throbber
IPR2017-01285
`U.S. Patent 8,672,518
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`TECHNICAL CONSUMER PRODUCTS, INC.,
`NICOR INC.,
`AMAX LIGHTING,
`Petitioners,
`v.
`
`LIGHTING SCIENCE GROUP CORP.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01285
`
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,672,518
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`

`

`TABLE OF CONTENTS
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`Page
`
`
`SUMMARY OF ARGUMENT ...................................................................... 1
`I.
`II. DR. BRETSCHNEIDER’S OPINIONS SHOULD BE AFFORDED
`LITTLE OR NO WEIGHT ............................................................................. 2
`III. CLAIMS 1, 3, 6-8, 11, 12, AND 14 ARE OBVIOUS OVER
`SODERMAN IN LIGHT OF WEGNER ....................................................... 4
`A.
`Patent Owner’s Arguments Regarding Claims 1 And 14 Are
`Irrelevant To The Claims ..................................................................... 4
`Patent Owner Disregards A POSA’s Creativity And Knowledge ....... 5
`B.
`C. Additional Features Unrelated To The Accessory Kit Would
`Not Have Prevented A POSA From Combining Wegner’s
`Accessory Kit With Soderman ............................................................. 9
`Claim 14 Is Obvious ............................................................................. 9
`D.
`IV. CLAIMS 4 AND 5 ARE OBVIOUS OVER SODERMAN IN LIGHT
`OF SILESCENT AND WEGNER ............................................................... 11
`CLAIMS 1, 2, 5-8, 11, 12, AND 14 ARE OBVIOUS OVER ZHANG
`IN LIGHT OF WEGNER ............................................................................. 18
`VI. CLAIM 4 IS OBVIOUS OVER ZHANG IN LIGHT OF SILESCENT
`AND WEGNER ............................................................................................ 21
`VII. THE ABSENCE OF SECONDARY CONSIDERATIONS
`SUPPORTS OBVIOUSNESS ...................................................................... 22
`VIII. CONCLUSION ............................................................................................. 23
`
`V.
`
`i
`
`

`

`IPR2017-01285
`U.S. Patent 8,672,518
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`BLD Services, LLC v. LMK Technologies, LLC,
` 2015 WL 7304013 IPR2014-00768, 2015 WL 7304013 (Nov. 18, 2015) ........... 3
`
`Ethicon, Inc. v. U.S. Surgical Corp.,
` 135, F.3d 1456 (Fed. Cir. 1998) ............................................................................ 3
`
`Hewlett-Packard Co. v. U.S. Philips Corp.,
` IPR2015-01505 (PTAB Jan. 19, 2016) ............................................................... 17
`
`In re Cyclobenzaprine,
` 676 F.3d 1063 (Fed. Cir. 2012) ........................................................................... 23
`
`In re Gorman,
` 933 F.2d 982 (Fed. Cir. 1991) ............................................................................... 7
`
`In re Klein,
` 647 F.3d 1343 (Fed. Cir. 2011) ...................................................................... 9, 21
`
`In re Klopfenstein,
` 380 F.3d 1345 (Fed. Cir. 2004) ........................................................................... 11
`
`Innovention Toys, LLC v. MGA Entertainment, Inc.,
` 637 F.3d 1314 (Fed. Cir. 2011) .............................................................. 19, 21, 22
`
`L&P Property Management Co. v. National Prods. Inc.,
` IPR2016-00475, 2017 WL 3085926 (PTAB July 19, 2017) ....................... 13, 18
`
`Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd.,
` 719 F.3d 1346 (Fed. Cir. 3013) ........................................................................... 22
`
`Unified Patents Inc. v. Nonend Inventions N.V.,
`IPR2016-00174, Dec. Denying Req. for Reh’g, 2017 WL 3174102, at *1
`(July 25, 2017 .................................................................................................. 5, 20
`
`WBIP, LLC v. Kohler Co.,
` 829 F.3d 1317 (Fed. Cir. 2016) ............................................................................. 8
`
`ii
`
`

`

`
`Statutory Authorities
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`35 U.S.C. § 103 .......................................................................................................... 4
`
`35 U.S.C. § 311(b) ............................................................................................ 11, 16
`
`35 U.S.C. §§ 311-319 ................................................................................................. 1
`
`Rules and Regulations
`
`37 C.F.R. § 42.1-.80 ................................................................................................... 1
`
`37 C.F.R. § 80.100-.123 ............................................................................................. 1
`
`
`
`iii
`
`

`

`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`Ex. 1022
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,672,518
`Declaration of Dr. Zane Coleman in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,672,518 (“Coleman
`Decl.”)
`Provisional Application 61/248665 (‘968 Patent)
`Original Application 12/775310(‘968 Patent)
`Original claims of Application 12/775310 (‘968 Patent)
`Office Action (‘968 Patent)
`Reply to Office Action (‘968 Patent)
`Notice of Allowance (‘968 Patent)
`Notice of Allowance (‘518 Patent)
`U.S. Patent No. 7,670,021 (“Chou”)
`U.S. Patent No. 7,828,465 (“Roberge”)
`Roberge Provisional Appl. No. 60/916,053
`U.S. Patent No. 7,980,736 (“Soderman”)
`U.S. Patent No. 7,722,227 (“Zhang”)
`U.S. Patent No. 7,993,034 (“Wegner”)
`Silescent S100LP2 Installation Instructions and Cut Sheet
`(“Silescent”)
`Declaration of Daryl Soderman in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,201,968 (“Soderman
`Decl.”)
`Reply to Office Action – November 13, 2014 (‘844 Patent)
`U.S. Patent Application Publication No. 2002/0113244
`(“Barnett”)
`International Publication No. WO 2010/004503A1 (“Van
`Elmpt”)
`U.S. Application No. 13/476,388 (the “‘388 application”)
`U.S. Patent No. 8,201,968 (“‘968 Patent)
`Progress Lighting’s Guide to Green Lighting (“Progress
`Lighting Catalog”)
`U.S. Provisional Patent Application Ser. No. 60/979,068
`(“Zhang Provisional”)
`Deposition transcript and exhibits from Dr. Eric Bretschneider
`deposition
`
`iv
`
`

`

`
`
`Ex. 1026
`Ex. 1027
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`Nov. 22, 2017 email exchange with PTAB
`Dr. Bretschneider patent chart
`Declaration of Eric Bretschneider, Ph.D
`Deposition Transcript of Zane Coleman, Ph.D and Exhibits
`Silescent/Inteltech Patent Chart
`Deposition Transcript of Daryl Soderman and Exhibits
`
`v
`
`

`

`
`I.
`
`SUMMARY OF ARGUMENT
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`As explained in the Petition, the claims of the ‘518 patent are invalid as
`
`obvious over the prior art. Although LED light fixtures were only beginning to
`
`become common in the residential market, the state of the art in 2009 was replete
`
`with disclosures of LED light fixtures, and a POSA would have been motivated to
`
`create a luminaire suitable for installation in both can fixtures and junction boxes.
`
`In reality, the claimed luminaires are nothing more than what a skilled artisan would
`
`have assembled for a new customer using off-the-shelf components to meet the
`
`market demand.
`
`Patent Owner’s Response is not based on an attack contesting that Petitioners’
`
`prior art discloses the elements recited in the ‘518 claims. Patent Owner also never
`
`disputes the motivation that Petitioners and Dr. Coleman have identified: there was
`
`a market need for LED fixtures that could be readily and easily installed in new
`
`construction and retrofit applications, using both junction boxes or can light fixtures.
`
`Instead, Patent Owner ignores Petitioners’ stated motivations and asserts that a
`
`skilled artisan would not have combined references from the same field of
`
`endeavor—i.e., LED light fixtures used in various applications—only because those
`
`references do not explicitly disclose use in both can light fixtures and junction boxes.
`
`Patent Owner’s response grossly misapprehends the law of motivation in an
`
`obviousness context and improperly narrows the scope of prior art properly
`
`1
`
`

`

`
`considered. The law is clear that a market need or problem provides a reason to
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`combine references. The law is also clear that it is appropriate to combine references
`
`from the same field of endeavor. Combining known devices or known elements to
`
`perform their expected functions—which itself is an overly generous description of
`
`patent owner’s claims—is not inventive.
`
`II. DR. BRETSCHNEIDER’S OPINIONS SHOULD BE AFFORDED
`LITTLE OR NO WEIGHT
`
`As an initial matter, Dr. Bretschneider’s opinions, on which the Response
`
`relies, deserve little or no weight because of his longstanding and ongoing
`
`relationships with the Patent Owner and the inventors. Dr. Bretschneider was a
`
`Product Development Manager for LSG when the patent application leading to the
`
`’968 patent was filed. Ex. 2001 at 54. He worked with each and every named
`
`inventor during his time at LSG, and directly supervised three of them. Ex. 1025,
`
`73:13-74:15, 75:20-77:1, 78:7-17. Moreover, Dr. Bretschneider was “overall
`
`responsible for the testing of the production model of the products described in the
`
`patents-in-suit” and even was responsible for “some of the direct testing.” Id. at
`
`78:3-6.
`
`Since leaving LSG in 2011, Dr. Bretschneider has had multiple agreements
`
`with LSG to provide advice and services which continue today. Id. at 87:24-88:8,
`
`88:15-20, 92:12-18, 94:19-25, 95:19-21, 96:13-17, 97:21-24. Furthermore, Dr.
`
`2
`
`

`

`
`Bretschneider has recently reached out to his contacts at LSG in relation to his
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`development of new testing hardware, for which he believes LSG is a potential
`
`customer. Id. at 109:2-20, 112:19-24.
`
`Of the 30 patents Dr. Bretschneider lists on his CV, the vast majority include
`
`co-inventors of the patents in these related IPRs. Ex. 2001 at 58-59. He continues
`
`to receive newly issued patents with named inventors today, including a patent that
`
`issued this past March. See Ex. 1027
`
`At a minimum, these close and ongoing relationships with LSG and the
`
`inventors severely undercut Dr. Bretschneider’s credibility as an independent,
`
`unbiased expert. By contrast, Petitioners’ expert Dr. Coleman has no such
`
`connections to any party and has provided unbiased and well-supported opinions.
`
`See Ethicon, Inc. v. U.S. Surgical Corp., 135, F.3d 1456, 1465 (Fed. Cir. 1998)
`
`(citation omitted) (holding that interests of expert witnesses who were employees of
`
`plaintiff affected the weight of their testimony); see also BLD Services, LLC v. LMK
`
`Technologies, LLC, 2015 WL 7304013 IPR2014-00768, Paper 37, 2015 WL
`
`7304013, *5 (Nov. 18, 2015) (“according proper weight to the [expert] testimonies,
`
`taking account of the credibility challenges raised by each party.”).
`
`3
`
`

`

`IPR2017-01285
`U.S. Patent 8,672,518
`
`
`III. CLAIMS 1, 3, 6-8, 11, 12, AND 14 ARE OBVIOUS OVER SODERMAN
`IN LIGHT OF WEGNER
`A.
`
`Patent Owner’s Arguments Regarding Claims 1 And 14 Are Irrelevant
`To The Claims
`
`Patent Owner does not dispute that Soderman and Wegner disclose all the
`
`limitations in claims 1, 3, 6-8, 11, 12, and 14.1 Instead, Patent Owner argues that a
`
`POSA would not have combined Soderman and Wegner. Patent Owner’s argument
`
`boils down to the unsupported suggestion that light fixtures allegedly intended for
`
`use with junction boxes (Soderman) are so different from light fixtures intended for
`
`use with light cans (Wegner) that a POSA would not have been motivated to
`
`combine them. Neither claim 1 nor 14 require that the recited light fixture be
`
`
`1
`On May 3, 2018, the Board issued an Order (Paper No. 19) amending its
`decision to institute to include all of the challenged claims and grounds presented in
`the Petition. The original decision did not institute claim 10 based on grounds III
`and VI because those grounds inadvertently omitted an explicit identification of
`Wegner for its disclosure of the accessory kit. Paper No. 10, 26-27. Petitioners
`sought authorization to correct this error, but the Board denied this request. Ex. 1026
`(email correspondence).
`
`Claim 10 depends directly from claim 1 and accordingly incorporates all the
`limitations of claim 1. Petitioners presented grounds for invalidity of claim 1
`pursuant to 35 U.S.C. § 103 over Soderman and Wegner (Paper No.1, 21-34) and
`over Zhang and Wegner (Id., 41-56). Petitioners presented detailed analyses of these
`references—including Wegner’s disclosure of the recited “pre-wired jumper” or
`“accessory kit.” (Id., 15-16, 25-26, 46-48). The Board credited Petitioners’ analyses
`and argument and instituted review of claim 1 based on both combinations of
`references. (Paper 10, 14, 25). So too should claim 10 be found invalid in light of
`Wegner’s disclosure of the accessory kit.
`
`4
`
`

`

`
`installed to a junction box or can light, making the purported distinction proposed
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`by Patent Owner tenuous at best.
`
`Furthermore, Patent Owner specifically addresses only independent claim 1
`
`and dependent claim 14 that are under review in Ground 1. Patent Owner’s
`
`Response (“Resp.”), Paper 17, 5, 9 (Feb. 13, 2018). The remaining challenged
`
`claims depend, directly or indirectly, from claim 1, and Patent Owner has waived
`
`any arguments directed to the additional limitations recited in these claims. See
`
`Unified Patents Inc. v. Nonend Inventions N.V., IPR2016-00174, Dec. Denying Req.
`
`for Reh’g, 2017 WL 3174102, at *1 (July 25, 2017 (“arguments for patentability”
`
`not raised in Patent Owner’s Response are deemed waived.”).
`
`Patent Owner Disregards A POSA’s Creativity And Knowledge
`
`B.
`Furthermore, Patent Owner’s arguments ignore the knowledge, skill, and
`
`creativity of a POSA, and incorrectly suggests that if a reference fails to expressly
`
`disclose any limitation of the asserted claims, it should be disregarded entirely in an
`
`obviousness analysis. These arguments are legally wrong.
`
`The Supreme Court has recognized that “[a] person of ordinary skill is also a
`
`person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. “When
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a POSA has good reason to pursue the
`
`known options within his or her technical grasp. If this leads to the anticipated
`
`5
`
`

`

`
`success, it is likely the product not of innovation but of ordinary skill and common
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`sense.” KSR, 550 U.S. at 421. Furthermore, “in many cases a person of ordinary
`
`skill will be able to fit the teachings of multiple patents together like pieces of a
`
`puzzle.” KSR, at 420-21.
`
`There is ample evidence that a POSA would have recognized a need for
`
`versatile, easy to install LED lights that could be used in new installations as well as
`
`in retrofit applications. Dr. Coleman explained that a POSA would have been
`
`motivated to modify the light fixture disclosed in Soderman by including an
`
`accessory kit at least so that the light fixture could be more easily connected to an
`
`existing Edison socket and could be deployed in both junction boxes and in existing
`
`light cans. Ex. 1002, ¶ 49. This flexibility would increase possible applications,
`
`resulting in a larger market which would have been commercially desirable. The
`
`‘518 patent itself recognizes that this was a problem it sought to solve:
`
`With the advent of LED (light emitting diode) lighting,
`there is a great need to not only provide new work LED
`light fixtures, but to also provide LED light fixtures that
`are suitable for old work application, thereby enabling
`retrofit installations.
`
`Ex. 1001, 1:27-31. Wegner also recognized the need for LED devices for use in
`
`“both new construction and retrofit applications.” Ex. 1015, 3:10-11. Accordingly,
`
`a POSA would have been motivated to combine Soderman and Wegner, rendering
`
`the claims of the ‘518 patent obvious.
`
`6
`
`

`

`Patent Owner glosses over this motivation and relies on its theme that a POSA
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`
`
`would have considered the teachings of Soderman and Wegner somehow too
`
`different to be combined. Resp., 7-9. Contrary to Patent Owner’s and its expert’s
`
`cramped and narrow view of a POSA’s skill, knowledge and creativity, a POSA
`
`would have considered the teachings of these references. See In re Gorman, 933
`
`F.2d 982, 986 (Fed. Cir. 1991) (citations omitted) (“When the references are all in
`
`the same or analogous fields, knowledge thereof by the hypothetical person of
`
`ordinary skill is presumed.”). There can be little doubt that the ‘518 patent,
`
`Soderman, and Wegner are all drawn from the same or analogous fields of endeavor,
`
`namely LED lighting fixtures. Ex. 1001, 1:27-31; Ex. 1001, 4: 24-33; Ex. 1013,
`
`1:8-10, 2:48-50; Ex. 1015, 2:4-5; 3:10-11.
`
`The purported distinction between fixtures installed in cans and junction
`
`boxes—on which Patent Owner relies so heavily—does not withstand scrutiny.
`
`Resp., 6-8. The only support for this alleged distinction comes from Patent Owner’s
`
`expert, Dr. Bretschneider, who references two figures from a 1981 handbook
`
`allegedly showing the differences between light fixtures mounted above (in can
`
`lights) and below (attached to junction boxes) the ceiling. Ex. 2001, ¶¶27-28. As
`
`Dr. Bretschneider admitted during his deposition, LEDs for commercial lighting
`
`purposes were not available until about 2003 and the handbook necessarily would
`
`not have contemplated an LED light source more than 20 years prior. See Ex. 1025,
`
`7
`
`

`

`
`34:16-35:2. Accordingly, these figures are irrelevant to the design and market
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`realities of LED fixtures; an obvious demonstration is the very different size of each
`
`of these light sources; an LED light source is much smaller than traditional
`
`incandescent and fluorescent light bulbs. See Ex. 1025, 27:17-28:11 (agreeing that
`
`LEDs are small).
`
`The only legal support Patent Owner relies on is the WBIP case, but that case
`
`is inapposite. Resp., 9. In WBIP, one of the two prior art references—combined in
`
`an obviousness challenge—was, according to patentee’s expert, the “total reverse”
`
`from the other prior art reference. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327
`
`(Fed. Cir. 2016). The patentee in WBIP also presented voluminous evidence of
`
`secondary considerations of non-obviousness which the court relied upon, in part, to
`
`conclude the that it would not have been obvious to modify the prior art to obtain
`
`the invention. WBIP, 829 F.3d at 1337. Here, as Dr. Coleman explains, it would
`
`have been an easy modification to add the accessory kit to a fixture as disclosed in
`
`Soderman to create an easy to install light fixture that could be deployed in both
`
`junction boxes and in existing light cans. Ex. 1002, ¶ 49. In addition, Patent Owner
`
`here has presented no evidence of secondary considerations (see Section VII,
`
`below), further demonstrating the irrelevance of this case.
`
`8
`
`

`

`
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`C. Additional Features Unrelated To The Accessory Kit Would Not
`Have Prevented A POSA From Combining Wegner’s Accessory
`Kit With Soderman
`
`Patent Owner also argues that certain features disclosed in Wegner—
`
`convective heat dissipation and a certain size reflector—that are unrelated to the
`
`accessory kit on which Petitioners rely would have prevent a POSA from combining
`
`Soderman and Wegner. See Resp., 8. These arguments are largely irrelevant
`
`because a reference is appropriately considered for an obviousness determination if
`
`“it is from the same field of endeavor, regardless of the problem addressed.” In re
`
`Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Dr. Bretschneider’s suggestion that
`
`certain heat dissipation and reflectors disclosed in Wegner would have prevented a
`
`POSA from considering Wegner accessory kit is simply not persuasive. The features
`
`of heat dissipation characteristics and reflector used in Wegner would not cause a
`
`POSA in the art to question whether an accessory kit would have resulted in a
`
`versatile easy to install light fixture. Indeed, Dr. Bretschneider does not even
`
`contest—as he cannot—that the accessory kit in Wegner is the same kit recited in
`
`the ‘518 claims. See Pet., 25-26.
`
`D. Claim 14 Is Obvious
`Patent Owner does not dispute that Wegner discloses a reflector as recited in
`
`claim 14. See Pet., 33-34. Again, Patent Owner relies on its argument that a POSA
`
`9
`
`

`

`
`would not have been motivated to combine Soderman and Wegner. Patent Owner
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`is wrong for a least the reasons set forth above in Section III.B.
`
`In addition, Dr. Coleman also explains, that a POSA would have been
`
`“motivated to include a reflector because wide angle light from the LED would
`
`otherwise be significantly absorbed by the housing between the LED and the optic.”
`
`Ex. 1002, ¶59. Patent Owner argues that Soderman does not disclose a housing
`
`between the LED and the optic. Resp., 9-10. Patent Owner ignores Dr. Coleman’s
`
`explanation that Wegner discloses a “reflector housing [that] that can be mounted
`
`substantially around the LED package.” Ex. 1002, ¶ 59. It is the combination of
`
`these two references that render claim 14 obvious.
`
`Patent Owner also argues that an alternative purpose of a reflector—spot
`
`illumination—is contrary to the teachings of Soderman. Resp., 10. Patent Owner
`
`simply misconstrues Soderman. The portion of Soderman on which Patent Owner
`
`relies references both “high power applications” of LEDs—“such as spotlights,
`
`automotive headlights etc.”—with LEDs used in “conventional domestic and
`
`commercial environments.” Ex. 1013, 1:28-34. There is no indication, however,
`
`that Soderman excludes “spotlighting.” Resp., 10. To the contrary, the “Summary
`
`of the Invention” section of Soderman discloses a device of broad application:
`
`“Accordingly, the light fixture assembly of the present invention may be utilized for
`
`a variety of practical applications including installations within commercial,
`
`10
`
`

`

`
`domestic, and specialized environments.” Ex. 1013, 2:47-50. Soderman also
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`discloses a fixture that can “direct or channel” LED light. Id., 7:58-61. Accordingly,
`
`Soderman does not teach away from “spotlighting” nor from using a reflector, and
`
`Patent Owner’s argument fails.
`
`IV. CLAIMS 4 AND 5 ARE OBVIOUS OVER SODERMAN IN LIGHT OF
`SILESCENT AND WEGNER
`
`Patent Owner does not dispute that the Silescent product sheet (Ex.1016)
`
`discloses the overall height (H) and overall outside dimension (D) ratio required in
`
`claim 4. Resp., 10-11. Patent Owner also does not dispute that the Silescent product
`
`sheet discloses a fixture dimensioned to cover a four-inch can light and junction box
`
`as required in claim 5. Resp., 17. Instead, Patent Owner argues that the Silescent
`
`product sheet is not a “printed publication” as required by 35 U.S.C. § 311(b).
`
`Resp.,11-17. To be publicly accessible a document must be either (1) published to
`
`those interested in the art for a sufficient amount of time to allow them to capture,
`
`process, and retain the information conveyed by the reference, or (2) available to
`
`those who can locate the material in a meaningful way. In re Klopfenstein, 380 F.3d
`
`1345, 1350 (Fed. Cir. 2004). The Silescent product sheet meets this standard.
`
`As Daryl Soderman—CEO and co-founder of Silescent Lighting Corp.—
`
`stated in his declaration (Ex. 1003, ¶ 3) and testified during his deposition (Ex.
`
`2004), the Silescent product sheet and installation instructions for the S100LP2
`
`11
`
`

`

`
`product was available to the public by June 2009. Mr. Soderman testified that it was
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`his company’s standard practice to send out the product sheet and installation
`
`instructions not only with products that had been sold but also to potential clients in
`
`the months leading up to the first sale of the S100LPS product in July 2009. Ex.
`
`2004, 19:19-20:2; 52:10-55:7. Mr. Soderman explained that this was a “critical”
`
`practice at least because:
`
`call or
`the
`the nature of
`[D]epending upon
`communications happening at the time and who we were
`speaking with but with any demo that we would provide
`the installation instructions as well as the spec sheet is
`vital so once we leave communication with whomever we
`left it with they would have some materials for which their
`colleagues as well as their end customers perhaps if it
`wasn’t the end customer would take up communication
`and be able
`to effectively communicate
`that,
`the
`specification and the properties as well as the mounting.”
`
`Ex. 2004, 54:6-16 (emphasis added). He also testified that the product sheet and
`
`installation instructions were typically distributed together:
`
`Q.
`
`So you said here in paragraph four of your
`declaration
`that you
`typically distributed
`the
`installation guide and specification sheets along
`with product or products sample: is that right?
`
`A. Yes, among other means.
`
`Q.
`
`A.
`
`So can I take it from that that – it was not Silescent’s
`practice
`to always
`include
`the
`installation
`instruction or product sheet with the product?
`
`I’m not aware of our situation where we wouldn’t
`have provided.
`
`12
`
`

`

`
`Ex. 2004, 15:3-15 (emphasis added) (objection omitted). He also explained that the
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`product sheet and installation instructions were available to the public:
`
`Q.
`
`Paragraph three of your declaration you say the last
`sentence says “both were made available to the
`public at least as early as June 2009.” What do you
`mean by “made available to the public.”
`
`A.
`
`They would have been provided to a variety of
`different individuals in and out of the industry.
`
`*
`
`*
`
`*
`
`Q. With respect to the Silescent LS100 LP2 product
`sheet if I wasn’t working at Silescent or a purchaser
`of this actual product how could I back in 2009 have
`gotten a copy of the product sheet?
`
`A. Any one of a number of different distribution
`methods. Sales reps., distributors, other selling
`agents, hand delivered.
`
`Ex. 2004, 18:8-13; 42:7-13. Accordingly, those interested in LED light fixtures
`
`would have been able to find the Silescent product sheet. Indeed, Mr. Soderman’s
`
`company was engaged in an effort to market and sell the product so those interested
`
`in the product would have been able to gain access to these documents. See L&P
`
`Property Management Co. v. National Prods. Inc., IPR2016-00475, 2017 WL
`
`3085926 at *9 (PTAB July 19, 2017).
`
`Patent Owner argues that the lack of a date printed on the product sheet
`
`necessarily means that it was not available before October 2009. Resp., 11-14. This
`
`is contradicted by Mr. Soderman’s testimony (also not discussed in Patent Owner’s
`
`13
`
`

`

`
`Response) that both the installation instructions—dated June 2009—and the product
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`sheet were created at about the same time and were distributed together. Ex. 2004,
`
`13:25-14:6; 15:3-15; 39:18-24; 55:1-7.
`
`In addition, Mr. Soderman was questioned during his deposition regarding an
`
`invoice showing the sales of the S100LP2 product in July 2009. This added further
`
`confirmation that the product sheet (which he called “specification sheet” in the
`
`testimony below) was distributed by July 2009 and thus well before October 2009:
`
`Q. So the installation instruction has June 2009 date on
`it. So it’s your testimony that because it has the
`June 2009 date on it that’s also the time in which it
`would have gone out the door?
`
`A. Yes, to the best of my recollection because of the
`dates and the time at which we operated. We also
`have an invoice that’s dated July of which our
`product is very much or is a specification grade
`product that has very lengthy sale cycles and so for
`that development to lead to a sale would definitely
`have required many weeks of planning, preparation
`and communication.
`
`
`Q. You referred to an invoice. Are those the invoices
`that I was handed when I walked in today?
`
`A. Yes, as an example.
`
`Q.
`
`So these invoices I was handed today don’t
`anywhere
`indicate you’re your
`installation
`instruction or product sheet was included with the
`product being sold; correct?
`
`A. No, but what it ties to again is our standard practice
`and efforts that lead up to that not only the
`
`14
`
`

`

`
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`distribution of the product but also the date of sale
`of it of which would take many months in the sales
`cycle to obtain coupled with the June date and again
`the release of demos. If we provide a sample or
`demo it would always go with the specification
`sheet because they would need to know what the
`options and features of the product were.
`
`
`Ex. 2004, 18:23-20:2 (emphasis added) (objection omitted). Patent Owner does not
`
`address Mr. Soderman’s credible testimony—corroborated by a July 2009 invoice—
`
`that the documents were distributed to the public at least as early as June 2009. 2
`
`Instead, Patent Owner relies on arguments that the product sheet is undated
`
`and refers to “multiple patents secured” and that the S100 LP2 is “patented.” Resp.,
`
`42. Patent Owner bases this argument on an allegation that Silescent’s patents had
`
`not issued before June 2009. This is incorrect. Patent Owner failed to mention that
`
`several of Silescent’s design patents, which are listed in Patent Owner’s exhibit
`
`2003, received notices of allowance in June 2009: D602,194 and D602,195 on June
`
`25, 2009, and D602,193 on June 26, 2009. Patent Owner also fails to mention that
`
`the Silescent patents, in particular the ‘763 patent which covers the S100 LP2
`
`product, were filed at least a year before June 2009. Mr. Soderman testified that he
`
`
`2The July 2009 invoice was provided to Patent Owner’s counsel before Mr.
`Soderman’s deposition. It was marked as Exhibit 4 and is included with the Mr.
`Soderman’s deposition transcript. See Ex. 2004, p. 85. He was questioned about
`the invoice during his deposition (Exh. 2004, pp. 19-20, 41, 43-46, 55), but Patent
`Owner failed to mention this corroborating evidence in its Response.
`
`15
`
`

`

`
`and a few others at Silescent—including design engineering and a graphic artist—
`
`IPR2017-01285
`U.S. Patent 8,672,518
`
`were the authors of the product sheet and the installation instructions, but no lawyers
`
`were involved in the drafting. Ex. 2004, 16:17-18:7. It is understandable that a
`
`layperson would understand a “notice of allowance” from the United States Patent
`
`Office as evidence that a patent had been “secured.”
`
`Patent Owner’s application of legalistic and technical definitions to
`
`documents that were prepared without the benefit of legal review is insufficient to
`
`support its argument that the Silescent product sheet is not prior art. This is
`
`particularly true in light of Mr. Soderman’s testimony—corroborated by the July
`
`2009 invoice—that product sheets were sent out with demos and sold products by
`
`June 2009 and certainly by the July 2009 invoice date. Patent Owner would have
`
`the Board find that a non-lawyer’s use of legal terms such as “secured” a patent and
`
`“patented” trumps all the other concrete, factual evidence. To the contrary, the
`
`weight of the evidence here shows that the product sheet was available to the public
`
`months before the October 2009 priority date and is a printed publication pursuant
`
`to 35 U.S.C. § 311(b).
`
`Patent Owner also has resorted to mischaracterizing and improperly quoting
`
`Mr. Soderman’s testimony. Patent Owner stated that “Mr. Soderman could not
`
`‘remember the specifics on the timeline [of the creation of the Silescent product
`
`sheet.]’” Resp., 14 (quoting Ex. 2004 at 39:20-21). Patent Owner misleadingly cited
`
`16

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket