UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YOTRIO CORPORATION,
`
`Petitioner
`
`v.
`
`LAKESOUTH HOLDINGS, LLC,
`
`Patent Owner
`
`U.S. Patent No. 8,794,781
`Title: Umbrella Apparatus
`
`
`
`Case No. IPR2017-____
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`
`
`PETITIONER’S EXHIBIT 1203
`DECLARATION OF ROBERT SMITH-GILLESPIE
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`
`
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`
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`Yotrio Ex. YOT-1203, Page 1
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YOTRIO CORPORATION,
`
`Petitioner
`
`v.
`
`LAKESOUTH HOLDINGS, LLC,
`
`Patent Owner
`
`U.S. Patent No. 8,794,781
`Title: Umbrella Apparatus
`
`
`
`Case No. IPR2017-____
`
`
`
`PETITIONER’S EXHIBIT 1203
`DECLARATION OF ROBERT SMITH-GILLESPIE
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`
`
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`Yotrio Ex. YOT-1203, Page 1
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`I, Robert Smith-Gillespie, declare as follows:
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`1.
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`I have been retained by Chen Malin LLP, on behalf of Yotrio
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`Corporation (“Yotrio”), to provide my opinion regarding the validity or invalidity
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`of claims 1, 2, 4, and 5 (the “Challenged Claims”) of U.S. Patent No. 8,794,781
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`(“the ’781 patent”) in support of the Petition for Inter Partes Review of U.S. Patent
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`No 8,794,781. I am providing a declaration in support of the Petition for Inter
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`Partes Review of U.S. Patent No. 6,612,713, a parent application to the ’781
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`patent, also on behalf of Yotrio.
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`2.
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`I am being compensated for my time in connection with this matter at
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`my standard legal consulting rate, which is $325.00 per hour. I am also being
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`reimbursed for reasonable and customary expenses associated with this matter. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`3.
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`I am a Senior Technical Specialist at Riverwood Solutions, Inc., a
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`business that provides technical expertise on manufacturing, design process,
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`materials, and technology for product applications including medical products,
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`solar powered devices, LED lighting and luminaires, and electronic consumer
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`products.
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`4.
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`I have attached a copy of my curriculum vitae to this declaration. As
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`my CV details, I have worked in the industry in a technical capacity for over 25
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`1
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`Yotrio Ex. YOT-1203, Page 2
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`years as an employee and a consultant. I received my B.S. degree in Mechanical
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`Engineering from Arizona State University and my B.A. degree in Physics from
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`the State University of New York. My work experience covers the design and
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`development of a diverse array of lighted products including fluorescent and LED
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`backlights for LCDs, various LED illuminated consumer products, and portable
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`and fixed solar powered LED lamp assemblies. For example, my experience
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`includes developing a family of portable and fixed installation, solar powered LED
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`lamps for use in off-grid applications in developing regions of the world. The
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`project focused on improving overall system performance while reducing the bill-
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`of-material cost. After defining the key figure of merit, run-time per charge per
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`dollar, I developed a detailed optimization model that considered several
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`parameters including:
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` solar cell technology, efficiency, and size vs. cost,
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` battery size and quantity vs. cost, and
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` LED quantity, package size, drive level, and efficiency vs. cost.
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`The mathematical model developed was applied to several products using
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`numerous components yielding surprising results relating to battery sizing (smaller
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`is better) and LED cost (more expensive LEDs were better). In addition to this
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`work, I led the lighting development for several product redesigns to improve
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`2
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`Yotrio Ex. YOT-1203, Page 3
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`lighting efficiency and distribution. Part of this effort included selecting
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`translucent polycarbonate materials for area lighting lens components.
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`5.
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`I have published several technical papers on LED lighting and have
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`also served as a technical expert in numerous patent infringement cases and Inter
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`Partes Review proceedings.
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`6.
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`In preparing this declaration, I reviewed the ‘781 patent and its file
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`history. I also reviewed numerous prior art references to the ‘781 patent, including
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`U.S. Patent No. 2,087,537 to Finkel (“Finkel”) (YOT-1005), U.S. Patent No.
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`5,053,931 to Rushing (“Rushing”) (YOT-1006), U.S. Patent No. 6,089,727 to Wu
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`(“Wu I”) (YOT-1007), U.S. Patent No. 2,960,094 to Small (“Small”) (YOT-1008),
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`U.S. Patent No. 6,439,249 to Pan et al. (“Pan”) (YOT-1010), U.S. Patent No.
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`5,758,948 to Hale (“Hale”) (YOT-1009), U.S. Patent No. 4,999,060 to Szekely
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`(“Szekely”) (YOT-1011), U.S. Patent No. 6,126,293 to Wu (“Wu II”) (YOT-
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`1012), U.S. Patent No. 5,222,799 to Sears (“Sears”) (YOT-1013), U.S. Patent No.
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`2,244,737 to Stewart et al. (“Stewart”) (YOT-1204), and U.S. Patent No. 727,495
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`to Todd (“Todd”) (YOT-1205), as well as others. I understand that Yotrio will
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`include all the documents I identified above as exhibits to its Petition for Inter
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`Partes Review in this matter.
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`7.
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`In forming my opinion, I have relied upon my experience, education,
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`and knowledge related to solar powered LED lamp assemblies specifically, and
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`3
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`Yotrio Ex. YOT-1203, Page 4
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`electrical and mechanical systems generally. Yotrio’s counsel has also explained
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`certain legal principles to me that I have relied upon.
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`8.
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`Yotrio’s counsel has informed me that my opinion must be undertaken
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`from the perspective of what would have been known or understood by a person
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`having ordinary skill in the art at the time of the filing of the application to which
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`the ’781 patent claims priority, in February 2001.
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`9.
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`The ’781 patent encompasses several technical disciplines including
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`mechanical, electrical, and lighting fields. However, the patent provides very little
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`technical discussion beyond basic component assembly. In the specification, the
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`most intricate electrical diagrams are system level block diagrams (Figs. 5A, 5B,
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`10, 11) all of which are absent of circuit design information or any novel electronic
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`features unique to the ’781 patent or the art at that time (cf. Figs. 5 & 6 of U.S.
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`Patent 4,410,930 – another solar powered lighting device).
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`10. Accordingly, from analyzing the ’781 patent and the prior art, it is my
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`opinion that a person having ordinary skill in the art for the ’781 patent would have
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`at least a 2-year technical degree in electronics technology or electrical engineering
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`technology and at least three years of hands-on experience in equipment
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`maintenance and/or repair or electro-mechanical assembly and troubleshooting.
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`11. With over 25 years of experience in this area, I am well acquainted
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`with the level of ordinary skill required to implement the subject matter of the ’781
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`4
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`Yotrio Ex. YOT-1203, Page 5
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`patent. My opinion regarding the ’781 patent in this declaration is from the
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`perspective of a person having ordinary skill in the art.
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`12.
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`It is my understanding that in an Inter Partes Review, the claims of a
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`patent are to be given their broadest reasonable constructions in light of the
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`specification of the patent. For purposes of my opinion in this declaration, I will
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`apply the constructions listed in Yotrio’s petition. Accordingly, I understand
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`“recessed” to mean “partially or fully recessed.”
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`13.
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`In the particular case of the phrase “translucent materials disposed
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`over the light emitting diodes for enhancing the light from the light emitting
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`diodes,” I understand that Yotrio has requested that this term be given its broadest
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`reasonable interpretation. I will apply that here. I also understand that Yotrio has
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`expressed its belief that this term is indefinite, due to the ’781 patent’s failure to
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`provide guidance as to making a determination of when a translucent material is
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`“enhancing the light,” though Yotrio is not making an indefiniteness challenge in
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`this proceeding. I agree with Yotrio on this point and believe that a person of
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`ordinary skill in the art would be unable to discern from the patent or the file
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`history what would satisfy the “enhancing the light” limitation to determine if there
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`is infringement. In my experience, enhancement of light can take several disparate
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`forms, from point source glare reduction and broad area distribution to condensing
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`light to a narrow, more useful emission zone while increasing the illuminance in a
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`5
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`Yotrio Ex. YOT-1203, Page 6
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`prescribed manner. With such a range of available options, a patent must
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`necessarily provide some direction in the specification to set forth both the
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`meaning of enhancement and the bounds of any claimed enhancement. The ’781
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`patent fails to do either.
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`14.
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`It is my understanding that a patent is invalid as obvious if the
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`differences between the claimed subject matter and the prior art are such that the
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`claimed subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art. It is my
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`understanding that the following factors are used in making an obviousness
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`determination: a) the scope and content of the prior art; b) the differences between
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`the prior art and the claimed invention; c) the level of ordinary skill in the pertinent
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`art; and d) any secondary considerations evidencing nonobviousness. I am also
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`aware that considerations of nonobviousness include, but are not limited to: long-
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`felt need, failure of others, copying by others, praise by others in the industry,
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`licensing of the claimed invention, departure from accepted principles, widespread
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`recognition by those in the art of the invention’s significance, and commercial
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`success. I understand that there must be a demonstrated nexus between the claimed
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`invention and the secondary considerations of nonobviousness being considered.
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`15.
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`It is my understanding that in order for a claim to be invalid as
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`obvious, there should be a reasoned explanation as to why collectively the prior art
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`6
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`Yotrio Ex. YOT-1203, Page 7
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`references would have rendered the claim obvious. Depending on the real-world
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`context of the invention described in a patent, various factors or reasons can suffice
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`as a reason to modify or combine the subject matter disclosed in prior art
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`references. It is my understanding that the factors and reasons include at least the
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`following: (a) a particular combination would have been obvious to try in that it
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`involves choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; (b) to combine prior art teachings would simply
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`take common sense; (c) combining or substituting known elements from the prior
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`art would provide predictable results; (d) the modification of or combining of prior
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`art would involve ordinary creativity; (e) if the need or problem addressed by the
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`patent was known in the prior art; (f) if the use of known techniques had been used
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`to improve similar devices in the same way; (g) if there existed a teaching,
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`suggestion, or motivation, either in the references themselves or in the knowledge
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`generally available to one of ordinary skill in the art, to modify a reference or
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`combine reference teachings; and (h) when a work is available in one field of
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`endeavor, design incentives and other market forces can prompt variations of it,
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`either in the same field or a different one.
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`TECHNICAL LANDSCAPE AT THE TIME OF THE ’781 PATENT
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`16. The Challenged Claims of the ’781 patent are directed to an umbrella
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`apparatus with a solar powered lighting system. Lighted umbrella devices of
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`7
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`Yotrio Ex. YOT-1203, Page 8
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`various types were generally well known before the time of the ’781 patent filing.
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`For example, Finkel, in U.S. Patent No. 2,087,537 (July 20, 1937) (YOT-1005),
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`teaches a lighted umbrella for use in gardens, outdoor restaurants, etc. The ’537
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`patent discloses a hinged, folding frame umbrella with reflective canopy and
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`support pole, the lighting system of which plugs into an AC outlet. Later, Small, in
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`U.S. Patent No. 2,960,094 (Nov. 15, 1957) (YOT-1008), teaches a solar powered,
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`motorized lawn or beach umbrella which includes a hinged, folding frame and
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`support member. The device of the ’094 patent incorporates a solar panel/battery
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`assembly (“solar battery”) located above the canopy to convert solar energy into
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`stored electrical energy in the battery.
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`17. The mechanical structures of umbrellas were well known for over a
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`century. Certain claim elements in the ’781 patent (e.g., umbrella portion, hinged
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`coupling, pole, base support, rib members) are found inherently in various prior art
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`references and therefore may not be explicitly recited or discussed. Failure to
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`explicitly recite a well-known, inherent element does not render a prior art
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`reference non-applicable nor weaken its validity as prior art. For example, a
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`person of ordinary skill in the art at the time of the invention would have
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`understood Small’s reference to a “conventional collapsible top” to include a
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`canopy or umbrella portion with rib members. (YOT-1008, 1:47-50). The same is
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`8
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`Yotrio Ex. YOT-1203, Page 9
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`true with respect to Small’s disclosure of a base support, which would be inherent
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`in the disclosed Small umbrella. (YOT-1008, 1:47-50).
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`18. Solar cells (technically, photovoltaic cells) were first demonstrated in
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`the mid-1800’s by, for example, E. Becquerel and W. Smith, but it was not until
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`1941 that the modern semiconductor junction solar cell was developed by Russell
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`Ohl. The Ohl device was disclosed in U.S. Patent No. 2,402,662 (June 25, 1946).
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`Solar cell applications were largely confined to the satellite industry during in the
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`late 1950s and early 1960s as application beyond this niche was delayed based on
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`economics. Broader application of solar cells began in the mid- to late-1980s as the
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`price per watt declined to below $10/watt. The use of solar cells for battery
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`powered lighting applications caught on in part due to the offset in installed cost by
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`eliminating fixed wiring in outdoor or remote applications.
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`19. U.S. Patent No. 4,999,060 (Mar. 12, 1991 to Szekely) (YOT-1011)
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`discloses a solar powered pathway lighting fixture with integral battery. The
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`device disclosed in the ’060 patent uses the solar cell to charge a battery, housed
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`just below the solar cell, to power a lamp for illuminating pathways, yards, parks,
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`etc. In the background of the invention, the patentee discloses that “[t]his
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`invention relates generally to lighting devices and more specifically to self-
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`contained photovoltaic powered light. More specifically, the invention is directed
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`to a packaging assembly for the solar cells.” (YOT-1008, 1:6-10). Thus, it is clear
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`9
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`Yotrio Ex. YOT-1203, Page 10
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`that packaging of solar cells into self-contained lighting assemblies was known in
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`the art over ten years prior to filing of the ’781 patent.
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`20. Another technology area that was undergoing development prior to
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`the ’781 patent filing was that of illumination systems and, more specifically, those
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`using LED lights in channels. At the time of the first disclosures for solar powered
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`lighting systems, the primary light sources were incandescent lamps (see, e.g.,
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`Finkel ’537, cited above) or low power fluorescent lamps (see, e.g., U.S. Patent
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`No. 4,410,930 to Yachabach). While fluorescent lamps provide higher efficiency
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`than incandescent lamps, their high voltage requires special circuitry, and their
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`temperature sensitivity limits their outdoor operation. Therefore, it was desirable
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`to find alternate, high efficiency light sources to extend run time per charge. LEDs
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`were well known as a stable, high efficiency solid-state light source; however,
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`initially they were limited to narrow spectral bands of yellow, orange, and red, and
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`of lower efficiency than incandescent sources. In the mid-1990s, high-output blue
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`LEDs were developed at Nichia Corporation, which paved the way for efficient
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`white light LEDs. By the late 1990s, efficient, phosphor converted white LEDs
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`were starting to be produced commercially under Nichia patents (e.g., U.S. Patent
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`No. 6,069,440 to Shimizu, U.S. filing Apr. 1999).
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`21. As white LEDs reached full commercialization, it was natural for
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`designers to start to replace incandescent lamps in numerous applications. As an
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`10
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`Yotrio Ex. YOT-1203, Page 11
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`example, in U.S. Patent No. 6,439,249 (to Pan, filed Nov. 13, 2000) (YOT-1010),
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`the inventor discloses, “Referring, to FIG. 3, . . . the replaceable illuminator 5,
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`which is preferably a LED, is spacedly formed along each awning tube 3 . . . as
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`shown in FIG. 4. Alternatively, the replaceable illuminator 5 can be a regular light
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`bulb so as to increase the brightness of the lighting arrangement for the outdoor
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`umbrella.” (YOT-1010, 2:65-3:8).
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`22. The same light source migration (incandescent to LED) found in
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`pathway lamps has also taken place in so-called channel lights. Channel lights are
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`linear light sources used to illuminate stairs, pathways, coves, under cabinets, and
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`the like. Typically housed in an extruded frame, sometimes with a protective
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`cover, channel lights have both indoor and outdoor embodiments.
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`23. Several channel lighting patents from the 1990s teach LEDs as the
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`light source for various applications. Examples include the “Linear Light Source”
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`of U.S. Patent No. 5,607,227 (Yasumoto, Mar. 4, 1997), the “Stair Lights” of U.S.
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`Patent No. 5,222,799 (Sears, June 29, 1993) (YOT-1013), and the “Step Lighting”
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`of U.S. Patent No. 5,810,468 (Shimada, Sept. 22, 1998). Each of the disclosed
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`devices of these patents includes LEDs that are fully recessed in a linear shaped
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`channel member (typically an extrusion), the structure of which is not significantly
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`different than a channel shaped rib member disclosed in the ’781 patent or others
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`of the prior art umbrella patents (e.g., Pan (US 6,439,249) (YOT-1010) or Wu II
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`11
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`Yotrio Ex. YOT-1203, Page 12
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`(US 6,126,293) (YOT-1012)). As evidenced by the channel light patents,
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`recessing of LEDs within extruded housing members was well known at the time
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`of the ’781 patent filing (see, e.g., YOT-1013, 1:10-17).
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`24.
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`In the context of an illuminated umbrella, a person of ordinary skill in
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`the art giving consideration to mounting a lighting system to the umbrella would
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`have to determine how to mount such a system. To do so, one of ordinary skill in
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`the art would look to the prior art and their experience to aid in making this
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`determination. Whereas a system such as Rushing teaches the use of a zip tie 32 to
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`secure the light to the ribs 28 (YOT-1006, 5:5-6, 5:30-36), this would be less
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`desirable because the lights hanging from the ribs are not as aesthetically pleasing
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`and because it leaves the lighting system hanging from the frame, potentially
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`causing difficulty and damage to the lighting system upon opening and closing the
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`umbrella. Instead, one of ordinary skill in the art would look to mount the lighting
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`system on, or recessed in, the ribs of the canopy. I view either of these variations
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`as obvious; however, recessing the lights into the ribs would be a settled-on
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`approach, as it would offer the most protection to the lighting system while
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`preserving a clean aesthetic for the umbrella. Such considerations were well
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`developed in the art, including in the channel lighting field, and were readily
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`available to one of ordinary skill.
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`12
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`Yotrio Ex. YOT-1203, Page 13
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`25. The ’781 patent claims “translucent materials disposed over the light
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`emitting diodes for enhancing the light from the light emitting diodes.” As stated
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`above (¶ 13), it is my opinion that the phrase “for enhancing the light” is indefinite
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`for the aforementioned reasons; however, in performing my analysis, I will use the
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`broadest reasonable interpretation. The use of translucent material in lighting
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`applications has been known and used for over a century. In U.S. Patent No.
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`727,495 (“Todd”) (YOT-1205), which issued in 1903, the inventor describes the
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`need to “effectually screen the filament, flame, arc or other source of light from the
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`eye, while permitting the passage and diffusion therethrough of all or nearly all of
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`the emitted light rays.” (YOT-1205 (Todd), 1:11-15). Todd goes on to disclose a
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`method of implementing a coating on the bulb’s glass envelope to create a
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`translucent coating that allows light to pass while hiding the intensity of the
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`filament. “My coating is translucent to the highest degree, while being non-
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`transparent.” (YOT-1205 (Todd), 3:13-24). Todd further discloses that the
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`invention provides “a cheap and efficient means for improving illumination by
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`obtaining a much greater amount of light from a given source without impairing
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`the softness and diffusion of light obtained by the usual means. (YOT-1205
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`(Todd), 4:46-51). Based on the above, it is my opinion that Todd discloses a
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`translucent material that enhances light from a light source.
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`13
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`Yotrio Ex. YOT-1203, Page 14
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`26. U.S. Patent No. 2,244,737 (“Stewart”) which issued in June 1941,
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`discloses several lighting fixture embodiments, all of which include a reflector
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`element and a lens element to provide “[h]ighly efficient” distribution of
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`“illumination at the reading plane for easy reading, but no more than is required for
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`practical purposes.” (YOT-1204 (Stewart), 1:3-6). Stewart teaches the use of a
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`structured transparent glass or plastic cover element with a lens portion and a
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`diffusing portion which contains a plurality of annular prisms or ribs to provide
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`evenly distributed illumination or any other desired pattern of illumination. (YOT-
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`1204 (Stewart), 3:14-23). In the language of claims 2 and 3 of the ’781 patent, the
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`prisms and ribs of Todd are forms of textured surfaces, while the lens portion
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`constitutes a smooth surface. Here again, the ’781 patent claims as inventive
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`something that has been commonly known for decades, if not over a century.
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`27. As discussed above, the ’781 combines technical teachings from
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`several art fields in disclosing a solar powered, illuminated umbrella apparatus. As
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`also addressed above, the ’781 does not teach any new technology in that the
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`patentee clearly did not invent solar cells, batteries, solar powered illumination
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`systems, garden umbrellas, illuminated umbrellas, channel lighting, or LEDs.
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`Rather, the ’781 draws from well-known technologies to assemble a device that
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`supposedly improves upon the known solar powered, illuminated umbrellas.
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`Although several of those known technologies are discussed above, the claims of
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`14
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`Yotrio Ex. YOT-1203, Page 15
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`the ’781 patent also address minor design details that may not be specifically
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`addressed in the preceding paragraphs, but which were nonetheless present in the
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`prior art and readily available to a person of ordinary skill in the art, both in terms
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`of their knowledge of the elements and their understanding that they could be
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`applied to a number of different applications, including an umbrella.
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`28. To summarize, a person of ordinary skill in the art at the time of the
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`invention would have been aware of the following elements in the art: (i) umbrella
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`incorporating lighting system (Finkel (YOT-1005), Rushing (YOT-1006), Wu I
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`(YOT-1007), Wu II (YOT-1012), Pan (YOT-1010)); (ii) light systems mounted to
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`a support member, including use of channels for holding lights (Hale (YOT-1009),
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`Pan (YOT-1010), Sears (YOT-1013)), hanging lights from support members
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`(Rushing (YOT-1006)), and mounting lights to be recessed in a rib member (Wu I
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`(YOT-1007), Wu II (YOT-1012)); (iii) use of light emitting diode (LED) with
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`umbrellas (Wu I (YOT-1007), Wu II (YOT-1012)); (iv) use of solar power with
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`lawn umbrellas (Small (YOT-1008)); (v) use of solar power in outdoor lighting
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`systems (Szekely (YOT-1011)); and (vi) use of transparent and translucent cover
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`materials disposed over lighting in umbrellas or similar devices (translucent:
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`Finkel (YOT-1005, 2:3-5), Hale (YOT-1009, 4:16-18); and transparent: Finkel
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`(YOT-1005, 2:3-5), Wu I (YOT-1007, 3:37-39), Wu II (YOT-1012, 4:18-19)).
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`Considering that the ’781 teaches module-level assembly of well-known
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`15
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`Yotrio Ex. YOT-1203, Page 16
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`components, it would have been well within the skill level of a person of ordinary
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`skill in the art to combine the teachings of the various art fields discussed herein to
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`arrive at the various combinations disclosed in the Challenged Claims.
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`29. For example, as detailed below, independent claim 1 of the ’781
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`patent recites a “rechargeable electrical power system for providing electrical
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`power to the umbrella apparatus,” “a solar energy system coupled to the pole
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`portion,” and “a lighting system having a plurality of light emitting diodes.” Small
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`(U.S. Patent No. 2,960,094) (YOT-1008) teaches a solar powered lawn umbrella
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`with a solar power module 34 housed above the canopy 11 (YOT-1008 (Small),
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`2:28-36 & Fig. 1). Small discloses a battery-operated motor system for raising and
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`lowering the umbrella but does not teach a lighting system having a plurality of
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`LEDs. However, Pan (YOT-1010) discloses “an outdoor umbrella with lighting
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`arrangement” (Abstract) wherein the lights are LEDs and housed in the umbrella
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`portion (“awning tubes 3”). Hale (YOT-1009) teaches an umbrella-like lighting
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`apparatus incorporating a plurality of light bulbs located in the rib members of the
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`umbrella. While the device of Hale is technically an ornamental lighting display
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`device, it shares numerous elements of umbrella design, including radially
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`arranged folding rib members and a support pole. The lighting system of Hale is
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`integrated to the rib members. Hale does not disclose an LED lighting
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`
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`16
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`Yotrio Ex. YOT-1203, Page 17
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`
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`arrangement, but at the time of the invention, a person of ordinary skill would have
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`understood that LEDs could be used for the bulbs disclosed in Hale.
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`30. Small, Pan, and Hale are all directed to outdoor umbrella or umbrella-
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`like products with electrically powered components. It would have been obvious
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`for one of ordinary skill in the art to look to the teachings of Small if looking to
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`modify the rechargeable DC power system of Pan (YOT-1010, 3:25-30) to
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`circumvent the need to remove and recharge the batteries or to plug in to an AC
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`source. Pan clearly provides motivation with regard to eliminating the dependence
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`on AC sources using an extension cord (see, e.g., YOT-1010 (Pan), 3:29-30).
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`Small teaches a solar-battery system, mounted above the canopy, to power a
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`motorized umbrella. It therefore would have been obvious to and within the skill
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`level of one of ordinary skill in the art to combine the teachings of Small’s power
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`system with the lighting system of Pan since (a) both references address powered
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`umbrella devices; (b) the combination of teachings of Small and Pan simply
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`arranges old elements, with each performing the same function it had been known
`
`to perform, and yields no more than one would expect from such an arrangement;
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`and (c) the combination of these components would yield predictable results.
`
`31. A person of ordinary skill in the art would have been motivated to
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`combine the lighting system of Hale with the Small umbrella to achieve the
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`claimed invention. It was known in the art that umbrellas with lighting were
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`17
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`Yotrio Ex. YOT-1203, Page 18
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`
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`desirable to illuminate the umbrella at night. (YOT-1006 (Rushing), 1:12-26;
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`YOT-1005 (Finkel), 1:1-4). A person of ordinary skill in the art would have been
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`motivated to combine Small with the lighting arrangement of Hale to fill this need.
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`A person of ordinary skill in the art would have applied ordinary creativity and
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`common sense to use the solar power system already present in Small to power the
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`added lighting system exclusively or in addition to an AC source as taught by Hale.
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`Further, the disclosed devices of Small and Hale are in the same general fields, as
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`both are canopy or canopy-like devices that are collapsible to reduce their size
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`when not in use. The combination of Small and Hale was obvious because (a) it
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`addressed a known desire present in the market; (b) it simply arranged old
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`elements, with each performing the same function it had been known to perform,
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`and yields no more than one would expect from such an arrangement; and (c) the
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`combination of these components would yield predictable results. Additionally, a
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`person of ordinary skill in the art would be motivated to look to other art fields
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`beyond powered umbrellas since, as they relate to, for example, either self-
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`contained solar power illumination systems or outdoor lighting systems (e.g.,
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`Szekely, Hale), they address similar problems already solved in related fields.
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`Design incentives—for example, the desirability of umbrellas with an illumination
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`system with minimized reliance on an AC power source—would motivate a person
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`18
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`Yotrio Ex. YOT-1203, Page 19
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`of ordinary skill to combine the teachings of Hale with Small. I understand that
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`this is further evidence in the obviousness analysis.
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`32. The same general analysis applies with respect to combining Small
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`and Wu I. A person of ordinary skill in the art would have been motivated to
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`combine the lighting system of Wu I with the Small umbrella to achieve the
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`claimed invention. It was known in the art that umbrellas with lighting were
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`desirable to illuminate the umbrella at night. (YOT-1006 (Rushing), 1:12-26;
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`YOT-1005 (Finkel), 1:1-4). A person of ordinary skill in the art would have been
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`motivated to combine Small with the lighting arrangement of Wu I to fill this need.
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`A person of ordinary skill in the art would have applied ordinary creativity and
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`common sense to use the solar power system already present in Small to power the
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`added lighting in addition to or instead of the batteries disclosed in Wu I. The
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`combination of Small and Wu I was obvious because (a) it addressed a known
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`desire present in the market; (b) it simply arranged old elements, with each
`
`performing the same function it had been known to perform, and yields no more
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`than one would expect from such an arrangement; and (c) the combination of these
`
`components would yield predictable results.
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`33. The problem of the short service life of incandescent lamps was a
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`problem ripe for solution by emerging LED lighting devices. One of ordinary skill
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`in the art looking to solve the problem of incandescent lamp service life issues in
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`
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`19
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`Yotrio Ex. YOT-1203, Page 20
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`the powered umbrella field would be motivated to look to the closely related art
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`field of outdoor channel lighting, which provides solutions using LED lamps
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`recessed in extruded channels. Further, the ’781 patent recognizes that at the time
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`of the invention, “LED and fluorescent systems designed for use with solar and
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`low voltage lighting [were] known in the art” and that “[s]uch alternative lighting
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`sources may be easily used with the present system in manners which are
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`recognized by those skilled in the art.” (YOT-1201, 12:35-41; YOT-1001, 12:62-
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`67). The ’781 patent also correctly acknowledges that “[i]mplementation of LED,
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`fluorescent, or other alternate light sources instead of cold cathode tube light
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`subassembly 721 is . . . straightforward and need not be further described in
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`detail.” (YOT-1201, 12:41-44; YOT-1001, 12:67-13:3). Accordingly, whether a
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`reference specifically discloses the use of LEDs or not, it would have been obvious
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`to a person of ordinary skill in the art that LEDs could be used an alternative to
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`other light sources.
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`20
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`Yotrio Ex. YOT-1203, Page 21
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`34. U.S. Patent No. 5,222,799 to Sears (YOT-1013) teaches an LED
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`channel lighting apparatus for illuminating stairways. As shown in Figs. 3 and 4a
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`below, Sears relates to what is generally referred to as strip or channel lighting.
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`More specifically, Sears discloses “[a] lighting strip for illuminating domestic
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`stairways . . . that is both safe and relatively inexpensive.” (YOT-1013 (Sears),
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`Abstract). The device of Sears includes “a plurality of light means, a housing
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`means for receiving and holding the light means . . . and connector means
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`connect[ing] the light means to the low level voltage output.” (YOT-1013,
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`Abstract).
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`35.
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`In the Background of the invention, Sears highlights issues with prior
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`art stair lighting, including the use of inefficient incandescent bulbs, short service
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`life, bulky packaging, and the need for high operating voltages. (YOT-1013
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`(Sears), 1:24-46). Instead, Sears teaches a lighting stri
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