Seoul Semiconductor Co., Ltd.

Patent Trials and Appeals Board

Oct 22, 2021

IPR2020-00836 (P.T.A.B. Oct. 22, 2021)

Trials@uspto.gov Paper No. 45
571-272-7822 Date: October 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SATCO PRODUCTS, INC.,
Petitioner,
v.
SEOUL SEMICONDUCTOR CO., LTD.,
Patent Owner.

IPR2020-00836
Patent 7,081,722 B1

Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Granting Petitioner’s Motion to Strike
37 C.F.R. § 42.23(b)

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I. INTRODUCTION
This is a Final Written Decision in an inter partes review of claims
1–3, 10–12, 15, 17–19, and 21 (“the challenged claims”) of U.S. Patent No.
7,081,722 B1 (Ex. 1001, “the ’722 patent”). We have jurisdiction under
35 U.S.C. § 6 and enter this Decision pursuant to 35 U.S.C. § 318(a) and 37
C.F.R. § 42.73. For the reasons set forth below, we determine that Satco
Products, Inc. (“Petitioner”) has shown, by a preponderance of the evidence,
that challenged claims 1, 10, 15, 18, and 21 are unpatentable, but has not
shown that challenged claims 2, 3, 11, 12, 17, and 19 are unpatentable. See
35 U.S.C. § 316(e).
Additionally, we grant Petitioner’s Motion to Strike Exhibits.
Paper 38 (“Mot.”).
A. Procedural History
Petitioner filed a Petition requesting an inter partes review of claims
1–3, 10–12, 15, 17–19, and 21 of the ’722 patent. Paper 1 (“Petition” or
“Pet.”). Petitioner supported the Petition with the Declaration of Peter W.
Shackle, Ph.D. (Ex. 1003).
Seoul Semiconductor Co., Ltd. (“Patent Owner”) filed a Preliminary
Response to the Petition. Paper 6 (“Prelim. Resp.”).
On October 26, 2020, pursuant to 35 U.S.C. § 314(a), we instituted
trial to determine whether any challenged claim of the ’722 patent is
unpatentable based on the grounds raised in the Petition. Paper 7 (“Inst.
Dec.”). The following table sets forth those grounds asserted for the
challenged claims:1

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 102 and § 103, effective
March 16, 2013. Because the application from which the ’722 patent issued
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Claims Challenged 35 U.S.C. § Reference(s)
1–3, 10, 15, 19, 21 102/103(a) Chiang2
2, 3 103(a) Chiang, Leung3
11, 12, 18, 21 103(a) Chiang, Hamilton4
17, 18 103(a) Chiang, Hirane5

Patent Owner filed a Patent Owner Response to the Petition. Paper 21
(“PO Resp.”). Patent Owner supported the Patent Owner Response with the
Declaration of Regan Zane, Ph.D. Ex. 2007. Petitioner filed a Reply to the
Patent Owner Response. Paper 30 (“Pet. Reply”). Patent Owner filed a Sur-
reply to Petitioner’s Reply. Paper 31 (“PO Sur-reply”).
Petitioner filed a Motion to Strike Exhibits. Mot. Patent Owner filed
an Opposition to the motion. Paper 40 (“Mot. Opp.”).
On August 4, 2021, the parties presented arguments at an oral hearing.
Paper 39. The hearing transcript has been entered in the record. Paper 43
(“Tr.”).
B. Real Parties-in-Interest
Petitioner identifies Satco Products, Inc., as the real party-in-interest.
Pet. 1. Patent Owner identifies Seoul Semiconductor Co., Ltd. and Seoul
Viosys Co. Ltd. as the real parties-in-interest. Paper 4, 2.

has an effective filing date prior to March 16, 2013, the pre-AIA versions of
§ 102 and § 103 applies.
2 Chiang, US 2004/0233145 A1, published Nov. 25, 2004 (“Chiang,”
Ex. 1004).
3 Leung, US 2003/0164809 A1, published Sept. 4, 2003 (“Leung,”
Ex. 1005).
4 Hamilton et al., Basic Integrated Circuit Engineering, McGraw-Hill, Inc.,
1975 (“Hamilton,” Ex. 1006).
5 Hirane et al., US 5,138,310, issued Aug. 11, 1992 (“Hirane,” Ex. 1007).
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C. Related Proceedings
Petitioner and Patent Owner provide notice that the ’722 patent is at
issue in the following pending federal district court litigation:
Seoul Semiconductor Co., Ltd. v. Satco Products, Inc., No. 2:19-cv-04951
(E.D.N.Y.). Pet. 1; Paper 4, 2.
D. The ’722 Patent
The ’722 patent relates to a method and a circuit for driving a string of
light emitting diodes (“LEDs”) in multiphase. Ex. 1001, 1:7–8. The
Specification describes the method as “driv[ing] a string of LEDs divided
into groups, the groups of LEDs are turned on in sequence as voltage applied
to the string of LEDs gradually increases.” Id. at 1:9–12. The LED groups
are “electrically connected to each other in series, and each group is
separately coupled to a ground.” Id. at 1:41–43. As the power source input
voltage increases, the group immediately downstream from the power source
turns on first, and thereafter the groups downstream from the string are
turned on, in turn, as the input voltage increases. Id. at 1:46–50. Each group
represents one phase of the string. Id. at 1:42–43. “A phase switch is
provided for each group. Each phase switch is coupled between a
corresponding group and the ground.” Id. at 1:51–52.
Figure 1 of the ’722 patent is set forth below:

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Figure 1 “shows a conceptual circuit of a multiphase LED driver of the
present invention.” Id. at 3:4–5. The Specification describes Figure 1 as
depicting a power source electrically connected to a string of LEDs that are
divided into “n” number of groups, wherein “n” represents a positive integer
and reflects the number of the group, or phase, of the driver circuit. Id. at
3:20–25. Each phase switch (PS1, PS2 . . . PSn) is electrically connected to a
corresponding group at one end, and to the ground at the other end. Id. at
3:35–38. There are phase voltages (V1, V2 . . . V3) at the joint points
between the groups and the corresponding phase switches. Id. at 3:38–41.
The Specification describes the phase switch as follows:
The phase switch can be a current limited current sink, a switch,
or a switch connected in series with resistor(s). The phase switch
is a general term to indicate any device that, when turned on,
conducts electrical current. Examples of the phase switch
include, but not limited to, a N-Channel MOSFET, a P-Channel
MOSFET, a NPN bipolar transistor, a PNP bipolar transistor, an
Insulated Gate Bipolar Transistor (IGBT), an analog switch, a
relay, etc. The “off” and “on” of each of the phase switch can be
controlled individually.
Id. at 3:41–50.
The Specification describes the multiphase function of the driver
circuitry as follows:
The multiphase driver circuitry of the present invention
can turn on/off each phase or each group of LEDs successively
at a right power source voltage level. As the voltage of the power
source increases enough to power the first LED group which is
located immediately downstream the power source (Group 1 as
shown in FIG. 1), first phase switch (PS1 as shown in FIG. 1)
conducts and the first LED group is turned on, while this level of
voltage is not high enough to turn on the downstream LED
groups, such as Group 2, Group 3, . . . and Group n as shown in
FIG.1. Note that PS1 can be turned on before, at, or after the
voltage of the power source reaches a level enough to power
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Group 1. The same applies to PS2, PS3, . . . and PSn. As the
voltage of the power source further increases, it reaches a level
enough to power the first and the second LED groups (Group 1
and Group 2), PS2 conducts and the first and second LED groups
are turned on. PS2 can be turned on before, at, or after the
voltage of the power source reaches a level enough to power
Group 1 and Group 2. As the increase in voltage of the power
source continues, eventually all phases or LED groups are turned
on in a sequence from upstream to downstream the string of LED
groups.
Id. at 3:51–4:5. According to the Specification, the method and multiphase
driver circuit of the invention provides the following advantages:
1. Work directly off-line. No magnetic, no energy storage
capacitor, no AC/DC converter is needed.
2. Allow Power Factor Correction if desired.
3. Work with legacy dimmers
4. Allow new multiple dimming capability
5. Under-voltage protection: Natural under-voltage protection by
turning on only the corresponding phases that has enough power
to turn on. The result is slight dimming when under-voltage
condition occurs.
6. Three different method for Over-voltage protections:
constant light with high power dissipation, increasing light with
redundant LED, or reducing light with lowest power dissipation.
7. Over temperature protection.
8. Use the power source period as the fundamental clock for
various timing and flashing patterns.
9. Cost efficient implementation in an Integrated Circuit.
Id. at 6:38–54.
E. Illustrative Claims
Petitioner challenges claims 1–3, 10–12, 15, 17–19, and 21 of the
’722 patent. Claims 1 and 15, reproduced below, are the only independent
claims and are illustrative of the claimed subject matter.
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1. A method for driving light emitting diodes (LEDs) in
multiphase, comprising:
providing a string of LEDs divided into groups, said
groups of LEDs being electrically connected to each
other in series;
providing a power source electrically connected to the
string of LEDs;
separately coupling each of the groups to a ground
through separate conductive paths;
providing a phase switch in each of the separate conduc-
tive paths;
increasing an input voltage from the power source to turn
on the LEDs, group by group in a sequence downstream the string.
Ex. 1001, 14:22–35.

15. A driver circuit for driving light emitting diodes (LEDs) in
multiphase, comprising
a string of LEDs divided into n groups, said n groups of LEDs
being electrically connected to each other in series in a
sequence from group 1 to group n, each group having an
upstream end and a downstream end, and the downstream
end of group m˗1 being electrically connected to the
upstream end of group m, where m is a positive integer
equal to or less than n;
a power source coupled to the upstream end of group 1 to
provide an input voltage;
a plurality of phase switches, each of the phase switches being
coupled to the downstream end of a corresponding group
at one end and coupled to a ground at the other end.
Id. at 15:30–16:4.

II. PATENTABILITY ANALYSIS
A. Principles of Law
To prevail in its challenges to the patentability of all claims of the
’631 patent, Petitioner must demonstrate by a preponderance of the evidence
that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)
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(2019). “In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid. Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (2012) (requiring inter
partes review petitions to identify “with particularity . . . the evidence that
supports the grounds for the challenge to each claim”). That burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
(discussing the burden of proof in inter partes review).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Schering Corp. v. Geneva Pharms, 339 F.3d 1373, 1379
(Fed. Cir. 2003) (quoting Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987)).
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” 35 U.S.C. § 103(a)
(2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “If
a person of ordinary skill in the art can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417.
The question of obviousness is resolved on the basis of underlying
factual determinations including the scope and content of the prior art, any
differences between the claimed subject matter and the prior art, the level of
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ordinary skill in the art, and objective evidence of nonobviousness.6
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “An obviousness
determination requires finding both ‘that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876
F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)).
We analyze Petitioner’s asserted grounds of unpatentability in
accordance with the above-stated principles.
B. Person of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966)); Ryko Mfg. Co. v. Nu-Star, Inc.,
950 F.2d 714, 718 (Fed. Cir. 1991)).
Petitioner asserts that a person of ordinary skill in the art (“POSITA”)
at the time of the invention would have had
a bachelor’s degree in electrical engineering or physics, plus
three years of experience in circuit design and development
related to lighting. Alternatively, a POSITA would have a
master’s degree in electrical engineering or physics, plus two
years of experience in circuit design and development related to
lighting . . . . A person with less education but more relevant
practical experience, depending on the nature of that experience
and degree of exposure to circuit design related to lighting could
also qualify as a POSITA in the field of the ’722 patent.

6 The parties do not assert or rely on objective evidence of nonobviousness
in this case.
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Pet. 5–6 (citing Ex. 1003 ¶¶ 30–38; Ex. 1001, 1:6–14). In the Preliminary
Response, Patent Owner did not address Petitioner’s description of the level
of ordinary skill in the art, or propose its own description.
At the institution stage, we preliminarily adopted Petitioner’s
definition. Inst. Dec. 8. Patent Owner did not address the level of ordinary
skill in the art or provide its own description in its Response.
Accordingly, for this Decision we again adopt Petitioner’s definition,
again recognizing that this level of ordinary skill in the art is reflected in the
prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001) (explaining that specific findings regarding ordinary skill level
are not required “where the prior art itself reflects an appropriate level and a
need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid
State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
We have reviewed the credentials of Petitioner’s declarant, Dr.
Shackle, and Patent Owner’s declarant, Dr. Zane, and consider each of them
to be qualified to provide their opinion on the level of skill in the art and the
knowledge of a person of ordinary skill in the art at the time of the
invention. As discussed in the Consolidated Trial Practice Guide,
An expert witness must be qualified as an expert by knowledge,
skill, experience, training, or education to testify in the form of
an opinion. Fed. R. Evid. 702. There is, however, no
requirement of a perfect match between the expert’s experience
and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594
F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be
a person of ordinary skill in the art in order to testify as an expert
under Rule 702, but rather must be “qualified in the pertinent
art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1363–64 (Fed. Cir. 2008).
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Patent Trial and Appeal Board Consolidated Trial Practice Guide November
2019 (“CTPG”) (available at https://www.uspto.gov/sites/default/files/
documents/tpgnov.pdf), 34.
C. Claim Construction
Having defined the ordinarily skilled artisan, we now turn to claim
construction. The Board applies 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. § 100(b) (2021). Under that standard, claim terms
“are generally given their ordinary and customary meaning” as understood
by a person of ordinary skill in the art at the time of the invention. Phillips
v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
“[W]hile it is true that claims are to be interpreted in light of the
specification . . . , it does not follow that limitations from the specification
may be read into the claims. . . . It is the claims that measure the invention.”
Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988) (emphasis
omitted, citations omitted). Indeed, “when the specification describes the
invention in broad terms, accompanied by specific examples or
embodiments, the claims are generally not restricted to the specific examples
or the preferred embodiments unless that scope was limited during
prosecution.” Kinik Co. v. Int’l Trade Com’n, 362 F.3d 1359, 1364 (Fed.
Cir. 2004).
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Petitioner proposes constructions for two claim terms: “phase switch”
and “phase voltage.” Pet. 6–8. In the Preliminary Response, Patent Owner
disagreed with Petitioner and proposed its own constructions for those terms.
Prelim. Resp. 4–23. At the institution stage, we preliminarily construed both
terms. After institution, only one of those terms, i.e., “phase switch,”
remains in dispute. Additionally, Patent Owner proposes a claim
construction for the term “dimming circuit,” PO Resp. 25, which Petitioner
challenges, Pet. Reply 3–5. Below, we provide constructions for three
terms, “phase voltage,” “phase switch,” and “dimming circuit.”
1. “phase voltage”
The term “phase voltage” appears in challenged claims 2 and 3, each
of which depends from claim 1 and recites: “monitoring a phase voltage of
each group.” Ex. 1001, 14:37, 14:42. Claim 2 additionally recites: “turning
off the phase switch of an upstream group, when the phase voltage of a next
group downstream said upstream group reaches a predetermined value.” Id.
at 14:38–40. Claim 3 additionally recites: “turning off the phase switch of a
group, when the phase voltage of said group reaches a predetermined value.”
Id. at 14:43–44.
Petitioner asserts that the term “phase voltage” refers to “the voltage
at the downstream end of a group of LEDs (that is separately coupled
through a phase switch to ground), i.e., the ‘joint point’ between the LED
group and the next one.” Pet. 8 (citing Ex. 1003 ¶¶ 28–31). Petitioner
supports its proposed construction with the teaching in the ’722 patent that
the string of LEDs are divided into groups and “each of these groups of
LEDs ‘represents one phase’ . . . [and] ‘[t]he voltages at the joint points
between the groups . . . are phase voltage[s] and denoted by V1, V2, . . . Vn,
respectively.” Id. at 7 (citing Ex. 1001, 3:21–23, 3:26, 3:38–41). Petitioner
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also refers to Figures 3–10 of the Specification for support. Id. at 7–8. As
an example, Figure 10 of the ’722 patent is set forth below.

Figure 10 of the ’722 patent “illustrates a four-phase LED driver circuit with
active current control, dimming, and over-voltage protection.” Ex. 1001,
2:36–38. Petitioner asserts that the figure shows the phase voltages are
voltages “at the ‘joint points’ at the downstream ends of groups 1, 2 . . . and
n,[] respectively.” Pet. 7.
In the Preliminary Response, Patent Owner asserted that Petitioner’s
proposed construction “is incorrect, as the term ‘phase voltage’ is not limited
to voltages at ‘joint points’ and also includes the voltage after the last LED
group.” Prelim. Resp. 23.
In the Institution Decision, we noted that both parties appear to have
misapprehended the Specification’s use of the term “joint points.” Inst. Dec.
12. Petitioner referred to “the ‘joint point’ between the LED group and the
next one.” Pet. 8. Patent Owner asserted that there is no “joint point” after
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the last LED group. Prelim. Resp. 23. We disagreed with both positions
based on the description in the Specification that “[t]he voltages at the joint
points between the groups and the corresponding phase switches are phase
voltage and denoted by V1, V2, . . . Vn, respectively.” Inst. Dec. 12–13
(quoting Ex. 1001, 3:38–41). We read that disclosure as describing the joint
points as representing the joint or connection between a group and its
corresponding phase switch, not merely a joint or connection between two
groups. Id. at 13. In other words, a joint point is present in the string of
LED groups where a corresponding phase switch is joined, whether between
two groups or after the final group. Id. Thus, the voltages are “at the joint
points.” Id. (citing Ex. 1001, 3:38). As shown in Figure 10, the voltages
denoted as V1, V2, V3, and V4 occur at the joint points between Groups 1–4
and their corresponding phase switch, and not merely between those groups,
and the last joint point and voltage V4 does not occur between groups. Id.
Therefore, with a proper understanding of “joint points,” we
determined that the Specification provides a definition for the term “phase
voltage” by stating that “[t]he voltages at the joint points between the groups
and the corresponding phase switches are phase voltage and denoted by V1,
V2, . . . Vn, respectively.” Ex. 1001, 3:38–41. Thus, we preliminarily
construed “phase voltage” in claims 2 and 3 consistent with that definition.
In the Patent Owner Response, Patent Owner asserts that it “does not
take issue with the Board’s construction of ‘phase voltage’ in the Institution
Decision as it does not implicate any dispute here.” PO Resp. 3. In the
Reply, Petitioner also does not challenge the Board’s preliminary
determination. See generally Pet. Reply. Having considered the record as a
whole, we see no reason to depart from our preliminary finding.
Accordingly, we find that the Specification defines “phase voltage,” i.e.,
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“[t]he voltages at the joint points between the groups and the corresponding
phase switches are phase voltage and denoted by V1, V2, . . . Vn,
respectively,” Ex. 1001, 3:38–41, wherein a “joint point” is present in the
string of LED groups where a corresponding phase switch is joined, whether
between two groups or after the final group.
2. “phase switch”
Independent claim 1 recites the term “phase switch” and independent
claim 15 recites the term in the plural form, “phase switches.” Ex. 1001,
14:31, 16:1. Petitioner asserts that the term “phase switch” means “‘any
device that, when turned on, conducts electrical current’ such as, but not
limited to, a P-Channel MOSFET.” Pet. 7 (quoting Ex. 1001, 3:43–44). In
support of its proposed construction, Petitioner asserts that the Specification
defines this term in the following passage:
The phase switch can be a current limited current sink, a switch,
or a switch connected in series with resistor(s). The phase switch
is a general term to indicate any device that, when turned on,
conducts electrical current. Examples of the phase switch
include, but not limited to, a N-Channel MOSFET, a P-Channel
MOSFET, a NPN bipolar transistor, a PNP bipolar transistor, an
Insulated Gate Bipolar Transistor (IGBT), an analog switch, a
relay, etc. The ‘off’ and ‘on’ of each of the phase switch can be
controlled individually.
Id. at 6–7 (quoting Ex. 1001, 3:41–50).
In the Preliminary Response, Patent Owner disagreed with
Petitioner’s proposed construction and asserted that Petitioner’s cited
passage from the Specification “merely provides examples of switches.”
Prelim. Resp. 45. According to Patent Owner, the term “phase switch”
should instead be construed more narrowly as “[a] device having on and off
states that determines when to turn on to conduct electrical current.” Id. at 4.
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At the institution stage, we determined that the ’722 patent
Specification passage quoted by Petitioner defines the term “phase switch”
broadly. Inst. Dec. 10 (citing Ex. 1001, 3:41–50). In particular, we found
that Specification passage does not merely provide examples of a phase
switch, but that it also expressly defines the claim term by stating, “[t]he
phase switch is a general term to indicate any device that, when turned on,
conducts electrical current.” Id. (quoting Ex. 1001, 3:43–44) (alteration in
original).
In the Patent Owner Response, Patent Owner challenges that finding
and reiterates its position that “phase switch” should be construed as “a
device having on and off states that determines when to turn on/off to
conduct/stop conducting electrical current.” PO Resp. 4. According to
Patent Owner, “[a] person of ordinary skill in the art (‘POSITA’) would
understand, in light of the specification, that the phase switch itself must also
make the determination of when to turn itself (or its component switch) on
or off.” Id. Patent Owner asserts that recognizing the cited Specification
passage as expressly defining the term “phase switch,” as done in the
Petition and the Board’s Institution Decision, “impermissibly broaden[s] the
claim by reading ‘phase’ out of the term, construing only ‘switch.’” Id. at 4,
17–25.
Patent Owner contends that the claims support its proposed
construction because “the claims require ‘monitoring’ both the ‘phase
voltage’ and ‘input voltage’ and turning off a phase switch according to the
result of that monitoring, i.e., determining when to turn a phase switch off.”
Id. at 4. Patent Owner asserts that the claims do not explicitly recite any
structure to perform the monitoring step. According to Patent Owner, a
skilled artisan would have understood that there must be associated circuitry
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to turn off the phase switch as a result of monitoring the phase voltage. Id.
at 5. In view of that understanding, Patent Owner asserts that the skilled
artisan would have recognized that the Specification “discloses that the
phase switch itself performs this monitoring.” Id. (citing Ex. 2007 ¶¶ 48–
49).
In that regard, Patent Owner asserts that the Specification supports its
proposed construction because “[e]very embodiment of a ‘phase switch’ in
the ’722 Patent includes the means to perform the required determining
when to conduct or not conduct, whether with an Op-Amp in Figures 3-7, or
with an NPN bipolar transistor in Figures 8-12.” Id. at 6–7 (citing Ex. 1001,
6:62–71, 8:58–66, 10:4–7, 10:20–22, 10:34–36, 11:41–50, 12:8–9, 12:34–
36; Ex. 2007 ¶¶ 28–43).
For example, Patent Owner emphasizes the embodiments of Figures 5
and 6 in the Specification to illustrate that “the phase switch includes the
means for monitoring voltage to determine when to turn on/off.” Id. at 7. In
support of that contention, Patent Owner refers to the following passage in
the Specification:
[E]ach PS [phase switch] in this circuit [FIG. 6] monitors its
own phase voltage to determine when to turn itself off while
each PS in the circuit in FIG. 5 monitors the down stream
phase voltage to turn itself off. It is possible for the PS to
monitors both its own phase voltage and the down stream phase
voltage to determine the best turn off moment. Such variation is
included in this embodiment.
Id. at 7 (quoting Ex. 1001, 10:13–18) (emphasis added by Patent Owner,
alterations in original); Ex. 1001, 10:18–19. When citing that passage
relating to Figure 6, Patent Owner also directs us to the Specification
description for Figure 10, which states that “[e]ach phase switch can sense
its own phase voltage to determine when to turn itself off.” PO Resp.
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(quoting Ex. 1001, 12:3–4). According to Patent Owner, a skilled artisan
would have understood that “a ‘phase switch’ is a switch that is in control of
its corresponding phase, and as such, it controls when it turns on and off.”
Id. at 7–8 (citing Ex. 2007 ¶¶ 30, 46–51).
In the Reply, Petitioner reiterates its position that the ’722 patent
defines “phase switch” as “any device that, when turned on conducts
electrical current.” Pet. Reply 1. Petitioner asserts that the phase switches
exemplified with that definition “turn LED phases on/off—each LED
‘group’/‘phase’ has a corresponding switch.” Id.
Petitioner contends also that Patent Owner’s proposed construction
should be rejected because it “asks the Board to import an additional
requirement that the phase switch ‘determine[]’ whether to turn itself
on/off,” which would “violate[] fundamental cannons of claim construction
by attempting to import into the independent claims features that are
allegedly found in dependent claims and the specification.” Id. at 1–2 (first
alteration in original).
Additionally, Petitioner asserts that Patent Owner’s proposed
construction is “improperly narrow because it diverges from the patent’s
own definition and its examples.” Id. at 3. In particular, Petitioner contends
that Patent Owner’s reliance on certain embodiments in the Specification
“ignores the patent’s non-limiting list of phase switches, which includes
transistors, relays, and analog switches.” Id. at 2 (citing Ex. 1001, 3:41–50).
According to Petitioner, “[t]hese components turn on/off based on external
excitation . . . without ‘determining’ anything in isolation.” Id. For
example, Petitioner asserts that a “relay” conducts current when a separate
current is passed through a control winding, and an analog switch turns
on/off, e.g., when a person flips the switch. Id. at 3. Similarly, Petitioner
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contends that a transistor, alone, does not have a means for determining
when to conduct or not conduct. Id. at 2. Petitioner notes that a number of
the embodiments relied upon by Patent Owner utilize NPN transistors. Id.
(citing PO Resp. 6–10). According to Petitioner, Patent Owner admits “to
perform the ‘determining,’ the phase switch requires ‘an NPN transistor and
a resistor network,’” as depicted in Figures 8 and 10–12. Id. at 2–3 (citing
PO Resp. 12–13) (emphasis added). Petitioner asserts that the phase
switches in Figure 9, however, “consist only of individual transistors, which
conduct current based on circuit conditions, without ‘determining’
anything.” Id. at 3 (citing Ex. 1040, 39:8–14, 40:8–47:23) (Zane
deposition). Based on that example, Petitioner asserts that the Specification
does not support narrowing the definition of “phase switch” as Patent Owner
argues. Id. at 2–3.
In its Sur-reply, Patent Owner begins by asserting that Petitioner relies
on lexicography for its proposed construction of the term “phase switch”
without demonstrating the required “‘exacting’ standards with a ‘clearly set
forth [] definition’ and a ‘clearly express[ed] intent to define the term.” PO
Sur-reply 1 (quoting Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
1371 (Fed. Cir. 2014)) (alterations in original). Patent Owner asserts also
that even if the Specification description of “phase switch” is considered to
be “definitional, it is only a partial definition that sets forth an open-ended
list of potential switch structures.” Id. (emphasis omitted).
According to Patent Owner, a person of ordinary skill in the art would
have recognized that description is incomplete, as “it says nothing about the
‘phase.’” Id. Patent Owner asserts again that the skilled artisan would have
understood from the Specification that the phase switch “must determine
when to turn itself on or off so that it controls its phase.” Id. at 1–2. Patent
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Owner asserts also that its proposed construction is based on an implicit
definition in the Specification because “every disclosed embodiment shows
that phase switches determine when to turn on and off.” Id. at 2. To that
point, Patent Owner asserts that Petitioner’s argument to the contrary
mischaracterizes Patent Owner’s position. Id. at 4. Patent Owner explains
that, in the Response, it asserts that “Figures 8 and 9 use only an NPN
transistor and a resistor network for the phase switch, with the transistor
accomplishing the functions of both the FET and the Op Amp.” Id.
(quoting PO Resp. 12–13). Patent Owner refers also to the Specification
description that “FIG. 8 shows a circuit using the same principle of the
circuit in FIG. 3, but the Op-Amp function is designed using NPN bipolar
transistors (Q).” Id. at 3 (quoting Ex. 1001, 10:34–37) (emphasis omitted).
According to Patent Owner, “[t]he ‘Op-Amp function’ is the on/off
determination done by the NPN transistors in a particular configuration.” Id.
at 3–4 (citing PO Resp. 6–12).
We have considered the evidence and the arguments raised by both
parties. Based on the record, as a whole, we determine that Petitioner’s
position is better supported. As explained by the Federal Circuit, in a case
relied upon by Petitioner, “[w]hen a patentee explicitly defines a claim term
in the patent specification, the patentee’s definition controls.” Martek
Biosciences v. Nutrinova, 579 F.3d 1363, 1380 (Fed. Cir. 2009). Here,
Figure 1, reproduced above in Section I.D., illustrates a conceptual circuit of
a multiphase LED driver of the invention. Ex. 1001, Fig. 1, 3:4–5.
Referring to that figure, the Specification describes elements of the driver
circuit. For the phase switches, the Specification states,
There [are] provided phase switches PS1, PS2 . . . PSn, in the
LED driver circuit. Each of the phase switches is electrically
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connected to a corresponding group at one end and to the ground
at the other end. The voltages at the joint points between the
groups and the corresponding phase switches are phase voltage
and denoted by V1, V2, . . . Vn, respectively. The phase switch
can be a current limited current sink, a switch, or a switch
connected in series with resistor(s). The phase switch is a general
term to indicate any device that, when turned on, conducts
electrical current. Examples of the phase switch include, but not
limited to, a N-Channel MOSFET, a P-Channel MOSFET, a
NPN bipolar transistor, a PNP bipolar transistor, an Insulated
Gate Bipolar Transistor (IGBT), an analog switch, a relay, etc.
The “off” and “on” of each of the phase switch can be controlled
individually.
Id. at 3:35–50. We find that passage contains an explicit definition for the
term phase switch, i.e., “The phase switch is a general term to indicate any
device that, when turned on, conducts electrical current.” Id. at 3:43–44
(emphasis added). Further, by characterizing “[t]he phase switch” as a
“general term to indicate any device that, when turned on, conducts
electrical current,” we find that the Specification deliberately defines the
phase switch broadly to encompass “any” such device. Id. (emphases
added).
Consistent with that broad definition of “[t]he phase switch,” the
Specification thereafter discloses exemplary devices that are considered to
be phase switches for purposes of the invention, by stating “[e]xamples of
the phase switch include, but [are] not limited to, a N-Channel MOSFET, a
P-Channel MOSFET, a NPN bipolar transistor, a PNP bipolar transistor, an
Insulated Gate Bipolar Transistor (IGBT), an analog switch, a relay, etc.”
Id. at 3:45–48 (emphases added). We understand the Specification to be
indicating examples of phase switches for purposes of the disclosed LED
driver circuit. Further, the Specification explicitly states that the examples
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are non-limiting and indicates that the listing is open-ended by ending the
list with “etc.”
We disagree with Patent Owner’s assertion that recognizing the
above-quoted Specification passage as expressly defining the term phase
switch “impermissibly broaden[s] the claim by reading ‘phase out of the
term, construing only ‘switch.’” PO Resp. 4, 17–25. First, we have not
construed only the term “switch,” but have determined instead that the
Specification itself defines “phase switch.” Further, the term “phase switch”
itself provides its context, i.e., it is a switch for a phase. It is apparent that
the term phase is used as a denominal adjective, i.e., an adjective derived
from the noun “phase.” As such, the term “phase” modifies the term
“switch.” Thus, when the Specification explicitly defines “the phase
switch,” we find that a person of ordinary skill in the art would have
understood that it refers not to any switch, but to a switch for a phase.7
We acknowledge Patent Owner’s contention that “phase switch”
should be construed as “a device having on and off states that determines
when to turn on/off to conduct/stop conducting electrical current.” PO Resp.
4. However, we find that Patent Owner has not demonstrated persuasively
that we should so limit the definition set forth in the Specification. In
particular, we agree with Petitioner that Patent Owner’s proposed
construction involves importing an element of the dependent claims into the
independent claim. Specifically, Patent Owner asserts that “the claims

7 We note that the Specification explains that the “string of LEDs is divided
into groups,” wherein “[o]ne group represents one phase of the string,” and
“[a] phase switch is provided for each group.” Id. at 1:9–12, 42–43, 51–52.
In other words, as the parties have acknowledged, a “phase” refers to a
“group.” See, e.g., PO Resp. 23, Pet. Reply 1.
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require ‘monitoring’ both the ‘phase voltage’ and ‘input voltage’ and turning
off a phase switch according to the result of that monitoring, i.e.,
determining when to turn a phase switch off.” Id. However, the method of
independent claim 1 does not recite a monitoring step. Rather, only certain
dependent claims recite “monitoring a phase voltage” or “monitoring an
input voltage.” See, e.g., dependent claims 2 and 4. Petitioner correctly
refers to Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004) in this regard: “As this court has frequently stated, the presence of a
dependent claim that adds a particular limitation raises a presumption that
the limitation in question is not found in the independent claim.” Id. Patent
Owner has not demonstrated, nor do we find, circumstances present in this
case that would rebut that presumption.
Further, the dependent claims reciting a monitoring step do not
require the phase switch to perform such monitoring. Indeed, as
acknowledged by Patent Owner, those claims do not recite what the means
for the monitoring step is. And we decline to supply or otherwise limit such
means based upon the Specification disclosure of preferred embodiments or
Patent Owner’s discussion of them. At most, that discussion exemplifies the
breadth of the phase switch, in that it may comprise additional components
or attributes, such as specific embodiments wherein the “phase switch can
sense its own phase voltage to determine when to turn itself off.” Ex. 1001,
12:3–5 (describing a characteristic of the phase switch in the embodiment
illustrated in Figure 9). As the Federal Circuit has explained, “when the
specification describes the invention in broad terms, accompanied by
specific examples or embodiments, the claims are generally not restricted to
the specific examples or the preferred embodiments unless that scope was
limited during prosecution.” Kinik, 362 F.3d at 1365. We do not see that
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Patent Owner has established, on this record, any such limitation of the
scope of the monitoring means during prosecution.
Accordingly, based on the record as a whole, we find that the
Specification defines “the phase switch” broadly as “a general term to
indicate any device that, when turned on, conducts electrical current.” Ex.
1001, 3:43–44. Further, we find that Patent Owner has not persuasively
demonstrated that we should construe that term to narrow the explicit
definition set forth in the Specification because the claims do not expressly
require the phase switch to perform any monitoring or determining step, and
Patent Owner points to no clear disavowal of claim scope in the
Specification or the prosecution history.
3. “dimming circuit”
Challenged claim 21 recites, “The driver circuit of claim 15, further
comprising a dimming circuit.” Ex. 1001, 16:22–23. Petitioner did not
propose a construction for the term “dimming circuit” in the Petition, and we
did not provide a preliminary construction for this term in the Institution
Decision, as it was not in dispute at that stage of the proceeding.
In the Patent Owner Response, Patent Owner proposes that we
construe the term “dimming circuit” to mean “a circuit, separate and distinct
from the phase switches, that provides a dimming effect.” PO Resp. 25.
Patent Owner asserts that, as claimed, the phase switches are a component of
the driver circuit of claim 15, and the “‘dimming circuit’ is an additional
required component of the ‘driver circuit’ and a separate element from the
‘phase switches,’ and is presumptively a physically distinct component.” Id.
at 26. According to Patent Owner and Dr. Zane, a person of ordinary skill in
the art would have understood that “the ‘phase switches’ and the ‘dimming
circuit’ cannot be physically coextensive.” Id. (citing Ex. 2007 ¶¶ 55–56).
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Patent Owner asserts also that the Specification’s disclosure of the
dimming circuit in Figures 3–4, 6–10, and 12 supports its proposed
construction. Id. at 26–32. According to Patent Owner, the Specification
discloses “two kinds of circuits for dimming LEDs: circuits that adjust the
phase current limit level set in each phase switch, and circuits that adjust the
voltage at which the phase switches turn themselves on and off. Id. at 26–27
(citing Ex. 1001, 5:48–53, 4:27–31; Ex. 2003, 139:5–140:8 (Shackle
Deposition)). Patent Owner contends that, although the circuitry adjusts the
appropriate parameters of the phase switches according to one of those
methods, the “dimming circuitry is separate and distinct from the phase
switches.” Id. at 27.
Petitioner disagrees with Patent Owner and asserts that the
Specification “describes circuitry that creates a ‘dimming effect’ by simply
turning off LED groups.” Pet. Reply 3–4 (citing Ex. 1001, 4:27–31, 5:26–
27, 5:48–56, 8:46–52). According to Petitioner, because the phase switches
are part of that on/off circuitry, the phase switches need not be “separate and
distinct” from the dimming circuit. Id. at 4. Petitioner asserts that Patent
Owner’s expert, Dr. Zane, agreed to that point when he testified that “R9 is a
variable resistor, [which] provides the dimming function for what we’ve
described as dimming circuit 2. It operates in conjunction with the
remaining sense resistors and the phase switches and the other circuitry.” Id.
(quoting Ex. 1040, 28:11–37:17).
Petitioner also challenges Patent Owner’s contention that there is a
“presumption that separate claim elements claim physically separate and
distinct components.” Id. at 4 (quoting PO Resp. 25). Petitioner counters
that contention by referring to case law and a Board decision recognizing
that “[t]he use of two terms in a claim requires that they connote different
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meanings, not that they necessarily refer to two different structures.” Id.
(quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324,
1333 n.3 (Fed. Cir. 2006)) (emphasis omitted). Petitioner asserts that “claim
21 merely lists ‘a dimming circuit’ that must be part of the ‘driver circuit,’”
not that it needs to be “separate and distinct” from other elements of the
driver circuit. Id. at 5.
In its Sur-reply, Patent Owner clarifies that its position is that the
phase switch and dimming circuit “cannot be coextensive, not that the
component must be completely different.” PO Sur-reply 5. Patent Owner
asserts that Petitioner’s position is that “the two claim elements can be
coextensive with one another,” which “equates the ‘phase switch’ with the
‘dimming circuit.’” Id. (citing Pet. 44, 61–62). Patent Owner contends that
Petitioner acknowledges that the phase switches in the ’722 patent are “only
‘part of’ the ‘on/off circuitry’ that ‘creates a dimming effect.’” Id. at 6
(citing Pet. Reply 3–4). Patent Owner asserts that “altering the ‘turn on/turn
off’ functionality of the phase switches requires separate circuitry – i.e., the
‘dimming circuit.’” Id. In other words, Patent Owner asserts that “[t]he
dimming circuit . . . is a structure that includes at least some circuitry
separate from the phase switches that alters their normal functioning.” Id.
(emphasis omitted). According to Patent Owner, Petitioner’s admission that
the phase switches are only part of the on/off circuitry that creates a
dimming effect is “fatal to its argument, as it reads what it identifies as the
‘phase switch’ onto the ‘dimming circuit’ with no additional circuitry.” Id.
Having considered the evidence and the arguments raised by both
parties, we find that the Specification does not support construing the
dimming circuit narrowly to mean “a circuit, separate and distinct from the
phase switches, that provides a dimming effect,” as Patent Owner originally
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proposed. PO Resp. 25. As both parties have acknowledged, the phase
switches are part of the on/off circuitry that creates a dimming effect. See
Pet. Reply 4; PO Sur-reply 6. Thus, as Petitioner asserts, the phase switches
do not need to be “separate and distinct” from the dimming circuit.
Insofar as Patent Owner clarifies that it proposes a construction
wherein the dimming circuit means a circuit that is not coextensive with the
phase switch, we remain unpersuaded. As we discussed in our analysis of
the term “phase switch,” that term is defined by the Specification broadly.
Furthermore, the Specification discloses a number of methods to
create a dimming effect. See, e.g., Ex. 1001, 5:44–56. For example, the
Specification states that the “LEDs can be dimmed by adjusting the phase
current limit level set in each phase switch (PS). The LEDs can also be
dimmed by turning on each group late, by turning off each group early, or by
turning one or more groups off.” Id. at 5:47–52.
Patent Owner has not persuasively demonstrated that we should
construe dimming circuitry in a manner that excludes it from being
coextensive with the phase switch because the claims do not expressly
require the two claim elements to be entirely distinct from one another, and
Patent Owner does not point to any such limitation in the Specification.
Insofar as Patent Owner argues that the Specification’s disclosure of the
dimming circuit in Figures 3–4, 6–10, and 12 supports its proposed
construction, see PO Resp. 26–32, we remain unpersuaded as that argument
seeks to limit the broadly recited “dimming circuit” in claim 21 based on
exemplary embodiments in the Specification, without demonstrating any
clear disavowal of claim scope in the Specification or the prosecution
history.
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Thus, we agree with Petitioner that claim 21 merely recites “‘a
dimming circuit’ that must be part of the ‘driver circuit,’” without requiring
it to be completely distinct from the phase switch or other elements of the
driver circuit. Pet. Reply 5. Accordingly, we decline to adopt Patent
Owner’s proposed construction that limits the dimming circuit to “a circuit,
separate and distinct from the phase switches, that provides a dimming
effect.” See PO Resp. 25. Instead, we recognize the ordinary and customary
meaning for the “dimming circuit,” i.e., any circuit comprised in the driver
circuit that is capable of providing a dimming effect.
D. Anticipation and Obviousness based upon Chiang
Petitioner asserts that claims 1–3, 10, 15, 19, and 21 are anticipated by
Chiang. Pet. 20–44; Pet. Reply 6–19. Petitioner asserts also that those
claims are rendered obvious over Chiang. Pet. 20–44. Patent Owner
disagrees with both challenges. PO Resp. 33–52; PO Sur-reply 6–14.
1. Chiang
Chiang describes “an LED driving device in which the LEDs can be
driven by the positive part of power source directly.” Ex. 1004 ¶ 15.
Chiang explains that the LED driving device is “capable of improving the
power factor and efficiency.” Id. ¶ 2. Figure 5A of Chiang is set forth
below.
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Chiang’s Figure 5A is a circuit diagram of an LED driving device. Id.
¶ 33. The circuit comprises an LED string, a voltage detecting circuit 20,
and a current switching circuit 10. Id. Figure 5A also depicts power source
Vs that “can be any kind of input voltage source” and bridge rectifier circuit
30 that “can be used to convert the negative part of the power source Vs”
thereby increasing the lighting time of the LEDs. Id. ¶¶ 33, 36. The voltage
detecting circuit 20 detects the voltage level of the power source and the
“current switching circuit 10 including grounded current controlling unit I1,
I2, I3, . . ., I (n-1), and In.” Id. ¶ 33. The LED string is connected in parallel
across the power source and is composed of “series connected LED sets D1,
D2, D3, . . . Dn-1, and Dn.” Id. ¶ 34. When the voltage detecting circuit
detects the voltage level of the power source, it sends a signal to the current
switching circuit, which electrically rearranges the configuration of LEDs by
turning on/off current controlling units I1, I2, I3, . . . I(n˗1), In based on the
detected voltage, in order to drive selected LED sets D1, D2, D3, . . . Dn-1,
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and Dn. Id. ¶ 35; see also Ex. 1003 ¶ 43 (Dr. Shackle’s summary of
Chiang).
Chiang describes a scenario in which only current controlling unit I1
is enabled and “the current path is power source Vs, LED set D1, and
current controlling I1, and ground,” and when the voltage of the power
source increases, then current controlling unit I1 is disabled, only current
controlling unit I2 is enabled, and “the new current path is power source Vs,
LED set D1, LED set D2, and current controlling unit I2, and ground.” Ex.
1004 ¶ 38.
Figure 2A of Chiang is set forth below.

Chiang’s Figure 2A is a circuit diagram of a bridge rectifier. Id. ¶ 10.
Chiang explains by way of background that, if an AC power source is used
to energize an LED, light will be emitted only during the positive part of the
AC power source and that a bridge rectifier can be coupled to the AC power
source to convert the negative part of the AC power source to the positive
part. Id.
2. Discussion
For each of its challenges, Petitioner refers to a modified version of
Chiang’s Figure 5A, set forth below:
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Pet. 21. Petitioner’s modified version of Chiang’s Figure 5A includes three
types of modifications. First, Petitioner highlights, in different colors,
components of Chiang’s circuit diagram. Id. at 21–29. In particular,
Petitioner asserts that Chiang’s circuit includes: (a) series connected LED
sets D1, D2, D3, . . . , Dn-1, and Dn, highlighted in blue; (b) a power source
Vs, highlighted in green, electrically connected to the string of LEDs
through bridge rectifier 30, highlighted in yellow; and (c) a separate
conductive path to ground, highlighted in red, for each LED set through
grounded current controlling units I1, I2, I3, . . ., I (n-1), and In; wherein (d) the
grounded current controlling units I1, I2, I3, . . ., I (n-1), and In, highlighted in
purple, each represent a phase switch in each of the separate conductive
paths. Id. at 21–25.
Second, Petitioner’s modified version of Chiang’s Figure 5A redraws
the connection from the current controlling units to the power input source
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so that the connection leads to the bridge rectifier instead of the power input
source. Id. at 10. Third, Petitioner adds a ground in that redirected
connection pathway from the current controlling units to the bridge rectifier.
Id. Petitioner’s second and third modifications are illustrated by the
following side-by-side comparison of the relevant portions of Chiang Figure
5A and Petitioner’s modified version of that figure:

Chiang Figure 5A (excerpt)

Petitioner’s modification (excerpt)
The above figures show a portion of a circuit diagram for an LED driving
device.
According to Petitioner and its declarant, Dr. Shackle, those
modifications correct a “drafting error that would be immediately apparent
to a POSITA, in which the ground wire from the current controlling units (I1
to In) is connected back to the input source (Vs).” Pet. 10 (citing Ex. 1003
¶¶ 43–44). Petitioner asserts that “[a] POSITA would know that the ground
wire should instead be connected to the other side of the rectifier (30)
(yellow) and to ground, as shown in red [in Petitioner’s modified version of
Chiang’s Figure 5A].” Id. To support its addition of the ground to Chiang’s
Figure 5A, Petitioner refers to Chiang’s disclosures that: (a) “said current
switching circuit 10 includ[es] grounded current controlling unit I1, I2, I3, . .
., I (n-1);” (b) in one aspect, the circuit “current path is power source Vs, LED
set D1, and current controlling unit I1, and ground;” and (c) with increased
voltage “[t]he new current path is power source Vs, LED set D1, LED set D2,
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and current controlling unit I2, and ground.” Id. at 10–11 (quoting Ex. 1004
¶¶ 33, 38) (Petitioner’s emphasis omitted). Petitioner asserts that a skilled
artisan would have understood that the ground wire from the current
controlling units should be connected to the bridge rectifier “because that is
how a bridge rectifier is normally designed.” Id. at 11. In support of that
assertion, Petitioner and Dr. Shackle refer to Figure 3.39(a) in Sedra,8 set
forth below. Id. at 12.

Sedra explains that Figure 3.39(a) shows a bridge rectifier circuit that is
“[a]n alternative implementation of the full-wave rectifier” shown in an
earlier figure in Sedra, i.e., Figure 3.38. Ex. 1009, 184.
a) Claim 15
As set forth above in Section I.D., independent claim 15 is directed to a
driver circuit for driving LEDs in multiphase. Petitioner has identified the
disclosures in Chiang that Petitioner asserts correspond to each element of
claim 15. See Pet. 37–41. Based upon our review and consideration of the
complete record, we determine that Petitioner has established by a
preponderance of the evidence that claim 15 is anticipated by Chiang. In
particular, we find that Petitioner has shown persuasively that Chiang

8 Sedra et al., Microelectronic Circuits, 4th ed. New York: Oxford University
Press 1998 (“Sedra,” Ex. 1009).
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discloses a driver circuit for driving LEDs in multiphase comprising each
element recited by claim 15, as expressly set forth in Chiang’s Figure 5A, its
discussion of the circuit path, and its description of phase switches, in view
of our claim construction of that term.
Specifically, Petitioner refers to highlighted portions of its modified
version of Chiang’s Figure 5A to demonstrate that Chiang discloses the
elements of claim 15, including:
(1) a string of LEDs divided into n groups of LEDs electrically
connected to each other in series in a sequence from group 1 to group n,
each group having an upstream end and a downstream end (element [15a]),
and the downstream end of one group is electrically connected to the
upstream end of the following group (element [15a]), i.e., Chiang’s LED sets
D1, D2, D3, ..., Dn-1 (highlighted blue);
(2) a power source coupled to the upstream end of group 1 to provide
an input voltage (element [15[c]), i.e., Chiang’s power source Vs
(highlighted green) electrically coupled through the rectifier (yellow) to the
D1 LED group (highlighted blue); and
(3) a plurality of phase switches, each of which is coupled to the
downstream end of a corresponding group at one end and coupled to a
ground at the other end (element [15d]), i.e., Chiang’s current controlling
units I1, I2, I3, . . ., I (n-1), and In (highlighted purple). Id. at 37–40.
Petitioner asserts that “[t]he current controlling units I1, I2, I3, . . .,
I(n-1), and In of Chiang are phase switches because they can be turned on or
off, and, when turned on, they conduct electrical current to ground from their
corresponding LED set[.]” Id. at 39–40 (incorporating id. at 23–24 (citing
Ex. 1004 ¶ 38)). Additionally, Petitioner asserts that Chiang discloses that
its current controlling units may be transistors, a recognized example in the
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’722 patent of a phase switch. Id. at 25–26 (citing Ex. 1001, 3:41–48;
Ex. 1004, claim 5). Further, Petitioner asserts that the phase switch in the
’722 patent is depicted in each of the separate conductive paths in the same
way as shown in Chiang Figure 5A. Petitioner’s side-by-side comparison of
its modified versions of Chiang’s Figure 5A and the ’722 patent’s Figure 1 is
set forth below:

The above figures show LED driving circuits. Petitioner’s modified version
of the ’722 patent’s Figure 1 highlights in different colors the components of
the ’722 patent’s driver circuit depicted in the figure. Pet. 26. Petitioner
color codes that highlighting to correspond with the color coding used for its
modified version of Chiang’s Figure 5A, i.e., phase switches highlighted in
purple and the separate conductive paths highlighted in red. Id.
For the limitation requiring that the phase switches are coupled to a
ground at the other end, Petitioner refers to Chiang’s teachings that “current
switching circuit 10 include[s] grounded current controlling unit I1, I2, I3,
…, I(n−1), and In” and “[t]he current path is power source Vs, LED set D1,
and current controlling unit I1, and ground. ... The new current path is
power source Vs, LED set D1, LED set D2, and current controlling unit I2,
and ground.” Id. at 23–24 (discussing claim element [1c] and quoting Ex.
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1004 ¶¶ 33, 38); id. at 39–40 (referring to discussion of claim element [1c]).
Additionally, Petitioner again refers to its side-by-side comparison of its
modified versions of Chiang’s Figure 5A and the ’722 patent’s Figure 1 to
assert that “the LED driver circuit disclosed in Chiang is virtually identical
to that shown in FIG. 1 of the ’722 patent.” Id. at 40.
In reaching our determination, we considered Patent Owner’s
arguments and evidence. Patent Owner’s only argument regarding claim 15
is that Petitioner has failed to establish that Chiang’s current controlling
units (“CCUs”) are “phase switches.” PO Resp. 35–40. To support that
argument, Patent Owner relies on its proposed construction of “phase
switch” which would require the phase switch to be “a device having on and
off states that determines when to turn on/off to conduct/stop conducting
electrical current.” See id. at 4. According to Patent Owner, Chiang’s CCUs
are not phase switches because they do not determine when to turn
themselves on and off. Id. at 36, 39–40.
Patent Owner’s argument is not persuasive as we have not adopted its
proposed construction for “phase switch.” Rather, as discussed above, we
have found that the Specification broadly defines the term without requiring
the device to determine when to turn itself on or off. As defined in the
Specification, “The phase switch is a general term to indicate any device
that, when turned on, conducts electrical current.” Ex. 1001, 3:43–44
(emphasis added). There is no dispute between the parties that Chiang’s
CCUs are devices that, when turned on, conduct electrical current.
Accordingly, we find that Petitioner has shown by a preponderance of the
evidence that Chiang’s CCUs are a “plurality of phase switches.”
Patent Owner does not challenge Petitioner’s showing regarding the
remaining limitations of claim 15. See generally PO Resp. As discussed
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above, we find that Petitioner has persuasively demonstrated that Chiang
discloses each limitation of the claim. Accordingly, we determine that
Petitioner has shown that Chiang anticipates claim 15. Petitioner also
alleges that Chiang renders obvious claim 15. Because we have determined
that Chiang anticipates the claim, we need not reach the obviousness
challenge here.
b) Claim 19
Claim 19 depends from claim 15 and further requires that “the phase
switch of group n is capable of tolerating a relatively larger power than that
of groups 1 to n-1.” Ex. 1001, 16:16–18. Referring to Chiang Figure 6, set
forth below, Petitioner asserts that Chiang discloses this limitation. Pet. 41.

Chiang’s Figure 6 “is a waveform diagram of power source voltage, current
and drop voltage on a LED when supplied by an AC power source.”
Ex. 1004 ¶ 31. Chiang further describes the figure as follows:
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There are five LED sets for this diagram. Regardless of the
power loss due to stray resistors and capacitors, because there is
no capacitor in the present invention, the output power for the
power source is the product of the voltage area of power source
and ILed. The voltage across all the energized LED is a step shape
and the power is the product of area of the step shape and ILed.
The difference between these two powers is the power loss
andthe power loss is equal to the area of the shadow. The
difference in voltage between the power source and the across
voltage of total energized LEDs will drop on the current
controlling unit.
Id. ¶ 42 (emphasis added). Based on that disclosure, Petitioner asserts that
“Chiang explains that the power dissipation of each phase switch current
limiter is proportional to the shadowed (i.e., shaded) area of [Figure] 6.”
Pet. 41.
Petitioner contends and Dr. Shackle testifies that a person of ordinary
skill in the art would have understood that “Chiang is disclosing that the
power loss (area of shadow) of each successive phase switch (e.g., current
controlling units I2-I4) is greater than that of the previous current limiter
stage (i.e., current controlling units I1-I3, respectively).” Id. at 42 (citing Ex.
1003 ¶ 62 at 49–52). According to Dr. Shackle, “this means the phase
switch of group n is capable of tolerating a relatively larger power than that
of groups 1 to n-1.” Ex. 1003 ¶ 62 at 51 (italics removed). To exemplify
that point, he states that in Chiang’s Figure 6, “the power dissipation of
phase switches 2, 3, and 4 are each greater than the power dissipation of the
previous phase switch (i.e., phase switches 1–3, respectively). Id. Although
the final phase switch in Chiang’s Figure 6 appears to show a smaller power
dissipation, Dr. Shackle testifies that a skilled artisan would have
“recognize[d] that the phase switch of the final group needs to be capable of
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tolerating a relatively larger power than the switches of the other groups.”
Id. ¶ 62 at 51–52.
Patent Owner contends that Petitioner has failed to demonstrate
Chiang discloses the limitations in claim 19 for a number of reasons. To
begin, Patent Owner asserts that Petitioner’s evidence indicates the “actual
power dissipated by the LED groups” in Chiang’s Figure 6, but “does not
look at how ‘capable’ each phase switch is of tolerating power,” as required
by claim 19. PO Resp. 47. In support of that contention, Patent Owner
refers to testimony by Petitioner’s expert, Dr. Shackle, admitting that point.
Id. (citing Ex. 2003, 105:14–23 (Dr. Shackle testifying that Figure 6 of
Chiang shows power in normal operation and not the capability of tolerating
power)). Patent Owner asserts that the amount of power a phase switch
dissipates in normal operation is not the same as the phase switch’s capacity
to dissipate power and “Chiang provides no disclosure whatsoever regarding
each phase switch’s capacity to dissipate power.” Id. at 47–48 (citing
Ex. 2007 ¶ 106).
Additionally, Patent Owner contends that “[e]ven if Petitioner’s
methodology is accepted, Petitioner’s evidence . . . shows that Chiang does
not disclose claim 19.” Id. at 48 (emphasis omitted). Patent Owner asserts
that, for the claimed invention, “‘group n’ is the last group of the series, as
Dr. Shackle admits.” Id. at 47 (citing Ex. 2003, 58:24–60:2). From there,
Patent Owner asserts, “[s]ince Chiang has 5 sets of LEDs, n equals 5,” and
“[t]o meet claim 19, Chiang would need to disclose that phase group 5 is
capable of dissipating more power than groups 1 through n-1 (i.e., groups 1-
4).” Id. at 49. Patent Owner notes, however, that it is undisputed that
Chiang’s Figure 6 shows that group 5 dissipates less power than group 4. Id.
Insofar as Petitioner relies on Dr. Shackle’s opinion that “the final phase
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switch needs to be capable of dissipating excess power,” Patent Owner
responds that such testimony characterizes a POSITA’s understanding of
what Chiang’s final phase switch “should” be able to do, not what Chiang
expressly or inherently discloses that its final phase switch actually does. Id.
at 49–50 (citing Pet. 43; Ex. 1003, 51).
In the Petitioner’s Reply, Petitioner alleges that “[c]laim 19 simply
requires a driver circuit with multiple phase switches, wherein one of the
phase switches is capable of tolerating more power than that of the
preceding phase switch(es).” Pet. Reply 16 (emphasis omitted). According
to Petitioner, claim 19, and claim 15, from which it depends, “are open-
ended such that ‘group n’ need not represent the last phase switch in the
driver circuit.” Id. at 17. Based on those contentions, Petitioner asserts that
Chiang expressly discloses the limitation in claim 19 because Chiang’s
Figure 6 shows that its fourth phase switch dissipates more power than phase
switches 1–3, and “as arranged,” the Chiang’s fourth switch may be
considered switch “n” of the claim. Id.
In Patent Owner’s Sur-reply, Patent Owner refers us to Dr. Shackle’s
testimony that contradicts Petitioner’s assertions. In that testimony,
Dr. Shackle acknowledges that group n in claim 15 refers to the last group of
LEDs in the claim. PO Sur-reply 10–11 (citing Ex. 2003, 59:14–60:2).
Patent Owner asserts also that “Petitioner’s assertion that ‘group n’ is open-
ended contradicts the claim language” reciting that the LEDs are divided
“into n groups, said n groups of LEDs being electrically connected to each
other in series in a sequence from group 1 to group n.” Id. at 11 (quoting, in
part, claim 15).
We have considered the arguments and the evidence presented by the
parties. For the reasons discussed by Patent Owner, we agree that Petitioner
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has not demonstrated that Chiang discloses “the phase switch of group n is
capable of tolerating a relatively larger power than that of groups 1 to n-1,”
as recited by claim 19. In particular, we disagree with Petitioner’s
contention that “[c]laim 19 simply requires a driver circuit with multiple
phase switches, wherein one of the phase switches is capable of tolerating
more power than that of the preceding phase switch(es).” Pet. Reply 16
(emphasis omitted). Claim 19 expressly requires “the phase switch of group
n is capable of tolerating a relatively larger power than that of groups 1 to n-
1.” Ex. 1001, 16:16–18. In other words, it is not enough to show that any
one phase switch is capable of tolerating more power than a preceding phase
switch or switches. Rather, it must be shown that “group n” has such a
characteristic. And, as Patent Owner’s and Petitioner’s experts have agreed,
a proper reading of claim 15 makes clear that a string of LEDs is divided
into a total of “n groups” and that “group n” is the last or final group of the
“sequence from group 1 to group n.” Ex. 1001, 15:32–34; Ex. 2003, 59:14–
60:2 (Shackle Deposition); Ex. 2007 (Zane Declaration) ¶ 104. Petitioner
has not persuasively established otherwise with its unsupported attorney
argument. Further, we agree with Patent Owner that Petitioner has not
shown persuasively that Chiang’s disclosure of the actual dissipation for the
phase switches in Figure 6 demonstrates the relative capability of the phase
switch of group n as compared to the phase switches of groups 1 to n-1. In
other words, Petitioner has not shown persuasively that the actual power that
the phase switches have tolerated is proportional to what the phase switches
are capable of tolerating.
Moreover, to the extent that Petitioner argues that Chiang renders
obvious claim 19, we find that challenge insufficiently articulated and
inadequately supported. Pet. 42–43. In particular, Petitioner has not
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proposed any modification of Chiang or demonstrated why and how it would
have been obvious to modify Chiang’s embodiment depicted in Figure 6 so
that the phase switch of the last group would be capable of tolerating more
power than that of group 1 to n-1.
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that claim 19 is anticipated or rendered
obvious by Chiang.
c) Claim 21
Claim 21 depends from claim 15 and requires the driver circuit to
further comprise “a dimming circuit.” Ex. 1001, 16:22–23. Petitioner
asserts that “Chiang discloses that the current value flowing through the
active LED sets and phase switch (i.e., current controlling unit) is
adjustable.” Pet. 44. In particular, Petitioner refers to Chiang’s claim 11,
which recites, “A LED driving device . . . wherein the current value of said
current controlling unit is adjustable.” Id. at 44 (quoting Ex. 1004, claim
11). Petitioner also refers to Chiang’s teaching that the “LED light output
luminous intensity is proportional to LED current for most operating value
of LED current.” Id. (quoting Ex. 1004 ¶ 9). According to Petitioner and
Dr. Shackle, a skilled artisan “knew this property of LEDs, and also knew
that current control was conventionally used to provide dimming
functionality for LEDs.” Id. (citing Ex. 1003 ¶ 62 at 52–53; Ex. 1010, 1–2
(ANSI E1.3-2001 standard for using 0-10V control voltages for providing
dimming)).
Based on the foregoing, Petitioner asserts that a person of skill in the
art “would have understood that Chiang’s disclosure of a current controlling
unit with an adjustable current value was a disclosure of a dimming circuit.”
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Pet. 43–44 (citing Ex. 1004 ¶¶ 9, 35, claims 5 and 11; Ex. 1003 ¶ 62 at 52–
53).
Patent Owner argues that Petitioner improperly reads the “dimming
circuit” limitation onto the exact same component that it reads the “phase
switch(es)” of independent claims 1 and 15, i.e., “the current controlling
units.” PO Resp. 50–51. For this contention, Patent Owner relies on its
proposed construction for the term “dimming circuit” which would require it
to be “a separate and distinct component from the phase switches.” Id. at 51.
Additionally, Patent Owner contends that Petitioner has failed to
demonstrate that the current controlling units of Chiang are a dimming
circuit. Id. at 52. According to Patent Owner, Chiang does not disclose
dimming or dimming circuits by disclosing current control. Id. Patent
Owner asserts that “the ’722 patent makes clear that the concepts of current
control and a dimming circuit are distinct.” Id. (citing Ex. 1001, 2:22–26,
1:64–66 (disclosing driver circuits with either passive current control or
active current control, and dimming)).
In Petitioner’s Reply, Petitioner asserts that “[t]he ’722 patent
describes circuitry that creates a ‘dimming effect’ by simply turning off LED
groups.” Pet. Reply 3 (citing Ex. 1001, 4:27–31, 5:26–27). Petitioner
asserts that because the phase switches are part of this on/off circuitry, the
phase switches need not be separate and distinct form the dimming circuit.
Id. (citing Ex. 1040, 28:11–37:17).
Petitioner also contends that Patent Owner “incorrectly relies on a
presumption that separate claim elements claim physically separate and
distinct components.” Id. at 4 (quoting PO Resp. 25). Petitioner asserts that
the proper standard is that “[t]he use of two terms in a claim requires that
they connote different meanings, not that they necessarily refer to two
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different structures.” Id. (quoting Applied Med., 448 F.3d at 1333 n.3).
According to Petitioner, as recited, the “dimming circuit” only needs to be
part of the driver circuit, and “not ‘separate and distinct’ from other elements
of the driver circuit (e.g., phase switches in combination with resistor
networks and/or variable resistors.)” Id. at 5.
In the Patent Owner’s Sur-reply, Patent Owner asserts that the
“dimming circuit” must be a “structure that included at least some circuitry
separate from the phase switches that alters their normal functioning.” PO
Sur-reply at 6. According to Patent Owner, Petitioner’s argument fails
because “it reads what it identifies as the ‘phase switch’ onto the ‘dimming
circuit’ with no additional circuitry.” Id.
Having considered the evidence and the arguments, we determine that
the preponderance of the evidence supports Petitioner’s assertion that
Chiang’s driver circuit further comprises a dimming circuit, as required by
claim 21. As discussed in our claim construction discussion, we have
declined to adopt Patent Owner’s proposed construction for “dimming
circuit.” Patent Owner did not identify, nor did we find, any suggestion
from the Specification description or claim 21 that prohibits the phase
switches from being part of the dimming circuitry. Dr. Shackle credibly
testifies that a skilled artisan would have known that current control was
conventionally used to provide dimming functionality for LEDs. Ex. 1003
¶ 62 at 52–53. As explained persuasively by Petitioner and Dr. Shackle, a
person of ordinary skill in the art would have understood that Chiang
describes a dimming function when it recites in claim 11 that “the current
value of said current controlling unit is adjustable” in its driver circuit,
Ex. 1004, claim 11, and teaches that the “LED light output luminous
intensity is proportional to LED current for most operating value of LED
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current,” id. ¶ 9. Thus, we do not rely on “the exact same component”
disclosed in Chiang for the dimming circuit and the phase switches. It is
Chiang’s disclosure of current controlling units with additional
functionality—an adjustable current value—that meets the “dimming
circuit” claim limitation, whereas such added functionality is not required
for the “phase switches” limitation. Based on the foregoing, we assign
persuasive weight to Dr. Shackle’s conclusion that a person of skill in the art
would have understood that Chiang’s disclosure of a current controlling unit
with an adjustable current value was a disclosure of a driver circuit further
comprising a dimming circuit. Thus, we find that Chiang discloses that
claim element.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that Chiang anticipates claim 21.
d) Claim 1
As set forth above in Section I.D., independent claim 1 is directed to a
method for driving LEDs in multiphase. Petitioner has identified the
disclosures in Chiang that Petitioner asserts correspond to each element of
claim 1. See Pet. 20–36. In doing so, Petitioner again refers to its modified
version of Chiang’s Figure 5A. Id. at 21–25. The structural modifications
Petitioner makes to Chiang’s Figure 5A appear to be directed primarily to
the limitation in claim 1 requiring “separately coupling each of the [LED]
groups to a ground through separate conductive paths.” We refer to this
limitation as the “ground coupling limitation of claim 1” and focus on that
limitation in this discussion as it represents a point of contention between the
parties that was not at issue in claim 15.
For the ground coupling limitation of claim 1, Petitioner asserts that
Chiang discloses this limitation by referring to Chiang’s descriptions of the
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current path set forth above, and to Petitioner’s modified version of Chiang’s
Figure 5A, asserting that the figure discloses “a separate conductive path to
ground (identified in red) for each of the LED sets (groups) D1, D2, D3, . . . ,
Dn-1, and Dn (highlighted blue) through ‘grounded current controlling unit[s]
I1, I2, I3, . . ., I (n-1), and In (highlighted purple).” Id. at 23–24.
Patent Owner argues that Petitioner fails to demonstrate that Chiang
discloses the ground coupling limitation. PO Resp. 41. Patent Owner
asserts that Petitioner relies on a modified version of Chiang’s Figure 5A,
that “represents Petitioner’s combination of Chiang and Sedra (Ex. 1009)
and does not appear anywhere in Chiang.” Id. (citing Pet. 10–12).
Additionally, referring to the modified version of Chiang’s Figure 5A,
Patent Owner asserts that the red element in the figure which Petitioner
identifies as the separate conductive path to ground is not depicted as
connected to the ground added by Petitioner. Id. Further, Patent Owner
asserts that “Petitioner fails to provide any theory for why each red element
can be considered ‘separately’ coupled to ground.” Id. (citing Pet. 23).
In Petitioner’s Reply, Petitioner asserts that Patent Owner’s arguments
lack merit based on the testimony of Patent Owner’s expert, Dr. Zane. Pet.
Reply 7. Specifically, Petitioner directs us to testimony by Dr. Zane,
including his testimony conceding that: (a) Chiang discloses a path from the
voltage source through LED group 1 and CCU I1 to ground, id. at 8–9 (citing
Ex. 1040, 77:4–80:14); and (b) the outputs of all five CCUs in Chiang are
electrically connected to ground, id. at 9 (citing Ex. 1040, 80:8–81:12).
Additionally, Petitioner directs us to Dr. Zane’s testimony agreeing that Dr.
Shackle’s correction to Chiang’s Figure 5a reflects a skilled artisan’s
understanding of Chiang’s disclosure. Id. at 12–13 (citing Ex. 1040, 71:18–
76:10, 81:13–82:7). Petitioner refers also to Dr. Zane’s testimony agreeing
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to Petitioner’s identification of the location of the common ground node and
his opinion that the circuit schematic would have the same meaning to a
skilled artisan regardless of where the ground symbol is drawn in the ground
node. Id. at 8–11 (citing Ex. 1040, 82:8–24, 83:14–84:19).
In Patent Owner’s Sur-reply, Patent Owner argues that Petitioner’s
“mighty effort to rewrite Chiang” amounts to a “recognition that the
disclosure is at best confusing to a POSITA, and nothing in Dr. Zane’s
testimony rebuts this.” PO Sur-reply 8.
We have considered the arguments and evidence of the parties and
determine that Petitioner has shown by a preponderance of the evidence that
Chiang discloses the “ground coupling limitation of claim 1.” In particular,
Petitioner has identified Chiang’s disclosure that its “current switching
circuit 10 include[s] grounded current controlling unit I1, I2, I3, …, I(n−1),
and In” and “[t]he current path is power source Vs, LED set D1, and current
controlling unit I1, and ground. ... The new current path is power source
Vs, LED set D1, LED set D2, and current controlling unit I2, and ground.”
Pet. 23–24 (discussing claim element [1c] and quoting Ex. 1004 ¶¶ 33, 38).
Petitioner illustrates, with a side-by-side comparison of its modified versions
of Chiang’s Figure 5A and the ’722 patent’s Figure 1, as set forth above in
Section II.D.2, how “the LED driver circuit disclosed in Chiang is virtually
identical to that shown in FIG. 1 of the ’722 patent.” Id. at 40. Additionally,
referring to that same modified version of Chiang’s Figure 5A, Dr. Shackle
identifies how the figure shows a separate conductive path to ground for
each of the LED groups, and that those paths go through the respective
grounded CCUs, as disclosed in Chiang’s description of the current path.
Ex. 1003 ¶ 62 at 34. Further, Petitioner supports its position and Dr.
Shackle’s testimony with the testimony of Patent Owner’s expert, Dr. Zane,
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who agreed that the pathways identified by Dr. Shackle each lead to a
separate grounded node.
Insofar as Patent Owner urges that Petitioner has made some “mighty
effort to rewrite Chiang” and that doing so demonstrates that the reference is
“at best confusing to a POSITA,” we disagree. PO Sur-reply 8. Patent
Owner cites to no testimony or other evidence establishing or even
suggesting that Chiang’s disclosure is confusing. Rather, when discussing
the drafting error in Chiang’s Figure 5A, Petitioner’s expert, Dr. Shackle,
testifies that “[a] POSITA would understand that this is an error based on the
express disclosures in Chiang.” Ex. 1003 ¶ 44. Dr. Shackle corrected the
error by redrawing the connection from the CCUs to the power input source
so that the connection leads instead to the bridge rectifier, and to add a
ground in that redirected connection pathway. Id. ¶ 46. Dr. Zane testified
that this correction was “reasonable” and he agreed that it was necessary for
the bridge rectifier to operate as a full-wave rectifier. Ex. 1040, 81:16–82:7.
Additionally, Dr. Zane testified that the placement of the ground symbol is
not significant in a circuit schematic. Id. at 83:21–84:7. Patent Owner has
not identified anything “confusing” about Chiang’s disclosure based on that
testimonial evidence by both parties’ experts. Rather, we find that, based on
the evidence as a whole, Petitioner has shown persuasively that the
correction made by Dr. Shackle in Petitioner’s modified version of Chiang’s
Figure 5A reflects the written description in Chiang and is approved by
Patent Owner’s expert. As our reviewing court has stated, “[e]xpert
testimony may shed light on what a skilled artisan would reasonably
understand or infer from a prior art reference.” Acoustic Tech., Inc. v. Itron
Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020).
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Other than the ground coupling limitation, our analysis of claim 1 is
the same as that for claim 15.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Chiang discloses each limitation of
independent claim 1. Having determined that Chiang anticipates claim 1, we
do not reach Petitioner’s contention that claim 1 is also rendered obvious by
Chiang.
e) Claims 2, 3, and 10
Each of claims 2, 3, and 10 depends from claim 1. Claim 10 recites,
“[t]he method of claim 1, further comprising: decreasing the input voltage
from the power source to turn off the LEDs, group by group in a reverse
sequence upstream the string.” Petitioner demonstrates persuasively how
Chiang discloses this further limitation. Pet. 35–36 (citing Ex. 1003 ¶ 62 at
42; Ex. 1004, Fig. 6); Ex. 1004 ¶ 42. Patent Owner does not challenge that
showing beyond alleging that Petitioner has not shown that Chiang discloses
the same elements of claim 1 discussed in the preceding section. We do not
find those arguments persuasive for the same reasons discussed above.
Accordingly, we determine that Petitioner has shown by a preponderance of
the evidence that Chiang anticipates claim 10.
Petitioner has also identified each disclosure in Chiang that it asserts
meets the limitations of claims 2 and 3. Patent Owner challenges that
showing in the same manner as claims 1 and 10, discussed in the preceding
sections. We do not find those arguments persuasive for the same reasons
discussed therein. The only other limitation of the claims in dispute is their
requirement that the method for driving LEDs in multiphase further
comprises “monitoring a phase voltage of each group” of LEDs. Thus, we
focus on that limitation in our following discussion.
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Petitioner asserts that Chiang’s voltage detector measures the voltage
of the power source (after it has passed through the rectifier) and determines
the phase voltage of each group (i.e., LED set) based on the barrier voltage
of each group.” Pet. 30 (citing Ex. 1004 ¶ 38). Petitioner contends that
means that “by knowing the barrier voltage of each group of LEDs and the
input voltage, the voltage detecting circuit determines the phase voltage of
each group, and then uses that information to activate and deactivate
different current controlling units to drive the maximum number of groups
of LEDs.” Id. at 31. According to Petitioner, “Chiang is ‘monitoring’ the
phase voltage of each group by measuring the input voltage and then using a
known physical quantity (the sum of the barrier voltages of the upstream
groups) to deduce the monitored value from the value being measured.” Id.
(citing Ex. 1003 ¶ 62 at 42), see also id. 33.
Patent Owner asserts that Chiang does not disclose “monitoring a
phase voltage.” According to Patent Owner, because Chiang’s “voltage
detector measures the voltage of the power source,” as Petitioner admits, it
monitors an input voltage, which is required by unchallenged claim 4. PO
Resp. 43 (quoting Pet. 19–20, 33). However, because the voltage detector
does not measure the phase voltage of each group, it does not monitor the
phase voltage, as required by challenged claims 2 and 3. Id. Patent Owner
asserts that the embodiments disclosed in the ’722 patent monitor phase
voltage via direct measurement and not in the deduced manner that
Petitioner demonstrates for Chiang. Id. at 44 (citing Ex. 2007 ¶¶ 101–102).
Further, Patent Owner asserts that the phase voltage depends on more
variables than the sum of the barrier voltages of the LEDs in the group, and
those variables can change over time. Id. at 45. Additionally, Patent Owner
refers us to the testimony of Dr. Shackle who explained that he did not apply
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what he would consider to be “precisely the normal meaning” of the term
“monitors.” Id. at 45–46 (citing Ex. 2003, 82:16–84:9).
In Petitioner’s Reply, Petitioner asserts that the claims do not require
“direct” monitoring of the phase voltage. Pet. Reply 15. Petitioner asserts
that Chiang uses indirectly-monitored phase voltages. Id. at 16. According
to Petitioner, the ’722 patent also discloses deducing phase voltages via
known circuit relationships, as depicted in Figures 5 and 6. Id.
In Patent Owner’s Sur-reply, Patent Owner asserts, among other
things, that “Dr. Shackle’s admission that he did not use the ‘normal
meaning’ of ‘monitor’ but ‘a very special meaning of it’ . . . is fatal to
Petitioner’s theory – Petitioner relies upon a ‘meaning’ of ‘monitor’ that is
something other than its plain and ordinary meaning.” PO Sur-reply 9.
Having considered the arguments and the evidence, we determine that
Petitioner has not established persuasively that Chiang discloses “monitoring
the phase voltage,” as required by claims 2 and 3. Petitioner frames the
issue as simply whether the claims preclude indirect monitoring, asserting
that they do not. We view the issue differently. Even if indirect monitoring
is sufficient for the claims, Petitioner must demonstrate persuasively that it
is the phase voltage that is indirectly monitored. Here, we find that
Petitioner’s evidence falls short in view of the record as a whole. In
particular, Petitioner’s expert, Dr. Shackle, testifies that Chiang “computes
and monitors the phase voltage of each group (i.e., LED set) based on the
barrier voltage of each group,” and also “monitors the phase voltage of each
group by measuring the input voltage and then using a known physical
quantity (the sum of the barrier voltages of the upstream groups) to deduce
the monitored value from the value being measured.” Ex. 1003 ¶ 62 at 42.
According to Dr. Shackle, “Chiang ‘monitors’ the phase voltage of the LED
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groups in the same way that an observer ‘monitors’ temperature with a
thermometer. Neither is directly measuring the monitored quantity; both are
determining the monitored quantity based on a known relationship to what is
actually measured.” Ex. 1003 ¶ 62 at 43.
However, Patent Owner’s expert, Dr. Zane, challenges those opinions
by Dr. Shackle by testifying that “the deduction Dr. Shackle is referring to in
order to compute an estimate of the phase voltage based on measuring the
input voltage depends on many variables and factors that are not strictly
known, and the result is not equivalent to ‘monitoring a phase voltage of
each group.’” Ex. 2007 ¶ 100. Dr. Zane describes some of those variables
in his declaration. Id. According to Dr. Zane, those variables “could result
in significant uncertainty in a computed estimate of the phase voltage.” Id.
Additionally, Dr. Zane testifies that “the sum of the barrier voltages is not
the same as the phase voltage, as the phase voltage is typically greater than
this sum . . . .” Id. Further, Patent Owner directs us to Dr. Shackle’s
deposition testimony acknowledging that the barrier or threshold voltage of
the LEDs within each phase group in Chiang are not equivalent to the phase
voltages. PO Resp. 45 (citing Ex. 2003, 81:9–20). Patent Owner also
directs us to Dr. Shackle’s deposition testimony explaining that he is
referring to some “very special meaning” of the term “monitor,” when he
explains how Chiang “monitors” the phase voltage. Id. at 45–46 (quoting
Ex. 2003, 82:16–84:9).
What is especially concerning is that Petitioner’s Reply does not
address Dr. Zane’s challenges to Dr. Shackle’s testimony. See Pet. Reply
15–16. Instead, Petitioner focuses on its argument that the claims do not
include a “direct” monitoring requirement. See id. Thus, Dr. Zane’s
testimony remains unrebutted on the record as a whole. Moreover, we
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decline to assign persuasive weight to Dr. Shackle’s testimony because it is
admittedly based on a “very special meaning” of the term “monitor” that has
not been proposed for claim construction and because Petitioner has not
demonstrated a sufficient basis for departing from the term’s ordinary
meaning. See Ex. 2003, 82:16–84:9.
Accordingly, we determine that, based on the record as a whole,
Petitioner has not adequately demonstrated that Chiang discloses
“monitoring the phase voltage,” as required by claims 2 and 3. Based on
that deficiency, we determine that Petitioner has not established by a
preponderance of the evidence that Chiang anticipates claims 2 and 3.
Although Petitioner also asserts that Chiang renders obvious claims 2
and 3, Petitioner does not support those assertions with any argument
relating to these claims. See Pet. 33, 35. Thus, Petitioner has not shown by
a preponderance of the evidence that these claims would have been rendered
obvious by Chiang.
E. Obviousness based upon Chiang and Leung
Petitioner asserts that claims 2 and 3 are rendered obvious over the
combination of Chiang and Leung. Pet. 45–52. Petitioner relies on Chiang
as disclosing the elements of claim 1, from which claims 2 and 3 depend.
Id. at 48, 51 (referring to its anticipation ground to assert that “Chiang
discloses claim 1.”). Petitioner combines Leung to reach the additional
limitations of the dependent claims. Id. at 48–52. We focus on those
limitations here.
1. Leung
Leung relates to a solid state lighting array driving circuit which is
intended for use with automobiles. Ex. 1005 ¶ 1. Leung explains that “[t]he
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driving circuit may be used for other lighting situation[s], particularly where
the power supply may fluctuate.” Id.
Leung’s Figure 1 is set forth below:

Leung’s Figure 1 depicts a schematic diagram of a circuit in
accordance with a preferred embodiment of the invention. Id. ¶ 39. In
circuit 1, a plurality of solid-state lighting devices in the form of LEDs 2 are
provided and “arranged in an array incorporating a serial path 3 through
each of the LEDs and terminating in a constant current sink 4 or similar
device.” Id. ¶ 41. Leung explains,
[W]hen connected to a power supply, each of the LEDs may
operate and the constant current [s]ink 4 is used to regulate the
current and dissipate excess power supplied to the array. The
power supply is indicated generally by the item 5 being a supply
DC current which, in the case of automobiles or other uses, may
be variable between different levels.
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Id. The driving circuit comprises a control means to control a switch in a
switchable parallel path so that the array of lighting devices may be
reconfigured into an alternative set of series circuits to alter the quantity of
lighting devices in one or more of the series circuits in response to changes
in the voltage in the circuits. Id. ¶ 16. Leung discloses that “[t]he
reconfiguration involves switching upon sensing of the incoming voltage” in
a preferred embodiment. Id. ¶ 61. Leung also discloses that “other forms of
detection could be used such as detecting the voltage at the constant current
devices which, when higher than a specific threshold could indicate a desire
to rearrange the circuit to incorporate one or more further LEDs into each of
the parallel paths.” Id.
2. Discussion
Petitioner asserts that Leung discloses a method of monitoring a phase
voltage of each group of LEDs in its LED driver circuit by direct
measurement. Pet. 48. In support of that assertion, Petitioner refers to
Leung’s disclosure that it detects the voltage at the constant current
sinks/devices. Id. (citing Ex. 1005 ¶ 61). Petitioner asserts that Leung’s
Figure 1 shows that the constant current sinks are located at the downstream
end of each of the LED groups. Id. According to Petitioner, “Leung
discloses directly measuring the ‘phase voltage’ of each group of LEDs
because . . . the ‘phase voltage’ of a group of LEDs is the voltage at their
downstream end.” Id. at 49. Petitioner contends that “it would have been
obvious to a POSITA to use Leung’s direct measurement of phase voltage in
the circuit shown in Chiang’s FIG. 5 to make the circuit more efficient and
the circuit controller easier to configure.” Id. Petitioner asserts that
modification of Chiang in view of Leung provides the claimed “monitoring a
phase voltage of each group” by directly measuring each group’s phase
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voltage. Id. For the remaining limitation in claims 2 and 3 requiring turning
off the phase switch based on the phase voltage, Petitioner relies on
Chiang’s disclosure in Figure 6 for the operation of the circuit. Id. at 50.
According to Petitioner, “[s]ubstituting Leung’s direct measurement of
phase voltage for Chiang’s indirect monitoring of phase voltage would not
change this operation—it would simply allow the moment where the phase
voltage of a downstream group exceeds Vd [the voltage across the
corresponding CCU] to be detected directly.” Id. at 51.
Patent Owner argues that “Petitioner provides no reason why a
POSITA would look to Leung to use a different current controlling circuit
than one already disclosed in Chiang.” PO Resp. 61. According to Patent
Owner, their teachings are diametrically opposed because “Chiang is
designed specifically to work with an AC power source whereas Leung is
designed specifically to work with a DC power source from an automobile
battery.” Id. Patent Owner asserts that difference matters because Chiang is
directed to improving power factor, which is a metric only applicable to AC
power. Id. Patent Owner contends that a circuit like Leung’s that “turns on
multiple current sources at a time is contrary to the teachings of Chiang as
this would reduce power factor.” Id. at 62 (citing Ex. 2007 ¶¶ 115–118).
Additionally, Patent Owner argues that Petitioner has not explained
sufficiently how to implement what Leung describes as one of the “other
forms of detection” that could be used to detect the voltage at the constant
current sinks/devices. Id. at 63 (emphasis omitted). Patent Owner asserts
that Leung does not disclose an embodiment implementing such an
alternative. Id. According to Patent Owner, Leung merely discloses it as a
possible alternative, with no enabling disclosure as to how to implement the
detection scheme. Id. Further, Patent Owner asserts that the only
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motivation provided by Leung for detecting the voltage at the constant
current sinks is “when higher than a specific threshold could indicate a
desire to rearrange the circuit to incorporate one or more further LEDs into
each of the parallel paths,” which Petitioner has not shown would have
applied to Chiang. Id. at 63–64. According to Patent Owner, “Petitioner’s
proffered motivation to combine is not rooted in the references nor is it
supported by anything beyond conclusory argument.” Id. at 64 (citing Pet.
47–48). Patent Owner asserts that we should not afford persuasive weight to
Dr. Shackle’s testimony relating to motivation because it lacks citation to
any evidence. Id. at 65.
Patent Owner asserts also that Petitioner has failed to adequately
address whether there would have been a reasonable expectation of success
in combining the teachings of Chiang and Leung. Id. (citing Pet. 45–48).
Regarding the final limitations in claim 2 and 3, Patent Owner asserts
that neither Chiang nor Leung teaches switching off any phase switch based
on any voltage reaching a predetermined value. Id. at 66–67. Patent Owner
asserts that Chiang switches phase switches based on the input voltage and
Leung does not teach turning off phase switches based upon the voltages
that it monitors. Id. at 67.
In Petitioner’s Reply, Petitioner urges that its proposed combination
“requires nothing more than applying Leung’s direct-monitoring technique
to Chiang’s driver circuit in order to obtain a predictable result: Chiang’s
lighting device modified to turn its CCUs on/off based on direct rather than
indirect voltage monitoring.” Pet. Reply 20–21. Petitioner responds to
Patent Owner’s challenge of its motivation for combining the references by
asserting that “[w]here two known alternatives are interchangeable for a
desired function, an express suggestion to substitute one for another is not
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needed to render [the] substitution obvious.” Id. at 21 (citation omitted).
Petitioner responds to Patent Owner’s contentions regarding the differences
in the design of Chiang and Leung as “a distraction.” Id. at 20. According
to Petitioner, the combination is based on Leung’s teaching that direct
monitoring may be used instead of indirect monitoring. Id. Petitioner
asserts that Patent Owner’s argument that Leung is non-enabling is
unavailing because the proposed modification simply uses directly-
monitored phase voltages instead of deduced values. Id. at 22.
In Patent Owner’s Sur-reply, Patent Owner reiterates that Petitioner
has not adequately addressed the differences between Chiang and Leung, or
provided a motivation to modify Chiang in view of Leung. PO Sur-reply
15–16. Patent Owner also asserts again that Leung mentions an alternative
voltage detection method without teaching how to implement it. Id. at 16.
Having considered the arguments and the evidence, we determine that
Petitioner has not demonstrated persuasively that a person of skill in the art
would have modified Chiang to include a direct means of monitoring the
phase voltage in its driver circuit. In particular, we find that Petitioner has
not shown that doing so amounts to a simple substitution of Chiang’s
“indirect monitoring” of the phase voltage with a method of directly
monitoring the phase voltage because Petitioner has not established
sufficiently that Chiang monitors the phase voltage directly or indirectly, for
the reasons discussed above in Section II.D.2.e. Further, we agree with
Patent Owner that Petitioner and Dr. Shackle have not explained sufficiently
how their proposed modification of Chiang in view of Leung would have
been implemented. Leung describes only “detecting the voltage at the
constant current devices.” Ex. 1005 ¶ 61. Petitioner and Dr. Shackle have
not described how Chiang’s driver circuit would have been modified to
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include such a detecting function nor explained persuasively why a skilled
artisan would have reasonably expected it to successfully monitor the phase
voltage in Chiang’s circuit.
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that the combination of Chiang and Leung
renders obvious claims 2 and 3.
F. Obviousness based upon Chiang and Hamilton
Petitioner asserts that claims 11, 12, 18 and 21 are rendered obvious
over Chiang and Hamilton. Pet. 52–62. Petitioner relies on Chiang as
disclosing the elements of claim 1, from which claims 11 and 12 depend. Id.
at 48, 55, 62 (referring to its anticipation ground to assert that “Chiang
discloses claim 1.”). Petitioner relies on Chiang as disclosing the elements
of claim 15, from which claims 18 and 21 depend. Id. at 60–61, 65
(referring to its anticipation ground to assert that “Chiang discloses claim
15.”). Petitioner relies on Hamilton to reach the additional limitations of the
challenged dependent claims. We focus on those limitations here.
1. Hamilton
Hamilton is a book titled “Basic Integrated Circuit Engineering.” Ex.
1006, 10. Hamilton describes a current drive circuit, explaining that it
“serves to translate a reference voltage into a reference current which is then
used to drive the ladder network.” Id. at 424. Hamilton explains also that
the circuit “must perform a level translation from the grounded reference to
a negative voltage to which current can flow from the ladder network.” Id.
Hamilton’s Figure 11-24 is set forth below:
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Id. at 425, Fig. 11-24. Hamilton’s Figure 11-24 depicts three illustrations:
(a) a reference circuit, (b) use of transistors in the feedback loop, and (c) a
simplified amplifier circuit. Id. Hamilton teaches,
Here again, a virtual-ground node in a negative-feedback
loop is useful. A system to generate the reference current is
shown in Fig. 11-24a. Since point A is maintained at zero volts,
being the virtual ground, the reference voltage Vref appears across
the reference resistor Rref to produce reference current Iref = V ref
/ Rref. In the circuit of Fig. 11-24a, a feedback resistor is used to
close the loop; however, a current-source transistor can be used
as well. Recall, from the biasing discussion, that an identical
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transistor Q2 can be slaved to the feedback transistor Q1 to
generate the ladder drive current.
The amplifier circuit should combine both the gain needed
to close the loop and the driver-end level translation. A simple
circuit to accomplish these two objectives is the input stage from
the μA741 circuit discussed earlier. The complete circuit is
shown in Fig. 11-24c. The complete digital-to-analog circuit,
including current weighting ladder, terminating circuits, and bias
and current drive circuit, is shown in Fig. 11-25.
Id. at 424–26.
2. Discussion
a) Analogous Art
Patent Owner challenges Petitioner’s reliance on Hamilton, asserting
that the reference “is relevant to the field of driving LEDs at all.” PO Resp.
67–68 (citing Ex. 2007 ¶ 125). Patent Owner supports that contention by
asserting that Hamilton does not describe driving a string of LEDs. Id.
In Petitioner’s Reply, Petitioner asserts that Hamilton is analogous art
because it is “reasonably pertinent” to the problem at hand because Hamilton
describes a type of control-and-feedback current-controlling circuit that was
ubiquitous, well-known, and predictable. Pet. Reply 23 (citing Ex. 1039,
Ch. 1.6).
In Patent Owner’s Sur-reply, Patent Owner asserts that “Petitioner has
failed to identify and compare any problems to which both the ’722 patent
and Hamilton relate.” PO Sur-reply 17 (citing Donner Tech., LLC v. Pro
Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020)) (emphasis omitted).
As the Federal Circuit has explained,
A reference is appropriate prior art if within the field of the
inventor’s endeavor. Bausch & Lomb, Inc. v. Barnes–
Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986).
Alternatively, a reference qualifies as prior art if “reasonably
pertinent to the particular problem with which the inventor was
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involved.” Id. “A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem.” In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995)
(quotations and citations omitted). If a reference’s disclosure
relates to the same problem as the claimed invention, “that fact
supports use of that reference in an obviousness rejection.” In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1339
(Fed. Cir. 2005). Whether a reference is analogous art is an issue of fact. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007).
We note that in Donner, referenced by Patent Owner, the Court explained
that it was necessary for the Board to “identify and compare the purposes or
problems” to which the cited reference and the challenged patent relate to
apply the proper standard in determining whether the cited reference is
analogous art. Donner, 979 F.3d at 1360–1361 (citing Sci. Plastic Prods.,
Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014) (“The analogous
art inquiry is a factual one, requiring inquiry into the similarities of the
problems and the closeness of the subject matter as viewed by a person of
ordinary skill.”)).
There seems to be no dispute that Hamilton is not in the same field of
endeavor as the ’722 patent. Thus, we analyze Hamilton to determine if it is
“reasonably pertinent” to the particular problem with which the inventor was
involved. As noted in the Petition, the ’722 patent describes using a control
mechanism in its driver circuit “known as control and feedback.” Pet. 54
(citing Ex. 1001, 7:37–48). Indeed, as Petitioner asserts, the Specification
states that “[c]ontrol and feedback theory are well-known. Its theory and its
various configurations are well documented in many text books and are
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widely used.” Id. at 54–55 (quoting Ex. 1001, 7:37–48). The Specification
discusses the control and feedback mechanism in its description of the
“[t]heory of operation” for its multiphase LED driver circuit. Ex. 1001,
7:20. In that same passage, the Specification explains the significance of the
control feedback method used:
How close Vf1 can be regulated to VREF and how fast for the
control loop to do so depends on the control feedback method
used and the limit of practical circuit components such as
OpAmp's gain bandwidth, input offset Voltage, input bias
current, etc. For simplicity, the embodiment of the invention
does not describe all of the control and feedback variations
and practical component limitations in the figures. Applying
those control and feedback variation does not depart from the
scope of this invention.
Id. at 7:43–52 (emphases added). Thus, we see from the Specification of the
’722 patent that: (a) the operation of the driver circuit utilizes a control and
feedback method, (b) such method determines how close Vf1 can be
regulated to VREF and how fast for the control loop, (c) all of the known
control and feedback variations are not described in the figures, and (d)
those various configurations are well documented in many text books and
are widely used. In other words, the ’722 patent is concerned with selecting
and providing a control feedback configuration to operate and control its
driver circuit. We find that Hamilton is an example of a text book, referred
to in the ’722 patent, that discloses a configuration for a control and
feedback mechanism. Thus, we find that, even though it may be in a
different field of endeavor, Hamilton “logically would have commended
itself to an inventor’s attention” when considering known control and
feedback mechanisms used in circuitry. See In re GPAC Inc., 57 F.3d 1573
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at 1578. Accordingly, we find that the record demonstrates that Hamilton is
analogous art.
b) Motivation to Combine
Having recognized Hamilton as analogous art, we next consider
Patent Owner’s related argument that Petitioner fails to establish a
motivation to combine Chiang and Hamilton. PO Resp. 68–70.
Specifically, Patent Owner asserts that “there is no evidence or argument
from Petitioner that a POSITA would be motivated to combine an LED
driving circuit with a portion of a digital-to-analog conversion circuit.” Id.
at 68. As in its analogous art argument, Patent Owner emphasizes that
Hamilton is a textbook on “advance circuitry on digital-to-analog
conversion,” compared to Chiang’s disclosure of an LED driving circuit. Id.
at 68–69 (citing Ex. 2007 ¶¶ 126–127). Patent Owner also argues that
Petitioner has not shown whether or why a skilled artisan would have had a
reasonable expectation of success in combining the teachings of Chiang and
Hamilton. Id. at 69. Additionally, Patent Owner asserts that Petitioner has
failed to explain how to combine the references without rendering Chiang
inoperable. Id. at 69–70 (citing Ex. 2007 ¶¶ 126–127).
Based on our review of the record as a whole, we find that Petitioner
has persuasively demonstrated that a skilled artisan would have been
motivated to combine Chiang and Hamilton in the manner proposed. In
particular, as Petitioner asserts, Pet. 53, Chiang discloses that its CCU “can
be accomplished by any current controlling circuit,” Ex. 1004 ¶ 39. We
credit Dr. Shackle’s testimony that “[a] POSITA would have understood one
such control circuit is disclosed in Hamilton . . . in the form of a control and
feedback mechanism.” Ex. 1003 ¶ 77. He testifies further that “[d]oing so
would merely require implementing a well-known, effective, and reliable
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type of circuit.” Id. ¶ 79. Dr. Shackle explains that Hamilton’s operation
was “well known and predictable and provides a simple way to implement
Chiang’s current control unit that merely requires conventional components
that were familiar to a POSITA.” Id. We find that such testimony has not
been adequately rebutted.
c) Claim 11
Claim 11 depends from method claim 1 and further recites,
[11a] regulating a phase current flowing through the phase
switch, so that when the phase current reaches a regulated
value programmed by a reference, it follows the
reference with the increase of the input voltage; and
[11b] reducing the phase current of an upstream group to a
minimal level or turning off the phase switch of the
upstream group, when the phase current of a next group
down stream said upstream group reaches its regulated
value with the increase of the input voltage.
Ex. 1001, 15:12–20 (emphasis and element brackets added).
Petitioner asserts that Chiang discloses limitation 11a because
Chiang’s CCUs are phase switches and each CCU regulates the current
flowing through it to a constant value. Pet. 55 (citing Ex. 1004 ¶ 38) (“To
keep brightness, the current of the current controlling unit is designed to a
constant value.”).
Petitioner combines Hamilton with Chiang to reach the requirement
that “when the phase current reaches a regulated value programmed by a
reference, it follows the reference with the increase of the input voltage.” Id.
Petitioner refers to Chiang’s teaching that its CCU “can be accomplished by
any current controlling circuit.” Id. at 56 (quoting Ex. 1004 ¶ 39).
Petitioner asserts that it was well known at the time of the invention “to
use/implement a current controlling circuit with a control and feedback
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mechanism, such as the one shown in FIG. 11-24b of Hamilton.” Id. (citing
Ex. 1003 ¶ 86 at 67). Petitioner asserts that in Hamilton’s current
controlling circuit, “when the reference voltage is fixed, the current being
sunk is limited to a maximum value determined by the reference voltage.”
Id. at 57 (citing Ex. 1006, Fig. 11-24b, 424–426). In particular, Petitioner
asserts that “the sunk current (Iref) flowing through transistor Q2 (i.e. a phase
switch) is proportional to the reference voltage Vref, and thus ‘follows’ the
reference.” Id. (citing Ex. 1003 ¶ 86 at 68). According to Petitioner and Dr.
Shackle, those features disclose step 11a of the claim method. Id. (citing Ex.
1003 ¶ 86 at 69).
For limitation 11b, Petitioner asserts that “Chiang discloses turning
off the phase switch of an upstream group, when the phase voltage of the
next group downstream exceeds Vd (i.e., the voltage across the
corresponding current controlling unit, which is designed to have a value
that is below 0.1v).” Id. at 58 (citing Ex. 1003 ¶ 86 at 69; Ex. 1004 ¶ 43).
According to Petitioner and Dr. Shackle, “[t]hat occurs when the voltage at
the input of the next group downstream reaches that group’s Vth+Vd.” Id.
(citing Ex. 1003 ¶ 86 at 69) (emphasis omitted). Based on that functioning
of Chiang and Hamilton’s regulating function, Petitioner asserts and Dr.
Shackle testifies that a skilled artisan “would understand that threshold
levels Vth1 and Vth2 are chosen such that these voltages can drive the
intended constant current through the corresponding phase switches,” and
“[w]hen the voltage Vth1+Vth2+Vd is achieved, the phase switch for group 2
will turn on and conduct the intended constant current at the same time as
the phase switch for group 1 turns off.” Id. at 58–59 (citing Ex. 1003 ¶ 86 at
69). In other words, Petitioner asserts that “the phase switch of the upstream
group is turned off as the phase current of the next group downstream comes
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to its regulated value.” Id. Therefore, according to Petitioner and Dr.
Shackle,
a POSITA would understand that, when the input voltage reaches
a predetermined value sufficient to drive the next group
downstream (e.g., D2), the phase current flowing through next
group downstream’s phase switch (i.e., current controlling unit
I2) would rise to its regulated (i.e., constant) value as the phase
switch for the upstream group (i.e., current controlling unit I1) is
turned off.
Id. at 59 (citing Ex. 1003 ¶ 86 at 70; Ex. 1004 ¶¶ 38–39).
Patent Owner argues that Petitioner has not established that the
combination of Chiang and Hamilton discloses limitation 11b. PO Resp. 70.
Specifically, Patent Owner asserts that “Chiang does not monitor the phase
voltage of any phase switch, because Chiang only has a detector to detect the
input voltage.” Id. Patent Owner asserts that, “[f]or the same reason,
Chiang does not disclose monitoring a phase current, and therefore cannot
determine ‘when the phase current of a next group downstream said
upstream group reaches its regulated value.” Id. (citing Ex. 2007 ¶¶ 130–
131).
Patent Owner contends that Petitioner has not demonstrated otherwise
by asserting that Chiang CCU I1 will be disabled (turned off) and CCU I2
will be enabled (turned on) “when the input voltage reaches
Vth1+Vth2+Vd.” Id. at 70–71 (citing Pet. 50). Patent Owner asserts that “the
plain language of claim 11 requires that the phase switch of the upstream
group is turned off when the downstream group reaches its regulated value.”
Id. (citing Ex. 2007 ¶¶ 132). According to Patent Owner, by focusing on
input voltages, “Petitioner does not argue that reaching the downstream
group’s regulated value causes the upstream group to turn off.” Id. (citing
Pet. 59). Patent Owner asserts that the “turning on and off” described by
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Petitioner is “caused by the detected input voltage and nothing else.” Id.
(citing Pet. 58).
In Petitioner’s Reply, Petitioner asserts that “Chiang shows that it
enables one CCU at a time, turning on the next CCU when it turns off the
prior CCU.” Pet. Reply 26. According to Petitioner, “Chiang discloses
turning the downstream CCU on when it turns the upstream CCU off,” and
“[t]hat is all limitation 11b requires.” Id.
Having considered the parties’ arguments and evidence, we find that
Patent Owner has the better position. In particular, we agree with Patent
Owner that limitation 11b requires turning off the phase switch of the
upstream group when the downstream group reaches its regulated value. See
PO Resp. 70 (citing Ex. 2007 ¶¶ 132). Indeed, the claim recites, in part,
“turning off the phase switch of the upstream group, when the phase current
of a next group downstream said upstream group reaches its regulated value
with the increase of the input voltage.” Ex. 1001, 15:17–20 (emphases
added). Thus, as Patent Owner asserts, that limitation “requires the prior
phase switch to remain on until the phase current of the next phase switch
‘reaches its regulated value.’” PO Sur-reply 22 (emphasis added). It is
apparent that Petitioner has not demonstrated that requirement as it focuses
on input voltages as opposed to monitoring the phase current of the upstream
and downstream groups, alleges only that “Chiang discloses turning the
downstream CCU on when it turns the upstream CCU off,” and incorrectly
asserts “[t]hat is all limitation 11b requires.” Pet. Reply 26.
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that the combination of Chiang and Hamilton
renders obvious claim 11.
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d) Claim 12
Claim 12 depends from claim 11 and further recites, “wherein the
reference of each phase switch is kept substantially constant.” Ex. 1001,
15:21–22. To reach this limitation, Petitioner refers to Chiang’s teaching
that each of its CCUs “can be designed to be a constant current source.”
Pet. 60 (citing Ex. 1004 ¶ 39). According to Petitioner and Dr. Shackle, “[a]
POSITA would understand that with Chiang’s current controller units (i.e.,
phase switches) implemented using the control-and-feedback circuits shown
in Hamilton’s FIG. 11-24b, the way to keep the current constant would be to
keep the reference voltage constant.” Id. (Ex. 1003 ¶ 86 at 70).
For the same reasons discussed for claim 11, from which claim 12
depends, we determine that Petitioner has not established by a
preponderance of the evidence that claim 12 is rendered obvious by the
proposed combination of Chiang and Hamilton.
e) Claim 18
Claim 18 depends from claim 15 and recites, “The driver circuit of
claim 15, wherein the phase switch comprises a N-Channel MOSFET, or a
P-Channel MOSFET, or a NPN bipolar transistor, or a PNP bipolar
transistor, or an Insulated Gate Bipolar Transistor (IGBT), or an analog
switch, or a relay.” Ex. 1001, 16:11–15. Petitioner asserts that the
combination of Chiang and Hamilton discloses this limitation. Pet. 60. In
particular, Petitioner asserts that a skilled artisan would have understood that
“the symbol used for Q2 in Hamilton’s Figure 11-24b shows that it is an
NPN bipolar transistor, and that this transistor would be operating as
Chiang’s phase switch when Hamilton’s FIG. 11-24b was used to
implemented [sic] Chiang’s current controlling units (I1, I2 . . . In).” Id. at 61
(citing 1003 ¶ 86 at 70–71). We find that showing to be persuasive.
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Patent Owner’s does not raise any separate arguments for claim 18.
Based on our review of the record, we determine that Petitioner has
established by a preponderance of the evidence that claim 18 is rendered
obvious by the proposed combination of Chiang and Hamilton.
f) Claim 21
We addressed Petitioner’s anticipation challenge of claim 21 above, in
Section II.D.2.c., and determined that Petitioner demonstrated by a
preponderance of the evidence that Chiang along anticipates the claim.
Accordingly, we do not reach Petitioner’s second challenge of claim 21 here
based on obviousness over Chiang and Hamilton.
G. Obviousness based upon Chiang and Hirane
Petitioner asserts that claims 17 and 18 are rendered obvious over
Chiang and Hirane. Pet. 62–68. Petitioner relies on Chiang as disclosing
the elements of claim 15, from which claims 17 and 18 depend. Id. at 60–
61, 65 (referring to its anticipation ground to assert that “Chiang discloses
claim 15.”). Petitioner relies on Hirane only to reach the additional
limitations of the dependent claims. We focus on those limitations here.
1. Hirane
Hirane is directed to a “light-emitting element array device and a
light-emitting element driver circuit employed as a light source for a
recording operation in a printing apparatus of an electronic photography.”
Ex. 1007, 1:10–14. Hirane’s Figure 10 is set forth below:
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Id., Fig. 10. Hirane’s Figure 10 is a circuit diagram showing an example of
a “conventional light-emitting diode array driver circuit.” Id. at 3:49–50.
2. Discussion
a) Claim 17
Claim 17 depends from claim 15 and recites, “The driver circuit of
claim 15, wherein at least one of the phase switches is connected to a resistor
in series.” Ex. 1001, 16:9–10. Petitioner asserts that Hirane discloses this
limitation because its driver circuit comprises a phase switch, i.e., a current
controlling unit, which includes a transistor switch connected in series with a
current limiting resistor. Pet. 66 (citing Ex. 1003 ¶ 96 at 79). Referring to
Hirane’s Figure 10, Petitioner asserts that Hirane’s transistors D1 to Dn are
switches that are connected to a resistor in series. Id. at 66–67 (citing 1003
¶ 96 at 79). According to Petitioner, “Hirane shows a simple and
conventional constant-current circuit design that a POSITA would be
motivated to use for Chiang’s current controlling unit because it is a simple,
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robust, and functional approach.” Id. at 65 (citing Ex. 1003 ¶ 94). Petitioner
asserts that “using Hirane’s switch plus current-limiting resistor design in
Chiang would be predictable, as both Chiang’s driver circuit and the
conventional current-controller described in Hirane would continue to
function exacly as described.” Id. Petitioner asserts also that “a POSITA
would reasonably expect to success in using Hirane’s switch plus current-
limiting resistor approach to implement Chiang’s current controlling unit.”
Id. (citing Ex. 1003 ¶ 95).
Patent Owner contends that Petitioner fails to establish a motivation to
combine Chiang and Hirane based on the differences between the references.
PO Resp. 74–75. Specifically, Patent Owner contends that “Chiang is
directed to a ci[r]cuit to drive LEDs with an AC input voltage that changes
using analog circuitry in a lighting application with phase switches that
sequentially turn on and off,” whereas “Hirane is directed to an electronic
photograph printer . . . with a DC input voltage that is constant with a digital
input signal for a current reference with independently selectable switches.”
Id. at 75. According to Patent Owner, “a POSITA looking to implement a
‘current controlling unit’ in Chiang would not look to Hirane, which has no
ability to control current in a circuit where the input voltage varies, as it does
in Chiang.” Id. (citing Ex. 2007 ¶¶ 138–139). Additionally, Patent Owner
asserts that Petitioner fails to show whether or why a skilled artisan would
have had a reasonable expectation of success in combining the teachings of
Chiang and Hirane to achieve the invention of claim 17. Id. at 76.
In Petitioner’s Reply, Petitioner asserts that Patent Owner parses the
references too narrowly because Chiang discloses a CCU that can be
embodied by any known device that turns current flow on/off, and Hirane
discloses a simple version of such a CCU, comprising a MOSFET acting as
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a switch in series with a current-limiting resistor. Pet. Reply 28–29.
Petitioner asserts also that it relies on Hirane for no more than “a simple
component of Hirane’s ‘prior art’ LED device, which controls the current
flow and on/off state of the LEDs using a MOSFET in series with a current-
limiting resistor.” Id. at 29 (citing Pet. 64–65).
In Patent Owner’s Sur-reply, Patent Owner maintains that a skilled
artisan would not have modified Chiang as Petitioner proposes. PO Sur-
reply 23–25. In particular, Patent Owner asserts that “Hirane’s current
limiting resistors cause a constant current in each individual path for each
LED, as each LED is individually controlled.” Id. at 23 (citing Ex. 1007,
1:19–24; PO Resp. 74–75). According to Patent Owner, because “Chiang
forms a single path for a constant current, as each LED group lights
sequentially,” there would be no reason to “control the current flowing
through each LED group because the same total current always flows in
Chiang’s embodiment.” Id. Patent Owner asserts that Petitioner’s
combination engages in hindsight bias and “fails to consider Hirane as a
whole, instead importing only Hirane’s current limiting resistors into
Chiang’s circuit,” without explaining why. Id. at 24.
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Based on our consideration of Petitioner’s proposed combination, we
agree with Patent Owner that Petitioner has not explained persuasively why
a skilled artisan would have had reason to modify Chiang to incorporate
Hirane’s conventional constant-current circuit design. Petitioner’s reason
for the combination is that Hirane’s design “is a simple, robust, and
functional approach.” Pet. 65 (citing Ex. 1003 ¶ 94). Petitioner and Dr.
Shackle’s conclusion, however, appears to be based only on the fact that
Hirane’s design was “conventional.” Pet. 65; Ex. 1003 ¶ 94. But “[a] patent
composed of several elements is not proved obvious merely by
demonstrating that each element was, independently, known in the prior art.”
KSR, 550 U.S. at 401. Without more, we find that Petitioner has not
established a sufficient motivation to modify Chiang as proposed, and agree
with Patent Owner that Petitioner’s rationale for modifying Chiang appears
to be based on hindsight, i.e., merely to meet the limitation of claim 17.
Accordingly, we determine that Petitioner has not established by a
preponderance of the evidence that claim 17 is rendered obvious by the
proposed combination of Chiang and Hirane.
b) Claim 18
We addressed Petitioner’s other obviousness challenge of claim 18
above, in Section II.F.2.b., and determined that Petitioner demonstrated by a
preponderance of the evidence that the combination of Chiang and Hamilton
renders this claim obvious. Accordingly, we do not reach Petitioner’s
second challenge of claim 18 here based on obviousness over Chiang and
Hirane.
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III. PETITIONER’S MOTION TO STRIKE
Petitioner moves to exclude Exhibits 2009–2016. Mot. 1. Patent
Owner filed those exhibits on June 11, 2021, along with, and in support of,
its Patent Owner’s Sur-reply. The exhibits are listed in Patent Owner’s
Updated Exhibit List, Paper 36. Petitioner timely objected to the exhibits on
June 18, 2021. Paper 34. Petitioner asserts that it requested Patent Owner to
withdraw the exhibits on the same day, which Patent Owner declined to do.
On June 30, 2021, the Board authorized Petitioner to file a Motion to Strike.
Petitioner asserts that the Board should strike Exhibits 2009–2016
because the exhibits represent new evidence other than deposition transcripts
of the cross-examination of any reply witness, and therefore are prohibited
under 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide. Mot.
1–2. Patent Owner opposes the motion, asserting that it submitted Exhibits
2009–2016 not as new evidence, but as proper rebuttal evidence to what it
deemed to be new arguments raised in Petitioner’s Reply. Mot. Opp. 2–3.
According to Patent Owner, the prejudice to Patent Owner in striking the
exhibits would outweigh the prejudice to Petitioner in not striking them. Id.
at 5.
Patent Owner’s argument that the exhibits constitute “proper rebuttal
evidence” is not well-taken. As Petitioner asserts, our Trial Rules and
Consolidated Trial Practice Guide both prohibit submitting new evidence
other than deposition transcripts of the cross-examination of any reply
witness. See 37 C.F.R. § 42.23(b); Patent Trial and Appeal Board
Consolidated Trial Practice Guide November 2019 (“CTPG”), 73–74 (“The
sur-reply may not be accompanied by new evidence other than deposition
transcripts of the cross-examination of any reply witness.”). We find Patent
Owner’s assertion that Exhibits 2009–2016 were not submitted as “new
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evidence” unpersuasive. The exhibits were not of record prior to Patent
Owner filing them with its Sur-reply. Thus, they were submitted with the
Sur-reply as new evidence. Patent Owner does not contend, nor do we find,
that the exhibits comprise deposition transcripts of the cross-examination of
any reply witness. Thus, the exhibits were improperly submitted, without
authorization and in violation of our Rules and Guidance.
Patent Owner’s assertion that striking the improperly submitted
exhibits would be prejudicial is unavailing. Our Rules and Consolidated
Trial Practice Guide are readily available and Patent Owner knew or should
have known that submitting Exhibits 2009–2016 with its Sur-reply was
prohibited. Moreover, our Consolidated Trial Practice Guide explains:
If a party believes that a brief filed by the opposing party raises
new issues, is accompanied by belatedly presented evidence, or
otherwise exceeds the proper scope of reply or sur-reply, it may
request authorization to file a motion to strike. Alternatively, a
party may request authorization for further merits briefing, such
as a surreply, to address the merits of any newly-raised
arguments or evidence.
CTPG 80. Thus, the Board has identified appropriate ways for a party to
address matters that it considers to be beyond the scope of a reply brief.
Patent Owner had the opportunity to address the merits of any alleged new
arguments in its Sur-reply, and it indeed did. However, further addressing
those matters by submitting new evidence was not authorized by Board
Rules or Guidance.
Further, we note that Patent Owner’s reference to the Consolidated
Trial Practice Guide for assertion that “motions to strike are an ‘exceptional
remedy’ that is ‘rarely granted,” is misplaced. Mot. Opp. 3 (citing CTPG
80–81). The Consolidated Trial Practice Guide states that “striking the
entirety or a portion of a party’s brief is an exceptional remedy that the
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Board expects will be granted rarely.” CTPG 80 (emphasis added).
Petitioner does not seek to strike the entirety or a portion of Patent Owner’s
Sur-reply. Rather, the motion is directed to the exhibits submitted with the
Sur-reply only.
The facts here merit striking Exhibits 2009–2016, as it is beyond
dispute that those exhibits are new evidence that was inappropriately
submitted. See CTPG 81.
IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 1, 10, 15, 18, and 21 of the ’722
patent are unpatentable,9 but has not shown by a preponderance of the
evidence that claims 2, 3, 11, 12, 17, and 19 are unpatentable. Additionally,
we grant Petitioner’s Motion to Strike.

9 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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In summary:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that based on a preponderance of the evidence claims 1,
10, 15, 18, and 21 of the ’722 patent are unpatentable;

10 As discussed in the analysis of the claims asserted for this ground, we
have not reached the obviousness challenge asserted for claims 1, 15, and
21, as we have determined those claims are unpatentable based on the
anticipation ground.
11 As discussed in the analysis of the claims asserted for this ground, we
have not reached the obviousness challenge asserted for claim 21, as we
have determined that claim is unpatentable based on the anticipation ground.
12 As discussed in the analysis of the claims asserted for this ground, we
have not reached the obviousness challenge asserted for claim 18 over
Chiang and Hirane, as we have determined that claim is unpatentable based
on the obviousness challenge over Chiang and Hamilton.
Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 10,
15, 19, 21 102/103(a)
10 Chiang 1, 10, 15, 21 2, 3, 19
2, 3 103(a) Chiang, Leung 2, 3
11, 12, 18,
21 103(a)
11 Chiang, Hamilton 18 11, 12
17, 18 103(a)12 Chiang, Hirane 17
Overall
Outcome
1, 10, 15, 18,
21
2, 3, 11, 12, 17,
19
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FURTHER ORDERED that Petitioner has not shown that claims 2, 3,
11, 12, 17, and 19 are unpatentable based on Chiang, either alone or in
combination with Leung, Hamilton, or Hirane;
FURTHER ORDERED Petitioner’s Motion to Strike is granted; 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.

For PETITIONER:

Heath Briggs
briggsh@gtlaw.com

Barry Schindler
schindlerb@gtlaw.com

Andrew Sommer
sommera@gtlaw.com

For PATENT OWNER:

David Radulescu
david@radip.com

Michael Eisenberg
meisenberg@steptoe.com