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`Filed on behalf of Clearlamp, LLC
`By:
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`Bryan K. Wheelock (bwheelock@hdp.com)
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`Harness, Dickey & Pierce, PLC
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`7700 Bonhomme Ave., Suite 400
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`St. Louis, MO 63105
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`Tel: (314) 726-7500
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`Fax: (314) 726-7501
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`LKQ CORPORATION
`Petitioner
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`v.
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`CLEARLAMP, LLC
`Patent Owner
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`_____________
`
`Case IPR2013-00020
`Patent 7,297,364
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`
`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
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`Fully Removing the Clearcoat Patentably Distinguishes Claims 25 and 37
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`Case IPR2013-00020
`Patent 7,297,364
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`Petitioner argues that “fully removing the clearcoat finish” does not
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`patentably distinguish proposed substitute claims 25 and 37. (Paper 52, Opp.,
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`II.A.1, p. 3: III.A.1. p. 11). While Kuta does not use the word “partially”, Kuta
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`discloses only partially removing the clearcoat. Kuta explains that the sanding
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`discs (the only tool disclosed for removing the clearcoat) is “unable” to reach the
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`corners of the lens:
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`Ex. 1002, ¶ [0023]. Petitioner argues that it would have been obvious to fully
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`remove the clearcoat if the Kuta process were modified contrary to Kuta’s express
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`purpose of avoiding the expense of removing and reinstalling lenses:
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`
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`Ex. 1002, ¶ [0010]. Kuta is limited to in situ treatment of the lenses, where the
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`clearcoat is not (and apparently does not have to be) fully removed. Petitioner has
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`not shown it was obvious to ignore Kuta’s teachings (1) not to remove the lenses and
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`1
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`(2) that partial removal of the clearcoat was adequate. Fully removing the clearcoat
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`Case IPR2013-00020
`Patent 7,297,364
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`patentably distinguishes substitute claims 26 and 37. See, (Paper 35, Response,
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`II.C.1., p. 12-15; II.D.a. p 21-25).
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`Evening the Lamp Surface Patentably Distinguishes Claims 25 and 37
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`
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`Petitioner argues that “evening the lamp for surface by smoothing out the
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`lamp surface to minimize any troughs created through the removal of the damage”
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`does not patentably distinguish proposed substitute claims 25 and 37 (Paper 52,
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`Opp., II.A.2. p. 5; III.A.2. p. 11). Patent Owner submits evening the lamp surface is
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`not disclosed in Kuta. Evening the lamp surface patentably distinguishes substitute
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`claims 25 and 37. See, (Paper 35, Response, II.C.2. p. 15-17, II.D.1.b. p. 25-26).
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`Petitioner also argues that the evening step lacks of antecedent basis. (Paper
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`52, Opp., II.A., p. 3). The language “removal of the damage” is supported by the
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`preamble, “a method for refurbishing a lamp surface of a lamp having surface
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`damage.” In any event, Petitioner concedes (Paper 52, Opp., II.A. p. 3) that
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`alternative claim 25’’ has adequate antecedent basis.
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`Restoring to OE Condition Patentably Distinguishes Claims 25’, 25’’ and 37’
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`Petitioner argues that the amendment “wherein, the steps (b) through (h) are
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`performed to restore the lamp to its original equipment condition” does not
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`patentably distinguish substitute claims 25’ or 25’’ (Paper 52, Opp., II.B. p. 7;
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`II.C.2. p. 9) or 37’ (Paper 52, Opp., III.B. p. 12). However, the prior art does not
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`2
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`disclose a process that restores the lamp to its original equipment condition, or even
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`Case IPR2013-00020
`Patent 7,297,364
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`that such a restoration is possible. Kuta teaches only partially removing the
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`clearcoat, and while this may be acceptable to a consumer, it does not achieve an
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`original equipment condition. This was confirmed by the unrebutted testimony of
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`Patent Owner’s experts, A. Harvey Bell, who established that Kuta does not remove
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`the original clear coat (EX2004 ¶¶ 54-55), and Mr. Katsamberis, has stated that, if
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`the original clear coat finish is not fully removed from the lamp surface, it is not
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`possible to achieve an original equipment condition. (EX2007 at ¶¶ 27-29).
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`Restoring to original equipment condition patentably distinguishes claims 25’, 25’’,
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`and 37’. See (Paper 35, Response, II.A.1. p. 7-8; II.D.1.a. p. 24-25; II.D.2. p. 32).
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`Removing Damage Patentably Distinguishes Claims 25’’ and 37’’
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`
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`Petitioner argues that “removing the damage from the lamp surface” does not
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`patentably distinguish proposed substitute claims 25’’ and 37’’ (Paper 52, Opp.,
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`II.C. p. 9, III.C. p. 12). This language is appropriate as providing additional
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`antecedent basis for the evening step in claims 25’’ and 37’’, which patentably
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`distinguishes the claims over the prior art.
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`Statically Neutralizing Distinguishes Claim 37
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`
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`Petitioner argues that “Statically neutralizing debris on the lamp surface to
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`facilitate removal of all of the debris on the lamp surface after all of the steps that
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`create debris” does not patentably distinguish proposed substitute claim 37 (Paper
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`3
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`52, Opp., III.A.3., p. 11). As explained in Patent Owner’s Response, p. 32, in Kuta
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`Case IPR2013-00020
`Patent 7,297,364
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`the static neutralization occurs during the sanding process and before the buffing
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`process. Thus, the lamp surface is “statically neutralized to facilitate the removal of
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`all of the debris on the lamp surface” before the process has stopped creating debris
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`on the lamp surface. There is no disclosure, for example, that after the buffing step
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`(which Kuta describes as occurring after the grinding step), a further static
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`neutralization is performed on the lens surface. EX2004 at ¶ 79. Instead, Kuta fails
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`to teach neutralizing static to facilitate the removal of all of the debris from the lamp.
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`Statically neutralizing patentably distinguishes claim 37. See (Paper 35, Response,
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`II.D.2. p. 31-33).
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`The Substitute Claims Are Patentably Distinct over the Prior Art
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`Petitioner argues that the Patent Owner has not shown that the substitute
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`claims are patentably distinct over the prior art. (Paper 52, Opp., IV. p. 13). The
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`Patent Owner submits that the original claims in the patent distinguish over the prior
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`art, but in the event that giving the claims their broadest reasonable interpretation
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`(37 C.F.R. § 42.100(b)) gives the claims broader meaning than their actual meaning,
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`the Patent Owner has conditionally proposed amendments to the original claims to
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`give effect to the actual meaning of the claims. For each amendment, the Patent
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`Owner explained how the proposed amendment distinguished over the prior art, with
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`4
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`citations to the Patent Owner’s Response (which included the explanation of Patent
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`Case IPR2013-00020
`Patent 7,297,364
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`Owner’s expert witnesses).
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`Patent Owner is Only Seeking One-for-One Substitution
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`Petitioner argues that the Patent Owner has not shown special circumstances
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`to justify multiple substitute claim (Paper 52, Opp., V., p. 13). However, the Patent
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`Owner only seeks a one for one replacement for each of the existing claims, within
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`the presumption of 37 C.F.R. § 42.121(a)(3), so no showing of special circumstances
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`is needed. The Patent Owner has provided alternative replacement claims, owing to
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`the uncertainty arising from the broadest reasonable interpretation of the claims
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`under 37 C.F.R. §42.100(b). However, only one proposed alternative claim is
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`requested for each existing dependent claim.
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`October 29, 2013
`
`
`/Bryan K. Wheelock/
`BRYAN K. WHEELOCK, Reg. No. 31441
`HARNESS, DICKEY & PIERCE, PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`Tel: (314) 726-7500
`Fax: (314) 726-7501
`bwheelock@hdp.com
`
`Attorneys for Patent Owner, Clearlamp,
`LLC
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`5
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`Case IPR2013-00020
`Patent 7,297,364
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 29th day of October, 2013, a copy of the
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`foregoing document was served via Electronic Mail upon the following Counsel
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`for Petitioner at the addresses listed below:
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`Alan L. Barry
`Jason Engel
`Benjamin E. Weed
`K&L Gates LLP
`70 West Madison Street, Suite 3100
`Chicago, Illinois 60602
`Phone: (312) 372-1121
`Fax: (312) 827-8000
`alan.barry@klgates.com
`jason.engel@klgates.com
`benjamin.weed@klgates.com
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`Attorneys for Petitioner, LKQ Corporation
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`/s/Bryan K. Wheelock
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`6
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