IPR2017-01285
`U.S. Patent 8,672,518
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TECHNICAL CONSUMER PRODUCTS, INC.,
`NICOR INC.,
`AMAX LIGHTING,
`Petitioners,
`v.
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`LIGHTING SCIENCE GROUP CORP.
`Patent Owner
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`Case No. IPR2017-01285
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`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,672,518
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
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`
`U.S. Patent 8,672,518
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TECHNICAL CONSUMER PRODUCTS, INC.,
`NICOR INC.,
`AMAX LIGHTING,
`Petitioners,
`v.
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`LIGHTING SCIENCE GROUP CORP.
`Patent Owner
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`Case No. IPR2017-01285
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`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,672,518
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
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`
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`TABLE OF CONTENTS
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`IPR2017-01285
`U.S. Patent 8,672,518
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`Page
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`SUMMARY OF ARGUMENT ...................................................................... 1
`I.
`II. DR. BRETSCHNEIDER’S OPINIONS SHOULD BE AFFORDED
`LITTLE OR NO WEIGHT ............................................................................. 2
`III. CLAIMS 1, 3, 6-8, 11, 12, AND 14 ARE OBVIOUS OVER
`SODERMAN IN LIGHT OF WEGNER ....................................................... 4
`A.
`Patent Owner’s Arguments Regarding Claims 1 And 14 Are
`Irrelevant To The Claims ..................................................................... 4
`Patent Owner Disregards A POSA’s Creativity And Knowledge ....... 5
`B.
`C. Additional Features Unrelated To The Accessory Kit Would
`Not Have Prevented A POSA From Combining Wegner’s
`Accessory Kit With Soderman ............................................................. 9
`Claim 14 Is Obvious ............................................................................. 9
`D.
`IV. CLAIMS 4 AND 5 ARE OBVIOUS OVER SODERMAN IN LIGHT
`OF SILESCENT AND WEGNER ............................................................... 11
`CLAIMS 1, 2, 5-8, 11, 12, AND 14 ARE OBVIOUS OVER ZHANG
`IN LIGHT OF WEGNER ............................................................................. 18
`VI. CLAIM 4 IS OBVIOUS OVER ZHANG IN LIGHT OF SILESCENT
`AND WEGNER ............................................................................................ 21
`VII. THE ABSENCE OF SECONDARY CONSIDERATIONS
`SUPPORTS OBVIOUSNESS ...................................................................... 22
`VIII. CONCLUSION ............................................................................................. 23
`
`V.
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`i
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`IPR2017-01285
`U.S. Patent 8,672,518
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`TABLE OF AUTHORITIES
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`
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`Cases
`
`BLD Services, LLC v. LMK Technologies, LLC,
` 2015 WL 7304013 IPR2014-00768, 2015 WL 7304013 (Nov. 18, 2015) ........... 3
`
`Ethicon, Inc. v. U.S. Surgical Corp.,
` 135, F.3d 1456 (Fed. Cir. 1998) ............................................................................ 3
`
`Hewlett-Packard Co. v. U.S. Philips Corp.,
` IPR2015-01505 (PTAB Jan. 19, 2016) ............................................................... 17
`
`In re Cyclobenzaprine,
` 676 F.3d 1063 (Fed. Cir. 2012) ........................................................................... 23
`
`In re Gorman,
` 933 F.2d 982 (Fed. Cir. 1991) ............................................................................... 7
`
`In re Klein,
` 647 F.3d 1343 (Fed. Cir. 2011) ...................................................................... 9, 21
`
`In re Klopfenstein,
` 380 F.3d 1345 (Fed. Cir. 2004) ........................................................................... 11
`
`Innovention Toys, LLC v. MGA Entertainment, Inc.,
` 637 F.3d 1314 (Fed. Cir. 2011) .............................................................. 19, 21, 22
`
`L&P Property Management Co. v. National Prods. Inc.,
` IPR2016-00475, 2017 WL 3085926 (PTAB July 19, 2017) ....................... 13, 18
`
`Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd.,
` 719 F.3d 1346 (Fed. Cir. 3013) ........................................................................... 22
`
`Unified Patents Inc. v. Nonend Inventions N.V.,
`IPR2016-00174, Dec. Denying Req. for Reh’g, 2017 WL 3174102, at *1
`(July 25, 2017 .................................................................................................. 5, 20
`
`WBIP, LLC v. Kohler Co.,
` 829 F.3d 1317 (Fed. Cir. 2016) ............................................................................. 8
`
`ii
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`Statutory Authorities
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`IPR2017-01285
`U.S. Patent 8,672,518
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`35 U.S.C. § 103 .......................................................................................................... 4
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`35 U.S.C. § 311(b) ............................................................................................ 11, 16
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`35 U.S.C. §§ 311-319 ................................................................................................. 1
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`Rules and Regulations
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`37 C.F.R. § 42.1-.80 ................................................................................................... 1
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`37 C.F.R. § 80.100-.123 ............................................................................................. 1
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`iii
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`Exhibit
`Ex. 1001
`Ex. 1002
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`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
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`Ex. 1017
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`Ex. 1018
`Ex. 1019
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`Ex. 1020
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`Ex. 1021
`Ex. 1022
`Ex. 1023
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`Ex. 1024
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`Ex. 1025
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`IPR2017-01285
`U.S. Patent 8,672,518
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`LIST OF EXHIBITS
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`Description
`U.S. Patent No. 8,672,518
`Declaration of Dr. Zane Coleman in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,672,518 (“Coleman
`Decl.”)
`Provisional Application 61/248665 (‘968 Patent)
`Original Application 12/775310(‘968 Patent)
`Original claims of Application 12/775310 (‘968 Patent)
`Office Action (‘968 Patent)
`Reply to Office Action (‘968 Patent)
`Notice of Allowance (‘968 Patent)
`Notice of Allowance (‘518 Patent)
`U.S. Patent No. 7,670,021 (“Chou”)
`U.S. Patent No. 7,828,465 (“Roberge”)
`Roberge Provisional Appl. No. 60/916,053
`U.S. Patent No. 7,980,736 (“Soderman”)
`U.S. Patent No. 7,722,227 (“Zhang”)
`U.S. Patent No. 7,993,034 (“Wegner”)
`Silescent S100LP2 Installation Instructions and Cut Sheet
`(“Silescent”)
`Declaration of Daryl Soderman in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,201,968 (“Soderman
`Decl.”)
`Reply to Office Action – November 13, 2014 (‘844 Patent)
`U.S. Patent Application Publication No. 2002/0113244
`(“Barnett”)
`International Publication No. WO 2010/004503A1 (“Van
`Elmpt”)
`U.S. Application No. 13/476,388 (the “‘388 application”)
`U.S. Patent No. 8,201,968 (“‘968 Patent)
`Progress Lighting’s Guide to Green Lighting (“Progress
`Lighting Catalog”)
`U.S. Provisional Patent Application Ser. No. 60/979,068
`(“Zhang Provisional”)
`Deposition transcript and exhibits from Dr. Eric Bretschneider
`deposition
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`iv
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`Ex. 1026
`Ex. 1027
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
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`IPR2017-01285
`U.S. Patent 8,672,518
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`Nov. 22, 2017 email exchange with PTAB
`Dr. Bretschneider patent chart
`Declaration of Eric Bretschneider, Ph.D
`Deposition Transcript of Zane Coleman, Ph.D and Exhibits
`Silescent/Inteltech Patent Chart
`Deposition Transcript of Daryl Soderman and Exhibits
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`v
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`I.
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`SUMMARY OF ARGUMENT
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`IPR2017-01285
`U.S. Patent 8,672,518
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`As explained in the Petition, the claims of the ‘518 patent are invalid as
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`obvious over the prior art. Although LED light fixtures were only beginning to
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`become common in the residential market, the state of the art in 2009 was replete
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`with disclosures of LED light fixtures, and a POSA would have been motivated to
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`create a luminaire suitable for installation in both can fixtures and junction boxes.
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`In reality, the claimed luminaires are nothing more than what a skilled artisan would
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`have assembled for a new customer using off-the-shelf components to meet the
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`market demand.
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`Patent Owner’s Response is not based on an attack contesting that Petitioners’
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`prior art discloses the elements recited in the ‘518 claims. Patent Owner also never
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`disputes the motivation that Petitioners and Dr. Coleman have identified: there was
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`a market need for LED fixtures that could be readily and easily installed in new
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`construction and retrofit applications, using both junction boxes or can light fixtures.
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`Instead, Patent Owner ignores Petitioners’ stated motivations and asserts that a
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`skilled artisan would not have combined references from the same field of
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`endeavor—i.e., LED light fixtures used in various applications—only because those
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`references do not explicitly disclose use in both can light fixtures and junction boxes.
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`Patent Owner’s response grossly misapprehends the law of motivation in an
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`obviousness context and improperly narrows the scope of prior art properly
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`1
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`considered. The law is clear that a market need or problem provides a reason to
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`IPR2017-01285
`U.S. Patent 8,672,518
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`combine references. The law is also clear that it is appropriate to combine references
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`from the same field of endeavor. Combining known devices or known elements to
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`perform their expected functions—which itself is an overly generous description of
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`patent owner’s claims—is not inventive.
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`II. DR. BRETSCHNEIDER’S OPINIONS SHOULD BE AFFORDED
`LITTLE OR NO WEIGHT
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`As an initial matter, Dr. Bretschneider’s opinions, on which the Response
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`relies, deserve little or no weight because of his longstanding and ongoing
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`relationships with the Patent Owner and the inventors. Dr. Bretschneider was a
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`Product Development Manager for LSG when the patent application leading to the
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`’968 patent was filed. Ex. 2001 at 54. He worked with each and every named
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`inventor during his time at LSG, and directly supervised three of them. Ex. 1025,
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`73:13-74:15, 75:20-77:1, 78:7-17. Moreover, Dr. Bretschneider was “overall
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`responsible for the testing of the production model of the products described in the
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`patents-in-suit” and even was responsible for “some of the direct testing.” Id. at
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`78:3-6.
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`Since leaving LSG in 2011, Dr. Bretschneider has had multiple agreements
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`with LSG to provide advice and services which continue today. Id. at 87:24-88:8,
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`88:15-20, 92:12-18, 94:19-25, 95:19-21, 96:13-17, 97:21-24. Furthermore, Dr.
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`2
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`Bretschneider has recently reached out to his contacts at LSG in relation to his
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`U.S. Patent 8,672,518
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`development of new testing hardware, for which he believes LSG is a potential
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`customer. Id. at 109:2-20, 112:19-24.
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`Of the 30 patents Dr. Bretschneider lists on his CV, the vast majority include
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`co-inventors of the patents in these related IPRs. Ex. 2001 at 58-59. He continues
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`to receive newly issued patents with named inventors today, including a patent that
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`issued this past March. See Ex. 1027
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`At a minimum, these close and ongoing relationships with LSG and the
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`inventors severely undercut Dr. Bretschneider’s credibility as an independent,
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`unbiased expert. By contrast, Petitioners’ expert Dr. Coleman has no such
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`connections to any party and has provided unbiased and well-supported opinions.
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`See Ethicon, Inc. v. U.S. Surgical Corp., 135, F.3d 1456, 1465 (Fed. Cir. 1998)
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`(citation omitted) (holding that interests of expert witnesses who were employees of
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`plaintiff affected the weight of their testimony); see also BLD Services, LLC v. LMK
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`Technologies, LLC, 2015 WL 7304013 IPR2014-00768, Paper 37, 2015 WL
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`7304013, *5 (Nov. 18, 2015) (“according proper weight to the [expert] testimonies,
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`taking account of the credibility challenges raised by each party.”).
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`3
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`IPR2017-01285
`U.S. Patent 8,672,518
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`III. CLAIMS 1, 3, 6-8, 11, 12, AND 14 ARE OBVIOUS OVER SODERMAN
`IN LIGHT OF WEGNER
`A.
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`Patent Owner’s Arguments Regarding Claims 1 And 14 Are Irrelevant
`To The Claims
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`Patent Owner does not dispute that Soderman and Wegner disclose all the
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`limitations in claims 1, 3, 6-8, 11, 12, and 14.1 Instead, Patent Owner argues that a
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`POSA would not have combined Soderman and Wegner. Patent Owner’s argument
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`boils down to the unsupported suggestion that light fixtures allegedly intended for
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`use with junction boxes (Soderman) are so different from light fixtures intended for
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`use with light cans (Wegner) that a POSA would not have been motivated to
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`combine them. Neither claim 1 nor 14 require that the recited light fixture be
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`1
`On May 3, 2018, the Board issued an Order (Paper No. 19) amending its
`decision to institute to include all of the challenged claims and grounds presented in
`the Petition. The original decision did not institute claim 10 based on grounds III
`and VI because those grounds inadvertently omitted an explicit identification of
`Wegner for its disclosure of the accessory kit. Paper No. 10, 26-27. Petitioners
`sought authorization to correct this error, but the Board denied this request. Ex. 1026
`(email correspondence).
`
`Claim 10 depends directly from claim 1 and accordingly incorporates all the
`limitations of claim 1. Petitioners presented grounds for invalidity of claim 1
`pursuant to 35 U.S.C. § 103 over Soderman and Wegner (Paper No.1, 21-34) and
`over Zhang and Wegner (Id., 41-56). Petitioners presented detailed analyses of these
`references—including Wegner’s disclosure of the recited “pre-wired jumper” or
`“accessory kit.” (Id., 15-16, 25-26, 46-48). The Board credited Petitioners’ analyses
`and argument and instituted review of claim 1 based on both combinations of
`references. (Paper 10, 14, 25). So too should claim 10 be found invalid in light of
`Wegner’s disclosure of the accessory kit.
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`4
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`installed to a junction box or can light, making the purported distinction proposed
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`IPR2017-01285
`U.S. Patent 8,672,518
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`by Patent Owner tenuous at best.
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`Furthermore, Patent Owner specifically addresses only independent claim 1
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`and dependent claim 14 that are under review in Ground 1. Patent Owner’s
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`Response (“Resp.”), Paper 17, 5, 9 (Feb. 13, 2018). The remaining challenged
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`claims depend, directly or indirectly, from claim 1, and Patent Owner has waived
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`any arguments directed to the additional limitations recited in these claims. See
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`Unified Patents Inc. v. Nonend Inventions N.V., IPR2016-00174, Dec. Denying Req.
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`for Reh’g, 2017 WL 3174102, at *1 (July 25, 2017 (“arguments for patentability”
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`not raised in Patent Owner’s Response are deemed waived.”).
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`Patent Owner Disregards A POSA’s Creativity And Knowledge
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`B.
`Furthermore, Patent Owner’s arguments ignore the knowledge, skill, and
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`creativity of a POSA, and incorrectly suggests that if a reference fails to expressly
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`disclose any limitation of the asserted claims, it should be disregarded entirely in an
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`obviousness analysis. These arguments are legally wrong.
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`The Supreme Court has recognized that “[a] person of ordinary skill is also a
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`person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. “When
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`there is a design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions, a POSA has good reason to pursue the
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`known options within his or her technical grasp. If this leads to the anticipated
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`5
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`success, it is likely the product not of innovation but of ordinary skill and common
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`IPR2017-01285
`U.S. Patent 8,672,518
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`sense.” KSR, 550 U.S. at 421. Furthermore, “in many cases a person of ordinary
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`skill will be able to fit the teachings of multiple patents together like pieces of a
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`puzzle.” KSR, at 420-21.
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`There is ample evidence that a POSA would have recognized a need for
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`versatile, easy to install LED lights that could be used in new installations as well as
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`in retrofit applications. Dr. Coleman explained that a POSA would have been
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`motivated to modify the light fixture disclosed in Soderman by including an
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`accessory kit at least so that the light fixture could be more easily connected to an
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`existing Edison socket and could be deployed in both junction boxes and in existing
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`light cans. Ex. 1002, ¶ 49. This flexibility would increase possible applications,
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`resulting in a larger market which would have been commercially desirable. The
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`‘518 patent itself recognizes that this was a problem it sought to solve:
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`With the advent of LED (light emitting diode) lighting,
`there is a great need to not only provide new work LED
`light fixtures, but to also provide LED light fixtures that
`are suitable for old work application, thereby enabling
`retrofit installations.
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`Ex. 1001, 1:27-31. Wegner also recognized the need for LED devices for use in
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`“both new construction and retrofit applications.” Ex. 1015, 3:10-11. Accordingly,
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`a POSA would have been motivated to combine Soderman and Wegner, rendering
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`the claims of the ‘518 patent obvious.
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`6
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`Patent Owner glosses over this motivation and relies on its theme that a POSA
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`U.S. Patent 8,672,518
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`would have considered the teachings of Soderman and Wegner somehow too
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`different to be combined. Resp., 7-9. Contrary to Patent Owner’s and its expert’s
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`cramped and narrow view of a POSA’s skill, knowledge and creativity, a POSA
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`would have considered the teachings of these references. See In re Gorman, 933
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`F.2d 982, 986 (Fed. Cir. 1991) (citations omitted) (“When the references are all in
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`the same or analogous fields, knowledge thereof by the hypothetical person of
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`ordinary skill is presumed.”). There can be little doubt that the ‘518 patent,
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`Soderman, and Wegner are all drawn from the same or analogous fields of endeavor,
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`namely LED lighting fixtures. Ex. 1001, 1:27-31; Ex. 1001, 4: 24-33; Ex. 1013,
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`1:8-10, 2:48-50; Ex. 1015, 2:4-5; 3:10-11.
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`The purported distinction between fixtures installed in cans and junction
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`boxes—on which Patent Owner relies so heavily—does not withstand scrutiny.
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`Resp., 6-8. The only support for this alleged distinction comes from Patent Owner’s
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`expert, Dr. Bretschneider, who references two figures from a 1981 handbook
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`allegedly showing the differences between light fixtures mounted above (in can
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`lights) and below (attached to junction boxes) the ceiling. Ex. 2001, ¶¶27-28. As
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`Dr. Bretschneider admitted during his deposition, LEDs for commercial lighting
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`purposes were not available until about 2003 and the handbook necessarily would
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`not have contemplated an LED light source more than 20 years prior. See Ex. 1025,
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`7
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`34:16-35:2. Accordingly, these figures are irrelevant to the design and market
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`U.S. Patent 8,672,518
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`realities of LED fixtures; an obvious demonstration is the very different size of each
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`of these light sources; an LED light source is much smaller than traditional
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`incandescent and fluorescent light bulbs. See Ex. 1025, 27:17-28:11 (agreeing that
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`LEDs are small).
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`The only legal support Patent Owner relies on is the WBIP case, but that case
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`is inapposite. Resp., 9. In WBIP, one of the two prior art references—combined in
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`an obviousness challenge—was, according to patentee’s expert, the “total reverse”
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`from the other prior art reference. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327
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`(Fed. Cir. 2016). The patentee in WBIP also presented voluminous evidence of
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`secondary considerations of non-obviousness which the court relied upon, in part, to
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`conclude the that it would not have been obvious to modify the prior art to obtain
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`the invention. WBIP, 829 F.3d at 1337. Here, as Dr. Coleman explains, it would
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`have been an easy modification to add the accessory kit to a fixture as disclosed in
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`Soderman to create an easy to install light fixture that could be deployed in both
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`junction boxes and in existing light cans. Ex. 1002, ¶ 49. In addition, Patent Owner
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`here has presented no evidence of secondary considerations (see Section VII,
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`below), further demonstrating the irrelevance of this case.
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`8
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`U.S. Patent 8,672,518
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`C. Additional Features Unrelated To The Accessory Kit Would Not
`Have Prevented A POSA From Combining Wegner’s Accessory
`Kit With Soderman
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`Patent Owner also argues that certain features disclosed in Wegner—
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`convective heat dissipation and a certain size reflector—that are unrelated to the
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`accessory kit on which Petitioners rely would have prevent a POSA from combining
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`Soderman and Wegner. See Resp., 8. These arguments are largely irrelevant
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`because a reference is appropriately considered for an obviousness determination if
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`“it is from the same field of endeavor, regardless of the problem addressed.” In re
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`Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Dr. Bretschneider’s suggestion that
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`certain heat dissipation and reflectors disclosed in Wegner would have prevented a
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`POSA from considering Wegner accessory kit is simply not persuasive. The features
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`of heat dissipation characteristics and reflector used in Wegner would not cause a
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`POSA in the art to question whether an accessory kit would have resulted in a
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`versatile easy to install light fixture. Indeed, Dr. Bretschneider does not even
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`contest—as he cannot—that the accessory kit in Wegner is the same kit recited in
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`the ‘518 claims. See Pet., 25-26.
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`D. Claim 14 Is Obvious
`Patent Owner does not dispute that Wegner discloses a reflector as recited in
`
`claim 14. See Pet., 33-34. Again, Patent Owner relies on its argument that a POSA
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`9
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`would not have been motivated to combine Soderman and Wegner. Patent Owner
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`is wrong for a least the reasons set forth above in Section III.B.
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`In addition, Dr. Coleman also explains, that a POSA would have been
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`“motivated to include a reflector because wide angle light from the LED would
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`otherwise be significantly absorbed by the housing between the LED and the optic.”
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`Ex. 1002, ¶59. Patent Owner argues that Soderman does not disclose a housing
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`between the LED and the optic. Resp., 9-10. Patent Owner ignores Dr. Coleman’s
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`explanation that Wegner discloses a “reflector housing [that] that can be mounted
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`substantially around the LED package.” Ex. 1002, ¶ 59. It is the combination of
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`these two references that render claim 14 obvious.
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`Patent Owner also argues that an alternative purpose of a reflector—spot
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`illumination—is contrary to the teachings of Soderman. Resp., 10. Patent Owner
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`simply misconstrues Soderman. The portion of Soderman on which Patent Owner
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`relies references both “high power applications” of LEDs—“such as spotlights,
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`automotive headlights etc.”—with LEDs used in “conventional domestic and
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`commercial environments.” Ex. 1013, 1:28-34. There is no indication, however,
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`that Soderman excludes “spotlighting.” Resp., 10. To the contrary, the “Summary
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`of the Invention” section of Soderman discloses a device of broad application:
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`“Accordingly, the light fixture assembly of the present invention may be utilized for
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`a variety of practical applications including installations within commercial,
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`10
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`domestic, and specialized environments.” Ex. 1013, 2:47-50. Soderman also
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`U.S. Patent 8,672,518
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`discloses a fixture that can “direct or channel” LED light. Id., 7:58-61. Accordingly,
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`Soderman does not teach away from “spotlighting” nor from using a reflector, and
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`Patent Owner’s argument fails.
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`IV. CLAIMS 4 AND 5 ARE OBVIOUS OVER SODERMAN IN LIGHT OF
`SILESCENT AND WEGNER
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`Patent Owner does not dispute that the Silescent product sheet (Ex.1016)
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`discloses the overall height (H) and overall outside dimension (D) ratio required in
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`claim 4. Resp., 10-11. Patent Owner also does not dispute that the Silescent product
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`sheet discloses a fixture dimensioned to cover a four-inch can light and junction box
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`as required in claim 5. Resp., 17. Instead, Patent Owner argues that the Silescent
`
`product sheet is not a “printed publication” as required by 35 U.S.C. § 311(b).
`
`Resp.,11-17. To be publicly accessible a document must be either (1) published to
`
`those interested in the art for a sufficient amount of time to allow them to capture,
`
`process, and retain the information conveyed by the reference, or (2) available to
`
`those who can locate the material in a meaningful way. In re Klopfenstein, 380 F.3d
`
`1345, 1350 (Fed. Cir. 2004). The Silescent product sheet meets this standard.
`
`As Daryl Soderman—CEO and co-founder of Silescent Lighting Corp.—
`
`stated in his declaration (Ex. 1003, ¶ 3) and testified during his deposition (Ex.
`
`2004), the Silescent product sheet and installation instructions for the S100LP2
`
`11
`
`
`
`
`product was available to the public by June 2009. Mr. Soderman testified that it was
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`his company’s standard practice to send out the product sheet and installation
`
`instructions not only with products that had been sold but also to potential clients in
`
`the months leading up to the first sale of the S100LPS product in July 2009. Ex.
`
`2004, 19:19-20:2; 52:10-55:7. Mr. Soderman explained that this was a “critical”
`
`practice at least because:
`
`call or
`the
`the nature of
`[D]epending upon
`communications happening at the time and who we were
`speaking with but with any demo that we would provide
`the installation instructions as well as the spec sheet is
`vital so once we leave communication with whomever we
`left it with they would have some materials for which their
`colleagues as well as their end customers perhaps if it
`wasn’t the end customer would take up communication
`and be able
`to effectively communicate
`that,
`the
`specification and the properties as well as the mounting.”
`
`Ex. 2004, 54:6-16 (emphasis added). He also testified that the product sheet and
`
`installation instructions were typically distributed together:
`
`Q.
`
`So you said here in paragraph four of your
`declaration
`that you
`typically distributed
`the
`installation guide and specification sheets along
`with product or products sample: is that right?
`
`A. Yes, among other means.
`
`Q.
`
`A.
`
`So can I take it from that that – it was not Silescent’s
`practice
`to always
`include
`the
`installation
`instruction or product sheet with the product?
`
`I’m not aware of our situation where we wouldn’t
`have provided.
`
`12
`
`
`
`
`Ex. 2004, 15:3-15 (emphasis added) (objection omitted). He also explained that the
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`product sheet and installation instructions were available to the public:
`
`Q.
`
`Paragraph three of your declaration you say the last
`sentence says “both were made available to the
`public at least as early as June 2009.” What do you
`mean by “made available to the public.”
`
`A.
`
`They would have been provided to a variety of
`different individuals in and out of the industry.
`
`*
`
`*
`
`*
`
`Q. With respect to the Silescent LS100 LP2 product
`sheet if I wasn’t working at Silescent or a purchaser
`of this actual product how could I back in 2009 have
`gotten a copy of the product sheet?
`
`A. Any one of a number of different distribution
`methods. Sales reps., distributors, other selling
`agents, hand delivered.
`
`Ex. 2004, 18:8-13; 42:7-13. Accordingly, those interested in LED light fixtures
`
`would have been able to find the Silescent product sheet. Indeed, Mr. Soderman’s
`
`company was engaged in an effort to market and sell the product so those interested
`
`in the product would have been able to gain access to these documents. See L&P
`
`Property Management Co. v. National Prods. Inc., IPR2016-00475, 2017 WL
`
`3085926 at *9 (PTAB July 19, 2017).
`
`Patent Owner argues that the lack of a date printed on the product sheet
`
`necessarily means that it was not available before October 2009. Resp., 11-14. This
`
`is contradicted by Mr. Soderman’s testimony (also not discussed in Patent Owner’s
`
`13
`
`
`
`
`Response) that both the installation instructions—dated June 2009—and the product
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`sheet were created at about the same time and were distributed together. Ex. 2004,
`
`13:25-14:6; 15:3-15; 39:18-24; 55:1-7.
`
`In addition, Mr. Soderman was questioned during his deposition regarding an
`
`invoice showing the sales of the S100LP2 product in July 2009. This added further
`
`confirmation that the product sheet (which he called “specification sheet” in the
`
`testimony below) was distributed by July 2009 and thus well before October 2009:
`
`Q. So the installation instruction has June 2009 date on
`it. So it’s your testimony that because it has the
`June 2009 date on it that’s also the time in which it
`would have gone out the door?
`
`A. Yes, to the best of my recollection because of the
`dates and the time at which we operated. We also
`have an invoice that’s dated July of which our
`product is very much or is a specification grade
`product that has very lengthy sale cycles and so for
`that development to lead to a sale would definitely
`have required many weeks of planning, preparation
`and communication.
`
`
`Q. You referred to an invoice. Are those the invoices
`that I was handed when I walked in today?
`
`A. Yes, as an example.
`
`Q.
`
`So these invoices I was handed today don’t
`anywhere
`indicate you’re your
`installation
`instruction or product sheet was included with the
`product being sold; correct?
`
`A. No, but what it ties to again is our standard practice
`and efforts that lead up to that not only the
`
`14
`
`
`
`
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`distribution of the product but also the date of sale
`of it of which would take many months in the sales
`cycle to obtain coupled with the June date and again
`the release of demos. If we provide a sample or
`demo it would always go with the specification
`sheet because they would need to know what the
`options and features of the product were.
`
`
`Ex. 2004, 18:23-20:2 (emphasis added) (objection omitted). Patent Owner does not
`
`address Mr. Soderman’s credible testimony—corroborated by a July 2009 invoice—
`
`that the documents were distributed to the public at least as early as June 2009. 2
`
`Instead, Patent Owner relies on arguments that the product sheet is undated
`
`and refers to “multiple patents secured” and that the S100 LP2 is “patented.” Resp.,
`
`42. Patent Owner bases this argument on an allegation that Silescent’s patents had
`
`not issued before June 2009. This is incorrect. Patent Owner failed to mention that
`
`several of Silescent’s design patents, which are listed in Patent Owner’s exhibit
`
`2003, received notices of allowance in June 2009: D602,194 and D602,195 on June
`
`25, 2009, and D602,193 on June 26, 2009. Patent Owner also fails to mention that
`
`the Silescent patents, in particular the ‘763 patent which covers the S100 LP2
`
`product, were filed at least a year before June 2009. Mr. Soderman testified that he
`
`
`2The July 2009 invoice was provided to Patent Owner’s counsel before Mr.
`Soderman’s deposition. It was marked as Exhibit 4 and is included with the Mr.
`Soderman’s deposition transcript. See Ex. 2004, p. 85. He was questioned about
`the invoice during his deposition (Exh. 2004, pp. 19-20, 41, 43-46, 55), but Patent
`Owner failed to mention this corroborating evidence in its Response.
`
`15
`
`
`
`
`and a few others at Silescent—including design engineering and a graphic artist—
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`were the authors of the product sheet and the installation instructions, but no lawyers
`
`were involved in the drafting. Ex. 2004, 16:17-18:7. It is understandable that a
`
`layperson would understand a “notice of allowance” from the United States Patent
`
`Office as evidence that a patent had been “secured.”
`
`Patent Owner’s application of legalistic and technical definitions to
`
`documents that were prepared without the benefit of legal review is insufficient to
`
`support its argument that the Silescent product sheet is not prior art. This is
`
`particularly true in light of Mr. Soderman’s testimony—corroborated by the July
`
`2009 invoice—that product sheets were sent out with demos and sold products by
`
`June 2009 and certainly by the July 2009 invoice date. Patent Owner would have
`
`the Board find that a non-lawyer’s use of legal terms such as “secured” a patent and
`
`“patented” trumps all the other concrete, factual evidence. To the contrary, the
`
`weight of the evidence here shows that the product sheet was available to the public
`
`months before the October 2009 priority date and is a printed publication pursuant
`
`to 35 U.S.C. § 311(b).
`
`Patent Owner also has resorted to mischaracterizing and improperly quoting
`
`Mr. Soderman’s testimony. Patent Owner stated that “Mr. Soderman could not
`
`‘remember the specifics on the timeline [of the creation of the Silescent product
`
`sheet.]’” Resp., 14 (quoting Ex. 2004 at 39:20-21). Patent Owner misleadingly cited
`
`16
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