Jiawei Technology (Usa) Ltd.v.Simon Richmond

Patent Trial and Appeal Board

Dec 15, 2015

10789488 (P.T.A.B. Dec. 15, 2015)

Trials@uspto.gov Paper 67
Tel: 571–272–7822 Entered: December 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP.,
SMART SOLAR, INC., and TEST RITE PRODUCTS CORP.,
Petitioner,
v.
SIMON NICHOLAS RICHMOND,
Patent Owner.
_______________

Case IPR2014-00936
Patent 7,196,477 B2
_______________

Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
BARRY L. GROSSMAN, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Final Written Decision
35 U.S.C. § 318(a); 37 C.F.R. § 42.73
Granting Motion to Seal
37 C.F.R. § 42.55
Denying-in-Part and Dismissing-in-Part Motions to Exclude
37 C.F.R. § 42.64(c)

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I. BACKGROUND
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
With respect to the grounds asserted in this trial, we have considered the
papers submitted by the parties and the evidence cited therein. For the
reasons discussed below, we determine that Petitioner has shown, by a
preponderance of the evidence, that the subject matter of claims 1–29 of
U.S. Patent No. 7,196,477 B2 (Ex. 1001, “the ’477 patent”) is unpatentable.
In addition, we deny-in-part and dismiss-in-part Petitioner’s and Patent
Owner’s Motions to Exclude Evidence, and we grant Petitioner’s Motion to
Seal.
A. Procedural History
Petitioner filed a revised Petition to institute an inter partes review
(Paper 14, “Pet.”) of the ’477 patent on June 30, 2014. Pet. 1. Patent Owner
filed a Preliminary Response. Paper 20 (“Prelim. Resp.”). We instituted an
inter partes review of claims 1–29 of the ’477 patent on December 16, 2014.
Paper 21 (“Dec. on Inst.”). Patent Owner then filed his Response to
Petitioner’s Petition (Paper 31, “PO Resp.”), to which Petitioner filed its
Reply (Paper 48, “Pet. Reply”). An oral hearing was held on September 21,
2015. Paper 66 (“Tr.”).
Patent Owner alleged that Petitioner failed to list all real parties in
interest and we authorized the parties to brief the issue. Paper 34 (Motion to
Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied
Patent Owner’s Motion to Terminate. Paper 56.
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There are several outstanding motions decided herein. Patent Owner
filed a Motion to Exclude Evidence. Paper 53 (“PO Mot. Excl.”); see also
Paper 60 (Petitioner’s Opposition, “Pet. Opp. PO Mot. Excl.”); Paper 62
(Patent Owner’s Reply, “PO Reply PO Mot. Excl.”). Likewise, Petitioner
filed a Motion to Exclude Evidence. Paper 55 (“Pet. Mot. Excl.”); see also
Paper 58 (Patent Owner’s Opposition, “PO Opp. Pet. Mot. Excl.”); Paper 61
(Petitioner’s Reply, “Pet. Reply Pet. Mot. Excl.”). Lastly, Petitioner filed a
Motion to Seal. Paper 40 (“Pet. Mot. Seal”). Patent Owner did not file an
opposition to Petitioner’s Motion to Seal.
B. Related Matters
Petitioner states that Patent Owner has asserted a number of lawsuits
against the Petitioner companies alleging infringement of the ’477 patent.
Pet. 3–4; Paper 18, 3; Paper 19, 3–4. Petitioner and Patent Owner also are
involved in other inter partes reviews: IPR2014-00935 (U.S. Patent No.
8,089,370 B2) (instituted), IPR2014-00937 (U.S. Patent No. 8,362,700 B2,
“the ’700 patent”) (denied), and IPR2014-00938 (U.S. Patent No. 7,429,827
B2, “the ’827 patent”) (instituted). Pet. 4; Paper 19, 1. The ’700 patent is a
continuation-in-part of the ’827 patent, which is a continuation-in-part of the
’477 patent.
C. The ’477 Patent
The ’477 patent describes a solar powered light that produces light of
varying color. Ex. 1001, 1:6–8. According to the ’477 patent, producing
light of a variable color is known, and solar powered “garden lights” are
known. Id. at 1:12–20. The claimed invention “overcome[s] or
substantially ameliorate[s] at least one of the . . . disadvantages” of the prior
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art, which includes “difficulty in adjusting the various lighting functions”
and “not producing a uniform desired colour.” Id. at 1:21–30.
D. Exemplary Claims
Of the claims challenged, claims 1 and 20 are independent. Claim 1 is
reproduced below.
1. A lighting device to produce light of varying
colour, said device including:
a body including a spike;
a lens mounted on the body and generally
enclosing a chamber having an upper rim
surrounding a top opening, and a bottom
region;
a cap assembly including securing means to
releasably engage the rim so that the cap
assembly can be selectively removed from the
lens; said assembly including:
a base; and
a circuit having at least two lamps of different
colours to produce a desired colour including a
varying colour, the lamps being mounted to
direct light into said chamber, connections for
at least one rechargeable battery to power the
circuit and a solar cell mounted on a surface of
the assembly so as to be exposed to light and
operatively associated with the connections to
charge the battery, and a switch operated to
control delivery of electric power from the
battery to operate said circuit, the switch being
exposed to provide for access thereto by a user.
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E. Prior Art and Asserted Grounds
References Basis under 35 U.S.C. Claims Challenged
Chliwnyj,1 Wu,2 and Hung3 § 103 1, 2, 4–9, 20–22, and 26
Chliwnyj, Wu, Hung, and Pu4 § 103 10–12, 23–25, and 27–29
Chliwnyj, Wu, Hung, and Xu5 § 103 3 and 13–16
Chliwnyj, Wu, Hung, Xu, and Pu § 103 17–19

II. MOTIONS
A. Petitioner’s Motion to Seal
Petitioner moves to seal Exhibits 1018 and 1031, portions of Exhibits
1021, 1042–1044, and 1046, and portions of its Opposition to Patent
Owner’s Motion to Terminate.6 Pet. Mot. Seal 2. Petitioner proposes entry
of the Default Protective Order. Id. at 5; see Office Trial Practice Guide, 77
Fed. Reg. 48,756, 48,769–71 (Aug. 14, 2012). Petitioner has provided
redacted versions of Exhibits 1021, 1042–1044, and 1046. Pet. Mot. Seal 2.
The Exhibits generally relate to an internal corporate resolution,
listings of financial account numbers, and invoices for attorney fees. See
Pet. Mot. Seal 3–4. The redacted versions of these documents, upon which

1 U.S. Patent No. 5,924,784, issued July 20, 1999 (Ex. 1005).
2 U.S. Patent Application Publication No. US 2003/0201874 A1, published
Oct. 30, 2003, filed Apr. 24, 2002 (Ex. 1006).
3 PCT Application WO 91/02192, published Feb. 21, 1991 (Ex. 1016).
4 Chinese Patent Publication No. CN 2522722Y, published Nov. 27, 2002
(Ex. 1008) (certified translation).
5 Chinese Patent Publication No. CN 2541713Y, published Mar. 26, 2003
(Ex. 1012) (certified translation).
6 Petitioner filed two such oppositions, Papers 42 and 43, but neither appears
to have been filed with confidentiality restrictions.
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we relied in our denial of Patent Owner’s Motion to Terminate (Paper 56),
sufficiently disclose the basis for our decision, so there is little public
interest in making the non-redacted versions publicly available.
Accordingly, Petitioner has shown good cause for sealing Exhibits 1018 and
1031, and portions of Exhibits 1021, 1042–1044, and 1046. We do not seal
Papers 42 and 43 (which appear to be identical copies) because they were
filed publicly, which we deem to be a withdrawal of the Motion as to these
papers.
The parties are reminded that confidential information that is subject
to a protective order ordinarily becomes public 45 days after final judgment
in a trial. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761. After
final judgment in a trial, a party may file a motion to expunge confidential
information from the record prior to the information becoming public. See
37 C.F.R. § 42.56.
B. Patent Owner’s Motion to Exclude
Evidence
Patent Owner first argues that Exhibits 1050–1066 should be excluded
because they are “exhibits that could reasonably have been, but were not,
included in an earlier filing.” PO Mot. Excl. 2. Patent Owner’s argument is
that, essentially, because it was possible that these documents could have
been filed earlier, they cannot later be filed. See id. at 1–4. We reject such a
literal reading of 37 C.F.R. § 42.23(b). We have reviewed the arguments in
Petitioner’s Reply and Petitioner’s citations therein to Exhibits 1050–1066,
and are persuaded that Petitioner presents arguments and evidence that are
properly responsive to Patent Owner’s arguments and evidence. We find
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this to be a proper use of Reply exhibits and deny Patent Owner’s Motion on
this basis.
Patent Owner then argues that paragraphs 26 and 27 of Exhibit 1050
should be excluded “because they include hearsay statements and
[Petitioner’s declarant, Peter W. Shackle, Ph.D.] offers factual observations
without laying a proper foundation or otherwise demonstrating personal
knowledge of the recited facts.” PO Mot. Excl. 4. Patent Owner argues
Exhibits 1051–1060 should also be excluded for similar reasons. Id. at 5.
Exhibits 1051–1060 are profiles obtained from websites such as LinkedIn
and are offered to show the educational background of various inventors.
See Ex. 1050 ¶¶ 26–27. Because we do not rely on Exhibits 1051–1061, we
dismiss this aspect of the motion as moot.
Patent Owner then argues that Exhibits 1061–1063, which contain
dictionary definitions of the word “varying,” should be excluded under
Federal Rule of Evidence 401 and 403 “because they lack any probative
value” and “are unduly prejudicial to Patent Owner.” PO Mot. Excl. 5–6.
Given that the term “varying” appears in the claims and that Patent Owner
argues a construction for the term in his Response (PO Resp. 14–17), these
definitions have probative value. Further, Patent Owner has not offered a
cogent explanation as to how these dictionary definitions are unduly
prejudicial. We do not exclude Exhibits 1061–1063.
Patent Owner argues that various excerpts of the testimony of his
declarant, Alfred Ducharme, Ph.D., should be excluded from Exhibit 1049.
PO Mot. Excl. 6–12. Reviewing Patent Owner’s explanation, it appears that
he is simply arguing that Dr. Ducharme’s testimony should not be treated as
standing for the notions upon which Petitioner argues. See, e.g., id. at 11
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(“Petitioner cited the above excerpt as support for [a position]. Not only do
the cited excerpts offer no support for that characterization, but the
testimony . . . is inadmissible because the question . . . is ambiguous,
argumentative, and misleading.”). We will make our own judgments as to
what extent, if any, Dr. Ducharme’s testimony supports Petitioner’s
positions and to what extent the answer given is based on an unclear or
ambiguous question, to the extent we rely on that testimony at any point in
our analysis below. Accordingly, we do not exclude the testimony.
In view of the above, we deny-in-part and dismiss-in-part Patent
Owner’s Motion to Exclude.
C. Petitioner’s Motion to Exclude
Petitioner first moves to exclude Exhibits 2034, 2042, 2044, 2046, and
2054. Pet. Mot. Excl. 2–3. This evidence was provided in support of Patent
Owner’s Motion to Terminate, which we denied on August 21, 2015 (Paper
56). This evidence was not considered and the Motion was denied. We
dismiss Petitioner’s Motion as to these Exhibits as moot.
Petitioner next moves to exclude portions of Dr. Shackle’s testimony
in Exhibits 2022 and 2023 as confusing, misleading, and/or irrelevant. Pet.
Mot. Excl. 4–7. We decline to exclude this evidence. This panel acts as
both the gatekeeper of evidence and as the weigher of evidence. Rather than
excluding evidence that is allegedly confusing, misleading, and/or irrelevant,
we will simply not rely on it or give it little weight, as appropriate, in our
analysis. Accordingly, we deny-in-part and dismiss-in-part Petitioner’s
Motion to Exclude.
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D. Patent Owner’s Motion for Observation
Patent Owner filed a Motion for Observation (Paper 54) on the
cross-examination of Dr. Shackle, which took place after Petitioner filed its
Reply. Petitioner filed a Response (Paper 59). We have considered Patent
Owner’s observations and Petitioner’s responses in rendering our decision.
III. PATENTABILITY ANALYSIS
A. The Level of Ordinary Skill in the Art
The parties differ significantly in their positions as to the level of
ordinary skill in the art for the ’477 patent. We have reviewed the
arguments of Patent Owner (PO Resp. 2–12) and Petitioner (Pet. 7–8; Pet.
Reply 2–7).
In general, Patent Owner seeks to define the person of ordinary skill
in the art as a person having little if any technical skill. PO Resp. 8.
According to Patent Owner, this person is focused on the “physical
ornament[al]” design of the products, but not the “relatively unsophisticated
electrical circuits.” Id. at 5; see also id. (characterizing a person of ordinary
skill in the art as having “limited mechanical and electrical skills” and “only
know[ing] the basics of electrical components and circuits that are
commonly used in solar garden lights”). To that end, a person of ordinary
skill in the art, according to Patent Owner, only has “the ability to recognize
how a pre-designed circuit may operate and the ability to combine such a
circuit into a pre-designed solar garden light . . . making only simplistic
changes to the exterior aesthetic of the product.” Id. at 3.
Petitioner argues that a person of ordinary skill in the art has technical
knowledge, such as an electrical engineering background or equivalent
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experience. Pet. 7–8. In its Reply, Petitioner points out that patent
specifications are addressed to a person of ordinary skill in the art, and that
Patent Owner’s proposed person of ordinary skill in the art would seemingly
be unable to understand the ’477 patent (particularly the circuit diagram in
Figure 9) and the art of record. Pet. Reply 3.
In determining the level of ordinary skill in the art, a court may
consider various factors, including the “type of problems encountered in the
art; prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 962 (Fed. Cir. 1986)). The prior art itself is often the best guide as to
the level of skill in the art. Id.; Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001).
The ’477 patent, Chliwnyj, Wu, Xu, and Pu include circuit diagrams.
The parties seem to be in agreement that a person of ordinary skill in the art
would be capable of reading the diagrams and understanding what
function(s) they perform, at least at some level. PO Resp. 3 (a person of
ordinary skill in the art has “the ability to recognize how a pre-designed
circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art
“would have been able to understand the patent’s descriptions and
drawings”). Patent Owner’s position, however, seems to be that although a
person of ordinary skill in the art would recognize what these circuits do, he
or she would be unable to make any modifications to those circuits and
would only be capable of taking them whole cloth and inserting them into
another device. Patent Owner would seemingly limit the person of ordinary
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skill in the art to ornamental design changes only. We reject the notion that
a person of ordinary skill in the art would only be capable of making
ornamental design variations. Under Patent Owner’s proposed level of skill,
any functional modification would be beyond the level of ordinary skill in
the art and render the modified device patentable (so long as it was not
anticipated); this proposed level of skill is so low it eviscerates the notion of
obviousness.
Instead, upon review of the record before us, we find that a person of
ordinary skill in the art is able to comprehend what is being shown in the
prior art and has some ordinary level of creativity with respect to their
modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). We agree with Petitioner that a person of ordinary skill in the
art at the time of the ’477 patent7 would have had a graduate degree in
electrical or electronics engineering or physics with experience in circuit
design, or a bachelor’s degree in electrical or electronics engineering or
physics with at least two years industrial experience and experience in
circuit design, and apply that level of skill for purposes of this Decision. See
Ex. 1002 ¶ 36.
B. Dr. Shackle is Qualified to Testify to the
Level of Ordinary Skill in the Art
Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not
qualified to testify as to the level of ordinary skill in the art. PO Resp. 13–
14. Patent Owner argues that, for example, he “has never supervised

7 The ’477 patent was filed in February 2004 and claims priority to a foreign
application filed in December 2003.
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engineers in the design of solar lights.” Id. at 13. Patent Owner argues we
should give his declarant, Dr. Ducharme, more weight because Dr.
Ducharme is allegedly better qualified. Id. We weigh competing testimony
of witnesses on an observation-by-observation basis, based on the witness’s
skills and experience, as well as the reasoning and evidence they offer with
respect to that particular observation. Further, we are not persuaded that Dr.
Shackle would not have been a person of ordinary skill in the art at the time
of the invention simply for not being a supervisor of engineers designing
solar lights. Instead, we find that Dr. Shackle has ample experience in the
field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5;
Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr.
Shackle is qualified to testify).
C. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276 (Fed.
Cir. 2015). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
We construed the terms “desired colour,”8 “varying colour,” and
“securing means” in our Decision on Institution as follows:

8 The written description of the ’477 patent generally, but not always, uses
the British spelling, “colour.” See Ex. 1001 (54), (57) (spelling “color”).
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“desired color”: a color that is desired by the user or intended by the
designer;
“varying colour”: a perceptible changing of color over time;
“securing means”: function of releasably engaging the rim so that the
cap assembly can be selectively removed from the lens, and corresponding
structure of flange segments 36.
Dec. on Inst. 6–10.
The terms “desired colour” and “securing means” are not at issue in
this Decision. We do not perceive any reason or evidence that now compels
any deviation from our prior interpretations, and apply them for purposes of
this Decision. Patent Owner proposes a construction of “lamp” (PO Resp.
17) but we do not construe this term because it is unnecessary to the
outcome of this proceeding. We thus turn to Patent Owner’s proposed
construction of “varying colour.”
“varying colour”
Patent Owner disagrees with our prior construction of “varying
colour.” PO Resp. 14–17. Patent Owner argues that the term should be
construed as “color that changes over time by varying the intensity of one or
more of the lamps with time.” Id. at 15.
In our Decision on Institution, we did not adopt Petitioner’s or Patent
Owner’s proposed constructions of this term because we determined that
both proposed constructions focused too much on how the varying color was
created rather than what was varying color. Dec. on Inst. 6–8. Or, to put it
another way, we determined that the claim required a particular observable

We use the word “color” unless quoting the claim language.
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phenomenon (varying color) from a particular structure (a circuit having at
least two lamps) but did not limit the manner in which the structures were
operated to achieve that result. As we stated then, we declined to
incorporate any particular way to create varying color because the
specification of the ’477 patent does not so limit the term. Id. at 7. For that
reason, we construed “varying colour” as “a perceptible changing of color
over time.” Id. at 8.
Patent Owner argues that we should construe the term the same as it
was construed in a district court action, but Patent Owner offers no
explanation as to why.9 See PO Resp. 15. Patent Owner previously argued
that we should not adopt the district court’s construction, but rather a
modified version thereof, because that construction “is not binding on Patent
Owner because it was based upon a stipulation by the parties in [that] case.”
Prelim. Resp. 22 n.14 (emphasis added).10 In either event, district court
claim construction standards are different from ours and, although it is often
helpful to consider a district court’s analysis and construction of a term, the
decision is less helpful here because the parties to that action stipulated to
the term’s meaning. Nevertheless, we have considered the evidence before

9 Patent Owner cites Exhibit 2006, but that is merely the Markman order
listing the claim constructions; no analysis is present. The Markman
transcript provided (Ex. 2007) is only an excerpt of one page and, without
appropriate context, is not useful to us. The memorandum opinion (Ex.
2008) is a decision by the court to deny summary judgment of invalidity; the
discussion of “varying colour” is limited to application of the stipulated
construction.
10 Petitioner was not a party to that suit. Prelim. Resp. 22.
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us regarding the term’s interpretation in the district court proceeding. See n.
9.
Patent Owner then sets forth a number of bullet points that appear to
discuss the testimony of Petitioner’s declarant, Dr. Shackle. The first point
discusses the word “varying” and how it is a present participle, implying that
Patent Owner is arguing that the term refers to an action. See PO Resp. 15.
The claims are not method claims, however. The word “varying” modifies
the term “colour,” and “varying colour” is claimed as the output of a circuit
having lamps of different colors. There is nothing from the context of the
claim or any rule of grammar that mandates that a present participle be an
action. Indeed, as in the claim here, present participles often act as
adjectives.11 For example, Petitioner, who argues the prior construction is
correct, offers a thesaurus entry showing “varying” as a modifier word,
having synonyms including “differing” and “changing.” Ex. 1061, 3; Pet.
Reply 9–10. Our construction of “varying colour” as “a perceptible
changing of color over time” is consistent with this use of the term.
We have reviewed the remainder of Patent Owner’s argument and do
not find it persuasive for Patent Owner’s offered construction. See PO Resp.
14–17. Thus, for the reasons expressed herein and in our Decision on
Institution, we interpret “varying colour” to mean a perceptible changing of
color over time.
We further note that Patent Owner states that he “will apply the
Board’s construction,” and makes similar statements in another paper. Id. at
17; PO Opp. Pet. Mot. Excl. 2 (“the Board in its Decision chose its own

11 Exciting book, boring flight, differing opinions, interesting argument, etc.
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construction of varying color . . . which for purposes of the IPR proceeding
neither party contested”). Although we take such stances by the parties into
consideration,12 preliminary constructions in Decisions on Institution are not
final and agreements by the parties as to claim construction are not binding
on us.
D. The Chliwnyj, Wu, and Hung Ground
Petitioner asserts that claims 1, 2, 4–9, 20–22, and 26 are unpatentable
in view of Chliwnyj, Wu, and Hung. Pet. 17–34. In general, Petitioner cites
to Chliwnyj for the limitations directed to solar-powered lamps producing
varying color (see, e.g., id. at 17–18, 21–23), Wu for the limitations directed
to the body, lens, base, and cap assembly (see, e.g., id. at 18–21, 22), and
Hung for a switch (see, e.g., id. at 23). Petitioner reasons that it would have
been obvious to locate the lighting device in Chliwnyj in the solar-powered
garden light device of Wu because it was well known in the art to use such
garden lights to illuminate the ground, and it would have been obvious to
“provide the device of Chliwnyj with a body and spike to place the lighting
device in the ground in order to provide light at an elevated position relative
to the ground.” Id. at 30–33. Petitioner reasons that it would have been
obvious to add the switch of Hung to the lighting device of Chliwnyj
because it was well known in the art to use switches to control power to the
circuit as necessary, and the location of the switch would be a matter of
design choice. Id. at 33–34.

12 For example, as an indication that the prior construction was correct, was
not meaningfully incorrect, or is no longer relevant to the outcome of the
proceeding.
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Patent Owner argues that Chliwnyj and Wu are not combinable (PO
Resp. 18–37) and that it would not have been obvious to modify Chliwnyj in
view of Hung to incorporate an exposed switch (id. at 37–46). These
arguments are presented as several sub-arguments, which we address in turn.
1. Light Sensitive Switch of Wu
Claims 2 and 21 depend from claims 1 and 20, respectively, and
require “a light sensitive switch that renders the circuit operative at low light
levels.” Petitioner asserts that Wu teaches a light sensitive switch. Pet. 24
(citing Ex. 1006 ¶ 20, Fig. 3; Ex. 1002 ¶¶ 124–127). Wu is directed to a
rodent-expelling device that also has an illumination function. Ex. 1006,
Abstract. Wu’s device includes three circuits: (A) power-supplying circuit,
(B) sound-emitting circuit, and (C) light-emitting circuit. Id. ¶ 16. Sound-
emitting circuit B is intended to expel rodents, whereas light-emitting circuit
C is intended to provide a pleasing visual effect. Id. ¶¶ 20, 22. Power-
supplying circuit A includes rechargeable battery 13 and solar panel 12. Id.
¶ 18. Wu states that during the “daytime . . . the solar-energy powered
electricity generating element 12 generates power.” Id. ¶ 20. Then, “in a
particular time (such as at night), the buzzer 14 and the light emitting
element 15 will [be] automatically activated.” Id. Figure 3, depicting the
three circuits of Wu, is reproduced below with annotation:
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Figure 3 of Wu depicts circuit elements A, B, and C discussed above. A “T”
shape in circuit C, discussed next, is identified.
Patent Owner’s argument is that Wu does not describe a light-
activated switch and instead describes each circuit in Wu directly connected
to the battery (i.e., always on), based on the presence of a “T” shape in each
circuit, which Patent Owner alleges indicates that the power rail is attached.
See, e.g., PO Resp. 24. Patent Owner argues that Petitioner’s declarant, Dr.
Shackle, only performed a high-level review of the circuit in his analysis and
did not address this “T.” Id. at 22 (arguing that Dr. Shackle “admits that he
did not even analyze or simulate the circuit” but rather “relied on the ‘well-
known’ character of pieces of the circuit”). It is Patent Owner’s position,
based on the testimony of his declarant, Dr. Ducharme, that power circuit A
in Wu operates to provide solar power if it is producing voltage but
otherwise uses the batteries to provide power. Id. at 23–24 (citing Ex. 2021
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¶¶ 86–87). In other words, the circuits are always on so long as there is
power.
Reviewing the evidence and arguments before us, we find Patent
Owner’s arguments unpersuasive and instead find that Petitioner has shown,
by a preponderance of the evidence, that Wu discloses a light sensitive
switch for turning the device on at night (i.e., when there are low light
levels). First, Petitioner’s interpretation is more consistent with the textual
disclosure of Wu, regardless of what is shown in Figure 3. As we will
explain later, Petitioner’s interpretation is also more consistent with what is
shown in Figure 3.
Wu, in its textual description, states that solar energy is collected and
stored during the daytime. Ex. 1006 ¶ 20; see also id. ¶ 16 (“the power is
stored in a rechargeable battery 13”). This indicates that energy is not used
during the daytime, but rather collected. Next, Wu states that the light and
sound circuits are activated automatically “[w]hen in a particular time (such
as at night).” Id. ¶ 20. This indicates that the stored energy is used at night
and that activation is automatic. A solar collector is a device that
automatically generates power when light shines upon it. See, e.g., id.
(“solar-energy powered electricity generating element 12 generates power
by irradiation of the sun light”). Thus, it is a way to implement the
automatic activation at night, i.e., a low-light-activated switch. The
testimony of Petitioner’s declarant, Dr. Shackle, is consistent with this
reading of Wu. See Ex. 1002 ¶¶ 124–127; Ex. 1050 ¶¶ 50–57. The
testimony of Patent Owner’s declarant, Dr. Ducharme, is also consistent
with this reading of Wu. See Ex. 1049, 119:4–13 (testifying that “I do
understand Circuit Element A to be a light sensitive switch,” in isolation);
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id. at 54:16–56:20 (testifying that light-sensitive switches were known). In
view of this evidence, we are persuaded that a person of ordinary skill in the
art, being a person capable of recognizing circuit elements, even under
Patent Owner’s proposed level, would recognize that Wu discloses a solar
switch in order to automatically activate the device at night. See Ex. 2021
¶¶ 39, 44 (arguing a person of ordinary skill in the art can “recognize how a
pre-designed circuit may operate” and “is capable of implementing a circuit
for a specified function . . . once they are told what is the function”).
Patent Owner seeks to muddy this disclosure by pointing to an
irregularity in Figure 3 of Wu. PO Resp. 23–27. Even considering Figure 3,
however, we remain persuaded that Wu discloses the power circuit to be
activated at night. To read Figure 3 in a manner consistent with Wu’s
textual disclosure, the “T” in light-emitting circuit C, presumably indicating
a connection to source power, must be treated, effectively, as a mistake.
This is because if light-emitting circuit C were connected directly to the
battery, as Patent Owner proposes, then it renders much of the disclosure
and the circuit elements superfluous. See Ex. 1049, 116–119 (Patent
Owner’s declarant, Dr. Ducharme, testifying that, with the “T” present in
circuit C, various components depicted in circuit A “serve no purpose”); Ex.
1050 ¶ 53 (Petitioner’s declarant, Dr. Shackle, agreeing with Dr. Ducharme
on this point). In effect, the “T” in light circuit C would render the
connection from power circuit A redundant, as well as much of the circuitry
in power circuit A. The effect would be that circuits B and C would always
be on. However, if the light and sound were always on, then that would be
contrary to the disclosure of Wu that “in a particular time (such as at night),
the buzzer 14 and the light emitting element 15 will [be] automatically
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activated.” Ex. 1006 ¶ 20 (emphasis added). In addition, there would be no
point to the transistor and logic gates in power circuit A. See Ex. 1049, 116–
119; Ex. 1050 ¶ 53. Thus, Patent Owner’s reading would be contrary to the
textual disclosure of Wu and would make little sense, electrically, in the
context at issue in Figure 3.
In addition, Patent Owner’s assertion that the switch depicted in
power circuit A could be operated to turn off the circuit in his proposed
reading of the circuit diagram is not plausible, further leading us to find
Patent Owner’s theories for how the circuit operates unpersuasive. See PO
Resp. 25 (citing Ex. 2021 ¶¶ 88–89); see also Ex. 2021 ¶¶ 85–87 (discussing
same). In particular, Patent Owner cites to his declarant, Dr. Ducharme, as
support for his position that the switch in power circuit A turns on and off
the lights. PO Resp. 25. Dr. Ducharme, in turn, bases his testimony not on
his own analysis of Figure 3, but on that of Petitioner’s declarant, Dr.
Shackle. See Ex. 2021 ¶¶ 85–89 (citing Ex. 2022, 158:7–9); see also Tr. 91–
94 (Patent Owner arguing based on Dr. Shackle’s testimony). But Dr.
Shackle’s testimony is based upon a reading of Wu wherein circuit A, and
only circuit A, provides power to circuit C. See Ex. 2022, 157:1–16. Thus,
Patent Owner is attempting to bolster his position by taking Dr. Shackle’s
testimony out of context. The switch operates as Dr. Shackle testifies
because Dr. Shackle’s position is that power circuit A provides power to
light-emitting circuit C. Id. If that is the case, then it makes sense that the
manual switch in power circuit A would also turn on and off the power to
the lights, because it would cut power off to the source of the PNP transistor,
which in turn is what supplies power to circuit C. In Patent Owner’s
interpretation of power circuit A, however, this transistor is redundant
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because of the “T” in light-emitting circuit C effectively bypassing the
power circuit’s ability to control. Thus, manipulating the switch and cutting
power off to this transistor would not serve any effect in Patent Owner’s
reading of the circuit. This is further confirmed by looking at power circuit
A and noting that the battery and solar panel have connections to power and
ground without having to go through the switch. Thus, the switch, in Patent
Owner’s interpretation, would also be redundant.
In light of the above, we find that a person of ordinary skill in the art
would, upon review of the entire disclosure of Wu, understand that Wu
operates by way of a light sensitive switch that renders a circuit operative at
low light levels.
2. “Nighttime” as a Particular Time
Patent Owner also argues that night is not a particular time; a
particular time, according to Patent Owner, would be, for example, “6:00
p.m.” PO Resp. 27–28. On that basis, Patent Owner argues that Wu
operates with the ability to be activated at any arbitrary time, such that Wu’s
disclosure must be limited only to controls that allow selection of an
arbitrary time with to-the-minute granularity. Id. at 29. According to Patent
Owner, the circuitry to enable such a device could be a timer. Tr. 88:8–19
(Patent Owner’s counsel arguing that the switch in Figure 3 could be a
timer); id. at 94:1–7 (same). This argument is not persuasive.
First, we do not consider reasonable Patent Owner’s reading of the
disclosure in Wu (“automatically activated” at “a particular time (such as at
night)”). In effect, Patent Owner is interpreting this general statement to
mean that Wu could only function, and must only function, when the user
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has the ability to customize exactly when it is turned on. This precludes
more plain readings, such as what Wu implies: that the device is off during
the daytime (for charging batteries) and on during the nighttime (to shine a
light and emit noises). Indeed, Wu implies that it considers “night” a
“particular time,” by its very language: “a particular time (such as at night).”
Such a disclosure is consistent with a light-sensitive switch, which would
automatically allow such functionality at the specified conditions. It makes
little sense to interpret Wu as intending a particular time to be a specific
hour/minute designation when Wu seems satisfied with simply stating
“night.”
Further, the structure already disclosed in Wu allows for automatic
activation at a “particular time” because it is dark at night and the solar
element 13 reacts to this stimulus (or lack thereof). Patent Owner’s reading,
on the other hand, would require additional complexity and structures not
disclosed in the reference. For example, no programmable timer, or the like,
is described in Wu or shown in the circuit diagram in Figure 3. Patent
Owner attempts to imply that the manual switch in circuit A could be a timer
(Tr. 88:8–19) but fails to explain how this simple switch is a complex
programmable timer. See Ex. 1049, 115:6–117:1 (Patent Owner’s declarant,
Dr. Ducharme, testifying that he has “no idea” what kind of switch is
depicted in circuit A and suggests it may be a simple switch, like “a single
position, single throw switch”). Accordingly, Patent Owner’s argument that
night is not a particular time, or that Wu requires a programmable timer or
similar structure, is unpersuasive.
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3. Modification of Chliwnyj’s Device to Operate Only at Low Light Levels
With respect to dependent claims 2 and 21, Petitioner asserts that it
would have been obvious to modify the device of Chliwnyj “to incorporate a
light sensitive switch so the lights run only during the night to achieve the
predictable result of using light only when needed to preserv[e] energy.”
Pet. 33–34 (citing Ex. 1002 ¶ 158); Pet. Reply 16 (arguing that “[i]t would
have been obvious to a [person of ordinary skill in the art] trying to use
Chliwnyj’s technology to look to a light sensitive switch such as Wu’s to
turn the simulated flame off during the day and on at night to save power”).
Patent Owner argues that “it would have been beyond the technical ability of
the skilled artisan to modify the circuit of Chliwnyj to operate only at low
light levels.” PO Resp. 30; see also id. at 30–37 (setting forth the details of
Patent Owner’s argument).
Patent Owner’s arguments are unpersuasive because they presume a
person of ordinary skill would have been incapable of performing virtually
any modification to a functional feature of a device, and also presume that a
person of ordinary skill in the art would not modify an ornamental aspect of
a device. See, e.g., PO Resp. 32 (“Adding a light sensitive switch to keep
the light off during the day and operate only at night would preclude
Chliwnyj from doing what Chliwnyj says it will do—operate during the
day.”); id. at 36 (“A light sensitive switch would be contrary to the normal
operating policy of keeping the lights on past sunset (the time when low
light levels typically begin) and would remove the ability of users to select
the time that the LED intensity is reduced.”).
Petitioner’s proposed combination is to add a light sensitive switch to
Chliwnyj’s flame simulating device, such as to make the flame on at night
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and off during the day. We find nothing in the record that suggests this
modification would have been unpredictable to a person of ordinary skill in
the art. Indeed, the simplistic nature of the combination—using a light
sensitive switch to make the circuit light sensitive—is nothing more than
using a device known to provide a certain functionality (switching based on
light levels) to another device to operate in the same way.
That one of Chliwnyj’s intended uses is a flame that is always on does
not teach away from a flame that is only on at night. The concept of using
illumination when it is dark and not using illumination when it is light is
within any level of skill. Patent Owner points to no disclosure that
affirmatively discredits or discourages such an endeavor in this context. Cf.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses
a general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention
claimed.”); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (omission
of a feature obvious because it would only result in omission of that feature).
Patent Owner alleges that Petitioner’s proposed combination “would have
rendered the eternal light inoperable for its intended purpose.” PO Resp. 37.
The intended purpose of Chliwnyj, in Patent Owner’s view, is essentially
acting in the exact manner as disclosed in Chliwnyj. This line of reasoning,
if it were persuasive, would preclude virtually any modification to any prior
art device. We are not persuaded that the intended purpose case law is
intended to reach into ornamental factors or to require satisfying each of the
prior art inventor’s wishes for how the device should be used. Instead, the
correct focus is on the technical feasibility of the modification—would such
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a modification actually work? See Tec Air Inc. v. Denso Mfg. Michigan Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999) (“If when combined, the references
‘would produce a seemingly inoperative device,’ then they teach away from
their combination.” (quoting In re Sponnoble, 405 F.2d 578, 587 (CCPA
1969))); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (discussing how,
if a prior art filter were flipped upside down, the device would be physically
incapable of working because it relies on gravity and a certain orientation to
work). We have no evidence that the combination asserted by Petitioner is
technically infeasible, unpredictable, or taught away from in the art.
In view of the above, we find that Petitioner has established, by a
preponderance of the evidence, that a person of ordinary skill in the art had a
reason to modify Chliwnyj’s device to include a light sensitive switch and
that such a combination is neither taught away from nor would have been
unpredictable.
4. Modification of Chliwnyj in View of Hung to Incorporate an Exposed
Switch
Independent claims 1 and 20 require a switch operable to control
delivery of electric power from the battery to operate the circuit, “the switch
being exposed to provide for access thereto by a user.” Petitioner asserts
that Hung discloses an exposed switch for controlling the power of a solar
light. Pet. 23 (citing Ex. 1016, 7:10–20, Fig. 2). Petitioner reasons that it
would have been obvious to a person of ordinary skill in the art to place a
switch where it is user-accessible as a matter of design choice, with Hung
being evidence that placing a switch on an external surface of a light was a
known choice. Id. at 33 (citing Ex. 1002 ¶ 157); Pet. Reply 19–20 (arguing
that “it would have been obvious to look to Hung to add an exposed switch
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to, for example, permit the user to turn the device on and off,” a person of
ordinary skill in the art would have understood that having a switch be
“exposed to provide easy access for the user” would have been “simply a
matter of design choice,” and Chliwnyj similarly teaches a “user interface”
to control its device).
We have reviewed Patent Owner’s arguments and find them
unpersuasive. PO Resp. 38–46. Patent Owner acknowledges that “persons
of ordinary skill can move a switch from one location to another when
designing a solar garden light” but argues that “he must have a reason to do
so.” Id. at 40. In effect, what Patent Owner argues is that it would have
been apparent to a person of ordinary skill in the art to place a switch in
many different locations, but that obviousness requires a specific and direct
motivation for placing in a particular location. Although a showing of
motivation in a prior art reference is sufficient to prove obviousness, it is not
necessary; this is the basic holding in KSR. KSR, 550 U.S. at 415 (rejecting
rigid application of the teaching, suggestion, motivation test). We find no
evidence that the placement of a switch would have been unpredictable. To
the contrary, the prior art references show switches in all manner of
locations. Chliwnyj describes switches inside a hollow base (Ex. 1005,
11:1–3, Fig. 4), away from view, and as a keypad (id. at 14:12–20),
immediately in view. Hung’s switch is outside the base, easily accessible to
a user. Ex. 1016, 7:9–12, Figs 1–3 (depicting a switch on the side of the
main body of the lighting device).13 Further, we find no evidence that

13 We further note, as background evidence of the level of ordinary skill, that
Xu’s switch 14 is on the underside of the lid (Ex. 1012, 2, Fig. 1) and
Shalvi’s switch is hidden to prevent unauthorized use (Ex. 1015, 2:31–35).
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moving the switch on Chliwnyj as proposed would have any meaningful
functional, as opposed to ornamental, effect on the operation of the device.
In that way, Petitioner’s proposed combination appears to be nothing more
than a combination of familiar elements performing their known functions,
or a predictable design choice. KSR, 550 U.S. at 416–17; see also In re
Japikse, 181 F.2d 1019, 1030 (CCPA 1950) (claims to a hydraulic power
press were unpatentable because shifting the position of the starting switch
would not have modified the operation of the device—a design choice may
be an obvious rearrangement of elements).
5. Conclusion for Chliwnyj, Wu, and Hung Ground
Patent Owner’s arguments, discussed above, touch claims 1, 2, 20,
and 21. Those arguments were unpersuasive. Patent Owner does not offer
persuasive challenges to Petitioner’s assertions on any other claims in this
ground. Reviewing the record before us, we determine that Petitioner has
shown, by a preponderance of the evidence, that the subject matter of claims
1, 2, 4–9, 20–22, and 26 would have been obvious in view of the teachings
of Chliwnyj, Wu, and Hung.
E. The Chliwnyj, Wu, Hung, and Pu Ground
The Chliwnyj, Wu, Hung, and Xu Ground
Patent Owner’s arguments for the Chliwnyj, Wu, Hung, and Pu
ground are largely similar to the arguments addressed above with respect to

These show further choices known to a person of ordinary skill in the art.
See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (holding the
Board should consider all evidence before it that demonstrates the
knowledge and perspective of one of ordinary skill in the art).
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the modification of Chliwnyj in view of Hung. See PO Resp. 46–49; Pet.
34–38 (setting out Petitioner’s ground). The same can be said for Patent
Owner’s arguments for the Chliwnyj, Wu, Hung, and Xu ground. See PO
Resp. 49–50; Pet. 38–40 (setting out Petitioner’s ground). These arguments
are unpersuasive for similar reasons. Reviewing the record before us, we
determine that Petitioner has shown, by a preponderance of the evidence,
that the subject matter of claims 10–12, 23–25, and 27–29 would have been
obvious in view of the teachings of Chliwnyj, Wu, Hung, and Pu, and that
the subject matter of claims 3 and 13–16 would have been obvious in view
of the teachings of Chliwnyj, Wu, Hung, and Xu.
F. The Chliwnyj, Wu, Hung, Xu, and Pu
Ground
Claims 17–19 depend ultimately from claim 1 and require, inter alia,
that the light be operable to select a fixed color. Petitioner asserts that Pu
discloses a switch for selecting a fixed color. Pet. 35, 40–41 (citing Ex.
1008, 5;14 Ex. 1002 ¶¶ 160–163). Petitioner asserts that it would have been
obvious and predictable to include a switch that allowed the user to select a
fixed color as taught in Pu. Id. at 41 (citing Ex. 1002 ¶ 192); Ex. 1008, 5
(discussing how, in Pu’s solar lamp, “switch SW2 is used to select a light
color”).
Patent Owner argues that “Chliwnyj teaches away from ‘selecting a
fixed color.’” PO Resp. 50–52. This argument, like the teaching away
arguments discussed above, frames teaching away in terms of the intentions
of the prior art inventor rather than any discussion of the technical feasibility

14 Page number stamped on the lower right hand corner of the Exhibit.
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of the feature or the level of ordinary skill. Cf. Tec Air, 192 F.3d at 1360. A
person of ordinary skill in the art knows that devices are not limited to their
intended uses. KSR, 550 U.S. at 420 (“Common sense teaches, however,
that familiar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle.”). Not only that, but a
person of ordinary skill in the art is not precluded from considering the
obvious benefits of a prior art device simply because the prior art device was
initially designed to solve a different problem. See id. (it is error to
“assum[e] that a person of ordinary skill attempting to solve a problem will
be led only to those elements of prior art designed to solve the same
problem”).
Chliwnyj teaches a simulated flame device15 that uses multiple colors
to create the flame effect; use of multiple colors, rather than just a single
color, is described as enhancing the flame effect. Ex. 1005, 5:15–25. This
passage teaches 1) a flame effect can be done with one color and 2) a better
flame effect can be done with more than one color. In this way, Chliwnyj
teaches that single color flames both were known and technically feasible,
even if Chliwnyj characterizes the prior technology as less realistic. To
conclude that using a single color is patentable just because Chliwnyj
teaches multiple colors is to take away from what is already in the prior art.
See In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1321
(Fed. Cir. 2011) (“A reference can distinguish prior art in order to show the
novelty of an invention without teaching away from combining the prior art

15 Chliwnyj is not limited to a simulated flame, however. Compare
Ex. 1005, claim 1, with id., claim 45.
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with the invention disclosed in the reference.”). Thus, we are persuaded that
there is no unpredictability or teaching away in the notion of modifying
Chliwnyj’s flame simulator to hold a particular flame color in a manner
consistent with Pu’s teaching of doing so. Indeed, Chliwnyj indicates that
the color and number of lights are not particularly important. Ex. 1005,
15:1–5 (“the present invention is not in any way limited to the particular
choice of light[s] . . . described herein”); id. at 6:17–36 (stating that the
specification “should not be construed to prevent larger and/or varied
lighting configurations” and that “light[s] . . . are generally available in a
number of suitable colors from many different manufacturers”).
Reviewing the record before us, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that it would have been obvious
and predictable to modify Chliwnyj’s solar powered flame simulating
device, having multiple flame colors, to be fixable to a single color, as
described in Pu’s solar powered lighting device, as an example of a mere
rearrangement of “old elements with each performing the same function it
had been known to perform.” KSR, 550 U.S. at 417.
G. Conclusions
Petitioner has shown, by a preponderance of the evidence, that:
Claims 1, 2, 4–9, 20–22, and 26 would have been obvious in view of
Chliwnyj, Wu, and Hung.
Claims 10–12, 23–25, and 27–29 would have been obvious in view of
Chliwnyj, Wu, Hung, and Pu.
Claims 3 and 13–16 would have been obvious in view of Chliwnyj,
Wu, Hung, and Xu.
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Claims 17–19 would have been obvious in view of Chliwnyj, Wu, Hung,
Xu, and Pu.
IV. ORDER
In view of the forgoing, it is hereby:
ORDERED that Petitioner’s Motion to Exclude (Paper 55) is
denied-in-part and dismissed-in-part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
(Paper 53) is denied-in-part and dismissed-in-part;
FURTHER ORDERED that Petitioner’s Motion to Seal (Paper 40) is
granted;
ORDERED that claims 1–29 of the ’477 patent are unpatentable as
obvious; and
FURTHER ORDERED that this is a Final Written Decision under
35 U.S.C. § 318(a) and that parties to the proceeding seeking judicial review
of the decision under 35 U.S.C. § 319 must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Mark Nelson
Daniel Valenzuela
Lissi Mojica
Keven Greenleaf
Dimitry Kapmar
DENTONS US LLP
mark.nelson@dentons.com
lissi.mojica@dentons.com
keven.greenleaf@dentons.com
daniel.valenzuela@dentons.com
dimitry.kapmar@dentons.com

PATENT OWNER:

Theodore Shiells
SHIELLS LAW FIRM, P.C.
tfshiells@shiellslaw.com

Marcus Benavides
THE LAW PRACTICE OF MARCUS BENAVIDES
marchusb@tlpmb.com