`
`Trials@uspto. gov
`
`571.272.7822
`
`Paper 12
`Date: May 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CURRENT LIGHTING SOLUTIONS, LLC, and HLI SOLUTIONS, INC.,
`Petitioner,
`
`V.
`
`ALSI HOLDINGS, LLC,
`Patent Owner.
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN,and
`DONNA M.PRAISS, Administrative Patent Judges.
`
`LORIN,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`3S US.C. $ 314
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`A. Background
`
`I. INTRODUCTION
`
`Current Lighting Solutions, LLC and HLI Solutions, Inc. (collectively
`
`Petitioner’) filed a Petition (Paper 1, “Pet.”?) requesting inter partes review
`
`of claims 1-19 of U.S. Patent No. 8,721,114 B2 (Ex. 1001, “the 114
`
`patent’). ALSI Holdings, LLC (“Patent Owner’’) filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”). Petitioner also filed a Preliminary
`
`Reply (Paper 9, “Prelim. Reply”) and Patent Ownerfiled a Preliminary Sur-
`
`reply (Paper 10, “Prelim. Sur-reply”).!
`
`Wehavejurisdiction under 35 U.S.C. 8 6.
`
`Uponconsideration of the arguments and evidence presented by
`
`Petitioner, we are persuadedthat Petitioner has demonstrated, under 35
`
`U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the
`
`unpatentability of at least one challenged claim.
`
`For the reasons stated below, weinstitute inter partes review as to
`
`challenged claims 1—19 of the ’114 patent.
`
`B. Related Proceedings
`
`Petitioner indicates, and Patent Owneragrees, that the ’114 patentis
`
`being asserted in ALSI Holdings, LLC v. Current Lighting Solutions, LLC,
`
`Wb/a GE Current, a Daintree Company, and HLI Solutions, Inc., f/k/a
`
`Hubbell Lighting, Inc., both d/b/a Hubbell Control Solutions and/or
`
`' The Board authorized the filing of these papers. See Ex. 1057. The Board
`also authorized Petitioner to file a Sofera stipulation. /d. at 16:24—25;
`Ex. 1056.
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`Current, Case No. 6:21-cv-01187-ADA, (W.D. Tex. 2021) (“District Court
`
`Action”). Pet. vii; Paper 4, 1.
`
`Petitioner indicates that related U.S. Patent Nos. 9,699,854;
`
`8,186,855; 8,322,881; and 9,049,753; as well as U.S. Design Patent Nos.
`
`D650,508 and D612,088 are also being asserted in the District Court Action.
`
`Pet. vii. Petitioner also indicates that it has “filed petitions regarding U.S.
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`Patent Nos. 9,699,854 and 8,322,881.” Id.
`
`C. The ’114 patent (Ex. 1001)
`
`1. Disclosure
`
`The *114 patent, titled “LED Lamp Apparatus and Method of Making
`
`an LED Lamp Apparatus,”relates to “a light emitting diode (LED) or other
`
`solid state light emitter light device.” Ex. 1001, code (54), 1:17-18.
`
`The ’114 patent explains that lighting devices that use incandescent
`
`and halogen bulbs suffer from various problemsincluding being energy in-
`
`efficient, having short lifetimes, producing unwanted heat, and having
`
`problematic housing designs that causes electrical shorts, or other problems.
`
`Ex. 1001, 1:20-51.
`
`According to the 7114 patent, although LEDs are knownin general,
`
`“LEDs have not been considered an option in the past for providing quality
`
`light in many applications because they do not provide enough useful light at
`
`a distance.” Ex. 1001, 1:57-61. Accordingly, the ’114 patent considers that
`
`“there is a need in the art for methodsand[] apparatuses that can be used
`
`with LEDs or other solid state emitters to provide quality light from a
`
`distance.” /d. at 1:63-65.
`
`
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`IPR2023-00198
`Patent 8,721,114 B2
`
`To that end, the °114 patent discloses “an “LED device’ that directs
`
`enough light from a plurality of LEDsto a distant area in a form that
`
`provides an acceptable amountoflight.” Ex. 1001, 2:9-11. This is depicted
`
`in Fig. 1 of the ’114 patent, reproduced below.
`
`Fig. 1 of the °114 patent (Ex. 1001) showslighting device 1 having
`rolled reflector 5.
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`Lighting device 1 depicted in Fig. 1 comprises “central chimney
`
`portion 2 formed by two chimneyside plates 3”that are “connected together
`
`via at least two spacers 4.” Ex. 1001, 3:35-37. “A plurality of LEDs
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`8 are mounted through each chimneyside plate 3,” as depicted in Fig. 5,
`
`reproduced below.
`
`FIGS
`
`Q
`
`Fig. 5 depicts the lighting device of Fig.
`Ex. 1001, 3:33-34.
`
`1 from a different view.
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`LEDs8 include a light emitting portion that “faces a reflector 5, such that
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`the direction of maximum intensity light emitted by the LEDs1s
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`substantially anti-parallel with the [illumination] direction, D.” /d. at
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`5
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`
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`IPR2023-00198
`Patent 8,721,114 B2
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`3:37-38, 3:43-48. Each reflector 5 includesflat portion 6 adjacent to
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`chimney side plate 3.
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`/d. at 5:6—7. “Light from the LEDs 1s directed toward
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`the bottom of the device by the reflector, so that light is directed toward the
`
`opening 7 between the bottom of the chimney side piece 3 and the far edge 9
`
`of the reflector 5.” /d. at 4:18—-22. According to the ’114 patent, variations
`
`of reflector 5 may be used, including embodiments where the reflector is
`
`rolled, as in Fig. 1, with the roll including a continuouscurve. /d. at 4:32—
`
`35,
`
`The *114 patent explains that LED lifetime may be increased by
`
`reducing the amount of heat around the LEDsbyusing “a central chimneyor
`
`heat sink that circulates air and removes heat from the area aroundthe
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`LEDs,” and whichincludes“a central open portion between the two
`
`chimneysidespieces of the unit.” Ex. 1001, 7:15—22. “In addition, each
`
`chimney side piece may include openings above each LED”that “increase
`
`air flow to and from the device as well as circulation around the LEDs.” /d.
`
`at 7:29-32. According to the 7114 patent, the device may be configured so
`
`that “the chimney is spaced away from a ceiling or wall, and both ends of
`
`the device are open,” whichalso “increase[s] the amountof air circulation
`
`and effectively lower|s] the temperature around the LEDs.” /d. at 7:33-37.
`
`2. Claims 1-19
`
`Petitioner challenges claims 1-19. Pet. 1.
`
`Claim 1 is the sole independent claim andis reproduced below.
`
`Consistent with the Petition, bracketing is addedto assist in referring to the
`
`claim elements. Pet. 12-13.
`
`[1.0] An illumination device for providing light
`1.
`illumination direction, the illumination device comprising:
`
`in an
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`[1.1] a central body having a surface facing the illumination
`direction and including a first heat dissipating mechanism for allowing
`heat to dissipate through a central portion of the central body;
`
`[1.2] first and second groups of Light Emitting Diodes (LEDs)
`connected to the central body directly or via an attachment feature, the
`first and second group of LEDsbeing spaced apart from each other;
`
`[1.3] a second heat dissipating mechanism including one or more
`openings formed in the central body or in the attachment feature;
`
`[1.4] a first reflector extending from the central body adjacent to
`the first group of LEDs for directing light from the first group of LEDs
`in the illumination direction; and
`
`[1.5] a second reflector extending from the central body adjacent
`to the second group of LEDsfor directing light from the second group
`of LEDsin the illumination direction,
`
`[1.6] wherein heat generated by the first and second groups of
`LEDsis dissipated through the central bodyvia thefirst heat dissipating
`mechanism,
`
`[1.7] wherein the one or more openings of the second heat
`dissipating mechanism provide fluid flow cooling of the first and
`second groups of LEDs, and
`
`[1.8] wherein one of the first and second heat dissipating
`mechanisms allows heat to dissipate between the first and second
`reflectors.
`
`Ex. 1001, 11:58—-12:18.
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`D. Asserted References
`
`Petitioner relies on the following references:
`
`|
`Ex. No.
`Reference
`,
`Name
`1049
`| US. Patent Application Publication No.
`Burton
`nnn2908/0002410Al,publishedJan.3,2008sn
`Schuknecht
`US. Patent Application Publication No.
`1041
`:
`snes2£906/0232984Al,publishedOct.19,2006
`“Hsu
`US. Patent Application Publication No.
`1024
`nnn2905/0116597Al,publishedJune2,2005
`“Leong
`USS.Patent No. 6,853,151 B2, issued Feb.8, 1951
`nehn
`Hashimoto
`US. Patent No. 7,959,330 B2, issued June 14,
`1952
`2011
`1053.
`U.S. Patent Application Publication No.
`Baek
`cnnnns'£007/0075325AL,publishedApr.5,.2007
`
`Petitioner also relies on the Declaration of Dr. Jack Josefowicz, Ph.D.
`
`(Ex. 1003, “Josefowicz Decl.”) and the prosecution file for the ’114 patent
`
`(Ex. 1002) as support for the various contentions.
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`E. Asserted Grounds
`
`Petitioner contends that claims 1-19 of the 114 patent are
`
`unpatentable under the following grounds:
`
` |
`
`|
`Burton, POSITA?’
`“1-14, 16, 18,
`“Schuknecht, Hsu, Leong,
`MgyI POSITA
`I
`7 ag. 14,
`§ 103
`Hashimoto, Baek, POSITA
`
`Pet. 1-2
`
`Il. ANALYSIS
`
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`
`Patent Owner requested that we exercise our discretion to deny
`
`institution under § 314(a) due, inter alia, to the advancedstate of the District
`
`Court Action. See Prelim. Resp. 48-54.
`
`? The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claimsof the °114 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. § 103 throughout this Decision.
`3 Person of ordinary skill in the art. Petitioner attributes certain knowledge
`to a POSITAbyasserting that “a POSITA would understand... .” See, e.g.,
`Pet. 22.
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`However, if Petitioner has provided a Sotera? stipulation, we will not
`
`discretionarily deny institution under § 314(a) in view of a District Court
`
`Action. See Director Memorandum, /nterim Procedure for Discretionary
`
`Denials in AIA-Post Grant Proceedings With Parallel District Court
`
`Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director
`
`Memo”), at 3, 7,9. Petitioner argues:
`
`the PTAB will not discretionarily deny institution of an IPR or
`PGRin view ofparallel district court litigation wherea petitioner
`stipulates not to pursue in a parallel district court proceeding the
`same groundsas in the petition or any grounds that could have
`reasonably been raised in the petition (ie.,
`a “Sotera
`stipulation”).
`
`In that regard, the Petition providedthis stipulation:
`
`Petitioner[] want to make clear they are consenting to a full
`Sotera stipulation and Petitioner will not pursuein the parallel
`district court litigation or other parallel proceedings the same
`grounds as raised in this Petition or any grounds that
`Petitioners could have reasonably raised before the PTAB.
`Petitioners agree to not pursue any of the groundsraised in this
`Petition, any grounds raised within Petitioners’
`invalidity
`contentions, or any grounds Petitioners could have reasonably
`raised before the PTAB in the parallel district court litigation or
`any parallel proceeding.
`
`Pet. 88.
`
`In making its request, Patent Owner respondedto Petitioner’s
`
`stipulation by arguing that the stipulation set forth in the Petition is not in
`
`full accordance with Sotera:
`
`+ Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
`Dec. 1, 2020) (precedential, designated Dec. 17, 2020).
`
`10
`
`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`Unlike Sotera, the clear language of this stipulation does not
`include any conditions, particularly the condition of “if IPR is
`instituted”. .. . Furthermore, the clear language doesstate “any
`grounds raised within Petitioners’ invalidity contentions,” in
`reference to Petitioners’ final invalidity contentions filed in the
`district court litigation.
`
`Prelim. Resp. 52.
`
`The Board authorized Petitioner to make modificationsto its
`
`stipulation to accord with the language of Sotera.°
`
`Petitioner subsequently filed a modified Sotera stipulation, which now
`
`states, in part, that:
`
`Defendants [i.e., Petitioner] hereby stipulate that, if the U.S.
`Patent and Trial Appeal Board (“PTAB”) institutes the pending
`inter partes reviews in IPR2023-00145, IPR2023-00198 and
`IPR2023-00125 (“the IPRs”), .. . Defendants agree to not pursue
`any grounds raised in the IPRs, any grounds raised within
`Defendants’ invalidity contentions that were raised or could have
`been raised in the IPRs, or any grounds Defendants could have
`reasonably raised before the PTAB, in this district courtlitigation
`or any parallel proceeding.
`
`Ex. 1056, 1-2.
`
`The modified Sotera stipulation accords with the language of Sotera
`
`and is thus a Sotera stipulation. Accordingly, we will not discretionarily
`
`deny institution of the IPR. Ex. 1056; see Director Memo.
`
`Patent Ownerraises a concern about the phrase “[d]efendants[1.e.,
`
`Petitioner] hereby stipulate that, if the U.S. Patent and Trial Appeal Board
`
`(‘PTAB’) institutes the pending inter partes reviews in IPR2023-00145,
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`IPR2023-00198 and IPR2023-00125.” Prelim. Sur-reply 4; Ex. 1056, 1.
`
`> See supran.1; Ex. 1056.
`
`11
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`
`
`IPR2023-00198
`Patent 8,721,114 B2
`
`Patent Ownerinterprets this to mean the modified stipulation is
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`“condition[ed] on institution of all three of the following IPRs: ‘IPR2023-
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`00145, IPR2023-00198, and IPR2023-00125.’ EX1056 (emphasis added).”
`
`Id.
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`Wedonotread it that way. The Petition clearly indicates that
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`Petitioner intended to attach a “full Sotera stipulation”to this proceeding.
`
`Pet. 88 (emphasis original). The modified stipulation merely perfects the
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`“full Sotera stipulation” Petitioner initially intended to provide with its
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`Petition. We read said phrase simply as Petitioner’s way of expressing that
`
`the modified stipulation attachesto all three IPRs if any of the proceedings
`
`are instituted.
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`For the foregoing reasons, we determinethat the circumstances ofthis
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`case do not warrant discretionary denial of the Petition under 35 U.S.C.
`
`§ 314(a).
`
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`
`Patent Owner requests that the Board exerciseits discretion to deny
`
`institution is under § 325(d). Prelim. Resp. 54-57.
`
`Section 325(d) provides that the Director may elect not to institute a
`
`proceedingif the challenge to the patent is based on matters previously
`
`presented to the Office. 35 U.S.C. § 325(d) states, in pertinentpart, that
`
`“Tijn determining whetherto institute or order a proceeding underthis
`
`chapter, chapter 30, or chapter 31, the Director may take into account
`
`whether, and reject the petition or request because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.”
`
`12
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`
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`IPR2023-00198
`Patent 8,721,114 B2
`
`The Board uses a two-part framework for evaluating arguments under
`
`§ 325(d):
`
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and
`
`(2) if either condition of first part of the framework issatisfied,
`whether the petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`
`(“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful
`
`insight into how to apply the framework under 35 U.S.C. § 325(d).” Jd. at 9
`
`(footnote omitted). The non-exclusive Becton, Dickinson factorsare:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;
`
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art
`or Patent Ownerdistinguishes the priorart;
`
`(e) whether Petitioner has pointed out sufficiently how the
`Examinererred in its evaluation of the asserted prior art; and
`
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of the prior art or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`
`8 at 17-18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
`13
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`
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`IPR2023-00198
`Patent 8,721,114 B2
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`paragraph) (“Becton, Dickinson”). Becton, Dickinson factors(a), (b), and
`
`(d) relate to the first part of the Advanced Bionics framework (whether the
`
`same or substantially the same art or arguments previously were presented to
`
`the Office), and Becton, Dickinson factors(c), (e), and (f) relate to the
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`second part of that framework (previous Office error). Advanced Bionics,
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`Paper 6 at 9-11. Only if the same or substantially the same art or arguments
`
`were previously presented to the Office do we then consider whether the
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`petitioner has demonstrated a material error by the Office. /d.
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`Under § 325(d), the art or arguments must have been previously
`
`presented to the Office during proceedings, such as examination of the
`
`underlying patent application, pertaining to the challenged patent. Advanced
`
`Bionics, Paper 6 at 7. Previously presented art includes art made of record
`
`by the Examiner, and art provided to the Office by an applicant, such as on
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`an Information Disclosure Statement (“IDS”), in the prosecution history of
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`the challenged patent. /d. at 7-8.
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`1. First step ofthe framework
`
`Patent Owner contendsthat, “/a/s clearly shown here, substantially
`
`the same art and arguments were presented during examination, considered
`
`by the Examiner, and ultimately found not to render the claims
`
`unpatentable.” Prelim. Resp. 56 (emphasis added). Patent Owner provides
`
`one example:
`
`during prosecution the Examiner relied on Kaszuba® [Ex. 1009]
`as disclosing “a reflector 36 extending from the central body (see
`paragraph number 62, reflective panels 36 extend from central
`
`° U.S. Patent Application Publication No. 2007/0228289 A1, published Oct.
`4, 2007; Application 11/686,897, filed Mar. 15, 2007. Ex. 1009.
`
`14
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`
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`IPR2023-00198
`Patent 8,721,114 B2
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`body 32... .) adjacent to the (elongated light source or group of
`LEDs)”. EX1002, 173. In the same fashion, Petitioners rely on
`Burton in Ground1 as disclosing reflectors. See Petition, 22 (“A
`POSITA would understand each support plate forming the
`central body includes a parabolic shaped first and second
`reflector (shaded red) adjacent a given LED array (first/second
`group of LEDs)
`for directing light
`in the illumination
`direction.”’).
`
`Id. at 55. Patent Owner addsthat Petitioner “rel[ies] on Schuknechtin
`
`Ground 2 and Baek in Ground 3 as disclosing first and second reflectors in
`
`this same fashion.” /d. (citing Pet. 45, 74).
`
`As a preliminary matter, the Examiner did not apply Burton,
`
`Schuknect, and Baek and Patent Owner does not indicate, nor does there
`
`appearto be any indication in the record, that the Examiner considered these
`
`references. See generally Prelim. Resp. 54—57; Ex. 1002.
`
`Asfar as Burton, Schuknect, and Baek being cumulative of Kaszuba
`
`is concerned(1.e., Becton, Dickinson factor (b)), the record strongly suggests
`
`otherwise.
`
`Burton, Schuknect, and Baekare directed to devices for illuminating a
`
`space, similar to the °114 patent. Compare Ex. 1001, 2:6—16, with Ex. 1049
`
`4 2 (LEDlight unit”), Ex. 1041 4 2 (“fluorescent lamp”), and Ex. 1053 § 3
`
`(“Light Emitting Diode (LED) package’).
`
`Kaszuba on the other hand, and unlike the ’114 patent, is directed to
`
`“an ultraviolet (UV) cure chamberfor curing a dielectric material disposed
`
`on a substrate and to methods of curing dielectric materials using UV.”
`
`Ex. 1009 4 8.
`
`The devices of Burton, Schuknecht, and Baek (and the ’114 patent)
`
`are constructed so as to solve very different problems than the problem
`
`15
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`
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`IPR2023-00198
`Patent 8,721,114 B2
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`Kaszuba is concerned about(illumination versus curing). Underthe
`
`circumstances, we are persuadedthat this indicates a material difference
`
`between the asserted art (Burton, Schuknect, and Baek) and the prior art that
`
`wasinvolved during examination (Kaszuba), and supports a finding that the
`
`references are not cumulative to what was considered during prosecution.
`
`Cf. Becton, Dickinson factors(a), (b).
`
`Burton, Schuknecht, and Baek (and the ’114 patent) are directed to
`
`illumination lamps using conventional illuminating bulbs, fluorescent in the
`
`case of Schuknecht and LEDs in the cases of Burton and Baek. Ex. 1041
`
`4] 2; Ex. 1049 4 2; Ex. 1053 4 28. Such bulbs outputlight within the visible
`
`spectrum.
`
`Kaszuba’s device1s not for illumination but to concentrate UV
`
`radiation in such a waythat it improves curing a dielectric material disposed
`
`on a substrate. Ex. 1009 4 9-19. The Examiner relied on Kaszuba as
`
`disclosing LEDs, pointing to one recitation of UV LEDsin Kaszuba.
`
`Ex. 1002, 172; Ex. 1009 4 83 (“In general, embodiments of the invention
`
`contemplate any UV source such as mercury microwavearc lamps, pulsed
`
`xenon flash lamps or high-efficiency UV light emitting diodearrays.”’)
`
`Kaszuba’s LEDsbulbs output light within the UV spectrum.
`
`While LEDs may beused in Kaszuba’s device, which makes Kaszuba
`
`somewhat similar to the asserted art, especially Burton and Baek but also
`
`Schuknecht, there is a substantial structural difference between the UV
`
`LEDs Kaszubauses for UV curing and conventionalillumination LEDs
`
`Burton and Baek (and the ’114 patent) use to light a space. In our view,this
`
`structural difference coupled with their very different objectives makes the
`
`16
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`IPR2023-00198
`Patent 8,721,114 B2
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`difference between the asserted art (Burton, Schuknecht, and Baek) and the
`
`prior art that was involved during examination (Kaszuba) a material one.
`
`Andthenthere is the matter of the claims.
`
`In arguing that Petitioner presents the same argumentsas presented by
`
`the Examiner, Patent Owner recognizes that the Examinerrelied on Kaszuba
`
`as disclosing “a reflector” but Petitioner relies on Burton, Schuknecht, and
`
`Baek as disclosing “first and second reflectors.” Prelim. Resp. 55.
`
`This is so because the claim the Examiner addressed only called for a
`
`single reflector. Cf Ex. 1002, 156 (claim 35: “a reflector”), 172-173 (Final
`
`Action: Kaszuba “discloses .
`
`.
`
`. a reflector 36”). The Examiner did not
`
`address whether Kaszuba disclosed “first and second reflectors” because that
`
`limitation was addedlater to the claims, after which the claims were allowed
`
`without further examination. /d. at 183-187.
`
`The “reflector” limitation before the Examinerread “a reflector
`
`extending from the central body adjacent to the group of LEDsfor directing
`
`light from the group of LEDsin the illumination direction.” Ex. 1002, 156
`
`(claim 35).
`
`Contrast that with the patent claims, which call for:
`
`a first reflector extending from the central body adjacent to the
`first group of LEDsfor directing light from the first group of LEDs in
`the illumination direction; and
`
`a second reflector extending from the central body adjacent to
`the second group of LEDsfor directing light from the second group of
`LEDs in the illumination direction.
`
`Ex. 1001, 12:4—9 (claim 1, limitations [1.4], [1.5]); see also id. at 12:16-18
`
`(claim 1, limitation [1.8] (“one of the first and secondheat dissipating
`
`17
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`IPR2023-00198
`Patent 8,721,114 B2
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`mechanismsallowsheat to dissipate between the first and second
`
`reflectors”).
`
`Petitioner’s arguments are new ones because no arguments during
`
`prosecution were presented for a first and second reflector. Therefore, there
`
`is no overlap between the arguments made during examination and the
`
`mannerin whichPetitioner relies on Burton, Schuknect, and Baek. Cf.
`
`Becton, Dickinsonfactor(d).
`
`Relying on materially-different references not before the Examiner,
`
`that is, Burton, Schuknecht, and Baek, Petitioner presents arguments
`
`addressing the now-claimedfirst and secondreflector limitations that the
`
`Examiner did not examine. See Pet. 21—23 (Burton); 45—48 (Schuknecht);
`
`and, 73-75 (Baek).
`
`For the reasons discussed related to Becton, Dickinson factors(a), (b),
`
`and (d), we find the art and argumentsare not the sameor substantially the
`
`same as was previously presented to the Office.
`
`2. Second step ofthe framework
`
`Because the sameor substantially the same art or arguments were not
`
`previously presented to the Office, we do not consider whether Petitioner
`
`has demonstrated a material error by the Office. See Advanced Bionics,
`
`Paper6 at 9-11.
`
`3. Conclusion Regarding § 325(d)
`
`Under the circumstancesof this case, we determine that exercising
`
`discretion to deny the Petition under § 325(d) is unwarranted.
`
`18
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`IPR2023-00198
`Patent 8,721,114 B2
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`C. Principles ofLaw for Patentability
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, “would have been obviousat the time the
`
`invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and
`
`the prior art; (3) the level of ordinary skill in the art; and (4) when in
`
`evidence, objective evidence of nonobviousness.’ Graham v. John Deere
`
`Co., 383 U.S. 1, 17-18 (1966).
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challengesis
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`
`(Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (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 Patent Owner. See Dynamic Drinkware, LLCv.
`
`Nat’! Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the
`
`burden of proof in inter partes review).
`
`7 Patent Ownerdoesnot present objective evidence of nonobviousness.
`
`19
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`IPR2023-00198
`Patent 8,721,114 B2
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`D. Level of Ordinary Skill in the Art
`
`Petitioner contends:
`
`A person of ordinary skill in the art of the ’114 Patent
`(POSITA) would haveat least a bachelor’s degree in a relevant
`scientific field, e.g., physics, materials science or engineering, or
`electrical engineering, and two or more years of experience in
`lighting design with LED fixtures for lighting applications. This
`description
`is
`approximate
`and
`additional
`development
`experience could makeup for less education and vice versa.
`
`Pet. 2 (citing Ex. 1003 4§ 37-40). Patent Ownerstates, “[f]or the purpose of
`
`this Preliminary Response, applying this level of skill is sufficient for the
`
`Board to evaluate the Petition Grounds.” Prelim. Resp. 11.
`
`Petitioner’s proposed definition of a person of ordinary skill in the art
`
`appears reasonable, and we adoptthat definition for our analysisin this
`
`decision.
`
`That being said, we see no reason whythe level of ordinary skill in
`
`the art is not adequately reflected by the prior art of record. See Okajimav.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`E. Claim Construction
`
`Forpetitions filed on or after November 13, 2018, “[claims] of a
`
`patent ... shall be construed using the same claim construction standard that
`
`would be used to construe the [claims] in a civil action under 35 U.S.C.
`
`§ 282(b), including construing the [claims] in accordance with the ordinary
`
`and customary meaning of such claims as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.”
`
`20
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`IPR2023-00198
`Patent 8,721,114 B2
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`37 C.F.R. § 42.100 (2019); see also Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-14 (Fed. Cir. 2005).
`
`Petitioner proposes constructions for two claim limitations. Pet. 9-12.
`
`1. Limitations [1.4] (‘first reflector .
`
`.
`
`. adjacent to the first group of
`
`LEDs”’) and [1.5] (“secondreflector .
`
`.
`
`. adjacent to the second group of
`
`reflectors for directing light from the second group of LEDs’).
`
`Petitioner proposesthat the two reflector terms in [1.4] and [1.5] be
`
`construed as “first/second reflector... for directing light only from the
`
`first/second group of LEDs.” Pet. 11 (emphasis original).
`
`Patent Ownerresponds,inter alia, that “[n]othing in the ’114 Patent’s
`
`specification or prosecution history suggests these terms should be given
`
`anything other than their plain and ordinary meaning.” Prelim. Resp. 11.
`
`2. Limitation [1.1] (“a first heat dissipating mechanism for allowing
`
`heat to dissipate through a central portion of the central body”).
`
`According to Petitioner, “[c]laim 1 uses the generic term ‘mechanism’
`
`which Petitioner[] contends invokes a §112, §6 construction.” Pet. 11. If
`
`§112, J 6 were to be invoked, Petitioner proposes construing “afirst heat
`
`dissipating mechanism”as limited to the corresponding structure disclosed
`
`in the Specification; that is, “‘a central chimney having a walled, open-
`
`ended channel defining the central portion of the central body’.” Pet. 12
`
`(citing Ex. 1001, 7:19-21; Ex. 1055 4] 4-10; Ex. 1003 § 88).
`
`Patent Ownerdisputes the way Petitioner has framed the inquiry.
`
`“T]he correct inquiry is whether the term ‘heat dissipating mechanism’ is
`
`subject to §112, 96,” not just the term “mechanism.” Prelim. Resp. 14.
`
`Petitioners’ proposed term, plucked out of context from the surrounding
`
`claim language, has no application here.” /d.
`
`21
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`IPR2023-00198
`Patent 8,721,114 B2
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`Atthis stage of the proceeding,it is unnecessary for us to address
`
`Petitioner’s proposed constructions for the two limitations in order to resolve
`
`any of the patentability disputes. Only those terms that are in controversy
`
`need to be construed, and only to the extent necessary to resolve the
`
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999),
`
`F. Overview of the Prior Art References
`
`1. Burton (Ex. 1049)
`
`Burtonis titled “Apparatus for Using Heat Pipes in Controlling
`
`Temperature of an LED Light Unit,” and relates to “removing heat from an
`
`LEDlight unit.” Ex. 1049, code (54), § 2. Burton’s Fig. 5 1s reproduced
`
`below.
`
`22
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`IPR2023-00198
`Patent 8,721,114 B2
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`
`
`FIG. 5
`
`Fig. 5 illustrates an exploded view of an exemplary LED light unit 400.
`Ex. 1049 4 45.
`
`LEDlight unit 400 includesa plurality of support plates with each
`
`support plate 102 having at least one array of LEDs 302 formed from a
`
`plurality of individual LEDs placed adjacently to one another generally in a
`
`line.
`
`/d. 932. Support plates 102 are constructed from a thermally
`
`conductive material such as copper or aluminum, are stacked vertically
`
`above one another, and are coupled to a center column 108.
`
`/d. /§ 20, 24.
`
`Burton explains that air intake 202 at the bottom of center column 108 (see
`
`23
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`
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`IPR2023-00198
`Patent 8,721,114 B2
`
`Fig. 2) provides an air flow through inner opening 106 of center column 108
`
`to create an “updraft” to help facilitate heat transfer.
`
`/d. 431. In addition,
`
`inner openings 106 allow heat pipes 104 to extend vertically up through each
`
`support plate 102 for sufficiently removing heat away from the LEDarrays.
`
`Id. § 22. In the depicted embodiment, lens cover 412 may beusedto seal
`
`LED light unit 400 and a plate 404 supporting at least one heat sink 406.
`
`/d.
`
`450. “[L]ens cover 412 may be constructed from a transparent material
`
`such as, for example, glass or plastic in order to allow the light generated by
`
`the LEDs to exit the unit.” /d.
`
`2. Schuknecht (Ex. 1041)
`
`Schuknechtis titled “Compact Fluorescent Lamp Fixture Ventilation
`
`Method and Apparatus.” Ex. 1049, code (54). Schuknecht’s Fig. 22 is
`
`exemplary and is reproduced below.
`
`24
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`IPR2023-00198
`Patent 8,721,114 B2
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`
`
`Fig. 22 is a representational line drawing simulating a sectioned view
`of a CFL fixture showing a reflected light path. Ex. 1049 § 48.
`
`Schuknecht’s fixture includes a lamp chamber 122, also known as a
`
`reflector or dome, which surrounds a set of compact fluorescent lamps 16.
`
`Ex. 1049 4 52. The fixture also includes vertical vents 104, outboard of
`
`reflective piece 110, which can be a ring of material as shown in Fig. 22, or
`
`individual reflective pieces. /d. § 86. The light path, as shownbylines 130,
`
`is emitted from lamps 16 and reflected off reflective piece 110.
`
`/d. 987. “A
`
`portion of the reflected light 1s reflected downwardly as shownbythelight
`
`path indicator lines.” /d. Since reflective piece 110 is mounted inboard
`
`from the interior surface of th
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