UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMP Plus, Inc. dba ELCO LIGHTING
`Petitioner
`
`v.
`
`DMF, Inc.
`Patent Owner
`
`Case: IPR2019-01094
`U.S. Patent No. 9,964,266
`
`PETITIONER’S REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMP Plus, Inc. dba ELCO LIGHTING
`Petitioner
`
`v.
`
`DMF, Inc.
`Patent Owner
`
`Case: IPR2019-01094
`U.S. Patent No. 9,964,266
`
`PETITIONER’S REPLY
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. ARGUMENT ................................................................................................... 1
`
`A.
`
`The Board Properly Rejected Patent Owner’s Narrow Claim
`Construction Proposals. ......................................................................... 2
`
`1.
`
`2.
`
`3.
`
`The Challenged Claims are Not Limited to Use in a
`Building or with Building Main Power. ..................................... 2
`
`“Standard Junction Box” is Not Limited to One that
`Connects to Building Main Power. ............................................. 4
`
`The Claimed Driver is Not Limited to One Receiving Only
`Building Main Power. ................................................................. 6
`
`B.
`
`The Imtra 2011 Brochure Anticipates all Challenged Claims. ............. 8
`
`1.
`
`2.
`
`3.
`
`The Imtra 2011 Brochure Must be Read as a Whole. ................. 8
`
`Imtra 2011 Discloses the “Driver” Limitation. .........................10
`
`Imtra 2011 Discloses the “Plurality of Elements”
`Limitation. .................................................................................11
`
`C.
`
`Imtra 2007 Fills in Any Missing Gaps in the Challenged
`Dependent Claims. ..............................................................................12
`
`1.
`
`2.
`
`3.
`
`Patent Owner Does Not Understand Petitioner’s Proposed
`Combination of Imtra 2011 and 2007. ......................................12
`
`DMF Fails to Undermine the Motivation to Combine
`Rationale Stated in the Petition. ................................................13
`
`Imtra 2007 Discloses the “Plurality of Elements.” ...................14
`
`D.
`
`The Teachings of Gifford May Be Combined with Imtra to Meet
`the “Plurality of Elements” Limitation. ..............................................16
`
`i
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`Patent Owner Continues to Misrepresent Petitioner’s
`Proposed Combination. .............................................................16
`
`Gifford Discloses an LED System That Includes a Housing
`With a Flange Having a Plurality of Elements Aligned with
`Tabs of a Standard J-Box. .........................................................17
`
`The Petition and Dr. Bretschneider Provide Substantial
`Reasons to Combine the Teachings of Gifford with Imtra. ......17
`
`1.
`
`2.
`
`3.
`
`E.
`
`F.
`
`Patent Owner Identified the Wrong POSITA. ....................................23
`
`Patent Owner’s Alleged Evidence of Secondary Considerations
`Cannot Overcome the Strong Evidence of Obviousness. ...................24
`
`1.
`
`2.
`
`3.
`
`Patent Owner Improperly Incorporates By Reference. .............25
`
`Patent Owner Fails to Demonstrate a Nexus Between
`Alleged Praise and the Claimed Invention. ..............................26
`
`Patent Owner Fails to Demonstrate a Nexus Between
`Alleged Copying and the Claimed Invention. ..........................28
`
`III. CONCLUSION ..............................................................................................29
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 30
`
`CERTIFICATE OF SERVICE ................................................................................ 31
`
`ii
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`B.F. Goodrich Co. v. Aircraft Braking Sys. Corp.,
`72 F.3d 1577 (Fed. Cir. 1996) ............................................................................ 25
`
`Cisco Systems, Inc. v. C-Cation Tech’s., LLC,
`IPR2014-00454 Paper 12, 7-8 (PTAB August 29, 2014) ................................... 26
`
`Corning Inc. v. Danjou’s DSM IP Assets B.V.,
`Case No. IPR2013-00043, Paper No. 95 (PTAB May 1, 2014) ......................... 25
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 25
`
`Net MoneyIn, Inc. v. VeriSign, Inc.
`545 F.3d 1359,1369 (Fed. Cir. 2008) ............................................................. 9, 10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................................ 1, 2
`
`SunRace Roots Enter. Co., Ltd. v. SRAM Corp.,
`336 F.3d 1298 (Fed. Cir. 2003) ............................................................................ 3
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 25
`
`iii
`
`
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`
`Description
`
`U.S. Patent No. 9,964,266 (“the ‘266 Patent”)
`Declaration of Eric Bretschneider, Ph.D. (“Bretschneider”)
`Curriculum Vitae of Dr. Bretschneider
`Excerpts from the File History of U.S. Patent No. 9,964,266
`Imtra 2011 Marine Lighting Catalog - Advanced LED Solutions
`(“Imtra 2011”)
`Imtra 2007 Marine Lighting Catalog (“Imtra 2007”)
`U.S. Patent No. 9,366,418 (“Gifford”)
`Declaration of Colby Chevalier (“Chevalier”)
`U.S. Patent No. 7,102,172 (“Lynch”)
`Illuminating Engineering Society, ANSI RP-16-10, Nomenclature
`and Definitions for Illuminating Engineering (approved as an
`American National Standard July 15, 2005, approved by the IES
`Board of Directors Oct. 15, 2005)
`Underwriters Laboratories Inc. Standard for Safety, Standard UL-
`8750, entitled Light Emitting Diode (LED) Equipment for Use in
`Lighting (1st ed. 2009)
`Celanese CoolPoly® D5502 Thermally Conductive Liquid
`Crystalline Polymer Specification (“CoolPoly”)
`Illuminating Engineering Society of North America, IES Lighting
`Handbook (John E. Kaufman and Howard Haynes eds., Application
`Volume 1981) (“Lighting Handbook”)
`California Energy Commission, PIER Lighting Research Program:
`Project 2.3 Low-profile LED Luminaires FINAL REPORT (Prepared
`by Lighting Research Center, January 2005) (“PIER LRP”)
`Jim Sinopoli, Using DC Power to Save Energy and End the War on
`Currents, GreenBiz (Nov. 15, 2012),
`https://www.greenbiz.com/news/2012/11/15/using-dc-power-save-
`energy-end-war-currents (“Sinopoli”)
`Robert W. Johnson, “Thought Leadership White Paper: AC Versus
`DC Power Distribution” (November 2012) (“Johnson”)
`
`iv
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`
`Description
`
`Lumileds, LUXEON Rebel General Purpose Product Datasheet,
`Specification DS64 (2016) (“Luxeon Rebel”)
`U.S. Patent No. 8,454,204 (“Chang”)
`U.S. Department of Energy, CALiPER Benchmark Report:
`Performance of Incandescent A-Type and Decorative Lamps and
`LED Replacements (prepared by Pacific National Laboratory,
`November 2008) (“CALiPER 2008”)
`U.S. Patent No. 3,836,766 (“Auerbach”)
`U.S. Department of Energy, CALiPER Application Summary Report
`16: LED BR30 and R30 Lamps (prepared by Pacific Northwest
`National Laboratory, July 2012) (“CALiPER 2012”)
`Sandia National Laboratories, Sandia Report: “The Case for a
`National Research Program on Semiconductor Lighting” (July 2000)
`(“Haitz”)
`Sylvania, Post Top Street Light LED Retrofit Kit Specification,
`LED40POST (2009) (“Sylvania”)
`Webster’s New Collegiate Dictionary (1973) (“Webster’s”)
`3M Wire Connectors and Tools Catalog 2013 (“3M Catalog”)
`Wakefield Semiconductor Heat Sinks and Thermal Products 1974
`Catalog (“Wakefield”)
`U.S. Department of Energy, Solid-State Lighting Research and
`Development Portfolio: Multi-Year Program Plan FY’07-FY’12
`(prepared by Navigant Consulting, Inc., March 2006) (“DOE 2006”)
`U.S. Department of Energy, Solid-State Lighting Research and
`Development: Multi-Year Program Plan (April 2013) (“DOE 2013”)
`Tentative Claim Construction Order, DMF, Inc. v. AMP Plus, Inc. et
`al., Case 2:18-cv-07090-CAS-GJS, dated July 29, 2019
`Transcript of Proceedings, January 14, 2019, DMF, Inc. v. AMP
`Plus, Inc. et al., Case 2:18-cv-07090-CAS-GJS
`Transcript of the Deposition of James R. Benya, taken on December
`17, 2019
`
`Exhibit
`No.
`1017
`
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`v
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`
`Description
`
`Plaintiff DMF’s Opposition to Defendants’ Ex Parte Application to
`Stay This Action, Dkt. 326 in 2:18-cv-07090 (C.D. Cal)
`Defendant AMP Plus, Inc. d/b/a Elco Lighting’s Amended Answer
`and Counterclaims, Dkt. 18 in 2:18-cv-07090 (C.D. Cal)
`Not Used
`Not Used
`Not Used
`Not Used
`Transcript of the Deposition of James Benya, taken on July 7, 2020
`U.S. Patent No. 10,139,059
`Affidavit of Christopher Butler re: Imtra 2007
`Affidavit of Christopher Butler re: Imtra 2011
`U.S. Patent No. 10,408,395
`
`Exhibit
`No.
`1032
`
`1033
`
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`
`vi
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`Petitioner submits this Reply to Patent Owner DMF, Inc.’s (“DMF”)
`
`Response.1
`
`I.
`
`INTRODUCTION
`
`DMF’s Response says nothing new. DMF alleges that the claims of its ‘266
`
`Patent are limited to recessed lighting systems only used in residential and
`
`commercial buildings having AC “building main power” and governed by
`
`unidentified building and safety codes. The Board has twice rejected this
`
`argument.
`
`DMF fails to demonstrate that the Board’s preliminary constructions were
`
`incorrect, identify any limitations not met by the cited art, and demonstrate that the
`
`claims should not be cancelled. The Board should find all challenged claims
`
`unpatentable.
`
`II.
`
`ARGUMENT
`
`DMF requests the Board to adopt the district court’s claim constructions. In
`
`opposing Petitioner’s request for a stay following institution, DMF urged that court
`
`to ignore the Board’s decision, including its constructions of driver and standard
`
`junction box, asserting that the court “has more experience in reliably construing
`
`patent claims under the … Phillips standard than does the PTAB” and that the
`
`1 The trial date in the related district court case was vacated in March. No new trial
`
`date has been set.
`
`1
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`court “has significantly more experience in applying the district court Phillips
`
`claim construction standard, which the PTAB only recently started to apply.” (Ex.
`
`1032, 6, 18) Petitioner does not share DMF’s view of the Board’s experience
`
`under Phillips.
`
`A.
`
`The Board Properly Rejected Patent Owner’s Narrow Claim
`Construction Proposals.
`
`1.
`
`The Challenged Claims are Not Limited to Use in a
`Building or with Building Main Power.
`
`The intrinsic record shows that the inventor did not limit his claims to
`
`include a driver that can only receive “building main power” and include a casting
`
`having a plurality of elements that align with tabs on a standard junction box that
`
`must also receive “building main power.” The claims do not require a standard
`
`junction box and most do not require the recessed lighting system to be installed in
`
`a building, let alone a residential or commercial building governed by a myriad of
`
`unidentified building and safety codes.
`
`The specification repeatedly states that the claimed system is designed for
`
`use with a junction box (“J-box”) that may be installed in any building or structure,
`
`but the claims do not include any such limitation. The specification does not use
`
`the words “residential,” “commercial,” or “building main power.”
`
`The inventor broadly described the field of the invention, consistently using
`
`permissive language regarding installation in a J-box or a building. (See Ex. 1001,
`
`2
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`1:12-17, 2:33-39, 4:3-4, 4:38-42 (using the words “allows” and “may”)) The
`
`invention is focused on delivering current from the electrical system of the
`
`structure in which the lighting system is installed. The electrical system is not
`
`limited to building main power, which the DMF believes, in the face of the prior
`
`art, should only be high voltage systems.
`
`DMF recites passages from the specification that mention building and
`
`safety codes including a UL two-hour fire-rating. (Response, 8-9) However, this
`
`rating is based on the J-box, not the recessed lighting system. (Ex. 1038, 54:10-14)
`
`DMF also highlights passages from the specification that discuss the size of
`
`the casting. (Response, 7-9) The recessed lighting system’s ability to fit within a
`
`J-box is a function of the lighting system’s size; it is not dependent on whether the
`
`system requires a J-box that receives building main power.
`
`Moreover, under the doctrine of claim differentiation, there is a presumption
`
`that claim 1 (and many of its dependents) do not require installation of the recessed
`
`lighting system in a building. SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336
`
`F.3d 1298, 1302 (Fed. Cir. 2003). Claims 10, 16, and 22 specifically recite a
`
`building, although claim 22 does not recite a standard junction box.
`
`DMF also relies on statements made in a Supplemental Amendment
`
`describing how the lighting system may be recessed within a J-box located in a
`
`“built environment.” (Response, 1-16) At most, the prosecution history confirms
`
`3
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`that built environments, including residential and commercial buildings, are one
`
`form of structure in which the claimed lighting system may be installed.
`
`Thus, the claims, specification and file history demonstrate that the
`
`invention may be used with any building or structure having electrical power and is
`
`not limited to use in a residential or commercial building having building main
`
`power. (Ex. 1002, ¶27)
`
`DMF offers no explanation as to what would qualify as building main
`
`power. If DC, DMF’s expert Mr. James Benya (“Benya”) vaguely asserts that it
`
`must be “high” voltage DC, but he cannot identify the dividing line between high
`
`and low DC despite being asked at least seven times. (Ex. 1038, 106:8-19; 107:4-
`
`10; 108:6-14; 108:25-109:7; 109:24-110:14; 110:16-111:4; 111:15-20)
`
`The prior art confirms the use of DC power in buildings and structures. (Ex.
`
`1009, 15:4-5 (“other building power sources can include batteries run at various
`
`voltages such as 12VDC”))
`
`2.
`
`“Standard Junction Box” is Not Limited to One that
`Connects to Building Main Power.
`
`DMF continues to argue “standard junction box” should be limited to one
`
`used with “building main power.” None of the claims require a standard J-box,
`
`and most do not require the claimed system be used in a building. The patent
`
`broadly defines “junction box.” (Ex. 1001, 3:12-16) The specification simply
`
`4
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`refers to an electrical system within a building or structure, not to building mains
`
`voltage.
`
`The focus should be on the claims – none of which require compliance with
`
`codes. Whether a J-box may have a fire rating, meet building and safety codes, or
`
`be used in a residential or commercial building, has no bearing on the proper
`
`construction of “standard junction box.” Even assuming that DMF is correct that
`
`the lighting system may be installed in a J-box in a residential or commercial
`
`building in a manner that complies with all codes, this is simply an advantage of
`
`the invention. DMF fails to point to anything in the specification or file history
`
`that requires this “advantage” to limit the claims.
`
`Finally, DMF mischaracterizes Dr. Bretschneider’s testimony. (Response
`
`37) He did not agree that J-boxes were not required for low voltage DC. He said it
`
`depended on the installation, and he provided several examples of where J-boxes
`
`were required in low voltage DC applications. (Ex. 2047, 118:8 –18; 119:16-
`
`120:13; 124:15-125:8) He did not say it was important to be familiar with building
`
`and safety codes to understand the invention – he said it was important to be
`
`familiar with UL safety standards for designing lighting products. (Ex. 2047, 28:8-
`
`29:1)
`
`5
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`The Claimed Driver is Not Limited to One Receiving Only
`Building Main Power.
`
`3.
`
`The Petition demonstrated the proper construction of “driver” is based on the
`
`claim language and is fully supported by the specification. The Board found no
`
`persuasive reason to adopt DMF’s narrow construction of driver to receiving only
`
`“building main power.” (Paper 20, 21) DMF continues to fail to address the
`
`inventor’s unambiguous statement that “[t]he driver 4 may be any type of power
`
`supply…” (Ex. 1001, 4:21-27), asserting misleadingly that Dr. Bretschneider
`
`agreed that this passage refers to the output of the driver, whereas DMF failed to
`
`ask him whether it also governed the input. (Ex. 2047, 127:20 – 128:10; see also,
`
`Ex. 1002, ¶98 and Ex. 1038, 97:21-98:3) (Benya agreeing that this passage is how
`
`the patent defines driver). Benya agrees that power supplies can receive AC or DC
`
`and deliver AC or DC, and that this passage does not limit the type of power
`
`received by the driver, which could be DC. (Ex. 1038, 104:5-21)
`
`DMF addresses two passages from the patent to allegedly support its
`
`proposal that “driver” must be limited to “building main power.” DMF points to
`
`the one embodiment in which the claimed lighting system is installed in a building
`
`or structure. (Response 40) However, not all of the claims require the lighting
`
`system to be installed in a building. (Ex. 1038, 61:11-14; 82:7-83:9)
`
`DMF also points to a single passage in the prosecution history that “building
`
`wiring carrying the AC “mains” voltage may be coupled to the driver.” (Ex. 2044
`
`6
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`at 1056 (emphasis added) This describes one embodiment in which the claimed
`
`lighting system may be installed in a building having AC mains and does not
`
`otherwise limit the broad language of the claims and specification.
`
`Where desired, DMF knew how to draft claims that were limited to
`
`receiving only current from AC mains in its continuation patent. (Ex. 1042, 7:49-
`
`8:33)
`
`The specification clearly states the driver may be any type of power supply,
`
`including AC or DC building main power, and lower voltage DC power provided
`
`by, e.g., batteries located in the structure where the lighting system is installed.
`
`There is no reason why this could not be satisfied by a yacht, which clearly is a
`
`structure or a “built environment.” Even Benya contends that installing
`
`7
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`Petitioner’s ELL module in a J-box in a yacht would infringe the patent. (Ex.
`
`1038, 49:12-16)
`
`B.
`
`The Imtra 2011 Brochure Anticipates all Challenged Claims.
`
`DMF focuses solely on Dr. Bretschneider’s declaration and ignores the
`
`Petition, which includes all of what DMF claims is missing. The Petition clearly
`
`establishes that Imtra 2011 anticipates the claims challenged in Ground 1.2
`
`1.
`
`The Imtra 2011 Brochure Must be Read as a Whole.
`
`DMF improperly treats Imtra 2011 as not one, but many prior art references,
`
`treating each product family as dismembered from the remainder of the document.
`
`(Response 28, 29; Ex. 1038, 118:20:119:14)
`
`Imtra 2011 was published and publicly disseminated as one product catalog.
`
`(Ex. 1008, ¶¶ 4-19) A POSITA would find it on the Imtra website as a single PDF.
`
`(Id. at ¶17; Petition 28)) Upon instruction from DMF’s counsel, Benya did not
`
`treat Imtra 2011 as a whole or review it in its entirety. (Ex. 1038, 119:15-20,
`
`120:12-16). Accordingly, Benya’s opinions regarding anticipation are completely
`
`unreliable.
`
`DMF claims the “Anatomy of a PowerLED” diagram relates only to the
`
`Ventura model (Response 29), yet Benya acknowledges that it describes all LED
`
`downlights in the catalog. (Ex. 1038, 120:18-124:19) There is no question that
`
`2 Pursuant to footnote 1 of the Petition, Petitioner files Ex. 1040 and 1041.
`
`8
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`“Imtra 2011 provides details on the anatomy of an Imtra PowerLED that is used in
`
`the various LED downlights depicted in the catalog.” (Petition 26)
`
`The Petition does not create a disassembled list of limitations. The Petition
`
`identifies portions of Imtra 2011 that contain information regarding the general
`
`properties of Imtra LEDs and the specific products, and demonstrates how Imtra
`
`2011 anticipates the challenged claims. (Petition 26-46)
`
`The Petition does not mix-and-match features of different products, and
`
`DMF proffers no evidence that the description of certain properties is expressly
`
`limited to the specific products on a page. The Petition supports its anticipation
`
`argument with citations to Imtra 2011 that discuss the LEDs generally, which
`
`apply to all LED downlights in the catalog, as well as with information regarding
`
`specific products.
`
`DMF also ignores relevant passages from Net MoneyIN, which explain that
`
`an anticipation analysis is not limited to a single example in the reference. Net
`
`MoneyIn, Inc. v. VeriSign, Inc. 545 F.3d 1359, 1369, n.5 (Fed. Cir. 2008). This
`
`“unremarkable proposition” means “that courts are not constrained to proceed
`
`example-by-example when reviewing an allegedly anticipating prior art reference.
`
`Rather, the court must, while looking at the reference as a whole, conclude whether
`
`or not that reference discloses all elements of the claimed invention arranged as in
`
`the claim.” Id. DMF ignores this principle, instructing its expert to look at Imtra
`
`9
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`2011 as multiple discrete references. Benya followed this instruction, considering
`
`each family separately. (Ex. 1038, 119:8-20) Consistent with Net MoneyIN, the
`
`Petition and Dr. Bretschneider look at Imtra 2011 as a whole and explain,
`
`limitation-by-limitation, claim-by-claim, how the reference shows all elements
`
`“arranged as in the claim.” (Petition 26-46) Even if DMF’s view of the law was
`
`correct, the Hatteras product discloses every limitation. (Id.)
`
`2.
`
`Imtra 2011 Discloses the “Driver” Limitation.
`
`The Anatomy of a PowerLED diagram is not limited to the Ventura product
`
`(see supra). Both experts agree. (See e.g., Ex. 1002, ¶¶ 135, 157, 160, 190; Ex.
`
`1038, 122:7-124:19) Imtra’s corporate representative agrees. (Ex. 2089, 47:14-
`
`48:2) The Board agrees. (Paper 20, 23 and Paper 27, 10-11)
`
`The Petition explains how Imtra 2011 discloses a driver under either
`
`construction. (Petition 29, 30 (limitations [B] and [C])) The Petition discusses the
`
`Sardinia product having “integrated AC to DC drive electronics” that “connect
`
`directly to your 120VAC power supply” and “an 18 awg Triplex cable tail for
`
`direct hook-up to an AC J-Box.” (Petition 29, 30; Ex. 1005, 6, 7) Benya agrees
`
`that Imtra 2011 discloses an LED downlight having a driver that accepts AC
`
`power. (Ex. 1038, 143:19-144:13) He also agrees that large yachts often use 120V
`
`power, which can power the type of downlights described in Imtra 2011. (Ex.
`
`1038, 144:24-146:2)
`
`10
`
`
`
`IPR2019-01094
`U.S. Patent No. 9,964,266
`Imtra 2011 Discloses the “Plurality of Elements”
`Limitation.
`
`3.
`
`Imtra 2011 discloses that the lighting devices may include mounting holes
`
`on the housing that receive screws to fasten the light to a surface. (Petition 35)
`
`DMF generally does not dispute this, but disputes whether the holes align with a J-
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`box. (Response 50-51).
`
`Benya agrees that because Imtra 2011 discloses screw holes, at least one of
`
`those holes can be aligned with any tab of any J-box and that results in the casting
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`being installed in a J-box. (Petition 35-36; Ex. 1038, 130:16-131:8)
`
`Benya agrees that the Sardinia product has a driver that accepts AC power
`
`and, in opining that Imtra 2011 discloses the plurality of elements limitation, Dr.
`
`Bretschneider points to the mounting flexibility of the Sardinia product (Ex. 1038,
`
`143:19-144:13; Ex. 1002, ¶143). Thus, Sardinia discloses a driver that accepts AC
`
`power and has flexible mounting, which would include holes corresponding to a
`
`standard J-box.
`
`Dr. Bretschneider discusses that there is a “long history” of mounting
`
`lighting fixtures to the tabs on a J-box and that a POSITA could easily select a J-
`
`box having tabs that align with the Imtra mounting holes from the large number of
`
`commercially available J-boxes or modify the hole locations to match the
`
`attachment points on the J-box. (Petition 35; Ex. 1002, ¶¶143-145) DMF argues
`
`that because low voltage devices do not require a J-box, a POSITA would not
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`11
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`design screw holes to align with a J-box. This argument misses the mark. J-boxes
`
`are well known and provide a convenient mounting surface. (Ex. 1002, ¶¶117-
`
`118) J-boxes are also known to be used on boats, as shown in Imtra 2011 with
`
`regard to the AC Sardinia product. (Ex. 1005, 6)
`
`DMF argues that the products shown in Imtra 2011 were not designed to
`
`mate with a J-box and were designed to mount directly to a ceiling. (Response 29)
`
`Instead of relying on Imtra 2011 for these arguments, DMF relies on testimony of
`
`two Imtra employees, neither of which meets either party’s definition of a
`
`POSITA. Imtra 2011 merely states that using the mounting holes in the fixture’s
`
`main housing, the “lights can be easily fixed to the mounting surface.” (Ex. 1005,
`
`10)
`
`C.
`
`Imtra 2007 Fills in Any Missing Gaps in the Challenged
`Dependent Claims.
`
`1.
`
`Patent Owner Does Not Understand Petitioner’s Proposed
`Combination of Imtra 2011 and 2007.
`
`DMF advances the same arguments regarding the combination of Imtra
`
`references that the Board has twice rejected. (Paper 27, 11-12 and Paper 29, 29)
`
`Imtra 2011 and 2007 are two catalogs from the same manufacturer for the same
`
`products for different model years that disclose aspects of the products in varying
`
`detail. The Petition does not rely only on Imtra 2007 for the disclosure of specific
`
`dimensions that are then used to modify Imtra 2011. (Response 52; Ex. 2090,
`
`12
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`¶316) The Petition relies on Imtra 2011 as anticipating certain claims (Ground 1)
`
`and relies on Imtra 2007 for showing additional details about those products that
`
`confirm they include any allegedly missing limitations. The Petition is clear –2007
`
`does not modify 2011–the combination is additive and complementary. (Petition
`
`47-49)
`
`2.
`
`DMF Fails to Undermine the Motivation to Combine
`Rationale Stated in the Petition.
`
`The Petition explains “why” and “how” a POSITA would combine the
`
`teachings of the two references. The “why” is because it would allow a POSITA
`
`to find additional information about the same products and better understand the
`
`technology involved in the products. (Petition 49; Ex. 1002, ¶102) The “how” is
`
`that the references are combinable without modification because they describe the
`
`same products –just at different points in time. (Petition 47-49; Ex. 1008, ¶¶11,
`
`20, 29) The catalogs illustrate the same products over a five-year span. A
`
`POSITA would understand how to find both references to learn details regarding
`
`the products and their features. A POSITA would easily obtain the catalogs or
`
`locate them on Imtra’s website. (Petition, p. 5, 6, 49) (citing Ex. 1002, ¶102 and
`
`Ex. 8, ¶¶13-17, 22-26)
`
`Imtra 2011 provides a view of an Imtra PowerLED device. (Petition 47-49;
`
`Ex. 1005, 5) A POSITA would want to see additional details of this “anatomy”
`
`and would be motivated to look at another catalog featuring the same product, such
`
`13
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`as Imtra 2007, which provides a cut-away view of the same PowerLED device.
`
`(Petition 47-48)
`
`(Imtra 2011 at 5; Imtra 2007 at 8) The combination provides a POSITA with
`
`different images of the same models of Imtra’s PowerLED devices and additional
`
`information, such as confirmation of the existence and/or location of certain
`
`components.
`
`3.
`
`Imtra 2007 Discloses the “Plurality of Elements.”
`
`Imtra 2007 provides further disclosure of the “plurality of elements” in
`
`relation to at least limitations [H], and Claims 9 and 19. (Petition 51-52, 56, 60)
`
`Imtra 2007 discloses mounting holes (Ex. 1006, 8, see below) and that it would be
`
`an obvious design choice to align these screw holes with tabs of a J-box. (Petition
`
`51-52, 56-57, 60; Ex. 1002, ¶¶118, 144, 177, 197-198) Moreover, Benya concedes
`
`that Imtra 2007 discloses a Portland PowerLED having a flange with screw holes
`
`14
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`(circled in green below) and has the icon (circled in red) indicating screw holes.
`
`(Ex. 1038, 221:22-222:1; see Ex. 1006, 3 (legend showing
`
`)
`
`Benya admits that it is reasonable to understand Imtra 2007 to disclose that the
`
`Hatteras PowerLED product has a casting with a flange with screw holes. (Ex.
`
`1038, 223:17-225:1)
`
`15
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`Therefore, it is undisputed that Imtra 2007 discloses the “plurality of elements”
`
`limitation.
`
`D.
`
`The Teachings of Gifford May Be Combined with Imtra to Meet
`the “Plurality of Elements” Limitation.
`
`1.
`
`Patent Owner Continues to Misrepresent Petitioner’s
`Proposed Combination.
`
`The Petition relies on Gifford for showing an LED system having a housing
`
`with an integral flange with screw holes that align with a J-box, not for employing
`
`an unnecessary safety apparatus. (Petition 64) Benya’s opinions regarding this
`
`combination are unreliable because he believes the combination involves attaching
`
`the recessed LED downlight disclosed in Imtra 2011 to the adapter apparatus
`
`shown in Gifford. (Ex. 1038, 158:18-160:8; 160:10-15)
`
`DMF asserts that Petitioner is not applying Gifford to a number of claims,
`
`despite the fact that the Petition devotes an entire sub-section showing how Gifford
`
`may be combined with Imtra 2011 to show the “plurality of elements” limitation of
`
`claims 1, 19, 21, 25, and 26. (Petition 58, 68-70)
`
`Further, DMF argues that Ground 3 lacks clarity – again, relying only on
`
`reading Dr. Bretschneider’s declaration. Sections C.3-C.7 of the Petition clearly
`
`lay out the combination of Imtra and Gifford as applied to all limitations. (Petition
`
`68-73)
`
`16
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`2.
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`Gifford Discloses an LED System That Includes a Housing
`With a Flange Having a Plurality of Elements Aligned with
`Tabs of a Standard J-Box.
`
`There is no question that Gifford discloses the use of a standard J-box
`
`having integral tabs that may be used to attach a lighting device. (Petition 69-70;
`
`Ex. 1007, Fig. 1; Ex. 1038, 162:24-163-5) Gifford’s housing has a flange with
`
`screw holes that align with the tabs. (Petition 69-70; Ex. 1007, Fig. 1; Ex. 1038,
`
`150:6-10)
`
`The LED recessed downlights in Imtra 2011 have a flange with screw holes.
`
`A POSITA would have understood that modifying the flange with screw holes that
`
`align with tabs of a J-box as taught by Gifford would involve simply modifying the
`
`prior art using well-known methods to yield predictable results. (Ex. 1002, ¶¶ 143-
`
`148)
`
`3.
`
`The Petition and Dr. Bretschneider Provide Substantial
`Reasons to Combine the Teachings of Gifford with Imtra.
`
`DMF presents two reasons why a POSITA would not be motivated to
`
`modify Imtra using the teachings of Gifford. First, DMF argues there would be no
`
`motivation to modify Imtra to have screw holes that align with a J-box because the
`
`Imtra products do not need a J-box and were designed to mount only to a ceiling.
`
`(Response 29, 55) This argument is not based on Imtra 2011, but on the testimony
`
`of two Imtra employees who are not POSITAs. Imtra 2011 merely states that the
`
`“lights can be easily fixed to the mounting surface.” (Ex. 1005, 10) Although a J-
`
`17
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`IPR2019-01094
`U.S. Patent No. 9,964,266
`box may not be required to install the Imtra LED downlights, a mounting surface is
`
`required because mounting a lighting system requires a rigid point of reference,
`
`which is commonly provided by a J-box. (Petition 45, 70, 76, 79; Ex. 1002, ¶143)
`
`A POSITA would be motivated to seek ways to mount an Imtra product
`
`having a housing having a flange with screw holes to a J-box. (Ex. 1005, 6, 10
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