Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 73
`Date: March 27, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`CLEARLAMP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00020
`Patent 7,297,364
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER and
`JOSIAH C. COCKS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`I. INTRODUCTION
`
`A. Summary
`
`
`
`LKQ Corporation (“LKQ”) filed a petition on October 17, 2012
`
`(Paper 1, “Pet.”) requesting inter partes review of claims 1-24 of U.S. Patent
`
`No. 7,297,364 (“the ‟364 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311-
`
`319. On March 29, 2013, the Board instituted a trial for each of claims 1-24
`
`on two grounds of unpatentability.1
`
`
`
`After institution of trial, the Patent Owner, Clearlamp, LLC
`
`(“Clearlamp”) filed a Patent Owner Response (“PO Resp.”) to the petition.
`
`Papers 33, 352. LKQ filed a Reply to Clearlamp‟s Response on September
`
`30, 2013 (“Pet. Reply”). Paper 50. Clearlamp also filed a Motion to Amend
`
`(Paper 38), a “Motion for Entry of Protective Order and to Seal Under 37
`
`C.F.R. 42.54” (Paper 34), and a “Motion for Entry to Seal Under 37 C.F.R.
`
`42.54” (Paper 41). LKQ has filed a Motion to Exclude Evidence (Paper 58).
`
`
`
`
`
`Oral hearing was conducted on January 2, 2014.3
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). Pursuant to 35
`
`U.S.C. § 318(a), this decision is “a final written decision with respect to the
`
`patentability of any patent claim challenged by the petitioner.”
`
`
`
`LKQ has shown by a preponderance of the evidence that claims 1-10,
`
`13, and 14 are unpatentable. LKQ has not shown that claims 11, 12, and 15-
`
`24 are unpatentable.
`
`
`1 See Paper 18 (“Institution Decision” or “Inst. Dec.”).
`
` 2
`
` Paper 33 is a version of Clearlamp‟s Response filed with portions redacted.
`Paper 35 is an unredacted version of the Response filed under seal.
`
` 3
`
` A transcript of the oral hearing has been entered into the record as Paper 72
`(“Hr‟g Tr.”).
`
`2
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`
`Clearlamp‟s Motion to Amend is denied.
`
`
`
`
`
`LKQ‟s Motion to Exclude Evidence is dismissed.
`
`Clearlamp‟s “Motion for Entry of Protective Order and to Seal Under
`
`37 C.F.R. 42.54” (Paper 34) is granted.
`
`
`
`Clearlamp‟s “Motion for Entry to Seal Under 37 C.F.R. 42.54” (Paper
`
`41) is granted.
`
`B. The ’364 Patent
`
`
`
`The ‟364 patent relates to the refurbishing of lamp surfaces of a
`
`vehicle so as to remove surface wear and scratches. Ex. 1001, col. 1, ll. 8-
`
`12. The ‟364 patent includes twenty-four claims. Claims 1 and 13 are
`
`independent claims and are reproduced below:
`
`removing the lamp from a motor vehicle;
`
`A method for refurbishing a lamp surface of a lamp
`1.
`having surface damage, the method comprising the steps of:
`
`
`
`removing an original clear coat finish from the lamp
`
`surface of the lamp;
`
`
`
`
`
`
`
`
`
`spraying a replacement clear coating material over the
`
`lamp surface; and
`
`
`
`
`
`evening the lamp surface;
`
`grinding swirls and scratches out of the lamp surface;
`
`buffing the lamp surface;
`
`cleaning the lamp surface;
`
`curing the replacement clear coat material.
`
`3
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`removing the lamp from a motor vehicle;
`
`13. A method for refurbishing a lamp surface of a lamp
`having surface damage, the method comprising the steps of:
`
`
`
`removing an original clear coat finish from the lamp
`
`surface of the lamp;
`
`
`
`
`
`
`
`
`
`statically neutralizing debris on the lamp surface to
`
`facilitate the removal of all of the debris on the lamp surface;
`
`spraying a replacement clear coating material over the
`
`lamp surface; and
`
`
`
`
`evening the lamp surface;
`
`grinding swirls and scratches out of the lamp surface;
`
`buffing the lamp surface;
`
`cleaning the lamp surface;
`
`curing the replacement clear coat material.
`
`Id. at col. 4, ll. 33-45; col. 5, ll. 19-32.
`
`
`
`C. Prior Art
`
`
`
`The following items of prior art are involved in this inter partes
`
`review:
`
`US 2005/0208210 A1(“Kuta”) September 22, 2005
`
`US 6,106,648 (“Butt”)
`
`
`
`August 22, 2000
`
`
`
`
`
`
`
`Ex. 1002
`
`Ex. 1003
`
`
`
`4
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`Forum posts from Eastwood ShopTalk website4 (“Eastwood”) Ex. 1004
`
`D. The Asserted Grounds of Unpatentability
`
`The Board instituted trial on the following grounds of unpatentability:
`
`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Butt.
`
`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Eastwood.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board construes a claim of an unexpired patent in an inter partes
`
`
`
`
`
`
`
`review using the “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Claim terms usually are given their ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art in the context of
`
`the underlying patent disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Indeed, the ordinary and customary meaning
`
`usually applies unless an inventor has acted as his or her own lexicographer
`
`and has set forth a special meaning for a claim term. Multiform Desiccants,
`
`Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
`
`
`
`Neither LKQ nor Clearlamp contends that the inventors of the ‟364
`
`patent have acted as their own lexicographer and given any claim term a
`
`special meaning. Accordingly, we give all terms of the claims their ordinary
`
`
`4 http://forum.eastwood.com/showthread.php?118-Plastic-headlight-re-
`sealing&s=d3d5c104c4068d77bcc48e2e5ad4922.
`
`5
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`and customary meaning as would be understood by a person of ordinary skill
`
`in the art. We observe there is dispute between the parties as to the ordinary
`
`meaning of certain claim terms. We make explicit the meaning of the
`
`disputed terms.
`
`1. “removing an original clear coat finish from the lamp surface of
`the lamp”
`
`
`
`
`The parties disagree as to what extent the original clear coat finish
`
`must be removed in connection with the above-noted “removing” step.
`
`According to Clearlamp, the “removing” step requires that the clear coat
`
`finish be “fully” removed and does not encompass, within its scope, any
`
`removal characterized as less than full or complete removal, i.e., only
`
`“partially” removing the clear coat finish. PO Resp. 12-13. LKQ challenges
`
`Clearlamp‟s position that the ordinary meaning of the step of “removing” the
`
`clear coat finish must be construed narrowly as “fully” removing. Pet.
`
`Reply 2.
`
`
`
`In advocating for its proposed claim construction, Clearlamp relies on
`
`portions of the specification of the ‟364 patent as well as the declaration
`
`testimony of Mr. Katsamberis (Exhibit 2007). PO Resp. 13-14. The
`
`referenced portions of the ‟364 patent describe an embodiment of the
`
`disclosed invention in which during the refurbishing process a clear coat
`
`finish “is fully removed from the lamp surface.” Ex. 1001, col. 3, ll. 10-15.
`
`The portions also describe the resulting optical characteristics of the
`
`refurbished lamp “are very similar to those of the original equipment lamp
`
`assembly.” Id. at col. 4, ll. 21-23. Mr. Katsamberis also bases his opinion,
`
`that the claims require “fully” removing the clear coat finish, on the same
`
`portions of the ‟364 patent. Ex. 2007 ¶ 27.
`
`6
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`
`We are not persuaded that the claim interpretation proffered by
`
`Clearlamp presents the broadest reasonable interpretation of the pertinent
`
`phrase that would be understood by a skilled artisan in light of the
`
`specification. Notably absent from the claims themselves is the use of the
`
`qualifier “fully” in connection with the noted “removing” step. Indeed, the
`
`portions of the specification on which Clearlamp relies in advocating for its
`
`desired claim construction do not define the term “removing” as meaning
`
`only “fully removing” to the exclusion of an act of removing that is
`
`something less than “fully.” To that end, the referenced portion of the ‟364
`
`patent reads:
`
`When grinding the original clear coat finish 12 a halo effect
`will be created differentiated between the different thicknesses
`of the original clear coat finish 12 as it is being ground off of
`the lamp surface 10. Thus, it can be confirmed that the original
`coat finish 12 is fully removed from the lamp surface 10 when
`the halo effect approaches the edges of the lamp surface 10.
`
`Ex. 1001, col. 3, ll. 6-11
`
`
`
`Thus, the ‟364 patent conveys reasonably that removing the clear coat
`
`finish occurs to some degree less than “fully” until a “halo effect approaches
`
`the edges of” a lamp surface, at which point the removal is at the level of
`
`“full[]” removal. That does not establish a meaning of the term “removing”
`
`as narrowly meaning only “fully removing.” Moreover, that the clear coat
`
`finish is considered “fully removed” when the halo effect only “approaches”
`
`the edges of the lamp surface itself suggests that full removal of the clear
`
`coat finish is accomplished even if some residual remains at the outermost
`
`portions of the edges.
`
`
`
`On this record, we are not persuaded that the broadest reasonable
`
`construction of “removing the original clear coat finish from the lamp
`
`7
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`surface of the lamp” includes only total, or complete, removal of the finish
`
`within its scope, to the exclusion of an act of removal that is something less
`
`than the entire elimination of the finish. In other words, we conclude that
`
`the step of “removing” the clear coat finish encompasses within its scope the
`
`removal of less than all portions of the clear coat finish.
`
`2. “evening the lamp surface”
`
`
`
`Clearlamp contends that “evening the lamp surface” should be
`
`construed as “smoothing out the lamp surface to minimize any troughs
`
`created through the removal of damage.” PO Resp. 16. LKQ contends that
`
`the ordinary meaning of the pertinent phrase is simply “smoothing out the
`
`lamp surface” and that the qualifying portion that the smoothing has a
`
`particular purpose, i.e., “to minimize any troughs created through the
`
`removal of damage,” is unduly narrow. Pet. Reply 2 (emphasis omitted).
`
`We agree with LKQ.
`
`
`
`The ordinary meaning of the verb “even” is “to make even; level;
`
`smooth.”5 With that meaning in mind, the claim feature “evening the lamp
`
`surface” would be interpreted seemingly as leveling or smoothing the lamp
`
`surface. That meaning is consistent with the meaning that is proffered by
`
`LKQ. Clearlamp does not explain why such leveling or smoothing should
`
`be qualified to be directed to a specific result, i.e., to “minimize any troughs
`
`created through the removal of damage.”
`
`
`
`Accordingly, consistent with the meaning offered by LKQ, we
`
`construe “evening the lamp surface” as leveling or smoothing the lamp
`
`surface.
`
`
`5 http://dictionary.reference.com/browse/even?s=t (last accessed March 6,
`2014).
`
`8
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`3. “statically neutralizing debris”
`
`
`
`Claim 13 requires the step of “statically neutralizing debris on the
`
`lamp surface to facilitate the removal of all the debris on the lamp surface.”
`
`According to Clearlamp, there is an “implicit[]” requirement of claim 13
`
`mandating that the “statically neutralizing debris” step must be performed
`
`only after other steps of the claims have been performed, namely those
`
`directed to grinding and buffing of the lamp surface. PO Resp. 17-18. In
`
`support of its position, Clearlamp urges that such construction is dictated by
`
`“logic” and is supported in the Specification of the ‟364 patent. Id. at 18-19
`
`(citing Ex. 1001, col. 3, l. 64-col. 4, l. 3). LKQ disagrees with Clearlamp‟s
`
`construction, urging that the claims reasonably encompass the performance
`
`of the statically neutralizing step at times other than after all grinding and
`
`buffing steps. Pet. Reply 2-3.
`
`
`
`We agree with LKQ. “Unless the steps of a method actually recite an
`
`order, the steps are not ordinarily construed to require one.” Interactive Gift
`
`Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001).
`
`Here, there is no explicit language in the claims themselves that imposes a
`
`temporal restriction on the statically neutralizing step requiring that it be
`
`performed at a particular time.
`
`
`
`We also are not persuaded by Clearlamp‟s argument that claim 13
`
`imposes an implicit time for the performance of the step. There simply is not
`
`a sufficient basis for concluding that such a step is limited intrinsically to
`
`performance at any particular time. That is, the broadest reasonable
`
`interpretation of claim 13 conveys that the statically neutralizing step may be
`
`performed at any of various times and, at any of those times, the step serves
`
`to remove all of the debris that is present on the lamp surface. The portion
`
`9
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`of the Specification referenced by Clearlamp is consistent with that
`
`understanding. That portion simply conveys that, in one described
`
`embodiment, “[b]y neturalizing the lamp surface 10 to all static energy,
`
`particulate from the grinding and buffing steps may be more easily
`
`removed.” Ex. 1001, col. 3, l. 64-col. 4, l. 1. Even if that embodiment
`
`describes performance of the statically neutralizing step after all grinding
`
`and buffing acts have occurred, that does not preclude the performance of
`
`that step at other times in other embodiments.
`
`
`
`Accordingly, we are not persuaded that claim 13 requires a singular
`
`time for the performance of static neutralization. Instead, as discussed
`
`above, the broadest reasonable construction of the step that is consistent with
`
`the Specification of the ‟364 patent includes statically neutralizing at various
`
`times during the refurbishing process.
`
`B. Petitioner’s Evidence of Obviousness over Kuta
`and either Butt or Eastwood
`
`1. LKQ’s Petition
`
`
`
`a. Kuta
`
`Kuta is titled “Headlight lens resurfacing apparatus and method.” Ex.
`
`
`
`
`
`
`
`1002, Title. Kuta‟s abstract is reproduced below:
`
`lens having a
`Refinishing an exterior automotive
`
`damaged exterior surface in situ using a continuous movement
`and oscillating motion, with first, a 320 grit sanding disc, next a
`600 grit sanding disc and finally a 1500 grit sanding pad while
`slushing the surface with water to prevent melting of the
`surface. Buffing the surface with a polishing compound until a
`high gloss is achieved. Finally, coating the surface with a
`transparent ultraviolet hardenable coating material, and
`hardening it by exposure to an ultraviolet light source. The
`
`10
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`method is accomplished using an oscillating tool having a
`remotely located drive.
`
`
`
`Thus, Kuta sets forth that its lens or lamp resurfacing approach is “in
`
`situ” and involves multiple sanding steps coupled with “slushing” the
`
`surface of a lens with water. Kuta‟s process also involves steps of polishing
`
`and coating the lens surface.
`
`
`
`
`
`
`
`b. Butt
`
`Butt discloses a method of rebuilding a damaged lens of a vehicle
`
`lamp. Ex. 1003, Abstract. Butt describes that a damaged lens may be
`
`repaired while remaining on a vehicle. Id. at col. 2, ll. 53-57. Butt also
`
`describes that if desired, a vehicle lamp, and its associated lens, may be
`
`removed from the vehicle as a matter of convenience. Id. at col. 2, ll. 57-60.
`
`Thus, Butt conveys that the removal and the non-removal of a vehicle lamp
`
`are both known options to those of ordinary skill in the art when engaging in
`
`the repair or resurfacing of a damaged lens of a vehicle lamp.
`
`
`
`
`
`
`
`c. Eastwood
`
`Eastwood is a document characterized as a series of Internet forum
`
`posts from a website. The content of the posts are directed toward
`
`“resealing” and “buffing” the headlight of a vehicle. E.g., Ex. 1004, p. 1. In
`
`a post dated February 18, 2005, and appearing on page 6 of Eastwood, a
`
`forum poster with the moniker “Pontisteve” states the following:
`
`I took the headlights out of my Mustang to do them, because I
`didn‟t want to risk any damage to the car. If I were making a
`business out of this, I would look at doing it the autosol way
`with a little 4″ round pad. It wouldn‟t get the edges too good,
`and is hard to get around the alignment dowels with, but you
`wouldn‟t have to pull the lights. I just seriously doubt they
`would last real long. I‟ve done it before with buffers and
`
`11
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`rubbing compounds too, just never got em perfect and the
`longevity wasn‟t there. With my plastic polish way, I would
`bet on the results lasting for several years. I know some guys
`spray clear over the lenses too.
`
`
`
`Thus, Eastwood, like Butt, conveys that the options of either
`
`removing a vehicle‟s headlight or maintaining it on the vehicle when
`
`refurbishing the headlight were known to one of ordinary skill in the art.
`
`
`
`
`
`
`
`d. Reasons to Combine the References
`
`In its Petition, LKQ urges that Kuta discloses all the limitations of
`
`claims 1-24 of the ‟364 patent with the exception of the requirement of
`
`“removing the lamp from a motor vehicle.” Pet. 16-32. To account for that
`
`requirement, LKQ relied on the teachings of either Butt or Eastwood. As
`
`discussed above, each of those references establishes that it was known in
`
`the art that, in refurbishing the lamp of a vehicle headlight, the lamp may be
`
`removed. In light of that knowledge, LKQ contends that claims 1-24 would
`
`have been obvious. Id. at 8-12.
`
`
`
`
`
`2. Clearlamp’s Arguments
`
`In its Patent Owner Response, Clearlamp contends that claims 1-24 of
`
`the ‟364 patent are not unpatentable over Kuta and either Butt or Eastwood
`
`because Kuta allegedly lacks certain features of those claims. PO Resp. 20-
`
`48.
`
`a. “removing the lamp from the motor vehicle”
`
`
`
`Each of claims 1 and 13 requires the step of removing a lamp from a
`
`motor vehicle in the course of refurbishing that lamp. In deciding to
`
`institute trial based on the disclosure of Kuta, the Board considered
`
`arguments offered by Clearlamp in its Preliminary Patent Owner Response
`
`12
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`that Kuta teaches away from removing a lamp from a motor vehicle, as
`
`taught in each of Butt and Eastwood. We, however, were not persuaded that
`
`the arguments were correct. Inst. Dec. 8-11. In particular, the Board
`
`determined that one with ordinary skill in the art would have recognized
`
`reasonably from the teachings of the prior art that, in undertaking a vehicle
`
`lamp repair process, there are two known options with respect to the
`
`configuration of the lamp during that process, i.e., (1) that it be removed
`
`from the vehicle, or (2) that it remain mounted on the vehicle. We also
`
`determined that the art conveys that there are recognized tradeoffs attributed
`
`to each approach. Those tradeoffs include a cost benefit associated with
`
`maintaining the lamp on the vehicle versus a matter of convenience and
`
`alleviating potential vehicle damage associated with removing the lamp.
`
`
`
`In its Patent Owner Response, Clearlamp again advances an argument
`
`that Kuta “teaches away” from combination with either Butt or Eastwood.
`
`PO Resp. 29. In making the argument, Clearlamp relies extensively on the
`
`declaration testimony of Mr. Bell (Ex. 2004). In particular, Clearlamp
`
`argues the following:
`
`Patent Owner respectfully submits that it is more than
`
`just a matter of whether there are two choices of (1) removing
`the lamp from the vehicle, or (2) not removing the lamp from
`the vehicle, that is at issue in this analysis. EX2004 at ¶¶ 74-
`84. Instead, the context of the inventions dictates that Kuta
`teaches away from the suggested combination. Id. To that end,
`Kuta is directed to the consumer retail parts market. Id. at ¶ 80.
`When efficiency and cost-effectiveness is paramount, as is in
`the case in that industry, there is no reason to remove the lamp
`from the car. This is so, even if the quality of the end product
`suffers (such as not removing all the clear coat from the edge of
`the
`lamp, not evening
`the
`lamp surface, not statically
`
`13
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`neutralizing the lamp to facilitate the removal of all debris,
`etc.). Id. at ¶ 76.
`
`PO Resp. 29.
`
`
`
`Thus, Clearlamp premises its argument on a theory that because Kuta
`
`may value the efficiency and cost-effectiveness in refinishing a lamp on a
`
`vehicle because of the particular consumer market or industry it targets, that
`
`indicates a “teach[ing] away” from an approach of removing the lamp as a
`
`quality measure that is targeted in another industry.
`
`
`
`Clearlamp‟s argument is unpersuasive. That Kuta may value a cost-
`
`effective approach to lamp refurbishing does not mean that a person of
`
`ordinary skill in the art must also value such an approach, to the preclusion
`
`of one that favors quality over cost. Indeed, rather than “no reason,” a
`
`person of ordinary skill in the art has good reason to select between a limited
`
`number of known options within his technical grasp when solving a
`
`particular problem, in this case engaging in lamp refurbishment. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design
`
`need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions, a person of ordinary skill has good reason
`
`to pursue the known options within his or her technical grasp. If this leads
`
`to the anticipated success, it is likely the product not of innovation but of
`
`ordinary skill and common sense.”) Here, selecting between the removal
`
`and non-removal of a vehicle lamp, where each approach has known
`
`tradeoffs, is not an undertaking based on innovation, but is instead the
`
`product of a skilled artisan‟s exercise of ordinary skill and common sense.
`
`
`
`We have fully considered Clearlamp‟s position that the recited step of
`
`“removing the lamp from the vehicle” renders the claims of the ‟364 patent
`
`14
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`free of the applied prior art. However, in light of the record before us, we
`
`are not persuaded that the position is correct.
`
`b. “removing an original clear coat finish from the lamp
`surface of the lamp”
`
`
`
`The above-noted feature appears in each of claims 1 and 13.
`
`According to Clearlamp, Kuta does not disclose that feature because it
`
`allegedly does not disclose “fully” removing a clear coat finish.
`
`
`
`At the outset, as discussed above, we are not persuaded that the step
`
`of “removing” the clear coat finish requires full or total removal to the
`
`exclusion of removal that is less than full. Kuta makes clear that its sanding
`
`process operates to remove a sufficient amount of an original clear coat
`
`finish from a lens surface to the point where the lens surface “appears clear,”
`
`is “satisfactory and quite clear,” and ensures that “clarity is restored to the
`
`lens.” Ex. 1002 ¶¶ 23, 25. A replacement coating then is applied to that
`
`clear surface. Id. We are not persuaded that Kuta fails to disclose the
`
`“removing” of a clear coat finish that is required by claims 1 and 13.
`
`
`
`Moreover, even assuming that the claims do require full or complete
`
`removal of a clear coat finish, and that Kuta does not disclose removal to
`
`that extent, the question before us is one of obviousness. In an obviousness
`
`analysis, it is not necessary to find precise teachings in the prior art directed
`
`to the specific subject matter claimed because inferences and creative steps
`
`that a person of ordinary skill in the art would employ can be taken into
`
`account. KSR Int’l Co., 550 U.S. at 418. In this case, that some amount of
`
`clear coat finish may remain after Kuta‟s sanding steps is attributed to
`
`difficulty in reaching the corners of a lens or lamp when it remains affixed to
`
`15
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`a vehicle. See Ex. 1002 ¶ 25. However, the grounds of unpatentability are
`
`premised on Kuta‟s disclosure when taken with either Butt or Eastwood.
`
`
`
`Butt and Eastwood describe that in refurbishing vehicle lamps, the
`
`lamps may be removed from the vehicle because it is “more convenient”
`
`(Ex. 1003, col. 1, ll. 57-60) or to alleviate the potential of damage to the
`
`vehicle during the refurbishing process (Ex. 1004, p. 6). Although in Kuta,
`
`some clear coat finish may remain in Kuta‟s process due to one particular
`
`circumstance (i.e., a lamp or lens remaining in situ), as noted above, it is
`
`apparent that Kuta desires to remove as much of the finish as possible to a
`
`point where the lens is “satisfactory and quite clear.” Ex. 1002 ¶ 23. A
`
`person of ordinary skill in the art reasonably would have inferred that, when
`
`a lens is removed from the vehicle, the refurbishing process is not inhibited
`
`in connection with access to the corners of the lens, and additional removal
`
`of the original clear coat finish may be attained to produce a lens that is
`
`appropriately clear. Indeed, that inference is consistent with the deposition
`
`of Clearlamp‟s own expert witness, Mr. Katsamberis. In that regard, the
`
`deposition includes the following exchange in connection with the above-
`
`noted issue:
`
`A. [from Mr. Katsamberis] Yes.
`
`Q. [from counsel for LKQ] Let‟s assume for a second
`
`that the system of Kuta was used to refinish a lamp that had
`been removed from a car; okay? Can you assume that?
`
`
`
`Q. Would the limited access corners which are labeled as
`
`Number 14 in Kuta still exist if that was the case?
`
`
`
`
`
`A. Probably not.
`
`Q. Why not?
`
`16
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`
`A. Because the car body will not be there to limit your
`
`access to those corners.
`
`Ex. 1017, p. 102, ll. 4-15 (emphasis removed).
`
`
`
`We have considered the declaration testimony of Clearlamp‟s expert
`
`witnesses, Mr. Bell (Ex. 2004) and Mr. Katsamberis (Ex. 2007). That
`
`testimony, however, neglects to consider appropriately what a person of
`
`ordinary skill in the art would have taken from the combined teachings of
`
`Kuta and either Butt or Eastwood. None of Clearlamp, Mr. Bell, or Mr.
`
`Katsamberis, adequately explains why a skilled artisan, not faced with
`
`resurfacing a lamp that remains on a vehicle, would stop short of fully
`
`removing a clear coat finish when seeking to produce a lens or lamp that is
`
`“satisfactory and quite clear.”
`
`
`
`Accordingly, we have considered Clearlamp‟s arguments, but
`
`conclude that LKQ has shown by a preponderance of the evidence that the
`
`claimed step of “removing an original clear coat finish from the lamp
`
`surface of the lamp” does not distinguish the claims over the prior art.
`
`c. “evening the lamp surface”
`
`
`
`According to Clearlamp, the step of “evening the lamp surface”
`
`recited in claims 1 and 13 is absent from the disclosure of Kuta. In that
`
`regard, although Kuta discloses multiple sanding operations associated with
`
`its headlight resurfacing method, Clearlamp maintains that the evening of
`
`the lamp surface required by the claims is absent from the teachings of Kuta.
`
`According to Clearlamp, that is so because there is “no reason to even out
`
`the lamp” in Kuta, and, in support of that position, Clearlamp relies on the
`
`declaration testimony of Mr. Bell (Ex. 2004). PO Resp. 25-26. Mr. Bell
`
`17
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`testifies, in part, that Kuta does not disclose the “evening” step because it
`
`allegedly does not minimize any troughs created through the removal of
`
`damage. Ex. 2004 ¶ 57.
`
`
`
`At the outset, as discussed above, we are not persuaded that the
`
`“evening” step in question narrowly requires that “troughs” be minimized.
`
`Instead, the broadest reasonable construction of the “evening” step simply
`
`requires that the surface of a lamp be smoothed or leveled. Clearlamp‟s
`
`arguments and Mr. Bell‟s testimony in that regard, do not take into account
`
`the broadest reasonable interpretation of “evening the lamp surface.”
`
`
`
`Furthermore, we observe that there is marked similarity between the
`
`disclosure in the ‟364 patent as to what actions enter into “evening” and
`
`Kuta‟s sanding procedures. In particular, the ‟364 patent describes the use
`
`of various “grits” of sandpaper, including “320 sandpaper” which is applied
`
`to the lamp surface during the act of removing the original clear coat and
`
`also explains that “the evening of the lamp surface 10 includes the step of
`
`grinding the lamp surface 10 with a sandpaper having a grit of
`
`approximately 320.” Ex. 1001, col. 2, l. 58-col. 3, l. 24. Similarly, Kuta
`
`also discloses that its sanding process involves the use of sanding disc 20 of
`
`“approximately 320 grit” that is “moved continuously” using an “oscillating
`
`motion” over the surface of a lens. Ex. 1002 ¶ 23. Elsewhere, Kuta
`
`characterizes the configuration of sanding disc 20 as incorporating foam pad
`
`21 that is “critical for smoothing lens 10.” Id. ¶ 28.
`
`
`
`We have considered the arguments advanced by Clearlamp in
`
`connection with the step of “evening of the lamp surface.” However, in light
`
`of the clear and unambiguous disclosure in Kuta of the above-noted sanding
`
`operation, Kuta discloses the required step of “evening” the lamp surface.
`
`
`
`18
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`d. “spraying a replacement clear coating material over the
`lamp surface”
`
`
`
`In accounting for the above-noted feature appearing in claims 1 and
`
`13, LKQ points to Kuta at paragraphs 23 and 26. Pet. 21. The noted
`
`portions of Kuta describe the application of “a transparent ultraviolet
`
`hardenable coating material” applied to the lens as a “scratch resistant
`
`coating.” Clearlamp contends that one of ordinary skill in the art would not
`
`have understood that “spraying” is an available technique for the application
`
`of such a coating. PO Resp. 27. In support of that contention, Clearlamp
`
`relies on the declaration testimony of its expert witnesses, Mr. Bell and Mr.
`
`Katsamberis. Id. at 27-28. In particular, according to Mr. Bell:
`
`Because Kuta discloses an in situ refinishing process, a
`
`person of ordinary skill in the art would have recognized that it
`would have been uneconomical (too expensive and time
`consuming) to conduct full preparations to the vehicle such that
`a clear coat could be sprayed (as opposed to brushing or
`wiping) onto the lamp surface. For example, spraying a clear
`coating without first covering the hood or front bumper would
`result in clear coating being applied to those surfaces. As such,
`a person of ordinary skill in the art would not have understood
`Kuta to teach spraying a replacement clear coating finish on the
`lamp surface.
`
`Ex. 2004 ¶ 60.
`
`
`
`Similarly, Mr. Katsamberis gives the following testimony:
`
`The Kuta process is directed to a refinishing process in
`
`which the lamp remains on the vehicle while it is being
`refinished. Further, Kuta‟s teaching that its process is “more
`cost effective” ([0010]) (because it does not require removal of
`the lamp) would have indicated to a person of ordinary skill that
`Kuta did not describe a process in which adjacent parts of the
`car (hood, bumper, side panel) were covered before the new
`clear coating is applied. That is because covering the car parts
`around the uneven surface of the lamp is time-intensive and
`
`19
`
`

`

`IPR2013-00020
`Patent 7,297,364
`
`
`requires precise placement, especially if the coverings are, for
`example, square or rectangular sheets or tarps.
`
`As a result, a person of ordinary skill in the art would
`have understood that the replacement clear coating of Kuta
`would not be sprayed on. Rather, it would be brushed or wiped
`onto the lamp.
`
`Ex. 2007 ¶¶ 38, 39.
`
`
`
`Neither Mr. Bell nor Mr. Katsamberis testifies that the prospect of
`
`“spraying” a clear coat onto a vehicle lamp was one not known in the art.
`
`Indeed, it is apparent from the