JST Performance, Inc. d/b/a/ Rigid Industriesv.Koninklijke Philips N.V.

Patent Trial and Appeal Board

Dec 4, 2014

09012319 (P.T.A.B. Dec. 4, 2014)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: December 4, 2014 

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
JST PERFORMANCE, INC. d/b/a RIGID INDUSTRIES,
Petitioner,
v.
KONINKLIJKE PHILIPS N.V.,
Patent Owner.
_____________

Case IPR2014-00874
Patent 6,250,774 B1
_______________
Before JUSTIN BUSCH, TRENTON A. WARD, and
BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
JST Performance, Inc. d/b/a Rigid Industries (“Petitioner”) filed a
corrected Petition requesting inter partes review of claims 1–7 and 9–15 of
U.S. Patent No. 6,250,774 B1 (“the ’774 patent”). Paper 4 (“Pet.”).
Koninklijke Philips N.V. (“Patent Owner”) filed a Preliminary Response to
the Petition. Paper 8 (“Prelim. Resp.”). We have statutory authority under
35 U.S.C. § 314(a), which provides that an inter partes review may not be
instituted “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
Petitioner challenges claims 1–5, 7, 9, and 11–15 of the ’774 patent as
unpatentable under 35 U.S.C. § 102(e) and claims 1–7 and 9–15 under
35 U.S.C. § 103(a) on multiple grounds. Pet. 13–14. Based on the
information presented in the Petition and Preliminary Response, we are not
persuaded there is a reasonable likelihood Petitioner would prevail with
respect to at least one of the claims challenged in the Petition. Therefore, we
decline to institute inter partes review based on the Petition.
A. Related Proceedings
Patent Owner identifies the following as related proceedings regarding
the ’774 patent (Paper 6, 2):
Koninklijke Philips N.V. v. Schreder Lighting LLC, Case No. 1:14-cv-
12282-IT (D. Mass.); and
Koninklijke Philips N.V. v. Wangs Alliance Corp., Case No. 1:14-cv-
12298-GAO (D. Mass.).
B. The ’774 Patent
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The ’774 patent, titled “Luminaire,” issued June 26, 2001, from an
application filed January 23, 1998, which claims priority to a foreign
application filed January 23, 1997. Ex. 1001. The luminaire described in
the ’774 patent comprises a housing with a light emission window and at
least one lighting module in the housing, the lighting module comprising a
set of lighting units. Id. at Abstract, Fig. 2. Each lighting unit comprises a
Light Emitting Diode (“LED”) chip and an optical system coupled to the
LED chip. Id. at Fig. 3. Figure 3 shows individual lighting unit 20b, which
contains LED chip 30 on primary reflector 41 surrounded by synthetic resin
envelope 42. Id. at 5:58–63. LED chip 30 has an active layer of AlInGaP
(aluminum indium gallium phosphide) and supplies a luminous flux of at
least 5 lumens (“lm”). Id. at 5:56–57, 63–64.
Claim 1 of the ’774 patent is illustrative and reproduced below
(emphasis added).
1. A luminaire comprising a housing with a light emission
window, at least one lighting module in said housing for
illuminating an object outside said housing, the lighting
module comprising a set of lighting units, each of said
lighting units comprising at least one LED chip and an
optical system configured to illuminate portions of the
object during operation, each said LED chip supplying a
luminous flux of at least 5 lm during operation.  

Id. at 9:30–38 (emphasis added)(as corrected (Cert. of Correction, 1)).
C. Asserted Grounds of Unpatentability
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Petitioner asserts that claims 1–5, 7, 9, and 11–15 are unpatentable as
anticipated by Turnbull1 or obvious over Turnbull and Kish.2 Pet. 13–14.
Petitioner asserts that claim 6 is obvious over Turnbull and Sakai,3 and claim
10 is obvious over Turnbull and Ito.4 Id. at 14. We address Petitioner’s
arguments below.

II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable interpretation in light of the
patent specification. 37 C.F.R. § 42.100(b). Under the broadest reasonable
interpretation standard, we assign claim terms their ordinary and customary
meaning, as understood by one of ordinary skill in the art, in the context of
the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). All claims of the ’774 patent either recite, or through
their dependency require, the limitation of “each said LED chip supplying a
luminous flux of at least 5 lm during operation.” Although Petitioner
challenges whether functional limitations are entitled to patentable weight
(see section C. 2. below), the parties do not dispute the ordinary and

1 U.S. 5,803,579, issued September 8, 1998 on an application filed June 13,
1996. Ex. 1002 (“Turnbull”).   
2 F. A. Kish et al., Very High-efficiency Semiconductor Wafer-Bonded
Transparent-Substrate (AlxGa1-X)0.5;ln0.5 P/GaP Light-Emitting Diodes,
64 Applied Physics Letters 2839 (1994). Ex. 1003 (“Kish”). Petitioner
incorrectly refers to Kish throughout the Petition and supporting declaration
of Mr. Greg M. Rhoads (Ex.1006) as “the Fish Publication.”
3 US 4,698,730, issued Oct. 6, 1987, Ex. 1005 (“Sakai”).
4 US 5,130,531, issued July 14, 1992, Ex. 1004 (“Ito”).
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customary meaning of this functional claim limitation. We determine that
no express construction of this or any other limitation is necessary for
purposes of this Decision.

B. Anticipation of Claims 1–5, 7, 9, and 11–15 by Turnbull
Petitioner argues that claims 1–5, 7, 9, and 11–15 are anticipated by
Turnbull under 35 U.S.C. § 102(e). Pet. 10–13. Turnbull discloses a
luminaire incorporating LEDs of “very high luminous efficacy” that operate
at 30-70mA (Ex. 1002, 21:32-37, 32:12–13), but Turnbull does not disclose
expressly the luminous flux or power output of the LEDs. Id. at 20, 21, 40,
41. Petitioner argues that Turnbull inherently discloses an LED chip
supplying “a luminous flux of at least 5 lm during operation.” Id. at 11, 13.
“To establish inherency, the extrinsic evidence ‘must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(quotation omitted). Despite the requirement that the missing descriptive
matter must be necessarily present in the thing described in the reference,
Petitioner’s anticipation argument at pages 10–13 of the Petition does not
include evidentiary citations, explanation, or analysis to support the asserted
inherent disclosure of an “LED chip supplying a luminous flux of at least 5
lm during operation.” Pet. 10–13. Petitioner asserts that an element
depicted in Figure 1 of Turnbull, annotated by Petitioner as limitation “G”
(referring to LED chip “F”), corresponds to the “luminous flux” limitation of
independent claims 1 and 14. Id. at 10–12. Petitioner, however, fails to cite
any particular disclosure in Turnbull and merely uses an arrow to point to
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argument that “Turnbull inherently discloses that each said LED chip
supplies a luminous flux of at least 5 lm during operation,” without citing
any evidence in support. Id. at 11. Petitioner makes the same conclusory
argument regarding independent claim 14, again without citing any
evidentiary support. Id. at 13. Contrary to our rules, Petitioner has not made
a sufficient showing to “specify where each element of the claim is found in
the prior art,” including “identifying specific portions of the evidence that
support the challenge.” 37 C.F.R. § 42.104(b)(5). In the absence of
supporting citations and analysis, we conclude Petitioner has not satisfied
the standard for proving inherent anticipation by Turnbull.
For the reasons given above, we conclude Petitioner has not shown a
reasonable likelihood of prevailing in its challenge that claims 1–5, 7, 9, and
11–15 of the ’774 patent are anticipated by Turnbull under 35 U.S.C.
§ 102(e).
C. Obviousness of Claims 1–7 and 9–15
Petitioner asserts that claims 1–5, 7, 9, and 11–15 of the ’774 patent
would have been obvious to one of ordinary skill in the art over Turnbull
and Kish. Pet. 17–26, 29–43. Petitioner further asserts dependent claim 6
would have been obvious over Turnbull and Sakai, and dependent claim 10
would have been obvious over Turnbull and Ito. Id. at 27–29, 31, 32.5
Petitioner repeatedly describes what Turnbull “teaches” with respect
to the limitations of independent claims 1 and 14. Pet. 17–20, 36–39. With
respect to the “luminous flux of at least 5 lm” limitation, Petitioner states the
“only difference between the teachings of Turnbull and claim 1 of the ’774

5 Petitioner states that Kish, Sakai, and Ito all qualify as prior art under
35 U.S.C. § 102(b). Pet. at 14.
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patent is that the luminous flux of at least 5 lm is required from the LED of
claim 1.” Pet. 21; see id. at 40, 41 (same statement regarding claim 14).
Petitioner then relies on Kish, which “teaches LEDs that are capable of
emitting a luminous flux of up to 11.5 lm, which is a range that includes
5 lm as required by claim 1 of the ’774 patent,” and Petitioner argues that
“the combination of Turnbull and the [Kish] Publication would have
rendered the subject matter of claim 1 of the ’774 Patent obvious to a person
of ordinary skill in the art at the time the invention of the ’774 Patent was
made.” Pet. 21 (citing Ex. 1006 ¶ 27); see id. at 41 (citing Ex. 1006 ¶ 51).
Although Petitioner then argues that the “luminous flux of at least 5 lm”
limitation “is an LED characteristic that is inherently anticipated by
Turnbull” (Pet. 22 (citing Ex. 1006 ¶ 28), 41 (citing Ex. 1006 ¶ 52)),
Petitioner’s argument is presented as one of obviousness, not anticipation.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in part on
inherent disclosure in one of the references). The question of obviousness is
“based on underlying factual determinations including . . . what th[e] prior
art teaches explicitly and inherently.” In re Zurko, 258 F.3d 1379, 1383
(Fed. Cir. 2001) (citations omitted). Therefore, we interpret Petitioner’s
argument as one of obviousness rather than inherent anticipation.
Patent Owner argues that Turnbull does not inherently disclose the
“luminous flux” limitation in light of Kish. Prelim. Resp. 13–15, 21–24.
For the reasons discussed below, we agree with Patent Owner that the
Petition lacks sufficient evidence and reasoning to establish a reasonable
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likelihood Petitioner would prevail in establishing the obviousness of claims
1–5, 7, 9, and 11–15 over Turnbull and Kish.
1. “said LED chips each supplying a luminous flux of at least
5 lm during operation”
Petitioner asserts that when the LED identified in Turnbull is
“illuminated with a 50-70 mA operating current . . . a luminous flux of at
least 5 lm is necessarily produced by the LEDs as taught by [Kish].” Pet. 22
(citing Ex. 1006 ¶ 28), 41 (citing Ex. 1006 ¶ 52). With reference to the
luminous flux data presented in Figure 2 of Kish (Ex. 1003, 2840), however,
Patent Owner persuasively argues that: (i) 11.5 lumens is achieved under a
“quasi-dc (10 ms pulse)” operating condition, whereas Turnbull discloses
only direct current (“DC”) operation (Ex. 1002, 32:12–13, Fig. 21 (“13.8V
DC”)); (ii) the LEDs disclosed in Kish, under a DC operating condition,
achieve only a maximum of 4 lumens at 50 mA (Ex. 1003, 2840 Fig. 2b);
(iii) the Petition and the declaration of Mr. Greg M. Rhoads, submitted by
Petitioner, do not acknowledge or address the differences between DC and
quasi-DC pulsed operation; and (iv) the declaration of Mr. Rhoads (Ex. 1006
¶¶ 26–28, 50–52) is conclusory and duplicates what is in the Petition.
Prelim. Resp. 16–18. We agree with Patent Owner’s assertions.
The rationale presented by Petitioner for combining Turnbull and
Kish is that “the very LEDs mentioned in the [Kish] Publication, are
preferred for their ‘very high luminous efficacy in terms of light emitted
compared to electrical power consumed.’” Pet. 21, 40. Petitioner and Mr.
Rhoads, however, do not provide a sufficient evidentiary basis for, and
analysis of, the reason or reasons why one of ordinary skill in the art would
have combined Turnbull and Kish to achieve the claimed invention with a
reasonable expectation of success. See In re Kahn, 441 F.3d 977, 988 (Fed.
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Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (quoted with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007)). Specifically, Petitioner’s obviousness analysis
does not address why one of ordinary skill in the art would have used a
quasi-dc pulsed operating condition, as disclosed in Kish Figure 2(bˈ), to
achieve a luminous flux of at least 5 lumens at a drive current between 30–
70 mA in Turnbull’s DC-driven LED luminaire. Pet. 20–22, 40–42.
Petitioner’s obviousness analysis, therefore, is deficient.
We also agree with Patent Owner that, even if Petitioner has shown all
claim limitations to be disclosed in Turnbull and Kish, “‘a patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art.’” Prelim. Resp.
24 (quoting KSR, 550 U.S. at 418). To establish obviousness, one must
provide “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (quotation omitted)). The
Petition is deficient for failing to articulate, in detail with specific citations to
the evidence, the reasons why one of ordinary skill in the art having the
knowledge, experience, and background described by Mr. Rhoads (Ex. 1006
¶¶ 7, 8, 15–18) would have been motivated to combine Turnbull and Kish to
achieve the invention claimed in the ’774 patent. In short, Petitioner has not
explained sufficiently “the relevance of the evidence to the challenge
raised.” 37 C.F.R. § 42.104(b)(5).

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2. Functional Claiming
Petitioner argues that functional limitations of independent claims 1
and 14 of the ’774 Patent do not distinguish those claims over Turnbull’s
luminaire. Pet. 22, 41, 42. “A patent applicant is free to recite features of an
apparatus either structurally or functionally.” In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212
(CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent
claims.”)). The risk of functional claiming is that a functional limitation
critical to establishing novelty may be an inherent characteristic of the prior
art. Id. Patent Owner has chosen to claim the LED chip in functional terms
– capable of supplying a luminous flux of at least 5 lumens – but Petitioner
does not explain specifically how or why this functional limitation fails to
distinguish the claims from the structure of Turnbull (Pet. 22–23, 41–42),
apart from the asserted inherency that we decline to accept on the present
record. Petitioner again has not explained sufficiently “the relevance of the
evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(5).
3. Dependent Claims 6 and 10
Petitioner does not rely on Sakai or Ito for teaching an “LED chip
supplying a luminous flux of at least 5 lm during operation.” Pet. 27-29, 31,
32. In fact, Petitioner does not address the quoted claim limitation in its
obviousness analysis of any of the challenged dependent claims. Id. at 23–
35, 42–43. Therefore, for the same reasons given above, the Petition is
deficient in its obviousness analysis of challenged dependent claims 6 and
10.

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4. Conclusion
Based on the information presented in the Petition and supporting
exhibits, we conclude Petitioner has not shown a reasonable likelihood of
prevailing in its challenge that claims 1–7 and 9–15 of the ’774 patent would
have been obvious to a person of ordinary skill in the art at the time of the
invention under 35 U.S.C. § 103(a).

III. CONCLUSION
Petitioner has failed to demonstrate a reasonable likelihood it would
prevail with respect to at least one of the claims challenged in this Petition,
based on the grounds asserted and information presented therein.

IV. ORDER
For the reasons given, it is
ORDERED that the Petition is denied.
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FOR PETITIONER:
Michael T. Wallace
RIGID INDUSTRIES
mwallace@rigidindustries.com

Richard Schwartz
WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
rschwartz@whitakerchalk.com

FOR PATENT OWNER:
Denise W. DeFranco
C. Brandon Rash
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
denise.defranco@finnegan.com
brandon.rash@finnegan.com