Trials@uspto.gzov
`§71.272.7822
`
`Paper No. 10
`Filed: December2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ACUITY BRANDSLIGHTING,INC.,
`Petitioner,
`
`V.
`
`LYNK LABS,INC.,
`Patent Owner.
`
`Case IPR2016-01133
`Patent 8,841,855 B2
`
`Before BRYAN F. MOORE, JENNIFER MEYER CHAGNON,and
`JAMES J. MAYBERRY,Administrative Patent Judges.
`
`MAYBERRY,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`§71.272.7822
`
`Paper No. 10
`Filed: December2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ACUITY BRANDSLIGHTING,INC.,
`Petitioner,
`
`V.
`
`LYNK LABS,INC.,
`Patent Owner.
`
`Case IPR2016-01133
`Patent 8,841,855 B2
`
`Before BRYAN F. MOORE, JENNIFER MEYER CHAGNON,and
`JAMES J. MAYBERRY,Administrative Patent Judges.
`
`MAYBERRY,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2016-01133
`Patent 8,841,855 B2
`
`I. INTRODUCTION
`
`Petitioner, Acuity Brands Lighting, Inc. (“Acuity”), filed a Petition
`
`(Paper1, “Pet.”) requesting inter partes review of claims 1-5 of U.S. Patent
`
`No.8,841,855 B2 (Ex. 1001, “the ’855 patent”). Patent Owner, Lynk Labs,
`
`Inc. (“Lynk”), filed a Preliminary Responseto the Petition (Paper 6, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`To institute an inter partes review, we must determinethat the
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`information presented in the Petition shows “a reasonable likelihood that the
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`petitioner would prevail with respectto at least 1 of the claims challengedin
`
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
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`conclude that the information presented in the Petition establishes a
`
`reasonablelikelihood that Acuity will prevail in challenging claims 1-5 of
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`the ’855 patent. Pursuant to 35 U.S.C. § 314, we hereby authorize an inter
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`partes review to beinstituted as to claims 1—5.
`
`Ourfactual findings and conclusionsat this stage of the proceeding
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`are based on the evidentiary record developed thus far. This decision to
`
`institute trial is not a final decision as to patentability of the claims for which
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`inter partes reviewis instituted. Ourfinal decision will be based on the full
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`record developed duringtrial.
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`
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`IPR2016-01133
`Patent 8,841,855 B2
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`A. Related Matters
`
`The ’855 patent is involved in two judicial proceedingsin the District
`Court for the Northern District ofIllinois. Pet. 4; Paper 5, 1.! These cases
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`are styled Lynk Labs, Inc. v. Acuity Brands, Inc., No. 15-cv-04833 (N.D.Il.
`
`2015) and Lynk Labs, Inc. v. Schneider Electric USA, Inc., No. 16-cv-04636
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`(N.D. Ill. 2016) (collectively, “related district court proceedings”). Paper5,
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`L.
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`B. The ’855 Patent
`
`The ’855 patent, titled “LED Circuits and Assemblies,” issued
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`September 23, 2014 from an application filed April 19, 2012. Ex. 1001, at
`
`[54], [45], [22]. The ’855 patent claimspriority to a provisional application
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`filed October 6, 2007 and a non-provisional application filed October6,
`2008. Jd. at [60], [62]. The ’855 patent is directed generally to AC-driven
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`light-emitting diode (LED) circuits and assemblies for building lighting
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`fixtures. Jd. at 1:13-16, 1:21-23. The claimsof the ’855 patent are directed
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`to configurations for these LED assemblies. See id. at 5:10—30.
`
`' The parties are remindedoftheir continuing obligation to update their
`mandatory notices within 21 days of any changeofthe information listed in
`37 C.F.R. § 42.8(b) stated in an earlier paper, including, inter alia, changes
`in related matters. 37 C.F.R. §§ 42.8(a)(3), 42.8(b)(2).
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`3
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`IPR2016-01133
`Patent 8,841,855 B2
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`Figures 6-8, reproduced below,depict configurations of the LEDs of
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`the ’855 patent.
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`FIG. 6
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`Figures 6 and 7 each depict “a schematic top view of an AC-driven
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`LED assembly.” Ex. 1001, 2:60-63. Figure 8 depicts “‘a schematic side
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`view of an AC-driven LED assembly.” Jd. at 2:64-65.
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`IPR2016-01133
`Patent 8,841,855 B2
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`In Figure 6, LED assembly 90 includes four discretely packaged
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`LEDs 84 mounted on substrate 92.2 Ex. 1001, 4:40-43. The individual
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`packages are mounted a distance of 3 millimeters (mm) or less from each
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`other (distance “d1,” depicted in Figure 7) and are arranged with a linear
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`special relationship. Jd. at 4:43-45, 4:49-51. Figure 7 depicts LED
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`packages 84 in LED assembly 100 in a rectilinear spatial arrangement. Id. at
`4:51-54. Each LED package 84 has a width and length of approximately 2.5
`mm or less. Id. at 4:45-48.
`
`Figure 8 illustrates that, when the LED packagesare separated by
`3 mmorless, the light emitted by the LEDsintersect, which purportedly
`reducesor eliminates the flicker effect of an AC-driven LED. Ex. 1001,
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`4:55-57.
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`C. Challenged Claims
`
`The Petition challenges all claims of the ’855 patent—claims 1-S.
`
`Pet. 10. Claim | of the ’855 patent is the sole independent claim andis
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`reproducedbelow.
`
`l.
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`An AC-driven LED assembly comprising:
`
`at least a first and a second LED eachdiscretely packaged, the
`LEDsbeing connected in an AC circuit and each LED package
`being mounted to a substrate at a distance from the other of
`preferably approximately 3 mm orless, and more preferably 2.0
`mm orless.
`
`Ex. 1001, 5:11-16.
`
`* The Specification appears to mistakenly refer to the LED packagesusing
`the reference numeral 82. See Ex. 1001, 4:40—-57. Also, the Specification
`refers to “width d2” and “length d3,” although Figures 6 and 7 depict
`dimensions “d3” and “d4.” Compareid. at 4:45—48, with id. at Figs. 6, 7.
`
`5
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`IPR2016-01133
`Patent 8,841,855 B2
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`D. The Prior Art
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`.
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`Acuity’s asserted grounds of unpatentability for claims 1—5 of
`
`the ’855 patent rely on the following references:
`
`Ex. 1002
`May30, 2006
`US 7,053,560 B1
`Ng
`Ex. 1003
`June 21, 2005
`US 6,909,234 B2
`Chen
`Ex. 1010
`Oct. 25, 2007
`US 2007/0247852 Al
`Wang
`Acuity does not contest that claims 1-3 are entitled to a priority date
`
`of October 6, 2007, whichis the filing date of U.S. Provisional Application
`
`No. 60/997,771, from which the ’855 patent claimspriority. Pet. 9. Acuity
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`contends, however,that claims 4 and 5 are notentitled to this priority date.
`Id. at 9-10. Acuity asserts that claims 4 and 5 are entitled to a priority date
`of October 6, 2008, the filing date of U.S. Application No. 12/287,267, the
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`parent application to the ’855 patent. See id. at 10. Acuity contendsthat
`
`Figures 6 and 7, and the text describing these figures, were addedto the
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`disclosure of the ’267 application, and were notin the provisional
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`application. Jd. Lynk does not address the priority dates of the claimsinits
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`Preliminary Response.
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`Acuity contends, accordingly, that Ng and Chen qualify as priorart to
`
`the ’855 patent under 35 U.S.C. §§ 102(a), 102(b), and Wang qualifies as
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`prior arl lo the °855 patent under 35 U.S.C. §§ 102(e). Pet. 12.
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`3 Wang published from an application filed on April 21, 2006, whichis prior
`to the earliest filing date of the 855 patent. See Pet. 12; Ex. 1010, at [22].
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`6
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`E. Asserted Grounds of Unpatentability
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`Acuity asserts the following grounds of unpatentability for claims 1-5
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`of the ’855 patent.
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`
`
`References|Basis Claims Challenged
`Ng
`§ 102(b
`1, 4, and 5
`
`
`Ng and Wang
`§ 103(a
`
`
`Ng and Chen
`§ 103(a)
`
`
`Ll. ANALYSIS
`
`A. Real Party-in-Interest
`
`1. The Parties’ Contentions.
`
`The statute governing inter partes review proceedingssets forth
`certain requirements for a petition for interpartes review, including that “the
`" petition identif[y] all real parties in interest.” 35 US.C. § 312(a); see also |
`37 C.F.R. § 42.8(b)(1) (providing a requirementto identify real
`
`|
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`parties-in-interest in mandatory notices). In accordance with 35 U.S.C.
`§ 312(a)(2) and 37 C.F.R. § 42.8(b)(1), Acuity identifies itself as the lone
`real party-in-interest. Pet. 4.
`.
`Acuity indicates that it purchased Juno Lighting, LLC and Juno
`
`Manufacturing, LLC (collectively, “Juno”) from Schneider Electric USA,
`
`Inc. (“SE USA”) in December 2015. Pet. 4. Acuity further notes that Juno
`| was merged into Acuity, and is no longer a separate business entity. Id.
`Acuity acknowledgesthat, prior to its purchase of Juno, Juno and SE USA .
`
`participated in initial drafting of a petition for interpartes review ofthe °855
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`patent. Id. Acuity asserts, however,that “[s]ince the purchase of Juno, SE
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`USAhasnot controlled, funded, or participated in the preparation of the
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`present petition.” Id.
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`IPR2016-01133
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`Lynk contends that we should dismiss the Petition for failing to
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`identify all real parties-in-interest. Prelim. Resp. 12. Specifically, Lynk
`
`argues that SE USAis a real party-in-interest and, because the Petition fails
`
`to name SE USA,trial cannotbe instituted. Jd. at 12, 13-14. Lynk argues
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`that SE USAhasbeen accusedofinfringing the 855 patent and, as such,
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`“desires review of the patent.” Jd. at 15 (quoting Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)). Lynk further argues
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`that SE USA’s early participation in preparing a petition for inter partes
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`review confirmsthis desire. Id.
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`Lynk contends that SE USAhassufficient control over the Petition
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`and this proceeding based onits participation in early drafting of the Petition
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`and, as such,is a “party that funds and directs and controls”this inter partes
`
`review. Prelim. Resp. 16 (quoting 77 Fed. Reg. at 48,760). Lynk further
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`arguesthat the earlier draft of the Petition, at a minimum, suggested
`
`asserting certain prior art and, that by handing overthe draft itself, SE USA
`suggested Acuity file this inter partes review. Id. Lynk continues that SE
`
`USA and Acuity filed joint invalidity contentionsin the related district court
`
`proceedings. Jd. (citing Ex. 2003). According to Lynk,this joint filing
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`further demonstrates that SE USA is working with Acuity on the invalidity
`
`theories underlying the Petition and that SE USA “is presumably
`
`contributing funds to develop those theories.” Jd.
`
`Lynk further contendsthat “[i]t is difficult to imagine how SE [USA]
`
`could avoid exerting control [over this proceeding] given that it is SE’s ‘go
`
`to’ counsel that is Counsel of Record”in the proceeding. Prelim. Resp. 16—
`
`17. Lynk notes that this counsel is the same counsel that developed the
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`invalidity contentions for SE USA and Acuity in the related district court
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`Patent 8,841,855 B2
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`proceedings, namely Jenner & Block LLP. Jd. at 17; see also id. at 13
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`(discussing shared counsel). Lynk arguesthat the Board has denied
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`institution in a situation where the petitioner shared counsel with an
`
`unnamedreal party-in-interest. Jd. at 17 (citing RP-X Corp. v. VirnetXInc.,
`Case IPR2014-00171, slip op. at 7 (PTAB June 5, 2014) (Paper 49%) (“RPX
`
`v. VirnetX”).
`
`Lynk continuesthat the “Petition [] relies on an expert declaration
`
`from Dr. Zane, who was presumably hired by SE [USA] whenit was
`
`working on the drafts andis likely working for SE [USA] now because the
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`sametheories in Dr. Zane’s declaration appearin the joint invalidity
`
`contentions.” Jd. Lynk cites the Board’s decision in ZOLL Lifecor Corp.v.
`
`Philips Electronics North America Corp., Case IPR2013-00609 (PTAB Mar.
`
`20, 2014) (Paper 15) (‘ZOLL”), where, according to Lynk, “the Board found
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`a third party wasa [real party-in-interest] based on a numberoffactors
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`including shared counsel, and denied the petition when petitioner could not
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`dispute shared counsel’s input on the IPR.” Id.
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`Lynk also argues that SE USA’s relationship with Acuity, based in
`
`part on Acuity’s purchase of Juno, weighsin favor of finding SE USA to be
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`a real party-in-interest. Prelim. Resp. 18. In support ofthis position, Lynk
`
`points to SE USA being the former corporate parent of Juno and,in thatrole,
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`being intimately involved in the prior businessrelationship between Juno
`
`and Lynk. Jd. Lynk repeats that SE USA and Acuity also are closely related
`
`through the related district court proceedings, where they each are a
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`defendant and they employ the same counsel. Jd. Lynk also repeatsits
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`* Paper 49 has been expunged from IPR2014-00717. A redacted versionis
`in the record of IPR2014-00717 as Paper 57.
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`9
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`IPR2016-01133
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`assertion that SE USAhasa close relationship with the Petitionitself, as it
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`wasinvolvedin early drafting of a petition. Jd. Asto this point, Lynk
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`argues that “a party may not draft a petition, pass it to anotherto file it as
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`their proxy, and then claim it has no interest in or relationship to the ensuing
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`proceedings.” Jd. at 19 (citing RPX v. VirnetX, slip op. at 10).
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`Finally, Lynk contends that if SE USAis not named a real
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`party-in-interest it could “get anotherbite at the apple,” that is, SE USA may
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`have the opportunity to challenge the same claims using the sameinvalidity
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`positions asserted in the Petition in the related district court proceedings.
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`Prelim. Resp. 19. Lynk argues that such a situation would undermine the
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`purpose underlying inter partes review proceedings. Jd. at 20. Further,
`Lynk argues that SE USA should not be allowed to “changeits status” as a
`real party-in-interest merely by handingoff a drafted petition. Id.
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`In summary, Lynk arguesthat, in light of these facts, Acuity has failed
`
`to meet its burden toestablish thatit has identified all real parties-in-interest.
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`Prelim. Resp. 20-21.
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`In its Reply,’ Acuity maintains that SE USA doesnotcontrolthis
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`inter partes review proceeding and has not been involved since Acuity
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`purchased Juno. Reply 2. Acuity argues that Lynk relies on speculation
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`rather than providing any actual evidenceof control of this proceeding by
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`SE USA. Jd. at 2-3. For example, Acuity rebuts Lynk’s assertion that SE
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`USAhired Dr. Zane, providing evidence that it was Acuity that, in fact,
`
`hired Dr. Zane. Id. at 3 (citing Ex. 1029 (Dr. Zane’s engagementletter,
`
`> The Board authorized Acuity to file a reply to Patent Owner’s Preliminary
`Response positions regarding the issue of real party-in-interest. Paper 7
`(“Reply”).
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`10
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`IPR2016-01133
`Patent 8,841,855 B2
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`dated January 19, 2016, which does not identify SE USAas a party to the
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`engagement)). Further, Acuity asserts that “[t]he evidence is undisputed that
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`[SE USA] hadnoinput on the decisionto file the Petition after the sale [of
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`Juno], nor will [SE USA] have any input on this proceeding going forward.”
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`Id.
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`Acuity also has submitted the Declaration of Lisa M. Schoedel, an
`
`attorney at Jenner & Block LLP. See Ex. 1030. Ms. Schoedel declares that
`
`she “wasa principal draftsperson for” the instant Petition. Ex. 1030 { 2.
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`Ms. Schoedelfurther declares that since the sale of Juno to Acuity, “[a]ll of
`
`Jenner & Block’s time .
`
`.
`
`. billed for working on the [Petition] .
`
`.
`
`. was billed
`
`to Acuity,” “Acuity has controlled, directed and been responsible for paying
`
`for Jenner & Block’s work on the [Petition],” and “SE USA has not
`
`controlled, directed, or paid for any of Jenner & Block’s work on the
`
`[Petition], nor has SE USA had any input, feedback, or involvementin any
`
`way in the |Petition]."’ dd. §[§| 3—5.
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`2. Analysis
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`“Whether a parly who is not a namedparticipant in agiven
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`proceeding nonetheless constitutes a ‘real party-in-interest’ .
`
`.
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`. to that
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`proceeding is a highly fact-dependent question” with no “bright line test,”
`
`and is assessed “on a case-by-case basis.” 77 Fed. Reg. at 48,759 (citing
`
`Taylor v. Sturgell, 553 U.S. 880, 893-95 (2008)). The Office Patent Trial
`
`Practice Guide provides guidance regarding factors to considerin
`determining whethera party is a real party-in-interest. See 77 Fed. Reg.at
`48,759-60. Considerations may include whether a non-party “funds and
`
`directs and controls” an inter partes review petition or proceeding. Jd.at
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`11
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`IPR2016-01133
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`48,760. Additional relevant factors include: the non-party’s relationship
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`with the petitioner; the non-party’s relationship to the petition itself,
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`including the nature and/or degree of involvementin the filing; and the
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`nature ofthe entity filing the petition. Jd.
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`Weare not persuaded that SE USA’s efforts, including “early
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`consideration of an inter partes review” (Reply 2) andits “limited role in the
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`preliminary inter partes review investigation with its subsidiary Juno before
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`the sale” to Acuity (id. at 3), or in any “initial drafting of a petition for inter
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`partes review”(Pet. 4) constitutes sufficient funding or control overthis
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`proceeding to elevate SE USAto a real party-in-interest in this particular
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`proceeding. Further, we are not persuaded that SE USA’s initial drafting
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`efforts constitute a suggestion by SE USAto Acuity to file the present
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`Petition, nor are we persuaded that SE USAprepared the present Petition
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`then handed off the completed Petition for Acuity to file, as Lynk contends.
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`Wecredit Ms. Schoedel’s declaration, which provides that, since the
`
`time Acuity acquired Juno, SE USAdid not control, direct, or fund the
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`Petition. See Ex. 1030. Further, there is no evidence in the record to suggest
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`that SE USAprepared the present Petition prior to the sale of Juno to Acuity,
`or that SE USA wasinvolvedin the decision to prepare andfile the present
`
`Petition. In fact, the record evidence suggests otherwise. For example,
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`Dr. Zane, Acuity’s declarant, was not hired by Jenner & Block, on behalf of
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`Acuity, until several weeksafter the sale was complete. See Ex. 1029. We
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`agree with Acuity that Lynk’s assertions to the contrary are speculation. See
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`Reply 1-3.
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`Further, even if there were evidencein the record to support Lynk’s
`
`assertion that SE USA prepared the present Petition then handedoffthe
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`IPR2016-01133
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`completed Petition for Acuity to file, the particular facts at issue in this
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`proceedingare distinguishable over RPX v. VirnetX, relied on by Lynk. In
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`RPX v. VirnetX, the Board found that Apple compensated RPXtofile inter
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`partes review challenges and that Apple and RPX specifically discussed
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`VirnetX’s patents andfiling inter partes reviews. RPX v. Virnetx, slip op. at
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`7. The Board determined that RPX was a “nominalplaintiff’ with no
`
`interest in the challenged patents and that RPX was a mere proxy for Apple,
`whowas time-barred under 35 U.S.C. § 315(b) from filing the petitions
`itself. See id. at 9. The evidence does not support a finding that Acuity is
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`merely a proxy employed by SE USA because SE USA wasunableto file
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`the Petition under its own name. Instead, the evidence in this record shows
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`that Acuity is an operating entity, and a party in the related district court
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`proceedings. In any event, as discussed previously, the record supports that
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`Acuity, not SE USA,handled preparation andfiling of the instant Petition
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`from the time Acuity acquired Juno from SE USA.
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`Wealso are not persuaded that SE USA and Acuity sharing counsel in
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`the related district court proceedings—Acuity’s counselfor this inter partes
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`review—provides SE USA with control over this proceeding such that SE
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`USAis a real party-in-interest. On the current record, we credit Ms.
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`Schoedel’s declaration on this point, which provides that “SE USAhas not
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`controlled, directed, or paid for any of Jenner & Block’s work on the”
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`Petition and that SE USA has not “had any input, feedback, or involvement
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`in any way in the” Petition. Ex. 1030 95. Although Lynk arguesthat “[i]t is
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`simply not credible to believe that [SE USA’s] counsel will be able to wall
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`off [SE USA’s] input from its advocacyin” this proceeding, Lynk offers no
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`evidence of actual input from SE USAafter Acuity acquired Juno. See
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`Prelim. Resp. 17; see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
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`(providing that attorney argument“cannottake the place of evidence”).
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`Again, the record hereis distinguishable from RPX v. VirnetX and
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`ZOLL—bothrelied on by Lynk to support its position that SE USA sharing
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`counsel with Acuity elevates SE USA to a real party-in-interest. In RPX v.
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`VirnetX, RPX hired Apple’s law firm, which had already prepareda petition
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`on behalf of Apple, which was time-barred; RPX then filed the petition as a
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`proxy for Apple. See RPX v. Virnetx, slip op. at 5-6. Here, the record does
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`not include any evidence that Acuity hired Jenner & Block to allow SE USA
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`to direct this proceeding using Acuity as a proxy. In ZOLL, shared counsel
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`wasonefact of many that the Board usedin its analysis of whether
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`petitioner ZOLL Lifecor’s parent company, ZOLL Medical, exerted the type
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`of control overits subsidiary to justify finding that ZOLL Medical wasa real
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`party-in-interest. See ZOLL,slip op. at 9-13. SE USA, however, has no
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`corporate relationship with Acuity.
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`Wealso are not persuaded that SE USA’s status as a former parent to
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`a subsidiary acquired by Acuity showsa corporate relationship sufficient to
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`elevate SE USA to a real party-in-interest. See Reply 3. The record does
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`not include any evidence to support a finding that Acuity’s acquisition of
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`Juno wasanything other than an arms-length transaction that severed SE
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`USA’s relationship with Juno once completed.
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`Finally, we are not persuaded that not naming SE USAasa real
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`party-in-interest would allow SE USAa “secondbite at the apple.” As
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`discussed, we are not persuaded that the evidence of record shows, beyond
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`speculation, that SE USA wasinvolved in the decision to prepare andfile
`
`the present Petition. SE USA’s status as a co-defendant in the related
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`14
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`district court proceedingsis no different than any other inter partes
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`proceeding initiated by some, butnot all, parties to a district court
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`proceeding. See, e.g., 77 Fed. Reg. at 48,759 (indicating that a non-party
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`memberofa joint defense groupin a district court patent infringement
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`litigation would not, on that fact alone, be elevated to a real
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`party-in-interest).
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`Wehave considered the parties’ arguments and, on the record before
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`us and for purposesof this Decision, we are not persuadedthat the Petition
`should be denied for failure to name all real parties-in-interest.®
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`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
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`© Wenote that this Decision does not foreclose Lynk from continuing to
`argue or present additional evidence regarding the real party-in-interest issue
`in its Patent Owner Response, should it desire to do so. If the record should
`evolve in favor of Patent Owner on this issue, we would take appropriate
`action at that time. Further, the parties are directed to the Board’s
`precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc.,
`Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016), which indicates
`that “a lapse in compliance with those requirements [under 35 U.S.C.
`§ 312(a), includingthat all real parties in interest be identified] does not
`deprive the Board ofjurisdiction over the proceeding, or preclude the Board
`from permitting such lapse to be rectified.” See also Elekta, Inc. v. Varian
`Med. Sys., Inc., Case IPR2015-01401, slip op. at 6-10 (PTAB Dec. 31, 2015)
`(holding that disclosing additional real parties in interest via an updated
`disclosure does not mandate a changein petition filing date). Acuity is
`directed to contact the Boardif it desires, out of an abundanceof caution, to
`update the identification of the real party-in-interest.
`
`15
`
`
`
`IPR2016-01133
`Patent 8,841,855 B2
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142-46 (2016) (concluding that
`
`37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking
`
`authority that Congress delegated to the Patent Office”). Under the broadest
`
`reasonable construction standard, claim terms are generally given their
`
`ordinary and customary 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). Also, we are careful not to read
`
`a particular embodiment appearing in the written description into the claim if
`
`the claim language is broader than the embodiment. See In re Van Geuns,
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`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`
`the claims from the specification.”).
`
`Lynk explicitly construes the claim term “a first and a second LED
`
`each discretely packaged.” Prelim. Resp. 9-11. As will be evident from our
`
`analysis below, we need not explicitly construe this term for this Decision.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (construing explicitly only those claim terms in controversy and only
`
`to the extent necessary to resolve the controversy).
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`Lynk further contends that we should dismiss the Petition, as Acuity
`
`fails to provide any proposed claim constructions. Prelim. Resp. 11-12.
`
`Lynk arguesthat “Acuity was well aware that” Lynk disputed whether Ng
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`disclosed “discretely packaged” LEDs “and therefore was on specific notice
`
`that the meaningof‘a first and a second LED eachdiscretely packaged’is
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`essential to determining whetheror not there is a reasonable likelihood of
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`the asserted groundsprevailing.” Jd. at 11-12.
`
`Ourrules require a Petition to “[p]rovide a statement of the precise
`
`relief requested for each claim challenged. .
`
`. [that] identif[ies] ... [h]ow
`
`16
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`
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`IPR2016-01133
`Patent 8,841,855 B2
`
`the challenged claim is to be construed.” 37 C.F.R. § 42.104. We determine
`
`that Acuity satisfies this requirement. Specifically, Acuity contends “that
`
`the claim limitations [should] be given their plain and ordinary meanings for
`
`purposesofthis proceeding.” Pet. 11.
`
`C. Level of Ordinary Skill in the Art
`
`Acuity’s expert declares that the level of ordinary skill in the art of
`
`the ’855 patent as ofits filing date is “someone with a technical background
`
`in electronics or electrical engineering and at least one year of experience
`
`working with LEDsorlighting design.” Ex. 1024 4] 21. Lynk’sexpert
`
`declares that the levelis “a B.S. degree in Electrical Engineering or Applied
`
`Physics, or equivalent training, as well as at least one year of technical
`
`experiencein the field of LED lighting systems.” Ex. 2017 916. For the
`
`purposesof this Decision, we find these definitions to be effectively
`
`equivalent and adopta level of ordinary skill in the art for the analysis herein
`
`as a person with a bachelor’s degree in Electrical Engineering or equivalent
`
`training in electronics or electrical engineering and at least one year of
`
`experience working with LED lighting systems or design.
`
`_D. Asserted Grounds of Unpatentability
`Acuity proposes three grounds of unpatentability for the claims of
`
`the ’855 patent: 1) claims 1, 4, and 5 are anticipated under 35 U.S.C.
`
`§ 102(b) by Ng; 2) claims 4 and 5 are unpatentable under 35 U.S.C. § 103(a)
`
`over Ng and Wang; and 3) claims 2 and 3 are unpatentable under 35 U.S.C.
`
`§ 103(a) over Ng and Chen.
`
`17
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`
`
`IPR2016-01 133
`Patent 8,841,855 B2
`
`1. Claims I, 4, and 5 and Ng
`
`Acuity contends that Ng anticipates claims 1, 4, and 5. Pet. 13. A
`
`“prior art reference—in orderto anticipate under 35 U.S.C. § 102—mustnot
`
`only disclose all elements of the claim within the four corners of the
`
`document, but must also disclose those elements ‘arranged as in the claim.’”
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
`
`(quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
`
`1983)).
`
`a. Overview of Ny
`
`Ng,titled “Bi-Directional LED-BasedLight,” issued May 30, 2006,
`
`andis directed “to lights that use multiple light-emitting diodes.” Ex. 1003,
`
`at [54], [45], 1:6-7. Specifically, Ng is directed to lights having at least a
`
`pair of LEDsthat are driven by unrectified AC power. Jd. at 2:14-18.
`
`18
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`
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`IPR2016-01133
`Patent 8,841,855 B2
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`Ng’s Figures 6 and 7 are reproduced below.
`
`FIG. 6
`
`FIG. 7
`
`i<— wi —>i
`
`Figure 6 provides an exemplary componentlayout on a printed circuit
`
`board (PCB) baseand furtherillustrates how that PCB base can beinserted
`
`into a typical light socket. Ex. 1002, 3:35—37. Figure 7 illustrates “a side
`
`view of the arrangement shown in [Figure] 6.” Jd. at 3:38. D* and D™
`
`represents an LED pair. See id. at 5:63-64. This LED pairis “connected in
`
`parallel, with reverse polarity (with the anode of D* connectedto the cathode
`
`D and the anode of D- connectedto the cathode of D*), in series with a
`
`current-limiting device, R, typically a resistor” and can be driven by either
`
`alternating or direct current. Jd. at 3:62—4:3. In the embodimentof Figures
`
`19
`
`
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`IPR2016-01133
`Patent 8,841,855 B2
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`6 and 7, “the LEDs should either just touch, or be no more than 3 mm apart,
`
`and preferably no more than | mm.” Jd. at 6:6-8.
`
`Base 300 screwsinto fitting 600, where inner contact surface 610
`
`contactsfittings 410-413. Ex. 1002, 6:34-37. In this arrangement, base 300
`
`may be employedto replace a standard incandescentlight bulb. See id. at
`
`6:24-25. Ng indicates that base 300 may be adaptedfor other types of
`
`fittings, either using a different configuration of protrusions or using no
`
`protrusions. See id. at 7:4—26.
`
`Ng’s Figure 10 is reproduced below.
`
`FIG. 10
`
`Oh
`
`i
`R, Ww
`|
`
`R;
`
`Do
`
`Day
`
`Figure 10 depicts “an embodimentof the invention in which two AC
`
`LEDsaccording to the invention are provided on a single PUB substrate.”
`
`Ex. 1002, 3:45-47. The arrangement depicted in Figure 10 is “one of many
`
`different ways in which more than one LEDpair, in this case D,,*, Dy1", and
`
`D.2;*, D2” may be mounted on a single base 300.” Jd. at 7:27-29.
`
`20
`
`
`
`IPR2016-01133
`Patent 8,841,855 B2
`
`Ng’s Figures 13 and 14 are reproduced below.
`
`1302
`
`1313
`
`FIG. 13
`
`FIG. 14
`
`1300
`
`1312
`
`
`
`1320-4399
`
`Figures 13 and 14 illustrate side and top views, respectively, “of an
`
`embodimentof the invention in which reverse-polarity LED elements(dies)
`
`1301, 1302 are encapsulated in a single casing 1300,” with leads 1320, 1322
`
`and connecting wires 1312, 1313. Ex. 1002, 9:15—29. Ng providesthat
`
`“(bly including the two parallel connected, reverse-polarity LED dies within
`
`a single casing, a single componentis provided that implements the AC LED
`
`according to the invention. Such a component could be used to implement
`
`any LED pair described in any embodimentofthis invention.” Jd. at 9:30—
`
`35.
`
`b. Independent Claim 1
`
`Independentclaim | recites, in relevantpart, “[a]n AC-driven LED
`
`assembly comprising:at least a first and a second LED .
`
`.
`
`. the LEDs being
`
`connected in an ACcircuit.” Ex. 1001, 5:11-13. Acuity contends that Ng
`
`21
`
`
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`IPR2016-01133
`Patent 8,841,855 B2
`
`discloses an AC-driven LED havinga first and second LED connected to an
`
`AC circuit. Pet. 13 (referencing Ex. 1002, Fig. 1, 3:22—23). The Petition
`
`identifies the illustrated D* and D~ in Ng’s Figures | and6 asthe recited
`
`LED pairs. Jd. at 14-15. At this time, Lynk does not dispute this
`
`characterization of Ng. Wefind, based on the record before us, that the
`
`Petition has madethe requisite showing that Ng discloses the recited first
`
`and second LEDs.
`
`Claim 1 also recites that “each LED package [is] mounted to a
`
`substrate at.a distance from the other of preferably approximately 3 mm or
`
`less, and more preferably 2.0 mm orless.” Ex. 1001, 5:13-16. Acuity
`
`contends that Ng discloses that the LEDs are mounted ona printed circuit
`
`board substrate at a distance from each other of 3 mm or less. Pet. 16. As
`
`Acuity explains, Ng discloses that the LEDs of the embodiment of Figure 6
`“should either just touch, or be no more than 3 mm apart, and preferably no
`
`more than 1 mm apart.” Jd. (quoting Ex. 1002, 6:6—-9). At this time, Lynk
`
`does not dispute this characterization of Ng. We find, based on the record
`
`before us, that the Petition has made the requisite showing that Ng discloses
`
`the reciled LED package arrangement.
`
`Claim 1 further requires that each of the first and second LEDsbe
`“discretely packaged.” Ex. 1001, 5:12. Acuity contends that Ng discloses
`that the first and second LEDsare discretely packaged, based on three
`
`separate theories. Pet. 14-16. First, Acuity points to the disclosure in Ng
`
`that the LED pairs are single-die LEDs. Jd. at 14 (referencing Ex. 1002,
`
`3:7-11). Acuity contends that a person having ordinary skill in the art
`
`would understand the term “‘single-die LED” to mean the LEDisdiscretely
`
`22
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`IPR2016-01133
`Patent 8,841,855 B2
`
`packaged. Id. (relying on the declaration testimony of Dr. Zane, Ex. 1024
`
`4 40).
`
`Next, Acuity points to the illustration of LED pairs in Figures 6 and 7
`
`as disclosing discretely packaged LEDs. Pet. 15. Acuity contendsthat these
`
`figures illustrate two separate components, each withacircular footprint,
`
`with their centers separated by a distance “d.” Jd. Acuity explains that the
`
`side-on view depicted in Figure 7 confirms that D~ is a standard single-die
`
`LED in a discrete circular package. Jd. Acuity further contends that an
`
`artisan of ordinary skill would understand from theseillustrations that LED
`
`pair D* and Dare discretely packaged, rather than two LEDsinasingle
`
`package. Id. (referencing Ex. 1024 [{ 41, 42).
`
`Finally, Acuity argues that because Ng’s claim 16, which depends
`
`from claim 1, expressly requires two LEDsin a single pac
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