Putco, Inc.

Patent Trials and Appeals Board

Aug 27, 2020

IPR2020-00670 (P.T.A.B. Aug. 27, 2020)

Trials@uspto.gov Paper 10
571-272-7822 Entered: August 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SHENZHEN AURORA TECHNOLOGY CO., LTD.,
Petitioner,
v.
PUTCO, INC.,
Patent Owner.

IPR2020-00670
Patent 9,995,473 B2

Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, and
MELISSA A. HAAPALA, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Shenzhen Aurora Technology Co., Ltd. (“Petitioner”) filed a Petition
to institute an inter partes review of claims 1–20 (the “challenged claims”)
of U.S. Patent No. 9,995,473 B2 (Ex. 1001, the “’473 patent”) pursuant to
35 U.S.C. § 311 et seq. Paper 2 (“Petition” or “Pet.”). Putco, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 8 (“Preliminary Response” or
“Prelim. Resp.”).
We have authority under 35 U.S.C. § 314, which provides that an
inter partes review may not be instituted unless the information presented in
the Petition and the Preliminary Response shows that “there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After
considering the Petition, the Preliminary Response, and the evidence of
record, we do not institute an inter partes review as to any of the challenged
claims of the ’473 patent on the grounds of unpatentability presented.
A. Related Proceedings
Petitioner identifies the following related proceedings: Aurora
LEDTech., Inc. v. Putco, Inc., No. 1:18-cv-1866 (E.D.N.Y.); and Putco, Inc.
v. Shenzhen Aurora Technology Co., LTD., No. 4:19-cv-54 (S.D. Iowa).
Pet. 8. Patent Owner further identifies the following related proceedings:
Putco v. CarJamz Com, Inc., 1:20-cv-01840 (N.D. Ill.); and Putco v.
Shenzhen Aurora Technology Co., Ltd., 4:19-cv-412 (S.D. Iowa). Paper 6,
2.1

1 Paper 6 is unnumbered.
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Patent 9,995,473 B2
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B. The ’473 Patent
The ’473 patent is titled “LED Lamp with a Flexible Heat Sink.”
Ex. 1001, code (54). The ’473 patent describes a light emitting diode
(“LED”) lamp with a heat sink. Id. at 1:42–43. “The lamp includes a wire
harness adapted for connection to an electrical system.” Id. at 1:43–45.
“First and second circuit boards are electrically connected to the wire
harness.” Id. at 1:45–46. “A first light emitting diode is provided on the
first circuit board, and a second light emitting diode is provided on the
second circuit board.” Id. at 1:48–50. “A flexible heat sink is mechanically
connected to the heat conducting member.” Id. at 1:50–51.
C. Challenged Claims
Petitioner challenges claims 1–20 of the ’473 patent. Pet. 6. Of the
challenged claims, claims 1 and 16 are independent claims. Ex. 1001, 5:27–
6:45. Claim 1 recites:
1. An LED lamp with a heat sink, the lamp comprising:
a wire harness adapted for connection to an electrical system;
a first circuit board electrically connected to the wire harness;
a heat conducting member, wherein the first circuit board is
mounted to the heat conducting member;
a first light emitting diode on the first circuit board; and
flexible heat sinks thermally connected to the heat conducting
member, attached to the LED lamp at a common location,
and configured to prevent substantial contact with one
another to maximize surface area available to dissipate heat.

Id. at 5:27–39. Claim 16 recites:
16. An automobile LED lamp with a heat sink for installation
in an automobile light fixture, the LED lamp comprising:
a wire harness adapted for connection to an electrical system;
a circuit board electrically connected to the wire harness;
a heat conducting member, wherein the circuit board is
mounted on the heat conducting member;
IPR2020-00670
Patent 9,995,473 B2
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a light emitting diode on the circuit board;
a flexible heat sink thermally connected to the heat conducting
member, wherein the flexible heat sink comprises a flexible
metal fabric folded into first and second loops;
a mounting base adapted for installation into an automobile
light fixture, wherein the circuit board and the heat
conducting member are substantially enclosed within the
mounting base, wherein the mounting base has a tower
portion at a first end with an opening to accommodate the
light emitting diode, and wherein the flexible heat sink and
the wire harness extend out of at least one opening located at
a second end of the mounting base opposite from the first
end with the first and second loops extending away from the
tower portion.

Id. at 6:22–44.
D. The Asserted Grounds
Petitioner challenges claims 1–20 of the ’473 patent based on the
grounds set forth in the table below.2
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–20 102(b) the ’529 patent3
1–20 103(a) the ’529 patent, Kushalappa4
1–20 103(a)
the ’529 patent, Kushalappa,
Takashi5

2 The Petition lists four grounds but the fourth ground provides “Supporting
Evidence” relied upon in the other grounds and is not a separate ground of
unpatentability. See Pet. 17. The “Supporting Evidence” includes Exhibits
1015–1021, and is “used to evidence inherent claim features.” Pet. 20; see
also id. at 23 (arguing that “the ‘529 patent, explicitly or inherently
(as evidenced by [Exhibits 1015–1021]) discloses all of the limitations of the
‘473 patent’s claims”).
3 TW M501529, published May 21, 2005 (Ex. 1003).
4 US 2014/0063829 A1, published Mar. 6, 2014 (Ex. 1011).
5 JP 2015-085921, published May 7, 2015 (Ex. 1012).
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II. ANALYSIS
The Petition relies on foreign language references in support of its
asserted grounds of unpatentability, but fails to provide affidavits attesting to
the accuracy of the submitted translations of these references. In all of its
asserted grounds, the Petitioner relies on Taiwanese Patent No. M501529
(Ex. 1003, the “’529 patent”), which is in a language other than English.
Pet. 17. 37 C.F.R. § 42.63(b) provides: “[w]hen a party relies on a
document or is required to produce a document in a language other than
English, a translation of the document into English and an affidavit attesting
to the accuracy of the translation must be filed with the document.” See also
37 C.F.R. § 42.1 (defining “affidavit” as an “affidavit or declaration under
[37 C.F.R. § 1.68]”). Petitioner provided a “Machine Translation” of the
Taiwanese ’529 patent (Ex. 1004), but not the required affidavit attesting to
the accuracy of the translation. See Pet. 5.
The same problem exists with regard to Japanese Publication
No. JP 2015-085921 (Ex. 1012, “Takashi”), which is relied on by Petitioner
for one of its asserted obviousness grounds and is not in English. Pet. 17.
Petitioner filed a “[M]achine [T]ranslation” (Ex. 1013), but not the required
affidavit attesting to the accuracy of the translation. See Pet. 5.
We also note that Exhibit 1004 is an incomplete translation of the
Taiwanese ’529 patent. Much of the information that is provided on the
front page of Exhibit 1003, including the publication date and other date
information and the names of the applicant and inventor, are not translated
or otherwise provided in Exhibit 1004. Likewise, the “Machine Translation”
of Takashi states that it was “generated by a machine translation service”
and “is not the original publication text.” Ex. 1013, 2. Thus, regardless of
the requirement to file a supporting affidavit, there are significant questions
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Patent 9,995,473 B2
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as to the accuracy of the submitted translations and whether the ’529 patent
qualifies as prior art based on its alleged publication date. See Prelim. Resp.
13–17. Petitioner does not explain at all how the “Machine Translation[s]”
of the references were created or where they came from, and made no
attempt to rectify the error described here after the filing of Patent Owner’s
Preliminary Response.
As the ’529 patent is relied upon for all asserted grounds of
unpatentability, Takashi is relied upon for Petitioner’s third ground, and
Petitioner failed to comply with the Board’s rule requiring an affidavit
attesting to the accuracy of a translation, the Petition has not established a
reasonable likelihood of prevailing as to at least one challenged claim.
We deny the Petition and do not institute inter partes review because
Petitioner has not filed affidavits attesting to the accuracy of foreign
language references relied upon to show unpatentability.6

6 We also note that Petitioner applied the wrong standard for claim
construction. The Petition states, “[a] claim subject to inter partes review is
given its ‘broadest reasonable construction in light of the specification of the
patent in which it appears,’” and “Petitioner notes that the standards of
construction applied in this proceeding are not necessarily those which
would be applied in any related litigation.” Pet. 14 (citing 37 C.F.R. §
42.100(b)). These statements are incorrect. Since November 13, 2018, the
Office applies the same claim construction standard in inter partes review
(“IPR”) proceedings that would be used to construe claims in a civil action
under 35 U.S.C. § 282(b). See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340 51,343–44 (Oct. 11, 2018) (codified at
37 C.F.R. pt. 42) (applying to all IPR petitions filed on or after November
13, 2018).
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III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes
review as to any claim of U.S. Patent No. 9,995,473 B2 is instituted.

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Patent 9,995,473 B2
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FOR PETITIONER:
Joshua J. Conley
Timothy J. Zarley
La’Cee A. Conley
ZARLEY LAW FIRM, P.L.C.
jconley@zarleylaw.com
tzarley@zarleylaw.com
lconley@zarleylaw.com

FOR PATENT OWNER:

Jonathan L. Kennedy
Glenn Johnson
Lars Gunnerson
McKEE, VOORHEES & SEASE, P.L.C.
jonathan.kennedy@ipmvs.com
glenn.johnson@ipmvs.com
gregory.gunnerson@ipmvs.com