OSRAM SYLVANIA Inc.v.JAM STRAIT, INC.

Patent Trial and Appeal Board

Sep 8, 2015

10123542 (P.T.A.B. Sep. 8, 2015)

Trials@uspto.gov Paper No. 24
571.272.7822 Filed: September 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OSRAM SYLVANIA INC.,
Petitioner,

v.

JAM STRAIT, INC.,
Patent Owner.

____________

Case IPR2014-00703
Patent 6,786,625 B2
____________

Before BART A. GERSTENBLITH, MIRIAM L. QUINN, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2014-00703
Patent 6,786,625 B2

2
I. INTRODUCTION
Osram Sylvania Incorporated
1
filed a Petition to institute an inter
partes review of claims 30 and 31 of U.S. Patent No. 6,786,625 B2 (“the
’625 patent”) pursuant to 35 U.S.C. § 311–19. Paper 5 (“Petition” or
“Pet.”). We instituted trial (Paper 10, “Dec. on Inst.”) on the following
grounds:
a) Obviousness of claims 30 and 31 over Laforest;2
b) Obviousness of claims 30 and 31 over Alvarez;3 and
c) Obviousness of claims 30 and 31 over Horowitz.4
Jam Strait, Inc.
5
filed a Patent Owner Response addressing the above-
referenced grounds. Paper 13 (“PO Resp.”). Patent Owner relies on a
Declaration of Mr. Bruce Wesson to support the rebuttal to Petitioner’s
challenges of unpatentability. Ex. 2001 (“Bruce Decl.”).
Petitioner filed a Reply to Patent Owner’s Response. Paper 15 (“Pet.
Reply”). An oral hearing was held on June 18, 2015, as scheduled, and a
transcript of that hearing has been entered into the record. Paper 23 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). Pursuant to
35 U.S.C. § 318(a), this decision is “a final written decision with respect to
the patentability of any patent claim challenged by the petitioner.”

1
Hereinafter referred to as “Petitioner.”
2
French Patent Application Pub. No. 2 576 719 to Laforest, et al.
(Ex. 1017). A certified translation of this reference was provided as
Exhibit 1018. Therefore, hereinafter, all references to “Laforest” are with
respect to the translation, Exhibit 1018.
3
U.S. Patent No. 6,252,350 B1 (Ex. 1020) (“Alvarez”).
4
U.S. Patent No. 6,357,902 B1 (Ex. 1021) (“Horowitz”).
5
Hereinafter referred to as “Patent Owner.”
IPR2014-00703
Patent 6,786,625 B2

3
Petitioner has demonstrated by a preponderance of the evidence that
claims 30 and 31 of the ’625 patent are unpatentable.
A. THE ’625 PATENT (EX. 1001)
The ’625 patent, titled “LED LIGHT MODULE FOR VEHICLES,”
issued on September 7, 2004. LED is an acronym for Light Emitting Diode.
See Ex. 1001, Abstract. The ’625 patent describes an LED lamp module for
use in a vehicle’s tail, brake, or turn signal lamp fixtures. Id. at 1:28–33.
“LED bulbs designed to replace vehicle incandescent bulbs require bases
similar to the standard bayonet or the wedge bases.” Id. at 1:54–56. A mini-
wedge bulb is described with reference to Figures 33, 34, and 35, for
example, reproduced below.

Figures 33, 34, and 35 of the ’625 patent, reproduced above, illustrate
bulb 410 including four LEDs 421 in a “2x2” array mounted on a printed
circuit board (PCB). Id. at 14:6–9. “Resistors 416 and 417 limit current
through and voltage drop across the LEDs to acceptable levels for the ratings
of the LEDs 421.” Id. at 14:12–14. The ’625 patent further describes that
the mini-wedge LED bulb can replace any 3-digit automotive bulb. Id. at
14:28–30. One example provided of a mini-wedge LED bulb that can
replace standard 3-digit incandescent light bulbs is the LED bulb identified
IPR2014-00703
Patent 6,786,625 B2

4
by the part number “194-XX.” Id. at 24:37–41, 49–67 (Table). As for
shape, the ’625 patent states that the outline of PCB 420 (shown in Figures
34–35 above), is “preferably approximately the same as the smaller 3[-]digit
incandescent bulbs such as 194.” Id. at 14:36–37.
Claim 30 is an independent claim, and claim 31 depends from
claim 30. Illustrative claim 30 is reproduced below:
30. An LED light bulb adapted for use in standard automotive
mini wedge type bulb sockets comprising:
a bulb body comprising a printed circuit board having a
front side, a rear side, and an upper side; at least one light
emitting diode mounted on the upper side of the printed circuit
board and electrically coupled with the printed circuit board;
and
electrical control means mounted on the printed circuit
board electrically connected between the printed circuit board
and at least one pair of electrical conductors.

II. ANALYSIS
This case presents at least two issues. The first issue is whether the
LED lamps disclosed in the asserted references teach or suggest “[a]n LED
light bulb adapted for use in standard automotive mini wedge type bulb
sockets.” (Emphasis added.) A second issue involves whether the prior art
teaches or suggests a resistor that is “mounted on” a printed circuit board as
required by claim 30.
A. CLAIM INTERPRETATION
The Board interprets claims using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
IPR2014-00703
Patent 6,786,625 B2

5
1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the
meaning that the term would have to a person of ordinary skill in the art in
question.”) (internal citation and quotation marks omitted). An inventor,
however, also may act as his or her own lexicographer and give a claim term
a special meaning. Even where, as here, no such lexicographic definition is
presented, it is appropriate, nevertheless, to rely on the written description
for guidance in determining claim meaning. See id. Indeed, the construction
that stays true to the claim language and most naturally aligns with the
inventor’s description is likely to be the correct construction. Renishaw PLC
v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
The claims have been given their ordinary meaning as would be
understood by a person of ordinary skill in the art in light of the ’625 patent.
We address that meaning for three terms: the preamble of claim 30,
“electrical control means,” and “mounted on the printed circuit board.”
1. Preamble of Claim 30: “An LED light bulb adapted for use in
standard automotive mini wedge type bulb sockets”
In our Decision on Institution, the Board determined that the preamble
of claim 30 is a claim limitation. “A claim’s preamble may limit the claim
when the claim drafter uses the preamble to define the subject matter of the
claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir.
2011). The preamble is generally construed to be limiting if it “‘recites
essential structure or steps, or if it is necessary to give life, meaning, and
vitality to the claim.’” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d
1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). For example,
where the specification underscores structure recited in the preamble as
IPR2014-00703
Patent 6,786,625 B2

6
important, the preamble may operate as a claim limitation. Catalina Mktg.,
289 F.3d at 808.
The challenged claims are directed to a specific LED light bulb, one
that can be inserted in a standard automotive mini-wedge socket. The
’625 patent states that the “present invention” is an LED “vehicle lamp
module adapted for mounting in standard vehicle brake/tail lamps or turn
signal assemblies to replace standard vehicle incandescent bulbs.” Ex. 1001,
4:39–42. The adaptation of the LED light bulb to fit a specific socket
constrains the fit of the recited PCB in the “bulb body” and the “electrical
control means” that are mounted onto that PCB, such that the light bulb has
the dimensions of a mini-wedge bulb. The specification of the ’625 patent
reflects this importance when describing that the PCB of the mini-wedge
bulb of the “present invention” has the dimensions (thickness and height) of
a standard automotive mini-wedge light bulb with the 194-part number, such
that it can fit into the same socket as 3-digit incandescent mini-wedge bulbs
with the 194-part number. See id. at 14:6–7, 36–44; 14:62–15:3.
Furthermore, we noted that the use of “adapted for” in the preamble
denotes that the LED light bulb is designed or made to fit into a mini-wedge
type bulb socket. See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014).
As stated above, the ’625 patent describes that the mini-wedge type bulb has
the same dimensions as a 194-part number light bulb, i.e., a 3-digit
incandescent light bulb. See Ex. 1001, 14:6–7, 36–44; 14:62–15:3. Further,
the specification describes that the mini-wedge light bulb can replace any
3-digit automotive bulb. Id. at 14:28–29. We interpreted these statements
as an indication that the claimed LED light bulb is more than merely
“capable of” fitting into a mini-wedge socket—it is designed to do so.
IPR2014-00703
Patent 6,786,625 B2

7
Based on the guidance provided by the ’625 patent, we construed the
preamble to mean “an LED light bulb designed to fit into sockets configured
to receive a three-digit automotive incandescent lamp.” Dec. on Inst. 7.
During trial, Patent Owner argued that none of the bulbs disclosed in
the asserted prior art are “for use in standard automotive mini-wedge type
bulb sockets.” See PO Resp. 12 (with respect to Laforest), 13 (with respect
to Alvarez), 14 (with respect to Horowitz). Although these references show
a wedge base, Patent Owner argued that the size of the bulbs disclosed did
not meet the claim, because the claim is directed to a “mini-wedge” type. Id.
Our construction of the preamble, however, restated the recited “mini-wedge
type socket” as a “three-digit incandescent lamp” relying on statements in
the specification that described the invention in terms of the 194-part
number and the replacement of any three-digit automotive bulb. See
Ex. 1001, 14:28–29; but see Ex. 1001, 14:36–37 (stating that the outline of
the PCB is preferably “approximately the same as the smaller 3[-]digit
incandescent bulbs such as 194”) (emphasis added). Indeed, Patent Owner’s
position, clarified during oral argument, is that, as stated in the specification,
mini-wedge type bulbs and three-digit incandescent light bulbs are
“synonymous.” Tr. 34:1–17. Patent Owner also argued that this position is
based on the inventor’s understanding at the time the patent was drafted, and
that if that understanding was incorrect, Patent Owner would agree that
claim 30 is directed to bulbs that are adapted for use in standard automotive
mini-wedge type bulb sockets, and not any three-digit bulb socket. Id.
In support of a revision of the Board’s claim construction, Petitioner
argued at oral argument that the term “mini-wedge” bulb is narrower in
scope than “three-digit” bulb. Tr. 14:5–19. This position is supported by
IPR2014-00703
Patent 6,786,625 B2

8
the record. For example, Dr. Peter Shackle, Petitioner’s expert, explains that
there is no standard definition of “automotive mini wedge type [bulb]
sockets.” Ex. 1002 ¶ 46. And he states that three-digit automotive lamps
can have a variety of bases, including wedge bases for 161-, 168-, and 196-
type lamps. Id. ¶ 47 (citing Exs. 1026 and 1027 as factual support).
Furthermore, the specification, describes the “mini wedge” embodiment as
having dimensions of a “smaller 3[-]digit incandescent bulb.” Ex. 1001,
14:36–37. We are persuaded by Petitioner’s evidence and the statements in
the specification regarding the dimensions of the PCB, that the preamble
construction should be modified to reflect the express recitation of a mini-
wedge type bulb.
Patent Owner also argued at oral argument that the preamble
contemplates that the LED light bulb must be as bright as an incandescent
light bulb because of the words “[LED light bulb] adapted for use.”
Tr. 30:20–22 (emphasis added). This argument finds no support either in the
claim or the specification. First, the claim language broadly refers to the use
of the bulb in a specific socket. Ex. 1001, 30:4–5. There is no reference to
either functionality or specifications of brightness. The word “use” alone is
insufficient to require any specific threshold of brightness as the claims
expressly recite the number of LEDs, “at least one light emitting diode.” Id.
30:7–8. Furthermore, the specification broadly describes that there is a
range of brightness levels depending on the color of the bulb, such as hyper-
bright red and super-bright white. See id. at 14:30–35.
Accordingly, we construe the preamble to mean: an LED light bulb
designed to fit into sockets configured to receive a mini-wedge type bulb.
IPR2014-00703
Patent 6,786,625 B2

9
2. “electrical control means”
In our Decision on Institution we adopted Petitioner’s proposed
construction of the term as a means-plus-function term, with the identified
structure being “one or more resistors, or equivalents thereof.” Pet. 18–20
(citing Ex. 1001, 6:11–12, 17–19, 22–24, 28–30; 14:12–14, 46–48; 15:10–
12, 44–46; 16:12–16 (“Resistors 416 and 417 could be replaced with a
single, larger value resistor . . . .”). The function recited in the claims is
“electrical control” as it is the only function that is attributed to the means.
Neither party has expressed any disagreement with the construction of
“electrical control means” that was adopted by the Board. That construction,
therefore, is appropriate also with respect to this Final Decision.
3. “mounted on the printed circuit board”
The words “mounted on” are recited twice in independent claim 30:
“at least one light emitting diode mounted on the upper side of the printed
circuit board” and “electrical control means mounted on the printed circuit
board.” Ex. 1001, 30:7–9, 11–12. Neither party proposed a construction for
the term “mounted on.” But the parties’ application of the term differs in
scope. For example, Petitioner argues that “mounted on” does not require
that both leads of a resistor are connected to a PCB. Tr. 21:3–15. Yet Patent
Owner argues that both leads of the resistor would need to be connected to
the PCB to meet the claim. Tr. 38:21–39:2. On this issue, we agree with
Patent Owner that a resistor “mounted on” the PCB requires at least that
both leads of the resistor are connected to the PCB. This understanding
stems from the ordinary meaning of the term as understood by those of
ordinary skill in the art. First, we note that the ordinary meaning of the word
IPR2014-00703
Patent 6,786,625 B2

10
“mount” is “to fix securely to a support.”
6
The specification confirms this
definition by describing consistently how the LEDs and resistors are
“mounted on” the PCB. See e.g., Ex. 1001, 14:6–9 (LEDs mounted on a
PCB); 14:15–17 (resistors can be thru hole resistors or they can be surface
mounted on the PCB). The diagrams all show that both electrical leads from
these devices are fixed onto the PCB. For example, Figure 37 illustrates
resistor 456 placed flat on the PCB with the leads coupled to it. Ex. 1001,
Fig. 37. Figure 38 also shows the profile of the PCB illustrating LEDs 421
and resistors 456 and 457 connected to the PCB. Other embodiments of the
’625 patent also confirm this understanding. For example, Figures 7 and 8
depict one embodiment in which one lead of control circuitry 84 is
connected to the LED, with control circuitry 84 suspended in the body cavity
to allow for air cooling. Ex. 1001, 9:37–42. Additionally, the second lead
of control circuitry 84 is neither shown nor described as being connected to
the PCB. Another, similar, embodiment is shown in Figure 18, and is
described as “suspended control circuitry.” Id. at 5:42–44. These
descriptions lead us to conclude that the applicant used the term “mounted
on the printed circuit board” to mean an installation of a device with its
electrical connections, or leads, affixed to the PCB, and wherein the control
circuitry is not suspended in a cavity. Compare this with a connection where
at least one lead of the control circuitry is not affixed to a PCB, a connection
described as suspended—not “mounted on.” Accordingly, guided by the use
of the term “mounted on” in the specification and the term’s ordinary
meaning as understood by a person of ordinary skill in the art, we conclude

6
See mount definition, THE AMERICAN HERITAGE COLLEGE DICTIONARY,
891 (Houghton Mifflin 3
rd
ed. 1997) (Ex. 3001).
IPR2014-00703
Patent 6,786,625 B2

11
that “mounted on the printed circuit board” means that, at a minimum, all of
the electrical leads of the electrical control means must be affixed to the
PCB.
B. RELEVANT LEGAL PRINCIPLES
To prevail in its challenges to the patentability of claims, Petitioner
must establish facts supporting its challenges by a preponderance of the
evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable
under 35 U.S.C. § 103(a) if the differences between the claimed subject
matter and the prior art are such that the subject matter, as a whole, would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the
scope and content of the prior art; (2) any differences between the claimed
subject matter and the prior art; (3) the level of skill in the art; and (4) where
in evidence, so-called secondary considerations including commercial
success, long-felt but unsolved needs, failure of others, and unexpected
results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (“the Graham
factors”). The level of ordinary skill in the art usually is evidenced by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
For an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.”
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into
IPR2014-00703
Patent 6,786,625 B2

12
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). That is because
an obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418; see also Translogic Tech., 504 F.3d
at 1262.
C. LEVEL OF ORDINARY SKILL IN THE ART
Petitioner proposes a particular level of ordinary skill in the art to
which Patent Owner disagrees, without providing any evidence supporting
such disagreement. Ex. 1002 ¶ 41; PO Resp. 18. In light of the evidence
before us, we find that the references themselves represent the level of
ordinary skill in the art, and that we need not explicate it further. See
Okajima, 261 F.3d at 1355; GPAC, 57 F.3d at 1579 (finding that the Board
of Patent Appeals and Interferences did not err in concluding that the level
of ordinary skill was best determined by the references of record); Oelrich,
579 F.2d at 91 (“[T]he PTO usually must evaluate . . . the level of ordinary
skill solely on the cold words of the literature.”).
D. LAFOREST
Petitioner has asserted that Laforest’s teachings combined with the
knowledge of a person of ordinary skill in the art account for all the features
of claims 30 and 31 of the ’625 patent, and that one of ordinary skill in the
art would have had sufficient motivation to modify Laforest as asserted.
IPR2014-00703
Patent 6,786,625 B2

13
1. Overview of Laforest (Exhibit 1018)
Laforest is directed to an LED connector support for use in a
dashboard of an automobile. Ex. 1018, 2:1–2.
7
The connector support
comprises a plate of an electrically-insulating material onto which is
mounted an LED. Id. at 2:3. Figure 1, reproduced below, illustrates one
embodiment of the LED connector support.

Figure 1, reproduced above, shows LED 20 and resistor 30 that are
soldered to connector support 10. Id. at 3:19–20. Small support plate 11
comprises rectangular main body 12. Id. at 3:26–27. One face of small
support plate 11 has electrically-conductive elements. Id. at 3:21–23.
Figure 2, reproduced below, depicts electrically-conductive elements 15 and
16.

7
Identified page numbers in Laforest refer to the page number provided in
the header of the reference.
IPR2014-00703
Patent 6,786,625 B2

14

According to Figure 2, reproduced above, LED 20 is soldered to
electrically-conductive strip 14, and one end of resistor 30 is soldered to
electrically-conductive strip 14 with the other end soldered to strip 15, so
that LED 20 and resistor 30 are connected in series. See id. at 4:8–13.
Petitioner asserts that Laforest discloses each limitation of claims 30
and 31. Pet. 27–30. Specifically, Petitioner provides an annotated diagram
of Laforest illustrating how Laforest teaches the claim elements. Id. at 27.
That diagram is reproduced below for ease of reference.
IPR2014-00703
Patent 6,786,625 B2

15

The diagram above shows Petitioner-annotated Figures 2 and 3 of
Laforest identifying that LED 20 teaches the “at least one LED,” resistor 30
teaches the “electrical control means,”
8
connector support 10 teaches the
“bulb body,” and electrically-conductive traces 17 and 18 teach the “at least
one pair of electrical conductors.” See Pet. 27.
2. Reasons to Modify Laforest
Laforest contemplates the use of connector support 10 for an
automobile dashboard. Ex. 1018, 2:1–2. Nevertheless, Laforest does not
expressly disclose that the wedge socket onto which connector support 10
fits is a mini-wedge type socket. Petitioner asserts that it would have been
obvious for a person of ordinary skill in the art to modify Laforest’s socket

8
There is no dispute that the “electrical control means” in Laforest are
“mounted on” the PCB.
IPR2014-00703
Patent 6,786,625 B2

16
to be configured in the required dimensions. Pet. 32–33. It is clear from
Laforest that fitting LED bulbs to standard sockets was a known problem.
See Ex. 1018, 1:23–25 (“the Applicant has posed the problem of designing a
connector support for an LED compatible with standard sockets”). Although
the solution provided by Laforest involves ensuring also the correct polarity
of an LED, thereby making the body of the support asymmetrical, Laforest
teaches the overall motivation of replacing conventional lamps with LEDs
because of advantages of style, reliability, and reduction of heat dissipation.
Id. at 1:78. It further provides that fitting the LED lamps in standard
sockets in automobiles was desirable because of the high cost of providing
special LED-adapted sockets. Id. at 1:14–16.
For additional evidence of motivation, Petitioner relies on U.S. Patent
No. 6,342,762 B1, issued to Young et al. (“Young,” Ex. 1024). Pet. 33–34.
Young is titled “AMBER VEHICLE LAMP,” and describes incandescent
light bulbs. See Ex. 1024 1:14–17, 2:14–15. The relevant teaching of
Young pertains to the description of the base suitable for the vehicle lamp.
In particular, Young states that: “A base is attached to the press seal region
to provide a convenient mechanical coupling and electrical connection for
the bulb. Several base designs are known. The particular choice of the base
design is felt to be [a] matter of design choice.” Id. at 2:21–25. Petitioner
further asserts that one of Young’s embodiments discloses a mini-wedge
lamp. See Pet. 33 (citing to Ex. 1024, Figs. 1–3, Ex. 1002 ¶ 68).
Dr. Shackle supports Petitioner’s assertion by pointing out that Young’s
Figure 3 discloses a lamp with a W2.1x9.2d base, i.e., a mini-wedge lamp.
Ex. 1002 ¶ 69. Thus, motivated by either Laforest or Young, or both,
IPR2014-00703
Patent 6,786,625 B2

17
Petitioner argues that a person of ordinary skill in the art would modify the
base of Laforest as the claim requires. Pet. 33.
3. Patent Owner’s Arguments
In its Preliminary Response, Patent Owner argued that there are
insufficient reasons to modify Laforest. In the Patent Owner response
submitted pursuant to 37 C.F.R. § 42.120, Patent Owner proffers the same
arguments, but with supporting evidence: declaration testimony of Bruce
Wesson, the named inventor of the ’625 patent. See Ex. 2001. For the
reasons that follow, we conclude that Laforest teaches all the limitations
recited in the body of the claim, and that a person of ordinary skill in the art
would have had adequate reason to modify those teachings to meet the
preamble of the claim.
a. Physical Characteristics of Laforest’s Bulb
Patent Owner argues that Laforest’s bulb is not for use in automotive
mini-wedge type bulb sockets because the disclosed bulb is smaller than a
mini-wedge type bulb. PO Resp. 12. According to Patent Owner, Laforest’s
connector is only 2.5 mm wide, corresponding to a micro wedge socket size.
Id. This argument is unpersuasive because it is directed to distinguishing
Laforest individually, and not in combination with the teachings and reasons
for the modification of the socket as asserted by Petitioner. That is,
Petitioner has asserted that the Laforest bulb would render obvious the
claims because it would have been obvious to modify the base, such that the
bulb would fit into a standard mini-wedge socket. Pet. 33–34. As discussed
above, Petitioner presented evidence in Laforest and in Young that such a
motivation was known in the art at the time of the invention. Therefore, an
argument that Laforest’s bulb or socket is smaller than a mini-wedge type
IPR2014-00703
Patent 6,786,625 B2

18
bulb is not persuasive. For it is not Laforest’s socket size or bulb size that is
relevant to the claim, but, rather, the modified Laforest bulb, as asserted,
which Petitioner contends would render the claims obvious. See In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”).
Furthermore, we do not find persuasive Patent Owner’s arguments
regarding the size of Laforest’s bulb, because Laforest does not disclose any
dimensions for the disclosed embodiments. Patent Owner’s Declarant
appears to have measured the drawing in Figure 1 of Laforest to arrive at the
conclusion of the dimensions of the bulb. See Ex. 2001, 10 (“It measures
however in my copy 0.35” and the base measures 0.2000.””). There is no
evidence, however, that Laforest’s figures are drawn to scale.
b. Modifications to the Automobile
Patent Owner also argues that plugging the Laforest bulb into a
standard automotive mini-wedge type bulb socket would require a
modification of the automobile. PO Resp. 12. In particular, Patent Owner’s
Declarant states that the vehicle’s dash-socket-mounting hole in Laforest
would have to be modified by removing the socket, cutting an opening,
checking for clearance, re-installing the socket, and inserting the LED.
Ex. 2001, 10. The reasons for the alleged modification are that Laforest’s
resistor 30 causes the bulb body to be asymmetrical, requiring a slot 74, as
shown in Figure 4 of Laforest. Id. Also, the contacts shown in Laforest are
wired on the same side, instead of one on each side. Id. at 11. These
arguments are insufficient to rebut the evidence of record that a person of
ordinary skill in the art would have been motivated to modify the base of
IPR2014-00703
Patent 6,786,625 B2

19
Laforest so the bulb fits into a standard automotive mini-wedge type socket.
In particular, the testimony of Mr. Wesson is not persuasive because it does
not explain how the alleged modifications—removing the socket, cutting an
opening, etc.—present any complexity that would have been uniquely
challenging or beyond the level of an ordinarily skilled artisan. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Additionally, the modification of Laforest’s base has been shown to
implement a known modification—an improvement of LED light bulbs to fit
a standard socket, including a mini-wedge socket. This improvement was
applied to other bulbs in the prior art as discussed in Young, and “we do not
ignore the modifications that one skilled in the art would make to a device
borrowed from the prior art.” In re Icon Health and Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (citing Optivus Tech., Inc. v. Ion Beam Apps.,
S.A., 469 F.3d 978, 989–90 (Fed. Cir. 2006)). In particular, we also
recognize that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill
. . . . [A] court must ask whether the improvement is more than
the predictable use of prior[-]art elements according to their
established functions.

KSR, 550 U.S. at 417.
With a modified base so the bulb fits into a standard mini-wedge type
socket, the modified Laforest bulb would render obvious the claims,
regardless of whether that modified bulb may not fit perfectly into Laforest’s
unmodified socket.
IPR2014-00703
Patent 6,786,625 B2

20
c. Alleged Inoperability
Whether an alleged modification would have been obvious also
depends on whether that modification would render the prior art inoperable
for its intended purpose. See In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed.
Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (“a
proposed modification [is] inappropriate for an obviousness inquiry when
the modification rendered the prior art reference inoperable for its intended
purpose”). Patent Owner argues that the alleged modification of Laforest
would be “likely inoperable” because the heat generated by resistor 30
would “likely cause the LED to fail after a short period of time.” PO
Resp. 13. According to Mr. Wesson, “there are no means [in Laforest] for
dissipating the heat generated by this resistor.” Ex. 2001, 13. We are not
persuaded by these arguments.
First, the claims do not recite any particular operational characteristic,
such as brightness, durability, or quality of service of the claimed LED bulb.
As we discussed above in our claim construction analysis of the preamble
limitation, there is no claim requirement of any specific brightness. See
supra, Section II.A.1. Likewise, being able to fit into a mini-wedge type
socket does not limit the claims to a particularly durable bulb. Indeed, the
claims make no mention of any improvements or operational values for the
electronic control means such that the claim requires a light bulb with any
specific duration. That is, alleging that heat dissipation is a particular
characteristic of the claimed LED bulb has no support in the claim language.
Furthermore, we find the testimony of Mr. Wesson in this regard
speculative. The statement that the modified Laforest bulb would “likely”
be inoperable is tentative, at best. Also, Mr. Wesson did not perform any
IPR2014-00703
Patent 6,786,625 B2

21
testing to support the theoretical explanation that the resulting LED bulb
would flicker, degrade, and burn out prematurely. See 2001, 12; Tr. 28:22–
29:15. Indeed, Laforest does not disclose any specific values of the
disclosed LED or resistor components, as acknowledged by Patent Owner’s
counsel during oral argument. Tr. 29:4–8. Mr. Wesson’s testimony is too
tentative to persuade us that Laforest’s bulb would be inoperable if the base
were modified to fit a mini-wedge type socket. We also give less weight to
Mr. Wesson’s testimony in support of Patent Owner’s “inoperability”
argument because Mr. Wesson’s testimony is based on a “heat dissipation”
technique disclosed in the specification, but not claimed. See Ex. 2001, 13
(comparing the bulb of Laforest with the embodiments of the ’625 patent by
stating that “there are no means for dissipating the heat generated by this
resistor”).
4. Conclusions Regarding the Laforest Ground
Based on the foregoing, we determine that Petitioner has presented
sufficient evidence that claims 30 and 31 would have been obvious over
Laforest. But we do not reach yet the final conclusion of obviousness,
because Patent Owner has presented arguments regarding secondary indicia
of nonobviousness, which we address below.
E. SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS
As Patent Owner correctly asserts, we must consider evidence
presented concerning reasons why the claimed invention may not have been
obvious, i.e., secondary considerations of nonobviousness. See Graham,
383 U.S. at 17–18 (secondary considerations include commercial success,
long-felt but unsolved needs, failure of others, and unexpected results).
IPR2014-00703
Patent 6,786,625 B2

22
Patent Owner has raised arguments bearing on commercial success and
copying by others. PO Resp. 16–18.
1. Commercial Success
Regarding commercial success, this factor “may have relevancy” to
the overall obviousness determination (Graham, 383 U.S. at 18), but a nexus
must exist between the commercial success and the claimed invention.
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006)
(“Evidence of commercial success . . . is only significant if there is a nexus
between the claimed invention and the commercial success.”). The Patent
Owner argues that it has sold LED bulbs “adapted for use in standard
automotive mini wedge type bulb sockets” since 2002. PO Resp. 16. Mr.
Wesson avers that the LED light bulb “claimed in claims 30 and 31”—the
patented 194 LED bulb—is shown in Exhibit 2003. Ex. 2001, 2. It is not
clear from the photograph shown in Exhibit 2003 whether all the claim
elements are present. Nevertheless, Patent Owner alleges that it has sold
over 500,000 “patented” 194 LED bulbs, while selling only 24,903 of
“cheaper” 194 LED light bulbs. Ex. 2001, 2; PO Resp. 16. The reason for
the higher sales of the “patented” 194 LED bulbs is stated as follows,
I believe that this is because the patented design allows more
LEDs to be used in the bulbs, allowing them to be brighter and
thus more desirable to our customers, because the bulbs are
more robust, and more compact (due to mounting the resistors
on the PCB, which can occur because the PCB acts as a heat
sink as explained in the [’]625 patent).
Ex. 2001, 2–3.
The explanation for the sales of the “patented” 194 LED bulb,
provided by Mr. Wesson, does not amount to a sufficient nexus to the
claimed invention. The claims do not recite robustness, brighter lighting, or
IPR2014-00703
Patent 6,786,625 B2

23
heat sink technology. Indeed, the claims do not require any particular
number of LEDs to be mounted on the PCB, nor do they recite a feature of
the mounting that allows for “more LEDs” to be used in the bulbs.
Likewise, as discussed previously, the claims neither mention nor require
any particular brightness. Finally, although there may be some argument
that the compactness of the bulb may be due to the claimed body of the bulb,
the dimensions of the body of the bulb are constrained by the claim only to
the extent the bulb is designed to fit the socket of a standard mini-wedge
socket. There is neither a robustness nor compactness design disclosed in
the specification or recited in the claims.
Furthermore, we are not persuaded that the gross sales averred by
Mr. Wesson amount to a showing of commercial success. Patent Owner has
stated that the company grossed around $2.9 million in sales revenue. PO
Resp. 7, 16 (citing Ex. 2001, 2). Petitioner challenges Patent Owner’s gross
sales as unsubstantiated and weak evidence that fails to show Patent
Owner’s market share. Reply 1213. We agree with Petitioner that, in this
instance, the evidence of gross sales alone is insufficient to show
commercial success. Patent Owner has not shown its share of the mini-
wedge bulb market for automotive use, or of any market, for that matter.
There is not even an attempt to show that the proffered sales are substantial
for the Patent Owner. Consequently, we cannot gauge whether the proffered
sales show commercial success of the allegedly covered product. See In re
Baxter Travenol, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on
numbers of units sold is insufficient to establish commercial success.”); see
also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Declining to find
evidence of commercial success because ‘[a]though [the inventor’s] affidavit
IPR2014-00703
Patent 6,786,625 B2

24
certainly indicates that many units have been sold, it provides no indication
of whether this represents a substantial quantity in this market.’”).
Accordingly, because we find no nexus and lack of evidence of
market share, we are not persuaded that the evidence presented amounts to a
sufficient showing of commercial success attributable to the claimed
invention.
2. Copying
Patent Owner also argues that Petitioner copied the claimed invention.
PO Resp. 16. This is a bare allegation, however, unsupported by evidence.
For example, offering as proof pictures of the allegedly infringing product
and a bare assertion that it is a copy does not amount to proof of copying.
Copying, as objective evidence of nonobviousness, requires evidence of
effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). No such evidence is found in the
record.
Accordingly, we are not persuaded by Patent Owner’s argument of
copying as indicia of nonobviousness.
F. PATENT OWNER’S REQUEST OF PRESUMPTION OF NONOBVIOUSNESS
Patent Owner’s Response describes a discovery dispute with
Petitioner regarding interrogatories requesting information relating to
commercial success. PO Resp. 17–18. In particular, Patent Owner urges the
Board to presume that the interrogatory responses Patent Owner could not
obtain, and did not present in this record, are “sufficient to overcome any
alleged obviousness of claims 30 and 31.” Id. The argument has neither
basis in the law nor support of fact. First, if the parties had a dispute
IPR2014-00703
Patent 6,786,625 B2

25
concerning whether the information sought via interrogatories is routine
discovery under 37 C.F.R. § 42.51(b)(1), it was incumbent upon the party
seeking the discovery to request a conference call with the Board to seek
authorization to file either a motion for additional discovery under 37 C.F.R.
§ 42.51(b)(2) or a motion to compel under § 42.52. Petitioner asserts that it
objected to the interrogatories relating to allegedly infringing sales.
Reply 13. Patent Owner has not asked for a ruling on that objection by
requesting, as stated above, a motion to compel. Furthermore, there is no
rule or authority cited by Patent Owner that would persuade us to presume
that information not produced in this proceeding, regardless of whether the
proper procedures were followed, would be sufficient to prove
nonobviousness. The request for a presumption of nonobviousness is
denied.
G. ALVAREZ AND HOROWITZ GROUNDS
Petitioner asserts that Alvarez and Horowitz each teaches every
limitation in the body of the challenged claims, including a resistor mounted
on the PCB. Pet. 42–43, 51–52. Petitioner argues that the teachings in those
references would have been modified by a person of ordinary skill in the art
to meet the preamble of the challenged claims. Pet. 41–57. We discuss the
grounds based on Alvarez and Horowitz together because our analysis of the
issues presented concerning these grounds is the same.
1. Overview of Alvarez (Ex. 1020)
Alvarez is titled “SURFACE MOUNTED LED LAMP.” Ex. 1020,
[54]. Alvarez describes the need for LED lights as replacement for
incandescent lamps in automobiles. Id. at 1:20–37. In particular, Alvarez
describes an LED lamp with a base identical to the prior art incandescent
IPR2014-00703
Patent 6,786,625 B2

26
light structures so the LED lamp can replace conventional lamps without
modification to the socket. Id. at 4:12–22. Petitioner relies on Figure 3 of
Alvarez, reproduced below, to argue that Alvarez teaches all the limitations
of the claims.

Figure 3, reproduced above, depicts surface mount LED 11, mounted
onto printed circuit board 20’ and installed in lamp housing 30. Id. at 3:50–
53. The lamp housing comprises main body 32 and base 34. Id. at 3:54–55.
Electrical leads 48 and 50 are connected to plated through terminal holes 22’
and 24’ on printed circuit board 20. Id. at 3:66–4:1. Electrical leads 48 and
50 extend through the closed end of the housing where axial groove 52
receives the electrical leads and holds them in place on the base for electrical
connection in a lamp socket. Id. at 4:1–11.
IPR2014-00703
Patent 6,786,625 B2

27
In connection with the disclosure on resistors, Petitioner further relies
on the embodiment of Figure 11, reproduced below.

Figure 11, reproduced above, depicts resistor 140 and diode 142
inserted in series between case terminal 130 and plated through terminal
hole 112 in the cap. See id. at 6:59–67.

IPR2014-00703
Patent 6,786,625 B2

28
2. Overview of Horowitz (Ex. 1021)
Horowitz is titled “AFTER MARKET LED TAILLIGHT BULB,”
and is directed to an assembly of LEDs mounted on a single circuit board
and having a compatible plug for use with existing light bulb mounts present
in the vehicle. Ex. 1021, [54], Abstract. Figure 1, reproduced below,
illustrates the LED assembly.

Figure 1, reproduced above, depicts LED assembly 100 with
LEDs 110 arranged in a circular pattern, where each LED is attached to top
side 120 of circuit board 122 through power contacts or wires 132. Id. at
3:43–54. The power contacts or wires 132 of each LED 110 are joined to
one or more electronics components 140, which may include resistors,
capacitors, and wiring. Id. at 3:54–63. Electronic components 140 are
disposed in the recesses of housing members 102, 104. Id. Wires 170,
comprising power lines to LED assembly 100, extend from electronic
component 140 and enter plug member 106 for coupling with slit 176 for
IPR2014-00703
Patent 6,786,625 B2

29
providing contact points that are mated with the female connector of the
vehicle. Id. at 3:64–4:14.
3. Patent Owner’s Arguments
Patent Owner argues that Alvarez and Horowitz both disclose “spaced
away” or “floating” resistors, which are not “mounted on” the PCB, as
required by the claims. PO Resp. 13–14. We determined that the
construction of the claim term “mounted” requires that the leads of the
electrical device are affixed onto the PCB. See supra Section II.A.3. In
Alvarez, Petitioner points to an electrical conductor with electrical leads 48
and 50 or resistor 140 connected between LED 11’ and one of the electrical
leads 48, 50, as disclosing the electrical control means. Pet. 42. And in
Horowitz, Petitioner points to electrical components 140 as disclosing the
limitation-at-issue. Pet. 52. Both of these references, however, teach that
the resistors are installed with the first lead connected to the PCB on which
the LED is mounted, and the second lead is not connected to that PCB or
any other PCB. For example, in Alvarez, the second lead is connected to
axial groove 52 in the body of the lamp (Figure 3) or case terminal 130
(Figure 11). Ex. 1020, 4:10–11, 6:59–67. In Horowitz, the second lead is
connected to slit 176 in the body of the bulb, or the housing. Ex. 1021,
3:64–4:13; Tr. 23:16–23. Neither of these configurations discloses, teaches,
or suggests, that the second lead is connected to the PCB comprising the
recited “bulb body.” In addition, both of these configurations include
resistors that are suspended in a cavity spaced apart from the PCB, similar to
the embodiments described in Figures 7, 8, and 18 of the ’625 patent, which
are distinguishable from the embodiments shown in Figures 34 and 35,
wherein the resistor is mounted on the PCB.
IPR2014-00703
Patent 6,786,625 B2

30
Nevertheless, Petitioner argues in the Reply that Alvarez teaches that
resistors are mounted on a PCB because Alvarez discloses that “resistors
and/or diodes may be inserted in series in a conventional manner between
the surface mount LED and base depending upon the particular power
requirements.” Reply 11 (citing Ex. 1020, 4:7–10). The argument is that
because one “‘conventional manner’ for mounting resistors to a printed
circuit board” is using a surface mounted resistor, Alvarez fully discloses the
“electrical control means” limitation. Reply 11. We are not persuaded by
this argument because it lacks factual support. Also, this disclosure in
Alvarez refers to inserting a resistor in series with the surface mount LED
and the base. The inference we draw from the disclosure is that the
“conventional manner” refers to the method of inserting the disclosed
suspended resistor, not that the suspended resistor may be replaced by a
surface mount resistor. Indeed, Alvarez does not disclose, teach, or suggest
using surface mount resistors in any of the embodiments relied on by
Petitioner. Furthermore, the Petition neither asserts nor explains that
Alvarez would be modified to insert a surface mount resistor, such that one
end would be connected to the LED and the other end would be connected to
the base of the bulb.
The argument Petitioner proffers in the Reply regarding Horowitz
fares no better. Petitioner argues that because Horowitz states that electronic
component and wiring 140 is secured in a confined area, Horowitz,
therefore, teaches “electrical control means mounted to a printed circuit
board.” Reply 12. The disclosure relied on in Horowitz (Ex. 1021, 6:44–
48), at best, teaches that the bulb housing offers a secure and confined area
for electrical component and wiring 140, to protect the component from
IPR2014-00703
Patent 6,786,625 B2

31
water exposure and vibrational damage. The inference we draw from the
disclosure of Horowitz “securing” the component is in the sense of
protecting or making it safe. We do not see how this disclosure can be read
to infer that electrical component 140 is installed differently, such that the
second lead is not connected to the body of the bulb, and instead is
connected to a PCB. The Petition does not explain sufficiently any
modification of Horowitz in this respect. Therefore, we agree with Patent
Owner that Horowitz fails to disclose, teach, or suggest the recited
“electrical control means mounted on a printed circuit board.”
4. Conclusions Regarding the Alvarez and Horowitz Grounds
Based on the foregoing, we determine that Petitioner has not shown
by a preponderance of the evidence that the challenged claims would have
been obvious by either Alvarez or Horowitz.
III. CONCLUSION
After weighing the evidence of obviousness and nonobviousness of
record, on balance, we conclude that the strong evidence of obviousness
over Laforest outweighs the weak evidence of nonobviousness.
Consequently, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 30 and 31 are unpatentable under
35 U.S.C. § 103(a) as obvious over Laforest. Petitioner, however, has not
demonstrated that claims 30 and 31 are unpatentable as obvious over either
Alvarez or Horowitz.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00703
Patent 6,786,625 B2

32
IV. ORDER
Accordingly, it is hereby:
ORDERED that, as set forth in Section III above, claims 30 and 31 of
the ’625 patent have been shown to be unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
IPR2014-00703
Patent 6,786,625 B2

33
PETITIONER:

Eric R. Moran
Paul H. Berghoff
McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
moran@mbhb.com
berghoff@mbhb.com

PATENT OWNER:

Seth Nehrbass
Mackenzie Rodriguez
GARVEY, SMITH, NEHRBASS & NORTH, L.L.C.
SethNehrbass@gsnn.us
mrodriguez@gsnn.us