UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD.,
`ATICO INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL
`USA, INC., CHIEN LUEN INDUSTRIES CO., LTD., INC.
`(SHIEN LUEN FLORIDA), CHIEN LUEN INDUSTRIES CO., LTD., INC.
`(SHIEN LUEN CHINA), COLEMAN CABLE, LLC, NATURE’S MARK,
`RITE AID CORP., SMART SOLAR, INC., AND
`TEST RITE PRODUCTS CORP.
`Petitioners
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner
`____________
`
`Case IPR2014-00936
`Patent 7,196,477
`____________
`
`REVISED PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1–29 of U.S. PATENT NO. 7,196,477)
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ...........................................................................................1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8...................................2
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))..................................2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2))..............................................3
`C.
`Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§ 42.8(b)(3-4)).......................................................................................5
`Service Information Under 37 C.F.R. § 42.8(b)(4)...............................5
`D.
`III. GROUNDS FOR STANDING (§ 42.104(a)) .................................................5
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b)) ..............................................5
`V.
`OVERVIEW OF THE ’477 PATENT ............................................................6
`VI.
`PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME.........................................................7
`VII. PROSECUTION HISTORY ...........................................................................8
`VIII. STATE OF THE ART RELATIVE TO THE ’477 PATENT ........................9
`C.
`Summary of the Prior Art....................................................................14
`1.
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1005) ................14
`U.S. Patent Application Publication No. US
`2.
`2003/0201874 A1 (“Wu”) (Ex. 1006) ......................................14
`Chinese Patent Publication No. CN 2522722Y (“Pu”)
`(Exs. 1007 and 1008) ................................................................14
`U.S. Patent No. 5,062,028 (“Frost”) (Ex. 1010).......................14
`Chinese Patent Publication No. CN 2541713Y (“Xu”)
`(Exs. 1011 and 1012) ................................................................14
`AU Patent App. No. 2002100505 A4 (“Richmond App.
`505”) (Ex. 1014) .......................................................................15
`7.
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1015).....................15
`8.
`PCT Application WO 91/02192 (“Hung”) (Ex. 1016).............15
`IX. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ...............................................................................................15
`UNPATENTABILITY GROUNDS..............................................................17
`A.
`Ground 1: Claims 1, 2, 4–9, 20-22, and 26 are rendered obvious
`under 103(a) by Chliwnyj in view of Wu further in view of
`Hung ....................................................................................................17
`
`4.
`5.
`
`3.
`
`6.
`
`X.
`
`ii
`
`

`

`B.
`
`C.
`
`E.
`
`F.
`
`D.
`
`Ground 2: Claims 10–12, 23-25, and 27-29 are rendered
`obvious under 103(a) by Chliwnyj in view of Wu further in
`view Hung and Pu ...............................................................................34
`Ground 3: Claims 3 and 13-16 are rendered obvious under
`103(a) by Chliwnyj in view of Wu further in view Hung and Xu......38
`Ground 4: Claims 17-19 are rendered obvious under 103(a) by
`Chliwnyj in view of Wu further in view Hung, Xu, and Pu ...............40
`Ground 5: Claims 1, 2, 4, 9, 20–22 and 26 are rendered obvious
`under 103(a) by Chliwnyj in view of Frost further in view of
`Hung ....................................................................................................41
`Ground 6: Claims 10–12, 23-25, and 27-29 are rendered
`obvious under 103(a) by Chliwnyj in view of Frost further in
`view of Hung and Pu...........................................................................48
`Ground 7: Claims 3 and 13, 14, and 16 are rendered obvious
`under 103(a) by Chliwnyj in view of Frost further in view of
`Hung and Xu .......................................................................................51
`Ground 8: Claims 17-19 are rendered obvious under 103(a) by
`Chliwnyj in view of Frost in further view of Frost, Hung, Xu
`and Pu ..................................................................................................52
`Ground 9: Claims 20 and 21 are rendered obvious under 103(a)
`by Richmond App. 505 in view of Shalvi...........................................53
`XI. REDUNDANCY ...........................................................................................58
`A.
`Grounds 4-8: Frost is not redundant....................................................58
`B.
`Ground 9: Richmond App. 505 and Shalvi are not redundant............59
`XII. CONCLUSION..............................................................................................59
`XIII. APPENDIX OF EXHIBITS ..........................................................................61
`
`G.
`
`H.
`
`I.
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`Jiawei Technology (HK) Ltd. 1 , Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., Atico International (Asia) Ltd.,
`
`and Atico International USA, Inc., Chien Luen Industries Co., Ltd., Inc. (Chien
`
`Luen Florida), and Chien Luen Industries Co., Ltd., Inc. (Chien Luen China),
`
`Coleman Cable, LLC2, Nature’s Mark, Rite Aid Corp., Smart Solar, Inc., and Test
`
`Rite Products Corp. (collectively “Petitioner”) petitions for inter partes review,
`
`seeking cancellation of claims 1–29 of U.S. Patent No. 7,196,477 to Richmond
`
`(“the ’477 patent,” Ex. 1001) purportedly owned by SIMON NICHOLAS
`
`RICHMOND (“Patentee”).
`
`The challenged claims are directed to solar powered lighting systems that
`
`“employ lighting devices to produce a variable colour.” The ’477 patent purports
`
`to be predicated on the discovery of combining variable lighting effects with a
`
`lighting assembly. As evidenced by the prior art references cited in this Petition
`
`and the Declaration of Dr. Peter W. Shackle,
`
`the connection between solar
`
`1 Jiawei Technology (HK) Ltd. contests that service was proper in the district court
`
`case, but in any event, the earliest possible service for any Jiawei entity listed is in
`
`Footnote 4.
`
`2 Coleman Cable, LLC was formerly Coleman Cable, Inc.
`
`

`

`powered lights and producing variable color in lighting devices was well-known in
`
`the art at the time of the invention and obvious to combine the prior art.
`
`In this Petition, Petitioner presents several references that render obvious the
`
`challenged claims of the ’477 patent. Section VII of this Petition summarizes the
`
`prosecution history of the ’477 patent. Section X sets forth the detailed grounds for
`
`invalidity of
`
`the challenged claims. This showing is accompanied by the
`
`Declaration of Dr. Peter W. Shackle. (“Shackle Decl.,” Ex. 1002.)
`
`Petitioner is reasonably likely to prevail in showing at least one of the
`
`challenged claims is not patentable, therefore, inter partes review of the ’477
`
`patent should be instituted.
`
`II.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner certifies that
`
`the following are real parties-in-interest: Jiawei
`
`Technology (HK) Ltd.,
`
`Jiawei Technology (USA) Ltd., Shenzhen Jiawei
`
`Photovoltaic Lighting Co., Ltd. (“Jiawei”), Ace Hardware Corp. (“Ace”), Atico
`
`International (Asia) Ltd., and Atico International USA, Inc. (“Atico”), Chien Luen
`
`Industries Co., Ltd., Inc. (Chien Luen Florida), and Chien Luen Industries Co.,
`
`Ltd., Inc. (Chien Luen China) (“Chien Luen”), Coleman Cable, LLC, Lowe’s
`
`Home Centers, LLC (“Lowe’s”), Menard, Inc. (“Menards”), Nature’s Mark, Orgill,
`
`Inc. (“Orgill”), Rite Aid Corp., Smart Solar, Inc., Test Rite Corp., True Value
`
`2
`
`

`

`Company (“True Value”), and Walgreen Co. (“Walgreens”) (collectively “Real
`
`Parties-in-Interest3”).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`On March 27, 2013, the purported Patent Owner sued multiple Petitioners in
`
`the U.S. District Court for the District of New Jersey alleging infringement of
`
`several patents, including the ’477 patent. On May 6, 2013, the purported Patent
`
`Owner filed an Amended Complaint alleging infringement of the ’477 patent. The
`
`earliest service date of the Amended Complaint served on the Petitioners identified
`
`above was June 11, 2013. 4 This Petition has been filed within one year of
`
`Petitioner being served a complaint alleging infringement of the ’477 patent. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The purported Patent Owner identified no
`
`3 Petitioner certifies that the following are real parties-in-interest, such that, the
`
`parties have at least been provided a draft of this petition and the opportunity to
`
`comment on it prior to filing this petition.
`
`4 The service date for each real party-in-interest is identified for the convenience of
`
`the Board:
`
`June 11, 2013 (Menards, Lowe’s, and Walgreens); June 12, 2013
`
`(Smart Solar); June 13, 2013 (Ace, Jiawei Technology (USA) Ltd., Orgill, True
`
`Value, Chien Luen, and Rite Aid); July 3, 2013 (Coleman); and no service date
`
`(Nature’s Mark and Test Rite).
`
`3
`
`

`

`claims for infringement in the Amended Complaint. At the time of this filing, the
`
`Court has not issued a Scheduling Order and the purported Patent Owner has
`
`served infringement contentions relative to the ’477 patent.
`
`The purported Patent Owner also filed additional
`
`lawsuits alleging
`
`infringement of the ’477 patent in several related judicial matters in the District of
`
`New Jersey. On March 27, 2013, the purported Patent Owner filed the following
`
`cases in the District of New Jersey: Case No. 3:13-cv-1944 (MLC); Case No.
`
`3:13-cv-1949 (MLC); Case No. 3:13-cv-1950 (MCL); Case No. 3:13-cv-1951
`
`(MLC); Case No. 3:13-cv-1952 (MLC); Case No. 3:13-cv-1953 (MLC); Case No.
`
`3:13-cv-1954 (MLC); Case No. 3:13-cv-1957 (MLC); Case No. 3:13-cv-1958
`
`(MLC); Case No. 3:13-cv-1959 (MLC); and Case No. 3:13-cv-1960 (MLC). On
`
`May 6, 2013, Case No. 3:13-cv-2916 (MLC) was also filed in the District of New
`
`Jersey. The court consolidated Civil Action Nos. 13-1944 (MLC), 13-1949 (MLC),
`
`13-1951 (MLC), 13-1952 (MLC), 13-1953 (MLC), 13-1954 (MLC), 13-1957
`
`(MLC), 13-1959 (MLC) and 13-1960 (MLC) for case management and pretrial
`
`discovery on August 20, 2013 into Civil Action No. 13-1944 (MLC).
`
`The ’477 patent is being asserted in these proceedings with two other patents
`
`within the same patent family as the ’477 patent—namely, U.S. Patent Nos.
`
`7,429,827 and 8,362,700. All of the above cases are pending.
`
`Petitions have been concurrently filed on this day on patents part of the ’477
`
`4
`
`

`

`patent family—U.S. Patent Nos. 7,429,827 and 8,362,700.
`
`C. Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§ 42.8(b)(3-4))
`
`Petitioner appoints Mark C. Nelson of Dentons US LLP (Reg. No. 43,830)
`
`as lead counsel, and appoints Lissi Mojica (Reg. No. 63,421), Kevin Greenleaf
`
`(Reg. No. 64,062), and Daniel Valenzuela (Reg. No. 69,027) of Dentons US LLP,
`
`as back-up counsel. A Power of Attorney for each Petitioner identified in Section I
`
`is filed concurrently.
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via hand-
`
`delivery to Dentons US LLP, 233 South Wacker Drive, Suite 7800, Chicago, IL
`
`60606-6306. Petitioner consents to service by email at mark.nelson@dentons.com,
`
`lissi.mojica@dentons.com, kevin.greenleaf@dentons.com,
`
`daniel.valenzuela@dentons.com, and iptdocketchi@dentons.com.
`
`III.
`
`GROUNDS FOR STANDING (§ 42.104(a))
`
`Petitioner certifies that the ’477 patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ’477 patent on the grounds identified in this Petition.
`
`IV.
`
`OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’477 patent’s challenged claims is requested on
`
`the grounds for unpatentability listed in the index below.
`
`5
`
`

`

`Ground
`1
`2
`
`Index of References
`Basis
`§ 103(a) Chliwnyj, Wu and Hung
`§ 103(a) Chliwnyj, Wu, Hung and Pu
`
`§ 103(a) Chliwnyj, Wu, Hung and Xu
`
`Claims Challenged
`1, 2, 4–9, 20-22, and 26
`10–12, 23-25, and 27–29
`3 and 13–16
`
`3
`
`4
`
`5
`
`6
`7
`8
`9
`
`§ 103(a) Chliwnyj, Wu, Hung, Xu and Pu
`
`17–19
`
`§ 103(a) Chliwnyj, Frost and Hung
`
`1, 2, 4, 9, and 20-22, and
`26
`10–12, 23–25, and 27–29
`§ 103(a) Chliwnyj, Frost, Hung and Pu
`3 and 10–19
`§ 103(a) Chliwnyj, Frost, Hung and Xu
`§ 103(a) Chliwnyj, Frost, Hung, Xu and Pu 17–19
`§ 103(a) Richmond App. 505 and Shalvi
`20 and 21
`
`Chliwnyj, Wu, Pu, Xu, Hung, and Richmond App. 505 were not cited or
`
`relied upon by the examiner during prosecution of the ’477 patent. At no time did
`
`the Applicant refer the references to the PTO. Shalvi was relied on by the examiner
`
`but not in combination with Richmond App. 505. Frost was cited in an IDS but not
`
`relied upon by the examiner during the prosecution of the ’477 patent. To support
`
`the proposed grounds of unpatentability, this Petition is accompanied by the
`
`declaration of technical expert Dr. Peter W. Shackle. (Shackle Decl., Ex. 1002.)
`
`V.
`
`OVERVIEW OF THE ’477 PATENT
`
`The ’477 patent was filed on February 26, 2004 and issued on March 27,
`
`2007 and claims foreign priority to Australian Patent Application No. 2003271383
`
`6
`
`

`

`filed on December 23, 2003 (Richmond App. 383, Ex. 1004.) The Applicant
`
`submitted a declaration swearing to a reduction to practice date of May 23, 2003
`
`for claims 20–29. (’477 File History, Ex. 1003.) The ’477 challenged claims are
`
`directed to the interplay between a solar lighting device and electronic circuitry to
`
`produce varying color changing effects using a plurality of light emitting elements.
`
`(Shackle Decl., Ex. 1002, ¶ 66.) The ’477 patent discloses electrical components
`
`and circuitry to power light sources through solar power and a rechargeable battery
`
`to produce varying colors. The lighting device also charges the battery during the
`
`day and the battery later powers the light emitting elements to emit light in ambient
`
`conditions. (Shackle Decl., Ex. 1002, ¶ 67.)
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME
`
`The field for the ’477 patent is solar powered lighting devices and more
`
`particularly but not exclusively to solar powered lighting that produces a light of
`
`varying color. (’477 patent, Ex. 1001, Col. 1:6–8.) Within a field, the level of
`
`ordinary skill in the art is evidenced by the prior art references of record. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) As of the earliest effective filing
`
`date of the ’477 patent claims, a person of ordinary skill in the art typically would
`
`have possessed: 1) a graduate degree in electrical or electronics engineering or
`
`physics with demonstrable experience in the circuit design, or 2) a bachelor’s
`
`degree in electrical or electronics engineering or physics with at least two years
`
`7
`
`

`

`industrial experience and demonstrable experience in the circuit design. (Shackle
`
`Decl., Ex. 1002, ¶ 36.)
`
`VII.
`
`PROSECUTION HISTORY
`
`During the prosecution of the ’477 patent, rejections were made based on
`
`three references, namely U.S. Patent No. 6,120,165 to Shalvi, U.S. Patent App. No.
`
`US 2005/0156103 to May et al. in view of U.S. Patent No. 6,528,782 to Zhang.
`
`The examiner rejected claims 20–27 and objected to claims 28–29 in the first
`
`Office Action. The Applicant amended the claims to overcome the rejected claims.
`
`The Applicant amended claim 20 to include limiting the solar cell mounted on “a
`
`surface . . . so to be exposed to light …user operated on/off [switch] . . . enabling a
`
`user to manipulate the switch to control the deliver of electric power from the
`
`battery.” (’477 File History, Ex. 1003.) In a second rejection, the examiner rejected
`
`claims 20–29 in view of May and Zhang. The applicant swore behind May [102(a)
`
`reference] with a declaration antedating the date for reduction to practice to a date
`
`prior to the 102(a) date of the May reference. Therefore, the patentee’s purported
`
`reduction to practice date for claims 1–19 is December 23, 2003 and May 23, 2003
`
`for claims 20–29. In a telephone interview with the Applicant’s attorney, the
`
`examiner authorized additional amendments, including amendments to Claims 1
`
`and 20 with the additional limitation of a “body including a spike.” The examiner
`
`allowed claims 20–29 with the additional amendments. (Ex. 1003, ’477 File
`
`8
`
`

`

`History.)
`
`VIII.
`
`STATE OF THE ART RELATIVE TO THE ’477 PATENT
`
`The ’477 patent is broadly directed to a lighting device having a lens,
`
`rechargeable battery, solar cell, and circuitry to provide varying color. (’477
`
`Patent, Col. 1:34–Col. 1:54.) The ’477 patent purports to overcome disadvantages
`
`well-known in the art for light emitting diodes systems, such as difficulty in
`
`producing a uniform desired color and difficulty of adjusting the light functions.
`
`(’477 Patent, Ex. 1001, Col. 1:21–25.) The ’477 patent admits that light devices
`
`that employ LEDs to produce a variable color are well known. (’477 Patent, Ex.
`
`1001, Col. 1:11–12.) The Patentee also admits that using solar-powered lights
`
`using rechargeable batteries is well known in the art. (’477 Patent, Ex. 1001, Col.
`
`1:12–20.) The prior art teaches using a plurality of different colored LEDs and
`
`ramping and/or controlling power to the light sources to vary intensity to create
`
`color varying. The prior art also discloses switches that allow a user to select a
`
`desired color and power the circuitry on and off. The prior art teaches circuitry
`
`with programs in memory to produce a multitude of desired lighting patterns.
`
`Together the prior art renders obvious all of the challenged claims of the ’477
`
`patent.
`
`A.
`
`Technical Background
`
`Light is one of many forms of electromagnetic radiation, which is controlled
`
`9
`
`

`

`by its frequency. (Shackle Decl., Ex. 1002, ¶¶ 38–39.) The light spectrum spans
`
`from deepest red color having
`
`a wavelength of around 780
`
`nm to the deepest violet color
`
`having
`
`a wavelength
`
`of
`
`around 400 nm. See id. at 3.1.
`
`(Shackle Decl., Ex. 1002, ¶¶
`
`40–41.) Figure A shows a
`
`spectrum of visible sunlight.
`
`Note there is light at every wavelength. See id. at 6.6. (Shackle Decl., Ex. 1002, ¶
`
`41.)
`
`The human eye only perceives three primary colors. See id. at 2.5. All other
`
`colors are made up from combinations of these wavelengths. See id. For example,
`
`a fluorescent lamp can emit the primary colors of red, green and blue, plus some
`
`yellow. The human eye perceives this combination as white light. With solid state
`
`(LED) lighting, LEDs that are respectively red, green, and blue can be combined in
`
`specific proportions and are interpreted by the human eye as white light. (Shackle
`
`Decl., Ex. 1002, ¶ 42.)
`
`Dr. Shackle’s declaration contains a figure showing the overlap of red, blue
`
`and green light, including creating white light by adding three colors together. Id.
`
`10
`
`

`

`at 6.7. (Shackle Decl., Ex. 1002, ¶ 43.) To create varying color that can cover the
`
`spectrum of colors, one or more of the LEDs is varied in intensity, and the human
`
`eye perceives a varying color. See id. 6.8. (Shackle Decl., Ex. 1002, ¶ 44.)
`
`The human eye cannot perceive rapid variations in intensity above 200 Hz,
`
`essentially no one can detect the fluctuation by directly looking at it. See id. at
`
`7.69. The width of each pulse is varied; this is called pulse width modulation
`
`(PWM). See id. When PWM is done, the human eye perceives a light that grows
`
`bright and dim, depending on the width of the pulse, even though electronic
`
`instruments may record that the peak of each pulse is actually the same. See id. A
`
`pulse width modulator is commonly used to control the LED’s intensity. A color
`
`spectrum is achieved by continuously changing intensity level by varying the level
`
`of power to each LED. The result is a mixture of colors; for example, if red, blue
`
`and green light is used, that combination can produce color changes across the
`
`color spectrum. (Shackle Decl., Ex. 1002, ¶¶ 45–46.)
`
`A light sensitive switch comprises at a minimum a) a light responsive
`
`element that can be a photodiode, phototransistor, photovoltaic cells, or any other
`
`circuit element
`
`that changes some parameter of its circuit characteristics in
`
`response to light; b) a power switch that operates to activate or deactivate a circuit
`
`in response to a signal from the light responsive element. There is no requirement
`
`for any mechanical switch. (Shackle Decl., Ex. 1002, ¶ 50.)
`
`11
`
`

`

`B.
`
`Background of the Technology
`
`Solar powered lights produce light using stored energy obtained from
`
`sunlight. Solar
`
`lights may involve a combination of elements such as a
`
`photovoltaic cell, a rechargeable battery, a lamp and ambient light sensing control
`
`circuitry used to determine when to turn the lamp on, and lighting circuitry often
`
`using integrated circuits to determine which colors and patterns to display.
`
`(Shackle Decl., Ex. 1002, ¶ 53.)
`
`A first key ingredient for solar powered lighting is a compact, lightweight
`
`rechargeable battery. Nickel metal hydride batteries were first released in 1989 and
`
`were soon improved upon by the lithium ion battery, which first became available
`
`in 1991. See, e.g., U.S. Patent No. 5,062,028 to Frost,
`
`issued October
`
`1991(generally describing a solar lamp on a ground stake powered by rechargeable
`
`nickel metal hydride batteries). (Shackle Decl., Ex. 1002, ¶ 54.)
`
`A second key ingredient for solar powered lighting is the availability and
`
`effectiveness of photovoltaic cells. By the year 2000, a relatively small solar cell
`
`could generate enough power in one day to keep a discharge lamp operating for
`
`several hours during the night. (Shackle Decl., Ex. 1002, ¶ 55.)
`
`Early attempts at making a solar powered light used a lead acid battery, as
`
`described by Doss in U.S. Patent No. 4,841,416, filed in March 1988 and issued in
`
`June 1989. This product used a 12V incandescent lamp. Also with an incandescent
`
`12
`
`

`

`lamp but now with a battery the shape and size of a nickel metal hydride battery is
`
`the invention described by Frost in U.S. Patent No. 5,062,028, which was filed in
`
`August 1989 and issued in October 1991. (Shackle Decl., Ex. 1002, ¶ 56.)
`
`The next technology leap to affect the business of solar powered lighting
`
`was the improvement of LED lamp efficacy. LED devices had been around since
`
`1962, but in the 1960s and 1970s they were only bright enough to make indicator
`
`lights and low powered displays such as on calculators. However with continual
`
`R&D, in the time interval from 1965 to 1990 the light output per LED that could
`
`be obtained had increased 1000 times so that during the 1990s it was now possible
`
`to make a useful luminaire with an efficacy already many times that of an
`
`incandescent lamp, and outputs of several lumens could be produced from an LED
`
`lamp. (Shackle Decl., Ex. 1002, ¶ 58.)
`
`In 1999, another technology line was evolving as engineers were realizing it
`
`was possible to switch LEDs on and off so rapidly (say 1000 times /sec) that the
`
`human eye would detect instead a steady light with a brightness corresponding to
`
`the fraction of time the LED was switched on. By operating a red, a blue, and a
`
`green LED simultaneously, any desired color could be synthesized. This could be
`
`accomplished by using an inexpensive microcontroller, for example, the Philips
`
`51LPC family has three PWM (pulse width modulator) outputs that can output
`
`pulses with a width under program control. (Shackle Decl., Ex. 1002, ¶ 60.)
`
`13
`
`

`

`C. Summary of the Prior Art
`
`The prior art references relied upon disclose a lighting device that produces
`
`a varying color as recited in the challenged claims. The references comprise
`
`Exhibits 1005–1016.
`
`1.
`
`U.S. Patent No. 5,924,784 (“Chliwnyj”) (Ex. 1005)
`
`Chliwnyj was filed August 15, 1996 and published July 20, 1999 and is prior
`
`art under 35 U.S.C. § 102(b).
`
`2.
`U.S. Patent Application Publication No. US 2003/0201874
`A1 (“Wu”) (Ex. 1006)
`
`Wu was filed April 24, 2002 and published October 30, 2003 and is prior art
`
`under 35 U.S.C. § 102(e).
`
`3.
`Chinese Patent Publication No. CN 2522722Y (“Pu”) (Exs.
`1007 and 1008)
`
`Pu was filed November 22, 2001 and published November 27, 2002 and is
`
`prior art under 35 U.S.C. § 102(b).
`
`4.
`
`U.S. Patent No. 5,062,028 (“Frost”) (Ex. 1010)
`
`Frost was filed August 11, 1989 and issued October 29, 1991 and is prior art
`
`under 35 U.S.C. § 102(b).
`
`5.
`Chinese Patent Publication No. CN 2541713Y (“Xu”)
`(Exs. 1011 and 1012)
`
`Xu was filed January 28, 2002 and published March 26, 2003 and is prior art
`
`under 35 U.S.C. § 102(a).
`
`14
`
`

`

`6.
`AU Patent App. No. 2002100505 A4 (“Richmond App.
`505”) (Ex. 1014)
`
`Richmond App. 505 was filed June 19, 2002 and published November 21,
`
`2002 and is prior art under 35 U.S.C. §102(b).
`
`7.
`
`U.S. Patent No. 6,120,165 (“Shalvi”) (Ex. 1015)
`
`Shalvi was filed July 9, 1997 and issued September 19, 2000 and is prior art
`
`under 35 U.S.C. § 102(b).
`
`8.
`
`PCT Application WO 91/02192 (“Hung”) (Ex. 1016)
`
`Hung was filed on August 10, 1990 and published on February 21, 1991 as
`
`PCT WO91/02192 and is prior art under 35 U.S.C. § 102(b).
`
`IX.
`
`CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3)
`
`Per the claim construction standard for an inter partes review, Petitioner
`
`bases this petition upon the broadest reasonable interpretation of the claim
`
`language. Because the standard for claim construction at the Patent Office differs
`
`from that used during a U.S. district court litigation, see In re Am. Acad. Of Sci.
`
`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioners expressly
`
`reserve the right to argue a different claim construction in litigation for any term of
`
`the ’477 patent in such proceeding. Solely for the proceeding only, under the
`
`broadest reasonable interpretation standard, Petitioner proposes that all claims
`
`should be entitled to their plain and ordinary meaning, except for the limitations
`
`15
`
`

`

`addressed below.
`
`The term “lamp” is in independent claims 1 and 20. The claims state “circuit
`
`having at least two lamps of different colours” and is construed to mean “an
`
`electrical device, the primary purpose of which is to create light of a single color,
`
`and which is physically connected to a source of electricity.”
`
`The term “varying colour” is in independent claims 1 and 20. Claims 1 and
`
`20 require a circuit having at least two lamps of different colors. (’477 Patent, Ex.
`
`1001, Col. 7:29–30, Col. 8:40–41.) The claims state “including a varying colour,”
`
`and is construed to mean, “colors produced include a color that changes over time
`
`by varying the intensity of one or more of the lamps with time.”
`
`The term “desired colour” is in independent claims 1 and 20. The claims
`
`state “circuit having at least two lamps of different colours to produce a desired
`
`colour” and is construed to mean, “to produce a color that is desired by the user or
`
`intended by the designer.”
`
`The term “securing means” is in independent claim 1 and invokes 35 U.S.C.
`
`112, § 6. (35 U.S.C. 112, § 6) Claim 1 states “securing means to releasably engage
`
`the rim so that the cap assembly can be selectively removed from the lens” and is
`
`construed to mean “inward projecting flange segments that engage with outward
`
`extending flange segments of the rim to be secured thereto or equivalents thereof.”
`
`(’477 Patent, Ex. 1001, Col. 3:47–49.)
`
`16
`
`

`

`X.
`
`UNPATENTABILITY GROUNDS
`
`The references reviewed below render the claimed subject unpatentable
`
`under 35 U.S.C. § 103. As detailed below,
`
`the Petitioner has a reasonable
`
`likelihood of prevailing as to each of the following grounds of unpatentability.
`
`Throughout the grounds, the figures have been annotated to identify elements of
`
`the claim in the prior art and emphasis added to the evidence to support the
`
`challenge.
`
`A. Ground 1: Claims 1, 2, 4–9, 20-22, and 26 are rendered obvious
`under 103(a) by Chliwnyj in view of Wu further in view of Hung
`
`U.S.
`Patent No.
`7,196,477
`[1.0] A
`lighting
`device to
`produce
`light of
`varying
`colour, said
`device
`including:
`
`Chliwnyj in view of Wu further in view of Hung
`
`“The preferred embodiment has a plurality of lighting elements in
`a plurality of colors which are modulated in intensity by a control
`circuit with a stored program. The control program includes stored
`amplitude waveforms for the generation of a realistic flame
`simulation. The program further contains random elements to keep
`the flame constantly changing.” (Chliwnyj, Ex. 1005, Abstract)
`(emphasis added).
`
`“The turning on and turn off of the LEDs, caused by a pulse width
`modulation of an LED current, tends to broaden the spectrum of
`the LEDs. This leads to an increased apparent brightness of the
`flame. Super BriteTM light emitting diodes (Super BriteTM LEDs),
`which may be supplied by high power AlInGaP amber and reddish-
`range LED lamps, have a wider spectrum than other LEDs. Super
`BriteTM LEDs may also enhance the flame motion due to color
`changes.” (Chliwnyj, Ex. 1005, Col. 5:18–25) (emphasis added).
`
`“The controlling program comprises stored instructions for
`generating the amplitude modulated time waveforms for controlling
`the current to the lighting elements. Pulse Width modulation (PWM)
`
`17
`
`

`

`may be performed in
`either hardware or
`program code, provided
`that sufficient
`microprocessor
`“bandwidth” may be
`available to perform the
`program-code operations.
`Drivers provide the
`necessary drive current
`for the respective lighting element.” (Chliwnyj, Ex. 1005, Col. 5:34–
`41).
`
`“As shown in FIG. 2, a combination of flame-simulation circuitry
`and program-coded power management may incorporate
`photovoltaic panels 16, charging circuits 18, and rechargeable
`batteries 17. Microprocessor 1 may control pulse width modulator 19
`which in turn drives LEDs 20 to create a realistic simulated flame.
`This results in a simulated flame for use, for example, in cemeteries
`as a memorial marker. With sufficient power generating capacity the
`flame may run day and night, creating in effect an “eternal flame.”
`(Chliwnyj, Ex. 1005, Col. 5:63– Col. 6:4).
`
`FIG. 2 is a function block diagram of a solar-powered flame-
`simulation circuitry. Figure 2 discloses a Pulse Width Modulator
`(PWM) to control each LED to produce a varying color.
`
`(Shackle Decl., Ex. 1002, ¶¶ 90–96.)
`
`[1.1] a
`body
`including a
`spike;
`
`“The main stem 20 is made from a plurality of hollow rods 21, a
`socket is provided therein for connecting of electric wires; each rod
`21 is provided on one end thereof with a connecting portion 23 to
`allow connecting of every two neighboring rods 21 by slipping one
`over the other; the last rod 24 of the main stem 20 is in the form of a
`cone for inserting into the soil.” (Wu, Ex. 1006, ¶ 17).
`
`See Wu Figure 4 at 20 (body) and 24 (spike).
`
`18
`
`

`

`Chliwnyj teaches an embodiment for “solar
`powered in-ground memorial … commonly
`found placed in-ground….” (Chliwnyj, Ex.
`1005, Col. 12:20–23).
`
`(Shackle Decl., Ex. 1002, ¶¶ 97–99.)
`
`[1.2] a lens
`mounted
`on the
`body and
`generally
`enclosing
`a chamber
`having an
`upper rim
`surroundin
`g a top
`opening,
`and a
`bottom
`region;
`
`“Referring firstly to FIGS. 1a–3, the shrew-expelling device with an
`illumination function of the present invention is comprised of an
`electric circuitry 10, a main stem 20 and a housing 30.” (Wu, Ex.
`1006, ¶ 15).
`“The housing 30 is provided with a transparent lamp shade 31 in the
`form of a bowel, the lamp shade 31 is provided on the bottom thereof
`with a connecting pipe 32 to be connected with a connecting portion
`23 of a rod 21 of the main stem 20, thereby, the lamp shade 31 is
`connected with the main stem 20; and the lamp shade 31 is provided
`on the top thereof with an annular connecting cover 33 which is
`connected on the top thereof with a transparent semispherical hood
`34.” (Wu, Ex. 1006, ¶ 18).
`
`“Referring to FIG. 2, when in assembling of the present invention,
`the battery seat 22, the electric circuit board 11 and the solar-energy
`powered electricity generating element 12 are respectively thread
`connected with the electric circuit base 35 and the power generating
`base 36, and then are placed in the lamp shade 31, they are combined
`with the lamp shade 31 when the transparent hood 34 and the annular
`connecting cover 3