UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________________________________
`
`SATCO Products, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner
`_______________________________________________________
`
`Case No.: IPR2017-01643
`Patent No.: 8,672,518
`_______________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`_______________________________________________________
`
`
`Patent Owner Lighting Science Group Corp.
`
`
`
`
`Filed on behalf of:
`
`
`
`By: Eric D. Hayes
`
`Garret A. Leach
`
`Kyle M. Kantarek
`
`Kirkland & Ellis LLP
`
`300 N. LaSalle
`
`Chicago, IL 60654
`
`Phone: 312-862-2000
`
`Email: eric.hayes@kirkland.com
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`V.
`
`INTRODUCTION ......................................................................................... 1
`I.
`SUMMARY OF ARGUMENT ..................................................................... 1
`II.
`III. OVERVIEW OF THE ’518 PATENT ......................................................... 2
`IV. CLAIM CONSTRUCTION .......................................................................... 3
`A.
`“Heat Spreader” And “Heat Sink” ........................................................ 3
`THE BOARD SHOULD DENY INSTITUTION ON GROUND 1
`RELYING on tickner. ................................................................................... 4
`A.
`Tickner Does Not Disclose The Thermal Communication
`Limitation. ............................................................................................. 4
`1.
`Petitioner Does Not Identify the Heat Spreader Required
`By the Claims .............................................................................. 4
`If Petitioner Identified the Claimed Heat Spreader As
`Element 310a in Tickner, It Has Not Identified the
`Thermal Communication Required By the Claim ...................... 6
`VI. THE BOARD SHOULD DENY INSTITUTION ON GROUND 2
`RELYING on ticknER IN LIGHT OF ULE 5000. ..................................... 8
`A.
`Tickner In View Of ULE 5000 Does Not Disclose The H/D
`Limitation. ............................................................................................. 8
`1.
`Petitioner Offers No Reason or Motivation to Combine
`Tickner and ULE 5000 or Reasonable Expectation of
`Success in Doing So .................................................................... 8
`ULE 5000 Merely Discloses the Overall Dimensions of an
`“LED Light Engine” ................................................................. 12
`VII. THE BOARD SHOULD DENY INSTITUTION ON GROUND 3
`RELYING ON TICKNER IN LIGHT OF CHOU, LIGHTOLIER,
`AND SUNG. .................................................................................................. 13
`i
`
`2.
`
`2.
`
`

`

`A.
`
`B.
`
`C.
`
`Tickner In View Of Chou, Lightolier, And Sung Does Not
`Disclose The Rotational Retention Limitation. ................................... 14
`1.
`Lightolier Is Offered As Evidence of Prior Public Use or
`Sale and Is Not a Proper Basis for IPR ..................................... 15
`Petitioner Offers No Reason or Motivation to Combine
`Tickner, Chou, Lightolier, and Sung or Reasonable
`Expectation of Success in Doing So ......................................... 16
`Chou Does Not Disclose “The Heat Spreader and the Heat
`Sink In Combination Define a Base” as Required by the
`Rotational Retention Limitation ............................................... 18
`Chou Does Not Disclose “Engagement Tabs” As Required
`by the Rotational Retention Limitation .................................... 19
`Tickner Cannot Properly Be Combined With Chou Such That
`Petitioner’s Arguments Regarding Claim 11 Fail. .............................. 21
`Tickner Does Not Render Obvious “At Least One Twist-On
`Wire Connector” Required By Claim 12. ........................................... 21
`VIII. THE BOARD SHOULD DENY INSTITUTION ON GROUND 4
`RELYING ON CHOU IN VIEW OF TICKNER. .................................... 24
`A.
`Petitioner Offers No Reason Or Motivation To Combine Chou
`And Tickner Or Reasonable Expectation Of Success In Doing So
` ............................................................................................................. 24
`IX. THE BOARD SHOULD DENY INSTITUTION ON GROUND 5
`RELYING ON Zhang IN VIEW OF TICKNER. .................................... 26
`A.
`Petitioner Offers No Reason Or Motivation To Combine Zhang
`And Tickner Or Reasonable Expectation Of Success In Doing So
` ............................................................................................................. 26
`Zhang Does Not Disclose The Heat Spreader Limitation. .................. 29
`Zhang Does Not Disclose The Thermal Communication
`Limitation ............................................................................................ 31
`X. CONCLUSION ............................................................................................ 33
`
`
`B.
`C.
`
`2.
`
`3.
`
`4.
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper No. 94 (P.T.A.B. Apr. 20, 2015) ....................................... 9
`Generation Brands LLC v. Lighting Sci. Grp. Corp.,
`2017 WL 506575 (P.T.A.B. Feb. 6, 2017) ........................................................... 13
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .............................................................................. 6
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... passim
`Millennium Pharm., Inc. v. Sandoz Inc.,
`862 F.3d 1356 (Fed. Cir. 2017) ............................................................................ 22
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .............................................................................. 9
`Proctor & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989(Fed. Cir. 2009) .............................................................. 9, 11, 16, 27
`Quad Envtl. Techs. Corp. v. Union Sanitary Dist.,
`946 F.2d 870 (Fed. Cir. 1991) .............................................................................. 15
`Qualcomm Inc. v. ParkerVision Inc.,
`IPR2015-01819, Paper No. 8 (P.T.A.B. Mar. 8, 2016) ................................ passim
`Spears v. Holland,
`Interf. No. 104,681, Paper No. 30 (B.P.A.I. Mar. 13, 2002) ............... 6, 19, 31, 33
`Velander v. Garner,
`348 F.3d 1359 (Fed. Cir. 2003) ............................................................................ 22
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`IPR2015-00276, Paper No. 8 (P.T.A.B. Jun. 1, 2015) ................................. passim
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, 2013 WL 5653113 (P.T.A.B. Apr. 8, 2013) ................ 19, 31, 33
`
`iii
`
`

`

`Statutes
`
`Statutes
`35 U.S. C. § 311 ....................................................................................................... 15
`35 U.S.C.§311 ....................................................................................................... 15
`35 U.S.C. § 103 ....................................................................................... 8, 16, 22, 27
`35 U.S.C. § 103 ....................................................................................... 8, 16, 22, 27
`35 U.S.C. § 103(a) ................................................................................................... 22
`35 U.S.C. § 103(a) ................................................................................................... 22
`35 U.S.C. § 301 ................................................................................................. 15, 16
`35 U.S.C. § 301 ................................................................................................. 15,16
`35 U.S.C. § 302 ........................................................................................................ 15
`35 U.S.C. § 302 ........................................................................................................ 15
`35 U.S.C. § 311(b) ................................................................................................... 15
`35 U.S.C. § 311(b) ................................................................................................... 15
`37 C.F.R. § 42.104(b)(4) ............................................................................. 18, 30, 32
`37 CPR. § 42.104(b)(4) ............................................................................. 18, 30, 32
`37 C.F.R. § 42.104(b)(5) ....................................................................... 18, 20, 31, 32
`37 CPR. § 42.104(b)(5) ....................................................................... 18, 20, 31, 32
`37 C.F.R. § 42.22(a)(2) ............................................................................... 18, 30, 32
`37 CPR. § 42.22(a)(2) ............................................................................... 18, 30, 32
`
`iv
`
`1V
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Satco Products, Inc. (“Satco” or “Petitioner”) filed a petition for inter partes
`
`review against U.S. Pat. No. 8,672,518 (the “’518 patent”) on June 21, 2017 (the
`
`“Petition” or “IPR”). The Petition asserts that claims 1–8 and 10–12 (the
`
`“challenged claims”) are unpatentable in view of various prior art references.1 The
`
`various prior art references on which the Petition relies do not disclose, alone or in
`
`combination, all the elements of the challenged claims.
`
`II.
`
`SUMMARY OF ARGUMENT
`
`The Board should deny the Petition because it does not demonstrate a
`
`reasonable likelihood that independent claim 1 of the ’518 patent is unpatentable,
`
`and claims 2–8 and 10–12 depend from claim 1.
`
`First, Petitioner fails to show that Tickner discloses “(LEDs) disposed in
`
`thermal communication with the heat spreader” as required by claim 1 of the ’518
`
`patent. Petitioner does not identify a heat spreader or thermal communication
`
`between a heat spreader and the LEDs as required by the claims.
`
`
`1 Petitioner includes a “Summary of Specific Grounds for Petition” on page 16 of
`
`the Petition that states Ground 3 includes claims 13–15, however Petitioner’s
`
`arguments regarding Ground 3 at pages 25–26 only address claims 10–12.
`
`1
`
`

`

`
`
`
`
`Second, falling short of a fundamental obviousness law requirement,
`
`Petitioner fails to set forth any reason or motivation to combine Tickner, Chou,
`
`Lightolier, Sung, or Zhang or reasonable expectation of success in doing so.
`
`Petitioner’s only position is to merely suggest (incorrectly) that each element was
`
`independently known in the art; that does not satisfy the law of obviousness.
`
`
`
`Finally, Tickner in light of ULE 5000 cannot invalidate claim 4. It is
`
`undisputed that Tickner does not disclose a H/D ratio of a heat spreader, heat sink,
`
`and optic. ULE 5000 merely discloses exemplary dimensions of an overall fixture,
`
`not the dimensions of a heat spreader, heat sink, and optic as claimed.
`
`For these reasons, the Board should deny IPR on all Grounds asserted in the
`
`Petition.
`
`III. OVERVIEW OF THE ’518 PATENT
`
`The ’518 patent is directed towards a low-profile LED luminaire including a
`
`thermally coupled heat spreader and heat sink as well as a power conditioner. All
`
`claims at issue require “a heat spreader; a heat sink disposed in thermal
`
`communication with the heat spreader; [and] . . . a plurality of light emitting diodes
`
`(LEDs) disposed in thermal communication with the heat spreader.” Ex. 1001 at
`
`13:39–42. The patented invention includes a heat sink and a heat spreader for
`
`dissipating the heat produced by the LEDs to allow the luminaire to function
`
`properly. Id. The claims further require an accessory kit allowing for retrofit
`
`2
`
`

`

`
`
`applications. Id. at 13:48–59. Figure 12 of the ’518 patent reproduced below
`
`discloses an embodiment of the invention: “a luminaire 100 includes a heat spreader
`
`105, a heat sink 110 thermally coupled to and disposed diametrically outboard of the
`
`heat spreader, an outer optic 115 . . . [, and] a light source 120.” Id. at 4:45–50.
`
`IV. CLAIM CONSTRUCTION
`
`For purposes of this Preliminary Response, Patent Owner addresses the claims
`
`
`
`under Petitioner’s proposed constructions.
`
`A.
`
`“Heat Spreader” And “Heat Sink”
`
`Petitioner states that “[t]he broadest reasonable interpretation of these terms,
`
`in light of the specification, is that the ‘heat spreader’ is that which moves heat from
`
`the heat source to the heat sink. The ‘heat sink’ is that which dissipates the heat into
`
`the air.” Pet. at 16. Patent Owner believes that the plain meanings of the terms “heat
`
`sink” and “heat spreader” are well known to those skilled in the art, should be given
`
`their plain and ordinary meaning, and thus need no construction. See Ex. 1001 at
`
`3
`
`

`

`
`
`1:47–66, 2:9–59, 4:14–19, 4:45–5:7, 5:19–33, 6:56–7:22, 7:53–65, 8:5–58, 9:65–
`
`10:38.
`
`V. THE BOARD SHOULD DENY INSTITUTION ON GROUND 1
`RELYING ON TICKNER.
`
`Petitioner contends that U.S. Pat. Pub. No. 2009/0086476 to Tickner (Ex.
`
`1010, hereinafter “Tickner”) anticipates claims 1–3 and 5–8. Because claims 2–3
`
`and 5–8 depend from claim 1, Patent Owner addresses only claim 1 at this time.
`
`A. Tickner Does Not Disclose The Thermal Communication
`Limitation.
`
`Claim 1 of the ’518 patent recites “a light source comprising a plurality of
`
`light emitting diodes (LEDs) disposed in thermal communication with the heat
`
`spreader.” Ex. 1001 at 13:41–42. Petitioner has failed to identify where Tickner
`
`discloses this limitation (the “Thermal Communication Limitation”). More
`
`specifically, Petitioner fails to articulate a clear position as to where Tickner
`
`discloses a heat spreader disposed in thermal communication with a plurality of
`
`LEDs. At best, Petitioner identifies various different elements within Tickner as the
`
`claimed heat spreader, leaving the Board and LSG to guess where the prior art
`
`allegedly meets this claim limitation, which fails as a matter of law.
`
`1.
`
`Petitioner Does Not Identify the Heat Spreader Required By the
`Claims
`
`Petitioner categorizes the Thermal Communication Limitation as element 2 of
`
`claim 1. Pet at 18. Petitioner’s argument with respect to element 2 is that “Tickner
`
`4
`
`

`

`
`
`discloses a LED package 305 in thermal communication with the heat spreader 310.”
`
`Id. at 18. But Petitioner also argued that “FIG. 8 of the [sic] Tickner shows a heat
`
`spreader 310a that forms the bottom surface of heat sink 310.” Id. at 17. The Board
`
`and Patent Owner are left to guess whether element 310 is a heat sink or heat
`
`spreader, or whether element 310a is a heat spreader. Petitioner’s argument
`
`regarding the Thermal Communication Limitation seems to be that “Tickner
`
`discloses a LED package 305 in thermal communication with the heat [sink] 310.”
`
`Id. at 18. But this does not satisfy the claim language, which requires that the LEDs
`
`be in thermal communication with the heat spreader, not the heat sink. Simply put,
`
`Petitioner fails to identify where Tickner discloses the claimed heat spreader element
`
`in thermal communication with a plurality of LEDs.
`
`To make matters worse, the Petition identifies yet another element (330) in
`
`Tickner as the claimed heat spreader, and yet another element (320) as the claimed
`
`heat sink, “the relevant portions of Tickner are the heat spreader 330, heat sink 320,
`
`LED package 305 . . . . Tickner discloses that the heat spreader 310 is in thermal
`
`communication with the heat sink 320.” Pet. at 10. Petitioner seems to suggest that
`
`both elements 330 and 310 are the heat spreader of Tickner such that Petitioner’s
`
`positions with respect to the claimed heat spreader of the ’518 patent as well as the
`
`“optic coupler 330” element in Tickner remain unclear. This is in direct conflict
`
`5
`
`

`

`
`
`with Petitioner’s identification of element 310a as the heat spreader and 310 as the
`
`heat sink in element 1 of claim 1 as discussed above. Id. at 17.
`
`The Board should not remedy this confusion and resulting deficiency; “[t]he
`
`Board will not take on the role of advocate for a party, trying to make out a case the
`
`party has not adequately stated.” See, e.g., Standing Order ¶ 121.5.2 (B.P.A.I. Mar.
`
`8, 2011); see also Spears v. Holland, Interf. No. 104,681, Paper No. 30 (B.P.A.I.
`
`Mar. 13, 2002) at 15. Further, “[u]nlike district court litigation—where parties have
`
`greater freedom to revise and develop their arguments over time and in response to
`
`newly discovered material—the expedited nature of IPRs bring with it an obligation
`
`for petitioners to make their case in their petition to institute.” Intelligent Bio-Sys.,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). “While the
`
`Board’s requirements are strict ones, they are requirements of which petitioners are
`
`aware when they seek to institute an IPR.” Id.
`
`2.
`
`If Petitioner Identified the Claimed Heat Spreader As Element
`310a
`in Tickner,
`It Has Not
`Identified
`the Thermal
`Communication Required By the Claim
`
`Even if Petitioner had properly stated that Tickner disclosed “heat spreader
`
`310[a]” instead of “heat spreader 310” (it did not), or the Board somehow
`
`understands Petitioner’s positions, Petitioner’s arguments with respect to Tickner
`
`still fail to teach the Thermal Communication Limitation. The Thermal
`
`Communication Limitation requires thermal communication between the heat
`
`6
`
`

`

`
`
`spreader and the LEDs. Petitioner’s entire argument with respect to this element
`
`reads “Tickner discloses a LED package 305 in thermal communication with the
`
`heat spreader 310. Tickner, FIG. 8.” Pet. at 18. Petitioner states that there is thermal
`
`communication and cites only to Figure 8 of Tickner. Figure 8 is reproduced below:
`
`
`
`Elements 305 and 310a are indicated in red above. Figure 8 does not, in any way,
`
`speak to any thermal communication between the two elements. Indeed, shown
`
`above in blue is “protruding center member 310c on which the LED package 305 is
`
`mounted.” Tickner ¶ [0047]. Thus, Fig. 8 shows LED package 305 mounted on
`
`element 310c. Pet. at 18. Petitioner does not indicate whether any thermal
`
`communication exists between elements 305, 310c, and 310a. Id. Further, Petitioner
`
`does not offer any expert testimony or disclosure from Tickner regarding the thermal
`
`7
`
`

`

`
`
`relationship between the elements to attempt to remedy the failures of its attorney
`
`argument. Therefore, Tickner cannot satisfy the Thermal Communication
`
`Limitation.
`
`VI. THE BOARD SHOULD DENY INSTITUTION ON GROUND 2
`RELYING ON TICKNER IN LIGHT OF ULE 5000.
`
`Petitioner contends that Tickner in light of OptoElectronix ULE 5000 Series
`
`Data Sheet (Ex. 1013, hereinafter “ULE 5000”) renders claim 4 obvious.
`
`A. Tickner In View Of ULE 5000 Does Not Disclose The H/D
`Limitation.
`
`Claim 4 of the ’518 patent recites a luminaire “wherein the heat spreader, the
`
`heat sink and the optic, in combination, have an overall height H and an overall
`
`outside dimension D such that the ratio of H/D is equal to or less than 0.25.” Ex.
`
`1001 at 14:7–10. Petitioner does not assert that Tickner discloses this limitation (the
`
`“H/D Limitation”) and relies on ULE 5000 for that teaching. Pet. at 24. As an initial
`
`matter, Petitioner offers no reason or motivation to combine Tickner and ULE
`
`5000. Moreover, even if ULE 5000 is properly combined with Tickner (it is not),
`
`ULE 5000 does not disclose any dimensions of a heat spreader, heat sink, or optic,
`
`such that the H/D ratio of ULE 5000 is unknown.
`
`1.
`
`Petitioner Offers No Reason or Motivation to Combine Tickner
`and ULE 5000 or Reasonable Expectation of Success in Doing
`So
`
`The obviousness inquiry under 35 U.S.C. § 103 requires clearly stated reasons
`
`to combine references. “An invention ‘composed of several elements is not proved
`8
`
`

`

`
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.’” Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`
`IPR2015-00276, Paper No. 8 at 10 (P.T.A.B. Jun. 1, 2015) (quoting KSR Int’l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 418 (2007)). “A party that petitions the Board for a
`
`determination of obviousness must show that ‘a skilled artisan would have been
`
`motivated to combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so.” Apotex Inc. v. Wyeth LLC, IPR2014-00115, Paper No. 94 at
`
`11 (P.T.A.B. Apr. 20, 2015) (quoting Proctor & Gamble Co. v. Teva Pharms. USA,
`
`Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)); see also Mintz v. Dietz & Watson, Inc.,
`
`679 F.3d 1372, 1379 (Fed. Cir. 2012) (“Obviousness requires a court to walk a
`
`tightrope blindfolded (to avoid hindsight)—an enterprise best pursued with the
`
`safety net of objective evidence.”). Obviousness arguments “should be made
`
`explicit,” and it “can be important to identify a reason that would have prompted a
`
`person of ordinary skill in the relevant field to combine the elements in the way the
`
`claimed new invention does.” KSR, 550 U.S. at 418.
`
`Here, Petitioner’s entire argument states “[i]t would have been obvious for
`
`one having ordinary skill in the art to combine Tickner and ULE 5000 as both
`
`disclosures relate to low profile lighting.” Pet. at 24. Because “[a]n invention
`
`‘composed of several elements is not proved obvious merely by demonstrating that
`
`9
`
`

`

`
`
`each of its elements was, independently, known in the prior art,’” Petitioner’s
`
`statements must fail. Volkswagen, IPR2015-00276, Paper No. 8 at 10 (quoting KSR,
`
`550 U.S. at 418). Petitioner has failed to “include articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.” Id. at 11
`
`(quotation omitted). Petitioner’s argument does not contain any explanations of how
`
`the teachings of Tickner and ULE 5000 might be combined to arrive at the claimed
`
`invention or how a skilled artisan would have a reasonable expectation of success in
`
`so combining the references; the Petition only attempts to generally identify that
`
`each element was known in the prior art field of “low profile lighting” and makes a
`
`cursory statement that “it would have been obvious” to combine the references.
`
`Petitioner does not support its obviousness combination with expert
`
`testimony. See Pet. at 24. There is no citation to expert support for the proposition
`
`that Tickner and ULE 5000 are properly combined. Petitioner has thus provided
`
`only a singular “conclusory assertion[] by counsel, unsupported by testimony of an
`
`expert witness.” Volkswagen, IPR2015-00276, Paper No. 8 at 13. That is itself
`
`sufficient to deny institution of Ground 2. Id. (“Rather than articulated reasoning
`
`with rational underpinnings as to why one of ordinary skill in the art would have
`
`[combined the references], Petitioner has provided only a few sentences of
`
`conclusory contentions.”). Petitioner’s only support for any of its arguments in
`
`Ground 2 is a citation to ¶¶ 81–82 of Ex. 1002 (the “Roberts Declaration”)
`
`10
`
`

`

`
`
`attempting to support ULE 5000’s disclosure. These paragraphs do not mention any
`
`reason or motivation to combine Tickner with ULE 5000 or any reasonable
`
`expectation of success in doing so. Proctor & Gamble, 566 F.3d at 994.
`
`At best, the Roberts Declaration at ¶ 79 simply parrots Petitioner’s general
`
`arguments about the combination of Tickner and ULE 5000, with no additional
`
`analysis or explanation beyond the attorney argument set forth in the Petition. Pet.
`
`at 24. Dr. Roberts “repeats the arguments advanced by Petitioner in its Petition”
`
`verbatim (compare Pet. at 24 with Ex. 1002 ¶¶ 79–81), and as such, offers no
`
`persuasive evidence supporting the combination.
`
` See Qualcomm Inc. v.
`
`ParkerVision Inc., IPR2015-01819, Paper No. 8 at 29 (P.T.A.B. Mar. 8, 2016) (“We
`
`also are not persuaded by the cited testimony of Dr. Larson that purportedly supports
`
`Qualcomm’s rationale to combine the teachings of [two pieces of prior art] because
`
`it essentially repeats the arguments advanced by Qualcomm in its Petition.”).
`
`Paragraph 82 provides novel language, but simply states “[i]n my opinion, Claim 4
`
`of the ’518 patent is obvious over Tickner in view of ULE5000.” Ex. 1002. Dr.
`
`Roberts’ testimony here repeats Petitioner’s statements word-for-word and again
`
`fails to provide any reason or motivation to combine ULE 5000 with Tickner, or a
`
`reasonable expectation of success in doing so. For that reason, the references to
`
`Petitioner’s expert declaration should be disregarded. At bottom, Petitioner’s
`
`arguments to combine these three references must fail.
`
`11
`
`

`

`
`
`2.
`
`ULE 5000 Merely Discloses the Overall Dimensions of an “LED
`Light Engine”
`
`Petitioner’s argument that ULE 5000 discloses the H/D Limitation is premised
`
`on the incorrect assumption that simply measuring the outside dimensions of some
`
`“LED Light Engine” satisfies the claimed H/D Limitation. Petitioner’s complete
`
`statement of ULE 5000’s disclosure is set out below:
`
`
`
`Pet. at 24. Petitioner points to the overall size and shape of a lighting fixture and
`
`asserts that it satisfies the H/D Limitation; but this is improper. In IPR2016-01478
`
`of a related patent including the very same H/D limitation at issue here, where the
`
`Petitioner also pointed to the overall shape and size of a lighting fixture as meeting
`
`this limitation, the Board stated that “[i]t is quite possible for the heat sink and fixture
`
`12
`
`

`

`
`
`to have different shapes and dimensions, even though they must define the overall
`
`size and shape of the luminaire.” Generation Brands LLC v. Lighting Sci. Grp.
`
`Corp., 2017 WL 506575, at *9 (P.T.A.B. Feb. 6, 2017). Moreover, Petitioner does
`
`not point to any specific elements in ULE 5000 as meeting the heat sink, heat
`
`spreader, or optic limitations. Pet. at 24. Indeed, it cannot. ULE 5000’s disclosure
`
`simply offers a “LightDisc High-Output Round LED Light Engine” with outer
`
`dimensions of 8.09 in. by 1.44 in. Id. Petitioner does not explain what a “Light
`
`Engine” is or what it means to a person of ordinary skill in the art. Petitioner does
`
`not explain where or how this “Light Engine” shows a heat sink, heat spreader, or
`
`optic. Petitioner has not even made the suggestion that the heat sink, heat spreader,
`
`and optic define the outer dimensions of ULE 5000’s Light Engine; a suggestion that
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`would itself be deficient. Generation Brands, 2017 WL 506575, at *9. Simply put,
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`Petitioner has not identified what portion of ULE 5000 is a heat sink, a heat spreader,
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`or an optic such that calculation of the H/D Limitation of ULE 5000 is impossible.
`
`VII. THE BOARD SHOULD DENY INSTITUTION ON GROUND 3
`RELYING ON TICKNER IN LIGHT OF CHOU, LIGHTOLIER, AND
`SUNG.
`
`Petitioner contends that Tickner in light of U.S. Pat. No. 7,670,021 to Chou
`
`(Ex. 1008, hereinafter “Chou”), Lightolier Model 6618 Lighting Fixture (Not
`
`attached to the Petition, hereinafter “Lightolier”) and U.S. Pat. No. 6,292,375 to
`
`Sung (Ex. 1012, hereinafter “Sung”) renders obvious claims 10–12. Because claims
`
`13
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`

`

`
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`10–12 depend from claim 1 and Petitioner does not offer any argument as to claim
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`1 in Ground 3, Ground 3 must fail for the same reasons as discussed supra Part V
`
`with respect to Ground 1. Patent Owner submits additional arguments with respect
`
`to claims 10–12 below.
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`A. Tickner In View Of Chou, Lightolier, And Sung Does Not Disclose
`The Rotational Retention Limitation.
`
`Claim 10 of the ’518 patent recites a luminaire “wherein the heat spreader and
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`the heat sink in combination define a base, wherein the base comprises engagement
`
`openings, wherein the optic comprises engagement tabs, wherein the optic is
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`securely retained by the base by inserting respective ones of the engagement tabs
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`into respective ones of the engagement tabs into respective ones of the engagement
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`openings and rotating the optic relative to a cylindrical axis of the base such that a
`
`portion of each engagement tab is securely retained by respective portions of the
`
`base.” Ex. 1001 at 14:31–39. Petitioner does not assert that Tickner discloses this
`
`limitation (the “Rotational Retention Limitation”) and relies on Chou, Lightolier,
`
`and Sung for that teaching. Pet. at 25. As an initial matter, Lightolier is not a patent
`
`or printed publication such that it cannot be considered in an IPR. Further, Petitioner
`
`offers no reason or motivation to combine Tickner, Chou, Lightolier, and Sung.
`
`Even if Chou is properly combined with Tickner, Lightolier, and Sung (it is not),
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`Chou does not disclose engagement tabs on the optic as required by the Rotational
`
`Retention Limitation.
`
`14
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`

`

`
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`1.
`
`Lightolier Is Offered As Evidence of Prior Public Use or Sale
`and Is Not a Proper Basis for IPR
`
`Petitioner attempts to offer a “Lightolier Model 6618 lighting fixture,
`
`manufactured in 1987” as disclosing “a lens that rotationally attaches to the base of
`
`the fixture using pairs of tabs on the fixture and the lens.” Pet. at 25. Petitioner
`
`includes pictures of this purported piece of prior art at pages 13–15 of the Petition.
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`“A petitioner in an inter partes review may request to cancel as unpatentable 1 or
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`more claims of a patent . . . only on the basis of prior art consisting of patents or
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`printed publications.” 35 U.S.C. § 311(b) (emphasis added). It is clear simply from
`
`Petitioner’s disclosure that Lightolier is not a patent or a printed publication;
`
`Petitioner offers no document or exhibit as the “Lightolier” reference. Petitioner
`
`instead seemingly attempts to offer Lightolier as prior art based on public use or sale
`
`as early as 1987. See Pet. at 13 (“The label of the fixture shows the manufacturer,
`
`Lightolier, the model number, 6618, and the manufacturing date: the 16th week of
`
`1987.”). But by its plain statutory language, inter partes review does not allow
`
`challenges to patent validity based on prior public use or sale. The Federal Circuit
`
`has stated that “questions of public use and on sale were explicitly excluded by
`
`statute from those issues on which reexamination could be obtained.” Quad Envtl.
`
`Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 875 (Fed. Cir. 1991). Inter
`
`partes reexamination is only available “on the basis of any prior art cited under the
`
`provisions of section 301.” 35 U.S.C. § 302. Like § 311, § 301 is limited to “prior
`
`15
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`

`

`
`
`art consisting of patents or printed publications.” Id. § 301. Thus, Petitioner’s
`
`submission of Lightolier as prior art public use or sale is not an issue on which IPR
`
`may be properly obtained.
`
`2.
`
`Petitioner Offers No Reason or Motivation to Combine Tickner,
`Chou, Lightolier, and Sung or Reasonable Expectation of
`Success in Doing So
`
`As outlined supra Part VI.A.1, obviousness under 35 U.S.C. § 103 requires
`
`clearly stated reasons to combine references. The Petitioner must show (1) a reason
`
`or motivation to combine and (2) a reasonable expectation of success in doing so.
`
`Proctor & Gamble Co., 566 F.3d at 994. Here, Petitioner has not even suggested
`
`that it would be obvious to combine Tickner, Chou, Lightolier, or Sung. See Pet. at
`
`25. The absence of argument with respect to claim 1, the claim on which claim 10
`
`depends, suggests that Petitioner is relying on its Ground 1 arguments with respect
`
`to Tickner for the teachings of claim 1. As to claim 10, Petitioner’s entire argument
`
`is simply that Chou discloses a requirement of the Rotational Retention Limitation
`
`and that Lightolier or Sung (it is not clear which) discloses its other requirements.
`
`Id. Because “[a]n invention ‘composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in the
`
`prior art,’” Petitioner’s statements must fail. Volkswagen, IPR2015-00276, Paper
`
`No. 8 at 10 (quoting KSR, 550 U.S. at 418). Petitioner has failed to “include
`
`articulated reasoning with some rational underpinning to support the legal
`
`16
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`

`

`
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`conclusion of obviousness.” Id. at 11 (quotation omitted). Petitioner’s argument
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`does not contain any explanations of how the teachings of Tickner, Chou, Ligh