Trials@uspto.gov
`571.272.7822
`
` Paper No. 8
`Filed: October 31, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TECHNICAL CONSUMER PRODUCTS, INC., NICOR INC.,
`AMAX LIGHTING, JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PV
`LIGHTING CO., LTD., LEEDARSON LIGHTING CO., LTD., and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`
`____________
`
`Case IPR2017-012851
`Patent 8,672,518 B2
`____________
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 IPR2018-00262 and IPR2018-00270 are joined with this proceeding.
`
`
`571.272.7822
`
` Paper No. 8
`Filed: October 31, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TECHNICAL CONSUMER PRODUCTS, INC., NICOR INC.,
`AMAX LIGHTING, JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PV
`LIGHTING CO., LTD., LEEDARSON LIGHTING CO., LTD., and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`
`____________
`
`Case IPR2017-012851
`Patent 8,672,518 B2
`____________
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 IPR2018-00262 and IPR2018-00270 are joined with this proceeding.
`
`
`
`IPR2017-01285
`Patent 8,672,518 B2
`
`
`I. INTRODUCTION
`
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting
`
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
`
`inter partes review of claims 1, 3–8, and 10–14 (“the challenged claims”) of
`
`U.S. Patent No. 8,672,518 B2 (Ex. 1001, “the ’518 Patent”). Lighting
`
`Science Group Corp. (“Patent Owner”) acknowledged the filing of the
`
`Petition (Paper 6), but did not file a preliminary response. We determined
`
`that the information presented in the Petition established that there was a
`
`reasonable likelihood that Petitioner would prevail in challenging claims 1,
`
`3–8, and 10–14 of the ’518 Patent as unpatentable under 35 U.S.C. § 103(a).
`
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review on
`
`November 1, 2017, as to all of the challenged claims, except claim 10, but
`
`not all the grounds presented the Petition. Paper 10 (“Dec. on Inst.”).
`
`During the course of trial, Patent Owner filed a Patent Owner
`
`Response (Paper 17, “PO Resp.”), and Petitioner filed a Reply to the Patent
`
`Owner Response (Paper 21, “Pet. Reply”). A consolidated oral hearing with
`
`related Cases IPR2017-01280 and IPR2017-01287 was held on September 6,
`
`2018, and a transcript of the hearing is included in the record. Paper 32
`
`(“Tr.”).
`
`Before the consolidated oral hearing, the United States Supreme Court
`
`held that a decision to institute under 35 U.S.C. § 314 may not institute on
`
`less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138
`
`S. Ct. 1348, 1359–60 (2018). Following SAS, the U.S. Patent and
`
`Trademark Office (“Office”) issued “Guidance on the impact of SAS on
`
`AIA trial proceedings,” in which the Office took the policy position that a
`
`decision granting institution will institute on all of the challenged claims in
`
`2
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`
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`IPR2017-01285
`Patent 8,672,518 B2
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`the petition and all the grounds presented in the petition.2 The U.S. Court of
`
`Appeals for the Federal Circuit has since endorsed this Office policy by
`
`explaining that “‘the petitioner’s petition, not the Director’s discretion, is
`
`supposed to guide the life of the litigation’ and ‘that the petitioner’s
`
`contentions, not the Director’s discretion, define the scope of the litigation
`
`all the way from institution through to conclusion.’” Adidas AG v. Nike,
`
`Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018) (quoting SAS, 138 S. Ct. at 1356–
`
`1357). In accordance with SAS and Office policy, we issued an Order
`
`modifying our Decision on Institution entered on November 1, 2017, to
`
`include review of all challenged claims and all grounds presented by
`
`Petitioner in its Petition. Paper 19.
`
`In addition, two additional petitioners sought institution of similar
`
`grounds of unpatentability against claims 1, 3–8, and 10–14 of the ’518
`
`Patent: (1) Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd.,
`
`and Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. (“Jiawei”); and
`
`(2) Leedarson Lighting Co., Ltd., and Leedarson America, Inc.
`
`(“Leedarson”). See Papers 22, 23. We instituted review of all of the
`
`challenged claims and all grounds with respect to both new petitioners and
`
`joined the instituted proceedings, i.e., IPR2018-00262 and IPR2018-00270,
`
`with the instant proceeding. Id. Both new petitioners were joined under
`
`specific conditions in “understudy” roles. Id.
`
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`
`
`
`2 Available at https://www.uspto.gov/patentsapplication-process/patent-trial-
`and-appeal-board/trials/guidance-impactsas-aia-trial.
`
`3
`
`
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`IPR2017-01285
`Patent 8,672,518 B2
`
`
`claims 1, 3–8, and 11–14 of the ’518 Patent. For the reasons discussed
`
`below, we hold that Petitioner has demonstrated by a preponderance of the
`
`evidence that these claims are unpatentable under § 103(a).
`
`
`
`A. Related Matters
`
`Additional petitions were filed seeking inter partes review of U.S.
`
`Patent No. 8,967,844 B2 (“the ’844 Patent”), co-pending Case IPR2017-
`
`01280, and of U.S. Patent No. 8,201,968 B2 (“the ’968 Patent”), co-pending
`
`Case IPR2017-01287. Pet. 1. The ’518 Patent issued from a continuation-
`
`in-part of U.S. Patent Application No. 12/775,310, from which the ’968
`
`Patent issued, and ’844 Patent issued from a continuation of the ’518 Patent.
`
`The ’968, ’518, and ’844 Patents have been asserted in the following
`
`proceedings: Lighting Sci. Grp. Corp. v. Cree, Inc., Case No. 6:13-cv-00587
`
`(M.D. Fla. filed Apr. 10, 2013); Lighting Sci. Grp. Corp. v. Cooper Lighting,
`
`LLC, Case No. 6:14-cv-00195 (M.D. Fla. filed Feb. 6, 2014); Lighting Sci.
`
`Grp. Corp. v. Sea Gull Lighting Prods. LLC, Case No. 6:16-cv-00338 (M.D.
`
`Fla. filed Feb. 25, 2016); Lighting Sci. Grp. Corp. v. U.S.A. Light & Elec.,
`
`Inc., Case No. 6:16-cv-00344 (M.D. Fla. filed Feb. 26, 2016); Lighting Sci.
`
`Grp. Corp. v. Hyperikon, Inc., Case No. 6:16-cv-00343 (M.D. Fla. filed Feb.
`
`26, 2016); Lighting Sci. Grp. Corp. v. Nicor Inc., Case No. 6:16-cv-00413
`
`(M.D. Fla. filed Mar. 10, 2016); Lighting Sci. Grp. Corp. v. Sunco Lighting,
`
`Inc., Case No. 6:16-cv-00677 (M.D. Fla. filed Apr. 21, 2016); Lighting Sci.
`
`Grp. Corp. v. Panor Corp., Case No. 6:16-cv-00678 (M.D. Fla. filed Apr.
`
`21, 2016); Lighting Sci. Grp. Corp. v. S E L S, Inc., Case No. 6:16-cv-00679
`
`(M.D. Fla. filed Apr. 21, 2016); Lighting Sci. Grp. Corp. v. EEL Co., Ltd.,
`
`Case No. 6:16-cv-00680 (M.D. Fla. filed Apr. 21, 2016); Lighting Sci. Grp.
`
`4
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`IPR2017-01285
`Patent 8,672,518 B2
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`Corp. v. Globalux Lighting LLC, Case No. 6:16-cv-00681 (M.D. Fla. filed
`
`Apr. 21, 2016); Lighting Sci. Grp. Corp. v. Hubbell Inc., Case No. 6:16-cv-
`
`01084 (M.D. Fla. filed June 22, 2016); Lighting Sci. Grp. Corp. v. American
`
`De Rosa Lamparts, LLC, Case No. 6:16-cv-01087 (M.D. Fla. filed June 21,
`
`2016); Lighting Sci. Grp. Corp. v. Titch Indus., Inc., Case No. 6:16-cv-
`
`01228 (M.D. Fla. filed July 7, 2016); Lighting Sci. Grp. Corp. v. Tech.
`
`Consumer Prods., Inc., Case No. 6:16-cv-01255 (M.D. Fla. filed July 13,
`
`2016); Lighting Sci. Grp. Corp. v. Satco Prods., Inc., Case No. 6:16-cv-
`
`01256 (M.D. Fla. filed July 13, 2016); Lighting Sci. Grp. Corp. v. Amax
`
`Lighting, Case No. 6:16-cv-01321 (M.D. Fla. filed July 22, 2016); Lighting
`
`Sci. Grp. Corp. v. Wangs Alliance Corp., Case No. 6:16-cv-01320 (M.D.
`
`Fla. filed July 22, 2016); Lighting Sci. Grp. Corp. v. Halco Lighting Techs.,
`
`LLC, Case No. 6:16-cv-02188 (M.D. Fla. filed Dec. 21, 2016); Lighting Sci.
`
`Grp. Corp. v. Shenzhen Jiawei Photovoltaic Lighting, Case No. 6:16-cv-
`
`03886 (N.D. Cal. filed July 11, 2016); and Lighting Sci. Grp. Corp. v.
`
`Leedarson Lighting Co., Case No. 6:17-cv-00826 (M.D. Fla. filed May 9,
`
`2017). Pet. 1–2; Paper 6, 1–3; Paper 27.
`
`Generation Brands LLC previously filed petitions for inter partes
`
`review of the ’844 Patent and the ’968 Patent in IPR2016-01546 and
`
`IPR2016-01478, respectively. Pet. 1. After our decisions to institute inter
`
`partes reviews in these cases, both cases were settled and terminated. See
`
`id.; Paper 6, 1. In addition, Satco Products, Inc., filed petitions for inter
`
`partes review of the ’844 Patent and the ’968 Patent in IPR2017-01639 and
`
`IPR2017-01638, respectively, where we instituted inter partes reviews in
`
`these cases, which are still pending.
`
`
`
`5
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`Patent 8,672,518 B2
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`B. The ’518 Patent
`
`The ’518 Patent relates to “low profile downlighting for retrofit
`
`applications.” Ex. 1001, 1:15–17. Figures 5 and 12 of the ’518 Patent are
`
`reproduced below, with annotations added by the Board to Figure 12.
`
`
`
`
`
`6
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`IPR2017-01285
`Patent 8,672,518 B2
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`Figure 5 depicts the separated components of luminaire 100, whereas
`
`Figure 12 depicts a section view of assembled luminaire 100. Id. at 3:3–5,
`
`22–23. Luminaire 100 includes heat spreader 105, heat sink 110, outer optic
`
`115, light source 120, and electrical supply line 125. Id. at 4:45–52. Light
`
`source 120, which may be a plurality of LEDs, is disposed in thermal
`
`communication with heat spreader 105. Id. at 5:19–29. Heat sink 110 is
`
`thermally coupled to and disposed diametrically outboard of heat spreader
`
`105. Id. at 4:45–49. In addition, outer optic 115 is securely retained relative
`
`to at least one of heat spreader 105 and heat sink 110. Id. The combination
`
`of heat spreader 105, heat sink 110, and outer optic 115 has an overall height
`
`H and an overall outside dimension/diameter D such that the ratio of H/D is
`
`less than or equal to 0.25 (e.g., when H=1.5 inches and D=7 inches). Id. at
`
`4:52–58.
`
`Luminaire 100 may also include a power conditioner. Id. at 4:56–58.
`
`The power conditioner may be a circuit board having electronic components
`
`for receiving alternating current (AC) voltage from supply line 125 and
`
`delivering direct current (DC) voltage to the LEDs. Id. at 5:44–54. In one
`
`embodiment, the electronics of the power conditioner are contained within a
`
`housing to form block-type power conditioner 165, which can be disposed
`
`on the back surface of the heat spreader 105. Id. at 5:61–6:6, Fig. 11. In this
`
`configuration, block-type power conditioner 165 can be configured and
`
`sized to fit within the interior space of an industry-standard nominally sized
`
`can-type light fixture or an industry-standard nominally sized wall/ceiling
`
`junction box. Id.
`
`
`
`7
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`IPR2017-01285
`Patent 8,672,518 B2
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`C. Illustrative Claim
`
`
`
`Claim 1 is the sole independent claim of the challenged claims.
`
`Independent claim 1 is illustrative of the challenged claims and is
`
`reproduced below:
`
`1. A luminaire and accessory kit in combination, the combination
`comprising:
`
`a luminaire, comprising:
`
`a heat spreader; a heat sink disposed in thermal communication with
`the heat spreader; a light source comprising a plurality of light
`emitting diodes (LEDs) disposed in thermal communication with
`the heat spreader; a power supply electrically connected to the light
`source; an electrical supply line having a first end connected to the
`power supply, and a second end connected to a plug-in connector;
`and, an optic disposed in optical communication with the LEDs;
`and
`
`an accessory kit, comprising:
`
`at least one of: a first pre-wired jumper comprising a pair of insulated
`electrical wires having a first plug-in connector electrically
`connected at one end and an Edison base electrically connected at
`the other end; and, a second pre-wired jumper comprising a pair of
`insulated electrical wires having a second plug-in connector
`electrically connected at one end and cut wire ends at the other
`end;
`
`wherein the plug-in connector of the first pre-wired jumper and the
`second pre-wired jumper are each configured to electrically engage
`with the plug-in connector of the electrical supply line.
`
`Ex. 1001, 13:36–59.
`
`
`
`
`
`D. Instituted Grounds of Unpatentability
`
`We instituted a trial based on the asserted grounds of unpatentability
`
`(“grounds”) set forth in the table below. Dec. on Inst. 28; Paper 19.
`
`8
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`IPR2017-01285
`Patent 8,672,518 B2
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`References
`
`Soderman3 and Wegner4
`Soderman, Wegner, and Silescent5
`Soderman, Wegner, Barnett6, and/or
`Van Elmpt7
`Zhang8 and Wegner
`Zhang, Wegner, and Silescent
`Zhang, Wegner, Barnett, and/or
`Van Elmpt
`
`
`
`Basis Challenged Claims
`
`§ 103 1, 3, 6–8, 11, 12, and 14
`§ 103 4, 5, and 13
`§ 103 10
`
`§ 103 1, 3, 5–8, 11, 12, and 14
`§ 102 4 and 13
`§ 103 10
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms of an unexpired patent are given
`
`their broadest reasonable interpretation in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b) (2016). Under the
`
`broadest reasonable interpretation standard, and absent any special
`
`definitions, claim terms are generally given their ordinary and customary
`
`
`
`3 U.S. Patent No. 7,980,736 B2 (filed Nov. 13, 2007) (issued Jul. 19, 2011)
`(Ex. 1013, “Soderman”).
`
`4 U.S. Patent No. 7,993,034 B2 (filed Sep. 22, 2008) (issued Aug. 9, 2011)
`(Ex. 1015, “Wegner”).
`5Silescent Lighting Corp., Silescent S100 LP2 Product Sheet and Installation
`Guide (Jun. 2009) (Ex. 1016, “Silescent”).
`
`6 U.S. Patent Publication No.2002/0113244 A1 (filed Feb. 11, 2002)
`(published Aug. 22, 2002) (Ex. 1019, “Barnett”).
`
`7 PCT Int’l Pub. No. WO 2010/004503 A1 (filed July 6, 2009) (published
`Jan. 14, 2010) (Ex. 1020, “Van Elmpt”).
`
`8 U.S. Patent No. 7,722,227 B2 (filed Oct. 10, 2008) (issued May 25, 2010)
`(Ex. 1014, “Zhang”).
`
`9
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`IPR2017-01285
`Patent 8,672,518 B2
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`meaning, as would be understood by one of ordinary skill in the art, in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`The Petition did not propose any explicit claim constructions, and we
`
`provided no explicit claim constructions in the Decision on Institution. Dec.
`
`on Inst. 8 (citing Pet. 19). During subsequent filing, neither Patent Owner
`
`nor Petitioner sought any explicit claim constructions. See PO Resp.; Pet.
`
`Reply. As such, any construction of claim terms occurs below in the context
`
`of analyzing whether the prior art renders the claims unpatentable.
`
`
`
`B. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) when in evidence, objective indicia of non-obviousness
`
`(i.e., secondary considerations).9 Graham v. John Deere Co., 383 U.S. 1,
`
`17–18 (1966).
`
`
`
`9 In the instant proceeding, Patent Owner has not proffered any secondary
`considerations with respect to the challenged claims, as noted by Petitioner.
`See Pet. Reply 22–23.
`
`10
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`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden never shifts to
`
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`
`burden of proving obviousness by employing “mere conclusory statements.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`
`
`C. Level of Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`
`resolving the level of ordinary skill in the art lies in the necessity of
`
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`Petitioner does not appear to discuss explicitly the level of ordinary
`
`skill in the art. See generally Pet. Petitioner’s Declarant, Dr. Coleman,
`
`opines that “[a] person of ordinary skill in the field of LED luminaire design
`
`as of October, 2009, would have had at least a bachelor’s degree in either
`
`mechanical engineering, electrical engineering, or physics and at least 3–4
`
`years of experience designing light fixtures.” Ex. 1002 ¶ 22.
`
`11
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`Patent Owner cites to its own declarant, Dr. Bretschneider, who states
`
`that a person or ordinary skill in the art in the relevant period “would have at
`
`least a B.S. degree or equivalent in electrical engineering, mechanical
`
`engineering, chemical engineering, physics, or a related field and at least 2-3
`
`years of experience in designing LED lighting products or fixtures.” PO
`
`Resp. 4 (citing Ex. 2001 ¶¶ 22–23). Although the declarants’ opinions are
`
`not identical, they generally overlap and do not create important points of
`
`distinction.
`
`The parties’ definitions of the level of skill differ in minor respects,
`
`including the number of years of experience and whether or not a
`
`background in chemical engineering should be included. At his deposition,
`
`Dr. Bretschneider testified that he included a degree in chemical engineering
`
`in his definition because that degree confers expertise in heat transfer.
`
`Ex. 1026, 37:14–22. We find this testimony persuasive. Regarding the
`
`difference in years of experience, both declarants agree that three years of
`
`experience is appropriate. For these reasons, we define the person of
`
`ordinary skill in the art as having a bachelor’s degree in electrical
`
`engineering, mechanical engineering, chemical engineering, physics, or a
`
`related field and three years of experience in designing LED lighting
`
`products or fixtures. We are satisfied that this definition comports with the
`
`qualifications a person would have needed to understand and implement the
`
`teachings of the ’968 Patent and the prior art of record. We also note that
`
`the applied prior art reflects the appropriate level of skill at the time of the
`
`claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`
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`12
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`D. Obviousness Over the Combined Teachings of Soderman and Wegner
`
`Petitioner contends claims 1, 3, 6–8, 11, 12, and 14 of the ’518 Patent
`
`would have been obvious under 35 U.S.C. § 103 over Soderman and
`
`Wegner. Pet. 20–34. Petitioner explains how this proffered combination
`
`teaches or suggests the subject matter of each challenged claim, and
`
`provides reasoning as to why one of ordinary skill in the art would have
`
`been prompted to modify or combine the references’ respective teachings.
`
`Id. Petitioner also relies upon the Declaration of Dr. Coleman to support its
`
`positions. Ex. 1002 ¶¶ 44–59. In its Patent Owner Response, Patent Owner
`
`presents a number of arguments as to why the combined teachings of
`
`Soderman and Wegner do not render the limitations of independent claims 1,
`
`3, 6–8, 11, 12, and 14 obvious. PO Resp. 4–10. Patent Owner relies upon
`
`the Declaration of Dr. Bretschneider to support its positions. Ex. 2001
`
`¶¶ 24–29, 73–80, 166–173.
`
`
`
`We begin our analysis with brief overviews of Soderman and Wegner,
`
`and then we address the parties’ contentions with respect to the claims at
`
`issue in this asserted ground.
`
`1. Soderman Overview
`
`Soderman is a U.S. patent directed to “a light fixture assembly
`
`comprising an illumination assembly incorporating a light emitting diode
`
`(LED) array electrically connected to a source of electrical energy by a
`
`conductor assembly segregated from conductive transfer to a heat sink
`
`portion of the light fixture.” Ex. 1013, 1:8–12. Figure 1 of Soderman is
`
`reproduced below:
`
`13
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`Figure 1 of Soderman illustrates housing 30, which can be an enclosure or a
`
`junction box, connected to mounting assembly 18, which can be a plate or a
`
`disk. Id. at 6:21–24, 8:5–10. Cover structure 20, formed of a conductive
`
`material and capable of heat conduction through its structure, is in contact
`
`with mounting assembly 18 to efficiently transfer heat from the illumination
`
`assembly to the mounting assembly to the cover structure. Id. at 6:46–59,
`
`7:36–41. The illumination assembly may comprise one or more LEDs
`
`connected to electrical control circuity, where the latter can be a printed
`
`circuit structure. Id. at 6:13–20. The light fixture assembly can also include
`
`light shield 26, formed of a transparent and/or translucent material. Id. at
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`7:54–58. Soderman describes mounting the fixture to the housing or
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`junction box using, inter alia, connectors passing through “appropriately
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`disposed and dimensioned apertures” in a mounting assembly. Id. at 8:1–13,
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`9:15–34.
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`2. Wegner Overview
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`Wegner is directed to recessed light fixture having an LED light
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`source and a reflector. Ex. 1015, Abstr. The fixture has an Edison base
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`14
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`adaptor that allows for mounting into an existing recessed can light fixture.
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`Id. at Figs. 14–16. In one embodiment, “a reflector housing 320 is coupled
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`to the bottom surface 310a of the heat sink 310,” with the reflector housing
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`being configured to receive a reflector composed of a material for reflecting
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`light emitted by the LED. Id. at 8:1–2, 16–18, 33–35, Fig. 12.
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`3. Independent Claim 1
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`In its Petition, Petitioner cites Soderman’s mounting assembly for the
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`recited “heat spreader.” Pet. 20–21 (citing Ex. 1013, 6:34–36, 6:39–44,
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`7:36–38, Fig. 5). Petitioner notes that the mounting assembly may be
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`formed from a metallic or other material which facilitates the transfer of heat
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`from illumination assembly 12. Id. With respect to the claimed “heat sink,”
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`Petitioner cites Soderman’s “cover structure 20,” made of a “heat conductive
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`material” that conducts heat from the heat spreader out to the air. Id. (citing
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`Ex. 1014, 6:53, Figs. 5, 6). With respect to the “light source” recited in
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`claim 1, Petitioner cites to Soderman’s LEDs. Id. at 23 (citing Ex. 1013,
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`6:14–17, 8:26–28).
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`With respect to the “power supply” limitation of claim 1, Petitioner
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`cites to Soderman’s disclosure of “an appropriate source of electrical
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`energy,” where “the specific wiring configurations which serve to
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`interconnect the source of electrical energy 34 and the conductive material
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`connectors 42 may take many forms and is therefore not shown, for purposes
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`of clarity.” Pet. 23–24 (quoting Ex. 1013, 9:10–14, citing Ex. 1013, 8:53–
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`55, Figs. 1, 7). With respect to the “optic,” Petitioner cites to Soderman’s
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`optic in optical communication with the LEDs. Id. at 24 (citing Ex. 1013,
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`7:54–61, Fig. 3).
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`15
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`With to the “pre-wired jumper” limitation of claim 1, which Petitioner
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`refers to as an “accessory kit,” Petitioner acknowledges that Soderman does
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`not explicitly disclose such an element. Pet. 25. Petitioner contends that in
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`retrofit applications, the most common source of power is the female Edison
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`socket up in the can fixture. Id. (citing Ex. 1002 ¶ 49). Petitioner further
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`contends that Wegner discloses adaptor kit 1520 with plug-in
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`connector 1520c at one end and a screw-in Edison plug 1520b at the other
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`end. Id. at 26 (citing Ex. 1015, 10:46-60, Figs. 6, 15, and 16). Petitioner
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`concludes that “[e]mploying the accessory kit shown in Wegner would have
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`yielded the predictable result of an adjustable height, more-easily-installed
`
`version of Soderman suitable for retrofit installation into existing cans.” Id.
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`In its Patent Owner Response, Patent Owner presents arguments
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`disputing that Petitioner has demonstrated that one of ordinary skill in the art
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`would have combined Soderman and Wegner as Petitioner has indicated
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`with respect to independent claim 1. See PO Resp. 5–9. We address these
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`arguments below.
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`a. Motivation to Combine Soderman and Wegner
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`Patent Owner argues that “a [person of ordinary skill in the art] would
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`not be motivated to combine the two disparate references.” PO Resp. 5.
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`Patent Owner argues that Petitioner does not provide explanations of how
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`the teachings of Soderman and Wegner might be combined, and only
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`generally identifies that Wegner provides for a modification and that
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`Soderman would have been suitable for a retrofit installation. Id. at 6.
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`Patent Owner argues that Soderman does not disclose any fixtures suitable
`
`for installation within a can light fixture and ordinarily skilled artisans would
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`not have looked to Soderman for installations with a can structure, especially
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`16
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`one with an integral junction box. Id. at 7 (citing Ex. 2001 ¶¶ 24–29, 78–80,
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`166). With respect to Wegner, Patent Owner argues that its disclosure is
`
`specifically designed for installation into a can light fixture, and its teachings
`
`of a tall reflector disposed within a can light fixture runs contrary to “the
`
`optical design necessitated by the ’518 Patent, which includes an accessory
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`kit for installation within junction boxes or can light fixtures.” Id. at 7–8
`
`(citing Ex. 2001 ¶¶ 24–29, 73–75, 166–170).
`
`Petitioner responds that claim 1 does not require that the recited light
`
`fixture be installed to a junction box or can light, such that the distinction
`
`raised by Patent Owner is not pertinent to claim 1. Pet. Reply 4–5.
`
`Petitioner also asserts that Patent Owner’s analysis ignores “the knowledge,
`
`skill, and creativity of a [person of ordinary skill in the art], and incorrectly
`
`suggests that if a reference fails to expressly disclose any limitation of the
`
`asserted claims, it should be disregarded entirely in an obviousness
`
`analysis.” Id. at 5. Petitioner also argues that distinction between fixtures
`
`installed in cans and junction boxes is solely supported by the testimony of
`
`Dr. Bretschneider, who cites to a 1981 handbook, but admitted during his
`
`deposition that LEDs for commercial lighting purposes were not available
`
`until about 2003 and the handbook necessarily would not have contemplated
`
`an LED light source more than 20 years prior. Id. at 7–8 (citing Ex. 1025,
`
`34:16-35:2).
`
`The Supreme Court has held that an obviousness evaluation “cannot
`
`be confined by a formalistic conception of the words teaching, suggestion,
`
`and motivation, or by overemphasis on the importance of published articles
`
`and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead,
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`17
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`the relevant inquiry is whether Petitioner has set forth “some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
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`approval in KSR, 550 U.S. at 418. When describing examples of what may
`
`constitute a sufficient rationale to combine, the Supreme Court elaborated
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`that, “if a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique is obvious unless its actual
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`application is beyond his or her skill.” KSR, 550 U.S. at 417.
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`Based on the record developed during trial, we agree with Petitioner
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`that one of ordinary skill in the art would have had a sufficient reason to
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`employ the accessory kit of Wegner with the light fixture of Soderman to
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`make those fixtures suitable for retrofit installation into existing cans.
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`When, as here, a technique has been used to improve one device (i.e.,
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`Wegner’s use of its adaptor kit), and one of ordinary skill in the art would
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`have recognized that it would improve similar devices in the same way (i.e.,
`
`to allow the fixture of Soderman to be used with existing cans), using the
`
`technique is obvious unless its actual application is beyond the skill level of
`
`an ordinary skilled artisan. See Pet. 25–26; Ex. 1015, 10:46-60, Figs. 6, 15,
`
`and 16. The record includes credible evidence explaining why one of
`
`ordinary skill in the art would have been motivated to deploy Soderman’s
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`fixture in both new and retrofit environments, and would have looked to
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`Wegner to provide for such a capacity. See Pet. 25–26. Petitioner’s
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`declarant, Dr. Coleman, provides the necessary motivation for doing so—
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`namely, providing “an adjustable height, more-easily-installed version of
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`Soderman suitable for retrofit installation into existing cans.” Ex. 1002 ¶ 49.
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`18
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`With respect to the testimony of Dr. Bretschneider, Patent Owner’s
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`declarant, we are not persuaded that “[c]eiling mounted light fixtures are a
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`separate class of luminaires,” nor that “[c]eiling mounted light fixtures are
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`the antithesis of can light fixtures.” Ex. 2001 ¶¶ 26, 27. Although
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`Dr. Bretschneider warns that considering both “would improperly sweep in
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`completely unrelated products such as streetlamps and even automotive
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`headlamps” (id. at ¶ 29), we find such concerns to be unwarranted in
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`considering the present ground of unpatentability. The lighting fixtures
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`discussed in both Soderman and Wegner are directed to the use in the home,
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`where Soderman explicitly discloses its use for retrofit installations, where
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`multiple types of lighting situations would be encountered.
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`Likewise, we are unpersuaded by Dr. Bretschneider’s testimony that
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`modifying the fixture in Soderman, to be used with a can light housing,
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`would “likely render [it] inoperable,” and that “Soderman contains no
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`teaching that the fixture would be suitable for installation with a recessed
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`can housing.” Ex. 2001 ¶¶ 78, 80. If we were to accept this line of
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`argument, it would run contrary to the principles of law articulated in KSR.
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`In KSR, the Supreme Court emphasized “an expansive and flexible
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`approach” to an obviousness evaluation. 550 U.S. at 415; see also Jazz
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`Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1363 (Fed. Cir. 2018)
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`(“KSR did not impose a rigid requirement to identify . . . a problem to be
`
`solved in the art . . . .”). The Court stated that, “[o]ften, it will be necessary
`
`for a court to look to interrelated teachings of multiple patents,” among other
`
`things, “to determine whether there was apparent reason to combine the
`
`known elements in the fashion claimed by the patent at issue.” 550 U.S. at
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`418. Moreover, the Court explained that, “[u]nder the correct analysis, any
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`19
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`need or problem known in the field of endeavor at the time of invention and
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`addressed by the patent can provide a reason for combining the elements in
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`the manner claimed.” Id. at 420.
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`As such, although we appreciate that there is a distinction between
`
`fixtures installed in cans and junction boxes, we are not persuaded that they
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`represent sufficiently different categories that one of ordinary skill in the art
`
`would not consider the teachings of one for use in another fixture. Similarly,
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`we are unpersuaded that the two types of lighting fixtures are somehow non-
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`analogous. We acknowledge that references considered under 35 U.S.C.
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`§ 103 need not be from the same field of endeavor (KSR, 550 U.S. at 402),
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`but in the instant proceeding, we conclude that Soderman and Wegner are
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`from the same field of endeavor, and we further conclude that a person of
`
`ordinary skill in the art could have been motivated to combine the two
`
`references. Based on the motivation supplied by Petitioner (Pet. 25–26), we
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`conclude that it would have been obvious to combine Soderman and Wegner
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`to reach a lighting fixture as argued by Petitioner.
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