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.
`Petitioner
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent owner
`
`______________
`
`Case IPR2014-00936
`Patent 7,196,477
`____________
`
`PETITIONER’S REPLY BRIEF
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`THE LEVEL OF SKILL IN THE ART ..........................................................2
`
`A.
`
`B.
`
`Petitioner Correctly Assessed the Level of Ordinary Skill in the
`Art..........................................................................................................2
`
`Dr. Shackle is Qualified to Testify........................................................7
`
`III. CLAIM CONSTRUCTION ............................................................................8
`
`A.
`
`B.
`
`“varying colour”....................................................................................9
`
`“lamp,” “desired colour,” and “securing means”................................10
`
`IV. CLAIMS 1-29 ARE UNPATENTABLE ......................................................11
`
`A.
`
`Ground 1 - Claims 1, 2, 4-9, 20-22, and 26 are obvious in view
`of Wu, Chliwnyj, and Hung ................................................................12
`
`1.
`
`2.
`
`3.
`
`Wu discloses a “light sensitive switch,” as recited in
`claims 2 and 21. ........................................................................... 12
`
`It would have been obvious to combine Chliwnyj with
`Wu................................................................................................ 14
`
`It would have been obvious to combine Chliwnyj with
`Hung to provide a “switch … exposed to provide access
`thereto by a user,” as recited by claims 10-11, 24, and
`28-29. ........................................................................................... 18
`
`B.
`
`C.
`
`D.
`
`Ground 2 - Claims 10-12, 23-25 and 27-29 are obvious in view
`of Chliwnyj, Wu, Hung, and Pu..........................................................21
`
`Ground 3: Claims 3, and 13-16 are obvious in view of
`Chliwnyj, Wu, Hung, and Xu..............................................................23
`
`Ground 4: Claims 17-19 are obvious in view of Chliwnyj, Wu,
`Hung, and Pu. ......................................................................................24
`
`V.
`
`PO FAILED TO PROFFER ANY RELEVANT SECONDARY
`CONSIDERATIONS.....................................................................................25
`
`ii
`
`

`
`VI. CONCLUSION..............................................................................................25
`
`CONCLUSION ............................................................................................ ..25
`
`VI.
`
`iii
`
`iii
`
`

`
`I.
`
`INTRODUCTION
`
`Petitioners respectfully request that the Board find all instituted claims
`
`obvious in view of the cited references. Patent Owner’s (“PO’s”) arguments to the
`
`contrary are factually incorrect and legally flawed.
`
`First, PO argues that Wu does not disclose a “light sensitive switch.” PO’s
`
`expert (Dr. Ducharme), however, admitted during his deposition that Wu has a
`
`“light sensitive switch.” Ducharme Decl. (Ex. 1049), at 119:4-13. The evidence of
`
`record, therefore, does not support PO’s argument.
`
`Second, PO ignores the vast majority of Chliwnyj’s disclosure, myopically
`
`focusing on the eternal flame embodiment. PO then argues that a person of
`
`ordinary skill in the art at the time of the invention (a “POSA”) would not have
`
`been motivated to (i) add Wu’s “light sensitive switch” to control Chliwnyj’s
`
`device, or (ii) add switches (Hung, Xu and Pu) to permit the user to interact with
`
`the Chliwnyj’s device because there is no need to interact with an eternal flame.
`
`But Chliwnyj discloses many embodiments,
`
`some of which specifically
`
`contemplate user interaction. PO’s arguments must, therefore, be rejected.
`
`Finally, the Board should reject PO’s attempt to define the POSA as little
`
`more than an automaton. As set
`
`forth below and in the accompanying
`
`Supplemental Declaration of Dr. Peter Shackle (“Shackle II” (Ex. 1050)), the level
`
`of skill in the art requires an understanding of basic circuit analysis.
`
`

`
`II.
`
`THE LEVEL OF SKILL IN THE ART
`
`PO argues that Petitioner has incorrectly assessed the level of skill in the art
`
`and that Petitioner’s expert (Dr. Shackle) is unqualified to testify because he
`
`allegedly lacks certain qualifications and employed a “retrospective” analysis,
`
`which PO equates with impermissible hindsight. PO Resp., 13-14; Duchm. Decl.
`
`(Ex. 2021), ¶¶ 34-35. PO is incorrect.
`
`A.
`
`Petitioner Correctly Assessed the Level of Ordinary Skill in
`the Art.
`
`Courts may consider many factors in accessing the level of skill in the
`
`pertinent art, including (i) the kinds of problems existing in the art, (ii) the known
`
`solutions to those problems, (iii) the rate at which new innovations are made in the
`
`field, (iv) the sophistication of the technology, and (v) the educational level of
`
`active workers working in the field. Custom Accessories, Inc. v. Jeffrey-Allan
`
`Indus., Inc., 807 F.2d 955, 962-63 (Fed. Cir. 1986). The importance of each factor,
`
`to the extent it is even present, will vary from case to case. Id.
`
`Applying these factors to this case, Petitioner’s proffered level of skill in the
`
`art should be adopted. First, the ’477 patent describes disadvantages in the prior art
`
`relating to the “difficulty in adjusting the various lighting functions and not
`
`producing a uniform desired colour [of light] when required to do so.” Ex. 1001, at
`
`1:21-24. These problems
`
`relate to specifics of
`
`the electronic circuitry.
`
`Supplemental Declaration of Peter Shackle (“Shackle II”) (Ex. 1050), ¶ 18; see
`
`2
`
`

`
`also First Declaration of Peter Shackle (“Shackle I”), (Ex. 1002), ¶¶ 66-69. Indeed,
`
`although the ’477 patent discloses both mechanical and electrical elements, the
`
`majority of the specification describes the particulars electronic circuitry (e.g.,
`
`power supply circuit, light operated circuit, boost-up circuit, rectifier circuit, and
`
`light circuit). See Ex. 1001, 2:62-6:9, 6:24-47; Shackle II (Ex. 1050), ¶ 18.
`
`Patents are written to describe to one of ordinary skill in the art how to build
`
`the inventions without undue experimentation. In re Nelson, 280 F.2d 172, 181
`
`(1960). A degreed electrical engineer or physicist (or the equivalent) with
`
`industrial and circuit design experience would have been able to understand the
`
`patent’s descriptions and drawings (particularly Figure 9). Shackle II (Ex. 1050),
`
`¶¶ 19-20; Shackle I (Ex. 1002), ¶ 36. But PO’s POSA would not have been able to
`
`design or understand the circuitry (e.g., he/she would not have been able to identify
`
`inconsistencies between how the electrical connections of Figure 9 are drawn as
`
`Dr. Ducharme admits). Shackle II (Ex. 1050), ¶ 19; see generally Duchm. Depo.
`
`(Ex. 1049), 80:1-89:18 (a POSA would not have understood whether the circuit
`
`wires in Figure 9 were connected (see id.at 88:9-89:12)).
`
`Second, other references (e.g., Chliwnyj) identify numerous objects of the
`
`invention (i.e. problems that the invention solved) that relate to the specifics of the
`
`circuitry and/or use of pulse-width-modulation. Shackle II (Ex. 1050), ¶ 21;
`
`Shackle I (Ex. 1002), ¶¶ 80, 92-96; (Ex. 1005), 2:53-4:37. Similarly, Dowling
`
`3
`
`

`
`discusses an alleged need to incorporate programmable, multi-colored lighting
`
`systems, including systems that operate autonomously and are associated with
`
`computer networks. Shackle II (Ex. 1050), ¶ 21; IPR2014-00938 (Ex. 1010), at
`
`2:51-56. The complexity of the problems described in this art and the purported
`
`solutions in the ’477 patent and prior art, therefore, demonstrate that a POSA in the
`
`relevant art (the scope of which PO does not dispute) would have had a higher
`
`skill-set than PO’s proposed POSA, who would not have been able to understand
`
`fully and appreciate the scientific and engineering principles applicable to these
`
`problems. Shackle II (Ex. 1050), ¶¶ 20, 22.
`
`Third, generally speaking, the technology is not overly sophisticated and
`
`was known prior to the filing of the PO’s patent application. Id. at ¶ 24; see
`
`Duchm. Depo. (Ex. 1049), 52:21-57:17 (admitting that stakes, using solar cells to
`
`power lights, switches to turn off/on solar lights, rechargeable batteries, light
`
`sensitive switches, and using different colored LEDs were known in the art prior to
`
`December 2003 (the date the earliest application to which the ’477 patent could
`
`claim priority was filed)). Dr. Shackle agrees. Shackle II (Ex. 1050), ¶ 24. That
`
`said, as stated above, some of the circuitry involved, although generally known,
`
`4
`
`

`
`could not have been implemented in a solar light by PO’s POSA because they
`
`would not have understood how the circuitry works. Id. at ¶ 24.1
`
`Fourth, with respect to educational level of active workers working in the
`
`field, PO cites to Richmond’s testimony and prior art references in support of its
`
`proposed POSA. Id. at ¶ 25; Duchm. Decl. (Ex. 2021), ¶¶ 56-58. PO, however,
`
`does not provide the full story. For example, although relying on Richmond’s
`
`Declaration to support his purported POSA, Dr. Ducharme
`
`agrees
`
`that
`
`Mr. Richmond could not design the circuitry of Figure 9 of the ’477 patent other
`
`than in an overly simplistic way. See Duchm. Depo. (Ex. 1049), 48:22-51:12
`
`(Mr. Richmond could design the circuit at a basic block level (i.e. it has a “battery,
`
`solar cell light switch, light, light needs to vary in color.” … “[D]o you believe that
`
`[] is the most specific level of detail that Mr. Richmond would be capable of…”?
`
`Answer: “Yes”)). Id. at 51:8-12. This “block diagram” level of design does not
`
`even demonstrate that Mr. Richmond could have conceived the purported
`
`inventions (see Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F. 2d 1367,
`
`1376 (Fed. Cir. 1986) (defining conception as the “formation in the mind of the
`
`1 The rate at which innovations are made in this field appears to be neither
`
`exceptionally fast nor exceptionally slow. Shackle II (Ex. 1050), ¶ 23.
`
`5
`
`

`
`inventor, of a definite and permanent idea of the complete and operative invention,
`
`as it is hereafter to be applied in practice”), let alone could have reduced them to
`
`practice. And, in any event, the level of skill of the inventor of the patent at issue is
`
`not a determinative factor in determining the level of ordinary skill in the relevant
`
`art. See Custom Accessories, 807 F.2d at 962.
`
`That many of the inventors of the cited art have at least degreed EEs further
`
`counsels against adopting PO’s definition of a POSA. For example, a majority the
`
`nine inventors of the Dowling patent (Ex. 1010) have at least BS degrees in
`
`engineering or a hard science. Shackle II (Ex. 1050), ¶ 26; Duchm. Depo. (Ex.
`
`1049), 96:18-98:21. Several inventors listed on analogous prior art of have BS
`
`degrees in electrical engineering and science. Id. at ¶ 27; Exs. 1051-1060. And
`
`while PO emphasizes that Mr. Browder apparently did not physically make his
`
`products (Duchm. Decl. (Ex. 2021), at ¶ 48), Dr. Ducharme admits that Browder
`
`(Ex. 2028) does not relate to the circuitry of the solar light. Shackle II (Ex. 1050), ¶
`
`28; Duchm. Depo. (Ex. 1049), at 89:25-94:5 (“this patent is not covering the
`
`electronic circuitry of the light”) (id. at 94:1-5)). Dr. Ducharme also agreed that the
`
`claims of the ’477 patent do not require Chinese manufacturing, supervising
`
`engineers, or working with designers. (Duchm. Depo. (Ex. 1049), 42:23-44:24).
`
`These factors are thus irrelevant.
`
`6
`
`

`
`In sum, after considering all of the factors, Petitioner’s proposed POSA is
`
`the correct POSA (Shackle II (Ex. 1050), ¶ 29); though, as discussed below, the
`
`claims of the ’477 patent are obvious under either party’s definition of the POSA.
`
`B.
`
`Dr. Shackle is Qualified to Testify.
`
`PO criticizes Dr. Shackle’s qualifications because (i) he has purportedly
`
`never supervised engineers in the design of solar lights or had experience with
`
`photodiodes or consumer products, and (ii) Dr. Shackle allegedly employed
`
`hindsight analysis. PO Resp., 13-14. PO’s criticism is unfounded.
`
`Dr. Shackle has a Ph.D. in physics and has worked in the lighting industry
`
`for over twenty years. Shackle I & II (Exs. 1002, 1050), ¶ 3. He is a recognized
`
`senior life member of the Institute of Electrical and Electronics Engineers and a
`
`member of the Illuminating Engineering Society. Id. at ¶ 4. Dr. Shackle has
`
`experience in photovoltaics, photodiodes, pulse-width-modulation and LED drivers
`
`in the lighting context, and the design of critical parts of consumer products.
`
`Shackle II (Ex. 1050), ¶¶ 33-39. Moreover, Dr. Ducharme admits that the level of
`
`skill PO’s POSA needs in photovoltaic cells and consumer products is very low:
`
`“know[ing] that they could convert sun to power” and knowing “that [these
`
`products] are consumer products.” Duchm. Depo. (Ex. 1049), 30:17-32:6. Finally,
`
`because the claims are apparatus claims, experience relating to engineer
`
`supervision or product design is of questionable relevance.
`
`7
`
`

`
`Second, Dr. Shackle did not employ hindsight.
`
`Id. at ¶ 40. During
`
`Dr. Shackle’s deposition, PO’s counsel coined the undefined phrase “retrospective
`
`review” and now attempts to equate that phrase to impermissible hindsight. (PO
`
`Response at 13, citing Shackle Depo. (Ex. 2023), 278:23-279:2). But the entirety
`
`of Dr. Shackle’s answers show that he understood “retrospective review” to mean
`
`he obtained and studied the prior art. Shackle II (Ex. 1050), ¶ 40; Shackle Depo.
`
`(Ex. 2023), 277:19-279:10. This analysis was done very much like Dr. Ducharme’s
`
`retrospective analysis―obtain the prior art, study it, and render an opinion.
`
`Duchm. Depo. (Ex. 1049), 12:16-14:8 (indicating that Ducharme had not read the
`
`majority of the references before this proceeding). Dr. Shackle did not employ
`
`hindsight in his analysis (Shackle II (Ex. 1050), ¶ 40) and is more than qualified to
`
`testify. Id. at ¶¶ 32-39, 41.
`
`III. CLAIM CONSTRUCTION
`
`Claims should be interpreted using the broadest reasonable interpretation in
`
`light of the specification. 37 C.F.R. § 42.100(b). It is improper to incorporate
`
`exemplary embodiments in to the claim terms. See In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004).
`
`8
`
`

`
`A.
`
`“varying colour”
`
`The Board construed “varying color” as “a perceptible changing of color
`
`over time.” (Dec., Paper 21 at 8). Petitioners agree with that construction for this
`
`proceeding.
`
`PO’s argument to the contrary is simply a rehash of the argument that the
`
`Board already rejected. First, “varying color” is not a term of art as the Board
`
`already found. Dr. Ducharme admits as much when he states that “varying color”
`
`is simply “transitioning from one color to another.” Duchm. Depo. (Ex. 1049),
`
`99:17-24. Dr. Ducharme then describes “varying color” in the ’477 patent as
`
`“changing color” by “ramping up and ramping down,” (see Duchm. Depo. (Ex.
`
`1049), 99:25-103:12), but concedes that none of the claims contain the ramping up
`
`and ramping down limitation. Id. at 104:13-105:6. Finally, he states that the proper
`
`place to look for the definition of “varying” as in “varying color” is in “a general
`
`dictionary [defining] ‘varying.’” Id. at 105:7-24. Numerous general dictionaries
`
`define “varying’ in a way consistent with the Board’s definition: “diverse,
`
`differing, diverging; see changing, different” (Ex. 1061), “1. To make or cause
`
`changes in characteristics or attributes; modify or alter…” (Ex. 1062), and “to
`
`change or alter, as in form, appearance, character, or substance” (Ex. 1063).
`
`Second, Dr. Shackle’s testimony does not support PO’s construction, but
`
`rather is consistent with the Board’s construction. See Shackle II (Ex. 1050), ¶¶ 43-
`
`9
`
`

`
`45. In any event, expert testimony is entitled to little weight in claim construction
`
`and this claim limitation is not a issue here. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1318 (Fed. Cir. 2005) (“conclusory, unsupported assertions by experts as to the
`
`definition of a claim term are not useful to a court”).
`
`B.
`
`“lamp,” “desired colour,” and “securing means”
`
`The Board did not construe “lamp” because it was not at issue during the
`
`Decision. Petitioner maintains its original construction. (Revised Petition at 16,
`
`Shackle I (Ex. 1002), ¶ 75).
`
`Petitioner agrees that a “desired colour” is a color “that is desired by the
`
`user or intended by the designer.” Dr. Ducharme, however, testified that “desired
`
`color” means “any color that those two lamps can produce.” Duchm. Depo., (Ex.
`
`1049), at 211:11-19; Shackle II (Ex. 1050), ¶ 47. Claim 1 recites “a circuit having
`
`at least two lamps of different colours to produce a desired colour including
`
`varying colour.” Using “including” indicates that the desired color could be a
`
`single color, or one that changes over time. Id. at ¶ 48. Dr. Ducharme’s deposition
`
`construction does not agree with the PO’s construction, or with the construction
`
`Dr. Ducharme offered in his declaration, and is not correct. Id. at ¶ 48.
`
`Petitioner agrees with the Board’s construction of “securing means.”
`
`Petitioner notes that PO engages in claim construction during various
`
`portions of its arguments and, in particular, regarding the terms “expose” and
`
`10
`
`

`
`“exposed.” Petitioner addresses those constructions in its arguments below in
`
`connection with rebutting PO’s positions. Petitioner reserves the right to adopt a
`
`different construction under the Phillips standard in litigation.
`
`IV. CLAIMS 1-29 ARE UNPATENTABLE
`
`One must consider what the references as a whole would have taught to a
`
`POSA, recognizing that it is often necessary and within the level of ordinary skill
`
`to modify the teachings of two references to combine them. See In re Mouttet, 686
`
`F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of
`
`obviousness based on teachings from multiple references does not require an
`
`actual, physical substitution of elements.”). “The test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference. . . . Rather, the test is what the combined
`
`teachings of the references would have suggested to those of ordinary skill in the
`
`art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). PO’s analysis ignores this law
`
`and instead focuses almost exclusively on what one specific embodiment (i.e.., the
`
`eternal flame embodiment of Chliwnyj) allegedly taught or did not teach, and a
`
`non-existent requirement of actual, physical substitution of elements. This is error.
`
`11
`
`

`
`A.
`
`Ground 1 - Claims 1, 2, 4-9, 20-22, and 26 are obvious in
`view of Wu, Chliwnyj, and Hung
`
`1.
`
`Wu discloses a “light sensitive switch,” as recited in
`claims 2 and 21.
`PO’s criticisms of Wu are (i) it does not teach a “light sensitive switch,” and
`
`(ii) the light of Wu does not come on at a particular time. See generally PO
`
`Response at 20-30. But Dr. Ducharme now concedes that Wu discloses a “light
`
`sensitive switch.” Duchm. Depo., (Ex. 1049), 119:4-13. And Dr. Ducharme’s
`
`refusal to acknowledge that Wu expressly teaches that “night” is a particular time
`
`(i.e. “[w]hen in a particular time (such as night)) undermines his credibility. (Wu
`
`(Ex. 1006), at [0020])). See Duchm. Depo. (Ex. 1049), 120:6-23; See, e.g., Viterbo
`
`v. Dow Chem. Co., 646 F. Supp. 1420, 1425-26 (E.D. Tex. 1986) (when expert
`
`becomes an advocate his testimony becomes unreliable).
`
`Dr. Shackle previously explained in detail how Wu’s light sensitive switch
`
`functioned based Wu’s disclosure. Shackle I (Ex. 1002), ¶¶ 124-127. Because PO
`
`failed to contemplate how that “light sensitive switch” operated, Dr. Shackle
`
`provides a more detail analysis. Shackle II (Ex. 1050), ¶¶ 50-57. The preferred
`
`embodiment depicted in Figure 3 and discussed in Wu’s disclosure comprises three
`
`modules: A, B, and C, each of which can function by itself when provided with
`
`power and control inputs. Id. at ¶¶ 51-52. Module A is the light sensitive switch.
`
`Id. at ¶ 52; Shackle I (Ex. 1002), ¶ 43; Duchm. Depo. (Ex. 1049) at 119:4-13.
`
`12
`
`

`
`Module C is the light circuit, and Module B is the noise circuit. Shackle II (Ex.
`
`1050), ¶ 52. Dr. Ducharme annotated Figure 3 during his deposition to identify
`
`particular elements (e.g., resistors, capacitors, NAND gates, the switch, and the
`
`PNP transistor). Id. at ¶ 51.
`
`Dr. Ducharme interprets the circuit to mean that modules B and C are
`
`always on when the battery has charge because he interpreted the T-like symbols to
`
`require that all modules were directly connected to the battery. Id. at ¶ 53. A POSA
`
`would have understood that it “would not make sense” to tie the collector of a PNP
`
`transistor in module A to positive power because, if such were the case, the vast
`
`majority of the circuit elements in module A (the resistors, capacitor, NAND gates,
`
`and the PNP transistor) would have no purpose. Id. at ¶ 54. Dr. Ducharme agreed.
`
`See Duchm. Depo. (Ex. 1049), 116:16-117:20; 118:24-119:3 (“it would not make
`
`sense to me as a designer”). Duchm. Depo. (Ex. 1049), at 117:12-20; Shackle II
`
`(Ex. 1050), ¶ 53.
`
`PO also argues that a timer, not a “light sensitive switch,” switches the light
`
`in Wu at a particular time. (PO Resp. at 27-30). This argument is based largely on
`
`Ducharme’s unsupported belief that “nighttime” is not a particular time, despite
`
`Wu’s explicit teaching to the contrary, and on Ducharme’s belief that Wu’s circuit
`
`is always on and running on battery power. Shackle II (Ex. 1050), ¶ 55.
`
`13
`
`

`
`But Wu specifically states that “night” is a particular time and that module A
`
`is a “light sensitive switch.” Id. at ¶¶ 55-56; Wu (Ex. 1006), [0020]. Dr. Ducharme,
`
`likewise, conceded that module A is a “light sensitive switch”: “I do understand
`
`Circuit Element A to be a light sensitive switch.” Duchm. Depo. (Ex. 1049), 119:4-
`
`13; Id. at ¶ 57. A POSA would thus have understood night to be a particular time
`
`and that module A was a light sensitive switch that turned the LED and buzzer on
`
`at night. Id. at ¶ 55. This issue is decided.
`
`2.
`
`It would have been obvious to combine Chliwnyj with
`Wu.
`PO’s main argument against combining Chliwnyj with Wu is that, according
`
`to PO, Chliwnyj’s eternal flame embodiment is the only relevant embodiment and
`
`thus providing a light sensitive switch is antithetical. See PO Resp., 30-37. This
`
`argument is flawed for multiple reasons.
`
`Foremost, although Dr. Ducharme admits that the eternal flame is only one
`
`of Chliwnyj's numerous embodiments (Duchm. Depo. (Ex. 1049), 127:2-128:20),
`
`he also admits that he focused solely on the eternal flame embodiment. Id. at
`
`173:20-174:16. Limiting the analysis to the eternal flame was error. “The fact that
`
`a specific [embodiment] is taught to be preferred is not controlling, since all
`
`disclosures of the prior art, including preferred embodiments, must be considered.”
`
`Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
`
`Lamberti, 545 F.3d 747, 750 (CCPA 1976)).
`
`14
`
`

`
`Chliwnyj indisputably discloses numerous electronic flame embodiments
`
`and is clear that even these embodiments are not meant to be limiting:
`
` The general object of the invention is to provide new and improved
`decorative lighting devices, each capable of simulating changing
`flame patterns… to engender comfortable and soothing visual effects.
`Ex. 1005 at 2:57-62.
`
`invention is to provide a flame
` Another object of the present
`simulation which may have a variety of decorative, memorial, and
`ornamental lighting applications. Id. at 2:62-67.
`
` Other objects include providing a flame simulation which may derive
`its electrical power from alternative sources (e.g., AC, DC, battery,
`(id. at 3:5-9), using pulse-width-
`solar
`rechargeable sources)
`modulation to turn LEDs on and off rapidly so as to implement an
`economical and very low-power approach to controlling current (id. at
`3:13-21), to produce a flame of high brightness with low power
`consumption (id. at 4:23-24), and to provide a flame-simulation with
`power management and rechargeable power. Id. at 4:34-36.
`
` Still another object of the invention is to provide a flame-pattern
`simulation for relaxation, which flame pattern the user may control by
`using a simple user interface. Id. at 4:3-5.
`
`Shackle II (Ex. 1050), ¶¶ 59-60. Chliwnyj further teaches “[t]here are many
`
`variations available to circuit designers to control the current through the LEDs”
`
`(id. at 14:62-63), and that the detailed description is “illustrative,” not limiting. Id.
`
`at 16:1-5. Dr. Ducharme did not consider these statements in formulating his
`
`opinion. Duchm. Depo. (Ex. 1049), 156:14-157:25; Shackle II (Ex. 1050), ¶ 61.
`
`A POSA, even PO’s proposed POSA, would have understood these
`
`statements to mean that Chliwnyj’s flame was not limited to an eternal flame.
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`15
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`

`
`Shackle II (Ex. 1050), ¶ 62. With that understanding, it is clear that a POSA would
`
`have been motivated to combine Chliwnyj and Wu. Id. at ¶ 63.
`
`For example, both references teach circuits that vary color. Id. In Chliwnyj,
`
`the circuit uses a microprocessor and pulse-width-modulator to produce a varying
`
`color simulated flame. Shackle I (Ex. 1002), ¶ 62. Wu also uses a light sensitive
`
`switch to turn the device off and on. A POSA would understand there are
`
`circumstances where a user may not want to have the simulated flame on during
`
`the day and would look to other color changing devices such as Wu for a
`
`mechanism to affect such control. Shackle II (Ex. 1050), ¶ 63.
`
`Both references, likewise, recognize that power consumption is important,
`
`and implement power management techniques by taking advantage of solar power
`
`to charge the batteries during the day and use the battery power to power the circuit
`
`during low light levels (e.g., night). Id. at ¶ 64. Chliwnyj describes how the passing
`
`of night and day is recorded by observing the charging of the battery from the solar
`
`cell. Id.; Ex. 1005, 12:41-63. Chliwnyj uses a comparator to sense when the battery
`
`is being charged and teaches power management
`
`techniques to preserve the
`
`battery's charge. Id.; Ex. 1005, 12:41-13:8. It would have been obvious to a POSA
`
`trying to use Chliwnyj's technology to look to a light sensitive switch such as Wu’s
`
`to turn the simulated flame off during the day and on at night to save power.
`
`Shackle II (Ex. 1050), at ¶ 64. Because Chliwnyj already senses day and night,
`
`16
`
`

`
`incorporating a light sensitive switch to prevent operation during the day would
`
`produce the predictable result of a light that is only on at night. Id. A POSA would
`
`understand this result could be achieved in multiple ways, including using Wu’s
`
`light sensitive switch to cut off the power to the LEDs. Id. U.S. Patent No.
`
`5,255,270 (Ex. 2035 to the 938 IPR) further demonstrated that power management
`
`was a recognized problem and thus supports Dr. Shackle’s opinion that a POSA
`
`would look to power management solutions, such as using a light sensitive switch,
`
`to address these issues. Shackle II (Ex. 1050), ¶ 65.
`
`In sum, both Chliwnyj and Wu disclose solar-powered lighting devices
`
`having circuits for varying color and power management. Id. at ¶ 66. There are
`
`numerous motivations to combine them, including to take advantage of power-
`
`saving techniques to extend the battery life and for the simple potential of
`
`increasing the market for Chliwnyj’s simulated flame. Id.; see KSR, 550 U.S. at
`
`419 (“it often maybe the case that market demand, rather than scientific literature,
`
`will drive design trends”).
`
`PO compounds its error by focusing on whether the light sensitive switch of
`
`Wu would have been able to have been incorporated into the circuitry of the
`
`eternal flame embodiment of Chliwnyj. See PO Resp., 33-36. However, “the test
`
`for obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference …. [but] what
`
`the
`
`17
`
`

`
`combined teachings of the references would have suggested to those of ordinary
`
`skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re
`
`Mouttet, 686 F.3d at 1332. (“It
`
`is well-established that a determination of
`
`obviousness based on teachings of multiple references does not require an actual,
`
`physical substitution of elements.”). Moreover, where, as here, the combination is
`
`of
`
`familiar elements with known properties,
`
`the results will
`
`typically be
`
`predictable. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); Agrizap, Inc.
`
`v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008). Therefore, the POSA
`
`could have used ordinary creativity to, if necessary, slightly modify Wu’s “light
`
`sensitive switch” for use in Chliwnyj. Shackle II (Ex. 1050), ¶ 66.
`
`3.
`
`It would have been obvious to combine Chliwnyj with
`Hung to provide a “switch … exposed to provide access
`thereto by a user,” as recited by claims 10-11, 24, and
`28-29.
`PO argues that it would not have been obvious to combine Chliwnyj with
`
`Hung to provide an external switch because Chliwnyj’s eternal flame embodiment
`
`(i) was always on, and (ii) providing such an exposed switch would encourage
`
`tampering. PO Resp. at 37-46. This argument also fails.
`
`The argument ignores the law. “[T]he ‘mere disclosure of alternative designs
`
`does not teach away’ … just because better alternatives exist … does not mean that
`
`an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d
`
`at 1344 (preferred optical circuit with more interconnect possibilities did not teach
`
`18
`
`

`
`away from non-preferred arithmetic/logic system having electrical circuitry with
`
`wire sets); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (all disclosures in a
`
`reference “must be evaluated for what they fairly teach one of ordinary skill in the
`
`art”).
`
`Chliwnyj discloses a simulated electronic flame suitable for “new and
`
`improved decorative lighting devices,” including “a variety of decorative,
`
`memorial, and ornamental
`
`lighting applications.” Ex. 1005 at 2:57-67. But
`
`Dr. Ducharme concedes that he limited his focus to the eternal flame embodiment.
`
`See Duchm. Depo. (Ex. 1049), at 171:20-174:16 (“You basically focused on the
`
`eternal flame embodiment” Answer: “Yes” (id. at 174:7-16)). Dr. Ducharme fails
`
`to appreciate that Chliwnyj teaches the use of a variety of power sources (id. at
`
`3:5-8) and thus the solar-powered embodiment is not limited to an eternal flame.
`
`Nor are the Chliwnyj embodiments that disclose switches (id. at 10:60-11:4 14:12-
`
`20 (keypad)) or other user interfaces (id. at 4:3-5), limited to non-solar-powered
`
`embodiments. His analysis is, therefore, flawed. See Merck, 874 F.2d at 807.
`
`Second, it would have been obvious to look to Hung to add an exposed
`
`switch to, for example, permit the user to turn the device on and off. Shackle II
`
`(Ex. 1050), ¶¶ 69-71. Switches are well known in the art. See, e.g., Duchm. Depo.
`
`(Ex. 1049), at 53:24-54:9 (admitting prior art switches in garden lighting to turn
`
`the devices on/off were known); Hung (Ex. 1016), 7:9-20. Chliwnyj teaches a user
`
`19
`
`

`
`interface to control parameters of the electronic flame. Shackle II (Ex. 1050), ¶ 68;
`
`Ex. 1005, 4:3-5, 14:12-14. Dr. Ducharme concedes that a switch is a type of user
`
`interface: “You could have an on-off switch …” “A switch is a switch.” Duchm.
`
`Depo. (Ex. 1049), 133:20-134:14, 135:3-10. Hung teaches a power switch on an
`
`exposed surface. Shackle II (Ex. 1050), ¶ 70; Hung (Ex. 1016), 7:10-20. And a
`
`POSA under either side’s definition would have known that switches could be
`
`located in multiple places. Shackle II (Ex. 1050), ¶ 69; Duchm. Depo. (Ex. 1049),
`
`20:23-26:3. Modifying Chliwnyj in view of Hung to provide an alternative method
`
`to control the device would have been an obvious design choice. See, e.g., KSR,
`
`550 U.S. at 416-17 (combination of familiar elements performing their known
`
`function is obvious); In re Japikse, 181 F.2d 1019, 1030 (CCPA 1950) (claims to a
`
`hydraulic power press were unpatentable because shifting the position of the
`
`starting switch would not have modified the operation of the device -- “[a] design
`
`choice may be an obviousness rearrangement of elements.”); In re Kuhle, 526 F.2d
`
`553, 555 (CCPA 1975); Chamberlain Grp., Inc. v. Lynx