Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 17
`Entered: March 09, 2015
`
`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
`
`
`
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 17
`Entered: March 09, 2015
`
`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
`
`
`
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`INTRODUCTION
`LG Display Co., Ltd. (“Petitioner”) filed a Petition to institute an inter
`
`partes review of claims 1, 3–5, 7–11, 13, and 17 of U.S. Patent No.
`7,434,974 (“the ’974 patent”). Paper 2 (“Pet.”). Innovative Display
`Technologies LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). In our Decision dated January 13, 2015, we denied the
`Petition as to all claims. Paper 9 (“Decision”).
`
`Petitioner requests rehearing of our decision denying institution of
`inter partes review. Paper 14 (“Req. Reh’g”). Petitioner’s stated grounds
`for rehearing are that (1) the Board overlooked or misapprehended evidence
`regarding the unpatentability of claims 1, 3–5, 7–11, and 13 based on
`Funamoto, U.S. Patent No. 5,619,351 (Ex. 1007); and (2) the Board
`overlooked or misapprehended evidence regarding the unpatentability of
`claims 1, 3–5, 7–8, 10–11, and 13 based on Tsuchiyama, U.S. Patent No.
`5,548,271 (Ex. 1008), in view of Funamoto. Req. Reh’g 2–3. For the
`reasons that follow, Petitioner’s request for rehearing is denied.
`
`
`ANALYSIS
`The applicable standard for a request for rehearing is set forth in 37
`
`C.F.R. § 42.71(d), which provides in relevant part:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. 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, opposition, or a
`reply.
`
`
`
`2
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`
`1. Funamoto
`Petitioner contended that claims 1, 3–5, 7–11, and 13 are obvious over
`Funamoto under 35 U.S.C. § 103(a). Pet. 11–25. Funamoto describes a
`surface-type illumination device for providing backlight in a liquid crystal
`display. Ex. 1007, Abstract. As disclosed, the device makes use of a
`fluorescent tube and polarizer. See id., Fig. 4; col. 6, ll. 32–48. Funamoto’s
`stated objectives include providing a surface-type illumination device that
`displays a brightness higher than conventional illumination devices without
`increasing the number of driver circuits and restricting heat radiation. Id.
`col. 2, ll. 10–14. To provide sufficient brightness for use in color displays,
`Funamoto states: “[t]his requires the use of a high output fluorescent light in
`the illumination device.” Id. col. 1, ll. 41–42.
`
`The Petition’s discussion of Funamoto acknowledged that Funamoto
`does not “explicitly” disclose use of an LED light source, a requirement of
`claim 1 and all the other challenged claims. Pet. 13. The Petition
`contended, however, that a person of ordinary skill “would easily substitute
`an LED for the fluorescent light source disclosed.” Id. (citing Ex. 1004
`¶¶76–78).
`
`Patent Owner disagreed, pointing out that “Funamoto explicitly states
`that a fluorescent light source is required.” Prelim Resp. 13. Patent Owner
`cited to the discussion in Funamoto of the requirement of a “high output
`fluorescent light in the illumination device” to achieve sufficient brightness
`for the intended application. Id. (citing Ex. 1007, col. 1, ll. 41–42).
`
`Patent Owner also contended that Petitioner failed to consider
`Funamoto “as [a] whole.” Id. at 13–14. Specifically, Patent Owner pointed
`out that to reduce temperature variations without increasing the number of
`
`3
`
`
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`IPR2014-01092
`Patent 7,434,974
`
`driver circuits, Funamoto teaches using a single L or U-shaped fluorescent
`light source instead of a straight fluorescent light source. Id. Patent Owner
`contended that Petitioner had not shown how the “generic” substitution of
`LEDs for the fluorescent tube would meet the objectives of Funamoto
`discussed supra. Id. at 14.
`
`The Board was not persuaded by Petitioner’s obviousness argument:
` We are, therefore, not persuaded by Petitioner’s
`argument that a person of ordinary skill “would easily substitute
`an LED” for the fluorescent light tube in Funamoto. Petitioner
`does not provide a convincing rationale for making the
`substitution. See KSR, 550 U.S. at 417 (Obviousness showing
`requires “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.”)
`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Furthermore, the argument ignores Funamoto’s stated
`requirement of a high output fluorescent light in the disclosed
`device. See discussion supra.
`
`
`Decision 9. Petitioner now asserts that the Board made an erroneous
`“factual finding,” namely, that Funamoto “requires” a fluorescent light
`source. Id. at 3–4.
`
`The Rehearing Request relies on new arguments that could not have
`been overlooked or misapprehended because they were not presented in the
`Petition. Nevertheless, we consider Petitioner’s new arguments and find
`them unconvincing for the reasons that follow.
`
`Petitioner asserts that the Board erred in relying on Patent Owner’s
`assertion that Funamoto “requires” a fluorescent light source. Id. at 4. We
`are not convinced by this argument. As discussed supra, there were many
`factors considered by the Board, including Petitioner’s acknowledgment that
`Funamoto does not “explicitly” disclose use of an LED light source.
`
`4
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`Decision 7–9. The Institution Decision took this into account, as well as the
`discussion in Funamoto that “to allow for use in color displays, a sufficient
`brightness is necessary to clearly show the colors displayed in the liquid
`crystal. This requires the use of a high output fluorescent light in the
`illumination device.” Ex. 1007, col. 1, ll. 37–41.
`
`The Board also considered the fact that Petitioner did not provide a
`convincing rationale for making the proposed substitution of LEDs in
`Funamoto. See KSR, 550 U.S. at 417 (Obviousness showing requires “some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)). Decision 9. The Petition itself mentions only Funamoto’s
`concern with power consumption, ignoring the stated requirement of high
`output and the specific shape of Funamoto’s light source as described in the
`patent.
`
`Petitioner’s principal argument is not persuasive, as it is based on a
`misreading both of Funamoto and the Board’s Decision. Req. Reh’g 5–6.
`Petitioner contends that the use of the term “illuminant” in the claims of
`Funamoto demonstrates that the reference is not limited to a fluorescent light
`source. Id. This argument is unavailing for a number of reasons.
`First, as discussed supra, the Institution Decision was not predicated
`
`on, nor did the Board make, a fact finding that Funamoto was “limited” to
`fluorescent light sources. Second, by focusing on a single word in the
`claims, while ignoring the rest of the patent, Petitioner is violating the
`prohibition against picking and choosing from a reference only the favorable
`parts and ignoring the rest. In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir.
`1986). (“It is impermissible within the framework of section 103 to pick and
`
`5
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`choose from any one reference only so much of it as will support a given
`position, to the exclusion of other parts necessary to the full appreciation of
`what such reference fairly suggests to one of ordinary skill in the art.”)
`(citation and inner quotes omitted). Further, the issue before us is not the
`scope of Funamoto’s claims, but the teachings of the reference as a whole.
`Id. Finally, Funamoto’s claims themselves contradict Petitioner’s argument
`because they uniformly recite “an L-shaped illuminant.” This recitation
`does not describe LEDs.
`
`Petitioner’s other arguments are similarly unavailing. For example,
`Petitioner characterizes Funamoto’s reference to a “high output fluorescent
`light” as describing the prior art. Req. Reh’g 6. We disagree. This
`argument is contradicted by Funamoto’s later description of “an illuminant
`longer than conventional illuminants” that is “bent along the polarizer”
`under the heading Disclosure of the Invention. Ex. 1007, col. 2, ll. 25–26,
`46.
`Petitioner cites this description as evidence that any illuminant may be
`
`used in Funamoto. Req. Reh’g 7. We are not convinced that this is the case,
`for Funamoto’s description of “longer than conventional illuminants” that
`are “bent” would not apply to illuminants such as LEDs.
`
`Petitioner argues that Patent Owner’s position is “at odds” with the
`purpose of Funamoto. Req. Reh’g 6–7. Petitioner further contends that
`Funamoto’s device is “independent of any particular type of illumination
`source.” Id. at 7. We are not convinced by either of these assertions. As
`noted, Funamoto addresses the problem of providing a high output
`cylindrical light source while preventing heat generation; the solution
`disclosed is to use a long light source that can be bent. Ex. 1007, col. 2, ll.
`
`6
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`47–51. Petitioner identifies no teaching or suggestion in Funamoto that a
`light source having different characteristics, i.e., one that is not long and not
`cylindrical, and which cannot be bent (i.e., an LED), can be substituted for
`the fluorescent light source disclosed by Funamoto. Nor did the Petition
`provide a convincing rationale for why a person of ordinary skill would have
`made such a substitution, given Funamoto’s focus on a particular light
`source design. Decision 9.
`
`
`The Escuti Declaration cited by Petitioner is likewise unavailing.
`Req. Reh’g 7–8. The Declaration establishes that LEDs were known in the
`art, but does not provide a convincing rationale for substituting LEDs for the
`particular light source design presented in Funamoto. Ex. 1004 ¶¶76–78.
`Petitioner relies on the discussion in the Escuti Declaration of Pristash and
`other references. Req. Reh’g 8–9. But this information could not have been
`overlooked because it was not presented in the Petition, as our rules require.
`37 C.F.R. § 42.104. Even considering this information, however, which
`generally describes known uses of LEDs, we are not convinced that a
`sufficient rationale for Petitioner’s substitution argument is presented, in
`view of Funamoto’s particular light source physical requirements .
`
`In summary, we are not convinced that anything was overlooked or
`misapprehended in denying the Petition as to Funamoto.
`
`
`
`2. Tsuchiyama and Funamoto
`Petitioner contends that claims 1, 3–5, 7–8, 10–11, and 13 are obvious
`
`over Tsuchiyama and Funamoto under 35 U.S.C. § 103(a). Pet. 26–40.
`Tsuchiyama describes a miniature data display radio pager having a
`liquid crystal display (LCD). Ex. 1008, col. 1, ll. 4–7. The display is
`
`7
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`provided with a backlight for illuminating the LCD. Id. The structure
`also includes backlight LEDs, alert LEDs, and a light conducting
`plate. Id. col. 2, ll. 29–40.
`
`Tsuchiyama describes a structure that addresses a problem arising
`when the alert LEDs are placed next to the LCD. Id. col. 1, ll. 39–50. This
`arrangement requires increasing the dimensions of the pager and prevents
`miniaturization. Id. Tsuchiyama avoids this problem by positioning the
`alert LEDs in the LCD, instead of next to the display. Id. col. 3, ll. 21–30.
`
`Petitioner acknowledged that Tsuchiyama does not “explicitly
`disclose the panel member having a pattern of light extracting deformities.”
`Pet. 29. To meet this claim element, Petitioner contended that “[a] person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Tsuchiyama with the teachings of Funamoto because they are both
`directed to a thinner and smaller device, including thinner and smaller LCD
`devices.” Pet. 28. Petitioner further contended that “[a] person of ordinary
`skill in the art would have been 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, uniformity, etc.”
`Id. at 29.
`
`Patent Owner responded that Petitioner’s statement as to why
`Tsuchiyaman and Funaamoto should be combined “is conclusory and
`unsupported by sufficient evidence and analysis.” Prelim. Resp. 21. Patent
`Owner asserted that the problem solved by Tsuchiyama (locating the alert
`LED in the backlight of a pager) is unrelated to the technical problems
`addressed by Funamoto (see discussion supra).
`
`8
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`The Board was not convinced by Petitioner’s argument, that the
`
`teachings of Tsuchiyama and Funamoto would have been combined because
`they are both directed to thinner, smaller devices. Decision 12. The Board
`determined that the deformities missing from Tsuchiyama but present in
`Funamoto are used to effect control of characteristics of the light, not
`miniaturization of the device. Id. Thus, we were not convinced by
`Petitioner’s stated rationale for making the combination. Id.
`
`Petitioner now contends that the Board misapprehended Petitioner’s
`argument why it would have been obvious to combine Tsuchiyama and
`Funamoto. Req. Reh’g 10–11. However, the argument now presented by
`Petitioner, that “[a] person of ordinary skill in the art would have been
`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, uniformity, etc.” was specifically considered in the
`Decision and determined to be insufficient.
`Petitioner’s argument, that the teachings of Tsuchiyama and
`Funamoto can be combined because they are both directed to
`thinner, smaller devices, is not convincing. The deformities
`missing from Tsuchiyama but present in Funamoto are used to
`effect control of characteristics of the light, not miniaturization
`of the device. Thus, we are not convinced by Petitioner’s
`rationale for making the combination.
`
`Decision 12. Thus, Petitioner does not identify anything that was
`overlooked or misapprehended by the Board.
`
`Petitioner relies on the Escuti Declaration (Ex. 1004 ¶138) to provide
`a rationale for combining the references. Req. Reh’g 11. The Escuti
`Declaration, in turn, cites to the ʼ974 patent (Ex 1001, col. 5, ll. 2–7),
`describing the placement of deformities in the preferred embodiment of the
`
`9
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`invention. Ex. 1004 ¶138. We are not convinced that this citation to the
`patent being challenged supports the conclusion that “one would have been
`motivated to add the deformities of Funamoto to the assembly of
`Tsuchiyama.” Id. Instead, it appears to be an impermissible hindsight
`reconstruction of the prior art in light of the patentee’s own disclosure. In re
`Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)(“It is impermissible, however,
`simply to engage in a hindsight reconstruction of the claimed invention,
`using the applicant’s structure as a template and selecting elements from
`references to fill the gaps.”)(citation omitted).
`
`Nor is there any convincing support for Petitioner’s alternative
`argument that Tschiyama “would necessarily have deformities.” Req. Reh’g
`11 (citing Pet. 29; Ex. 1004 ¶ 138). Petitioner admits that such deformities
`are not disclosed by Tsuchiyama, and provides no convincing basis in the
`Petition for this assertion. See Pet. 29. The conclusory statement “given the
`objectives of Tsuchiyama, the panel member would necessarily have
`deformities” (Pet. 29) does not provide convincing evidence.
`
`In opposing the Petition, Patent Owner also contended that the
`Tsuchiyama/Funamoto combination is lacking the “posts, tabs, or other
`structural features” recited in the claims. Prelim. Resp. 23. We agreed with
`Patent Owner that Petitioner had not identified sufficiently the “larger
`assembly or device” called for in the claims. Decision 12.
`
`Petitioner now challenges this conclusion, stating the Board
`overlooked element 1g in the claim chart appearing at page 34 of the
`Petition. Req. Reh’g 12. We are not persuaded by this argument.
`
`The claim chart for this element identifies openings 38a and 38b in the
`light conducting plate 34 of Tsuchiyama’s Figure 4 as the claimed “posts,
`
`10
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`tabs, or other structural features that provide a mount for mounting of the
`assembly into a larger assembly or device.” Pet. 34. But Tsuchiyama
`describes these openings as being there to receive the backlight and alert
`LEDs. Ex. 1008, col. 3, ll. 36–38. This description does not support
`Petitioner’s claim that these openings provide a mount for mounting the
`assembly in the tray. We are therefore unconvinced that anything has been
`misapprehended or overlooked.
`
`
`CONCLUSION
`Petitioner has not carried its burden of demonstrating that our
`
`Decision denying institution of inter partes review of claims 1, 3–5, 7–11,
`13, and 17 based on Funamoto or claims 1, 3–5, 7–8, 10–11, and 13 based
`on Tsuchiyama and Funamoto misapprehended or overlooked any matters.
`37 C.F.R. § 42.71(d).
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`IPR2014-01092
`Patent 7,434,974
`
`PETITIONER:
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`PATENT OWNER:
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`12
`
`
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