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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
`In re U.S. Patent No.:
`7,297,364
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`Date of Issue:
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`November 20, 2007
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`Name of Patentee:
`Krause-Heringer et al.
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`Serial No.:
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`11/311,852
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`Filed:
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`December 19, 2005
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`Patent Owner:
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`Clearlamp, LLC
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`Petitioner:
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`LKQ Corporation
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`Title: METHOD FOR REFURBISHING
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`LAMP SERVICES
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,297,364
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
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`

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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
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`Introduction......................................................................................................1
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`Fee....................................................................................................................1
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`III. Mandatory Notices...........................................................................................1
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`A.
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`B.
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`C.
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`Real Party In Interest.............................................................................1
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`Standing.................................................................................................1
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`Related Matters......................................................................................1
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`D. Notice Of Lead And Backup Counsel...................................................2
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`IV. Statement Of Precise Relief Requested...........................................................3
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`V.
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`Background......................................................................................................4
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`A.
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`B.
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`The Alleged Invention Of The ‘364 Patent...........................................4
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`Prosecution History Of The ‘364 Patent ...............................................6
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`VI. Full Statement Of The Reasons For The Relief Requested.............................8
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`VII. Detailed Claim Analysis In View Of The Applied References ....................14
`
`A. Grounds 1 to 5: Claims 1 To 24 Are Unpatentable Under 35
`U.S.C. § 103(a) As Being Obvious Over Kuta In View Of Butt,
`Eastwood, SHO, Korsyn, Or Autopia .................................................15
`
`B. Grounds 6 to 10: Claims 1 To 3, 5 To 17 And 23 To 24 Are
`Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`Over Cole In View Of Butt, Eastwood, SHO, Korsyn, Or
`Autopia ................................................................................................32
`
`C. Ground 11: Claims 1 To 3, 5 To 8, 13 To 17 And 24 Are
`Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious
`Over Autopia In View Of The Admitted Prior Art.............................45
`
`VIII. Conclusion .....................................................................................................58
`
`
`
`i
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004)............................................................................10
`
`In re Hall,
`781 F. 2d 897 (Fed. Cir. 1986).............................................................................11
`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) ................................................................................... 13, 14
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998)................................................................................9
`
`SRI Int’l, Inc. v. Internet Security Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008)............................................................................11
`
`STATUTES
`35 U.S.C. § 102(a) ............................................................................................ 15, 16
`
`35 U.S.C. § 102(b) ............................................................................................ 15, 16
`
`35 U.S.C. § 102(e) ............................................................................................ 15, 32
`
`35 U.S.C. § 112......................................................................................................7, 8
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`35 U.S.C. § 314(a) .....................................................................................................8
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`37 C.F.R. § 42.100(b) ..............................................................................................14
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`37 C.F.R. §§ 42.15 .....................................................................................................1
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`37 C.F.R. §§42.103 ....................................................................................................1
`
`OTHER AUTHORITIES
`MPEP § 2128 ...........................................................................................................12
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`
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`ii
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`LIST OF EXHIBITS
`
`Ex. 1001: U.S. Patent No. 7,297,364 to Krause-Heringer et al.
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`Ex. 1002: U.S. Patent Publication No. 2005/0208210 to Kuta
`
`Ex. 1003: U.S. Patent No. 6,106,648 to Butt
`
`Ex. 1004: Eastwood ShopTalk Forum Posts,
`
`http://forum.eastwood.com/showthread.php?118-Plastic-headlight-re-
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`sealing&s=d3d5c104c4068d77bcc48e2e5ad49222, last accessed
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`September 17, 2012
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`Ex. 1005: SHOForum Posts,
`
`http://www.shoforum.com/showthread.php?t=38051, last accessed
`
`September 17, 2012
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`Ex. 1006: U.S. Patent No. 4,497,755 to Korsyn
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`Ex. 1007: Autopia Forum Posts, http://www.autopia.org/forum/car-
`
`detailing/56737-another-plastic-headlight-restoration.html, last
`
`accessed September 17, 2012
`
`Ex. 1008: U.S. Patent No. 7,163,446 to Cole et al.
`
`Ex. 1009: Declaration of Francisco G. Yarde
`
`Ex. 1010: Curriculum vitae of Francisco G. Yarde
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`Ex. 1011: Non-final Office Action dated January 12, 2007
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`Ex. 1012: Final Office Action dated June 28, 2007
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`
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`iii
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`Ex. 1013: Notice of Allowance dated September 11, 2007
`
`Ex. 1014: Patent And Trademark Office Trademark File History For “MAGNI”
`
`Mark
`
`Ex. 1015: Clearlamp, LLC’s Complaint Asserting U.S. Patent No. 7,297,364
`
`
`
`iv
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`

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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`I.
`
`INTRODUCTION
`Petitioner submits this Petition for Inter Partes Review of claims 1 to 24 of
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`U.S. Patent No. 7,297,364 (“the ‘364 Patent”) (Ex. 1001).
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`II.
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`FEE
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`In accordance with 37 C.F.R. §§ 42.15 and 42.103, please charge the fee of
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`$29,600.00 for inter partes review of 24 claims to Deposit Account 02-1818.
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`III. MANDATORY NOTICES
`A. REAL PARTY IN INTEREST
`Petitioner certifies that the real party in interest is LKQ Corporation, a
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`Delaware corporation with its principal place of business at 500 West Madison
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`Street, Suite 2800, Chicago, IL 60661.
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`STANDING
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`B.
`Petitioner certifies that the ‘364 Patent, issued on November 20, 2007, is
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`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the claims of the ‘364 Patent.
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`C. RELATED MATTERS
`The ‘364 Patent is asserted in Case No. 1:12-cv-02533 in the Northern
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`District of Illinois, Eastern Division. Patent Owner’s amended complaint is
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`attached as Ex. 1015. The Petition is being filed within one year of Petitioner
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`being served with a complaint for infringement. Petitioner has not filed a civil
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`action challenging the validity of the claims of the ‘364 Patent. Petitioner has filed
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`1
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`a counterclaim challenging the validity of the claims of the ‘364 Patent in Case No.
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`1:12-cv-02533 in the Northern District of Illinois, Eastern Division.
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`D. NOTICE OF LEAD AND BACKUP COUNSEL
`The lead counsel for Petitioner is Alan L. Barry of K&L Gates LLP (U.S.
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`Patent and Trademark Office Registration No. 30,819; telephone number 312-807-
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`4438; electronic mail address alan.barry@klgates.com; facsimile number 312-827-
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`8196; mailing address 70 W. Madison Street, Suite 3100, Chicago, IL 60602).
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`Back-up counsel for Petitioner is Heather A. Boice (telephone number 312-807-
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`4335; electronic mail address heather.boice@klgates.com; facsimile number 312-
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`827-7063; mailing address 70 W. Madison Street, Suite 3100, Chicago, IL 60602).
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`Petitioner hereby requests authorization to file a motion for Heather Boice to
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`appear pro hac vice, as Ms. Boice is an experienced litigating attorney, and is
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`counsel for LKQ in the above-referenced litigation and as such has an established
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`familiarity with the subject matter at issue in this proceeding. Petitioner intends to
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`file such a motion once authorization is granted.
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`The patent owner’s lead counsel is Matthew L. Cutler (telephone number
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`(314) 726-7522; electronic mail address mcutler@hdp.com) and the back-up
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`counsel is Douglas A. Robinson (telephone number (314) 446-7683; electronic
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`mail address drobinson@hdp.com), both of of Harness, Dickey & Pierce, PLC
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`(mailing address 7700 Bonhomme, Suite 400, Clayton, MO 63105), as shown in
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`2
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`the Certificate of Service.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`Ground 1: Cancellation of claims 1 to 24 is requested under 35 U.S.C. §
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`103(a) as being obvious over U.S. Patent Publication No. 2005/0208210 to Kuta
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`(“Kuta”) (Ex. 1002) in view of U.S. Patent No. 6,106,648 to Butt (“Butt”) (Ex.
`
`1003).
`
`Ground 2: Cancellation of claims 1 to 24 is requested under 35 U.S.C. §
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`103(a) as being obvious over Kuta in view of Eastwood ShopTalk Forum Posts,
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`available at http://forum.eastwood.com/showthread.php?118-Plastic-headlight-re-
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`sealing&s=d3d5c104c4068d77bcc48e2e5ad49222 (“Eastwood”) (Ex. 1004).
`
`Ground 3: Cancellation of claims 1 to 24 is requested under 35 U.S.C. §
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`103(a) as being obvious over Kuta in view of SHOForum Posts, available at
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`http://www.shoforum.com/showthread.php?t=38051 (“SHO”) (Ex. 1005).
`
`Ground 4: Cancellation of claims 1 to 24 is requested under 35 U.S.C. §
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`103(a) as being obvious over Kuta in view of U.S. Patent No. 4,497,755 to Korsyn
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`(“Korsyn”) (Ex. 1006).
`
`Ground 5: Cancellation of claims 1 to 24 is requested under 35 U.S.C. §
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`103(a) as being obvious over Kuta in view of Autopia Forum Posts, available at
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`http://www.autopia.org/forum/car-detailing/56737-another-plastic-headlight-
`
`restoration.html (“Autopia”) (Ex. 1007).
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`3
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`Ground 6: Cancellation of claims 1 to 3, 5 to 17 and 23 to 24 is requested
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`under 35 U.S.C. § 103(a) as being obvious over U.S. Patent Publication No.
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`7,163,446 to Cole et al. (“Cole”) (Ex. 1008) in view of Butt.
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`Ground 7: Cancellation of claims 1 to 3, 5 to 17 and 23 to 24 is requested
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`under 35 U.S.C. § 103(a) as being obvious over Cole in view of Eastwood.
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`Ground 8: Cancellation of claims 1 to 3, 5 to 17 and 23 to 24 is requested
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`under 35 U.S.C. § 103(a) as being obvious over Cole in view of SHO.
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`Ground 9: Cancellation of claims 1 to 3, 5 to 17 and 23 to 24 is requested
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`under 35 U.S.C. § 103(a) as being obvious over Cole in view of Korsyn.
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`Ground 10: Cancellation of claims 1 to 3, 5 to 17 and 23 to 24 is requested
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`under 35 U.S.C. § 103(a) as being obvious over Cole in view of Autopia.
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`Ground 11: Cancellation of claims 1 to 3, 5 to 8, 13 to 17 and 24 is
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`requested under 35 U.S.C. § 103(a) as being obvious over Autopia in view of the
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`admitted prior art.
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`V. BACKGROUND
`A. THE ALLEGED INVENTION OF THE ‘364 PATENT
`The ‘364 Patent purports to improve upon known methods for refurbishing a
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`headlamp surface, such as the method taught by Kuta. The ‘364 Patent, in its
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`Description of the Related Art section, recognizes that Kuta is prior art that
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`discloses a method for refurbishing a headlamp surface:
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`4
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`U.S. patent application Ser. No. 10/804,435 [Kuta] published on Sep.
`22, 2005 discloses a method for refurbishing a headlamp surface.
`This method includes multiple steps of grinding the headlamp surface
`in a constant movement and oscillating motion using a machine
`designed specifically this [sic] purpose. In addition, there is a constant
`supply of water that is poured over the headlamp surface as the
`headlamp surface is being refurbished. The water is used to remove
`debris from the headlamp surface and to cool the headlamp surface as
`it is being sanded. (‘364 Patent, Ex. 1001, col. 1, ll. 25-34) (emphasis
`added).
`The ‘364 Patent then identifies problems with the method taught by
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`Kuta:
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`This method [taught by Kuta] causes two problems. First, the water
`transmits the debris from the headlamp surface onto the vehicle
`creating an opportunity for the portion of the motor vehicle below the
`headlamp to be damaged by subsequently wiping down of the motor
`vehicle after the sanding is completed. Second, the water required to
`remove the debris and cool the headlamp surface spills onto the floor
`creating an adverse work environment. This method creates a messy
`environment that may increase the probability of workplace injuries
`due to a wet floor. Third, this method requires the use of a dedicated
`sanding device that cannot be used for any other purpose. And finally,
`this method of undesirable [sic] because it refurbishes the headlamp
`surface while the headlamp is still mounted to the motor vehicle.
`Grinding a headlamp surface while the headlamp is still mounted in
`the motor vehicle may cause damage to the motor vehicle. In
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`5
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`particular, mistakes made by the operator of the method may
`accidentally grind the motor vehicle should the operator miscalculate
`forces being applied to the headlamp surface. (‘364 Patent, Ex. 1001,
`col. 1, ll. 35-53) (emphasis added).
`Thus, the ‘364 Patent identifies the following problems with Kuta’s method:
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`(i) the water transmits debris; (ii) the water creates an adverse work environment;
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`(iii) the method requires the use of a dedicated sanding device; and (iv) the method
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`calls for refurbishing the headlamp surface while the headlamp is still mounted to
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`the motor vehicle, which may cause damage to the motor vehicle.
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`The ‘364 Patent purports to improve upon Kuta’s method. But the claims of
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`the ‘364 Patent only address the last of the above-listed problems by requiring
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`removal of the lamp from the motor vehicle. None of the other purported
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`problems—water transmitting debris, water creating an adverse work environment,
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`or the use of a dedicated sanding device—are addressed by the claims of the ‘364
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`Patent. As shown below, removing a lamp from a motor vehicle for refurbishing
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`was a well-known technique at the time of the invention. In particular, Butt,
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`Eastwood, SHO, Korsyn and Autopia each teaches such removal. Further, the
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`prior art does not teach away from removing a lamp from a motor vehicle.
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`PROSECUTION HISTORY OF THE ‘364 PATENT
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`B.
`The application that issued as the ‘364 Patent was filed with twenty-four
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`claims, including independent claims 1 and 14. Claims 1 and 14 eventually issued
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`6
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`as claims 1 and 13, respectively, of the ‘364 Patent. In the first Office Action
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`dated January 12, 2007 (Ex. 1011), the Patent Office objected to and rejected
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`certain dependent claims under 35 U.S.C. § 112, but allowed both independent
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`claims. Regarding the allowed claims, the Office Action (Ex. 1011) stated:
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`The following is a statement of reasons for the indication of allowable
`subject matter: Kuta (US 2005/0208210 A 1) is the closest prior art.
`Broadly, this reference teaches:
`Refinishing an exterior automotive lens having a 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 flushing 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. This method is
`accomplished using an oscillating tool having a remotely located
`drive.
`This reference also teaches away from the step of removing the
`instantly claimed step of removing the lamp from the motor vehicle
`[sic]:
`[0010] The present invention teaches an alternative to replacement
`that 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.
`As such, the instantly claimed invention is patentable over the prior
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`7
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`art. (emphasis added).
`Thus, the Office Action found the as-filed independent claims to be
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`patentable because, according to the Office Action, paragraph [0010] of Kuta
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`teaches away from removing the lamp from the motor vehicle.
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`In a response dated May 14, 2007, Applicants responded to the 35 U.S.C. §
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`112 rejections. In a final rejection dated June 28, 2007 (Ex. 1012), the Patent
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`Office again rejected certain dependent claims under 35 U.S.C. § 112. In a
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`response dated July 24, 2007, Applicants again responded to the 35 U.S.C. § 112
`
`rejections. A Notice of Allowance was mailed on September 11, 2007 (Ex. 1013).
`
`The Notice of Allowance provided a statement of reasons for allowance, and cited
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`the same reasons listed in the first Office Action dated January 12, 2007, namely,
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`that paragraph [0010] of Kuta teaches away from removing the lamp from the
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`motor vehicle. Applicants did not file any response to the examiner’s statement of
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`reasons for allowance. The ‘364 Patent issued on November 20, 2007.
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`VI. FULL STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`A petition for inter partes review must demonstrate a reasonable likelihood
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`that the Petitioner would prevail with respect to at least one of the claims
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`challenged in the petition. (35 U.S.C. § 314(a)).
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`This Petition is reasonably likely to prevail with respect to at least one of the
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`claims because the Patent Office improperly concluded that the prior art teaches
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`away from removing a lamp from a vehicle when refurbishing the lamp. “A prior
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`8
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`art reference may be considered to teach away when a person of ordinary skill,
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`upon reading the reference, would be discouraged from following the path set out
`
`in the reference, or would be led in a direction divergent from the path that was
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`taken by the applicant.” (Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
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`139 F.3d 877, 885 (Fed. Cir. 1998) (internal quotations and citations omitted)). In
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`the first Office Action (Ex. 1011), the Patent Office cited paragraph [0010] of Kuta
`
`as teaching away from removing a lamp from a motor vehicle. But paragraph
`
`[0010] of Kuta discusses lenses, not lamps. (Ex. 1002). Kuta does not discourage
`
`a person of ordinary skill in the art from removing a lamp from a vehicle when
`
`refurbishing the lamp nor lead a person of ordinary skill in the art in a direction
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`away from removing a lamp from a vehicle when refurbishing the lamp. (Yarde
`
`Decl., Ex. 1009, ¶ 18). Thus, Kuta’s discussion of lenses does not teach away from
`
`removing a lamp from a vehicle when refurbishing the lamp.
`
`It appears that the Examiner applied Kuta’s discussion of lenses to lamps.
`
`Even assuming Kuta’s discussion of lenses can be applied to lamps, Kuta does not
`
`teach away from removing the lens from a vehicle for refurbishing. Paragraph
`
`[0010] of Kuta simply states that refurbishing the lens while the lens is still
`
`mounted on the vehicle is an “alternative to replacement that is more cost
`
`effective.” (Kuta, Ex. 1002, ¶ 10). Kuta thus teaches that removing the lens and
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`replacing the lens with a new one is an alternative to refurbishing the lens while
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`9
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`the lens is still mounted on the vehicle. (See also Yarde Decl., Ex. 1009, ¶ 17).
`
`“[T]he prior art’s mere disclosure of more than one alternative does not constitute a
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`teaching away from any of these alternatives because such disclosure does not
`
`criticize, discredit, or otherwise discourage the solution claimed….” (In re Fulton,
`
`391 F.3d 1195, 1201 (Fed. Cir. 2004)). Thus, even if the distinction between lens
`
`and lamp is ignored, Kuta still does not teach away from removing the lens from a
`
`vehicle for refurbishing. Even if some amount of teaching away is found in Kuta’s
`
`disclosure, Korsyn negates such teaching away based on its disclosure that “[i]t
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`will be appreciated that lens 20 has been removed from the automobile and turned
`
`such that the outer face is directed downward.” (Korsyn, Ex. 1006, col. 5, ll. 45-
`
`48) (emphasis added). Therefore, the Patent Office improperly concluded that the
`
`prior art teaches away from removing a lamp from a vehicle for refurbishing.
`
`Other prior art references also affirmatively teach removing a lamp from a
`
`motor vehicle for refurbishing, which negates the finding by the Patent Office that
`
`the prior art teaches away from removing a lamp from a vehicle when refurbishing
`
`the lamp. For example, Butt, which was cited during prosecution, discloses “it is
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`generally more convenient to remove the lamp or lighting unit from the vehicle and
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`to remove the damaged lens from the housing to which it is connected.” (Butt, Ex.
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`1003, col. 2, ll. 57-60) (emphasis added) (see also Yarde Decl., Ex. 1009, ¶ 19).
`
`Eastwood, SHO and Autopia also each discloses removing a lamp from a
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`10
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`motor vehicle to refurbish a lamp. (Eastwood, Ex. 1004, p. 6, February 18, 2005
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`post at 12:05 AM; SHO, Ex. 1005, pp. 1-2, November 24, 2004 post at 4:19 PM;
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`Autopia, Ex. 1007, pp. 1-3, May 25, 2005 post at 3:01) (see also Yarde Decl., Ex.
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`1009, ¶¶ 21 to 24). Eastwood, SHO and Autopia are references that qualify as
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`printed publications because they are forum posts on the Internet that were publicly
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`accessible before the earliest priority date of the ‘364 Patent.
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`“‘[P]ublic accessibility’ has been called the touchstone in determining
`
`whether a reference constitutes a ‘printed publication’.” (In re Hall, 781 F. 2d 897,
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`898-899 (Fed. Cir. 1986)). In SRI Int’l, Inc. v. Internet Security Sys., Inc. the
`
`Federal Circuit held that an electronic document displayed on a web site qualified
`
`as a “printed publication” as long as the document was publicly accessible. (511
`
`F.3d 1186 (Fed. Cir. 2008)). The Federal Circuit in SRI found that the document in
`
`question—a Live Traffic paper—was not publicly accessible because “an
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`anonymous user skilled in the art . . . would [not] have gained access to the FTP
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`server and would [not] have freely navigated through the directory structure to find
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`the Live Traffic paper”, “the Live Traffic paper was not publicized or placed in
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`front of the interested public”, “the record does not show that anyone accessed the
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`Live Traffic paper via the FTP server during the seven days in which it was
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`posted”, and “the peer-review feature also suggests no intent to publicize” the Live
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`Traffic paper. (Id. at 1196-98). In contrast, for the Eastwood, SHO and Autopia
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`11
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
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`forums, members of the interested public could—and did—freely gain access to
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`and navigate the forums, the forums were publicized and placed in front of the
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`interested public, and the intent of the forums was to publicize the postings of the
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`forum’s members. Thus, Eastwood, SHO and Autopia are printed publications at
`
`least as of their posting dates. “An electronic publication, including an on-line
`
`database or Internet publication, is considered to be a ‘printed publication’ within
`
`the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to
`
`persons concerned with the art to which the document relates.” (MPEP § 2128).
`
`“Prior art disclosures on the Internet or on an on-line database are considered to be
`
`publicly available as of the date the item was publicly posted.” (Id.)
`
`For the above stated reasons, this Petition is reasonably likely to prevail with
`
`respect to at least one of the claims because the prior art does not teach away from
`
`removing a lamp from a vehicle when refurbishing the lamp—which was the only
`
`reason the Patent Office allowed the claims of the ‘364 Patent in the first place.
`
`Additionally, the Petition is reasonably likely to prevail with respect to at
`
`least one of the claims because it is premised on certain art that was not considered
`
`during examination of the ‘364 Patent. Cole, Eastwood, SHO and Autopia were
`
`not considered during examination. Cole discloses all the elements needed to
`
`reject at least the independent claims except removing a lamp from a motor vehicle
`
`to refurbish a lamp. However, Eastwood, SHO and Autopia each discloses
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`removing a lamp from a motor vehicle to refurbish a lamp. “[I]n many cases a
`
`person of ordinary skill will be able to fit the teachings of multiple [references]
`
`together like pieces of a puzzle.” (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
`
`1742 (2007)).
`
`Although Cole is directed to a “method of restoring a discolored vehicle
`
`headlight lens without removal of the lens from the vehicle”, Cole’s rationale is to
`
`reduce costs:
`
`One solution to this problem is replacement of the lens assembly.
`Unfortunately, replacement lens assemblies are costly. The labor
`involved to replace such lens assemblies can further escalate the price
`of replacement to surprisingly high levels. Whether one wishes to sell
`a vehicle with discolored headlights or retain it, it is obviously
`desirable to keep the cost of restoration of discolored lenses to a
`minimum.
`
`* * *
`This permits the user to confidently and safely restore the headlight
`without the labor involved in removal of the headlight from the
`automobile. (Cole, Ex. 1008, col. 1, ll. 14-21; col. 7, ll. 49-53).
`
`Cole’s statement that removing headlights from an automobile increases
`
`labor and costs is common sense. But a person having ordinary skill in the art
`
`would also understand that not removing a headlamp could damage the vehicle
`
`(see, e.g., Yarde Decl., Ex. 1009, ¶¶ 10-11; Eastwood, Ex. 1004, p. 6, February 18,
`
`2005 post at 12:05 AM), and that it is generally more convenient to refurbish a
`
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`headlamp after it has been removed from a vehicle (Butt, Ex. 1003, col. 2, ll. 57-
`
`60). KSR urges using common sense in obviousness analysis. (KSR, 127 S.Ct. at
`
`1741-43). A person having ordinary skill in the art would use common sense and
`
`weigh factors such as cost, potential damage to the vehicle and overall convenience
`
`in deciding whether or not to remove the headlamp for refurbishing. If avoiding
`
`potential damage to the vehicle and increasing overall convenience are more
`
`important than costs to a person of ordinary skill in the art, then such a person
`
`would use common sense and combine Cole with any one of Eastwood, SHO or
`
`Autopia—none of which were considered during examination of the ‘364 Patent—
`
`to arrive at the claimed invention.
`
`VII. DETAILED CLAIM ANALYSIS IN VIEW OF THE APPLIED REFERENCES
`In the detailed analysis below, the Petition identifies each claim being
`
`challenged, the specific grounds on which each claim is challenged, how the
`
`claims are to be construed, why the claims as construed are unpatentable under the
`
`identified grounds, and the exhibit numbers of the evidence relied upon with a
`
`citation to the portion of the evidence that is relied upon to support the challenge.
`
`All the references applied are in the same field and are analogous art. In inter
`
`partes review, claim terms are interpreted under a “broadest reasonable
`
`construction” standard. (37 C.F.R. § 42.100(b)). Where not specified, the claim
`
`terms are construed according to their ordinary and customary meaning.
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`
`
`
`
`A. GROUNDS 1 TO 5: CLAIMS 1 TO 24 ARE UNPATENTABLE UNDER 35
`U.S.C. § 103(A) AS BEING OBVIOUS OVER KUTA IN VIEW OF BUTT,
`EASTWOOD, SHO, KORSYN, OR AUTOPIA
`
`Claims 1 to 24 are unpatentable under 35 U.S.C. § 103(a) as being obvious
`
`over Kuta in view of Butt, or alternatively Eastwood, or alternatively SHO, or
`
`alternatively Korsyn, or alternatively Autopia, as shown in the claim chart below.
`
`Kuta was cited during prosecution of the ‘364 Patent. Its publication date of
`
`September 22, 2005, means that it is prior art to the ‘364 Patent under 35 U.S.C. §
`
`102(a) and 35 U.S.C. § 102(e). Butt published on August 22, 2000, and thus is
`
`prior art to the ‘364 Patent under 35 U.S.C. § 102(b). Butt was cited by Applicants
`
`and is listed on the face of the ‘364 Patent but was not discussed by the Examiner.
`
`Eastwood is a string of Internet forum posts that were publicly accessible
`
`before
`
`the earliest priority date of
`
`the
`
`‘364 Patent, available at
`
`http://forum.eastwood.com/showthread.php?118-Plastic-headlight-re-sealing&s=
`
`d3d5c104c4068d77bcc48e2e5ad49222, with the cited post dated February 18,
`
`2005. Thus, Eastwood is prior art to the ‘364 Patent under 35 U.S.C. § 102(a).
`
`SHO is a string of Internet forum posts that were publicly accessible before
`
`the earliest priority date of the ‘364 Patent, available at http://www.shoforum.com/
`
`showthread.php?t=38051, with the cited post dated November 24, 2004. Thus, the
`
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`cited post is prior art to the ‘364 Patent under 35 U.S.C. § 102(b).
`
`Korsyn published on February 5, 1985, and thus is prior art to the ‘364
`
`Patent under 35 U.S.C. § 102(b). Korsyn was cited by Applicants and is listed on
`
`the face of the ‘364 Patent but was not discussed by the Examiner.
`
`Autopia is a string of Internet forum posts publicly accessible before the
`
`earliest priority date of the ‘364 Patent, the first page of which is available at
`
`http://www.autopia.org/forum/car-detailing/56737-another-plastic-headlight-
`
`restoration.html, with the cited post dated May 25, 2005. Thus, the cited post is
`
`prior art to the ‘364 Patent under 35 U.S.C. § 102(a).
`
`U.S. Patent No.
`7,297,364
`1. A method for
`refurbishing a lamp
`surface of a lamp having
`surface damage, the
`method comprising the
`steps of:
`
`removing the lamp from
`a motor vehicle;
`
`Exemplary Disclosure Of Kuta In View Of Butt,
`Eastwood, Sho, Korsyn, Or Autopia
`Kuta discloses a method for refurbishing a lamp
`surface of a lamp. (Kuta, Ex. 1002, Abstract). Kuta
`also applies to a lamp having surface damage. (Kuta,
`Ex. 1002, ¶¶ 7, 9-10).
`
`Kuta does not disclose removing a lamp from a
`motor vehicle. 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.
`
`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,
`
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`Petition For Inter Partes Review Of U.S. Patent No. 7,297,364
`
`U.S. Patent No.
`7,297,364
`
`Exemplary Disclosure Of Kuta In View Of Butt,
`Eastwood, Sho, Korsyn, Or Autopia
`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.
`
`A person of ordinary skill in the art would have been
`motivated to combine Butt with Kuta at least because
`both references deal