Case IPR2014-01092
`Patent 7,434,974
`Filed on behalf of Innovative Display Technologies LLC.
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`
`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
`U.S. Patent No. 7,434,974
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,974
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
`
`
`Patent 7,434,974
`Filed on behalf of Innovative Display Technologies LLC.
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`
`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
`U.S. Patent No. 7,434,974
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,974
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
`
`
`
`Case IPR2014-01092
`Patent 7,434,974
`I.
`INTRODUCTION
`
`
`
`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary Response”) to the
`
`Petition for Inter Partes Review of U.S. Patent No. 7,434,974 (the “Petition”) in
`
`IPR2014-01092 filed by LG Display Co., LTD (“LGD” or “Petitioner”).
`
`
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 7,434,974 (the “’974 patent”) because the
`
`grounds in the Petition do not demonstrate a reasonable likelihood of any claims
`
`being invalid. Furthermore, the PTAB should deny the Petition because it fails to
`
`identify several real parties-in-interest.
`
`
`
`To explain the insufficiencies of the grounds in the Petition, the Preliminary
`
`Response first provides an introduction that outlines (1) the Grounds themselves,
`
`(2) the ’974 patent and its technology, (3) the prior art references relied upon in the
`
`Grounds, and (4) claim construction issues.
`
`
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is filed within three months of the July 16, 2014, date of the Notice of Filing Date
`
`Accorded to Petition and Time for Filing Patent Owner Preliminary Response.
`
`(Paper No. 3.) Patent Owner has limited its identification of deficiencies in
`
`Petitioner’s argument in this Preliminary Response; Patent Owner does not intend
`
`to waive any arguments by not addressing them in this Preliminary Response.
`
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`Case IPR2014-01092
`Patent 7,434,974
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`
`A. Grounds in Petition
`The Petition includes three grounds of alleged invalidity – all 103(a)
`
`
`
`obviousness combinations – claims 1, 3-5, 7-11, 13 and 17 of the ’974 patent. For
`
`the following reasons, which are discussed in more detail in Section II below, none
`
`of the grounds demonstrate a reasonable likelihood of any claims being invalid:
`
`Ground 1: Unpatentable under 103(a) as obvious over Funamoto (Claims 1,
`3-5, 7-11, and 13)
`
`A. The Petition Fails to Establish a Prima Facie Case of Obviousness
`Based on Funamoto;
`
`B. No Disclosure of Element [1.a] - “at least a light emitting panel
`member. . .”;
`
`C. No Disclosure of Element [1.b] - “at least one LED light
`source…”;
`
`D. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a
`larger assembly or device”;
`
`E. No Disclosure of Element [7.a] - “at least a light emitting panel
`member. . .”;
`
`F. No Disclosure of Element [7.b] - “at least one LED light
`source…”;
`
`G. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”;
`
`H. No Disclosure of Element [13.b] - “at least one LED light
`source…”;
`
`Ground 2: Unpatentable under 103(a) as obvious over Tsuchiyama in view
`of Funamoto (Claims 1, 3-5, 7-8, 10-11, and 13)
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`Case IPR2014-01092
`Patent 7,434,974
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`
`A. The Petition Fails
`the Combination of
`to Establish That
`Tsuchiyama with Funamoto Would Have Been Obvious;
`
`B. No Disclosure of Element [1.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”;
`
`C. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a
`larger assembly or device”.
`
`D. No Disclosure of Element [7.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”;
`
`E. No Disclosure of Element [13.d] - “the panel member has a
`pattern of light extracting deformities on or in at least one
`surface”;
`
`F. No Disclosure of Element [13.g] - “tab, hole, cavity, or protrusion
`that positions the tray or housing relative to the panel member”
`
`Ground 3: Unpatentable under 103(a) as obvious over Funamoto in view
`Nakayama (Claims 13 and 17)
`
`
`A. The Petition Fails to Establish That the Combination of Funamoto
`and Nakayama Would Have Been Obvious;
`
`B. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”
`
`C. No Disclosure of Element [13.b] - “at least one LED light source .
`. .”
`
`D. No Disclosure of Element [13.g] - “tab, hole, cavity, or protrusion
`that positions the tray or housing relative to the panel member”
`
`E. No Disclosure of Element [17.a] - “at least a light emitting panel
`member. . .”
`
`F. No Disclosure of Element [17.b] - “at least one LED light source .
`
`G. No Disclosure of Element [17.h] - “tab, hole, cavity, or protrusion
`holds the additional component away from the panel member to
`
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`Case IPR2014-01092
`Patent 7,434,974
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`create an air gap between the panel member and the additional
`component”
`B. The Prior Art in the Petition
`1. Funamoto - Exhibit 1007 – Primary and Secondary Reference,
`Grounds 1 - 3
`
`
`
`United States Patent No. 5,619,351 to Funamoto et al. (“Funamoto”), was a
`
`National phase application entering into the US national stage on May 10, 1994,
`
`and issued on April 8, 1997, and it is the primary reference for Grounds 1 and 3 in
`
`the Petition and the secondary reference for Ground 2. Two applications claim
`
`priority to Funamoto and are discussed in the Petition and later in this Preliminary
`
`Response: U.S. Patent No. 6,108,060 (‘the ’060 patent”), filed May 28, 1999, and
`
`published on Aug 22, 2000, is a divisional of U.S. Patent No. 5,949,505 (“the ’505
`
`patent”), filed Aug 9, 1996 and issued on Sep 7, 1999.
`
`Funamoto teaches 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.”
`
`(Funamoto at 1:41-42.) A high output fluorescent light radiates a significant
`
`amount of heat from one side of the LCD display, which may result in large
`
`temperature distribution slope leading to color and brightness irregularities.
`
`(Funamoto at 1:34-50; 8:17-27.) Funamoto further
`
`teaches
`
`that multiple
`
`fluorescent tubes may be used, but the variations in the illumination of the
`
`fluorescent
`
`tubes
`
`requires
`
`individual adjustments and slows down
`
`the
`
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`Patent 7,434,974
`manufacturing processes. (Id. at 1:51-64.) The use of multiple fluorescent tubes is
`
`undesirable also because it causes an increased number of driver circuits. (Id. at
`
`1:65-2:2.) To maintain the requisite brightness, while reducing temperature
`
`variation, all without increasing driver circuits, Funamoto teaches the solution of
`
`using a single L-shaped or U-shaped fluorescent light source 22, 62 to replace a
`
`straight fluorescent light source 92. (Funamoto at 8:17-62), Funamoto does not
`
`discuss the use of LEDs as light sources.
`
`2. Tsuchiyama - Exhibit 1008, Primary Reference, Ground 2
`United States Patent No. 5,548,271 to Tsuchiyama et al. (“Tsuchiyama”) is
`
`particularly directed to pagers with an LED alert light located in the backlight and
`
`not next to the LCD when it is mounted in the front casing of the pager.
`
`(Tsuchiyama at 3:44-53.) Locating the alert LEDs next to the LCD is undesirable
`
`because this location would take up space on the front casing and limit
`
`miniaturization. (Tsuchiyama at 1:39-50.) Tsuchiyama teaches a structure of a
`
`backlight 32 accommodating the backlight LED 12a and alert LEDs 12b, a light
`
`conducting plate 32a is received in the reflection frame 30, and a diffusion sheet
`
`32b provided on the light conducting plate 32a.
`
`3. Nakayama- Exhibit 1009, Secondary Reference
`U.S. Patent No. 5,654,779 to Nakayama et al. (“Nakayama”) was filed on
`
`December 29, 1994, and issued on August 5, 1997. The Petition uses Nakayama as
`
`a secondary reference for Ground 3 only. Nakayama is titled “Liquid Crystal
`
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`Patent 7,434,974
`Display device having a removable holding member for the light source.” One of
`
`its objectives is to provide a liquid crystal display device in which a part of the
`
`light guiding board can be removed from the lighting unit section without
`
`removing the frames. (Nakayama at 2:12-18.) The process of removing the frame
`
`involves cumbersome operations in disassembly and assembly. (Id. at 1:38-46)
`
`Nakayama is entirely silent on improving the temperature uniformity or
`
`minimizing the number of driver circuits.
`
`C. Claim Construction
`The arguments in this Response stand despite Petitioner’s proposed
`
`construction and despite the broadest reasonable construction of the terms. This
`
`Preliminary Response does not take a position on claim construction at this point.
`
`Patent Owner reserves the right to propose its own construction of any and all
`
`claim terms for which an issue arises in the event the PTAB institutes this IPR.
`
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2002) has ruled on constructions of terms in
`
`this patent, including entering an agreed construction of “deformities” that
`
`Petitioner adopts in its Petition. (Petition at 8) (Ex. 2002 at 58).
`
`
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`Case IPR2014-01092
`Patent 7,434,974
`II. GROUND 1 - Funamoto (Claims 1, 3-5, 7-11, and 13)
`A. The Petition Fails to Establish a Prima Facie Case of Obviousness
`Based on Funamoto.
`
`The Petition alleges that claims 1, 3-5, 7-11, and 13 are rendered obvious by
`
`Funamoto but fails to establish the prerequisites for demonstrating prima facie
`
`obviousness.
`
`As confirmed by the Supreme Court in KSR, an obviousness analysis begins
`
`with a consideration of the Graham factors. KSR International Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406-407 (2007) (citing Graham v. John Deere Co., 383 U.S. 1
`
`(1966)). The Graham factors are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed invention
`
`and the prior art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`
`Graham at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
`
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`Patent 7,434,974
`obvious. Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983). But this
`
`improper element-by-element analysis is exactly the approach used in the Petition.
`
`The Petition refers to a claim chart for Ground 1 and the Escuti Declaration
`
`for an element-by-element comparison of the claimed elements to the alleged
`
`teachings of Funamoto. (See Petition at pp. 15-26; Escuti Declaration at pp. 30-
`
`41). For example, the Petition and the accompanying Escuti Declaration argue that
`
`“a person of ordinary skill in the art would easily substitute an LED for the
`
`fluorescent light source disclosed.” (Petition at p 11.) But this allegation is focused
`
`narrowly on the difference of between the claimed LED light source and the
`
`fluorescent light source of Funamoto.
`
`The Petition fails to consider Funamoto as whole and account for the
`
`potential negative impacts to Funamoto’s device if the proposed substitution were
`
`implemented. The Preliminary Response will explain below how the negative
`
`impacts of the proposed substitution would indeed diverge from and teach away
`
`from the proposed substitution, but as a matter of law, the Petition’s obviousness
`
`inquiry is improperly limited to a difference from the prior art and a showing that
`
`the difference alone would have been obvious. Such an improper obviousness
`
`inquiry is deficient and cannot be the basis for establishing a prima facie case of
`
`obviousness.
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`Because the Petition fails to demonstrate a prima facie case that Funamoto
`
`as a whole would render the claimed subject matter obvious, Ground 1 fails for all
`
`claims.
`
`B. No Disclosure of Element [1.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 1 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`emitting surface….” That limitation is referenced as “[1.a]” in the Petition. See,
`
`e.g., Petition at p. 15.
`
`The Petitioner alleges that the polarizer 21 of Funamoto is the panel member
`
`recited in claim 1 but admits that “it is not immediately clear that the polarizer is a
`
`light emitting panel member.” (Petition at p. 12.) Indeed, a polarizer operates to
`
`filter out a portion of incident unpolarized light so as to provide polarized light.
`
`One of ordinary skill in the art would appreciate that the polarizer 21 of Funamoto
`
`would result in a significant light loss as the portion of incident light not having the
`
`desired polarization would be filtered out. With this understanding, one of ordinary
`
`skill in the art would have no reason to consider the polarizer 21 of Funamoto as a
`
`light emitting panel member as recited in claim 1 of the ’974 patent.
`
`Despite the Petitioner’s admission as discussed above, the Petitioner refers
`
`to U.S. Patent No. 6,108,060 (‘the ’060 patent”) in an attempt to substitute
`
`Funamoto’s teaching of a polarizer 21 with language in the ’060 patent. The ’060
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`patent is a divisional grandchild of Funamoto. The Petition alleges that the ’060
`
`Patent replaced the term “polarizer” with the phrase “light guide plate.” (Petition at
`
`p. 12) The Petition goes on to import the phrase “light guide plate” into Funamoto
`
`in place of the term “polarizer” relying merely on a conclusory statement that the
`
`term “polarizer” as used in Funamoto “must be a translation error.” (Escuti
`
`Declaration at pp. 34-35)
`
`The Petition does not allege the teachings of Funamoto would lead one of
`
`ordinary skill in the art to understand term “polarizer” differently from its ordinary
`
`meaning. The Petition’s importing of the language from the ’060 patent disregards
`
`the plain language in Funamoto. The term “polarizer” is a term of art. It is unlikely
`
`that the meanings of the term “polarizer” and phrase “light guide plate” would be
`
`confused or used in error by one of ordinary skill in the art.
`
`Moreover, as admitted in the Petition, the ’060 patent resulted from an
`
`intervening patent, the U.S. Patent No. 5,949,505 (“the ’505 patent”), but Petition
`
`ignores the language used in the ’505 patent without explanation and focuses only
`
`on the ’060 patent. (Escuti Declaration at pp. 34-35.) But the term “polarizer” is
`
`consistently used in both Funamoto and the ’505 patent during the lengthy
`
`prosecution of Funamoto and the ’505 patent, spanning more than 5 years from
`
`1994 to 1999.
`
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`Patent 7,434,974
`Even assuming arguendo that the term “polarizer” was a translation error,
`
`Funamoto would have been a non-enabling disclosure at the time of the present
`
`invention. The ’060 patent was published on August 22, 2000 – more than 5 years
`
`after the effective filing date of the ’974 patent. Although Funamoto was alleged to
`
`have a §102(e) date of May 10, 1994, the alleged corrected translation was not
`
`available to one of ordinary skill in the art until more than 6 years later – well after
`
`the effective filing date of the ’974 patent. The Petition has failed to explain how
`
`one of ordinary skill in the art would be enabled to arrive at the claimed subject
`
`matter without undue experimentation despite the alleged translation error for one
`
`of the key components of Funamoto.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the
`
`Petition fails for Claim 1 and each of its dependent claims.
`
`C. No Disclosure of Element [1.b] - “at least one LED light source
`. . .”
`
`Independent Claim 1 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[1.b]” in the Petition. See, e.g., Petition at p. 16.
`
`The Petition admits that Funamoto does not teach an LED light source as
`
`recited in claim 1. (Petition at p. 12) The Petition attempts to cure the deficiencies
`
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`of Funamoto by arguing that it would be obvious to “substitute an LED for the
`
`fluorescent light source disclosed.” (Petition at p 11.) Patent Owner disagrees.
`
`Funamoto explicitly states that a fluorescent light source is required, and therefore
`
`it would have not been obvious to “substitute an LED” as Petitioner argues. (See
`
`Funamoto at 1:41-42 (“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.”) (emphasis added)).
`
`Furthermore, the Petition’s substitution argument does not consider
`
`Funamoto as whole. A proper Graham inquiry must include the consideration of
`
`the potential negative impacts to Funamoto’s device if the proposed substitution
`
`were implemented. Funamoto teaches that a high output fluorescent light radiates a
`
`significant amount of heat from one side of the LCD display, which may result in
`
`large temperature distribution slope leading to color and brightness irregularities.
`
`(Funamoto at 1:34-50; 8:17-27.) Funamoto further
`
`teaches
`
`that multiple
`
`fluorescent tubes may be used but the variations in the illumination of the
`
`fluorescent
`
`tubes
`
`requires
`
`individual adjustments and slows down
`
`the
`
`manufacturing processes. (Id. at 1:51-64.) The use of multiple fluorescent tubes is
`
`undesirable also because the need for increased number of driver circuits. (Id. at
`
`1:65-2:2.) To reduce temperature variation without increasing driver circuits,
`
`Funamoto teaches the solution of using of a single L-shaped or U-shaped
`
`
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`fluorescent light source 22, 62 to replace a straight fluorescent light source 92.
`
`(Funamoto at 8:17-62)
`
`The Petition alleges that “an LED would have been an obvious design
`
`choice at the time of the Funamoto, selected for its efficiency and low power
`
`consumption, among other things.” (Petition at 13.) If it were such an obvious
`
`design choice, why was Funamoto entirely silent on the use of an LED light
`
`source?
`
`The Petition does not describe the kind of LED or the arrangement of LEDs
`
`that “would have been an obvious design choice” to replace the L-shaped or U-
`
`shaped fluorescent light source. (Petition at 13). The Petition does not allege its
`
`generic substitution of an LED will achieve the brightness required by Funamoto
`
`and otherwise achieved by its Funamoto’s fluorescent light source. The Petition
`
`does not allege that the generic substitution of LEDs can maintain the reduced
`
`number of driver circuits required by Funamoto or the temperature uniformity
`
`required by Funamoto. These are crucial pieces of information that are missing in
`
`the Petition’s obviousness analysis. The single U-shaped or L-shaped fluorescent
`
`light of Funamoto is not simply a swappable part with a single generic LED.
`
`Accordingly, for at least the above discussed reasons, the Petition fails to allege a
`
`prima facie case of obviousness based on Funamoto. Ground 1 of the Petition fails
`
`for Claim 1 and each of its dependent claims.
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`D. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a
`larger assembly or device”
`
`Independent Claim 1 of the ’974 patent recites the following limitation:
`
`“wherein the tray or housing…has posts, tabs, or other structural features that
`
`provide a mount for mounting of the assembly into a larger assembly or device.”
`
`That limitation is referenced as “[1.g]” in the Petition. See, e.g., Petition at p. 19.
`
`The Petition alleges that “[t]he structural feature represented by element 4
`
`[of Funamoto] allows for the bottom tray with all of the components within, to be
`
`mounted into the top case.” (Petition at p. 13) The Escuti declaration cited in the
`
`Petition further argues that the illumination device 20 of Funamoto is installed in
`
`lower case 3 and “this assembly can be mounted into a larger assembly or device,
`
`for example, the mounting of the upper case with the tooth.” (Escuti Declaration at
`
`p. 40). But, the Petition already defines the upper case (2) as part of the tray.
`
`(Petition at 16, element [1.c] (“an illumination device to be described later
`
`sandwiched between upper case 2 and lower case 3”) (emphasis in Petition).).
`
`Thus, mounting upper case 2 to lower case 3, if it exists, to form the alleged tray
`
`does not result in a “mounting of the assembly into a larger assembly or device.”
`
`(emphasis added). Instead, it is simply putting together the parts of the alleged tray,
`
`i.e., upper case 2 and lower case 3 are already the tray.
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`The Petition’s only other allegation made its claim chart for this limitation is
`
`devoid of analysis. The Petition’s claim chart for Ground 1 includes a citation to a
`
`passage in Funamoto referring the frames 30, 31, 38, and 39, but the Petition does
`
`not otherwise specifically allege or provide any analysis to support an allegation
`
`that the frames 30, 31, 38, and 39 are “posts, tabs, or other structural features that
`
`provide a mount for mounting….”
`
`The Petition’s citation to the Escuti Declaration in the claim chart cannot
`
`cure the Petition’s lack of analysis. Under 37 C.F.R. § 42.22(a)(2), the petition
`
`must contain a “full statement of the reasons for the relief requested, including a
`
`detailed explanation of the significance of the evidence.” The rules also prohibit
`
`arguments made in a supporting document from being incorporated by reference
`
`into a petition. See 37 C.F.R. § 42.6(a)(3). For that reason, information presented
`
`in the Escuti Declaration in relation to claim 1 that is not sufficiently included in
`
`the Petition itself should not be considered.
`
`For at least the above discussed reasons, the Petition has not established that
`
`the claimed feature of “posts, tabs, or other structural features that provide a mount
`
`for mounting of the assembly into a larger assembly or device” is disclosed or
`
`rendered obvious by Funamoto. Thus, Ground 1 fails for Claim 1 and each of its
`
`dependent claims because Petitioner has not made a prima facie case of
`
`obviousness.
`
`
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`16
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`Patent 7,434,974
`E. No Disclosure of Element [7.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 7 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`emitting surface….” That limitation is referenced as “[7.a]” in the Petition. See,
`
`e.g., Petition at p. 20.
`
`For the same reasons provided in Section II.B, Funamoto does not disclose
`
`this claim element or render it obvious. The Petition again attempts to import
`
`language from the ’060 patent based solely on a conclusory allegation of a
`
`translation error, which disregards Funamoto’s consistent teaching of a polarizer
`
`for over 5 years. Moreover, even assuming arguendo that the term “polarizer” was
`
`a translation error, the Petition fails to explain how one of ordinary skill in the art
`
`would be enabled to arrive at the claimed subject matter without undue
`
`experimentation despite the alleged translation error for one of the key components
`
`of Funamoto.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the
`
`Petition fails for Claim 7 and each of its dependent claims.
`
`
`
`
`
`17
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`Case IPR2014-01092
`Patent 7,434,974
`F. No Disclosure of Element [7.b] - “at least one LED light source
`. . .”
`
`Independent Claim 7 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[7.b]” in the Petition. See, e.g., Petition at p. 21.
`
`For the same reasons provided in Section II.C, Funamoto does not disclose
`
`this claim element or render it obvious. The Petition admits that Funamoto does
`
`not teach an LED light source. (Petition at p. 12.) The Petition attempts to cure the
`
`deficiencies of Funamoto by arguing that it would be obvious to “substitute an
`
`LED for the fluorescent light source disclosed.” (Petition at p 11.). But as
`
`discussed above, this allegation does not consider Funamoto as whole. It does not
`
`show that the substitution of a generic LED would achieve the brightness required
`
`by Funamoto, and it does not show that it would achieve the explicit objectives of
`
`Funamoto to minimize driver circuits and temperature variations.
`
`Accordingly, for at least the above discussed reasons, the Petition fails to
`
`allege a prima facie case of obviousness based on Funamoto. Ground 1 of the
`
`Petition fails for Claim 7 and each of its dependent claims.
`
`G. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 13 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`
`
`18
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`Case IPR2014-01092
`Patent 7,434,974
`emitting surface….” That limitation is referenced as “[13.a]” in the Petition. See,
`
`e.g., Petition at p. 24.
`
`For the same reasons provided in Section II.B, Funamoto does not disclose
`
`this claim element or render it obvious. The Petition again attempts to import
`
`language from the ’060 patent based solely on a conclusory allegation of a
`
`translation error and disregards Funamoto’s consistent teaching of a polarizer for
`
`over 5 years. Moreover, even assuming arguendo that the term “polarizer” was a
`
`translation error, the Petition fails to explain how one of ordinary skill in the art
`
`would be enabled to arrive at the claimed subject matter without undue
`
`experimentation despite the alleged translation error for one of the key components
`
`of Funamoto.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the
`
`Petition fails for Claim 13 and each of its dependent claims.
`
`H. No Disclosure of Element [13.b] - “at least one LED light source
`. . .”
`
`Independent Claim 13 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[13.b]” in the Petition. See, e.g., Petition at p. 24.
`
`
`
`19
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`Case IPR2014-01092
`Patent 7,434,974
`For the same reasons provided in Section II.C, Funamoto does not disclose
`
`this claim element or render it obvious. The Petition admits that Funamoto does
`
`not teach an LED light source. (Petition at p. 12.) The Petition attempts to cure the
`
`deficiencies of Funamoto by arguing that it would be obvious to “substitute an
`
`LED for the fluorescent light source disclosed.” (Petition at p 11.). But as
`
`discussed above, this allegation does not consider Funamoto as whole. It does not
`
`show that the substitution of a generic LED would achieve the brightness required
`
`by Funamoto, and it does not show that it would achieve the explicit objectives of
`
`Funamoto to minimize driver circuits and temperature variations.
`
`Accordingly, for at least the above discussed reasons, the Petition fails to
`
`allege a prima facie case of obviousness based on Funamoto. Ground 1 of the
`
`Petition fails for Claim 13 and each of its dependent claims.
`
`III. GROUND 2 - TSUCHIYAMA IN VIEW OF FUNAMOTO (CLAIMS
`1, 3-5, 7-8, 10-11, and 13)
`A. The Petition Fails to Establish That the Combination of
`Tsuchiyama with Funamoto Would Have Been Obvious
`
`This Preliminary Response has already demonstrated that the Petition has
`
`failed to conduct the requisite Graham inquiry and consider Funamoto’s teaching
`
`as a whole. (See Section II.A supra.) For its alleged combination of Tsuchiyama
`
`and Funamoto, the Petition continues to fail to make the requisite inquiry and
`
`justify the alleged combination with articulated reasoning with some rational
`
`
`
`20
`
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`Case IPR2014-01092
`Patent 7,434,974
`underpinning instead of unsupported conclusory statements. “[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006).
`
`Over-generalizing the teachings of Tsuchiyama and Funamoto, the Petition
`
`alleges that “[a] person of ordinary skill in the art would have been motivated to
`
`combine the teaching of Tsuchiyama with the teachings of Funamoto because they
`
`are both directed to a thinner and smaller device.” (Petition at p. 28, emphasis
`
`added.) The Petition’s statement is conclusory and unsupported by sufficient
`
`evidence or analysis. While Tsuchiyama is directed to a miniaturized design for a
`
`pager, the technical solution disclosed by Tsuchiyama is more particularly directed
`
`to locating an LED alert light in the backlight of a pager. (Tsuchiyama at 3:44-53)
`
`Funamoto, on the other hand, is directed to technical problems unrelated to
`
`Tsuchiyama. As discussed above in Sections II.A and C, Funamoto discloses
`
`technical solutions for minimizing the number of driver circuits and temperature
`
`variations. These objectives of Funamoto are recognized in the Petition for
`
`Grounds 1 and 3, yet the Petition ignores them here for the convenience of aligning
`
`Tsuchiyama and Funamoto for Ground 2. (Petition at 11 and 40.)
`
`
`
`21
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`Case IPR2014-01092
`Patent 7,434,974
`Ultimately, the Petition fails to explain why a person of ordinary skill in the
`
`art reading Tsuchiyama would seek out Funamoto when these two references are
`
`directed at vastly different technical problems. Because the Petition fails to
`
`demonstrate a prima facie case that the combination of Tsuchiyama and Funamoto
`
`was obvious, Ground 2 fails for all claims.
`
`B. No Disclosure of Element [1.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”
`
`Independent Claim 1 of the ’974 patent recites the following limitation:
`
`“wherein 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.” That limitation is referenced as “[1.d]” in the Petition. (See, e.g.,
`
`Petition at 32-33.)
`
`The Petition admits that Tsuchiyama does not teach a pattern on or in at least
`
`one surface of the panel member as recited in claim 1. (Petition at p. 29.) The
`
`Petition attempts to cure the deficiencies of Tsuchiyama by arguing that “a person
`
`of ordinary skill would have been motivated to combine the assembly of
`
`Tsuchiyama with the deformities of Funamoto because the
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