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
`_______________
`
`PETITION FOR INTERPARTESREVIEW
`OF U.S. PATENT NO. 7,537,370
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`MANDATORY NOTICES .............................................................................1
`
`PAYMENT OF FEES .....................................................................................4
`
`STANDING.....................................................................................................4
`
`REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4, 8, 13, 15, 27,
`29, AND 47 OF THE ’370 PATENT .............................................................4
`
`A.
`
`B.
`
`Technology Background........................................................................4
`
`The Alleged Invention Of The ’370 Patent ...........................................6
`
`V.
`
`CLAIM CONSTRUCTION.............................................................................7
`
`A.
`
`Standards For Claim Construction ........................................................7
`
`1.
`
`Broadest Reasonable Construction...............................................7
`
`B.
`
`“deformities” (Claims 1, 4, 8, 13, 15, 27, 29, And 47) ............................7
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’370 PATENT FORMING THE
`BASIS FOR THIS PETITION ........................................................................8
`
`A.
`
`A.
`
`B.
`
`C.
`
`Admitted Prior Art................................................................................8
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006) .............................8
`
`EP 0 500 960 A1 (“Ohe”) (Ex. 1007) ....................................................8
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1008)..........................9
`
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM.......................9
`
`A.
`
`Ground 1: Claims 1, 4, 8, 13, 15, 27, 29, And 47 Are Unpatentable
`Under 35 U.S.C. §103 As Being Obvious In View Of Pristash............10
`
`i
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`B.
`
`C.
`
`D.
`
`Ground 2: Claims 1, 4, 8, 15, And 29 Are Unpatentable Under 35
`U.S.C. §102(b) As Being Anticipated By Ohe..................................29
`
`Ground 3: Claims 1, 4, And 29 Are Unpatentable Under 35 U.S.C.
`§102(b) As Being Anticipated By Kobayashi .......................................38
`
`Ground 4: Claims 13, 15, 27, And 47 Are Unpatentable Under 35
`U.S.C. §103 As Being Rendered Obvious By Kobayashi In View Of
`The Admitted Prior Art Or Pristash....................................................46
`
`VIII. CONCLUSION .............................................................................................58
`
`ii
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`PETITIONER’S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,537,370
`Prosecution History of U.S. Patent No. 7,537,370
`Complaints filed in Related District Court Cases
`Declaration of Michael J. Escuti, Ph.D. (“Escuti Decl.”)
`U.S. Patent No. 5,461,547 (“Ciupke”)
`U.S. Patent No. 5,005,108 (“Pristash”)
`EP500960 (“Ohe”)
`U.S. Patent No. 5,408,388 (“Kobayashi”)
`U.S. Patent No. 5,160,195 (“Miller”)
`J. A. Castellano, Handbook of Display Technology, Academic Press Inc., San
`Diego, 1992, at pp. 9-13 and Ch. 8
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`U.S. Patent No. 5,828,488 (“Ouderkirk”)
`3M product brochure 75-0500-0403-7, “Brightness Enhancement Film
`(BEF),” 2 pages (1993)
`U.S. Patent No. 5,706,134 (“Konno”)
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`1012
`1013
`1014
`1015
`1016
`
`1017
`1018
`
`iii
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`Pursuant to 35 U.S.C. §311, Petitioner hereby respectfully requests inter partes
`
`review of Claims 1, 4, 8, 13, 15, 27, 29, and 47 of Ex. 1001, U.S. Patent No. 7,537,370
`
`(“the ’370 Patent”) which issued on May 26, 2009. The challenged claims are
`
`unpatentable under 35 U.S.C. §§102 and 103 over the prior art publications identified
`
`and applied in this Petition.
`
`I.
`
`MANDATORY NOTICES
`Pursuant to 37 C.F.R. §42.8, Petitioner provides the following mandatory
`
`disclosures:
`
`A. Real Parties-In-Interest. LG Display America, Inc. is a real party-in-interest
`
`with Petitioner, LG Display Co., Ltd.
`
`B. Related Matters. Pursuant to 37 C.F.R. §42.8(b)(2), Petitioner submits that
`
`the ’370 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex. 1003), against Petitioner in the
`
`United States District Court for the District of Delaware: Delaware Display Group LLC
`
`and Innovative Display Technologies LLC v. LG Electronics, Inc., LG Electronics U.S.A., Inc.,
`
`LG Display Co., Ltd., and LG Display America, Inc., Case No. 1:13-cv-02109. The ’370
`
`Patent is also asserted in at least the actions listed in the chart below.
`
`Description
`
`Innovative Display Technologies LLC (“IDT”) v. Acer Inc.
`et al.
`IDT v. Apple Inc.
`IDT v. Apple Inc.
`
`Docket Number
`
`2:13-cv-522, EDTX
`
`2:14-cv-00030, EDTX
`2:14-cv-00301, EDTX
`
`1
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`Description
`
`IDT v. AT&T Inc., et. al.
`IDT v. BMW of North America, LLC, et. al.
`IDT v. Canon U.S.A. Inc., et. al.
`IDT v. Research in Motion Limited et al.
`IDT v. Dell Inc.
`IDT v. Google Inc., et. al.
`IDT v. Hewlett-Packard Corporation
`IDT v. Huawei Investment et al.
`IDT v. Microsoft Corporation
`IDT v. Mitac Digital Corporation, et. al.
`IDT v. Nikon Inc., et. al.
`IDT v. Nissan Motor, Co., Ltd., et. al.
`IDT v. Nokia Corporation and Nokia Inc.
`IDT v. Sprint Corporation, et. al.
`IDT v. Tomtom North America Inc., et. al.
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`DDG and IDT v. Lenovo Group Ltd., et al.
`DDG and IDT v. LG Electronics Inc., et al.
`DDG and IDT v. Pantech Co.,Ltd, et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`
`2:14-cv-00720, EDTX
`2:14-cv-00106, EDTX
`2:14-cv-00142, EDTX
`2:13-cv-00526, EDTX
`2:13-cv-00523, EDTX
`2:14-cv-00302, EDTX
`2:13-cv-00524, EDTX
`2:13-cv-00525, EDTX
`2:13-cv-00783, EDTX
`2:14-cv-00144, EDTX
`2:14-cv-00145, EDTX
`2:14-cv-00202, EDTX
`2:13-cv-00784, EDTX
`2:14-cv-00721, EDTX
`2:14-cv-00146, EDTX
`2:13-cv-00527, EDTX
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`1:13-cv-02108, D.Del.
`1:13-cv-02109, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`
`Petitioner is concurrently filing petitions to review U.S. Patent Nos. 7,300,194,
`
`7,434,974, 7,404,660, and 8,215,816 which are in the same family as the ’370 Patent.
`
`The ’370 Patent is a divisional of U.S. Patent No. 7,160,015.
`
`2
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`C. Lead and Back-up Counsel.
`
`Petitioner provides the following designation of counsel:
`
`LEAD COUNSEL
`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
`rpluta@mayerbrown.com
`
`BACK-UP COUNSEL
`Amanda K. Streff
`Registration No. 65,224
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8645
`Facsimile:
`312-701-7711
`astreff@mayerbrown.com
`
`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
`
`D. Service Information. Pursuant to 37 C.F.R. §42.8(b)(4), Petitioner identifies
`
`the following service information: Please direct all correspondence regarding this
`
`proceeding to lead counsel at the address identified above. Petitioner consents to
`
`electronic service by email:
`
`rpluta@mayerbrown.com, bpaul@mayerbrown.com,
`
`astreff@mayerbrown.com, and alam@mayerbrown.com, with a courtesy copy to
`
`DDGIPR@mayerbrown.com.
`
`3
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`II.
`
`PAYMENT OF FEES
`Pursuant to 37 C.F.R. §42.103, $23,000 is being paid at the time of filing this
`
`petition, charged to Deposit Account 130019. Should any further fees be required by
`
`the present Petition, the Patent Trial and Appeal Board (“the Board”) is hereby
`
`authorized to charge the above referenced Deposit Account.
`
`III.
`
`STANDING
`
`Pursuant to 37 C.F.R. §42.104(a), Petitioner certifies that the patent sought for
`
`review, the ’370 Patent, is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review of the patent.
`
`IV. REQUEST FOR INTERPARTESREVIEW OF CLAIMS 1, 4, 8, 13, 15,
`27, 29, AND 47 OF THE ’370 PATENT
`
`Pursuant to 37 C.F.R. §42.104(b), Petitioner requests that the Board find
`
`unpatentable Claims 1, 4, 8, 13, 15, 27, 29, and 47 of the ’370 Patent. Such relief is
`
`justified as the alleged invention of the ’370 Patent was described by others prior to
`
`the effective filing date of the ’370 Patent.
`
`Technology Background
`A.
`Generally, light emitting panel assemblies are used in conjunction with liquid
`
`crystal displays (“LCDs”) and various applications thereof, as a backlight module to
`
`provide light to the display. Ex. 1004, Declaration of Michael J. Escuti, Ph.D.
`
`(“Escuti Decl.”), ¶38. The light emitting panel assembly is composed of all the
`
`elements of the LCD other than the liquid crystals themselves. Id. For example, the
`
`4
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`light emitting panel assembly is all but element 12 (in yellow) in the annotated figure
`
`below from Ex. 1005, U.S. Patent No. 5,461,547 (“Ciupke”).
`
`In order to produce surface illumination with the target brightness and
`
`uniformity at the lowest possible electrical power, the light emitting panel assembly
`
`can include features to spatially homogenize and control the angular distribution of
`
`emitted light. Escuti Decl., ¶42. Examples of these features include light pipes, a
`
`transition area, reflectors, and various types of microstructured deformities (e.g.,
`
`microprisms, diffusers, and microlenses). Id. The light pipe, also sometimes called a
`
`light guide or wave guide, accepts light injected from the side and distributes it across
`
`the emission area. The ’370 Patent calls the light pipe a “transparent panel member”
`
`(e.g., Ex. 1001, 1:19-20), “light emitting panel member” (e.g.,
`
`id. 1:32-33), and
`
`“transparent light emitting panel” (e.g., id. 2:61). See Escuti Decl., ¶43. The transition
`
`area, which is usually between the light source and the light pipe, is used to securely
`
`position the light source relative to the light pipe, and to spread and transmit light to
`
`produce a more uniform input illumination. Id. ¶45. The ’370 Patent refers to a “light
`
`transition area or member” that enables emitted light “to make the transition from the
`
`light source to the light emitting panel 2” and was “well known in the art.” See Ex.
`
`5
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`1001, 2:58-3:3. Deformities, such as microprisms, diffusers, and microlenses, are
`
`employed to control the direction and spatial uniformity of light within light emitting
`
`panel assemblies. Escuti Decl., ¶46.
`
`The Alleged Invention Of The ’370 Patent
`B.
`The ’370 Patent relates “to light emitting panel assemblies each including a
`
`transparent panel member for efficiently conducting light, and controlling the light
`
`conducted by the panel member to be emitted from one or more light output areas
`
`along the length thereof.” Ex. 1001, 1:18-22. As the ’370 Patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Id. 1:23. The purported
`
`advantage of the alleged invention described in the ’370 Patent relates to several
`
`different light emitting panel assembly configurations which allegedly provide for
`
`better control of light output from the panel assembly and for more “efficient”
`
`utilization of light, thereby resulting in greater light output from the panel assembly.
`
`Id. 1:24-28. Yet, as shown further below, prior art such as Ex. 1006, U.S. Patent No.
`
`5,005,108 (“Pristash”) already disclosed such advantages. See, e.g., Ex. 1006, 1:10-16.
`
`The ’370 Patent discloses light emitting assemblies having a pattern of light
`
`extracting deformities on or in one or both sides for emitting light in a predetermined
`
`output distribution. Ex. 1001, Abstract. The pattern of light extracting deformities
`
`may have one or more different types or shapes of deformities. Id.
`
`6
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`V.
`
`CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`1.
`Broadest Reasonable Construction
`to inter partes review is given its “broadest reasonable
`A claim subject
`
`construction in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§42.100(b). This means that the words of the claim are given their plain meaning
`
`from the perspective of one of ordinary skill
`
`in the art unless that meaning is
`
`inconsistent with the specification.
`
`In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`Petitioner submits, for the purposes of inter partes review only, that the claim terms are
`
`presumed to take on their broadest reasonable interpretation in light of
`
`the
`
`specification of the ’370 Patent.
`
`“deformities” (Claims 1, 4, 8, 13, 15, 27, 29, And 47)
`B.
`The ’370 Patent expressly defines the term “deformities” as follows: “As used
`
`herein, the term deformities or disruptions are used interchangeably to mean any
`
`change in the shape or geometry of the panel surface and/or coating or surface
`
`treatment that causes a portion of the light to be emitted.” Ex. 1001, 4:36-40. Thus,
`
`based on the express definition of deformities in the specification, “deformities”
`
`(Claims 1, 4, 8, 13, 15, 27, 29, and 47) should be construed to mean “any change in
`
`the shape or geometry of a surface and/or coating or surface treatment that causes a
`
`portion of the light to be emitted.” Escuti Decl., ¶64.
`
`7
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’370 PATENT FORMING THE
`BASIS FOR THIS PETITION
`A.
`Admitted Prior Art
`The ’370 Patent discusses the following functionality and structure of prior art
`
`light emitting assemblies:
`
`(1) a “transparent light emitting panel 2,” (2) “one or more
`
`light sources 3 which emit light in a predetermined pattern,” and (3) “a light transition
`
`member or area 4 used to make the transition from the light source 3 to the light
`
`emitting panel.” Ex. 1001, 2:58-65 (describing these elements and their functionalities
`
`as being “well known in the art”).
`
`B.
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006)
`
`Pristash discloses a thin panel illuminator for more efficient light transmission
`
`from the light source to the light emitting panel. Ex. 1006, Abstract. Pristash
`
`qualifies as prior art under 35 U.S.C. §102(b) because Pristash issued as a patent on
`
`April 2, 1991, more than one year before the June 27, 1995 priority date to which the
`
`’370 Patent may be entitled. Pristash was cited as a reference in an Information
`
`Disclosure Statement during prosecution, but was not relied upon as the basis to
`
`reject any claim.
`
`In fact, Pristash was not discussed on the record at all during the
`
`prosecution proceedings.
`
`EP 0 500 960 A1 (“Ohe”) (Ex. 1007)
`C.
`Ohe discloses a surface light source element for a surface light source device.
`
`Ex. 1007, 2:3-5. The object of Ohe is to provide a light source element that can emit
`
`8
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`light with a uniform light emission and high luminance. See id. 2:30-33. Ohe qualifies
`
`as prior art under 35 U.S.C. §102(b) because Ohe was published on February 9, 1992,
`
`more than one year before the June 27, 1995 priority date to which the ’370 Patent
`
`may be entitled. Ohe was not cited or considered during prosecution of the
`
`application that led to the ’370 Patent.
`
`D.
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1008)
`Kobayashi discloses a planar illuminating device having “increased luminance”
`
`and an “increased uniformity in surface lumination.” Ex. 1008, 2:14-16, 2:59-61.
`
`Kobayashi qualifies as prior art under 35 U.S.C. §102(a) because Kobayashi was issued
`
`as a patent on April 18, 1995, before the June 27, 1995 priority date to which the ’370
`
`Patent may be entitled. Kobayashi was not cited or considered during prosecution of
`
`the application that led to the ’370 Patent.
`
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`
`In light of the disclosures detailed below, the ’370 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Ground #
`1
`
`Ground
`103(a)
`
`Prior art
`Pristash
`
`2
`3
`4
`
`102(b)
`102(a)
`103(a)
`
`Ohe
`Kobayashi
`Kobayashi in view
`of Pristash
`
`Exhibit(s) #
`1006
`
`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
`
`9
`
`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`A.
`
`Ground 1: Claims 1, 4, 8, 13, 15, 27, 29, And 47 Are Unpatentable
`Under 35 U.S.C. §103 As Being Obvious In View Of Pristash
`
`The alleged invention set forth in the ’370 Patent “Background of the
`
`Invention” is substantially similar to that in Pristash:
`
`Pristash Background of the Invention
`Light panel
`illuminators are generally
`known. However, the present invention
`relates
`to
`several
`different
`panel
`illuminator configurations which are less
`expensive to make and/or provide for
`better control over the light output from
`the panel. Also,
`the present
`invention
`provides more efficient transmission of
`light from a light source to the light
`emitting panel.
`
`’370 Background of the Invention
`Light
`emitting panel
`assemblies
`are
`generally known. However, the present
`invention relates to several different light
`emitting panel assembly configurations
`which provide for better control of the
`light output from the panel assemblies
`and for more efficient utilization of light,
`which results in greater light output from
`the panel assemblies.
`
`The similarities between the Pristash and ’370 Patent do not end in their
`
`recognition of the prior art and the objectives of the purported inventions. The two
`
`patents have a common inventor: Jeffrey Parker who is a co-inventor of Pristash and
`
`the sole inventor for the ’370 Patent. Further, Fig. 10 of Pristash and Fig. 6 of the
`
`’370 Patent appear strikingly similar in shape and in common elements such as the
`
`“light output” regions/areas (green), “light sources” (orange), and “reflective”
`
`coatings/surfaces (purple).
`
`10
`
`

`

`Patent No. 7,537,370
`
`
`Petition for Inter Partes ReviewReview
`
`Pristash
`
`
`
`’370 Patent’370 Patent
`
`
`
`
`
`Even the claim language of the two patents are identical in several places, asEven the claim language of the two patents are identical in several places, asEven the claim language of the two patents are identical in several places, as
`
`
`
`depicted in the short claim comparison chart below.depicted in the short claim comparison chart below.
`
`
`Pristash (Ex. 1006)(Ex. 1006)
`
`1. … panel member havinghaving a greater
`
`cross sectional width than thicknesscross sectional width than thickness. . . .
`
`
`’370 Claim Element’370 Claim Element
`
`1. … the panel member having front andhaving front and
`
`back sides and a greater cross sectionala greater cross sectional
`width than thickness . . . .
`
`
`
`
`
`Pristash discloses Claimsdiscloses Claims 1, 4, 8, 13, 15, 27, 29, and 47 of the ’370 Patent and’370 Patent and
`
`
`
`therefore, renders those claims unpatentable undertherefore, renders those claims unpatentable under 35 U.S.C. §103.35 U.S.C. §103. A person of
`
`
`
`
`
`
`
`ordinary skillordinary skillordinary skill
`
`
`
`
`
`in the art would have been motivated to combine elements of ain the art would have been motivated to combine elements of ain the art would have been motivated to combine elements of a
`
`
`
`
`
`particular embodiment with other elements of other embodiments disclosed inparticular embodiment with other elements of other embodiments disclosed inparticular embodiment with other elements of other embodiments disclosed in
`
`
`
`Pristash for several reasons.Pristash for several reasons. First, all of the configurations taught byFirst, all of the configurations taught by Pristash are
`
`
`
`
`
`
`
`aimed to provide cost efficiency and “better control over the light output from theaimed to provide cost efficiency and “better control over the light output from theaimed to provide cost efficiency and “better control over the light output from the
`
`
`
`
`
`panel,” and “more efficient transmission of light from a light source to the lightpanel,” and “more efficient transmission of light from a light source to the lightpanel,” and “more efficient transmission of light from a light source to the light
`
`
`
`
`
`emitting panel.” Id. 1:10-16.16. Second, Pristash specifically acknowledges that “it isSecond, Pristash specifically acknowledges that “it is
`
`11
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`

`

`Patent No. 7,537,370
`
`
`Petition for Inter Partes ReviewReview
`
`
`
`
`
`obvious that equivalent alterations and modifications will occur to others skilled in theobvious that equivalent alterations and modifications will occur to others skilled in theobvious that equivalent alterations and modifications will occur to others skilled in the
`
`
`
`art upon reading and understanding of the specification.”art upon reading and understanding of the specification.” Id. 9:1-5.5. Therefore,
`
`
`
`it
`
`
`
`
`
`would be obvious to a person of skill in the art to alter one embodiment with awould be obvious to a person of skill in the art to alter one embodiment with awould be obvious to a person of skill in the art to alter one embodiment with a
`
`
`
`
`
`feature taught in the same patent but from a different embodiment.feature taught in the same patent but from a different embodiment. Finally, PristashFinally, Pristash
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`
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`
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`does not limit the combination of any of thdoes not limit the combination of any of the elements for the embodiments.e elements for the embodiments.
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`Specifically, Pristash does not teach away from any combinations of embodimentsSpecifically, Pristash does not teach away from any combinations of embodimentsSpecifically, Pristash does not teach away from any combinations of embodiments
`
`presented herein.
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`
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`
`
`The elements of independent Claims 1, 13, 15, 27, 29, and 47 of theThe elements of independent Claims 1, 13, 15, 27, 29, and 47 of theThe elements of independent Claims 1, 13, 15, 27, 29, and 47 of the ’370 Patent
`
`
`
`
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`are shown in the annotated figure below, composed of Figures 1 and 7 of Pristashare shown in the annotated figure below, composed of Figures 1 and 7 of Pristashare shown in the annotated figure below, composed of Figures 1 and 7 of Pristash
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`
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`that are labeled as claim elements:that are labeled as claim elements:
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`
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`With respect to independent claim 1, Pristash teaches a light emitting panel 50With respect to independent claim 1, Pristash teaches a light emitting panel 50With respect to independent claim 1, Pristash teaches a light emitting panel 50
`
`
`
`
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`with light source 3, a transparent panel member havinwith light source 3, a transparent panel member having a greater cross sectional widthg a greater cross sectional width
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`
`
`
`
`than thickness and an input edge, prismatic surfaces on both the top and bottomthan thickness and an input edge, prismatic surfaces on both the top and bottomthan thickness and an input edge, prismatic surfaces on both the top and bottom
`
`
`
`surfaces of the panel member, and the deformities varying in depth and shape alongsurfaces of the panel member, and the deformities varying in depth and shape alongsurfaces of the panel member, and the deformities varying in depth and shape along
`12
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`the length of the prism edges or panel 2, with the deformities being both prismatic
`
`surfaces or roughened surfaces, and a second prismatic film 60 overlaying the panel
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`member 51 and panel prismatic surface 52 to provide a more efficient transmission of
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`light and used with LCDs. Ex. 1006, 5:6-7, 2:68, 4:66-5:5, 4:45-54, 4:57-5:5, 5:22-33,
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`1:11-16, 8:17-24, claims 1, 72, Figs. 5 and 6; see also Escuti Decl., ¶¶72-90. As
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`previously mentioned, the object of Pristash, much like the object of the ’370 Patent,
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`is to provide a panel assembly with more efficient use of light, i.e., low loss. See id. ¶88.
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`For independent claim 13, the additional limitations, Pristash also teaches a
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`transition device is disclosed for converting light and is positioned between input edge
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`10 and deformities on panel 2 which can have lens 141 at input surface 142 shaped to
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`spread light evenly across the output. Ex. 1006, 1:59-62, 2:64-3:4, 7:52-55; see also
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`Escuti Decl., ¶¶102-113.
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`For independent Claim 15, the additional limitations, Pristash discloses one
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`side having prismatic cuts and roughened surfaces with the roughened surfaces
`
`varying. Ex. 1006, Fig. 6; see also Escuti Decl., ¶¶115-123. For independent Claim 27,
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`the additional limitations, deformities on one side are disclosed as discussed for claim
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`1, different types of deformities are discussed for claim 15, and the transition region
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`limitations are disclosed as discussed for Claim 13. See Escuti Decl., ¶¶125-133. For
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`independent claim 29, Pristash discloses the additional limitations of deformities on
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`one side vary in a different way or manner, such as depth and width. Ex. 1006, 4:45-
`
`13
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`66; see also Escuti Decl., ¶¶135-143. For independent Claim 47, the additional
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`limitations, Pristash deformities of a different way or manner as discussed above and
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`the transition region limitations as discussed above. See Escuti Decl., ¶¶145-153.
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`Pristash discloses Claims 1, 4, 8, 13, 15, 27, 29, and 47 of the ’370 Patent and
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`therefore those claims are obvious under 35 U.S.C. §103. For all these reasons,
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`Claims 1, 4, 8, 13, 15, 27, 29, and 47 are unpatentable in view of Pristash and thus,
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`Petitioner has a reasonable likelihood of prevailing with respect to at least one claim.
`
`’370 Claim Element
`1. A light emitting panel
`assembly comprising
`
`Pristash (Ex. 1006)
`“Referring now in detail to the drawings, and initially to
`FIG. 1, there is schematically shown one form of thin
`panel
`illuminator
`in accordance with this
`invention
`including a solid transparent light emitting panel 2 and a
`light source 3 which generates and focuses light,
`in a
`predetermined pattern, either directly on a panel
`input
`edge 4 or on a transition device 5 which is used to make
`the transition from the light source 3 target shape to the
`light emitting panel input edge 4 shape as shown. The light
`that is transmitted from the light source 3 to the light
`emitting panel 2 may be emitted along the length of the
`panel as desired to produce a desired light output
`distribution to fit a particular application.” Ex. 1006, at
`2:64-3:8.
`light
`form of
`“FIG. 7 schematically shows another
`emitting panel 50 in accordance with this invention which
`also comprises a solid transparent prismatic film 51 having
`a prismatic surface 52 on one side and a back reflector 53
`on the other side, similar to the light emitting panel 2
`shown in FIG. 1.” Id. 5:6-11; see also Figs. 1, 7 below.
`
`14
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`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`’370 Claim Element
`
`Pristash (Ex. 1006)
`
`[1.a] at
`source,
`
`least one light
`
`an optical panel
`[1.b]
`member having at least
`one
`input
`edge
`for
`receiving light from the
`at least one light source,
`the panel member having
`front and back sides and
`a greater cross sectional
`width than thickness,
`
`[1.c] both the front and
`back
`sides
`having
`a
`
`See Escuti Decl., ¶72.
`“Referring now in detail to the drawings, and initially to
`FIG. 1, there is schematically shown one form of thin
`panel
`illuminator
`in accordance with this
`invention
`including a solid transparent light emitting panel 2 and a
`light source 3 which generates and focuses light,
`in a
`predetermined pattern, either directly on a panel
`input
`edge 4 or on a transition device 5 which is used to make
`the transition from the light source 3 target shape to the
`light emitting panel input edge 4 shape as shown.” Ex.
`1006, 2:64-3:4.
`See Escuti Decl., ¶¶73.
`light
`form of
`“FIG. 7 schematically shows another
`emitting panel 50 in accordance with this invention which
`also comprises a solid transparent prismatic film 51 having
`a prismatic surface 52 on one side and a back reflector 53
`on the other side, similar to the light emitting panel 2
`shown in FIG. 1.” Ex. 1006, 5:6-11; see also Fig. 1.
`“A panel illuminator comprising a solid transparent panel
`member having a greater cross sectional width than
`thickness and top and bottom surfaces and an input edge.
`. . .” Id. claims 1, 72.
`“Although the dimensions of the panel 24 may vary, as an
`example, the panel 24 may be approximately 0.020 inch
`thick and have an overall height of approximately 0.040
`inch, and be of any desired width or length depending on
`the particular application.” Id. 3:58-63.
`See Escuti Decl., ¶¶74-76.
`“FIG. 5 shows another form of light emitting panel 40 in
`accordance with this
`invention comprising a
`solid
`15
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`

`

`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`’370 Claim Element
`pattern of light extracting
`deformities
`that
`are
`projections
`or
`depressions on or in the
`sides to cause light to be
`emitted from the panel
`member
`in
`a
`predetermined
`output
`distribution,
`
`Pristash (Ex. 1006)
`transparent prismatic film 41 having deformities 42 cut,
`molded or otherwise formed along the top of the prism
`edges 43. Although the deformities 42 are shown as being
`of a generally triangular shape, they may be of any desired
`shape that causes light to be emitted, and may vary in
`depth and shape along the length of the prism edges 43 to
`produce a desired light output distribution.” Ex. 1006,
`4:45-54; see also Fig. 5 below.
`
`“Also, both of the light emitting panels 40 and 49 shown
`in FIGS. 5 and 6 may have prismatic surfaces on both the
`top and bottom surfaces rather than on just one surface as
`shown, and one or the other of the top or bottom surface
`may be provided with a back reflector similar to the back
`reflector 34 shown in FIG. 4 to redirect emitted light back
`through the panel toward a particular application.” Id.
`4:66-5:5; see also Fig. 6 below.
`See Escuti Decl., ¶¶77-79.
`“FIG. 5 shows another form of light emitting panel 40 in
`accordance with this
`invention comprising a
`solid
`transparent prismatic film 41 having deformities 42 cut,
`molded or otherwise formed along the top of the prism
`edges 43. Although the deformities 42 are shown as being
`of a generally triangular shape, they may be of any desired
`shape that causes light to be emitted, and may vary in
`depth and shape along the le