UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2014-01092
`
`Patent 7,434,974
`_______________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c) AND (d)
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2014-01092
`
`Patent 7,434,974
`_______________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c) AND (d)
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION........................................................................................1
`PRECISE RELIEF REQUESTED .............................................................2
`II.
`III. LEGAL STANDARD ....................................................................................3
`IV. ARGUMENT .................................................................................................3
`
`A.
`
`The Board Misapprehended The Argument Regarding The
`Unpatentability Of Claims 1, 3-5, 7-11, And 13 Based On Funamoto... 3
`
`1.
`
`2.
`
`Funamoto Does Not Require A Fluorescent Light Source............ 5
`
`A Person Of Ordinary Skill Would Have Recognized That An
`LED Is An Illuminant According To Funamoto. ........................... 8
`
`B.
`
`The Board Misapprehended The Argument And/Or Overlooked
`Evidence Regarding The Unpatentability Of Claims 1, 3-5, 7-8, 10-11,
`and 13 Based On Tsuchiyama In View Of Funamoto............................ 10
`CONCLUSION............................................................................................13
`
`V.
`
`i
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`I.
`
`INTRODUCTION
`On July 1, 2014 Petitioner filed a Petition for Inter Partes Review of U.S. Patent
`
`No. 7,434,974 (“the ’974 Patent”) (“Petition” or “Pet.”) containing the following
`
`grounds:
`
`Ground #
`1
`2
`
`3
`
`Ground
`103(a)
`103(a)
`
`103(a)
`
`Prior art
`Funamoto
`Tsuchiyama in
`view of Funamoto
`Funamoto in view
`of Nakayama
`
`Exhibit(s) #
`1007
`1008 and 1007
`
`1007 and 1009
`
`Claims
`1, 3-5, 7-11, 13
`1, 3-5, 7-8, 10-11,
`13
`13, 17
`
`See Petition for Inter Partes Review of the ’974 Patent, at 10.
`
`On January 13, 2015, the Board denied institution of inter partes review of the
`
`’974 Patent. See Decision to Institute, Paper No. 9, at 14-15.
`
`Pursuant to 37 C.F.R § 42.71(c) and (d), Petitioner respectfully requests
`
`reconsideration of the Board’s Decision Denying Institution of Inter Partes Review
`
`(Paper No. 9) (“Decision”). Specifically, this request seeks reconsideration of Ground
`
`1 presented in the Petition because the Board misapprehended evidence contained
`
`within the Petition and supporting declaration in view of a narrow and conclusory
`
`assertion made in Patent Owner’s Preliminary Response. Further, Petitioner
`
`respectfully requests reconsideration of Ground 2 in the Petition because the Board
`
`misapprehended Petitioner’s argument for the motivation to combine Tsuchiyama
`
`and Funamoto.
`
`This request is timely under 37 C.F.R. § 42.71(d)(2) because it was filed within
`
`1
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`thirty days of the Board’s decision not to institute a trial on the ’974 Patent.
`
`II.
`
`PRECISE RELIEF REQUESTED
`Petitioner respectfully requests reconsideration of the institution decision with
`
`regards to the following grounds based on at least the following evidence that was
`
`before the Board.
`
`Ground # Ground
`1
`103(a)
`
`Prior art
`Funamoto
`
`Claims
`1, 3-5, 7-11,
`13
`
`2
`
`103(a)
`
`Tsuchiyama in
`view of
`Funamoto
`
`1, 3-5, 7-8,
`10-11, 13
`
`2
`
`Evidence
`1) Pet., at 11 (citing Ex.
`1007, at 1:15-2:2, 1:42-66,
`2:3-23);
`2) Pet., at 13 (citing Ex.
`1007, at 1:5-12, 12:66-67;
`Escuti Decl., Ex. 1004, at
`¶¶76-78; Ex. 1006, at 3:15-
`17; Ex. 1023, at 3:28-38);
`and
`3) Ex. 1007, at 1:15-2:2,
`2:27-31, 2:46-57, 2:64-65,
`claims 1, 11, and 14,
`Abstract, 8:20-30, 15:20-25
`1) Pet., at 29-30 (citing
`Escuti Decl., Ex. 1004, at
`¶¶82, 138; Ex. 1001, at 5:2-
`7); and
`2) Pet., at 34 (citing Ex.
`1008, at 3:32-40, Fig. 4;
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`Escuti Decl., Ex. 1004, at
`¶142).
`
`III. LEGAL STANDARD
`
`“A party dissatisfied with a decision may file a request for rehearing, without
`
`prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request must
`
`specifically identify all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed in a motion, an
`
`opposition, or a reply.” Id. The Board reviews a decision for an abuse of discretion.
`
`37 C.F.R. § 42.71(c). “An abuse of discretion may arise if a decision is based on an
`
`erroneous interpretation of law, if a factual finding is not supported by substantial
`
`evidence, or if an unreasonable judgment is made in weighing relevant factors.”
`
`IPR2013-00298, Paper 24, at 2 (Feb. 11, 2014) (citations omitted).
`
`IV. ARGUMENT
`A.
`The Board Misapprehended The Argument Regarding The
`Unpatentability Of Claims 1, 3-5, 7-11, And 13 Based On Funamoto
`Petitioner respectfully requests that the Board reconsider Petitioner’s proposed
`
`Ground 1 regarding claims 1, 3-5, 7-11, and 13 based on U.S. Patent No. 5,619,351
`
`(“Funamoto”) (Ex. 1007) because the Board misapprehended the Petition at page 11
`
`(citing Ex. 1007, at 1:15-38, 1:42-66, 2:3-23) and page 13 (citing Ex. 1007, at 1:5-12,
`
`12:66-67; Escuti Decl., Ex. 1004, at ¶¶76-78; Ex. 1006, at 3:15-17; Ex. 1023, at 3:28-
`
`38). Because the Board’s factual finding regarding Funamoto is not supported by
`
`3
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`substantial evidence, the Board abused its discretion.
`
`Petitioner respectfully submits that the Board erred by relying (Decision, at 7-9)
`
`on Patent Owner’s assertion that Funamoto requires a fluorescent light source. See
`
`Prelim. Resp., at 13-14. Although Funamoto’s specification recognized that the prior
`
`art often discussed the use of a fluorescent
`
`light source, Funamoto’s claims
`
`purposefully used the broader term “illuminant.” At bottom, Patent Owner’s
`
`argument is nothing more than an impermissible attempt to read a limitation into the
`
`Funamoto claims from the specification. No such limitation exists.
`
`Because one of ordinary skill at the time of the ’974 Patent would have
`
`recognized that an LED qualifies as an “illuminant” within the meaning of
`
`Funamoto—a conclusion that the Board did not dispute—Petitioner submits that
`
`Patent Owner’s argument that Funamoto required a fluorescent light source, which
`
`Petitioner had no opportunity to challenge before the Board’s decision, is patently
`
`wrong.1 Consequently, the Board’s reliance on this argument is misplaced. Funamoto
`
`contains no such requirement.
`
`1 Because Patent Owner’s argument that Funamoto requires a fluorescent light
`
`sources is blatantly wrong, it could not have been anticipated by Petitioner and so it
`
`could not have been addressed in the Petition. Petitioner could not be required to
`
`preemptively imagine and address all manners of inconceivable arguments Patent
`
`Owner may conjure, regardless of merit.
`
`4
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`Funamoto Does Not Require A Fluorescent Light Source
`1.
`The Board’s decision rests on its view—advanced by Patent Owner—that
`
`Funamoto “require[s]” a “high output fluorescent light in the disclosed device.”
`
`Decision, at 9. That conclusion, respectfully, is wrong.
`
`First, the Funamoto claims specifically contradict this asserted limitation. The
`
`claims never use the term “fluorescent.” Instead, all claims in Funamoto claim an
`
`“illuminant” as the light source. See, e.g., Ex. 1007, at 15:45. That Funamoto does not
`
`use “fluorescent” but
`
`instead includes the significantly more expansive term
`
`“illuminant” must be understood as purposeful. Indeed, the specification makes clear
`
`that the term “illuminant” is a broader category, of which a “fluorescent light” is one
`
`example. The specification, for example, refers to “illuminants such as a fluorescent
`
`light.” Ex. 1007, 2:64-65. See also id. 2:53-54 (“an illuminant such as a fluorescent
`
`light”); id. at Abstract (“For example, an L-shaped fluorescent light can be used an
`
`illuminant . . . .” (emphasis added)). The claim terms, plainly understood, do not have
`
`a “fluorescent light” limitation on which the Board relied.
`
`Patent Owner’s principal assertion (Prelim. Resp., at 13), upon which the Board
`
`appears to have relied (Decision,
`
`at 7) takes out of context a snippet of the
`
`Background of the Invention. In full, the Background makes plain it was referencing
`
`certain prior art devices that use high output fluorescent light sources:
`
`light
`Surface-type illumination devices with a cylindrical
`source and a flat polarizer such as the devices described in
`
`5
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`Japanese Kokai No. 60-205576 and Japanese Kokai No.
`61-248079 are well-known. One such example is shown in
`FIG. 21.
`In the illumination device 90, cylindrical
`fluorescent
`light 92 is positioned on one side of the
`substantially rectangular and flat polarizer 91 ….. This type
`of surface illumination device,
`in recent years, has been
`used extensively as backlights for liquid crystal display
`panels….
`Ex. 1007, at 1:15-2:2. It was these examples, in the prior art, that “require[] the use of
`
`a high output fluorescent light in the illumination device.” Id., at 1:41-42. Funamoto
`
`has no such requirement.
`
`Patent Owner’s other contention is a reference to the use of a fluorescent light
`
`source in the first embodiment. See Prelim. Resp., at 13-14 (citing Ex. 1007, at 8:17-
`
`62). But “it is improper to read limitations from a preferred embodiment described in
`
`the specification—even if it is the only embodiment—into the claims absent a clear
`
`indication in the intrinsic record that the patentee intended the claims to be so
`
`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Here,
`
`far from demonstrating that Funamoto limits itself to fluorescent light sources, the
`
`intrinsic evidence affirmatively demonstrates that the reference is not so limited.
`
`Second, Patent Owner’s effort to imply that a fluorescent light limitation exists
`
`is at odds with the purpose of Funamoto. Funamoto’s objective is to create an
`
`illumination device that is small, lightweight, and can prevent heat generation, with a
`
`6
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`focus on high output, uniform brightness, and low power consumption. See id. at 2:3-
`
`23, Abstract; see also Pet., at 9, 11. In order to create a high brightness device with
`
`lower power consumption, Funamoto discloses a device that is independent of any
`
`particular type of illumination-source. The Petition at 11 explained: “According to
`
`Funamoto, the increased use of surface-type illumination devices with a cylindrical
`
`light source and a flat polarizer as backlights for LCD panels in addition to the
`
`increased use of LCD panels for color displays calls for the LCD panels to become
`
`thinner and lighter with less power consumption.” Pet., at 11 (citing Ex. 1007, at 1:15-38)
`
`(emphasis added).
`
`Achieving the objectives of Funamoto, accordingly, was not dependent on a
`
`fluorescent light source. The Disclosure Of The Invention explains that any illuminant
`
`may be used; a fluorescent light is simply noted as one such option. Funamoto
`
`explains, for example, that “with the instant invention, by employing an illuminant
`
`longer than conventional illuminants, illumination with high illumination intensity is
`
`obtained without increasing the number of driver circuits for driving the illuminants and
`
`without concentrating the heat diffusion.” Ex. 1007, at 2:27-31 (emphasis added).
`
`According to Funamoto, “[t]hrough using an illuminant bent along the polarizer, the
`
`length per cylindrically-shaped illuminant
`
`is long, and an illuminant with large
`
`illuminating area can be used. . . . When bending an illuminant such as a fluorescent light to
`
`adjust for interference between the bent portion and the corner of the polarizer, the
`
`7
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`width or length of the entire illumination device becomes longer, preventing
`
`miniaturization.” Ex. 1007, at 2:46-57 (emphasis added).
`
`For these reasons, Petitioner respectfully submits that the Board’s finding
`
`regarding Funamoto was not supported by substantial evidence because Funamoto
`
`does not require a high output fluorescent light source;
`
`it requires an illuminant,
`
`which is a broad term encompassing, but not limited to, a fluorescent light. See
`
`Decision, at 7-9.
`
`2.
`
`A Person Of Ordinary Skill Would Have Recognized That
`An LED Is An Illuminant According To Funamoto.
`Because Funamoto is designed to achieve higher output, increased brightness,
`
`and less power consumption, Pet., at 11 (citing Ex. 1007, at 1:15-38), a person of
`
`ordinary skill in the art would (as discussed on page 13 of the Petition) have looked to
`
`LEDs as an obvious design choice to achieve these goals. As Dr. Escuti explains at
`
`¶¶76-77 (cited on pages 13 and 16 of the Petition),
`
`the embodiments, Funamoto
`when describing one of
`instructs that “because the light conversion efficiency can
`be raised, power consumption can be reduced.” [Ex. 1007]
`at 12:66-67. From this teaching, a person of ordinary skill
`in the art would want to find a light source that would
`decrease the power consumption of the illumination device.
`It was well-known at the effective filing date of the ’974
`Patent (June 27, 1995) that LEDs are commonly known as
`light sources. See e.g., Ex. 1006, U.S. Patent No. 5,005,108,
`
`8
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`at 3:15-17 (“Pristash”). Further, it was commonly known
`by those of ordinary skill in the art that LEDs decrease the
`power consumption of an illumination device as compared
`to other light sources, such as incandescent bulbs or
`fluorescent lamps.
`Escuti Decl., Ex. 1004, at ¶¶76-77.
`
`Escuti’s declaration is confirmed by Pristash, which explains that LEDs were
`
`commonly known as light sources as of June 27, 1995. See Escuti Decl., Ex. 1004, at
`
`¶77 (citing Ex. 1006, at 3:15-17).
`
`Indeed, Pristash and its litany of light sources is
`
`incorporated by reference into the ’974 Patent.
`
`See Ex. 1001, at 4:12-30.
`
`Furthermore, Lenko discloses that LEDs are preferable to incandescent bulbs or
`
`fluorescent lamps to decrease power consumption. See Escuti Decl., Ex. 1004, at ¶77
`
`(citing Ex. 1023, at 3:28-38). With the known goals of Funamoto in mind, and no
`
`actual
`
`limitation of Funamoto to use only fluorescent
`
`light sources, Petitioner
`
`explained that LEDs would have been an obvious choice to serve as light sources. See
`
`Pet. at 13; Escuti Decl., Ex. 1004, at ¶ 77.
`
`Considering the foregoing evidence, Petitioner demonstrated a reasonable
`
`likelihood of prevailing with respect to Ground 1. Petitioner respectfully requests that
`
`the Board reconsider Ground 1 and institute review of claims 1, 3-5, 7-11, and 13
`
`based on Funamoto because the Petition and Escuti Declaration demonstrated that an
`
`LED light source would have been obvious to a person of ordinary skill in the art in
`
`view of Funamoto and this was misapprehended by the Board.
`
`9
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`B.
`
`The Board Misapprehended The Argument And/Or Overlooked
`Evidence Regarding The Unpatentability Of Claims 1, 3-5, 7-8, 10-
`11, and 13 Based On Tsuchiyama In View Of Funamoto
`Additionally, Petitioner
`respectfully requests
`that
`the Board reconsider
`
`Petitioner’s proposed Ground 2 regarding claims 1, 3-5, 7-8, 10-11, and 13 based on
`
`U.S. Patent No. 5,548,271 (“Tsuchiyama”) (Ex. 1008) in view of Funamoto because it
`
`appears that the Board misapprehended the argument in the Petition and Escuti
`
`Declaration explaining the motivation to combine Funamoto with Tsuchiyama.
`
`According to the Decision, Ground 2 was denied because the Board was “not
`
`convinced by Petitioner’s rationale for making the combination” noting that “[t]he
`
`deformities missing from Tsuchiyama but present in Funamoto are used to effect
`
`control of characteristics of the light, not miniaturization of the device.” Decision, at
`
`12. But, because this was not Petitioner’s argument, Petitioner submits that the Board
`
`misapprehended or overlooked Petitioner’s obviousness argument.
`
`First, the Board appears to have misapprehended Petitioner’s argument on
`
`pages 29-30 of the Petition explaining why it would have been obvious to one of skill
`
`in the art to provide the deformities from the panel member of Funamoto to the
`
`panel member of Tsuchiyama. The Petition at pages 29-30 states:
`
`in the art would have been
`A person of ordinary skill
`motivated to combine the assembly of Tsuchiyama with the
`deformities of Funamoto because the deformities are used
`to control characteristics of the light,
`including output,
`
`10
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`uniformity, etc. See Ex. 1001, 5:2-7. Because a person of
`ordinary skill in the art would desire such control over and
`uniformity of the light in the light assemblies of both
`Tsuchiyama
`and Funamoto, one would have been
`motivated to add the deformities of Funamoto to the
`assembly of Tsuchiyama. See Escuti Decl., ¶138. Further,
`given the objectives of Tsuchiyama, the panel member
`would necessarily have deformities. See id. As previously
`described, Funamoto discloses the panel member has a
`pattern of light extracting deformities on or in at least one
`surface to cause light to be emitted from the light emitting
`surface of the panel member.
`Pet., at 29-30.
`
`Second, the Board appears to have overlooked Petitioner’s argument that the
`
`deformities would have been necessarily present in the panel member of Tsuchiyama,
`
`further supporting the motivation to combine with Funamoto. As noted above, the
`
`Petition explained that “given the objectives of Tsuchiyama, the panel member would
`
`necessarily have deformities.” Id. at 29. This was supported by Dr. Escuti who
`
`explained that “[i]f no deformities were present on or in the light conducting plate 38
`
`of Tsuchiyama, then the light input from the side would be nearly completely trapped
`
`inside and lost eventually to absorption, nearly no light could emit from the upper
`
`surface.” Escuti Decl., Ex. 1004, at ¶138.
`
`Because Petitioner provided sufficient rationale for combining the deformities
`
`11
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`in the panel member of Funamoto with the panel member of Tsuchiyama, and the
`
`Board misapprehended or overlooked this, Petitioner demonstrated a reasonable
`
`likelihood of prevailing with respect to Ground 2.
`
`The Decision alternatively notes that Petitioner has not sufficiently identified
`
`the “larger assembly of device” limitation of claim 1.g. See Decision, at 12. The
`
`Board appears to have overlooked page 34 of the Petition and the supporting
`
`citations. Claim 1.g appears in the claim chart on page 34 of the Petition. In addition
`
`to citing Ex. 1008, at 3:32-40 and Fig. 4, Petitioner also cites the Escuti Decl., at ¶142.
`
`In paragraph 142, Dr. Escuti explains that:
`
`Tsuchiyama teaches a 1) rectangular saucer-like reflection
`frame 36 and a light conducting plate 38 which are formed
`integrally with each other; 2) openings 38a and 38b at
`opposite ends of the light conducting plate 38; and 3)
`backlight LEDs 12a and alert LEDs 12b securely received
`in the openings 38a and 38b. Id. at 3:32-40. The openings
`38a and 38b are structural features in the tray that allow the
`mounting of the backlight assembly into a larger assembly or device,
`such as the pager device of Tsuchiyama.
`Escuti Decl., Ex. 1004, at ¶142 (emphasis added). As is clear from this quotation,
`
`Petitioner identified the “larger assembly or device” as “the pager device of
`
`Tsuchiyama,” to which the reflection plate is attached. See id. Thus, the Board
`
`overlooked the evidence in the Petition and support in the Escuti Decl. for claim 1.g.
`
`Considering the foregoing evidence, Petitioner demonstrated a reasonable
`
`12
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`likelihood of prevailing with respect to Ground 2. Petitioner respectfully requests that
`
`the Board reconsider Ground 2 and institute review of claims 1, 3-5, 7-8, 10-11, and
`
`13 based on Tsuchiyama in view of Funamoto because the Petition demonstrated why
`
`it would have been obvious to combine Funamoto with Tsuchiyama and this was
`
`misapprehended by the Board.
`
`V.
`
`CONCLUSION
`For these reasons, Petitioner respectfully requests that the Board grant this
`
`request for reconsideration and authorize inter partes review of claims 1, 3-5, 7-11, and
`
`13 under 35 U.S.C. § 103(a) based on Funamoto and claims 1, 3-5, 7-8, 10-11, and 13
`
`under 35 U.S.C. § 103(a) based on Tsuchiyama in view of Funamoto.
`
`Dated: February 12, 2015
`
`Respectfully submitted,
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Amanda K. Streff
`Registration No. 65,224
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile:
`312-701-7711
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`13
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`Jamie B. Beaber
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`MAYER BROWN LLP
`1999 K Street, N.W.
`Washington, DC 20006
`Telephone: 202-263-3000
`Facsimile:
`202-263-3300
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`Counsel for LG Display Co. Ltd.
`
`14
`
`
`
`Patent No. 7,434,974
`Petitioner Request for Rehearing
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 12th day of February, 2015, a copy of the
`
`attached PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §
`
`42.71(c) AND (d), was served by e-mail pursuant to Patent Owner’s consent in its
`
`Mandatory Notices Pursuant to 37 C.F.R. §§ 42.8(a)(2) and 42.8(b): jkimble@bcpc-
`
`law.com and jbragalone@bcpc-law.com.
`
`Respectfully submitted,
`
`Date: February 12, 2015
`
`By:
`
`/Robert G Pluta Reg No 50970/
`Robert G. Pluta
`Registration No. 50,970
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile:
`312-701-7711
`
`Counsel for LG Display Co., Ltd.
`
`15
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