,” two of the challenged method claims, claims 34 and 35, do not
`recite the identical controller limitation, and instead recite “variably
`controlling” limitations. See Pet. 9–11 (discussing claim construction), 27–
`28 (discussing claims 34 and 35 in ground 1 in comparison to claims 7 and
`17), 54 (claim 35 in ground 3), 59 (claim 34 in ground 3). In discussing the
`application of the prior art to the limitation of claims 34 and 35, Petitioner
`relies on the same reasons discussed with respect to independent claim 7 and
`17. Id. Indeed, Petitioner makes no arguments addressing whether or how
`the scope of claims 34 and 35 differ from scope of claims 7 and 17.
`Accordingly, the Petition applies the same claim construction analysis and
`means-plus-function structures for the controller of independent claims 7
`and 17 to the terms of claims 34 and 35. Thus, for the same reasons
`discussed above, Petitioner has failed to articulate with particularity how
`Waltz or Venkit teach or suggests the structures of the “variably controlling”
`limitations of claims 34 and 35.
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`In sum, Petitioner has not explained with the required clarity how
`Waltz, Ference, or Venkit teach the controller limitations of the challenged
`claims under the construction asserted by Petitioner. 35 U.S.C. § 312(a)(3).
`Indeed, Petitioner does not offer an analysis of the claimed controller under
`any alternative claim construction. See Pet. 9–11, 28, 54, 59. Petitioner’s
`analysis also does not address the difference, if any, in claim scope between
`“variably controlling” as recited in Claims 34 and 35 and “controller” in the
`remaining challenged claims or any alternative construction of the terms.
`On this record, we are not persuaded Petitioner has demonstrated a
`reasonable likelihood it would prevail in showing that any of claims of the
`’399 patent are obvious over Waltz, Ference, or Venkit.
`Based on the record before us, for the reasons state above, we are not
`persuaded Petitioner has not demonstrated a reasonable likelihood it would
`prevail in showing that any of claims of the ’399 patent.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in showing at
`least one of the challenged claims is unpatentable on the asserted ground.
`Therefore, we do not institute an inter partes review.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims and
`grounds of the ’399 patent and no trial is instituted.
`
`
`
`
`
`
`17
`
`
`
`IPR2018-00790
`Patent 7,038,399 B2
`PETITIONER:
`Michael D. Specht
`mspecht-PTAB@sternekessler.com
`
`Lestin L. Kenton Jr
`lkentonPTAB@sternekessler.com
`
`PATENT OWNER:
`C. Brandon Rash
`Brandon.rash@finnegan.com
`
`J. Preston Long
`j.preston.long@finnegan.com
`
`
`
`
`
`
`18
`
`
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