Videndum Production Solutions Inc v. Rotolight Ltd

1. Case Identification

• Case #: IPR2023-01219
• Patent #: 10,197,258
• Filed: July 17, 2023
• Petitioner(s): Videndum Production Solutions, Inc.
• Patent Owner(s): Rotolight Limited
• Challenged Claims: 1-22

2. Patent Overview

• Title: Lighting System
• Brief Description: The ’258 patent discloses a lighting system comprising a lighting device and an integrated controller. The system is designed to produce user-customizable cinematic lighting effects by using an "effect simulator" to calculate time-varying lighting values based on user-selected simulation parameters.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Showline Manual - Claims 1-6, 8-14, and 16-22 are anticipated by, or in the alternative obvious over, the Showline Manual.

• Prior Art Relied Upon: Showline SL PAR 155 Manual (“Showline Manual”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Showline Manual, which describes a commercially available RGBW LED luminaire, discloses every limitation of the challenged claims. The Showline luminaire is an integrated unit containing a lighting device (LED array) and a controller (the "LCD Display and Menu System"). This system provides "local control" for a user to select, customize, and run various lighting effects, such as editable "presets" and "chases." Petitioner contended the system's processor functions as the claimed "effect simulator" by calculating new time-varying lighting values (e.g., intensity, color, speed) in real-time when a user adjusts parameters via the interface. Dependent claims were allegedly met by Showline’s disclosure of RGBW LEDs (claims 3-5), user-adjustable color and color temperature (claims 6, 8, 10), brightness control (claim 9), strobe effects (claim 11), memory to save and recall settings (claims 12, 21), and a "Master/Slave" mode for controlling multiple lighting devices (claims 13, 14, 22).
  • Motivation to Combine (for §103 grounds): As a fallback, Petitioner argued that if the Showline Manual’s function of generating lighting values from user parameters is not an explicit disclosure of "calculating," it would have been obvious to a POSITA. A POSITA would have understood that creating a lighting effect based on numeric user inputs inherently involves a calculation, making any alleged difference obvious.
  • Expectation of Success (for §103 grounds): Because the Showline Manual already performed the claimed functions, a POSITA would have had a complete expectation of success.

Ground 2: Obviousness over Showline Manual in view of Choong - Claim 7 is obvious over the Showline Manual in view of Choong.

• Prior Art Relied Upon: Showline Manual and Choong (Patent 8,632,208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 7 requires the lighting device to comprise at least one "warm" white and one "cool" white LED. While the Showline Manual discloses an RGBW LED that can produce white light across a range of color temperatures, Choong explicitly teaches a controllable LED light source that uses both "warm" white and "cool" white LEDs to allow a user to precisely control the correlated color temperature (CCT).
  • Motivation to Combine (for §103 grounds): A POSITA would combine the known technique from Choong of using dedicated warm and cool white LEDs with the Showline system to achieve the predictable result of more accurate and efficient white light temperature control, a common goal in the field of entertainment lighting.
  • Expectation of Success (for §103 grounds): The combination was argued to be a simple substitution of one known method of producing variable-temperature white light for another in an analogous system, with a high expectation of success.

Ground 3: Anticipation and Obviousness over Pohlert - Claims 1-22 are anticipated by, or in the alternative obvious over, Pohlert.

• Prior Art Relied Upon: Pohlert (Application # 2012/0044374).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pohlert discloses a "lighting and effects generation system" that anticipates all challenged claims. The system includes LED light panels controlled by a "power controller," which contains a user interface, an "effects generator," and switches. Petitioner contended that Pohlert’s "effects generator" or "processor" is an "effect simulator" that calculates time-varying lighting values based on user-selected parameters (e.g., strobing frequency, dimming patterns, color). Pohlert’s controller allows a user to select and customize effects, and the system generates and outputs control signals to the LEDs to simulate the selected effect. Petitioner mapped Pohlert's disclosures of RGB+W LEDs, color temperature control ("tungsten" and "daylight" ranges), memory, and control of "slave flashes" to meet the limitations of the various dependent claims.
  • Motivation to Combine (for §103 grounds): In the alternative, Petitioner argued that any minor difference between Pohlert's disclosure and the claims, such as the interpretation of "calculate," would have been an obvious modification for a POSITA.
  • Expectation of Success (for §103 grounds): A POSITA would expect success as Pohlert’s system was designed for the same purpose (video photography lighting) and used the same fundamental components.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 15 based on the Showline Manual in view of Reinoso (Patent 8,581,513), which taught using a wireless DMX protocol for communication between lighting devices.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) or §314(a) would be inappropriate. The Examiner did not consider the asserted prior art during prosecution. Furthermore, the Board previously instituted review on these same grounds in IPR2021-01496, finding a likelihood of success on the merits before that proceeding was terminated due to settlement. Petitioner also contended that Fintiv factors weigh against denial, as the co-pending district court litigation is at a very early stage with no scheduling order or significant investment of resources.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of Patent 10,197,258 as unpatentable.