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: IPR2014-01097
`
`Patent 7,300,194
`_______________
`
`PETITION FOR INTERPARTESREVIEW
`OF U.S. PATENT NO. 7,300,194
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES...................................................................................... 1
`
`PAYMENT OF FEES............................................................................................... 3
`
`STANDING................................................................................................................ 4
`
`REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4-6, 16, 22, 23,
`27, 28, AND 31 OF THE ’194 PATENT ............................................................. 4
`
`A.
`
`B.
`
`Technology Background ............................................................................... 4
`
`The Alleged Invention Of The ’194 Patent................................................ 5
`
`V.
`
`CLAIM CONSTRUCTION ..................................................................................... 7
`
`A.
`
`Standards For Claim Construction .............................................................. 7
`
`1.
`
`Broadest Reasonable Construction.................................................... 7
`
`B.
`
`“deformities” (claims 1, 16, 28, 31).............................................................. 7
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’194 PATENT FORMING THE
`BASIS FOR THIS PETITION................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Admitted Prior Art......................................................................................... 8
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006).................................... 8
`
`U.S. Patent No. 5,619,351 (“Funamoto”) (Ex. 1007)................................ 9
`
`JP H06-273756 (“Gyoko”) (Ex. 1008) ........................................................ 9
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1011) ............................. 10
`
`U.S. Patent No. 5,598,280 (“Nishio”) (Ex. 1012).................................... 10
`
`VII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM .................... 10
`
`A.
`
`Ground 1: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Pristash ................................................. 11
`
`i
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Ground 2: Claims 1, 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §102(e) As Being Anticipated By Funamoto................................ 19
`
`Ground 3: Claims 4, 5, And 6 Are Unpatentable Under 35 U.S.C. §103
`As Obvious Over Funamoto...................................................................... 29
`
`Ground 4: Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §102(a) As Being Anticipated By Gyoko...................................... 30
`
`Ground 5: Claim 28 Is Unpatentable Under 35 U.S.C. §102(b) As Being
`Anticipated By Kobayashi........................................................................... 37
`
`Ground 6: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§102(e) As Being Anticipated By Nishio................................................... 41
`
`Ground 7: Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §103 As Obvious Over Nishio, Alone, Or In The Alternative, In
`View Of Funamoto...................................................................................... 48
`
`VIII. CONCLUSION........................................................................................................ 56
`
`ii
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`PETITIONER’S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,300,194
`Prosecution History of U.S. Patent No. 7,300,194
`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”)
`U.S. Patent No. 5,619,351 (“Funamoto”)
`JP H06-273756 (“Gyoko”) (English)
`JP H06-273756 (“Gyoko”) (Japanese)
`JP H06-273756 (“Gyoko”) (Certification)
`U.S. Patent No. 5,408,388 (“Kobayashi”)
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 6,108,060 (“the ’060 Patent”) and corresponding file
`history
`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. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`EP500960 (“Ohe”)
`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”)
`U.S. Patent No. 5,381,309 (“Borchardt”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`
`1022
`1023
`1024
`
`iii
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`Pursuant to 35 U.S.C. §311, Petitioner hereby respectfully requests inter partes
`
`review of Claims 1, 4-6, 16, 22, 23, 27, 28, and 31 of Ex. 1001, U.S. Patent No.
`
`7,300,194 (“the ’194 Patent”) (“Ex. 1001”) which issued on November 27, 2007. 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 ’194 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 ’194
`
`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.
`
`Docket Number
`2:13-cv-522, EDTX
`
`2:14-cv-00030, EDTX
`
`1
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`Description
`IDT v. Research in Motion Limited et al.
`IDT v. Dell Inc.
`IDT v. Hewlett-Packard Corporation
`IDT v. Huawei Investment et al.
`IDT v. Microsoft Corporation
`IDT v. Nokia Corporation and Nokia Inc.
`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. Pantech Co.,Ltd, et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`2:13-cv-00526, EDTX
`2:13-cv-00523, EDTX
`2:13-cv-00524, EDTX
`2:13-cv-00525, EDTX
`2:13-cv-00783, EDTX
`2:13-cv-00784, 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-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. 7,434,974,
`
`7,404,660, 7,537,370, and 8,215,816 which are in the same family as the ’194 Patent.
`
`The ’194 Patent is a divisional of U.S. Patent No. 7,160,015.
`
`C. Lead and Back-up Counsel.
`
`Petitioner provides the following designation of counsel:
`
`2
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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.
`
`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
`
`3
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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 ’194 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, 4-6, 16, 22,
`23, 27, 28, AND 31 OF THE ’194 PATENT
`Pursuant to 37 C.F.R. §42.104(b), Petitioner requests that the Board find
`
`unpatentable Claims 1, 4-6, 16, 22, 23, 27, 28, and 31 of the ’194 Patent. Such relief is
`
`justified as the alleged invention of the ’194 Patent was described by others prior to
`
`the effective filing date of the ’194 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
`
`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”).
`
`4
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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., ¶39. Examples of these features include light pipes,
`
`transition area,
`
`reflectors, and various types of microstructured deformities (e.g.,
`
`microprisms, diffusers, and microlenses).
`
`Id. at ¶42. 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 ’194 Patent calls the light pipe a “transparent panel
`
`member” (e.g., 1:20-21), “light emitting panel member” (e.g., 1:34-35), and “transparent
`
`light emitting panel” (e.g., 2:67). 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. ¶44. Deformities, such as microprisms, diffusers,
`
`and microlenses, are employed to control the direction and spatial uniformity of light
`
`within light emitting panel assemblies. Id. ¶45.
`
`B.
`
`The Alleged Invention Of The ’194 Patent
`
`The ’194 Patent relates “to light emitting panel assemblies each including a
`
`5
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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, 1:19-23. The ’194 Patent discloses an edge-lit
`
`light emitting panel assembly, which can also be referred to as a backlight. Escuti
`
`Decl., ¶40. Edge-lit light emitting panel assemblies are often preferred because they
`
`can be physically thinner and lower weight. Id. As the ’194 Patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Ex. 1001, 1:24. The
`
`purported advantage of the alleged invention described in the ’194 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.
`
`Ex. 1001, 1:25-30. Yet, as shown further below, prior art such as U.S. Patent No.
`
`5,005,108 (“Pristash”) already disclosed such advantages. See, e.g., Ex. 1006, 1:10-16.
`
`The ’194 Patent discloses light emitting assemblies including at least one light
`
`source and at least one film, sheet, plate, or substrate having optical elements or
`
`deformities of “well defined” shape on at least one surface that have reflective or
`
`refractive surfaces for controlling the light output ray angle distribution of the emitted
`
`light. Ex. 1001, Abstract. The film, sheet, plate, or substrate may be positioned near
`
`the light emitting surface of a light emitting panel member with an air gap
`
`therebetween or over a cavity or recess in a tray through which light from a light
`
`6
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`source in the cavity or recess is emitted. Id.
`
`V.
`
`CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`1.
`Broadest Reasonable Construction
`
`A claim subject
`
`to inter partes review is given its “broadest reasonable
`
`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 ’194 Patent.
`
`B.
`
`“deformities” (Claims 1, 16, 28, 31)
`
`The ’194 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, 4:44-48. Thus,
`
`based on the express definition of deformities in the specification, “deformities”
`
`(Claims 1, 16, 28, and 31) 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., ¶62.
`
`7
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’194 PATENT FORMING THE
`BASIS FOR THIS PETITION
`The following documents serve as a basis to show that Petitioner has a
`
`reasonable likelihood of prevailing with respect to at least one of the Claims 1, 4-6, 16,
`
`22, 23, 27, 28, and 31 of the ’194 Patent. Petitioner provides a detailed explanation of
`
`the pertinence and manner of applying the cited prior art to Claims 1, 4-6, 16, 22, 23,
`
`27, 28, and 31 of the ’194 Patent in Section VII,
`
`infra. In light of the prior art
`
`references, the light emitting assembly in the ’194 Patent is a function of prior art and
`
`obvious design decisions, not innovation or invention.
`
`Admitted Prior Art
`A.
`The ’194 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, 2:64-3:4 (describing these elements and their functionalities
`
`as being “well known in the art”).
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006)
`B.
`Pristash discloses a thin panel illuminator for more efficient light transmission
`
`from the light source to the light emitting panel. Ex. 1006, 1:14-17. 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 ’194
`
`8
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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.
`
`U.S. Patent No. 5,619,351 (“Funamoto”) (Ex. 1007)
`C.
`Funamoto discloses a surface-type illumination device suitable for providing a
`
`backlight in a liquid crystal display (“LCD”). Ex. 1007, Abstract. Funamoto qualifies
`
`as prior art under 35 U.S.C. §102(e) because Funamoto entered national stage under
`
`35 U.S.C. §371 on May 10, 1994 before the June 27, 1995 priority date to which the
`
`’194 Patent may be entitled. Funamoto was not cited or considered during
`
`prosecution of the application that led to the ’194 Patent.
`
`JP H06-273756 (“Gyoko”) (Ex. 1008)1
`D.
`Gyoko discloses an illuminating device and liquid crystal display device whose
`
`purpose is to increase brightness and efficiency by reducing or preventing leakage of
`
`light from a light guide body. Ex. 1008, Title, Abstract. Gyoko qualifies as prior art
`
`under 35 U.S.C. §102(a) because Gyoko was published on September 30, 1994, before
`
`the June 27, 1995 priority date to which the ’194 Patent may be entitled. Gyoko was
`
`not cited or considered during prosecution of the application that led to the ’194
`
`1 The Japanese version of Gyoko is attached as Ex. 1009 and the translation
`
`certification is attached as Ex. 1010.
`
`9
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`Patent.
`
`E.
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1011)
`
`Kobayashi discloses a planar illuminating device having “increased luminance”
`
`and an “increased uniformity in surface lumination.” Ex. 1011, 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 ’194 Patent.
`
`U.S. Patent No. 5,598,280 (“Nishio”) (Ex. 1012)
`F.
`Nishio discloses a film lens and a surface light source adopted for backlighting
`
`a display unit, such as a liquid crystal display. Ex. 1012, 1:7-10. Nishio qualifies as
`
`prior art under 35 U.S.C. §102(e) because Nishio was filed on March 22, 1994, before
`
`the June 27, 1995 priority date to which the ’194 Patent may be entitled. Nishio was
`
`not cited or considered during prosecution of the application that led to the ’194
`
`Patent.
`
`VII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM
`In light of the disclosures detailed below, the ’194 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Ground #
`1
`2
`
`Ground
`103(a)
`102(e)
`
`Prior art
`Pristash
`Funamoto
`
`Exhibit(s) #
`1006
`1007
`
`Claims
`1, 4-6, 28
`1, 16, 22, 23, 27,
`31
`
`10
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`103(a)
`102(a)
`102(a)
`102(e)
`103(a)
`
`1007
`1008
`1011
`1012
`1012 and 1007
`
`4, 5, 6
`16, 22, 23, 27, 31
`28
`1, 4-6, 28
`16, 22, 23, 27, 31
`
`3
`4
`5
`6
`7
`
`A.
`
`Funamoto
`Gyoko
`Kobayashi
`Nishio
`Nishio in view of
`Funamoto
`Ground 1: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Pristash
`The alleged invention set forth in the ’194 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.
`
`’194 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 ’194 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 ’194 Patent. Further, Fig. 10 of Pristash and Fig. 6 of the
`
`’194 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).
`
`11
`
`

`

`Patent No. 7,300,194
`
`
`Petition for Inter Partes ReviewReview
`
`Pristash
`
`
`
`’194 Patent’194 Patent
`
`
`
`Pristash teaches each and every element of Claims 1,teaches each and every element of Claims 1, 4-6, and 28 of the6, and 28 of the ’194
`
`
`
`
`
`
`
`Patent and therefore, renders those claims unpatentable underPatent and therefore, renders those claims unpatentable under 35 U.S.C. §103.35 U.S.C. §103.
`
`
`
`Pristash teachesPristash teaches
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`several different embodseveral different embodiments ofiments of
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`the light emitting panelthe light emitting panel
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`illuminators. A person of ordinary skill in the art would have been motivated toA person of ordinary skill in the art would have been motivated toA person of ordinary skill in the art would have been motivated to
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`combine elements of a particular embodiment with other elements of othercombine elements of a particular embodiment with other elements of othercombine elements of a particular embodiment with other elements of other
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`embodiments disclosed in Pristash for several reasons.embodiments disclosed in Pristash for several reasons. First, all of the configurationsof the configurations
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`taught by Pristash are aimed to be less expensive and provide for “better control overtaught by Pristash are aimed to be less expensive and provide for “better control overtaught by Pristash are aimed to be less expensive and provide for “better control over
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`the light output from the panel,” and “more efficient transmission of light from athe light output from the panel,” and “more efficient transmission of light from athe light output from the panel,” and “more efficient transmission of light from a
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`light source to the light emitting panel.”light source to the light emitting panel.” Ex. 1006, 1:11-16. Second, PristashSecond, Pristash
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`specifically acknowledgesspecifically acknowledgesspecifically acknowledges
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`that “itthat “itthat “it
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`is obviousis obviousis obvious
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`that equivalent alterations andthat equivalent alterations andthat equivalent alterations and
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`modifications will occur to others skilled in the art upon reading and understanding ofmodifications will occur to others skilled in the art upon reading and understanding ofmodifications will occur to others skilled in the art upon reading and understanding of
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`the specification.” Id. 9:3-5.
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`Therefore, it would be obvious to a person of skill in theTherefore, it would be obvious to a person of skill in the
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`art to alter one embodiment with a feature taught in the same patent but from aart to alter one embodiment with a feature taught in the same patent but from aart to alter one embodiment with a feature taught in the same patent but from a
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`Patent No. 7,300,194
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`Petition for Inter Partes ReviewReview
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`different embodiment. FinallyFinally, Pristash does not limit the combination of any of the, Pristash does not limit the combination of any of the
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`elements for the embodiments.elements for the embodiments. Specifically, Pristash does not teach away from anySpecifically, Pristash does not teach away from any
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`combinationscombinations
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`ofof
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`embodimentsembodiments
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`presented herein.
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`The elements of independentindependent
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`Claims 1 and 28 of the ’194 Patent’194 Patent
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`are shown in the annotated figure atare shown in the annotated figure at
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`right, composed of Figures 1 and 7right, composed of Figures 1 and 7
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`of Pristash that are labeled as claimof Pristash that are labeled as claim
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`elements.
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`With respect to Claim 1, Pristash teaches a light emitting assembly including aWith respect to Claim 1, Pristash teaches a light emitting assembly including aWith respect to Claim 1, Pristash teaches a light emitting assembly including a
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`solid transparent prismatic film 51, light source 3, a second prismatic film 60 whicharent prismatic film 51, light source 3, a second prismatic film 60 whicharent prismatic film 51, light source 3, a second prismatic film 60 which
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`can be replaced by a diffuser or lenticular lens, and an air gap 61.can be replaced by a diffuser or lenticular lens, and an air gap 61. Ex. 1006,Ex. 1006, 2:68, 5:6-
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`9, 5:22-33. Here, the solid transparent prismatic film 51 functions as a panel member,Here, the solid transparent prismatic film 51 functions as a panel member,Here, the solid transparent prismatic film 51 functions as a panel member,
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`as required by the claim language.as required by the claim language. See Escuti Decl., ¶69. Additionally, as previouslyEscuti Decl., ¶69. Additionally, as previously
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`mentioned, the object of Pristash, much like the object of thef Pristash, much like the object of the ’194 Patent, is to’194 Patent, is to
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`provide a panel assembly with more efficient use of light,provide a panel assembly with more efficient use of light, i.e., low loss. SeeSee id. ¶64.
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`With respect to Claim 28, the solidth respect to Claim 28, the solid transparent prismatic film 51 functions astransparent prismatic film 51 functions as
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`the transparent film, sheet, plate, or substrate having top and bottom surfaces, atransparent film, sheet, plate, or substrate having top and bottom surfaces, atransparent film, sheet, plate, or substrate having top and bottom surfaces, a
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`plurality of optical elements or deformities of wellplurality of optical elements or deformities of well-defined shape on or in the top anddefined shape on or in the top and
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`bottom surfaces. See id. ¶¶91-92. Indeed, Pristash discloses that the solid transparent
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`prismatic film 51 with a prismatic surface 52 on one side and a back reflector 53 on
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`the other side. Ex. 1006, 5:6-11. Additionally, the transparent prismatic film can have
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`deformities cut, molded or otherwise formed on both the top and bottom surfaces
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`along the prism edges. Id. 4:46-49, 4:66-5:5. The deformities can vary in depth and
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`shape along the length of the prism edges “to produce a desired light output
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`distribution.” Id. 4:52-54. See Escuti Decl., ¶¶91-92.
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`As for dependent Claims 4, 5, and 6, Pristash teaches each and every limitation
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`of independent Claim 1. Further, Pristash teaches multiple light sources which may be
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`used with a single panel when the rays enter the panel from opposite edges (“Light rays
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`may be caused to enter the panel 50 perpendicular to the wave guide prism edges 54 from one or both
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`end edges 55, 56 of the panel,” Id. 5:11-14 (emphasis added), Fig. 7 below), allowing the
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`light to mix in the panel member or in the air gap (“internally reflected until they strike a
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`deformity,” Id. 5:14-15). See Escuti Decl., ¶¶80-88.
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`The claim chart below shows a detailed analysis of how each element of Claims
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`1, 4-6, and 28 of the ’194 Patent are rendered obvious by the teachings of Pristash.
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`For all these reasons, Claims 1, 4-6, and 28 are unpatentable in view of Pristash and
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`thus, Petitioner has a reasonable likelihood of prevailing with respect to at least one
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`claim.
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`Patent No. 7,300,194
`Petition for Inter Partes Review
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`’194 Claim Element
`1. A light
`emitting
`assembly comprising
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`Pristash (Ex. 1006)
`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 Figs. 1, 7
`below.
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`light
`a
`least
`at
`[1.a]
`emitting panel member
`having a light emitting
`surface,
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`[1.b] at least one light
`source,
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`[1.c] at least one film,
`sheet, plate or substrate
`positioned near the light
`emitting surface through
`which light
`from the
`panel
`member
`is
`
`See Escuti Decl., ¶68.
`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.
`“The second prismatic film 60 may be separated from the
`first prismatic film or wave guide 51 by air or an epoxy
`filled gap 61.” Id. 5:25-27.
`See Escuti Decl., ¶69.
`“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….” Ex.
`1006, 2:64-68.
`See Escuti Decl., ¶70.
`“In addition, the panel 50 includes a second prismatic film
`60 disposed in close proximity to the panel prismatic
`surface 52 to shift the angular emission of light toward a
`particular application.” Ex. 1006, 5:22-25.
`See Escuti Decl., ¶71.
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`Patent No. 7,300,194
`Petition for Inter Partes Review
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`’194 Claim Element
`emitted, and
`[1.d] an air gap between
`the film, sheet, plate or
`substrate and the panel
`member,
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`[1.e] wherein at least one
`surface of
`the
`film,
`sheet, plate or substrate
`has
`one
`or more
`reflective or
`refractive
`surfaces, and
`[1.f] at least one of the
`reflective or
`refractive
`surfaces
`has
`well
`defined optical elements
`or
`deformities
`for
`controlling the emitted
`light such that at least
`some of
`the light
`is
`redirected
`to
`pass
`through a liquid crystal
`display wi