UNITED STATES DISTRICT COURT FOR THE
`NORTHERN DISTRICT OF ILLINOIS
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`Civil Action No.: 15-cv-04833
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`
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`Hon. Virginia Kendall
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`LYNK LABS, INC.,
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`Plaintiff,
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`v.
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`JUNO LIGHTING LLC, and
`JUNO MANUFACTURING, INC.
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`Defendants.
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`DEFENDANTS’ INITIAL NON-INFRINGEMENT, UNENFORCEABILITY, AND
`INVALIDITY CONTENTIONS PURSUANT TO LPR 2.3
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`Defendants Juno Lighting LLC and Juno Manufacturing, Inc. (“Juno”) hereby serve their
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`Initial Non-Infringement, Unenforceability, and Invalidity contentions pursuant to Local Patent
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`Rule 2.3. The following contentions are based on information and prior art references presently
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`known by Juno. Juno’s search for relevant information and prior art continues. Juno has
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`received limited discovery from Plaintiff Lynk Labs, Inc. (“Lynk Labs”). Juno has not received
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`Lynk Labs’ construction of the claim elements of the asserted claims, and the Court has not yet
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`resolved any potential claim construction disputes. Therefore, Juno reserves the right to amend
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`or supplement these contentions.
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`Reservations
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`I.
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`The contentions provided herein by Juno are provisional and subject to revision as
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`provided in the Local Rules, the Federal Rules of Civil Procedure, and/or any Order of this
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`Court. Juno’s investigations into the infringement, invalidity, and enforceability of the asserted
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`IPR PAGE 1
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`Acuity v. Lynk
`Acuity Ex.
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`1022
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`claims of the Patents-in-Suit are still ongoing. Depositions of the persons involved in the
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`drafting and prosecution of the Patents-in-Suit, named inventors, and those working with the
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`named inventors at the time of the alleged invention of the Patents-in-Suit, for instance, may
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`provide additional information affecting the disclosure or contentions contained herein.
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`Depositions of others involved in the origins or development of Lynk Labs’ business and/or the
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`products identified by Lynk Labs as embodying the claimed inventions may also reveal
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`information that affects the disclosure or contentions contained herein. Additionally, invalidity
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`contentions and noninfringement contentions are influenced by, and may depend upon, expert
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`analysis or testimony, none of which has occurred under the Court’s scheduling order. Juno also
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`has not taken discovery from third parties, who may have information concerning the prior art
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`identified herein and/or additional prior art. Juno also reserves its right to further supplement
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`and/or amend these Invalidity, Unenforceability, and Noninfringement Contentions after the
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`Court has construed disputed claim terms. In addition, because Lynk Labs has taken no position
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`as to whether the preambles to each asserted claim of the patents-in-suit are limiting, Juno further
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`reserves its right to supplement or amend these contentions in view of any statement relating to
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`any of the claim preambles. Accordingly, these preliminary contentions are subject to further
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`supplementation, amendment, and revision.
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`Juno’s efforts to provide Invalidity, Unenforceability, and Noninfringement Contentions
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`have also been constrained by Lynk Labs’ failure to submit proper Infringement Contentions.
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`Indeed, Lynk Labs’ Infringement Contentions are deficient in multiple respects and do not
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`provide Juno with sufficient information to understand the bases for Lynk Labs’ infringement
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`allegations or the alleged scope of the claims as Lynk Labs is applying them in making such
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`allegations. In particular, Lynk Labs has not provided sufficient specificity concerning its
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`IPR PAGE 2
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`allegations of infringement to enable Juno to provide their complete contentions concerning
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`invalidity, and thus failed to meet its requirements under Local Patent Rules. Accordingly, Juno
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`is unable to ascertain how Lynk Labs construes the asserted claims. The scope of Lynk Labs’
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`infringement contentions directly affects the scope of relevant prior art and the validity of the
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`Patents-in-Suit. Juno made a good faith effort to fulfill its obligations under the Local Patent
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`Rules, but reserves its right to supplement these contentions at such time as Lynk Labs complies
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`with its disclosure obligations. If and when Lynk Labs provides proper infringement
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`contentions,
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`these Invalidity, Unenforceability, and Noninfringement Contentions will
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`necessarily be subject to amendment as well.
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`By submitting these Invalidity, Unenforceability, and Noninfringement Contentions, Juno
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`in no way waives, relinquishes, or precludes the assertion of any arguments with respect to the
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`proper scope of the claims or claim terms. References cited in the attached exhibits may disclose
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`the elements of the asserted claims either explicitly and/or inherently, and/or may be relied upon
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`to show the state of the art in the relevant timeframes. The suggested obviousness combinations
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`are in the alternative to Juno’s anticipation contentions and are not to be construed to suggest that
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`any obviousness reference is also not anticipatory.
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`For the charts discussed below and attached hereto, where Juno identified at least one
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`citation per element for each reference, each and every disclosure of the same element in the
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`reference is not necessarily also identified. The lack of a citation for an element should not be
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`deemed an admission that the element is not disclosed or is not inherent in the reference. In an
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`effort to focus the issues, Juno identifies only exemplary portions of cited references. It should
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`be recognized that persons of ordinary skill in the art generally read a prior art reference as a
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`whole and in the context of other publications and literature and in light of the knowledge of one
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`IPR PAGE 3
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`of ordinary skill in the art. To understand and interpret any specific statement or disclosure
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`within a prior art reference, such persons would rely on other information within the reference,
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`along with other publications and their scientific or engineering knowledge. Juno consequently
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`reserves the right to rely upon other unidentified portions of the prior art references and on other
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`publications and expert testimony as to the knowledge of a person of ordinary skill to provide
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`context, and as aids to understanding and interpreting the portions that art identified. Juno also
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`reserves the right to rely on other portions of the prior art references, other publications, and the
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`testimony of experts to establish that a person of ordinary skill in the art would have been
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`motivated to modify or combine certain of the cited references so as to render the claims
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`obvious. Further, where Juno identifies a particular figure in a prior art reference, the
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`identification should be understood to encompass the caption and description of the figure and
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`any text relating to the figure in addition to the figure itself. Similarly, where an identified
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`portion of text refers to a figure, the identification should be understood to include the figure as
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`well.
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`II.
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`Non-infringement (LPR 2.3(a))
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`Juno asserts that it has not and does not directly or indirectly infringe claims 1-5 of U.S.
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`Patent No. 8,531,118 (“the ‘118 Patent”) as asserted by Lynk Labs. In addition, Juno asserts that
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`it has not and does not directly or indirectly infringe claims 1-5 of U.S. Patent No. 8,841,855
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`(“the ‘855 Patent”) as asserted by Lynk Labs.
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`Lynk Labs failed to satisfy its burdens under LRP 2.2 of showing that Juno infringes any
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`asserted claim. At most, Lynk Labs has shown that Juno sells products that when installed and
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`configured in a certain manner may infringe one or more of the asserted claims. Additionally,
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`Lynk Labs failed to satisfy its burden to show that the accused products do not have substantial
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`noninfringing uses and/or that Juno induced a third-party to infringe one or more asserted claims.
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`Likewise, Lynk Labs failed to identify a single use of the accused products in an infringing
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`configuration.
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`Attached at Exhibits A through B are claim charts indicating which elements Lynk Labs
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`failed to show are present in the accused products and/or are not present in the accused products.
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`Juno reserves the right to supplement and/or amend these charts based on further discovery and
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`investigation.
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`III.
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`Invalidity (LPR 2.3(b))
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`A.
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`Identification of prior art (LPR.2.3(b)(1))
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`Subject to Juno’s reservations, below is a listing of each item of prior art that Juno
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`believes either anticipates or renders obvious, in combination with one or more other references,
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`or provides background on the state of the art for one or more of the asserted claims of the
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`Patents-in-Suit. Where a prior art reference describes a system that was publicly available prior
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`to the patents-in-suit, the underlying system is also prior art.
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`1.
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`2.
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`3.
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`4.
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`U.S. Patent No. 7,053,560 to Ng (“Ng”), issued May 30, 2006;
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`U.S. Patent Publication No. 2007/0247852 to Wang (“Wang”), published October
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`25, 2007, titled “Multi Chip LED Lamp”;
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`U.S. Patent No. 7,535,028 to Fan (“Fan”), issued May 19, 2009;
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`Citizen Electronics Co., Ltd.’s CL-820-U1N datasheet dated August 6, 2007
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`(“Citizen”);
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`5.
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`Fairchild Semiconductor Corporation’s “Surface Mount LED Lamp Super Bright
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`0805” datasheet dated August 30, 2001 (“Fairchild”);
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`6.
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`Lynk Labs’ BriteDriver with SnapBrite or Tesla product lines;
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`7.
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`Juno’s products accused of infringing the ’118 Patent in Lynk Labs’ initial
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`infringement contentions to the extent that the Court finds that they infringe
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`claims 2-5 of the ‘118 Patent;
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`8.
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`9.
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`U.S. Patent No. 6,380,693 to Kastl (“Kastl”), issued April 30, 2002;
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`U.S. Patent No. 7,019,662 to Shackle (“Shackle”), issued March 28, 2006;
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`10. WO 99/20085 to SE Kang Electric Co., Ltd. (“SE Kang”), published April 22,
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`1999, titled “Electric Lamp Circuit and Structure Using Light Emitting Diodes”;
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`11.
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`12.
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`U.S. Patent No. 7,038,400 to Rimmer (“Rimmer”), issued May 2, 2006;
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`U.S. Patent No. 5,180,952 to Nilssen (“Nilssen”), issued January 19, 1993;
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`13. WO 2010/106375 to Juice Technology Limited (“Juice”), published September
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`23, 2010, titled “Electrical Systems”;
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`14.
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`U.S. Patent Publication No. 2003/0122502 to Clauberg (“Clauberg”), published
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`July 3, 2003, titled “Light Emitting Diode Driver”;
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`15.
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`16.
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`17.
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`18.
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`U.S. Patent No. 4,506,318 to Nilssen (“Nilssen II”), issued March 19, 1985;
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`U.S. Patent No 6,157,551 to Barak (“Barak”), issued December 5, 2000;
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`U.S. Patent No. 4,271,408 to Teshima (“Teshima”), issued June 2, 1981;
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`U.S. Patent Publication No. 2004/0206970 to Martin (“Martin”), published
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`October 21, 2004, titled “Alternating Current Light Emitting Device”;
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`19.
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`U.S. Patent No. 6,412,971 to Wojnarowski (“Wojnarowski”), issued July 2, 2002;
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`and
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`20.
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`U.S. Patent No. 7,808,189 to Hollnberger (“Hollnberger”), issued October 5,
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`2010.
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`Lynk Labs identified in its Initial Infringement Contentions that its BriteDriver with
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`SnapBrite or Tesla product lines practice the claimed inventions of the ‘118 Patent. Upon
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`information and belief, Lynk Labs’ BriteDriver with SnapBrite or Tesla product lines were
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`available for sale prior to April 2, 2012, the filing date of the ‘118 Patent. For example, Kevin L.
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`Willmorth, of Lumenique, LLC and Tasca Solid State Work Lighting, posted on November 29,
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`2010 at http://lumeniquessl.com/2010/11/ that he made a lamp using “a 12” LynkLabs SnapBrite
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`strip with its 12 1W Tesla LEDs, and a BriteDriver power supply encased in one of the leg
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`bases.” LPR 2.1(a)(1) requires the plaintiff to produce “all documents concerning any
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`disclosure, sale or transfer, or offer to sell or transfer, of any item embodying, practicing or
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`resulting from the practice of the claimed invention prior to the date of application for the patent
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`in suit.” Lynk Labs, however, indicated that it had no documents that complied with LPR 2.1
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`(a)(1) with its initial disclosures. If and when Lynk Labs complies with LPR 2.1(a)(1), these
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`Invalidity, Unenforceability, and Noninfringement Contentions will necessarily be subject to
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`amendment as well.
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`In addition, to the extent that Plaintiff has accused Juno products of infringement, many
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`of those products were available prior to April 2, 2012, the filing date for the ‘118 Patent, thus
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`invalidating claims 2-5 of the ‘118 Patent. Likewise, the accused electronic transformers pre-
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`existed the ‘118 Patent, regardless of its priority date, and thus serve as prior art as well.
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`B.
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`Prior Art Invalidity Statements (LPR 2.3(b)(2))
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`Juno hereby provides the following statements as to whether each item of prior art
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`anticipates or renders obvious each asserted claim as required by LPR 2.3(b)(2).
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`1.
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`Anticipatory References
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`To the extent that a claim chart identifies a disclosure for each of the elements of a claim,
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`Juno asserts that the reference, at least, anticipates that claim. Moreover, Juno reserves the right
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`to (1) contend that the reference would have rendered the claimed subject matter obvious, or (2)
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`identify other references that would have made obvious the addition of the allegedly missing
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`limitation to the disclosed device or method of operation. Juno also reserves the right to identify
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`additional and/or different evidence in support of these claims, including new or different
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`evidence in the cited documents, additional supporting documents that are not cited, documents
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`received or produced in discovery, documents provided or discussed by experts and/or
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`documents obtained from third parties. Subject to the foregoing, below is a list of representative
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`prior art references which Juno alleges anticipates one or more of the asserted claims of the
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`Patents-in-Suit.
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`a)
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`b)
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`c)
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`d)
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`Ng anticipates claims 1, 4, and 5 of the ‘855 Patent as set forth in the claim chart
`in Exhibit C.
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`Wang anticipates claims 1, 4, and 5 of the ‘855 Patent as set forth in the claim
`chart in Exhibit D.
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`Lynk Labs identified in its Initial Infringement Contentions that its BriteDriver
`with SnapBrite or Tesla product lines practice the claimed inventions of the ‘118
`Patent. Upon information and belief, Lynk Labs’ BriteDriver with SnapBrite or
`Tesla product lines were available for sale prior to April 2, 2012 and would
`anticipate claims 2-5 of the ‘118 Patent. Juno will provide a claim chart once
`Lynk Labs produces documents sufficient to show the design and operation of its
`products.
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`If the Court finds that Juno’s ’118 Accused Products as defined in Lynk Labs’
`initial infringement contentions infringes claims 2-5 of the ‘118 Patent, then these
`products anticipate these claims as set forth in Lynk Labs’ initial infringement
`contentions.
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`e)
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`f)
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`g)
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`Kastl anticipates claims 1-4 of the ‘118 Patent as set forth in the claim chart in
`Exhibit E.
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`Shackle anticipates claims 1-2 of the ‘118 Patent as set forth in the claim chart in
`Exhibit F.
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`Juice anticipates claim 2 of the ‘118 Patent as set forth in the claim chart in
`Exhibit J.
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`2.
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`Obviousness References
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`The obviousness combinations of references provided below under 35 U.S.C. § 103 are
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`merely exemplary and are not intended to be exhaustive. This and other discovery may reveal
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`information that affects the disclosures and contentions herein, and upon that discovery, Juno
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`reserves the right to update these disclosures and contentions, as appropriate. Additional
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`obviousness combinations of the references identified below are possible, and Juno reserves the
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`right to use any such combination(s) in this litigation.
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`By discussing motivation(s) to combine herein, Juno does not admit that it needs prove
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`motivation to the extent discussed, or even that they need prove a motivation to combine at all
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`for any of the asserted claims. See KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007). Juno
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`reserves all rights to supplement, amend or modify its statements and/or position on obviousness
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`and/or motivation to combine. In any event, Juno does not intend these motivations to combine
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`to be exhaustive and it may supplement these motivations in the future, based on fact and expert
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`discovery.
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`a)
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`Identification of Obviousness Combination
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`To the extent that two or more references are included in a single chart, Juno asserts that
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`those references can also be combined to render a claim obvious under § 103. Those references
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`either discuss the same system or method and/or have overlapping authorship. Thus, it would
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`have been obvious to one skilled in the art to combine the teachings of those references.
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`Juno reserves the right to amend and/or supplement any of the obviousness contentions,
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`including to assert new and different contentions, based on Lynk Labs’ positions, discovery
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`(including expert discovery), and/or newly produced or acquired documents or evidence.
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`Subject to the foregoing, below is a list of representative obviousness combinations which Juno
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`alleges invalidates one or more of the asserted claims of the Patents-in-Suit.
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`Claims 2 and 3 of the ‘855 Patent are obvious in view of Ng and LEDs having
`dimensions of 2.5mm by 2.5mm or less, such as those described in Citizen,
`Fairchild, and Fan as set forth in the claim chart in Exhibit C;
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`Claims 2 and 3 of the ‘855 Patent are obvious in view of Wang and LEDs having
`dimensions of 2.5mm by 2.5mm or less, such as those described in Citizen,
`Fairchild, and Fan as set forth in the claim chart in Exhibit D;
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`If not found anticipated by either Ng or Wang, claims 1, 4, and 5 of the ‘855
`Patent are obvious in view of Ng and Wang as set forth in the claim charts in
`Exhibits C and D;
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`If not found anticipated by either Ng or Wang, claims 4 and 5 of the ‘855 Patent
`are obvious in view of Ng and/or Wang and LED packages arranged in various
`relationships, such as those described in Teshima, Martin, Wojnarowski, and
`Hollnberger as set forth in the claim charts in Exhibits C and D;
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`If not found anticipated by Kastl, claims 1-4 of the ‘118 Patent are obvious in
`view of Shackle, SE Kang, Rimmer, and/or Nilssen as set forth in the claim charts
`in Exhibits E-I;
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`Claim 5 of the ‘118 Patent is obvious in view of Kastl and Teshima and/or SE
`Kang as set forth in the claim chart in Exhibit E;
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`If not found anticipated by Shackle, claims 1-2 of the ‘118 Patent are obvious in
`view of Kastl, SE Kang, Rimmer, and/or Nilssen as set forth in the claim charts in
`Exhibits E-I;
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`Claim 3 of the ‘118 Patent is obvious in view of Shackle and Martin, Hollnberger,
`and/or Kastl as set forth in the claim chart in Exhibit F;
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`Claim 4 of the ‘118 Patent is obvious in view of Shackle and Martin, Hollnberger,
`SE Kang, and/or Kastl as set forth in the claim chart in Exhibit F;
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`Claim 5 of the ‘118 Patent is obvious in view of Shackle and Teshima and/or SE
`Kang as set forth in the claim chart in Exhibit F;
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`Claims 1, 2, 4, and 5 of the ‘118 Patent are obvious in view of SE Kang and
`frequency-converting power supply art, such as Applicant’s admitted prior art
`(e.g., Clauberg), Nilssen, Nilssen II, Kastl, Shackle, and Barak as set forth in the
`claim chart in Exhibit G;
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`Claims 3 and 4 of the ‘118 Patent are obvious in view of SE Kang, the frequency-
`converting power supply art, and Martin, Hollnberger, and/or Kastl as set forth in
`the claim chart in Exhibit G;
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`Claim 5 of the ‘118 Patent is obvious in view of SE Kang, the frequency-
`converting power supply art, and Teshima as set forth in the claim chart in Exhibit
`G;
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`Claims 1-5 of the ‘118 Patent are obvious in view of Rimmer and Kastl, SE Kang,
`Teshima, Martin, Wojnarowski, and/or Hollnberger as set forth in the claim chart
`in Exhibit H;
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`Claims 1-5 of the ‘118 Patent are obvious in view of Nilssen and Kastl, SE Kang,
`Teshima, Martin, Wojnarowski, and/or Hollnberger as set forth in the claim chart
`in Exhibit I;
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`If not found anticipated by Juice, claim 2 of the ‘118 Patent is obvious in view of
`Kastl, Shackle, SE Kang, Rimmer, and/or Nilssen as set forth in the claim charts
`in Exhibits E-J;
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`Claim 3 of the ‘118 Patent is obvious in view of Juice and Martin, Hollnberger,
`and/or Kastl as set forth in the claim chart in Exhibit J;
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`Claim 4 of the ‘118 Patent is obvious in view of Juice and Martin, Hollnberger,
`SE Kang, and/or Kastl as set forth in the claim chart in Exhibit J; and
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`Claim 5 of the ‘118 Patent is obvious in view of Juice and Teshima and/or SE
`Kang as set forth in the claim chart in Exhibit J.
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`Thus, to the extent that the combinations of these teachings are not considered a single
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`system or references and the references/systems are not deemed incorporated by reference, the
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`combination of those systems and references would have been obvious to one of ordinary skill in
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`the art.
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`b)
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`Additional Obviousness Consideration
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`Juno also contends that one of skill in the art at the time the alleged inventions were made
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`would have been motivated to combine the references disclosed herein in such a way as to reach
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`the alleged inventions. The teaching, suggestion, or motivation to combine these references may
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`be found, explicitly or implicitly and as discussed in more detail below, in one or more of the
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`following: the knowledge or common sense of a person of ordinary skill in the art; the prior art
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`references themselves and/or the prior art as a whole, including the interrelated teachings of
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`multiple prior art references; the admitted prior art in the Patents-in-Suit; the nature of the
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`problem to be solved by the alleged inventions and the existence of similar improvements in
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`similar applications; design incentives and other market forces, including the advantages of
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`creating a superior and more desirable product and the effects of demands known to the design
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`community or present in the marketplace; the ability to implement the alleged invention as a
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`predictable variation of the prior art; improvements in similar devices; any needs or problems
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`known in the field and addressed by the Patents-in-Suit, or other problems that would be
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`encountered by one of skill in the art working in such a field; and the number of identified,
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`predictable solutions to the problem addressed by these patents. In addition, the prior (or
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`simultaneous) invention described above is evidence that motivation to combine the concepts
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`described herein did, in fact, exist, and that they were, in fact, combined.
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`Juno identifies at least the following additional bases for invalidity due to obviousness
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`and reserves its right to assert additional and/or different bases for obviousness. Specifically, it
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`would have been obvious for a person of ordinary skill in the art to combine the teachings of the
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`§ 102 or § 103 prior art references according to the asserted claims and thereby obtain the
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`alleged inventions of the asserted claims for one or more of the following reasons:
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`(1)
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`the combination results from combining prior art elements according to known
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`methods to yield predictable results;
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`(2)
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`the combination results from a simple substitution of one known element for
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`another to obtain predictable results;
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`(3)
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`the combination results from choosing a finite number of identified, predictable
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`solutions, with a reasonable expectation of success, and therefore is obvious to try;
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`(4)
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`the combination results from known work in one field of endeavor prompting a
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`variation of it for use in either the same field or a different one based on design incentives or
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`other market forces and the variations would have been predictable to one of ordinary skill in the
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`art; or
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`(5)
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`the combination results from using known techniques or solutions to address a
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`problem addressed by the invention or a problem that would be encountered by one of skill in the
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`art working in that field.
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`Indeed, each of the references disclosed herein were directed at the same or similar field
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`of technology and the same or similar problem as the Patents-in-Suit. Specific claim limitations
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`with references that render the alleged claims obvious are identified below. For the references
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`identified in Juno’s claim charts, if any particular claim limitation is alleged to not be disclosed
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`or inherent in those references, then Juno’s position is it would have been obvious to combine
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`the charted reference with one or more of the references identified below for the particular claim
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`limitations. Juno’s list is not intended to be exhaustive. Juno may rely upon all or a subset of the
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`prior art identified in these Invalidity Contentions, in any combination, depending on the Court’s
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`claim construction and further investigation. Also, as Juno is currently unaware of the extent, if
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`any, to which Lynk Labs will contend that limitations of the asserted claims are not disclosed in
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`the art identified herein as anticipatory, Juno reserves the right to identify other references and
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`combinations that may render an allegedly missing limitation obvious. In addition, if and to the
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`extent that Lynk Labs challenges the correspondence of any of these references with respect to
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`particular limitations of the asserted claims of the Patents-in-Suit, Juno reserves its right to
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`supplement these Invalidity Contentions to identify further motivation to combine particular
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`references with additional particularity.
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`• The claimed electronic AC driver. The claims of the ‘118 Patent recite “a driver
`… having input of a first AC voltage and a first frequency and an output of a
`second AC voltage and a second frequency, which the second AC voltage is a
`relatively fixed voltage and the second frequency is a relatively higher
`frequency.” To the extent that this limitation can be understood and is satisfied
`by the accused Juno electronic AC transformers, then this limitation is disclosed
`in at least the following references or systems: Applicant’s admitted prior art
`(e.g., Clauberg), Nilssen, Nilssen II, Kastl, Shackle, Barak, and the accused
`electronic AC driver provided by Hatch.
`
`• The claimed LED Circuits. Claim 1 of the ‘118 Patent recites “at least one LED
`circuit having at least one LED, the at least one LED circuit capable of emitting
`light during both a positive phase and a negative phase of an AC power
`supply….” Claims 2-5 recites simply an “LED circuit.” To the extent that this
`limitation can be understood and is satisfied by the accused Juno LED devices,
`then this limitation is disclosed in at least the following references or systems:
`Kastl, Shackle, SE Kang, Juice, Teshima, Martin, Wojnarowski, and Hollnberger.
`
`
`It would have been obvious to a person of ordinary skill in the art to combine the claimed
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`electronic driver and the claimed LED circuits as Lynk Labs asserts Juno did to infringe the
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`claims of the ‘118 Patent. At the time of alleged invention of the ‘118 Patent, it was well known
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`to convert AC to DC using a bridge rectifier and using that converted current to power an LED
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`circuit. It was also well known to use an electronic transformer to convert mains power to a
`
`
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`power signal output at a higher frequency. For at least these reasons, the results of the
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`combination were predictable and expected.
`
`C.
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`Prior Art Claim Charts (LPR 2.3(b)(3))
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`Juno contends that each of the asserted claims of the Patents-In-Suit is anticipated by
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`and/or obvious in view of one or more of the items of prior art identified above, either alone or in
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`combination. Attached hereto as Exhibits C-J are Juno’s claim charts identifying representative
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`prior art references which anticipate and/or render obvious the asserted claims of the Patents-in-
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`Suit. The citations in the claim charts indicate with specificity where in each piece of prior art
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`the corresponding element can be found. Those citations, however, are representative and not
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`exhaustive. To the extent that a prior art reference has multiple disclosures concerning or
`
`relating to the same topic or subject matter, those disclosures are also properly included in Juno’s
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`disclosures. Juno may also rely upon, in whole or in part, any reference cited in the prosecution
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`history of the Patents-in-Suit, as well as those cited in the other related patents within the same
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`family as the Patents-in-Suit.
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`D.
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`Section 112 Invalidity Statements (LPR 2.3(b)(4))
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`
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`As specified below, the asserted claims of the Patents-in-Suit are invalid for failure to
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`comply with the enablement and written description requirements of 35 U.S.C. § 112(a) and the
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`definiteness requirements of 35 U.S.C. § 112(b). One or more asserted claims of the Patents-in-
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`Suit are invalid under § 112(a) for failing to teach those skilled in the art how to make and use
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`the full scope of the claimed invention without undue experimentation and show that the
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`inventors were in possession of the claimed inventions at the time they filed their applications.
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`Similarly, one or more asserted claims of the Patents-in-Suit are invalid under § 112(b) for
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`failing to particularly point out and distinctly claim the subject matter which the patentee regards
`
`
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`as its alleged invention such that one skilled in the relevant art would be reasonably apprised of
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`the bounds of the asserted claims when read in light of the specification. Below, Juno sets forth
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`exemplary limitations that are invalid for failing to comply with the enablement and written
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`description requirements of § 112(a) and/or the definiteness requirements of § 112(b). Juno
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`contends that each dependent claim that depends from an independent claim that is invalid, as
`
`identified below, is also invalid for the same reasons.
`
`1. Lack of Enablement and Written Description Under 35 U.S.C. §
`112(a)
`
`Juno alleges that the following claims of the Patents-in-Suit are invalid for lack of
`
`enablement and/or failure to fulfill the written description requirement of 35 U.S.C. § 112(a).
`
`Juno reserves the right to amend and/or supplement these contentions, including to assert lack of
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`enablement, failure to disclose the best mode or failure to provide adequate written description
`
`based on Lynk Labs’ positions, discovery (including expert discovery), and/or newly produced
`
`or acquired documents or evidence.
`
`For each of the limitations identified below, the relevant patent specification either fails
`
`to (i) allow persons of ordinary skill in the art to recognize that the named inventors invented
`
`what is claimed in that limitation and/or (ii) provide sufficient information regarding the subject
`
`matter of the claims as to enable one skilled in the pertinent art to make and use the claimed
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`invention.
`
`‘855 Patent:
`
`• “AC-Driven LED assembly”.
`
`‘118 Patent:
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`• “LED circuit” including all recited limitations thereon;
`
`• “driver” including all recited limitations thereon; and
`
`
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`• “bridge rectifier” including all recited limitations thereon.
`
`2. Indefiniteness Under 35 U.S.C. § 112(b)
`
`Whether one or more claim terms are indefinite depends significantly on claim
`
`construction positions, including claim construction positions advocated by Lynk Labs. As such,
`
`Juno reserves the right to identify additional indefinite terms as part of the claim construction
`
`process. Juno, however, contends that one or more of the following limitations may be
`
`indefinite. Juno’s contention that one or more of the following limitations is indefinite depends,
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`at least in part, on Lynk Lab’s infringement contentions that certain Juno products satisfy that
`
`limitation.
`
`‘855 Patent:
`
`• “AC-Driven LED assembly”;
`
`• “connected”;
`
`• “AC circuit”;
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`• “preferably approximately”; and
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`• “more preferably”.
`
`‘118 Patent:
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`• “relatively fixed voltage”;
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`• “relatively higher frequency”;
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`• “predetermined desired output range of light”
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`• “discrete component”; and
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`• “connected”.
`
`
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`IV. Unenforceability (LPR 2.3(c))
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`Juno asserts that the ‘118 Patent is unenforceable due to inequitable conduct based on the
`
`actions taken by the named inventors and the prosecuting attorney during prosecution of that
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`Patent. A