UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LKQ CORPORATION
`Petitioner
`
`V.
`
`CLEARLAMP, LLC
`Patent Owner
`
`Case IPR2013—00020 (SCM)
`
`Patent 7,297,364
`
`PATENT OWNER’S RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LKQ CORPORATION
`Petitioner
`
`V.
`
`CLEARLAMP, LLC
`Patent Owner
`
`Case IPR2013—00020 (SCM)
`
`Patent 7,297,364
`
`PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
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`IPRZO 1 25-00020
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`US. Patent 7,297,364
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`STATEMENT OF MATERIAL FACTS IN DISPUTE ............................................ 1
`
`I.
`
`INTRODUCTION ..... . ..................................................................................... 2
`
`II.
`
`ARGUMENT ................................................................................................... 7
`
`A.
`
`Grounds of Unpatentabiiity at Issue....................‘ ................................. 7
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`1.
`
`Obviousness over the combination of Kata and Butt of
`
`claims 1—24 .................................................................................. 7
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`2.
`
`Obviousness over the combination of Kuta and Eastwood of
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`ciaims 1—24.......' ........................................................................... 8
`
`B.
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`Art Cited in The E’etitions ...................................................................... 8
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`1.
`
`Kuta ............................................................................................. 8
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`2..
`
`3.
`
`Butt ............................................................................................ 1 1
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`Eastwood ................................................................................... 11
`
`C.
`
`Construction of Claim Terms .............................................................. 12
`
`1.
`
`Removing an Original Ckear Coat Finish From the Lamp
`
`Surface of the Lamp .................................................................. 12
`
`2.
`
`3.
`
`Evening the Lamp Surface ........................................................ 15
`
`Statically Neutralizing Debn's ................................................... 17
`
`
`
`D.
`
`Neither a Combination of Kuta and Butt, Nor a Combination of
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`IPR2013-00020
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`U.S. Patent 7,297,364
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`Kuta and Eastwood, Render the Invention Claimed in Original
`
`Claims 1—24 Obvious ........................................................................... 20
`
`1.
`
`Claims 1—24 are Not Obvious Because Kuta Does Not
`
`Disclose Several Limitations of the Claims .............................. 20
`
`2.
`
`Claims 13—22 and 24 are Not Obvious Because Kata Does
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`Not Disclose Several Limitations of the Ciaims ....................... 31
`
`3.
`
`Claims 11 and 15 are Not Obvious Because Kata Does Not
`
`Disclose Applying Infrared Radiation to the Lamp Surface ....33
`
`4.
`
`Ciaims i2 and 16 are Not Obvious Because Kuta Does Not
`
`Disclose Heating the Lamp in an Oven
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`....... 36
`
`E.
`
`Secondary Considerations of NonuObviousness Support the
`
`Conclusion that Claims 1-24 Are Patentable ...................................... 37
`
`1.
`
`2.
`
`Copying By Others .................................................................... 38
`
`Commercial Success ................................................................. 46
`
`III.
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`CONCLUSION .............................................................................................. 48
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
`CASES
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`IPR2013—00020
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`U.S. Patent 7,297,364
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`Page(s)
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp,
`448 F.3d 1324 (Fed. Cir. 2006) ....................................................................................... 15
`
`CAE Screenplates Inc. v. Heinrich Fiecller GmbI-I,
`224 F.3d 1308 (Fed. Cir. 2000) ....................................................................................... 15
`
`Interactive Gift Exp, Inc. v. Compuserve, Inc,
`257 F.3d 1323 (Fed. Cir. 2001) ................................................................................. 17, 18
`
`Lora! Fairchild Corp. 12. Sony Corp,
`
`Merck & Co. v. Teva Pharm. USA, Inc,
`
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................................46
`
`Ring Plus, Inc. v. Cingular Wireless Corp,
`614 F.3d 1354 (Fed. Cir. 2010) ....................................................................................... 18
`
`Specialty Composites v. Cabot Corp,
`845 F.2d 981 (Fed. Cir. 1988).......................................................................................... 38
`
`Spectralytics, Inc. v. Cordis Corp,
`649 F.3d 1336 (Fed. Cir. 2011) .......................................................................................47
`
`Srratoflex, Inc. v. Aeroqaip Corp,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................................37
`
`Transocean Oflshore Deepwater Drilling, Inc. v. Maersk Contractors USA,
`Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ...........................................................................37, 45, 46
`
`Windsurfing Int'l, Inc. v. AMF, Inc,
`782 F.2d 995 (Fed. Cir. 1986), cert. denied, 477 U.S. 905 (1986) ......................... 38
`
`STATUTES
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`35 U.S.C. § 102 ...........................................................................................................................5
`
`iii
`
`
`
`OTHER AUTHORITIES
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`37 C.F.R. § 42.2301) ......................................................................................................................... 1
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`IPR20 E 300020
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`US. Patent 7,297,364
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`iv
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`US. Patent 7,297,364
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit a statement of material facts in its petition for inter
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`partes review. Accordingly, no response is due pursuant to 37 C.F.R. §42.23(a),
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`and no facts are admitted.
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`
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`IPRZOI 3-00020
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`US. Patent 7,297,364
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`I.
`
`INTRODECTION
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`The ‘364 patent is directed to methods for refurbishing lamp surfaces for
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`vehicle headlights or taillights. EXlOOl at 1:8—9. More particularly, the invention
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`relates to methods of removing surface wear and scratches to return the lamp
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`surface to as near as possible to its original optical quality. Id. at 1:9—12. To that
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`end, “[o]nce the original clear coat finish 12 is removed and the damage 14 is
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`removed from the lamp surface 10, subsequent steps may be taken to prepare the
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`lamp surface 10 for restoring it to its original equipment condition.” Id. at 3: 15—19.
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`As such, when each step of the patented process has been completed, the lamp
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`surface and replacement clear coat surface are in a condition for sale as a
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`refurbished lamp having optical characteristics which are very similar to those of
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`the original equipment lamp assembly. Id. at 4:19—23.
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`To achieve this “original equipment” quality, the ‘364 patent discloses and
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`claims a process, with multiple steps, that have explicit requirements and the
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`process builds upon itself to result in an end product lamp that is of such high
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`quality, it can be used in the original equipment manufacturer (“DEM”)
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`refurbished parts market (that is, for example, car manufacturers and insurance
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`companies will accept the parts as replacements for brand new parts). The process
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`described in the prior art is an inferior process, resulting in end products that
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`cannot be used in this GEM market. This point is proven by the several, and
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`IPRZO i 3-00020
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`U.S. Patent 7,297,364
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`significant, differences between the claimed processes and the prior art process.
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`These differences cannot be giossed over, as Petitioner LKQ Corporation (“LKQ”)
`
`attempts to do, and they make clear that a primafacie case of obviousness has not
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`been established with respect to any claim of the ‘364 patent. As such, each of the
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`24 claims of the ‘364 patent Should be confirmed as patenta‘ole in this proceeding.
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`More specifically, the Patent Trial and Appeal Board (the “Board”) has
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`granted review of the ‘364 Patent based on two grounds:
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`1. Obviousness of claims 1—24 over the combination of Kuta and Butt; and
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`2. Obviousness of cia'irns 1—24 over the combination of Kuta and Eastwood.
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`In coming to its conclusion that there is a reasonable iikelihood that each of
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`claims 1~24 of the ‘364 patent is unpatentable, the Board relied upon the
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`representation of Petitioner that “Kuta accounts for ail of the features required by
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`pclairns 1—24 with the exception of the step, in each of the 24 challenged claims, of
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`‘removing the iamp from a motor vehicle.m Paper 18, at 6. This narrative from
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`Petitioner, which forms the sole basis for its Petition, ignores the above—referenced,
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`significant distinctions between the process disclosed in Kuta and the claimed
`
`method, as discussed below. Such an over—simplification of the issues ignores the
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`rigorous analysis required of any obviousness determination.
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`In its Preiirninary Patent Owner Response, Patent Owner, Clearlarnp, LLC
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`(“Clearlarnp”) relied upon the findings of the Examiner in the original prosecution
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`IPR2013—00020
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`US. Patent 7,297,364
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`of the ‘364 patent, wherein Kuta was specifically considered and the claims of the
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`‘364 patent deemed patenta‘ole. To be clear, however, Clearlarnp does not, and
`never has, conceded that Kuta contains all the features of the ‘364 patent claims,
`
`but for the removal of the lamp from the motor vehicle - it does not. Kata is
`
`directed to a process that may very well create headlamps that are acceptable in an
`
`individual consumer retail market, but the process has significant shortcomings
`
`that make it unsuitable for the OEM refurbished parts market. While, with the lens
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`of perfect hindsight, those differences may seem small, in context, these
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`purportedly small differences add up to a significant and material transformation in
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`the quality of the refurbished lamp.
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`lmportantly, while Kata fails to disclose numerous of the claimed
`
`limitations, the Petition does not set forth competent evidence to fill those holes.
`
`Petitioner’s expert witness, Mr. Franc Yarde, only opines on the issue of whether
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`the prior art discloses removing a headlamp from a vehicle and whether Kuta
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`“teaches away” from the claimed combination, and nothing more. For example,
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`Claim 15 requires that the curing step include the step of applying infrared
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`radiation to the lamp surface. Petitioner’s purported evidence of prior art
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`disclosing this limitation is that “[a] person of skill in the art would clearly have
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`contemplated using the admitted prior art MAGNI product for the claimed
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`replacement coat.” Petition at 29. At threshold, the argument that MAGNI is
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`
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`IPR2013~00020
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`U.S. Fatent 7,297,364
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`admitted prior art has already been denied by the Board — it is not “admitted prior
`
`art.” At the time of the filing of the application that led to the ‘364 patent, the
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`MAGNl product was known to be useful on metals (EX1014 at 010), not vehicle
`
`lamps, and Petitioner submitted no evidence that a MAGNI-«branded product had
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`ever been used in the step of “spraying a replacement clear coating material over
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`the lamp surface.” To that end, when asked to provide an exhaustive list of the
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`different types of clear coatings that are available for vehicle headlamps, Mr.
`
`Yarde did not list the MAGNI coating. In short, MAGNI 700 does not fit under
`
`any subsection of 35 U.S.C. §102 and is not “admitted prior art.” And, importantly
`
`to the validity of Claim 15, Mr. Yarde did not provide any opinion regarding
`
`whether one of skill in the art would have contemplated using the “admitted prior
`
`art” MAGNI product for the claimed replacement clear coat. Thus, ?etitioner has
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`no evidence that could possibly be used to render Ciaim 15 unpatentabie. There
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`are other examples of how the Petition provides no evidence regarding key claim
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`limitations of the challenged claims — not even Petitioner’s expert declaring that
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`such limitations were within the knowledge of one of skill in the art.
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`Lastly, there is no more poignant evidence of the differences in quality
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`between the claimed process and the prior art process than the fact that LKQ,
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`which bills itself as the nation’s largest supplier of recycled, aftermarket, and
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`reconditioned vehicle parts and a “frontrunner” in these industries since its
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`IPR2013~00020
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`US. Patent 7,297,364
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`founding in 1998,1 learned the process of creating DEM—quality lamps from the
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`inventors of the ‘364 patent. Indeed, LKQ originally harvested lamp cores from its
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`network of affiiiates and sent the cores to the ‘364 patent inventors for
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`refurbishing. See Section {1.13.1 ., infra. LKQ, though, had grander pians to make
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`more money than it couid through a business relationship with the “364 patent
`
`inventors. Over the course of numerous meetings between LKQ’s senior
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`management and the inventors of the ‘364 patent, LKQ learned the details of the
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`patented process and then began refurbishing the lamps itself. Rarely is such direct
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`evidence of copying, which is objective evidence of non-«obvious, found. The
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`commercial success of LKQ’S sales since it took over refurbishing operations from
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`the inventors of the ‘364 patent is further evidence of non—obviousness, as
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`discussed below.
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`In short, the Petition fails to establish a prima facie case of non—obviousness
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`because there are several limitations of the challenged claims not disclosed in the
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`prior art. Presumably because it does not exist, Petitioner failed to set forth any
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`evidence relating to several limitations — not even expert testimony. Lastly, even if
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`it conid be said that a primafacie case was established, strong secondary
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`considerations of non-obviousness dictate that the challenged claims of the ’364
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`patent are patentable.
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`’ http://www.lchorp.com/us/en/about—us.aspx
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`IPR2013—00020
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`US. Patent 7,297,364
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`II.
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`ARGUMENT
`
`A.
`
`GROUNDS 0F UNPATENTABILITY AT ISSUE
`
`1.
`
`0b Viousness over the combination ofKuta and Butt of claims 1-
`24
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`Regarding the first ground of unpatentability, from the Board’s Decision
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`Instituting this Inter Porter Review (“Decision”), Patent Owner responds that Kata
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`is directed to an individual customer retaii market, wherein headlamps are repaired
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`to avoid the need to purchase a new headlamp, but such repair is insufficient to
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`restore a vehicle iamp to original equipment condition. That is the reason why
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`Kata teaches the more efficient and economicai step of leaving a headiamp in site
`
`in a vehicle when repairing. By sharp contrast, the ‘364 patent, and its claimed
`
`processes, are directed to the OEM refurbished parts market, wherein headlamps
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`must he refurbished to a higher, “originai equipment condition.” There are several
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`distinct differences between the claimed processes of the ‘364 patent and that
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`disciosed in the prior art, including: (a) “removing the iamp from the motor
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`vehicle”; (b) “removing an original clear coat finish”; (c) “evening the lamp
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`surface”; ((1) “statically neutralizing debris on the lamp surface”; (e) “Spraying a
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`replacement clear coating materiai over the lamp surface”; (i) “applying infrared
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`radiation to the iamp surface”; and (g) “heating the iamp in an oven.” See Section
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`II.D.1-w4, infra. In short, Kuta cannot form the basis of a prima facie case of
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`IPR201 3w00020
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`U.S. Patent 7,297,364
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`obviousness to render challenged claims 1—24 unpatentable. Butt, a reference that
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`only teaches that a headlamp can be removed from a vehicle, but otherwise a
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`materially different type of repair to a vehicle lamp, does not fill any of the above—
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`referenced holes in the Kuta process. As such, this ground of unpatentability must
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`be denied.
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`2.
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`0b Viousness over the combination ofKuta and Eastwood of
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`claims 1-24
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`In the Petition, as well as the Decision, Eastwood is used as a second
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`reference that shows that a headlamp can be removed from a vehicle before it is
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`repaired. As discussed immediately above, Kuta does not, contrary to Petitioner’s
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`arguments, disclose each of the other steps of the claimed processes. Like Butt,
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`Eastwood does not fill the holes in the Kuta process and, as such, this second
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`ground of unpatentability must also be denied because Petitioner has failed to
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`establish a prima facie case of obviousness.
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`B.
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`ART CITED IN THE PETITIONS
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`I. Kata
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`Kuta discloses a process for refinishing an exterior automotive lens, in situ,
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`having a damaged exterior surface. EXIOOZ at Abstract. Kuta is also directed to a
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`specific apparatus singly adapted for such resurfacing. Ex. 1002 at ‘i[0002. As
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`shown in Fig. l of Kuta, reproduced below, the process and apparatus disclosed are
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`directed to the consumer retail market — an individual car’s headlamps versus
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`
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`headlamps that can be resold in an OEM refurbished parts market. EX2004, Decl.
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`H. Beii, at M 5-6.
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`IPR2013-00020
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`US. Patent 7,297,364
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`
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`FIG. 1 of Kuta
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`The process described in Kuta is directed to the lower quaiity consumer
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`retail market because there are severai steps described therein that prevent the
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`process from resulting in a lamp that is restored to an “originai equipment”
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`condition. More specificaiiy, the step—by—step process disclosed by Kuta is set
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`forth below:
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`First, a fine sanding disc, of approximately 320 grit, is placed into contact
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`with a headlamp lens and moved continuously, using an osciiiating motion, over
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`the exterior surface, whiie flushing the surface with water to prevent the exterior
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`surface from melting due to friction heat buildup from sanding. EX1002 at £][0023.
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`IPRZO l 3—00020
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`U.S. Patent 7,297,364
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`The sanding process is stopped when the flushing water turns clear. Id. The water
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`flush is described as comprising a bucket with a nozzle and spigot. Id. at $0029.
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`Second, the same motion is repeated using an ultra~fine, 600 grit sanding
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`disc, with water flush, and the sanding is stopped when the lens appears clear. Id.
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`Kuta teaches that this step takes about 10 minutes. Id. at ‘flOOZS.
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`- Third, an ultra~ultra fine 1500 grit sanding pad is moved manually (126., by
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`hand) and continuously over the exterior surface of the lens nntil limited access
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`corners of the lens, Where the sanding disc is unable to reach, become clear. Id. at
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`‘110023. This is again done while flushing the exterior surface with water. Id. Kuta
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`teaches that “[t1his step takes about 5 minutes, and is used mostly in corners 14
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`which are blended into the entire surface 12 of lens 10.” Id. at (£10025 (emphasis
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`added).
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`Fourth, when the lens is “satisfactory and quite clear,” it is buffed to achieve
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`a high gloss. Id. at 310023. Kuta teaches that this step takes about 10 to 15
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`minutes. Id. at ‘}[0025.
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`Fifth, the new surface is polished using a polishing pad and using,
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`preferably, a high purity aluminum oxide polishing compound. Id. at ‘HOOZS.
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`Sixth, a final poiish is applied using a mapped poromeric pad. Id. The final
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`polishing step is performed until all fine scratches are removed. Id.
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`10
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`Lastly, the exterior surface is coated with a transparent, ultravioiet,
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`hardenabie coating materiai. Id. at (£0023. This coating material is then hardened
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`U.S. Patent 7,297,364
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`by exposure to an ultraviolet light source. Id.
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`2. Butt
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`Butt describes a method for partialiy or completely rebuilding a damaged
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`vehicle lens. EX1003 at Abstract. To achieve thisrebuilding, a patch of flat,
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`thermoplastic material is provided. Id. Butt is cited in the Petition and Decision
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`solely for the disclosure that “it is generally more convenient to remove the lamp
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`or lighting unit from the vehicle and to remove the damaged lens from the housing
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`to which it is connected.” EX1003 at 2:57~60. Other than the step of removing the
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`lamp from a motor vehicle, there is no disclosure in Butt regarding any of the other
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`steps of the challenged claims, and LKQ does not claim that there is any such
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`disclosure.
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`3. Eastwood
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`Eastwood is a document that purports to be a series of internet forum posts
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`on the topic of headlight rescaling and buffing from anonymous users of the forum.
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`The first post, by “Pontisteve,” seeks advice regarding the reusealing of headlight
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`assemblies. EX1004 at 001. Subsequent posts discuss the “buffing out” of
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`headiamps, inciuding a process developed by “Pontisteve.” See, e.g., i’ost #11,
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`EX1004 at 006. Among the reported experiences of “Pontisteve” is that, when he
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`used nltra-fine (1000 grit) sandpaper, it took “a very, very long time” to remove
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`damage from a headlamp. Id. Further, “Pontisteve” pointed out that despite
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`spending that “very, very long time,” the 1000 grit levei “didn’t go deep enough
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`and some of the pitting was still there.” Id. “Pontisteve” also stated that he took
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`his headlights out of his Mustang “to do them” (the excerpt relied upon by the
`Petition and Decision). Id. Importantly, however, “Pontisteve” went on to state
`that “If I were making a business out of this, I would look at doing it the autosol
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`way with a little 4” round pad. It wouldn ’t get the edges too good, and is hard to
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`get around the alignment dowels with, but you wouldn ’t have to pull the lights. I
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`just seriously doubt they would last real long.” Id. (emphasis added). Lastly,
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`another poster, “Dr. Scampy,” remarked about the relationship between the time '
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`spent refinishing a headlamp and the longevity of the results of the refinishing —
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`shorter work time (1015 minutes) results in shorter longevity (approximately 6
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`months). EX1004 at 004.
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`C.
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`CONSTRUCTION or CLAIM TERMS
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`1. Removing an Original Clear Coat Finish From the lamp Surface
`of the lump
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`Each claim of the ‘364 patent includes the limitation of “removing an
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`original clear coat finish from the lamp surface of the lamp.” While this limitation
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`should be given its ordinary and customary meaning — that is, the original clear
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`coat finish is removed —‘ the Petition seemingly seeks to read into the claims a
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`12
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`IPR2013—00020
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`U.S. Patent 7,297,364
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`limitation that the original clear coat finish is not removed, but only partially
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`removed. To that end, Kuta does not disclose removing the original clear coat
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`finish, but rather only discloses removing some, or maybe most, of the original
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`clear coat finish. Thus, while Petitioner states that the terms of the ‘364 patent
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`should be given their ordinary and customary meaning (Petition at 14), in this
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`instance, Petitioner’s unpatentability contentions require an unreasonable
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`construction. That is, it would be unreasonable to equate the scope of the
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`“removing an original clear coat finish from the lamp surface of the lamp”
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`limitation with “partially removing an original clear coat finish from the lamp
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`surface of the lamp.”
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`Indeed, such an interpretation would be contrary to the claim language itself,
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`wherein neither the term “partially,” nor any similar term, modifies the “removing”
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`limitation. Further, such an interpretation would be contrary to the entirety of the
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`disclosure of the ‘364 patent. To that end, nowhere does the ‘364 patent suggest
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`that the original clear coat may be only partially removed. To the contrary, for
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`example, the ‘364 patent does teach that the original clear coat is “fully removed
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`from the larnp surface.” EXIOOI at 3:10—13. See also EXIOOl at 2:58—3:19.
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`The attached declaration of Mr. Katsamberis, an expert in the coatings
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`industry, supports this interpretation. EX2007. ?er Mr. Katsarnberis, the ‘364
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`patent teaches the restoration of a headlamp to its original equipment condition.
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`13
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`IPRZO] 3-00020
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`US. Patent 7,297,364
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`Id. at ‘H 27; See, e.g., EXlOOl at 3:15—19 (Once the original clear coat finish 12 is
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`removed and the damage 14 is removed from the lamp surface 10, subsequent
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`steps may be taken to prepare the lamp surface 10 for restoring it to its original
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`equipment condition); 4:19—23 (“Once cured, the lamp surface 10 and replacement
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`Clear coat 58 are in a condition for sale as a refurbished lamp having optical
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`characteristics which are very similar to those of the original equipment lamp
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`assembly”).
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`If the original clear coat is not fully removed from the lamp surface, it is not
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`possible to achieve the required original equipment condition. EX200’7, at ‘lel 23-
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`29. This is because failure to remove the original clear coat, among other
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`contaminants, will interfere with the adherence of the clear coating to the lens. Id.
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`at ‘j[ 23. Without this adherence, the original clear coat will delaminate, or flake,
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`off the lens. Id. Further, the old coating will create weak points to the new
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`coating, making the coating more susceptible to chemical attack and loss of
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`adhesion.
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`Id. Additionally, old coating particles will cause optical distortion,
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`which is not compatible with original equipment conditions. Id. at ‘l[ 24. This
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`situation is analogous to rempainting a wooden board without removing the original
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`paint coating. The flaking and peeling of the original paint coating would damage
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`the integrity of the new paint layer.
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`14
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`IPR2013—00020
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`U.S. Patent 7,297,364
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`In short, the limitation “removing the original clear coat finish from the lamp
`
`surface of the lamp” should be given its ordinary and customary meaning and
`
`shouid not be broadened to only require partial removal of the original clear coat
`
`finish. EX2004, at ‘][ 31.
`
`2. Evening the Lamp Surface
`
`Each claim of the ‘364 patent requires the step of “evening the lamp
`
`surface.” This limitation should be construed to mean: “smoothing out the lamp
`
`surface to minimize any troughs created through the removal of the damage.” This
`
`construction is supported by the entirety of the intrinsic evidence, including the
`
`claims and written description.
`
`With regard to the ciaims of the ‘364 patent, Petitioner asserts in its ciaim
`
`chart that each of the steps of “removing the original ciear coat”; “evening the
`
`lamp surface”; and “grinding the swirls and scratches out of the lamp surface”
`
`should be given the same meaning in that each are met by the “sanding process”
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`disclosed in paragraphs 23 and 25 of the Kuta reference._ Petitioner does not
`
`provide a proposed construction for any of the above steps, but different terms in a
`
`ciaim should be given different meanings. Applied Med. Res. Corp. v. U. S.
`
`Surgical Corp, 448 F.3d 1324, 1333 11.3 (Fed. Cir. 2006) (“[T]he use of two terms
`
`in a ciaim requires that they connote different meanings. .
`
`. ."); CAE Screenplates
`
`Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the
`
`
`
`1PR2013—00020
`
`US. Patent 7,297,364
`
`absence of evidence to the contrary, we must presume that the use of these
`
`different terms in the claims connotes different meanings”).
`
`Turning to the written description of the ‘364 patent, this difference in
`
`meaning between “grinding” and “evening” becomes clear. To that end, the
`
`specification makes ciear that “evening the lamp surface” means “smoothing out
`
`the lamp surface to minimize any troughs created through the removal of the
`
`damage”:
`
`After the damage 1.4 has been removed, the lamp surface 20
`10 is evened at 30. Referring back to FIG. 5, the evening of
`the lamp amines: 10 includes the step of grinding the lamp
`surface 10 with a sandpaper having a grit ofapproximately
`320, at 32. The lamp surface 10 is smoothed out as much as
`possible so that,
`ii” any troughs are created through the 25
`removal of the damage ‘14, they are minimized. The resulting
`iamp surface 10 wilt be substantially similar to the contour
`of the original iainp surface 10.
`
`EX1001 at 3:20~28.
`
`As described in the above excerpt from the ‘364 patent specification, the
`
`evening step includes “grinding,” but is intended to set forth an additional aspect of
`
`the claimed process —— smoothing out the troughs created in the previous step(s) of
`
`the process. If the term was intended to mean just grinding, it would be
`
`superfluous to the “grinding” step already in the claim. Further, the importance of
`
`this step to the overall goal of obtaining a lamp suitable for the OEM refurbished
`
`parts market is emphasized at the end of the excerpt.
`
`i6
`
`
`
`1PR2013—00020
`
`U.S. Patent 7,297,364
`
`Attached as Exhibit 2004 is the declaration of A. Harvey Bell, an expert in
`
`the field of vehicle design, including iamp integration. Mr. Beil confirms the
`
`above interpretation, opining that, in light of the ‘364 patent claims and
`
`specification, one of skili in the art would understand the limitation “evening the
`
`lamp surface” to be more particular than mere grinding or sanding. Ex. 2004 at TH
`
`_ 3263. The excerpt from the ‘364 patent specification, which describes the
`
`evening step, explicitly describes to one of skill in the art that the evening step
`
`requires smoothing out the lamp surface to minimize any troughs created through
`
`the removal of the damage. Id.
`
`In short, the entirety of the intrinsic evidence supports a claim construction
`
`that “evening the iamp surface” means “smoothing out the iamp surface to
`
`minimize any troughs created through the removal of the damage.”
`
`3.
`
`Statically Neutralizing Debris
`
`independent 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.” In
`
`the sequence of steps recited in claim 13, the “statically neutralizing debris” step
`
`falls between the “buffing” and “spraying” steps. In general, unless the steps of a
`
`method ciaim recite an order, the steps are not ordinariiy construed to require one.
`
`Interactive Gift Exp, Inc. v. Campuserve, Inc, 257 F.3d 1323, 1342 (Fed. Cir.
`
`2001). When, however, a method implicitly requires that steps be performed in the
`
`17
`
`
`
`lPRZOiCi—OOOZO
`
`IRS. Patent ”7,297,364
`
`order written, a claim construction that the steps occur in a specific order is
`
`warranted. Id. See also Ring Plus, Inc. v. Cingular Wireless Corp, 614 F.3d
`
`1354, 1364 (Fed. Cir. 2010) (construing the steps of a claim to require a specific
`
`order of operation because the claim would otherwise recite an iliogical sequence);
`
`Loml Fairchild Corp. 12. Sony Corp, 181 F.3d 1313, 1322 (“the language of the
`
`claim, the specification and the prosecution history support a limiting construction
`
`in this case”).
`
`The Federal Circuit has identified a two~part test for determining if the steps
`
`of a method claim that do not otherwise recite a specific order must, nonetheiess,
`
`be performed in the order written. Interactive Gift, at 1343. First, the claim
`
`language is analyzed to determine if, as a matter of logic or grammar, the steps
`
`must be performed in the order written. Id. Second, the specification is analyzed
`
`to determine whether it “directly or implicitly requires such a narrow
`
`construction.” Here, based on the ‘364 patent claim language and written
`
`description, the broadest reasonable interpretation of the “statically neutralizing
`
`debris” limitation is that this step occurs after the grinding and buffing steps.
`
`To that end, the claim language itself states that the static neutralization step
`
`is undertaken to facilitate the removal of all the debris from the lamp surface.
`
`BXlOOl at 5:28w29. Logic dictates that such step is done after all steps that create
`
`debris on the lamp surface (that is, after the grinding and buffing steps).
`
`18
`
`
`
`IPR2013~60020
`
`US. Patent 7,297,364
`
`The specification further supports this interpretation. To that end, the
`
`specification teaches that the static neutraiization step occurs after the grinding and
`
`buffing steps:
`
`‘elew'n dry at £48.. Torihrtlter clean the lamp surihce it} the
`lamp stir-thee it} is statically neutra‘iiaed at Stir B3, neutrsi- as
`iaing the lamp s'urthee It} to at! static energy particulate
`from the grinding; and. huffing steps may he more easiiy
`
`reins-tied. "t solvent is applied to the temp surface it} at 5:1:
`wheres-tier the lamp surface 52- is staticaiiy neutraliami her a
`second time at 54.
`
`EXlOOl at 3:64-43.
`
`There is no other disclosure in the specification that would suggest that the
`
`static neutralization step occurs before or during the grinding and/or buffing steps.
`
`Indeed, given the purpose of static neutralization, such a disclosure would be
`
`contrary to common sense. Patent Owner’s expert, Mr. Bell, confirms that one of
`
`skill in the art would recognize that static neutralization must occur after the steps
`
`that create debris in the refurbishing of the lamp are complete, i.e., after the
`
`grinding and buffing steps. EXZOO4 at ‘J[ 37. To perform the step at any other time
`
`in the process would render the static neutralization step meaningless and
`
`ineffective. Id.
`
`In View of the above, and the entire content of the ‘364 Patent, the broadest
`
`reasonable interpretation of “statically neutraiizing debris on the lamp surface to
`
`19
`
`
`
`IPR2013»00020
`
`US. Patent 7,297,364
`
`facilitate the removal of all of the debris on the lamp surface” is that the such step
`
`occurs after the “grinding” and “buffing” steps in the claimed method.
`
`D.
`
`NEITHER A COMBINATION OF KUTA AND BUTT, NOR A
`COMBINATION OF KUTA AND EASTWOOD, RENDER THE INVENTION
`CLAIMED IN ORIGINAL CLAIMS 1-24 OBVIOUS.
`
`Petitioner’s argument that claims 1-24 of
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