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: IPR2014-01096
`
`Patent 7,537,370
`_______________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c) AND (d)
`
`

`
`Patent No. 7,537,370
`Petitioner Request for Rehearing
`
`TABLE OF CONTENTS
`
`INTRODUCTION........................................................................................1
`I.
`PRECISE RELIEF REQUESTED .............................................................2
`II.
`III. LEGAL STANDARD ....................................................................................3
`IV. ARGUMENT .................................................................................................3
`A.
`The Board Overlooked Or Misapprehended Evidence Regarding The
`Unpatentability Of Claims 1, 4, And 29 Based On Kobayashi...............3
`The Board Overlooked or Misapprehended Evidence Regarding The
`Unpatentability Of Claims 13 And 47 Based On Kobayashi In View of
`Pristash..................................................................................................7
`CONCLUSION............................................................................................10
`
`V.
`
`B.
`
`i
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`

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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`I.
`
`INTRODUCTION
`On July 1, 2014 Petitioner filed a Petition, which was subsequently corrected
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`for reasons irrelevant here, for Inter Partes Review of U.S. Patent No. 7,537,370 (“the
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`’370 Patent”) (“Petition” or “Pet.”) containing the following grounds:
`
`Ground #
`1
`
`Ground
`103(a)
`
`Prior art
`Pristash
`
`Exhibit(s) #
`1006
`
`Ohe
`Kobayashi
`Kobayashi in view
`of Pristash
`See Corrected Petition for Inter Partes Review of the ’370 Patent, at 9.
`
`2
`3
`4
`
`102(b)
`102(a)
`103(a)
`
`1007
`1008
`1008 and 1006
`
`Claims
`1, 4, 8, 13, 15, 27,
`29, 47
`1, 4, 8, 29
`1, 4, 29
`13, 15, 27, 47
`
`On January 13, 2015, the Board authorized institution of inter partes review of
`
`the ’370 Patent based on the following grounds:
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`1) Anticipation of claims 15 and 27 by Pristash (Ground 1) and
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`2) Obviousness of claims 15 and 27 over Kobayashi and Pristash (Ground
`
`4).
`
`See Decision to Institute, Paper No. 11, at 18.
`
`Pursuant to 37 C.F.R 42.71(c) and (d), Petitioner respectfully requests partial
`
`reconsideration of the Board’s Decision of Institution of Inter Partes Review (Paper
`
`No. 11)
`
`(“Decision”).
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`Specifically,
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`this request seeks reconsideration of
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`the
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`unauthorized claims of Grounds 3 and 4 based on Kobayashi and Pristash presented
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`in the Petition. Petitioner respectfully requests rehearing of these grounds because
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`the Board overlooked or misapprehended evidence regarding the deformities
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`1
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`disclosed in Kobayashi.
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`This request is timely under 37 C.F.R. §42.71(d)(1) because it was filed within
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`fourteen days of the Board’s decision to institute a trial on the ’370 Patent.
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`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
`
`Prior art
`
`102(a)
`
`Kobayashi
`
`3
`
`4
`
`Claims
`
`1, 4, 29
`
`Evidence Supporting
`Relief Requested
`1) Pet. at 39-42 (citing
`Ex. 1008, Fig.1, 4:25-29
`and 4:33-35, 4:39-50, and
`6:30-40); and
`2) Pet. at 41-42 (citing
`Ex. 1008, Fig. 1, 4:33-63)
`1) Pet. at 39-42 (citing
`Ex. 1008, Fig.1, 4:25-29
`and 4:33-35, 4:39-50, and
`6:30-40);
`2) Pet. at 41-42 (citing
`Ex. 1008, Fig. 1, 4:33-
`63);
`3) Pet. at 51, (citing Ex.
`1008, 7:12-17);
`4) Ex. 1004, ¶246; and
`
`103(a)
`
`Kobayashi in
`view of Pristash
`
`13, 47
`
`2
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`5) Decision, at 9, 13, 15.
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`III. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing, without
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`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).
`
`IV. ARGUMENT
`A.
`The Board Overlooked Or Misapprehended Evidence Regarding
`The Unpatentability Of Claims 1, 4, And 29 Based On Kobayashi
`Petitioner respectfully requests that the Board reconsider Petitioner’s proposed
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`Ground 3 regarding claims 1, 4, and 29 based on U.S. Patent No. 5,408,388
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`(“Kobayashi”)
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`(Ex. 1008) because it appears that
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`the Board overlooked or
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`misapprehended Fig. 1 and at least 4:25-29, 4:33-35, and 4:45-50, cited on pages 39-42
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`of the Petition, disclosing deformities that are “projections or depression on or in
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`both sides” of the panel member as required by claims 1, 4, and 29.
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`The Board agrees that Kobayashi discloses different deformities on both sides
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`of the panel member. Specifically, the Decision notes that Kobayashi discloses that
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`“[o]ne side of the plate has prismatic cuts . . . [and] [t]he other side has a reflecting
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`3
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`

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`Patent No. 7,537,370
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`Petitioner Request for RehearingPetitioner Request for Rehearing
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`
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`
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`finish, e.g., an array of spot-shaped light reflecting layers.” Decision, at 13 (citing Ex.shaped light reflecting layers.” Decision, at 13 (citing Ex.shaped light reflecting layers.” Decision, at 13 (citing Ex.
`
`
`
`
`
`1008, at 4:10-11, 4:28-29). According to the Decision, Ground 3 based on Kobayashi29). According to the Decision, Ground 3 based on Kobayashi29). According to the Decision, Ground 3 based on Kobayashi
`
`
`
`
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`was denied because “Petitioner [did] not explain how the spotwas denied because “Petitioner [did] not explain how the spot-shaped reflectingshaped reflecting
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`
`
`
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`layers, produced by white paint or aluminum vapor deposition, qualify as ‘projectionsproduced by white paint or aluminum vapor deposition, qualify as ‘projectionsproduced by white paint or aluminum vapor deposition, qualify as ‘projections
`
`
`
`
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`or depressions.’” Decision, at 14. The Petition, however, provided evidenceor depressions.’” Decision, at 14. The Petition, however, provided evidenceor depressions.’” Decision, at 14. The Petition, however, provided evidence
`
`
`
`
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`demonstrating how the spot--shaped reflecting layers 22 of Kobayashi are projectionsshaped reflecting layers 22 of Kobayashi are projections
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`
`
`
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`on the surface of light transmitting plate 2 that the Board overlooked in its Decision.of light transmitting plate 2 that the Board overlooked in its Decision.of light transmitting plate 2 that the Board overlooked in its Decision.
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`
`
`
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`Three points are critical.Three points are critical. First, with reference to Figure 1 of Kobayashiwith reference to Figure 1 of Kobayashi
`
`
`
`
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`(Petition, at page 39), Petitioner explains that Kobayashi discloses “prismatic cuts 21page 39), Petitioner explains that Kobayashi discloses “prismatic cuts 21page 39), Petitioner explains that Kobayashi discloses “prismatic cuts 21
`
`
`
`
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`on both the top surface and a spot shaped light reflecting area 22 on the bottomon both the top surface and a spot shaped light reflecting area 22 on the bottomon both the top surface and a spot shaped light reflecting area 22 on the bottom
`
`
`
`
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`surface (deformities on both sides) of the panel member.” Pet. at 39. Figure 1surface (deformities on both sides) of the panel member.” Pet. at 39. Figure 1surface (deformities on both sides) of the panel member.” Pet. at 39. Figure 1—
`
`
`
`
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`which Petitioner respectfully submits the Board overlooked by failing to address it inpectfully submits the Board overlooked by failing to address it inpectfully submits the Board overlooked by failing to address it in
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`its decision—plainly shows light reflecting spots 22 projecting from the bottom
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`surface of light transmitting plate 2. That is, the portion of the Figure, magnified in
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`the above depiction, illustrates that the deformities in the plate project outward from
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`the bottom surface of the light transmitting plate 2.
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`Second, Petitioner also explains that the depth of the deformities varies; “the
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`deformities can be either prismatic cuts or reflecting spots and they can vary in size,
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`shape, density, and depth.” Pet. at 40 (citing Ex. 1008, 4:25-29, 4:33-35, 4:39-50, 2:2,
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`5:1-4, 6:30-40, 7:12-17, Figs. 1-2) (emphasis added). The only way to understand a
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`difference in depth of deformities is if those deformities either project from or are
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`depressed into the surface of the panel.
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`Third, Petitioner shows that the deformities are created via “layers,” which
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`also necessarily demonstrates three-dimensional depth. For example, the Petition
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`cites Ex. 1008, 4:25-29 and 4:33-351, which explains that “[t]he rear surface of the
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`light transmitting plate 2 has a reflecting finish, e.g., an array of spot-shaped light
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`reflecting layers 22 applied directly thereto.” Further, the citation to Ex. 1008, 4:45-
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`50, explains that the “spot-shaped reflecting layers 22” are layers of material “e.g., of a
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`white paint such as titanium oxide or dioxide or aluminum oxide, or aluminum vapor
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`deposition [or] . . . may alternatively be made of a material of a higher reflectance than
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`1 This evidence was also provided in the claim chart in the Petition on pages
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`41-42 (citing Ex. 1008, Fig. 1, 4:25-29, and 4:33-63).
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`5
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`reflecting sheet 5,” which are projections on the bottom surface of the light guide,
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`clearly shown in Figure 1 at page 39 of the Petition and in Kobayashi. This evidence
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`explains that the array of spot-shaped light reflecting layers 22 are composed of layers
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`of material applied directly onto the surface of the light transmitting plate 2, which
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`creates spots of a certain size and depth.
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`Because the Petition demonstrated that Kobayashi discloses that both the
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`prismatic cuts 21 and the spot-shaped reflecting layers 22 are projections on the
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`surface of light transmitting plate 2, Petitioner provided sufficient evidence in its
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`Petition that Kobayashi discloses deformities on both sides of the panel member that
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`are “projections or depressions” as required by claims 1, 4, and 29 that the Board
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`appears to have overlooked in its Decision.2
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`Considering the foregoing evidence, Petitioner demonstrated a reasonable
`
`likelihood of prevailing with respect to Ground 3. Petitioner respectfully requests that
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`the Board reconsider Ground 3 and institute review of claims 1, 4, and 29 based on
`
`2 Petitioner respectfully submits that the Board abused its discretion in
`
`reaching a contrary result based on ¶ 203 of the Escuti Declaration. While Escuti did
`
`state that “deformities” are generally “understood to be ‘any change in shape or
`
`geometry,’” that is not inconsistent with Petitioner’s argument (at pp. 39-42) and Dr.
`
`Escuti’s testimony (at ¶¶203-205) that the specific kind of deformities disclosed by
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`Kobayashi are “projections or depressions.”
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`Kobayashi because the Petition demonstrated how the one alleged missing limitation
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`was disclosed in Kobayashi and this was overlooked by the Board.
`
`B.
`
`The Board Overlooked or Misapprehended Evidence Regarding
`The Unpatentability Of Claims 13 And 47 Based On Kobayashi In
`View of Pristash
`Petitioner also respectfully requests that the Board reconsider Petitioner’s
`
`proposed Ground 4 regarding claims 13 and 47 based on Kobayashi
`
`in view of
`
`Pristash.
`
`The Board agreed with a substantial portion of Petitioner’s argument. The
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`Board agreed with Petitioner that the transition device of Pristash is a “transition
`
`region” within the meaning of claims 13 and 47 of the ’370 Patent. See Decision, at 9.
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`Moreover, the Board concluded that “Petitioner has provided sufficient rationale for
`
`combining Pristash and Kobayashi, and that combining the references would provide
`
`a structure meeting the claims.” Id. at 15.
`
`The Board denied Ground 4 regarding claims 13 and 47 only because Petitioner
`
`failed to show that either Kobayashi or Pristash disclosed the limitation “light
`
`extracting deformities on or in one of the sides are of a different type than the light
`
`extracting deformities on or in the other side of the panel member.” Id. The Board,
`
`however, acknowledges that Kobayashi discloses prismatic cuts 21 on one side of the
`
`panel member and spot-shaped reflecting layers 22 on the other side, i.e., different
`
`types of deformities on different sides. Id. at 13. The issue here, thus, is the same as
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`7
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`the issue discussed above—whether the deformities of Kobayashi are “projections or
`
`depressions.”
`
`First, the Board noted that Kobayashi discloses different types of deformities
`
`on different sides of the panel member—the Board explained squarely that “[o]ne side
`
`of the plate has prismatic cuts” while the “other side has … an array of spot-shaped
`
`light reflecting layers.” Decision, at 13 (citing Ex. 1008, at 4:10-11, 4:28-29); see also
`
`Pet. at 48-49 (citing 4:33-38 (disclosing prismatic cuts 21 having a triangular cross
`
`section on the front surface compared to reflecting spot made with layers of
`
`aluminum or with a satin finish on the bottom surface)).
`
`Petitioner
`
`also provided additional
`
`evidence of Kobayashi disclosing
`
`deformities on one side that are a different type than deformities on the other side
`
`that the Board may have overlooked with respect to claims 13 and 47. For example,
`
`on page 51 of the Petition, Petitioner cites Ex. 1008, at 7:12-17, which states that
`
`“[t]he front portion of the light transmitting plate 7 has the prismatic cuts 21 or
`
`hairline finish 23. The rear portion of the light transmitting plate 7 has a reflecting
`
`finish of an array of reflecting spots 22 or of a combination of the satin finish 24 and
`
`the assembly of spot-shaped layers 25.” This is further supported and explained by
`
`the Escuti Declaration at Paragraph 246, cited on page 51 of the Petition.
`
`In
`
`Paragraph 246, Dr. Escuti explained that:
`
`the deformities on the front portion are prismatic cuts 21
`and the deformities on the rear surface have a reflecting
`
`8
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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`finish, for example an array of spot-shaped light reflecting
`layers 22. Ex. 1008, Kobayashi, at 4:25-29. “The prismatic
`cuts may be a knurled or hairline finish.” Id. at 2:40; see also
`4:39-44, 4:45-50. The rear portion may have a satin finish
`Id. at
`24 with minute depressions having suitable shapes.
`In sum, “[t]he front portion of
`6:30-33.
`the light
`transmitting plate 7 has the prismatic cuts 21 or hairline
`finish 23. The rear portion of the light transmitting plate 7
`has a reflecting finish of an array of reflecting spots 22 or
`of a combination of
`the satin finish 24 and the
`assembly of spot-shaped layers 25.”
`Id. at 7:12-17
`(emphasis added).
`Prismatic cuts, a hairline finish,
`reflecting sports, and a satin finish are all deformities of a
`different type.
`Thus, the Petition and supporting Escuti Declaration demonstrated that Kobayashi
`
`discloses deformities of different types on different sides of the panel member.
`
`Second,
`
`these deformities—the prismatic cuts and the spot-shaped light
`
`reflecting layers—qualify as deformities as used in this context because they are
`
`“projections or depressions.” The prismatic cuts are undoubtedly “depressions,”
`
`while—for reasons discussed above in Section IV.A—the spots are “projections.”
`
`Petitioner
`
`respectfully submits that
`
`the Board overlooked this evidence and
`
`explanation in the Petition demonstrating that the different deformities of Kobayashi
`
`are “projections or depressions.”
`
`For these reasons, the Petition provided sufficient rationale that Kobayashi in
`
`9
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`

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`Patent No. 7,537,370
`Petitioner Request for Rehearing
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`view of Pristash discloses “light extracting deformities on or in one of the sides are of
`
`a different type than the light extracting deformities on or in the other side of the
`
`panel member.” Kobayashi discloses different types of deformities on each side of
`
`the panel member that are projections or depression on the surface. And, as the
`
`Board agreed, Pristash discloses the additional
`
`limitations of claims 13 and 47
`
`requiring a “transition region,” and Petitioner provided sufficient rationale for
`
`combining Pristash with Kobayashi. Petitioner thus demonstrated a reasonable
`
`likelihood of prevailing with respect to Ground 4.
`
`Because the Board overlooked the Petition’s demonstration of Kobayashi’s
`
`disclosure of different types of deformities on each side of the panel member,
`
`Petitioner respectfully requests that the Board reconsider Ground 4 and institute
`
`review of claims 13 and 47 based on Kobayashi in view of Pristash.
`
`V.
`
`CONCLUSION
`For these reasons, Petitioner respectfully requests that the Board grant this
`
`request for reconsideration and authorize inter partes review of claims 1, 4, and 29
`
`under 35 U.S.C. § 102(a) based on Kobayashi and claims 13 and 47 under 35 U.S.C. §
`
`103(a) based on Kobayashi in view of Pristash.
`
`10
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`

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`Patent No. 7,537,370
`Petitioner Request for Rehearing
`
`Dated: January 26, 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
`
`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.
`
`11
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`

`
`Patent No. 7,537,370
`Petitioner Request for Rehearing
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 26th day of January, 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: January 26, 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.
`
`12