Sure-Fire Electrical Corp.v.Yongjiang Yin and Shenzhen El Lighting Co. Ltd.

Patent Trial and Appeal Board

Feb 22, 2016

12092296 (P.T.A.B. Feb. 22, 2016)

Trials@uspto.gov Paper No. 56
571.272.7822 Filed: February 22, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SURE-FIRE ELECTRICAL CORPORATION,
Petitioner,
v.
YONGJIANG YIN and SHENZHEN EL LIGHTING CO. LTD.,
Patent Owner.

Case IPR2014-01448
Patent 7,671,279 B2

Before DEBRA K. STEPHENS, JENNIFER S. BISK, and PETER P.
CHEN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
A. Background
Sure-Fire Electrical Corp. (“Petitioner”)1, filed an Inter Partes Review
Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1 and 7

1 Along with Petitioner, Best Buy Stores, L.P. and BestBuy.com
(collectively “Best Buy”), filed the Petition for Inter Partes Review (Paper
1). On May 1, 2015, Patent Owner and Best Buy jointly filed a motion to
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(the “challenged claims”) of U.S. Patent 7,671,279 B2 (Exhibit 1001, “the
’279 Patent”). Petitioner relied on the following references: US 6,957,001
B2 (iss. Oct. 18, 2005) (“He”) (Ex. 1004); US 3,942,859 (iss. Mar. 9, 1976)
(“Korodi”) (Ex. 1005); and Anton Gustafsson and Magnus Gyllenswärd, The
Power-Aware Cord: Energy Awareness through Ambient Information
Display, CHI 2005, 1423–26 (Apr. 2–7, 2005) (“Gustafsson”) (Ex. 1003).
Yongjiang Yin and Shenzhen El Lighting Co. Ltd. (collectively “Patent
Owner”), filed a Patent Owner’s preliminary response thereto (Paper 10,
“Prelim. Resp.”).
On March 4, 2015, we instituted an Inter Partes review of claims 1
and 7 based upon Petitioner’s assertion that claims 1 and 7 are unpatentable
under 35 U.S.C. § 103(a), for obviousness over Gustafsson and He (Paper 13
(“Inst. Dec.”)).
In response to Petitioner’s Request for Rehearing under 37 C.F.R.
§ 42.71(d) filed March 18, 2015 (Paper 15) (“Req. for Reh’g”), we modified
our inter partes review based on Petitioner’s assertion that claims 1 and 7
are unpatentable under 35 U.S.C. § 103(a), for obviousness over He and
Korodi (Paper 25 (“Dec. on Req. for Reh’g”)).
Accordingly, we instituted trial for both challenged claims, claims 1
and 7, on the grounds of unpatentability below.

Claims Basis References
Claims 1 and 7 § 103(a) Gustafsson and He

terminate proceedings between them (Paper 21). We granted that
termination (Paper 24); thus, Best Buy is no longer a party to this review.

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Claims Basis References
Claims 1 and 7 § 103(a) He and Korodi

After institution of trial, Patent Owner filed a Patent Owner’s
Response (Paper 27 (“PO Resp.”)) and Petitioner filed a Reply to the Patent
Owner’s Response (Paper 38 (“Pet. Reply”)).
An oral hearing was held on January 11, 2016, a transcript of which
has been entered into the record (Paper 54 (“Tr.”)).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons given herein, Petitioner has shown by a preponderance of the
evidence that the challenged claims are unpatentable.
B. Related Matters
Patent Owner and Petitioner both identify, as a related matter, the co-
pending district court case asserting the ’279 Patent, in Shenzhen EL
Lighting Technology Co., LTD et al. v. Sure-Fire Electrical Corp. et al., No.
1:14-cv-00727-PAB (D. Colo.) (Pet. 7; Paper 8, 1, § II).
C. ’279 Patent (Ex. 1001)
The ’279 Patent, titled “CURRENT-SEEN CABLE,” issued on March
2, 2010 (Ex. 1001). The ’279 Patent describes an electroluminescence
power or signal cable (id. at Abstract, 1:15–29). According to the ’279
Patent, a purpose of the invention is to provide a current-seen cable which
combines an electroluminescence cable and various power or signal cords,
having a simple structure and a visual indicator of its live state (id. at 1:33–
37).
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Specifically, the ’279 Patent describes a cable which includes a main
power or signal cord and a plurality of electroluminescence cords (id. at
Abstract, 1:41–43).
Figure 1 is reproduced below:

Figure 1, reproduced above, is a schematic diagram of an example
configuration (id. at 2:15–16). In Figure 1, electroluminescence cored bars
(or electroluminescence cored cords) 1, 2, 3 are made of metal foil strip 8
(see Fig. 2) or metal foil wire 9 (see Fig. 3) coated with insulating medium
layer 10, layer 11 (which is a mixture of fluorescent powder and binder), and
transparent conductive layer 12 (Ex. 1001, 4:9–16, Fig. 1). An insulated
power cord forms a central axis, and includes live wire 4, zero phase wire 6,
and insulation layer 13 (id. at 4:18–20). Bare metal wire 5 intertwists
helically the insulated power cord (id. at 4:20–21). Electroluminescence
cored bars 1, 2, 3 intertwist helically on the central axis so that transparent
conductive layer 12 is in contact with bare metal wire 5 (id. at 4:21–25).
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The whole cable is encapsulated by transparent plastics layer 7 to form a
current-seen cable (id. at 4:25–27).
Metal base strips for each of electroluminescence cored bars 1, 2, 3
are connected to AC output line of outputs 32, 31, 30 of AC drivers 28 via a
wire (id. at 4:38–48). Bare metal wire 5, as a central axis, is connected to
another AC (alternating current) output line of outputs 32, 31, and 30
connected to AC drivers 28 (id. at 48–50). Input power ends of driver 28 are
connected to live wire 4 and zero phase line 6 of the power (id. at 4:50–53).
In another embodiment, three electroluminescence cords 40, 41, and
42 are intertwisted helically, forming an electroluminescence cable (id. at
6:10–12). A main cord is arranged in the central axis of the formed
electroluminescence cable or lateral to the electroluminescence cable (id. at
6:18–20).

D. Claims
Both of the challenged claims, claims 1 and 7, are independent claims.
Claims 1 and 7 are reproduced below:
1. A current-seen cable, includes a driver, a main cord, a
bare metal wire, a plurality of electroluminescence cored bars
or electroluminescence cored cords and an outer transparent
plastic layer, wherein said a plurality of electroluminescence
cored bars or electroluminescence cored cords are arrayed
abreast and are intertwisted helically in sequence to form an
electroluminescence cable, the bare metal wire is arranged in
the center of the current-seen cable or lateral to the current seen
cable and is in contact with a conductive layer of each
electroluminescence cored bar or electroluminescence cored
cord; a metal base strip of each electroluminescence cored bar
or a conductive wire of each electroluminescence cored cord
and the bare metal wire are connected to each corresponding
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end of a multi-group AC output of the driver respectively; the
main cord is arranged in the centre axis of the current-seen
cable or lateral to the current-seen cable; said current-seen
cable, said bare metal wire and said main cord are encapsulated
in the outer transparent plastics layer; every
electroluminescence cored bar or electroluminescence cored
cord is driven by the driver and emits light in sequence when
the main cord and the driver are live.

7. A current-seen cable, includes a driver, a main cord
surrounded by an insulation layer, a plurality of
electroluminescence cored cords which comprise a conductive
wire surrounded by an insulating coat, an electroluminescence
powder coat coated on said insulating coat and a transparent
conductive layer coated on said electroluminescence powder
coat, and an outer transparent plastic layer, wherein said
plurality of electroluminescence cored cords are arrayed abreast
and are intertwisted helically in sequence to form an
electroluminescence cable; the main cord is arranged in the
center of the electroluminescence cable or lateral to the
electroluminescence cable; said electroluminescence cable and
said main cord are encapsulated in the outer transparent plastic
layer; every electroluminescence cored cord is driven by the
driver and emits in sequence when the main cord and the driver
are live.

(Ex. 1001, 7:20–40, 8:8–23).
II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1277–1279 (Fed. Cir. 2015), cert.
granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S.
Jan. 15, 2016) (No. 15-446) (“Congress implicitly approved the broadest
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reasonable interpretation standard in enacting the AIA,”2 and “the standard
was properly adopted by PTO regulation”).
1. “said plurality of electroluminescence cored cords are
arrayed abreast and are intertwisted helically in sequence”
In our analysis in the Decision to Institute, we interpreted the
limitations “intertwisted” and “abreast” (Inst. Dec. 7–8). We agreed with
Patent Owner that intertwisted should be interpreted as “twisted together”
and “abreast” as “beside one another with bodies in line” (id.; Prelim. Resp.
25). Therefore, we interpreted “said plurality of electroluminescence cored
cords are arrayed abreast and are intertwisted helically in sequence” as the
electroluminescence cored cords are set beside one another in line and
twisted together (Dec. 7–8). Neither party contests this construction (see
e.g., PO Resp. 4) and we discern no reason to deviate from this construction.
2. “emits light in sequence” and “emits in sequence”
Claim 1 recites “every electroluminescence cored bar or . . . cord is
driven by the driver and emits light in sequence when the main cord and the
driver are live,” and claim 7 recites “every electroluminescence cored cord is
driven by the driver and emits in sequence when the main cord and the
driver are live” (Ex. 1001, 7:37–40, 8:21–23 (emphasis added)).
In the Patent Owner’s Response, Patent Owner contends “emits light
in sequence” should be interpreted as “emits and dies light of each
electroluminescent cored bar or cord in succession, one after the other” (PO
Resp. 43) (emphasis added). Patent Owner points to various portions of the
’279 Specification as supporting this interpretation (id. at 44–47; Ex. 1001,

2 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”).
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1:10–12, 1:40–2:8, 4:38–5:17) as well as discussion in the prosecution
history (PO Resp. 48–49; Response to Office Action dated June 22, 2009
(Ex. 1002)).
Petitioner counters the ’279 Patent does not support Patent Owner’s
interpretation and Patent Owner’s interpretation is not the broadest
reasonable construction (Pet. Reply 17–20). Specifically, Petitioner asserts
Patent Owner relies almost exclusively on a description of one embodiment,
although not every embodiment describes the process of “emits and dies
light in sequence” (id. at 17–18). Instead, Petitioner contends, several other
embodiments are not limited to “emits and dies” light in sequence (id. at 18
(emphasis added)). Additionally, Petitioner argues the prosecution history
does not support the interpretation of “emits light in sequence” as “emits and
dies light in sequence” because the portions relied upon by Patent Owner are
directed to distinguishing claim 7 over the cited prior art and do not provide
an interpretation or even discuss the limitation “emits light in sequence” (id.
at 18–19). Petitioner further argues no reason exists to introduce extrinsic
evidence, such as expert testimony, to interpret this limitation (id. at 20).
We decline to adopt Patent Owner’s proposed claim construction.
Claim terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An inventor may rebut the presumption by providing a definition of
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
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specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Initially, we note Patent Owner chose not to recite “emits and dies” in
its claims, but instead, recited only “emits.” Patent Owner has not proffered
any evidence or argument as to why “emits and dies” used in the ’279 Patent
Specification, would have been abbreviated to “emits” in recitation of the
claims. Nor is the term “emits” defined explicitly in the ’279 Patent
Specification. Thus, we begin with the assumption that the term “emits”
does not include “and dies,” as that comports with the plain and ordinary
meaning of the word “emits”
Thus, taking the plain and ordinary meaning at the time of the
invention, we interpret “emits light in sequence” as “throws off or gives off
or out light in a continuous or connected series” and interpret “emits in
sequence” as “throws off or gives off or out, in a continuous or connected
series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th
ed. 2000)). Patent Owner has not proffered sufficient evidence or argument
that “emits light in sequence” and “emits in sequence” should be read more
narrowly than the plain and ordinary meaning as suggested by Patent Owner.
Specifically, Patent Owner’s assertion that the Specification supports the
proposed interpretation of “emits light in sequence” as “emits and dies light
in sequence” is misplaced. The Specification of the ’279 Patent does not
explicitly define “emits light in sequence” as “emits and dies light in
sequence.” Nor is any explicit definition provided for “emits light in
sequence” or “emits in sequence.” Patent Owner would have us import
limitations disclosed in several of the embodiments, including Embodiment
1, to interpret “emits” as “emits and dies light in sequence” or “emits and
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dies in sequence” (PO Resp. 44–47). However, as noted by Petitioner (Pet.
Reply 17–20), the Specification of the ’279 Patent describes several other
embodiments which do not limit the term “emits light in sequence” or “emits
in sequence” to “emits and dies light in sequence” or “emits and dies in
sequence.” For example, the Specification of the ’279 Patent describes, in
the Description of the Invention and in Embodiments 3 and 6–8, emitting
light “section by section” (id. at Abstract, 5:37–41, 6:39–42, 57–61).
Indeed, these embodiments along with Embodiment 4 do not describe that
the cable emits and dies light (id. at 5:19–7:18). Moreover, the Specification
describes emitting light may be in a variety of forms (id. at 1:63–67).
Patent Owner additionally asserts “Patent Owner specifically
disclaimed emission of light over the full length of the cable, but rather
limited the patent to segment by segment illumination along the length of the
cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43).
Patent Owner identified pages 9–10 of the Response to Office Action filed
September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO
Resp. 48–49). However, we agree with Petitioner that the statements in the
Response to Office Action do not disclaim subject matter, nor do these
statements provide an explicit definition of “emits,” “emits light in
sequence, and “emits in sequence.” Indeed, the discussion, limited to claim
7, discusses the object of the invention and distinguishes the invention as
recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930)
(Resp. to OA 9–10). This discussion does not qualify as “clear and
unmistakable” disavowing statements as required to meet the “demanding
standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No.
2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016).
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We, therefore, determine the term “emits light in sequence” and
“emits in sequence” used in the claims, should not be interpreted as “emits
and dies light of each electroluminescent cored bar or cord in succession,
one after the other,” but instead, should be interpreted giving the terms their
ordinary and customary meaning as understood by an ordinarily skilled
artisan at the time of the invention, in light of the Specification.
It follows, we determine the construction of “emits light in sequence”
is “to throw off or give off or out light in a continuous or connected series”
and “emits in sequence” is “to throw off or give off or out, in a continuous or
connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377,
1065 (10th ed. 2000)).
B. Obviousness over He and Korodi
Petitioner argues claims 1 and 7 of the ’279 Patent are obvious over
He and Korodi (Pet. 34–49).
1. Overview of He (Exhibit 1003)
He describes a color-changing and multi-colored electroluminescence
cable (Ex. 1004, Abstract). A plurality of electroluminescent filaments are
insulated from each other and helically wound on the outer side of the axis
(id.).
Figure 1 is reproduced below:
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Figure 1, reproduced above, is a schematic diagram illustrating the
structure of an individual electroluminescent filament of He (id. at 3:25–27).
As illustrated, the electroluminescent filament comprises color polymer
casing tube disposed on transmission wires 5 and 5’, and the outer surface of
conductive layer 4 (id. at 3:54–56). Transmission wires 5 and 5’ are wound
at intervals on conductive layer 4 (id. at 3:52–53). Conductive layer 4 is
coated on light emitting layer 3, which is coated on medium insulating layer
2 (id. at 3:50–51). Medium insulating layer 2 is coated on core wire 1 which
is led out as an electrode (id. at 3:46–47).
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Figure 2 is reproduced below:

Figure 2, reproduced above, is a schematic diagram of an embodiment
of the electroluminescent cable (id. at 3:28–30). Electroluminescence cable
12 comprises a transparent polymer casing tube 11 disposed on the outer
side of a group of electroluminescent filaments 10 (id. at 4:21–23). The
group of electroluminescent filaments includes individual
electroluminescent filaments 8 insulated from each other and helically
wound on the outer side of core wire 9 which acts as a central axis (id. at
4:16–19). Each of the electroluminescent filaments 8 connects with
programmable electronic elements that control each electroluminescent
filament 8, respectively, to emit light according to a predetermined program
that controls color, saturation, luminance, and other aspects (id. at 4:25–39).
When the electroluminescent filaments are activated, each
electroluminescent filament will emit light in sequence so the light-emitting
cable can emit changeable colors and brightness (id. at 4:39–42).

2. Overview of Korodi (Exhibit 1005)
Korodi describes a safety power conductor that includes light-emitting
means used for signaling the location of the conductor and the presence of
an electrical potential in the conductor with respect to ground (Ex. 1005,
Abstract). A power cord, to be used as domestic extension cords, heavier
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industrial cords, or cords used in inaccessible areas, comprising a conductor,
having an insulated covering, is illuminated laterally by light that is emitted
when current is applied (id. at Abstract, 1:15–19, 1:56–62, 3:39–44).
Figure 1 is reproduced below.

Figure 1, reproduced above, is a side view of an embodiment of
Korodi’s invention. As shown in Figure 1, electrical line or cable 1 has a
pair of parallel electrical conductors 2 and 3 separated and insulated by
insulating covering 4 (id. at 2:55–59). Insulating covering 4 is at least
partially transparent to light, and that transparent zone extends between
optical fibers 10 in channel 19 and the external surface of the cable covering
(id. at 2:55–59, 3:32–44). This structure permits transmission of light from
bulb 9, via optical fibers 10, to the exterior of the cable along its length (id.
at 3:32–38). The conductor, including the light-emitting means, signal
location of the conductor and presence of an electrical potential in the
conductor with respect to an electrical base or ground (id. at Abstract).

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3. Analysis
a. “emits light in sequence” and “emits in sequence”
Petitioner asserts He teaches using programmable electronic circuitry
(the driver) to light electroluminescent (or electroluminescence) wires in
sequence when the main cord and driver are live (Pet. 42). Petitioner
specifically points to He’s disclosure that color, saturation, luminance, and
other aspects are controllable such that each filament of the cable will emit
light in sequence (id. (citing Ex. 1004, 4:38–42)).
Patent Owner argues He’s sequence limitation relates to blending
multi-colored electroluminescent filaments for creating various colors and
brightness, in contrast to the ’279 Patent’s spatio-temporal sequence that
does not energize the electroluminescent filaments simultaneously (PO
Resp. 50).
We do not agree He requires blending of colors as asserted by Patent
Owner. Patent Owner points to He’s description that describes its system
has control over color, saturation, and luminance, and contends, as a result,
that He’s multi-colored electroluminescent filaments are blended together,
rather than distinct (Ex. 2015 ¶ 54). However, He discloses “the color,
saturation, luminance and other aspects are controllable. Through the
control of the programmable electronic elements, each filament of the cable
will emit light in sequence such that the light-emitting cable can be formed
with changeable colors and brightness” (Ex. 1004, 2:17–21) (emphasis
added). Moreover, Patent Owner’s proffered Declarant, Dr. Robert T.
Weverka, testifies that even blending to achieve a color such as purple,
would require turning the electroluminescent filaments on or off to achieve
colors such as turning off a green filament (Ex. 1016, 112:5–114:1). Thus,
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we find He teaches the color, saturation, luminance and other aspects of the
electroluminescence cable are controllable through control of the
programmable electronic elements which in turn, control each filament of
the cable to emit light in sequence (id. at 4:35–42). Therefore, we find He
teaches every electroluminescence filament emits light in sequence.
Accordingly, we find He teaches or at least suggests the
programmable electronic elements (driver) control each electroluminescent
filament respectively by controlling color, saturation, and luminance, so
each electroluminescent filament may emit or not emit light according to a
predetermined program (Ex. 1004, 4:26–30). As He describes controlling
the color of the cable, we find an ordinarily skilled artisan would have found
it obvious upon reading He, that the cable may change from, for example,
red to blue. As a result, we find specific electroluminescent filaments would
emit light depending on the color, the specific electroluminescent filament
emits. In the example, one filament may emit red light and be on when the
cable emits red light, but that filament will not emit light when the cable is
to emit blue light. Instead, a second filament will emit blue light.
Furthermore, we agree with Petitioner and find no evidence in the
record that any reason has been articulated or evidence shown, why an
ordinarily skilled artisan would not possess the skill to modify He’s ability
to control each electroluminescent filament which emits light in a sequence,
to control each electroluminescent filament to be on or off, and to control
each electroluminescent filament to emit light in a continuous or connected
series. Indeed, we are not persuaded an ordinarily skilled artisan would have
found it “uniquely challenging” or “difficult for one of ordinary skill in the
art” to exercise control over the filaments, to turn the electroluminescent
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filaments on or off in a continuous or connected series (a sequence), to
achieve a particular lighting effect, given He’s teaching of control of the
electroluminescent filaments. See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor are we persuaded the
modification represented an unobvious step over the prior art. See id.
Accordingly, we find He teaches each electroluminescent filament throws
off or gives off or out light in a continuous or connected series.
Thus, we find He teaches or at least suggests “every
electroluminescence cored bar or electroluminescence cored cord is driven
by the driver and emits light in sequence when the main cord and the driver
are live,” as recited in claim 1 and “every electroluminescence cored cord is
driven by the driver and emits in sequence when the main cord and the
driver are live,” as recited in claim 7.3

b. Obvious to Combine
Petitioner states He provides an illuminated electroluminescent cable
“that fits seamlessly with the illuminated power cords disclosed in Korodi”
(Pet. 35). According to Petitioner, He discloses a cable with EL wires
intertwisted helically on a metal core wire and circuitry for driving the wires
such that light appears to flow through the cable (id.). Petitioner then asserts

3 Even if we were to adopt Patent Owner’s proffered interpretation of “emits
and dies light of each electroluminescent cored bar or cord in succession,
one after the other,” we conclude, based on the findings and reasoning set
forth above, an ordinarily skilled artisan would have found it obvious to
modify He to set the predetermined program to control each
electroluminescent filament to “emit and die” light in succession, one after
the other.
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an ordinarily skilled artisan would have found replacing the aluminum core
wire in He with a power cord, thereby “creating an improved illuminated
cable using EL wires that light in sequence to indicate the presence of
current,” to be obvious (id. at 36). Petitioner further contends that
combining the teachings of He and Korodi would have been the merger of
familiar elements according to their established functions, known methods,
and predictable results (id.).
Patent Owner argues (i) He and Korodi are non-analogous art (PO
Resp. 33–34); (ii) Petitioner provides no articulation of any motivation to
combine the teachings of He and Korodi beyond conclusory statements
(Prelim. Resp. 30); (iii) the proposed combination would render both
references inoperable, Petitioner provided no evidence that the teaching of
He and Korodi are “readily compatible” or evidence the teachings would
have been a predictable variation of devices, and the proposed combination
would not result in the claimed invention disclosed in the ’279 Patent (PO
Resp. 33–34); and (iv) He teaches against combination with Korodi (id.).
Patent Owner initially argues He and Korodi are non-analogous art
(PO Resp. 37–40). A reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the claimed
invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314,
1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
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reasonably pertinent to the particular problem with which the inventor is
involved.” Bigio, 381 F.3d at 1325 (citations omitted).
Patent Owner contends He discloses multi-colored EL wires being
blended to produce an array of different colors along the length of the cable
unlike the ’279 Patent which requires that only one EL wire is live at any
one given time (PO Resp. 34–35, 38–39). Patent Owner further argues the
differences between He and the claimed invention and asserts Petitioner has
failed to indicate why an ordinarily skilled artisan would look to He (id.).
Patent Owner additionally argues Korodi does not teach or suggest use of
the light to communicate direction of current flow (id. at 39–40).
We determine He and Korodi are analogous art to that of the ’279
Patent. Moreover, Patent Owner does not even sufficiently articulate from
what field of endeavor Patent Owner believes applies to each of the ’279
Patent, He, and Korodi (see PO Resp. 37–40).
Nonetheless, even in light of Patent Owner’s assertions as to what the
references teach, we agree with Petitioner that the ’279 Patent, He, and
Korodi are from the same field of endeavor –– the field of lighted cables
(Pet. Reply 15). Specifically, we find He is related to color-changing and
multi-colored electroluminescent cables –– lighted cables (Ex. 1004,
Abstract). We further find Korodi is related to electrical cables that include
light-emitting means capable of transmitting light (Ex. 1005, Abstract, 2:55
– 3:4). The ’279 Patent is directed to a current-seen cable that emits light to
indicate the live state of the cable (Ex. 1001, Abstract, 1:33–37). Moreover,
Patent Owner’s own Declarant, Dr. Weverka, agrees all three references are
from the field of lighted cables (Ex. 1016, 44:10–12, 104:12–14, 123:16–
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21). Accordingly, we determine He, Korodi, and the ’279 Patent are from
the same filed of endeavor and thus, are analogous art.
Patent Owner further argues Petitioner has not articulated a
motivation to combine He with Korodi (PO Resp. 40). Patent Owner’s
Declarant, Dr. Weverka states as He teaches use of multi-colored EL
filaments to produce a variety of colors, and Korodi teaches the use of a
central lighting source to show existence of a potential, an ordinarily skilled
artisan would not have been motivated to combine the references to produce
a current seen cable that produces the visual of current flow across the length
of the power cable (Ex. 2015 ¶ 77).
Patent Owner does not directly address the specific teaching and
combination as asserted by Petitioner. Petitioner’s justification for
combining He’s and Korodi’s teachings is not that Korodi be physically
inserted into He (Pet. 36–38, 41). The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Nonetheless, we find Petitioner has articulated reasoning with a
rational underpinning as to why an ordinarily skilled artisan would have
been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104).
Specifically, Petitioner contends an ordinarily skilled artisan would have
been motivated to combine the teachings of He and Korodi because “such a
modification is both a predictable variation and an incremental
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improvement” (Pet. 35). According to Petitioner, an ordinarily skilled
artisan would have found it obvious and “straight-forward” to replace the
aluminum core wire in He with a power cord to create an improved
illuminated cable using electroluminescent wires that light in sequence (id.
at 36). Petitioner further asserts combining the teachings would “involve the
merger of familiar elements according to their established functions, known
methods, and predictable results” (id.). We agree with the Petitioner that an
ordinarily skilled artisan would have been motivated to replace the core wire
at the center of He’s cable with a power cord as taught by Korodi to create
an improved illuminated cable. We find the combination of He and Korodi
unites old elements with no change in their respective functions. Indeed, we
agree that combining the teachings would be a merger of familiar elements,
Korodi’s power cord and He’s electroluminescent cable, that perform their
ordinary functions to predictably result in the recited cable which includes a
main power cord and a plurality of electroluminescent cords which emit
light in sequence when the main cord and the driver are live.
To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark
Horenstein’s, testimony that replacing the aluminum core wire in He for the
power cord in Korodi would have been a merger of familiar elements
according to their established functions, known methods, and predictable
results that an ordinarily skilled artisan would have found obvious (Ex. 1008
¶¶ 99, 102, 103).
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Patent Owner next contends the teachings would not fit together
seamlessly as He discloses illumination wrapped around a metal core while
Korodi provides illumination from a central source (Prelim. Resp. 30–31).
Specifically, Patent Owner asserts combining the illuminated power cords of
Korodi with He’s EL filaments would result in an inoperable combination
(PO Resp. 41). According to Patent Owner, Korodi’s illuminated power
cord would obscure the overlying multi-colored electroluminescent
filaments’ effects because Korodi’s illumination would overpower or
obscure the blending of He’s electroluminescent filaments (id.). Thus,
Patent Owner asserts the combination of He and Korodi would result in a
cable illuminated across its entire length, at all times (id.).
We do not agree with Patent Owner. Patent Owner’s arguments again
are based on replacing He’s core wire with the illuminated main cord of
Korodi (PO Resp. 35, 41, 57). However, Petitioner relies on Korodi as
teaching a main cord, at the center of the current-seen cable, and lighting the
cord when the main cord is live; and Petitioner asserts an ordinarily skilled
artisan would have found it obvious to replace the aluminum cord of He with
the power cord in Korodi, not the illuminated main cord of Korodi (Pet. 36–
43; Pet. Reply 16). We are not persuaded this combination would have
rendered the cable inoperable. Indeed, He teaches powering the
programmable electronic elements (Ex. 1004, 4:25–35). Thus, we are not
persuaded using the power cord of Korodi as the main cord, would render
the cable inoperable. Accordingly, we are not persuaded modifying He to
include a power cord as taught by Korodi, would have rendered the cable
inoperable.
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Patent Owner additionally asserts He teaches away from a
combination with Korodi (PO Resp. 53). Specifically, Patent Owner
contends He teaches drawbacks of existing cables, including those having a
substantial diameter and consuming excessive amounts of power, and states
its object is to provide an electroluminescent cable low in electricity
consumption and free from heating (id. at 54–55). Thus, Patent Owner
argues, He teaches away from combination with Korodi (id. at 55).
We do not agree He teaches away from combination with Korodi.
Patent Owner’s first argument is predicated on replacing He’s wire with an
entire industrial-strength, illuminated power cord as taught by Korodi,
resulting in a cable having an increased diameter that consumes additional
power and is not free from heating (id. at 56). However, Petitioner did not
rely on incorporating Korodi’s entire illuminated power cord into He’s
cable, as set forth above (Pet. 36–43; Pet. Reply 16). Moreover, Korodi is
not limited to “industrial-strength, illuminated power cords” but instead,
includes domestic extension cords, as well as those installed in relatively
inaccessible areas, such as areas occurring in aircraft or boats (Ex. 1005,
1:14–19).
Patent Owner additionally proffers the testimony of Dr. Weverka that
“[e]ven if the power elements of Korodi were removed and combined with
He, the combination would simply produce a multi-colored lighted cable
with light emission [a]long the full length of the cable” (PO Resp. 56), as
evidence He teaches away from combination with Korodi. “A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
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taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citations and internal quotation marks omitted).
Patent Owner has not provided, nor do we readily find, evidentiary
support for the allegation that He teaches away, by citation to any specific
portion of He or Korodi that discourages modifying He to include the main
cord taught by Korodi or would lead an ordinarily skilled artisan in a
divergent path than that taken by Patent Owner. Nonetheless, we find He
instead discloses only drawbacks of “neo[n] light, with fragile glass outer
layers;” colored incandescent lights using a colored tube; and a mono-color
light source using solvent to dilute the substance of electrolytic layers (Ex.
1004, 1:12–40). Thus, we determine He does not teach away from the
present invention or combining He’s teachings with those of Korodi.
In summary, we do not agree (i) He and Korodi are non-analogous art;
(ii) a motivation to combine the teachings of He and Korodi has not been
articulated; (iii) the proposed combination would render both references
inoperable, would not have been a predictable variation of devices, and
would not result in the claimed invention disclosed in the ’279 Patent; and
(iv) He teaches away from combination with Korodi. Instead, we find that a
person of ordinary skill in the art would have found the subject matter
recited by claims 1 and 7 obvious based on the teachings of He and Korodi.
Accordingly, based on the record before us, we are persuaded the
combination of He and Korodi are properly combined as required by 35
U.S.C. § 103(a).
c. Conclusion
Based on the record before us, we are persuaded by Petitioner that the
teachings of He and Korodi are properly combined and that the combination
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of He and Korodi teaches or suggests the limitations recited in claims 1 and
7. Accordingly, Petitioner has established by a preponderance of the
evidence, claims 1 and 7 are rendered obvious by the combination of He and
Korodi.
C. Obviousness over Gustafsson and He
Petitioner contends claims 1 and 7 of the ’279 Patent are unpatentable
under 35 U.S.C. § 103(a) obvious over Gustafsson and He (Pet. 21–33). In
light of our determination that Petitioner has established by a preponderance
of the evidence that claims 1 and 7 of the ‘279 Patent are unpatentable under
35 U.S.C. § 103(a) as obvious over He and Korodi, we take no position on
whether the same claims are also obvious over the combination of the
teachings and suggestions of Gustafsson and He.
D. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude references to US Patent 7,208,871 B2
(“Jonson”) made through citations in the Declaration by Dr. Horenstein, and
any arguments based thereon (Paper 45, 2). Specifically, Patent Owner
argues Petitioner is arguing a combination of He and Jonson teaches
successive use of EL wires to produce the visual effect of flowing water or
electricity (id.).
We agree with Petitioner’s assertion in the Petitioner’s Opposition to
this motion that Dr. Horenstein’s reference to Jonson was merely to reflect
the skill of an ordinarily skilled artisan at the time of the invention (Paper
47, 5–6). Regardless, since our Decision does not rely on Jonson, this issue
is deemed moot.
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III. CONCLUSION
For the foregoing reasons, we determine based on the evidence and
arguments presented, that Petitioner has demonstrated by a preponderance of
the evidence claims 1 and 7 of the ’279 Patent are unpatentable.
Specifically, we determine Petitioner has established by a preponderance of
the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over
He and Korodi.
IV. ORDER
For the reasons given, it is:
ORDERED that pursuant to 35 U.S.C. § 318, claims 1 and 7 of U.S.
Patent No. 7,671,279 B2 are determined to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Ryan M. Schultz
rmschultz@rkmc.com

Samuel L. Walling
slwalling@rkmc.com

ROBINS, KAPLAN, MILLER & CIRESI LLP

PATENT OWNER:

Mark H. Whittenberger
mark.whittenberger@hklaw.com

Aaron P. Bradford
aaron.bradford@hklaw.com

HOLLAND & KNIGHT LLP