Osram Sylvania Inc.
`v.
`Jam Strait, Inc.
`IPR2014-00703
`U.S. Patent No. 6,786,625
`
`Petitioner’s Demonstrative Exhibits
`Lead Counsel
`Backup Counsel
`Eric R. Moran
`John M. Schafer
`Paul H. Berghoff
`
`
`v.
`Jam Strait, Inc.
`IPR2014-00703
`U.S. Patent No. 6,786,625
`
`Petitioner’s Demonstrative Exhibits
`Lead Counsel
`Backup Counsel
`Eric R. Moran
`John M. Schafer
`Paul H. Berghoff
`
`
`
`The ’625 Patent
`
` The ’625 patent relates to light emitting diode (“LED”)
`bulbs that may be used in vehicles as replacements for
`standard automotive incandescent lamps.
`Corrected Petition (Paper 5) at 1.
` The ’625 patent claims LED light bulbs that are adapted
`to fit into pre-existing, standard automotive sockets.
`
`’625 patent (OSIX 1001) col. 30, lns. 4-5.
`
`OSID 1
`
`
`
`State of the Art
`
` No dispute that standard automotive mini-wedge
`incandescent bulbs and sockets were well known in the
`art as of December 2001.
`
`Reply to P.O. Response (Paper 15) at 5;
`Wesson Dep. (OSIX 1036) at 42:16-21, 43:12-19, 45:1-21.
` It was known in the art as of December 2001 to modify
`the base of automotive incandescent bulbs to fit a
`particular socket.
`
`Corrected Petition (Paper 5) at 33-34;
`Reply to P.O. Response (Paper 15) at 6-7;
`Shackle Decl. (OSIX 1002) at ¶¶ 68-69, 100-01, 119-20.
`
`OSID 2
`
`
`
`State of the Art
`
`Young (OSIX 1024) col. 2, lns. 23-25.
`
` To emphasize this point, Young depicts three embodiments of the
`invention that differ in base type: W2.5x16d (wedge), BAY15d
`(bayonet), and W2.1x9.2d (mini wedge), respectively:
`
`Young (OSIX 1024) Figs. 1-3;
`Shackle Decl. (OSIX 1002) at ¶ 69.
`OSID 3
`
`
`
`State of the Art
` As of 1985, the benefits of adapting an LED light bulb for
`use in standard automotive sockets were known in the
`art:
`
`Laforest (OSIX 1018) at 2, lns. 23-30.
`
`OSID 4
`
`
`
`State of the Art
`
` Young and Laforest are consistent with the ’625 patent’s
`prior art admission regarding replacing incandescent
`bulbs with LED light bulbs:
`
`OSIX 1001 (’625 patent) col. 1, lns. 54-56;
`Corrected Petition (Paper 5) at 33-34, 39-40, 48, 56, 58.
`
`OSID 5
`
`
`
`State of the Art
` The prior art identifies the advantages of LED light bulbs
`as replacements for incandescent bulbs.
`
`Laforest (OSIX 1018) at 2, lns. 7-8.
`
`Alvarez (OSIX 1020) at col. 1, lns. 20-25.
`
`OSID 6
`
`
`
`State of the Art
`
` By Patent Owner’s own admission, “some of the prior art
`cited by Petitioner might encourage others to make
`various LED light bulbs for automotive use.”
`P.O. Response (Paper 13) at 15.
`
`OSID 7
`
`
`
`The Challenged Claims
`
`’625 patent (OSIX 1001) at col. 30, lns. 4-15.
`
`OSID 8
`
`
`
`The Challenged Claims
`
` The earliest effective filing date of claims 30 and 31 is
`December 31, 2001.
`
`Corrected Petition (Paper 5) at 6-9.
`
` With respect to claims 30 and 31, the relevant disclosure
`of the specification is the description of Figures 33-42
`found at column 14, line 6 – column 16, line 16.
`Corrected Petition (Paper 5) at 4-6.
`
`OSID 9
`
`
`
`The Challenged Claims
`
` The ’625 patent describes four embodiments of “a mini
`wedge bulb according to the present invention.”
`
`’625 patent (OSIX 1001) col. 14, ln. 6 – col. 16, ln. 16, Figs. 33-42;
`Corrected Petition (Paper 5) at 5-6, 23.
`
`OSID 10
`
`
`
`The Challenged Claims
`
` Each mini wedge embodiment is nearly identical,
`substantively.
`
`Corrected Petition (Paper 5) at 5-6.
` The descriptions of the common components in each
`embodiment are, with the exception of the reference numbers,
`substantively identical.
`Corrected Petition (Paper 5) at 5-6, 14-15, 18-20, 22-23;
`’625 patent (OSIX 1001) col. 14, ln. 6 – col. 16, ln. 16, Figs. 33-42.
`
`OSID 11
`
`
`
`Claim Construction
`
` The Board construed the preamble to mean “an LED light
`bulb designed to fit into sockets configured to receive a
`three-digit automotive incandescent lamp.”
`Inst. Decision (Paper 10) at 7.
` The Board adopted OSI’s proposed construction of
`“electrical control means”: the electrical control means is
`a means-plus-function term, with the function being
`“electrical control” and the structure being “one or more
`resistors, or equivalents thereof”
`
`Inst. Decision (Paper 10) at 7.
` Patent Owner did not contest these constructions, and
`OSI accepts these constructions for purposes of this IPR.
`Reply to P.O. Response (Paper 15) at 4, n.4.
`
`OSID 12
`
`
`
`Three Instituted Challenges
`
` Claims 30-31 would have been obvious over Laforest
`
` Claims 30-31 would have been obvious over Alvarez
`
` Claims 30-31 would have been obvious over Horowitz
`Inst. Decision (Paper 10) at 16.
`
`OSID 13
`
`
`
`Patent Owner’s Response
`
` Patent Owner relies almost exclusively on the declaration
`of Mr. Bruce Wesson
`
`Reply to P.O. Response (Paper 15) at 1-2.
` Mr. Wesson is the named inventor of the ’625 patent and is
`Patent Owner’s co-founder, president, and majority owner
`Wesson Decl. (JSX 2001) at 1;
`Wesson DC Decl. (OSIX 1033) at ¶¶ 2-3;
`Wesson Dep. (OSIX 1036) at 10:1-4, 17-18.
` Patent Owner has not challenged OSI’s evidence of a
`motivation to modify the prior art references’ LED light
`bulbs.
`
`Reply to P.O. Response (Paper 15) at 7-8.
`
`OSID 14
`
`
`
`Prima Facie Obviousness
`of Claims 30 and 31 over Laforest
`
`OSID 15
`
`
`
`Laforest Renders Claims 30 and 31 Obvious
`
` Patent Owner does not dispute that Laforest describes
`each limitation of claims 30 and 31 except for the size
`and shape of the claimed LED light bulb bases.
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` Standard automotive three-digit bulbs and sockets were
`well known as of December 2001.
`Reply to P.O. Response (Paper 15) at 5.
` It would have been obvious to one of skill in the art to
`modify Laforest’s LED light bulb to fit into a standard
`automotive three-digit bulb socket.
`Corrected Petition (Paper 5) at 32-33;
`Reply to P.O. Response (Paper 15) at 5, 7.
`
`OSID 16
`
`
`
`One of Skill in the Art Would Have Modified Laforest’s Bulb to
`Fit a Standard Automotive Mini Wedge Type Socket
`
` A claim limitation that differs from the prior art only in
`size, dimension, or shape is not patentably distinguishing
`unless the claim limitation provides an unexpected result.
`See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984);
`In re Dailey, 357 F.2d 669, 672-73 (C.C.P.A. 1966);
`Corning Optical Comms. RF, LLC v. PPC Broadband, LLC, IPR2013-00340,
`Paper No. 79 at 36-38 (Nov. 21, 2014).
`
`OSID 17
`
`
`
`Laforest Renders Claims 30 and 31 Obvious
`
` Laforest discloses each element of claims 30 and 31—
`except a base adapted for “mini wedge” sockets:
`
`Annotated Figure 2 (left) and 3 (right) of Laforest
`Corrected Petition (Paper 5) at 27.
`OSID 18
`
`
`
`Laforest Renders Claims 30 and 31 Obvious
`
` Mr. Wesson admitted that Laforest discloses the LED
`light bulb of claim 30, except for the size and shape of the
`base:
`An LED light bulb (Wesson Dep. (OSIX 1036) at 89:13-91:2) …
`comprising:
`a bulb body comprising a printed circuit board having a front
`side, a rear side, and an upper side (Id. at 97:6-22);
`at least one light emitting diode mounted on the upper side of
`the printed circuit board and electrically coupled with the printed
`circuit board (Id. at 95:6-8, 96:14-16, 97:6-22); and
`electrical control means mounted on the printed circuit board
`electrically connected between the printed circuit board and at least
`one pair of electrical conductors (Id. at 95:9-24, 96:3-5, 97:2 – 98:1).
`Reply to P.O. Response (Paper 15) at 2-3.
`
`OSID 19
`
`
`
`Laforest Renders Claims 30 and 31 Obvious
`
` Mr. Wesson admitted that Laforest discloses the LED
`light bulb of claim 31, except for the size and shape of the
`base:
`An LED light bulb … wherein the printed circuit board acts as a body
`for the bulb (Wesson Dep. (OSIX 1036) at 98:6-11).
`Corrected Petition (Paper 5) at 2-3.
`
`OSID 20
`
`
`
`Patent Owner Has Not Rebutted the Strong Showing
`of Prima Facie Obviousness of claims 30 and 31 over Laforest
`
` Patent Owner presents the following arguments in
`attempting to distinguish Laforest:
` Laforest does not describe a bulb that would fit in a standard
`automotive mini wedge type socket
` One of ordinary skill in the art would not modify Laforest’s bulb
`because it would require modifying the automobile
` Laforest’s bulb is inoperable
` Laforest’s bulb would not work in a standard automotive mini
`wedge type socket because the contacts are on each side
`P.O. Response (Paper 13) at 11-13;
`Reply to P.O. Response (Paper 15) at 5, 8-10.
`
`OSID 21
`
`
`
`One of Skill in the Art Would Have Modified Laforest’s LED
`Light Bulb to Fit a Standard Automotive Mini Wedge Socket
`
` Laforest discloses designing an LED light bulb
`compatible with standard motor vehicle sockets to avoid
`modifying an automobile:
`
`Laforest (OSIX 1018) at 2, lns. 23-30.
`
`OSID 22
`
`
`
`One of Skill in the Art Would Have Modified Laforest’s LED
`Light Bulb to Fit a Standard Automotive Mini Wedge Socket
`
` Laforest discloses that the connector support is
`configured for use in motor vehicle dashboard lighting.
`Laforest (OSIX 1018) at 2, lns. 3-4.
` As of December 2001, three-digit automotive
`incandescent bulbs were used in automotive lighting
`applications, including dashboard lighting applications.
`Corrected Petition (Paper 5) at 27-29, 30-31, 32-33;
`Shackle Decl. (OSIX 1002) at ¶¶ 55-56, 66-70;
`Lamp Replacement Guide for MY 2000 Vehicles (OSIX 1023).
`
`OSID 23
`
`
`
`One of Skill in the Art Would Have Modified Laforest’s LED
`Light Bulb to Fit a Standard Automotive Mini Wedge Socket
`
` As of 1999, “194” bulbs, which the ’625 patent identifies
`as “mini wedge” bulbs, were used for “Instrument Cluster”
`(e.g., dashboard) lighting:
`
`1999 SAE Handbook (OSIX 1022) at 3;
`’625 patent (OSIX 1001) col. 14, lns. 27-37, col. 24, table.
`
`OSID 24
`
`
`
`One of Skill in the Art Would Have Modified Laforest’s LED Light
`Bulb to Fit a Standard Automotive Mini Wedge Type Socket
`
` It would have been obvious to a person of ordinary skill in
`the art to modify Laforest’s LED light bulb such that the
`shape of the plug (13) of the connector support (10) fits
`into sockets configured to receive a three-digit
`automotive incandescent lamp.
`
`Corrected Petition (Paper 5) at 32-33;
`Reply to P.O. Response (Paper 15) at 5, 7.
`
`OSID 25
`
`
`
`The Alleged Inoperability of Laforest’s LED
`Light Bulb Is Irrelevant to the Instituted Challenge
`
` In an obviousness analysis, the alleged inoperability of a
`prior art reference is irrelevant.
`Reply to P.O. Response (Paper 15) at 9.
` “Under an obviousness analysis, a reference need not work to
`qualify as prior art; it qualifies as prior art, regardless, for
`whatever is disclosed therein.”
`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294, 1302 (Fed. Cir. 2010).
` Even if Laforest’s lamp was inoperable, Laforest still
`either specifically teaches or suggests each element of
`claims 30 and 31.
`
`Reply to P.O. Response (Paper 15) at 9.
`
`OSID 26
`
`
`
`The Alleged Inoperability of Laforest’s LED
`Light Bulb Is Irrelevant to the Instituted Challenge
`
` Nonetheless, Patent Owner did not provide any objective
`evidence, or perform any testing to support the allegation
`that Laforest’s lamp is inoperable.
`Reply to P.O. Response (Paper 15) at 9-10;
`Wesson Dep. (OSIX 1036) at 98:23-99:14, 100:1-3.
` Mr. Wesson analyzed Laforest based on the alleged
`state of the art at the time Laforest was published, as
`opposed to the state of the art in December 2001.
`Reply to P.O. Response (Paper 15) at 9.
`
`OSID 27
`
`
`
`Location of Contacts Is a Design Choice
`Based on the Intended Use of the Light Bulb
`
` No dispute that Laforest describes the “electrical control
`means” limitation of claim 30.
` Mr. Wesson agreed that Laforest discloses the claim 30 limitation
`of “electrical control means … electrically connected between the
`printed circuit board and at least one pair of electrical
`conductors.”
`
`Wesson Dep. (OSIX 1036) at 95:9-24, 97:2 – 98:1;
`Reply to P.O. Response (Paper 15) at 9-10.
`
`OSID 28
`
`
`
`Location of Contacts Is a Design Choice
`Based on the Intended Use of the Light Bulb
`
` It was known in the art that mini-wedge lamps have
`contacts on opposite sides of the base so as to match the
`location of the contacts in a mini-wedge socket.
`Reply to P.O. Response (Paper 15) at 10;
`1999 SAE Handbook (OSIX 1022) at 8;
`Wesson Dep. (OSIX 1036) at 42:5-21, 43:12-15.
` It was within the level of ordinary skill in the art to provide
`contacts on opposite sides of a printed circuit board.
`Reply to P.O. Response (Paper 15) at 10;
`Wesson Dep. (OSIX 1036) at 42:5-21, 43:12-15.
`
`OSID 29
`
`
`
`Laforest Renders Claims 30 and 31 Obvious
`
` Patent Owner does not dispute that Laforest describes
`each limitation of claims 30 and 31 except for the size
`and shape of the claimed LED light bulb bases.
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` Laforest discloses designing an LED light bulb
`compatible with standard motor vehicle sockets.
`Laforest (OSIX 1018) at 2, lns. 23-30.
` It would have been obvious to one of skill in the art to
`modify Laforest’s LED light bulb to fit into a standard
`automotive three-digit bulb socket.
`Corrected Petition (Paper 5) at 32-33;
`Reply to P.O. Response (Paper 15) at 5, 7.
`
`OSID 30
`
`
`
`Prima Facie Obviousness
`of Claim 30 over Alvarez
`
`OSID 31
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` Patent Owner does not dispute that Alvarez describes
`each limitation of claim 30 except for the size and shape
`of the claimed LED light bulb bases and electrical control
`means “mounted” on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` At a minimum, it would have been obvious to one of skill
`in the art to modify Alvarez’s LED light bulb to fit into a
`standard automotive three-digit bulb socket.
`Corrected Petition (Paper 5) at 48;
`Reply to P.O. Response (Paper 15) at 7.
` Alvarez’s disclosure covers the “conventional” mounting
`of a resistor on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 11.
`
`OSID 32
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` Alvarez discloses each element of claim 30—except an
`express disclosure of a base specifically adapted for
`automotive mini wedge sockets:
`
`Annotated Figure 3 of Alvarez
`Corrected Petition (Paper 5) at 41.
`OSID 33
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` Although Figure 3 of Alvarez does not illustrate a resistor,
`Alvarez discloses connecting a resistor
`(or other
`electronics components) to the LED in the embodiment of
`Figure 3.
`
`Corrected Petition (Paper 5) at 45-47;
`Shackle Decl. (OSIX 1002) at ¶¶ 94-96.
`
`Alvarez (OSIX 1020) col. 4, lns. 4-10.
`OSID 34
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` A person of ordinary skill in the art would recognize that a
`resistor (highlighted in red) could be connected between
`the LED (11′) and one of the electrical leads (48, 50), as
`described in column 3, lines 42-44.
`
`Alvarez Figure 11 (left) and Modified Alvarez Figure 3 (right)
`Corrected Petition (Paper 5) at 46.
`
`OSID 35
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` Mr. Wesson admitted that Alvarez describes the LED
`light bulb of claim 30, except for the size and shape of the
`base and a resistor “mounted” on a printed circuit board:
`An LED light bulb (Wesson Dep. (OSIX 1036) at 110:11-25) …
`comprising:
`a bulb body comprising a printed circuit board having a front
`side, a rear side, and an upper side (Id. at 111:7-16);
`at least one light emitting diode mounted on the upper side of
`the printed circuit board and electrically coupled with the printed
`circuit board (Id. at 111:17-112:3, 112:19-113:12); and
`electrical control means … electrically connected between the
`printed circuit board and at least one pair of electrical conductors (Id.
`at 114:2-115:10).
`
`Reply to P.O. Response (Paper 15) at 2-3.
`
`OSID 36
`
`
`
`Patent Owner Has Not Rebutted the Strong Showing
`of Prima Facie Obviousness of claim 30 over Alvarez
`
` Patent Owner presents the following arguments in
`attempting to distinguish Alvarez:
` Alvarez does not describe a bulb that would fit in a standard
`automotive mini wedge type socket
` Alvarez does not disclose “electrical control means mounted on
`the printed circuit board”
`
`P.O. Response (Paper 13) at 13-14;
`Reply to P.O. Response (Paper 15) at 5, 6-7, 10-11.
`
`OSID 37
`
`
`
`Alvarez Teaches Modifying the LED Light Bulb
`Base to Fit Prior Art Incandescent Sockets
`
`OSIX 1020 (Alvarez) col. 1, lns. 34-36.
` Three-digit automotive incandescent lamps were used as
`turn signal indicators for the following classic cars: 1968
`Chevrolet Camaro, 1978 Chevrolet Corvette, 1970
`Dodge Challenger, 1972 Dodge Charger, 1969 Ford
`Mustang, and 1969 Pontiac GTO.
`
`Shackle Decl. (OSIX 1002) at ¶ 91;
`Lamp Replacement Guide (OSIX 1025).
`
`OSID 38
`
`
`
`Alvarez Teaches Modifying the LED Light Bulb
`Base to Fit Prior Art Incandescent Sockets
` Consistent with Young and the admitted prior art of the
`’625 patent, Alvarez describes adapting the base of the
`embodiment shown in Figure 3.
`
`Corrected Petition (Paper 5) at 43-45.
`
`Alvarez (OSIX 1020) col. 4, lns. 12-19.
`
`OSID 39
`
`
`
`Alvarez Teaches Modifying the LED Light Bulb
`Base to Fit Prior Art Incandescent Sockets
`
` To the extent that Alvarez does not teach or suggest an
`LED light bulb designed to fit into sockets configured to
`receive a three-digit automotive incandescent lamp, it
`would have been obvious to a person of ordinary skill in
`the art to modify the base of Alvarez’s LED light bulb to fit
`into sockets configured to receive a three-digit
`automotive incandescent lamp.
`
`Corrected Petition (Paper 5) at 48;
`Alvarez (OSIX 1020) col. 4, lns. 12-19;
`Reply to P.O. Response (Paper 15) at 7;
`Shackle Decl. (OSIX 1002) at ¶¶ 91, 101.
`
`OSID 40
`
`
`
`Alvarez Describes Mounting a Resistor
`on a Printed Circuit Board
`
` Patent Owner did not provide any basis for interpreting
`“mounted” in claim 30 as foreclosing the “electrical
`control means” from being a resistor that is “spaced
`away” from a printed circuit board.
`Reply to P.O. Response (Paper 15) at 10-11.
`
`OSID 41
`
`
`
`Alvarez Describes Mounting a Resistor
`on a Printed Circuit Board
` Regardless of Patent Owner’s interpretation of mounting,
`Alvarez fully discloses the “electrical control means”
`limitation of claim 30.
`
`Reply to P.O. Response (Paper 15) at 11.
`
`Alvarez (OSIX 1020) col. 4, lns. 4-10.
`
`OSID 42
`
`
`
`Alvarez Describes Mounting a Resistor
`on a Printed Circuit Board
` Mr. Wesson testified that, as of December 2001, it was
`known to mount resistors on printed circuit boards.
`Q: At the time of your invention in claims 30 and 31, it was known to
`mount resistors on printed circuit boards, right?
`A: Yes.
`Q: Resistors are made to be mounted on printed circuit boards,
`rights?
`A: I suppose
`Q: And that was true at the time of your invention of Claims 30 and
`31, right?
`A: Yes
`
`Wesson Dep. (OSIX 1036) at 37:13-038:4, 54:7-12;
`Reply to P.O. Response (Paper 15) at 11.
`
`OSID 43
`
`
`
`Alvarez Describes Mounting a Resistor
`on a Printed Circuit Board
`
` Because using surface mounted resistors would qualify
`as “a conventional manner” for mounting resistors to a
`printed circuit board, Alvarez fully discloses the “electrical
`control means” limitation of claim 30.
`Reply to P.O. Response (Paper 15) at 11.
`
`OSID 44
`
`
`
`Alvarez Renders Claim 30 Obvious
`
` Patent Owner does not dispute that Alvarez describes
`each limitation of claim 30 except for the size and shape
`of the claimed LED light bulb bases and electrical control
`means “mounted” on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` Alvarez teaches modifying an LED light bulb base to fit
`prior art incandescent sockets.
`
`Corrected Petition (Paper 5) at 48;
`Alvarez (OSIX 1020) col. 4, lns. 12-19;
`Reply to P.O. Response (Paper 15) at 7.
` Alvarez’s disclosure covers the “conventional” mounting
`of a resistor on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 11.
`
`OSID 45
`
`
`
`Prima Facie Obviousness
`of Claim 30 over Horowitz
`
`OSID 46
`
`
`
`Horowitz Renders Claim 30 Obvious
`
` Patent Owner does not dispute that Horowitz describes
`each limitation of claim 30 except for the size and shape
`of the claimed LED light bulb bases and electrical control
`means “mounted” on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` It would have been obvious to one of skill in the art to
`modify Horowitz’s LED light bulb to fit into a standard
`automotive three-digit bulb socket.
`Corrected Petition (Paper 5) at 56-57;
`Reply to P.O. Response (Paper 15) at 7.
` Horowitz describes control circuitry that is mounted on
`the printed circuit board.
`
`Reply to P.O. Response (Paper 15) at 12.
`
`OSID 47
`
`
`
`Horowitz Renders Claim 30 Obvious
`
` Horowitz discloses each element of claim 30—except a
`base adapted for mini wedge sockets:
`
`Annotated Figure 1 of Horowitz
`Corrected Petition (Paper 5) at 50.
`OSID 48
`
`
`
`Horowitz Renders Claim 30 Obvious
`
` Mr. Wesson admitted that Horowitz describes the LED
`light bulb of claim 30, except for the size and shape of the
`base and a resistor “mounted” on a printed circuit board:
`An LED light bulb (Wesson Dep. (OSIX 1036) at 120:3-121:9) …
`comprising:
`a bulb body comprising a printed circuit board having a front
`side, a rear side, and an upper side (Id. at 121:24-122:4);
`at least one light emitting diode mounted on the upper side of
`the printed circuit board and electrically coupled with the printed
`circuit board (Id. at 122:5-18); and
`electrical control means … electrically connected between the
`printed circuit board and at least one pair of electrical conductors (Id.
`at 123:3-124:17, 124:21-125:3).
`
`Reply to P.O. Response (Paper 15) at 2-3.
`
`OSID 49
`
`
`
`Patent Owner Has Not Rebutted the Strong Showing
`of Prima Facie Obviousness of Claim 30 over Horowitz
`
` Patent Owner presents the following arguments in
`attempting to distinguish Horowitz:
` Horowitz does not describe a bulb that would fit in a standard
`automotive mini wedge type socket
` Horowitz does not disclose “electrical control means mounted on
`the printed circuit board”
`
`Paper 13 at 14;
`Reply to P.O. Response (Paper 15) at 5, 10, 11-12.
`
`OSID 50
`
`
`
`Horowitz Teaches Modifying the LED Light
`Bulb Base to Fit Standard Automotive Sockets
`
` Horowitz expressly states that the disclosed LED lamp
`assembly replaces “stock” incandescent light bulbs
`(without modifying the sockets) and that the disclosed
`LED Assembly is directed to automotive uses.
`Corrected Petition (Paper 5) at 55-57;
`Reply to P.O. Response (Paper 15) at 6-7.
`
`Horowitz (OSIX 1021) at col. 3, lns. 26-31.
`
`OSID 51
`
`
`
`Wedge and Mini-Wedge Sockets
`Differ in Size and Shape
`
`Profile View of a Wedge Socket (OSIX 1030) (Left)
`and a Mini-Wedge Socket (OSIX 1032) (Right)
`
`OSID 52
`
`
`
`Wedge and Mini-Wedge Sockets
`Differ in Size and Shape
`
`S-8 Wedge Base (W2.5x16d)
`
`194 Mini Wedge Lamp (W2.1x9.2d)
`
`1998 OSI Lamp Catalog (OSIX 1026) at 5, 6.
`
`OSID 53
`
`
`
`Horowitz Teaches Modifying the LED Light
`Bulb Base to Fit Standard Automotive Sockets
`
` To the extent that Horowitz does not disclose an LED
`light bulb designed to fit into sockets configured to
`receive a three-digit automotive incandescent lamp, it
`would have been obvious to a person of ordinary skill in
`the art to modify the base of Horowitz’s LED light bulb to
`fit into sockets configured to receive a three-digit
`automotive incandescent lamp.
`
`Corrected Petition (Paper 5) at 56-57;
`Reply to P.O. Response (Paper 15) at 7;
`Horowitz (OSIX 1021) at col. 3, lns. 26-31;
`Shackle Decl. (OSIX 1002) at ¶¶ 120-21.
`
`OSID 54
`
`
`
`Horowitz Describes Mounting a Resistor
`on a Printed Circuit Board
` Patent Owner argued that a resistor (electrical control
`means) is not “mounted” on a printed circuit board if not
`supported by the printed circuit board (i.e., “floating”).
`P.O. Response (Paper 13) at 14.
` Mr. Wesson testified in deposition, however, that a
`resistor could be mounted to the printed circuit board if
`the housing supports the resistor:
`Q: How can the resistor be mounted to the printed circuit board but
`not supported by the printed circuit board?
`A: It can be supported by the housing.
`
`Wesson Dep. (OSIX 1036) at 93:5-8;
`Reply to P.O. Response (Paper 15) at 11-12.
`
`OSID 55
`
`
`
`Horowitz Describes Mounting a Resistor
`on a Printed Circuit Board
` In Figure 1, Horowitz discloses that the electronic
`components (e.g., resistors) are supported by the housing:
`Reply to P.O. Response (Paper 15) at 11-12.
`
`Horowitz (OSIX 1021) at col. 6, lns. 43-48.
`
`OSID 56
`
`
`
`Horowitz Describes Mounting a Resistor
`on a Printed Circuit Board
`
` Even under Mr. Wesson’s interpretation of “mounted,”
`Horowitz fully describes the limitation of electrical control
`means mounted on a printed circuit board.
`Reply to P.O. Response (Paper 15) at 12.
`
`OSID 57
`
`
`
`Horowitz Renders Claim 30 Obvious
`
` Patent Owner does not dispute that Horowitz describes
`each limitation of claim 30 and 31 except for the size and
`shape of the claimed LED light bulb bases and electrical
`control means “mounted” on a printed circuit board..
`Reply to P.O. Response (Paper 15) at 2-3, 5.
` Horowitz teaches modifying an LED light bulb base to fit
`prior art incandescent sockets.
`
`Corrected Petition (Paper 5) at 56-57;
`Reply to P.O. Response (Paper 15) at 7.
` Horowitz describes control circuitry that is “mounted” on
`the printed circuit board.
`
`Reply to P.O. Response (Paper 15) at 12.
`
`OSID 58
`
`
`
`Secondary Considerations Do
`Not Overcome the Prima Facie
`Obviousness of Claims 30 and 31
`
`OSID 59
`
`
`
`No Objective Evidence of Secondary Considerations
`
` No objective evidence to support a finding of secondary
`considerations that overcomes the prima facie
`obviousness of claims 30 and 31.
` Patent Owner relies exclusively on Mr. Wesson’s declaration to
`show alleged commercial success.
` Patent Owner relies on Mr. Wesson’s declaration and evidence of
`allegedly infringing products to show copying by others.
`P.O. Response (Paper 13) at 15-18;
`Reply to P.O. Response (Paper 15) at 12.
`
`OSID 60
`
`
`
`No Evidence of Commercial Success
`
` Patent Owner did not submit any objective evidence to
`support alleged sales of over 500,000 mini-wedge LED
`light bulbs within the scope of claims 30 and 31.
`Reply to P.O. Response (Paper 15) at 12-13.
` Further, Patent Owner did not provide any evidence of its
`share of the automotive mini-wedge bulb market.
`Reply to P.O. Response (Paper 15) at 12-13.
` “[T]he number of units sold, without market share, is only weak
`evidence, if any, of commercial success.”
`Toyota Motor Corp. v. Hagenbuch, IPR2013-00483,
`Paper 51 at 17-18 (Dec. 5, 2014) (citation omitted).
`
`OSID 61
`
`
`
`No Evidence of Commercial Success
`
` With regard to the alleged $2,900,000 in gross revenue
`from the sale of mini-wedge bulbs, Patent Owner made
`no attempt to prove “that the sales were a direct result of
`unique characteristics of the invention – as opposed to
`other economic and commercial factors unrelated to the
`quality of the patented subject matter.”
`Kyocera Corp. v. Softview LLC, IPR2013-00007,
`Paper 51 at 32 (Mar. 27, 2014) (citations omitted);
`Reply to P.O. Response (Paper 15) at 12, 13.
`
`OSID 62
`
`
`
`No Basis for Presumption of Commercial Success
`
` Because OSI objected to interrogatories relating to sales
`of OSI’s alleging infringing product, Patent Owner argues
`that “it should be presumed that the evidence [of
`commercial success] sought but not produced is
`sufficient to overcome any alleged obviousness of claims
`30 and 31.”
`
`P.O. Response (Paper 13), 17-18;
`Reply to P.O. Response (Paper 15) at 13-14.
` No authority cited for this extraordinary outcome.
`Reply to P.O. Response (Paper 15) at 13-14.
` The discovery sought by Patent Owner was not “routine
`discovery.”
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026,
`Paper 32 at 3 (Mar. 8, 2013);
`Reply to P.O. Response (Paper 15) at 13-14.
`
`OSID 63
`
`
`
`No Basis for Alleged Copying by Others
`
` Patent Owner did not provide any “evidence of efforts to
`replicate a specific product.”
`Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).
` The only support for alleged copying by others is Mr.
`Wesson’s declaration, but Mr. Wesson testified that he
`understood copying to be the same as infringement.
`P.O. Response (Paper 13) at 16;
`Reply to P.O. Response (Paper 15) at 14; OSIX 1036.067:19-21.
`“Not every competing product that arguably falls within the scope of
`a patent is evidence of copying; otherwise, every infringement suit
`would automatically confirm the nonobviousness of the patent.”
`Wyers, 616 F.3d at 1246.
`
`OSID 64
`
`
`
`Conclusion
`
` Petition establishes the prima facie obviousness of
`claims 30 and 31 over Laforest
`
` Petition establishes the prima facie obviousness of at
`least claim 30 over Alvarez
`
` Petition establishes the prima facie obviousness of at
`least claim 30 over Horowitz
`
` Secondary considerations do not rebut the strong
`showing of prima facie obviousness
`
`OSID 65
`
`
`
`THANK YOU
`
`I_I
`
`THANK YOU
`
`ml]I'll] Hulbert&Berghofi up
`
`McDonnell Boehnen
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), I certify that on June 16, 2015, a
`
`true copy of the accompanying PETITIONER OSRAM SYLVANIA Inc.’s
`
`Demonstrative Exhibits was served via electronic mail upon the Patent Owner at
`
`the following addresses:
`
`Seth M. Nehrbass (Reg. No. 31,281)
`Email: SethNehrbass@gsnn.us, SNehrbass@gmail.com
`
`Mackenzie Rodriguez (Reg. No. 61,739)
`Email: mrodriguez@gsnn.us
`
`Kenneth L. Tolar (Reg. No. 39,860)
`Email: tolar@tolarlawoffice.com
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/John M. Schafer/
`John M. Schafer (Reg. No. 65,509)
`
`
`
`
`
`
`
`
`
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