Jiawei Technology (Usa) Ltd.v.Simon Richmond

Patent Trial and Appeal Board

Dec 21, 2015

12555804 (P.T.A.B. Dec. 21, 2015)

Trials@uspto.gov Paper 65
Tel: 571–272–7822 Entered: December 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
COLEMAN CABLE, LLC, JIAWEI TECHNOLOGY (HK) LTD., JIAWEI
TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PHOTOVOLTAIC
LIGHTING CO, LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
INTERNATIONAL USA, INC., SMART SOLAR, INC., and TEST RITE
PRODUCTS CORP.,
Petitioner,

v.
SIMON NICHOLAS RICHMOND,
Patent Owner.
_______________

Case IPR2014-00935
Patent 8,089,370 B2
_______________

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

GROSSMAN, Administrative Patent Judge.

DECISION
Final Written Decision
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

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I. INTRODUCTION
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 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50 of U.S.
Patent No. 8,089,370 B2 (Ex. 1001, “the ’370 patent”) is unpatentable. In
addition, we deny-in-part and dismiss-in-part both Petitioner’s and Patent Owner’s
Motions to Exclude Evidence, and we grant Petitioner’s Motion to Seal.
A. Procedural History
Coleman Cable, LLC, Jiawei Technology (HK) Ltd., Jiawei Technology
(USA) Ltd., Shenzhen Jiawei Photovoltaic Lighting Co, Ltd., Atico International
(Asia) Ltd., Atico International USA, Inc., Smart Solar, Inc., and Test Rite
Products Corp. (collectively “Petitioner”) filed a Corrected Petition to institute an
inter partes review (Paper 10, “Pet.”) of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43,
45 and 48–50 of the ’370 patent. Pet. 1. Petitioner included a declaration of Peter
W. Shackle, Ph.D. (Ex. 1002). We instituted an inter partes review of all the
challenged claims, claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50, on
December 22, 2014. Paper 19 (“Dec. on Inst.”). Patent Owner then filed its
Response to Petitioner’s Petition (Paper 29, “PO Resp.”), to which Petitioner filed
its Reply (Paper 44, “Pet. Reply”). An oral hearing was held on September 21,
2015. Paper 64 (“Tr.”).
Patent Owner alleged that Petitioner failed to list all real parties in interest,
and we authorized the parties to brief the issue. Paper 32 (Motion to Terminate);
Paper 38 (Opposition); Paper 42 (Reply). We denied the Motion to Terminate.
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Paper 52.
There are several outstanding motions decided herein. Patent Owner filed a
Motion to Exclude Evidence. Paper 50 (“PO Mot. Excl.”); see also Paper 57
(Petitioner’s Opposition, “Pet. Opp. to PO Mot. Excl.”); Paper 60 (Patent Owner’s
Reply, “PO Reply in support of PO Mot. Excl.”). Likewise, Petitioner filed a
Motion to Exclude Evidence. Paper 49 (“Pet Mot. Excl.”); see also Paper 54
(Patent Owner’s Opposition, “PO Opp. to Pet. Mot. Excl.”); Paper 59 (Petitioner’s
Reply, “Pet. Reply in support of Pet. Mot. Excl.”). Lastly, Petitioner filed a
Motion to Seal. Paper 36 (“Pet. Mot. Seal”). Patent Owner did not file an
opposition.
B. Related Proceedings
Petitioner states that Patent Owner has filed a number of lawsuits alleging
infringement of the ’370 patent. Pet. 3–4. Petitioner also filed three petitions for
inter partes review of patents, owned by the same Patent Owner as named in this
Petition, involving similar technology to that disclosed in the ’370 patent. These
three inter partes reviews are IPR2014-00936 (instituted); IPR2014-00937
(denied); and IPR2014-00938 (instituted).
C. The ’370 Patent
The ’370 patent is titled “Illuminated Wind Indicator.” Ex. 1001, 1. The
disclosed illuminated wind indictor is a modified wind chime having a solar
powered, rechargeable light emitting pendulum. In this manner, power can be
accumulated during the day and used to provide illumination at night. Id. at col. 5,
ll. 11–16.
As shown in Figure 1 of the ’370 patent, reproduced below, wind indicator
10 includes light device 12 and chime portion 14, light device 12 and chime
portion 14 being suspended on support 16 provided with spike 18. Id. at col. 5, ll.
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22–26.

Fig. 1 from the ’370 patent
is a perspective view of wind indicator 10.
As shown generally in Figure 1, light device 12 includes housing 20, lid 22,
and light source 24. Id. at col. 5, ll. 27–31. Solar panels 30 convert solar energy to
electrical power. Id. at col. 5, ll. 38–39. Chime portion 14 includes chime
members 44 and a pendulum assembly suspended from housing portion 20. Id. at
col. 5, ll. 57–60. In the example shown in Figure 1, the pendulum assembly
includes striker disc 46 suspended using electrical wires 48, which pass from light
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device 12 through striker disc 46 to pendulum 50. Id. at col. 5. ll. 60–64.
Electrical wires 48 may be electrically connected to second light emitting element
52 disposed inside pendulum 50. Id. at col. 5, l. 65–col. 6, l. 1.
D. Illustrative Claim
Among the challenged claims, claims 1, 5, 17, 18, 19, 28, 43 and 45 are
independent claims. Claim 1 is directed to a “solar lamp;” claim 5 is directed to an
“illuminated wind indicator;” claim 17 is directed to a “solar light module for
illuminating a wind chime;” claim 18 is directed to a “lighting apparatus;” and
claims 19, 28, 43 and 45 are directed to an “illuminated wind indicator.” Claim 1
is illustrative of the claimed invention and is reproduced below.
1. A solar lamp comprising:
a riser portion;
a connecting frame connected to said riser portion;
at least one light source, wherein said at least one light
source emits light directed above at least part of said riser
portion;
an at least partially light transmissive lens extending to cover
at least part of said at least one light source and wherein light
emitted from said at least one light source causes at least part of
said lens to illuminate;
a surround frame attached to said lamp proximate to the
intersection of said connecting frame and said riser portion such
that some of said light passes through said lens to illuminate at
least part of said surround frame from below at least part of said
surround frame;
electrical connections for at least one rechargeable power
source, wherein said riser portion positions said connections
above a ground surface;
an activation circuit to provide power to said at least one
light source from said at least one rechargeable power source
only at low light levels; and
at least one photovoltaic panel, wherein said at least one
photovoltaic panel is electrically connected to said at least one
light source via said at least one rechargeable power source,
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converting solar energy into electrical energy, storing said
electrical energy and providing said electrical energy to said at
least one light source.
E. References Relied Upon
Petitioner relies upon the following prior art references:

Reference Date Exhibit Number
Norton,
U.S. 2006/0139912 A1
Filed June 11, 2004
Pub. June 29, 2006
Ex. 1011
Kube,
U.S. 2005/0279403 A1
Filed June 16, 2004
Pub. Dec. 22, 2005
Ex. 1012
Ouyang (translation),
CN 2145314Y
Pub. Nov. 3, 1993 Ex. 1014
Kao,
U.S. 2005/0003120 A1
Filed Apr. 27, 2004
Pub. Jan. 6, 2005
Ex. 1016
Marchese
U.S. Pat. No. 4,072,855
Issued Feb. 7, 1978 Ex. 1017
Chen
U.S. Pat. No. D469,909 S
Issued Feb. 4, 2003 Ex. 1018
Kuelbs
U.S. Pat. No. 6,830,009 B1
Issued Dec. 14, 2004 Ex. 1019
Chliwnyj
U.S. Pat. No. 5,924,784
Issued July 20, 1999 Ex. 1020
Petitioner also relies on the declaration testimony of Dr. Shackle. Exs. 1002,
1073.

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F. The Instituted Grounds
The following grounds of unpatentability were instituted for trial:
Claim(s) Challenged Statutory Basis under
35 U.S.C.
References
1 and 48 § 102(e) and § 103 Norton
2 § 103 Norton and Kao
3 § 103 Norton and Marchese
4, 49, and 50 § 103 Norton and Chen
5, 6, 7, 9, 10, 17, 18, 19,
20 and 23
§ 103 Kube and Ouyang
28, 43, and 45 § 103 Kube, Ouyang, and
Kuelbs
14 § 103 Kube, Ouyang, and
Chliwnyj
II. MOTIONS
A. Petitioner’s Motion to Seal
Petitioner moves to seal Exhibits 1027 and 1040, portions of Exhibits 1030,
1051–1053, and 1055, and portions of its Opposition to Patent Owner’s Motion to
Terminate, which are asserted to include confidential information. Pet. Mot. Seal
2. Petitioner submitted non-confidential versions of Exhibits 1030, 1051–1053,
and 1055 that have been redacted to remove the confidential information. Id.
Petitioner also requests entry of the Default Protective Order. Id. at 5.
Patent Owner did not file an opposition to the Motion to Seal.
Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
inter partes review are open and available for access by the public; and a party
may file a concurrent motion to seal and the information at issue is sealed pending
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the outcome of the motion. It is, however, only “confidential information” that is
protected from disclosure. 35 U.S.C. § 316(a)(7).
The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
§ 42.54. Petitioner, as the moving party, has the burden of proof in showing
entitlement to the requested relief. 37 C.F.R. § 42.20(c).
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.
Counsel for Petitioner asserts that, to their knowledge, the documents sought to be
sealed have not been published or otherwise made public. Id. at 4–5.
Exhibit 1027 is a Southwire Holding Company corporate resolution, which
Petitioner characterizes as an “internal document.” Id. at 3.
Exhibit 1030 includes payment records to Dentons Canada LLP and Dentons
US LLP and includes payment amount information.
Exhibit 1040 is asserted to be a “confidential” internal announcement
regarding an internal “Fast Forward” program.
Exhibit 1051 includes copies of invoices to Coleman Cable, Inc. from
Dentons US LLP for payments for this inter partes review proceeding, as well as
related e-mails, and includes payment amounts and financial account number
information.
Exhibit 1052, in which financial account number information has been
redacted, includes wire transfer records from Coleman Cable to Dentons US LLP
including payment amount information.
Exhibit 1053, in which financial account number information has been
redacted, includes a copy of a check and a related letter regarding payments from
Coleman Cable, LLC for this inter partes review proceeding and includes payment
amount information.
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Exhibit 1055 refers to the financial, payment, and other information in the
documents discussed above.
Petitioner asserts that the financial, payment, and other information in the
documents sought to be sealed is “confidential and highly sensitive commercial
information.” Id. Petitioner also asserts that “[d]isclosure of the above
information could put Coleman and Southwire at a commercial disadvantage, for
instance in subsequent negotiations with other suppliers.” Id. at 4.
The redacted versions of these documents, upon which we relied in our
denial of Patent Owner’s Motion to Terminate (Paper 52), 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 1027 and 1040, and portions of Exhibits 1030, 1051–1053, and
1055. We do not seal Petitioner’s Opposition to Patent Owner’s Motion to
Terminate (Paper 38) because it was filed publicly, which we deem to be a
withdrawal of the Motion as to this paper.
Accordingly, we grant Petitioner’s Motion to Seal.
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 moves to “exclude inadmissible evidence filed with
Petitioner’s Reply.” PO Mot. Excl. 1. Patent Owner argues that (i) certain exhibits
should be struck because they are belated, (ii) other exhibits violate the Federal
Rules of Evidence, and (iii) portions of the cross-examination of its declarant,
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Alfred Ducharme, Ph.D., should be excluded because the questions were allegedly
misleading, argumentative, ambiguous, and/or compound.
Patent Owner, as the moving party, has the burden of proof in showing
entitlement to the requested relief. 37 C.F.R. § 42.20(c).
1. Reply Exhibits
Patent Owner first argues that Exhibits 1063–72, 1073 (¶¶ 26, 27, 35–38,
44–58, 60, and 74), and 1075–83 (the “Reply Exhibits”) “are belated” (id. at 2) and
should be excluded “for a failure to comply with 37 C.F.R. § 42.23(b) (‘A reply
may only respond to arguments raised in the corresponding opposition or patent
owner response.’)” (id. at 3). According to Patent Owner, these exhibits should be
excluded because they are “exhibits that could reasonably have been, but were not,
included in an earlier filing.” Id. at 2 (emphasis added). This is not the standard
that determines whether information in the Reply is responsive to arguments in
Patent Owner’s Response. Patent Owner does not address the substance of why
these documents allegedly are not responsive to the arguments in Patent Owner’s
Response. The fact that “various internet profiles” (id. at 3) and additional
information about “Dr. Shackle’s experience” (id.) existed at the time the Petition
was filed, and thus theoretically could have been filed earlier, does not establish
that they are not responsive to arguments raised in Patent Owner’s Response.
Dr. Shackle testifies that his Second Declaration (Ex. 1073) “addresses
issues raised by Dr. Ducharme, who I understand is patent owner’s expert, in his
declaration and, where appropriate, statements made by Dr. Ducharme during his
deposition.” Ex. 1073 ¶ 6. Patent Owner’s Reply also suggests that the Reply
Exhibits are merely evidence responding to the continuing dispute about the merits
of the case discussed in Patent Owner’s Response. See, e.g., PO Reply in support
of PO Mot. Excl. 3–4 (arguing the merits of Petitioner’s assertion of obviousness
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of the wind chime claims based on the Kube and Ouyang references).
We have reviewed the arguments in Petitioner’s Reply and Petitioner’s
citations therein to the Reply Exhibits and are persuaded that the Reply Exhibits
are responsive to Patent Owner’s arguments and evidence in Patent Owner’s
Response. Accordingly, we deny Patent Owner’s Motion to Exclude the Reply
Exhibits.
2. Federal Rules of Evidence
Patent Owner seeks to exclude a number of exhibits because they allegedly
do not comply with Federal Rules of Evidence (“FRE”) 401 (relevance), 403
(prejudice, confusion, delay, cumulativeness), 602 (personal knowledge), and 801
and 802 (hearsay). PO Mot. Excl. 5–6.
a. Personal Knowledge and Hearsay
Patent Owner asserts that “Exhibits 1064, 1070, 1072, 1073 (¶¶ 26, 27), and
1076–83 violate FRE 602, 801, and 802, and thus, should be excluded from further
consideration.” Id. at 5.
Patent Owner seeks to exclude paragraphs 26 and 27 of Exhibit 1073
(Second Declaration of Dr. Shackle) because, according to Patent Owner, “they
include hearsay statements and Dr. Shackle offers factual observations without
laying a proper foundation or otherwise demonstrating personal knowledge of the
recited facts.” in violation of Federal Rules of Evidence 602, 702, 703, 801, and
802. Id. at 4. Patent Owner also argues that “Exhibits 1069–71 and 1076–83,”1
which are profiles obtained from websites such as LinkedIn and are offered to
show the educational background of various inventors, are hearsay and thus should

1 Patent Owner’s reference to Exhibit 1069 appears to be an error. Exhibit 1069 is
not referred to in paragraphs 26 and 27 of Exhibit 1073, and it is not a “profile,” as
characterized by Patent Owner. Exhibit 1069 relates to “Hybrid Axial Flux
Machines.”
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be excluded. Id. Additionally, Patent Owner asserts we should exclude Exhibit
1064 because it contains hearsay. Id. at 5.
Because we do not rely on Exhibits 1064, 1070, 1071, 1073 (¶¶ 26, 27), and
1076–1083, we dismiss this aspect of the motion as moot.
b. Relevance and Prejudice
Patent Owner asserts that Exhibits 1063–1068, 1072, 1073 (¶¶ 44–58, 60,
and 74), and 1075 “lack any probative value in violation of FRE 401 and are
unduly prejudicial to Patent Owner in violation of FRE 403.” PO Mot. Excl. 6.
As characterized by Patent Owner, Exhibits 1063, 1065–67, and 1072 relate
to Petitioner’s argument and construction of the term “surround frame” in the
challenged claims and “whether the prior art, namely the reference Norton, teaches
a surround frame.” Id. Exhibits 1066 and 1068 (dictionary definitions) and
Exhibit 1067 (list of synonyms for the term “surround”) also are relevant to the
issues in this case. Patent Owner objects to Dr. Shackle’s Second Declaration (Ex.
1073), paragraphs 44–58, 60, and 74, because it relies on Exhibits 1063–68 and
1072.
Exhibit 1064 (website document concerning wind chimes) and Exhibit 1075
(Lighting Handbook) also are relevant to the subject matter of this case.
According to Patent Owner, “[a]ny probative value of Exhibits 1063, 1065,
and 1072 is strongly outweighed by the unfair prejudice to Patent Owner resulting
in confusing of the issues, misleading the Board, undue delay, and wasting time, in
violation of FRE 403.” Id. We disagree.
The evidence at issue in Patent Owner’s Motion regarding the construction
of the term “surround frame” and lighting technology clearly is relevant to the
issues in this case. It is well-settled that judges are free to consult dictionaries at
any time in order to better understand the underlying technology as long as “the
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dictionary definition does not contradict any definition found in or ascertained by a
reading of the patent documents.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1585 n.6 (Fed. Cir. 1996); see generally infra Section III.A.
A motion to exclude is not a vehicle for addressing the weight to be given
evidence. In considering whether evidence is probative, confusing, or misleading,
we consider the forum in which the motion is presented. “The Board is comprised
of a tribunal of judges ‘of competent legal knowledge and scientific ability.’
35 U.S.C. § 6(a). There is no jury to impress, convince, or confuse in our
proceedings. Moreover, we are capable of assigning the weight to be given
evidence, including assigning ‘no weight.’” FLIR Sys., Inc. v. Leak Surveys, Inc.,
Case IPR2014-00411, slip op. at 5 (PTAB Sept. 3, 2015) (Paper 113). Similar to a
district court in a bench trial, the Board, sitting as a non-jury tribunal with
administrative expertise, is well-positioned to determine and assign appropriate
weight to evidence presented. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d
215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the
admissibility of evidence is equally capable of sifting it accurately after it has been
received . . . .”).
Based on the analysis above, we deny Patent Owner’s Motion to Exclude as
to Exhibits 1063–1068, 1072, 1073 (¶¶ 44–58, 60, and 74), and 1075.
3. Cross-Examination Testimony
Patent Owner argues that four excerpts of the cross-examination, deposition
testimony of its declarant, Dr. Ducharme, in Exhibits 1061 and 1062, should be
excluded. PO Mot. Excl. 9–14. For each of the four excerpts, Patent Owner
asserts that Dr. Ducharme’s testimony should not be treated as standing for the
notions upon which Petitioner argues, and that it is inadmissible. See, e.g., id. at
10 (“In addition to the cited excerpts not offering support for Petitioner’s
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mischaracterization, the testimony . . . is inadmissible because the question was
ambiguous and misleading,” and the line of questioning “has low probative value
and is confusing and results in undue prejudice . . . .”). As discussed above, we
will make our own judgments as to what extent, if any, Dr. Ducharme’s testimony
supports the parties’ respective positions and whether the testimony is competent,
material, and convincing, or whether testimony is based on an unclear, ambiguous
question, or prejudicial. Accordingly, we deny Patent Owner’s motion to exclude
the four excerpts from Dr. Ducharme’s deposition testimony.
In summary, we deny-in-part and dismiss-in-part Patent Owner’s Motion to
Exclude.
C. Petitioner’s Motion to Exclude Evidence
Petitioner, as the moving party, has the burden of proof in showing
entitlement to the requested relief. 37 C.F.R. § 42.20(c).
Petitioner first moves to exclude Exhibits 2054, 2062, 2064, 2066, and 2076
in their entirety, portions of Papers 29 and 32, which are Patent Owner’s Response
and Patent Owner’s Motion to Terminate, respectively, and evidence submitted
with Patent Owner’s observations. Pet Mot. Excl. 2.
1. Exhibits 2054, 2062, 2064, 2066, and 2076
According to Petitioner, Exhibits 2054, 2062, 2064, 2066, and 2076 should
be excluded because they are “inadmissible hearsay.” Id. at 2. Petitioner also
asserts that Patent Owner’s Motion to Terminate, Paper 32, pages 8–9, should be
excluded because it is argument that relies on Exhibits 2054, 2062, 2064, 2066,
and 2076. Id. at 3.
Patent Owner asserts that this matter is moot because we denied the Motion
to Terminate. PO Opp. Pet. Mot. Excl. 2.
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Petitioner argues that Patent Owner possesses a right to appeal denial of the
Motion to Terminate, and therefore, the issue is not moot. Pet. Reply in support of
Pet. Mot. Excl. 1.
We denied Patent Owner’s Motion to Terminate on August 21, 2015 (Paper
52). Accordingly, we dismiss Petitioner’s Motion as to these Exhibits and portions
of Paper 32 as moot.
2. Testimony Regarding “Retrospective Review”
Petitioner moves to exclude under FRE 402 and 403 as confusing,
misleading, and irrelevant selected portions of: (1) Dr. Shackle’s deposition
testimony in Ex. 2024;2 (2) Patent Owner’s Response; and (3) Dr. Ducharme’s
declaration testimony in Ex. 2022 ¶ 35. Pet. Mot. Excl. 4. Petitioner argues that
this evidence represents “only snippets” of the testimony regarding Patent Owner’s
argument that Dr. Shackle used “hindsight” and a “retrospective review” in
forming his opinions. Id.
We deny Petitioner’s Motion to Exclude this evidence. This panel acts as
both the gatekeeper of evidence and as the weigher of evidence. We base our
decision on the totality of the evidence, including the full deposition transcripts
filed in this proceeding. Rather than excluding evidence that is allegedly
confusing, misleading, and/or irrelevant, we will give it appropriate weight in our
analysis, including, if appropriate, no weight.3

2 Deposition Testimony of Dr. Peter W. Shackle, Vol. 2, pages 196–361.
3 “The trial judge is in the best position to weigh considerations such as the
closeness of the case, the tactics of counsel, the conduct of the parties, and any
other factors that may contribute to a fair allocation of the burdens of litigation as
between winner and loser.” S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 781
F.2d 198, 201 (Fed. Cir. 1986).
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3. Dr. Shackle’s Deposition Testimony
Concerning the “Unified Glare Rating” Formula
Petitioner moves to exclude under FRE 402 and 403 as being irrelevant
cross-examination testimony of Dr. Shackle concerning an equation called the
“Unified Glare Rating” formula. Pet. Mot. Excl. 4–5. We deny Petitioner’s
Motion to Exclude this cross-examination testimony evidence.
The ’370 patent does not use the word “glare.” Dr. Ducharme, Patent
Owner’s declarant, testified that the ’370 patent uses glare to illuminate the
chimes. Ex. 2022 ¶ 170. Dr. Shackle testified on cross-examination that he was
“not aware” of “something called a Unified Glare Rating.” Ex. 2084, p. 100, ll. 6–
8. Petitioner argues, without citation of evidentiary support, that the Unified Glare
Rating “is used to assess glare caused by street lights that use 200+ watts of energy
from an AC voltage source.” Pet. Mot. Excl. 5. Petitioner bases its assertion that
Dr. Shackle’s testimony on this topic is irrelevant because “garden lights or wind
chimes typically use about 1 watt of energy from a relatively small battery.” Id.
Again, Petitioner cites no evidence to support its position. Thus, based on the
evidence before us, the evidence does not establish that Dr. Shackle’s testimony on
the Unified Glare Rating formula is irrelevant.
As explained above, we base our decision on the totality of the evidence,
weigh the evidence Petitioner moves to exclude in the context of other evidence,
and give the evidence Petitioner moves to exclude appropriate weight in our
analysis, including no weight.
In summary, 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 51) on the
cross-examination of Dr. Shackle, which took place after Petitioner filed its Reply.
Petitioner filed a Response (Paper 56). We have considered Patent Owner’s
observations and Petitioner’s responses in rendering our decision.
III. ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be given its
broadest reasonable construction in light of the specification of the patent in which
it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim Construction); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hen
interpreting a claim, words of the claim are generally given their ordinary and
accustomed meaning, unless it appears from the specification or the file history
that they were used differently by the inventor.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. Id.
Only terms which are in controversy need to be construed, and then 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).
We determine that the term “surround frame,” used in claims 1, 4, 49, and
50, and the term “emits light,” used in claims 1, 5, 7, 9, 10, 11, 18, 19, 23, 24, and
28, require specific construction.
1. Surround Frame
Counsel for Patent Owner acknowledged that the construction of the term
“surround frame” is the “controlling issue” with respect to the challenges to claims
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1–4 and 48–50. Tr. 47, l. 22–48, l. 2. As we discuss below, the construction of
this term involves consideration of the difference between two-dimensional and
three-dimensional objects, and the difference between a structure that surrounds an
object and one that encircles an object. Our task is made more challenging because
of the minimal intrinsic evidence related to this issue.
To ascertain the scope and meaning of the claim term “surround frame,” we
look to the words of the claims themselves, the specification, the prosecution
history, and any relevant extrinsic evidence. In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1286 (Fed. Cir. 2015). The specification is always highly relevant
to the claim construction analysis. “Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
a. The Claims
Four claims, claims 1, 4, 49 and 50, contain a specific recitation of some
feature of the “surround frame.” Claims 2, 3, and 48 depend from claim 1. Thus,
the claims that include directly or through dependency a “surround frame” element
are claims 1–4, and 48–50. With respect to the surround frame, claim 1 recites:
a surround frame attached to said lamp proximate to the
intersection of said connecting frame and said riser portion such
that some of said light passes through said lens to illuminate at
least part of said surround frame from below at least part of said
surround frame.
Thus, claim 1 does not recite a specific shape, structure, orientation, or material for
the “surround frame.” It merely states where the “surround frame” is attached, in
relation to the lamp, connecting frame, and riser portion, and the functional result
of that attachment, that some light passes through the lens “to illuminate at least
part of said surround frame from below.”
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Claim 4, dependent from claim 1, further recites that the lens is substantially
spherical and that the “surround frame at least partially encircles said lens.” See
also Ex. 1001, col. 22, ll. 1–2 (“The surround frame may partially or fully encircle
the lens portion 214 . . . .”).
Claim 49, dependent from claim 4, further recites a specific shape for the
“surround frame,” which includes a shape “selected from the group consisting of
an insect, flower, geometric shape, and astronomical shape.” See also id., col. 21,
l. 66–col. 22, l. 1 (“The frame may be any decorative shape such as a sun, flower,
moon, insect, or geometric shape.”).
Claim 50, dependent from claim 1, also recites that the lens is substantially
spherical (see claim 4) and further recites that the “surround frame at least
partially surrounds said lens.” The only difference between claim 50 and claim 4
is that claim 50 states that the surround frame “surrounds” the lens, whereas claim
4 states that the surround frame “encircles” the lens. Under the patent law doctrine
of claim differentiation, this would suggest that “encircles” and “surrounds” have
different meanings.
We recognize that the doctrine of claim differentiation is “based on the
common sense notion that different words or phrases used in separate claims are
presumed to indicate that the claims have different meanings and scope.” Karlin
Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999). The
doctrine is “not a hard and fast rule, but instead ‘a rule of thumb that does not
trump the clear import of the specification.’” Starhome GmbH v. AT & T Mobility
LLC, 743 F.3d 849, 858 (Fed. Cir. 2014) (quoting Edwards Lifesciences LLC v.
Cook Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009)). We conclude that claim
differentiation applies in this context, primarily because the Specification supports
such a reading, as explained below. Independent claim 1, which only recites a
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“surround frame,” is broader than dependent claims 4 and 50, and the terms
“surround” and “encircle” in claims 4 and 50 mean different things, with
“surround” being the broader of the two.
Thus, based on our review of the claim language, surrounding and encircling
are two different things.
b. The Specification
Turning to the Specification, an exemplary “surround frame” is shown and
described in the Specification in the context of the embodiment in Figure 11,
which is reproduced below.

Figure 11 from the ’370 patent.
The written description in the ’370 patent contains more than 26 columns of
text (more than 1,700 lines of text), and discloses at least twelve distinct
embodiments. The description of an exemplary “surround frame,” however, is
only nine lines of text in the patent:
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In this embodiment a surround frame 270 encircles the lens
portion 214. The surround frame 270 adds a decorative element
but also provides some impact protection for the lens portion 214
should the fixture topple over and fall. The frame may be any
decorative shape such as a sun, flower, moon, insect, or
geometric shape. The surround frame may partially or fully
encircle the lens portion 214 and may surround the lens portion
214 in two or three dimensions. When illuminated, light
emanating from the lens portion 214 illuminates at least part of
the frame 270.
Ex. 1001, col. 21, l. 63–col. 22, l. 4 (emphasis added). Surround frame 270, as
described above in the Specification, is separate and distinct from frame 271, also
shown in Figure 11. As described in the Specification, lens portion 214 is rigidly
fixed on frame 271, which is connected to upper pole portion 272. Id. at col. 21,
ll. 60–62.
The Specification mirrors the claims in that it uses “surround” and “encircle”
distinctly. The Specification discloses that surround frame 270 in Figure 11
“encircles” lens portion 214, and that “[t]he surround frame [depicted in Figure 11]
may partially or fully encircle the lens portion 214 and may surround the lens
portion 214 in two or three dimensions.” Ex. 1001, col. 22, ll. 1–3 (emphasis
added). The fact that the Specification uses the two terms in the same sentence,
with an “and” between the two clauses, is an indication that the terms do not mean
the same thing.
Evidence of the terms’ ordinary meanings also supports interpreting them to
mean different things. Although the parties submitted some dictionary definitions
of the terms that define them effectively as synonyms, other aspects of the
submitted definitions indicate that there is a difference. One dictionary defines
“surround” as “to enclose on all sides; encompass” or “to form an enclosure round;
encircle.” Ex. 1066, 1. Another dictionary defines “encircle” as “[t]o form a circle
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around; surround” or “[t]o move or go around completely; make a circuit of.” Ex.
2045, 1. Thus, “encircle” appears to imply a circular shape, whereas “surround”
may be any shape. See Tr. 45, ll. 5–16 (Petitioner agreeing that “anything that
surrounds, if [it is] in a circular shape, also encircles”).
Thus, from the Specification, we glean that surround frame 270 is an
example of a “surround frame” that “encircles” a lens, i.e., has a circular shape
around the lens, and that it is possible for a “surround frame” to “partially or fully
encircle” a lens or “surround [a lens] in two or three dimensions.” See id., col. 21,
l. 63–col. 22, l. 3.
c. The Prosecution History
The prosecution history sheds little light on the construction of the term
“surround frame.”
Patent claim 1 was application claim 6; patent claim 4 was application claim
9; and patent claim 50 was application claim 55. Ex. 1003, 223 (showing the
Examiner’s concordance of final claims allowed and issued with original claims
filed).
The “surround frame” clause in original application claim 6, as filed, is
identical to the “surround frame” clause in patent claim 1.
In adding application claim 55 by amendment, the applicant stated that
“[n]ew dependent claim 55 has been added and depends from allowed claim 6.
New claim 55 complements amended claim 9 to further cover features of the
surround frame described in paragraph [00152] of the specification relating to
whether the lens is surrounded in two or three dimensions.” Ex. 1003, 160; see
also Ex. 1001, col. 22, ll. 1–3 (“The surround frame . . . may surround the lens
portion 214 in two or three dimensions.”). Thus, the phrase in patent claim 50,
which recites that the surround frame at least partially surrounds the lens, was
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intended by the applicant to describe a structure that “complements” the structure
in patent claim 4, which recites that the surround frame at least partially encircles
the lens. In other words, again, surrounding and encircling are not exactly the
same thing, but the parent independent claim, claim 1, encompasses both
possibilities.
The Examiner’s Reasons for Allowance do not mention the “surround
frame.” The Examiner stated that “[c]laims 6-55 have been found to be novel and
inventive because [the] prior art does not teach all elements of the applicant’s
invention.” Ex. 1003, 206. Regarding independent application claims 6, 10, 23,
24, 33, and 50, which correspond to patent claims 1, 5, 18, 19, 28, and 45, the
Examiner also stated:
The claims recite the structural significance of wherein at least
one light source situated such that a portion of said pendulum
assembly emits light; wherein at least part of said light emitted
by said pendulum assembly is reflected by said at least one
chime member causing at least part of an external surface of said
at least one chime member to be illuminated such that movement
of said at least one chime member relative to said pendulum
assembly is visible at said ambient light levels.
Id.
d. The Parties’ Positions
Petitioner asserts that the term “surround frame” in claim 1 should be
interpreted to mean “a frame disposed at least partially around the lens.” Pet. 20.
Petitioner relies on the Specification and the Declaration of Dr. Shackle for
support. Id. Dr. Shackle’s testimony largely mirrors what is in the Petition. See
Ex. 1002 ¶ 86.
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Patent Owner asserts a substantially different construction. According to
Patent Owner, the broadest reasonable interpretation of “surround frame,” as used
in the claims of the ’370 patent is:
An open structural peripheral border that encircles the lens while
residing primarily in a plane passing through the lens, the degree
of completeness being at least 270 degrees (like a doorway
surround frame that is complete except for one side), the
peripheral border being primarily either linearly one-
dimensional or two-dimensional in the plane in which it
primarily resides, any degree of thickness in a third dimension
being relatively small such that the peripheral border does not
substantially conceal or cover the lens outside of plane in which
the peripheral border primarily resides.
PO Resp. 18 (citing Ex. 2022 ¶ 94) (emphasis added).
Patent Owner and its declarant, Dr. Ducharme, rely on extrinsic evidence
based on the use of the phrase “surround frame” in the context of, for example,
door and window frames and eyeglass frames to support their proposed
construction. PO Resp. 12–13; Ex. 2022 ¶ 70–71. Dr. Ducharme also relies on
incidental uses of the phrase “surround frame” in various technologies, such as a
vehicle sun visor (Ex. 2022 ¶ 87), a security door (id. ¶ 88), and platens for linear
motors operating in a plane (id. ¶ 89). According to Patent Owner, the use of the
term “surround frame” in the other cited references demonstrates that the term has
“a very well understood and ordinary meaning” of its proposed interpretation.
PO Resp. 13. We are not persuaded that is the case, however.
Notwithstanding a “reasonably comprehensive search of U.S. patents and
published patent applications on the USPTO website to look for the term ‘surround
frame’” by Dr. Ducharme (id. ¶ 81), there is no evidence that the term “surround
frame” is a term that has a single recognized meaning to a person of ordinary skill
in the technology relevant to the claimed invention of the ’370 patent, or is
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otherwise considered a term of art. See Tr. 67, ll. 15–23 (“We don’t have anything
like that in the record, Your Honor.”). Dr. Ducharme was not able to identify a
single patent that used the term “surround frame” in a technology analogous to the
claimed invention. Patent Owner maintains, however, that the term “surround
frame” has “a uniform, well accepted and consistently used meaning to persons in
the art . . . . That is our position.” Id. at 51, ll. 2–6.
The evidence of patents and published patent applications directed to doors
and window frames, eyeglass frames, and other technologies on which Patent
Owner relies, is not persuasive that the detailed construction of the term “surround
frame,” advocated by Patent Owner and quoted above, is the broadest reasonable
construction of that term based on the intrinsic and extrinsic evidence. The patents
and published patent applications have different specifications, use the term in
different contexts, and do not show that the term has a common meaning across
technology areas.
Patent Owner also argues that its proposed construction is consistent with
the definition of “encircle,” which includes the word “surround.” PO Resp. 15; see
also, Ex. 2045 (a dictionary definition of the verb “encircle,” defining it to mean
“[t]o form a circle around; surround”). It is Patent Owner’s position that the
broadest reasonable construction of the phrase “partially encircle,” as recited in
claim 4, means that the “surround frame” encircles “three quarters” of the lens. Tr.
55, ll. 3–9 (“[W]hat we found was three quarters, and that is what we determined is
the broadest reasonable construction. It could go as far as 180 degrees, but we
didn’t find that.”); see also id., 73, ll. 4–5 (“It must be over 50 percent and
probably around three quarters.”). We find no persuasive evidence for this
position in the claim language, the Specification, or elsewhere. For instance, we
see no mention of any percentages or degrees by which a person of ordinary skill
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in the art could objectively evaluate whether something is a “surround frame” or
not (e.g., 74 percent versus 76 percent, 269 degrees versus 271 degrees).
Patent Owner also maintains that a “surround frame” does not substantially
conceal or cover the lens outside of the plane in which the peripheral border
primarily resides. PO Resp. 12–13; Tr. 52, ll. 3–6 (“[A] surround frame is not used
to describe something that obscures the plane of the view of the object that is being
viewed. It surrounds it but does not obscure it except at the edges.”). We find no
persuasive evidence for this position in the Specification or elsewhere. We also
note that claim 1 does not require the “surround frame” to partially or fully encircle
or surround the lens. The only relationship in claim 1 between the “surround
frame” and the lens is that light passing through the lens illuminates part of the
“surround frame” from below the “surround frame.”
We also find no persuasive evidence for Patent Owner’s assertion that any
degree of thickness in a third dimension is “relatively small.” See PO Resp. 18.
Regarding the alleged “two-dimensional character” of a surround frame, Patent
Owner argues that a two-dimensional surround frame has “some significant depth
but not significant in the sense that it blocks the view of the plane of view.”
Id. at 53, ll. 14–21. Again, we are not directed to persuasive evidence in the
Specification that supports the proffered distinction between a two-dimensional
and a three-dimensional surround frame. Limitations about obscuring or blocking
the view are not in the challenged claims. Further, as a practical matter, every
physical object has three dimensions, even though one dimension may be
substantially smaller than the other two dimensions, e.g., a page of a newspaper.
See, e.g., Ex. 1061, 13, l. 18–14, l. 17 (deposition testimony of Patent Owner’s
declarant, Dr. Ducharme, stating that a two-dimensional object “doesn’t exist in
the real world,” and acknowledging that the exemplary surround frame shown in
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Figure 11 of the ’370 patent has some thickness). Patent Owner acknowledged
that all surround frames—including Patent Owner’s alleged two-dimensional,
generally planar surround frame—have some thickness, and asserts that this
thickness is “a great deal less than the area of the object that it’s surrounding.”
Tr. 51, ll. 7–13, 69, l. 18–70, l. 2 (acknowledging that the exemplary surround
frame in Figure 11 has depth). Neither the claims nor the Specification contain or
support such a limitation, and even if they did, Patent Owner’s “relatively small”
standard would not allow a person of ordinary skill in the art to determine
objectively whether a structure has or does not have sufficient thickness to be a
“surround frame.”
Accordingly, based on the totality of the evidence and the analysis above,
we determine that the broadest reasonable construction of the term “surround
frame” in light of the Specification of the ’370 patent is a frame disposed at least
partially around the lens.4
2. Emits Light
a. The Claims
Claims 1, 5, 7, 9, 10, 11, 18, 19, 23, 24, and 28 contain the term “emits
light” or a variant of this term. Claim 5, for example, recites that the “pendulum
assembly emits light,” and claim 9 recites that the “striker element emits light.”
The claims do not provide any specific meaning to the term “emits light.”
b. The Specification
The Specification uses the term “emitting” or “emitted” to describe “a light
emitting pendulum.” Ex. 1001, col. 5, ll. 11–13. In the context of the embodiment
disclosed in Figure 1, reproduced above in Section I.C, light emitting diode

4 Dependent claims 4 and 50 further specify that the surround frame “at least
partially encircles” or “at least partially surrounds” the lens, respectively.
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(“LED”) 52 is disposed inside pendulum 50, with pendulum 50 being formed of a
“suitable translucent or transparent material.” Id. at col. 5, l. 67–col. 6, l. 2. We
reproduce below a portion of Figure 1 illustrating LED 52 “inside” pendulum 50.

Excerpt from Figure 1 of the ’370 patent.
As shown in Figure 1, LED 52 is suspended within an opening or cut-out portion
of pendulum 50.
Activating LED 52 causes light “to be emitted by the pendulum 50.” Id. at
col. 6, ll. 3–6. The only disclosed structure that causes pendulum 50 to emit light
is the presence of an LED within the opening or cut-out portion of pendulum 50
and/or the “suitable translucent or transparent material” from which pendulum 50
is made.
An alternative embodiment is shown in Figure 4, which eliminates LED 52
and instead uses tube 62 so that light from light source 24 passes downwards
through tube 62 to illuminate striker 46 and pendulum 50. Id. at col. 9, ll. 20–38.
The Specification also states that tube 62 may be formed of opaque material and
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striker 46 and/or pendulum 50 may be “formed of transparent or translucent
material so that light passing downwards through the tube 62 from the light source
24 is emitted by the striker 46 and/or the pendulum 50.” Id. at col. 9, ll. 39–44
(emphasis added).
In the context of the embodiment shown and described in connection with
Figure 6, the Specification again emphasizes that the striker or pendulum is
“formed at least partly of a suitable translucent or transparent material.” Id. at
col. 10, l. 51–col. 11, l. 1.
Thus, the only structure disclosed that allows pendulum 50 to emit light is
the transparent or translucent material from which it is made.
c. Prosecution History
Application claim 6 (patent claim 1) was amended during prosecution from
“light from” to “light emitted from” in order to “more distinctly claim the
invention.” Ex. 1003, 158. Applicant stated that “[i]t is believed that [this]
amendment[] [has] not changed the scope of the claim.” Id.
Application claim 33 (patent claim 28) was amended by an Examiner’s
Amendment to add a final clause that “said at least one light source is situated such
that a portion of said pendulum assembly emits light.” Id. at 203.
The Examiner’s Reasons for Allowance stated, among other things, that the
claims “recite the structural significance of . . . at least one light source situated
such that a portion of said pendulum assembly emits light.” Id. at 206.
d. The Parties’ Positions
Petitioner asserts that “the emission of light includes both (a) reflecting light
emanating from a light source that is disposed remotely from the pendulum and
striker elements, including when the light source is located in a housing above the
pendulum and striker,” such as shown in Figures 4 and 5, “as well as (b) emitting
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the light from a light source disposed directly at the pendulum or striker elements,”
such as shown in Figure 1 (LED 52 within pendulum 50) or Figure 6 (LED 52
inside striker orb 46 and/or LED 90 inside pendulum 50). Pet. 18; see Ex. 1001,
col. 10, l. 51–col. 11, l. 1. Based on this analysis, Petitioner asserts that the term
“emits light” should be construed to mean “emits light originated by a light source
disposed locally or remotely from striker or pendulum elements, including reflects
light originated by a light source disposed remotely from the striker or pendulum
elements.” Pet. 18–19 (citing Ex. 1002 ¶ 81).
Patent Owner takes a different view. According to Patent Owner, the term
“emits light” means “the at least one light source is positioned on or within the
pendulum assembly such that light generated by the at least one light source
projects from a surface of the pendulum assembly or through the surface by
transmission.” PO Resp. 18 (citing Ex. 2022 ¶ 95) (emphasis added). We find no
support in the Specification for limiting the light source to being on or within the
pendulum assembly. To the contrary, in the embodiment of Figures 4 and 5, light
source 24 is remote from the pendulum and passes down tube 62 to reach the
pendulum. Yet the Specification states that “light passing downwards through the
tube 62 from the light source 24 is emitted by the striker 46 and/or the pendulum
50.” Ex. 1001, col. 9, ll. 20–44 (emphasis added).
Patent Owner asserts that Petitioner’s “proposed construction is so
unreasonably broad that it would encompass reflection of ambient light from any
external ‘light source.’” Id. at 19. Patent Owner’s argument is not persuasive
because the claim language itself limits the light source to the claimed light source.
See, e.g., claim 1 (“at least one light source, wherein said at least one light source
emits light directed above at least part of said riser portion”). Thus, in the context
of the claims, the light cannot come from “any” light source; it must come from the
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“light source” that is part of the claimed apparatus. This additional constraint must
be taken into account when interpreting the claims.
Patent Owner also argues that “[e]mittance . . . is scientifically considered
distinct from reflectance.” Id. at 20 (citing Ex. 2018). Exhibit 2018 is a dictionary
definition defining “emittance” as “the energy radiated by the surface of a body per
second per unit area.” We find no support in the Specification that this definition
of “emittance” is what the word “emits,” as used in the ’370 patent, was intended
to mean. A dictionary definition of the word “emits,” as used in physics, is “to
give off (radiation or particles),” which is more applicable to the technology
disclosed and claimed in the ’370 patent.5 Therefore, the term “emits,” as
described in the Specification and used in the claims, is intended to encompass
light that both reflects as well as light that is diffused, whether the light source is
remote from the object (as in Figures 4 and 5), adjacent to the object, or within the
object (as in Figure 1).
Based on the totality of the intrinsic and extrinsic evidence presented, we
determine that the term “emits light” means reflects or transmits light.
B. Asserted Grounds of Unpatentability
Patent Owner asserts three general arguments that affect all of the asserted
grounds of unpatentability, which we address first. These three general arguments
concern: (1) the Declaration of Dr. Peter Shackle; (2) the skill level of a person
having ordinary skill in the art; and (3) the priority date of certain claims of the
’370 patent.

5 emits. Collins English Dictionary – Complete and Unabridged.
http://www.thefreedictionary.com/emit (accessed: December 17 2015) (Ex. 3003).
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1. Dr. Shackle’s Declaration
Petitioner cites and relies on the Declaration of Dr. Shackle, which is Exhibit
1002, for evidentiary support. Patent Owner objects to Dr. Shackle’s qualifications
as an expert because “Dr. Shackle has never designed a solar light.” PO Resp. 10.
Patent Owner also objects to Dr. Shackle’s qualifications because he conducted a
“retrospective review” of the prior art. Id. at 11.
Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of
science concerned with the properties of matter and energy and the relationships
between them. It is based on mathematics and traditionally includes mechanics,
optics, electricity and magnetism, acoustics, and heat.”6 In addition to his
academic credentials, Dr. Shackle has over twenty years of experience in the field
of lighting electronics, with particular emphasis on LED drivers and electronic
ballasts. Ex. 1002 ¶ 3. This experience includes, but is not limited to: President
and Founder of Photolume, a consulting company in the field of lighting
electronics products; Director of Power Supply Products at Light Based
Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and
Director of Engineering and later V.P. of Advanced Technology at Universal
Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible
for developing a number of LED circuits and products. Id., App’x A (CV of Dr.
Shackle).
The ’370 patent refers very generally to LEDs, solar panels, and related
circuits. See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic
technology of solar cells and solar circuits, and the type and sophistication of the

6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged
10th Edition. HarperCollins Publishers.
http://dictionary.reference.com/browse/physics (accessed: December 16, 2015)
(Ex. 3002).
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solar cell technology disclosed and claimed in the ’370 patent, Dr. Shackle appears
qualified by knowledge, experience, training, and education to testify in the form
of an opinion in this proceeding. Patent Owner was entitled to, and did, cross-
examine Dr. Shackle based on his Declaration testimony as part of routine
discovery. See 37 C.F.R. § 42.51(b)(1)(ii).
We discussed the issue of Dr. Shackle’s “retrospective review” above in the
context of Petitioner’s Motion to Exclude evidence on this issue. Dr. Shackle’s
testimony on this matter does not disqualify him as an expert in this case. As
discussed above, we will give his testimony appropriate weight in our analysis.
2. Person Having Ordinary Skill in the Art
Petitioner asserts that “the level of ordinary skill in the art is evidenced by
the prior art references of record.” Pet. 11. Within that guideline, it is Petitioner’s
position that a person of ordinary skill in the art typically would have possessed
either (1) a graduate degree in electrical or electronics engineering or physics with
demonstrable experience in circuit design, or (2) a bachelor’s degree in electrical
or electronics engineering or physics with two years industrial experience and
demonstrable experience in circuit design. Id. (citing Ex. 1002 ¶ 36).
Patent Owner takes a different view. It is Patent Owner’s position that the
level of ordinary skill does not reach a degreed electrical engineer, as proposed by
Petitioner. PO Resp. 8. According to Patent Owner, a person of ordinary skill is
capable of implementing a circuit for a specified function, and selecting and
employing electrical components to perform those functions, but only once he or
she is told what is the function the circuit must perform. Id. at 5 (citing
Ex. 2022 ¶ 43).
In Petitioner’s view, the outcome of this case is not dependent on which
level of skill we may adopt. Pet. Reply 6. Patent Owner took the same position at
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the hearing—the level of skill adopted is not outcome determinative in this case.
Tr. 78, l. 12–79, l. 9.
In determining the level of ordinary skill in the art, a court may consider
various factors, including “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 ’370 patent, Ouyang, and Chliwnyj include circuit diagrams, and Norton
and Kuelbs address circuitry for lighting assemblies. The parties seem to agree
that a person of ordinary skill in the art would be capable of reading the circuit
diagrams and understanding what function(s) they perform, at least at some level.
PO Resp. 3 (arguing that “[t]he primary area of expertise of a [person of ordinary
skill in the art] is that of a person having knowledge of electrical engineering, in
particular the ability to recognize how a pre-designed circuit may operate”); Pet.
Reply 2–5.
Patent Owner in its Response, however, asserts that a person of ordinary
skill in the art would have had a “basic knowledge of . . . electrical circuits” and
related components in solar garden lights, but 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. See PO Resp. 4–5; see also
Ex. 2022 ¶ 39 (Patent Owner’s declarant Dr. Ducharme testifying that a person of
ordinary skill would be capable of “making only simplistic changes to the exterior
aesthetic of the product to make the product appealing to consumers. But a person
of ordinary skill and creativity in the art does not have the ability to re-design the
aesthetic effect of a solar garden light by either mechanical or electrical means.”).
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Patent Owner would seemingly limit the person of ordinary 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.”).
Based on our review of the factors above in the current record, we agree
with Petitioner that a person of ordinary skill in the art at the time of the ’370
patent 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.
3. Priority Date
The ’370 patent claims priority to two provisional applications, U.S.
Provisional Patent Application No. 61/191,027, filed on September 6, 2008, and
U.S. Provisional Patent Application No. 60/642,382, filed on January 7, 2005 (the
“’382 provisional”). Ex. 1001, 1. Petitioner asserts that “[c]laims 1–6, 7, 9, 10,
14, 17–20, 23, and 48–50 are not entitled to the January 7, 2005, priority date of
the ’382 provisional application.” Pet. 8.
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Patent Owner acknowledges that the ’382 provisional does not disclose the
claimed connecting frame or surround frame of claims 1–4 and 48–50, which were
first disclosed in parent U.S. Patent Application No. 11/303,247, filed December
16, 2005. PO Resp. 60.
We note that the cited references on which Petitioner relies all qualify as
prior art under 35 U.S.C. § 102(e) or 35 U.S.C. § 102(b). Petitioner concedes that
the priority date issue is no longer relevant to this proceeding. Tr. 46, ll. 3–5 (“It
would have been relevant had the patent owner tried to swear behind our prior art.
Since he did not, it’s not relevant to this proceeding.”). Thus, we need not
determine whether any of the challenged claims are entitled to the benefit of the
filing dates of the provisional applications.
4. Claims 1 and 48 – Anticipation or Obviousness Based on Norton
Independent claim 1 includes limitations discussed above concerning a
“surround frame.” Claim 48, dependent from claim 1, recites that the “lens is
selected from the group consisting of a light transmissive shade, a globe, a diffuser,
an at least partially light transmissive housing, an at least partially translucent
material, at least one transparent panel, at least one translucent panel, and a
housing portion being at least partially transparent or translucent.” Petitioner
asserts that claims 1 and 48 are anticipated by Norton (Pet. 20) or, alternatively,
would have been obvious in view of Norton (id. at 26).
a. General Legal Principles
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
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Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also
Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is
anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.”). “The identical
invention must be shown in as complete detail as is contained in the . . . claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
Section 103(a) provides that a patent claim is unpatentable when “the
differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a) (2004). In Graham v. John Deere
Co., 383 U.S. 1 (1966), the Court set out a framework for applying the statutory
language of § 103:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined.
Id. at 17–18. “While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls.” KSR, 550
U.S. at 407.
The Supreme Court made clear that we apply “an expansive and flexible
approach” to the question of obviousness. Id. at 415. Whether a patent claiming
the combination of prior art elements would have been obvious is determined by
whether the improvement is more than the predictable use of prior art elements
according to their established functions. Id. at 417. To reach this conclusion,
however, it is not enough to show merely that the prior art includes separate
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references covering each separate limitation in a challenged claim. Unigene Labs.,
Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
additionally requires that “a person of ordinary skill at the time of the invention
would have selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id. “A reference must
be considered for everything it teaches by way of technology and is not limited to
the particular invention it is describing and attempting to protect.” EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
As a factfinder, we also must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421. This does not deny us, however, “recourse to common
sense” or to that which the prior art teaches. Id.
Petitioner has the burden of proof to establish by a preponderance of
evidence that the challenged claims are not patentable. 35 U.S.C. § 316(e).
Against this general background, we consider the references, other evidence,
and arguments on which the parties rely.
b. Norton
Petitioner asserts that claims 1 and 48 are anticipated by Norton or would
have been obvious based on Norton.
Norton discloses “solar-powered ornamental lights for indoor and outdoor
use.” Ex. 1011 ¶ 4. One objective of Norton is to “enable[] the decorative effect
of the lamp to be easily and inexpensively varied as desired to enhance and/or alter
the look and feel of the area in which the lamp is located.” Id. ¶ 10. The lamp uses
a “solar circuit, low voltage electricity, or other power source as a primary source
of energy.” Id. ¶ 29. The lamp uses an electric bulb, illuminating diode, or any
other device which converts electrical energy into optical energy. Id. The lamp
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assembly incorporates a “dual housing structure having an internal protective
element and an external decorative element to protect functional circuitry from
damage sustained as a result of normal outdoor use, and to facilitate achieving a
selectively varied decor by interchanging the external decorative housing element
with other external decorative housing elements having unique features.” Id.,
Abstract.
Petitioner provides the following annotated Figure 2 from Norton, which we
reproduce below. Pet. 21 (citing Ex. 1002 ¶¶ 98–129).

Figure 2 from Norton, as annotated by Petitioner.
Petitioner provides a detailed chart identifying how claims 1 and 48 are
anticipated by Norton, and specifying where each element of these claims is found
in Norton. Pet. 20–26. Petitioner cites the Declaration of Dr. Shackle for
additional evidentiary support. Id.
i. Surround Frame
Patent Owner disputes Petitioner’s analysis on several points. Patent Owner
asserts that housing 2 in Norton is not a “surround frame” based on Patent Owner’s
proposed interpretation of that term. PO Resp. 25–27. As discussed above, we did
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not adopt Patent Owner’s proposed construction. Under the construction adopted,
a frame disposed at least partially around the lens, we determine that housing 2 in
Norton, as advocated by Petitioner (Pet. 23), is a “surround frame.”
In Norton, external decorative element 2 surrounds internal protective
element 4, which is made of a substantially rigid, translucent material. Ex. 1011
¶¶ 30 (“An external decorative housing element 2 may surround a portion or the
entire internal decorative housing element 4.”), 32, 37. Internal protective element
4 is “substantially enveloped by” external decorative element 2. Id. ¶ 37. External
decorative element 2 is illuminated by a “luminous body 22” located underneath
internal protective housing element 4. Id. The term “luminous body” refers to an
electric bulb, illuminating diode, or any other device that converts electrical energy
into optical energy. Id. ¶ 29. Thus, external decorative element 2 is disposed at
least partially around the lens (i.e., internal protective element 4) (claim 1). See
Pet. 22–24.7
ii. Light Transmissive Lens
Patent Owner also asserts that Norton does not disclose “an at least partially
light transmissive lens . . . wherein light emitted from said at least one light source
causes at least part of said lens to illuminate,” as recited in claim 1. PO Resp. 28.
Norton discloses internal protective element 4. Ex. 1011 ¶ 30. Internal
protective element 4, shown in Figure 2 above, and also in Figures 3 and 6, covers

7 It also at least partially encircles the lens (claim 4) due to its circular shape, and at
least partially surrounds the lens (claim 50) because it partially encloses the lens on
the bottom of the lens. See Pet. 32–34; Ex. 1011 ¶¶ 32 (“An external decorative
element 2 may comprise any shape or configuration capable of surrounding a
portion or whole of the internal protective element 4.”), 37 (“An internal protective
element 4 may comprise any shape or configuration capable of being . . .
substantially enveloped by an external decorative element 2.”); Ex. 1002
¶¶ 157–159, 169–171.
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at least part of light source 22, and external decorative element 2 does not obscure
internal protective element 4 entirely from view. See id. ¶¶ 30, 37 (describing both
elements 2 and 4 as being “decorative”). Norton also discloses that internal
protective element 4 may comprise a substantially rigid, translucent material.
Id. ¶ 37. Thus, light emitted from light source 22 passes through element 4 and
causes at least part of element 4 to illuminate. Ex. 1002 ¶ 111.
iii. Lens Type
Patent Owner also asserts that claim 48 is not anticipated by Norton because
Norton does not disclose a “selection of a decorative lens of different
configurations for viewing by users.” PO Resp. 28. Claim 48 requires only that
the lens be selected from the following group: a light transmissive shade, a globe, a
diffuser, an at least partially light transmissive housing, an at least partially
translucent material, at least one transparent panel, at least one translucent panel,
and a housing portion being at least partially transparent or translucent. Element 4
in Norton is made from a translucent material (Ex. 1011 ¶ 37), and thus is at least
either a “translucent material,” a “translucent panel,” or a partially translucent
housing, which is all that claim 1 requires. Contrary to Patent Owner’s argument
(PO Resp. 28), claim 1 does not require a “selection of a decorative lens of
different configurations for viewing by users.”
iv. Activation Circuit
Claim 1 recites an “activation circuit” to provide power to the light source
from the rechargeable power source only at low light levels.
Petitioner asserts that Norton discloses an activation circuit (e.g., controller
board 20 and/or photoresistor 38) to provide power to light source 22 from
rechargeable power source 24 only at low light levels. Pet. 25 (citing Ex. 1002
¶¶ 124–126).
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Alternatively, Petitioner asserts the claimed activation circuit would have
been obvious over Norton.
Norton discloses that a “light sensor may be attached to the lamp to enable
or disable the electrical connection between the battery and the luminous body,
depending on the availability and magnitude of external light. Ex. 1011 ¶ 6.
Controller board 20 enables luminous body 22 to illuminate the solar lamp when
photoresistor 38 indicates darkness. Id. ¶ 39.
Dr. Ducharme, Patent Owner’s declarant, testified that a controller board
enables a light to turn on when a photoresistor indicates it is dark outside.
Ex. 1061, 135, ll. 14–17. Dr. Ducharme also testified that a light activation circuit
“is one that switches power based on light levels.” Id. at 139, ll. 1–5.
Thus, we agree with Petitioner that Norton discloses the claimed “activation
circuit.”
Regarding the ground of obviousness, Petitioner asserts that to the extent
that controller board 20 and/or photoresistor 38 do not explicitly teach providing
power “only” at low light levels, a person of ordinary skill in the art “would have
understood that these elements could be modified in a well-known manner of only
allowing electrical current from the battery to flow to the luminous body when the
controller board 20 receives input from the photoresistor 38 indicative that the light
level is below a certain threshold.” Pet. 27. The proffered reason for the
modification is to provide the “predictable result of ensuring that the light would
only be powered when it was needed and to conserve the amount of energy
consumed by the light.” Id. (citing Ex. 1002 ¶ 135). Petitioner also asserts that we
may find that claims 1 and 48 would have been obvious based on Norton because
Norton anticipates these claims and “anticipation is the epitome of obviousness.”
Id. Petitioner’s obviousness analysis is supported by the record and is persuasive.
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Patent Owner asserts that Petitioner’s rationale “does not explain how such a
modification is an improvement from the perspective of a [person of ordinary skill
in the art].” PO Resp. 29. We disagree. Petitioner asserts that the proposed
modification would “conserve the amount of energy” used. Pet. 27 (citing
Ex. 1002 ¶ 135). We determine that modifying a device to conserve energy is an
improvement.
Patent Owner also asserts that Dr. Shackle “is not qualified to testify as to
how a [person of ordinary skill in the art] would have been motivated to make the
purported modification.” Id. We considered above, and rejected, Patent Owner’s
challenge to Dr. Shackle’s qualifications to provide opinion testimony as an expert.
See supra Section III.B.1.
Accordingly, based on the evidence and analysis above, we determine that
Petitioner has met its burden with respect to establishing, by a preponderance of
the evidence, that claims 1 and 48 are anticipated by Norton, and that claims 1 and
48 would have been obvious based on Norton.
5. Claim 2 – Obviousness Based on Norton and Kao
Claim 3 – Obviousness Based on Norton and Marchese
Petitioner asserts that claim 2 would have been obvious based on Norton and
Kao, and claim 3 would have been obvious based on Norton and Marchese.
Claim 2, dependent from claim 1, recites that the lens comprises luminescent
material and light from the light source causes at least part of the lens to luminesce.
Claim 3, dependent from claim 1, recites that the lens comprises glass portions of a
first color and a second color and the light emitted by the light source causes the
glass portions to illuminate with more than one color.
Regarding claim 2, Norton discloses modifying the appearance of
ornamental features of the lamp so that it may be used “in more than one location
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or in connection with more than one event,” including a different holiday or
season. Ex. 1011 ¶ 9. As disclosed, “[s]electively interchangeable ornamentation
may enable a lamp to adapt to any occasion without impairing its general use.” Id.
Kao discloses a glow-in-the-dark garden gazing globe that achieves a
decorative swirling effect by applying photoluminescent or phosphorescent
pigments to the inner wall of a translucent or transparent housing of a garden
gazing globe assembly. Ex. 1016, Abstract. According to Petitioner, “[o]ne of
ordinary skill in the art would have understood that the glow-in-the-dark decorative
effect of Kao would be attractive to consumers searching for decorations for
night-time social events, such as events connected to the Halloween holiday, or to
‘spooky’ or ‘scary’ events, where decorations for these events traditionally have
used decorations that contained glow in-the-dark elements.” Pet. 28. Petitioner
concludes that because Norton expresses a motivation to be compatible with
different uses, it would have been obvious to combine the swirling
photoluminescent or phosphorescent globe of Kao with the “universally
compatible” (see claim 7 of Norton) solar lamp of Norton “to achieve the
predictable result of enhancing the lamp’s aesthetic appeal and increasing the
lamp’s suitability for use in connection with additional holidays or social events.”
Id. (citing Ex. 1002 ¶ 136).
Regarding claim 3, Marchese discloses a lamp having clear glass bottle 13
(Ex. 1017, col. 2, ll. 4–5) that includes differently colored glass portions A, B, and
C where light source 11 causes the differently colored glass portions to illuminate
with more than one color (id. at col. 3, ll. 8–11). Petitioner asserts one of ordinary
skill in the art would have been motivated to combine the ornamental lamp of
Norton with a multi-color glass housing of Marchese to enhance aesthetic appeal,
which is one of Norton’s goals. Pet. 30–31.
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Patent Owner asserts “[a] person of ordinary skill and creativity, having little
or no aesthetic lighting design experience, or mechanical skills to create a new
lighting design[], given the low level of innovation in the art, would not and could
not have made the suggested modification[s].” PO Resp. 31. Patent Owner
misstates the level of ordinary skill. See supra Section III.B.1. The references all
disclose what may superficially seem like devices with a low level of technology.
The references disclose, however, a level of ordinary skill with electrical circuits
(Norton) and ornamental lighting devices (Kao and Marchese). Moreover, as the
Supreme Court has instructed us, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Further, according
to Patent Owner, it would be “contrary to common sense” to position the lens
lighting effects of Kao and Marchese behind the translucent external decorative
element of Norton, because doing so would obscure them and produce an
unpredictable display. Id. at 31–33. Given the level of ordinary skill explained
above, we are not persuaded that a person of ordinary skill in the art would have
been unable to combine the references’ teachings, or found the result
unpredictable. In particular, the external decorative element in Norton may be
translucent, not opaque, such that an internal lens would still be at least partially
visible from the outside and, regardless, the external decorative element would not
obscure a view of an internal lens from its open top. See Ex. 1011 ¶¶ 30, 32,
Fig. 2.
Based on the evidence and analysis above, we determine that Petitioner has
met its burden with respect to establishing, by a preponderance of the evidence,
that claim 2 would have been obvious in view of Norton and Kao, and that claim 3
would have been obvious in view of Norton and Marchese.
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6. Claims 4, 49, and 50 – Obviousness Based on Norton and Chen
Claims 4, 49, and 50 recite design features. Claim 4 requires that the lens is
substantially spherical, with the surround frame at least partially encircling the
lens. Claim 49 requires the surround frame to have the ornamental shape of an
insect, flower, geometric shape, or astronomical shape. Claim 50 requires that the
lens is substantially spherical, with the surround frame at least partially
surrounding the lens.
Petitioner asserts that Chen discloses an ornamental design for a solar light
including a substantially spherical lens. Pet. 32. The rationale for the proposed
combination is that it would “further enhance the aesthetic appeal and broaden the
use of the [Norton] lamp.” Id. (citing Ex. 1002 ¶ 151). Petitioner also states that
Norton recognizes that its external decorative element 2 may “comprise any shape
or configuration” and specifically lists several different ornamental shapes,
including a pumpkin, snowman, sun, and others. Id. at 32–33 (citing Ex. 1011
¶ 32).
Patent Owner argues that there would have been no motivation to change the
shape of the structures in Norton. PO Resp. 33–35. We disagree.
The basic objective of Norton’s lamp is to be able to modify the appearance
of its ornamental features so that the lamp is readily adaptable to different holidays
and seasons. Ex. 1011 ¶ 9 (“Selectively interchangeable ornamentation may
enable a lamp to adapt to any occasion without impairing its general use.”). To
accomplish this objective, Norton discloses that internal protective element 4 is
“universally compatible” with a variety of shapes corresponding to external
decorative element 2. Id., claim 7. Internal protective element 4, however, is not
of a fixed shape or design; it “may comprise any shape or configuration capable of
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being retained by mount portion 8 and substantially enveloped by external
decorative element 2.” Id. ¶ 37.
Norton also provides a rationale or motivation for interchangeable
ornamentation. Id. ¶ 9 (“a unitary lamp having ornamentation that may be
selectively modified or interchanged to correspond to a new season or holiday
requires much less space and expense than the variety of bulky holiday decorations
typically found in residential garages and basements”).
Based on the evidence and analysis above, we determine that Petitioner has
met its burden with respect to establishing, by a preponderance of the evidence,
that claims 4, 49, and 50 would have been obvious in view of Norton and Chen.
7. Claims 5–7, 9, 10, 17–20, and 23 – Obviousness
Based on Kube and Ouyang
This group of claims and those in the following sections, the “wind chime”
claims, recite devices with chimes and/or pendulums, along with the basic
elements of a solar-powered lamp. The claims require, among other elements, a
“chime member” and a “pendulum assembly” or “striker” that moves relative to
the chime member. The components are arranged to create decorative visual
effects. The wind chime claims do not include a “surround frame.”
Independent claim 5 is representative of this group of claims and is
reproduced below.
5. An illuminated wind indicator, comprising:
a suspension device;
at least one chime member movably suspended below said
suspension device;
a pendulum assembly movably suspended below said
suspension device such that said pendulum assembly and said at
least one chime member move relative to each other;
at least one light source situated such that a portion of said
pendulum assembly emits light;
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at least one rechargeable battery connected so as to provide
power to said at least one light source;
at least one solar panel connected such that said at least one
rechargeable battery accumulates charge when said solar panel is
exposed to ambient light levels of sufficient intensity; and
an activation circuit to provide power to said at least one
light source from said at least one rechargeable battery only at
low light levels.
Petitioner asserts that these claims would have been obvious based on Kube
and Ouyang. Pet. 6, 34.
Kube discloses a solar powered lighting fixture used in combination with
wind chimes. Ex. 1012 ¶ 1. Petitioner provides the following annotated Figure 12
from Kube, which we reproduce below. Pet. 35 (citing Ex. 1002 ¶¶ 176–177).

Figure 12 from Kube, as annotated by Petitioner.
The solar-powered lighting and architectural devices disclosed in Kube have
a solar cell for collecting solar energy and converting it to electrical energy, which
is stored in one or more rechargeable batteries, and an LED, or other suitable light
source that is lit after dark. Ex. 1012 ¶ 2. These devices also have electronic
circuitry to control the charging of the batteries and to switch the light on at night.
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Id. Kube discloses an example of using these solar-powered lights by suspending
wind chimes under a hanging solar light fixture to illuminate the wind chimes at
night. Id. ¶ 3.
Kube also focuses on the design and ornamental aspects of combining solar
light fixtures with wind chimes. Kube discloses that the combined light and wind
chime devices, “[p]articularly those made with glass, crystal, and other translucent,
or see through materials are striking when lit at night.” Id. ¶ 21. As disclosed in
Kube, “[c]ut glass and crystal can refract and reflect interesting patterns, such as
rainbows. Colored glass is also very interesting in these direct lighting situations.
Simple translucent colored beads can be arranged in pleasing ways to be
illuminated by these lights.” Id.
Kube also provides a rationale for making various ornamental and design
changes to combined solar-powered light fixtures and wind chimes:
The variations on how the above-described solar light fixtures
utilizing wind powered effects can be used is virtually unlimited.
Ideally, the basic solar light fixture will be able to be used in a
very wide array of effects with a wide array of purposes. This
allows the manufacturer to combine the fixture with each of
those effects, and sell larger volumes of the fixtures. Such
volume sales help the manufacturer recuperate design,
development, marketing, and associated costs quickly. It also
allows the products to be introduced into a wider array of uses
more quickly.
Id. ¶ 33. Kube also discloses that:
The fixtures themselves can take on added circuitry to provide
additional effects. Multi-colored lights can be switched on and
off for example. Other electronic enhancements can be added as
well. Sound effects can be introduced, along with a proximity or
motion sensor, and having circuitry to generate sounds as a
person approaches the fixture.
Id. ¶ 34.
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Petitioner asserts that the wind chimes of Ouyang include LED light sources
located in the pendulum, as well as in the striker. Pet. 34 (citing Ex. 1014, 3, Fig.
5). Petitioner concludes that “as a matter of design choice” it would have been
obvious to one of ordinary skill in the art “to look to Ouyang for various additional
options that teach locating the light source at the striker or pendulum.” Id. at 34–
35 (citing Ex. 1002 ¶¶ 172–173).
Patent Owner asserts that “Kube teaches away from utilizing the unique
aesthetic of Ouyang” and combining Ouyang with Kube “would render Kube
inoperable for its intended purpose.” PO Resp. 36–44. (citing Ex. 2022 ¶¶ 148–
150). Patent Owner further argues that it would not have been obvious to relocate
the lights in Kube based on Ouyang because they are “aesthetically distinct” from
the claimed devices and Kube teaches away from such relocation. Id. at 45–54.
Patent Owner focuses on a single embodiment in Kube and ignores other teachings
of the reference. Kube teaches a “very wide array of effects with a wide array of
purposes.” Ex. 1012 ¶ 33. Kube also teaches specifically that “[t]he fixtures
themselves can take on added circuitry to provide additional effects.” Id. ¶ 34.
Kube mentions detachable accessories in the context of an “added function” or
“mode of operation.” Id. ¶¶ 15, 59, 65–66, 73, 76, 79–80, 88. Furthermore, Kube
explicitly describes embodiments not having detachable chimes. See Ex. 1073
¶ 60–61 (citing Ex. 1012 ¶¶ 26, 29, 33, 34, 45, 68).
Drs. Ducharme and Shackle agree that Kube teaches metal clips 350, which
could conduct electricity between the solar light fixture and detachable accessories.
Ex. 1012 ¶ 80, Fig. 11; Ex. 1061, 163, ll. 20-22; Ex. 1073 ¶ 62. Ouyang teaches
using conductors to couple a battery to LEDs in wind-chime pendulums to achieve
the predictable result of a wind chime that gives out decorative light. Ex. 1073
¶ 62 (citing Ex. 1014, 3). A person of ordinary skill would have been motivated to
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combine the references because Kube teaches adding circuitry for more than one
LED to create a “very wide array of effects with a wide array of purposes.” Ex.
1073 ¶ 60 (citing Ex. 1012 ¶ 33).
The obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered obvious by
the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir.
1985) (en banc); see also In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (the
test for obviousness asks what “the combined teachings of the references would
have suggested to those having ordinary skill in the art”); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary
reference; . . . . Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
The Supreme Court has made clear that we apply “an expansive and flexible
approach” to the question of obviousness. KSR, 550 U.S. at 415. We look to
interrelated teachings of multiple patents; the effects of demands known to the
design community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue. Id. at 418. As the Supreme Court
recognized, in many cases a person of ordinary skill “will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id. at 420.
Patent Owner also argues that given the “limited creativity of a [person of
ordinary skill in the art],” it would not have been obvious to try what are
“unlimited possibilities” in arrangement of light relative to the device of Kube to
reach the claimed invention using Ouyang “with any reasonable expectation that
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such a combination would succeed in being aesthetically pleasing.” PO Resp. 37.
As discussed above, the level of ordinary skill and creativity is not as limited as
asserted by Patent Owner. See supra Section III.B.2.
Additionally, Patent Owner argues that Kube produces an “illumination
effect,” whereas the invention in the challenged claims produces a “display effect.”
Id. at 46–47 (citing Ex. 2022 ¶¶ 166, 167, 169). There is no support in the claims
or Specification of the ’370 patent for such a distinction.
Petitioner’s obviousness analysis regarding claims 5–7, 9, 10, 17–20, and 23
is supported by the disclosures of Kube and Ouyang, as well as the testimony of
Dr. Shackle, and is persuasive. See Pet. 34–47. Based on the evidence and
analysis above, we determine that Petitioner has met its burden with respect to
establishing, by a preponderance of the evidence, that claims 5–7, 9, 10, 17–20,
and 23 would have been obvious in view of Kube and Ouyang.
8. Claims 28, 43, and 45 – Obviousness
Based on Kube, Ouyang, and Kuelbs
Claims 28, 43, and 45 are independent claims. These claims require, among
other limitations, component details and limitations pertaining to the location of
“power and control circuitry.”
Independent claim 28, for example, requires at least one light source
“situated such that a portion of [the] pendulum assembly emits light.”
Kube and Ouyang are discussed above. With respect to the specific
limitations recited in this group of claims, Kube discloses, in Figures 11 and 12
and the associated text, wind chimes 410 suspended by wind chime suspension
lines 400 connected to suspension ring 300. Clips 350 detachably connect
suspension ring 300 to a solar light fixture. Wind catcher 440 is connected to line
430 which is in turn [is] connected to wind chime clapper 420, which is suspended
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via clapper suspension line 430 passing through it from wind catcher 440 to
suspension ring 300.” Ex. 1012 ¶ 80.
Petitioner asserts that while Kube inherently teaches electrical connections
of the various power and control circuitry, Kuelbs “includes an express teaching of
how these elements are connected.” Pet. 48. Petitioner’s claim chart, beginning on
page 48 of the Petition, specifies where each element of the claims challenged
under this ground of unpatentability is found in the prior art relied upon.
Petitioner relies on the following annotated Figure 8 from Kuelbs, which we
reproduce below. Pet. 51 (citing Ex. 1002 ¶¶ 310–311).

Figure 8 from Kuelbs, as annotated by Petitioner.
Petitioner asserts that Kuelbs discloses power and control circuitry,
including rechargeable batteries 41, photo resistor 49, one solar panel 45, and light
source 51, all electrically connected to form an illumination circuit, as shown in
Figure 8 from Kuelbs. Id.
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Petitioner asserts that one of ordinary skill in the art at the time of the
invention would have been motivated to look to Kuelbs when configuring the
electrical connection of Ouyang in combination with Kube. Id. at 48 (citing Ex.
1002 ¶ 289). Petitioner also asserts that Kuelbs discloses one of many examples of
circuitry configuration that provide the desired result of connecting electrically the
solar panel, the rechargeable battery, the photoresistor, and the light source
depicted in Kube in combination with Ouyang. Id.
Patent Owner asserts that “Kuelbs does not teach electrical connections that
would have predictably resulted in the claimed electrical connections that locate
‘one light source [] situated such that a portion of said pendulum assembly emits
light.’” PO Resp. 54 (citing Ex. 2022 ¶ 182). According to Patent Owner, Kuelbs
does not disclose any circuitry for positioning the LEDs in or on a pendulum
assembly such that a portion of the pendulum assembly emits light, as claimed.
Id. at 55. Patent Owner also asserts that the lighting effect created by Ouyang is
contradictory to “the distinctive effect” of Kuelbs. Id. at 56.
As Petitioner points out, claim 28 requires that the light source is “situated
such that a portion of said pendulum assembly emits light.” As illustrated in
Petitioner’s annotated Figure 12 of Kube, reproduced above, light fixture 130 of
Kube is situated above the striker and pendulum elements of the pendulum
assembly. The light source in light fixture 130 is situated such that “a portion of
the pendulum assembly emits light.” Ex. 1002 ¶ 187. Kube teaches electrical
connections of the power and control circuitry, solar panel, and light source
elements that are necessary to form an illumination circuit to power the disclosed
“solar powered landscape and architectural lighting used in combination with wind
driven landscape and architectural accents such as windsocks, wind chimes, and or
other substantially ornamental objects.” Ex. 1012 ¶ 1.
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Kuelbs, in Figure 8, expressly teaches an example of how these elements
may be electrically connected. Ex. 1002 ¶ 289. Based on our construction of the
term “emits light,” we determine that the combined references emit light as recited
in the claims.
Regarding claims 43 and 45, Figure 8 of Kuelbs shows extending the
electrical connections from rechargeable battery 41 and solar panel 45 located at
upper canopy 19 to lighting elements 51 located below. Ex. 1019, col. 3, l. 25–col.
4, l. 14, Fig. 8.
We are persuaded by Dr. Shackle’s analysis that
[a] person of ordinary skill in the art would have understood to
attach the LED circuits of Ouyoung to the metal clips 350 of
Kube, to electrically connect LEDs in the wind chimes to the
solar fixture. Adding such wires and LEDs would not have
affected the durability of the wind chimes or windsock because
the clips would have otherwise remained the same, and any
additional weight would be negligible.
See Ex. 1073 ¶¶ 65–78.
According to Petitioner, a person of ordinary skill in the art “would have
been motivated to look to Kuelbs when configuring the electrical connection of
Ouyang in combination with Kube, as one of the many examples of circuitry that
provides the predictable result of connecting electrically the solar panel, the
rechargeable battery, the photoresistor, and the light source depicted in Kube in
combination with Ouyang.” Pet. Reply 22 (citing Ex. 1002 ¶ 289). We agree. We
also do not view the lighting effects of the references as so different that a person
of ordinary skill in the art would not have considered combining them, as argued
by Patent Owner.
Petitioner’s obviousness analysis regarding claims 28, 43, and 45 is
supported by the disclosures of Kube, Ouyang, and Kuelbs, as well as the
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testimony of Dr. Shackle, and is persuasive. See Pet. 48–58. Based on the
evidence and analysis above, we determine that Petitioner has met its burden with
respect to establishing, by a preponderance of the evidence, that claims 28, 43, and
45 would have been obvious in view of Kube, Ouyang, and Kuelbs.
9. Claim 14 – Obviousness
Based on Kube, Ouyang, and Chliwnyj
Claim 14, dependent from claim 5, requires that the light emitted by the
pendulum assembly “varies in color.”
Petitioner asserts that Kube and Ouyang apply as discussed above with
respect to independent claim 5. Pet. 58. Petitioner further asserts that “Ouyang
teaches LEDs that emit light of varying color, while Chliwnyj teaches a solar light
including an implementation of LED color changing circuitry.” Id. It is
Petitioner’s position that one skilled in the art would have been motivated to use
the color changing circuitry of Chliwnyj as a way to implement the color varying
functionality disclosed in Ouyang. Id. (citing Ex. 1002 ¶ 379).
Chliwnyj discloses a microprocessor-based simulated electronic flame using
multiple LEDs that are controlled to give the appearance of flame motion, and that
the use of a plurality of colors enhances the effect of motion. Ex. 1020, col. 2, ll.
26–31; see also id., Abstract.
Patent Owner asserts that a person of ordinary skill and creativity would not
have “determined that the expected lighting effect produced by the proposed
combination would have been predictably aesthetically pleasing.” PO Resp. 57
(citing Ex. 2022 ¶ 186). According to Patent Owner, “[w]ithout a predictable
aesthetic result, there would have been no expectation of success in the claimed
combination.” Id. We find Patent Owner’s assertions unpersuasive.
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Patent Owner acknowledges that Chliwnyj teaches the use of LEDs that may
also enhance flame motion due to color changes. Id. (citing Ex. 1020, col. 2,
ll. 39–40). Chliwnyj also discloses that the flame is “constantly changing.” Ex.
1020, Abstract. Patent Owner asserts, however, that a person of ordinary skill and
creativity could not have predictably, and with an expectation of success, modified
Kube further in view of Chliwnyj to add colors that vary. PO Resp. 57. According
to Patent Owner, a person having knowledge of electrical engineering would not be
qualified to understand how the optical characteristics of surfaces interacting with
visible light would affect the ornamental aspects of a solar light product. Id.
Essentially, Patent Owner is repeating his argument that a person of ordinary skill
and creativity, “having little or no aesthetic lighting design experience, or
mechanical skills to create . . . new lighting designs,” could not have made the
suggested modifications. Id. at 31. We do not agree that the level of ordinary skill
in the art is so limited, for the reasons explained above. See supra Section III.B.2.
Patent Owner’s declarant, Dr. Ducharme, also testified that he did not know
what “aesthetically predictable” means. Ex. 1062, 34, l. 20–35, l. 7.
Moreover, Ouyang discloses LEDs that emit light that “varies in color.”
Ex. 1014, 3 (“the LED emits soft decorative light with alternating colors”).
Petitioner asserts that a person of ordinary skill “would have been motivated to
look to Chliwnyj’s color-changing circuitry to implement the light that ‘varies in
color,’ as taught and suggested by Ouyang.” Pet. Reply 24 (emphasis omitted)
(citing Ex. 1002 ¶ 379). We agree.
Petitioner’s obviousness analysis regarding claim 14 is supported by the
disclosures of Kube, Ouyang, and Chliwnyj, as well as the testimony of
Dr. Shackle, and is persuasive. See Pet. 58–60. Based on the evidence and
analysis above, we determine that Petitioner has met its burden with respect to
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establishing, by a preponderance of the evidence, that claim 14 would have been
obvious in view of Kube, Ouyang, and Chliwnyj.
III. CONCLUSION
Upon consideration of the Petition and Preliminary Response, and based on
the analysis in this Decision, we are persuaded that a preponderance of the
evidence establishes that claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 of
the ’370 patent are unpatentable.
IV. ORDER
For the reasons given, it is:
ORDERED that, based on Petitioner’s showing by a preponderance of the
evidence, claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 of the ’370
patent are unpatentable;
FURTHER ORDERED that we grant Petitioner’s Motion to Seal (Paper 36);
FURTHER ORDERED that we deny-in-part and dismiss-in-part Patent
Owner’s Motion to Exclude Evidence (Paper 50); and
FURTHER ORDERED that we deny-in-part and dismiss-in-part Petitioner’s
Motion to Exclude Evidence (Paper 49).
This is a final decision. Parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

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FOR PETITIONER:

Mark Nelson
Mark.nelson@dentons.com

Daniel Valenzuela
Daniel.valenzuela@dentons.com

Lissi Mojica
Lissi.mojica@dentons.com

Kevin Greenleaf
Kevin.greenleaf@dentons.com

FOR PATENT OWNER:

Theodore Shiells
tfshiells@shiellslaw.com

Marcus Benavides
marcusb@tlpmb.com