Paper No. 12
` Entered: March 2, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 IPR2014-01362
`Patent No. 7,384,177
`____________
`
`
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
` Entered: March 2, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 IPR2014-01362
`Patent No. 7,384,177
`____________
`
`
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`
`LG Display Co., Ltd. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1–3, 5–7, 9,
`10, 13–15, 19, 21, and 23–27 of U.S. Patent No. 7,384,177 (“the ’177
`patent”). Paper 2 (“Pet.”). Innovative Display Technologies LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we grant the Petition and institute an inter partes
`review of all challenged claims.
`
`
`I. BACKGROUND
`A. The ʼ177 patent (Ex. 1001)
`The ʼ177 patent is entitled “Light Emitting Panel Assemblies.” The
`Abstract describes the subject matter as follows:
`Light emitting assemblies include a tray that forms a
`cavity or recess containing one or more light sources. A sheet,
`film or substrate is positioned over the cavity or recess for
`controlling the light emitted from the assembly. The tray acts as
`a back, side or edge reflector, and has one or more secondary
`reflective or refractive surfaces.
`
`Ex. 1001, Abstract.
`
`B. Illustrative Claim
`Claim 1 is illustrative of the claims at issue:
`1. A light emitting assembly comprising
`a tray having a back wall and continuous side walls that
`form a hollow cavity or recess completely surrounded by the
`side walls, at least one light source located, mounted or
`positioned in the cavity or recess, and
`
`
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`2
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`
`at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to
`fit a particular application,
`wherein the tray acts as at least one of a back, side edge,
`and end edge reflector and has one or more secondary flat,
`angled, faceted or curved reflective or refractive surfaces to
`redirect at least a portion of the light emitted by the light source
`in a predetermined manner within the cavity or recess.
`
`
`C. Related Proceedings
`Patent Owner states that it has asserted infringement by Petitioner of
`the ʼ177 patent in the following proceeding: Delaware Display Group LLC
`et al. v. LG Electronics, Inc. et al., No. 1:13-cv-02109 (D. Del., filed Dec.
`31, 2013). Paper 5.
`Patent Owner identifies numerous other proceedings in which it has
`alleged infringement of the ʼ177 patent. See Paper 5 for a listing.
`In addition, there are three pending inter partes reviews for patents
`related to the ’177 patent. Those are as follows:
`1. IPR2014-01096 (U.S. Patent No. 7,537,370);
`2. IPR2014-01097 (U.S. Patent No. 7,300,194); and
`3. IPR2014-01357 (U.S. Patent No. 6,755,547).
`
`
`D. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`The only claim term for which Petitioner proposes a construction is
`the term “deformities,” appearing in challenged claims 14 and 23–27.
`
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`Petitioner asserts that the ʼ177 patent “expressly defines” the term to mean
`“any change in the shape or geometry of the panel surface and/or coating or
`surface treatment that causes a portion of light to be emitted.” Pet. 9 (citing
`ʼ177 patent, Ex. 1001, col. 4, ll. 44–48). Patent Owner’s Preliminary
`Response does not take a position on claim construction. Prelim. Resp. 4.
`We have considered Petitioner’s construction of “deformities” and
`based on the present record, determine that at this stage it should be adopted
`here.
`We have further determined that, except as may be indicated in the
`discussion below, the remaining terms should be given their plain and
`ordinary meaning.
`
`
`E. References
`Petitioner relies on the following references1:
`Melby
`US 5,054,885
`Oct. 8, 1991
`Nakamura
`US 5,453,885
`Dec. 9, 1993
`Baur
`US 4,142,783
`Mar. 6, 1979
`Sasuga
`US 5,432,626
`Mar. 11, 1993
`Pristash
`US 5,005,108
`Apr. 2, 1991
`Farchmin
`US 5,567,042
`May 27, 1994
`
`Petitioner also states that it is relying on Admitted Prior Art (“APA”)
`from the ʼ177 patent specification. Pet. 10; Ex. 1001, col. 2, l.
`64–col. 3, l. 4. Petitioner also relies on a Declaration of Michael J. Escuti,
`Ph.D. (“Escuti Decl.”). Ex. 1004.
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`
`
`
`1 The references are ordered by exhibit number with effective dates asserted
`by Petitioner.
`
`
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`4
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`
`Melby
`
`
`
`§ 102(e)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`§103(a)
`
`§ 103(a)
`
`Nakamura
`
`Baur
`Baur and Nakamura
`Sasuga and Farchmin
`
`Sasuga, Farchmin, and
`Nakamura
`Sasuga, Farchmin, and
`Pristash
`
`F. Grounds Asserted
`Petitioner challenges claims 1–3, 5–7, 9, 10, 13–15, 19, 21, and 23–27
`
`of the ʼ177 patent on the following grounds:
`References
`Basis
`§ 103(a)
`
`Claims Challenged
`1–3, 5–7, 9, 10, 13–15, 19,
`21, 23–25, and 27
`1, 2, 6, 7, 9, 10, 13–15, 19,
`21, 23, –24, and 26
`1, 2, 13, and 14
`6, 9, 10, 15, 19, 21, and 23
`1, 2, 6, 7, 9, 10, 13, 15, and
`21
`
`14 and 19
`
`23, 25, and 26
`
`II. ANALYSIS
`A. Real Party-in-Interest
`We first address Patent Owner’s contention that the Petition should be
`denied because Petitioner has failed to name two real parties-in-interest.
`Prelim. Resp. 26. They are LG Electronics Inc. and LG Electronics U.S.A.
`Inc. Id.
`Patent Owner’s preliminary response fails to provide convincing
`evidence that LG Electronics Inc. is a real party-in-interest. According to
`Patent Owner, “[w]e know LG Electronics Inc. is a real party in interest
`because it owns 37.9% of Petitioner and because it has admitted to being a
`related party to Petitioner.” Id. (citing Ex. 2004). We are not persuaded by
`this argument. As the Office Trial Practice Guide, 77 Fed. Reg. 48,756,
`
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`48,759 (Aug. 14, 2014), makes clear, and as Patent Owner acknowledges
`(Prelim. Resp. 12), an important factor in determining real party in interest is
`control or the ability to control the proceeding. Zoll Lifecor Corp. v. Philips
`Elect. North America Corp, IPR2013-00609 (PTAB Mar. 20, 2014), Paper
`15, slip op. at 10. In Zoll, the Board relied on the fact that the party
`determined to be a real party-in-interest (Zoll Medical) controlled 100 % of
`the petitioner (Zoll Lifecor). Here, LG Electronics Inc. is not even a
`majority owner of Petitioner. And the fact that the attorneys representing
`Petitioner here also represent LG Electronics Inc. in a district court lawsuit
`involving the ʼ196 patent, without more, is insufficient evidence to
`demonstrate control of this proceeding by LG Electronics.
`Patent Owner also fails to provide convincing evidence that LG
`Electronics U.S.A. Inc. is a real party-in-interest. Patent Owner’s sole
`argument states “[w]e know that LG Electronics U.S.A., Inc. is a real party-
`in-interest because it is 100 % owned by LG Electronics, Inc.” Prelim.
`Resp. 27. But Patent Owner has not provided sufficient proof that LG
`Electronics Inc. is a real party-in-interest. See supra. Therefore, based on
`the evidence of record, Patent Owner’s contention that LG Electronics
`U.S.A. Inc. also is a real party-in-interest simply because it is “100% owned
`by LG Electronics, Inc.” is not persuasive.
`We therefore determine that, on this record, the Petition should not be
`denied on this ground.
`
`
`B. Statutory Bar Under 35 U.S.C. § 315(b)
` Patent Owner also asserts that the Petition is barred under 35 U.S.C
`
`6
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`§ 315(b). Prelim. Resp. 28. Patent Owner makes the argument that
`Petitioner is barred from filing the Petition because Petitioner is in privity
`with HP and Dell. Id. at 28–29. According to Patent Owner, both HP and
`Dell were served with complaints by Patent Owner charging infringement of
`the ʼ177 patent on July 3, 2013, more than one year before the Petition was
`filed. Id. at 30. Therefore, Dell, HP, and their privies, are barred from filing
`this Petition under the provisions of 35 U.S.C. § 315(b). Id.
`Patent Owner further contends that since the filing of the Petition,
`Petitioner has “acted to control” the cases against HP and Dell, “to protect
`its interests and fulfill its indemnification obligations as a supplier of LCM
`Modules” to those companies. Id. Patent Owner states that it plans to seek
`additional discovery on this issue. Id. at 28.
`Patent Owner does not provide sufficient evidence to demonstrate that
`Petitioner exercised control or could have exercised control over HP’s and
`Dell’s participation in the respective district court proceedings. Accordingly,
`we determine that based on the evidence presented at this stage of the
`proceeding, 35 U.S.C. § 315(b) does not bar institution of inter partes
`review.
`
`C. Asserted Grounds Based On Melby
`(Claims 1–3, 5–7, 9–10, 13–15, 19, 21, 23–25, and 27)
`Petitioner contends that these claims are obvious over Melby under 35
`U.S.C. § 103(a). Pet. 13. For the reasons that follow, we are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`challenge.
`
`
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`1. Melby Overview
`
`Melby describes a thin light fixture for a backlit flat panel display.
`
`Ex. 1001, col. 1, ll. 14–16. In one embodiment, the fixture includes a
`housing with walls that define an optical cavity having an optical window.
`Id. Fig. 3; col. 2, ll. 63–65. Light from two partially collimated light sources
`is directed to the prisms of a structured surface. Id. col. 2, l. 67–col. 3, l. 1.
`In another embodiment, a housing including walls defines an optical cavity.
`Id. Fig. 1; col. 2, ll. 6–8. The optical cavity has an optical window with a
`light transmitting member. Id. col. 2, ll. 9–11. The light transmitting
`member may be transparent or translucent or it may include structures.
`Id. col. 2, ll. 11–14.
`
`2. Discussion
`
`Petitioner’s analysis of claims 1–3, 5–7, 9–10, 13–15, 19, 21, 23–25,
`and 27 of the ʼ177 patent in relation to Melby appears at pages 13–22 of the
`Petition. Petitioner contends “Melby discloses all of the limitations of
`claims 1–3, 5–7, 9–10, 13–15, 19, 21, 23–25, and 27, but within both the
`first and third embodiments.” Pet. 13.
`
`Patent Owner responds that Melby fails to meet a number of
`limitations of the challenged claims. Prelim. Resp. 4–14. For example,
`Patent Owner asserts that Melby lacks a teaching of a “cavity completely
`surrounded by side walls” as called for in claim 1. Id. at 4–7. Patent Owner
`also asserts that the “sheet, film or substrate overlying the assembly”
`limitation of claim 1 is not met by Melby. According to Patent Owner, the
`alleged “sheet, film or substrate” in Melby does not control the emitted light
`“to fit a particular application” as called for by the claims. Id. at 7.
`
`
`
`8
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`
`We have reviewed the information provided by Petitioner, including
`the claim chart analysis (Pet. 15–22), and are persuaded that, based on this
`record, Petitioner has set forth sufficient information to demonstrate that a
`person of ordinary skill would have modified Melby’s Figure 1 embodiment
`in light of the Figure 3 embodiment, as stated by Petitioner. We are
`convinced that Petitioner has articulated a sufficient rationale for combining
`the features of Figures 1 and 3. Pet. 13. In that regard, Petitioner cites
`Melby’s disclosure that the structured surface of Figure 3 may be replaced
`by the planar surface of Figure 1. Ex. 1006, col. 3, ll. 1–6. We further note
`that Patent Owner does not challenge this rationale.
`We are further persuaded that Petitioner has provided sufficient
`information to demonstrate a reasonable likelihood that the challenged
`claims would have been obvious over Melby. We are not persuaded by
`Patent Owner’s arguments to the contrary. For example, we are not
`convinced by Patent owner that Figure 3 of Melby would not have been
`recognized by a person of ordinary skill as a cross-sectional view, even
`though it is not described as such. See Escuti Decl. ¶ 71. We conclude,
`therefore, that based on this record, Petitioner has demonstrated a reasonable
`likelihood of prevailing on this challenge to claims 1–3, 5–7, 9–10, 13–15,
`19, 21, 23–25, and 27 as obvious over Melby.
`
`
`D. Asserted Grounds Based On Nakamura
`(Claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26)
`Petitioner contends that these claims are anticipated by Nakamura
`under 35 U.S.C. § 102. Pet. 22. For the reasons that follow, we are
`
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`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this challenge.
`
`1. Nakamura Overview
`
`Nakamura describes a liquid crystal display device that is back-
`illuminated by means of LEDs. Ex. 1007, col. 1, ll. 9–10. Nakamura
`describes a shallow box-form holder and a liquid crystal panel installed in
`the front surface opening of the holder. Id. col. 2, ll. 51–54; col. 4, ll. 49–55.
`Nakamura also describes a light source mounted in the cavity of the holder.
`Id. col. 2, ll. 59–60; col. 4, ll. 51–53. The inside surface of the holder is
`reflection-treated and a light diffusing plate is installed in the opening of the
`holder. Id. col. 2, ll. 60–64; col. 4, ll. 54–65.
`
`2. Discussion
`
`Petitioner’s analysis of claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24,
`26 of the ʼ177 patent in relation to Nakamura appears at pages 22–32 of the
`Petition. Petitioner contends that “each element” of the challenged claims is
`“anticipated by Nakamura.” Pet. 24.
`
` Patent Owner responds that Nakamura fails to meet a number of
`limitations of the challenged claims. Prelim. Resp. 14–17. For example,
`Patent Owner asserts that Petitioner fails to demonstrate that Nakamura
`describes “a tray having . . . continuous side walls” as called for in claim 1.
`Id. at 14–15. Patent Owner also asserts that Petitioner fails to show that
`Nakamura describes “a tray having a back wall.” Id. at 15. Also, Patent
`Owner asserts that the Petition does not show that the “sheet, film or
`substrate overlying the assembly” limitation of claim 14 is not met by
`Nakamura. Id. at 15. According to Patent Owner, Petitioner does not show
`
`
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`that the alleged “sheet, film or substrate” in Nakamura controls the emitted
`light “to fit a particular application” as claimed. Id. at 16.
`We have reviewed the information provided by Petitioner, including
`the claim chart analysis (Pet. 25–32), and are persuaded that, based on this
`record, Petitioner has set forth sufficient information to demonstrate that the
`challenged claims are anticipated by Nakamura. We are not persuaded by
`Patent Owner’s arguments to the contrary. For example, we are not
`convinced by Patent Owner that Nakamura does not describe a tray having a
`back wall and continuous side walls. See supra. Nakamura describes a
`“shallow box form holder.” Ex. 1007, col. 4, ll. 48–49. We determine that a
`person of ordinary skill would understand such a holder to have a back wall
`and continuous side walls. We conclude, therefore, that based on this
`record, Petitioner has demonstrated a reasonable likelihood of prevailing on
`this challenge to claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26 as
`anticipated by Nakamura.
`
`E. Asserted Grounds Based On Baur (Claims 1, 12, 13, and 14)
`Petitioner contends that these claims are obvious over Baur under 35
`U.S.C. § 103(a). Pet. 13. For the reasons that follow, we are not persuaded
`that Petitioner has demonstrated a reasonable likelihood of prevailing on this
`challenge.
`
`1. Baur Overview
`
`Baur describes an electro-optical display device that may operate
`either in one or multi-color mode, and utilizes electro-optical light valves for
`controlling transmission of the passive light through the device. Ex. 1008,
`Abstract. The device is characterized by passively amplifying the brightness
`
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`of the display device with the addition of a light trap which includes a
`fluorescent plate having mirrored image surfaces. Id. The device may be
`used with liquid crystal displays. Id.
`
`Baur describes several embodiments of the invention. In one
`embodiment (Figure 4), a fluorescent plate acts as passive brightness
`amplification and is provided with an additional light source so the display
`may be operated in darkness. Id. col. 7, ll. 49–53. The fluorescent plate has
`mirrored surfaces and a light exit window. At one end surface, a recess is
`provided. A small light source, for example an LED, is provided in the
`recess. In a second embodiment (Figure 2), Baur describes the use of
`polarizers, if required by the particular type of display plate. Id. col. 5, ll.
`52–68. In another embodiment (Figure 3), the emerging fluorescent light is
`deflected by a film which may be either a light diffusing layer or film having
`a fluorescent material pigment layer. Id. col. 7, ll. 30–34.
`
`2. Discussion
`
`Petitioner’s analysis of claims 1, 2, 13, and 14 of the ʼ177 patent in
`relation to Baur appears at pages 32–38 of the Petition. Petitioner contends
`“Baur discloses all of the limitations of claims 1, 2, 13, and 14, but within
`different embodiments of Baur.” Pet. 32. Petitioner further contends “[a]
`person of ordinary skill would be motivated to pick and choose features of
`the different embodiments to combine because they are taught within the
`same patent and there is no disclosure suggesting that they should not or
`cannot be combined.” Id. (citing Escuti Decl. ¶ 228)(emphasis added). The
`same statement appears in the cited paragraph of Escuti Declaraton.
`
`Patent Owner responds that Petitioner has failed show that the “sheet,
`film or substrate overlying the assembly” limitation of claim 1 is met by
`
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`Baur. Prelim. Resp. 17. According to Patent Owner, the alleged “sheet, film
`or substrate” in Baur does not control the emitted light “to fit a particular
`application” as called for by the claims. Id. We are not persuaded by this
`argument.
`
`Patent Owner further contends that “neither the Petition nor the Escuti
`Declaration ever meaningfully address[es] the requirement that the films
`overlie the assembly.” Id. at 18. We agree with Patent Owner that
`Petitioner’s statements in this regard are “conclusory” and therefore
`unavailing. Id. Thus, we are not persuaded that Petitioner sets forth a
`convincing rationale to support its conclusion of obviousness based on
`combining Baur’s embodiments. See KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 417 (2007) (Obviousness showing requires “some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Furthermore, KSR instructs us that it is not enough just to show that
`elements in the prior art can be combined. See id. at 418 (requiring a
`determination of “whether there was an apparent reason to combine the
`known elements in the fashion claimed by the patent at issue”) (emphasis
`added).
`
`The rationale advanced by the Petition and the Escuti Declaration, that
`a person of ordinary skill would “pick and choose” features from various
`embodiments of Baur, simply because they are in the same patent, is
`insufficient to demonstrate a reasonable likelihood of prevailing on this
`challenge to claims 1, 12, 13, and 14 as obvious over Baur. We conclude
`therefore that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on this challenge.
`
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`
`F. Asserted Grounds Based On Baur and Nakamura
`(Claims 6, 9, 10, 15, 19, 21, and 23)
`Petitioner contends that these claims are obvious over Baur and
`Nakamura under 35 U.S.C. § 103(a). Pet. 38. For the reasons that follow,
`we are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on this challenge.
`
`Petitioner’s analysis of claims 6, 9, 10, 15, 19, 21, and 23 of the ʼ177
`patent in relation to Baur appears at pages 38–43 of the Petition. Petitioner
`concludes that each of the challenged claims is rendered obvious by “the
`teachings of Baur with Nakamura.” Pet. 39.
`
`Patent Owner responds that the limitation of “at least one sheet, film,
`or substrate overlying the assembly” is not met with respect to claim 15 and
`its dependent claims (claims 19, 21, and 23). Prelim. Resp. 18–19. Patent
`Owner asserts that Petitioner relies on the same support for this limitation as
`for the corresponding limitation in claim 1 discussed above in relation to
`Baur. Id. at 19. Patent Owner further asserts that Petitioner does not put
`forth any further evidence that the combination of Baur and Nakamura meets
`this limitation. Id.
`
`We agree with Patent Owner that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge. We have determined
`supra that Baur alone does not meet this limitation because Patent Owner
`has not set forth a sufficient rationale for combining features of the various
`embodiments described. Petitioner relies on this same analysis with respect
`to the challenge based on Baur and Nakamura. Pet. 41.
`
`The same conclusion applies to claims 6, 9, and 10. Each of these
`claims depends from claim 1, and therefore also includes the “sheet, film, or
`
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`substrate overlying the assembly” limitation. For these claims, Petitioner
`provides no separate analysis of this limitation in relation to Baur or
`Nakamura. Instead, Petitioner relies on its analysis of claim 1 in relation to
`Baur: “As discussed above, Baur discloses each and every element of
`independent claim 1 of the ʼ177 patent.” Pet. 38. For the reasons discussed
`above, we are not persuaded by this analysis.
`
`We conclude therefore that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge to claims 6, 9, 10, 15,
`19, 21, and 23.
`
`
`
`
`G. Asserted Grounds Based On Sasuga and Farchmin
`(Claims 1, 2, 6, 7, 9, 10, 13, 15, and 21)
`Petitioner contends that these claims are obvious over Sasuga and
`Farchmin under 35 U.S.C. § 103(a). Pet. 44. For the reasons that follow, we
`are not persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this challenge.
`
`1. Overview of Sasuga and Farchmin
`
`Sasuga discloses a liquid crystal display module (MDL) having a
`lower casing (LCA), mobile frame (MFR) and shield casing (SHD). Ex.
`1009, Fig. 23; col. 17, l. 65–col. 18, l. 14. These parts are assembled
`together to hold a liquid crystal display panel (PNL). Id.
`
`Farchmin describes a backlight for an LCD display. Ex. 1011,
`Abstract. The backlight includes a molded plastic reflector 26 “which
`doubles as the structural foundation to which the other components of the
`backlight unit 22 are secured.” Id. Fig. 1; col. 2, ll. 49–51.
`
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`2. Analysis
`
`Petitioner’s analysis of claims 1, 2, 6, 7, 9, 10, 13, 15, and 21 of the
`
`ʼ177 patent in relation to Sasuga and Farchmin appears at pages 44–53 of the
`Petition. Petitioner concludes that “[i]t would have been obvious for a
`person of ordinary skill in the art to combine Farchmin with Sasuga to
`provide continuous side walls with a hollow cavity that completely
`surrounds the cavity or recess in Sasuga.” Pet. 45. Further, Petitioner
`asserts “[a] person of ordinary skill in the art would have been motivated to
`follow Sasuga’s suggestion and Farchmin’s teachings to use the reflector 26
`of Farchmin in place of the LCA of Sasuga.” Id. at 46.
`
`Patent Owner responds that Petitioner fails to consider Sasuga “as a
`whole.” Prelim. Resp. 21. Patent Owner further contends that a stated
`objective of Sasuga is to provide a liquid crystal display that can be easily
`repaired and replaced in its backlights. Id. (citing Ex. 1009, col. 1, ll. 58–
`60). For this reason, the middle frame and lower casing in Sasuga are
`described as easily assembled and disassembled. Id. (citing Ex. 1009, col. 2,
`ll. 3–9). Patent Owner further asserts that Farchmin’s goal is to maintain
`sufficient light when light reflector 26 fails. Id. at 22 (citing Ex. 1011,
`col. 1, ll. 43–47). Patent Owner concludes that the goal of Farchmin (to
`lessen the need for replacement or repair) is “at direct odds” with the goal of
`Sasuga (having a lower casing that can be easily repaired, etc.). Id. Patent
`Owner concludes this obviousness challenge to claim 1 and its dependent
`claims fails because Sasuga and Farchmin would not have been combined as
`asserted by Petitioner. Id. at 23. Patent Owner asserts that the same
`reasoning applies to claim 15 and its dependent claims. Id. at 24.
`
`
`
`16
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`Case IPR2014-01362
`Patent 7,384,177
`
`We agree with Patent Owner that Petitioner has not presented a
`
`convincing rationale for combining Farchmin and Sasuga. We further agree
`with Patent Owner that Farchmin and Sasuga address different problems, an
`important distinction that is not discussed by Petitioner and should be
`considered in determining obviousness. When evaluating claims for
`obviousness, “the prior art as a whole must be considered. The teachings are
`to be viewed as they would have been viewed by one of ordinary skill.” In
`re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). Accordingly, “‘[i]t is
`impermissible within the framework of section 103 to pick and choose from
`any one reference only so much of it as will support a given position, to the
`exclusion of other parts necessary to the full appreciation of what such
`reference fairly suggests to one of ordinary skill in the art.’” Id. (quoting In
`re Wesslau, 353 F.2d 238, 241 (CCPA 1965)).
`
`We conclude therefore that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge to claims 1, 2, 6, 7, 9,
`10, 13, 15, and 21.
`
`
`H. Asserted Grounds Based On Sasuga, Farchmin, and Nakamura
`(Claims 14 and 19)
`Petitioner contends that these claims are obvious over Sasuga,
`Farchmin, and Nakamura under 35 U.S.C. § 103(a). Pet. 54. For the
`reasons that follow, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this challenge.
`
`Petitioner’s analysis of claims 14 and 19 of the ʼ177 patent in relation
`to Sasuga, Farchmin, and Nakamura appears at pages 54–56 of the Petition.
`Claims 14 and 19 depend from claims 1 and 15, respectively. Petitioner’s
`
`
`
`17
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`analysis of claims 14 and 19 over Sasuga, Farchmin, and Nakamura
`incorporates Petitioner’s obviousness analysis of claims 1 and 15 over
`Sasuga and Farchmin. Pet. 55–56 (claim charts). Petitioner relies on
`Nakamura only for its disclosure of a diffusing film (as to claim 14) and
`using LEDs as a light source (as to claim 19). Therefore, our reasoning,
`supra, that Petitioner has not presented a convincing rationale for combining
`Farchmin and Sasuga, applies also to this challenge based on those
`references in further combination with Nakamura.
`
`We conclude therefore that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge to claims 14 and 19.
`
`
`
`
`I. Asserted Grounds Based On Sasuga, Farchmin, and Pristash
`(Claims 23, 25, and 26)
`Petitioner contends that these claims are obvious over Sasuga,
`Farchmin, and Pristash under 35 U.S.C. § 103(a). Pet. 56. For the reasons
`that follow, we are persuaded that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge.
`
`Petitioner’s analysis of claims 23, 25, and 26 of the ʼ177 patent in
`relation to Sasuga, Farchmin, and Pristash appears at pages 56–58 of the
`Petition. Each of claims 23, 25, and 26 depends from claim 15. Petitioner’s
`analysis of these claims over Sasuga, Farchmin, and Pristash incorporates
`Petitioner’s obviousness analysis of claims 15 over Sasuga and Farchmin.
`Pet. 58 (claim chart). Petitioner relies on Pristash only for its disclosure of
`certain diffuser surface deformities. Id. Therefore, our reasoning, supra,
`that Petitioner has not presented a convincing rationale for combining
`
`
`
`18
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`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`Farchmin and Sasuga, applies also to this challenge based on those
`references in further combination with Pristash.
`
`We conclude therefore that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on this challenge to claims 23, 25, and
`26.
`
`
`III. SUMMARY
`The information presented shows there is a reasonable likelihood that
`Petitioner will prevail on the following challenges to patentability of the
`ʼ177 patent:
`A. Obviousness of claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and
`27 over Melby; and
`B. Anticipation of claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and
`26 by Nakamura;
`The information presented does not show there is a reasonable
`likelihood that Petitioner will prevail on any of the following challenges to
`patentability of the ʼ177 patent:
`C. Obviousness of claims 1, 2, 13, and 14 over Baur;
`D. Obviousness of claims 6, 9, 10, 15, 19, 21, and 23 over Baur and
`Nakamura;
`E. Obviousness of claims 1, 2, 6, 7, 9, 10, 13, 15, and 21 over Sasuga
`and Farchmin;
`F. Obviousness of claims 14 and 19 over Sasuga, Farchmin, and
`Nakamura; and
`G. Obviousness of claims 23, 25, and 26 over Sasuga, Farchmin, and
`Pristash.
`
`
`
`19
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`Case IPR2014-01362
`Patent 7,384,177
`
`
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or the
`construction of any claim term.
`
`IV. ORDER
`
`It is, therefore,
`ORDERED that the Petition is granted as to all challenged claims;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`partes review is hereby instituted on the following grounds:
`A. Obviousness of claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and
`27 over Melby; and
`B. Anticipation of claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and
`26 by Nakamura;
`FURTHER ORDERED that no other proposed grounds of
`unpatentability are authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
`
`
`
`
`
`20
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`Case IPR2014-01362
`Patent 7,384,177
`
`PETITIONER:
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`PATENT OWNER:
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`
`21
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