Case IPR2013-00020
`Patent No. 7,297,364
`Petitioner’s Demonstrative Slides
`
`January 2, 2014 Hearing
`1:00 pm
`Madison Building East
`600 Dulany Street
`Alexandria, Virginia
`
`
`Patent No. 7,297,364
`Petitioner’s Demonstrative Slides
`
`January 2, 2014 Hearing
`1:00 pm
`Madison Building East
`600 Dulany Street
`Alexandria, Virginia
`
`
`
`Kuta Teaches A Step-By-Step Process
`to Return Lamps to Like-New Condition
`
`Kuta (Ex. 1002)
`
`“[0023] …The method is a step-by-step process
`for removing this damage, to return the lenses 10
`to like-new condition without the relatively high
`cost of replacing them.”
`
`Source: Ex. 1002, p.6; Reply to Patent Owner Response, p. 9; Opposition to Motion to Amend, p. 9
`
`2
`
`
`
`Patent Owner Conceded Kuta is Related Art
`
`‘364 Patent (Ex. 1001)
`
`Kuta (Ex. 1002)
`
`Source: Ex. 1001, p. 5, 1:25-27; Ex. 1002, p.1, (21); Petition for IPR, pp.4-6
`
`3
`
`*All emphasis added unless otherwise indicated
`
`
`
`The ‘364 Patent Asserts that Kuta
`Does Not Teach Removing the Lamp
`
`‘364 Patent (Ex. 1001)
`
`“And finally, this method [is] undesirable
`because it refurbishes the headlamp
`surface while the headlamp is still
`mounted to the motor vehicle. Grinding a
`headlamp surface while the headlamp is
`still mounted in the motor vehicle may
`cause damage to the motor vehicle.”
`
`Source: Ex. 1001, p.5, 1:46-51; Petition for IPR, pp.4-6
`
`4
`
`
`
`The Examiner Found that Kuta was the
`Closest Art During Prosecution
`
`6/28/07 Office Action (Ex. 1011)
`
`“12. The following is a statement of
`reasons for the indication of allowable
`subject matter. Kuta (US 2005/0208210
`A1) is the closest prior art.”
`
`Source: Ex. 1011, p.5; Petition for IPR, pp.7-8
`
`5
`
`
`
`The Examiner Allowed the Claims Only Because
`They Require “Removing”
`
`6/28/07 Office Action (Ex. 1011)
`
`“This reference [] teaches away from the
`step of removing the instantly claimed
`step of [sic] removing the lamp from the
`motor vehicle.”
`
`Source: Ex. 1011, p.5; Petition for IPR, pp.7-8, 12
`
`6
`
`
`
`The Examiner Allowed the Claims Only Because
`They Require “Removing”
`
`6/28/07 Office Action (Ex. 1011)
`
`Source: Ex. 1011, p.6; Petition for IPR, pp.7-8, 12
`
`7
`
`
`
`The Examiner Allowed the Claims Only Because
`They Require “Removing”
`
`Notice of Allowability (Ex. 1013)
`
`“3. The following is an examiner’s
`statement of reasons for allowance: the
`reasons remain the same as set forth
`under this heading in the previous
`Office action (06/28/2007).”
`
`Source: Ex. 1013, p.5; Petition for IPR, p.8, 12
`
`8
`
`
`
`Patent Owner Distinguished Zuk Based on
`Failure to Mention Removal
`
`11/16/07 IDS After Issue Fee (Ex. 1021)
`
`“Of note, United States Patent
`4,301,193, issued to Zuk on Nov. 17,
`1981 references a central location. It
`does not, however, mention removal of
`lamps from a motor vehicle to repair
`same, (column 2, line 69 to column 3,
`line 6).”
`
`Source: Ex. 1021, p.1; Reply to Patent Owner Response, p.8
`
`9
`
`
`
`Butt Teaches Removing
`a Lamp Before Refurbishing
`
`Butt (Ex. 1003)
`
`“Nevertheless, it is generally more
`convenient to remove the lamp or
`lighting unit from the vehicle and to
`remove the damaged lens from the
`housing to which it is connected.”
`
`Source: Ex. 1003, p.7, 2:57-60; Petition for IPR, p.10
`
`10
`
`
`
`Eastwood Teaches Removing
`a Lamp Before Refurbishing
`
`Eastwood (Ex. 1004)
`
`“I took the headlights out of my Mustang
`to do them, because I didn't want to risk
`any damage to the car.”
`
`Source: Ex. 1004, p.6; Petition for IPR, pp.10-11
`
`11
`
`
`
`Mr. Yarde Confirmed That a POSITA Knew a Lamp
`Could Be Removed Before Refurbishing
`
`Yarde Declaration (Ex. 1009)
`
`“10. I knew in 2005, and at least as early
`as 2000, about removing a headlamp
`from a vehicle in order to refurbish the
`headlamp.”
`
`“11. I knew in 2005, and at least as early
`as 2000, that refurbishing a headlamp
`while the headlamp is in the vehicle
`could cause damage to the vehicle.”
`
`Source: Ex. 1009, pp.2-3; Petition for IPR, p.13-14
`
`12
`
`
`
`Mr. Yarde Confirmed That a POSITA Knew a Lamp
`Could Be Removed Before Refurbishing
`
`Yarde Declaration (Ex. 1009)
`
`“19. I have reviewed U.S. Patent No.
`6,106,648 to Butt (‘Butt’) (Ex. 1003).
`Column 2, lines 56-60 of Butt teach that
`to refurbish a lens, it may be more
`convenient to remove the lamp from the
`vehicle.”
`
`Source: Ex. 1009, p.4; Petition for IPR, p. 10
`
`13
`
`
`
`Mr. Yarde Confirmed That a POSITA Knew a Lamp
`Could Be Removed Before Refurbishing
`
`Yarde Declaration (Ex. 1009)
`
`“21. I have reviewed Eastwood ShopTalk Forum
`Posts, available at http://forum.eastwood.com/
`showthread.php?118-Plastic-headligbt-
`resealing&s=d3d5c 104c4068d77bcc48e2e5a
`d49222 (‘Eastwood’) (Ex. 1004 ), which are forum
`posts publicly accessible on the Internet. On
`February 18, 2005, a member with the user name
`Pontisteve posted on Eastwood that ‘I took the
`headlights out of my Mustang to do them, because
`I didn't want to risk any damage to the car.’”
`
`Source: Ex. 1009, p. 4; Petition for IPR, pp.10-11
`
`14
`
`
`
`Mr. Yarde Confirmed That a POSITA Knew a Lamp
`Could Be Removed Before Refurbishing
`
`Yarde Declaration (Ex. 1009)
`
`“24. Neither Butt, Korsyn, Eastwood, SHO nor
`Autopia discourage a person of ordinary skill in the
`art from removing a lamp from a vehicle when
`refurbishing the lamp nor lead a person of ordinary
`skill in the art in a direction away from removing a
`lamp from a vehicle when refurbishing the lamp.”
`
`Source: Ex. 1009, p. 5; Petition for IPR, pp.10-11
`
`15
`
`
`
`Claim Construction
`
`Decision Instituting Trial
`
`Source: Decision Instituting Trial, p.6
`
`16
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`
`1. A method for refurbishing a lamp surface of a lamp having surface
`damage, the method comprising the steps of:
`
`Kuta (Ex. 1002)
`
`“[0010] The present invention teaches an alternative to
`replacement that is more cost effective, in that it does not require
`removal of worn lenses nor mounting of new ones. Thus, this
`approach saves both the cost of new lenses as well as the cost of
`labor for replacement. The present invention teaches an
`apparatus that is ideally suited to removing the outer damaged
`surface of on an existing lens and a method for doing so.
`Therefore, the present invention method removes the abraded
`surface on a lens while it is still mounted on the vehicle, and
`restores optical clarity and light output to the level of new lenses.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.5; Petition for IPR, p.16
`
`17
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`removing an original clear coat finish from the lamp surface of the lamp;
`
`Kuta (Ex. 1002)
`
`“[0023] …First, a fine sanding disc 20, of the type
`shown in FIG. 4, of approximately 320 grit, is
`placed into contact with one of the lenses and
`moved continuously, over the exterior surface 12
`while applying an oscillating motion to the disc
`20…As the exterior surface 12, primarily factory
`installed hard coating materials, of the lens 10 is
`removed it exposes a non-abraded surface
`below, which now becomes the exterior surface
`12.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21
`
`18
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`evening the lamp surface;
`
`Kuta (Ex. 1002)
`
`“[0023] …This same motion is repeated using an
`ultra-fine, 600 grit sanding disc 20 and, again,
`with the water flush, and stopping the sanding
`when the lens 10 appears clear.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21
`
`19
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`grinding swirls and scratches out of the lamp surface;
`
`Kuta (Ex. 1002)
`
`“[0025] …The second abrasion step uses an
`extra fine (600 grit) sanding disc 20, also by
`Cerium Optical Products #PPF767. This step is
`stopped when clarity is restored to the lens which
`takes about 10 minutes.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21
`
`20
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`buffing the lamp surface;
`
`Kuta (Ex. 1002)
`
`“[0023] …When the lens 10 is satisfactory and
`quite clear, it is buffed using a buffing compound
`until a high gloss is achieved.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21
`
`21
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`cleaning the lamp surface;
`
`Kuta (Ex. 1002)
`
`“[0029] As shown in FIG. 1, the water flush for
`refinishing in situ lenses may comprise a bucket
`5 with a broad faced nozzle 6 and with a spigot 7
`for adjustment of water flow. Other means for
`delivery a continuous flow of water to the lens
`surface 12 will be known by those of skill in the
`art.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.7; Petition for IPR, p.21
`
`22
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`spraying a replacement clear coating material over the lamp surface; and
`
`Kuta (Ex. 1002)
`
`“[0023] …Finally, the exterior surface 12 is coated
`with a transparent ultraviolet hardenable coating
`material, which is then hardened by exposure to
`an ultraviolet light source.”
`“[0026] After preparing the lens 10, preferably, a
`scratch resistant coating is applied. This is a UV
`curable coating for hard overcoating onto polished
`lens, and preferably is, Tomco Finishing Products,
`Tomco Armor Coat No-Bake Scratch Coat.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21
`
`23
`
`
`
`Kuta Teaches the Remaining Limitations of Claim 1
`
`Claim 1:
`curing the replacement clear coat material.
`
`Kuta (Ex. 1002)
`
`“[0026] After preparing the lens 10, preferably, a
`scratch resistant coating is applied. This is a UV
`curable coating for hard overcoating onto polished
`lens, and preferably is, Tomco Finishing Products,
`Tomco Armor Coat No-Bake Scratch Coat.”
`“[0023] …Finally, the exterior surface 12 is coated
`with a transparent ultraviolet hardenable coating
`material, which is then hardened by exposure to
`an ultraviolet light source.”
`
`Source: Ex. 1001, Claim 1; Ex. 1002, p.6; Petition for IPR, p.21-22
`
`24
`
`
`
`Kuta Teaches the Only Additional
`Limitation of Independent Claim 13
`
`Claim 13:
`statically neutralizing debris on the lamp surface to facilitate the removal
`of all of the debris on the lamp surface;
`
`Kuta (Ex. 1002)
`
`“[0024] …As mentioned above, because
`polycarbonate melts at a relatively low
`temperature, the sanding discs are constantly
`moved over the surface of the lens and the water
`flush must be continuous.”
`
`Source: Ex. 1001, Claim 13; Ex. 1002, p.6; Petition for IPR, p.28
`
`25
`
`
`
`Patent Owner’s “Fully Removing”
`Amendment
`
`Proposed Claim 25, 25’, 25’’, 37, 37’, and 37’’:
`…fully removing an original clear coat finish from the lamp surface of the
`lamp;
`
`Bell 11/12/13 (Ex. 1034)
`
`“Q. Now, in the experiment in Paragraph 54, it's your testimony
`that the orbital standard using the 320 grit sandpaper was
`used for five minutes, it was able to remove the clear coat. Is
`that correct?
`A. Yes.
`Q. Okay. And it was also able to remove the clear coat in the
`corners of the lamp as well, right, the limited access corners
`where it was applied.
`A. Yes. The lamp would have been removed from the vehicle.”
`
`Source: Ex. 1034, p. 5, 17:1-11; Motion to Amend, pp. 7-9, 11-13; Observations on Testimony of Bell, p. 7
`
`26
`
`
`
`Patent Owner’s “Fully Removing”
`Amendment
`
`Proposed Claim 25, 25’, 25’’, 37, 37’, and 37’’:
`…fully removing an original clear coat finish from the lamp surface of the
`lamp;
`
`Katsamberis 8/16/13 (Ex. 1017)
`
`“Q. Let’s assume for a second that the system of Kuta was used
`to refinish a lamp that had been removed from a car, okay?
`Can you assume that?
`A. Yes.
`Q. Would the limited access corners which are labeled as
`Number 14 in Kuta still exist if that was the case?
`A. Probably not.
`Q. Why not?
`A. Because the car body will not be there to limit your access to
`those corners.”
`
`Source: Ex. 1017, p. 26, 102:4-15; Motion to Amend, pp.7-9, 11-13; Opposition to Motion to Amend, pp. 4-5
`
`27
`
`
`
`Patent Owner’s “Minimize Any Troughs”
`Amendment
`
`Proposed Claim 25, 25’, 25’’, 37, 37’, and 37’’:
`…evening the lamp surface by smoothing out the lamp surface to
`minimize any troughs created through the removal of the damage;
`
`Kuta (Ex. 1002)
`
`“[0028] …Foam pad 21 provides compliant
`resilience for sanding disc 20, and this is critical
`for smoothing lens 10.”
`
`Source: Ex. 1002, p.7; Motion to Amend, pp.7-9, 11-13; Opposition to Motion to Amend, p. 6
`
`28
`
`
`
`Patent Owner’s “Minimize Any Troughs”
`Amendment
`
`Proposed Claim 25, 25’, 25’’, 37, 37’, and 37’’:
`…evening the lamp surface by smoothing out the lamp surface to
`minimize any troughs created through the removal of the damage;
`
`VehiCROSS Forums (Ex. 1025)
`
`“For larger more significant scratches, I’d start off
`with the WET sandpaper process using a lower
`grit as you mentioned and work yourself into a
`higher grit. Then follow up with the polishing.
`Scratches and dents that don’t come off with the
`polishing will need to be sanded first in order to
`smooth out to a level surface.”
`
`Source: Ex. 1025, p.2; Motion to Amend, pp.7-9, 11-13; Opposition to Motion to Amend, pp. 6-7
`
`29
`
`
`
`Patent Owner’s “Minimize Any Troughs”
`Amendment
`
`Proposed Claim 25, 25’, 25’’, 37, 37’, and 37’’:
`…evening the lamp surface by smoothing out the lamp surface to
`minimize any troughs created through the removal of the damage;
`
`Cole (Ex. 1008)
`
`“The objective of the succession of finer grade
`papers is to remove the large scratch marks from
`the surface of the lens until the lens appears to
`have a relatively smooth surface that is virtually
`free of visible individual scratches. This normally
`occurs at a sandpaper grade of approximately
`2000, plus or minus a grade.”
`
`Source: Ex. 1008, p. 6, 3:19-24; Motion to Amend, pp.7-9, 11-13; Opposition to Motion to Amend, p. 7
`
`30
`
`
`
`Patent Owner’s
`“Original Equipment Condition” Amendments
`
`Proposed Claim 25’, 37’, and 37’’:
`…wherein, the steps (b) through [(h)/(i)/(j)] are performed to restore
`the lamp to its original equipment condition.
`
`Proposed Claim 25’’:
`…wherein, the steps (b) through (i) are performed to restore the lamp
`to its original equipment condition, with the lamp surface having an
`optical quality similar to the optical quality of an original equipment
`lamp surface.
`
`Source: Motion to Amend, pp. 8-9, 12-13
`
`31
`
`
`
`Patent Owner’s “Original Equipment Condition”
`Amendments
`
`Proposed Claim 25’, 25’’, 37’, and 37’’:
`…restore the lamp to its original equipment condition…
`
`Kuta (Ex. 1002)
`
`“[0010] …Therefore, the present invention [sic] method removes
`the abraded surface on a lens while it is still mounted on the
`vehicle, and restores optical clarity and light output to the level of
`new lenses.”
`
`Source: Ex. 1002, p.5; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, pp. 7-8, 9-10
`
`32
`
`
`
`Patent Owner’s “Original Equipment Condition”
`Amendments
`
`Proposed Claim 25’, 25’’, 37’, and 37’’:
`…restore the lamp to its original equipment condition…
`
`Kuta (Ex. 1002)
`
`“[0023] …The lenses 10 have a damaged exterior
`surface 12, primarily crazing of the surface, caused by
`the impact of stones and sand in the roadway, ultra-
`violet damages from the Sun and chemical damage
`from the environment, including acid rain, roadway
`chemicals and similar mechanical and chemical
`damage as well as natural aging of hard coatings
`placed on such lenses at the factory. The method is a
`step-by-step process for removing this damage, to
`return the lenses 10 to like-new condition without the
`relatively high cost of replacing them.…”
`
`Source: Ex. 1002, p.6; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, pp. 7-8, 9-10
`
`33
`
`
`
`Patent Owner’s “Original Equipment Condition”
`Amendments
`
`Proposed Claim 25’, 25’’, 37’, and 37’’:
`…restore the lamp to its original equipment condition…
`
`Mopar Muscle (Ex. 1026)
`
`“‘[R]estoring’ is an art based partly on
`observing, documenting and duplicating
`just how the factory did it when new.”
`
`Source: Ex. 1026, p. 1; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, p. 8
`
`34
`
`
`
`Patent Owner’s “Original Equipment Condition”
`Amendments
`
`Proposed Claim 25’, 25’’, 37’, and 37’’:
`…restore the lamp to its original equipment condition…
`
`Mopar Muscle (Ex. 1026)
`
`“To truly restore the car, every part has
`to be returned to its original state.”
`
`Source: Ex. 1026, p.3; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, p. 8
`
`35
`
`
`
`Patent Owner’s “Original Equipment Condition”
`Amendments
`
`Proposed Claim 25’, 25’’, 37’, and 37’’:
`…restore the lamp to its original equipment condition…
`
`Zuk (Ex. 1022)
`
`“ABSTRACT A process for removing scratches and dirt from plastic
`sheeting, windows, face shields, windshields and other plastic articles that
`will improve the transparency, optical quality and appearance of the above.
`More specifically, the process will restore plastic glass replacements that
`have become so scratched as to have their transparency and optical quality
`impaired to a state where the transparency, optical quality, and
`appearance are close to if not equal to, a new article.”
`
`Source: Ex. 1022, p. 1, Abstract; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, p. 8
`
`36
`
`
`
`Patent Owner’s “Removing Damage”
`Amendment
`
`Proposed Claim 25’’ and 37’’:
`…removing damage from the lamp surface of the lamp;
`
`Kuta (Ex. 1002)
`
`“[0023] …The method is a step-by-step process
`for removing this damage, to return the lenses 10
`to like-new condition…”
`
`Source: Ex. 1002, p.6; Motion to Amend, pp.8-9, 12-13; Opposition to Motion to Amend, p. 9
`
`37
`
`
`
`Patent Owner’s “After the Steps”
`Amendment
`
`Proposed Claim 37, 37’, and 37’’:
`…(g) statically neutralizing debris on the lamp surface to facilitate the removal
`of all of the debris on the lamp surface after the steps (b) through (d);
`
`Katsamberis Declaration (Ex. 2007)
`
`“21. Proper clear coatings adhere to the plastic
`lens, rather than simply resting on top of it.
`To obtain proper adherence, the lens surface
`must be clean of any surface contamination
`when the clear coating is applied.”
`
`Source: Ex. 2007, p. 9; Motion to Amend, pp.11-13; Reply to PO Response, p. 9
`
`38
`
`
`
`Patent Owner’s “After the Steps”
`Amendment
`
`Proposed Claim 37, 37’, and 37’’:
`…(g) statically neutralizing debris on the lamp surface to facilitate the removal
`of all of the debris on the lamp surface after the steps (b) through (d);
`
`Bell Deposition 8/27/13 (Ex. 1018)
`
`“Q. Prior to 2005, would a person involved in
`manufacturing headlamps have known to
`statically neutralize a headlamps before
`spraying it with clear coat?
`A. Oh, I think so.”
`
`Source: Ex. 1018, p. 22, 86:16-20; Motion to Amend, pp. 11-13; Opposition to Motion to Amend, p. 12
`
`39
`
`
`
`Patent Owner’s “After the Steps”
`Amendment
`
`Proposed Claim 37, 37’, and 37’’:
`…(g) statically neutralizing debris on the lamp surface to facilitate the removal
`of all of the debris on the lamp surface after the steps (b) through (d);
`
`Cole (Ex. 1008)
`
`“Additional water can be added to the lens surface
`during the polishing if the paste appears to be drying
`out. The paste residue is then washed off with water
`and dried with a lint free cloth at 40. A lint free cloth is
`used to help assure that no particles of lint are
`attracted to the lens during the drying process, since
`such particles would appear on the finished surface of
`the lens.”
`
`Source: Ex. 1008, p. 6, 3:54-61; Motion to Amend, pp.11-13; Opposition to Motion to Amend, p. 12
`
`40
`
`
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