Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper 10
`
`
` Entered: October 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANTA’S BEST,
`Petitioner,
`
`v.
`
`VARIABLE LIGHTING LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01066
`Patent 6,285,140 B1
`____________
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Santa’s Best (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–13 of U.S. Patent
`
`
`571.272.7822
`
`
`
`
`
`
` Paper 10
`
`
` Entered: October 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANTA’S BEST,
`Petitioner,
`
`v.
`
`VARIABLE LIGHTING LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01066
`Patent 6,285,140 B1
`____________
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Santa’s Best (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–13 of U.S. Patent
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`No. 6,285,140 B1 (“the ’140 patent”).1 Paper 3 (“Pet.”). Variable Lighting
`LLC (“Patent Owner”) did not file a Preliminary Response. Applying the
`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we grant Petitioner’s request and institute an inter
`partes review of all challenged claims.
`I. BACKGROUND
`A. The ’140 Patent (Ex. 1001)
`
`The ’140 patent describes a variable-effect lighting system that
`
`comprises a lamp assembly and a programmable lamp controller. Ex. 1001,
`2:14–19. Exemplary applications of the lighting system include Christmas
`tree light strings, temperature-sensitive lights, night lights, and jewelry. Id.
`at 2:60–62.
`
`Figure 2a of the ’140 patent is reproduced below.
`
`
`1 We terminated the proceeding with respect to Polygroup Limited (MCO)
`(“Polygroup”). Paper 9.
`
`2
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`
`
`Figure 2a is a schematic circuit diagram of a variable-effect lighting system.
`Id. at 3:10–14. Variable-effect lighting system 110 comprises lamp
`assembly 111 and programmable lamp controller 112 for setting the color of
`light produced by lamp assembly 111. Id. at 13:22–27. The lamp assembly
`comprises a string of multi-colored lamps 114 connected in parallel with
`AC/DC converter 116. Id. at 13:29–32. Each lamp 114 comprises a
`bicolored LED having a first illuminating element for producing a first color
`of light, and a second illuminating element for producing a second color of
`light different from the first color. Id. at 13:33–37. Programmable
`controller 112 includes microcontroller 20, which is programmed with
`several conduction angle sequences for setting the firing angle of
`semiconductor switches 122, 123 to control the color display generated by
`the lamps 114. Id. at 14:12–19.
`
`3
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`
`B. Illustrative Claim
`
`Claims 1, 6, and 10 are independent claims. Claim 1 is illustrative of
`
`the claims at issue:
`1.
`A variable-effect lighting system comprising:
`a lamp assembly comprising a plurality of multi-coloured
`lamps in parallel with a DC voltage source, each said multi-
`coloured lamp comprising a first illuminating element for
`producing a first colour of light, and a second illuminating
`element for producing a second colour of light different from the
`first colour; and
`a programmable lamp controller coupled to the lamp
`assembly for selling a conduction angle of each said illuminating
`element according to at least one predetermined pattern, each
`said predetermined pattern being stored in a memory of the
`controller, the lamp controller including a first electronic switch
`coupled to the first illuminating element and a second electronic
`switch coupled to the second illuminating element.
`
`D. References
`Petitioner relies on the following references:
`Kazar
`US 5,008,595
`Apr. 16, 1991
`Smith
`US 4,675,575
`June 23, 1987
`Gomoluch WO 91/19411
`Dec. 12, 1991
`Minato
`JP H11-16683
`Jan. 22, 1999
`Sato
`US 5,751,111
`May 26, 1998
`Lys
`US 6,528,954 B1 Mar. 4, 2003
`
`
`
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 10072
`Ex. 1008
`Ex. 1009
`
`
`2 Exhibit 1007 is the certified English translation of the Japanese patent
`application and the Japanese language original application. Pet. ix.
`
`4
`
`
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`
`E. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’140 patent
`
`under 35 U.S.C. § 103(a) over the following combinations of references:
`References
`Claim(s)
`Kazar and Gomoluch
`1, 2, 4, 5
`Kazar, Gomoluch, and Minato
`3
`Kazar, Sato, and Gomoluch
`6–9
`Kazar, Lys, and Gomoluch
`10–13
`Smith and Gomoluch
`1, 2, 4, 5
`Smith, Gomoluch, and Minato
`3
`Smith, Sato, and Gomoluch
`6–9
`Smith, Lys, and Gomoluch
`10–13
`
`
`
`F. Related Proceedings
`Petitioner and Patent Owner identify the following litigation
`
`involving the ’140 Patent: (1) Variable Lighting LLC v. Kmart Corp., Case
`No. 1:15-cv-00426-RGA (D. Del.); and (2) Variable Lighting LLC v.
`Polygroup Services N.A., Inc., Case No. 1:16-cv-00183-RGA (D. Del.). Pet.
`71; Paper 6, 2. Petitioner also identifies the following additional proceeding:
`Variable Lighting LLC v. Polygroup Ltd., Case No. 1:16-cv-00162 (D. Del.).
`Pet. 71.
`
`II. ANALYSIS
`A. Claim Construction
`
`In an inter partes review, claims of an unexpired patent are
`
`interpreted using the broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`
`5
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`1. “variable-effect lighting system”
`
`This term appears in the preamble of independent claim 1. Petitioner
`asserts we should construe this term to mean “a lighting system where one of
`the lighting effects—e.g., the color of the light—can be changed.” Pet. 6.
`Petitioner contends this construction is consistent with the ordinary use of
`the term and the use of the term in the ’140 patent. Id. at 6–7.
`
`The ’140 patent describes variable-effect lighting systems as
`frequently including a control system to control the color of light emanating
`from the fixture. Ex. 1001, 1:9–14. The ’140 patent further describes the
`color display generated by the bicolored lamps can be selected, and lists
`exemplary preferred color displays. Id. at 4:46–65. Accordingly, for
`purposes of this Decision, we construe “variable-effect lighting system” as
`“a lighting system where one of the lighting effects, such as the color of
`light, can be changed.”
`
`2. “conduction angle of each said illuminating element”
`
`This term appears in all challenged claims. Petitioner asserts this
`term should be construed as “a portion of a whole period of a periodic
`waveform at which the illuminating element conducts current—i.e., when
`the lighting element turns on.” Pet. 7–8. Petitioner contends that, although
`the ’140 patent does not define a “conduction angle,” the patent does explain
`“that controlling the ‘conduction angle of the LEDs’ changes ‘the color
`
`6
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`display generated by the bicoloured lamps.” Pet. 8 (quoting Ex. 1001, 4:46–
`48). Petitioner argues that by controlling when LEDs turn on and off during
`each period of the periodic waveform, the color display in the ’140 patent
`can be controlled to change the color, the color intensity, a color pattern, a
`rate of color change, or a combination thereof. Pet. 8 (citing Ex. 1001, 4:49–
`65).
`The ’140 patent describes that a selected conduction angle sequence
`
`sets the firing angle of the semiconductor switches. Ex. 1001, 14:12–16.
`The ’140 patent further describes that a signal sent to a semiconductor
`switch causes the corresponding LED to conduct current and illuminate, and
`removal of the signal (current) causes the LED to extinguish. See id. at
`14:20–41. Accordingly, for purposes of this Decision, we construe
`“conduction angle of each said illuminating element” as “the portion of a
`whole period of a periodic waveform during which the illuminating element
`conducts current and is illuminated.”
`
`3. “a pair of commonly-coupled light-emitting diodes”
`
`Petitioner proposes a construction for “a pair of commonly-coupled
`light-emitting diodes,” which appears in claims 4, 8, and 13. Pet. 8–9. For
`purposes of this Decision, we do not find it necessary to construe this term.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`B. Ground 1: Obviousness Over Kazar and Gomoluch
`
`Petitioner contends that claims 1, 2, 4, and 5 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over Kazar and Gomoluch. Pet. 11–26.
`For the reasons discussed below, we are persuaded, based on the current
`
`7
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
`on this ground.
`
`1. Overview of Kazar and Gomoluch
`
`Kazar describes an ornamental and decorative light display that uses
`light emitting diode (LED) lamps that operate from a direct current power
`source. Ex. 1004, 2:66–67. The LEDs may be constructed of two or more
`individual diodes, such as bicolor red/green diodes, that can also produce the
`colors yellow, orange, and amber. Id. at 2:47–57. The decorative lighting
`system allows the user to select individual lights to be constantly illuminated
`or flash in response to an oscillating voltage source, and allows multicolor
`patterns to be generated using bicolor LEDs. Id. at 3:3–12.
`
`Kazar is described in the background section of the ’140 patent. Ex.
`1001, 1:29–45. In particular, the ’140 patent describes Kazar as follows:
`[Kazar] teaches a light display comprising strings of bicoloured
`LED packages connected in parallel across a common DC
`voltage source. Each bicoloured LED package comprises a pair
`of red and green LEDs, connected back-to-back, with the
`bicoloured LED packages in each string being connected in
`parallel to the voltage source through an H-bridge circuit. A
`control circuit . . . allows the red and green LEDs to conduct each
`alternate half cycle, with the conduction angle each half cycle
`being determined according to a modulating input source
`coupled to the control circuit. As a result, the bicolour LEDS can
`be forced to illuminate continuously, or to flash. Further, the
`colour of light produced by each bicolour LED can be
`continuously varied between two extremes.
`
`Id.
`Gomoluch describes a lighting control system, such as a lighting
`
`control system for Christmas tree lights. Ex. 1006, 1:1–3. In one
`embodiment, the lighting control system comprises a microprocessor
`
`8
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`connected to a pattern and program store, and tri-color LEDs, which
`comprise red and green light emitting diodes. Id. at 2:29–32, 3:8–10. A
`desired lighting pattern, and the rate at which the pattern changes, may be
`selected using rotary switches. Id. at 3:27–30. The microprocessor
`determines which pattern sequence is required and calls up a predefined bit
`pattern stored in the read-only memory (pattern and program store). Id. at
`3:29–32.
`
`2. Claim 1
`
`Petitioner contends that the limitations recited in claim 1 are taught
`by Kazar. Pet. 13–22. Petitioner further contends that, to the extent Kazar
`does not disclose a programmable lamp controller and storing a
`predetermined pattern “in a memory of the controller,” these limitations are
`taught by Gomoluch. Id. at 16–17, 20–21.
`
`We have reviewed the information provided by Petitioner and
`determine, based on the record before us and for purposes of this Decision,
`that Petitioner makes a sufficient showing to demonstrate a reasonable
`likelihood of prevailing on its challenge based on the combination of Kazar
`and Gomoluch. In particular, Petitioner sufficiently establishes that Kazar
`teaches a lamp assembly that comprises a plurality of multi-colored lamps in
`parallel with a DC voltage source, each multi-colored lamp comprising a
`first illuminating element for producing a first color of light and a second
`illuminating element for producing a second color of light different from the
`first color. Id. at 13–16. We observe that Petitioner’s assertions regarding
`these limitations are consistent with the description of Kazar provided in the
`background of the ’140 patent. See Ex. 1001, 1:29–45. Petitioner also
`sufficiently establishes that the claimed programmable lamp controller is
`
`9
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`taught by the combination of Kazar and Gomoluch. Pet. 16–22. Petitioner
`adequately identifies the programmable lamp controller with both Kazar’s
`circuit configuration, which uses Pulse Width Modulation (PWM) to control
`the color produced by the device and which includes a user programmable
`Programmable Array Logic (PAL) integrated circuit, and Gomoluch’s
`microprocessor. Id. at 16–19. Petitioner adequately identifies Kazar’s
`setting a 50% duty cycle (conduction angle of 180º) with the claim recitation
`of “setting a conduction angle of each illuminating element according to at
`least one predetermined pattern.” Id. at 18–19. Petitioner adequately
`identifies the “predetermined bit pattern being bits stored in a memory of the
`controller” with Kazar’s use of integrated circuits to control the pattern in
`which the LEDs are lit and Gomoluch’s predefined bit pattern stored in read-
`only memory. Id. at 19–21. Petitioner adequately identifies Kazar’s
`transistor pairs with the claimed first and second electronic switches. Id. at
`21–22.
`
`Petitioner also presents a sufficient rationale at this stage to support
`its contention that one of skill in the art would have combined Kazar and
`Gomoluch. Petitioner contends the combination would not have amounted
`to anything more than use of a known technique (programming a controller)
`to improve similar devices in the same way. Pet. 12 (citing KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 417 (2007)); see also Pet. 16, 21. Petitioner
`reasons a person of ordinary skill in the art would have enhanced Kazar with
`Gomoluch because of the advantages of Gomoluch’s ability to
`programmably control the color pattern of LEDs and that such a
`modification would have been predictable. Pet. 12.
`
`10
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`For the reasons discussed above, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in establishing that claim
`1 would have been obvious over Kazar and Gomoluch.
`
`3. Claims 2, 4, and 5
`
`
`Petitioner contends dependent claims 2, 4, and 5 are unpatentable as
`obvious over Kazar and Gomoluch. Pet. 22–26. We have reviewed the
`information provided by Petitioner and determine, based on the record
`before us and for purposes of this Decision, that Petitioner adequately
`supports its contention that the combination of Kazar and Gomoluch teaches
`the limitations recited in these claims. In particular, Petitioner adequately
`establishes the combination of Kazar and Gomoluch teaches “one pattern is
`selectable according to a user-operable input to the controller,” as recited in
`dependent claim 2. Id. at 22–24. Petitioner also adequately establishes that
`Kazar teaches the claimed pair of commonly-coupled light-emitting diodes
`recited in claim 4 and the H-bridge recited in claim 5. Id. at 24–26.
`Therefore, we are persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing in establishing that claims 2, 4, and 5 would have
`been obvious over Kazar and Gomoluch.
`
`C. Ground 2: Obviousness Over Kazar, Gomoluch, and Minato
`
`Petitioner contends dependent claim 3 are unpatentable as obvious
`over Kazar, Gomoluch, and Minato. Pet. 26–27. We are persuaded, based
`on the current record, that Petitioner has demonstrated a reasonable
`likelihood of prevailing on this ground.
`
`Minato describes a light-emitting display device comprising a first
`light-emitting diode having a first luminescent color and a second light-
`emitting diode having a second luminescent color. Ex. 1007, 2. Minato
`
`11
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`further describes a circuit for controlling the luminescent color of the light-
`emitting display device in which a control generation part, such as a
`temperature detection circuit, may be used to change the luminescent color.
`Id. ¶¶ 30–31.
`
`For purposes of this Decision, we find that Petitioner adequately
`shows the combination of Kazar, Gomoluch, and Minato teaches the “lamp
`controller includes a temperature sensor for selecting the at least one
`pattern,” as recited in claim 3. Pet. 26–27. Petitioner also provides a
`sufficiently persuasive rationale at this stage for combining the teachings of
`Minato with Kazar and Gomoluch through its assertion that a person of skill
`in the art would have recognized advantages in controlling the color pattern
`of LEDs based on external input, a position supported by testimony of its
`expert, Mike Wood. Id. at 27. Accordingly, we are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing in
`establishing that claim 3 would have been obvious over Kazar, Gomoluch,
`and Minato.
` D. Grounds 3 and 4: Obviousness Over Kazar, Sato, and Gomoluch
`and Obviousness over Kazar, Lys, and Gomoluch
`Petitioner contends claims 6–9 are unpatentable as obvious over
`
`Kazar, Sato, and Gomoluch. Pet. 28–34. Petitioner further contends claims
`10–13 would have been obvious over Kazar, Lys, and Gomoluch. Pet. 34–
`41. We are persuaded, based on the current record, that Petitioner has
`demonstrated a reasonable likelihood of prevailing on these grounds.
`
`Sato describes an all-night emergency light that includes a small light
`bulb, such as a transparent incandescent bulb or a neon bulb. Ex. 1008,
`5:16–19. Sato describes the light bulb is turned on when the level of
`
`12
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`ambient light falls below a predetermined threshold value and is turned off
`when the level of ambient light exceeds the predetermined threshold value.
`Id. at 5:32–36.
`
`Lys describes a current control for a lighting assembly, which may be
`an LED system or LED lighting assembly. Ex. 1009, 5:46–48. A modular
`LED is described for illumination within an environment. Id. at 31:59–60.
`The modular LED may be worn on a body, such as when embodied as an
`article of jewelry. Id. at 34:5–8. Lys further describes that the
`microprocessor that controls the LEDs may be responsive to any electrical
`signal, such as detectors of ambient temperature or light. Id. at 16:44–61.
`
`Independent claims 6 and 10 recite substantially the same limitations
`as independent claim 1, with the exception of the preambles. Petitioner
`persuasively relies on Sato to teach the “night light” recited in claim 6 and
`on Lys to teach the “jewelry piece” recited in claim 10. Pet. 28, 35.
`Petitioner advances substantially the same arguments discussed in Section
`II.B that Kazar and Gomoluch teach the remaining limitations of claims 6
`and 10. See id. at 29–32, 36–39. We are persuaded that Petitioner
`adequately supports its contention at this stage of the proceeding that the
`combination of Kazar, Sato, and Gomoluch teaches the limitations of claim
`6 and that the combination of Kazar, Lys, and Gomoluch teaches the
`limitations of claim 10. Petitioner also provides a sufficiently persuasive
`rationale at this stage of the proceeding for combining the references. See
`id. at 28–29, 35–36.
`
`Dependent claims 7 and 11 recite substantially the same limitations
`as dependent claim 2, and dependent claims 8 and 13 recite substantially the
`same limitations as dependent claim 4. Petitioner similarly relies on the
`
`13
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`combination of Kazar and Gomoluch to teach these limitations. Id. at 32–
`33, 39, 41. For the same reasons discussed previously, Petitioner has
`demonstrated a reasonable likelihood of prevailing on this challenge.
`Petitioner also persuasively supports its contention that Sato teaches the
`ambient light sensor recited in claim 9 for inhibiting conduction of the
`illuminating elements when an intensity of the ambient light exceeds a
`threshold. Id. at 33–34. Additionally, Petitioner persuasively supports its
`contention that Lys teaches the claimed temperature sensor recited in
`dependent claim 12. Id. at 40.
`
`We are persuaded Petitioner has demonstrated a reasonable
`likelihood of prevailing in establishing that claims 6–9 would have been
`obvious over the combination of Kazar, Sato, and Gomoluch. We further
`are persuaded Petitioner has demonstrated a reasonable likelihood of
`prevailing in establishing that claims 10–13 would have been obvious over
`the combination of Kazar, Lys, and Gomoluch.
`
`E. Grounds 5–8: Obviousness Based on Smith and Gomoluch
`
`Petitioner contends claims 1, 2, 4, and 5 are unpatentable as obvious
`over the combination of Smith and Gomoluch. Pet. 41–70. Petitioner
`contends dependent claim 3 would have been obvious over Smith,
`Gomoluch, and Minato. Id. at 55–57. Petitioner contends claims 6–9 would
`have been obvious over Smith, Sato, and Gomoluch. Id. at 57–64.
`Petitioner also contends claims 10–13 would have been obvious over Smith,
`Lys, and Gomoluch. Id. at 64–70. We are persuaded, based on the current
`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
`on these grounds.
`
`14
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`Smith describes a light bulb assembly incorporating bi-color light-
`
`emitting diodes, which can be driven from DC power supplies. Ex. 1005,
`1:8–11, 2:51–52. Control circuitry is provided to drive the light-emitting
`diodes or light strings to make possible a wide variety of sequencing,
`including blinking, alternating between two colors, and sequencing between
`two or more colors. Id. at 6:55–61. Smith further describes selecting
`predetermined duty cycles for the output signal. Id. at 26:1–7.
`
`We have reviewed the information provided by Petitioner and
`determine, for purposes of this Decision, that Petitioner persuasively
`supports its contention that the combination of Smith and Gomoluch teaches
`or suggests the variable lighting system recited in claim 1. Petitioner applies
`Gomoluch in a similar manner as that described in Section II.B. We are
`persuaded, for the same reasons discussed in that section, that Gomoluch
`teaches a programmable lamp controller and storing a predetermined pattern
`“in a memory of the controller.” See Pet. 47–50. Petitioner also sufficiently
`establishes that Smith teaches the remaining limitations. See id. at 41–52.
`For example, Petitioner persuasively shows that Smith teaches the claimed
`lamp assembly comprising a plurality of multi-colored lamps in parallel with
`a DC voltage source, each lamp including first and second illuminating
`elements for producing first and second colors. Id. at 41–42. We also credit
`the testimony of Petitioner’s witness, Mr. Wood, that Smith’s half wave
`rectification produces a pulsed DC voltage source from the AC source. Ex.
`1003, ¶¶ 191–195; see also Ex. 1005, 40:52–64. Petitioner also persuasively
`shows that Smith teaches a lamp controller, including first and second
`electronic switches, for setting a conduction angle of each illuminating
`element according to a predetermined pattern. Pet. 46–49, 51–52.
`
`15
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`Additionally, we determine Petitioner’s stated rationale for combining Smith
`and Gomoluch—use of a known technique to improve a similar device in a
`similar way (a predictable modification)—is sufficiently persuasive at this
`stage. See id. at 42–43; see also id. at 48, 50.
`
`Petitioner also sufficiently shows that Smith and Gomoluch teach the
`limitations recited in dependent claims 2, 4, and 5. In particular, Petitioner
`persuasively establishes that Smith teaches the limitations recited in
`dependent claims 4 and the 5, and that the combination of Smith and
`Gomoluch teaches the limitation recited in dependent claim 2. Pet. 52–55.
`With respect to dependent claim 5, we credit Mr. Wood’s testimony that
`Smith’s Figure 39 is an H-bridge. Ex. 1003, ¶¶ 230–232.
`
`For the reasons discussed above, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood in prevailing in establishing that
`claims 1, 2, 4, and 5 would have been obvious over Smith and Gomoluch.
`
`Petitioner’s arguments that claims 3 and 6–13 are unpatentable as
`obvious based on the combination of Smith and Gomoluch, with additional
`art to address specific limitations, substantially parallel the arguments made
`for those grounds based on the combination of Kazar and Gomoluch.
`Compare Pet. 26–41, with id. at 55–70. We have reviewed those arguments
`and are persuaded that Petitioner has made a sufficient showing at this stage
`for essentially the same reasons we explain above. Therefore, we conclude
`Petitioner has demonstrated a reasonable likelihood in prevailing in
`establishing that: (i) claim 3 would have been obvious over Smith,
`Gomoluch, and Minato; (ii) claims 6–9 would have been obvious over
`Smith, Sato, and Gomoluch; and (iii) claims 10–13 would have been obvious
`over Smith, Lys, and Gomoluch.
`
`16
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`III. CONCLUSION
`Petitioner has demonstrated a reasonable likelihood of prevailing on
`
`its challenges to claims 1–13 on the ’140 patent as set forth above.
`
`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any of these challenged claims or the
`construction of any claim term.
`
`IV. ORDER
`
`It is
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted on the following grounds:
`(1) Obviousness of claims 1, 2, 4, and 5 over Kazar and Gomoluch;
`(2) Obviousness of claim 3 over Kazar, Gomoluch, and Minato;
`(3) Obviousness of claims 6–9 over Kazar, Sato, and Gomoluch;
`(4) Obviousness of claims 10–13 over Kazar, Lys, and Gomoluch;
`(5) Obviousness of claims 1, 2, 4, and 5 over Smith and Gomoluch;
`(6) Obviousness of claim 3 over Smith, Gomoluch, and Minato;
`(7) Obviousness of claims 6–9 over Smith, Sato, and Gomoluch; and
`(8) Obviousness of claims 10–13 over Smith, Lys, and Gomoluch.
`FURTHER ORDERED that no review is instituted based on any
`
`other grounds of unpatentability; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing
`on the entry date of this decision.
`
`
`
`17
`
`
`
`IPR2016-01066
`Patent 6,285,140 B1
`
`
`
`For PETITIONER:
`
`Jason D. Eisenberg
`John H. Curry
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-ptab@skgf.com
`jcurry-ptab@skgf.com
`
`William W. Cochran
`COCHRAN FREUND & YOUNG LLC
`billc@patentlegal.com
`
`Dustin B. Weeks
`TROUTMAN SANDERS LLP
`dustin.weeks@troutmansanders.com
`
`
`
`For PATENT OWNER:
`
`Padmaja Chinta
`Andrew Berks
`CITTONE & CHINTA LLP
`pchinta@cittonechinta.com
`andrew@berksiplaw.com
`
`
`18
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
