PGR2018-00010
`U.S. Patent No. 9,752,761
`
`
`
`
`
`
`Filed on behalf of Telebrands Corp. by:
`
`Robert T. Maldonado (Reg. No. 38,232)
`Tonia A. Sayour (Reg. No. 58,404)
`Benjamin Han (Reg. No. 60,700)
`Cooper & Dunham LLP
`30 Rockefeller Plaza
`New York, NY 10112
`(212)278-0400
`Rmaldonado@cooperdunham.com
`tsayour@cooperdunham.com
`bhan@cooperdunham.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PRIME WIRE & CABLE, INC.,
`Petitioner
`
`v.
`TELEBRANDS CORP.,
`Patent Owner.
`____________
`PGR2018-00010
`U.S. Patent No. 9,752,761
`____________
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 9,752,761
`
`
`
`
`
`
`Filed on behalf of Telebrands Corp. by:
`
`Robert T. Maldonado (Reg. No. 38,232)
`Tonia A. Sayour (Reg. No. 58,404)
`Benjamin Han (Reg. No. 60,700)
`Cooper & Dunham LLP
`30 Rockefeller Plaza
`New York, NY 10112
`(212)278-0400
`Rmaldonado@cooperdunham.com
`tsayour@cooperdunham.com
`bhan@cooperdunham.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PRIME WIRE & CABLE, INC.,
`Petitioner
`
`v.
`TELEBRANDS CORP.,
`Patent Owner.
`____________
`PGR2018-00010
`U.S. Patent No. 9,752,761
`____________
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`I.
`BACKGROUND .............................................................................................. 2
`II.
`PERSON OF ORDINARY SKILL IN THE ART ........................................... 5
`III.
`IV. CLAIM CONSTRUCTION ............................................................................. 6
`V.
`ARGUMENT .................................................................................................... 7
`A. Grounds 1: Claims 1-11 Are Directed Towards Patent-Eligible Subject
`Matter ...................................................................................................................... 7
`B. Ground 2: Petitioner Has Not Its Burden of Proving Anticipation By
`Inherency Under 35 U.S.C. § 102 ......................................................................... 10
`C. Grounds 3 and 4: LFLRG505 Is Not Prior Art .............................................. 14
`D. Ground 5-8: 2014 CES Flyer Does Not Renders Claims 1-3 and 8-11
`Obvious ................................................................................................................. 19
`1. Institution Should Be Denied Under 35 U.S.C. 325(d) .............................. 19
`2. 2014 CES Flyer Is Not Prior Art ................................................................. 21
`E. Grounds 5-6: Instruction Manual Is Not Prior Art ......................................... 24
`F. Grounds 7-8: BlissLight’s Spright Is Not Prior Art ....................................... 27
`VI. CONCLUSION .............................................................................................. 31
`
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`i
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`TABLE OF AUTHORITIES
`
`Cases
`
`PGR2018-00010
`U.S. Patent No. 9,752,761
`
`
`Albaad Massuot Yitzhak, Ltd. v. Edgewell Personal Care Brands, LLC,
` Case No. IPR2017-00693, 2017 WL 3034538 (P.T.A.B. July 17, 2017) ... 11, 12,
`13
`American Simmental Association v. Leachman Castle of Colorado, LLC,
` Case No. PGR2015-00003, 2016 WL 3268597 (P.T.A.B. June 13, 2016) .. 15, 28
`ArcelorMittal France v. AK Steel Corp.,
` 700 F.3d 1314 (Fed. Cir. 2012) ........................................................................... 11
`AVX Corp. v. Samsung Electro-Mechanics Co., Ltd.,
` Case No. PGR2017-00010, 2017 WL 3078139 (P.T.A.B. July 18, 2017) . 15, 18,
`27, 29
`Continental Can Co. v. Monsanto Co.,
` 948 F.2d 1264 (Fed. Cir. 1991) ........................................................................... 11
`Cultec, Inc. v. Stormtech LLC,
` Case IPR2017-00777 (P.T.A.B. Aug. 22, 2017) ................................................. 19
`Cuozzo Speed Tech., LLC v. Lee,
` 136 S.Ct. 2131 (2016) ............................................................................................ 7
`Dell, Inc. v. Selene Commc'n Techs., LLC,
` Case No. IPR2014–01411 (PTAB Feb. 26, 2015) (Paper 23) .......... 22, 24, 26, 30
`Fox Factory, Inc. v. SRAM, LLC,
` Case No. IPR2017-01439, 2017 WL 6271290 (P.T.A.B. Dec. 8, 2017) ............ 21
`Glaxo Inc. v. Novopharm Ltd.,
` 52 F.3d 1043 (Fed. Cir. 1995) ............................................................................. 12
`Guardian Building Products, Inc. v. Manville,
` Case. No. IPR2017-00633, 2017 WL 2117435 (P.T.A.B. July 26, 2017) .......... 20
`ii
`
`
`
`
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`
`Hospira, Inc. v. Genentech, Inc.,
` Case IPR2017-00739 (P.T.A.B. Jul. 27, 2017) ................................................... 19
`HTC Corp. v. Cellular Commc’ns Equip., LLC,
` 877 F.3d 1361 (Fed. Cir. 2017) ........................................................................... 11
`In re King,
` 801 F.2d 1324 (Fed. Cir. 1986) ........................................................................... 13
`In re Schreiber,
` 128 F.3d 1473 (Fed. Cir. 1997) ........................................................................... 14
`In re Translogic Tech., Inc.,
` 504 F.3d 1249 (Fed. Cir. 2007) ............................................................................. 6
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
` 545 F.3d 1340 (Fed. Cir. 2008) .................................................................... 23, 26
`MEHL/Biophile Int'l Corp. v. Milgraum,
` 192 F.3d 1362 (Fed.Cir.1999) ............................................................................. 11
`Microsoft Corp. v. Proxyconn, Inc.,
` 789 F.3d 1292 (Fed. Cir. 2015) ............................................................................. 6
`Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co.,
` 878 F.3d 1336 (Fed. Cir. 2018) .................................................................... 11, 13
`Mylan Pharm. Inc. v. Boehringer Ingelheim Int’l GmbH,
` Case No. IPR2016-01565, 2017 WL 3279406 (P.T.A.B. Aug. 1, 2017) 22, 23, 26
`Perricone v. Medicis Pharm. Corp.,
` 432 F.3d 1368 (Fed. Cir. 2005) .................................................................... 11, 13
`ServiceNow, Inc. v. Hewlett–Packard Co.,
` Case No. IPR2015–00716 (P.T.A.B. Aug. 26, 2015) ....................... 23, 24, 25, 26
`Transclean Corp. v. Bridgewood Servs., Inc.,
` 290 F.3d 1364 (Fed. Cir. 2002) ........................................................................... 11
`
`
`
`iii
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`
`Unified Patents, Inc. v. Berman,
` Case IPR2016-01571 (P.T.A.B. Dec. 14, 2016) .................................................. 19
`Yotrio Corp. v. LakeSouth Holdings, LLC,
` Case No. IPR2017-00299, 2017 WL 2117435 (P.T.A.B. May 15, 2017) .......... 20
`Ziegmann v. Stephens,
` Case No. IPR2015-01860, 2017 WL 3923543 (P.T.A.B. Sept. 6, 2017) ..... 20, 21
`
`Statutes
`
`35 U.S.C. § 102(a) ................................................................................................... 30
`35 U.S.C. §325(d) ...................................................................................................... 2
`35 U.S.C. 325(d) ...................................................................................................... 19
`
`
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`
`iv
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`I.
`
`
`INTRODUCTION
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`Petitioner, Prime Wire & Cable, Inc. (“Petitioner”) has not met its burden that
`
`U.S. Patent No. 9,752,761 (“the ’761 Patent”) is more likely than not invalid, and,
`
`as such, institution should be denied.
`
`Petitioner’s contention that all claims of the ’761 Patent are invalid as being
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`directed towards patent-ineligible subject matter, anticipated, and/or obvious lacks
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`merit. With respect to the asserted ground of subject matter eligibility, Petitioner
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`even concedes that the claims of the ’761 Patent are directed to patent eligible subject
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`matter. Moreover, Petitioner fails to consider claims 1-11 as a whole and further
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`fails to address the threshold question of patent ineligible subject matter. Petitioner’s
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`arguments lack merit and should be disregarded.
`
`Petitioner’s asserted grounds of anticipation and obviousness are equally
`
`flawed. Ground 2 relies on anticipation based on inherency. However, Petitioner
`
`fails to provide a single prior art reference that inherently discloses each and every
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`limitation set forth in claims 1-11, and Petitioner’s arguments amount to no more
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`than conclusory statements of inherency. Grounds 3-4 primarily rely on Prime’s
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`LFLRG505 holiday themed landscape light (“LFLRG505”). Grounds 5-8 primarily
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`rely on a 2014 C.E.S. trade show flyer (“2014 CES Flyer”). Grounds 5-6 primarily
`
`rely on Prime’s “Laser Light Projector” instruction manual (“Instruction Manual”).
`
`However, neither reference should be considered in these proceedings. First, with
`1
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`respect to LFLRG505, Petitioner relies solely on the product itself and supporting
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`documents as prior art but fails to establish that such product is indeed prior art to
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`the ’761 Patent. Second, with respect to the 2014 CES Flyer reference, during
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`prosecution of the ’761 Patent, the Examiner determined the claims were patentable
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`over 2014 CES Flyer. Petitioner does not explain why the Examiner’s determination
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`was incorrect, and as such, the Board should exercise its discretion to deny
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`institution with respect to 2014 CES Flyer under 35 U.S.C. §325(d). Even so,
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`Petitioner has not established that the 2014 CES Flyer reference is prior art as a
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`printed publication. Third, with respect to Instruction Manual, the Petitioner fails to
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`establish that the Instruction Manual is prior art.
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`Accordingly, Petitioner’s request for post-grant review of the ’761 Patent
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`should be denied.
`
`II. BACKGROUND
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`Patent Owner, Telebrands Corp. (“Patent Owner”) is a direct marketing
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`company that has been engaged in the business of marketing and selling a wide
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`variety of products through both retail outlets and direct response advertising for
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`over thirty years. (Ex. 2001.)
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`Patent Owner developed a novel and innovative line of decorative lighting
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`products which it markets and sells under the mark STAR SHOWER. (Exs. 2002-
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`2003.) The STAR SHOWER products provide a convenient and safe alternative to
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`setting up string lights as decorative lighting buildings, thereby allowing the user to
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`avoid the danger, hassles, and time of hanging and setting up strands of string lights
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`on a house or building. (Id.) Various unique and innovative functional and
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`ornamental design features of the STAR SHOWER products are protected by several
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`U.S. design and utility patents, including, but not limited to, the ’761 Patent.
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`The ’761 Patent issued on September 5, 2017, is entitled “Landscape Light”
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`and generally relates to a decorative lighting apparatus. (Ex. 1001.) The ’761 Patent
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`was filed on April 26, 2016, claiming priority to U.S. Application Serial No.
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`14/801,458, filed on July 16, 2015, which claims priority to U.S. Provisional
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`Application Serial No. 62/025,344, filed on July 16, 2014. Petitioner does not
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`dispute that the effective filing date of the ’761 patent is July 16, 2014. The as-filed
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`application included original claims 1-8. (Ex. 2004, pp. 1203-1211.) On July 28,
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`2016, the Examiner issued an office action rejecting each of the claims. (Id., pp.
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`1154-1160.) On October 28, 2016, Patent Owner filed an Amendment in response
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`to the office action. The Amendment presented amendments to independent claim
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`1 and dependent claim 3, cancelled dependent claim 8, and added claims 10-12. (Id.,
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`pp. 913-921.) Specifically, independent claim 1 was amended to substantially recite
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`the subject matter of dependent claim 8, as follows:
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`. . . diffractive holographic optics to scatter the first and second lights
`and cause an energy concentration of the first and second lights to drop
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`3
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`below exposure limits for momentary or accidental viewing at a
`relatively short distance from the landscape light.
`(Id., p. 914.) On January 18, 2017, the Examiner issued a Notice of Allowance,
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`allowing claims 1-7 and 9-12, which subsequently issued as claims 1-11 of the ’761
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`patent. (Id., pp., 855-63.) The Notice of Allowance included a Reasons for
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`Allowance, in which the Examiner explained:
`
`[T]he prior art of record neither shows or suggests a landscape light
`comprising, in addition to other limitations of the claims, diffractive
`holographic optics to scatter the first and second lights and cause an
`energy concentration of the first and second lights to drop below
`exposure limits for momentary or accidental viewing at a relatively
`short distance from the landscape light.
`
`
`(Id., pp. 861-62).
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`The ’761 Patent includes 11 claims, with three independent claims (1, 9 and
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`10), each of which is directed to a “landscape light.” Independent claim 1 recites,
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`inter alia: (1) a light projector housing incorporating a first laser and a second laser;
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`and (2) diffractive holographic optics. (Ex. 1001, claim 1.) In particular, the first
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`laser generates a first light having a first color and the second laser generates a
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`second light having a second color. Additionally, the diffractive holographic optics
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`scatter the first and second lights and cause an energy concentration of the first and
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`second lights to drop below exposure limits for momentary or accidental viewing at
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`a relatively short distance from the landscape light. (Id.). Independent claim 9
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`recites, inter alia: (1) a plurality of light sources producing a plurality of lights, each
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`U.S. Patent No. 9,752,761
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`light source having a different color and each light source having a separate lens;
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`and (2) diffractive holographic optics to scatter the plurality of lights and cause an
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`energy concentration of the plurality of lights to drop below exposure limits for
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`momentary or accidental viewing at a relatively short distance from the landscape
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`light. (Ex. 1001, claim 9.) Independent claim 10 recites, inter alia: (1) a light
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`projector housing incorporating at least two lasers, each laser having a different color
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`and each laser having a separate lens, and including diffractive holographic optics
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`to scatter the lasers and cause an energy concentration of the lasers to drop below
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`exposure limits for momentary or accidental viewing at a relatively short distance
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`from the landscape light; (2) a mounting stake configured to be coupled to the
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`housing; and (3) a remote to enable a user to control the landscape light from a
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`distance, the remote including a light ON/OFF control and an operation mode. (Id.,
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`claim 10.) Claims 2-8 and 11 depend from claims 1 and 10, respectively. As
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`explained below, Petitioner has not demonstrated that it is more likely than not that
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`claims 1-11 of the ’761 Patent are more likely than not invalid. Accordingly,
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`institution should be denied.
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`III. PERSON OF ORDINARY SKILL IN THE ART
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`Petitioner contends that a person of ordinary skill in the art is “anyone with
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`general knowledge of indoor and outdoor, i.e., ‘landscape’ laser lights or light
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`shows, F.D.A. laser classifications, required F.D.A. safety controls, and basic laser
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`U.S. Patent No. 9,752,761
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`viewing safety.” (Paper 3, pp. 33-34.) Petitioner’s definition is overly narrow, as a
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`person would not need to have knowledge of F.D.A. laser classification or safety
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`controls in order to be one of “ordinary skill.” As such, Patent Owner contends a
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`POSA is an individual having a general knowledge of physics and/or optics and at
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`least a bachelor’s degree in mechanical or electrical engineering or equivalent
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`experience.
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`IV. CLAIM CONSTRUCTION
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`During post-grant review proceedings, “[a] claim in an unexpired patent shall
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`be given its broadest reasonable construction in light of the specification of the patent
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`in which it appears.” 37 C.F.R. § 42.200(b). Claim terms are given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the art in
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`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007). This includes the patent’s prosecution history. Microsoft
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`Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). Patent Owner submits
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`that the terms in the ’761 Patent claims do not require construction at this time, and,
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`therefore, should be given their plain and ordinary meaning in accordance with the
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`broadest reasonable interpretation standard.1 See Cuozzo Speed Tech., LLC v. Lee,
`
`
`1 Patent owner disagrees with Petitioner’s “assump[tion] that ‘momentary’ implies a
`time basis of 0.25 sec. and that ‘relatively close’ implies a distance basis of 5.1 in.
`based on common safety protocols and an understanding of Class 3 lasers.” (Paper
`3, p. 34, n. 11.)
`
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`6
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`136 S.Ct. 2131 (2016).
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`V. ARGUMENT
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`A. Grounds 1: Claims 1-11 Are Directed Towards Patent-Eligible
`Subject Matter
`Petitioner first contends that claims 1-11 are invalid because the claims “fail
`
`the test for patent eligible subject matter because they wholly encompass basic
`
`boilerplate safety principles and conventional safety practices applied to laser
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`projectors.” (Paper 3, p. 39; emphasis added.) Petitioner’s arguments are wholly
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`deficient in performing the necessary analysis for considering the subject matter
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`eligibility of a patent claims. Additionally, Petitioner admits that the claims are
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`indeed directed to patent eligible subject matter as codified in 35 U.S.C. §101. As
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`such, institution with respect to Ground 1 should be denied.
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`As an initial matter, Petitioner expressly admits that the claims of the ’761
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`Patent are directed to a “machine,” which is expressly defined as a statutorily eligible
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`category under 35 U.S.C. § 101. (Paper 3., p. 35.) (“35 U.S.C. § 101 identifies
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`machines, like landscape lights, as one type of patentable-eligible [sic] subject
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`matter.”) Thus, by Petitioner’s own admission, the claims of the ’761 Patent are
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`directed to patent eligible subject matter, and institution with respect to Ground 1
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`should be denied.
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`Additionally, Petitioner fails to establish the patent ineligibility of the claims
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`7
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`U.S. Patent No. 9,752,761
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`of the ‘761 Patent and completely ignores the two-step test established by the
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`Supreme Court in assessing the patent eligibility of claims. The threshold question
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`is whether the claims are directed to an exception to patent eligible subject matter,
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`namely, a law of nature, a physical phenomenon, or an abstract idea. If, and only if,
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`the claims are directed to one of the three patent-ineligible exceptions, the second
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`step involves assessing whether the claims contain an “inventive concept” sufficient
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`to “transform” the claims into patent-eligible subject matter. See Alice Corp. Pty. v.
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`CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014); Association for Molecular Pathology
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`v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013); see also Mayo Collaborative
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`Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012); Diamond v. Diehr, 450
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`U.S. 175, 185 (1981); see also Bilski v. Kappos, 561 U.S. 593 (2010); Diamond v.
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`Chakrabarty, 447 U.S. 303, 309 (1980). Here, Petitioner fails to address this
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`threshold question regarding which of the three exceptions the claims of the ’761
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`Patent are purportedly directed to. Rather, Petitioner argues that “the claims are
`
`directed to the fundamental safety practice of putting lasers in a protective housing
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`and diffusing the laser with viewing optics as often mandated by regulation.” (Paper
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`3, p. 35.) However, “fundamental safety practice” is not a law of nature, physical
`
`phenomena, or an abstract idea. Further, although Petitioner is correct that in
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`asserting that claims must have “significantly more” to make patent ineligible claims
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`patentable, however, this is only if the claims are directed to one of the three patent
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`U.S. Patent No. 9,752,761
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`ineligible exceptions, i.e., a law of nature, a physical phenomenon, or an abstract
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`idea. Here, the claims of the ’761 Patent clearly do not fall within one of the
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`judicially created exceptions and are plainly directed to patent eligible subject
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`matter.
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`Additionally, Petitioner’s subject matter eligibility analysis focuses solely on
`
`one claim element, i.e., “diffractive holographic optics,” while it is well established
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`Supreme Court precedent that “claims must be considered as a whole.” Diamond v.
`
`Diehr, 450 U.S. 175, 188 (1981). When the claims of the ’761 Patent are taken as a
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`whole, it is clearly evident that the claims of the ’761 Patent are directed to patent
`
`eligible subject matter. For example, representative claim 1 recites a housing, two
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`laser light sources, each laser having a separate lens, and diffractive holographic
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`optics to scatter the lasers and cause an energy concentration of the lasers to drop
`
`below exposure limits for momentary or accidental viewing at a relatively short
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`distance from the landscape light. As such, Petitioner’s §101 analysis is wholly
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`deficient for this additional reason.
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`Furthermore, Petitioner mischaracterizes Mayo and Petitioner’s reliance on
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`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) is
`
`misplaced. Mayo does not stand for the proposition that “implementing a
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`fundamental safety principle that has become boilerplate with reference to a generic
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`machine is not a patentable application of that principle,” as Petitioner contends.
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`(Paper 3, p. 39.) Rather, Mayo concerns patents directed to the correlation between
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`the naturally-produced metabolites and therapeutic efficacy and toxicity. See,
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`generally, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
`
`Specifically, a representative claim at issue in Mayo recited:
`
`A method of optimizing therapeutic efficacy for treatment of an
`immune-mediated gastrointestinal disorder, comprising:
`(a) administering a drug providing 6-thioguanine to a subject . . .
`(b) determining the level of 6-thioguanine in said subject . . .
`wherein the level of 6-thioguanine less than about 230 pmol per
`8×108 red blood cells indicates a need to increase the amount of said
`drug subsequently administered to said subject and
`wherein the level of 6-thioguanine greater than about 400 pmol
`per 8×108 red blood cells indicates a need to decrease the amount of
`said drug subsequently administered to said subject.
`
`(Ex. 2005, 20:10-25). In contrast, the claims of the ’761 Patent are generally directed
`
`to an apparatus that generates and produces manipulated laser light. No parallel can
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`be drawn between the claims at issue in Mayo and the ’761 Patent.
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`In view of the foregoing, as Petitioner even admits, the claims are directed to
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`patent eligible subject matter. Accordingly, institution should be denied with respect
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`to Ground 1.
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`B. Ground 2: Petitioner Has Not Its Burden of Proving Anticipation By
`Inherency Under 35 U.S.C. § 102
`Petitioner contends that claims 1-11 are more likely than not invalid as
`
`inherent in view of “Class 3 laser definitions and known diffractive holographic
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`optic structures of prior art.” (Paper 3, p. 42.) A showing of anticipation by
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`10
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`inherency requires identification of “a single prior art reference [which] expressly
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`or inherently discloses each and every limitation set forth in claim.” Perricone v.
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`Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (emphasis added).
`
`“[A]nticipation by inherent disclosure is appropriate only when the reference
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`discloses prior art that must necessarily include the unstated limitation.” Monsanto
`
`Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1343 (Fed. Cir. 2018)
`
`(quoting Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed.
`
`Cir. 2002); see also MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365
`
`(Fed.Cir.1999)). Inherency “may not be established by probabilities or possibilities.
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`The mere fact that a certain thing may result from a given set of circumstances is not
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`sufficient.” Albaad Massuot Yitzhak, Ltd., IPR2017-00693, 2017 WL 3034538, at
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`*4 (July 17, 2017) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
`
`1269 (Fed. Cir. 1991)). Here, Petitioner fails to provide a single prior art reference
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`that expressly or inherently discloses each and every limitation recited in claims 1-
`
`11, and instead relies on conclusory statements and generalized assertions.
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`As an initial matter, it is a well-established principle of law that, to establish
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`anticipation by inherency, “a single prior art reference must disclose every
`
`limitation of the claimed invention.” HTC Corp. v. Cellular Commc’ns Equip., LLC,
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`877 F.3d 1361, 1368 (Fed. Cir. 2017) (emphasis added); see also, ArcelorMittal
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`France v. AK Steel Corp., 700 F.3d 1314, 1322 (Fed. Cir. 2012); Glaxo Inc. v.
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`U.S. Patent No. 9,752,761
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`Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). Petitioner fails to identify a
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`single reference which discloses each and every element of claims 1-11, and as such,
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`Petitioner fails to establish anticipation by inherency.
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`Instead of presenting a single anticipatory reference, Petitioner makes
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`suggestive references to various publications and FDA regulations without
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`indicating how these materials disclose even a single element of the claims of
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`the ’761 Patent. (Paper 3, pp. 41-42; Exs. 1035, 1043, 1048, 1049, 1051.) Indeed,
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`the record is devoid of any specifics regarding where any of the materials cited by
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`the Petitioner purportedly disclose each and every limitation of claims 1-11.
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`Petitioner’s reliance on conclusory statements and generalized assertions that
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`“diffractive holographic optics have been around since at least 1993” and that “the
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`subject matter of the claims is basic FDA principles of safety” are inadequate to meet
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`its burden of proof. (Paper 3, p. 41.) See Albaad Massuot, 2017 WL 3034538 at *4
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`(denying institution of an IPR based on § 102 anticipation because the Petitioner’s
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`contentions were “unsupported by substantive analysis, lack[ed] sufficient evidence,
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`and amount[ed] to no more than ‘a conclusory statement of inherency.”). For
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`example, the Petitioner merely argues that “diffractive holographic optics will, by
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`definition,” reduce the energy levels of any Class 3B, Class 3R or Class 2 lasers.
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`(Paper 3, p. 41; emphasis added.) Therefore, Petitioner’s inability to identify a single
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`reference that discloses each and every element of claims 1-11 fails to establish
`12
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`anticipation by inherency.
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`Furthermore, the Petition lacks any substantive analysis or evidence.
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`Moreover, in describing the materials in support of its anticipation by inherency
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`position, Petitioner argues that “viewing of diffuse (scattered) reflections of the
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`beam is normally safe,” (Paper 3, p. 41; Ex. 1048) (emphasis added). This is
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`insufficient to establish anticipation by inherency. See Albaad Massuot, 2017 WL
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`3034538 at *4 (“[I]nherency may not be established by probabilities or possibilities.
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`The mere fact that a certain thing may result from a given set of circumstances is not
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`sufficient.”). Inherency requires that the prior art necessarily functions in
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`accordance with, or includes, patent claim’s limitations. See Monsanto Tech., 878
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`F.3d at 1343; Perricone, 432 F.3d at 1375.
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`Petitioner’s reliance on In re King, 801 F.2d 1324 (Fed. Cir. 1986), is
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`misplaced. In In re King, the issue was whether “an article of manufacture in the
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`prior art can be used to support an anticipation rejection of method claims.” In re
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`King, 801 F.2d at 1326 (emphasis added). The Federal Circuit in In re King found
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`that “[u]nder the principles of inherency, if a structure in the prior art necessarily
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`functions in accordance with the limitations of a process or method claim of an
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`application, the claim is anticipated.” Id. Here, while the claims at issue include
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`functional limitations, they are directed to an apparatus, not a process or a method.
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`That is, the claimed invention includes several structure elements that perform a
`13
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`U.S. Patent No. 9,752,761
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`specific function. Petitioner contends that these apparatus claims are inherently
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`anticipated under King based on its identification of a general class of light
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`apparatuses that purportedly perform the claimed function. That is not enough.
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`Rather, functional limitations in an apparatus claim may only be inherently
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`anticipated when a single prior art reference discloses each structural element of the
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`claim. See In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). Petitioner has not
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`identified a single reference that includes every element claimed in the ’761 patent.
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`As such, Petitioner has not met its burden of establishing that the claims are
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`inherently anticipated under 35 U.S.C. §102.
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`In view of the foregoing, Petitioner has not shown it is more likely than not
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`that claims 1-11 are inherent in view of Class 3 laser definitions and known
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`diffractive holographic optic structures, and thus, institution should be denied with
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`respect to Ground 2.
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`C. Grounds 3 and 4: LFLRG505 Is Not Prior Art
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`Petitioner contends claims 1-11 are more likely than not invalid as anticipated
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`and/or obvious over the LFLRG505 projector (“LFLRG505”) product itself. (Paper
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`3, pp. 43-75.) In support of this contention, Petitioner provides images of the alleged
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`LFLRG505 device—not the device itself. (Ex. 1008.) Petitioner alleges LFLRG505
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`is prior art because it was on sale no later than May of 2014, which is before the July
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`16, 2014 effective filing date of the ’761 Patent. (Paper 3, p. 43.) However,
`14
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`U.S. Patent No. 9,752,761
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`Petitioner fails to establish the public availability date of the LFLRG505 product.
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`Specifically, Petitioner fails to provide sufficient evidence to demonstrate that it is
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`more likely than not that the LFLRG505 device pictured in the Petition was sold no
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`later than May of 2014, as Petitioner alleges. As such, LFLRG505 is not prior art,
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`and institution with respect to Grounds 3 and 4 should be denied. See AVX Corp,
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`2017 WL 3078139, at *11 (P.T.A.B. July 18, 2017) (concluding there was an
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`“insufficient factual basis” that the product pictured in the petition was the same as
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`what was allegedly sold or offered for sale at an earlier date).
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`In support of its allegation that LFLRG505 is prior art, Petitioner relies on a
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`declaration from Joe Ferlauto—a former President and current board member of
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`Petitioner. (Paper 3, pp. 44-46; Ex. 1028.) The declaration is accompanied by (1)
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`images of LFLRG505 and its purported packaging (Ex. 1011); (2) an instruction
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`manual (Ex. 1013); (3) screen captures of a Vimeo.com video purportedly showing
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`the LFLRG505 (Ex. 1017), along with a transcript of the video (Ex. 1018); and, (4)
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`sales documents purportedly showing that Petitioner sold 4,000 units of LFLRG505
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`to a Tennessee company—Orgill, Inc.—in 2014 (Ex. 1021). In American Simmental
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`Association v. Leachman Castle of Colorado, LLC, Case No. PGR2015-00003, 2016
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`WL 3268597 (P.T.A.B. June 13, 2016), the Board explained that when testimony is
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`provided as evidence that a prior art device was on sale or otherwise available to the
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`public prior to the effective filing date, that testimony requires corroboration. Id.
`15
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`PGR2018-00010
`U.S. Patent No. 9,752,761
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`at *10. Here, the Ferlauto declaration and the attachments thereto do not corroborate
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`Petitioner’s allegation that LFLRG505 is prior art. Id.
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`Significantly, while Petitioner relies on the device itself as prior art, Petitioner
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`did not submit the actual device as an exhibit to the Petition, but rather relies on
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`images of the LFLRG505 along with video stills and a variety of documents—none
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`of which includes a video of the purported operation of the device.2 (Ex. 1028, pp.
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`1-5; Exs.1011, 1013, 1017, 1021, 1028.) Critically, Petitioner’s submission fails to
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`establish the date on which the device shown in photographs was publicly available.
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`(Id.) There is nothing in the record even suggesting that the product shown in the
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`images and video stills was the product that was actually available in 2014. Indeed,
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`Ferlauto merely states that: (1) “the packaging [--and not the product--] is dated
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