Trials@uspto.gov
`571-272-7822
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` Paper 18
`Entered: March 29, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`LKQ CORPORATION
`Petitioner
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`v.
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`CLEARLAMP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00020 (SCM)
`Patent 7,297,364
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER and JOSIAH C. COCKS,
`Administrative Patent Judges.
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`COCKS, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2013-00020 (SCM)
`Patent 7,297,364
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`I.
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`INTRODUCTION
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`A. Background
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`LKQ Corporation (“LKQ”) requests inter partes review of claims 1-24 of
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`US Patent 7,297,364(“‟364 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311 et
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`seq.1 The Patent Owner, Clearlamp, LLC (“Clearlamp”), filed a Preliminary
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`Response in opposition to LKQ‟s request.2 We have jurisdiction under 35 U.S.C.
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`§ 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides as follows:
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`THRESHOLD -- The Director may not authorize an inter partes review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
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`B. The ‟364 Patent
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`The ‟364 Patent relates to the refurbishing of lamp surfaces of a vehicle so
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`as to remove surface wear and scratches. (‟364 Patent col. 1, ll. 8-12.) The ‟364
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`Patent includes twenty-four claims. Claims 1 and 13 are independent claims.
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`Claim 1 is reproduced below (id. at col. 4, ll. 33-45):
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`
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`A method for refurbishing a lamp surface of a lamp
`1.
`having surface damage, the method comprising the steps of:
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`
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`removing the lamp from a motor vehicle;
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`
`1
`See LKQ‟s “Petition for Inter Partes Review of U.S. Patent No. 7,297,364”
`filed October 17, 2012 (“Pet.”) (Paper 1).
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` 2
`
`See Clearlamp‟s “Patent Owner Clearlamp, LLC‟s Preliminary Response”
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`filed January 22, 2013 (“Prelim. Resp.”) (Paper 14).
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`2
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`removing an original clear coat finish from the lamp
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`surface of the lamp;
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`evening the lamp surface;
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`grinding swirls and scratches out of the lamp surface;
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`buffing the lamp surface;
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`cleaning the lamp surface;
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`spraying a replacement clear coating material over the
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`lamp surface; and
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`curing the replacement clear coat material.
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`Schrader challenges the patentability of claims 1-24 on the basis of the
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`C. Involved Prior Art
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`following prior art:
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`Patent Documents
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`US 2005/0208210 (“Kuta”)
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`September 22, 2005
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`US 6,106,648 (“Butt”)
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`August 22, 2000
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`US 4,497,755 (“Korsyn”)
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`February 5, 1985
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`US 7,163,446 (“Cole”)
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`January 16, 2007
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`Ex. 1002
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`Ex. 1003
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`Ex. 1006
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`Ex. 1008
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`Non-Patent Documents
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`Forum posts from Eastwood ShopTalk Web site3 (“Eastwood”) Ex. 1004
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`3
`“http://forum.eastwood.com/showtread.php?118-Plastic-headlight-re-
`sealing&s=d3d5c104c4068d77bcc48e2e5ad4922, last accessed September 17,
`2012.” (Pet. iii.)
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`3
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`IPR2013-00020 (SCM)
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`Forum postings from SHOForum Web site4 (“SHO”)
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`Forum postings from Autopia Web site5 (“Autopia”)
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`Ex. 1005
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`Ex. 1007
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`LKQ asserts the following grounds of unpatentability:
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`D. The Asserted Grounds
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Butt.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Eastwood.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and SHO.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Korsyn.
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`
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuta and Autopia.
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`
`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Cole and Butt.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Cole and Eastwood.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Cole and SHO.
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`4
`“http://www.shoforum.com/showthread.php?t=38051, last accessed
`September 17, 2012.” (Id.)
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` 5
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`“http://www.autopia.org/forum/car-detailing/56737-another-plastic-
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`headlight-restoration.html, last accessed September 17, 2012.” (Id.)
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`4
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`IPR2013-00020 (SCM)
`Patent 7,297,364
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`9.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Cole and Korsyn.
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`10. Claims 1-3, 5-17, 23, and 24 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Cole and Autopia.
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`11. Claims 1-3, 5-8, 13-17, and 24 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Autopia and “admitted prior
`art.” (See Pet., 3-4.)
`
`
`II. ANALYSIS
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`A. Claim Construction
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`
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`The Board construes a claim in an inter partes review using the “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48766 (Aug. 14, 2012). There is a “heavy presumption” that a claim
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`term is given its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
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`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Indeed, the ordinary and customary
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`meaning usually applies unless an inventor has acted as her or her own
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`lexicographer and has set forth a special meaning for a claim term. Multiform
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`Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
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`Furthermore, in some cases, the ordinary meaning of claim language to one of
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`ordinary skill in the art is readily apparent even to lay judges such that claim
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`construction “involves little more than the application of the widely accepted
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`meaning of commonly understood words.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1314 (Fed. Cir. 2005) (en banc).
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`IPR2013-00020 (SCM)
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`Here, the inventors of the ‟364 Patent have not acted as their own
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`lexicographers. Neither has the presumption that the ordinary and accustomed
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`meaning of claim terms been overcome. The involved claim terms are not
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`ambiguous or obscure and would have been commonly understood to a person of
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`ordinary skill in the art. There is also no dispute between LKQ and Clearlamp in
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`connection with the meaning of any claim term. Accordingly, for purposes of this
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`decision, we construe all terms of claims 1-24 as having their ordinary and
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`customary meaning as would be understood by one with ordinary skill in the art.
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`B. Grounds of Unpatentability
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`LKQ proposes eleven grounds of unpatentability of the claims of the ‟364
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`Patent. Claims 1 and 13 are independent claims. Each of those claims is drawn to
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`a method of refurbishing a damaged lamp surface. Claims 2-12 ultimately depend
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`from claim 1 and claims 14-24 ultimately depend from claim 13. We evaluate first
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`the ground asserted for claims 1-24 under 35 U.S.C. § 103(a) based on the
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`teachings of Kuta and Butt.
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`i. Kuta and Butt
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`Kuta discloses a “Headlight lens resurfacing apparatus and method” and
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`describes an inventive process of refinishing or refurbishing the exterior surface of
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`the lens. (Kuta, Title; Abstract.) LKQ contends that Kuta accounts for all of the
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`features required by claims 1-24 with the exception of the step in claims 1 and 13
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`of “removing the lamp from a motor vehicle.” (Pet. 16-32.) Clearlamp does not
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`challenge that contention. In reviewing the disclosure of Kuta, we do not discern
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`that the contention is incorrect. To make up for the deficiency in Kuta with respect
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`to the above-noted step, LKQ relies on the teachings of Butt. (Id. at 16-17.)
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`Butt discloses a method of rebuilding a damaged lens of a vehicle lamp.
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`(Butt Abstract.) LKQ‟s explanation in applying the teachings of Butt to Kuta is
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`reproduced below (Id. at 16-17):
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`Kuta does not disclose removing a lamp from a motor vehicle.
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`However, removing lamps from motor vehicles to refurbish or
`otherwise refinish was well known in the art, and thus would have
`been obvious to a person of ordinary skill in the art.
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`For example, Butt discloses “it is generally more convenient to
`remove the lamp or lighting unit from the vehicle and to remove the
`damaged lens from the housing to which it is connected.” (Butt, Ex.
`1003, col. 2, ll. 57-60). Butt‟s disclosure, which predates the filing of
`the „364 Patent by more than five years, reflects that a person of
`ordinary skill in the art would have been motivated to combine Butt
`with Kuta to result in this claim limitation.
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`LKQ‟s evaluation of the teachings of Butt is in accord with the plain
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`disclosure of Butt. In particular, Butt conveys that, while it is known in the art that
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`repair of a damaged lens may, in some cases, occur with the lamp containing the
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`lens left on the vehicle (Butt col. 2, ll. 53-57), in other cases, the lamp may be
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`removed from the vehicle as a matter of convenience (id. at col. 1, ll. 57-60). It is
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`thus clear from Butt‟s disclosure that one with ordinary skill in the art performing a
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`repair of the lamp surface or lens of a vehicle lamp, such as a headlamp, would
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`have recognized both removal and non-removal of the lamp as available options.
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`Based on Butt‟s teachings taken with those of Kuta, LKQ contends that claims 1-
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`24 of the ‟364 Patent are unpatentable.
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`Clearlamp disagrees with LKQ‟s unpatentability contention. According to
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`Clearlamp, Kuta “teaches away” from the invention claimed in the ‟364 Patent.
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`(E.g., Prelim. Resp. 2.) In connection with its teaching away argument, Clearlamp
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`directs the Board to the prosecution history of patent application 11/311,852 (the
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`“‟852 Application”), which became the ‟364 Patent. In an Office Action dated
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`January 12, 2007, the Examiner of the ‟852 Application stated that Kuta “teaches
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`away from the instantly claimed step of removing the lamp from the motor
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`vehicle.” (Prelim. Resp. 10; Ex. 1011, pp. 005-6.) The Examiner pointed to
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`paragraph 10 of Kuta as the basis for that statement. (Id.)
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`Kuta‟s paragraph 10 is reproduced below (Kuta p. 1, ¶ 10):
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`The present invention teaches an alternative to replacement that
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`is more cost effective, in that it does not require removal of worn
`lenses nor mounting of new ones. Thus, this approach saves both the
`cost of new lenses as well as the cost of labor for replacement. The
`present invention teaches an apparatus that is ideally suited to
`removing the outer damaged surface of an existing lens and a method
`for doing so. Therefore, the present invention method removes the
`abraded surface on a lens while it is still mounted on the vehicle, and
`restores optical clarity and light output to the level of new lenses.
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`Thus, Kuta‟s invention, in which a lens is repaired while the lamp containing
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`the lens remains mounted on a vehicle, incorporates what is characterized as a less
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`expensive “alternative” technique. It is clear that Kuta expresses a preference for
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`that alternative technique due to its cost saving benefit. However, it is also clear
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`that Kuta itself recognizes that the technique is simply an “alternative” to another
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`known technique in the art, i.e., first removing the lamp. Kuta does not convey
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`that the practice of removing a lamp for repair, even if a more expensive approach,
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`is without separate advantages, unassociated with cost, that would have been
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`appreciated by one of ordinary skill in the art.
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`Indeed, as discussed above, Butt is similarly directed to the art of repairing
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`surfaces of vehicle lamps and teaches that, in performing such repair, the act of
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`removing a lamp is understood as being “generally more convenient” than
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`maintaining the lamp on the vehicle. (Butt col.2, ll. 57-58.) Evaluating Kuta‟s
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`teachings alongside those of Butt, a person of ordinary skill in the art would have
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`recognized that there are only two available options with respect to a lamp‟s
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`mounting status as a part of a vehicle lamp repair process; (1) that the lamp is
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`removed before engaging in the repair, or (2) that the lamp remains mounted on the
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`vehicle. That Kuta prefers one approach, i.e., removing the lamp, over the other
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`known approach, i.e., not removing the lamp, does not establish, in our view, that a
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`skilled artisan would necessarily have been discouraged from selecting the other
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`known but non-preferred option. Furthermore, the prior art before us readily
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`conveys that there are recognized tradeoffs as between those two options, e.g., cost
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`benefit versus convenience. Selecting between two known options with
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`recognized tradeoffs therebetween does not suggest an innovative process, but
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`rather, one of ordinary skill and common sense. See KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 421 (2007). (“When there is a design need or market pressure to
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`solve a problem and there are a finite number of identified, predictable solutions, a
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`person of ordinary skill has good reason to pursue the known options within his or
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`her technical grasp. If this leads to the anticipated success, it is likely the product
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`not of innovation but of ordinary skill and common sense.”)
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` LKQ also supports its obviousness position in the form of the declaration
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`testimony of Francisco G. Yarde, testimony that was not before the Examiner of
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`the ‟852 Application. Mr. Yarde‟s declaration (Ex. 1009, “Yarde Decl.”) reflects
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`his familiarity with the art of refurbishing or repairing vehicle lamps and his
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`understanding of the level of ordinary skill in the art. (Yarde Decl. ¶¶ 1-13.) As
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`set forth in his testimony, Mr. Yarde recognizes that Kuta‟s disclosure of
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`refurbishing the lens of a vehicle lamp while the lamp remains mounted on the
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`vehicle is an alternative to another option, i.e., removing the lamp. (Id. at ¶¶ 9,
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`17.) We further observe that neither LKQ nor Clearlamp expresses that there are
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`any other options beyond either removal or non-removal.
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`9
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`Given Mr. Yarde‟s testimony and taking it along with the disclosures of
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`Kuta and Butt, we are of the opinion that a skilled artisan would not have viewed
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`Kuta as teaching away from removing a lamp for refurbishing so as to preclude
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`combining the teachings of Kuta with those of Butt. We have considered the
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`respective positions of Clearlamp and LKQ with respect to the obviousness of
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`claims 1-24 based on Kuta and Butt. For the foregoing reasons, we conclude that
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`LKQ has demonstrated a reasonable likelihood of prevailing on its obviousness
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`ground of unpatentability of Clearlamp‟s claims 1-24 based on the combined
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`teachings of those references.
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`ii. Kuta and Eastwood
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`LKQ alternatively contends that claims 1-24 of the ‟364 Patent would also
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`have been obvious in light of the combined teachings of Kuta and Eastwood. (Pet.
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`3.) In that regard, LKQ‟s again relies on Kuta as disclosing all the features of
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`claims 1-24 with the sole exception of the step of removing the lamp. To account
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`for that step, LKQ relies on disclosure in Eastwood. (Pet. 10-11; 17.)
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`Eastwood is a document characterized as a series of internet forum posts.
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`The content of the posts is directed toward “resealing” and “buffing” the headlight
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`of a vehicle. (E.g., Eastwood 1.) In a post dated February 18, 2005, and appearing
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`on page 6 of Eastwood, a forum poster with the moniker “Pontisteve” stated that
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`before beginning any re-sealing or buffing actions, “I took the headlights out of my
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`Mustang to do them, because I didn‟t want to risk any damage to the car.”
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`In light of the above-noted disclosure in Eastwood, LKQ contends that one
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`of ordinary skill in the art would have appreciated that removing a vehicle‟s
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`headlamp before attempting to refurbish it reduces the potential for damage to the
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`vehicle during the refurbishing operation. (Pet. 13.) We agree with LKQ‟s
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`contention. Eastwood reasonably conveys that the possibility of damaging a
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`vehicle when performing refurbishing work, e.g., resealing and buffing, on a lamp
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`is another factor that would have been evaluated by a person of ordinary skill in the
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`art. Taking the teachings of Kuta with those of Eastwood, it is evident that the
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`practices of removing a lamp or leaving it mounted on a vehicle are known and
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`viable options when seeking to refurbish the lamp, with recognized benefits
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`attributed to each practice. The record reflects that, in selecting between those
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`options, a skilled artisan would have weighed the benefits associated with
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`maintaining the lamp mounted on a vehicle, such as decreased cost, against the
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`benefits of first removing the lamp, such as reduced likelihood of vehicle damage.
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`Accordingly, for the foregoing reasons, we are persuaded that LKQ has a
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`reasonable likelihood of prevailing in its ground of unpatentability of claims 1-24
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`of the ‟364 Patent based on the combined teachings of Kuta and Eastwood.
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`iii. The Remaining Grounds of Unpatentability Involving Kuta
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`LKQ proposes grounds of unpatentability of claims 1-24 based on Kuta
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`taken with each of SHO, Korsyn, and Autopia. The teachings of those additional
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`references are stated to be “alternative[]” teachings of Butt and Eastwood, and are
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`likewise presented solely to account for the step of removing a vehicle lamp. (Pet.
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`18-21.) The proposed grounds of unpatentability involving Kuta and each of SHO,
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`Korsyn, and Autopia are redundant to those based on Kuta taken with each of Butt
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`and Easthom. We decline to authorize any of the grounds involving Kita taken
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`with SHO, Korsyn, or Autopia. See 37 C.F.R. § 42.108(a).
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`iv. The Grounds of Unpatentability Involving Cole
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`LKQ also proposes grounds of unpatentability of claims 1-3, 5-17, 23, and
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`24 based on the teachings of Cole taken with each of Butt, Eastwood, SHO,
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`Korsyn, and Autopia. Like Kuta, Cole is offered as disclosing all of the above-
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`noted claims save for the step of removing a vehicle lamp. Cole‟s teachings are
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`redundant to those of Kuta. Accordingly, we decline to authorize the proposed
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`grounds involving Cole.
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`iv. The Ground of Unpatentability Over Autopia and “admitted prior art”
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`LKQ also proposes a ground of unpatentability of claims 1-3, 5-8, 13-17,
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`and 24 based on the teachings of Autopia taken with “admitted prior art.” (Pet. 4.)
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`The alleged “admitted prior art” is stated to be found in the ‟364 Patent at column
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`4, lines 13-15 (id. at 48) and also at column 4, lines 14-19 (id. at 49.) The content
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`of those portions is urged by LKQ as accounting for the steps in claims 1 and 13
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`directed to spraying a replacement clear coat material on a lamp surface and curing
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`that material. (Pet. 48-49; 54-55.) LKQ alternatively contends that Autopia‟s
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`disclosure at page 3 setting forth the use of a “polish” called “PlastX,” also
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`accounts for the noted clear coating and associated steps. (Id.)
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`Clearlamp challenges LKQ‟s contention that the noted portions of the ‟364
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`Patent constitute “prior art.” (Prelim. Resp. 22-24.) Clearlamp also argues that
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`Autopia‟s disclosure of “PlastX” is insufficient to account for the clear coat
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`material spraying and curing requirements of the claims. (Id. at 21-22.)
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`In reviewing the disclosure of the ‟364 Patent at column 4, we do not find
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`sufficient support for LKQ‟s contention that the noted disclosure constitutes
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`admitted prior art. That disclosure simply describes a particular type of clear coat
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`material that the inventors of the ‟364 Patent believe is suitable for its invention.
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`LKQ does not explain adequately why that description constitutes an admission as
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`to prior art, much less an admission as to the particular spraying and curing acts
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`involving a replacement clear coat material as required by the claims. With respect
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`to Autopia‟s disclosure, LKQ does not explain sufficiently why “PlastX” is a clear
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`coat material. Indeed, it is not apparent on this record just what “PlastX” is. LKQ
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`also does not explain why Autopia‟s disclosure involving the use of “PlastX”
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`accounts for the spraying and curing actions required by claims 1 and 13.
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`Accordingly, LKQ has not established that it is likely to prevail on its
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`ground of unpatentability based on Autopia and “admitted prior art.” We decline
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`to institute inter partes review as to that ground. See 37 C.F.R. § 42.108(c).
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`III. SUMMARY
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`We grant the petition as to the following grounds:
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Kuta and Butt.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Kuta and Eastwood.
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`We deny the petition as to the following grounds because they are
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`redundant to the above-noted grounds:
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`
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Kuta and SHO.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Kuta and Korsyn.
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`Claims 1-24 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Kuta and Autopia.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Cole and Butt.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Cole and Eastwood.
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`13
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`IPR2013-00020 (SCM)
`Patent 7,297,364
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`
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Cole and SHO.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Cole and Korsyn.
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`Claims 1-3, 5-17, 23, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Cole and Autopia.
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`
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`We deny the petition as to the following ground because it is not
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`persuasive:
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`Claims 1-3, 5-8, 13-17, and 24 are unpatentable under 35
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`U.S.C. § 103(a) as obvious over Autopia and “admitted prior
`art.”
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`IV. ORDERS
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`After due consideration of the record before us, and for the forgoing reasons
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`it is:
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`ORDERED that Schrader‟s Petition is granted as to the
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`grounds of unpatentability of claims 1-24 as unpatentable under 35
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`U.S.C§ 103(a) based on; (1) Kuta and But, and (2) Kuta and Easthom;
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`FURTHERED ORDERED that the Petition is denied as to all other
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`grounds as they pertain to claims 1-24;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
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`C.F.R. § 42.4, notice is hereby given of the institution of a trial;
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`FURTHER ORDERED that the trial is limited solely to the grounds
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`identified above and no other grounds are authorized; and
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`FURTHER ORDERED that an initial conference call with the Board
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`is scheduled for 1:00 PM Eastern Time on 01 May 2013. The parties are
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`14
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`IPR2013-00020 (SCM)
`Patent 7,297,364
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`
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`directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48765-66 (Aug. 14, 2012), for guidance in preparing for the initial
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`conference call, and should come prepared to discuss any proposed changes
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`to the Scheduling Order entered herewith and any motions the parties
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`anticipate filing during the trial.
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`15
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`IPR2013-00020 (SCM)
`Patent 7,297,364
`
`For PETITIONER:
`
`Alan L. Barry
`Heather A. Boice
`K&L GATES LLP
`alan.barry@klgates.com
`heather.boice@klgates.com
`
`For PATENT OWNER
`
`Matthew L. Cutler
`Bryan K. Wheelock
`Douglas A. Robinson
`HARNESS, DICKEY & PIERCE, PLC
`mcutler@hdp.com
`bwheelock@hdp.com
`drobinson@hdp.com
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`lb
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`16
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