Petitioner: Haag-Streit AG
`Petitioner: Haag-Streit AG
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`Ex. 100(cid:21)
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`EX. 1002
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`Petitioner: Haag-Streit AG
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`Ex. 100(cid:21)
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`EX. 1002
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________________
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`_____________________________
`
`
`HAAG-STREIT AG
`Petitioner
`
`v.
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`
`EIDOLON OPTICAL, LLC
`Patent Owner
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`
`
`
`_____________________________
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`CASE IPR: 2018-_____
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`U.S. PATENT NO.6,547,394 B2
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`_____________________________
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`DECLARATION OF JIANZHONG JIAO., Ph.D.
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`
`
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`I, Dr. Jianzhong Jiao, declare as follows:
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`
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`I.
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`INTRODUCTION
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`1.
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`I am over the age of twenty-one (21) and am competent to make this
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`Declaration. I reside in the State of California at 750 Van Ness Avenue, Unit 805,
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`San Francisco, CA 94102.
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`2.
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`I am an independent consultant in light emitting diodes (“LED”)
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`lasers, and lighting technologies and applications.
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`A. Engagement
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`3.
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`I have been retained by counsel for Haag-Streit AG in the above-
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`captioned Inter Partes Review (“IPR”) matter as an independent technical expert.
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`4.
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`As part of this engagement, I have been retained to review and
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`evaluate whether certain patents and publications disclose to a person of ordinary
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`skill in the art (“POSA”) the subject matter of specific claims of United States
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`Patent No. 6,547,394 (“the ‘394 Patent”) as of the time of the filing date of the
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`application from which the ‘394 Patent issued. I expect to testify regarding the
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`matters set forth in this declaration if asked to do so.
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`5.
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`I am being compensated on an hourly basis for my work performed in
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`connection with this case. I have received no additional compensation for my work
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`2
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`in this case, and my compensation does not depend upon the contents of this
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`report, any testimony I may provide, or the ultimate outcome of the case.
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`B.
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`6.
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`Background and Qualifications
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`I received my B.S. degree in Mechanical Engineering from the
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`Beijing Polytechnic University in Beijing, China in 1980. Immediately thereafter, I
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`completed my M.S. degree in Applied Physics at the Beijing Institute of Post and
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`Telecommunications in Beijing, China in 1983. I thereafter attended Rensselaer
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`Polytechnic Institute for graduate studies Physics in 1985. I thereafter received my
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`Ph.D. degree in Electrical Engineering from Northwestern University in Evanston,
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`IL in 1989.
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`7.
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`I worked at General Motors Corporation from 1989 to 1993 as a
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`Senior Development Engineer on automotive lighting applications including
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`leading and managing R&D projects to implement automotive lighting using LEDs
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`and other technologies.
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`8.
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`I worked at North American Lighting, Inc. from 1993 to 2007 as a
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`Manager and then General Manager of Engineering Technology on a variety of
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`matters including strategic planning for new technology implementation including
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`LED technology, establishing and managing an engineering team over four
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`departments (Optical Design, Electronic Technologies, Engineering Analysis,
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`3
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`
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`Regulation and Standards), and growth of revenue and expansion of the U.S.
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`customer base.
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`9.
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`I worked at OSRAM Opto Semiconductors Inc. from 2007 to 2015 as
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`a Director of Regulations and Emerging Technologies on a variety of matters
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`including establishing strategies for LED technology and applications, managing
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`LED technology strategies and implementations in automotive lighting, general
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`illumination, horticulture lighting, displays, medical, defense, and others
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`applications, managing activities relating to LED and lighting regulations and
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`standards, and interfacing with academic and industrial consortium programs on
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`technology development in LEDs and lighting technologies.
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`10. Since 2015, I have been self-employed as a Consultant in the areas of
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`LEDs, lasers, and lighting technologies and applications for industry, government
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`agencies, academia and professional associations. I am also currently involved in
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`the academic arena through a variety of professional activities. For example, I
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`serve as (1) an Industry Advisory Board Member for the Lighting Enabled Systems
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`& Applications (LESA, formerly Smart Lighting) Engineering Research Center
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`(ERC) (Jan. 2010 – present), (2) an instructor at professional seminars, such as the
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`SAE International (formerly Society of Automotive Engineers) Continuing
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`Education Programs (Mar. 2003 – present), (3) an instructor for short courses, such
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`as for the Society of International Optical Engineers (Jan. 2009 – present), and (4)
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`4
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`
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`an instructor at workshops, such as “Strategies in Light” (May 2011 – present) and
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`“Light Fair International” (May 2010 – present). I have also served as an adjunct
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`professor, an assistant professor, and a teaching/research assistant at several
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`universities in the U.S. and around the world, including the Lawrence
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`Technological University, Purdue University Anderson Campus, Northwestern
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`University, and the Beijing Institute of Posts and Telecommunications.
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`11.
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`I am currently active in the following Professional Organizations:
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`SAE International (SAE) (1989-present, currently SAE Fellow Member);
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`International Society for Optical Engineering (SPIE) (1989-present, currently
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`SPIE Senior Member); Illuminating Engineering Society (IES) (2007-present);
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`International Commission on Illumination (CIE) (2007, presently CIE – U.S.A.
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`member).
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`12.
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`I have served in the leadership roles in several U.S. professional
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`associations, trade associations and standardization organizations that are
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`developing LED and LED lighting standards, including: Chair of the Plant Growth
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`LED Lighting Committee of the American Society of Agricultural and Biological
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`Engineers (ASABE); Past Chair of the Lighting Standard Committee of SAE;
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`Treasurer of the Testing Procedures Committee of IES; Vice Chair of the Light
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`Sources Committee of IES; Vice Chair of the Computer Committee of IES; and
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`member of the Roadway Lighting Committee of IES.13. I have received various
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`5
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`honors and awards over the years, including: Senior Member of SPIE (2015); SAE
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`Arch T. Colwell Cooperative Engineering Medal (2010); SAE Fellow (2008); SAE
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`Technical Standards Board Outstanding Contribution Award (2008); SAE Forest R.
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`McFarland Award (2007 and 2000); and Excellence in Oral Presentation Award at
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`the SAE 2005 World Congress (2005).
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`13.
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`I have written over fifty technical papers and articles, and have served
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`as Editor on fifteen books, on LEDs and lighting technologies as listed on my CV
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`attached hereto as Appendix B. I have been invited to deliver numerous speeches
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`and presentations on LEDs and LED lighting at various conferences since 1999.
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`14. Additionally, I am an inventor for nine U.S. patents: U.S. Patent No.
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`7,144,141 entitled “Self-Aim Vehicle Light Device”; U.S. Patent No. 7,059,754
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`entitled “Apparatus and Method for Providing a Modular Vehicle Light Device”;
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`U.S. Patent No. 6,953,261 entitled “Reflector Apparatus for a Tubular Light
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`Source”; U.S. Patent No. D503,004 entitled “Vehicle Fog Lamp”; U.S. Patent No.
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`6,623,132 entitled “Light Coupler Hingedly Attached to a Light Guide for
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`Automotive Lighting”; U.S. Patent No. 6,305,813 entitled “Display Device Using a
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`Light Guide for Exterior Automotive Lighting”; U.S. Patent No. 6,007,224
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`entitled “Automotive Headlamp Reflector and Method for its Design”; U.S. Patent
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`No. 5,390,265 entitled “Fiber Optic Light Coupler”; U.S. Patent No. 5,197,792
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`entitled “Illuminator Device for a Display Panel.”
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`6
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`15.
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`In the past 8 years, I have served as an expert witness in the following
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`litigations: Case No. 3:17-CV-00792-JAM, Light Sources, Inc. v. First Light
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`Technologies, Inc.; Case No. IPR2017- 01260, US Patent 6,831,303, Cree Inc. v.
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`Optolum Inc.; Case No. IPR2017- 01261, US Patent 7,242,028, Cree Inc. v.
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`Optolum Inc.; Case No. IPR2017- 01511, US Patent 7,242,028, Cree Inc. v.
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`Optolum Inc.; Case No. 2:13-CV-06383-JD, Dorman Products, Inc. vs. Paccar, Inc.;
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`Case No. CV12-CV-229, Arthur Wolf vs. Indian Motor Company, et al.; Case No.
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`CV08-07078 DDP (VBKx), Grand General Accessories Manufacturing, Inc. vs.
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`United Pacific Industries; Case No. 1:09-CV-07151-RJS, Carlos Collado, et al. vs.
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`Toyota Motor Sales, U.S.A., Inc.; and Case No. 2:10-CV-03113-R-RMC, Carlos
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`Collado, et al. vs. Toyota Motor Sales, U.S.A., Inc.
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`16. A detailed description of my professional qualifications, including a
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`listing of my specialties/expertise and professional activities, is contained in my
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`curriculum vitae, a copy of which is attached hereto as Appendix B.
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`C. Basis of My Opinions and Materials Considered
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`17.
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`In forming my opinions, I have relied upon my education, knowledge
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`and experience with LED and light source technologies, lamps, luminaires and
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`other lighting or illumination products including those using LED technology. I
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`have also relied upon my education, knowledge and experience with optical
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`design, electronic design, mechanical design, thermal management, and materials
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`
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`7
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`
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`for lamps, luminaires, and other lighting or illumination products including those
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`using LED technology.
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`18. For this work, I reviewed and considered the following materials:
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`(cid:120) U.S. Patent No. 6,547,394 (“the ‘394 Patent”; Ex. 1001), including the
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`specification and claims;
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`(cid:120) The prosecution history of United States Patent Application No.
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`09/768,731 (“the ‘731 Application”), i.e., the prosecution history of
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`the ‘394 Patent (Ex. 1003);
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`19.
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`I have also been asked to review the subject matter disclosed by
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`various patents and publications that are prior art to the ‘394 Patent, and have been
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`further asked to compare the subject matter disclosed by those patents and
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`publications to claims 1, 5, 6, 8-10, 14-16 and 19 of the ‘394 Patent and determine
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`whether those patents and printed publications taught the claimed subject matter to
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`a POSA prior to the effective filing date of the ‘394 Patent, which I have been
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`instructed to assume is October 20, 1998 for purposes of my analysis. The
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`principal document that I have analyzed with regard to their teachings of subject
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`matter claimed in the ‘394 Patent are listed below:
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`(cid:120) European Patent Application 0 554 643 A1 (“Longobardi”; Ex. 1004);
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`and
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`(cid:120) UK Patent Application GB 2 077 946 A (“Devonshire”; Ex. 1005).
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`
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`8
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`
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`Additional documents that I have analyzed are provided on the list of Exhibits
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`attached hereto as Appendix A.
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`I.
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`PATENT PRINCIPLES
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`(cid:3) I
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`21.
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`I am an engineer by trade, and the opinions I express in this
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`declaration involve the application of my engineering knowledge and experience to
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`the evaluation of certain prior art with respect to the ‘394 Patent. I am not a lawyer
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`and have not been trained in the law of patents. Therefore, I have requested the
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`attorneys from Taft, Stettinius & Hollister, who represent Haag-Streit, to provide
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`me with guidance as to the applicable patent law in this matter. The paragraphs
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`below express my understanding of how I must apply current legal principles
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`related to patent validity to my analysis.
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`22.
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`It is my understanding that in determining whether a patent claim
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`under inter partes review before the United States Patent Office (PTO) is
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`anticipated or obvious in view of the prior art, the PTO must construe the claim by
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`giving the claim its broadest reasonable interpretation consistent with the
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`specification as the claim terms and specification would be understood by a POSA.
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`It is my understanding that the broadest reasonable interpretation is the plain
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`meaning, i.e., the ordinary and customary meaning, given to the term by a POSA at
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`the time of the invention, taking into account whatever guidance, such as through
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`9
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`
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`definitions, may be provided by the written description in the patent, without
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`importing limitations from the specification. For the purposes of this review, I have
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`construed each claim term in accordance with its plain meaning, i.e., its ordinary
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`and customary meaning under the required broadest reasonable interpretation.
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`It is my understanding that a claim is anticipated under 35 U.S.C. § 102 if each and
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`every limitation of the claim is disclosed in a single prior art reference, either
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`expressly or inherently. I understand inherent disclosure to mean that the claim
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`feature necessarily flows from the disclosure of the prior art reference. I understand
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`that a claim is unpatentable under 35 U.S.C. § 103 if the claimed subject matter as a
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`whole would have been obvious to a POSA at the time of the alleged invention,
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`which I have been instructed to treat at present as the effective filing date of the
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`‘394 Patent. I also understand that an obviousness analysis takes into account the
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`scope and content of the prior art, the differences between the claimed subject
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`matter and the prior art, and the level of ordinary skill in the art at the time of the
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`invention. Finally, I understand that I must consider any known secondary evidence
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`that might show nonobviousness of the application, such as long felt but unfulfilled
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`need for the claimed invention, failure by others to come up with the claimed
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`invention, commercial success of the claimed invention, praise of the invention by
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`others in the field, unexpected results achieved by the invention, the taking of
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`licenses under the patent by others, expressions of surprise by experts and those
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`10
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`POSAs at the making of the invention, and the patentee proceeded contrary to the
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`conventional wisdom of the prior art. But the secondary evidence must be tied
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`specifically to claim features that are argued to be patentable, and not those already
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`in the public domain. I appreciate that secondary considerations must be assessed
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`as part of the overall obviousness analysis (i.e., as opposed to analyzing the prior
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`art, reaching a tentative conclusion, and then assessing whether objective indicia
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`alter that conclusion).
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`23. Put another way, my understanding is that not all innovations are
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`patentable. Even if a claimed product or method is not explicitly described in its
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`entirety in a single prior art reference, the patent claim will still be denied if the
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`claim would have been obvious to a POSA at the time of the patent application
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`filing.
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`24.
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`In determining the scope and content of the prior art, it is my
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`understanding that a reference is considered appropriate prior art if it falls within
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`the field of the inventor’s endeavor. In addition, a reference is prior art if it is
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`reasonably pertinent to the particular problem with which the inventor was
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`involved. A reference is reasonably pertinent if it logically would have
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`commended itself to an inventor’s attention in considering his problem. If a
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`reference relates to the same problem as the claimed invention, that supports use of
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`the reference as prior art in an obviousness analysis.
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`11
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`25. To assess the differences between prior art and the claimed subject
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`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention
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`to be considered as a whole. This “as a whole” assessment requires showing that a
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`POSA at the time of invention, confronted by the same problems as the inventor
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`and with no knowledge of the claimed invention, would have selected the elements
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`from the prior art and combined them in the claimed manner.
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`26.
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`In determining whether the subject matter as a whole would have been
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`considered obvious at the time that the patent application was filed, by a POSA, I
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`have been informed of several principles regarding the combination of elements of
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`the prior art. First, a combination of familiar elements according to known methods
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`is likely to be obvious when it yields predictable results. Likewise, combinations
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`involving simple substitution of one known element for another to obtain
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`predictable results, a predictable use of prior art elements according to their
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`established functions, applying a known technique to a known device (method or
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`product) ready for improvement to yield predictable results, and choosing from a
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`finite number of identified, predictable solutions to solve a problem are likely to be
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`obvious. Thus, if a POSA can implement a “predictable variation” in a prior art
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`device, and would see the benefit from doing so, such a variation would be obvious.
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`Also, when there is pressure to solve a problem and there are a finite number of
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`identifiable, predictable solutions, it would be reasonable for a POSA to pursue
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`12
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`
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`those options that fall within his or her technical grasp. If such a process leads to
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`the claimed invention, then the latter is not an innovation, but more the result of
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`ordinary skill and common sense.
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`27.
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`I also understand that the “teaching, suggestion, or motivation” test is
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`a useful guide in establishing a rationale for combining elements of the prior art.
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`This test poses the question as to whether there is an explicit teaching, suggestion,
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`or motivation in the prior art to combine prior art elements in a way that realizes
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`the claimed invention. Though useful to the obviousness inquiry, I understand that
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`this test should not be treated as a rigid rule. It is not necessary to seek out precise
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`teachings; it is permissible to consider the inferences and creative steps that a
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`POSA (who is considered to have an ordinary level of creativity and is not an
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`“automaton”) would employ.
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`28.
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`It is my understanding that when interpreting the claims of the ‘394
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`Patent I must do so based on the perspective of a POSA at the relevant priority
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`date. My understanding is that the earliest priority date that is claimed by the ‘394
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`Patent is October 20, 1998.
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`
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`III. TECHNOLOGY BACKGROUND
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`29. Eye examinations are routinely made with a device known as an
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`ophthalmoscope. The ophthalmoscope includes a light source providing light of a
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`13
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`
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`predetermined wavelength or wavelengths. Different parts of the eye, including the
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`cornea, which includes epithelial tissue, the lens and the interior surface of the eye
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`opposite the lens, known as the fundus, can be illuminated to determine the health
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`of the eye. The fundus includes the retina, the optic disc, the macula, the fovea, and
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`the posterior pole.
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`30. Ophthalmoscopes include different types of light sources such as an
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`incandescent bulb or a halogen bulb with a tungsten filament, a laser, and a light
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`emitting diode (LED). Ophthalmoscopes often include band-pass filters located
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`between the light source and the eye to transmit light of a certain wavelength,
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`particularly when the light source provides a white light. Since different parts of the
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`eye are more clearly seen when examined with light of a certain wavelength, the
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`band-pass filter provides the desired wavelength. For instance, certain parts of the
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`eye are more easily seen when a fluorescein dye is applied to the eye and examined
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`with a blue light.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
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`31.
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`I have been informed that “a person of ordinary skill in the relevant
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`field” is a hypothetical person to whom an expert in the relevant field could assign
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`a routine task with reasonable confidence that the task would be successfully
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`carried out. I have been informed that the level of skill in the art is evidenced by
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`14
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`
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`prior art references. In this case, the ‘394 Patent is directed to “a device which is
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`used to illuminate a patient’s eye that has been administered with a fluorescent dye
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`for the purpose of examining the eye for epithelial defects.” Accordingly, a POSA
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`should have at least some familiarity with the practical aspects of ophthalmologic
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`instruments, such as lighting. Based on my education and experience and
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`understanding of relevant prior art at the time the ‘394 Patent was effectively filed,
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`a POSA as of October 20, 1998, would have had at least a bachelor of science or
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`engineering degree in electrical or mechanical engineering, physics, optics, or a
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`related field, and either an advanced degree (such as a masters) in such a subject or
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`an equivalent amount of work experience, i.e. 2-3 years, in an area relating to
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`ophthalmic instrument design and/or fabrication or a related technical field, such as
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`optical, electrical and/or mechanical designs for lighting applications.
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`Alternatively, a POSA could have a Master’s Degree or a Ph.D. degree in electrical
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`or mechanical engineering or physics (or equivalent) and at least one year of
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`training and practical experience in lighting or lighting related fields, including
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`good working skills and knowledge related to LEDs and optical, mechanical and
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`electrical designs for lighting or illumination applications.
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`32. Based on my experience, I have an understanding of the capabilities
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`of a POSA in the relevant field. I have supervised and directed many such persons
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`15
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`over the course of my career. Further, I had those capabilities myself at the time
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`the ‘394 Patent was effectively filed.
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`
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`V. OVERVIEW OF THE ‘394 PATENT
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`33. The ‘394 Patent (Ex. 1001) is entitled “Hand-Held Ophthalmic
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`Illuminator” and names Victor J. Doherty as the sole inventor.
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`34. According to the specification, the ‘394 Patent relates to “a device
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`which is used to illuminate a patient’s eye that has been administered with a
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`fluorescent dye for the purpose of examining the eye for epithelial defects. The
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`invention in its simplest form utilizes four components: a battery, an electrical
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`resistor, an electrical switch and a blue light emitting diode.” Ex. 1001 at 1:48-53.
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`
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`VI. PROSECUTION HISTORY OF THE ‘394 PATENT
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`35. The ‘394 Patent issued from United States Patent Application No.
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`09/768,731 (“the ‘731 Application”), which was filed on January 24, 2001. The
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`‘731 Application is a continuation-in-part application of prior United States Patent
`
`Application No. 09/175,796, which was filed on October 20, 1998, and then later
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`abandoned.
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`36. The prosecution history of the ‘394 Patent (Ex. 1003) is relatively
`
`brief, with the claims being allowed after the applicant’s response to the first
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`
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`16
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`
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`Office Action. Ex. 1003 at 82-86. Original claims 1-3, 8, 11-16, 18 and 20 (which
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`correspond exactly to claims 1-3, 8, 11-16, 18 and 20 of the ‘394 Patent) were
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`rejected under 35 U.S.C. § 102(e) over U.S. Patent No. 6,340,868. Id. at 69-72.
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`The remaining claims were objected to as being dependent upon a rejected base
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`claim, but were deemed to be allowable if rewritten in independent form including
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`all of the limitations of the base claims and any intervening claims. Id.
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`37.
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`In response to this rejection, the applicant did not amend the claims,
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`but instead argued that the cited reference patent had an effective filing date after
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`the priority date of the ‘731 Application. Id. at 78-81. In support of this argument,
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`applicant asserted that
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`Under 35 U.S.C. § 120 (see also M.P.E.P. 201.11), Applicant is at least
`entitled to a priority date of October 21, 1997 for the use of Fluorescein and
`a blue LED to examine an eye. Accordingly, the effective filing date of the
`present ‘731 Application for use of Fluorescein and a blue LED to examine
`the eye is October 21, 1997. All elements or step elements, respectively, of
`claims 1 and 15, listed in detail below, were taught and disclosed in [US
`Provisional Patent Application No. 60/063,131]. The invention of claims 1
`and 15 in the ‘731 Application are therefore entitled to a prior date of at least
`October 21, 1997, which is prior to the filing date of [the cited reference].
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`Id. at 79. The examiner subsequently withdrew the rejection of the cited reference,
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`and allowed all of the pending claims as originally filed. Id. at 82.
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`17
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`
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`VII. CLAIM CONSTRUCTION
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`38. Counsel for Petitioner has provided me with their proposals for the
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`broadest reasonable interpretation (BRI) claim constructions for the terms listed
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`below. I concur with those proposed constructions for the reasons explained below.
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`39.
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`“Ophthalmic illuminator” -- This term appears in the preamble of
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`claims 1, 5, 6, 8-10, 14. The specification of the ‘394 Patent does not expressly
`
`define this term, but does disclose that “[t]he subject of this invention is a device
`
`which is used to illuminate a patient’s eye that has been administered with a
`
`fluorescent dye for the purpose of examining the eye for epithelial defects.” Ex.
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`1001 at 1:48-51. The claim term ophthalmic illuminator should therefore be
`
`construed to mean “a device for illuminating a patient’s eye for ophthalmic
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`examination.”
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`
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`VIII. SUMMARY OF OPINIONS
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`40. Based on my review of the ‘394 Patent, its prosecution history, and
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`the patents and publications listed above, it is my opinion that the subject matter of
`
`claims 1, 5, 6, 8-10, 14-16 and 19 of the ‘394 Patent was, as of the effective filing
`
`date of the ‘394 Patent, unpatentable as either anticipated or obvious in view of the
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`various prior art references identified, the grounds for which are listed and
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`explained below.
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`
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`18
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`
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`IX. UNPATENTABILITY OF CLAIMS 1, 5, 6, 8-10, 14-16 AND 19
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`A. The Challenged Claims Are Obvious Over Longobardi in View
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`of Devonshire
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`41. Claims 1, 5, 6, 8-10, 14-16 and 19 of the ‘394 Patent are obvious over
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`Longobardi (Ex. 1004) in view of Devonshire (Ex. 1005) as explained below.
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`1.
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`Claim 1
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`a.
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`The preamble
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`42.
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`The preamble of claim 1 of the ‘394 Patent recites “[a]n ophthalmic
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`illuminator . . ..” Ex 1001 at 4:12.
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`43. More specifically, Longobardi discloses methods and apparatus for
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`“the illumination of the fundus of the eye.” Ex. 1004 at 6:29-35. Among the
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`specific uses exemplified by Longobardi for this apparatus is as a device capable
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`of performing fluoroscopic angiography. Id. In particular, Longobardi teaches
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`that its design is suitable for producing “portable fluoroscopic angiographs.” Ex.
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`1004 at 7:24-27. In accordance with advantageous embodiments of the claimed
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`invention, the portable device’s “light source may be a light-emitting diode (LED),
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`which emits radiation at a predetermined wavelength, instead of an incoherent light
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`source.” Ex. 1004 at 7:28-33.
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`44. Accordingly, to the extent the preamble is limiting, this limitation is
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`disclosed by Longobardi.
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`19
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`b.
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`a battery
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`45. The first element of the ophthalmic illuminator of claim 1 of the ‘394
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`Patent is a battery. Ex. 1001 at 4:13.
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`46. Longobardi discloses methods and apparatus for producing “a device
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`for fluoroscopic angiography which uses a single light source of limited power, for
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`example 20 W electric.” Ex. 1004 at 6:29-32. One such apparatus is presented in
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`FIG. 1 of Longobardi. Ex. 1004 at 8:15-9:6. Referring to that FIG. 1, Longobardi
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`teaches a device that comprises
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`a continuous light source 1 of low power, for example 20 W electric,
`housed in a main housing body 3. . .. With an electric power of 20 W
`for the light source 1, a continuous luminous intensity of 0.7 mW
`reaches the fundus of the patient's eye. The electrical power and
`luminous intensity used are therefore very limited and do not
`cause any problems either in relation to the thermal effects on the
`interference filters or in relation to possible discomfort for the
`patient.
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`Ex. 1004 at 8:15-45 (emphasis added).
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`47. Although not expressly stated by Longobardi, a POSA would
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`inherently understand that the electrical power generated by the disclosed device
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`includes a battery. That is, because Longobardi discloses that the power involved
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`is only 20W, and, as Longobardi teaches that its device is designed to be a portable
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`fluoroscopic angiograph without a large power supply unit or cooling system, “The
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`absence of large power supply units and cooling systems also makes it possible to
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`20
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`produce portable fluoroscopic angiographs.” Ex. 1004 7:24-27, a POSA would
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`understand that a battery-operated power supply would be contemplated.
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`48. Longobardi therefore discloses a battery.
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`c.
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`an electrical resistor in circuit with the battery
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`49. The second element of claim 1 of the ‘394 Patent is an electrical
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`resistor in circuit with the battery. Ex. 1001 at 4:14.
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`50. Longobardi does not expressly disclose an electrical resistor;
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`however, Devonshire does teach this feature.
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`51. Devonshire discloses an indirect ophthalmoscope (an instrument for
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`examining the eye) that includes a light source. Ex. 1005 at 1:3-4. Devonshire
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`discloses that
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`the light projection system, and a converging lens used to form an
`aerial image of the fundus of the eye illuminated by the projection
`system, are combined in a single unit, which can be designed to be
`hand-held.
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`Ex. 1005 at 1:30-35. Devonshire further discloses that
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`The instrument has a housing 2 which is generally T-shaped and
`comprises a cylindrical tube 3 mounted across the wider end of a
`tapered tube 4. . .. The tube 4 may be attached to or form part of a
`hand grip which can contain a lamp bulb and battery, and optionally, a
`dimmer control.
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`Ex. 1005 at 1:76-79, 2:16-18 (emphasis added).
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`52.
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`It is known by those POSAs that a dimmer control is including and
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`functioning as an electrical resistor. That is, as is known to a POSA, an “electrical
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`21
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`resistor” is a passive two-terminal electrical component that implements electrical
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`resistance as a circuit element. Resistors act to reduce current flow, and, at the
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`same time, act to lower voltage levels within circuits, which is the function of
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`Devonshire’s dimmer control.
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`53. Moreover, a POSA would understand that in order to properly
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`function, the battery and dimmer control would necessarily be a part of the same
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`electrical circuit. That is, as would be recognized by a POSA, for the dimmer
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`control to regulate the amount of electrical current supplied by the battery, it would
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`have to be a part of the same electrical circuit (i.e. the path through which the
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`electrons flow) as the battery.
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`54. As noted above, a POSA in the relevant art as of October 20, 1998,
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`would have had at least a bachelor of science or engineering degree in electrical or
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`mechanical engineering, physics, optics, or a related field, and either an advanced
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`degree (such as a masters) in such a subject or an equivalent amount of work
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`experience, i.e. 2-3 years, in an area relating to ophthalmic instrument design
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`and/or fabrication or a related technical field.
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`55. Taking the above into consideration, a POSA in the relevant art would
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`have been motivated at the time of the invention to combine the teachings of
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`Longobardi with the dimmer control disclosed in Devonshire, particularly as the
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`22
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`resulting device would be able to adjust and control the level of light output
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`(brightness) from the LEDs.
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`56.
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`In addition, since one of the disclosed benefits of Longobardi’s device
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`is to produce a portable unit having a reduced level of illumination (to thereby
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`eliminate patient discomfort during an examination procedure), the motivated
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`POSA would have had a reasonable expectation of success in achieving the
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`claimed device. Ex. 1004 at 8:15-45.
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`57. Accordingly, the combined teachings of Longobardi in view of
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`Devonshire render obvious an electrical resistor in circuit with the battery.
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`58.
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`I am unaware of any secondary considerations that would overcome
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`this evidence that claim 1 would have been obvious over Longobardi in view of
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`Devonshire.
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`d.
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`an electrical switch in circuit with the resistor
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`59.
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`The third element of claim 1 of the ‘394 Patent is an electrical switch
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`in circuit with the resistor. Ex. 1001 at 4:15.
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`60.
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`Longobardi discloses an electrical switch, but does not disclose that
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`the electrical switch is in circuit with a resistor.
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`61. More specifically, with respect to the embodiment in FIG. 1A,
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`Longobardi discloses that
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`The light source consists of a set of three light-emitting diodes
`(LEDs) 1A, 1B, 1C. The light-emitting diodes 1A, 1B, 1C are
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`23
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`supported by a movable member 2 indicated by broken lines (for
`example a slide) in such
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