IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Wangs Alliance Corporation d/b/a WAC Lighting Co.,
`Petitioner
`v.
`Philips Lighting Holding B.V.,
`Patent Owner
`
`Inter Partes Review No.
`IPR2015-01292 (’890 Patent)
`
`WAC’s Presentation
`August 23, 2016
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`Wangs Alliance Corporation d/b/a WAC Lighting Co.,
`Petitioner
`v.
`Philips Lighting Holding B.V.,
`Patent Owner
`
`Inter Partes Review No.
`IPR2015-01292 (’890 Patent)
`
`WAC’s Presentation
`August 23, 2016
`
`
`
`Introduction
`a) Overview of Patent No.
`6,586,890
`b) Grounds for Institution of
`Petition
`Issues before the Board
`c)
`d) Summary of Prior Art
`
`2
`
`
`
`Overview of U.S. Patent No. 6,586,890
`
`’890 Patent (Ex. 1001) at 1:7-9
`
`’890 Patent (Ex. 1001) at 1:12-29
`
`3
`
`
`
`Overview of U.S. Patent No. 6,586,890
`
`’890 Patent (Ex. 1001), Fig. 1
`
`’890 Patent (Ex. 1001), Claim 7
`
`4
`
`
`
`Overview of U.S. Patent No. 6,586,890
`
`’890 Patent (Ex. 1001), Figs. 2a & 2b
`
`All non-highlighted claim
`elements are internal to PWM
`control IC 118 (UC2842)
`
`’890 Patent (Ex. 1001), Claim 7
`
`5
`
`
`
`Overview of U.S. Patent No. 6,586,890
`
`’890 Patent (Ex. 1001), Fig. 2b
`
`’890 Patent (Ex. 1001) at 3:15-20
`
`6
`
`
`
`Overview of U.S. Patent No. 6,586,890
`
`’890 Patent (Ex. 1001), Fig. 1
`
`• Sole disclosure of
`types of power supplies
`(’890 patent, Ex. 1001
`at 2:4-6)
`
`• No requirement for
`particular regulation
`(Reply at 2-5)
`
`‘890 patent (Ex. 1001) at 2:1-11
`
`7
`
`
`
`Claims at Issue – Claim 7
`
`ABANDONED
`
`’890 Patent (Ex. 1001), Claim 7
`
`’890 Patent (Ex. 1001), Claim 15
`
`Philips abandoned contest of claim 15 (see Paper No.
`10) and does not challenge unpatentability
`
`8
`
`
`
`Claims at Issue – Claim 31
`
`ABANDONED
`
`’890 Patent (Ex. 1001), Claims 23 and 31
`
`Philips abandoned contest of claim 23 (see Paper No. 10)
`and does not challenge unpatentability
`
`9
`
`
`
`Grounds for Grant of IPR Petition
`IPR petition granted based on 2 references:
`
`• U.S. Patent No. 6,400,101 to Biebl (Ex. 1003, “Biebl”)
`• ST Micro Datasheet for UC2842/3/4/5 (Ex. 1005, “ST Micro”)
`
`Rehearing request granted for claim 7 and 31 (Paper No. 18)
`
`Obvious over Biebl + ST Micro
`
`Anticipated by Biebl Obvious over Biebl + ST Micro
`
`Claim 7
`
`Claim 15
`
`Claim 23
`
`Claim 31
`(depends from cl. 23)
`
`Obvious over Biebl + ST Micro
`
`10
`
`
`
`Issues Before the Board
`
`1. Construction of “means for supplying
`power responsive to the drive signal”
`(claim 7)
`Is ST Micro prior art?
`2.
`3. Whether claims 7 and 31 are obvious
`over Biebl and ST Micro
`
`11
`
`
`
`Summary of Prior Art - Biebl
`
`Biebl, Ex. 1003 at 2:27-32
`
`Biebl, Ex. 1003 at 3:2-8
`
`Biebl, Ex. 1003 at 2:24-26
`
`Biebl, Ex. 1003 at 4:1-6
`
`12
`
`
`
`Summary of Prior Art – ST Micro
`
`ST Micro (Ex. 1005)
`
`13
`
`
`
`Summary of Prior Art – ST Micro
`
`ST Micro (Ex. 1005)
`
`14
`
`
`
`Summary of Prior Art – ST Micro
`
`ST Micro (Ex. 1005)
`
`’890 Patent (Ex. 1001), Claim 7
`
`ST Micro (Ex. 1005)
`
`15
`
`
`
`Construction of “Means for Supplying Power
`Responsive to the Drive Signal” (Claim 7)
`
`16
`
`
`
`Claim Construction: “Means for Supplying Power…”
`
`• Board’s Construction (Institution Decision at 7):
`“Structure: A buckboost, boost, buck, or flyback power supply and its
`•
`equivalent power supplies that regulate current (as opposed to
`regulating voltage).”
`“Function: Supplying power responsive to a drive signal.”
`•
`• Function undisputed, does not refer to “regulate current”
`• Claim element does not refer to any type of "regulation"
`• Structure does not refer to “regulate current”
`“The power supply 52 can be a DC/DC converter such as a buck-boost
`•
`power supply or other alternatives, such as a boost, buck, or flyback
`converter.” (’890 patent, Ex. 1001 at 2:4-6)
`
`17
`
`
`
`Claim Construction: “Means for Supplying Power…”
`
`• Board erred in its construction:
`• Cannot adopt function different from the explicitly
`recited function. JVW Enter., Inc. v. Interact
`Accessories, Inc., 424 F.3d 1324, 1331 (Fed. Cir.
`2005) (Reply at 3-4)
`• Cannot import functions of working device into claims.
`Id.
`
`18
`
`
`
`The ST Microelectronic Datasheet (“ST Micro”)
`Is Prior Art
`
`19
`
`
`
`ST Micro is Prior Art
`• Unrebutted evidence establishes that the ST Micro
`Datasheet is a “printed publication” (Reply at 19-23)
`
`• Petitioner submitted two unrebutted declarations, Philips
`had opportunity to depose and did not. (Reply at 20)
`
`• Such unrebutted testimony establishes “printed
`publication” status. See, e.g., Actifio, Inc. v. Delphix Corp.,
`IPR2015-00108, 2016 WL 1734063, at *4 (PTAB Apr. 29,
`2016)
`
`• ST Micro is the datasheet for the UC2842 IC
`disclosed in the ‘890 patent itself
`
`• Publicly accessible as declarants testified that
`datasheet accompanied sales of IC (Reply at 22)
`
`20
`
`
`
`Claims 7 and 31 are Obvious in View of
`Biebl + ST Micro
`
`21
`
`
`
`WAC Arg #1: Implement ST Micro IC to Drive LEDs
`
`• POSA would implement the ST Micro IC to drive an
`LED load in view of the teachings of Biebl (Reply at
`7-10)
`
`• POSA would be motivated by teachings of Biebl to implement
`ST Micro IC to drive LED load in a manner similar to Biebl
`(Tingler Decl. (Ex. 1006) ¶¶ 58-92, Tingler Reply Decl. (Ex.
`1017) ¶ 8)
`
`• POSA would have done so using the same ST Micro IC
`Philips described in the ’890 specification
`
`• POSA would have been motivated to use commercially
`available ST Micro IC instead of building circuit of Biebl—e.g.,
`size, cost, thermal characteristics
`
`22
`
`
`
`Philips Misapplies the Law of Obviousness
`• Philips misapplies the law (Reply at 5-6)
`
`• An obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim,
`for a court can take account of the inferences and creative steps
`that a [POSA] would employ.” KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 418 (2007)
`
`• Test is not about “whether the features of a second 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)
`
`•
`
`“Combining the teachings of references does not involve an
`ability to combined their specific structures.” Hewlett-Packard
`Co. v. MCM Portfolio, LLC, IPR2013-00217, 2014 WL 3885936,
`at *5 (PTAB Aug. 6, 2015) (emphasis in original)
`
`23
`
`
`
`No Evidence that Combo is “Challenging or Difficult”
`
`• Philips does not present any evidence that the
`combination would have been “uniquely challenging
`or difficult for one of ordinary skill in the art.”
`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
`1157, 1162 (Fed. Cir. 2007) (Reply at 6)
`
`• Thus, Philips cannot establish that a POSA would
`not combine the teachings of Biebl + ST Micro to
`arrive at the claimed invention
`
`24
`
`
`
`Philips’ Response #1 re: Current Regulation
`• Philips’ focus on differences between Biebl and ST
`Micro—current regulation of Biebl vs. voltage
`regulation of ST Micro—is misplaced (Reply at 8-9)
`
`• POSA would have understood which to implement—prior
`art discloses use of either to drive LED load (Reply at 8)
`
`• POSA would have understood differences between
`current and voltage regulation but would be motivated by
`disclosure of Biebl to use current regulation (Reply at 9)
`
`• POSA would have understood how to modify ST Micro’s
`flyback regulator to regulate current in addition to voltage
`(Reply at 9)
`
`25
`
`
`
`Philips’ Response #2 re: PWM Control Schemes
`
`• Philips’ focus on differences between Biebl and ST
`Micro—PWM control schemes—is misplaced (Reply
`at 9-10)
`
`• POSA would have understood that it could implement ST
`Micro IC using current mode PWM control whether flyback
`regulates current or voltage given that both current and
`voltage regulation employ current feedback (Reply at 9)
`
`• POSA would have understood it need not implement
`specific PWM control scheme of Biebl in ST Micro IC
`(Reply at 9-10)
`
`26
`
`
`
`WAC Arg #2: Use of Flyback of ST Micro with Biebl
`• Philips incorrectly argues POSA cannot physically
`combine Biebl and ST Micro (Resp. at 10-24)
`
`• POSA would implement a switch mode power supply
`(e.g., buck, boost, buck-boost, flyback) with Biebl in view
`of ST Micro (Reply at 11-18)
`
`•
`
`In addition to using ST Micro IC in view of Biebl, POSA would
`alternatively replace battery of Biebl with flyback of ST Micro (Tingler
`Decl. (Ex. 1018) ¶ 13)
`
`• E.g., Biebl discloses use in traffic light systems requiring power
`delivered over AC line, so would not use battery but instead, a switch
`mode power supply—this is the most common means of providing
`power in traffic light systems (Tingler Decl. (Ex. 1018) ¶ 14)
`
`• Would provide better power factor in traffic light application than DC
`chopper of Biebl (Tingler Decl. (Ex. 1018) ¶ 23)
`
`27
`
`
`
`WAC Arg #2: Use of Flyback of ST Micro with Biebl
`• One implementation of switch mode power supply
`(ST Micro’s flyback) with Biebl (Reply at 12-13)—
`replace Vout of Biebl with Vout of ST Micro:
`•
`“Means for supplying power” is
`“responsive to the drive signal”
`because (1) LED current is
`responsive to the drive signal, (2)
`when LED current applied to
`output of flyback (where Vout
`delivered), output power of flyback
`is increased (Reply at 14-15,
`Tingler Decl. (Ex. 1018) ¶¶ 18-20)
`
`• Current is regulated because
`Biebl’s circuitry performs that
`regulation (Reply at 15, Tingler
`Decl. (Ex. 1018) ¶ 21)
`
`28
`
`
`
`WAC Arg #3: Implement Current Regulation Supply
`• Another implementation of switch mode power
`supply with Biebl—modify ST Micro’s flyback to
`regulate current or implement a current-regulating
`switch mode power supply (Reply at 15-18)
`
`• At time of ’890 invention, POSA would have known
`current feedback was preferable to drive LEDs (Tingler
`Decl. (Ex. 1018) ¶ 24)
`
`• Biebl provides further motivation to use current regulation
`to drive an LED load (Tingler Dec. (Ex. 1018) ¶¶ 24-25)
`
`• POSA would have known how to modify ST Micro’s
`flyback to regulate current instead of, or in addition to,
`regulating voltage (Tingler Decl. (Ex. 1018) ¶ 28; Ex. 1022
`at 3:24-34)
`
`29
`
`
`
`Philips Mischaracterizes Mr. Tingler’s Testimony
`• Philips mischaracterizes Mr. Tingler’s deposition testimony
`regarding using ST Micro’s flyback to drive an LED load
`(Reply at 18-19)
`
`• Philips argues that Mr. Tingler “conceded that a [POSA]
`would not use the ST Micro flyback regulator to power an LED
`because it regulates voltage, not current.” (Resp. at 27-28,
`33-34)
`
`• Not Mr. Tingler’s testimony; he only confirmed that ST Micro’s
`flyback was “not set up as a constant current drive [s]o it
`wouldn’t provide the constant regulation to the LED array.”
`(Tingler Decl. (Ex. 1018) ¶ 31)
`
`• Mr. Tingler also opined that Hochstein (prior art not instituted)
`could drive an LED with its voltage-regulated buck-boost
`power supply (Tingler Decl. (Ex. 1018) ¶ 31)
`
`30
`
`
`
`REBUTTAL: Philips’ Motions for Observation
`
`31
`
`
`
`Rebuttal: Philips’ Motion for Observation
`• Observations #1-2
`
`• Not inconsistent with Petitioner’s assertion that Board incorrectly
`included functional requirement in structure for “means for
`supplying power” because Mr. Tingler’s testimony was directed
`to the functions that the disclosed structures perform
`
`• Outside the scope of Mr. Tingler’s reply declaration as he did
`not opine on construction for any term of claim 7
`
`• Observation #3
`
`• Not inconsistent with factual statement in Reply that claim 31 is
`not means-plus-function and was not construed to require any
`particular type of regulation
`
`•
`
`Irrelevant because Patent Owner does not dispute that Bibel +
`ST Micro discloses each element of claim 23
`
`32
`
`
`
`Rebuttal: Philips’ Motion for Observation
`• Observation #4
`
`• Testimony does not introduce a new alternative combination
`because it was in reply to Dr. Zane’s declaration, and Mr.
`Tingler was only questioned about his original declaration
`
`• Board previously denied Patent Owner’s request to file a Motion
`to Strike on this issue (Ex. 2012 at 29:16-31:7, 32:13-33:8)
`
`• Observation #5
`
`• Not inconsistent with Mr. Tingler’s testimony that “[a]ny action
`responsive to the pulse current is … ‘responsive to the drive
`signal’ because Mr. Tingler simply agreed with his Reply
`declaration at ¶ 16, and ¶¶16 and 18 are not inconsistent with
`each other
`
`33
`
`
`
`Rebuttal: Philips’ Motion for Observation
`• Observation #6
`
`• Not inconsistent with Mr. Tingler’s testimony that “[a]ny action
`responsive to the pulse current is … ‘responsive to the drive
`signal’ because the cited testimony merely states that a
`decoupling capacitor prevents interference between two circuits
`
`• Observation #7
`
`• Not inconsistent with Mr. Tingler’s testimony that “[a]ny action
`responsive to the pulse current is … ‘responsive to the drive
`signal’ because the cited testimony merely states that the PWM
`control signals from Biebl and ST Micro are not directly output to
`one another
`
`34
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing was served on
`
`August 12, 2016, via email directed to counsel of record for the Patent Owner at
`
`the below:
`
`Denise W. DeFranco (Lead Counsel)
`(Reg. No. 36,401)
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`denise.defranco@finnegan.com
`Two Seaport Lane
`Boston, MA 02210-2001
`Telephone: (617) 646-1600
`Facsimile: (617) 646-1666
`
`C. Brandon Rash
`(Reg. No. 59,121)
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT
`& DUNNER, LLP
`brandon.rash@finnegan.com
`901 New York Avenue, NW
`Washington DC 20001-4413
`Telephone: (202) 408-4475
`Facsimile: (202)-408-4400
`
`Jiayu “Mandy” Song
`(Reg. No. 69,583)
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT
`& DUNNER, LLP
`mandy.song@finnegan.com
`901 New York Avenue, NW
`Washington DC 20001-4413
`Telephone: (202) 408-4464
`Facsimile: (202)-408-4400
`
`
`
`/s/ David C. Radulescu
`David C. Radulescu, Ph.D.
`Attorney for Petitioner Wangs
`Alliance Corporation d/b/a WAC
`Lighting Co.
`Registration No. 36,250
`
`
`Date: August 19, 2016
`
`RADULESCU LLP
`The Empire State Building
`350 Fifth Avenue, Ste. 6910
`New York, NY 10118
`Phone: (646) 502-5950
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