Wednesday, April 18, 2018

The CAFC upholds challenge to Philips patent in LED application area

A use of a light emitting diode in traffic lights was at issue:

The ’988 patent describes a circuit arrangement for a
signaling light, such as a traffic light, that uses a light emitting
diode (LED), rather than a traditional incandescent
lamp, as its light source. ’988 patent, col. 1, lines 21–
31. Typically, a signaling light in a traffic light system is
regulated by a control unit having a solid-state relay—an
electronic switch that turns on and off the power supplied
to the light. Id., col. 1, lines 32–34; see also id., col. 3,
lines 21–25. The control unit conducts status tests of the
relay and of the signaling light at the connection terminals
to make sure that multiple traffic lights (e.g., red and
green) are not on at the same time. See id., col. 1, lines

At the Board [PTAB]:

Wangs Alliance Corporation filed a petition for an inter
partes review of the ’988 patent under 35 U.S.C.
§§ 311–19. The Board instituted a review of claims 1
and 2 as likely unpatentable for obviousness under 35
U.S.C. § 103 based on the combination of U.S. Patent
No. 5,661,645 (Hochstein) and U.S. Patent No. 5,075,601
(Hildebrand). Institution Decision, 2015 WL 9599171, at
*9. The Board issued a final written decision on November
23, 2016, concluding that both claims 1 and 2 are
unpatentable for obviousness based on the Hochstein/
Hildebrand combination. J.A. 1–55 (Final Written Decision,
Wangs Alliance Corp. v. Koninklijke Philips N.V.,
No. IPR2015-01287 (P.T.A.B. Nov. 23, 2016), Paper No. 60
(Board Decision)).

"Design choice" arose:

On appeal, Philips does not dispute the Board’s finding
that the invention in claim 1 of the ’988 patent is
disclosed by the combination of Hochstein and Hildebrand—i.e.,
by using Hochstein’s group of components,
including an LED, but with Hildebrand’s sequencing
(current-conducting network after the input filter).
Philips argues, however, that the Board improperly failed
to identify an “affirmative reason” to combine Hochstein
and Hildebrand and instead relied solely on the notion
that choosing the order of components was a matter of
“design choice.” Philips’s Br. 23. We disagree with
Philips’s reading of the Board decision, and we conclude
that the Board’s rationale for the combination was sufficient
under KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007).

The Board did not rely on a broad notion of “design
choice” as sufficient to find that a skilled artisan would
have combined the references; to the contrary, it refused
to adopt a “mere[] asserti[on]” of “design choice” and
insisted on reviewing the context-specific evidence for the
soundness of that rationale in the particular circumstances
of this review. Board Decision at 36. The Board first
found that both references address the same problem (i.e.,
leakage current in traffic signal systems employing a light
source different from traditional incandescent lamps) and
propose similar solutions (i.e., similar circuitry—adaptive
clamp circuit in Hochstein, and dynamic load circuit in
Hildebrand). Id. at 32–35.


The Board considered, but rejected, Philips’s argument
that a skilled artisan would not place Hochstein’s
input filter before the adaptive clamp circuit because that
modified configuration would expose the adaptive clamp
circuit to malfunctioning noise from the converter. See id.
at 43 (noting that Philips’s expert Dr. Regan Zane testified
in his deposition that a skilled artisan would not
know how to address any noise issues and speculated that
such noise “could cause undesirable behavior,” but not
testifying as to what level of noise would be generated by
the converter or its result) (quoting J.A. 1246–47). The
Board was persuaded by the record evidence, including
the testimony of Wangs’s expert Mr. Tingler, that, even if
the adaptive clamp would be exposed to noise from the
converter, the noise from the converter would not be a
“malfunctioning” noise that would counsel against the
adoption of a filter-first configuration by a relevant skilled
artisan, who would be able to identify and mitigate any
noise. Id. at 42–43.3 The Board ultimately found “that it
is highly unlikely that [the] adaptive clamp circuit would
be affected by noise, and thus malfunction.” Id. at 45.
Philips complains that the Board did not identify the
specific “affirmative reason” for a person of skill looking at
Hochstein to adopt the alternative configuration in Hildebrand.
But in the circumstances of this case, we conclude,
Philips is demanding too much. Under KSR, we see no
need for more than what the Board found in this case,
including that (1) there were just two obvious design
choices in the respect put at issue (Hochstein and Hildebrand),
which solve the same problem in the same way
but with the filter and current-conducting network
swapped in their locations, (2) the two references “show
the demand for designs that solve the known problem,” id.
at 33; (3) Hildebrand’s location choice was a common and
approved design that could be used in Hochstein; and
(4) Hochstein would not malfunction if modified to use
such a design. These findings suffice to establish a reason
for a skilled artisan, seeking to solve the status-test
problem, to use a three-component circuit arrangement as
found in both references and to choose either of the two
disclosed orders of the first two components within that
arrangement—specifically, the order that is especially
common in the art and that is used in the ’988 patent.
See KSR, 550 U.S. at 416 (combining “familiar elements
according to known methods is likely to be obvious when
it does no more than yield predictable results”).
For those reasons, we conclude that substantial
evidence supports the Board’s finding of a motivation to

The losing appellant Philips Lighting was represented by
Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC


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