UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SHENZHEN LIOWN ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`DISNEY ENTERPRISES, INC.
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 8,721,118 B2
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`LEGAL125956136.1
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`TABLE OF CONTENTS
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`
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`TABLE OF CONTENTS 
`I. 
`Introduction ..................................................................................................... 1 
`II. 
`Summary of Opinions ..................................................................................... 1 
`III.  Qualifications and Experience ........................................................................ 2 
`A. 
`Education and Experience .................................................................... 2 
`B. 
`Compensation ....................................................................................... 4 
`C.  Documents and Other Materials Relied Upon ..................................... 4 
`IV.  Statement of Legal Principles ......................................................................... 5 
`A. 
`Claim Construction .............................................................................. 5 
`B.  Anticipation .......................................................................................... 6 
`C.  Obviousness .......................................................................................... 6 
`V.  Overview of the ’118 Patent ........................................................................... 7 
`A. 
`Summary of the ’118 Patent ................................................................. 7 
`B. 
`State of the Art Prior to the ’118 Patent ............................................... 8 
`1. 
`Imitation Candles & Other Pendulum Devices ......................... 8 
`2. 
`Through Hole ............................................................................. 9 
`The Level of Ordinary Skill in the Art ............................................... 11 
`C. 
`Identification of the Prior Art and Summary of Opinions............................ 12 
`VI. 
`VII.  Comments About Lack of Support in the Specification for Through
`Hole ............................................................................................................... 13 
`VIII.  Discussion of support for the ’118 Patent ................................................... 22 
`A.  Ground 1: Claims 1, 3, 8 and 10 are Anticipated by Li ..................... 22 
`IX.  Unpatentability of the Challenged Claims of the ’118 Patent ...................... 22 
`A.  Ground 1: Claims 1, 3, 8 and 10 are Anticipated by Li-2011 ............ 22 
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`B.  Ground 2: Claims 1 and 8 are Obvious by Schnuckle ’455
`combined with Harrison ..................................................................... 24 
`C.  Ground 3: Claim 10 is rendered obvious by the combination of
`Schnuckle ’455, Harrison and Cornell ............................................... 42 
`D.  Ground 4: Claims 1, 3 and 8 are anticipated by Li-2010 .................. 44 
`Ground 5: Claims 3 and 10 are rendered obvious by the
`E. 
`combination of Schnuckle ’455, Harrison and Li-2011 ..................... 52 
`X.  DISCUSSIONS OF CHAOTIC MOTION .................................................. 53 
`A.  General Discussion of the Use of the Term Chaotic Motion ............. 54 
`Schnuckle ‘455 Pivoting Mechanisms Can Produce Motion
`B. 
`having Mathematical Chaos ............................................................... 56 
`The ‘118 Patent Describes Structures that Produce Motion that
`is Not Mathematically Chaotic ........................................................... 62 
`D.  A POSITA Would Not Interpret the ‘118 Patent Specification
`or Claims as Describing a Mathematical Chaotic System ................. 66 
`
`C. 
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`I.
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`INTRODUCTION
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`1. My name is Nathan J. Delson. I am a Teaching Professor and the Director
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`of the Mechanical Engineering Design Center at the University of California, San
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`Diego (UCSD).
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`2.
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`I have been engaged by Shenzhen Liown Electronics Co., Ltd. (“Liown”) as
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`a consultant in connection with Liown’s Petition for Inter Partes Review (“Liown
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`IPR Petition”) of U.S. Patent 8,721,118 B2 (the “’118 Patent”).
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`3.
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`I understand that the ’118 Patent has been assigned to Disney Enterprises,
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`Inc. (“Disney”). I also understand that exclusive licensee, Luminara Worldwide,
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`LLC (“Luminara”) has defended previous IPR proceedings that involve related
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`patents owned by Disney. Disney and/or Luminara are also referred to as the
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`“Patent Owner” in this declaration.
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`4.
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`This declaration is based on the information currently available to me. To
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`the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`have not yet been taken.
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`II.
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`5.
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`SUMMARY OF OPINIONS
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`The ’118 Patent relates to “[a]n apparatus for creating flickering flame
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`effects.” Ex. 1001 at Abstract. The Liown IPR Petition challenges claims 1, 3, 8,
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`- 1 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`and 10 of the ’118 Patent (the “challenged claims”). Challenged claims 1, 3, 8, and
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`10 relate to “an electronic lighting device” and require a “core,” a “flame sheet,” a
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`“light-emitting element,” and a “swing mechanism.”
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`6.
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`The components recited in the challenged claims of the ’118 Patent are basic
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`mechanical components that were well known long before the earliest priority date
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`of the ’118 Patent. Further, the ways in which the recited components are used and
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`arranged in the claims were well known to people having ordinary skill in the art.
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`None of the features described in claims 1, 3, 8, and 10 of the ’118 Patent was
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`novel as of the earliest claimed priority date, nor does the ’118 Patent teach a novel
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`and non-obvious way of combining the known features.
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`7.
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`It is therefore my opinion that all of challenged claims 1, 3, 8, and 10 of the
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`’118 Patent are invalid for being anticipated or obvious under the patentability
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`standards of 35 U.S.C. §§ 102 and 103 explained to me by Liown’s counsel as
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`stated below.
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`8.
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`The subsequent sections of this declaration will first provide my
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`qualifications and experience and then describe the details of my analysis and
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`observations.
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`III. QUALIFICATIONS AND EXPERIENCE
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`A. Education and Experience
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`9.
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`I obtained my Ph.D. degree in Mechanical Engineering from Massachusetts
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`- 2 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`Institute of Technology (MIT) in 1994.
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`10.
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`I have worked for 20 years as a faculty teaching mechanical engineering
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`design, first at Yale University and now at the University of California at San
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`Diego. My current position is Associate Teaching Professor and Director of the
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`Mechanical Engineering Design Center in the Department of Mechanical and
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`Aerospace Engineering. I have performed research in Robotics, Medical Devices,
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`and Design Education. I have also worked for 2 years in the Aerospace Industry for
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`United Technologies. I have consulted in mechanical engineering for companies
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`such as Design Continuum, Sixense, DriveCam, and others. I have received awards
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`from the National Inventors Hall of Fame and for teaching design.
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`11.
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`I was co-founder of Coactive Drive Corporation, which is a company that
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`develops technology for force feedback in computer gaming that has been licensed
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`to multiply companies. One the of patented technologies I developed for Coactive
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`Drive Corporation had similarities to the pendulum devices described in Patent
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`’118. The patent I developed was for a force feedback joystick. This joystick has
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`pivots that allowed it to rotate back and forth; some embodiments had a single
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`pivot axis, another had 2 pivot axes, and a third had 3 pivot axes. This joystick also
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`had magnetic actuation, which is also discussed in the ‘118 Patent.
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`12.
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`In an introductory design class I teach at the University of California at San
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`Diego students design and build a pendulum clock. I teach the fundamentals of
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`- 3 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`bearings and pendulum motion. Over the past 15 years over 2000 students have
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`built and analyzed these pendulum devices.
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`13.
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`In summary, I have experience in the design of swinging pendulums,
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`bearings, pivots, magnetic actuation, and general mechanical and
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`electromechanical design. This experience is directly relevant to the technology
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`described the ’118 Patent.
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`14.
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`I have previously been engaged by Liown as a consultant in connection with
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`other Petitions for Inter Partes Review (IPR) filed by Liown on other patents from
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`the same family as the ’118 Patent, namely against U.S. Patent No. 7,837,355, U.S.
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`Patent No. 8,070,319, U.S. Patent No. 8,534,869 and U.S. Patent No. 8,696,166.
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`15.
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`I have also been engaged by Liown as a consultant in connection with one
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`other IPR Petition for to be filed by Liown concurrently with this Petition, for
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`review of Patent No. 8,727,569.
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`16. A copy of my curriculum vitae is attached to this declaration as Appendix A.
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`B. Compensation
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`17.
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`I am being compensated by Liown for my work in connection with this
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`declaration. The compensation is not contingent upon my performance, the
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`outcome of the covered business method reviews or any other proceeding, or any
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`issues involved in or related to the covered business method reviews.
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`C. Documents and Other Materials Relied Upon
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`- 4 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`18. My opinions expressed in this declaration are based on documents and
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`materials identified in this declaration, including the ’118 Patent, the prior art
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`references and background materials discussed in this declaration, and any other
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`references specifically identified in this declaration. I have considered these
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`materials in their entirety, even if only portions are discussed here.
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`19.
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`I have considered a number of prior art references including the ones listed
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`in the references listed in the Exhibit listing of this Liown IPR Petition.
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`20.
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`I have also relied on my own experience and expertise in mechanical
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`engineering and product design.
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`21. All Exhibit numbers used in this declaration refer to Exhibits to Liown IPR
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`Petition on the ’118 Patent.
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`IV. STATEMENT OF LEGAL PRINCIPLES
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`A. Claim Construction
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`22. Liown’s counsel has advised that, when construing claim terms in an
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`unexpired patent, a claim subject to covered business method patent review
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`receives the “broadest reasonable construction in light of the specification of the
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`patent in which it appears.” Liown’s counsel has further informed me that the
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`broadest reasonable construction is the broadest reasonable interpretation (BRI) of
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`the claim language, and that any term that lacks a definition in the specification is
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`also given a broad interpretation.
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`- 5 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`B. Anticipation
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`23. Liown’s counsel has advised that in order for a patent claim to be valid, the
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`claimed invention must be novel. Liown’s counsel has further advised that if each
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`and every element of a claim is disclosed in a single prior art reference, then the
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`claimed invention is anticipated, and the invention is not patentable according to
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`pre-AIA 35 U.S.C. § 102 effective before March 16, 2013. In order for the
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`invention to be anticipated, all of the elements and limitations of the claim must be
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`shown in a single prior art reference, arranged as in the claim. A claim is
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`anticipated only if each and every element as set forth in the claim is found, either
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`expressly or inherently described, in a single prior art reference. In order for a
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`reference to inherently disclose a limitation, that claim limitation must necessarily
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`be present in the reference.
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`C. Obviousness
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`24. Liown’s counsel has also advised me that obviousness under pre-AIA 35
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`U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
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`understand that where a prior art reference does not disclose all of the limitations
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`of a given patent claim, that patent claim is invalid if the differences between the
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`claimed subject matter and the prior art reference are such that the claimed subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art. Obviousness can be based on a single prior
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`- 6 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`art reference or a combination of references that either expressly or inherently
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`disclose all limitations of the claimed invention.
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`V. OVERVIEW OF THE ’118 PATENT
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`A.
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`Summary of the ’118 Patent
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`25. The ’118 Patent describes an imitation candle device that uses a
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`magnetically driven pendulum to simulate the flickering motion of a candle flame
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`by moving an illuminated “flame silhouette” attached to the top of the pendulum.
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`Ex. 1001 at Abstract. The flame silhouette may be shaped like a candle flame but
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`may have other shapes as well. Ex. 1001 at 10:33-38, 17:35-39.
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`26. The pendulum of the imitation candle can be magnetically-driven and can
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`have a “flame silhouette” attached to the top of the pendulum so as to “creat[e]
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`flickering flame effects.” Ex. 1001 at Abstract.
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`27. Fig. 1 of the ’118 Patent below describes a two-stage imitation candle
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`device, where each stage includes a pendulum-like member that is suspended in the
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`corresponding housing. The first stage pendulum 111 is positioned closest to the
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`magnetic coil 101, and is moved due to the interactions between the magnet 114
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`and the magnetic field M1 of the coil 101. The second stage pendulum 121
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`includes the flame shaped silhouette 125 and is suspended in the second stage
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`housing 104 above the first pendulum 101. The motion of the first pendulum 111
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`is coupled to second pendulum 121 via the interactions between the magnets 115
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`- 7 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`and 124 that are placed at the upper section of first pendulum 111 and lower
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`section of second pendulum 121, respectively. See also Ex. 1001 at 5:5-9:58.
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`
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`B.
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`State of the Art Prior to the ’118 Patent
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`1.
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`Imitation Candles & Other Pendulum Devices
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`28.
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`Imitation candle devices date back more than a century. See, e.g., U.S.
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`Patent Nos. 835,816 (titled “Electric Candle-Lamp”) and 1,196,913 (titled
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`“Electric Candle Lamp). Another patent, U.S. 4,551,794 to Sandell (issued in
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`- 8 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`1985) is one of many patents directed to imitation candle devices utilizing
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`magnetically-driven pendulums. See, e.g., WO 85/03561 and WO 87/04506.
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`Although Sandell teaches a flame-shaped light bulb, using a light source to
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`illuminate a separate flame-shaped element is also a well-known technique. See,
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`e.g., U.S. Patent Nos. 1,955,042 and 3,681,588. For example, the UK patent
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`publication GB 2,323,159 to Harrison et al. (Ex. 1005), titled Simulated Flame
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`Device, describes imitation candle devices that use a light that is positioned inside
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`of the candle housing to illuminate a flame-shaped material that protrudes from the
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`top of the candle.
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`29. Magnetically-driven pendulums have long been used in ornamental displays
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`and other devices as well. Japanese Patent No. JP 2002284730 to Baba is one of
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`many patents directed to devices for movably displaying advertisements or
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`decorative ornaments. See, e.g., U.S. Patent No. 2,747,114 and 2,890,355. As
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`shown in detail below, the claimed features of the ’118 Patent were used in
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`imitation candles and other similar devices well before September 2008—the
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`earliest claimed priority date for the ’118 Patent.
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`2.
`
`Through Hole
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`30. A “through hole” is used in machine design to refer to a hole that goes all
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`the way through an object. A representative use of the term through hole is shown
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`in the figure below taken from Geometrical Dimensioning and Tolerancing for
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`- 9 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`Design, Manufacturing and Inspection - A Handbook for Geometrical Product
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`Specification Using ISO and ASME Standards by Georg Henzold (2nd Edition)
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`(see Appendix B).
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`
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`31. The 8 through holes in the figure above go all the way through the objects
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`shown. A through hole is designated to indicate to a fabricator that a hole must be
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`created in an object that goes all the way through it. As used in machine design and
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`as shown in the figure above, a through hole is surrounded by material that remains
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`in the object. A POSITA would understand this, and it would not make sense to
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`specify a through hole that would remove the entire surrounding object. This
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`- 10 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`would not be inline with the use of the term through hole in machine design and
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`does not agree with the common sense meaning of a through hole.
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`C. The Level of Ordinary Skill in the Art
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`32.
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`I understand from Liown’s counsel that the claims and specification must be
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`read and construed though the eyes of a person of ordinary skill in the art
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`(“POSITA”) at the time of the priority date of the claims. I have also been advised
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`that to determine the appropriate level of ordinary skill in the art, the following
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`factors may be considered: (a) the types of problems encountered by those working
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`in the field and prior art solutions thereto; (b) the sophistication of the technology
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`in question and the rapidity with which innovations occur in the field; (c) the
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`educational level of active workers in the field; and (d) the educational level of the
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`inventor.
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`33. The ’118 Patent relates to arrangements of simple mechanical components
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`that would be familiar to persons having taken basic coursework in mechanical
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`engineering or having a some level of mechanical design experience.
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`34. Based on the above considerations and factors, it is my opinion that a person
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`of ordinary skill in the art at the time of the alleged invention would have had a
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`Bachelor’s degree in mechanical engineering and one to three years of mechanical
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`design experience. This description is approximate and additional educational
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`- 11 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`experience in mechanical engineering could make up for less work experience and
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`vice versa.
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`VI.
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`IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINIONS
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`35.
`
`It is my opinion that the following prior art references cited in the Liown
`
`IPR Petition disclose all technical features in 1, 3, 8, and 10 of the ’118 Patent,
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`rendering those claims unpatentable:
`
`(cid:120) Ex. 1003: U.S. Patent Application Publication No. 2012/0134157 to Li (“Li-
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`2011”);
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`(cid:120) Ex. 1004: U.S. Patent No. 7,261,455 to Schnuckle et al. (“Schnuckle ’455”);
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`(cid:120) Ex. 1005: U.K. Patent Application No. GB 2,323,159 to Harrison et al.
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`(“Harrison”);
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`(cid:120) Ex. 1006: U.S. Patent No. 2,984,032 to Cornell (“Cornell”);
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`(cid:120) Ex. 1007: Chinese Published Application No. CN101865413A to Li;
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`(cid:120) Ex. 1008: English Translation of Ex. 1007 (“Li-2010”).
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`36. Claims 1, 3, 8 and 10 are anticipated by Li-2011. Claims 1, 3, and 8 are
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`rendered obvious by Schnuckle ’455 in combination with Harrison. Claim 10 is
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`rendered obvious by the combination of Schnuckle ’455, Harrison, and Cornell.
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`Claims 1, 3 and 8 are anticipated by Li-2010. The Challenged claims are also
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`obvious based on other combinations of these references; for example, claims 3
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`- 12 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`and 10 are obvious over Schnuckle ’455 and Harrison (as applied to claim 1) and
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
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`further in combination with Li-2011.
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`VII. COMMENTS ABOUT LACK OF SUPPORT IN THE
`SPECIFICATION FOR THROUGH HOLE
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`37. Claim 1 starts with the following limitations:
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`1. An electronic lighting device, comprising:
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`a core which comprises an enclosure provided with a
`through hole on top thereof.
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`38. As I explained in paragraphs 30-31, a through hole is a hole that goes all the
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`way through an object, and is surrounded by material that remains in the object.
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`39.
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`In the ‘118 Patent, the terms “enclosure” and “through hole” that are part of
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`claim 1 do not appear in the specification of the ’118 Patent and only appears in
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`the claims. Both these terms appear first in claim 1.
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`40. Aside from claim 1, “through hole” also appears in claim 2 as follows: “a
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`casing in which the core is installed, wherein the casing is provided with a through
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`hole through which the upper sheet of the flame sheet of the core is exposed above
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`a top of the casing” (Ex. 1001 at 23:64-67) (emphasis added). Figure 9 of the ’118
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`Patent illustrates a through hole (955) in the casing (950) as a hole that goes
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`through the surrounding material of the top of the housing of the candle:
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`- 13 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

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`
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`
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`41.
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`In addition, “through hole” also appears in claim 4: “a supporting rod for
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`the flame sheet, disposed adjacent to the through hole of the enclosure, wherein a
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`through hole is provided in a middle part of the flame sheet, the upper sheet is
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`positioned above the through hole of the flame sheet, and wherein the supporting
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`rod for the flame sheet is configured to pass through the through hole of the flame
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`sheet to moveably support or suspend the flame sheet on the supporting rod for the
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`flame sheet.” (Ex. 1001 at 24:20-27) (emphasis added). As described in this
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`claim, the “through hole” of the flame sheet is configured such that the support rod
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`- 14 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`passes through this “through hole.” This “through hole” is illustrated below in
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`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`Figure 11 as element 122:
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`
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`42. As described in claim 4, through hole (122) sits in the middle part (1123) of
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`the flame sheet (1121). (Ex. 1001 at 21:6-24.).
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`43. These disclosures in the ‘118 Patent all support the notion that a through
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`hole must create a hole in the material of the top section of the enclosure. The
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`“through hole” described in claim 2 and illustrated in Figure 9 shows that the
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`through hole creates a hole in the material of the top of the outer casing of the
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`candle. Similarly, the “through hole” described in claim 4 and shown in Figure 11
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`shows that the through hole must create a hole in the material of the flame sheet
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`such that the support rod can pass through it and support the flame sheet.
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`44. Consistent with the way “through hole” is used in claims 2 and 4, and
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`- 15 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR HVIER PARTES REVIEW
`OF U.S. PATENT NO. 8.721.118 B2
`
`Figures 9 and 1 1, an enclosure that has a through hole in a top, would therefore
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`have material remaining in the top surface of the enclosure. This construction
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`differs significantly from an enclosure in which there is no top surface at all.
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`45.
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`In addition, while “through hole” does not appear in the specification, the
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`term “hole” appears more than 30 times. Each reference uses “hole” to describe an
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`opening that has been made within a surrounding material, wherein at least a
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`portion of the support material is retained. See, e.g., Ex. 1001 at 7: 19-22 (“the
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`pendulum member 111 may have a pivot hole 112 formed to allow a pendulum
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`support 113, such as a rod, axle, wire, string, or the like, to pass through”); 19:57-
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`61 (“a candle top or cover 954 that may have irregular sidewalls
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`and further
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`include a planar portion with a centrally located opening or hole 955 through
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`which the flame silhouette element 125 may extend”); Figs 1 & 9.
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`46. Additional Comments About Specification Support for Through Hole: I
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`understand that during the prosecution of the ‘ 1 18 Patent at the Patent Office,
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`Patent Owner made the following statement regarding written support for the
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`limitations in claim 1:
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`Pending independent claims 1 and 11 each find full written support, as filed and as
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`presently pending, in the ‘460 application or to a priority date at least as early as July 21, 2009.
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`For example, the Examiner will find such support in Figures 1 and 2, line 23 of col. 8 to line 65 of col. 10 in the ‘355 patent. The effective date for Li as a reference under 35 U.S.C. §l02 is
`
`47.
`
`I have analyzed the above sections of the U.S. Patent No. 7,837,355, which
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`_ 16 _
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
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`are identical to Figures 1 and 2, and Col. 8, line 66 to Col. 11, line 42 of the ‘118
`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`Patent. I have also analyzed the remaining sections of the ‘355 Patent, as well as
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`the Abstract, Background, Summary of the Invention, Figures and the Detailed
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`Description of the ‘118 Patent.
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`48.
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`In my opinion, the above sections of the ‘355 Patent, the remaining sections
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`of the ‘355 Patent, and Abstract, Background, Summary of the Invention, Figures
`
`and the Detailed Description of the ‘118 Patent do not describe “an enclosure
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`provided with a through hole on a top thereof,” in the context of claim 1.
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`49. For example, while Figure 1 of the ‘118 Patent shows a 2nd stage housing
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`104, such a 2nd stage housing does not include a through hole on top thereof. In
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`fact, having a through hole on top of the 2nd stage housing 104 would contradict
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`some of the other descriptions in the ‘118 Patent that use the 2nd stage housing
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`104.
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`50. Specifically, the ‘118 Patent describes an embodiment in Figure 8 that is
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`“similar to that shown in in FIGS. 1 and 7… (emphasis added).” Ex. 1001 at
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`4:18-23. “FIG. 8 illustrates a kinetic flame device 800 that includes components
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`similar to those shown in the device 100 of FIG. 1 but modified to utilize a from-
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`below or in-housing lighting assembly 807 and to also include side-mounted (or
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`interior-placed) magnetic elements 840, 842 (emphasis added).” Id. at 18:4-9.
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`Figure 8 is reproduced below.
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`- 17 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
`
`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`
`
`51. The ‘118 Patent further describes that, in Figure 8, the “lighting
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`assembly 807 may also include a reflector or mirror 814 that is configured to
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`reflect or redirect the light 811 as shown at 815 on to the element 125 to provide
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`illuminated spot 127. The mirror 814 may be positioned near the top of the second
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`stage housing 104 such that the light 815 is striking the flame silhouette
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`element 125 at an incidence angle that is nearer orthogonal to further limit blow by
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`such as at an angle over 45 degrees such as 60 to 80 or more degrees.” Id. at
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`18:33-40. From this description it is clear that an orthogonal angle of light would
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`be a horizontal line of light in Figure 8. A horizontal line of light would strike the
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`flame silhouette element orthogonal to its surface, and blow by would be
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`- 18 -
`
`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR HVIER PARTES REVIEW
`
`OF U.S. PATENT NO. 8,721,118 B2
`
`minimized. The reference to an angle over 45 degrees, such as 60 to 80, refers to
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`angles relative to a vertical plane so that as the angle approaches 90 degrees, the
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`light angle approaches orthogonal to the surface of the flame silhouette element-
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`This angle of light is shown in the figures below, which are described further in the
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`following paragraph.
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`FlG.8 (Modified)
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`F lG.8 (Modified)
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`52.
`
`In the above figures, consistent with the above description of the ‘I18
`
`Patent, the light source, the path of light, the mirror 814 and the flame element of
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`Figure 8 are reproduced at three different angles: the angle shown in original
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`Figure 8 (left), an 80—degree angle with respect to the flame element (middle), and
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`_ 19 _
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`Shenzhen Liown Elec_ Co_, Ltd. Exhibit 1002
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`

`
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`a 90-degree angle (right).
`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`53. The figure above shows the position of the upper mirror from a perspective
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`above the apparatus, which can make it seem as if the mirror 814 is lower than it
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`actually is relative to the 2nd stage housing. To more clearly see the position of the
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`mirror 814 relative to the housing, a 2-dimensional side view cross section of the
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`modified Fig. 8 with an 80-degree angle (middle figure above) is shown below. A
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`protractor is shown above the figure, to illustrate an 80-degree angle of the light
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`path. The proportions of the enclosures 102 and 104, and second pendulum
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`member 121 are the same as shown in Fig. 8 of the 118 patent. The light path is
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`shown in orange, and the mirror, 814, is positioned such that the light path hitting
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`the spot of light, 127, is at an 80-degree angle. As seen, the mirror 814 is
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`significantly above the highest point of the enclosure for this configuration.
`
`- 20 -
`
`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
`
`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`
`
`
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`54.
`
`It is evident from these figures that projecting the light onto the flame
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`element at an angle of 80 degrees or higher requires the mirror 814 to be moved
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`above the top edge of the 2nd stage housing. The above configuration of the ‘118
`
`Patent contradicts having a through hole on top of the 2nd stage housing 104
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`because the edges of the through hole would block at least part of the light that is
`
`- 21 -
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`Shenzhen Liown Elec. Co., Ltd. Exhibit 1002
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`

`
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`directed from below to the mirror 814.
`
`DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,721,118 B2
`
`55.
`
`It is therefore my opinion that a POSITA, upon viewing Figure 8 and
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`reading of the ‘118 Patent’s Detailed Description, would not interpret those
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`teachings to describe placing a through hole on top of the enclosure formed by the
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`2nd stage housing.
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`VIII. DISCUSSION OF SUPPORT FOR THE ’118 PATENT
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`A. Ground 1: Claims 1, 3, 8 and 10 are Anticipated by Li
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`56. Li is titled “Electric Lighting Device And Method For Manufacturing Same”
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`and d