Autronic Plastics, Inc. d/b/a Clear-Vu Lighting

Patent Trials and Appeals Board

Nov 29, 2021

IPR2020-01023 (P.T.A.B. Nov. 29, 2021)

Trials@uspto.gov Paper 38
571.272.7822 Date: November 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APOGEE LIGHTING HOLDINGS, LLC,
Petitioner,

v.

AUTRONIC PLASTICS, INC. D/B/A
CLEAR-VU LIGHTING,
Patent Owner.
____________

Case IPR2020-01023
Patent 9,909,748 B2
___________

Before KEVIN F. TURNER, JEFFREY S. SMITH, and
AARON W. MOORE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Petitioner filed a Petition requesting inter partes review of claims
7–10, 13, 17–19, and 22–24 of U.S. Patent No. 9,909,748 B2 (Ex. 1001, the
“’748 patent”). Paper 1 (“Pet.”). On December 12, 2020, we instituted inter
partes review of all the challenged claims. Paper 11 (“Inst. Dec.”). Patent
Owner filed a Request for Rehearing. Paper 13 (“Req. Reh’g.”). Petitioner
filed a Response to Patent Owner’s Request for Rehearing. Paper 15
(“Resp. Req. Reh’g.”). We issued a Decision denying the Request for
Rehearing. Paper 18 (“Dec. Reh’g.”).
Patent Owner filed a Response. Paper 20 (“PO Resp.”). Petitioner
filed a Reply. Paper 23 (“Reply”). Patent Owner filed a Sur-Reply. Paper
26 (“PO Sur-Reply). A hearing was held on September 9, 2021. This Final
Written Decision is entered pursuant to 35 U.S.C. § 318(a). We determine
that claims 7–10, 13, 17–19, and 22–24 are unpatentable.
B. Related Proceedings
The ’748 patent is the parent of U.S. Patent No. 10,190,760 B2 (the
“’760 patent”), which is the subject of IPR2020-01024. Pet. 1; Ex. 1002,
[60]. The parties identify the following district court proceedings
concerning the ’748 patent: Autronic Plastics, Inc. d/b/a Clear-Vu Lighting
v. Apogee Lighting, Inc. et al., case nos. 2:19-cv-06268-MKB-ST
(E.D.N.Y.) and 1:20-cv-00470-MKB (E.D.N.Y.). Pet. 1; Paper 5, 1.
C. Real Party-in-Interest
Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
Owner identifies itself as the real party-in-interest. Paper 5, 2.
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D. The ’748 Patent
The ’748 patent discloses a light fixture including a housing that
encloses its components. Ex. 1001, 4:26–27. The light fixture has different
power input options, including a high voltage input, a traditional voltage
input, and a battery backup input. Id. at 2:4–18, 3:45–63. Figure 5 of the
’748 patent is a schematic view showing different power sources that can
provide electrical power to the light fixture. Id. at 2:65–67. Figure 5 is
reproduced below.

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Figure 5 above shows a light fixture including LED power supply 22
that supplies power to LEDs 14. Id. at 3:35–40, 4:58–67, 6:9–12. Power to
LED power supply 22 can be provided by one of three power sources 30, 32,
34, and also by backup battery 20 through connection 38. Id. at 5:25–27,
5:35–37, 7:5–7. Power source 30 provides electrical power available from a
traditional power line, which is typically 110V to 277V of alternating
current. Id. at 5:27–29. Secondary power source 32 also provides 110V to
277V of alternating current. Id. at 5:29–31. High voltage power source 34
includes all input voltages of 277V and higher. Id. at 6:12–13. High voltage
power source 34 can be a “third rail” power source, between 450-1000V
direct current, from which train engines draw power. Id. at 5:33–35. The
high voltage power source is resistant to voltage spikes of up to 3 kV. Id. at
6:16–17. In the event that a power source fails to provide power, LED
power supply 22 switches to another available power source. Id. at 5:40–51.
E. Illustrative Claim
The ’748 patent has 24 claims, of which claims 7–10, 13, 17–19, and
22–24 are challenged in the Petition. Claims 7 and 9 are independent.
Claim 7 is illustrative:
7. A LED fight fixture used in a public transportation facility
having a high voltage power source, and at least a first standard
voltage power source; the LED light fixture comprising:
a fixture housing;
a plurality of LEDs carried by the fixture housing for
providing light from the fixture housing;
an LED power supply carried within the fixture housing;
the LED power supply having a first power input
connected to the first standard voltage power source and a second
power input connected to the high voltage power source; and
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a battery backup system connected to one of the plurality
of LEDs and the LED power supply.
F. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 3):

Claims Challenged 35 U.S.C. § Reference(s)/Basis
7–10, 13, 17–19, and 22–24 103 Realmuto,1 Roberge2
9, 10, 13, 17–19, and 22–24 103 Realmuto, Roberge, Conley3
7–10, 13, 17–19, and 22–24 103 Smith,4 Realmuto, Applicant’s
Admitted Prior Art (AAPA)5
9, 10, 13, 17–19, and 22–24 103 Smith, Realmuto, Conley,
AAPA
II. ANALYSIS
A. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17 (1966). “Since a determination of obviousness is made from the
vantage point of a legal construct, a hypothetical person having ordinary
skill in the pertinent art . . . , a person of extraordinary skill may opine on the

1 U.S. Patent No. 7,227,278 B2 issued Jun. 5, 2007 (Ex. 1009).
2 U.S. Patent No. 7,178,941 B2 issued Feb. 20, 2007 (Ex. 1010).
3 U.S. Patent No. 6,538,568 B2 issued Mar. 25, 2003 (Ex. 1011).
4 U.S. Patent No. 8,299,712 B2 issued Oct. 30, 2012 (Ex. 1012).
5 Petitioner contends that “the existing public transportation power sources
recited in the preamble, including ‘a public transportation facility having a
high voltage power source, and at least a first standard voltage power
source’” are AAPA. Pet. 25–26. In support of this contention, Petitioner
states that in a November 22, 2017 Amendment, the “applicant agreed that
the existing public transportation power sources recited in the preamble were
in the prior art as described in applicant’s specification at page 5.” Pet. 25
(citing Ex. 1005 (Prosecution History of ’748 patent), 32).
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knowledge of this hypothetical person.” Duramed Pharm., Inc. v. Watson
Lab., Inc. 413 Fed. Appx. 289, 296 (Fed. Cir. 2011) (citing Moore v. Wesbar
Corp., 701 F.2d 1247, 1253 (7th Cir. 1983) (holding that an expert of “more
than the ‘ordinary skill’ required by the statute” was “well suited to assist the
court in deciding what would be obvious to such a person”)).
Petitioner’s expert, Dr. Bretschneider, testifies that “a person of
ordinary skill in the art [ ] would have a Bachelor’s degree in Electrical
Engineering or an equivalent discipline, or two or more years of work
experience in design of lighting fixtures and the same amount of experience
working with LED light sources.” Ex. 1003 ¶ 31; Pet. 27. Patent Owner
applies Petitioner’s definition of a person of ordinary skill. Prelim. Resp.
15. We rely on Dr. Bretscheider’s testimony in determining that a person of
ordinary skill would have at least a Bachelor’s degree in Electrical
Engineering or an equivalent discipline, or two or more years of work
experience in design of lighting fixtures and the same amount of experience
working with LED light sources.
The level of ordinary skill in the art may be reflected by the prior art
of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)). Realmuto discloses an operating voltage of a lighting load
as 380V DC, and that a converter will maintain this output, even while the
input voltage varies. Ex. 1009, 4:60–64; see id. at 1:13–19, 2:50–56. We
rely on this prior art disclosure in determining that a person of ordinary skill
in the art would be able to control varying voltage from a high voltage
power source.
Roberge discloses lighting systems that include power systems for
driving light sources in high-voltage environments. Ex. 1010, Abstract; see
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id. at 20:3–6, 20:29–33, 20:46–49, 21:22–33. Roberge discloses that such
environments include transportation environments, and in particular, train
environments. Id. at 5:55–60, 16:6–10, 63:3–9, 64:10–16, Fig. 55. We rely
on this prior art disclosure in determining that a person of ordinary skill
would be able to provide a power system for driving light sources in a high-
voltage environment such as a train environment.
The level of ordinary skill in the art may also be determined from the
specification. For example, claim elements that the specification does not
describe in detail are presumed to be known to those of ordinary skill in the
art. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994); In re Fox, 471 F.2d
1405, 1407 (CCPA 1973) (“[A]ppellant’s specification . . . assumes anyone
desiring to carry out the process would know of the equipment and
techniques to be used, none being specifically described.”). The
specification of the ’748 patent discloses that the power source “is resistant
to voltage spikes of up to 3 kV.” Ex. 1001, 6:16–17. The specification does
not describe equipment or techniques that cause the power source to be
resistant to such voltage spikes. Given the specification’s absence of a
specific description of a device or a technique that would carry out the
process of resisting voltage spikes up to 3 kV, we determine that a person of
ordinary skill “desiring to carry out the process would know of the
equipment and techniques to be used, none being specifically described.”
The specification does not describe specific equipment or techniques
used to account for grounding issues, polarity fluctuations, ground path
leakage, and changes in current flow that may occur in a high-voltage
environment such as a train environment. Thus, a person of ordinary skill in
the art desiring to account for such issues would know of the equipment and
techniques to be used, none being specifically described.
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We determine that a person of ordinary skill in the art would have a
Bachelor’s degree in Electrical Engineering or an equivalent discipline, or
two or more years of work experience in design of lighting fixtures and the
same amount of experience working with LED light sources, and would
have sufficient knowledge of or experience with equipment and techniques
to provide a power system for driving light sources in a high-voltage
environment such as a train environment and to account for challenges that
may occur in the high-voltage environment such as voltage spikes up to
3 kV, grounding issues, polarity fluctuations, voltage control challenges,
ground path leakage, and changes in current flow. Our determination of the
level of ordinary skill differs from Petitioner’s proposed definition to
address contentions based on the level of ordinary skill raised by the parties,
as we discuss below. Our determination of the level of ordinary skill is
unchanged from that given in our Decision to Institute, which has been
unchallenged by the parties.
B. Claim Construction
In an inter partes review, a claim “shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under
that standard, we construe the claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.
1. “fight fixture”
Patent Owner contends that “fight fixture” recited in independent
claims 7 and 9 is a typographical error and should be construed as “light
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fixture.” Prelim. Resp. 21 (citing Ex. 2007, 2). We agree with Patent
Owner and construe this term as “light fixture.”
2. preamble
Petitioner contends that the claim term “A LED light fixture used in a
public transportation facility” recited in the preambles of independent
claims 7 and 9 only “state[s] a purpose or intended use for the invention”
and is therefore not limiting. Pet. 43 (citing Rowe v. Dror, 112 F.3d 473,
478 (Fed. Cir. 1997); Catalina Mktg Int’l v. Coolsavings.com, 289 F.3d 801,
809 (Fed. Cir. 2002) (“preambles describing the use of an invention
generally do not limit the claims because the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
purpose of that structure”)). Petitioner contends that the power sources in
the claim term “a high voltage power source, and at least a first standard
power source” recited in the preambles of claims 7 and 9, are also recited in
the bodies of those claims and therefore limit the claims. Id.
Patent Owner contends that the preamble recitation “used in a public
transportation facility” is limiting because (a) Petitioner concedes that the
power sources recited in the preamble are limiting, (b) Petitioner fails to
consider how a person of ordinary skill would consider the preamble, (c)
“used in a public transportation facility” provides antecedent basis for terms
recited in the body of the claim, (d) “used in a public facility” affects the
structure of the claim, (e) the specification characterizes “used in a public
transportation facility” as important, and (f) the Examiner and Applicant
treated the entire preamble as limiting during prosecution. PO Resp. 16–28.
We agree with Petitioner that the term “used in a public transportation
facility” recited in preamble phrase is an intended use, and disagree with
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Patent Owner’s arguments to the contrary. We consider each of Patent
Owner’s arguments in turn below.
(a) Petitioner’s concession that the power sources are limiting
Patent Owner contends that the preamble recitation “used in a public
transportation facility” is limiting because Petitioner concedes that the
preamble recitation of “a high voltage power source, and at least a first
standard voltage power source” is limiting. PO Resp. 17. We are not
persuaded by Patent Owner. The structural limitations, including the power
sources, recited in the bodies of claims 7 and 9 do not depend on the use of
the LED light fixture in a public transportation facility. Rather, the power
sources recited in the preamble provide antecedent basis for ‘the first
standard voltage power source,’ ‘the second standard voltage power source,’
and ‘the high voltage power source’ recited in the bodies of claims 7 and 9,
and therefore are entitled to patentable weight. See Ex. 1003 ¶¶ 180–182.
(b) The understanding of a person of ordinary skill in the art
Patent Owner contends that Petitioner fails to consider how a person
of ordinary skill in the art would understand the entirety of the preamble in
view of the claim and disclosure as a whole. Id. (citing Ex. 2022 ¶ 91). We
are not persuaded. Dr. Bretschneider testifies that the “public transportation
facility” is not a structural limitation of the claimed “LED light fixture,”
because the LED light fixture is structurally complete. Ex. 1003 ¶¶ 63, 180.
Dr. Bretschneider testifies that the claim “does talk about a high-voltage
power source and a standard voltage power source, but a person of ordinary
skill wouldn’t read those as being mandated only in a public transportation
facility because, honestly, I don’t know how anyone would be able to do a
design that you could only use there.” Ex. 2021, 115:23–116:6; see id. at
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115:15–22, 116:7–22. Dr. Bretschneider’s testimony is consistent with the
understanding of a person of ordinary skill as shown by the prior art. For
example, Roberge teaches using its lighting system in a wide range of
environments including airline and other transportation environments,
interior environments, stairs, playing fields, ceiling tiles, hangars,
warehouses, house environments, train environments, and many other
environments. Ex. 1010, 62:43–63:9, Figs. 51–55.
We determine that Petitioner has persuasively shown that person of
ordinary skill in the art would understand the term “used in a public
transportation facility” recited in the preamble phrase “A LED [l]ight fixture
used in a public transportation facility” is an intended use, because a person
of ordinary skill would understand that the LED light fixture is structurally
complete and would be used in a wide range of environments as Dr.
Bretschneider testifies and as Roberge teaches.
(c) Whether “used in a public transportation facility” provides antecedent
basis for the body of the claim
Patent Owner contends that the preamble recitation “used in a public
transportation facility” is limiting because this term supplies antecedent
basis for the body of the claim. PO Resp. 18. First, Patent Owner contends
that the high voltage power source and the standard voltage power source
recited in the body of the claim are part of the “public transportation facility”
recited in the preamble because Dr. Bretschneider testifies that the LED light
fixture must be connected to the high voltage power source in order to
practice the claim. Id. at 19 (citing Ex. 2021, 111:15–114:4, 119:19–121:7
(Dr. Bretschneider, when asked “to practice this claim you have to actually
connect the second power input to the high-voltage power source, right?”
answered “Yes.”)). We are not persuaded by Patent Owner’s contention.
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We agree with Dr. Bretschneider that the second power input is connected to
the high voltage power source as recited in the body of the claims. Thus, as
we stated above, the high voltage power source is entitled to patentable
weight. We also agree with Dr. Bretschneider that the high voltage power
source could be located in a facility other than a public transportation
facility, and the LED light fixture, when connected to the source, would still
function as claimed. Ex. 2021, 115:15–116:22; Ex. 1003 ¶¶ 63, 180; see
Ex. 1010, 62:43–63:9, Figs. 51–55 (showing an LED light fixture used in a
wide range of environments).
Next, Patent Owner contends that the preamble recitation “used in a
public transportation facility” is limiting because (1) it recites a structural
feature of the invention rather than an intended use, (2) it cannot be
separated into two separate portions, and (3) the portion of the preamble that
is relied upon for antecedent basis in the body of the claims is intertwined
with the remainder of the preamble. PO Resp. 19–21 (citing Bio-Rad Labs.,
Inc. v. 10X Genomics Inc., 967 F.3d 1353 (Fed. Cir. 2020)). According to
Patent Owner, the phrase “a public transportation facility having a high
voltage power source, and at least a first standard voltage power source”
means that the public transportation facility has the claimed voltage sources,
and therefore, is significantly intermeshed with the body of the claim. Id.
We disagree. In claims 7 and 9, unlike the claim in Bio-Rad, the
preamble recitation of “used in a public transportation facility” expresses an
intended use. Dec. Reh’g. 4. Further, the bodies of claims 7 and 9, unlike
the body of the claim in Bio-Rad, do not recite the disputed preamble term.
Id. Also, the claim term “high voltage power source” is not intertwined with
the preamble term “used in a public transportation facility,” because the
“high voltage power source” is structurally complete by itself. See Ex. 1003
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¶¶ 63, 180. Here, as in Catalina, deleting “used in a public transportation
facility” from the preamble does not affect the structural definition or
operation of the claimed LED light fixture itself. Catalina, 289 F.3d at 810.
Further, here, as in Catalina, the specification in its entirety does not
make the location of the high voltage power source an additional structure
for the claimed high voltage power source, because the specification does
not limit the high voltage power source to being located in a public
transportation facility. See Ex. 1001, 1:21–26, 2:12–18, 2:42–43, 5:31–35,
5:52–62, 6:12–13. For example, the specification discloses that a high
voltage source of electrical power is “the third rail from which train engines
drawn power.” Ex. 1001, 5:31–34. However, the next sentence of the
specification states that the high voltage source “can be 450V-1000V direct
current or commonly about 600V.” Ex. 1001, 5:34–35; see id. at 2:49–54
(stating that the particular structure of the embodiments used in the detailed
description is not intended to limit the disclosure). Thus, the specification
describes the high voltage power source in terms of what the source, not the
third rail, “can be,” which indicates that the patentee intended the high
voltage third rail located in a public train facility as a non-limiting example,
and that the scope of the claim encompasses other high voltage power
sources than those found in a public transportation facility. Id.; see Req.
Reh’g. 12; Dec. Reh’g. 5–6.
(d) Whether deleting “used in a public transportation facility” affects the
structure of the claim
Patent Owner contends that construing the preamble term “used in a
public transportation facility” as non-limiting as asserted by Petitioner
renders the claim incoherent. PO Resp. 21–22. According to Patent Owner,
the claim as construed by Petitioner would then recite “A LED [l]ight fixture
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used in a public transportation facility having a high voltage power source,
and at least a first standard voltage power source,” which improperly
changes the meaning of the claim, because the recited high voltage power
source is not part of the LED light fixture. Id.
We disagree with Patent Owner’s arguments. As Patent Owner has
stated, Dr. Bretschneider testifies that, to practice the claim, the second
power input must be connected to a high voltage power source. PO Resp. 19
(citing Ex. 2021, 111:15–114:4, 119:19–121:7). We agree with this
testimony. Dr. Bretschneider further testifies that a person of ordinary skill
would understand that claimed power sources connected to the claimed LED
power supply could be located anywhere, and the claimed LED light fixture
would operate as claimed. Ex. 2021, 115:15–116: 22; Ex. 1003 ¶¶ 63, 180–
182. Dr. Bretschneider’s testimony provides persuasive evidence that a
person of ordinary skill would not give weight to the preamble term “used in
a public transportation facility,” and would read the claim to mean that the
second power input of the LED light fixture must be connected to a high
voltage power source. Here, as in Catalina, deletion of the phrase “used in a
public transportation facility” from the preamble of the claim does not affect
the structural definition or operation of the claimed LED light fixture itself.
(e) Consideration of the specification
Patent Owner contends that the preamble term “used in a public
transportation facility” is structure that is repeatedly characterized as
important in the specification, and is therefore limiting. PO Resp. 23–24
(citing Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed.
Cir. 2004)). Patent Owner contends that the title of the ’748 patent includes
the phrase “public transportation facility,” and that the technical field
“particularly relates to LED light fixtures configured for use in public
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transportation facilities where lighting failures are more critical than other
facilities.” PO Resp. 24 (citing Ex. 1001, 1:18–20).
However, the preamble in Poly-America recited a “blown-film
textured liner,” where the disputed term “‘blown-film’ [did] not state a
purpose or intended use of the invention, but rather disclose[d] a
fundamental characteristic of the claimed invention.” Poly-Am., 383 F.3d at
1310. In contrast, the claim term “used in a public transportation facility”
states an intended use of the LED light fixture, and is not an essential
structure or fundamental characteristic of the light fixture. Here, the
“patentee defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use of the invention.”
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir.
1999).
Further, we are not persuaded that the specification characterizes a
public transportation facility as a fundamental characteristic or essential
structure of the light fixture. The technical field describes that the disclosure
“relates to LED light fixtures configured for use in public transportation
facilities where lighting failures are more critical than other facilities.”
Ex. 1001, 1:15–20. The technical field then describes that the “disclosure
also relates to light fixtures usable in public facilities,” not just public
transportation facilities, “which provide a plurality of power options and
wherein the normal-use light fixture may be used as part of an emergency
lighting system drawing power from a battery backup system.” Ex. 1001,
1:21–26; see id. at 3:29–33. Thus, the technical field is not limited to using
the LED light fixture in a train facility having a third rail, but rather,
includes using the LED light fixture in public facilities as part of an
emergency lighting system, which, as Dr. Bretschneider testifies, describes
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“a broad swath of the lighting industry, quite a few different locations.”
Ex. 2021, 131:9–19; Ex. 1003 ¶¶ 82, 118. We credit Dr. Bretschneider’s
testimony in determining that the technical field of emergency lighting
encompasses quite a few different locations beyond public transportation
facilities.
Patent Owner cites the specification’s disclosure of what Patent
Owner contends are problems uniquely associated with using LED light
fixtures and power sources in public transportation facilities. PO Resp. 25.
The alleged unique problems include (a) corrosion from humid air found in
public transportation facilities, (b) the underground location of high traffic
areas of public transportation facilities, (c) traditional lighting in public
transportation facilities require bulb changes, (d) avoiding direct contact
between stainless steel and aluminum in hot humid environments because of
corrosion, (e) charging a battery with a third rail voltage source, (f) using a
RuBee protocol for communicating in underground transportation facilities,
(g) identifying a third rail as a high voltage power source, and (h) having a
power source that resists voltage spikes of up to 3 kV. PO Resp. 25–26
(citing Ex. 1001, 3:45–47, 9:30–34, 1:40–47, 4:41–54, 6:54–59, 8:14–17,
5:31–34, 6:15–17).
We are not persuaded that such problems are unique to public
transportation facilities. For example, the corrosion of metal caused by hot
humid environments is a problem in many places. Dr. Bretschneider
testifies that “Hot, humid environments are common. A good portion of the
world lives in hot, humid environments. I grew up in Florida. The whole
state fits that description.” Ex. 2021, 143:22–144:3. Similarly, we are not
persuaded that the problem of changing light bulbs is unique to lighting
fixtures in public transportation facilities. Nor are we persuaded that voltage
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spikes are unique to public transportation facilities. See Ex. 2021, 127:9–21.
Nor are we persuaded that problems associated with lighting and
communication in underground transportation facilities are unique to
underground transportation facilities. See Ex. 2021, 132:12–133:3, 140:2–8;
Ex. 1003 ¶ 118. We are not persuaded that the problems that Patent Owner
contends are unique to public transportation facilities are in fact unique to
public transportation facilities.
Further, we are not persuaded that every problem identified by Patent
Owner is a problem for public transportation facilities in general. For
example, the third rail is not a voltage source found in all public
transportation facilities. See Ex. 2021, 138:22–25. To the extent that
problems related to the third rail are unique to a high voltage third rail from
which train engines draw power, the preamble term “a public transportation
facility” is not limited to a public transportation facility that has a third rail.
See Ex. 2021, 139:6–7; Ex. 1019, 153:22–154:5. Rather, “public
transportation facility” includes many facilities that do not have a third rail,
such as airports, bus stations, and shipping facilities, which further indicates
that the patentee did not intend the preamble term “used in a public
transportation facility” to limit the claim to only a transportation facility
having a third rail as proposed by Patent Owner. Id.
(f) Consideration of the prosecution history
Patent Owner contends that the preamble term “used in a public
transportation facility” was treated as limiting by the Examiner and
Applicant. PO Resp. 27–28. We disagree. During prosecution, the
Examiner did not construe the preamble as limiting, but rather, simply stated
that the “power sources [which] are the subject matter of the preamble is the
work of another.” Ex. 1005, 87–88. The Examiner made this statement in a
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rejection of claim 19 (which issued as claim 7 of the ’748 patent) under 35
U.S.C. § 102 as anticipated by Smith (Ex. 1012). Significantly, the
Examiner did not map the preamble term “used in a public transportation
facility” to any disclosure of Smith, which means that the Examiner treated
the preamble as non-limiting. See id. That is, if the Examiner had treated
the preamble as limiting, then the Examiner would not have made a 102
rejection, because the Examiner did not find that Smith discloses the
preamble term “public transportation facility.”
Further, in the reasons for allowance, the Examiner explained in more
detail that the claims “require the light fixture to have a power supply with
multiple power inputs connected to these power sources,” and that the prior
art “does not have the multiple power inputs.” Id. at 12. The Examiner’s
statement in the reasons for allowance regarding the claimed power sources,
along with the Examiner’s silence in the reasons for allowance regarding the
term “used in a public transportation facility,” is consistent with our analysis
that the power sources, and not the public transportation facility, were given
patentable weight by the Examiner, and are entitled to patentable weight.
The applicant’s response to the 102 rejection also shows that the
applicant did not treat the preamble as limiting, because the applicant did not
argue that Smith does not disclose the preamble term “used in a public
transportation facility.” Rather, the applicant contended that Smith does not
disclose multiple power inputs. Id. at 32.
We are also not persuaded by Patent Owner’s contention that the
Examiner’s search for public transportation facility shows that the Examiner
gave patentable weight to this term. PO Resp. 27. The Manual of Patent
Examining Procedure (MPEP) states that the Examiner’s search should
cover subject matter that is described in the specification, in addition to
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covering subject matter that is claimed. MPEP § 904.03 (“It is not normally
enough that references should be selected to meet only the terms of the
claims alone . . . but the search should, insofar as possible, also cover all
subject matter which the examiner reasonably anticipates might be
incorporated into applicant’s amendment.”).
(g) Conclusion
We determine that the preamble term “public transportation facility”
is not part of the structure of any limitation of the claimed LED light fixture
recited in the body of the claim, was not treated as limiting during
prosecution, and is an intended use of the claimed LED light fixture which is
not entitled to patentable weight.
3. “high voltage power source”
The parties and the Board have proposed four different constructions
of this term. First, in the Petition, Petitioner proposes that each claim term
in the challenged claims be given its plain and ordinary meaning. Pet. 26.
Second, Patent Owner proposes construing “high voltage power source” as
“an electrical power source from which public transportation vehicles draw
power (e.g. the ‘third rail’).” PO Resp. 28. Third, in the Decision to
Institute, we construed “high voltage power source” as “a power source
having a voltage of 250 Volts or higher, such as solar panels that generate
from 250 to 600 Volts.” Dec. 12–13. Fourth, in Petitioner’s Response to
Patent Owner’s Request for Rehearing, and again in Petitioner’s Reply,
Petitioner proposes adopting a construction of “high voltage power source”
as “a source of power that is 277 Volts or higher.” Resp. Req. 13; Reply 16.
Of these four proposed constructions, we determine that only Patent
Owner’s construction is incorrect and that the term “high voltage power
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source” can encompass the remaining three proposed constructions. We
need not clearly delineate the scope of the term and resolve which of the
remaining three constructions is correct, because the prior art relied on in the
Petition teaches the “high voltage power source” under any of the remaining
three constructions.
(a) Patent Owner’s proposed construction
Patent Owner contends that the intrinsic record supports Patent
Owner’s proposed construction, because the specification discloses that the
high voltage source is the third rail from which trains draw power. PO Resp.
29–30. Patent Owner contends that the specification explains that an LED
power supply configured to accept power from the claimed high voltage
power source includes the capability of accepting unique characteristics and
a wide range of voltages, including large intermittent spikes presented in
high voltage sources used to power mass transit vehicles. Id. Patent Owner
contends that a person of ordinary skill in the art would understand that the
’748 patent as a whole suggests the inventors were focused on the third rail
high voltage power because the patent describes a power supply configured
to accept third rail high voltage. Id. at 30–31. Patent Owner contends that
its proposed construction does not read a limitation from a preferred
embodiment into the claims, because the only disclosed embodiments
require an LED light fixture having an LED power supply that converts the
high voltage input provided by the third rail into a lower direct current
suitable for powering LEDs. Id. at 35.
We disagree with Patent Owner. The Federal Circuit has held that “it
is improper to read limitations from a preferred embodiment described in the
specification – even if it is the only embodiment – into the claims absent a
clear indication in the intrinsic record that the patentee intended the claims
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to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed.
Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en
banc) (“[C]laims may embrace different subject matter than is illustrated in
the specific embodiments in the specification.”). The intrinsic evidence
including the specification and the prosecution history indicates that the
patentee intended the scope of “high voltage power source” to encompass
more than the third rail from which train engines draw power.
“high voltage power source” disclosed in the specification
The technical field describes that the disclosure “relates to LED light
fixtures configured for use in public transportation facilities where lighting
failures are more critical than other facilities.” Ex. 1001, 1:15–20. The
technical field then describes that the “disclosure also relates to light fixtures
usable in public facilities,” not just public transportation facilities, “which
provide a plurality of power options and wherein the normal-use light fixture
may be used as part of an emergency lighting system drawing power from a
battery backup system.” Ex. 1001, 1:21–26; see id. at 3:29–33. Thus, the
technical field is not limited to using the LED light fixture in a train facility
having a third rail, but, rather, includes using the LED light fixture in public
facilities as part of an emergency lighting system, which, as Dr.
Bretschneider testifies, describes “a broad swath of the lighting industry,
quite a few different locations.” Ex. 2021, 131:9–19; Ex. 1003 ¶ 82.
The summary of the disclosure describes that the “light fixture can be
configured for a high voltage input such as a 600 Volt input power supply
and connected to a 600 Volt input,” (Ex. 1001, 2:12–15), and describes this
and other examples of the light fixture as “preceding non-limiting aspects”
where “[s]pecific terms used in that description are intended to refer only to
the particular structure of the embodiments . . . and are not intended to
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define or limit the scope of the disclosure.” Ex. 1001, 2:42–43, 49–53.
Thus, the summary states that the particular structures of embodiments, such
as the structure of the third rail, are not intended to define or limit the scope
of the disclosure, which is the opposite of limiting the claimed “high voltage
power source” to the structure of the third rail located in a train facility as
contended by Patent Owner.
The detailed description does give an example of a “high voltage
source of electrical power greater than 277V” as “the high voltage ‘third
rail’ power source 34 from which train engines drawn power.” Ex. 1001,
5:31–34. However, the next sentence discloses that the “source 34 can be
450V-1000V direct current or commonly about 600V.” Ex. 1001, 5:34–35.
The specification’s disclosure that the “source,” rather than “third rail,” “can
be 450V-1000V direct current or commonly 600 V” is the opposite of
limiting the source to the third rail from which train engines draw power.
Id.; see id. at 2:49–54. Further, Patent Owner acknowledges that “the
specification includes some other examples of power sources that the LED
fixture can be configured to accommodate.” Req. Reh’g. 12.
For example, the specification discloses that “the high voltage input
voltage provided by the third rail” is “typically a 450-1000 VDC voltage,”
but that the “external high voltage input voltage includes all input voltages
of 277 Volts and higher.” Ex. 1001, 6:9–13; see id. at 2:49–54; see Ex. 2021
48:13–23 (Dr. Bretschneider testifies that 277 Volts is a common voltage in
commercial and industrial environments), 134:13–16 (Dr. Bretschneider
testifies that the third rail power supplies that he is familiar with have ranged
from 450 Volts to 1000 Volts). Here, the specification discloses that the
high voltage power source can provide voltages that are much less than the
450-1000 VDC provided by the third rail, which shows that in some
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embodiments, a high voltage power source other than the third rail provides
the high voltage. Id.
“high voltage power source” during prosecution
During prosecution, the applicant identified page 5 of the application,
which is found on column 3, line 45 to column 4, line 3 of the ’748 patent,
as describing the prior art power sources recited in the preamble, including
the “high voltage power source.” See Ex. 1005, 32, 182. This section of the
detailed description discloses that the “[l]ight fixture 2 is configured for use
in public transportation locations where high voltage electricity supplies are
available. Each light fixture 2 disclosed herein is can be configuration
accept and use the available high voltage electrical power.” Ex. 1001, 3:45–
49. This section of the detailed description gives an example of a high
voltage power source as “a 600 Volt power source.” Ex. 1001, 3:58. This
section of the detailed description does not disclose an LED light fixture that
receives power from a third rail located in a train station. Rather, this
section simply discloses that the light fixture receives power from a high
voltage electricity supply, and provides an example of a high voltage power
source as “a 600 Volt power source.”
During prosecution, the applicant did not cite to the specification’s
disclosure of the third rail as describing the “high voltage power source,” but
instead, cited to a portion of the specification that disclosed a general
description of “a 600 Volt power source.” We determine that the
prosecution history shows that the applicant did not intend to limit the
claimed “high voltage power source” to the third rail. See Ex. 1005, 32, 182.
The intrinsic evidence including the specification and the prosecution history
indicates that the applicant intended the scope of “high voltage power
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source” to encompass more than the third rail from which train engines draw
power.
“high voltage power source” as understood by a skilled artisan
We also find that Patent Owner’s proposed construction of “high
voltage power source” as “an electrical power source from which public
transportation vehicles draw power (e.g. the ‘third rail’)” improperly relies
on the devices that use power from the source, rather than the attributes of
the source itself, to construe this term. We are not persuaded that the
meaning of “high voltage power source” depends on which devices actually
use power from the source, especially given that the claim does not recite
any device other than the LED power supply that receives power from the
source. A person of ordinary skill would understand that a high voltage
power source that does not provide power to a public transportation vehicle
is still a high voltage power source. See Ex. 1003 ¶¶ 80–83; Ex. 1008, 441,
459, 465, 523, 582, 617; Ex. 1009, 2:13–14, 2:26–33, 4:9–10, 4:60–64; Ex.
1010, Abstract, 20:47–49, 21:27–33, 63:3–9, 64:10–21; Ex. 2021, 32:18–
33:11.
Conclusion
We determine that the specification and prosecution history indicate
that the patentee intended that the high voltage power source be not limited
to a specific structure, nor to a specific location, nor by which devices draw
power from it. See Dealertrack, 674 F.3d at 1327; Phillips, 415 F.3d at
1323. Reading “high voltage power source” in light of the specification, we
do not “define or limit the scope of the” claimed high voltage power source
“only to the particular structure of the embodiments” disclosed in the
specification, such as a third rail of a train facility from which electric
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vehicles draw power. Ex. 1001, 2:49–53. We do not construe “high voltage
power source” as proposed by Patent Owner.
(b) The remaining proposed constructions
To resolve the controversy of this proceeding, we need not determine
whether Petitioner’s proposed construction under the plain and ordinary
meaning, Petitioner’s second proposed construction, or our construction in
the Decision to Institute is the correct construction, because the term “high
voltage power source” encompasses any of the remaining three proposed
constructions, and under any of these constructions, the prior art relied on in
the Petition teaches the claimed “high voltage power source.” We determine
the scope of “high voltage power source” under each of these constructions
in order to address Patent Owner’s contentions here and in our analyses of
the unpatentability grounds.
Construing “high voltage power source” under its plain and ordinary
meaning.
In the Petition, Petitioner proposes that each claim term in the
challenged claims be given its plain and ordinary meaning. Pet. 26. We
determine that the plain and ordinary meaning of “high voltage power
source” is a source of power that is high voltage.
Construing “high voltage power source” as a source of power that is 277
Volts or higher
In Petitioner’s Response to Patent Owner’s Request for Rehearing,
and again in Petitioner’s Reply, Petitioner proposes adopting a construction
of “high voltage power source” as “a source of power that is 277 Volts or
higher.” Resp. Req. 13; Reply 16. This proposed construction is consistent
with the plain and ordinary meaning of “high voltage power source,” with
the additional construction of “high voltage” to mean “277 Volts or higher.”
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Petitioner contends that this proposed construction is supported by the
express disclosure in the specification that the “external high voltage input
voltage includes all input voltages of 277 Volts and higher.” Reply 16
(citing Ex. 1001, 6:12–13, 5:31–32, 6:10–11, 5:60–61, 5:34–35); see Ex.
2021, 122:2–14.
Patent Owner contends that Petitioner proposes this construction for
the first time in Reply, and therefore this proposed construction should not
be considered. PO Sur-Reply 8. We disagree. Petitioner presented this
construction for the first time in its Response to Patent Owner’s Request for
Rehearing. Resp. Req. 13. We then addressed this proposed construction in
our Rehearing Decision. Reh’g. Dec. 10. Further, Petitioner’s proposed
construction of “high voltage power source” relies on the specification’s
disclosure that the “external high voltage input voltage includes all input
voltages of 277 Volts and higher,” which Patent Owner quotes in Patent
Owner’s own proposed construction of “high voltage power source.” PO
Resp. 29. Also, Patent Owner’s expert, Dr. Karlicek, testifies that the ’748
patent discusses that high voltage includes 277 volts and higher. Ex. 1019,
113:7–114:21. Patent Owner has had notice of Petitioner’s proposed
construction and an opportunity to respond to it. See Genzyme Therapeutic
Products Ltd. v. Biomarin Pharmaceutical Inc., 825 F.3d 1360, 1368.
Patent Owner contends that the construction of “high voltage power
source” should focus on the source of the power, not the magnitude of the
voltage as proposed by Petitioner. PO Sur-Reply 8. Patent Owner contends
that Petitioner relies on the specification’s disclosure of the external high
input voltage, which is a magnitude of voltage, to construe the “high voltage
power source.” PO Sur-Reply 9. Patent Owner also contends that the “high
voltage power source” is a structural limitation that is disclosed in the
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specification as the third rail, not a magnitude, and therefore, should be
construed as such. PO Sur-Reply 9–11. Patent Owner contends that “the
specification only supports the construction of ‘high voltage power source’
to mean ‘electrical power source from which public transportation vehicles
draw power (e.g., the ‘third rail’).’ The specification does not provide other
examples of ‘high voltage sources.’” Id.
We are not persuaded. Contrary to Patent Owner’s contention, the
specification repeatedly discloses the high voltage power source as a source
of power, where the power is a voltage at or above a specific magnitude,
such as 600V, 450V-1000V, or 277 Volts and higher. Ex. 1001, 2:13–14,
3:58, 3:60, 5:34–35, 5:44, 5:55, 5:60–61, 6:12–13. Petitioner’s proposed
construction is consistent with the specification’s examples of the high
voltage power source as a source of power where the power is a voltage at or
above a specific magnitude. Further, we disagree with Patent Owner’s
contention that the specification limits the “high voltage power source” to
the structure of the third rail, for the reasons discussed above. See Ex. 1001,
2:49–54; see Dealertrack, 674 F.3d at 1327; Phillips, 415 F.3d at 1323.
We determine that Petitioner’s proposed construction of “high voltage
power source” as a source of power that is 277 volts or higher is the same as
the plain and ordinary meaning of “high voltage power source” as a source
of power that is high voltage, but includes the additional construction of
“high voltage” as 277 volts or higher. We determine that construing “high
voltage” as 277 volts or higher is consistent with the ’748 patent’s disclosure
that “high voltage input voltage includes all input voltages of 277 Volts and
higher.”
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Construing “high voltage power source” as a power source having a
voltage of 250 Volts or higher
In our Decision to Institute, we determined that the scope of “high
voltage power source,” read in light of the specification as it would be
interpreted by one of ordinary skill in the art, encompasses at least a power
source having a voltage of 250 Volts or higher, such as solar panels that
generate from 250 to 600 Volts. Dec. Inst. 12–13.
Patent Owner contends that this construction improperly relies on
extrinsic evidence to construe “high voltage power source.” PO Resp. 31–
32 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584–85
(Fed. Cir. 1996)). Patent Owner contends that the specification already
explains what a high voltage power source is in sufficient detail, such that
the Board’s use of extrinsic evidence to interpret the limitation is improper.
Id. at 32. Patent Owner contends that the Board’s construction that the “high
voltage power source encompasses at least a power source having a voltage
of 250 Volts or higher, such as solar panels that generate from 250 to 600
Volts” is inconsistent with the disclosure of the ’748 patent, because the
specification never mentions 250 volts or solar panels. Id.
We disagree with Patent Owner’s contention that the specification
explains the high voltage power source in sufficient detail such that relying
on extrinsic evidence is improper. We also disagree with Patent Owner’s
contention that because the specification never mentions 250 volts, the high
voltage power provided by the “high voltage power source” excludes 250
volts. The specification describes a high voltage power source as a source of
power that is high voltage, where high voltage includes all input voltages of
277 Volts and higher. Ex. 1001, 6:12–13; see id. at 2:14, 3:46, 3:58, 5:34–
35. The word “includes” as used in the specification indicates that lower
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voltages are not excluded. Further, the specification describes 277 Volts as
both a standard voltage and a high voltage, where the distinguishing factor is
whether the voltage is alternating current or direct current. See id. at 5:27–
29, 6:9–13. The Decision’s construction that a high voltage power source
encompasses at least a power source having a voltage of 250 volts or higher
is consistent with the Specification’s disclosure that a high voltage power
source includes all direct current voltages of 277 Volts and higher but does
not exclude a lower voltage, and that the range of standard voltages and the
range of high voltages overlap, where the distinguishing factor is whether
the voltage is alternating or direct current.
We are also not persuaded by Patent Owner’s contention that, because
the specification does not mention solar panels, the scope of high voltage
power source excludes solar panels. PO Resp. 32–33. Patent Owner
acknowledges that “the specification includes some other examples of power
sources that the LED fixture can be configured to accommodate.” Req.
Reh’g. 12. Several examples in the specification describe the high voltage
power source as a source of power, where the power is high voltage, but do
not describe the structure that provides the high voltage. See Ex. 1001, 2:14,
3:46, 3:58, 5:34–35, 5:44, 5:55, 5:60–61, 6:12–13; see id. at 2:49–54.
Further, the specification’s disclosure of the third rail as a source that
provides 450-1000 Volts, and the disclosure that high voltage includes all
input voltages of 277 Volts and higher, indicates that “high voltage power
source” encompasses a source other than the third rail that provides 450-
1000 Volts. Thus, the specification indicates that the patentee intended that
the high voltage power source is not limited to a specific structure. See
Dealertrack, 674 F.3d at 1327; Phillips, 415 F.3d at 1323. The Decision’s
construction that the scope of high voltage power source encompasses solar
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panels that provide voltage of 250-600 Volts is consistent with the
specification’s disclosure that the high voltage power source includes a
source of electrical power of 277 Volts or higher, does not exclude a lower
voltage, and does not limit the source to a specific structure that provides the
high voltage.
Patent Owner contends that Realmuto discloses a power supply with a
single input that accepts power from the Multi-Function Power Control Unit
(“MFPCU”), but does not disclose that the power supply would have an
input that accepts power from the solar power source. PO Response 33. We
disagree with Patent Owner’s contention that the MFPCU of Realmuto does
not teach the claimed “LED power supply” that has multiple power inputs
for the reasons given below in our analysis of the LED power supply.
Patent Owner contends that Realmuto discloses high voltage of 250-
400 volts, but does not disclose a high voltage power source. PO Response
33–34. We disagree. Realmuto discloses solar panels that generate from
250 to 600 volts to power a DC Load. Ex. 1009 4:60–64. Realmuto also
discloses additional examples of high voltage power sources as a wind
turbine, a fuel cell, and an engine driven cogeneration device. Ex. 1009,
2:13–14, 2:31–33, 4:7–10, 4:60–61. Thus, contrary to Patent Owner’s
contention, Realmuto discloses several high voltage power sources. Our
reviewing court has stated that “prior art references may [indicate] what all
those skilled in the art generally believe a certain term means.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996); Markman
v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995). The prior
art indicates that those skilled in the art believe a “high voltage power
source” encompasses the high voltage power sources described by
Realmuto, including the solar panels, the wind turbine, the fuel cell, and the
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engine driven cogeneration device; and that “high voltage” encompasses 250
to 600 volts.
Patent Owner further contends that the ’748 patent expressly states
that the claimed “high voltage” must include voltages well beyond 400 volts,
and that the typical high voltage is 450-1000 volts and can include voltage
spikes of up to 3kV. Here, Patent Owner implicitly proposes construing
“high voltage” to mean a voltage well beyond 400 volts that includes voltage
spikes of up to 3kV. However, the specification explicitly discloses that
“high voltage input voltage includes all input voltages of 277 Volts and
higher.” Ex. 1001, 6:12–13; see id. at 5:31–32. Contrary to Patent Owner’s
contention, the scope of “high voltage,” read in light of the specification,
encompasses voltages well below 400 volts. Patent Owner’s proposed
construction of “high voltage” is inconsistent with the specification.
Patent Owner contends that Realmuto’s use of high voltage is
inconsistent with the National Electric Code, which defines high voltage as
voltages above 600 volts. PO Response 34. Here, Patent Owner proposes a
second construction of “high voltage” to mean a voltage above 600 volts.
However, as discussed above, the scope of “high voltage,” read in light of
the specification, encompasses voltages well below 600 volts, because the
specification explicitly discloses that “high voltage input voltage includes all
input voltages of 277 Volts and higher.” Patent Owner’s second proposed
construction of “high voltage” is inconsistent with the specification.
Patent Owner contends that the term “high voltage power source” at
issue in the claims of the ’748 patent and the ’760 patent should be
construed the same in both patents, because both contain the term “high
voltage power source” and share substantially the same specification. PO
Resp. 35–36 (citing Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350,
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1351–52 (Fed. Cir. 2018)). We are not persuaded by Patent Owner’s
contention. Claim 7 of the ’748 patent recites “a high voltage power source”
without further limiting the claimed “high voltage.” In contrast, claim 1 of
the ’760 patent expressly recites “a high voltage power source having a
voltage of 450 to 1000 Volts,” which expressly limits the “high voltage” to
450 to 1000 Volts.
The Decision’s construction of “high voltage power source” as a
power source having a voltage of 250 Volts or higher, such as solar panels
that generate from 250 to 600 Volts, is the same as the plain and ordinary
meaning of “high voltage power source” as a source of power that is high
voltage, but with the additional construction of “high voltage” as 250 volts
or higher. We determine that construing “high voltage” as 250 volts or
higher is consistent with the specification’s disclosure that a high voltage
power source includes all direct current voltages of 277 Volts and higher but
does not exclude a lower voltage, and is also consistent with what those
skilled in the art believe “high voltage” encompasses.
Conclusion
As set forth above, we determine that the term “high voltage power
source” can encompass the three remaining proposed constructions. No
further claim construction of this term is required because we find that the
prior art relied on in the Petition teaches a “high voltage power source”
under any of these three constructions for the reasons given below in our
analyses of the unpatentability grounds.
To the extent necessary to address the parties’ unpatentability
arguments, construction of additional claim terms are addressed below in the
context of the unpatentability analysis. Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only
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terms that are in controversy need to be construed, and only to the extent
necessary to resolve the controversy).
C. Asserted Obviousness over Realmuto and Roberge
1. Realmuto (Ex. 1009)
Realmuto discloses a power control system including a network of
functional blocks housed in a single enclosure, providing DC power to a DC
load, and sharing AC and DC power inputs. Ex. 1009, Abstract. The DC
load is a device that consumes power, such as a light emitting diode (LED).
Id. at 2:14–17. Figure 1 of Realmuto is reproduced below.

Figure 1 of Realmuto above shows Multi-Function Power Control
Unit (MFPCU) 1 with connector 15 for AC input, connector 19 for DC input
from DC source 14, and connector 22 for battery power input from external
energy storage device 10. Ex. 1009, 1:13–19, 1:27–35, 4:2–10, 4:22–29.
The MFPCU also includes connector 21 to power DC Load 11. Id. at 1:61–
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62, 2:13–18, 2:26–28, 2:43–47, 4:14, 4:19–25, 4:60–64. DC source 14
generates high voltage, from 250 to 600 volts. Id. at 2:13–14, 4:60–64. AC
input 15 generates single phase 208-277 VAC or three phase 208-480 VAC.
Id. at 1:36–39.
2. Roberge (Ex. 1010)
Roberge discloses a linear lighting system that includes a power
system for driving light sources in high-voltage environments. Ex. 1010,
Abstract; see id. at 20:3–49, 21:22–33, Figs. 1, 2, 55. Roberge discloses that
such environments include transportation environments, and in particular,
train environments. Id. at 5:55–60, 16:6–10, 63:3–9, 64:10–16, Fig. 55.
Figure 56 of Roberge, reproduced below, depicts such a lighting system.

Figure 56 above shows lighting system 100 including LEDs 300,
power facility 1800 for powering the LEDs, and housing 800. Ex. 1010,
64:31–42; see id. at 4:43–52, 15:35–39, 18:28–29. Examples of power
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facility 1800 include an AC power source, a DC power source, batteries, and
solar-based power sources. Id. at 20:29–35. The power facility includes
power conversion devices that convert power received by an external power
source to a form suitable for operating the lighting fixture. Id. at 20:35–39.
3. Analysis of claim 7
Undisputed contentions
Claim 7 recites “[a] LED light fixture . . . having a high voltage power
source, and at least a first standard voltage source.” Petitioner contends
Realmuto discloses a high voltage power source and a standard AC voltage
power source. Pet. 43–44 (citing Ex. 1009, 1:36–39, 4:60–61, Fig. 1;
Ex. 1003 ¶ 182).
Claim 7 recites “a fixture housing.” Petitioner contends Roberge
discloses an LED light fixture with a fixture housing. Pet. 35–36 (citing
Ex. 1010, 15:37–39, Figs. 56, 63, 71).
Claim 7 recites “a plurality of LEDs carried by the housing for
providing light from the fixture housing.” Petitioner contends Roberge
discloses a lighting fixture that includes LED light sources carried by a
housing. Pet. 38–39 (citing Ex. 1010, 4:50–52, 15:35–39, Fig. 56).
Claim 7 recites “an LED power supply carried within the fixture
housing.” Petitioner contends that Figure 56 of Roberge discloses power
facility 1800 carried within housing 800 of lighting system 100. Pet. 56.
Claim 7 recites “a battery backup system connected to one of the
plurality of LEDs and the LED power supply.” Petitioner contends
Realmuto discloses external energy storage device 10 connected to the
MFPCU power supply 1 via input line 22. Pet. 34 (citing Ex. 1009, Fig. 1).
Petitioner contends Realmuto discloses that the external energy storage
device can be a battery. Id. (citing Ex. 1009, 4:26–28).
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Patent Owner does not dispute that Realmuto and Roberge teach the
above limitations of claim 7, therefore, any such arguments are waived. See
Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017);
NuVasive, 842 F.3d at 1380–81; Paper 12, 6 (“Patent Owner is cautioned
that any arguments for patentability not raised in the response may be
deemed waived.”). Petitioner’s analysis for each of the limitations,
supported by the testimony of Dr. Bretschneider, which we credit, is
persuasive.
Disputed contentions
a. LED power supply
Claim 7 recites “the LED power supply having a first power input
connected to the first standard voltage power source and a second input
connected to the high voltage power source.” Petitioner contends Realmuto
discloses a power supply, or Multi-Function Power Control Unit (MFPCU),
with an AC input connected to a standard utility AC power source, and a DC
input connected to a high voltage DC power source. Pet. 32–33 (citing
Ex. 1009, 1:33–39, 2:15–18, 4:62–67, 5:4–6, Fig. 1; Ex. 1003 ¶¶ 158–160).
Petitioner contends Realmuto discloses that the power supply provides DC
power to a DC load, such as a light emitting diode. Pet. 33–34 (citing
Ex. 1009, 1:14–16, 2:15–18; Ex. 1003 ¶¶ 162–163).
Patent Owner contends that the MFPCU is not an LED power supply.
PO Sur-Reply 14. In particular, Patent Owner contends that LEDs require a
current source, which can provide a suitable form of power, and an LED
power supply is designed to provide a constant current to LEDs. PO Sur-
Reply 14 (citing Ex. 1019, 38–39, 127–128, 145–146). Patent Owner
contends that, unlike the MFPCU, an LED power supply is a power supply
with a controlled current output that can monitor current flows to LEDs for
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improved efficiency. PO Sur-Reply 14 (citing Ex. 1019, 39–40, 127–128).
According to Patent Owner and Dr. Karlicek, an LED power supply can
keep pushing the controlled current (e.g. constant current) and modify the
voltage to maintain the constant current level for appropriately energizing
LEDs. PO Sur-Reply 15 (citing Ex. 1019, 127–130, 145–146); see Ex. 2022
¶¶ 63, 101, 108, 109.
Patent Owner’s contention is based on construing the claimed “LED
power supply” to mean a power supply with a controlled current output that
can monitor current flows to LEDs for improved efficiency. Patent Owner
did not advance such a construction in Patent Owner’s Response nor its
expert’s declarations. Therefore, this construction is untimely.
However, even were we to consider Patent Owner’s proposed
construction of “LED power supply” as timely, we disagree with this
construction. Neither claim 7 nor the specification of the ’748 patent
supports Patent Owner’s proposed construction. The specification of the
’748 patent discloses that the “LED power supply 22 converts the high
voltage . . . into a lower direct current voltage suitable for powering the
LEDs 14.” Ex. 1001, 6:9–12. “The current control circuit receives the
smooth driving voltage . . . and provides a driving current to the LEDs.”
Ex. 1001, 6:44–46. “In one exemplary embodiment, the current control
circuit is integral with the printed circuit board of each LED strip 14.
Alternatively, they may be incorporated into the power source and the power
source may include separate outputs for each light engine to which it is
connected.” Ex. 1001, 6:48–53.
Thus, the disclosure of the ’748 patent explicitly describes at least one
embodiment where the power supply 22 provides power to the current
control circuit, and where the current control circuit is integral with the
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printed circuit board of the LED strip, not with the power supply. In this
embodiment, the current control circuit, not the power supply, provides
current to the LEDs. Therefore, the scope of the claimed “LED power
supply,” read in light of the specification, does not require a current source
that generates a controlled current flow to LEDs. Patent Owner’s contention
is not commensurate with the scope of the claim as read in light of the
specification.
Patent Owner also contends that Realmuto’s MFPCU is designed to
provide a pre-determined voltage, but not to modify the pre-determined
voltage for generating a controlled current flow to LEDs. PO Sur-Reply 14–
15 (citing Ex. 1009, 1:7–9, 1:40–48, 4:50–56). However, Realmuto teaches
that the MFPCU controls current to the LEDs. Ex. 1009, 2:13–17, 2:50–62
(“The digital processor [of the MFPCU] . . . may provide the following
controls: dynamic . . . current control supplied by an alternate DC source.”);
10:19–30 (explaining that the digital processor controls amps supplied by
each of the power sources and controls amps delivered to the load).
As we stated above in our determination of the level of ordinary skill,
a person of ordinary skill would have sufficient knowledge of or experience
with equipment and techniques to provide a power system for driving light
sources in a high-voltage environment such as a train environment and to
account for challenges that may occur in the high voltage environment such
as changes in current flow. We are persuaded by the Petition and supporting
evidence that controlling current from the MFPCU to the LEDs was not
“uniquely challenging or difficult for one of ordinary skill in the art” who
could control current supplied from a power source and delivered to the load
as taught by Realmuto. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419). Thus, even
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were we to accept Patent Owner’s construction as timely, and even if such
construction were consistent with the specification, Realmuto teaches that
the MFPCU generates a controlled current flow to LEDs.
Patent Owner contends that Petitioner has failed to show how or why
a person of ordinary skill in the art would be motivated to combine the
MFPCU with an LED power supply that supplies constant current. PO Sur-
Reply 16 (citing Ex. 1019, 127–130, 145–146). As discussed above, Patent
Owner’s contention that the claimed LED power supply supplies a constant
current is not commensurate with the scope of the claim. Further, as
discussed above, Patent Owner’s contention that Realmuto’s MFPCU cannot
supply constant current is inconsistent with the teachings of Realmuto.
Patent Owner contends that the DC load of Realmuto contains its own
power supply, and that one would not power an LED with the MFPCU
because Realmuto lists examples of a DC load as a DC motor or an AC
motor, and further discloses that the DC load may feed power backwards for
short durations, such as during braking of a motor. PO Sur-Reply 17–18
(citing Ex. 1009, 2:14–20, 4:14–17). Patent Owner contends that a person of
ordinary skill in the art would understand that a DC load cannot feed power
backwards to the MFPCU without its own power supply. PO Sur-Reply 17.
This is unpersuasive because the motor is only one example of a suitable DC
load. Patent Owner does not show that Realmuto would only be suitable for
DC loads that generate power and, indeed, the passage quoted by Patent
Owner states that the load “can generate power” “on some occasions” and
“may feed power backwards.” PO Sur-Reply 17 (emphasis added) (quoting
Ex. 1009, 4:14–16).
Patent Owner contends that Realmuto does not disclose “the LED
power supply having a first power input connected to the first standard
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voltage power source and a second power input connected to the high
voltage power source” as claimed, because the DC power source of
Realmuto is not connected to an LED power supply. PO Resp. 38.
Petitioner contends the DC load of Realmuto contains its own power supply
because Realmuto lists a lighting ballast of a fluorescent light as an example
of a DC load. PO Resp. 39; PO Sur-Reply 16. Patent Owner contends that
the driver of an LED is equivalent to the ballast of a fluorescent light,
therefore, the MFPCU of Realmuto powers the power supply/driver of the
LED rather than the LED. PO Resp. 39–41; PO Sur-Reply 16–17. Dr.
Karlicek provides similar testimony, also relying on Realmuto’s disclosure.
Ex. 2022 ¶¶ 63, 101, 108, 109. Patent Owner’s contention is not
commensurate with the scope of “LED power supply” as read in light of the
specification, for the reasons given above.
Further, Realmuto discloses that the DC load is “a device that
consumes power, such as a lighting ballast; lamp; solid state lighting, such
as a light emitting diode (LED).” Ex. 1009, 2:14–19. Realmuto then
describes the increase in efficiency of a lighting ballast that uses Realmuto’s
invention. Ex. 1009, 3:15–27. However, Realmuto discloses an example of
a DC load as an LED, not the driver of the LED. Similarly, Realmuto
discloses an example of a DC load as a lamp, not the ballast or driver of the
lamp. When Realmuto intended to describe the ballast of the fluorescent
light, rather than the fluorescent light itself, as the DC load, Realmuto did so.
If Realmuto intended to describe the driver of the LED, rather than the LED,
as the DC load, Realmuto was able to do so. Patent Owner’s contention and
Dr. Karlicek’s testimony are inconsistent with the literal disclosure of
Realmuto. Further, to the extent that Patent Owner’s contention is based on
construing the claimed “LED power supply” as a constant current source, we
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are not persuaded because (a) such a construction is not commensurate with
the scope of the claim, and (b) even if it were, is taught by Realmuto’s
MFPCU as discussed above.
What a reference teaches is a question of fact. In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992). The Petition and supporting evidence persuasively show that the
MFPCU of Realmuto teaches an “LED power supply” as claimed.
Dr. Bretschneider testifies that “Realmuto discloses that its power supply
(MFPCU) can be used to provide power to [a] light emitting diode (LED).”
Ex. 1003 ¶ 125; see id. at ¶¶ 120–122. Dr. Bretscheider’s testimony is
consistent with Realmuto, which discloses that the “power supply” of the
MFPCU “powers a DC load . . . such as a light emitting diode.” Ex. 1009,
2:13–17. We credit Dr. Bretschneider’s testimony in determining that
Realmuto discloses an “LED power supply” within the scope of claim 7 as
read in light of the ’748 patent’s specification. Ex. 1001, 6:9–12 (“The LED
power supply 22 converts the high voltage . . . into a lower direct current
voltage suitable for powering the LEDs 14.”), 6:48–52 (“In one exemplary
embodiment, the current control circuit is integral with the printed circuit
board of each LED strip 14,” not with the LED power supply 22).
In an email to the Board on July 20, 2021, Petitioner contended that
most of Patent Owner’s contentions related to the LED power supply in
Patent Owner’s Sur-Reply are new arguments, and requested permission to
file a motion to strike the new arguments. In particular, Petitioner contended
that Patent Owner’s construction of the claimed “LED power supply” in its
Sur-Reply as a controlled current output that can monitor current flows to
LEDs was not raised in Patent Owner’s Preliminary Response, Patent
Owner’s Request for Rehearing, Patent Owner’s Response, or its expert’s
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declarations. We agree with Petitioner that this construction and these
arguments are untimely, because Patent Owner did not present this
construction and arguments that rely on this construction until the Sur-
Reply. However, we need not remove the new construction and new
arguments from the record, because this construction and these arguments,
even if they were timely, are unpersuasive.
b. the preamble
Patent Owner contends that Realmuto does not disclose the preamble
of claim 7 as properly construed, because a person of ordinary skill would
consider the preamble as limiting in its entirety. PO Resp. 41–42. We
disagree with Patent Owner for the reasons given in our claim construction
above. Further, even were we to construe the preamble term an “LED [l]ight
fixture used in a public transportation facility” as having patentable weight,
this is taught by the combination of Realmuto and Roberge.
In particular, Roberge teaches that its lighting systems include power
systems for driving light sources in high-voltage environments such as a
train facility. Ex. 1010, Abstract, 20:29–49, 21:22–33, 63:7, 64:16–17.
Roberge then describes the same power supplies that are also described by
Realmuto as high voltage power supplies. Ex. 1010, 20:33–34, 21:1–2,
21:20–21; Ex. 1009, 2:31–33, 4:7–10, Fig. 1. Dr. Bretschneider testifies that
the public transportation facilities of Roberge would include a high voltage
power source, such as those taught by Realmuto. Ex. 1003 ¶¶ 153–154,
180–185, Ex. 2021, 138:22–25. Dr. Karlicek also testifies that public
transportation facilities would include a high voltage power source.
Ex. 1019, 152:15–21. We credit Dr. Bretscheider’s testimony as well as the
teachings of the references themselves in determining that the combination
of Realmuto and Roberge teaches “[a] LED [l]ight fixture used in a public
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transportation facility having a high voltage power source, and at least a first
standard voltage power source,” even were we to give weight to “used in a
public transportation facility.”
c. “high voltage power source”
Petitioner contends that Realmuto teaches this limitation in describing
that the alternate DC input of the MFPCU can receive power from alternate
high voltage DC power sources between 250 to 600 VDC. Pet. 33 (citing
Ex. 1003 ¶ 160; Ex. 1009, 4:62–67. Patent Owner contends that the solar
power source of Realmuto is not a high voltage power source as claimed.
PO Resp. 42–47. Patent Owner’s contention is based on Patent Owner’s
proposed construction of “high voltage power source” as an electrical power
source from which public transportation vehicles draw power (e.g. the ‘third
rail’), and on Patent Owner’s proposed construction of “high voltage” as 600
volts and higher, which we find unpersuasive as discussed above in our
claim construction.
Realmuto discloses high voltage DC power sources that provide high
voltage of 250-600 volts. Ex. 1009, 2:13–14, 4:61–64. Further, Applicant’s
admitted prior art teaches “a high voltage power source” as claimed,
including a 600 volt power source for use in public transportation facilities,
besides the third rail, as discussed above in our claim construction and below
in our analysis of the background knowledge of a person of ordinary skill.
See Ex. 1005 32, 182; Ex. 1003 ¶ 154. Whether construing “high voltage
power source” under the plain and ordinary meaning, under Petitioner’s
proposed construction of “a source of power that is 277 Volts or higher,” or
under our preliminary construction of “a power source having a voltage of
250 Volts or higher, such as solar panels that generate from 250 to 600
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Volts,” both Realmuto and Applicant’s admitted prior art teach “a high
voltage power source” as claimed.
The examples of high voltage DC power sources taught by Realmuto,
which include solar panels, wind turbines, and fuel cells, are also taught by
Roberge. Ex. 1009, 2:13–14, 2:32–33, 4:9–10, 4:60–61; Ex. 1010, 20:29–
49, 21:1–2, 21:18–33; Abstract. Roberge also teaches that the power
sources provide high voltage. Ex. 1010, 20:3–6 (“In embodiments the
housing 1402 may house drive circuitry for a high-voltage embodiment.”),
20:47–49 (“[P]ower supplies may provide . . . high-voltage output.”),
Abstract (“The linear lighting systems may include power systems for
driving light sources in high-voltage environments.”). Roberge teaches “a
high voltage power source” under at least the plain and ordinary meaning.
d. Reasons to combine
Petitioner provides several reasons to combine the teachings of
Realmuto and Roberge, which Patent Owner disputes. Pet. 28–30, 39–45;
PO Resp. 50–58; PO Sur-Reply 23–25.
(i) Background knowledge of a person of ordinary skill
The initial dispute over reasons to combine relates to the background
knowledge of a person of ordinary skill. See Pet. 25–26, 29; PO Resp. 47–
50. The Supreme Court has recognized that the use of evidence of the
skilled artisan’s background knowledge is foundational to a proper
obviousness analysis. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401
(2007) (“To determine whether there was an apparent reason to combine the
known elements in the way a patent claims, it will often be necessary to look
. . . to the background knowledge possessed by a person having ordinary
skill in the art.”). Patent Owner contends that Petitioner misuses the AAPA
because the AAPA is implicitly part of the basis of Petitioner’s obviousness
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arguments, and because the AAPA does not amount to general knowledge of
a person of ordinary skill. PO Resp. 48.
Support for the motivation to combine Realmuto and Roberge
Petitioner contends that “incorporating the power supply and battery
backup of Realmuto, into the LED lighting fixture of Roberge, in a train or
public transit environment, would provide an environment that is known to
include multiple sources of power, as the applicant admitted as AAPA
during prosecution.” Pet. 30 (citing Ex. 1005, 32; Ex. 1003 ¶ 154). Patent
Owner contends that Petitioner improperly relies on the AAPA as the basis
of its obviousness ground. PO Resp. 48; see also id. at 49 (quoting Pet. 30).
We disagree with Patent Owner. The basis of Petitioner’s
obviousness ground is the prior art Realmuto and Roberge patents. Pet. 30–
46. Petitioner properly relies on the AAPA as substantial evidence that a
person of ordinary skill in the art would have known that a public
transportation facility has a high voltage power source and a traditional 110-
277 Volt power source. Pet. 30; In re NTP, Inc., 654 F.3d 1279, 1304 (Fed.
Cir. 2011) (holding that AAPA provided substantial evidence that a
particular claim limitation would have been known to artisans at the time of
the invention); see Koninklijke Philips v. Google, 948 F.3d 1330, 1339 (Fed.
Cir. 2020) (“Admissions in the specification regarding the prior art are
binding on the patentee for purposes of later inquiry into obviousness.”); see
id. at 1337 (“As KSR established, the knowledge of such an artisan is part of
the store of public knowledge that must be consulted when considering
whether a claimed invention would have been obvious.”)); see USPTO
Memorandum, Treatment of Statements of the Applicant in the Challenged
Patent in Inter Partes Reviews Under § 311 (Aug. 18, 2020) at 8–9 (“the
Board need not deny a petition that properly points to general knowledge to
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satisfy a claim limitation”).6 Petitioner properly uses this evidence of the
background knowledge possessed by someone of ordinary skill in the art in
conjunction with the prior art patents to support Petitioner’s obviousness
argument.
Demonstration of the general knowledge
Patent Owner contends that the AAPA does not amount to the general
knowledge of a person of ordinary skill, because, with respect to Patent
Owner’s proposed construction of the term “high voltage power source,” a
person of ordinary skill in the art would not, as a matter of general
knowledge, know that such power source could be used to power an LED
light. PO Resp. 48–50 (citing Ex. 2022 ¶¶ 85–86, 125). To the extent Patent
Owner’s argument relies on Patent Owner’s construction of “high voltage
power source” as limited to only a power source from which electric
vehicles draw power, we disagree for the reasons discussed above in our
claim construction.
We also disagree with Patent Owner’s understanding of Applicant’s
admission. Applicant’s admission of existing high voltage power supplies
available at public transportation facilities is not limited to a train facility’s
third rail from which electric vehicles draw power. During prosecution,
Applicant stated to the Examiner that the “rejection cites the existing power
sources in the public transportation facilities as meeting the preamble
limitations. The Applicant notes this prior art is described in Applicant’s
specification at page 5 where the power sources are described.” Ex. 1005,
32. Page 5 of the specification states that:

6 Available at https://www.uspto.gov/sites/default/files/documents/signed_
aapa_guidance_memo.pdf.
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Light fixture 2 is configured for use in public transportation
locations where high voltage electricity supplies are available.
Each light fixture 2 disclosed herein is can be configuration
accept and use the available high voltage electrical power. In
one embodiment, the light fixture 2 is connected to both the high
voltage input as well as a traditional 110-277 Volt line power.
Ex. 1005, 182. Page 5 of the specification gives an example of a high
voltage power source as simply “a 600 Volt power source.” Id. Page 5 of
the specification does not mention a third rail, nor a train facility, nor an
electric vehicle drawing power from a power source. If Applicant had
intended its admission of existing high voltage power sources available in
public transportation facilities to be limited to only a power source from
which electric vehicles draw power, then Applicant would have cited to the
portions of the specification that disclose this type of power source. But
instead, Applicant cited to a much broader description of high voltage power
sources available in public transportation locations, and admitted that this
broader description is the prior art, which shows that Applicant intended the
prior art “high voltage power source” described in the specification to
include more than a source from which electric vehicles draw power.
The broad scope of Applicant’s admission about existing high voltage
power sources available at public transportation facilities is consistent with
the extrinsic evidence of the background knowledge of a person of ordinary
skill in the art, such as the prior art references and the expert testimony.
With respect to the prior art references, Realmuto teaches examples of high
voltage power sources that include solar power, wind power, a fuel cell, and
an engine driven cogeneration device. Ex. 1009, 2:31–33, 4:7–10, Fig. 1.
Roberge also teaches these power sources, as well as their use in high
voltage environments such as public transportation facilities. Ex. 1010,
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6:59, 16:10, 20:33–34, 20:47–49, 21:1, 21:20–21, 21:27–31, 62:45–46,
62:54, 63:7, 64:16, Fig. 55, Abstract (“The linear lighting system may
include power systems for driving lighting sources in high-voltage
environments.”).
With respect to expert testimony, Dr. Bretschneider testifies that a
“public transportation facility would have the types of voltage inputs that
Realmuto was meant to be used with.” Ex. 1003 ¶ 184; see id. at ¶ 185. Dr.
Bretschneider testifies that a high voltage power source available at public
transportation facility may be a source other than the third rail. Ex. 2021,
138:22–25 (“As I stated, even public transportation facilities may not have
access to a third-rail power source, but they may have access to a high-
voltage power source.”). In contrast, Dr. Karlicek testifies in his second
declaration that “a person of ordinary skill in the art would not possess
knowledge regarding the power sources of a public transportation facility”
(Ex. 2022 ¶ 86). However, Dr. Karlicek’s second declaration testimony is
inconsistent with his deposition testimony, where he testified that “I believe
that a person of ordinary skill in the art would know that those particular
power sources were available” at public transportation facilities. (Ex. 1019,
152:15–21). Dr. Karlicek’s second declaration testimony is also inconsistent
with the teachings of the prior art patents and the scope of Applicant’s
admission. We find Dr. Bretschneider’s testimony to be more credible,
because Dr. Bretschneider’s testimony is consistent with the teachings of the
prior art patents and with the scope of Applicant’s admission.
We find that the background knowledge of a person of ordinary skill
in the art would have included knowledge of high voltage power sources in
public transportation facilities available for use in powering LEDs, including
high voltage power sources other than the third rail, as evidenced by the
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AAPA, the prior art patents, and Dr. Bretschneider’s testimony. KSR, 550
U.S. at 401; Philips, 948 F.3d at 1338 (The “Board relied on expert evidence
. . . in concluding that pipelining was . . . within the general knowledge of
the skilled artisan.”).
(ii) Reasons to combine references
Petitioner provides three examples of motivation. Pet. 28–30, 42.
First, Petitioner contends that incorporating the MFPCU of Realmuto into
the LED lighting fixture of Roberge would have yielded the benefit of
selecting from a variety of power inputs. Pet. 28, 30. Second, Petitioner
contends that locating the MFPCU of Realmuto into the LED lighting fixture
of Roberge would have yielded the benefits of simplifying installation as
well as manufacturing. Pet 29, 42. Third, Petitioner contends that a person
of ordinary skill who desired to use the MFPCU of Realmuto in a dusty or
dirty environment would have combined the MFPCU with the LED lighting
fixture of Roberge to yield the benefit of protecting the MFPCU of
Realmuto from environmental elements such as dust and dirt. Pet. 30.
Petitioner also provides reasons to combine the teachings of Realmuto and
Roberge under the Supreme Court’s flexible and expansive approach to the
obviousness inquiry. Pet. 28–30; see KSR, 550 U.S. at 415, 417. The
Petition’s reasons to combine are supported by Dr. Bretschneider, who
provides persuasive testimony that a person of ordinary skill would have
combined the MFPCU of Realmuto and the LED light fixture of Roberge in
the manner claimed, and would have had a reasonable expectation of success
in doing so. Ex. 1003 ¶¶ 82, 149–55, 169, 173, 178–79, 184–85.
Petitioner’s first motivation statement
Petitioner contends that the train or public transit environment of
Roberge “would provide an environment that is known to include multiple
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sources of power.” Pet. 30 (citing Ex. 1003 ¶¶ 153–54), 45–46 (citing
Ex. 1003 ¶¶ 184–85). Petitioner contends that a person of ordinary skill
“would understand that the power supply of Realmuto would provide a
variety of power inputs, including AC utility power, alternative high voltage
DC power sources, as well as DC power from external energy storage
devices, to power the LED lighting fixture of Roberge.” Pet. 28 (citing
Ex. 1003 ¶ 148).
“The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact.” In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). Evidence of a motivation to combine
prior art references “may flow from the prior art references themselves.”
See Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d
1120, 1125 (Fed. Cir. 2000). We find that evidence of Petitioner’s first
motivation to combine the references, namely, to yield the benefit of
providing inputs from a variety of power sources, flows from Dr.
Bretschneider’s testimony and from the prior art references themselves.
Roberge discloses an LED lighting fixture, which includes a housing
and a power supply located within the housing. Ex. 1010, 4:43–52, 64:31–
42, Figs. 2, 56; Ex. 1003 ¶¶ 131–33. Roberge discloses that the LED
lighting fixture may be installed in high voltage environments, such as a
public transportation environment. Ex. 1010, 5:55–60, 16:6–12, 20:47–49,
21:27–31, 63:6–9, 64:10–21, Abstract, Fig. 55; Ex. 1003 ¶¶ 129–30. A
person of ordinary skill would have understood that the public transportation
environment of Roberge has standard AC and high voltage DC power
sources, such as those taught by Realmuto. Ex. 1005 32, 182; Ex. 1003
¶¶ 153–54, 184–85; Ex. 1009, 2:31–33, 4:7–10, Fig. 1; Ex. 1010, 5:59,
16:10, 20:33–34, 21:1, 21:20–21, 63:7, 64:16, Abstract, Fig. 55; Ex. 1019,
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152:15–21; Ex. 2021 138:22–25. Although Roberge discloses that its power
supply uses AC power, DC power, or batteries, Roberge does not explicitly
disclose that its power supply has multiple inputs, including an AC power
input, a DC power input, and a battery input. See Ex. 1010, 20:29–39; Ex.
1003 ¶ 134.
Realmuto discloses an MFPCU for an LED light that provides a
variety of power inputs, including an AC power input, a high voltage DC
power input, and a battery input. Ex. 1009, 1:17–19, 1:33–39, 2:13–17, Fig.
1; Ex. 1003 ¶¶ 120–26. Realmuto teaches that the MFPCU yields the
benefit of providing power from the battery or the high voltage DC power
source to the load in the event that the main AC power supply fails. Ex.
1009, 4:22–26; Ex. 1009 5:14–16; Ex. 1003 ¶¶ 147–48. Dr. Bretschneider
testifies that a person of ordinary skill would have understood that using
another power source for the LED light fixture when the main power source
fails yields the benefit of providing illumination to allow persons in the area
a chance to depart to safety. Ex. 1003 ¶ 82.
A person of ordinary skill in the art would have used the MFPCU of
Realmuto as the power supply in the LED light fixture of Roberge, which is
located in a public transportation facility, to yield the predictable benefit of
providing the LED light fixture with the ability to select from a variety of
power inputs as taught by Realmuto. Ex. 1009, 1:13–19. A person of
ordinary skill would have understood that selecting from a variety of power
inputs allows the LED light fixture to switch to an alternate power source in
the event that the main AC power source fails, as taught by Realmuto. Ex.
1009, 1:17–19, 4:22–26, 5:14–20, Fig. 4. A person of ordinary skill would
have understood that using another power source for the LED light fixture
when the main AC power source fails allows the LED light fixture to
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provide illumination so that persons in the area have a chance to depart to
safety. Ex. 1003 ¶ 82.
We find that evidence for Petitioner’s first motivation to combine the
references, namely, to yield the benefit of providing inputs from a variety of
power sources, flows from the prior art itself as well as from Dr.
Bretschneider’s testimony. Brown, 229 F.3d at 1125. We find that the prior
art and Dr. Bretschneider’s testimony show that a person of ordinary skill
would have had a reasonable expectation of success in providing inputs from
a variety of power sources to an LED light fixture by combining the
teachings of Realmuto and Roberge.
Petitioner’s second motivation statement
Petitioner contends that locating the power supply of Realmuto within
the LED lighting fixture of Roberge would have simplified installation,
because electrical connections between the power supply and the LEDs
would not have to be made in the field. Pet. 29 (citing Ex. 1003 ¶ 151), 42
(citing Ex. 1003 ¶ 179). Petitioner further contends that locating the power
supply of Realmuto inside the LED lighting fixture of Roberge would have
simplified manufacturing quality control and performance verification,
because the performance of Realmuto’s power supply and the LEDs would
both be verified during assembly. Pet. 42 (citing Ex. 1003 ¶ 179). We find
that evidence of Petitioner’s second motivation to combine the references
flows from Dr. Bretschneider’s testimony.
Realmuto discloses an MFPCU including a power supply to power an
LED that includes an AC power input, a DC power input, and a battery
input. Ex. 1009, 1:33–39, 2:13–17, Fig. 1. Realmuto does not explicitly
disclose that the MFPCU is “carried within the fixture housing” as claimed.
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Roberge explicitly discloses a fixture housing, and a plurality of LEDs
carried by the fixture housing. Ex. 1010, 15:37–39, Figs. 56, 63, 71.
Dr. Bretschneider testifies that a person of ordinary skill would have
located the MFPCU of Realmuto inside Roberge’s fixture housing LEDs to
yield the benefit of simplifying installation, because electrical connections
between the power supply and the LEDs would not have to be made in the
field. Ex. 1003 ¶¶ 151, 178–79. Dr. Bretschneider testifies that the
combination would also yield the additional benefit of simplifying
manufacturing quality control and performance verification, because the
performance of the power supply and the LEDs would both be verified
during assembly. Id. Dr. Bretscheider further testifies that locating the
MFPCU inside of a fixture housing would have been obvious to a person of
ordinary skill, because the fixture housing was a known, conventional part of
LED fixtures at the time of invention. Ex. 1003 ¶¶ 169, 173, 178–79; see
Ex. 1019 74:25–75:11.
Dr. Bretschneider provides persuasive testimony that a person of
ordinary skill in the art would have located the MFPCU of Realmuto inside
Roberge’s fixture housing that carries a plurality of LEDs to yield the
benefits of simplifying installation as well as simplifying quality control and
performance verification during manufacturing, and would have had a
reasonable expectation of success in doing so.
Petitioner’s third motivation statement
Petitioner contends that a person of ordinary skill who desired to use
the power supply of Realmuto in the public transportation environment of
Roberge, would have wanted to protect Realmuto’s power supply from
environmental elements such as dust and dirt by incorporating the power
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supply within the housing of Roberge’s LED light fixture. Pet. 30 (citing
Ex. 1003 ¶ 155; Ex. 1010 63:5–7).
We find that evidence of Petitioner’s third motivation to combine the
references flows from Dr. Bretschneider’s testimony. Dr. Bretschneider
testifies that a person of ordinary skill who desired to use the power supply
of Realmuto to power LEDs in public transportation facility would have
wanted to protect the power supply from the dust and dirt found in such an
environment. Ex. 1003 ¶ 155. Dr. Bretschneider testifies that a person of
ordinary skill would have incorporated the power supply of Realmuto within
Roberge’s fixture housing that carries a plurality of LEDs to yield the
benefit of protecting the power supply from dust and dirt. Id.; see id. at
¶¶ 169, 173. Dr. Bretschneider provides persuasive testimony that a person
of ordinary skill in the art would have located the MFPCU within Roberge’s
fixture housing to yield the benefit of protecting Realmuto’s power supply
from dust and dirt, and would have a reasonable expectation of success in
doing so.
Expansive and flexible approach to combining references
In addition to these motivation statements, Petitioner contends that
Roberge teaches locating a power supply within an LED light fixture, and
that a person of ordinary skill could have housed Realmuto’s power supply
and battery backup within Roberge’s LED light fixture. Pet. 28–29 (citing
Ex. 1003 ¶¶ 149–152), 45. Petitioner contends that the combination would
yield the predictable results of having a power supply within an LED light
fixture without altering or hindering the functions performed by the power
supply of Realmuto or the LED lighting fixture of Roberge. Pet. 28–29, 45
(citing Ex. 1003 ¶ 184).
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The Supreme Court has stated that “[t]he obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007);
see id. at 415. Engagement with the question of obviousness requires an
“expansive and flexible approach” where “a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions. Id. at 415, 417 (emphasis added). “[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” Id. at 416.
Dr. Bretscheider testifies that a person of ordinary skill would have
used the power supply of Realmuto with the LED light fixture of Roberge,
because the vast majority of LED light fixtures have an internal power
supply, such as the LED light fixture taught by Roberge. Ex. 1003 ¶¶ 149–
50. Dr. Bretschneider testifies that the combination would have yielded the
predictable result of having a power supply within an LED light fixture
without altering or hindering the function performed by the power supply of
Realmuto or the LED light fixture of Roberge. Ex. 1003 ¶ 151; see id. at
¶¶ 152, 184–85; Ex. 1019, 74:25–75:11.
We credit Dr. Bretschneider’s testimony and Dr. Karlicek’s testimony
in determining that altering the known structure of Roberge’s LED lighting
fixture by substituting the power supply of Roberge with the known MFPCU
of Realmuto would have done no more than yield the predictable result of an
LED lighting fixture with an internal power supply that selects power from a
variety of power sources as taught by Realmuto. KSR, 550 U.S. at 416; Ex.
1003 ¶¶ 149–53, 169, 178–79, 184–85; Ex. 1019, 74:25–75:11. The Petition
and supporting evidence persuasively shows that the ’748 “patent simply
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arranges old elements with each performing the same function it had been
known to perform and yields no more than one would expect from such an
arrangement,” therefore, “the combination is obvious.” KSR, 550 U.S. at
417.
Patent Owner’s contentions regarding the reasons to combine
Patent Owner contends that neither Petitioner nor its expert cite to or
provide a reasonable motivation for a person of ordinary skill in the art to
combine the teachings of Roberge and Realmuto, even in view of the
AAPA, to arrive at the challenged claims. PO Resp. 50–53 (citing Ex. 2022
¶¶ 123–32). Patent Owner contends that Petitioner’s expert has failed to
explain how the specific references would be combined, which combinations
of elements in specific references would be retained, which jettisoned, how
those choices would have yielded a predictable result, or how any specific
combination would operate or read on the asserted claims. PO Resp. 52.
Patent Owner also contends that Petitioner’s expert did not provide an
articulated reason why a person of ordinary skill would have selected these
references and combined them in the manner claimed. PO Resp. 52–53.
We disagree with Patent Owner. As discussed above, the evidence
presented by the Petition and Dr. Bretschneider persuasively shows that a
person of ordinary skill would have used the MFPCU of Realmuto as the
power supply in the LED light fixture of Roberge to provide a variety of
power inputs, would have placed the MFPCU of Realmuto inside of the
LED light fixture of Roberge to protect the MFPCU of Realmuto from dirt
and dust as well as to simplify installation and manufacturing, and that
substituting the known MFPCU of Realmuto for the known power supply of
Roberge does no more than yield predictable results. Pet. 28–30, 42;
Ex. 1003 ¶¶ 145–55, 169, 173, 178–79.
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Patent Owner contends that Roberge does not disclose an LED light
fixture having a plurality of inputs for multiple power sources. PO Resp. 53
(citing Ex. 2022 ¶ 114). Patent Owner’s argument is unpersuasive, as it is
directed to Roberge individually rather than the combination of Realmuto
and Roberge proposed by Petitioner. See Bradium Techs. LLC v. Iancu, 923
F.3d 1032, 1050 (Fed. Cir. 2019) (“A finding of obviousness . . . cannot be
overcome ‘by attacking references individually where the rejection is based
upon the teachings of a combination of references.’”) (quoting In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)); In re Mouttet, 686 F.3d
1322, 1332–33 (Fed. Cir. 2012) (holding that “the test for obviousness is
what the combined teachings of the references would have suggested to
those having ordinary skill in the art”). Petitioner relies on Roberge to teach
an LED light fixture, and Realmuto to teach an LED power supply that has a
plurality of inputs from multiple power sources. Pet. 28–30, 32–38, 43–46.
We are persuaded that the combination of Realmuto and Roberge teaches an
LED light fixture having an LED power supply with a plurality of inputs
from multiple power sources as discussed above.
Patent Owner contends that Roberge does not disclose that the train
environment has a source from which the trains draw power, and a separate
standard voltage power source. PO Resp. 53. Patent Owner further
contends that Roberge does not disclose the power sources available in the
train environment, nor any features unique to a train environment that may
be relevant to designing light fixtures. PO Resp. 53–54 (citing Ex. 2022
¶¶ 112–14). Patent Owner also contends that Roberge never suggests that
the LED light fixture of Roberge should use the high voltage source
powering the trains as a source for the LED lights. Id.
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We are not persuaded. First, to the extent that Patent Owner’s
contention relies on Patent Owner’s construction of the claim terms “high
voltage power source” and “public transportation facility,” we find that the
scope of “high voltage power source” is not limited to a voltage source from
which electric vehicles draw power, and that “public transportation facility”
is not entitled to patentable weight, as discussed above in our claim
construction. Patent Owner’s contention is not commensurate with the
scope of the claim as we have construed it. Second, Patent Owner’s
argument is unpersuasive, as it is directed to Roberge individually rather
than to the combination of Realmuto and Roberge proposed by Petitioner.
The combination of Realmuto and Roberge teaches the claimed “high
voltage power source” as correctly construed. Further, even were we to give
weight to “public transportation facility” and to construe it narrowly as a
train facility as Patent Owner proposes, Roberge teaches an LED light
fixture used in a high voltage transportation environments including a train
facility.
In particular, Roberge teaches that its lighting systems include power
systems for driving light sources in high-voltage environments such as a
train facility. Ex. 1010, Abstract, 20:29–49, 21:22–33, 63:7, 64:16–17.
Roberge then describes the same power supplies (solar power, wind, and
fuel cell) that are also described by Realmuto as high voltage power
supplies. Ex. 1010, 20:33–34, 21:1–2, 21:20–21; Ex. 1009, 2:31–33, 4:7–
10, Fig. 1. Dr. Bretschneider testifies that the public transportation facilities
of Roberge would include a high voltage power source, such as those taught
by Realmuto. Ex. 1003 ¶¶ 153–154, 184–185, Ex. 2021, 138:22–25. Dr.
Karlicek also testifies that public transportation facilities would include a
high voltage power source. Ex. 1019, 152:15–21. We credit Dr.
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Bretscheider’s testimony as well as the teachings of the references
themselves in determining that the combination of Realmuto and Roberge
teaches an LED light fixture that can draw power from the claimed “a high
voltage power source” in a public transportation facility, even were we to
give patentable weight to “public transportation facility.”
Patent Owner contends that Petitioner’s “assertion that the
combination would be predictable . . . is not enough,” because “the claim is
not rendered obvious without a sufficient motivation to combine the
references.” PO Resp. 51–52, 54–56 (citing Ex. 2022 ¶¶ 125–27). We are
not persuaded that Petitioner did not provide sufficient motivation, for the
reasons discussed above. Further, we disagree with Patent Owner’s
contention that showing the predictable use of prior art elements according
to their established functions is not enough, because it is inconsistent with
the Supreme Court’s flexible and expansive approach to obviousness. See
KSR, 550 U.S. at 415, 417.
As discussed above, we credit Dr. Bretschneider’s testimony in
determining that the combination of Realmuto and Roberge teaches that the
’748 “patent claims a structure already known in the prior art (Roberge’s
LED lighting fixture) that is altered by the mere substitution of one element
(Roberge’s single input power supply) for another known in the field
(Realmuto’s MFPCU that includes a multiple input power supply)” and does
no more “than yield a predictable result” of an LED lighting fixture that
selects power from a variety of power sources. KSR, 550 U.S. at 416; Ex.
1003 ¶¶ 149–52, 184–185; see Uber Techs., Inc. v. X One, Inc., 957 F.3d
1334, 1340 (Fed. Cir. 2020) (Reversing the Board’s determination of lack of
motivation, stating that “because Okubo’s terminal-side plotting and
Konishi’s server-side plotting were both well known in the art, and were the
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only two identified, predictable solutions for transmitting a map and plotting
locations, it would have been obvious to substitute server-side plotting for
terminal-side plotting in a combination of Okubo and Konishi.”) (citing
KSR, 550 U.S. at 421).
Patent Owner contends that Petitioner’s use of AAPA is an improper
attempt to supplement the disclosures of the cited prior art references and
also to supplement Petitioner’s motivation to combine. PO Resp. 55–56
(citing Ex. 2022 ¶ 125). As discussed above in our analysis of the
background knowledge of a person of ordinary skill (Section II.C.3.d.(i)), we
determine that the Petition properly uses AAPA as evidence of the
background knowledge of a person of ordinary skill, and properly uses the
background knowledge to support its obviousness argument. KSR, 550 U.S.
at 401; Philips, 948 F.3d at 1337–39.
Patent Owner contends that Petitioner relies on the MFPCU as the
LED power supply, but that the MFPCU is a completely separate device
from the LED power supply. PO Resp. 56–57 (citing Ex. 2022 ¶ 127). We
disagree with Patent Owner for the reasons given in our analysis of the
claimed LED power supply above.
Patent Owner contends that a person of ordinary skill in the art would
face physical challenges standing in the way of placing high voltage and
standard voltage power supply components in a singular housing, especially
in harsh environments such as those found in transportation facilities. PO
Resp. 57 (citing Ex. 2022 ¶ 127). Patent Owner contends that the hazards
associated with internal components being exposed to third rail high voltage
power warrants caution when designing LED light fixture housings, and
therefore a person of ordinary skill in the art would not have been motivated
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to place power supply components of Realmuto into the fixture of Roberge
to arrive at the claimed LED light fixture. Id.
Patent Owner’s contention relies on Patent Owner’s construction of
“high voltage power source” to mean a voltage source from which electric
vehicles draw power. We disagree with this construction as discussed in our
claim construction above. Patent Owner’s contention is not commensurate
with the scope of the claim. As discussed above, under the correct
construction of “high voltage power source,” we credit Dr. Bretscheider’s
testimony as well as the teachings of the references themselves in
determining that the combination of Realmuto and Roberge teaches an LED
light fixture that can draw power from “a high voltage power source” in a
public transportation facility as claimed. Ex. 1003 ¶¶ 145–155, 183–185;
Ex. 1010, 5:55–60, 62:45–46, 63:7, 64:16. We credit Dr. Bretscheider’s
testimony in determining that placing the MFPCU that has standard voltage
and high voltage power inputs in the LED lighting fixture of Roberge in a
public transportation environment would have been “within the grasp of a
person of ordinary skill in the relevant art.” KSR, 550 U.S. at 427.
Patent Owner contends that a person of ordinary skill in the art would
not have been motivated to include Realmuto’s high voltage DC power
source, which is a solar energy source, into the fixture housing of Roberge,
which is a closed structure located in a tunnel as shown in Figure 55. PO
Sur-Reply 23–25. We are not persuaded. Contrary to Patent Owner’s
contention, Roberge teaches “solar-based power sources” as well as their use
in public transportation facilities, including the train facility shown in
Fig. 55. Ex. 1010, 6:55–60, 16:6–12, 20:33–34, 21:1–2, 21:18–21, 63:4–9,
64:10–21, Fig. 55. Further, the high voltage DC power source of Realmuto
is not limited to solar panels, and also includes wind power and a fuel cell.
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Ex. 1009 4:7–10, Fig. 1. Similarly, Roberge discloses using wind power and
a fuel cell. Ex. 1010, 21:1, 21:18–21. Both references also teach using a
standard AC power source. Ex. 1009, 1:36–39, 2:28–30; Ex. 1010 20:33–
34. We find that the similarity of the AC and DC power sources used to
provide power to the LEDs in both references, including solar power, wind
power, and fuel cells, suggests to a person of ordinary skill in the art the
compatibility of using the high voltage DC power sources taught by
Realmuto to provide power to the LEDs in the LED lighting fixture of
Roberge. See In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir. 2012) (affirming
an obviousness determination where two “references both teach processes
directed to making the same class of products” and minor differences
between the disclosures did not “negate the motivation to combine”).
Conclusion
For the reasons set forth by Petitioner and explained above, we are
persuaded that Realmuto and Roberge teach all of the limitations of claim 7,
and that a person of ordinary skill would have combined the teachings of the
references to achieve the LED light fixture recited in the claim and would
have had a reasonable expectation of success in doing so. Dr.
Bretschneider’s testimony provides sufficient evidence of motivation that a
person of ordinary skill would have used the MFPCU of Realmuto as the
power supply within the LED lighting fixture of Roberge and would have
had a reasonable expectation of success in doing so. Dr. Bretscheider’s
testimony also provides persuasive evidence that the combination of
Realmuto and Roberge teaches that the ’748 “patent claims a structure
already known in the prior art (Roberge’s LED light fixture) that is altered
by the mere substitution of one element (Roberge’s power supply) for
another known in the field (Realmuto’s MFPCU)” and does no more “than
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yield a predictable result” of an LED lighting fixture that selects power from
a variety of power sources. Petitioner has proven by a preponderance of the
evidence that claim 7 would have been obvious over Realmuto and Roberge.
4. Claim 8
Claim 8 depends from claim 7 and further recites “a battery charger;
the battery charger being powered by one of the LED power supply and the
high voltage power source.” Petitioner contends that Realmuto discloses the
battery charger in describing that the AC input 15 supplies power to AC/DC
Supply 2, which rectifies AC and provides regulated DC voltage to an
external energy storage device. Pet. 46–47 (citing Ex. 1009, 1:57–60, 1:64–
65, Fig. 1; Ex. 1003 ¶ 186. Petitioner contends that Realmuto discloses the
battery charger being powered by one of the LED power supply and the high
voltage power source in describing that the AC/DC supply, or battery
charger, is powered by the MFPCU power supply. Pet. 47 (citing Ex. 1009,
1:57–60, 1:64–65, 5:6, Fig. 1; Ex. 1003 ¶ 188).
Patent Owner does not argue separately dependent claim 8.
Petitioner’s analysis for claim 8, supported by the testimony of Dr.
Bretschneider, which we credit, is persuasive that claim 8 would have been
obvious over Realmuto and Roberge.
5. Claim 9
Claim 9 recites the same elements as claim 7, but further recites “a
battery self-test circuit that generates data representative of the status of the
battery backup system and a wireless communication device that transmits
the data.” Petitioner contends that this limitation is taught either by
Realmuto alone or by the combination of Realmuto and Roberge. Pet. 49.
Petitioner contends that Realmuto teaches central data acquisition and
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control unit 12 that sends control signals to the digital processor to cause the
digital processor to send back battery status information such as volts, amps,
and/or power delivered/supplied by the external energy storage device. Pet.
49–51 (citing Ex. 1009, 2:51–54, 3:3–4, Fig. 1; Ex. 1003 ¶¶ 196–197).
Petitioner contends that Realmuto teaches that control unit 12 monitors and
controls the operation from a central location, and that a bi-directional data
line is used to communicate with multiple units. Pet. 51 (citing Ex. 1009,
2:21–25, 4:37–43, 5:24–25, 9:38–41, Fig. 1; Ex. 1003 ¶ 198). Petitioner
further contends that Realmuto teaches a wireless communication device to
control all output circuits. Pet. 51 (citing Ex. 1009, 2:21–25; Ex. 1003
¶ 198).
Petitioner contends that Roberge teaches using network and wireless
protocols to communicate with the lighting unit. Pet. 51 (citing Ex. 1010,
6:23–27, Fig. 2). Petitioner contends that Roberge teaches a processor
configured to monitor power as controlled by a user interface, while a
controlled predetermined power is provided without requiring feedback from
the load, where the power facility includes AC power sources, DC power
sources, and batteries. Pet. 51–52 (citing Ex. 1010, 41:64–67, 27:25–28,
20:29–36; Ex. 1003 ¶ 199). Petitioner contends that a person of ordinary
skill in the art would have used a wireless communication device to transmit
battery status information since monitoring the status of the power supplies
and batteries by both wired and wireless communications, as taught by
Realmuto and Roberge, yield predictable results. Pet. 52 (citing Ex. 1003
¶ 200).
Realmuto discloses that the MFPCU includes digital processor 6 that
sends data about the volts, amps, and/or power delivered/supplied by the
external energy storage device to central data and acquisition control unit 12
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via network of bi-directional lines 17, which teaches the claimed “battery
self-test circuit that generates data representative of the status of the battery
and transmits the data over a network.” Ex. 1009, 2:50–54, 3:3–4, 5:23–25,
Figs. 1, 5; Ex. 1003 ¶¶ 196–197. Although Realmuto does not explicitly
disclose that the network is a wireless network, Realmuto does disclose
using a wireless communication device to communicate with the MFPCU,
which suggests using a wireless network as network 17. Ex. 1009, 2:21–23;
Ex. 1003 ¶ 198. What Realmuto implicitly suggests, Roberge makes
explicit. Roberge discloses a wireless communication device, or network
interface, that allows the LED lighting fixture to communicate using
wireless protocols. Ex. 1010, 6:23–29; Ex. 1003 ¶ 199. Using a wireless
communication device as taught by both Realmuto and Roberge to transmit
data generated by the digital processor about the status of the battery as
taught by Realmuto is the “combination of familiar elements according to
known methods” that “does no more than yield [the] predictable results” of
generating data about the status of the battery and transmitting the data using
the wireless communication device. See KSR, 550 U.S. at 416; Ex. 1003
¶ 200.
Patent Owner argues independent claims 7 and 9 together in Response
and Sur-Reply. See PO Resp. 38–58; Sur-Reply 13–21, 23–25. We disagree
with Patent Owner’s arguments for the reasons explained in our analysis of
claim 7 above. Petitioner’s analysis for claim 9, supported by the testimony
of Dr. Bretschneider, which we credit, is persuasive that claim 9 would have
been obvious over Realmuto and Roberge.
6. Claims 10, 13, 17–19, and 22–24
Claim 10 depends from claim 9 and recites “an activation switch for
the battery self-test circuit.” Petitioner contends that Realmuto discloses this
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limitation in describing a request for data about the status of the battery from
the data acquisition and control unit to the digital processor. Pet. 52–53
(citing Ex. 1009, 2:63–65, 3:3–4; Ex. 1003 ¶ 202). Petitioner further
contends that Roberge discloses this limitation in describing a user interface
that provides control directly to the lighting unit through a switch, and that a
processor is configured to monitor power, including battery power, as
controlled by the user interface. Pet. 53 (citing Ex. 1010, 5:27–33, 20:29–
36, 41:64–67, Fig. 2; Ex. 1003 ¶ 202).
Claim 13 depends from claim 9 and recites “a sensor in
communication with the wireless communication device.” Petitioner
contends that Roberge teaches this limitation in disclosing a photo sensor
integrated with the lighting unit and monitored by a processor, where the
processor wirelessly communicates with a control facility. Pet. 53–54
(citing Ex. 1010, 6:23–29, 30:45–48, Fig. 2; Ex. 1003 ¶ 204).
Petitioner contends that Realmuto teaches this limitation in disclosing
a control unit, a wireless communication device, and current and voltage
sensors sampling various sources and load points, where data about volts,
amps, and power from the power sources are sent to the control unit. Pet. 54
(citing Ex. 1009, 2:51–3:8, 4:38–39, Fig. 1; Ex. 1003 ¶ 205). Petitioner
contends that a person of ordinary skill would have transmitted the data
collected by the sensors to the control unit using the wireless communication
device to yield the predictable result of transmitting sensor data wirelessly.
Pet. 54–55 (citing Ex. 1003 ¶ 206).
Claim 17 depends from claim 9 and recites “the first power input is
adapted to be connected to a first standard voltage power source of 110 to
277 Volts.” Petitioner contends that Realmuto discloses this limitation in
describing an AC input that connects to a standard AC voltage power source,
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such as a single phase 208-277 VAC or three phase 208-480 VAC. Pet. 55
(citing Ex. 1009, 1:36–39; Ex. 1003 ¶ 207).
Claim 18 depends from claim 9 and recites “the second power input is
adapted to be connected to a high standard voltage power source of 600
Volts.” Petitioner contends that Realmuto discloses this limitation in
describing an alternate DC input that connects to an alternate DC voltage
power source which can generate high voltage power in the range of 250-
600 VDC. Pet. 55–56 (citing Ex. 1009, 4:60–61; Ex. 1003 ¶ 208).
Claim 19 depends from claim 9 and recites “the battery backup
system is carried by the fixture housing.” Petitioner contends that Roberge
discloses this limitation in describing a power facility carried within the
housing of the lighting unit, where the power facility can include a battery.
Pet. 56 (citing Ex. 1010, 20:61, 21:15–16; Ex. 1003 ¶ 209).
Claim 22 depends from claim 9 and recites “a mounting bracket; the
fixture housing removably carried by the mounting bracket.” Petitioner
contends that Roberge discloses this limitation in describing a bracket
mechanism for the housing of the lighting system, where the bracket is
connected by a knob to a plate of the housing, and the housing can be
removed from the bracket by removing the knob. Pet. 57 (citing Ex. 1010,
65:19–35, Fig. 58; Ex. 1003 ¶ 211).
Claim 23 depends from claim 22 and recites “a spacer disposed
between the mounting bracket and the fixture housing.” Petitioner contends
Roberge discloses this limitation in describing a washer disposed between
the mounting bracket and the fixture housing. Pet. 58 (citing Ex. 1010,
65:19–35; Ex. 1003 ¶ 212).
Claim 24 depends from claim 9 and recites “the LED power supply
automatically switches between the power sources.” Petitioner contends
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Realmuto discloses this limitation in describing control and internal
pathways to select a variety of power inputs, and that during a utility power
outage, power delivered by the AC input is shut down and power to supply
the load is supplied by the external energy device and the alternate DC
source. Pet. 59 (citing Ex. 1009, 1:16–19, 5:14–20; Ex. 1003 ¶ 213).
Patent Owner does not argue separately dependent claims 10, 13, 17–
19, and 22–24. Petitioner’s analysis for claims 10, 13, 17–19, and 22–24,
supported by the testimony of Dr. Bretschneider, which we credit, is
persuasive that claims 10, 13, 17–19, and 22–24 would have been obvious
over Realmuto and Roberge.
D. Asserted Obviousness over Roberge, Realmuto, and Conley
1. Conley (Ex. 1011)
Conley discloses an emergency lighting remote monitoring and
control system that schedules self-tests for the emergency lights, and stores
the test results. Ex. 1011, Abstract. Figure 1 shows a block diagram of the
system and is reproduced below.

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Figure 1 above shows central control unit 10, repeater 11, emergency
lighting unit 12, and user interface 13. Ex. 1011, 3:63–66. Central control
unit 10 sends commands, such as an initiate self-test command, to
emergency lighting unit 12. Id. at 4:14–23. The initiate self-test command
causes lighting unit 12 to initiate a self-test, including a battery voltage test
and a lamp current test. Id. at 4:24–27. The emergency lighting unit
communicates the results of the self-test to the central control unit. Id. at
6:37–43.
2. Discussion
Petitioner contends that the limitations of claim 9 that are also recited
in claim 7 are taught by the combination of Realmuto and Roberge for the
reasons given in the Petition’s discussion of obviousness over Realmuto and
Roberge. Pet. 62–63. We agree with Petitioner for the reasons given in our
discussion of claim 7 above.
Claim 9 recites “a battery self-test circuit that generates data
representative of the status of the battery backup system and a wireless
communication device that transmits the data.”
Petitioner contends that Conley discloses lighting for emergency
situations. Pet. 60 (citing Ex. 1011, Fig. 10). Petitioner contends that Conley
discloses an emergency lighting monitoring and control system that controls
and monitors the emergency lights in a building and is capable of
performing tests of the backup power source. Id. (citing Ex. 1011, Abstract).
Petitioner contends that safety codes typically require a brief test to be
performed each year. Id. (citing Ex. 1011, 1:25–28).
Petitioner contends Conley discloses a control unit remotely located
from the lighting unit that sends an initiate test command to the lighting unit
to cause the lighting unit to initiate self-tests, including a battery voltage test
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and a lamp current test. Pet. 64 (citing Ex. 1011, 4:17–27, Fig. 3; Ex. 1003
¶ 229). Petitioner contends Conley discloses that a ballast controller, or
battery self-test circuit, of the lighting unit transmits the test results in status
data to the control unit via a wireless transceiver, where the status data
include data such as which tests passed, which tests failed, and the value of
parameters measured during the tests. Pet. 64–65 (citing Ex. 1011, 6:37–42,
Fig. 3; Ex. 1003 ¶ 230).
Petitioner contends that a person of ordinary skill in the art would
have used the emergency lighting and control system of Conley with the
LED lighting fixture of Roberge, that includes the power supply of
Realmuto, to yield the benefits of providing the ability to perform necessary
tests of the fixture to satisfy safety codes as taught by Conley, and to reduce
labor costs associated with such testing and reporting. Pet. 61–62 (citing Ex.
1011, 2:55–56; Ex. 1003 ¶¶ 217, 222). Petitioner also contends that
combining the known monitoring and control system of Conley with the
known LED lighting fixture of Roberge and the known power supply of
Realmuto is the combination of familiar elements according to known
methods that does no more than yield the predictable result of an LED
lighting fixture of Roberge that includes the power supply of Realmuto and
the monitoring and control system of Conley. Id. (citing Ex. 1003 ¶¶ 218–
221).
Patent Owner argues independent claims 7 and 9 together in the
Response and the Sur-Reply. See PO Resp. 38–58; Sur-Reply 13–21, 23–
25. We disagree with Patent Owner’s arguments for the reasons explained
in our analysis of claim 7 above. Patent Owner also contends that Conley
does not cure the deficiencies of the other references, and that Petitioner fails
to provide a proper motivation to combine Conley with the remaining
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references. PO Resp. 58. We disagree.
We determine that the Petition and supporting evidence persuasively
show that a person of ordinary skill would have combined the emergency
lighting and control system of Conley, including the battery self-test circuit,
with the LED lighting fixture taught by the combination of Realmuto and
Roberge, to yield the benefits of performing necessary tests of the
emergency lighting system in order to satisfy safety codes as taught by
Conley, and to reduce labor costs associated with such testing and reporting.
We also determine that combining the known emergency lighting system of
Conley with the known LED lighting fixture of Roberge and the known
power supply of Realmuto is the combination of familiar elements according
to known methods that does no more than yield the predictable results of an
LED lighting fixture that selects power from a variety of inputs, and
performs necessary tests of the emergency lighting system. Petitioner’s
analysis for claim 9, supported by the testimony of Dr. Bretschneider, which
we credit, is persuasive that claim 9 would have been obvious over
Realmuto, Roberge, and Conley.
Patent Owner also presents arguments for this ground together with
arguments for all grounds, which we find unpersuasive for the reasons given
in our analysis of the obviousness ground based on Realmuto and Roberge.
See generally PO Resp.; PO Sur-Reply.
Claim 10 depends from claim 9 and recites “an activation switch for
the battery self-test circuit.” Petitioner contends that Conley discloses this
limitation in describing a lighting unit that includes a test button, or
activation switch, that causes the lighting unit to initiate a self-test. Pet. 65
(citing Ex. 1011, 5:56–57; Ex. 1003 ¶ 231).
Claim 13 depends from claim 9 and recites “a sensor in
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communication with the wireless device.” Petitioner contends that Conley
discloses this limitation in describing an A/D converter that is part of the
ballast controller, or battery self-test circuit, that measures voltages across a
battery, and that the ballast controller communicates the value of parameters
measured during the tests, such as the voltage across the battery, via the
wireless transceiver. Pet. 66 (citing Ex. 1011, 6:37–42; Ex. 1003 ¶ 232).
Petitioner contends that the limitations of claims 17–19 and 22–24 are
taught by Realmuto or Roberge for the reasons given in the Petition’s
discussion of obviousness of these claims over Realmuto and Roberge.
Pet. 66–67.
Patent Owner does not argue separately dependent claims 10, 13, 17–
19, and 22–24. Petitioner’s analysis for claims 10, 13, 17–19, and 22–24,
supported by the testimony of Dr. Bretschneider, which we credit, is
persuasive that claims 10, 13, 17–19, and 22–24 would have been obvious
over Realmuto, Roberge, and Conley.
E. Asserted Obviousness over Smith, Realmuto, and AAPA
1. Smith (Ex. 1012)
Smith discloses a light unit with internal power failure detection.
Ex. 1012, Title. Smith discloses that the light unit includes a power input to
receive power from an external power source, a solid state light element
interconnected to the power source, and a back-up power source
interconnected to the solid state light element and the power input to provide
power to the light element when power is not provided from the power
input. Id., Abstract. Figure 3 of Smith is reproduced below.
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Figure 3 above shows components of an LED light unit 20. Ex. 1012,
4:1–2. Light/power controller 104 converts incoming alternating current to
direct current to power light source 108, and can switch from AC-to-DC
power to back-up DC power from back-up power source 112 when a power
failure is detected. Ex. 1012, 4:15–16, 4:20–29, 4:51–54. Light source 108
may be an array of LEDs. Id. at 4:29–30. LED light unit 20 includes a
housing. Id. at 2:48–53, Fig. 1. Included within the housing are LED
elements 28 and batteries 34. Id. at 2:53–55, 2:62–65, Fig. 1.
2. Discussion
Claim 7 recites “[a] LED light fixture . . . having a high voltage power
source, and at least a first standard voltage power source.” Petitioner
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contends Smith discloses an LED light unit 20, and the AAPA discloses “a
high voltage power source, and at least a first standard voltage power
source.” Pet. 73–74 (citing Ex. 1012, Fig. 1; Ex. 1003 ¶ 252). Petitioner
further contends that even were the preamble term “used in a public
transportation facility” given patentable weight, the AAPA discloses an LED
light fixture used in a public transportation facility. Pet. 73; see id. at 25–26
(citing Ex. 1005, 32, 87 and stating that the “applicant agreed that the
existing public transportation power sources recited in the preamble were in
the prior art as described in applicant’s specification at page 5”). Page 5 of
the specification recites
Light fixture 2 is configured for use in public transportation
locations where high voltage electricity supplies are available.
Each light fixture 2 disclosed herein is can be configuration
accept and use the available high voltage electrical power. In
one embodiment, the light fixture 2 is connected to both the high
voltage input as well as a traditional 110-277 Volt line power.
Ex. 1005, 182; see id. at 32.
Claim 7 recites “a fixture housing.” Petitioner contends Smith
discloses a housing carrying LED elements, electronic components to
operate the LED elements, and batteries. Pet. 71 (citing Ex. 1012, 2:53–55,
2:62–65, Fig. 1; Ex. 1005, 88; Ex. 1003 ¶ 248).
Claim 7 recites “a plurality of LEDs carried by the fixture housing for
providing light from the fixture housing.” Petitioner contends Smith
discloses an array of LEDs located within the housing for providing light
from the fixture housing. Pet. 71–72 (citing Ex. 1012, 2:53–55, Fig. 1;
Ex. 1005, 88; Ex. 1003 ¶ 249).
Claim 7 recites “an LED power supply carried within the fixture
housing.” Petitioner contends Smith discloses that the housing includes an
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LED power supply and batteries. Pet. 72–73 (citing Ex. 1012, 2:62–65, Fig.
3; Ex. 1005, 88; Ex. 1003 ¶ 250).
Claim 7 recites “the LED power supply having a first power input
connected to the first standard voltage power source and a second power
input connected to the high voltage power source.” Petitioner contends
Realmuto discloses this limitation for the reasons given in the discussion of
obviousness over Realmuto and Roberge. Pet. 69.
Claim 7 recites “a battery backup system connected to one of the
plurality of LEDs and the LED power supply.” Petitioner contends Smith
discloses a battery backup system interconnected to the power input and to
the solid state light elements. Pet. 69–70 (citing Ex. 1012, 1:45–47, Fig. 3;
Ex. 1005, 88; Ex. 1003 ¶ 247).
Petitioner contends that incorporating the power supply of Realmuto
within the LED light fixture of Smith, for use in a public transportation
facility having a high voltage power source and a standard voltage power
source as taught by the AAPA, would have yielded the predictable benefit of
providing the LED light fixture with the ability to use a variety of available
power inputs for use, instead of only a single power input. Pet. 67–68
(citing Ex. 1012, 5:16–18, 6:55–58, Ex. 1009, 1:17–19, 1:36–39, 4:22–36,
4:60–61; Ex. 1003 ¶¶ 239–242). Petitioner contends that using the power
supply element of Realmuto in place of the power supply element of the
LED light fixture of Smith for use in a public transportation facility having a
high voltage source and a standard voltage source as taught by the AAPA
would have been the substitution of one known element for another yielding
the predictable result of providing multiple power inputs, instead of a single
power input. Pet. 68 (citing Ex. 1003 ¶ 243).
Patent Owner contends that Realmuto does not disclose “the LED
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power supply having a first power input connected to the first standard
voltage power source and a second power input connected to the high
voltage power source” as claimed, nor the preamble as construed according
to Patent Owner, nor the claimed “high voltage power source” as construed
by Patent Owner. PO Resp. 38–47. We disagree with Patent Owner for the
reasons given above in our analysis of the unpatentability of claim 7 over
Realmuto and Roberge.
Patent Owner contends that Petitioner does not provide sufficient
reasoning as to why a person of ordinary skill in the art would have
combined the references in the manner claimed. PO Resp. 50–53, 58–60.
We disagree. The Petition and supporting evidence persuasively show that a
person of ordinary skill in the art would have incorporated the power supply
of Realmuto within the LED light fixture of Smith, for use in a public
transportation facility having a high voltage power source and a standard
voltage power source as taught by the AAPA, to yield the predictable benefit
of providing the LED light fixture with the ability to use a variety of
available power inputs for use, instead of only a single power input. A
person of ordinary skill would have understood that this provides the benefit
of switching to an alternate power source when the main power source fails,
as taught by Realmuto. Ex. 1009, 4:22–26, 5:14–20, Fig. 4. A person of
ordinary skill would have understood that it is important for the LED light
fixture to provide illumination in an emergency, such as when the main
power supply fails, so that people are able to exit the facility. Ex. 1003 ¶ 82;
Ex. 1005, 32; Ex. 1011, 1:12–19; Ex. 1012, 6:43–66.
The Petition and supporting evidence also persuasively show that
using the power supply element of Realmuto in place of the power supply
element of the LED light fixture of Smith in a public transportation facility
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having standard and high voltage power sources as taught by the AAPA
would have been the substitution of one known element for another yielding
the predictable result of providing multiple power inputs, instead of a single
input, in order to switch to an alternate power source when the main power
source fails, so that people are able to exit the public transportation facility.
Ex. 1003 ¶¶ 82, 243; Ex. 1005, 32, 182; Ex. 1009, 4:22–26, 5:14–20, Fig. 4;
Ex. 1012, 6:43–66.
Patent Owner contends that Petitioner’s reliance on the AAPA is
hindsight reasoning, and that Petitioner improperly relies on the AAPA to
teach claim limitations. PO Resp. 50, 58–60. However, as discussed above,
we determine that the AAPA properly constitutes substantial evidence that a
person of ordinary skill in the art would have known that a public
transportation facility has a high voltage power source besides the third rail
and a traditional 110-277 Volt power source. In re NTP, Inc., 654 F.3d at
1304. Further, “it is appropriate to rely on admissions in a patent’s
specification when assessing whether that patent’s claims would have been
obvious.” Philips, 948 F.3d at 1339. “Admissions in the specification
regarding the prior art are binding on the patentee for purposes of a later
inquiry into obviousness.” Id. (quoting PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007)); see USPTO
Memorandum, Treatment of Statements of the Applicant in the Challenged
Patent in Inter Partes Reviews Under § 311 (Aug. 18, 2020) at 8–9 (“the
Board need not deny a petition that properly points to general knowledge to
satisfy a claim limitation”).7 We are not persuaded by Patent Owner’s

7 Available at https://www.uspto.gov/sites/default/files/documents/signed_
aapa_guidance_memo.pdf.
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contention that Petitioner’s reliance on the AAPA is defective.
Patent Owner also presents arguments for this ground together with
arguments for all grounds, which we find unpersuasive for the reasons given
in our analysis of the obviousness ground based on Realmuto and Roberge.
See generally PO Resp.; PO Sur-Reply.
Claim 8 recites “a battery charger; the battery charger being powered
by one of the LED power supply and the high voltage power source.”
Petitioner contends that Smith discloses this limitation in describing a
microcontroller that monitors the back-up power source and switches back-
up power charging voltage from the power controller on and off. Pet. 74–76
(citing Ex. 1012 4:20–29; Ex. 1003 ¶¶ 253–254). Patent Owner does not
argue claim 8 separately.
Claim 9 recites several limitations that are recited in claim 7.
Petitioner contends that these limitations are disclosed by Realmuto and
Smith for the reasons given in its analysis of claim 7. Pet. 77–78. Claim 9
further recites “a battery self-test circuit that generates data representative of
the status of the battery backup system and a wireless communication device
that transmits the data.” Petitioner contends that Realmuto discloses this
limitation for the reasons given in its previous analysis of claim 9. Pet. 78.
Patent Owner argues independent claims 7 and 9 together in the
Response and the Sur-Reply. We disagree with Patent Owner’s arguments
for the reasons explained in our analysis of claim 7 above.
Claims 10, 13, 17, and 18 depend from claim 9. Petitioner contends
that the limitations in claims 10, 13, 17, and 18 are taught by Realmuto for
the reasons given in the Petition’s previous analyses of these claims. Pet.
78–79. Patent Owner does not argue claims 10, 13, 17, and 18 separately.
Claim 19 depends from claim 9 and recites “the battery backup
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system is carried by the fixture housing.” Petitioner contends this limitation
is disclosed by Smith in describing a battery backup system within the light
fixture, as explained by the Examiner during prosecution. Pet. 79–80 (citing
Ex. 1012, Fig. 3; Ex. 1005, 88; Ex. 1003 ¶ 266). Patent Owner does not
argue claim 19 separately.
Claim 22 depends from claim 9 and recites “a mounting bracket; the
fixture housing removably carried by the mounting bracket.” Petitioner
contends that Smith teaches this limitation in disclosing light units adapted
to be installed in a conventional manner to the appropriate power outlet or
receptacle. Pet. 80–81 (citing Ex. 1012, 3:27–33; Ex. 1003 ¶ 267).
Petitioner contends that a person of ordinary skill in the art would have
included a mounting bracket to the light units of Smith for the benefit of
mounting and removing the light, as suggested by Smith’s teaching that the
fixture is removably carried by a conventional light socket or outlet. Pet. 81
(citing Ex. 1012, 2:23–36, 4:3–7; Ex. 1003 ¶¶ 118, 267. Patent Owner does
not argue claim 22 separately.
Claim 23 depends from claim 22 and recites “a spacer disposed
between the mounting bracket and the fixture housing.” Petitioner contends
that Smith teaches this limitation in disclosing light units adapted to be
installed in a conventional manner to the appropriate power outlet or
receptacle. Pet. 81 (citing Ex. 1012, 3:27–33). Petitioner contends that a
person of ordinary skill in the art would have included a spacer between the
mounting bracket and the fixture housing of Smith, as suggested by Smith’s
teaching that the fixture is removably carried by a conventional light socket
or outlet. Pet. 81–82 (citing Ex. 1012, 2:23–36, 4:3–7; Ex. 1003 ¶¶ 119,
268. Patent Owner does not argue claim 23 separately.
Claim 24 depends from claim 9 and recites “the LED power supply
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automatically switches between the power sources.” Petitioner contends that
Smith discloses this limitation in describing an LED light unit with a battery
back-up that switches to battery power when there is a power outage or
when the public utility is at peak usage periods. Pet. 82 (citing Ex. 1012,
3:1–10, Figs. 3–5; Ex. 1003 ¶ 269; Ex. 1006, 72). Patent Owner does not
argue claim 24 separately.
Petitioner’s analysis for claims 7–10, 13, 17–19, and 22–24, supported
by the testimony of Dr. Bretschneider, which we credit, is persuasive that
claims 7–10, 13, 17–19, and 22–24 would have been obvious over Smith,
Realmuto, and AAPA.
F. Asserted Obviousness over Smith, Realmuto, Conley, and AAPA
Petitioner contends that the limitations of claim 9 that are also recited
in claim 7 are taught by the combination of Smith, Realmuto, and AAPA for
the reasons given in the Petition’s discussion of obviousness over Smith,
Realmuto, and AAPA. Pet. 85–86. Claim 9 further recites “a battery self-
test circuit that generates data representative of the status of the battery
backup system and a wireless communication device that transmits the
data.” Petitioner contends that Conley discloses this limitation for the
reasons given in Petitioner’s analysis of obviousness over Realmuto,
Roberge, and Conley.
Petitioner contends that combining the teachings of Conley with those
of Smith, Realmuto, and the AAPA provides the benefit of providing tests
necessary to satisfy safety codes in a structure where light is important for
safety reasons, such as a public transportation facility. Pet. 83–84 (citing
Ex. 1011, Abstract, 1:25–28, 2:55–56; Ex. 6:61–63; Ex. 1003 ¶ 272).
Petitioner also contends that combining the teachings of Conley with those
of Smith, Realmuto, and AAPA is the combination of known elements that
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yields the predictable result of having a monitoring and control system
within an LED light fixture for use in a public transportation facility having
a high voltage power source and a first standard voltage power source. Pet.
84 (citing Ex. 1003 ¶¶ 273–275).
Claims 10 and 13 depend from claim 9. Petitioner contends that the
limitations of claims 10 and 13 are taught by Conley for the reasons given in
Petitioner’s previous analysis of claims 10 and 13 as unpatentable over
Realmuto, Roberge, and Conley. Pet. 86. Patent Owner does not separately
argue claims 10 and 13.
Claims 17 and 18 depend from claim 9. Petitioner contends that the
limitations of claims 17 and 18 are taught by Realmuto for the reasons given
in Petitioner’s previous analysis of claims 17 and 18 as unpatentable over
Realmuto and Roberge. Pet. 86. Patent Owner does not separately argue
claims 17 and 18.
Claims 19 and 22 depend from claim 9, and claim 23 depends from
claim 22. Petitioner contends that the limitations of claims 19, 22, and 23
are taught by Smith for the reasons given in Petitioner’s previous analysis of
claims 19, 22, and 23 as unpatentable over Smith, Realmuto, and AAPA.
Pet. 86–87. Patent Owner does not separately argue claims 19, 22, and 23.
Claim 24 depends from claim 9. Petitioner contends that the
limitation of claim 9 is taught by Realmuto for the reasons given in
Petitioner’s previous analysis of claim 24 as unpatentable over Realmuto
and Roberge. Pet. 87. Patent Owner does not separately argue claim 24.
Patent Owner presents arguments for this ground together with
arguments for the obviousness ground based on Smith, Realmuto, and
AAPA, which we find unpersuasive as discussed above. PO Resp. 58–60.
Patent Owner also presents arguments for this ground together with
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arguments for all grounds, which we find unpersuasive for the reasons given
in our analysis of the obviousness ground based on Realmuto and Roberge.
See generally PO Resp.; PO Sur-Reply.
We agree with the Petition and supporting evidence that combining
the teachings of Conley with those of Smith, Realmuto, and the AAPA
would have provided the benefit of providing tests necessary to satisfy safety
codes for an emergency lighting system used in a public transportation
facility, where switching to an alternate power source when the main power
source fails allows the lighting system to provide light so that people can
safely exit the public transportation facility. Ex. 1003 ¶¶ 82, 243; Ex. 1005,
32, 182; Ex. 1009, 4:22–26, 5:14–20, Fig. 4; Ex. 1011, 1:13–28; Ex. 1012,
6:43–66. Petitioner’s analysis for claims 9, 10, 13, 17–19, and 22–24,
supported by the testimony of Dr. Bretschneider, which we credit, is
persuasive that claims 9, 10, 13, 17–19, and 22–24 would have been obvious
over Smith, Realmuto, AAPA, and Conley.
IV. CONCLUSION
As summarized in the table below, the Petition and supporting
evidence has shown by a preponderance of the evidence that claims 7–10,
13, 17–19, and 22–24 of the ’748 patent are unpatentable.8

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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V. ORDER
Therefore, it is:
ORDERED that claims 7–10, 13, 17–19, and 22–24 of the ’748 patent
are unpatentable; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
7–10, 13,
17–19,
22–24
103 Roberge, Realmuto 7–10, 13, 17–
19, 22–24

9, 10, 13,
17–19,
22–24
103 Roberge,
Realmuto, Conley
9, 10, 13, 17–
19, 22–24

7–10, 13,
17–19,
22–24
103 Smith, Realmulto,
AAPA
7–10, 13, 17–
19, 22–24

9, 10, 13,
17–19,
22–24
103 Smith, Realmulto,
Conley, AAPA
9, 10, 13, 17–
19, 22–24

Overall
Outcome
7–10, 13, 17–
19, 22–24

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PETITIONER:
Gregory Gewirtz
Jonathan David
James Vezeris
ggewirtz.ipr@ldlkm.com
jdavid.ipr@ldlkm.com
jvezeris@lernerdavid.com

PATENT OWNER:

Eliot Williams
Robert Maier
Jennifer Tempesta
Eric Faragi
Aaron Jagoda
eliot.williams@bakerbotts.com
robert.maier@bakerbotts.com
jennifer.tempesta@bakerbotts.com
eric.faragi@bakerbotts.com
aaron.jagoda@bakerbotts.com