Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: June 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VITEC PRODUCTION SOLUTIONS, INC.,
`Petitioner,
`
`Vv.
`
`ROTOLIGHT LIMITED,
`Patent Owner.
`
`IPR2022-00261
`Patent 10,197,257 B2
`
`Before MICHELLE N. ANKENBRAND, GRACE KARAFFA OBERMANN,
`and AVELYN M.ROSS,Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 USC. § 314,37 CFR. § 42.4
`
`
`571-272-7822
`
`Paper 8
`Date: June 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VITEC PRODUCTION SOLUTIONS, INC.,
`Petitioner,
`
`Vv.
`
`ROTOLIGHT LIMITED,
`Patent Owner.
`
`IPR2022-00261
`Patent 10,197,257 B2
`
`Before MICHELLE N. ANKENBRAND, GRACE KARAFFA OBERMANN,
`and AVELYN M.ROSS,Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 USC. § 314,37 CFR. § 42.4
`
`
`
`IPR2022-00261
`Patent 10,197,257 B2
`
`I.
`
`INTRODUCTION
`
`Vitec Production Solutions, Inc. (“Petitioner”) filed a Petition (Paper
`
`1, “Pet.”) requesting an inter partes review of claims 1-21 of U.S. Patent
`
`No. 10,197,257 B2 (Ex. 1001, “the ’257 patent”). Rotolight Limited
`
`(“Patent Owner’) filed a Preliminary Response to the Petition. Paper 7
`
`(Prelim. Resp.”’).
`
`Wehaveauthority to determine whetherto institute an inter partes
`
`review. 35 U.S.C. § 314 (2020); 37 C.F.R. § 42.4(a). The standard for
`
`instituting an inter partes reviewis set forth in 35 U.S.C. § 314(a), which
`
`provides that an inter partes review maynotbeinstituted “unless the
`
`Director determines. .
`
`. there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least [one] of the claims challenged in the
`
`petition.”
`
`For the reasonsset forth below, and upon considering the Petition, the
`
`Preliminary Response, and the evidence of record, we determinethat the
`
`information presented in the Petition does not establish a reasonable
`
`likelihood that Petitioner would prevail with respect to at least one
`
`challenged claim. Accordingly, we deny the Petition, and do notinstitute an
`
`inter partes review.
`
`A. Real Parties-in-Interest
`
`Petitioner states that “[t]he real party-in-interest is Petitioner Vitec
`
`Production Solutions, Inc.” and “The Vitec Group plc.” Pet. 1. Patent
`
`Owneridentifies Rotolight Limited and Rotolight Group Ltd. as real parties-
`
`in-interest. Paper 5, 1 (Patent Owner’s Mandatory Notices).
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`
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`IPR2022-00261
`Patent 10,197,257 B2
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`B. Related Proceedings
`
`The parties identify the petitions for inter partes review challenging
`
`U.S. Patent Nos. 10,197,257 B2 (IPR2021-01496) and 10,197,258 B2
`
`(IPR2022-00262) as related matters. Pet. 1; Paper 5, 1. Patent Owner also
`
`identifies the petitions for inter partes review challenging U.S. Patent
`
`Nos. 10,197,258 B2 (IPR2021-01497), 10,203,101 B2 (IPR2021-01498),
`
`and 10,845,044 B2 (IPR2022-00099)as related matters. Paper 5, 1.
`
`C. The ’257 Patent
`
`The ’257 patent, titled “Lighting System and Control Thereof,” issued
`
`on February 5, 2019. Ex. 1001, codes (45), (54). The ’257 patent “relates to
`
`a lighting system, and the control of a lighting system, and the simulation of
`
`lighting special effects, and in particular to a lighting system for
`videography, broadcasting and cinematography.” Ex. 1001, 1:16-20.
`
`According to the ’257 patent, a typical “lighting controller called a
`
`‘flicker box’... . is used to produceflickering light effects to mimic
`flickering light for example fromafire place, candle, electrical spark or
`lightning.” Jd. at 1:21-25. But flicker boxes are “complex, costly and time
`
`consuming”to set up, and the “connection and control of multiple pieces of
`
`hardware .
`
`.
`
`. requir[e] a physical wired connectionto the ‘hot’ light source
`
`desired to be controlled.” Jd. at 1:30-35. Flicker boxesare also
`
`“incompatible with LED light sources” and “require the use of ‘hot’
`
`incandescentlight sources which are energy inefficient and also pose health
`
`and safety risks to those working onset.” Jd. at 1:39-42.
`
`The “improvedsolution” the ’257 patent offers includes methods,
`
`controllers, and computer programs“for controlling a lighting device to
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`produce user customisable lighting effect” by, among other things,
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`
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`IPR2022-00261
`Patent 10,197,257 B2
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`“calculating a time varying lighting value based on at least one simulation
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`parameter” and “outputting said time varying lighting value thereby to
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`simulate a lighting effect.” Jd. at 1:45—-51, 2:61-67, 3:37-43. Figure 2 is
`
`illustrative and reproduced below.
`
`129
`
`Figure 2
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`Figure 2 “is a schematic diagram of a further lighting system.” Jd. at 5:25.
`
`Figure 2 showsstudio lamp device 120 that includes input interface 105 and
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`lighting effect simulator 100 which produces data 106 used to modulate
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`light 102. Jd. at 5:51-6:14. “In one example, the light 102 is an array of
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`LEDs,preferably of differing colours” and a “microcontroller or other
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`computing unit is integrated in the lamp device 120 for performing
`
`calculations.” Jd. at 5:60-61, 5:65-67. The ’257 patent explains that “[t]his
`
`arrangement does not require the DMX distribution hub 302, power
`
`elements 304, 306” required in a flicker box lighting system. Jd. at 5:61-63.
`
`Figure 6, reproduced below,illustrates a simulated lighting effect that
`
`employs an exemplary graphic userinterface.
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`
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`IPR2022-00261
`Patent 10,197,257 B2
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`Light control system
`
`800
`
`Moreinfo
`
`
`
`
`
`
`
`
`mmemneremnennnnerfs tow
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`Fire activity
`High
`Fire colour
`|
`2000K|
`
`
`
`
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`Baseline brightness
`
`
`
`
`
`Moreinfo
`
`More info
`Peak brightness
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`80%
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`Mareinfo
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`Moreinfo
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`Camera frequency
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`Colour Swing Blue Monochrome
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`Figure 6
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`Figure 6 “is a graphic user interface [800] for user input of simulation
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`parameters.” Jd. at 5:32-33. According to Figure 6, the simulated effect is a
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`fire effect. Jd. at 8:14-16. Interface 800 allows the userto select a “fire
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`activity” by sliding the slider between low to high andset values for “fire
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`colour,” “peak brightness,” “baseline brightness,” and “camera frequency.”
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`Td. at 8:17-21.
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`
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`IPR2022-00261
`Patent 10,197,257 B2
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`D.
`
`Illustrative Claim
`
`Petitioner challenges claims 1-21 of the ’257 patent, with claims 1, 15
`
`and 20 being the independent claims. Claim 1, reproduced below,is
`
`representative of the challenged claims.
`
`A method for controlling a lighting device to
`1.
`produce a user customisable lighting effect,
`the method
`comprising:
`
`calculating, using an effect simulator, a time varying
`lighting value based on at
`least one simulation parameter;
`wherein said at least one simulation parameter characterises a
`user customisable lighting effect selected from a range of
`different user customisable lighting effects for at least one of:
`videography, broadcasting, cinematography, studio filming, and
`location filming; wherein said at least one simulation parameter
`is at least one of: a random brightness; a random duration; and a
`random interval; said simulation parameter depending on the
`user customisablelighting effect being simulated; and
`
`outputting, from said effect simulator, said time varying
`lighting value thereby to simulate the user customizable lighting
`effect.
`
`Ex. 1001, 11:54-12:3.
`
`E. The Asserted Unpatentability Challenge
`
`Petitioner asserts that claims 1-21 would have been unpatentable on
`
`the following ground:
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`IPR2022-00261
`Patent 10,197,257 B2
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`Claims Challenged
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`35 U.S.C.§
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`Reference(s)/Basis
`
`Pet. 4. Petitioner also relies on declaration testimony of Fred Holmes
`
`(Ex. 1003) to support its allegations.
`
`A. Principles ofLaw
`
`Il. ANALYSIS
`
`“In an IPR [(inter partes review)], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes ©
`
`review petitions to identify “with particularity .
`
`.
`
`. the evidence that supports
`
`the groundsfor the challenge to each claim”)). This burden of persuasion
`nevershifts to the patent owner. See Dynamic Drinkware, LLC v. Nat'l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`
`of proof in inter partes review). Furthermore, a petitioner cannotsatisfy its
`
`burden of proving obviousness by employing “mere conclusory statements.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Obviousnessis a question of law based on underlying determinations
`
`of fact. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Richardson-
`
`Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997). A claim is
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), effective March 16, 2013. Given that the application from
`which the ’257 patent issued wasfiled after this date, the current version of
`§ 103 applies.
`* Morganet al., US 8,938,468 B2, issued Jan. 20, 2015 (Ex. 1005,
`“Morgan”).
`3 Julio, US 2010/0264852 A1, published Oct. 21, 2010 (Ex. 1006).
`
`7
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`Patent 10,197,257 B2
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`unpatentable as obvious, under 35 U.S.C. § 103, if the differences between
`
`the claimed subject matter and the prior art are such that the subject matter,
`
`as a whole, would have been obviousat the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007). The question of obviousnessis resolved on the basis of
`
`underlying factual determinations including (1) the scope and contentofthe
`prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`
`of nonobviousness.* Graham, 383 U.S. at 17-18.
`
`At this preliminary stage, we determine whetherthe information
`
`presented showsa reasonable likelihood that Petitioner would prevail in
`
`establishing that at least one of the challenged claims would have been
`
`obvious over the proposedpriorart.
`
`Weanalyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`.
`
`B. Level of Ordinary Skill in the Art
`
`Wereview the groundsof unpatentability in view of the
`
`understanding of a person of ordinary skill in the art at the time of the
`
`invention. Graham, 383 U.S. at 17.
`
`Petitioner contends that a person of ordinary skill in the art “would
`
`have had a Bachelor of Science degree in electrical engineering, or a closely
`related field, along [with] at least two years of experience in the design of
`
`entertaining lighting systems, controls and effects.” Pet. 5 (citing Ex. 1003
`
`q{ 33-34). Petitioner further states that “[m]ore education can supplement
`
`‘ At this stage of the proceeding, the parties have not asserted or otherwise
`directed our attention to any objective evidence of nonobviousness.
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`8
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`practical experience and vice versa.” Jd. Patent Ownerdoes not, at this
`
`time, dispute Petitioner’s proposed definition. See Prelim. Resp. 20.
`
`Onthis record, we determinethat Petitioner’s proposed definition is
`
`consistent with the prior art of record, and apply it for this Decision. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`
`specific findings on ordinary skill level are not required “where the prior art
`
`itself reflects an appropriate level and a need for testimonyis not shown”
`
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`
`163 (Fed. Cir. 1985))).
`
`C. Claim Construction
`
`Petitioner addresses claim terms“cinematic lighting special effect,”
`
`“effect simulator,” and “random.” See Pet. 6-8. Patent Ownerstates thatit
`
`“requests that the Board adopt the ordinary and customary meaning ofthe
`
`claim terms as understood by one of ordinary skill in the art.” Prelim.
`
`Resp. 19.
`Weneed not expressly construe any claim terms becauseresolution of
`the issues presentedin this Petition for inter partes review are not based on
`
`any particular claim construction the parties advance. See Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
`
`“only those terms need be construed that are in controversy, and only to the
`
`extent necessary to resolve the controversy”); see also Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(citing Vivid Techs. in the context of an inter partes review).
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`D. Alleged Obviousness Based on Morganin view ofJulio
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`Petitioner alleges that the combination of Morgan and Julio renders
`
`obvious claims 1-21. Pet. 16-43. Petitioner also relies on the testimony of
`
`Mr. Holmesto support its arguments. See id.
`
`1. Overview ofMorgan (Ex. 1005)
`
`Morganis directed to “methods and apparatus for facilitating the
`
`process of designing, selecting, and/or customizing lighting effects or
`
`lighting shows.” Ex. 1005, 2:48-51. Morgan explainsthat “a ‘lighting
`
`effect’ refers to one or morestates oflight that are perceived as an entity
`
`over someperiod of time” and “[a] lighting effect may have one or more
`static and/or dynamic characteristics” in which “exemplary dynamic
`characteristics may relate to one or more of color, brightness, perceived
`
`transition speed, perceived motion, periodicity, and the like.” Jd. at 1:47-S5.
`
`Morgandiscloses that in one of its embodiments, a user can query input
`
`information and search a plurality of indexed predefined lighting effects
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`basedat least in part on the input information, in which eachlighting effect
`
`of the plurality of lighting effects has at least one searchable attribute
`
`associated therewith.
`
`/d. at 3:6—13. The at least one searchable attribute can
`
`relate to a color content of light to be generated, a color resolution, a color
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`distribution or color spatial frequency, at least one dynamic temporal
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`characteristic of the light, a viewing perspective of a viewerofthe light, at
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`least one preferred object to be illuminated by the light, and a geometric
`
`configuration of a plurality of lighting units. Jd. at 3:57-4:10. Morgan
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`further explains that a user interface allows an interface between a human
`
`user or operator and one or more devices that enables communication
`
`between the user and the devices. Jd. at 8:24-27, 24:23-40.
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`10
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`One embodiment of Morgan’s lighting apparatus is reproduced below.
`
`MEMORY/
`200
`X STORAGE[~~2148
`DEVICE
`
`
`
`212
`
`204
`
`LIGHT
`compose
`MPOSER
`
`206
`
`202
`
`LIGHTING
`a) ONT
`N
`CONTROLLER
`
`INTERNET,
`
`LIGHTING
`CENTRAL WN Kt U
`IT
`N
`CONTROLLER
`CONTROLLER
`
`LOCAL
`210
`
`MEMORY/
`STORAGE
`DEVICE
`
`214A
`
`“
`
`LIGHTING
`UN
`IT
`CONTROLLER
`
`-
`
`LIGHTING
`
`CONTROLLER
`
`FIG. 2
`
`100
`
`100
`
`LIGHTING
`UNIT
`
`LIGHTING
`UNIT
`
`LIGHTING
`UNIT
`
`120
`
`100
`
`ae 100
`
`‘
`
`100
`
`206A
`
`120
`2088
`
`120
`208C
`
`120
`208D
`
`120
`
`Ex. 1005, Figure 2. Figure 2 “is a generalized block diagram illustrating a
`
`networked system oflighting units.” Jd. at 8:47-49. Figure 2 shows
`
`networked lighting system 200 includes lighting units 100 and lighting unit
`
`controllers 208A-D. Jd. at 19:32-33, 19:61-63. Eachoflighting unit
`
`controllers 208A-D “‘is responsible for communicating with and generally
`
`controlling one or morelighting units 100 coupled toit.” Jd. at 19:63-65.
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`Networked lighting system 200 also includes central controller 202 that may
`
`be associated with local user interface 210. Jd. at 21:48-51. Each of
`
`lighting unit controllers 208A—D in turn maybe coupledto central controller
`202. Id. at 20:8-10. Another componentis “light system composer [212
`that] may encode an authoredlighting effect .
`.
`. to provide a lighting
`
`program that may be executed by”central controller 202 to generate lighting
`
`commandsfor one or morelighting units 100 of lighting system 200. Jd.
`
`at 22:12-18. Lighting unit 100 may be employedin a variety of applications
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`11
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`including “theatrical or other entertainment-based/special effects lighting.”
`
`Id. at 10:46-52. Lighting unit 100 can also include controller 105 (shownin
`
`Figure 1) that is “configured to output one or more control signals to drive
`
`the light sources so as to generate various intensities of light from the light
`
`sources.” Jd. at 11:22—25. Lighting unit 100 mayalso include user
`
`interfaces 118 (also shownin Figure 1) “to facilitate any of a numberof
`user-selectable settings or functions” such as “changing and/or selecting
`
`various pre-programmedlighting effects to be generated by the lighting
`
`unit” and “changing and/or selecting various parameters ofselected lighting
`
`effects.” Jd. at 14:4-10. Lighting system 200 includes a component or
`
`“storage facility 214A”that “may generate the lighting effect using the
`
`executable lighting program and may monitorthe generated illumination to
`
`determine one or morecharacteristics of the lighting effect” such that “the
`
`component maysimulate the lighting effect in any suitable manner and
`
`monitor illumination generated in the simulation.” Jd. at 32:15—22.
`
`2. Overview ofJulio (Ex. 1006)
`
`Julio “relates to a method of using an algorithm to generate themed
`
`lighting selections.” Ex. 1006 § 2. Julio explains that there is a need for a
`
`lighting schemethatis “nonrepetitive” and “a schemethat will allow user
`
`selection of various light fixture scene involvement regarding parameters
`
`such as fixture installation or group, color/intensity range selection, fade
`
`timing delay selection, and dwell delay selection.” Jd. 49. Julio thus
`
`provides a “user range selection of lighting parameters within a selected
`
`theme.” Jd. § 11. To provide a “color selection method using a biased,
`
`pseudo-random algorithm[],” Julio employs an algorithm that “applies
`
`random numbersto selecting values for a color-capable lighting system to
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`12
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`generate animated scenesthatfit a particular envisioned theme” in which
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`“the algorithm will select colors and fades from a predefinedlist that fit the
`
`criteria defining the theme.” Jd. Jf 26, 41. Julio discloses “[b]ecauseit uses
`
`random numbersthe color changes will appear to be ever-changing with no
`
`repetition.” Jd. J 41.
`
`Julio further discloses that “[a] particular theme is defined by many
`
`parameters itself,” that “[e]ach parameter defining a theme may have a
`
`range,” and that “[t]he algorithm selects randomly within each rangeto
`generate the values for the lighting system.” /d. 4 50. Selected parameters
`for the algorithm include light fixture selection, color selection, intensity
`
`selection, fade delay selection, and dwell delay selection. Id. {{] 51-56.
`
`3. Analysis of Claims 1, 15, and 20
`
`Petitioner alleges that Morgan in view ofJulio renders claims1, 15,
`
`and 20 of the ’257 patent invalid as obvious. Pet. 16, 22—24.
`
`a) Petitioner’s allegations
`
`Petitioner asserts that, to the extent the preamble is limiting, Morgan
`
`describes a “method and apparatus for facilitating the process of designing,
`
`selecting, and/or customizing lighting effects of lighting shows,” as claimed.
`
`Id. at 16 (citing Ex. 1005, 2:48-51; Ex. 1003 9 69-70). Specifically,
`
`Petitioner alleges that Morgan teaches “{o]ne or morelighting effects, or an
`
`entire lighting show, may be based on parametersthat are definable by a
`
`designer/programmer,or basedatleast in part on predefined(‘pre-
`
`packaged’) lighting effects available for selection.” Jd. (quoting Ex. 1005,
`
`1:63-2:6). Petitioner also alleges that Julio describes a similar system to
`
`““senerate themedlighting selections’ by controlling one or more lighting
`
`fixtures.” Jd. at 17 (citing Ex. 1006 ff 2, 11, 47).
`
`13
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`Petitioner argues Morgan describes an effect simulator, as claimed,
`
`where“Morgan teachesthat ‘one or more ofthe library of lighting
`
`effects/shows’ and ‘one or more(orall) functional aspects of a user interface
`
`... and library searching may be performedby a controller that also controls
`
`the lighting system that generates the lighting effect(s)/show(s).’” Jd. at 17
`
`(quoting Ex. 1005, 10:16—21; citing Ex. 1003 4 72). Petitioner argues that
`
`“TcJontrolling the lighting system .
`
`.
`
`. represents ‘a time varying lighting
`
`value.” Id. (citing Ex. 1003 | 73). Petitioner explains that the lighting
`
`effects may have static and dynamic characteristics and relate to “color,
`
`brightness, perceived transition speed, perceived motion, periodicity, and the
`
`like” and the effects “maybe encoded as ‘a sequentiallist of lighting states
`and transitions between lighting states, or frames of color data with
`
`reference to some time base,to provide a lighting program that maybe
`
`executed by the central controller 202 to generate lighting commands.’” Jd.
`
`at 18 (quoting Ex. 1005, 1:51-55, 3:57-4:15, 22:12-18).
`
`Petitioner contends that “Morgan also teaches the structural and
`
`functional elements required by Claim 1{b],
`
`”> including the “controller” and
`
`“lighting effects” that are “user customizable” because “Morgan teachesthat
`
`‘one or more candidate lighting effects may .. . [be] processed by the central
`
`controller’ to ‘control the lighting system accordingly.’” Jd. (citing Ex. 1003
`
`{J 76-80; Ex. 1005, 25:39-50). Petitioner acknowledges that Morgan does
`
`not expressly describe use for videography, broadcasting, cinematography,
`
`> Petitioner definees Claim 1[b] as “wherein said at least one simulation
`parameter characterises a user customisable lighting effect selected from a
`range of different user customizable lighting effects for at least one of:
`videography, broadcasting, cinematography,studio filming, and location
`filming.” Pet. 18.
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`14
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`studio filming or location filming, but instead asserts that a person of
`
`ordinary skill in the art would have understood Morgan’s description of
`
`“theatrical or other entertainment-based special effects’ to include the same
`
`applications contemplated by the ’257 patent.” /d. at 18-19 (citing Ex. 1003
`
`{ 77). Petitioner also asserts that a person of ordinary skill in the art would
`
`have understood Morgan’s discussion of pulse duration control to suggest
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`“cinematography, videography, and similar applications,” because the
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`skilled artisan “would recognize the need for rolling shutter compensation
`
`for preventing unwantedflicker, or other artifacts, and would have known
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`that pulse duration control .
`
`.
`
`. is commonly usedto resolve this issue.” Jd.
`
`at 19 (citing Ex. 1003 ¥ 78).
`
`Petitioner alleges Morganin view of Julio suggests that the simulation
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`parameteris oneof ‘“‘a random brightness; a random duration; and a random
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`interval.” Jd. at 19 (citing Ex. 1003 J 80-85). Petitioner explains that
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`Morgan describes lighting effects that include static and dynamic
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`characteristics, such as “color, brightness, perceived transition speed,
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`perceived motion, periodicity, and the like,” but acknowledges that Morgan
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`does not describe that these characteristics are random. Jd. at 19-20 (citing
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`Ex. 1003 §] 80-85; Ex. 1005, 1:51-55, 3:57-4:15). Petitioner asserts Julio,
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`whichis in a similar field—thatis, the field of lighting systems and methods
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`for producing lighting special effects using a plurality of LEDs—describes
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`using random numbersfor similar characteristics, i.e., “intensity selection,”
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`“fade delay,” and “dwell delay,” to “cause a themeor effect to ‘appear to be
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`ever-changing with no repetition.’” /d. at 20 (citing Ex. 1006 J 10, 41, 51-
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`56, 117; Ex. 1003 ¥ 83); see also id. at 14 (citing Ex. 1003 4 61-64).
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`Petitioner reasons“[t]he incorporation of random valuesin place ofset
`
`15
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`values would create realistic, and as sought by Morgan,aesthetically
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`pleasing lighting effects.” Jd. at 21 (citing Ex. 1003 { 85); see also id. at 14
`
`(stating that a person of ordinaryskill in the art “would have been motivated
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`to combinethe teachings of Julio and Morganinsofar as they disclose
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`related approachesfor solving the problemsthat one of skill in the art would
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`expect to encounterin the design and implementation of lighting systems
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`and methods for producing such special effects’’), 15 (explaining that
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`the °257 patent discussed a desire to produce “realistic” “lighting effects,”
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`which Julio and Morgan achieve). Petitioner further explains that“the
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`combinations of Morgan and Julio proposed herein are combinations of
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`knowntechniques and/or substitutions of art-known elements to yield
`
`predictable results.” Jd. at 15 (citing Ex. 1003 | 65). Petitioner also
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`contendsthat “combining Morgan with the teachings of Julio’s random
`
`parametric values would produce predictable results, as it would have been
`
`well within the skill of the [person of ordinary skill in the art] to specify
`
`random or pseudorandom values for parameters in programminga particular
`
`lighting effect.” Jd. at 20-21 (citing Ex. 1003 § 85).
`
`Petitioner further alleges that the simulation parameters depend on
`effects selected by the user. Jd. at 21 (citing Ex. 1003 {ff 87-89). Petitioner
`argues that Morgandescribes that the controlled lighting effects include
`
`characteristics and “that a user can ‘chang[e] and/orselect[] various
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`parameters ofselected lighting effects.” Id. at 21 (citing Ex. 1005, 1:51-
`
`3:57-4:15, 14:4-12). Petitioner further alleges that “Julio also teaches that a
`
`‘particular theme is defined by many parametersitself? and ‘[e]ach
`
`parameter defining a theme may have a range’ and a usercan provide ‘range
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`16
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`selection of lighting parameters within a selected theme.’” Id. (citing
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`Ex. 1006 ff 11, 50).
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`Lastly, Petitioner argues that Morgan’s “lighting program may be
`
`executed in either an operation or simulated setting” and that “the controller
`
`is ‘particularly configured to provide control signals to one or moreof the
`
`light sources so as to generate’ lighting effects.” Jd. at 22 (citing Ex. 1005,
`
`32:14—21, 13:10-14; Ex. 1003 4 92). Petitioner contends that “there are no
`
`substantive differences between Claim | and Claims 15 and 20” andrelies of
`
`the same evidence identified above for claim 1, to support its assertion that
`
`Morganin view of Julio renders claims 15 and 20 invalid as obvious. Jd.
`
`at 23-24 (explaining that “[t]hese claims primarily differ in their preambles”
`
`but “[t]he body of each claim is substantively the same”).
`
`b) Patent Owner’s arguments
`Patent OwnerarguesPetitionerfails to demonstrate a reasonable
`likelihood of showing that Morgan in view of Julio renders the challenged
`
`claims of the 257 patent obvious. See generally Prelim. Resp. 32-51. In
`
`particular, Patent Ownerasserts that neither Morgan norJulio discloses each
`
`of the limitations of claim 1 (or claim 15 and 20). Jd. at 32-45. Further,
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`Patent Ownerarguesthat Petitioner fails to show that Morgan and Julio are
`
`analogousart, that a reason to combine Morgan and Julio would have
`
`existed, and that a reasonable expectation of success would have existed in
`
`the combination of Morganand Julio. Id. at 45-51.
`
`Because weare persuaded by Patent Owner’s argumentthat Petitioner
`
`fails to show that Morgan “calculate[s], using an effect simulation, a time
`
`varying lighting value based on at least one simulation parameter” or
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`“different user customizable lighting effects for at least one of: videography,
`
`17
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`broadcasting, cinematography,studio filming, and location filming,”see id.
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`at 32-42, we limit our discussion below to Patent Owner’s arguments
`
`regarding those claim limitations.
`
`c) whether Petitioner has shown that Morgan suggests an effect
`simulator that calculates a time varying lighting value
`
`Petitioner asserts that Morgan discloses an effect simulator that
`
`calculates a time varying lighting value. Pet. 17-18. Patent Owner argues
`
`that ‘Petitioner makes no attempt whatsoever to show that any calculation of
`
`a time varying lighting value occurs in Morgan.”Prelim. Resp. 33. Instead,
`
`Patent Ownercontinues, “Morgan’s ‘controller,’ which at best purports to
`
`search a library of pre-packagedlighting effects, does not satisfy the
`
`functionality of the ‘effect simulator’ of the ’257 Patent.” Jd. Accordingto
`
`Patent Owner, Morgan’s “light system composer” “encodeslighting effects
`
`or lighting showsthat are ‘authored by a designer/programmer’ into an
`
`executable program that is subsequently used by the controller” and “[t]hese
`
`executable programsare searched usingcriteria input by the user, and the
`
`results of the search are presented to the user.” /d. (citing Ex. 1005, 22:8-
`24, 24:22-26:2); see also id. at 35. Then,“the executable program(s) are...
`
`transmitted to the controller.” Jd. at 33-34 (citing Ex. 1005, Fig. 3). And
`
`Patent Owner explains that “[w]hile Morgan discloses that the central
`
`controller may perform other functions .
`
`.
`
`. none of this functionality relates
`
`to ‘calculating, using an effect simulator, a time varying lighting value based
`
`on at least one simulation parameter’ as required by the claims” and that any
`
`“encoding performedbythe light system composeris done .
`.
`. prior to the
`user entering search criteria” and therefore cannot be a calculation based on
`user input. Jd. at 36-37 (citing Ex. 2001 {ff 47-48; Ex. 1005, 22:1—18).
`
`18
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`Patent Ownerfurther asserts that “although Morgandisclosesthat a
`user may modify the pre-packaged executable lighting programs. . . these
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`user modifications are accomplished by ‘known aggregation functions, such
`as averaging, [which] may be used to automatically generate a neweffect
`from a numberofexisting effects’ and not by any calculations.” Jd. at 38
`
`(citing Ex. 1005, 24:11-13, 26:11-22; Ex. 2001 9 50). Patent Owner
`
`explains that a person of ordinary skill in the art “would understand that
`
`aggregating lighting effects using averaging techniques knownat the
`
`relevant time simply means merging one or more pre-packagedfiles or
`
`portions together to create a single executable sequence and doesnot involve
`
`calculating a time varying lighting value from an effect simulator.” Jd.
`
`(citing Ex. 2001 4 50).
`
`Weagree with Patent Ownerthat Petitioner fails to establish Morgan
`
`suggests “calculating, using an effect simulator, a time varying lighting
`value based onat least one simulation parameter,” as claimed. Ex. 1001,
`
`11:54-12:3 (claim 1), 12:57—13:8 (claim 15), 14:1—18 (claim 20).
`
`Specifically, Petitioner does not direct us to anything in Morganthat
`
`“calculates”at all, much less calculates a time varying lighting value based
`
`on a simulation parameter. Pet. 17-18. Petitioner alleges that Morgan’s
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`disclosure of “‘one or moreofthe library of lighting effects/show[s]’ and
`
`‘one or more(orall) functional aspects of a user interface and library
`
`searching may be performed by a controller that also controls the lighting
`
`system that generatesthe lighting effect(s)/show(s)’ .
`
`.
`
`. satisfies the
`
`functionality of the ‘effect simulator’ of the °257 Patent.” Pet. 17 (citing
`
`Ex. 1005, 10:16—-21; Ex. 1003 § 72). However, merely identifying a
`
`controller that searches a library and processes pre-programmedlighting
`
`19
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`effects, falls short of establishing that Morgan’s controller actually
`
`“calculates.” And, as Patent Owner aptly explains, the other functions
`
`performed by Morgan’scontroller similarly do not “calculate.” Prelim.
`Resp. 36 (referring to Figure 3 and identifying “steps 302 (query user for
`input information), 304 (search lighting effects/shows), and 306 (provide
`
`user with indication of candidate lighting effects)’”’).
`
`Furthermore, we agree with Patent Ownerthat Petitioner does not
`
`demonstrate that Morgan suggests an effect simulator that calculates “a time
`
`varying lighting value based on at least one simulation parameter,” as
`
`claimed. Jd. at 36-37. Petitioner directs our attention to Morgan’s
`
`description of “encoding”lighting effects that occurs in “reference to some
`time base” and impliesthis describes “a time varying lighting value based on
`
`at least one simulation parameter.” Pet. 18. But, as Patent Owner contends,
`
`“the encoding performed by the light system composeris done based on
`
`lighting effects and lighting showsthat are authored by a
`designer/programmer—prior to a user entering search criteria” and “later
`executed by the controller.” Prelim. Resp. 37 (emphasis added). This
`encoding is not performedbythe “effect simulator”—the central controller
`identified by Petitioner—and is performedpriorto the “library searching”
`and “processing” which Petitioner alleges satisfies the functionality, i.e.,
`calculating done by the “effect simulator.” Therefore, on this record,
`Petitionerfails to establish sufficiently that Morgan suggests “calculating,
`
`using an effect simulator, a time varying lighting value based onatleast one
`simulation parameter.”
`
`6 Wefurther observe that Mr. Holmes, Petitioner’s witness, testified in a
`related inter partes review that even though “Morganteaches substantially
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`20
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`In view of the foregoing, Petitioner fails to demonstrate a reasonable
`likelihood that the subject matter of claims 1, 15, and 20 of the ’257 patent
`
`would have been obvious over the combineddisclosures of Morgan and
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`Julio.
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`d) whether Petitioner has shown that Morgan sugges
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