Petition for Writ of Certiorari — Lynk Labs, Inc., Petitioner v. Samsung Electronics Co., Ltd., et al.

Supreme Court briefSep 12, 2025

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APPENDIX

APPENDIX – TABLE OF CONTENTS

Page

Appendix A – Opinion of the Court

of Appeals (January 14, 2025) ............................... 1a

Appendix B – Final Written Decision of the

Patent Trial and Appeal Board

(June 26, 2023) ......................................................... 32a

Appendix C – Order of the Court of Appeals

Denying Rehearing (April 15, 2025)..................... 100a

Appendix D – Relevant Constitutional and

Statutory Provisions ............................................... 102a

(i)

APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

————

LYNK LABS, INC.,

Appellant,

SAMSUNG ELECTRONICS CO., LTD.,

Appellee,

DERRICK BRENT, ACTING UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY AND ACTING

DIRECTOR OF THE UNITED STATES PATENT AND

TRADEMARK OFFICE,

Intervenor.

————

2023-2346

————

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR202200149.

————

Decided: January 14, 2025

————

STEPHEN TERRY SCHREINER, Carmichael IP, Tysons,

VA, argued for appellant. Also represented by JAMES

CARMICHAEL, STEPHEN MCBRIDE, MINGHUI YANG.

NAVEEN MODI, Paul Hastings LLP, Washington, DC,

argued for appellee. Also represented by JOSEPH PALYS,

IGOR VICTOR TIMOFEYEV, DAVID VALENTE, DANIEL

ZEILBERGER.

MICHAEL S. FORMAN, Office of the Solicitor, United

States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by PETER J.

AYERS, AMY J. NELSON, MAUREEN DONOVAN QUELER,

FARHEENA YASMEEN RASHEED.

————

Before LOURIE, PROST, and STARK, Circuit Judges.

PROST, Circuit Judge.

Lynk Labs, Inc. (“Lynk Labs”) appeals from a final

written decision of the Patent Trial and Appeal Board

(“Board”) in an inter partes review (“IPR”) determining

claims 7-13 and 15-17 of U.S. Patent No. 10,687,400 (“the

’400 patent”) unpatentable. We affirm.

This case presents the question of when a published

patent application is deemed prior art in an IPR—can it

be as of the application’s filing date, or only as of the application’s publication? As explained below, we agree with

the Board that it is the former: under the statutory provisions applicable here, a published patent application

can be deemed prior art in an IPR as of the application’s

filing date. And, because we otherwise see no error in

the Board’s unpatentability determinations, we affirm.

BACKGROUND

The ’400 patent “generally relates to light emitting diodes (‘LEDs’) and LED drivers” and more “specifically

relates to alternating current (‘AC’) driven LEDs, LED

circuits, and AC drive circuits and methods.” ’400 patent

col. 1 ll. 45-48 (cleaned up). The specification explains

that “LED based lighting may be used for general lighting, specialty lighting, signs[,] and decoration such as for

Christmas tree lighting.” Id. at col. 2 ll. 8-11. The claims

recite lighting systems with various LED circuit configurations. For example, independent claim 7 recites:

A lighting system comprising:

an LED circuit array comprising an LED circuit

comprising a plurality of LEDs connected in series;

a capacitor;

a bridge rectifier configured to receive an input AC

voltage from a mains power source;

a driver connected to the bridge rectifier and configured to provide a rectified output AC voltage to the

LED circuit array;

wherein a forward voltage of the LEDs of the LED

circuit array matches the rectified input AC voltage

output of the driver; and

wherein the LED circuit array, the capacitor, the

bridge rectifier, and the driver are all mounted on a

single substrate.

Id. at claim 7.

In November 2021, Samsung Electronics Co., Ltd.

(“Samsung”) filed a petition for IPR of the ’400 patent,

challenging claims 7-20 as unpatentable for obviousness

under 35 U.S.C. § 103. Lynk Labs then statutorily disclaimed claims 14 and 18-20, leaving only claims 7-13 and

15-17 subject to the IPR.

Relevant here are Samsung’s first six grounds of unpatentability, each of which relied on U.S. Patent Application Publication No. 2004/0206970 (“Martin”) and

which together encompassed claims 7-13 and 17. See

Samsung Elecs. Co. v. Lynk Labs, Inc., IPR2022-00149,

Paper 33, at 68 (P.T.A.B. June 26, 2023) (“Final Written

Decision”); J.A. 1867-79 (Martin).

The Martin application was filed before the ’400 patent’s priority date but was published only after that

date. Specifically, Martin was filed on April 16, 2003; the

’400 patent’s priority date is February 25, 2004;1 and

Martin was published on October 21, 2004. Martin was

later abandoned and never matured into a patent.

Across Samsung’s first six grounds of unpatentability,

the Board determined claims 7-13 and 17 unpatentable

for obviousness. See Final Written Decision, at 68. After rejecting Lynk Labs’ argument that Martin could not

serve as prior art to the ’400 patent in an IPR, the Board

determined that each of the claims at issue in this appeal

would have been obvious in view of Martin and at least

one other reference. Five of the six grounds at issue rely

on Nerone2 as the primary reference in view of at least

Martin, and the Board relied on the combination of

Nerone and Martin to determine claims 7-13 unpatentable.3 Id.

Lynk Labs timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

Lynk Labs maintains that the ’400 patent’s priority date is its earliest effective filing date of February 25, 2004, see, e.g., Appellant’s Br.

57, and Samsung assumed as much for purposes of the IPR, see J.A.

6049. For purposes of this opinion, we will likewise treat the ’400

patent’s priority date as February 25, 2004.

U.S. Patent No. 6,411,045 (“Nerone”), J.A. 2253-61.

Lynk Labs’ only challenge as to claim 17 is its argument that Martin could not serve as prior art to the ’400 patent in the IPR. Across

Samsung’s eighth and ninth grounds of unpatentability—neither of

which relied on Martin—the Board determined that claims 15 and 16

are unpatentable for obviousness, and Lynk Labs does not appeal

those determinations. Samsung’s seventh ground relied on Martin

but resulted in a patentability determination favorable to Lynk Labs.

DISCUSSION

“Statutory interpretation is an issue of law that we review de novo.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1330 (Fed. Cir. 2020). “We

review claim construction de novo and review any subsidiary factual findings based on extrinsic evidence for substantial evidence.” ParkerVision, Inc. v. Vidal, 88 F.4th

969, 975 (Fed. Cir. 2023) (cleaned up). “We review the

Board’s legal determination of obviousness de novo and

its factual findings for substantial evidence.” Outdry

Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1367 (Fed.

Cir. 2017). “Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to

support a conclusion.” Intel Corp. v. PACT XPP Schweiz

AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023) (cleaned up).

Lynk Labs raises three main arguments on appeal: (1)

Martin could not serve as prior art to the ’400 patent in

an IPR because, although Martin was filed before the

’400 patent’s priority date, it was published (and thus became publicly accessible) only thereafter; (2) the Board

erred in construing “an LED circuit comprising a plurality of LEDs connected in series” as recited in claim 7; and

(3) the Board erred in construing “a forward voltage of

the LEDs of the LED circuit array matches the rectified

input AC voltage output of the driver” as recited in claim

7. As to the two claim-construction arguments, Lynk

Labs further argues that, under what it views as the

proper constructions, claim 7 (and thus dependent claims

8-13) would not have been obvious. We address each argument in turn.

An IPR petitioner may challenge a patent “only on a

ground that could be raised under [35 U.S.C. §§] 102 or

103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added).

Lynk Labs agrees that Martin is a “printed publication.”4 Indeed, it is. “The touchstone of whether a reference constitutes a printed publication is public accessibility.” Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059,

1067 (Fed. Cir. 2024); see also In re Klopfenstein, 380

F.3d 1345, 1348 (Fed. Cir. 2004) (observing that, “for

something to be considered a ‘printed publication[,]’ ”

“the key inquiry is whether or not a reference has been

made ‘publicly accessible’ ”). And there is no dispute that

Martin, a published patent application, is publicly accessible.5

Although Lynk Labs agrees that Martin is a “printed

publication,” it argues that Martin is not a “prior art . . .

printed publication[ ]” as to the ’400 patent. See Appellant’s Br. 57 (quoting § 311(b) (emphasis in original)). In

support, Lynk Labs points to cases—contemplating

See Oral Arg. at 2:00-30, No. 23-2346 (“A published patent

application is a printed publication as of some date.”),

https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23-2346_101

02024.mp3.

There can be little doubt that published patent applications are

publicly accessible within the meaning of our precedent. See, e.g., 37

C.F.R. § 1.11(a) (providing that “[t]he specification, drawings, and all

papers relating to the file of ” a “published application . . . are open

to inspection by the public”); see also Manual of Patent Examining

Procedure § 1128 (addressing electronic availability of published patent applications).

books, articles, or the like—that analyzed prior-art status

under § 102(a) or (b). Section 102(a) bars patentability if

the claimed invention was “described in a printed publication . . . before the invention thereof by the applicant

for patent,” whereas § 102(b) does so if the claimed invention was “described in a printed publication . . . more

than one year prior to the date of the application for patent in the United States.” § 102(a), (b) (emphasis added).6 And the cases Lynk Labs cites stand for the proposition that, to be a prior art printed publication as to a

given patent under one of these subsections, the reference at issue must have been publicly accessible before

the date indicated in those subsections (here, for the ’400

patent, that relevant date is its priority date). See, e.g.,

Voter Verified, Inc. v. Premier Election Sols., Inc., 698

F.3d 1374, 1380 (Fed. Cir. 2012) (“When considering

whether a given reference qualifies as a prior art printed

publication [under § 102(b)], the key inquiry is whether

the reference was made sufficiently accessible to the public interested in the art before the critical date.” (cleaned

up)); see also VidStream LLC v. Twitter, Inc., 981 F.3d

1060, 1066 (Fed. Cir. 2020) (evaluating a reference’s status as a prior art printed publication under § 102(a) and

concluding that “[t]he evidence well supports the Board’s

finding that [the reference] was published and publicly

accessible before the [challenged patent’s] . . . priority

date”). So, the argument goes: because Martin became

publicly accessible only as of its October 21, 2004 publication date, and because the ’400 patent’s priority date is

February 25, 2004, Martin cannot be a “prior art . . .

The parties do not dispute that pre-Leahy Smith America Invents

Act (“AIA”) § 102 applies here. See AIA, Pub. L. No. 112-29, sec.

3(n), 125 Stat. 284, 293 (2011). Our references to § 102 therefore refer to pre-AIA § 102.

printed publication[ ]” under § 311(b) as to the ’400 patent.

The main problem with Lynk Labs’ argument is that,

unlike § 102(a) or (b), and unlike books, articles, or other

types of printed publications, Congress created—in

§ 102(e)(1)—a special rule for published patent applications. Specifically, § 102(e) states (in relevant part):

A person shall be entitled to a patent unless—

...

(e) the invention was described in—

(1) an application for patent, published under [35

U.S.C. §] 122(b), by another filed in the United States

before the invention by the applicant for patent . . . or

(2) a patent granted on an application for patent by

another filed in the United States before the invention

by the applicant for patent . . . .

§ 102(e) (emphasis added). Thus, a U.S.-filed patent application “published under [§] 122(b)” serves as prior art

to a claimed invention if the application was “filed . . . before the [claimed] invention.” Id. § 102(e)(1) (emphasis

added).7 In other words, under § 102(e)(1), even if a patent application was published after a claimed invention,

it may serve as prior art to the invention if the application was filed before the invention.

Returning now to the issue at hand, we note that Martin—a published patent application—is a “printed publi-

The parties do not dispute that Martin was published “under

[§] 122(b)” and was “filed in the United States.” See § 102(e)(1). General statements in this opinion concerning published patent applications assume that these (or any other applicable) publication and

filing requirements of § 102(e)(1) are met.

cation,” as both sides agree. And § 311(b) permits IPR

unpatentability challenges “on the basis of prior art consisting of patents or printed publications.” Under

§102(e)(1), published patent applications, like Martin, are

deemed prior art as of their filing date. Therefore, Martin—having been filed before the ’400 patent’s priority

date—is a prior art printed publication as to the ’400 patent. Stated generally: because a published patent application is a “printed publication,” § 102(e)(1) treats this

type of printed publication as prior art as of a time before

it became publicly accessible—i.e., as of its filing date.

Lynk Labs finds it anomalous that a printed publication could be deemed a “prior art” printed publication

even before it became a printed publication (i.e., became

publicly accessible). But it does not dispute that a patent

can be deemed a “prior art” patent even before it became

a patent. Specifically, under the neighboring, similarly

worded provision of § 102(e)(2), “a patent granted on an

application for patent by another filed in the United

States before the invention by the applicant for patent”

serves as prior art to the claimed invention. Lynk Labs

does not dispute that, due to § 102(e)(2), an IPR challenge

under § 311(b) can include as a “prior art . . . patent[ ]” a

patent that did not become a patent until after the challenged patent’s priority date. See Reply Br. 27; Oral Arg.

at 11:23-41; see also Becton, Dickinson & Co. v. Baxter

Corp. Englewood, 998 F.3d 1337, 1345 & n.7 (Fed. Cir.

2021). Given § 102(e)(1) and (e)(2), Lynk Labs has no satisfactory explanation as to why patent applications that

are later published (and thus become printed publications) should have a prior-art status different from patent

applications that later become patents.

Lynk Labs further argues that, because § 102 refers to

“printed publication[s]” in subsections (a) and (b) and

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“application[s] for patent, published under [§] 122(b)” in

subsection (e)(1), those two terms must mean completely

distinct things, such that the former cannot include the

latter. See Appellant’s Br. 60-61.8 Even setting aside the

tension between this argument and Lynk Labs’ concession that Martin is a printed publication, this argument is

unpersuasive. It simply does not follow that two different terms must mean completely distinct things. One

could be a specific instance of a general term. For example, “lion” and “mammal” are different terms with different meanings, but those meanings are not completely distinct; a lion is just a specific type of mammal. Similarly,

here, we think it plain enough that an “application for patent, published under [§] 122(b)” is just a specific type of

“printed publication.” Merely observing that § 102 uses

both terms— “printed publication” and “application for

patent, published under [§] 122(b)”—does not overcome

this natural reading. Nor does this observation alone

show that, in the context of § 311(b), “printed publications” excludes from its scope published patent applications and the specific prior-art rule of § 102(e)(1).

In sum, a published patent application is, by its literal

terms, a “printed publication.” So, when § 311(b) permits

IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based

upon a published patent application. And, by virtue of

§ 102(e)(1), a published patent application—this specific

type of “printed publication”—is deemed prior art as of

its filing date. Therefore, the plain language of §§ 311(b)

In advancing this argument, Lynk Labs tends to refer to the

§ 102(e)(1) language only as “application[s] for patent,” see Appellant’s Br. 60-61—omitting that the language further includes: “application[s] for patent, published under [§] 122(b).” § 102(e)(1) (emphasis added).

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and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.

Lynk Labs’ contrary position relies mostly on the historical context behind § 311(b). Upon analyzing that context, however, we conclude that it only adds further support for the plain-language interpretation set forth

above. We first describe the history of relevant legislation before analyzing both it and Lynk Labs’ arguments.

The phrase “patents or printed publications” first appeared as a limitation on the types of references that

could be used in post-grant proceedings in 1980, with the

introduction of reexamination proceedings.

Well before 1980, however, the term “printed publication” appeared in § 102. Again, § 102(a) barred patentability if the claimed invention was “described in a printed

publication . . . before the invention thereof by the applicant for patent.” § 102(a) (1952). And § 102(b) did the

same if the claimed invention was “described in a printed

publication . . . more than one year prior to the date of

the application for patent in the United States.” § 102(b)

(1952).

In 1980, Congress created procedures for reexamination of issued patents. An Act to Amend the Patent and

Trademark Laws, Pub. L. No. 96-517, 94 Stat. 3015

(1980) (“1980 Patent Act”). This statute set forth the requirements for ex parte reexaminations, stating that

“[a]ny person at any time may file a request for reexamination by the [U.S. Patent and Trademark Office

(“PTO”)] of any claim of a patent on the basis of any pri-

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or art cited under the provisions of section 301 of this title.” 1980 Patent Act, § 302, 94 Stat. at 3015 (emphasis

added). Section 301, in turn, identified “prior art consisting of patents or printed publications”— the same phrase

that § 311(b) uses today. Compare id. § 301, 94 Stat. at

3015, with AIA, sec. 6(a), § 311, 125 Stat. at 299. The

stated intent for this limitation was to allow the PTO to

evaluate “patents and printed materials, matters which

are normally handled by patent examiners,” while excluding “[c]hallenges to validity on other grounds (e.g.,

public uses or sales)[, which] would remain the province

of the courts.” S.R. No. 96-617, at 2 (1980); see also

Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed.

Cir. 2022) (“The congressional purpose in restricting

reexamination to printed documents, 35 U.S.C. § 301, was

to provide a cheaper and less time-consuming alternative

to challenge patent validity on certain issues.” (emphasis

added) (cleaned up)). For example, prior art in the form

of sales and public use often requires substantial discovery or fact finding into how the alleged prior-art product

at issue operates, how it was formed, what it comprises,

and the circumstances surrounding the alleged sale or

use. Patents and printed publications, on the other hand,

generally do not require such additional discovery or fact

finding.

In 1999, Congress added three relevant provisions in

the American Inventors Protection Act (“AIPA”). Pub.

L. No. 106-113, app. I, tit. IV, 113 Stat. 1501, 1501A-552

(1999). First, it created the inter partes reexamination

procedure, which, like the ex parte reexamination created in 1980, provided for challenges “on the basis of any

prior art cited under the provisions of section 301”—i.e.,

prior art consisting of “patents and printed publications.”

AIPA, sec. 4604(a), § 311(a), 113 Stat. at 1501A-567. Sec-

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ond, Congress—for the first time—provided for the publication of patent applications. Subject to certain exceptions, “each application for a patent shall be published . . .

promptly after the expiration of a period of 18 months

from the earliest filing date for which a benefit is sought

under this title.” AIPA, sec. 4502(a), § 122(b)(1)(A), 113

Stat. at 1501A-561. Before this provision’s enactment in

1999, patent applications were not published. And third,

Congress—in a provision titled “Prior Art Effect of Published Applications”— established, in § 102(e)(1), a rule

for when this specific form of reference would be deemed

prior art: a published patent application would be

deemed prior art if it was “filed . . . before the invention

by the applicant for patent.” See AIPA, sec. 4505,

§ 102(e)(1), 113 Stat. at 1501A-565.

Finally, in 2011, Congress passed the AIA with various provisions going into effect in 2012 and 2013. One

such provision was the creation of the IPR, which replaced inter partes reexamination. See AIA, sec. 6(a),

§ 311, 125 Stat. at 299. In creating this new proceeding,

Congress again used the same phrase “consisting of patents and printed publications” as was used in the 1980

Patent Act and left unchanged in the AIPA. Id. § 311(b),

125 Stat. at 299.

Lynk Labs argues that, when Congress established

published patent applications as prior art in § 102(e)(1)

and—in the same enactment—permitted inter partes

reexaminations (and later, IPRs) upon only “printed publications,” Congress was transplanting the legal term

“printed publication” from case law along with that case

law’s “old soil.” See Appellant’s Br. 61, 64 (citing Taggart

v. Lorenzen, 587 U.S. 554, 560 (2019) (“When a statutory

term is obviously transplanted from another legal source,

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it brings the old soil with it.” (cleaned up))). Lynk Labs

further argues that this “old soil” means that patent applications can never be “printed publications”—full stop.

It also suggests, more modestly, that these cases mean

that a reference can be a prior art “printed publication”

only if it was publicly accessible before the relevant date

associated with the challenged patent. With that understanding, Lynk Labs concludes that “printed publications” as used in § 311(b) excludes from its scope published patent applications treated as prior art under

§ 102(e)(1), given that the latter do not have to be publicly

accessible beforehand to be considered prior art. As we

explain below, although we agree that “printed publication” carried with it some “old soil,” we disagree with

Lynk Labs’ ultimate conclusion.

At the outset, we note that much of Lynk Labs’ “old

soil” case law predates when patent applications were

published. See AIPA, sec. 4502(a), § 122(b)(1)(A), 113

Stat. at 1501A-561. Unsurprisingly, then, these cases do

not address published patent applications or the special

prior-art rule that Congress prescribed in § 102(e)(1).

Instead, they address either unpublished patent applications or printed publications such as books, articles, or

the like under §102(a) or (b). These cases must therefore

be understood in context when ascertaining the scope of

“printed publications” in § 311(b) and whether that term

excludes published patent applications treated as prior

art under § 102(e)(1).

With this context in mind, we deem unavailing Lynk

Labs’ reliance on older cases to show that patent applications can never be “printed publications.” For example,

Lynk Labs quotes Brown v. Guild, 90 U.S. 181 (1874), as

saying that a “mere application for patent” is not a

“printed publication.”

Appellant’s Br. 60 (quoting

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Brown, 90 U.S. at 211). It also cites other cases to similar effect. See id. at 60-61 (citing Interurban Ry. & Terminal Co. v. Westinghouse Elec. & Mfg. Co., 186 F. 166,

168 (6th Cir. 1911) (observing that “[a]bandoned applications for patents” cannot “be classed among printed publications, for they . . . are not published by the [PTO]”

(cleaned up))). But, as even some of this cited language

explains, the reason “mere” patent applications were not

deemed printed publications is that, at the time, they

were not published at all. These cases therefore do not

speak to the question here: whether, once patent applications started being published, they could be considered

prior art “printed publications” (with the special prior-art

rule of § 102(e)(1) applied).

Lynk Labs separately argues—and we agree—that,

because case law interpreted “printed publication” to

mean a reference that is publicly accessible, Congress

carried forth this “old soil” interpretation of “printed

publications” when it defined the scope of challenges

available for reexaminations and IPRs. See, e.g., In re

Bayer, 568 F.2d 1357, 1359 (CCPA 1978) (“[T]he dispositive issue is whether [the reference], by virtue of its accessibility . . . , is a ‘publication’ within the meaning of

[§ 102(b)].”); see also In re Lister, 583 F.3d 1307, 1311

(Fed. Cir. 2009) (“In order to qualify as a printed publication within the meaning of § 102, a reference ‘must have

been sufficiently accessible to the public interested in the

art.’ ” (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed.

Cir. 1989))). The problem for Lynk Labs, however, is

that this definition of “printed publications” would include published patent applications, since the latter are

publicly accessible. So, while we agree with Lynk Labs

that Congress carried forth the “old soil” requirement of

public accessibility for the term “printed publications,”

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this observation only confirms that published patent applications qualify as “printed publications.”

Lynk Labs further maintains that case law concerning

§ 102(a) or (b) “printed publication[s]” grafted upon that

term not only a requirement that they be publicly accessible, but also when they must have been publicly accessible in order to be treated as prior art. We disagree.

The “when” issue in these cases was controlled by other,

temporal language in these subsections—in § 102(a), “described in a printed publication . . . before the invention

thereof by the applicant for patent,” § 102(a) (emphasis

added); and in § 102(b), “described in a printed publication . . . more than one year prior to the date of the application for patent in the United States,” § 102(b) (emphasis added).

For example, our cases have concluded that, for something to have been “described in a printed publication” so

as to constitute a patentability bar under § 102(a) or (b),

the reference must have been publicly accessible before

the dates specified in those subsections. See In re Hall,

781 F.2d 897, 899 (Fed. Cir. 1986) (“The proponent of the

[§ 102(b)] bar must show that prior to the critical date the

reference was sufficiently accessible, at least to the public

interested in the art . . . .” (emphasis added)); see also

VidStream, 981 F.3d at 1066 (“The evidence well supports the Board’s finding [under § 102(a)] that [the reference] was published and publicly accessible before the

[challenged patent’s] . . . priority date.” (emphasis added)); Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d

1363, 1370 (Fed. Cir. 2019) (reasoning that, “even if ” a

reference had met the public accessibility requirement,

because of the timing, “it would not establish that [the

reference] could serve as prior art here”); Acceleration

Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772

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(Fed. Cir. 2018) (explaining that public accessibility is the

“touchstone in determining whether a reference constitutes a ‘printed publication,’ ” and then noting the

Board’s finding that the reference “was not publicly accessible before the critical date” (emphasis added)

(cleaned up)); Voter Verified, 698 F.3d at 1380 (“When

considering whether a given reference qualifies as a prior

art printed publication [under § 102(b)], the key inquiry is

whether the reference was made sufficiently accessible to

the public interested in the art before the critical date.”

(emphasis added) (cleaned up)).

Again, however, this “when” issue for prior-art status

is dictated by the above-quoted temporal language from

§ 102—not the meaning of “printed publication” itself,

which is otherwise temporally agnostic. Put differently:

whether, and how, something that qualifies as a “printed

publication” is considered prior art depends on other

statutory language.

That the term “printed publication” does not, itself,

carry with it any temporal prior-art-status requirement

is also clear when parsing § 102’s text. This is for at least

two reasons. First, if “printed publication” inherently

has its own temporal requirement, and if the term means

the same thing throughout § 102, one difficulty immediately appears: § 102(a) and (b) have different temporal

requirements (“before the invention” vs. “more than one

year prior to the date of the [patent] application”).

Therefore, the term “printed publication” cannot both (1)

have its own, specific baked-in temporal requirement and

(2) mean the same thing throughout § 102. The “normal

presumption” is that “when Congress uses a term in multiple places within a single statute, the term bears a consistent meaning throughout.” Azar v. Allina Health

Servs., 587 U.S. 566, 576 (2019). Thus, it is far more like-

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ly that the term “printed publication” itself does not have

its own, baked-in temporal requirement, and that instead,

whatever temporal requirement exists is drawn from the

other language in § 102(a) or (b) (which is the most natural reading anyway). Second, and relatedly, if “printed

publication” inherently has its own temporal requirement, § 102(a) and (b) would be confusing, redundant, or

both. For example, substituting for “printed publication”

the words “a reference publicly accessible before the invention” would yield the following in § 102(a):

A person shall be entitled to a patent unless—

...

(a) the invention was . . . described in [a reference

publicly accessible before the invention] . . . before the

invention . . . .

Our case law provides no reason, and we see none, why

“printed publication”—an otherwise temporally agnostic

term—should be interpreted to introduce such textual

difficulties.9

We appreciate that some of our cases include language suggesting

that the definition of a “printed publication” itself includes a temporal requirement concerning public accessibility. For example, in

Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir.

1988), we said: “The statutory phrase ‘printed publication’ has been

interpreted to mean that before the critical date the reference must

have been sufficiently accessible to the public interested in the art

. . . .”

Id. at 1568.

Yet that same sentence continued:

“[D]issemination and public accessibility are the keys to the legal

determination whether a prior art reference was ‘published,’ ” id.—

thus conveying that whether something is a “printed publication”

does not, itself, carry with it any temporal requirement. Moreover,

Constant cited Hall for this proposition, and Hall distinguished between the question of public accessibility and when, for § 102(b) purposes, the reference was publicly accessible. See Hall, 781 F.2d at

899 (observing that “public accessibility” is “the touchstone in de-

19a

Accordingly, case law concerning “printed publications” in the § 102(a) or (b) context—addressing the term

in view of other language in those provisions—did not

prevent Congress from setting up a different timing

framework for a printed publication in § 102(e)(1). Unlike

§ 102(a) or (b), § 102(e)(1) bars patentability if the claimed

invention was “described in . . . an application for patent,

published under [§] 122(b)” that was “filed in the United

States before the invention by the applicant for patent.”

§ 102(e)(1) (emphasis added). By its explicit terms, it

bars patentability based on a published patent application if that application was filed before the invention.

This language does not mean that a published patent application is not a “printed publication” within the meaning of the “old soil”; it is indeed a “printed publication,”

given that it is publicly accessible. This language simply

means that Congress chose to afford published patent

applications a prior-art effect different from the effect

given to printed publications in § 102(a) and (b). See AIPA, sec. 4505, 113 Stat. at 1501A-565 (“Prior Art Effect

of Published Applications”). And case law confronting

different statutory provisions having materially different

language does not permit us to ignore Congress’s choice

in that regard.

Having concluded that the plain language of §102(e)(1)

supports our interpretation of § 311(b) and that there is

no persuasive support in § 311(b)’s historical context for

Lynk Labs’ interpretation, we note finally that treating

published patent applications (with the special prior-art

termining whether a reference constitutes a ‘printed publication’ bar

under [§ 102(b)]” and noting that “[t]he proponent of the [§ 102(b)]

bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art” (emphasis added)).

20a

rule of § 102(e)(1) applied) as available prior art under

§ 311(b) is fully consistent with the “congressional purpose in restricting reexamination”—and later, IPRs—to

printed documents. See Qualcomm, 24 F.4th at 1376

(cleaned up). Again, that purpose was “to provide a

cheaper and less time-consuming alternative to challenge

patent validity on certain issues.” Id. (cleaned up). With

this purpose in mind, Congress discussed a broad division

between prior art that may be asserted in these postgrant proceedings and prior art that may not: printed

documents versus sale and public use, respectively. See

S.R. No. 96-617, at 2. The former are the types of references that “are normally handled by patent examiners,”

id., while the latter often require substantial discovery or

factfinding as to, among other things, the circumstances

surrounding the alleged sale or use. Published patent

applications clearly fall into the former category.10 In

fact, as official PTO publications, published patent applications would create even less need for discovery or factfinding than some other alleged printed publications. Cf.

Klopfenstein, 380 F.3d at 1347 (addressing dispute over

public accessibility of a printed slide presentation); Hall,

781 F.2d at 897 (same for doctoral thesis). Treating published patent applications (with the special prior-art rule

Indeed, it is undisputed that § 102(e)(1) prior art (i.e., published

patent applications) may be used as prior art in a district court proceeding. See Appellant’s Br. 60 (“[Section] 102(e)(1) [prior art] may

be asserted in (for example) infringement litigation.”). Following

Lynk Labs’ argument to its conclusion would place an artificial constraint on the types of prior art that may be asserted in an IPR versus that which may be asserted in a district court. We see no reason

why Congress would have created such a distinction, particularly for

published patent applications which, as stated above, do not fall into

the category of prior art that generally requires extensive discovery

or fact finding.

21a

of § 102(e)(1) applied) as available prior art under § 311(b)

is thus fully consistent with Congress’s purpose in limiting the types of patentability challenges in IPRs.

Accordingly, for the foregoing reasons, we conclude

that §§ 311(b) and 102(e)(1) permit IPR challenges based

upon published patent applications, and such published

patent applications can be deemed prior art in IPRs as of

their filing date. Therefore, Martin was properly deemed

prior art to the ’400 patent in this IPR.

Having concluded that Martin may be used as the basis of Samsung’s IPR, we turn to the merits of the

Board’s decision. Lynk Labs argues that the Board misconstrued the plain and ordinary meaning of two limitations in claim 7 of the ’400 patent: (1) “an LED circuit

comprising a plurality of LEDs connected in series”; and

(2) “a forward voltage of the LEDs of the LED circuit

array matches the rectified input AC voltage output of

the driver.” Lynk Labs also argues that the Board made

factual errors in its evaluations of the prior art. We address Lynk Labs’ arguments as to each limitation’s construction, and the associated factual disputes, in turn.

With respect to the first limitation, Lynk Labs argues

that the term “a plurality of LEDs connected in series”

means “a plurality of individual LEDs connected in series” and not “a plurality of LED circuits connected in

series.” Under the plain and ordinary meaning of the

term, we conclude that “a plurality of LEDs connected in

series” may include either a plurality of individual LEDs

or a plurality of LED circuits connected in series because

both include a “plurality of LEDs.” We therefore agree

22a

with the Board’s construction and the Board’s conclusion

that Nerone teaches this claim limitation.

An electrical circuit may connect electrical components (like LEDs) either in parallel or in series. Electrical components connected end-to-end are connected in

series, and the electrical current flows through the

LEDs. In diagram B below, the four LEDs covered by

the group encompassed by IA are connected in series.

Electrical components are “connected in parallel when

they connect to the same point (or node),” and the current flow is divided between them. Appellee’s Br. 3. In

diagram A below, the three LEDs level with “I1” are

connected in parallel, and the black, purple, and gold

lines show current flow divided between them. In simpler terms, diagram B shows individual LEDs connected in series, whereas diagram A shows groups of LEDs

connected in series.

23a

Appellant’s Br. 17 (citing J.A. 6325).

The claim language recites “a plurality of LEDs connected in series.” ’400 patent claim 7. This term is found

only in claims 1 and 7; nowhere is this exact phrase used

or defined in the specification. The specification includes

examples of both individual and groups of LEDs connected in series. See, e.g., id. at Fig. 14 (showing a plurality of parallel-connected LEDs, with each group of LEDs

connected in series); see also id. at Figs. 21, 24; id. at

9:63-66. The disclosures in the specification lead us to

conclude that the plain and ordinary meaning of “a plurality of LEDs connected in series” may include individual LEDs connected in series or groups of LEDs connected in series because both include a “plurality of

LEDs” connected in series. See Malvern Panalytical

Inc. v. TA Instruments-Waters LLC, 85 F.4th 1365, 137374 (Fed. Cir. 2023) (concluding that the absence of limiting disclosures in the specification supported a broad

claim construction).

We agree with the Board that Lynk Labs’ construction limiting the term to just “individual LEDs” connected in series is “largely based on rewriting this limitation.”

Final Written Decision, at 22. And while other claims

may be more specific, such that they only include one circuit configuration, that is not determinative of how we

construe broader claims. See ’400 patent claim 14 (claiming “a plurality of LED circuits connected in parallel”).

For the reasons above, we agree with the Board’s construction of “a plurality of LEDs connected in series.”

Lynk Labs’ arguments as to whether the prior art discloses “a plurality of LEDs connected in series” is premised on the Board’s allegedly erroneous construction of

this term. Because we conclude that the Board did not

err in construing the term, no dispute remains as to

24a

whether the prior art discloses this limitation. Indeed, it

is undisputed that the prior art, Nerone, teaches a series

of circuits, where the LEDs are connected in parallel

within each circuit. See Appellant’s Br. 18 (“Diagram A

illustrates that while groups of LEDs in Nerone may be

connected in series with other groups of LEDs, there are

no LEDs that are connected in series with other LEDs.”

(emphases omitted)); see also Final Written Decision, at

22 (“Patent Owner admits that ‘Nerone confirms that

each of the four groups 410 is in series.’ ” (quoting Lynk

Labs’ Patent Owner Response at 26)). Therefore, we

conclude that substantial evidence supports the Board’s

finding that Nerone discloses this claim limitation.

With respect to the second disputed limitation, Lynk

Labs argues that the Board misconstrued claim 7’s limitation that recites “a forward voltage of the LEDs of the

LED circuit array matches the rectified input AC voltage

output of the driver.” Specifically, Lynk Labs argues

that the Board erred by (1) misconstruing “matches” and

(2) reading “rectified” out of the claim. We disagree with

both arguments.

Claim 7 recites “a forward voltage of the LEDs of the

LED circuit array matches the rectified input AC voltage

output of the driver.” ’400 patent claim 7 (emphasis added). The parties did not propose a claim construction for

this term before the Board; instead, each party agreed

that the terms in the challenged claims should be given

their plain and ordinary meaning. See Final Written Decision, at 9-10. Lynk Labs argues that the plain and ordinary meaning of “matches” means “equivalent.” Appellant’s Br. 38-39. Samsung argues, and the Board agreed,

that the limitation, in view of the specification, “encom-

25a

passes ‘the rectified input AC voltage output of the driver’ that is less than ‘a forward voltage of the LEDs of the

LED circuit.’ ” Appellee’s Br. 40 (quoting Final Written

Decision, at 36) (emphasis altered from original). Based

on the intrinsic record, we agree with Samsung and the

Board.

The parties identify three parts of the specification

that bear on the scope of this limitation. First, in the

“Background of the Invention” section, the patent explains that prior-art reference “Allen discloses that for

the forward voltage to be ‘matched,’ in each series block,

the peak input voltage must be less than or equal to the

sum of the maximum forward voltages for each series

block in order to prevent over-driving.” ’400 patent col. 2

ll. 31-35 (emphasis added). Second, in the “Summary of

the Invention” section, the patent states: “[A]nother form

of the invention is an LED circuit comprising opposing

parallel series strings of LEDs connected together and

driven direct with a high frequency AC voltage equal to

or less than to total series voltage drop of the opposing

parallel series strings of LEDs within the LED circuit.”

Id. col. 9 ll. 48-53. Third, in the “Detailed Description of

Preferred Embodiments” section, the specification provides a single example of a circuit configuration that describes a specific voltage source, LEDs with a particular

forward voltage, diodes with a specific voltage, and an

approximate number of LEDs. Id. col. 17 ll. 1-7. Lynk

Labs relies on this example as mathematically demonstrating equivalence between the “forward voltage of the

LEDs of the LED circuit array” and “the rectified input

AC voltage output of the driver.” See Appellant’s Br. 4243.

Lynk Labs argues that the first quote does not define

“match” but instead is an embodiment from prior-art ref-

26a

erence Allen. But even “prior art cited in a patent . . .

constitutes intrinsic evidence.” V-Formation, Inc. v.

Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005)

(citation omitted). Therefore, this first quote is relevant

intrinsic evidence of the meaning of “matches” in the art.

Lynk Labs argues that the second quote does not refer to or define “matches.” But this argument is inconsistent with Lynk Labs’ prior reliance on this passage for

construing “matches”:

[T]he [’400 patent,] column 9, lines 48 through 52,

that passage describes LEDs connected together and

driven direct with a high frequency AC voltage equal

to or less than the total series voltage drop of the opposing parallel series strings of LEDs. So here we

have support for the voltage drop being equal to. It’s

described here as equal to or less than, but there is

support, of course, for equal to.

J.A. 6531 ll. 20-25 (quoting IPR oral hearing) (emphasis

added). Additionally, the definition of “matched” from

Allen is substantively the same as the disclosed embodiment in the “Summary of the Invention.” Compare ’400

patent col. 2 ll. 31-35 (“for the forward voltage to be

‘matched,’ in each series block, the peak input voltage

must be less than or equal to the sum of the maximum

forward voltages” (emphasis added)), with id. col 9 ll. 4852 (“a high frequency AC voltage equal to or less than to

total series voltage drop” (emphasis added)). Therefore,

this second quote is also relevant intrinsic evidence of the

meaning of “matches” in the art.

With respect to the third quote, Lynk Labs argues

that this example mathematically demonstrates equivalence. See Appellant’s Br. 42-43 (calculating the voltage

output of the driver after the bridge rectifier at 114 V

and the total forward voltage drop as 114 V). Samsung

27a

does not dispute the example provided in the specification results in a forward voltage of the LEDs of the LED

circuit array that equals the rectified input AC voltage

output of the driver. We also view this passage as relevant intrinsic evidence.

These passages, taken together, support a plain and

ordinary meaning in light of the specification that includes both equivalence and a “rectified input AC voltage

output of the driver that is less than a forward voltage of

the LEDs of the LED circuit.” Final Written Decision,

at 36 (cleaned up) (emphasis added). Not once but twice,

the specification explains the relationship between the

rectified input AC voltage output and the forward voltage

in the same manner as including “less than or equal to.”

See Grace Instruments Indus., LLC v. Chandler Instruments Co., 57 F.4th 1001, 1010 (Fed. Cir. 2023) (construing term in line with the implications from the specification). And a single example that falls within the

“equal to” part of the relationship does not contradict the

meaning of “matches” in other parts of the specification.

Thus, we conclude that the Board did not err in its construction of “matches.”11

Lynk Labs further argues that the Board’s construction of “a forward voltage of the LEDs of the LED circuit

array matches the rectified input AC voltage output of

the driver” reads out the word “rectified.” We disagree.

Lynk Labs argues that Samsung’s failure to set forth a numerical

value for the “matches” limitation is “an error of law.” Appellant’s

Br. 53-57. But Lynk Labs sets forth no law that requires a numerical value under these circumstances. Nor are we aware of any. We

therefore disagree that this was an error.

28a

While framed as a claim construction dispute, Lynk

Labs’ argument is based on what Martin does and does

not disclose. See Appellant’s Br. 48 (“The Board went on

to hold that Martin’s teaching of an unrectified AC voltage output that is less than the forward voltage of the

LEDs meets [this] limitation . . . . In so doing, the Board

erred by effectively construing [this] limitation [incorrectly] . . . .” (emphasis in original)); id. at 50 (“Martin

only discloses . . .”); id. (“Martin discloses . . .”); id.

(“Martin does not teach or suggest . . .”); id. (“Martin as

applied to Nerone does not meet [this] limitation.”); id.

(“Martin discloses selecting . . .”). This is not a dispute

about claim construction but a dispute as to whether

Martin discloses “the rectified input AC voltage output of

the driver.”

An unrectified voltage has an alternating, wave-like

voltage, like the one in the image below.

Appellant’s Br. 51 (citing J.A. 175-76). A rectified voltage

has a continuous voltage, depicted by the red line labelled

“rectified voltage output” in the image below.

29a

Appellant’s Br. 52 (citing J.A. 175-76). Lynk Labs explains that an unrectified voltage results in light being

emitted when voltage is positive but not when voltage is

negative, while a rectified voltage delivers a constant

emission of light. Appellant’s Br. 51-52.

The Board relied on Samsung’s expert testimony that

“a person of ordinary skill in the art would have taken

into consideration the number of LEDs and the total

voltage drop of the LED circuit when designing and implementing” a circuit. J.A. 244; Final Written Decision,

at 36-37. “[A] person of ordinary skill in the art would

have used these factors to apply the teachings of Martin

to configure Nerone’s circuitry so that ‘the forward voltage of the series-connected LEDs [ ] approximately

match[es] the rectified AC voltage output of the . . . LED

driver circuit.” Final Written Decision, at 37. Further,

Samsung argued that “matching the input voltage to the

forward voltage of the LEDs had become a matter of

routine optimization.” Id. (citing Samsung’s Petition, at

19). Samsung supported this assertion with expert tes-

30a

timony, which was corroborated by references Cross12

and Martin. Id. In other words, the Board was persuaded by Samsung’s testimony that the knowledge of a person of ordinary skill in the art included the routine optimization of “matching” a “rectified input AC voltage output of the driver” to the “forward voltage of the LEDs of

the LED circuit array.” Final Written Decision, at 3638.

“A person of ordinary skill in the art is also a person of

ordinary creativity . . . .” KSR Int’l Co. v. Teleflex Inc.,

550 U.S. 398, 421 (2007). And Samsung’s argument was

based on the knowledge of a person of ordinary skill in

the art, as explained above. Therefore, even if Lynk

Labs is correct that Martin does not explicitly disclose

determining the forward voltage of the LEDs based on

the peak voltage of a rectified voltage, that is of no consequence based on the facts and argument before us.

Lynk Labs apparently conceded that “Figure 5 of Martin

discloses LEDs driven by a rectified AC voltage.” Final

Written Decision, at 32 (emphasis added). Lynk Labs

also did not dispute that Nerone discloses configurations

where a rectified AC voltage is provided to LEDs. Id. at

36-39. And Lynk Labs did not dispute that a person of

ordinary skill in the art would have considered several

factors “when designing Nerone’s circuitry to satisfy the

‘matching’ requirement of [this] limitation.” Id. at 36; see

also id. at 36-38. Therefore, like the Board, we are persuaded that “the combined teachings of Nerone and Martin teach or suggest [this] limitation,” id. at 38, particularly in light of the knowledge of a person of ordinary

skill in the art.

U.S. Patent Application Pub. No. 2003/0102810 (“Cross”), J.A.

4162-74.

31a

For these reasons, we affirm the Board’s determination that claim 7 would have been obvious in view of

Nerone and Martin. Final Written Decision, at 68. And

because claims 8-13 depend from claim 7, and Lynk Labs

makes no separate argument for these dependent claims,

we also affirm the Board’s determination that claims 8-13

would have been obvious.

CONCLUSION

We have considered Lynk Labs’ remaining arguments

and find them unpersuasive. For the foregoing reasons,

we affirm the Board’s conclusion that claims 7-13 and 17

are unpatentable.

AFFIRMED

32a

APPENDIX B

UNITED STATES PATENT AND TRADEMARK

OFFICE

————

BEFORE THE PATENT TRIAL AND APPEAL

BOARD

————

SAMSUNG ELECTRONICS CO., LTD.,

Petitioner,

LYNK LABS, INC.,

Patent Owner.

————

IPR2022-00149

Patent 10,687,400 B2

————

Paper 33

————

Date: June 26, 2023

————

Before JON B. TORNQUIST, ARTHUR M. PESLAK, and

STEPHANE E. BELISLE, Administrative Patent Judges.

PESLAK, Administrative Patent Judge.

JUDGMENT

Final Written Decision

Determining All Challenged Claims Unpatentable

35 U.S.C. § 314(a)

33a

I. INTRODUCTION

Petitioner, Samsung Electronics Co., Ltd., filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of

claims 7-20 of U.S. Patent No. 10,687,400 B2 (Ex. 1001,

“the ’400 patent”). In support of the Petition, Petitioner

submitted a Declaration of R. Jacob Baker, Ph.D., P.E.

Ex. 1002. Patent Owner, Lynk Labs, Inc., filed a Preliminary Response. Paper 12. We instituted this inter parties review as to all challenged claims and all grounds

presented in the Petition. Paper 16 (“Dec.”).

After institution, Patent Owner filed a statutory disclaimer of claims 14 and 18-20. Ex. 2011. Our review is,

thus, limited to the remaining claims 7-13 and 15-17 (“the

challenged claims”).

During the course of trial, Patent Owner filed a response to the Petition. Paper 20 (“PO Resp.”). Patent

Owner filed a Declaration of Alfred D. Ducharme in support of the Patent Owner Response. Ex. 2001. Petitioner

filed a Reply to the Patent Owner Response. Paper 24

(“Pet. Reply”). Petitioner filed a Reply Declaration of R.

Jacob Baker, Ph.D., P.E. Ex. 1107. Patent Owner filed a

Sur-Reply. Paper 27 (“Sur-reply”). An oral hearing was

held on March 28, 2023 and a transcript has been entered

into the record. Paper 32 (“Tr.”).

We have jurisdiction under 35 U.S.C. § 6. This is a Final Written Decision under 35 U.S.C. § 318(a) as to the

patentability of the challenged claims of the ’400 patent.

For the reasons discussed below, we determine Petitioner establishes by a preponderance of the evidence that all

of the challenged claims are unpatentable.

A. Related Matters

The parties state that the ’400 patent is asserted in

Samsung Electronics Co. v. Lynk Labs, Inc., Case No.

34a

1:21-cv-02665 (N.D. Ill.). Pet. 1; Paper 4, 1. The parties

also assert that various patents and patent applications

may be affected by a decision in this case. Pet. 2-3; Paper

4, 1.

B. Real Parties-in-Interest

Petitioner identifies itself and Samsung Electronics

America, Inc. as real parties-in-interest. Pet. 1. Patent

Owner identifies itself as the only real party-in-interest.

Paper 4, 1.

C. The ’400 Patent (Ex. 1001)

The ’400 patent is titled AC Light Emitting Diode and

AC LED Drive Methods and Apparatus. Ex. 1001, code

(54). The ’400 patent issued on June 16, 2020 from an application filed on Nov. 22, 2019. Id. at codes (45), (22).

The ’400 patent is related to a series of applications, the

earliest of which was filed on Feb. 25, 2005, which in turn

relate to a series of provisional applications, the earliest

of which was filed on Feb. 25, 2004. Id. at code (60).

The ’400 patent is directed to “alternating current

(‘AC’) driven LEDs, LED circuits and AC drive circuits

and methods.” Id. at 1:60-62. The ’400 patent explains

that the disclosed “LED light emitting device and LED

light system [are] capable of operating during both the

positive and negative phase of an AC power supply.” Id.

at 13:34-36. Embodiments of the ’400 patent include a

“series string of diodes and/or LEDs having a bridge rectifier connected [there]across.” Id. at 6:55-57. The ’400

patent discloses that the “rectifier … may be mounted on

[an] insulating substrate … along with any LEDs” and a

capacitor “included in the light emitting devices may like

wise [sic] be mounted on [the] substrate.” Id. at 16:35-45.

Figure 22 of the ’400 patent is reproduced below:

35a

Figure 22 of the ’400 patent “shows a schematic view

of a preferred embodiment of ” an AC lighting system.

Id. at 11:54-55. System 400, shown in Figure 22, includes

a plurality of devices 316, 332 each having at least one

LED. Id. at 16:19:43, 17:50-51. System 400 is connected

to a high frequency inverter AC drive and is driven by an

AC drive method. Id. at 17:50-52. In particular, device

316 includes plural LEDs 306 connected in series and

mounted on insulating substrate 318. Id. at 16:21-24, Fig.

18. Device 316 also includes a rectifier that drives the

LEDs and that is also mounted on the substrate. Id. at

16:34-36. “Any capacitors 312, 314 or resistors 313 included in the light emitting devices may like wise [sic] be

mounted on substrate 318.” Id. at 16:41-43.

Figure 13 of the ’400 patent is reproduced below:

36a

Figure 13 of the ’400 patent “shows a schematic view of a

preferred embodiment of ” an AC light emitting device.

Id. at 11:36-37.

In the device shown in Figure 13, individual sets of

two opposing parallel light emitting devices 140 are integrated into package 150 and are driven by an AC drive

method. Id. at 15:47-56. In certain embodiments, the

package may include a reflective substrate. Id. at 6:1-2;

26:29-36. In addition, having integrated capacitors and

resistors of equal or different values enables the devices

to operate at different drive currents from a single

source AC drive method. Id. at 17:55-59; see also id. at

14:29-32.

The ’400 patent explains:

Regardless of whether rectifier 302 and LEDs 306

are integrated or mounted in a single package or are

discretely packaged and connected, in order to drop

higher voltages any number of LEDs may be connected in series or parallel in a device to match a desired

voltage and light output. For example, in a lighting

device that is run off of a 120 V source and contains

LEDs having a forward operating voltage of 3V each

connected to a bridge rectifier having diodes also having a forward operating voltage of 3V each, approximately 38 LEDs may be placed in series to drop the

required voltage.

Id. at 16:64-17:7.

D. Challenged Claims

Claim 7 is reproduced below with Petitioner’s labels

[a]-[g] added for ease of reference:

7. [a] A lighting system comprising:

[b] an LED circuit array comprising an LED circuit comprising a plurality of LEDs connected in se-

37a

ries;

[c] a capacitor;

[d] a bridge rectifier configured to receive an input

AC voltage from a mains power source;

[e] a driver connected to the bridge rectifier and

configured to provide a rectified output AC voltage to

the LED circuit array;

[f] wherein a forward voltage of the LEDs of the

LED circuit array matches the rectified input AC voltage output of the driver; and

[g] wherein the LED circuit array, the capacitor,

the bridge rectifier, and the driver are all mounted on

a single substrate.

E. Prior Art and Asserted Grounds

In light of Patent Owner’s disclaimer of claims 14 and

18-20 (Ex. 2011), we address the following grounds challenging claims 7-13 and 15-17:

Claim(s) Challenged

35 U.S.C.13 §

Reference(s)/Basis

7, 9, 11

§ 103(a)

Nerone14, Martin 15

§ 103(a)

Nerone, Martin,

Morgan16

The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125

Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and

103 that became effective after the earliest claimed priority date of

the challenged claims. Because neither party argues otherwise, we

apply the pre-AIA version of 35 U.S.C. § 103.

U.S. Patent No. 6,411,045 B1 issued June 25, 2002 (Ex. 1032)

(“Nerone”).

U.S. Patent Application Publication No. 2004/0206970 A1 published

Oct. 21, 2004 (Ex. 1015) (“Martin”).

38a

§ 103(a)

Nerone, Martin,

Zinkler17

§ 103(a)

Nerone, Martin,

Michael18

§ 103(a)

Nerone, Martin,

Michael, Gleener19

7, 9-11, 17

§ 103(a)

Zhang20, Martin

§ 103(a)

Zhang, Martin,

Morgan

§ 103(a)

Zhang, Mosebrook21

§ 103(a)

Zhang, Michael,

Gleener

II. ANALYSIS

A. Overview

Petitioner bears the burden of establishing the unpatentability of the challenged claims by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R.

§ 42.1(d). This burden of persuasion never shifts to Pa-

U.S. Patent No. 7,202,613 B2 issued Apr. 10, 2007 (Ex.1033)

(“Morgan”).

U.S. Patent No. 6,300,725 B1 issued Oct. 9, 2001 (Ex. 1042) (“Zinkler”).

U.S. Patent No. 4,656,398 issued Apr. 7, 1987 (Ex. 1008) (“Michael”).

U.S. Patent Application Publication No. 2002/0175870 A1 published

Nov. 28, 2002 (Ex. 1039) (“Gleener”).

U.S. Patent Application Publication No. 2002/0021573 A1 published

Feb. 21, 2002 (Ex. 1012) (“Zhang”).

U.S. Patent No. 5,982,103 issued Nov. 9, 1999 (Ex. 1018) (“Mosebrook”).

39a

tent Owner.

Dynamic Drinkware, LLC v. Nat’l

Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).

A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior

art are such that the subject matter, as a whole, would

have been obvious at the time the invention was made to

a person having ordinary skill in the art to which said

subject matter pertains. KSR Int’l Co. v. Teleflex Inc.,

550 U.S. 398, 406 (2007). The question of obviousness is

resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art;

(2) any differences between the claimed subject matter

and the prior art; (3) the level of skill in the art; and (4)

when in evidence, objective indicia of non-obviousness

(i.e., secondary considerations)22. Graham v. John Deere

Co., 383 U.S. 1, 17-18 (1966).

B. Level of Ordinary Skill in the Art

Petitioner contends that a skilled artisan “would have

had at least a bachelor’s degree in electrical engineering,

computer engineering, computer science, physics, or the

equivalent, and two or more years of experience with

LED devices and/or related circuit design, or a related

field.” Pet. 7 (citing Ex. 1002 ¶¶20-21). Petitioner further contends that “[m]ore education can supplement

practical experience and vice versa.” Id.

Patent Owner contends that a person of ordinary skill

in the art would have “had, at least a bachelor’s degree in

electrical engineering, computer engineering, computer

science, physics, or the equivalent, and two or more years

of experience with LED devices and related LED circuit

No evidence of secondary considerations has been presented by

the parties.

40a

design. Lack of work experience could have been remedied by additional education and vice versa.” PO Resp. 7

(citing Ex. 2001 ¶¶38-42). Patent Owner contends this is

a similar definition as “provided by Petitioner” but Petitioner’s definition is “overbroad in several respects, as

explained by Dr. Ducharme,” including allowing an individual with no experience in LEDs or LED devices to be

a person of ordinary skill in the art. Id. (citing Ex. 1002

¶¶20-21; Ex. 2001 ¶¶40-41).

Petitioner contends that “[t]here is no meaningful dispute over a [person of ordinary skill in the art].” Pet.

Reply 1.

We apply Patent Owner’s proposed level of ordinary

skill in the art because it requires specific experience

with LED circuit design, and, thus, more closely aligns

with the level of skill reflected in the ’400 patent and the

prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be

affected.

C. Claim Construction

We apply the same claim construction standard used

by Article III federal courts and the ITC, both of which

follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.

2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b)

(2020). This claim construction standard includes construing claims in accordance with “the ordinary and customary meaning of such claim as understood by one of

ordinary skill in the art and the prosecution history pertaining to the patent.” Id.

Petitioner contends that “no special constructions are

necessary.” Pet. 8; Pet. Reply 2. “Patent Owner has applied the plain and ordinary meaning of the claim terms.”

PO Resp. 8.

41a

Upon review of the record, we determine that no claim

terms require express construction. See Nidec Motor

Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d

1013, 1017 (Fed. Cir. 2017) (noting that “we need only

construe terms ‘that are in controversy, and only to the

extent necessary to resolve the controversy ’ ”) (citing

Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,

803 (Fed. Cir. 1999)).

D. Patent Owner’s Contention that Martin is not

Available as Prior Art

Patent Owner contends that certain grounds “fail because . . . Martin is not available as prior art in an IPR.”

PO Resp. 18. Patent Owner contends that “[t]he Petition

presumes that Martin qualifies as prior art under

§ 102(e)(1)” but “Martin is neither a ‘patent’ nor a ‘printed publication’ as of the 400 Patent priority date of February 25, 2004.” Id. at 18-19. Patent Owner further contends that “Martin is not a ‘patent’ at least because it is

an application that abandoned and never issued as a patent” and “is not prior art consisting of . . . printed publications under 35 U.S.C. § 311(b) because it was not published before the 400 Patent priority date.” Id. at 19.

According to Patent Owner, “Martin first became public

on its publication date of October 21, 2004 . . . which is

after the February 25, 2004 priority date of the 400 Patent.” Id. (citing Pet. 6; Ex. 1002 ¶18; Ex. 1005, 1); see

also id. (“The effective date of ‘printed publication’ prior

art is the date it is ‘published, i.e., accessible to the public.’ ” (citing Samsung Elecs. Co. v. Infobridge Pte. Ltd.,

929 F.3d 1363, 1368, 1370 (Fed. Cir. 2019)). Patent Owner further contends that Petitioner cites no authority for

its “attempt[ ] to invoke Martin’s April 16, 2003 filing date

as its effective prior art date” under § 102(e). Id. at 20.

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Petitioner counters that “Martin qualifies as a ‘patent[ ] and printed publication[ ] under § 311(b) at least

because it is ‘an application for patent, published under

section 122(b), by another filed in the United States before the invention by the applicant for patent’ according

to § 102(e)(1).” Pet. Reply 32-33. Petitioner further contends that “[t]he well-established AIA-framework permits the use of § 102(e) prior art in IPR proceedings.” Id.

at 33 (citations omitted). Petitioner further contends that

Patent Owner’s cited cases under § 102(a) are inapt. Id.

(citing PO Resp. 33).

We agree with Petitioner.

The statute governing the formerly available CBM

proceeding explicitly limits challenges based on “prior art

that is described by section 102(a).” AIA § 18(a)(1)(C).

In contrast, § 311(b) permits challenges “on the basis of

prior art consisting of patents or printed publications.”

The language in § 311(b) implies that, unlike CBMs, IPRs

are not limited to prior art challenges solely under

§ 102(a). Patent Owner relies, inter alia, on Infobridge,

but that case deals with public accessibility under

§ 102(b). Infobridge, 929 F.3d at 1368-69.

The parties do not cite to any Federal Circuit decisions that squarely address this issue. However, the

Federal Circuit applied § 102(e) patent application publication prior art in an appeal from an IPR. See, e.g., Purdue Pharma L.P. v. Iancu, 767 Fed. App’x 918, 920-21,

926 (Fed. Cir. 2019) (nonprecedential) (determining that

a § 102(e) patent application publication, “Joshi”, was

available as prior art in an IPR).

The Board has also instituted trials and determined

claims to be unpatentable based on patent application

publications under § 102(e). See, e.g., Patent Qual. Assurance, LLC v. VLSI Tech. LLC, IPR2021-01229, Paper

43a

129 at 27-29 (PTAB June 13, 2023) (determining challenged claims unpatentable based, in part, on patent application publication available as prior art under § 102(e));

Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027,

Paper 14 at 27 (PTAB Jan. 31, 2013) (instituting trial on

§ 102(e) ground based on a patent application publication). Although not precedential, these decisions are persuasive.

For the foregoing reasons, we find Patent Owner’s argument that Martin is not available as prior art in this

proceeding unavailing.

E. Ground 1: Obviousness over Nerone and Martin

Petitioner contends that claims 7, 9, and 11 are unpatentable over Nerone and Martin. Pet. 9-32. In support thereof, Petitioner identifies the disclosures in

Nerone and Martin alleged to describe the subject matter in these claims. Id. Additionally, Petitioner cites to

the declaration of Dr. Baker in support of the Petition.

Ex. 1002 ¶¶104-144.

Patent Owner contends that the prior art does not

teach certain limitations of claim 7. PO Resp. 21. In particular, Patent Owner contends that the combination does

not disclose “an LED circuit array comprising an LED

circuit comprising a plurality of LEDs connected in series” and “a forward voltage of the LEDs of the LED circuit array matches the rectified input AC voltage output

of the driver.’ ” Id.

We begin our analysis with a brief overview of Nerone

and Martin. We then address the parties’ respective contentions with respect to claims 7, 9, and 11.

1. Nerone– Ex. 1032

44a

Nerone is titled Light Emitting Diode Power Supply.

Ex. 1032, code (54). Nerone discloses “a power supply

circuit for operating a light source, particularly, an array

of light emitting diodes (LEDs).” Id. at 1:5-9. Figure 4

of Nerone is reproduced below:

Figure 4 is a schematic diagram of a power supply circuit

400 for an LED traffic signal. Id. at 2:56-57, 5:51-52.

Power supply circuit 400 includes resonant load circuit

405 having resonant inductor 150, resonant capacitor 155,

and matching capacitor 160. Ex. 1032, 5:51-57. Resonant

circuit 405 “further includes at least one group 410 of

LEDs 415 connected in parallel and polarized in the same

direction. The groups 410 of LEDs 415 are connected in

series.” Id. at 5:57-60. Nerone explains that “[a] first

rectification means or full-wave bridge rectifier 105 coupled to an AC source 110 converts an AC current to DC

current. A smoothing capacitor 115, connected in parallel

to the bridge rectifier 105 maintains an average voltage

level.” Id. at 2:65-3:2.

Nerone discloses that “second bridge rectifier 420,

which is coupled in parallel to the resonant capacitor 155,

45a

re-converts the AC current to DC current.” Ex. 1032,

5:65-67. Nerone explains that “diode 425 is connected in

parallel to the second bridge rectifier 420” and “allows

current to flow continuously through the current limiting

inductance 430, which limits the current supplied to the

LEDs.” Id. at 6:3-6.

2. Martin – Ex. 1015

Martin describes LEDs formed on a single substrate

connected in series for use with an AC source. Ex. 1015,

code (57). Figure 5 of Martin is reproduced below:

Figure 5 depicts an LED array and full bridge rectifier

for rectifying the AC source. Id. ¶24.

The full bridge rectifier of Figure 5 can be an external

component or integrated into a submount. Ex. 1015 ¶24.

A capacitor filters the rectified voltage to provide nearly

direct current to an LED array. Id.

According to Martin, “[e]xcessive forward voltage can

damage the LEDs irreversibly.” Ex. 1015 ¶21. Martin

46a

explains that “[s]eries interconnection reduces the voltage drop across each LED to a level that does not exceed

the maximum forward voltage of each LED.” Id. In this

manner, “[t]he number of LEDs in the monolithic array

may be selected to achieve a particular voltage drop

across each device . . . such that the maximum voltage

across each individual LED during the peak in the alternating current cycle is low enough so as to not damage

the LEDs.” Id. ¶22.

3. Claim 7

[a] A lighting system comprising:

Petitioner contends that, to the extent the preamble is

limiting, Nerone discloses “a lighting system.” Pet. 9-10

(citing Ex. 1032, 1:6-9, 2:57-59, 5:51-60, 6:9-11, Fig. 4; Ex.

1002 ¶¶59-62, 104-107).

Patent Owner does not address Petitioner’s contentions or whether the preamble is limiting. See PO Resp.

21-43.

We have reviewed the evidence cited by Petitioner and

find that Nerone discloses the subject matter of the preamble. Neither party contends that the preamble is limiting so we need not decide whether it is limiting.

[b] an LED circuit array comprising an LED circuit

comprising a plurality of LEDs connected in series;

47a

Petitioner contends that Nerone’s “circuit 400 (‘lighting system’) comprises an LED circuit array comprising

a plurality of LEDs connected in series.” Pet. 11 (citing

Ex. 1002 ¶108; Ex. 1031, Fig. 4). Petitioner provides the

following annotated version of Nerone’s Figure 4 (id.):

Figure 4 of Nerone “is a schematic diagram of . . . [a] preferred embodiment of a power supply circuit.” Ex. 1032,

2:57-58. In this annotated version of Figure 4 of Nerone,

Petitioner adds a red ellipse around LED group 410 on

the right side of Figure 4. Id.

Petitioner contends Nerone discloses “that its LEDs

circuit array [annotated in red] comprises an LED circuit

(i.e., groups 410) comprising a plurality of LEDs [415]

connected in series.” Pet. 11-12 (citing Ex. 1002 ¶109);

see also id. (“Nerone discloses that . . . ‘[t]he groups 410

of the LEDs 415 are connected in series.’ ” (citing Ex.

1032, 5:57-60)). Petitioner further contends that “[t]he

arrangement of LEDs annotated in red above in Figure 4

of Nerone is an LED circuit array, e.g., because Nerone

explains that ‘[t]he present invention provides a more

cost efficient electrical circuit for supplying power to an

48a

LED array.’ ” Id. (citing Ex. 1002 ¶110; Ex. 1032, 2:1516).

Patent Owner provides the following annotated partial

view of Figure 4 of Nerone:

PO Resp. 23. In this diagram, Patent Owner provides

the right-hand side of Figure 4 with red annotations

identifying various groups of LEDs. Id. Patent Owner

contends that “[i]t is unclear whether the Petitioner is

asserting that (1) each of the LED groups is in series, (2)

the individual LEDs within a single group 410 are in series, or (3) the individual LEDs between the groups . . .

are in series.” Id. at 22-23 (citing Ex. 1032, Fig. 4; Ex.

2001 ¶¶76-77).

Patent Owner contends that a person of ordinary skill

in the art would have understood “that the ‘plurality of

LEDs connected in series’ in limitation 7(b) refers to individual LEDs connected in series, not individual groups

49a

or circuits of LEDs being in series.” PO Resp. 24 (citing

Ex. 1001, claim 7). Patent Owner further contends that

“[t]he claim could have recited ‘a plurality of LED circuits connected in series’ but it does not.” Id. According

to Patent Owner, “[w]hen the inventor wanted to claim

circuits being connected in series or parallel, the claim

expressly sets that forth, such as in limitation 14(b).” Id.

(citing Ex. 1001, 28:15-16; Ex. 2001 ¶78).

Patent Owner next contends that a person of ordinary

skill in the art “would understand that Nerone’s groups

1-4 of LEDs 415 are not a ‘plurality of LEDs connected

in series.’ ” PO Resp. 24. In support of this contention,

Patent Owner provides the following drawing:

Id. In this diagram, Patent Owner provides two schematic diagrams inside a black box. Id. On the left side of

the box, Patent Owner provides an excerpt from Figure 4

of Nerone with a red annotation “Nerone (LEDs 415 not

in series).” Id. On the right side of the box, Patent Own-

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er “depicts how the LEDs 415 of Nerone could have been

configured (but were not) to be in series” with a red annotation “Lynk (LEDs 415 in series).” Id. at 23-24 (citing

Ex. 2001 ¶79).

Patent Owner contends that “[e]ach of the groups 1-4

from Nerone is a circuit that is in series with the other

groups. However, none of the individual LEDs 415 are

connected in series with any other LEDs.” PO Resp. 26

(citing Ex. 2001 ¶80). Patent Owner contends that

“Nerone confirms that each of the four groups 410 is in

series, but the LEDs within the groups are not in series

with LEDs within other groups.” Id. (citing Ex. 1032,

5:57-60). Patent Owner further contends that Figure 4 of

Nerone confirms that there is “not one group that has

any LED 415 connected in series to another LED within

the group, nor is there any disclosure of an LED 415 in

one group connected in series to an LED within another

group.” Id. (citing Ex. 2001 ¶81).

Patent Owner next contends that “[t]he defining characteristic of a series circuit is that all components in the

series circuit have the same current flowing through

them.” PO Resp. 27 (citing Ex. 2007, 4). According to

Patent Owner, “[t]he corollary is that if two components

in a circuit can carry different currents, then those components cannot be in series.” Id. (citing Ex. 2001 ¶83).

Based on this, Patent Owner argues that “individual

LEDs 415 in groups 1-4 are not connected in series.” Id.;

see also id. at 27-30 (arguing why LEDs in Nerone are

allegedly not connected in series for the same reason);

Sur-reply 3 (arguing that limitation 7(b) “refers to multiple LEDs having the same current path that carry the

same current.”).

Patent Owner next contends that “the LEDs between

the groups cannot be in series” because manufacturing

51a

tolerances may result in the LEDs 415 drawing different

current. PO Resp. 29 (citing Ex. 2001 ¶86). Patent Owner contends that “an LED rated at 10 mA for a given

forward voltage may draw a little more or a little less,

such as 10.0001 mA or 9.999 mA. Id.

Petitioner, in turn, reiterates its position from the Petition that Nerone discloses that its “groups 410 of the

LEDs 415 are connected in series.” Pet. Reply 1 (citing

Pet. 11-12). Petitioner contends that Patent Owner’s expert concedes, that, while LEDs within each group may

be connected in parallel, the groups of LEDs are connected in series.” Id. (citing Ex. 2001 ¶¶81-82).

Petitioner next contends that “nothing in independent

claim 14 (or other claims) implies that claim 7 excludes

LEDs from parallel-connection to other LEDs.” Pet.

Reply 2. Petitioner contends that Patent Owner “improperly imports a limitation into claim 7 and is inconsistent with the ’400 patent.” Id. at 3 (citing Ex. 1001,

Figs. 6-8, 14, 21, 24; Ex. 1003 ¶¶3-16). Petitioner points

to Figure 14 of the ’400 patent as “depict[ing] ‘a light

emitting device 152 [including] a series opposing parallel

LED matrix 154 and a capacitor 156 connected in series.’ ” Id. (citing Ex. 1001, 15:56-64, Fig. 14). Petitioner

further contends that “matrix 154 . . . is described as including a ‘series string of LEDs’ . . . while each LED in a

series string is also connected in parallel to other LEDs.”

Id. (citing Ex. 1001, 1:64-16:1). Petitioner further contends that the series opposing parallel array of Figure 14

“is similar to the LED circuit array of Nerone.”

Petitioner provides the following annotated comparison of Figure 14 in the ’400 patent with Patent Owner’s

partial annotated view of Nerone’s Figure 4:

52a

Id. at 4. This drawing shows Figure 14 rotated counterclockwise with yellow highlighting of certain nodes and

Patent Owner’s partial annotated view of Figure 4 also

with yellow highlighting of certain nodes. Id. (citing PO

Resp. 23; Ex. 1001, Fig. 14; Ex. 1107 ¶¶14-15). Petitioner

contends the highlighted nodes shown in Figure 4 of

Nerone are “functionally identical” to the highlighted

nodes in Figure 14 of the ’400 patent. Id. at 3. Petitioner

further contends that Patent Owner “conceded that

Nerone’s groups containing LEDs are connected in series within an LED circuit (POR, 24) which necessarily

means that the LEDs of each group are ‘connected in series’ with the LEDs of the other groups.” Id. at 4 (citing

Ex. 1107 ¶¶10-13).

Petitioner next contends that Patent Owner’s “reliance on ‘manufacturing tolerances’ is misplaced.” Pet.

Reply 10 (citing PO Resp. 29-30). Petitioner argues that

Patent Owner “presents no evidence that a [person of ordinary skill in the art] would have considered ‘manufac-

53a

turing tolerances’ relevant to” whether LEDs are connected in series or parallel. Id. (citing Ex. 2001 ¶86). Petitioner further contends that “[w]hatever miniscule differences might exist they would apply equally to LEDs

connected in series regardless of other parallel connections and thus have no bearing on limitation 7(b).” Id.

(citing Ex. 1107 ¶¶25-26).

For the following reasons, we are persuaded that

Nerone discloses this limitation.

As discussed above, Petitioner contends that Nerone’s

“LED circuit array . . . comprises an LED circuit, (i.e.

groups 410) comprising a plurality of LEDs connected in

series.” Pet. 11 (citing Ex. 1032, Fig. 4). Patent Owner

does not dispute Petitioner’s contentions concerning

Nerone’s teaching of an LED circuit array and an LED

circuit. Compare Pet. 11, with PO Resp. 21-30. But, Patent Owner contends that Petitioner’s mapping of

Nerone to this claim limitation is unclear. PO Resp. 2223. We disagree because the Petition states that

Nerone’s “groups 410 of the LEDs 415 are connected in

series.” Pet. 11-12 (citing Ex. 1032, 5:57-60); Pet Reply 1

(citing Pet. 11-12). Patent Owner admits that “Nerone

confirms that each of the four groups 410 is in series.”

PO Resp. 26; see also Ex. 2001 ¶81 (Dr. Ducharme testifying that “each of four groups 410 is in series.”). Consequently, because there is no dispute that groups 410 are

in series, the question we must resolve is whether

Nerone’s groups 410 meet the requirement of “a plurality

of LEDs connected in series” as recited in limitation 7(b).

Patent Owner’s contentions are largely based on rewriting this limitation. Patent Owner argues that a person of ordinary skill in the art “would understand that

the ‘plurality of LEDs connected in series’ in limitation

7(b) refers to individual LEDs connected in series.” PO

54a

Resp. 24; see also Sur-reply 2 (“at least two LEDs are

connected in series”). But, limitation 7(b) does not recite

“individual LEDs connected in series.” Dr. Ducharme

repeats verbatim the Patent Owner’s arguments concerning the meaning of limitation 7(b). Ex. 2001 ¶78. Dr.

Baker counters that a person of ordinary skill would have

understood the “meaning of limitation 7(b) . . . to encompass an LED circuit array that includes at least one LED

circuit that includes two or more LEDs that are connected in series . . . but not exclude that the ‘LED circuit’ can

have other LED(s) connected in parallel.” Ex. 1107 ¶4.

For the reasons explained below, we credit Dr. Baker’s

testimony over that of Dr. Ducharme because it is more

consistent with the claim language.

Limitation 7(b) recites, in its entirety, “an LED circuit

array comprising an LED circuit comprising a plurality

of LEDs connected in series.” Ex. 1001, 27:49-50. Although two or more individual LEDs connected in series

could satisfy this limitation, the scope is broader than Patent Owner contends because the plurality of LEDs connected in series are part of an LED circuit that is part of

an LED circuit array. Patent Owner’s reference to claim

14 (PO Resp. 24) does not support its reading of claim 7.

Claim 14 recites “LED circuits connected in parallel,

wherein each LED circuit comprises at least two LEDs.”

This language sheds little, if any, light on the meaning of

“a plurality of LEDs connected in series.” To the extent

that Patent Owner’s contentions for this limitation are

based on limiting the scope of limitation 7(b) to individual

LEDs connected in series, those contentions are unavailing.

To be clear, we find that Nerone discloses that resonant load circuit 405 “includes at least one group 410 of

LEDs 415 connected in parallel and polarized in the same

55a

direction” and “groups 410 of the LEDs 415 are connected in series.” Ex. 1032, 5:58-60 (emphasis added).

Patent Owner’s analysis ignores Petitioner’s contention that Nerone’s LED circuit comprises “groups 410.”

Pet. 11. Rather, Patent Owner applies its narrow construction within individual groups 410. For example, Patent Owner argues that “individual LEDs 415 in groups

1-4 are not connected in series” and, that if one LED in a

group fails, then current will still flow through the remaining LEDs in the group. According to Patent Owner,

this means the LEDs within the group are not in series.

PO Resp. 27-29. However, this is where Patent Owner’s

argument about current flow through series connected

LEDs fails. We agree with Petitioner and Dr. Baker,

that in the case of a failure of one LED in one of Nerone’s

groups 415, current still flows “because the group includes parallel connected LEDs––not because the LEDs

between the groups are not connected in series. Pet. Reply 7 (citing Ex. 1107 ¶¶12, 20). The fact that individual

LEDs in any group 415 are not connected in series is not

dispositive. Limitation 7(b) requires “an LED circuit

comprising a plurality of LEDs connected in series.” Ex.

1001, 27:49-50. We find that any two adjacent groups

410, which are part of the LED circuit in Nerone, correspond, to “a plurality of LEDs connected in series.”

With respect to Patent Owner’s manufacturing tolerance issue, Patent Owner relies on Dr. Ducharme’s testimony. Dr. Ducharme testifies that a person of ordinary

skill in the art would have known of manufacturing tolerances, but he does not testify that the ordinary skilled

artisan would understand that manufacturing tolerances

affect whether LEDs are connected in series. Ex. 2001

¶86. In point of fact, Dr. Baker testifies that “a person of

ordinary skill in the art would not have attributed such

56a

characteristics [manufacturing tolerances] to understanding whether Nerone’s array includes LEDs connected in series, or whether in general, LEDs are connected in series or parallel.” Ex. 1107 ¶25. Based on Dr.

Baker’s testimony, which we credit, any manufacturing

tolerances of the LEDs in Nerone’s groups 410 have no

bearing on whether groups 410 are connected in series.

After reviewing Petitioner’s contentions and the evidence in the record and Patent Owner’s contentions, we

find that Nerone discloses this limitation.

[c] a capacitor

Petitioner contends that “Nerone discloses that circuit

400 (‘lighting system’) includes capacitors 115, 155, 160,

185, 200, 210, and 215 (red below), any of which is ‘a capacitor.’ ” Pet. 12-13 (citing Ex. 1032, Fig. 4; Ex. 1002

¶111). Petitioner provides the following annotated version of Nerone’s Figure 4 in support of this contention

(id. at 13):

In this annotated version of Nerone’s Figure 4, Petitioner adds red circles around item numbers 115, 155, 160,

185, 200, 210, and 215 that it contends are capacitors.

57a

Patent Owner does not address Petitioner’s contentions. See PO Resp. 21-43.

Based on our review of the evidence cited by Petitioner, we find that Nerone discloses this limitation.

[d] a bridge rectifier configured to receive an input AC

voltage from a mains power source;

Petitioner contends that “Nerone in view of the state

of the art discloses or suggests this limitation.” Pet. 13

(citing Ex. 1002 ¶¶112-115). Petitioner contends Nerone

discloses circuit 400 comprises bridge rectifier 105 configured to receive an input AC voltage. Id. (citing Ex.

1002 ¶112). In support of this contention, Petitioner provides the following annotated version of Nerone’s Figure

4 (id. at 14):

In this annotated version of Figure 4, Petitioner adds a

red circle around item number 105 in the upper left-hand

corner which it contends is bridge rectifier 105. Id.

Petitioner contends that Nerone’s bridge rectifier 105

is configured to receive an input AC voltage from AC

source 110. Pet. 14 (citing Ex. 1002 ¶113; Ex. 1032, 2:6567). Petitioner asserts that because Nerone’s lamps “op-

58a

erate with a 120 volt 60 Hz AC power supply[ ] . . . [a

skilled artisan] would have known that an AC voltage of

120 V (i.e., 120 VAC) was commonly available from a

mains power source.” Id. at 15 (citing Ex. 1002 ¶114; Ex.

1032, 1:51-56; Ex. 1027, 1:8-12, 1:18-27; Ex. 1045, 1:20).

According to Petitioner, a skilled artisan “would have

been motivated and found it obvious to configure

Nerone’s bridge rectifier 105 to receive its input AC voltage from a mains power source.” Id. (citing Ex. 1002

¶115).

Patent Owner does not address Petitioner’s contentions. See PO Resp. 21-43.

Based on our review of the evidence cited by Petitioner, we find that Nerone suggests this limitation.

[e] a driver connected to the bridge rectifier and configured to provide a rectified output AC voltage to the LED

circuit array;

Petitioner contends that “Nerone discloses a driver . . .

connected to bridge rectifier 105 (‘the bridge rectifier’)

and configured to provide a rectified output AC voltage

to the LED circuit array.” Pet. 16 (citing Ex. 1032, Fig.

4; Ex. 1002 ¶116). In support of this contention, Petitioner provides the following annotated version of Nerone’s

Figure 4 (id.):

59a

In this annotated version of Figure 4, Petitioner provides a red rectangle drawn with broken lines around the

items it contends correspond to the recited driver. Id.

Petitioner contends that “[t]he circuitry annotated in red

. . . is a driver, e.g., because it drives current and power to

the LED circuit array.” Id. (citing Ex. 1002 ¶117). According to Petitioner, “the bridge rectifie[r] allows both

halves of the input AC voltage waveform to pass through

the lamp in the same current direction . . ., thus producing a rectified AC voltage waveform output.” Id. at 17

(citing Ex. 1002 ¶117).

Patent Owner does not address Petitioner’s contentions. See PO Resp. 21-43.

Based on our review of the evidence cited by Petitioner, we find that Nerone discloses this limitation.

[f] wherein a forward voltage of the LEDs of the LED

circuit array matches the rectified input AC voltage output of the driver; and

Petitioner contends that to the extent Nerone does not

disclose that the forward voltage of the LEDs matches

the rectified input AC voltage, “it would have been obvious in view of Martin and the state of the art to configure

Nerone’s circuit 400 (‘lighting system’) system to provide

such features to ensure proper operation of the LED circuitry . . . in circuit 400.” Pet. 18-19 (citing Ex. 1002

¶¶63-65, 119-131). Petitioner contends that a person of

ordinary skill in the art “would have understood and taken into account the following considerations:

(a) the total voltage drop of the circuit would dictate the current drawn by the LED circuitry, which

would have been known to be inversely proportional to

the voltage; (b) fewer LEDs in the design would lead

to a larger current compared to a circuit with a greater

60a

number of LEDs; (c) excessive current would have

been harmful to Nerone’s LEDs that could lead to

failure; (d) too small a current may be insufficient to

power the LEDs in a manner that enabled the lighting

device [to] operate as intended.

Id. at 19 (citing Ex. 1002 ¶120).

Petitioner further contends that a skilled artisan

knowledgeable about typical LED circuit design “would

have taken into consideration the number of LEDs and

the total voltage drop of the LED circuit when designing

and implementing Nerone’s circuit 400” and that “matching the input voltage to the forward voltage of the LEDs

had become a matter of routine optimization.” Id. at 1920 (citing Ex. 1002 ¶¶120-121; Ex. 1074 ¶30).

Petitioner next contends Martin discloses “that

‘[e]xcessive forward voltage can damage the LEDs irreversibly’ and that ‘[s]eries interconnection reduces the

voltage drop across each LED to a level that does not exceed the maximum forward voltage of each LED.’ ” Pet.

20 (citing Ex. 1015 ¶21). Petitioner further contends

Martin is similar to the ’400 patent and Nerone because it

“relates to monolithic arrays of semiconductor light emitting devices powered by alternating current sources.”

Id. (citing Ex. 1001, codes (12), (57); Ex. 1015 ¶2, Fig. 5).

Petitioner further contends “Martin discloses that ‘[t]he

number of LEDs in the monolithic array may be selected to achieve a particular voltage drop across each

device . . . such that the maximum voltage across each

individual LED during the peak in the alternating current cycle is low enough so as to not damage the LEDs.’ ”

Id. (citing Ex. 1015 ¶22). Petitioner further contends

Martin “explains that ‘[t]he voltage across each of the individual LEDs in the array is the line voltage divided by

the number of LEDs in series.’ ” Id. (citing Ex. 1002

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¶123; Ex. 1015 ¶22). According to Petitioner, this “applies equally to LEDs powered directly from an alternating current . . . as well as those powered by rectified AC

current (where the LEDs are powered on continuously).”

Id. at 21 (citing Ex. 1002 ¶124; Ex. 1015 ¶¶23-24, Fig. 5).

Based on the teachings of Martin, Petitioner contends a

skilled artisan “would have recognized that the forward

voltage of [Nerone’s] series-connected LEDs should

[have] approximately matched the rectified AC voltage

output of the above-described LED driver circuit.” Id.

(citing Ex. 1002 ¶124).

Petitioner also contends that combining the teachings

of Nerone and Martin “is consistent with the state of the

art.” Pet. 22 (citing Ex. 1002 ¶125). In particular, Petitioner analyzes Allen (Ex. 1011) and Bockle (Ex. 1075) as

representative of the state of the art. Id. at 22-24. According to Petitioner, based on the alleged knowledge of

a skilled artisan and Nerone and Martin, a skilled artisan

“would have had the skills and rationale to consider and

implement the above modification and would have done

so with a reasonable expectation of success.” Id. at 26

(citing Ex. 1002 ¶130).

Patent Owner first contends that Petitioner fails to

analyze “what would be the value of the DC output voltage at the inductor 430 of Nerone’s Figure 4 based on an

input voltage of 120 VAC” and “does not indicate the

number of LEDs 415 or the number of groups 410 in

Nerone’s figure 4 that would be necessary to match the

(unspecified) DC voltage ouput [sic].” PO Resp. 31-32

(emphasis omitted).

Patent Owner next contends that Martin attempts to

avoid damaging LEDs and “proposes a ‘[s]eries interconnection [that] reduces the voltage drop across each

LED to a level that does not exceed the maximum for-

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ward voltage of each LED. Excessive forward voltage

can damage the LEDs irreversibly.” PO Resp. 33 (quoting Ex. 1015 ¶21). Patent Owner further contends that

“[f]or a 120 VAC input, Martin discloses selecting the

number of LEDs to be 38 LEDs so that the voltage drop

across each LED is less than the ‘maximum forward

voltage’ of 4.5 V at the voltage peak of 169.71 V.” Id. (citing Ex. 1005 ¶21; Ex. 2001 ¶92). According to Patent

Owner “[t]he claimed voltage-matching provides that the

total voltage drop across the LEDs matches the rectified

voltage delivered by the driver” but “Martin . . . is teaching that the voltage across individual LEDs is less than a

maximum voltage to prevent damage from overdriving

LEDs, not matching LED drops to a rectified AC voltage

from a driver.” Id. at 33-34 (citing Ex. 2001 ¶93).

Patent Owner next contends that Martin teaches selecting 42 LEDs for a circuit “where each LED operates

at its ‘forward voltage’ of 3.5 V for a total voltage drop of

42 x 3.5 V= 147 V.” PO Resp. 34 (citing Ex. 1015 ¶22;

Ex. 2001 ¶94) (footnote omitted). Patent Owner contends

that the “147 V drop does not match the rectified AC

voltage” because “[a] voltage drop of 147 V is much less

than the peak voltage of 169.71 V. A voltage drop of 147

V is much more than the rms voltage of 120 V.” Id. (citing Ex. 2001 ¶95).

Patent Owner next contends that Martin does not

meet the recited voltage matching because it “selects the

number of LEDs based on an unrecitifed [sic] AC voltage with a peak of 169.71 V, not based on a rectified AC

voltage” as recited in limitation 7(f ). PO Resp. 35 (citing

Ex. 2001 ¶96). Patent Owner concedes that Figure 5 of

Martin discloses LEDs driven by a rectified AC voltage

but contends that the rectified voltage in Figure 5 would

be 168.31 V. Id. at 35-36 (citing Ex. 1015, Fig. 5; Ex. 2001

63a

¶97). According to Patent Owner, Martin does not “teach

selecting the number of LEDs based on a rectified AC

voltage of 168.31 V.” Id. (citing Ex. 1015 ¶24, Fig. 5; Ex.

2001 ¶98).

Patent Owner next contends that the circuit in

Nerone’s Figure 4, “delivers a fixed DC voltage (rectified

AC voltage) to LED groups 410 using a second full wave

bridge rectifier 420 and current limiting conductor 430”

switches 420/425 and the resonant load circuit 405 regulate the amount of voltage and current delivered to the

LED groups 410.” PO Resp. 36-37. According to Patent

Owner, based on this, “there is no need to select the

number of LEDs in groups 410 to match their total forward voltage drop to the DC voltage at inductor 430.” Id.

at 37.

Patent Owner next contends that Petitioner “cites to

four inappropriate extraneous references not part of

Ground 1.” PO Resp. 38 (citing Pet. 20, 23-25; Ex. 1012

¶¶121, 125-127, 129; Ex. 1011 (“Allen”); Ex. 1014

(“Birrell”); Ex. 1074 (“Cross”); Ex. 1075 (“Bockle”)). Patent Owner further contends that “Petitioner defined its

ground based on Nerone and Martin and should not be

permitted to modify or effectively create a new ground

that includes these four additional references.” Id. at 3839.

Patent Owner does not dispute Petitioner’s contentions concerning reasonable expectation of success.

Compare Pet. 26, with PO Resp. 30-43.

Petitioner, in turn, contends that Patent Owner “does

not dispute, or proffer any refuting evidence concerning,

the Petition’s analysis and supporting evidence . . . that

the ‘matches’ requirement was an obvious matter of routine configuration/optimization in the art.” Pet. Reply

12 (citing Pet. 19-20, Ex. 1002 ¶¶120-12, Ex. 1074 ¶30.

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Petitioner contends that the obviousness analysis does

not require Petitioner to provide “some specific number

of LEDs and output voltage for the modified Nerone system.” Pet. Reply 13 (citing KSR). Petitioner further

contends the number of LEDs “would have depended on

the particular output voltage, LEDs, and application”

and “[a]s a matter of routine skill, the precise number of

LEDs would have been optimized for the chosen application to avoid, e.g., overdriving.” Id. (citing Ex. 1002 ¶¶4143, 63-65, 119-131; Ex. 1107 ¶¶28-29).

Petitioner next contends that Patent Owner “avoids

defining ‘matches’ or comparing the ’400 patent, including its description of ‘matched’ forward voltage from [Ex.

1011].” Pet. Reply 13-14. Petitioner cites to the ’400 patent’s description of Allen’s voltage matching requirement as “the peak input voltage must be less than or

equal to the sum of the maximum forward voltages . . . in

order to prevent over-driving.” Id. at 14 (citing Ex. 1001,

2:27-35). Petitioner further contends that Dr. Ducharme

testified “that ‘matches’ requires exactly equal output

voltage and total voltage drop of the LEDs” which according to Petitioner is “inconsistent with the ’400 patent’s description of ‘match’ as a ‘less than or equal to’

condition.” Id. at 14-15 (citing Ex. 1001, 2:27-35; Ex.

1106, 23:25-25:9; Ex. 1107 ¶¶27-28). Petitioner further

contends that “the ’400 patent describes using matching

to prevent overdriving which is the same as Martin’s reason for matching. Id. at 15 (citing Ex. 1001, 2:27-35, 3:1133, 8:16-46, 16:64-17:7).

Petitioner next contends that Patent Owner’s attempt

to distinguish Martin because Figure 4 supplies an AC

voltage not a rectified AC voltage is unavailing. Pet. Reply 15 (citing PO Resp. 35). Petitioner further contends

that Patent Owner “fails to show any impact these exam-

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ples had on a [person of ordinary skill in the art]’s ability

or desire to ‘match the output voltage” but, in any event,

according to Petitioner, Martin “exemplifies driving with

a rectified AC voltage.” Id. (citing Pet. 20-21; Ex. 1015

¶¶23-25, Fig. 5; Ex. 1011 ¶¶41-43; Ex. 1074 ¶30; Ex. 1107

¶¶29-30).

Petitioner further contends that Cross, Allen, Bockle,

and Birrell were cited to corroborate Dr. Baker’s testimony concerning the knowledge of a person of ordinary

skill in the art as “to matching.” Pet. Reply 18 (citing

Pet. 19-26; Ex. 1002 ¶¶36, 40-44, 65, 119-131). Petitioner

further contends that it is not using these references for

“gap-filling” or combining any of Cross, Allen, Bockle, or

Birrell with Nerone or Martin. Id. (citing Pet. 18-27).

In the Sur-reply, Patent Owner contends Petitioner

statement in the Reply that the number of LEDs in the

modified Nerone system is a matter of routine skill in the

art based on various factors is “vague and conclusory”

and “does not remotely establish that Nerone/Martin

meets limitation 7(f ).” Sur-reply 12-13.

Patent Owner next contends that it did not overlook

“the example in Martin’s paragraph [0022] where the 38

LEDs are connected in series.” Sur-reply 13 (citing PO

Resp. 33-34; Ex. 2001 ¶93). Patent Owner further contends that “[t]his example is distinguishable because the

selection of LEDs is based on a direct drive AC input

voltage, not the ‘rectified [ ] AC voltage output of the

driver’ per limitation 7(f )” and “because the LEDs are

selected based on the LEDs maximum forward voltage,

not based on their forward voltage, as a [person of ordinary skill in the art] would understand for limitation

7(f ).” Id. (citing Ex.1015 ¶22).

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For the following reasons, Petitioner persuades us

that the combined teachings of Nerone and Martin suggest this limitation.

Patent Owner’s contentions are based on the premise

that “matches means an equivalence within a manufacturing tolerance.” Tr. 32:18-21; see also PO Resp. 33-34

(“Martin . . . is teaching that the voltage across individual

LEDs is less than a maximum voltage to prevent damage

from overdriving LEDs, not matching LED drops to a

rectified AC voltage from a driver.” (citing Ex. 2001

¶93)). The ’400 patent describes “for the forward voltage

to be ‘matched,’ in each series block, the peak input voltage must be less than or equal to the sum of the maximum forward voltages for each series block in order to

prevent over-driving.” Ex. 1001, 2:32-35 (emphasis added); id. at 9:49-51 (“opposing parallel series strings of

LEDs connected together and driven direct with a high

frequency AC voltage equal to or less than the total series voltage drop of the opposing parallel strings of

LEDs.”); id. at 16:64-17:7 (“in a lighting device that is

run off 120 V source and contains LEDs having a forward

operating voltage of 3V each connected to a bridge rectifier . . . approximately 38 LEDs may be placed in series

to drop the required voltage.”). While matching based on

“an equivalence within a manufacturing tolerance” falls

within the scope of limitation 7(b), the ’400 patent’s description of “matches” is broader than “equivalence.” It

also encompasses “the rectified input AC voltage output

of the driver” that is less than “a forward voltage of the

LEDs of the LED circuit.” See Ex. 1001, 2:32-35. Consequently, Patent Owner’s contentions that “Martin . . . is

teaching that the voltage across individual LEDs is less

than a maximum voltage . . . not matching” (PO Resp. 33-

67a

34), and the “voltage drop of 147 V is much less than the

peak voltage” (PO Resp. 34) are unavailing.

We also do not agree with Patent Owner that Petitioner is required to provide a specific numerical analysis of

the number of LEDs necessary to match a value of the

DC output voltage in Nerone. PO Resp. 31-32. Based on

Dr. Baker’s testimony, Petitioner provides several factors that a person of ordinary skill in the art would have

considered when designing Nerone’s circuitry to satisfy

the “matching” requirement of limitation 7(f ). Pet. 18

(citing Ex. 1002 ¶120). Dr. Baker supports his testimony

concerning the knowledge of these factors by one of ordinary skill with reference to disclosures in Cross and Martin. Ex. 1002 ¶¶121-123. Neither Patent Owner nor Dr.

Ducharme dispute that a person of ordinary skill in the

art would have known to consider these factors when designing Nerone’s circuit. See PO Resp. 30-43; Ex. 2001

¶¶89-106. Petitioner then explains how a person of ordinary skill in the art would have used these factors to apply the teachings of Martin to configure Nerone’s circuitry so that “the forward voltage of the series-connected

LEDs [ ] approximately match[es] the rectified AC voltage output of the above-described LED driver circuit.”

Pet. 21; id. at 20-21; see also Ex. 1107 ¶29 (“a person of

ordinary skill in the art would have understood and

would have been capable of determining the appropriate

number of LEDs based on the application and design of

Nerone’s system such that the forward voltage drop of

the LEDs . . . matches the rectified AC voltage output . . .

to mitigate against overdriving or underdriving the

LEDs.” (citing Ex. 1074 ¶¶30-31, Fig. 2)). For these

reasons, we find that it was not necessary for Petitioner

to provide a specific numerical calculation of the number

of LEDs in its proposed modification of Nerone.

68a

We also agree with Petitioner that “matching the input voltage to the forward voltage of the LEDs had become a matter of routine optimization.” Pet. 19. Patent

Owner contends that this statement is “vague and conclusory.” Sur-reply 12-13. Petitioner, however, supports

this statement with the testimony of Dr. Baker. Ex. 1002

¶¶120-123. Dr. Baker’s testimony, which we credit, is

corroborated by both Cross and Martin. See id. (citing

Ex. 1015 ¶¶2, 21, 22 Fig. 5; Ex. 1074 ¶30). In particular,

Cross specifically discloses that “[t]he number of LEDs

employed will vary with the intended lighting application

and the value of the rectified DC voltage, wherein optimization of such is well within the skill of those in the

art.” Ex. 1074 ¶30. Patent Owner does not dispute

Cross’s statement that optimizing the number of LEDs is

within the skill of an ordinarily skilled artisan. See PO

Resp. 40.

Martin chooses the number of LEDs “such that the

maximum voltage across each individual LED . . . is low

enough so as to not damage the LEDs.” Ex. 1015 ¶22. It

also specifically discloses that “[t]he voltage across each

of the individual LEDs in the array is the line voltage divided by the number of LEDs in series.” Id. (emphasis

added). Consequently, Martin uses “voltage matching”

to determine the number of LEDs so as not to damage

the individual LEDs. See also Ex. 1002 ¶¶120-124 (Dr.

Baker explaining that a skilled artisan “configuring

Nerone’s circuit 400 would have recognized that the forward voltage of the series-connected LEDs should approximately match the rectified AC voltage output of the

above-described LED driver circuit.” Id. ¶124.). Martin’s disclosure, thus, aligns with the reason for “matching” described in the ’400 patent. Ex. 1001, 2:24-35.

69a

We also disagree with Patent Owner that Petitioner is

using any of Cross, Allen, Bockle, or Burrell for gap filling. As just discussed, these references are used to corroborate Dr. Baker’s testimony concerning the

knowledge of a person of ordinary skill in the art, e.g.,

Cross’s disclosure that optimization is within the skill of

one of ordinary skill in the art.

We have reviewed Petitioner’s contentions and evidence, and after considering all of Patent Owner’s contentions, we find that the combined teachings of Nerone

and Martin teach or suggest limitation 1(f ). Further, Petitioner persuades us that a person of ordinary skill in the

art would have been motivated to combine Nerone and

Martin and would have had a reasonable expectation of

success in doing so. As discussed above, the optimization

of LED strings by matching LEDs to input voltage was

within the knowledge of one of ordinary skill in the art as

evidenced by Martin and corroborated by Cross, and

thus, we find that the ’400 “patent simply arranges old

elements with each element performing the same function it had been known to perform and yields no more

than one would expect from such an arrangement [and]

the combination is obvious.” KSR 550 U.S. at 417.

[g] wherein the LED circuit array, the capacitor, the

bridge rectifier, and the driver are all mounted on a single substrate.

Petitioner contends that Nerone discloses this limitation because Nerone discloses that “[a]ll of the circuit

components may be placed on the same circuit board as

the light emitting elements.” Pet. 27 (citing Ex. 1032,

code (57); see also Ex. 1002 ¶¶132-134). According to Petitioner, Nerone’s broad disclosure applies to each of the

embodiments such that Nerone’s LED circuit array, various capacitors, bridge rectifier 105, and driver “are all

70a

mounted on a single circuit board (‘single substrate’).”

Pet. 28 (citing Ex. 1002 ¶133).

Patent Owner does not address Petitioner’s contentions. See PO Resp. 21-43.

Based on our review of the evidence cited by Petitioner, we find that Nerone discloses this limitation.

Summary of Claim 7

For all the foregoing reasons, we determine Petitioner

establishes by a preponderance of the evidence that claim

7 is unpatentable over Nerone and Martin.

4. Claim 9

Claim 9 depends from claim 7 and recites “wherein the

LEDs are coated or doped with at least one of a phosphor, nanocrystals, or a light changing or enhancing substance.” Ex. 1001, 27:65-67.

Petitioner details the disclosure in Martin that it contends corresponds to the limitations in claim 9. Pet. 28-29

(citing Ex. 1002 ¶136; Ex. 1015 ¶¶5, 27). Petitioner further provides reasons why it would have been obvious to

a person of ordinary skill in the art “to coat the LEDs of

Nerone’s system with a phosphor or wavelength converting material.” Id. at 29 (citing Ex. 1002 ¶137; Ex. 1038

¶42).

For claim 9, Patent Owner relies on its contentions for

claim 7. See PO Resp. 43.

Based on our review of the evidence cited by Petitioner, we find that Nerone discloses this limitation and determine that Petitioner establishes by a preponderance

of the evidence that claim 9 is unpatentable over Nerone

as modified by Martin for claim 7.

71a

5. Claim 11

Claim 11 depends from claim 7 and recites “wherein

the capacitor is configured to smooth the rectified output

AC voltage.” Ex. 1001, 28:5-6.

Petitioner contends that “Nerone’s capacitor 160 is

“configured to smooth the rectified output AC voltage,”

because it “affects how the resonant inductor 150 and

resonant capacitor 155 network perceives the impedance

of the LEDs” and “may limit the current through the

LEDs.” Pet. 30 (citing Ex. 1032, 3:28-29). According to

Petitioner, “matching capacitor 160 ‘smooth[s]’ the voltage waveform” because “current and voltage are directly

related (Ohm’s Law), restricting the peaks and valleys of

the current likewise limits the peaks and valleys of the

voltage waveform.” Id. (citing Ex. 1002 ¶¶138-140).

Patent Owner responds that Nerone’s capacitor 160 is

part of the “driver” identified by Petitioner. Pet. 44 (citing Pet. 16; Ex. 2001 ¶108); Sur-reply 18-19. According

to Patent Owner, because capacitor 160 is part of the

“driver”, “it is not connected to the driver as called for in

Claim 11.” Id. at 44-45. Patent Owner next contends

that capacitor 160 functions “to ‘affect[ ] how the resonant

inductor 150 and resonant capacitor 155 network perceives the impedance of the LEDs 170, 175’ . . . meaning

that its value is selected to tailor impedance of the load

(LEDs 170, 175) to match the resonant load network

(150, 155).” Id. at 45 (citing Ex. 1032, 3:35-37).

Petitioner replies that “claim 11 does not recite that

the capacitor is ‘connected to the driver.” Pet. Reply 19

(citing PO Resp. 44-45). Petitioner further contends that

Patent Owner “does not explain why selecting a particular value for the capacitor precludes smoothing” but

“seems to concede that matching capacitor 160 is configured to smooth the AC signal into the second bridge rec-

72a

tifier 420 . . . and hence the rectified AC signal output by

the rectifier.” Id. (citing PO Resp. 45-46).

For the following reasons, Petitioner persuades us

that claim 11 would have been unpatentable in light of

Nerone and Martin.

Patent Owner’s contention that claim 11 requires the

capacitor to be connected to the driver is unsupported by

the claim language. Neither claim 11 nor claim 7 require

the capacitor to be connected to the driver. Ex. 1001,

27:48-27:62, 28:5-6.

Nerone discloses that capacitor 160 “affects how the

resonant inductor 150 and resonant capacitor 155 network perceives the impedance of the LEDs” and “may

limit the current through the LEDs.” Ex. 1032, 3:25-29.

Dr. Baker testifies that, considering Ohm’s Law, this disclosure means “the matching capacitor 160 ‘smooth[s]’

the voltage waveform.” Ex. 1002 ¶138. Neither Patent

Owner nor Dr. Ducharme dispute this testimony by Dr.

Baker. PO Resp. 44-45; Ex. 2001 ¶110. We credit Dr.

Baker’s testimony on this point because it is based on the

disclosure of Nerone and basic scientific principles, i.e.,

Ohm’s law. Thus, we find that Nerone discloses “the capacitor is configured to smooth the rectified output AC

voltage.”

Based on our review of the evidence cited by Petitioner and after considering all of Patent Owner’s contentions, we determine that Petitioner establishes by a preponderance of the evidence that claim 11 is unpatentable

over Nerone as modified by Martin for claim 7.

73a

F. Ground 2: Obviousness over Nerone, Martin,

and Morgan

Claim 8, which depends from claim 7, recites “further

comprising power factor correction circuitry.” Ex. 1001,

27:63-64.

Petitioner contends that “it would have been obvious

in view of Morgan to configure the Nerone-Martin system to implement” power factor correction circuitry.

Pet. 32 (citing Ex. 1002 ¶¶204-207). Patent Owner does

not address Petitioner’s contentions for claim 8 but relies

on its contentions for claim 7. PO Resp. 46.

1. Morgan – Exhibit 1033

Morgan is titled “Controlled Lighting Methods and

Apparatus.” Ex. 1033, code (54). Morgan discloses that

“[i]n an ideal situation, both input current and voltage

would be in phase and sinusoidal. For a given situation

power factor can be defined as real power (Watts) divided by apparent power (Current x Voltage).” Ex. 1033,

76:40-42. Morgan further discloses that “if the voltage

and current are out of phase, then the product [of current

and voltage] can be very different from the real power

used by a device. For a simple resistive load the power

factor is unity or 1.0. For switching supplies, however,

the power factor can be much lower.” Id. at 76:45-49.

Morgan further discloses that “[f]ixing low power factor

can be accomplished through the use of power factor correction.” Id. at 76:49-51.

2. Analysis

Petitioner contends that “power factor and power factor correction were well understood by a” person of ordinary skill in the art. Pet. 32 (citing Ex. 1002 ¶147). Petitioner further contends that “[a] poor power factor would

reduce efficiency of a circuit, and certain power sup-

74a

ply/driver circuitry could lower a system’s power factor.”

Id. (citing Ex. 1002 ¶148; Ex. 1013, 5:1-12). Petitioner

turns to Morgan which, according to Petitioner, “describes power factor correction as a solution.” Id. (citing

Ex. 1033, 76:49-54). Petitioner further contends that

Morgan discloses “a typical LED illumination power and

data supply system for a lighting unit” with power factor

corrector 4104. Id. at 32-33 (citing Ex. 1033, 13:16-17,

Fig. 48). Petitioner further contends that power factor

correction circuitry “was known to be a publicly and

commercially available product.” Id. at 33 (citing Ex.

1002 ¶¶149-150; Ex. 1013, 1:54-2:67, 3:14-15, 5:53-59; Ex.

1031, 7:5-10; Ex. 1093, 1:6-26). Petitioner further contends that a person of ordinary skill in the art “would

have been motivated to modify the combined Nerone

lighting system to include power factor correction circuitry like that claimed, e.g., for obtaining a high power

factor and thereby increasing the efficiency of the lighting system” and would have had a reasonable expectation

of success. Id. at 34-35 (citing Ex. 1002 ¶¶152-153).

We have reviewed Petitioner’s contentions and evidence and determine that Petitioner establishes by a

preponderance of the evidence that claim 8 would have

been unpatentable over the combined teachings of

Nerone, Martin, and Morgan.

G. Ground 3: Obviousness over Nerone, Martin,

and Zinkler

Claim 10 depends from claim 7 and recites “wherein

the rectified output AC voltage provided to the LED circuit array is relatively close to the input AC voltage input

received from the mains power source.” Ex. 1001, 28:1-4.

Petitioner contends that “Nerone-Martin in view of

Zinkler discloses or suggests this limitation.” Pet. 35

(citing Ex. 1002 ¶¶71-74, 154-163). Patent Owner does

75a

not address Petitioner’s contentions for claim 10 but relies on its contentions for claim 7. PO Resp. 47.

1. Zinkler – Exhibit 1042

Zinkler discloses “[a] track lighting hybrid illumination system comprising a power supply circuit having an

input for connecting to a voltage source of low frequency

for providing an output voltage with altered electrical

characteristics.” Ex. 1042, code (57). Zinkler discloses

illumination system 40 comprising “rectifier 46 in combination with the variable frequency inverter 48 [that] constitutes a frequency conversion means 50 for converting

low frequency voltage produced by the AC voltage source

42 to a high frequency voltage” and an optional step up

transformer that “can be used to ensure that the voltage

Vout across conductors 43 is equal to the voltage of the AC

source 42 or to any other desired value.” Id. at 9:12-15,

9:38-41.

2. Analysis

Petitioner contends that Nerone’s “circuit 400 of figure 4 ‘is identical to the power supply circuit 100 of Fig. 1,

with the exception of the resonant load circuit 405.’ ” Pet.

36 (citing Ex. 1032, 5:52-54). Petitioner further contends

that “circuit 400 of Nerone’s Figure 4, like circuit 100 of

Nerone’s Figure 1, discloses ‘[a] DC-to-AC converter,

which includes first and second switches 120 and 125.’ ”

Id. (citing Ex. 1002 ¶156; Ex. 1032, Fig. 1, Fig. 4). Petitioner turns to Zinkler’s step up transformer for disclosure of an output voltage equal to the voltage of the AC

source. Id. at 38 (citing Ex. 1002 ¶158; Ex. 1042, 9:33-41).

Petitioner further contends that in light of this disclosure, a person of ordinary skill in the art would have

“found it obvious to, configure the driver of the above

Nerone-Martin system to implement a transformer to

adjust the voltage provided by Nerone’s DC-AC convert-

76a

er circuitry such that the output of the driver is relatively

close to the input AC voltage received from the mains

power source” and would have had a reasonable expectation of success. Id. a 38-39 (citing Ex. 1002 ¶159, 161-62).

We have reviewed Petitioner’s contentions and evidence and determine that Petitioner establishes by a

preponderance of the evidence that claim 10 would have

been unpatentable over the combined teachings of

Nerone, Martin, and Zinkler.

H. Ground 4: Obviousness over Nerone, Martin,

and Michael

Claim 12 depends from claim 7 and recites “a data

communication circuit comprising an antenna, wherein

the data communication circuit is integrated with the

substrate.” Ex. 1001, 28:7-10.

Petitioner contends that “it would have been obvious

in view of Michael and the state of the art to implement”

the features recited in claim 12. Pet. 40 (citing Ex. 1002

¶¶75-79, 164-173). Patent Owner disputes Petitioner’s

contentions. PO Resp. 47-49.

1. Michael– Exhibit 1008

Michael discloses a lighting assembly including “a remote control assembly for selectively energizing tricolor

diodes.” Ex. 1008, code (57). Michael discloses that the

5-volt output of unit 330 powers microcomputer 334 and

24-volt raw DC voltage from unit 324 is brought out to

unit 328, which provides 18 volts to power LED drivers

338, 340 and 342. Id. at 7:57-64. We reproduce Figure 15

of Michael below:

77a

Figure 15 is a block diagram of a control assembly for

use with Michael’s lighting assembly. Ex. 1008, 2:48-50.

In Figure 15, transmitter 434 provides a signal

through antenna 436 to receiving antenna 438, which in

turn inputs the signal to radio frequency receiver 440

that in turn outputs to demodulator 442, which outputs to

microcomputer 334. Id. at 10:52-58. Michael explains

that, as above, unit 328 provides 18 volts to power LED

drivers 338, 340 and 342.” Id. at 7:59-63.

2. Analysis

Petitioner contends that Michael “discloses a lighting

assembly including LED drivers . . . coupled to LEDs . . .

via drive/return lines . . . and further discloses an antenna

438 . . . receiving data wirelessly for remote[ ] control of

LEDs.” Pet. 40 (citing Ex. 1002 ¶166; Ex. 1008, 8:23-24,

8:29-34, 8:54-66, 8:67-9:2, Fig. 15). Petitioner further contends that “Michael’s encoder IC 328 provides an encoded signal that is modulated and transmitted to antenna

438, and is inputted to a radio frequency receiver 440 . . .

[which] outputs to a demodulator 442 which outputs to

78a

microcomputer 334.” Id. at 42 (citing Ex. 1002 ¶167; Ex.

1008, 10:48-58. According to Petitioner, “Michael’s controller 132, in conjunction with antenna 438, discloses a

data communication circuit comprising an antenna.” Id.

(citing Ex. 1002 ¶168).

Petitioner next contends that a person of ordinary skill

in the art “would have been motivated to configure the

Nerone-Michael system to comprise a data communication circuit that comprises an antenna and that is integrated with the substrate.” Pet. 42 (citing Ex. 1002 ¶70).

According to Petitioner, “such a configuration would have

been useful for enabling remote wireless control of the

lighting system” and “wireless remote control of lighting

was well known.” Id. (citing Ex. 1002 ¶170; Ex. 1005,

¶¶32, 83, 110, 123, 177, Abstract, Fig. 5; Ex. 1008, 10:4858, Fig. 15; Ex. 1022, Fig. 4A). Petitioner further contends that wireless control of traffic light systems, as in

Nerone, was also well known. Id. at 43 (citing Ex. 1002

¶171; Ex. 1103, 1:11-62, 3:34-63).

Patent Owner responds that Michael discloses an incandescent bulb fixture with vertical LED ribs 72, 40,

and 54 surrounding incandescent bulb 34. PO Resp. 4748 (citing Ex. 1008, Figs. 1-2; Ex. 2001 ¶115). Patent

Owner contrasts Michael with Nerone which “is directed

to a traffic light assembly.” Id. at 48 (citing Ex. 1032,

2:63-65. 5:10-12, 5:23-25, 5:51-52, 6:7-11; Ex. 2001 ¶116).

Patent Owner contends that a person of ordinary skill in

the art “would have no reason to incorporate a remote

control to wirelessly control a traffic light. It is well

known that traffic lights turn on and off automatically

and there is no need for a remote control device to wirelessly change lights from green to yellow, yellow to red,

etc.” Id. at 49 (citing Ex. 2001 ¶117). Patent Owner further contends that a person of ordinary skill in the art

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would not combine “Martin’s light fixture having an incandescent light surrounded by vertically displaced LED

ribs with the traffic light circuit of Nerone” because “Michael’s modified incandescent light fixture is a completely

different apparatus with a completely different application compared to Nerone.” Id. (citing Ex. 2001 ¶118).

Petitioner, in turn, replies that Patent Owner “ignores

evidence of wireless lighting control, including traffic

lights, and the supported reasons for modifying Nerone.”

Pet. Reply 21 (citing Pet. 40-43). Petitioner further contends that Patent Owner’s argument that a person of ordinary skill in the art “would not combine ‘Michael’s light

fixture . . . with the traffic light circuit of Nerone’ . . . is

inapposite” because it is based on an improper bodily incorporation of Nerone and Michael. Id. at 22.

For the following reasons, Petitioner persuades us

that claim 12 would have been unpatentable in light of

Nerone, Martin, and Michael.

Patent Owner contends that “there is no reason to incorporate a remote control to wirelessly control a traffic

light.” PO Resp. 49 (citing Ex. 2001 ¶117). Patent Owner bases this contention on Dr. Ducharme’s testimony

which repeats the Petition verbatim and ignores evidence

cited in the Petition. Exhibit 1103 discloses that “[a] variety of methods, systems and devices have been proposed to allow emergency vehicles to control traffic signals. These typically use radio transmitter systems for

activating emergency preemption controls on the traffic

signals.” Ex. 1103, 1:40-44. Consequently, Dr. Ducharme’s testimony on this point is contrary to the disclosure of Exhibit 1103 which discloses that emergency vehicles remotely control traffic lights. His testimony, is

entitled to little, if any, weight. Patent Owner’s contention is, thus, unavailing.

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Patent Owner’s second contention is likewise unavailing because the Petition does not propose to bodily incorporate Nerone and Michael. Rather, the Petition proposes in light of Martin and the knowledge of one of ordinary skill in the art “to configure the Nerone-Michael23

system to comprise a data communication circuit that

comprises an antenna and that is incorporated with the

substrate.” Pet. 42 (citing Ex. 1002 ¶170).

We have reviewed Petitioner’s contentions and the evidence of record and after considering Patent Owner’s

contentions, we find that the combination of Nerone,

Martin, and Michael suggests the limitations recited in

claim 12. Further, Petitioner provides reasons supported

by a rational underpinning why a person of ordinary skill

in the art would have been motivated to combine Nerone,

Martin, and Michael. Ex. 1002 ¶¶168-172.

For all the foregoing reasons, we determine that Petitioner establishes by a preponderance of the evidence

that claim 12 would have been unpatentable over Nerone,

Martin, and Michael.

I. Ground 5: Obviousness over Nerone, Martin,

Michael, and Gleener

Claim 13, which depends from claim 12, recites

“wherein the capacitor is a first capacitor, wherein the

data communication circuit further comprises an inductor

and a second capacitor.” Ex. 1001, 28:12-14.

Petitioner contends that “Nerone-Martin-Michael in

view of Gleener discloses or suggests” the limitations of

claim 13. Pet. 43-44 (citing Ex. 1002 ¶¶80-83, 174-181).

Patent Owner does not address Petitioner’s contentions

The reference to “Nerone-Michael” appears to be a typographical

error. We assume it should refer to “Nerone-Martin.”

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for claim 13 but relies on its contentions for claim 12 and

claim 7. PO Resp. 50.

1. Gleener – Exhibit 1039

Gleener describes a tunable dual band antenna system. Ex. 1039, code (57). The system includes a transceiver, a matching network and an antenna. Id. The

matching network tunes the antenna to the transceiver at

both a first and second frequency. Id. The matching

network has a variable capacitor, an inductor and a second capacitor. Id. The value of the variable capacitor is

chosen to tune the antenna at the first frequency and the

second frequency such that the system can be used to

transmit and receive electromagnetic energy over two

bandwidths. Id. The values of the variable capacitor, the

inductor, and the second capacitor are chosen to minimize the standing wave ratio of the system at both the

first frequency and the second frequency. Id.

2. Analysis

Petitioner first refers to its contentions for limitation

7(c) and contends that Nerone’s “rectifier 34 includes a

capacitor, and that capacitor is a ‘first capacitor’ as

claimed.” Pet. 44 (citing Ex. 1002 ¶175). Petitioner next

contends that “[t]o the extent Nerone-Martin-Michael

does not explicitly disclose that the data communication

circuit discussed for claim 12 . . . comprises an inductor

and a second capacitor, it would have been obvious in

view of Gleener to configure the Nerone-Martin-Michael

system to implement such features.” Id. (citing Ex. 1002

¶175).

Petitioner next contends that Gleener discloses “implementing an antenna-based system, including maximizing transfer of energy to the antenna.” Pet. 44 (citing

Ex. 1002 ¶176; Ex. 1039, code (54), code (57), ¶1). Petitioner further contends that “Gleener discloses a data

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communication circuit comprising an inductor and a capacitor.” Id. (citing Ex. 1002 ¶177; Ex. 1039 ¶20, Fig. 3).

Petitioner further contends that “Gleener discloses that

its data communication circuit includes a matching network 104 comprising an inductor 110 . . . and a capacitor

112.” Id. at 45 (citing Ex. 1002 ¶178; Ex. 1039 ¶14, Fig.

3).

Petitioner next contends that, in light of Gleener, a

person of ordinary skill in the art “would have been motivated to configure the Nerone-Martin-Michael data

communication circuit to comprise an inductor and a second capacitor.” Pet. 46 (citing Ex. 1002 ¶180). According

to Petitioner, including “an inductor and a second capacitor to match the impedance between a transmitter/receiver and the Nerone-Martin-Michael antenna

would have promoted efficiency and antenna performance.” Id. (citing Ex. 1002 ¶180; Ex. 1039 ¶2).

We have reviewed Petitioner’s contentions and evidence and determine that Petitioner establishes by a

preponderance of the evidence that claim 12 would have

been unpatentable over the combined teachings of

Nerone, Martin, Michael, and Gleener.

J. Ground 6: Obviousness over Zhang and Martin

Petitioner contends that claims 7, 9-11, and 17 are unpatentable over Zhang and Martin. Pet. 47-58. In support thereof, Petitioner identifies the disclosures in

Zhang and Martin alleged to describe the subject matter

in these claims. Id. Additionally, Petitioner cites to Dr.

Baker’s Declaration. Ex. 1002 ¶¶84-90, 182-203.

Patent Owner contends that Petitioner fails to establish that Zhang and Martin teach limitations 7(b), 7(d),

7(e), and 7(f ). PO Resp. 50-64.

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We begin our analysis with a brief overview of Zhang.

We then address the parties’ respective contentions with

respect to claims 7, 9-11, and 17.

1. Zhang– Ex. 1012

Zhang is titled “Lighting Devices Using LEDS.” Ex.

1012, code (54). Zhang discloses chip-on-board LED exit

signs having LED chips on a circuit board and “coat[ing]

a layer of high reflection material on the board to collect

light.” Id. at code (57).

Zhang depicts the design of the circuitry of a circuit

board in Fig. 2.1, reproduced below:

Fig. 2.1 is “the electronic diagram of the chip-onboard

LED Exit Sign with battery backup.” Id. ¶64.

Zhang discloses that “[t]he circuit design allows the

LED board to use 120 VAC or 220 VAC line power and

charge the battery. During power interruption, the battery becomes the power supply for the LED board.” Id.

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¶36. Zhang explains that “[a]fter filtering by the capacitor 36, the first output of the DC power from the rectifier

35 is sent to the regulator 37 of 5 VDC” and “the output

of the regulator lights the [chip-on-board LED electronic

sign] COBLEDES 19 through diode 43.” Id. ¶84. According to Zhang, “[b]ecause of the wide angle nature of

the chip-on-board LED and the light reflected from the

reflection layer, the viewing angle of the COBLEDES

can reach almost 180 degrees and the uniformity is over

95%.” Id. ¶81.

2. Claim 7

We analyze the parties’ respective contentions for limitation 7(e) because, as we explain below, we find that

Zhang and Martin do not teach or suggest this limitation.

[e] a driver connected to the bridge rectifier and configured to provide a rectified output AC voltage to the

LED circuit array;

Petitioner contends that Zhang’s “regulator 37” corresponds to the recited driver and is “connected to bridge

rectifier 35 . . . and configured to provide a rectified output AC voltage to the LED circuit array.” Pet. 51 (citing

Ex. 1012 ¶37). In support of this contention, Petitioner

provides the following annotated version of Zhang’s Figure 2.1 (id. at 52):

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Figure 2.1 of Zhang is the electronic circuit diagram of

the LED exit sign which Petitioner annotates with a red

ellipse around element 37. Id. at 52. Petitioner further

contends “[t]he voltage provided by regulator 37 to the

LEDs is a rectified AC voltage because of the rectification performed by rectifier 35 and it is an output voltage

because it is the output of regulator 37.” Id. at 51 (citing

Ex. 1002 ¶189).

Patent Owner contends that a person of ordinary skill

in the art “would readily recognize that the part number

for regulator 33 (7805) refers to the Fairchild Semiconductor LM 7805 Fixed Voltage Regulator, which provides

a fixed output voltage.” PO Resp. 59 (citing Ex. 2001

¶¶1335-136; Ex. 2008, 1; Ex. 2011). Patent Owner further

contends that a person of ordinary skill in the art “would

understand that the LM 7805 fixed voltage regulator 37

provides a fixed output DC voltage.” Id. at 59-60 (citing

Ex. 1102, Fig. 2.1; Ex. 2001 ¶136). According to Patent

Owner, Zhang’s “rectifier 35 produces an output” of

11.3V which “is the input to voltage regulator 37 which

has an output of 5V DC.” Id. at 60 (citing Ex. 2001 ¶138).

Patent Owner further contends that this limitation is not

satisfied because “the LM 7805 fixed voltage regulator

(the alleged ‘driver’) receives a ‘rectified AC voltage’, but

its does not provide a ‘rectified AC voltage.’ ” Id. (citing

Ex. 2001 ¶138).

Petitioner replies that Patent Owner “seems to imply

that a direct connection is required between the output

of the claimed bridge rectifier (providing a rectified AC

voltage) and LED circuit array” but “claim 7 recites a

driver ‘configured to provide a rectified output AC voltage’ that is connected to the bridge rectifier.” Pet. Reply

25 (citing PO Resp. 60; Ex. 1001, 27:54-55). Petitioner

contends that Patent Owner’s “argument relies on a dis-

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tinction between ‘rectified AC voltage’ and ‘DC voltage’

absent in the ’400 patent.” Id. (citing Ex. 1001, 2:20-23,

3:38-59, 4:20, 13:46-47). Petitioner further contends that

Patent Owner’s “position is at odds with [Dr. Ducharme’s] view that ‘rectified AC’ simply means ‘voltage

from a rectifier.’ ” Id. at 26 (citing Ex. 11:9-12:9). Petitioner further contends that Patent Owner’s assertion

“that regulator 37 is a specific regulator is speculation,

but, even if it were, PO’s blanket cite to Exhibit 2008

does not show using such a regulator in Zhang with a

bridge rectifier means it’s output is not a rectified AC

voltage.” Id. (citing PO Resp. 59; Ex. 2008). Petitioner

also contends that Exhibit 2008 indicates the regulator

“can be used to obtain ‘variable voltages.’ ” Id., n. 15.

In the Sur-reply, Patent Owner contends that, in the

Patent Owner Response, it “did not address an alleged

connection involving the bridge rectifier and the LED

circuit array, as Petitioner suggests.” Sur-reply 24 (citing Pet. Reply 25; PO Resp. 59-60). Patent Owner reiterates that “the output of voltage regulator 37 is not a

rectified AC voltage output.” Id.

For the following reasons, Petitioner does not persuade us that Zhang and Martin teach or suggest this

limitation.

This limitation recites, inter alia, “a driver . . . configured to provide a rectified output AC voltage to the LED

circuit array.” Ex. 1001, 27:54-56. In this case, Petitioner contends that Zhang’s regulator 37 corresponds to the

recited driver. Pet. 51. Petitioner points to Zhang’s

bridge rectifier 35 for generating rectified AC voltage

that is provided to regulator 37. Id. Patent Owner does

not dispute that bridge rectifier 35 provides a rectified

AC voltage to regulator 37. See PO Resp. 60 (“Specifically, the rectifier 35 produces an output . . . 11.3V.”). Pa-

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tent Owner’s contentions focus on the effect regulator 37

has on the rectified AC voltage provided to Petitioner’s

“driver.” In other words, what does regulator 37 provide

to the LED circuit array?

Petitioner contends that Patent Owner’s argument

that regulator 37 is the Fairchild LM 7805 regulator is

“speculation.” Pet. Reply 26. Dr. Baker, however, appears to confirm Petitioner’s contention in his deposition.

Ex. 2006, 106:14-7.

In his declaration, Dr. Baker does not analyze what effect regulator 37 has on the input received from bridge

rectifier 35. Ex. 1002 ¶189. Rather, his testimony assumes that the rectified AC voltage passes through regulator 37 unchanged. Id.

Dr. Ducharme, on the other hand, testifies that “the

rectifier 35 produces an output computed as . . . 11.3 V.

That is the input to voltage regulator 37 which has an

output of 5 V DC.” Ex. 2001 ¶84 (citing Ex. 1012 ¶84).

Although Petitioner submitted a Reply Declaration from

Dr. Baker, Dr. Baker did not address or dispute Dr. Ducharme’s testimony on this point. See Ex. 1107 ¶¶31-33.

Further, Petitioner does not direct us to any portion of

Dr. Ducharme’s deposition, nor have we been able to locate any, discussing his testimony.

Dr. Baker testified as follows:

I see that . . . regulator, if memory serves 7805 is a

5-volt regulator. I think if you put a resistor, the resistor labled R1 or 39 in the figure, to ground, the output

voltage actually is . . . little bit higher than 5 volts. I

think it – to be precise goes to 5 volts plus R1 time

whatever current it’s supplying. So if one were supplying 10 milliamps of current through 1N5401, diode

that’s labeled 43, then the output of the regulator

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would go to 7.2 volts. I think the takeaway is that the

only time the 7805 outputs 5 volts is if the that middle

pin in the regulator is connected to ground. If it’s connected to a resistor, the output voltage can be a little

above 5 volts. But anyway, yes, it’s a 5-volt regulator.

Ex. 2006, 106:18-107:7. From this testimony, we infer

that regulator 37 has some effect on the AC rectified

voltage from bridge rectifier 35. Yet, Petitioner provides

no evidence or persuasive technical reasoning disputing

Dr. Ducharme’s testimony that the output of regulator 37

is not providing “a rectified output AC voltage” to the

LED circuit array despite the admitted differences between the input and output of regulator 37. In the absence of evidence or persuasive technical reasoning, Petitioner does not carry its burden.

Based on the foregoing, we find that Petitioner does

not persuade us that Zhang teaches or suggests this limitation.

Because Petitioner does not persuade us that Zhang

teaches or suggests this limitation, Petitioner does not

establish by a preponderance of the evidence that claim 7

would have been unpatentable over Zhang and Martin.

3. Claims 9-11

Claims 9-11 depend from claim 7. Ex. 1001, 27:65-28:6,

28:30-33. Petitioner details the disclosure in Zhang and

Martin that it contends corresponds to the limitations in

claims 9-11 and 17. Pet. 56-58.

We have reviewed Petitioner’s contentions as well as

the cited evidence and find that it does not cure the deficiencies discussed above for claim 7.

We, thus, determine that Petitioner has not proven by

a preponderance of the evidence that claims 9-11 would

have been unpatentable over Zhang and Martin.

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4. Claim 17

Claim 17 depends from claim 14. Ex. 1001, 28:30. Patent Owner has statutorily disclaimed claim 14. PO Resp.

65 (citing Ex. 2011).

Petitioner sets forth contentions supported by evidence that Zhang teaches or suggests each limitation of

claim 14. Pet. 60-66. In arguing for the patentability of

claim 17, Patent Owner does not dispute Petitioner’s contentions for claim 14. PO Resp. 65-66.

We have reviewed Petitioner’s contentions for claim 14

and find that Zhang discloses or suggests each limitation

of claim 14.

Claim 17 recites “wherein the LEDs are coated or

doped with at least one of phosphor, nano-crystals, or a

lighting changing or enhancing substance.” Ex. 1001,

28:30-32.

Petitioner contends that “the application of phosphors

and light changing substances to LEDs was a well-known

technique in the art, as explained in Ground 1.” Pet. 56

(citing Ex. 1002 ¶¶197-200; Ex. 1015 ¶27; Ex. 1014, 12:413; Ex. 1049, 2:37-45, 3:36-45, 4:34-37, 5:54-58, 8:34-39,

Fig. 6). Petitioner further contends that “Martin discloses LEDs coated with a wavelength converting layer

(i.e., ‘a light changing substance,’ as claimed), such as a

phosphor, to enable conversion of the color of light emitted by the LEDs.” Id. at 56-57 (citing Ex. 1002 ¶198; Ex.

1015 ¶¶5, 27; Ex. 1014, 12:4-13). Petitioner further contends a person of ordinary skill in the art “would have

been motivated, and found it obvious, to coat the LEDs of

. . . modified Zhang’s device (claim 14) with a phosphor or

other light changing material.” Id. at 57 (citing Ex. 1002

¶199). Petitioner further contends that a person of ordi-

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nary skill in the art would have had a reasonable expectation of success in doing so. Id. (citing Ex. 1002 ¶200).

Patent Owner, in turn, contends that a person of ordinary skill in the art would understand that “the LED exit

sign that Petitioner relies upon for its unpatentability

theory . . . would have LEDs of one color: red.” PO Resp.

63 (citing Ex. 2001 ¶147; Ex. 2006, 108:21-109:6). Patent Owner further contends that “[a]t the time of the

invention in 2004, red LEDs were well known in the art”

and “[a]ccordingly, a [person of ordinary skill in the art]

would implement the LED exit sign of Zhang using red

LEDs, and there would be no reason to refer to Martin to

coat or dope the LEDs to provide red illumination for the

exit sign.” Id. at 64 (citing Ex. 2001 ¶148; Ex. 2009, 3:3546; Ex. 2010, 4:60-63).

In the reply, Petitioner contends that Patent Owner

“fails to show any significance of red LEDs in undercutting a use of a phosphor to produce colored light” and

“does not dispute the well-known use of red and green

phosphor coatings to produce colored light.” Pet. Reply

28 (citing Ex. 1015 ¶27). Petitioner further contends that

Patent Owner’s “submission of known ‘red LEDs’ (Exs.

2009-2010) does not show otherwise––particularly because the exhibits lack any indication that the described

‘red LEDs’ do not use [ ] a phosphor.” Id.

For the following reasons, Petitioner persuades us

that claim 17 would have been unpatentable over the

combined teachings of Zhang and Martin.

In Dr. Baker’s testimony, he relies on Exhibit 1049 for

disclosing that phosphor layers may used to provide specific colored light. Ex. 1002 ¶197. Patent Owner points

to other references that purportedly show that “red

LEDs were well known in the art.” PO Resp. 64. After

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reviewing the cited portions of Exhibits 2009 and 2010,

we agree with Petitioner that there is nothing to indicate

the red LEDs do not use a phosphor. Consequently, Patent Owner’s evidence does not undercut Dr. Baker’s testimony, which we credit, as to why a person of ordinary

skill in the would have been motivated with a reasonable

expectation of success to modify Zhang in light of Martin

“with at least one of a phosphor, nano-crystals, or light

changing substance.” Ex. 1002 ¶¶199-200.

After review of Petitioner’s contentions and evidence

and after considering Patent Owner’s contentions and

evidence, we determine that Petitioner establishes by a

preponderance of the evidence that claim 17 would have

been unpatentable over Zhang and Martin.

K. Ground 7: Obviousness over Zhang, Martin, and

Morgan

Claim 8 depends from claim 7. Ex. 1001, 27:63-64. Petitioner details the disclosure in Zhang, Martin, and Morgan that it contends corresponds to the limitations in

claim 8 as well as reasons for combining Zhang with

Morgan. Pet. 59.

We have reviewed Petitioner’s contentions as well as

the cited evidence and find it does not cure the deficiencies discussed above for claim 7 in Ground 6.

We, thus, determine that Petitioner has not established by a preponderance of the evidence that claim 8

would have been unpatentable over Zhang, Martin, and

Morgan.

L. Ground 8: Obviousness over Zhang and Mosebrook

Claim 15 depends from claim 14 and recites “further

comprising a 3-way switch.” Ex.1001, 28:25-26. Petitioner contends that claim 15 “would have been obvious in

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view of Mosebrook and state of the art to implement [a 3way switch] in Zhang’s device.” Pet. 66 (Ex. 1002 ¶¶9192, 218-221). Patent Owner disputes Petitioner’s contentions. PO Resp. 66-67.

1. Mosebrook – Ex. 1018

Mosebrook discloses “an antenna which is provided on

a lighting control device, for example, a light dimmer,

and which receives and transmits radio frequency signals

for controlling a lamp and communicating status of the

lamp e.g., on, off and intensity level.” Ex. 1018, 1:17-21.

Mosebrook also discloses that “a user can install a so

called three-way electrical switch, i.e., an additional light

control switch to an existing hardwired single control

system by replacing an existing manually operated lighting control device with a lighting control device having a

radio frequency receiver incorporated therein.” Id. at

2:30-35. Mosebrook explains that such “replacement

lighting control device is hardwired into the electrical

system in the same way as the conventional device to

control the lamp.” Id. at 2:35-37.

2. Analysis

Petitioner contends that “Zhang discloses the use of a

switch in LED lighting devices that control signals connected to LEDs.” Pet. 66 (citing Ex. 1012 ¶119; Fig. 5.3).

Petitioner further contends that “Mosebrook explains

that it was known that ‘a user can install a so-called

three-way electrical switch, i.e., an additional light control switch to an existing hardwired single control system” and a person of ordinary skill in the art “would have

known that such a three-way switch was a conventional

device that was widely used in various lighting systems,

e.g., to enable a user to control a lighting system from

two places . . . or control the selection of functionality in

lighting systems.” Id. at 67 (citing Ex. 1002 ¶220; Ex.

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1018, 2:30-35; Ex. 1028, 2:1-15, 3:66-4:5, Figs. 1, 4; Ex.

1029, 5:30-34, Fig. 1; Ex. 1040 ¶18). According to Petitioner, “[s]uch an implementation would have been a

mere combination of known components and technologies, according to known methods, to produce predictable

results.” Id. at 68 (citing Ex. 1002 ¶221).

Patent Owner contends that “the Petition articulates

no reason why an LED exit sign would benefit from a 3way switch” and “do[es] not even attempt to explain how

a 3-way switch would work with an LED exit sign, such

as what operating mode would correspond to each of the

three switch positions.” PO Resp. 66 (citing Ex. 2001

¶155). Patent Owner further contends that “the National

Fire Protection Association . . . Safety Code 101 . . . requires that exit signs be illuminated continuously.” Id.

(citing Ex. 2013, 70) (“NFPA”). Based on this, Patent

Owner contends that a person of ordinary skill in the art

“would not implement a 3-way switch to control an exit

sign because it would be contrary to safety standards.”

Id. at 67 (citing Ex. 2001 ¶156).

Petitioner replies that the Petition provides reasons

why an LED exit sign would have benefitted from a 3way switch, including versatility in controlling the modified system. Pet. Reply 29 (citing Pet. 67-68. Petitioner

further contends that NFPA supports obviousness because it “requires a switch to allow testing of the back-up

battery” and “describes switching to various operational

modes.” Id. (citing Ex. 2013, 70). Petitioner further contends that Zhang discloses “a manual test switch to determine if the battery should be replaced.” Id. (citing Ex.

1012 ¶83).

In the Sur-reply, Patent Owner contends that a person

of ordinary skill in the art “would understand the NFPA

as describing exit signs with two operational modes (not

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three) and thus would not have reason to modify Zhang’s

exit sign to add a three-way switch.” Sur-reply 26-27.

For the following reasons, Petitioner persuades us

that claim 15 would have been unpatentable over Zhang

and Mosebrook.

Patent Owner initially contends that modifying Zhang

to implement a 3-way switch would be contrary to NFPA.

PO Resp. 67. In the Sur-reply, Patent Owner does not

dispute that both Zhang and NFPA disclose implementing switches in exit signs and apparently abandons its

contention that implementing a three-way switch is contrary to NFPA. Sur-reply 26-27. Instead, it argues that

because NFPA specifically discloses two operational

modes, an ordinary skilled artisan would not have modified Zhang to include a three-way switch. This argument

is immaterial because Petitioner’s challenge does not include NFPA.

Petitioner relies on Dr. Baker’s testimony and Mosebrook’s disclosure that a three-way switch can be used

“to control a lighting system from two places or control

functionality in lighting systems.” Pet. 67; Ex. 1002 ¶221.

Dr. Baker testifies that implementing Mosebrook’s 3-way

switch in Zhang “would have been a mere combination of

known components and technologies, according to known

methods to produce predictable results.” Ex. 1002 ¶221.

Other than citing to NFPA, Dr. Ducharme does not dispute Dr. Baker’s testimony which we credit because it is

supported by disclosure from Mosebrook and the state of

the art. Ex. 2001 ¶¶153-157.

We have reviewed Petitioner’s contentions and evidence and after considering Patent Owner’s contentions

determine that Petitioner establishes by a preponderance

of the evidence that claim 15 would have been unpatentable over Zhang and Mosebrook.

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M. Ground 9: Obviousness over Zhang, Michael,

and Gleener

Claim 16 depends from claim 14 and recites “a data

communication circuit comprising an antenna, an inductor and a capacitor, wherein the data communication circuit is integrated into a single package.” Ex. 1001, 28:2629. Petitioner contends that “it would have been obvious

in view of Michael, Gleener, and the state of the art to

implement” the features recited in claim 16 in Zhang.

Pet. 68 (citing Ex. 1002 ¶¶222-228). Patent Owner disputes Petitioner’s contentions. PO Resp. 67-68.

Petitioner contends that Michael “discloses . . . LEDbased lighting systems” and “a data communication circuit comprising an antenna.” Pet. 68-69 (citing Ex. 1002

¶223; Ex. 1008, 1:5-7; 7:20-21, 7:35-43, 9:53-55, 10:48-61,

Figs. 12, 15). Petitioner further contends that a person of

ordinary skill in the art “would have been motivated to

configure Zhang’s lighting device to include a data communication circuit comprising an antenna” because such

a configuration would have been “useful for enabling a

remote wireless control of the lighting device, e.g., to turn

on/off or otherwise control lighting (e.g., brightness of

lighting).” Id. at 69 (citing Ex. 1002 ¶224).

Petitioner further contends that a person of ordinary

skill in the art would have considered Gleener which discloses “implementing an antenna-based system, including

maximizing transfer of energy to the antenna” and “implementing efficient wireless control of the ZhangMichael lighting device.” Id. (citing Ex. 1002 ¶225; Ex.

1039, code (54), Code (57), ¶1). Petitioner next argues

that Gleener “discloses a data communication circuit

comprising an inductor and a capacitor for impedance

matching and describes benefits associated with such im-

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pedance matching.” Id. at 69-70 (citing Ex. 1002 ¶225;

Ex. 1039 ¶¶2, 4, 14, 20, Figs. 1, 3).

Petitioner next contends that a person or ordinary

skill in the art “would have been motivated to configure

the data communication circuit of the Zhang-Michael device to comprise an inductor and a capacitor, in addition

to the antenna” to “advantageously promote[ ] efficiency

and high antenna performance.” Pet. 70 (citing Ex. 1002

¶226; Ex. 1039 ¶2).

Patent Owner contends that “Petitioner does not articulate a reason why a [person of ordinary skill in the

art] would incorporate a remote control/transceiver to

wirelessly control an LED exit sign.” PO Resp. 68. According to Patent Owner, “Petitioner only supplies generic reasoning that is untethered to the cornerstone of

its theory––the LED exit sign of Zhang.” Id. (citing Pet.

69; Ex. 2001 ¶161). Patent Owner next contends that a

person of ordinary skill in the art “would not have a reason to combine teachings from Michael’s light fixture

having an incandescent light surrounded by vertically

displaced LED ribs with the LED exit sign of Zhang. Michael’s . . . light fixture is a completely different apparatus with a completely different application than

Zhang.” Id. (citing Ex. 2001 ¶162).

For the following reasons, Petitioner persuades us

that claim 16 would have been unpatentable over Zhang,

Michael, and Gleener.

Patent Owner does not dispute that Michael discloses

a data communication circuit comprising an antenna nor

does Patent Owner dispute that Gleener discloses a data

communication circuit comprising an inductor and capacitor for impedance matching. See PO Resp. 67-68. Nor

does Patent Owner dispute that Gleener describes benefits associated with impedance matching. See id.

97a

Petitioner states reasons why a person of ordinary

skill in the art would have been motivated to combine

Zhang and Michael, i.e., to enable remote control to turn

on or off the Zhang’s lighting device or control the

brightness. Pet. 69. Petitioner supports this contention

with the testimony of Dr. Baker who relies on the disclosure of Zhang and Michael as well as the state of the art.

Ex. 1002 ¶¶223-224.

Petitioner also states reasons why a person of ordinary skill in the art would have been motivated to further

modify Zhang and Michael with Gleener, i.e., for the benefits of impedance matching. Pet. 69-70. Petitioner supports this contention with the testimony of Dr. Baker

who relies on the disclosure of Zhang, Michael, and

Gleener as well as the state of the art. Ex. 1002 ¶¶225226.

Dr. Ducharme doesn’t dispute Dr. Baker’s testimony

for claim 16. Ex. 2001 ¶¶158-163. We credit Dr. Baker’s

testimony which is supported by evidence for the reasons

why a person of ordinary would have combined the teachings of Zhang, Michael, and Gleener. Consequently, Patent Owner’s contention that Petitioner merely states

generic reasons for the combination is unavailing.

Patent Owner’s second contention that a person of ordinary skill in the art would not have combined Zhang

and Michael because Michael is a completely different

apparatus than Zhang is unavailing because the contention is based on bodily incorporating Zhang and Michael.

We have reviewed Petitioner’s contentions and evidence, and after considering Patent Owner’s contentions,

determine that Petitioner establishes by a preponderance

of the evidence that claim 16 would have been unpatentable over Zhang, Michael, and Gleener.

98a

III. CONCLUSION

Weighing the evidence and the competing testimony,

we determine that Petitioner establishes by a preponderance that claims 7-13 and 15-17 of the ’400 patent are unpatentable.24

In summary:

Claim(s)

Reference(s)/Basis

U.S.C.

Claims

Shown Unpatentable

7, 9, 11

103

Nerone, Martin

7, 9, 11

103

Nerone, Martin,

Morgan

103

Nerone, Martin,

Zinkler

103

Nerone, Martin,

Michael

103

Nerone, Martin,

Michael, Gleener

7, 9-11, 17

103

Zhang, Martin

103

Zhang, Martin,

Morgan

Claims Not

Shown Unpatentable

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 reexam

nation 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).

7, 9-11

99a

103

Zhang, Mosebrook

103

Zhang, Michael,

Gleener

Overall

Outcome

7-13, 15-17

IV. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that claims 7-13 and 15-17 of the ’400 patent have been shown to be unpatentable by a preponderance of the evidence; and

FURTHER ORDERED that any party seeking judicial review must comply with the notice and service requirements of 37 C.F.R. § 90.2.

100a

APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

————

LYNK LABS, INC.,

Appellant,

SAMSUNG ELECTRONICS CO., LTD.,

Appellee,

COKE MORGAN STEWART, ACTING UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY AND ACTING

DIRECTOR OF THE UNITED STATES PATENT AND

TRADEMARK OFFICE,

Intervenor.

————

2023-2346

————

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR202200149.

————

ON PETITION FOR REHEARING EN BANC

————

Before MOORE, Chief Judge, LOURIE, DYK, PROST,

REYNA, TARANTO, CHEN, HUGHES, STOLL, and STARK,

Circuit Judges.1

Circuit Judge Newman and Circuit Judge Cunningham did not participate.

101a

PER CURIAM.

ORDER

Lynk Labs, Inc. filed a petition for rehearing en banc.

VLSI Technology LLC requested leave to file a brief as

amicus curiae, which the court granted. The petition was

first referred to the panel that heard the appeal, and

thereafter the petition was referred to the circuit judges

who are in regular active service.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

April 15, 2025

Date

102a

APPENDIX D

RELEVANT CONSTITUTIONAL

AND STATUTORY PROVISIONS

1. The United States Constitution provides in relevant part as follows:

Article I, § 8

* * * * *

The Congress shall have Power * * *

To promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discoveries;

* * * * *

103a

2. In 2006, Title 35 of the United States Code provided in relevant part as follows:

§ 102. Conditions for patentability; novelty and loss

of right to patent

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this

country, or patented or described in a printed publication

in this or a foreign country, before the invention thereof

by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use

or on sale in this country, more than one year prior to the

date of the application for patent in the United States, or

(d) the invention was first patented or caused to be

patented, or was the subject of an inventor’s certificate,

by the applicant or his legal representatives or assigns in

a foreign country prior to the date of the application for

patent in this country on an application for patent or inventor’s certificate filed more than twelve months before

the filing of the application in the United States, or

(e) the invention was described in (1) an application

for patent, published under section 122 (b), by another

filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that

an international application filed under the treaty defined

in section 351(a) shall have the effects for the purposes of

this subsection of an application filed in the United States

only if the international application designated the Unit-

104a

ed States and was published under Article 21(2) of such

treaty in the English language * * * or

(f ) he did not himself invent the subject matter sought

to be patented, or

(g)(1) during the course of an interference conducted

under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the

invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this

country by another inventor who had not abandoned,

suppressed, or concealed it. In determining priority of

invention under this subsection, there shall be considered

not only the respective dates of conception and reduction

to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce

to practice, from a time prior to conception by the other.

§ 103. Conditions for patentability; non-obvious

subject matter

(a) A patent may not be obtained though the invention

is not identically disclosed or described as set forth in

section 102 of this title, if 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 to a person having ordinary skill in the art to which said subject

matter pertains. Patentability shall not be negatived by

the manner in which the invention was made.

(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under

this subsection, a biotechnological process using or resulting in a composition of matter that is novel unde

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