`
`
`
`VITEC PRODUCTION SOLUTIONS, INC.
`VITEC PRODUCTION SOLUTIONS,INC.
`EXHIBIT 1003
`EXHIBIT 1003
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`
`VITEC PRODUCTION SOLUTIONS, INC.
`Petitioner,
`
`v.
`
`
`ROTOLIGHT LIMITED
`Patent Owner.
`
`
`__________________________
`
`Case: To Be Assigned
`U.S. Patent No. 10,197,258
`
`
`DECLARATION OF FRED HOLMES
`
`
`
`
`
`
`1 of 52
`
`
`
`
`
`I, Fred Holmes, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`I have been retained by Vitec Production Solutions (“Petitioner” or
`
`“Vitec”) to provide technical analysis and opinions relating to U.S. Patent No.
`
`10,197,258 (“the ’258 Patent”) in this proceeding.
`
`2.
`
`I am currently working as an electrical engineering consultant,
`
`specializing in consulting for companies working on LED light fixtures.
`
`3.
`
`Prior to this role, I was the Co-Founder of Sportsbeams Lighting, Inc.
`
`I held this position until 2017. Sportsbeams’ flagship product is its 1500 Watt LED
`
`outdoor sports lighter which delivers 171,675 lumens. The product line also
`
`includes a 600 Watt LED fixture, 800 Watt LED fixture and a control system
`
`providing on/off control, dimming and special effects. Every fixture is controllable
`
`through an Ethernet interface or through industry standard DMX-512. Sportsbeams
`
`fixtures provided field lighting for Superbowl LV.
`
`4.
`
`Prior to Sportsbeams, I served as In-house Counsel and Software
`
`Design Engineer at Litepanels, Inc. (from 2005–2013). In 2005 Litepanels, Inc.
`
`produced the only LED based lighting product built specifically for television and
`
`movie production. In 2008 Litepanels negotiated an asset purchase agreement with
`
`Vitec Group, plc, a UK publicly traded company. The acquisition resulted in an
`
`initial payment of $14.5 million and potential additional earn-out of $50 million
`
`2
`
`2 of 52
`
`
`
`
`
`over a 40-month period. Through continuous improvement in technology and a
`
`careful IP strategy, the company maintained a world-wide market share of
`
`approximately 85%. Post-acquisition, I was appointed as IP counsel for the
`
`Videocom Division of the Vitec Group, responsible for intellectual property over
`
`multiple brands from multiple business units located world-wide. In my capacity as
`
`Software Design Engineer, I developed a line of LED-based lighting products
`
`aimed at television and motion picture production with the help of four other
`
`lighting professions.
`
`5.
`
`From 2004–2005, I was the Director of Sensor Software Development
`
`at ShotSpotter, Inc. While at ShotSpotter, I patented a wireless gunshot detection
`
`sensor as part of a gunshot location system. I also developed a gunshot location
`
`system aimed at municipal and military clients based on a rapidly deployable, self-
`
`surveying, acoustic sensor.
`
`6.
`
`From 1999–2004, I worked as an Associate Patent Attorney at Fellers,
`
`Snider, Blankenship, Bailey, & Tippens, P.C. In my role as Associate Patent
`
`Attorney, I was responsible for prosecuting patent applications on behalf of clients
`
`and I assisted the firm in the representation of clients in patent litigation and other
`
`related matters.
`
`7.
`
`From 1996–1998 I worked as the Director of Engineering and In-
`
`house Counsel at Bed-Check Corporation. In my roles at Bed-Check Corporation, I
`
`
`
`3
`
`3 of 52
`
`
`
`
`
`was responsible for resolving stale issues with contract manufacturers, updating
`
`technology in the bed-patient monitor product line, obtaining meaningful patent
`
`protection for updated systems, identifying process changes for manufacturing the
`
`patient sensor with a potential to reduce the cost of the sensor by 85%, and
`
`implementing quality systems that reduced warranty repairs from nearly 30% to
`
`substantially less than 1% of electronic monitors produced.
`
`8.
`
`From 1993–2005, I worked for Fisher Production Inc. Fisher
`
`specializes in leasing large-scale lighting systems. While at Fisher, I was involved
`
`in the design of a soft box controller with lighting effects capabilities for 40,000
`
`Watt and 96,000 Watt soft boxes.
`
`9.
`
`From 1984–1993, I held multiple positions at StairMaster Exercise
`
`Systems, which included Manager of Product Development, Senior Electronic
`
`Design Engineer, and Independent Contractor. During my time at StairMaster, I
`
`was responsible for designing electronic systems and authoring embedded software
`
`for the StairMaster 6000 ergometer, the StairMaster 4000 PT, the Graitron assisted
`
`chin and dip machine, and the Gauntlet Stepmill. These products generated
`
`approximately $175 million in revenue during my tenure, exceeding $50 million
`
`dollars per year in revenue prior to my departure to focus on law school. I was also
`
`responsible for supervising the product development engineering staff,
`
`departmental secretaries, technicians, and model shop personnel. Lastly, I was a
`
`
`
`4
`
`4 of 52
`
`
`
`
`
`liaison with counsel for patent prosecution, product liability litigation, and patent
`
`litigation.
`
`10. From 1981–1986 I was a Senior Electronic Design Engineer at
`
`Flightsafety International. In my role as Senior Electronic Design Engineer, I was
`
`responsible for the design of various electronic systems for flight simulators. My
`
`specialties included environmental sound effects and processor-based solutions for
`
`special projects.
`
`11. From 1979–1981, I was a Maintainability Engineer at Texas
`
`Instruments. In my role as Maintainability Engineer, I was responsible for
`
`determining the testability of the HARM Missile (AGM-88A) and related ground
`
`support equipment. I also participated in the design of ground support equipment
`
`for the missile and its associated avionics.
`
`12.
`
`I received a Bachelor of Science degree in Electrical Engineering
`
`from the University of Oklahoma in 1979. I received a Juris Doctorate from the
`
`University of Tulsa College of Law in 1995.
`
`13. Through my education, background, and work experience, I have
`
`developed a thorough understanding of lighting systems and lighting effect
`
`simulators, as well as their related control systems. Based on my education,
`
`training, knowledge, and professional experience, I am fully qualified to testify
`
`regarding the subject matter described and claimed in the ’258 Patent.
`
`
`
`5
`
`5 of 52
`
`
`
`
`
`14. My resume is filed concurrently with the above-captioned Petition as
`
`Exhibit 1004.
`
`II. MATERIALS CONSIDERED
`
`15.
`
`I have been asked to analyze Claims 1–22 of the ’258 Patent (Claims
`
`1–22 are also referred to as the “challenged claims”).
`
`16.
`
`In forming my opinions expressed in this Declaration, I have reviewed
`
`and considered the documents and materials identified in Appendix A to this
`
`Declaration.
`
`17.
`
`I have further relied on my education, skill, training, and experience in
`
`the field of electrical engineering in forming my opinions. I have also considered
`
`the viewpoint of a person of ordinary skill in the art at the time of the effective
`
`filing date of the ’258 Patent (“POSA”).
`
`18.
`
`I reserve the right to supplement my opinions in this Declaration to
`
`address any new information obtained in the course of this proceeding, or based on
`
`any new positions taken by the Patent Owner Rotolight Limited (“Patent Owner”
`
`or “Rotolight”).
`
`III. COMPENSATION
`
`19. The charges for my services in this matter are $200 per hour. My
`
`compensation is not dependent on the outcome of this proceeding and does not
`
`affect the substance of my statements and opinions in this Declaration.
`
`
`
`6
`
`6 of 52
`
`
`
`
`
`20. As far as I am aware, I have no financial interest in the Petitioner,
`
`Patent Owner, or the ’258 Patent. I also have no other conflicts of interest relating
`
`to the Petitioner, Patent Owner, or the ’258 Patent.
`
`IV. SUMMARY OF MY OPINIONS
`
`21.
`
`I have been asked by counsel for Petitioner to provide my opinions
`
`regarding whether or not the subject matter described in the Challenged Claims
`
`would have been obvious to a POSA in light of the prior art.
`
`22. Based on my review of the ’258 Patent, the file history of the ’258
`
`Patent, and the documents identified in Appendix A, and relying on my education,
`
`skill, experience, common sense, and expertise in the field of electrical
`
`engineering, it is my opinion that the Challenged Claims would have been obvious
`
`to a POSA at the time the invention was made. The bases for my opinions are
`
`detailed throughout this Declaration.
`
`V.
`
`LEGAL PRINCIPLES
`
`23. Petitioner’s counsel has provided me certain legal principles that I
`
`have applied in this proceeding. My analysis and opinions were developed based
`
`on the following legal principles.
`
`24.
`
`I understand that the ’258 Patent was filed on December 21, 2017, and
`
`issued on February 5, 2019. I also understand that the ’258 Patent is a continuation
`
`of U.S. Application No. 15/481,460 (subsequently granted as U.S. Patent No.
`
`
`
`7
`
`7 of 52
`
`
`
`
`
`10,845,044) and claims priority to U.S. Provisional No. 62/319,809, filed on April
`
`8, 2016. For purposes of this Declaration, I have assumed that April 8, 2016 is the
`
`earliest effective filing date for the ’258 Patent.
`
`25.
`
`I understand that a patent claim is invalid as obvious under 35 U.S.C.
`
`§ 103 if the differences between the claimed invention and the prior art are such
`
`that the claimed invention as a whole would have been obvious to a person having
`
`ordinary skill in the art at the time the invention was made. I further understand
`
`that a claim may be found obvious in view of a single prior art reference or from a
`
`combination of two or more prior art references. I understand that an invention is
`
`obvious if a person of ordinary skill in the art would have had a reason to make the
`
`invention and a reasonable expectation of success in so doing.
`
`26.
`
`I have been informed that when relying on a combination of prior art
`
`references to establish obviousness, it is necessary to show: (1) that the claim
`
`elements were known in the prior art; and (2) that a skilled artisan would have been
`
`motivated to combine these known elements.
`
`27. To qualify as prior art, a reference must qualify as “analogous art.” A
`
`reference is considered analogous if it is from the same field of endeavor or is
`
`reasonably pertinent to the particular problem with which the inventor is involved.
`
`A reference is reasonably pertinent if it, as a result of its subject matter, logically
`
`
`
`8
`
`8 of 52
`
`
`
`
`
`would have commended itself to an inventor’s attention in considering the
`
`problem.
`
`28.
`
`I understand that common sense and common knowledge can be
`
`considered in determining whether it would have been obvious to modify a prior
`
`art reference if supported by evidence and a reasoned explanation and a person of
`
`ordinary skill in the art would have been motivated to make such a modification.
`
`29.
`
`I further understand that there are certain secondary considerations
`
`that may support or rebut the obviousness of a claim. I understand that such
`
`secondary considerations include: (i) commercial success of the patented
`
`invention, (ii) skepticism of those having ordinary skill in the art at the time of
`
`invention, (iii) unexpected results of the invention, (iv) any long-felt but unsolved
`
`need in the art that was satisfied by the alleged invention, (v) the failure of others
`
`to make the alleged invention, (vi) praise of the alleged invention by those having
`
`ordinary skill in the art, and (vii) copying of the alleged invention by others in the
`
`field.
`
`30.
`
`I have been informed that there must be a nexus between any such
`
`secondary consideration and the alleged invention.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART AS OF THE
`EFFECTIVE FILING DATE OF THE ’258 PATENT
`
`31. The ’258 Patent is directed to a “controller” controlling a lighting
`
`system to produce user customizable lighting effects. (Exhibit 1001, Abstract).
`
`
`
`9
`
`9 of 52
`
`
`
`
`
`32.
`
`It is my opinion that a person of ordinary skill in the art relevant to the
`
`’258 Patent at the time of the alleged invention would have had a Bachelor of
`
`Science degree in electrical engineering, or a closely related field, along with two
`
`to five years of experience in the design of entertainment lighting systems,
`
`controls, and effects.
`
`VII.
`
`
`
`THE ’258 PATENT
`
`A.
`
`Scope And Content Of The Prior Art Before The ’258 Patent
`
`33. The concept of using a lighting device and a controller to create
`
`lighting effects dates back to at least the 1990s, when “flicker box” products were
`
`commercialized by manufacturers such as VariLite. The earliest flicker box
`
`designs included 110-volt electrical outlet connectors; a lighting fixture plugged
`
`into the outlet of the flicker box would flicker at random. Subsequent designs
`
`added compatibility with the DMX512 photographic communication protocol,
`
`which allowed for simultaneous control of multiple lighting fixtures and permitted
`
`greater control of lighting fixture outputs. These designs also made it possible to
`
`design effects that could be run on a range of DMX512 compatible lighting
`
`fixtures.
`
`34. Some of the early effect lighting products were dedicated to
`
`generating a single effect such as a lightning strike or a flame. Even in the 1990s,
`
`however, it was possible to develop light fixtures that were pre-programmed with
`
`
`
`10
`
`10 of 52
`
`
`
`
`
`multiple static or dynamic presets (including strobe or other lighting effects) that
`
`could be selected and modified by a user. For instance, in 1993 I worked on a
`
`project for Fisher Productions to design a controller with lighting effects capability
`
`for 40,000 Watt and 96,000 Watt soft boxes. These controllers were repurposed
`
`from early tablet computers that were made for the parcel delivery industry, and
`
`we programmed them with multiple presets that could be selected from a graphical
`
`user interface on the screen of the tablet. The interface would also permit a user to
`
`adjust the brightness and duration of the presets directly on the controller.
`
`35. Before the effective filing date of the ’258 Patent, lighting controller
`
`designs that were capable of providing the claimed functionality were within the
`
`prior art. For instance, U.S. Patent No. 7,874,701 by Pohlert et al. (“Pohlert”)
`
`teaches controller circuit designs with the structural elements claimed by the ’258
`
`Patent (See Ex. 1007, 19:40– 22:51, Figs. 10A, 10B). The controller described in
`
`Pohlert is similar to one that was used in Litepanels’ Sola™ product line; I am
`
`familiar with the Sola™ product line and with the technology described in Pohlert
`
`from my work at Litepanels. While the Sola™ line of products were key lighting
`
`products, in my opinion, the controllers would have been suitable for an effect
`
`lighting product. The principles articulated in Pohlert would have been familiar to
`
`those of skill in the effects lighting arts at the time of the alleged invention. In my
`
`opinion, and for the reasons set forth elsewhere in this declaration, these prior art
`
`
`
`11
`
`11 of 52
`
`
`
`controller designs were capable of providing the functions claimed in the ’258
`
`
`
`Patent.
`
`B.
`
`The Challenged Claims
`
`36. The ’258 Patent has one independent claim (Claim 1) and 21
`
`dependent claims (Claims 2–22). I address the patentability of all 22 claims of the
`
`’258 Patent.
`
`C.
`
`Summary of the Prosecution History of the ‘258 Patent
`
`37.
`
`I understand the ’258 Patent issued on February 5, 2019, from a patent
`
`application filed on December 21, 2017. The ’258 Patent is a continuation of U.S.
`
`Application No. 15/481,460, and claims priority to the U.S. Provisional
`
`Application No. 62/319,809, filed April 8, 2016. Accordingly, for the purposes of
`
`this Declaration, I have assumed that the ’257 Patent is entitled to the earliest
`
`effective filing date of April 8, 2016.
`
`38. During examination, the pending claims were rejected in just a single
`
`office action. The Examiner’s only basis for rejection was under 35 U.S.C. § 112.
`
`The Examiner cited U.S. Patent No. 7,353,021 to Blackwell et al. (“Blackwell”) as
`
`relevant prior art because it “disclose[d] an apparatus and a method for executing a
`
`lighting program to control a plurality of lights comprising a controller for
`
`controlling a lighting device in which a calculating device in the form of [a]
`
`processor calculates time-varying lighting values based on parameters input by a
`
`
`
`12
`
`12 of 52
`
`
`
`
`
`user via [an] interface to generate a lighting effect.” Ex. 1002, March 28, 2018
`
`Office Action, at 9–10.
`
`39. Once Applicant amended the claims to overcome the 35 U.S.C. § 112
`
`rejection, the claims of ’258 Patent were subsequently allowed. More specifically,
`
`in the Notice of Allowance, the Examiner indicated the claims were allowable
`
`because “[t]he prior [art] fails to teach or fairly suggest combination of elements
`
`recited in independent claims 1.” Id., October 24, 2018 Notice of Allowance, at 3.
`
`Critically, however, the Examiner did not address the prior art addressed in my
`
`Declaration.
`
`VIII. CLAIM CONSTRUCTION
`
`40.
`
`It is my understanding that claims in an IPR are generally given their
`
`ordinary and customary meaning, which is the meaning that the term would have
`
`to a person of ordinary skill in the art in question at the time of the invention.
`
`A.
`
`“Cinematic Lighting Special Effect”
`
`41. The ’258 Patent does not include an express definition of the term
`
`“cinematic lighting special effect,” which is used in independent Claim 1, for
`
`instance. However, those of skill in the art will readily appreciate that certain
`
`lighting conditions may create a “flicker” or “strobing” effect when filmed with a
`
`modern cinematic camera which has a “rolling shutter” or directionally scans a
`
`photo sensor at a given “frame rate.” The flicker is caused by a mismatch between
`
`
`
`13
`
`13 of 52
`
`
`
`
`
`the phase and/or duration of a lighting source relative to the shutter of the
`
`cinematic camera. For example, when the duration of light emission from the light
`
`fixture is shorter than the frame rate of the camera the result is a black bar in the
`
`frame, because the light is actually off for part of the time that the frame is
`
`scanned. A common strategy for avoiding this flicker effect, termed “rolling
`
`shutter compensation” in the art, is to set a minimum pulse width for your lighting
`
`fixture that exceeds the frame rate of the camera.
`
`42. With this context in mind, a POSA would understand the term
`
`“cinematic lighting effect” to refer to a lighting special effect that (a) does not
`
`cause a strobing effect when filmed with a rolling shutter camera and/or (b) is
`
`compatible with rolling shutter compensation as described in the specification of
`
`the ’258 Patent: “minimum light pulse width [can] be adjusted to suit the shutter
`
`speed or frame rate of the user’s camera in order to prevent ‘strobing’ due to the
`
`light effect being out of phase/sync with the frame rate of the camera, ensuring that
`
`each frame captured by the camera is fully illuminated.” (Ex. 1001, 4:21-26).
`
`B.
`
`“Effect Simulator”
`
`43. The specification of the ’258 Patent does not include a definition of
`
`the term “effect simulator,” but one of skill in the art would recognize that an
`
`“effect simulator” is a generic term for a software or hardware module for
`
`calculating outputs associated with a lighting effect.
`
`
`
`14
`
`14 of 52
`
`
`
`
`
`IX. PRIOR ART REFERENCES
`
`44.
`
`I have considered the following prior art references in assessing the
`
`patentability of Claims 1–22 of the ’258 Patent.
`
`A. U.S. Patent No. 8,938,468 to Morgan et al. (“Morgan”)
`
`45. Morgan—a U.S. patent issued on January 20, 2015, discloses
`
`“methods and apparatus for facilitating the process of designing, selecting, and/or
`
`customizing lighting effects or lighting shows.” (Ex. 1005, 2:48–51). These
`
`lighting effects and/or lighting shows may be used for, among other things,
`
`“theatrical or other entertainment-based/special effects lighting[.]” (Id., 10:46–52).
`
`To facilitate the design, selection, and/or customization of lighting effects or
`
`lighting shows, for example, Morgan discusses a controller which includes a user
`
`interface. (Id., 8:24–35, 10:13–21, 24:24–27).
`
`46. Morgan teaches that the “controller” includes software that enables a
`
`user to select a lighting effect from one or more predefined lighting effects and
`
`modify a selected lighting effect. (Id., 10:16–20, 26:8–17; see also id., 2:64–3:3,
`
`9:36–57). These lighting effects “may have one or more static and/or dynamic
`
`characteristics, and exemplary dynamic characteristics may relate to one or more
`
`of color, brightness, perceived transition speed, perceived motion, periodicity, and
`
`the like.” (Id., 1:51–55; see also id., 3:66–67, 4:11–15).
`
`
`
`15
`
`15 of 52
`
`
`
`
`
`47. Morgan further teaches that the light sources are controlled to
`
`generate the desired lighting effect based on control signals “(e.g. signals generated
`
`by executing a lighting program, one or more outputs from a user interface,
`
`etc.)[.]” Id., 14:29-39. (emphasis added).
`
`48. Morgan further teaches that these control signals can also be sent to
`
`“one or more lighting unit[s].” (Id., 2:19–22).
`
`B. U.S. Patent 9,532,422 to Hinrichs (“Hinrichs”)
`
`49. Hinrichs—a U.S. patent issued on December 27, 2016, discloses an
`
`illumination device for creating various lighting effects “in connection with live
`
`shows, TV shows, sports events,” and the like. (Ex. 1006, 1:16–20).
`
`50. The lighting effects as taught by Hinrichs are characterized by various
`
`parameters such as “strobe frequenc[ies] [that] may define how fast the different
`
`[light] groups should strobe.” (Id., 9:28–29).
`
`51. The ability to define strobe frequencies in Hinrichs bears special
`
`relevance for cinematic lighting special effects characterized by or compatible with
`
`tuning of lighting strobe frequencies for rolling shutter compensation.
`
`52. Hinrichs also teaches light fixture housing comprising “a main PCB,”
`
`having “switches and [a] display [that] act as a user interface to allow a user to
`
`communicate” with the lighting fixture. (Ex. 1006, 3:63–67). The lighting fixture
`
`
`
`16
`
`16 of 52
`
`
`
`
`
`further includes “LED PCB[s],” which comprise a number of first and second LED
`
`types. (Id., 7:60–67; 8:12–21).
`
`53. The fixture also includes a “controller unit 501 comprising a processor
`
`and a memory” wherein “[t]he processor acts as a controlling means and is adapted
`
`to control the” first and second light sources individually. (Id., 8:62–9:5).
`
`54. Hinrichs also discloses that the illumination device comprises “a
`
`number of predetermined effect functions defining a number of visual effects
`
`which can be activated by a user through an input signal e.g. from a central
`
`controller.” (Id., 5:51–55). For instance, the controller means may be “further
`
`adapted to control the groups of light sources based on an input signal 511
`
`indicative of a number of control parameters” that are, for example, “indicative of
`
`color, intensity, strobe frequency related to the groups of light sources.” (Id.,
`
`9:16–21).
`
`C. U.S. Patent 7,874,701 to Pohlert et al. (“Pohlert”)
`
`55. Pohlert—a U.S. Patent No. 7,874,701 to Pohlert et al. (“Pohlert”) was
`
`filed on February 18, 2008, and issued as a patent on January 25, 2011, discloses
`
`“lighting apparatus or lighting effects system[s] that [are] well suited for use in the
`
`film, commercial, and/or photographic industries, and/or with live stage
`
`performances[.]” (Ex. 1007, 4:8–12). Where these devices and systems may
`
`include LEDs. (Id., 25:49–59).
`
`
`
`17
`
`17 of 52
`
`
`
`
`
`56. Pohlert further teaches that these devices and systems may include
`
`“power controllers” that “provid[e] various lighting effect functions . . . such as,
`
`for example, dimming, strobing, selective activation, pulsation, and so on, or
`
`combinations thereof.” (Id., 9:28–31).
`
`57. The power controller includes (1) a user interface to select and
`
`customize lighting effects, (2) an “effects generator” that generates the selected
`
`effects, and (3) switches that convert the generated effects into power control
`
`signals output to the LEDs. See id., Fig. 10A; see also id., 20:23-51.
`
`58. Pohlert’s disclosure of a controller and effect simulator outputting an
`
`effect is strikingly similar to the disclosure of the ’258 Patent, as illustrated below,
`
`which compares Figure 2 of the ’258 Patent to Figure 10A of Pohlert, with
`
`annotations added:
`
`’258 Patent
`
`Lighting values
`sent to LEDs
`
`Pohlert
`
`Lighting values
`sent to LEDs
`
`Interface
`
`Data signals representing
`desired effects
`
`
`
`Data signals
`representing
`desired effects
`
`Effect
`generator
`
`Interface
`
`
`
`
`
`18
`
`18 of 52
`
`
`
`
`
`X. DETAILED UNPATENTABILITY ANALYSIS
`
`59.
`
`I have been asked to analyze the patentability of Claims 1–22 of the
`
`’258 Patent. Claim 1 is an independent claim. Claims 2–22 depend from Claim 1.
`
`60. The discussion and tables below provide my analysis of how Claims
`
`1–22 of the ’258 Patent are unpatentable over the prior art references discussed
`
`above.
`
`61. When addressing obviousness, I have considered the scope and
`
`content of the prior art and whether any differences between the alleged invention
`
`and the prior art are such that the subject matter, as a whole, would have been
`
`obvious to a person having ordinary skill in the art at the time of the alleged
`
`invention. For purposes of my analysis I assumed that April 8, 2016, was the time
`
`of the alleged invention and the earliest possible filing date of the application that
`
`issued as the ’258 Patent. I have also considered the level of ordinary skill in the
`
`pertinent art at the time of the alleged invention.
`
`A. Ground 1: Claim 1–22 are obvious under 35 U.S.C. § 103 by
`Morgan in view of Hinrichs and Pohlert.
`
`
`
`62.
`
`It is my opinion that the combination of Morgan, Hinrichs, and
`
`Pohlert satisfies each and every element of Claim 1.
`
`i. Motivation to Combine Morgan with Hinrichs and Pohlert
`
`63. The combination of Morgan, Hinrichs, and Pohlert discloses each and
`
`every element of Claim 1 of the ‘258 Patent. Given their respective teachings, a
`
`
`
`19
`
`19 of 52
`
`
`
`
`
`person of ordinary skill in the art would have been motivated to combine the
`
`teachings of these references.
`
`64. A POSA would have considered the teachings of Morgan, Hinrichs,
`
`and Pohlert in tandem since they are analogous art in the same field of endeavor as
`
`the ’258 Patent – namely the field of lighting systems and methods for producing
`
`lighting special effects which utilize a plurality of LEDs to generate different types
`
`of effects and colors.
`
`65. Further, a POSA would have been motivated to combine the teachings
`
`of Hinrichs and Morgan insofar as they disclose related approaches for solving the
`
`problems that one of skill in the art would expect to encounter in the design and
`
`implementation of lighting systems and methods for producing such special
`
`effects.
`
`66. The POSA would also have had a reasonable expectation of
`
`successfully combining the elements of Morgan, Hinrichs and Pohlert with one
`
`another, because those elements comprised “controllers,” “LEDs” and like
`
`elements that were familiar to a POSA at the time of the invention. That is, the
`
`combinations of Morgan, Hinrichs and/or Pohlert proposed herein are
`
`combinations of known techniques and/or substitutions of art-known elements to
`
`yield predictable results.
`
`
`
`
`
`20
`
`20 of 52
`
`
`
`
`
`ii. Claim 1[p]: A lighting system comprising:
`
`67. Morgan and Hinrichs satisfy the preamble of Claim 1.
`
`68. Morgan teaches a “lighting system [that] may include a plurality of
`
`lighting units, and so the input information relates to a number of the lighting units,
`
`respective types of the lighting units, and/or a physical arrangement of the lighting
`
`units in an environment in which the at least one lighting effect is to be generated.”
`
`Ex. 1005, (3:37–44).
`
`69. Hinrichs teaches an “illumination device” that includes “a number of
`
`light sources.” (Ex. 1006, 1:7–9, 3:34–36, 4:59–62, 28:15–18).
`
`iii. Claim 1[a]: a lighting device; and
`
`70. Morgan, Hinrichs, and Pohlert teach lighting systems comprising a
`
`lighting device.
`
`71. Morgan discloses that its subject lighting system “may include a
`
`plurality of lighting units.” (Ex. 1005, 3:37–38). The term “lighting unit” as used
`
`in Morgan refers “to an apparatus including one or more light sources of same or
`
`different types.” (Id., 6:57–59).
`
`72. Hinrichs focuses on “a moving head lighting fixture including a
`
`number of LEDs that generate a light beam,” but its teachings encompass
`
`“illumination devices using any kind of light source such as discharge lamps,
`
`
`
`21
`
`21 of 52
`
`
`
`
`
`OLEDs, plasma sources, halogen sources, fluorescent light sources.” (Ex. 1006,
`
`3:13–19).
`
`73. Further, Pohlert teaches “a lighting effects system comprises an
`
`arrangement of lamp elements on a panel or frame” where the “lamp elements may
`
`be embodied as low power lights such as light emitting diodes (LEDs)” (Ex. 1007,
`
`8:39–42).
`
`iv. Claim 1[b]: a controller adapted to control the lighting device to
`produce a user customisable cinematic lighting special effect
`selected from a range of different user customisable cinematic
`lighting special effects, the controller comprising:
`
`74. Morgan, in view of Hinrichs and Pohlert, satisfies each of the
`
`structural and functional elements required by this clause of Claim 1.
`
`75. First, Morgan teaches a “controller” that produces user customisable
`
`lighting effects. For example, Morgan teaches that “one or more candidate lighting
`
`effects may . . . [be] processed by the central controller” to “control the lighting
`
`system accordingly.” (Ex. 1005, 25:39–51). Wherein the “user may select one or
`
`more of the candidate lighting effects.” (Id., 25:31–39). The “lighting effects” of
`
`Morgan include, without limitation “theatrical or other entertainment-based/special
`
`effects lighting” (Id., 10:46–58).
`
`76. Morgan further discloses that the lighting effects are “user
`
`customisable.” For example, Morgan states that user functionality includes
`
`“changing and/or selecting various pre-programed lighting effects to be generated
`
`
`
`22
`
`22 of 52
`
`
`
`
`
`by the lighting unit [or] changing and/or selecting various parameters of selected
`
`lighting effects” (Id., 14:4–12).
`
`77. Morgan also discloses that the lighting unit may include a controller
`
`“configured to output one or more control signals to drive the light sources” (Id.,
`
`11:22–25, 13:15–21).
`
`78. A POSA would understand the term “theatrical or entertainment-
`
`based/special effects lighting” includes, without limitation, lighting effects used for
`
`videography, broadcasting, cinematography, studio filming, or location filming.
`
`79. More specifically, this term, with respect to cinematography, includes
`
`“cinematic lighting special effects.”
`
`80. Morgan expressly teaches that the frequency of control signals can be
`
`adjusted to avoid the perception of “discrete on-off cycles (commonly referred to
`
`as a ‘flicker effect’).” Ex. 1005, 12:14–28.
`
`81. A POSA would recognize an adjustment tool for reducing “flicker
`
`effect” satisfies the functionality of “rolling shutter compensation” in the field of
`
`cinematography, and, consequently, would understand that the “special effects” of
`
`Morgan satisfies the “cinematic lighting special effects” requirement of Claim 1 of
`
`the ’258 Patent.
`
`82.
`
`Importantly, Hinrichs also includes a parallel teaching of the structural
`
`and functional elements required by Clam 1[b], including a controller adapted to
`
`
`
`23
`
`23 of 52
`
`
`
`
`
`control the lighting device in the form of two groups of “light sources [that] are
`
`mounted on a PCB 207 (printed circuit board) [such that] the two groups of light
`
`sources can be controlled individually for instance by a controller (not shown) as
`
`known in the art of lighting.” (Ex. 1006, 4:62–66).
`
`83. Hinrichs “can further comprise a number of predetermined effect
`
`functions which can be activated by a user through an input signal e.g., from a
`
`central controller as known in the art of entertainment lighting.” (Id., 5:51–55).
`
`The lighting special effect of Hinrichs is “user customizable,” as that term is
`
`properly construed insofar as it is adjustable: “the input signal can also be
`
`indicative of an effect function adjustment parameter whi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
