`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 19
`
`
` Entered: Dec. 22, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COLEMAN CABLE, LLC, JIAWEI TECHNOLOGY (HK) LTD., JIAWEI
`TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PHOTOVOLTAIC
`LIGHTING CO, LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., SMART SOLAR, INC., AND TEST RITE
`PRODUCTS CORP.,
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`Case IPR2014-00935
`Patent 8,089,370 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Corrected Petition to institute an inter partes review (Paper
`10, “Pet.”) of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50 of U.S. Patent
`No. 8,089,370 B2 (Ex. 1001, “the ’370 patent”). Pet. 1. Petitioner included a
`declaration of Dr. Peter Shackle (Ex. 1002). Patent Owner filed a Preliminary
`Response. Paper 18 (“Prelim. Resp.”). We review the Petition under 35 U.S.C.
`§ 314, which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`We have reviewed the Petition, Preliminary Response, and the evidence
`cited therein. For the reasons discussed below, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that claims 1–7, 9, 10, 14, 17–20,
`23, 28, 43, 45 and 48–50 of the ’370 patent are unpatentable.
`A. Related Proceedings
`Petitioner states that Patent Owner has filed a number of lawsuits alleging
`infringement of the ’370 patent. Pet. 3–4. Petitioner also filed three petitions for
`inter partes review of patents, owned by the same Patent Owner as named in this
`Petition, involving similar technology to that disclosed in the ’370 patent. These
`three pending inter partes reviews are IPR2014-00936; 00937; and 00938.
`B. Prior Civil Action
`Patent Owner raises a jurisdictional challenge to the petition under 35 U.S.C.
`§ 315(a)(1), which we address first. Under § 315(a)(1), no inter partes review may
`be instituted if a petitioner filed a civil action challenging the validity of a claim of
`a patent before filing its petition. Patent Owner alleges that the petition is
`statutorily barred under 35 U.S.C. § 315(a)(1) because three of the eight
`Petitioners, Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`
`
`
`2
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (collectively, the “Jiawei
`Parties”) previously filed a civil action challenging the validity of the ’370 patent.
`Prelim. Resp. 1, citing Ex. 2001.1 Exhibit 2001 is a copy of a complaint filed on
`February 8, 2012 in the U.S. District Court for the District of Delaware (Civ.
`Action No. 12-00154) by the Jiawei Parties against Adventive Ideas, LLC seeking
`a declaration of invalidity of several patents, including the ’370 patent. The
`Petition in this proceeding was filed on June 11, 2014. Paper 5. There is no
`dispute that the Jiawei Parties civil action was filed before the Petition was filed in
`this proceeding. Patent Owner acknowledges, however, that the civil action filed
`by the Jiawei parties was dismissed without prejudice prior to June 11, 2014.
`Prelim. Resp. 4, citing Ex. 2001, 15.
`Federal courts treat a civil action dismissed without prejudice “as if it never
`existed.” Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x 313
`(Fed. Cir. 2005); Bonneville Assoc., Ltd. P'ship v. Barram, 165 F.3d 1360, 1364
`(Fed.Cir.1999) (“The rule in the federal courts is that ‘[t]he effect of a voluntary
`dismissal without prejudice pursuant to Rule 41(a) ‘is to render the proceedings a
`nullity and leave the parties as if the action had never been brought.’” (citations
`omitted)); see also, e.g., Cyanotech Corp. v. Bd. of Trs. of the Univ. of Ill., Case
`IPR2013-00401, slip op. at 9–12 (PTAB Dec. 19, 2013) (Paper 17); Clio USA,
`Inc. v. Procter & Gamble Co., Case IPR2013-00450, slip op. at 5–8 (PTAB Jan. 9,
`2014) (Paper 14); Butamax™ Adv. Biofuels LLC v. Gevo, Inc., Case IPR2013-
`00539, slip op. at 6–8 (PTAB Mar. 4, 2014) (Paper 9); Apple Inc. v. Rensselaer
`Polytechnic Institute, Case IPR2014-00319 (PTAB July 31, 2014) (Paper 14).
`
`
`1 Patent Owner asserts that “Petitioner” is barred by the statute, after stating that
`the term “Petitioner” refers “collectively” to all eight parties jointly filing the
`petition. Prelim. Resp. 1.
`
`
`
`3
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`Patent Owner argues that the case law, and prior Board decisions applying the case
`law, “should not be followed or, if necessary, reversed.” Prelim. Resp. 5. Patent
`Owner argues that “[a]dding a qualification ‘unless such filing is dismissed under
`Rule 41(a)(1)’ to the plain and unqualified language of Section 315(a)(1)” would
`improperly allow the Federal Rules of Civil Procedure to “‘abridge, enlarge, or
`modify’ substantive rights defined by Section 315(a)(1).” Prelim. Resp. 6.
`The Federal Rules of Civil Procedure “govern the procedure in all civil
`actions and proceedings in the United States district courts.” Fed. R. Civ. P. 1.
`These Rules establish, among other things, how a civil action is commenced (Fed.
`R. Civ. P. 3), the requirements for serving the complaint (Fed. R. Civ. P. 4), and
`the procedures for voluntary dismissing a complaint by the plaintiff (Fed. R. Civ.
`P. 41(a)(1)). Patent Owner would have us follow the Federal Rules of Civil
`Procedure to establish that the Jiawei Parties filed a civil action,2 but argues that
`we should ignore these Federal Rules in determining the legal effect of the
`admitted voluntary dismissal without prejudice by the Jiawei Parties of the civil
`action.3 Prelim. Resp. 5. Patent Owner provides no persuasive evidence or
`argument that in passing the America Invents Act (AIA), Pub L. No. 112-29, 125
`Stat. 284, 329-31 (2011) Congress intended to overrule the application and
`interpretation of Fed. R. Civ. P. 41(a)(1).
`Patent Owners reliance on Keene Corp. v. United States, 17 Cl. Ct. 146
`(1989), aff'd sub nom, 508 U.S. 200 (1993) (Prelim. Resp. 9) also is not persuasive.
`
`2 Patent Owner argues that “the question of whether or not a petitioner had ‘filed a
`civil action’ can be simply determined by checking the official court records on
`‘Pacer.gov.’” Prelim. Resp. 13.
`3 We note that the question of whether a complaint has been dismissed voluntarily
`without prejudice also can be determined simply by checking the official court
`records on the Public Access to Court Electronic Records (PACER) website. See,
`Ex. 3001, 3, Paper 6.
`
`
`
`4
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`In Keene, the Court construed 28 U.S.C. § 1500, which provides that “[t]he United
`States Court of Federal Claims shall not have jurisdiction of any claim for or in
`respect to which the plaintiff or his assignee has pending in any other court any
`suit or process against the United States” or person acting under the authority of
`the United States (emphasis added). Thus, this statute deals with co-pending cases.
`The Court in Keene held that if a plaintiff, upon filing a case in the Claims Court,
`has a suit pending in any other court for or in respect to the same claim, § 1500
`bars jurisdiction over the Claims Court suit. Id. at 209; see also Central Pines
`Land Co. v. United States, 697 F.3d 1360, 1364 (Fed. Cir. 2012) (explaining that in
`Keene, “the § 1500 bar rises, if at all, at the time the complaint is filed in the Court
`of Federal Claims”)
`Patent Owner argues that “the dismissal [in Keene] did not fix the
`jurisdictional problem that was present at the time that the plaintiff filed its case.”
`Prelim. Resp. 10. Patent Owner asserts that “[a]nalogously to Keene,” the Jiawei
`Parties’ filing of the earlier declaratory judgment civil action irreversibly divested
`the Board of jurisdiction to hear a subsequent request for an IPR, notwithstanding
`the dismissal without prejudice prior to filing the Petition in this proceeding. Id.
`The substantive difference that Patent Owner fails to consider, however, is the
`fundamental difference in the statutory provisions. As explained in Keene and
`Central Pines, the statute, 28 U.S.C. § 1500, focuses on whether claims were
`pending in the district court when suit was filed in the Court of Federal Claims. A
`later dismissal of the pending action in district court could not cure the
`jurisdictional bar in Keene because, as explained in Central Pines, the statute
`determined that the § 1500 bar rises, if at all, if, at the time the complaint is filed in
`the Court of Federal Claims, another action is pending. Central Pines, 697 F.3d at
`1364. Keene and Central Pines do not establish any holding in conflict with the
`
`
`
`5
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`application of Federal Circuit precedent regarding the effect of dismissals without
`prejudice under our statute at issue, 35 U.S.C. § 315(a)(1). The voluntary
`dismissal without prejudice by the Jiawei Parties of their civil action renders the
`civil action a nullity and leaves the parties as if the action had never been brought.
`Thus, when we determine under § 315(a)(1) whether the Jiawei parties filed a civil
`action challenging the validity of a claim of the ’370 patent before filing its
`petition, we treat the action dismissed without prejudice as if it had never been
`brought.
`Accordingly, we determine that, in legal effect, there was no prior civil
`action because the earlier district court case was dismissed without prejudice.
`Thus, there is no bar under § 315(a) to the petition in this proceeding.4
`C. The ’370 Patent
`The ’370 patent is entitled “Illuminated Wind Indicator.” Ex. 1001, 1. The
`disclosed illuminated wind indictor is a modified wind chime having a solar
`powered, rechargeable light emitting pendulum. In this manner, power can be
`accumulated during the day and used to provide illumination at night. Id. at col. 5,
`ll. 11–16.
`As shown in Figure 1 of the ’370 patent, reproduced below, wind indicator
`10 includes light device 12 and chime portion 14, light device 12 and chime
`portion 14 being suspended on support 16 provided with spike 18. Id. at col. 5, ll.
`22–26.
`
`
`4 We note that there is no argument or evidence that the non-Jiawei Parties filed a
`civil action challenging the validity of a claim of the ’370 patent before filing the
`Petition. Based on our decision herein, we need not reach the issue of whether a
`prior civil action by the Jiawei Parties precludes the non-Jiawei Parties from
`maintaining this proceeding based on the Petition.
`6
`
`
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`
`
`Fig. 1 from the ’370 patent
`is a perspective view of wind indicator 10.
`As shown generally in Figure 1, light device 12 includes housing 20, lid 22,
`and light source 24. Id. at col. 5, ll. 27–31. Solar panels 30 convert solar energy to
`electrical power. Id. at col. 5, ll. 38–39. Chime portion 14 includes chime
`members 44 and a pendulum assembly suspended from housing portion 20. Id. at
`col. 5, ll. 57–60. In the example shown in Figure 1, the pendulum assembly
`includes striker disc 46 suspended using electrical wires 48, which pass from light
`device 12 through striker disc 46 to pendulum 50. Id. at col. 5. ll. 60–64.
`7
`
`
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`Electrical wires 48 may be electrically connected to second light emitting element
`52 disposed inside pendulum 50. Id. at col. 5, l. 65–col. 6, l. 1.
`D. Illustrative Claim
`Among the challenged claims, claims 1, 5, 17, 18, 19, 28, 43 and 45 are
`independent claims. Claim 1 is directed to a “solar lamp;” claim 5 is directed to an
`“illuminated wind indicator;” claim 17 is directed to a “solar light module for
`illuminating a wind chime;” claim 18 is directed to a “lighting apparatus;” and
`claims 19, 28, 43 and 45 are directed to an “illuminated wind indicator.” Claim 1
`is illustrative of the claimed invention and is reproduced below.
`
`1. A solar lamp comprising:
`
`a riser portion;
`
`a connecting frame connected to said riser portion;
`
`at least one light source, wherein said at least one light
`source emits light directed above at least part of said riser
`portion;
`
`an at least partially light transmissive lens extending to cover
`at least part of said at least one light source and wherein light
`emitted from said at least one light source causes at least part of
`said lens to illuminate;
`
`a surround frame attached to said lamp proximate to the
`intersection of said connecting frame and said riser portion such
`that some of said light passes through said lens to illuminate at
`least part of said surround frame from below at least part of said
`surround frame;
`
`electrical connections for at least one rechargeable power
`source, wherein said riser portion positions said connections
`above a ground surface;
`
`an activation circuit to provide power to said at least one
`light source from said at least one rechargeable power source
`only at low light levels; and
`
`at least one photovoltaic panel, wherein said at least one
`photovoltaic panel is electrically connected to said at least one
`light source via said at least one rechargeable power source,
`converting solar energy into electrical energy, storing said
`
`
`
`8
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`electrical energy and providing said electrical energy to said at
`least one light source.
`
`D. References Relied Upon
`Petitioner relies upon the following prior art references:
`
`Reference
`Norton,
`U.S. 2006/0139912 A1
`Kube,
`U.S. 2005/0279403 A1
`Ouyang (translation),
`CN 2145314Y
`Kao,
`U.S. 2005/0003120 A1
`Marchese
`U.S. Pat. No. 4,072,855
`Chen
`U.S. Pat. No. D469,909 S
`Kuelbs
`U.S. Pat. No. 6,830,009 B1
`Chliwnyj
`U.S. Pat. No. 5,924,784
`
`Date
`Filed June 11, 2004
`Pub. June 29, 2006
`Filed June 16, 2004
`Pub. Dec. 22, 2005
`Pub. Nov. 3, 1993
`
`Filed Apr. 27, 2004
`Pub. Jan. 6, 2005
`Issued Feb. 7, 1978
`
`Exhibit Number
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1014
`
`Ex. 1016
`
`Ex. 1017
`
`Issued Feb. 4, 2003
`
`Ex. 1018
`
`Issued Dec. 14, 2004
`
`Ex. 1019
`
`Issued July 20, 1999
`
`Ex. 1020
`
`
`
`
`
`
`
`
`
`9
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s) Challenged
`1 and 48
`
`Statutory Basis
`§ 102 and § 103
`
`References
`Norton
`
`2
`
`3
`
`4, 49, and 50
`
`5, 6, 7, 9, 10, 17, 18,19,
`20 and 23
`28, 43, and 45
`
`14
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Norton and Kao
`
`Norton and Marchese
`
`Norton and Chen
`
`Kube and Ouyang
`
`Kube, Ouyang, and
`Kuelbs
`Kube, Ouyang, and
`Chliwnyi
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim Construction); In re
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hen
`interpreting a claim, words of the claim are generally given their ordinary and
`accustomed meaning, unless it appears from the specification or the file history
`that they were used differently by the inventor.” In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. Id.
`
`
`
`10
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`We have considered Petitioner’s and Patent Owner’s proposed constructions
`but determine that specific construction of the proposed terms is not necessary for
`purposes of this Decision.
`B. Asserted Grounds of Unpatentability
`Patent Owner asserts three general arguments that affect all the asserted
`grounds of unpatentability, which we address first. These three general arguments
`concern: (1) the Declaration of Dr. Peter Shackle; (2) the skill level of a person
`having ordinary skill in the art; and (3) the priority date of certain claims of the
`’370 patent.
`1. Dr. Shackle’s Declaration
`Petitioner cites and relies for evidentiary support on the Declaration of Peter
`W. Shackle, Ph. D., which is Exhibit 1002. Patent Owner objects to Dr. Shackle’s
`qualifications as an expert because “he lacks essential qualifications regarding
`photovoltaic (i.e., solar) cells, solar powered lights, or other consumer products.”
`Prelim. Resp. 16. Patent Owner argues that “[b]ecause Dr. Shackle lacks essential
`qualifications regarding photovoltaic cells and consumer products, his declaration
`should be stricken from the record for failing to meet the requirements for
`competent expert testimony, or otherwise not relied upon by the Board as
`competent evidence.” Id. at 18.5
`
`
`5 Patent Owner’s position here, focused on photovoltaic cells, is significantly
`different from its argument concerning the level of skill of a person having
`ordinary skill in the art. Patent Owner asserts that the level of ordinary skill in the
`field of designing solar garden lights was relatively low—the equivalent of an
`industrial designer skilled at making basic, functional solar garden lights with
`various ornamentation, with only basic knowledge of the electrical circuits and
`components ordinarily used in solar garden lights. Prelim. Resp. 19–20. Patent
`Owner also refers to the “unsophisticated electrical circuits required for solar
`garden lights.” Id. at 20.
`
`
`
`11
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of
`science concerned with the properties of matter and energy and the relationships
`between them. It is based on mathematics and traditionally includes mechanics,
`optics, electricity and magnetism, acoustics, and heat.”6 In addition to his
`academic credentials, Dr. Shackle has over twenty years of experience in the field
`of lighting electronics, with particular emphasis on light emitting diode (“LED”)
`drivers and electronic ballasts. Ex. 1002 ¶ 3. This experience includes, but is not
`limited to: President and Founder of Photolume, a consulting company in the field
`of lighting electronics products; Director of Power Supply Products at Light Based
`Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and
`Director of Engineering and later V.P. of Advanced Technology at Universal
`Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible
`for developing a number of light emitting diode (“LED”) circuits and products. Id.
`at Appendix A (CV of Dr. Peter W. Shackle).
`Patent Owner specifically challenges Dr. Shackle’s expertise regarding
`photovoltaic cells and solar powered lights. Prelim. Resp. 16. As disclosed in
`Norton, photovoltaic cells, commonly termed “solar cells,” were well-known in the
`art of ornamental lamps used outdoors. Ex. 1011 ¶ 6. Solar lamps use solar cells
`to collect solar energy and convert solar energy to electricity to illuminate the
`lamp. Id.
`The ’370 patent refers very generally to solar panels and related circuits.
`See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic technology
`of solar cells and solar circuits, and the type and sophistication of the solar cell
`
`
`6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged
`10th Edition. HarperCollins Publishers.
`http://dictionary.reference.com/browse/physics (accessed: December 11, 2014).
`12
`
`
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`technology disclosed and claimed in the ’370 patent, based on the record before us,
`and for purposes of this Decision, Dr. Shackle appears qualified by knowledge,
`experience, training, and education to testify in the form of an opinion in this
`proceeding. Patent Owner is entitled to cross-examine Dr. Shackle based on his
`Declaration testimony as part of routine discovery. 37 C.F.R. § 42.51(b)(1)(ii).
`2. Person Having Ordinary Skill in the Art
`Petitioner asserts that “the level of ordinary skill in the art is evidenced by
`the prior art references of record.” Pet. 11. Within that guideline, it is Petitioner’s
`position that a person of ordinary skill in the art typically would have possessed
`either (1) a graduate degree in electrical or electronics engineering or physics with
`demonstrable experience in circuit design, or (2) a bachelor's degree in electrical or
`electronics engineering or physics with two years industrial experience and
`demonstrable experience in circuit design. Id., citing Ex. 1002 ¶ 36.
`Patent Owner takes a different view. It is Patent Owner’s position that the
`level of ordinary skill in the art requires some amount of experience with
`“industrial design of solar garden lights and physical manufacture of the lights.”
`Prelim. Resp. 19.
`At this stage of the proceeding, we evaluate the testimony of Petitioner’s
`declarant solely to determine whether Petitioner has established a reasonable
`likelihood of prevailing on its asserted grounds of unpatentability. In determining
`the level of ordinary skill in the art, a court may consider various factors, including
`“type of problems encountered in the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology; and
`educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
`Inc., 807 F.2d 955, 962 (Fed. Cir.1986)). In view of this encompassing approach,
`
`
`
`13
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`we decline to adopt either proposal over the other at this time, and instead consider
`both as well as the prior art references before us to provide guidance as to the level
`of ordinary skill in the art, unless otherwise indicated in our analysis. See id.; see
`also Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art
`itself can reflect the appropriate level of skill in the art.).
`3. Priority Date
`The ’370 patent claims priority to two provisional applications, provisional
`application No. 61/191,027, filed on Sep. 6, 2008 and provisional application No.
`60/642,382, filed on Jan. 7, 2005 (the “’382 provisional”). Ex. 1001, p. 1.
`Petitioner asserts that “[c]laims 1-6, 7, 9, 10, 14, 17-20, 23, and 48-50 are not
`entitled to the January 7, 2005, priority date of the '382 provisional application.”
`Pet. 8. We note that the cited references on which Petitioner relies all qualify as
`prior art under 35 U.S.C. § 102(e) or 35 U.S.C. § 102(b). Thus, for purposes of
`this Decision, which determines only whether there is a reasonable likelihood that
`Petitioner will prevail based on the information presented in the Petition and the
`Preliminary Response, we need not determine whether claims 1–6, 7, 9, 10, 14,
`17–20, 23, and 48–50 are entitled to the priority date of the ’382 provisional
`application.
`4. Claims 1 and 48 – Anticipation or Obviousness Based on Norton
`Petitioner asserts that claims 1 and 48 are anticipated by Norton (Pet. 20) or,
`alternatively, would have been obvious in view of Norton (Pet. 26).
`Norton discloses an ornamental lamp for indoor and outdoor use that uses a
`solar circuit, low voltage electricity, or other power source. Ex. 1011 ¶ 29. The
`lamp uses an electric bulb, illuminating diode, or any other device which converts
`electrical energy into optical energy. Id. The lamp assembly includes a dual
`
`
`
`14
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`housing to protect the lamp’s components and to facilitate a selectively varied
`décor. Id. at 0030.
`Petitioner provides the following annotated Figure 2 from Norton, which we
`reproduce below. Pet. 21, citing Ex. 1002, ¶¶ 98–129.
`
`
`
`Figure 2 from Norton, as annotated by Petitioner.
`Petitioner provides a detailed chart identifying how claims 1 and 48 are
`anticipated by Norton, and specifying where each element of these claims is found
`in Norton. Pet. 20–26. Petitioner cites the Declaration of Peter W. Shackle, Ph. D.
`for additional evidentiary support. Id.
`Patent Owner differs with Petitioner’s analysis on several points. Patent
`Owner asserts that Norton does not “illuminate at least part of said surround frame
`from below at least part of said surround frame,” as require by independent claim
`1. Prelim. Resp. 40. Patent Owner acknowledges, however, that Norton discloses
`illumination of “external protective element” 2 by transmission of light from
`“luminous body” 22 through its translucent material. Id. at 41. Patent Owner also
`acknowledges that the ’370 patent uses the term “illumination” to encompass
`illumination by transmission of light through an element that is translucent or
`
`
`
`15
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`transparent. Id. Patent Owner argues that Norton does not anticipate claims 1 and
`48, nor would they have been obvious, because these claims should be construed to
`include a surround frame “made from metal,” which is opaque. Id. The “made
`from metal” or “opaque” limitation is not contained in claims 1 or 48. According
`to Patent Owner, the preferred and only embodiment of the “surround frame”
`disclosed in the ’370 patent is a frame made from metal, and thus, we should so
`interpret the claims to include this limitation. Id. We decline to read this
`limitation from the Specification into the claims. In re Am. Acad. of Science Tech
`Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading
`limitations into a claim from the preferred embodiment described in the
`specification, even if it is the only embodiment described, absent clear disclaimer
`in the specification.” (emphasis added). See also Liebel-Flarsheim Co. v. Medrad,
`Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes
`only a single embodiment, the claims of the patent will not be read restrictively
`unless the patentee has demonstrated a clear intention to limit the claim scope
`using ‘words or expressions of manifest exclusion or restriction.’”). Patent Owner
`has not directed us to any evidence of a clear disclaimer of claim scope.
`We have considered, but find unpersuasive, Patent Owner’s argument that
`the “prior art of record” precludes Petitioner’s interpretation and application of
`Norton. Id. at 44.
`Petitioner bears the burden of establishing a reasonable likelihood of
`unpatentability of one or more claims. 37 C.F.R. § 42.108(c). Based on the record
`before us, and for purposes of this Decision, we determine that Petitioner has met
`that burden with respect to establishing a reasonable likelihood that claims 1 and
`48 are anticipated by Norton.
`With respect to the alternative ground that claims 1 and 48 would have been
`
`
`
`16
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`obvious in view of Norton, Petitioner asserts controller board 20 of Norton acts as
`the claimed “activation circuit” to allow the light to activate when needed, such as
`when the ambient light level is below a certain threshold. Pet. 26, citing
`Ex. 1002 ¶ 135. The rationale provided is that this modification, if needed, would
`conserve the amount of energy consumed by the light. Id. at 27. Patent Owner has
`not made a specific argument against this alternative ground. Based on the record
`before us, and for purposes of this Decision, we determine that Petitioner has met
`its burden with respect to establishing a reasonable likelihood that claims 1 and 48
`would have been obvious in view of Norton.
`5. Claim 2 – Obviousness Based on Norton and Kao
`Claim 2, dependent from claim 1, requires a lens made from luminescent
`material. Petitioner asserts that Kao specifically discloses such a luminescent lens,
`and it would have been obvious to use such a lens in Norton in order to implement
`Norton’s suggestion to modify the appearance of ornamental features of the lamp
`based on holidays, seasons, or other events. Pet. 27–28, citing Ex. 1002 ¶ 136.
`Patent Owner relies on the argument discussed above that Dr. Shackle is
`“unqualified to offer an opinion regarding the ‘electrical current from the battery’
`and the ‘input from the photoresistor’ at certain light levels ‘to conserve the
`amount of energy consumed by the light.’” Prelim. Resp. 46. As discussed above,
`we have determined, based on the record before us, that Dr. Shackle is qualified to
`express his opinions in support of the Petition.
`Based on the record before us, and for purposes of this Decision, we
`determine that Petitioner has met its burden with respect to establishing a
`reasonable likelihood that claim 2 would have been obvious in view of Norton and
`Kao.
`
`
`
`17
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`6. Claim 3 – Obviousness Based on Norton and Marchese
`Claim 3 requires the lens to have “glass portions” of two colors so that the
`light source causes the glass portions to illuminate “with more than one color.”
`Petitioner asserts that Marchese discloses a lamp having glass lens 13 that
`includes differently colored glass portions A, B, and C, where light source 11
`causes the differently colored glass portions to illuminate with more than one
`color. Pet. 30 citing Ex. 1002 ¶¶ 145-150. The rationale for combining the glass
`portions of Marchese with the lamp of Norton is that it would have “further
`enhance[d] the aesthetic appeal” of the lamp, which is one of Norton’s disclosed
`objectives. Id.
`Patent Owner states, without citation of any evidentiary support, that
`“[p]ersons of ordinary skill would not have been motivated to change an obscured
`element of Norton that would not have benefited from a decorative or
`aesthetically-pleasing effect.” Prelim. Resp. 48. Patent Owner’s statement is not
`persuasive in light of the evidence discussed above.
`Based on the record before us, and for purposes of this Decision, we
`determine that Petitioner has met its burden with respect to establishing a
`reasonable likelihood that claim 3 would have been obvious in view of Norton and
`Marchese.
`7. Claims 4, 49, and 50 – Obviousness Based on Norton and Chen
`Claims 4, 49, and 50 recite design features. Claim 4 requires that the lens is
`substantially spherical, with the surround frame partially encircling the lens. Claim
`49 requires the surround frame to have the ornamental shape of an insect, flower,
`geometric shape, or astronomical shape. Claim 50 requires that the surround frame
`at least partially surround said lens.
`
`
`
`18
`
`

`

`IPR2014-00935
`Patent 8,089,370 B2
`
`
`Petitioner asserts that Chen discloses an ornamental design for a solar light
`including a substantially spherical lens. Pet. 32. The rationale for the proposed
`combination is that it would further enhance the aesthetic appeal and broaden the
`use of the Norton lamp. Id., citing Ex. 1002 ¶ 151. Petitioner also states that
`Norton recognizes that Norton’s external element 2 may “comprise any shape or
`configuration” and specifically lists several different ornamental shapes, including
`a pumpkin, snowman, sun, and others. Id. at 33.
`Patent Owner again argues that there would have been no motivation “to
`change the shape of an obscured lens for its ‘ornamental aspects.’” Prelim. Resp.
`49.
`
`Based on the record before us, and for purposes of this Decision, we
`determine that Petitioner has met its burden with respect to establishing a
`reasonable likelihood that claims 4, 49, and 50 would have been obvious in view of
`Norton and Chen.
`8. Claims 5–7, 9, 10, 17–20, and 23 – Obviousness
`Based on Kube and Ouyang
`This group of claims requires, among other elements, a “chime member” and
`a “pendulum” or “striker” that moves relative to the chime member, and thus
`combines the light and chime aspects of the disclosed invention. Petitioner asserts
`that these claims would have been obvious ba