`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`OSRAM SYLVANIA INC.
`Petitioner
`v.
`JAM STRAIT, INC.
`Patent Owner
`
`IPR2014-00703
`Patent 6,786,625
`
`Declaration of Bruce Wesson
`
`I am Bruce Wesson, the inventor of the Automotive LED Mini-Wedge
`
`Based bulbs claimed in claims 30 and 31 of US Patent No. 6,786,625. I have over
`
`14 years of experience in automotive LED light bulb design, manufacturing and
`
`distribution.
`
`Our company, Jam Strait, Inc., (JSI) is the owner of the US Patent No.
`
`6,786,625.
`
`JSI was formed in 1998 to make music displays and automotive LED bulbs.
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`JSI has been making and selling LED bulbs adapted for use in standard automotive
`
`mini wedge type bulb sockets as claimed in claims 30 and 31 of US Patent No.
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`6,786,625 since around 2002.
`
`I believe that, based on my reviews of numerous websites, dozens of
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`companies infringe claim 30 of the ‘625 patent in the US.
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`JSX 2001.001
`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
`IPR2014-00703
`
`
`
`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`Osram Sylvania is an infringer of the ‘625 patent who, like the others,
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`wishes to benefit from the invention of JSI but does not wish to pay for its benefit.
`
`In 1984 I graduated with an Electronics Engineering degree from RETS
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`Electronics Institute in Birmingham, Alabama. I started JSI in 1998 after 14 years
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`working for Hughes Aircraft in numerous engineering positions.
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`I am familiar with our accounting system and have reviewed accounting
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`records of JSI. JSI has sold over 550,440 of the LED light bulbs claimed in claims
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`30 and 31 to date; this comes to over $2,918,660 in sales. The patented 194 bulb
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`is shown in Exhibit JSX 2003. White solder mask covers most of the metal surface
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`of the PCB, but it does not substantially interfere with the ability of the metal
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`surface to act as a heat sink as mentioned in the ‘625 patent.
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`JSI also sells a cheaper 194 LED light bulb as shown in Exhibit JSX 2004.
`
`JSI has sold to date (since 2002) 24,903 of these cheaper bulbs for gross revenue of
`
`$27,201. JSI sells the patented 194 LED light bulbs for an average of around
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`$5.30 each. JSI sells the cheaper 194 LED light bulbs for an average of around
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`$1.09 each. Despite the higher cost of the patented 194 LED bulbs, they outsell
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`the cheaper ones around 22 to 1. I believe that this is because the patented design
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`allows more LEDs to be used in the bulbs, allowing them to be brighter and thus
`
`more desirable to our customers, because the bulbs are more robust, and more
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`JSX 2001.002
`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
`IPR2014-00703
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`
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`compact (due to mounting the resistors on the PCB, which can occur because the
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`PCB acts as a heat sink as explained in the ‘625 patent) (please see Exhibit JSX
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`2003 and compare to 194 bulb in Exhibit JSX 2004).
`
`I have reviewed the three primary references (LaForest, Alvarez, and
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`Horowitz) used in the petition. This is my assessment.
`
`1.
`
`None of them discloses an LED light bulb adapted for use in standard
`
`automotive mini-wedge type bulb sockets. I will explain below.
`
`2.
`
`3.
`
`I invented my invention as claimed in Claims 30 and 31 by 4 July 2001.
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`Attached as Exhibit JSX 2000 is a hand drawing which I made after I made
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`4 actual prototypes of the invention claimed in claims 30 and 31. The date on the
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`drawing, 4 July 2001, had been redacted out when this Exhibit was filed on 1
`
`August 2014. I made the drawing on 4 July 2001. The prototype which is
`
`depicted in the drawing was made by me prior to 4 July 2001.
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`4.
`
`The prototypes that were made before the drawing was done can be
`
`described as follows:
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`4.1
`
`I used generic Radio Shack printed circuit boards (PCBs) about 2” x 4” with
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`through holes on a .100” center grid each with solder pads on both sides.
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`4.2
`
`I used a scroll saw and cut the PCBs down to the size shown in the drawing.
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`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`4.3 For the first prototype (not shown in the drawing) I used one ¼ watt resistor
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`on one side of the PCBs, the value to produce 20 ma through the one (5 mm) LED
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`mounted to the upper part of one side of the PCB with leads bent 90 degrees so the
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`LED light is directed on the upward plane of the PCBs, in the opposite direction of
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`the base.
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`4.4
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`15/1000 inch (.015”) wires were used to make the contacts on the mini-
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`wedge bulb’s base, soldered close to and parallel to the left and right edges of the
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`base.
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`4.5 Then I fit checked and functionally tested in different automobile’s mini-
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`wedge bulb sockets, in different lamps, in different vehicles, and it fit properly in
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`all of them; primarily because I cut the PCBs to the same width of the incandescent
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`auto mini-wedge bulb, and made the thickness the same by adding the wire
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`contacts.
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`4.6 However 1 LED was not as bright as the standard 5 watt mini-wedge
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`incandescent bulb.
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`4.7 So I built a second prototype with 2 (5 mm) LEDs mounted side by side and
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`it is about as bright as the stock bulb, and the same width.
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`4.8 However it looked unbalanced, so I made a third prototype with 4 (5 mm)
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`LEDs, in a 10 mm square configuration, making it the same width, both ways, as
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`the stock bulb’s diameter is.
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`4.9
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` These LEDs were only ½ as bright as the second prototype’s with 2
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`LEDs, so it was still about the same brightness of the stock 5 watt bulb.
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`4.10 I also made a Fourth Prototype with 4 of the brightest 5 mm LEDs which
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`was more than twice as bright as the stock 5 watt mini-wedge bulb.
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`4.11 For the fourth prototype I used two each 1/8 watt resistors in series, instead
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`of one each ¼ watt resistor, one on both sides of the PCBs for symmetry and to
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`spread the heat for better dissipation.
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`4.12 The Fourth Prototype was as bright as the 21 watt mini-wedge bulbs such as
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`the 912 bulbs which are used in third brake lamps, cargo lamps, trunk lamps and
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`others.
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`From their invention by GE scientist in the 1960s until the late 1990’s,
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`LED’s typically weren’t bright enough to be used for illumination. They were
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`only used for indication. PCBs and electronic equipment used them to indicate
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`different states of circuits. In the 1990’s new much brighter LED’s came out made
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`of different materials. Finally, red and amber AlInGaP LEDs were available that
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`JSX 2001.005
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`IPR2014-00703
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`were bright enough to be used for illumination, making it possible to invent LED
`
`replacement bulbs and lamps for automotive applications.
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`Having invented the larger LED automotive Brake/Tail/Turn bulbs shown in
`
`my first US Patent, Patent No. 6,371,636, in both the original bayonet based and
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`the new wedge based bulbs, I set my sights on the smaller mini-wedge bulbs. My
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`goal was to design an LED mini-wedge bulb that was adequately bright, easy to
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`build, reliable, cool operating, fit within the footprint of the incandescent mini-
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`wedge bulb so it would fit in all applications, stable electrical control, looked good,
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`worked well, good quality, and in-expensive to manufacture. I studied and
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`measured the incandescent bulb. The base thickness with conductors measured
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`about .078”. The standard PCB thickness was only .063”, but by soldering .015”
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`wires to the PCB base like the incandescent bulb created the proper thickness of
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`.078”. The incandescent bulb diameter measured 10 mm, the same as the width of
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`the wedge base. If I could overcome the heat issue, then I could mount the
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`resistors on the PCB which can be done automatically on an auto-insertion
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`machine and soldered on either a wave solder machine (for through hole) or re-
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`flow oven (for surface mount resistors), versus hand soldering if I utilized a plastic
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`housing as was typical in 2001 for LED bulbs. Four 5 mm LEDs in a square
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`configuration measured exactly 10 mm wide and 10 mm thick.
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`JSX 2001.006
`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
`IPR2014-00703
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`I overcame the resistor heat problem as outlined below under LaForest, 1-7.
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`Specifically, I was able to mount the resistors on the PCB because of an innovation
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`I invented - leaving most of the metal on the PCB and having trace separations
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`instead of trace circuits (see '625 patent, col. 15, lines 14-22): “PCB 490
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`preferably is substantially fully plated with metal on both sides, with only
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`relatively thin etch lines defining positive contact 491 and ground contact 492 by
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`electrically separating these contacts from the metal to which LED 421 is
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`electrically connected; this enables PCB 490 to act as a heat sink for the LED 421
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`and resistors 486 and 487, which allows LED operation at higher current and
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`brightness without degradation or heat build up.”
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`I used the PCB to make the wedge base in accordance with claim 31 to avoid
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`the high cost of a plastic injection mold, the cost of the plastic housing, the hassle
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`of making the plastic housings and shipping them to the PCB assembly house, and
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`the added steps required to assemble and secure the PCB in the plastic housing,
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`and having to make housing drawings, CAD files, and prototypes when it was
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`much less expensive, looked better, and was a more robust vibration-resistant
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`design to utilize the PCB for the wedge base. Mounting the resistors on the PCB
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`allows the bulb to be more easily and less expensively manufactured.
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`Page 7 of 18
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`From 2001 until 2011 all mini-wedge LED bulbs of which I am aware made
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`by other manufacturers utilized a plastic housing/base with a single fat 10 mm
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`LED in the open end with a resistor suspended between the LED and the base in
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`the plastic housing’s cavity, as shown in Exhibit JSX2004. The single LED was
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`insufficiently bright to replace the incandescent bulb but they still sold a lot of
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`them apparently. They were designed to be indicators instead of illuminators due
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`to the brightness and the clear frosted 10 mm LEDs that were used exclusively for
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`the first several years after 2001, where the whole LED turns color instead of clear
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`LEDs where the LED remains clear but shines the light onto a lens and
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`illuminating it. In 2011 many companies (including Osram Sylvania) started
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`copying our design with the LED(s) and resistor(s) all mounted on the PCB.
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`Osram Sylvania infringes claim 30 of the patent by selling bulbs which it identifies
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`as the LEDriving® 168/194/2825 LED light bulb. Photos of such bulbs are shown
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`in Exhibits JSX 2005 and JSX 2006.
`
`LaForest
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`LaForest discloses a bulb which is not likely operable (or at least in July
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`2001, at the time the present invention was made, I believe that it would have been
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`considered to be inoperable by one of ordinary skill in the art). I would have
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`considered it inoperable at that time, due to the resistor being mounted on the PCB
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`of LaForest.
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`If I had seen this patent application prior to me inventing the LED mini-
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`wedge bulbs in accordance with claims 30 and 31 of our 625 patent I think it
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`would have confused me. I believe I would not have gotten the idea to make my
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`LED mini-wedge bulb. I don’t think I would have even gotten the impression this
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`was anything but some special equipment apparatus from the drawings and I never
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`would have read it. If I did read it, I don’t think I would have comprehended it, as
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`it was so different from anything I had ever seen. The bulb in Figures 1 and 2
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`looks more like a sub-system to the system shown in Figs 3-5. It doesn’t specify
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`what the dashboard (cover page) goes in. It may be a helicopter. “Motor vehicle”
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`(cover page) covers a lot more ground than automotive does. We don’t even know
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`what the operating voltage is or whether it is DC or AC voltage. The base of
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`Figures 1-2 don’t even look like a base. It’s not even called a bulb but “an LED
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`connector support…that comprises a small support plate 10”, not a PCB. There is
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`no correlation. It creates confusion more than anything. Furthermore, I wouldn’t
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`have thought to put the resistor on the PCB because I would have understood that it
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`would overheat the LED. LaForest does not mention how it can mount the resistor
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`on the PCT without having issues with overheating of the LED (the other two
`Page 9 of 18
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`IPR2014-00703
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`primary references, Alvarez and Horowitz, space the resistors away from the PCB,
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`as was common in 2001).
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`The bulb of the French reference (LaForest) is not for use in standard
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`automotive mini-wedge type bulb sockets. The bulb of the French reference is
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`much smaller. It is about 1/4 of the width of a standard 10 mm automotive mini-
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`wedge type bulb per Figure 1 where the LED is known to be 5 mm. It measures
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`however in my copy 0.35” and the base measures 0.200”. A 5 mm LED = .200”.
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`Known LED diameter .200”/.350” measured LED drawing = 0.57 multiplier. The
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`.200” base x .57 multiplier = 0.113” x 25 to convert to mm = 2.75 mm base width
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`versus 10 mm for the mini-wedge bulb socket.
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`The French “LED connector support” requires a modification to the motor
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`vehicle’s dash’s 70 socket mounting hole’s 71 slot 74 per Figure 4 for it to be
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`inserted into the socket 60 per Figure 5. The resistor 30 fits in a specially cut slot
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`74 in the mounting hole 71. The contacts are both on the same side (unlike a
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`standard automotive mini-wedge type bulb). It would not encourage one to design
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`an LED light bulb for use in a standard automotive mini-wedge type bulb socket as
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`it requires a modification of the automobile. You have to remove the socket, cut
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`out the opening, check for clearance, re-install socket, then insert the LED
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`connector support the only way it will go in. It’s a retrofit, not a bulb.
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`The contacts are wired opposite of a mini-wedge bulb; both on the same side
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`instead of one on each side.
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`The first “white” LED’s that came out around commercially around 2000
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`weren’t really white, but a real light-colored blue doped with a yellow coating.
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`They were very sensitive to overvoltage damage and very expensive. The first
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`white one I saw was around $30. The price dropped to $7 each within a year, then
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`$0.50 each, and now they are around $0.25 each for a very bright one. Thus, the
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`LED shown in LaForest (filed in 1985) had to be red or amber in color, which
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`means it was therefore limited to the red over-temperature indicator, low oil
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`pressure indicator, high beam indicator, or other fault indicators. It could not have
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`been used as a 194 bulb, which in 1985 would only have been white. Also, in
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`1985 the brightness of red and amber LEDs was around 300 mcd (milli-candella),
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`nowhere near bright enough for illumination of a lamp. Red or amber LEDs
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`wouldn’t be suitable for backlighting the instrument cluster, and thus could not be
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`used in a mini wedge bulb.
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`Another reason that I would have believed in July 2001 that this bulb
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`couldn’t be adapted for use in a mini-wedge bulb socket is because I believe that as
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`shown the LED would over-heat, degrade and burn out prematurely and wouldn’t
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`be reliable. To explain automobiles produce 13.8-14.5 VDC when operating
`Page 11 of 18
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`minus 2.2 VDC across the LED = 12.3 VDC across the series resistor 30. Typical
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`nominal LED current is 20-30 ma. Using Ohm’s Law of P = I x E where P
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`(power) is measured in watts, I is current measured in amps, and E is voltage. So
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`using the larger of the variables, .030 amps x 12.3 VDC = .369 watts requiring a ½
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`watt resistor (resistors only come in certain wattages such as 1/8 watt, ¼ watt, and
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`½ watt, etc..) which I believe would get very hot. This heat would transfer to the
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`PCB 11 of Figure 1 via the resistor 30 leads 31 and 32 and from the surface of the
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`resistor 30 body adjacent to the PCB 11, and travel left to the LED 20 leads 21 and
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`22 up and into the PN junction of LED 20 where I believe it would cause pre-
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`mature degradation of brightness, flickering, and burn out.
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`I however, overcame this problem, having never seen this application, by a
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`few innovative steps.
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`I used 2 series resistors, one on each side of the PCB, as shown in Figure 41.
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`I positioned the resistors away from the LEDs, as shown in Figures 40 and
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`1.
`
`2.
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`41.
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`3.
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`I used thin etches to separate wide traces (instead of the standard method of
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`thin traces with all excess metal etched away) so much of the metal plating was
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`used to turn the PCB into an efficient economical heat sink (see '625 patent, col.
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`15, lines 14-22).
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`4.
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`5.
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`I used two resistors which dissipate the heat better than a single resistor.
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`I used multiple LEDs in series consuming more of the voltage so there was
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`less voltage dropped across the resistors creating less wattage (heat).
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`Figures 1-2 of LaForest look like special keys of some kind. Figures 3-5
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`look like special equipment of some kind. None look like any automotive bulbs
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`I’d ever seen. The odd French motor vehicles have even stranger ideas on lighting
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`equipment. The socket alone is so un-necessarily complex and expensive, hard to
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`build designs. What we call a PCB he called “small support plate 10” (see the
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`cover page). I would have never thought he was talking about a PCB. I’ve never
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`seen anything like what’s shown in the drawings. They don’t look like bulbs much
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`less automotive bulbs.
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`One would not look at LaForest when trying to come up with a better mini-
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`wedge automotive bulb as I believe that would be like looking at a moped when
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`one wishes to improve a motorcycle. Further, the bulb of LaForest is likely
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`inoperable, as the amount of heat generated by resistor 30 would likely cause the
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`LED to fail after a short period of time as, unlike the LED bulb of Figures 39-41 of
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`the ‘625 patent, there are no means for dissipating the heat generated by this
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`resistor.
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`Alvarez
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`Alvarez does not disclose a bulb for use in standard automotive mini-wedge
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`type bulb sockets. Rather, the bases of the bulbs of Alvarez are only 5 mm, as
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`opposed to 10 mm for a standard automotive mini wedge type bulb. Refer to Fig. 3
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`and consider the length of a surface mount diode is only 5 mm and using a straight
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`edge one can see that the base is exactly the same width. Nowhere in the patent
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`does he disclose the applications or voltages of the various embodiments. The
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`bulbs of Alvarez are apparently for use to replace much smaller indicator lights in
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`the dashboard.
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`In 2001, surface mount LEDs were not bright enough to make a viable
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`automotive mini-wedge bulb. For example, our “Hyper-Bright” 5 mm through
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`hole LEDs are 6,000+ mcd verses 300 mcd for a surface mount LED. That’s only
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`5% of the brightness of through hole LEDs. It takes 4 of the 6,000 mcd LEDs to
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`make the mini-wedge bulbs we sell to OReilly and Auto Zone for example. It
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`would take 80 surface mount LEDs to equal the brightness of 4 through hole
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`LEDs. (24,000 mcd / 300 mcd = 80 LEDs.)
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`Due to the inherent heat of the series resistor (Column 4, lines 7-8 “resistors
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`and or diodes may be inserted in series in a conventional manner” (which in 2001
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`was to suspend the resistor between the PCB and the base in the cavity of the
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`plastic body as shown in Fig. 11 of Alvarez)), it would have over-heated the LEDs
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`if it were mounted on the PCB in 2001, causing pre-mature permanent degradation
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`and failure. The LED is 2 VDC and a vehicle operating is 13.8-14.5 VDC and
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`LED current is 20 ma. Using Ohms Law P=IxE where P is wattage, I is current
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`and E is voltage. 14.5-2=12.5 VDC across the series resistor x .020 amps = 0.25
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`watts requiring a ¼ watt resistor which will generate a great amount of heat, which
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`will damage the LED over time. Heat would have transitioned into the PCB via
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`the leads and resistor body, and into the LED through its solder pads and back of
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`LED package, into the LED chip.
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`The “central leg”, column 2 lines 62-63 and Figure 3 (40), would prohibit
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`use in a mini-wedge bulb socket.
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`These bulbs are all limited to surface mount LEDs as each of claims 1-26
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`start out “surface mounted LED lamp”. Additionally “surface mount LED” is
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`written throughout the patent.
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`This surface mount LED bulb looks nothing like what I invented in
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`accordance with claims 30 and 31, nor would it have instigated the invention I
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`came up with on my own.
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`Alvarez does not have electrical control means mounted on the printed
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`circuit board electrically connected between the printed circuit board and at least
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`one pair of electrical conductors. Rather, the resistor of Alvarez is spaced away
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`from the PCB. See Figure 3, Column 4, lines 7-8 “resistors and or diodes may be
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`inserted in series in a conventional manner” which in 2001 was to suspend between
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`the bottom of the PCB and the base in the body’s cavity as shown in Figure 11 of
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`Alvarez.
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`The LED sizes and quantities disclosed in the drawings, text, and claims
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`restrict the embodiments from mini-wedge applications regardless of Alvarez’s “fit
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`all applications” assertion. One can’t just say it without disclosing a way to
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`accomplish it. Otherwise I would patent a time travel machine.
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`Horowitz
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`Horowitz does not disclose a bulb for use in standard automotive mini-
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`wedge type bulb sockets. Rather, Horowitz discloses a tail light which has a
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`larger socket than a standard automotive mini-wedge type bulb socket. Also,
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`Horowitz does not have electrical control means mounted on the printed circuit
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`board electrically connected between the printed circuit board and at least one pair
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`of electrical conductors. Rather, the electrical control means (electronics140) are
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`floating between the printed circuit board and the base of the bulb, as shown in
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`Figure 2 and as was typical in July 2001 when I invented the bulb of claims 30 and
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`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`31. Thus, Horowitz is missing two key limitations of claim 30 and does not
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`suggest that one should include such limitations in an LED bulb.
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`Young
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`Young is a patent issued to Osram Sylvania in 2002 on a PCT patent
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`application which entered the national stage in the US on 26 May 2000. Young is
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`being used to allege that certain aspects of the claimed invention are obvious.
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`Young also indicates that Osram Sylvania was still focusing its attention on
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`incandescent automotive light bulbs in 2000 while JSI was busy inventing LED
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`automotive light bulbs. It is believed that Osram Sylvania did not begin making
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`LED light bulbs for use in automotive mini-wedge sockets as claimed in claim 30
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`until around 2011, long after Jam Strait created this innovation.
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`Osram Sylvania’s infringing mini wedge bulbs are shown in Exhibits JSX
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`2005 and JSX 2006 (these exhibits are from lawsuits filed by JSI against Osram
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`Sylvania).
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`I believe that improvements since July 2001 in LEDs and resistor
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`components allow infringers such as Osram Sylvania to copy Jam Strait's
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`innovation of mounting resistors on PCBs without leaving most of the metal on the
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`PCB and having trace separations instead of trace circuits.
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`Page 17 of 18
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`JSX 2001.017
`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
`IPR2014-00703
`
`
`
`IPR2014-00703
`Patent 6,786,625
`Declaration of Bruce Wesson dated 19 December 2014
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`All statements made of my own knowledge are true and that all statements
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`made on information and belief are believed to be true. I understand that willful
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`false statements and the like are punishable by fine or imprisonment, or both ( 18
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`U.S.C. 1001) and may jeopardize the validity of the patent.
`
`Bruce Wesson
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`Date: 19 December 2014
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`Page 18of18
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`JSX 2001.018
`OSRAM SYLVANIA INC. v. JAM STRAIT, INC.
`IPR2014-00703
`
`