UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`LG ELECTRONICS, INC.
`Petitioners
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2014-01362
`
`Patent 7,384,177
`_______________
`
`
`
`
`
`PETITIONERS’ CONSOLIDATED REPLY IN SUPPORT OF THE
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,384,177
`
`
`
`

`
`IPR2014-01362: Patent No. 7,384,177
`
`TABLE OF CONTENTS
`
`
`I. MR. WERNER’S DECLARATION SHOULD BE GIVEN NO
`WEIGHT ........................................................................................................ 1
`II. CLAIMS 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, AND 27 ARE OBVIOUS
`OVER MELBY .............................................................................................. 4
`A. Melby Discloses “at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application” (claim 1) .......................................................... 5
`B. Melby Discloses “a tray having a back wall and continuous side walls
`that form a hollow cavity or recess completely surrounded by the side
`walls” (claim 1) .................................................................................... 7
`C. Melby Discloses “a portion of the light emitted from the light sources
`mixes in the cavity or recess” (claim 9) ............................................. 10
`D. Melby Discloses “the at least one sheet, film or substrate has
`deformities for controlling the light output ray angle distribution to fit
`a particular application.” (claim 14) .................................................. 11
`E. Melby Discloses “hollow cavity or recess completely surrounded by
`the side walls” (claim 15) ................................................................... 11
`F. Melby Discloses “at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application” (claim 15) ...................................................... 12
`G. Melby Discloses “wherein there is at least one sheet, film or substrate
`that has deformities on at least one surface to control the light output
`ray angle distribution to fit a particular application” (claim 23) ....... 12
`III. CLAIMS 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, AND 26 ARE
`ANTICIPATED BY NAKAMURA ........................................................... 13
`A. Nakamura Discloses “a tray having … continuous side walls” (claim
`1) ......................................................................................................... 14
`B. Nakamura Discloses “a tray having a back wall …” (claim 1) ......... 15
`C. Nakamura Discloses “the at least one sheet, film or substrate has
`deformities for controlling the light output ray angle distribution to fit
`a particular application.” (claim 14) .................................................. 16
`D. Nakamura Discloses “a tray having … continuous side walls” (claim
`15) ....................................................................................................... 18
`Nakamura Discloses “a tray having a back wall …” (claim 15) ...... 19
`Nakamura Discloses “wherein there is at least one sheet, film or
`substrate that has deformities on at least one surface to control the
`
`E.
`F.
`
`ii
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`

`
`IPR2014-01362: Patent No. 7,384,177
`
`light output ray angle distribution to fit a particular application”
`(claim 23) ........................................................................................... 19
`IV. REAL PARTY IN INTEREST ................................................................... 19
`V.
`STATEMENT OF MATERIAL FACTS IN DISPUTE .......................... 20
`VI. CONCLUSION ............................................................................................ 21
`
`
`
`iii
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`

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`IPR2014-01362: Patent No. 7,384,177
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Bode,
`550 F.2d 656, 660 (CCPA 1977) .................................................................... 9, 23
`
`In re Schreiber,
`128 F.3d at 1477 ................................................................................................. 23
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529 ..................................................................................................... 2
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 24
`
`Numatics, Inc. v. Balluff, Inc.,
`2014 U.S. Dist. LEXIS 176759 (E.D. Mich. Dec. 16, 2014) ............................... 3
`
`Standard Havens Prods. v. Gencor Indus.,
`953 F.2d 1360 (Fed. Cir. 1991), cert. denied, 506 U.S. 817 (1992) ............... 8, 23
`
`Viterbo v. Dow Chemical Co.,
`826 F.2d 420 (5th Cir. 1987) ................................................................................ 3
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054 ..................................................................................................... 2
`
`
`
`iv
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`

`
`IPR2014-01362: Patent No. 7,384,177
`
`PETITIONERS’ EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,384,177
`Prosecution History of U.S. Patent No. 7,384,177
`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. 5,054,885 (“Melby”)
`U.S. Patent No. 5,453,855 (“Nakamura”)
`U.S. Patent No. 4,142,781 (“Baur”)
`U.S. Patent No. 5,432,626 (“Sasuga”)
`U.S. Patent No. 5,005,108 (“Pristash”)
`U.S. Patent No. 5,567,042 (“Farchmin”)
`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”)
`European Patent Application Publication No. 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”)
`Declaration of Jamie Beaber
`Comparison of Patent Owner Response with Werner Declaration
`6/16/2015 Deposition of Mr. Kenneth Werner
`IDT’s Opening Claim Construction Brief
`
`
`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
`1025
`1026
`1027
`
`v
`
`

`
`IPR2014-01362: Patent No. 7,384,177
`
`In its March 2, 2015 Institution Decision on the ’177 Patent, the Board
`
`correctly found that Petitioner LG Display is likely to prevail in showing that (a)
`
`claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and 27 are obvious over Melby; (b)
`
`claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26 are anticipated by Nakamura.
`
`See Decision, Paper 12, at 20.1 Patent Owner Innovative Display Technologies,
`
`LLC’s Response does not rebut these grounds or the Board’s Decision. See
`
`Response, Paper 20. Additionally, Patent Owner’s Response is nearly identical to
`
`the declaration of its expert, Mr. Werner, who offers no technical opinions but
`
`rather challenges the sufficiency of the disclosure in the Petition. Thus, as
`
`explained below, it should be given no weight.
`
`I. MR. WERNER’S DECLARATION SHOULD BE GIVEN NO
`WEIGHT
`
`
`
`Mr. Werner’s declaration should be given no weight for at least two reasons.
`
`First, the patent and prior art analysis sections of Mr. Werner’s declaration are
`
`nearly identical to those sections of the Patent Owner Response. Compare Paper
`
`No. 19, 3-5 9-19 at with Ex. 2016, at ¶¶28-32, 38-59; see also Ex. 1025. Indeed,
`
`Mr. Werner admitted during his deposition that the Patent Owner Response was
`
`nearly identical to his declaration except for small changes. See Ex.1026, 21:3-
`
`
`1 The Board consolidated IPR2015-00489 with this proceeding. See Paper 22 (July
`
`13, 2015).
`
`1
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`

`
`IPR2014-01362: Patent No. 7,384,177
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`23:4. Because Mr. Werner’s declaration simply tracks the arguments in the
`
`Response and is nearly identical, his declaration is not helpful and should be given
`
`no probative weight. See, e.g., Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`
`IPR2013-00054, Paper No. 12, at 12 (April 8, 2013) (“The Declaration . . .
`
`appears, for the most part, simply to track and repeat the arguments for
`
`unpatentability presented in the Petition [and] . . . is therefore no more helpful that
`
`[sic] the Petition in determining where the challenged recitation is found in the
`
`references.”); see also Kinetic Techs., Inc. v. Skyworks Solutions, Inc., IPR2014-
`
`00529, Paper No. 8, at 18 (Sept. 23, 2014) (“Paragraphs 28, 29, and 30 of Dr.
`
`Mohapatra’s Declaration essentially are identical to the corresponding text of the
`
`Petition. Based on our analysis above, we give Dr. Mohapatra’s Declaration no
`
`probative weight.”).
`
`
`
`Second, Mr. Werner’s declaration should be given no weight because he
`
`provides no technical opinions on the prior art. Mr. Werner frequently states that
`
`“the Petition fails to show” or “the Petitioner fails to show,” but offers no
`
`affirmative opinion challenging the disclosure in the prior art or supporting his
`
`conclusory statements. See, e.g., Ex. 2016, at ¶¶38, 46, 48-59. Notably, Mr.
`
`Werner admitted during his deposition that he was only challenging the disclosure
`
`in the Petition and was not addressing the disclosure of claim limitations in the
`
`prior art. See, e.g., Ex. 1026, at 27:13-15, 31:5-10, 31:20-25. In fact, Mr. Werner
`
`2
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`

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`IPR2014-01362: Patent No. 7,384,177
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`admitted that he was only asked to challenge the disclosure in the Petition and only
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`the portions of Dr. Escuti’s declaration cited in the Petition. Id. at 25:3-26:21,
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`29:13-30:7. That is, Mr. Werner was not offering any technical opinions in his
`
`declaration and when asked about limitations of the claims during his deposition,
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`he refused to offer any technical opinions arguing that it was outside the scope of
`
`what he was asked to do. Id. at 37:9-43:25. Further, Mr. Werner’s declaration only
`
`addresses “certain elements” of the claims discussed in the Petition because those
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`were the only elements Patent Owner “targeted” in the draft declaration sent to
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`him. Id. at 112:6-11, 113:16-23. Mr. Werner even admitted that he only reviewed
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`the portions of the prior art that were necessary, admitting that he was the one who
`
`determined what was necessary to review. Id. at 40:24-43:25. Indeed, rather than
`
`focusing his inquiry from the perspective of one skilled in the art, Mr. Werner
`
`became Patent Owner’s advocate, only analyzing as much “as [he] needed to make
`
`a convincing argument about what the petition was saying.” Id. at 133:23-134:1.
`
`Because Mr. Werner has not provided any technical expert opinions in his
`
`declaration or during his deposition, his declaration is not helpful and should be
`
`given no probative weight. Viterbo v. Dow Chemical Co., 826 F.2d 420, 424 (5th
`
`Cir. 1987) (“Dr. Johnson’s testimony is no more than [plaintiff’s] testimony
`
`dressed up and sanctified as the opinion of an expert. Without more than
`
`credentials and a subjective opinion, an expert’s testimony that ‘it is so’ is not
`
`3
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`

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`IPR2014-01362: Patent No. 7,384,177
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`admissible.”); Numatics, Inc. v. Balluff, Inc., 2014 U.S. Dist. LEXIS 176759, *6-
`
`18 (E.D. Mich. Dec. 16, 2014) (“An expert witness who is merely a party’s
`
`lawyer’s avatar contributes nothing useful to the decisional process.”)
`
`
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`For at least the foregoing reasons, Mr. Werner’s declaration should be
`
`afforded no weight.
`
`II. CLAIMS 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, AND 27 ARE OBVIOUS
`OVER MELBY
`
`Patent Owner challenges the obviousness of claims 1–3, 5–7, 9, 10, 13–15,
`
`19, 21, 23–25, and 27 over Melby on four main grounds. First, Patent Owner
`
`argues that the Petition fails to show that Melby discloses “at least one sheet, film
`
`or substrate overlying the assembly for controlling the light emitted from the
`
`assembly to fit a particular application.” Response, at 9. Second, Patent Owner
`
`argues that the Petition fails to show that Melby discloses “a tray having a back
`
`wall and continuous side walls that form a hollow cavity or recess completely
`
`surrounded by the side walls.” Response, at 10. Third, Patent Owner argues that
`
`the Petition fails to show that Melby discloses “a portion of the light emitted from
`
`the light sources mixes in the cavity or recess.” Response, at 14. Finally, Patent
`
`Owner argues that the Petition fails to show that Melby discloses “the at least one
`
`sheet, film or substrate has deformities for controlling the light output ray angle
`
`distribution to fit a particular application.” Response, at 15.
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`Each of these attacks on the Petition is unavailing. First, Patent Owner
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`4
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`IPR2014-01362: Patent No. 7,384,177
`
`merely rehashes its preliminary response, even asking that “the Board refuse to
`
`institute this IPR.” Response, at 2. This IPR has already been instituted and this
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`request is clearly irrelevant. Second, Patent Owner never challenges the disclosure
`
`in the prior art, but rather only challenges the disclosure in the Petition. Moreover,
`
`Patent Owner never challenges the motivation to combine the embodiments of
`
`Melby that render the instituted claims obvious. Finally, as discussed above,
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`Patent Owner’s arguments are merely attorney argument because they are not
`
`supported by expert technical opinions. As such, and as further set forth in the
`
`evidence of record, claims 1–3, 5–7, 9, 10, 13–15, 19, 21, 23–25, and 27 are
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`obvious over Melby.
`
`A. Melby Discloses “at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit
`a particular application” (claim 1)
`
`Patent Owner argues that the Petition does not show how the film/sheet/plate
`
`of Melby controls “the light emitted from the assembly to fit a particular
`
`application.” Response, at 9. However, the Petition and Dr. Escuti’s declaration are
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`quite explicit that Melby discloses “a particular application.”
`
`First, Petitioner specifically states that “Melby discloses a light fixture for
`
`use in flat panel displays.” Pet. at 13 (citing Ex. 1006, 1:14-16). Petitioner also
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`explains that sheet 40 of Melby overlies the assembly and has pillow optics and
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`Fresnel prisms, which reflect light and provide for light mixing. Pet. at 14 (citing
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`5
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`

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`IPR2014-01362: Patent No. 7,384,177
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`Ex. 1006, at 2:11-14, 2:30-33, Escuti Decl., ¶¶84, 88, 92-94, 102-103).
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`Moreover, Dr. Escuti testified that “Melby is directed to a light fixture with a
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`light source of partially collimated light in a housing with a cavity having a
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`structured surface with a plurality of prisms for reflecting light form [sic] the light
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`source out of the cavity.” Escuti Decl., at ¶65 (citing Ex. 1006, Abstract). The
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`emission of light through the overlying film containing prisms and optics is
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`specifically tied to the particular application disclosed in Melby—a light fixture.
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`This is more than sufficient disclosure of the particular application limitation. See
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`Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991),
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`cert. denied, 506 U.S. 817 (1992) ("An anticipatory reference…need not duplicate
`
`word for word what is in the claims); In re Bode, 550 F.2d 656, 660 (CCPA 1977)
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`(anticipation does not require in haec verba disclosure in a prior art reference).
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`Indeed, in the related district court proceedings, Patent Owner has recognized and
`
`argued with respect to the “particular application” limitation that a previous Court
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`found “‘[o]n balance, the claim language adequately explains that the recited
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`apparatus must be tailored for an application, regardless of what that application
`
`may be.’” Ex. 1027, Plaintiffs’ Opening Claim Construction Br., at 13 (citations
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`omitted). Thus, as explained by the Petition and Dr. Escuti, Melby discloses “a
`
`particular application.”
`
`
`
`Therefore, Petitioner has shown by a preponderance of the evidence that
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`6
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`

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`IPR2014-01362: Patent No. 7,384,177
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`Melby discloses all of the limitations of claim 1, including the limitation “at least
`
`one sheet, film or substrate overlying the assembly for controlling the light emitted
`
`from the assembly to fit a particular application.”
`
`B. Melby Discloses “a tray having a back wall and continuous side
`walls that form a hollow cavity or recess completely surrounded
`by the side walls” (claim 1)
`
`As discussed in the Petition and Dr. Escuti’s declaration, the housing 30 of
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`Melby is “a tray having a back wall and continuous side walls that form a hollow
`
`cavity or recess completely surrounded by the side walls,” which is clear from
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`Melby’s disclosed application in view of Figs. 1 and 3.
`
`
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`Patent Owner’s argument is based entirely on its assertion that Fig. 3 in
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`Melby is not a cross-sectional image. However, Patent Owner notes that “Melby,
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`U.S. Patent No. 5,054,885, describes a thin light fixture for automobile taillights
`
`and backlit displays” (Response, at 5 (citing Ex. 1006, 1:14-16)) and that “FIG. 3
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`is a view of a third embodiment of a light fixture according to the invention”
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`(Response, at 12 (quoting Ex. 1006, at 2:1-2 (bolding in Response))). Nowhere
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`does Patent Owner explain how the light fixture of Melby could actually function
`
`as a light fixture according to the invention with an opening on one side.
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`Additionally, the Board previously rejected Patent Owner’s argument that “Figure
`
`3 of Melby would not have been recognized by a person of ordinary skill as a
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`cross-sectional view, even thought it is not described as such.” Decision, at 9.
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`7
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`

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`IPR2014-01362: Patent No. 7,384,177
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`Patent Owner has presented no reliable evidence since institution that one of skill
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`in the art would not recognize Figure 3 as a cross-sectional view.
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`
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`The Petition also explains that “Melby discloses a housing 30 with
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`continuous side walls 32, 34, 36, and back wall 38, which form a cavity completely
`
`surrounded by the side walls.” Pet. at 14 (citing Ex. 1006, at 2:63-65; Escuti Decl.,
`
`at ¶71). Melby also discloses that the “housing defines an optical cavity.” Pet. at 15
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`(quoting Ex. 1006, at 1:54-55, 2:63-65, Escuti Decl., at ¶¶71-72). Further, as
`
`shown in annotated Fig. 3 provided on page 13 of the Petition, the light rays are
`
`being emitted through the overlying film 40. That is, the embodiment shown in
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`Fig. 3 is functioning as a light fixture according to the present invention rather than
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`depicting light rays escaping through the side. Thus, it is apparent that Figs. 1 and
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`3 were drawn as cross-sectional images so that the internal structures, namely the
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`structured surfaces 46, are visible.
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`8
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`IPR201
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`4-01362: PPatent No. 7,384,1777
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`MMoreover, DDr. Escuti
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`testified thhat a persoon of ordinnary skill inn the art wwould
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`l., at
`understaand that Fiig. 3 is a ccross-sectioonal imagee of a lightt fixture. EEscuti Dec
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`¶71. Drr. Escuti teestified thaat one of skkill in the
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`art would
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`understannd that houusing
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`30 showwn in Fig.
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`3 includess a fourth wwall conneecting walls 32 and
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`optical
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`cavity discclosed in MMelby. Id.
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`Dr. Escutii also testiffied that h
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`Ex. 2015,, at 147:222-148:12.
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`This is uunlike Mr.. Werner
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`who
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`36 to formm the
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`e reviewedd the
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`entire rreference.
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`lysis
`testifiedd he only rreviewed thhe portionss he believved were nnecessary ffor his ana
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`and admmitted that
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`he was noot offering
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` any technnical opinioons. Ex. 11026, at 477:11-
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`48:25.
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`Thus, Dr. EEscuti’s teestimony shhould be acccepted heere as unrebbutted.
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`TTherefore,
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`Petitioner
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`has showwn by a prreponderannce of the
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`evidence
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`that
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`Melby ddiscloses aall of the llimitationss of claim
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`1, includinng the limmitation “a
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`tray
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`having
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`a back waall and conntinuous si
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`de walls thhat form aa hollow caavity or reecess
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`9
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`

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`IPR2014-01362: Patent No. 7,384,177
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`completely surrounded by the side walls”
`
`C. Melby Discloses “a portion of the light emitted from the light
`sources mixes in the cavity or recess” (claim 9)
`
`Patent Owner argues that the Petition does not show that Melby discloses “a
`
`portion of the light emitted from the light sources mixes in the cavity or recess.”
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`Response, at 14. Patent Owner’s argument is based largely on the light rays shown
`
`in Figs. 1 and 3. However, as explained in the Petition and Dr. Escuti’s declaration,
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`Melby discloses light mixing in the cavity, which is supported by Figs. 1 and 3.
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`
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`First, the Petition notes that Melby discloses light sources 42 and 44 and that
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`light from these two partially collimated light sources is direct to the structured
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`surfaces 46. Pet. at 15 (quoting Ex. 1006, 2:67-3:1). Next, the Petition notes that
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`the structured surfaces 46 have prisms thereon to reflect the light through the
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`optical window. Pet. at 16 (quoting Ex. 1006, at 1:57-60. The Petition notes that
`
`the prisms in Melby reflect light from the light source 16 in a predetermined
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`direction. Pet. at 19 (citing 1006, at 2:34-36, 2:30-33, Escuti Decl., at ¶¶106-109).
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`Dr. Escuti testified that light from the light source collimates in the cavity and
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`mixes. Escuti Decl., at ¶107. Dr. Escuti further testified that light from the light
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`sources is also reflected in the cavity and light that is reflected is also mixed. Id.
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`Finally, Mr. Werner agreed that Melby discloses that the light rays shown in
`
`Fig. 3 are representative. Ex. 1026, at 60:3-8, 74:22-75:7. He further agreed that
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`multiple light rays would be emitted from the light sources 42 and 44. Id. at 60:9-
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`10
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`

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`IPR2014-01362: Patent No. 7,384,177
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`12. He also agreed that it was possible that two light rays would cross paths in the
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`cavity of housing 30. Id. at 75:8-76:23. Finally, he admitted that light rays
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`crossing paths would be light mixing. Id. at 90:9-19, 90:20-23.
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`
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`Therefore, Petitioner has shown by a preponderance of the evidence that
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`Melby discloses all of the limitations of claim 9, including the limitation “a portion
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`of the light emitted from the light sources mixes in the cavity or recess.”
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`D. Melby Discloses “the at least one sheet, film or substrate has
`deformities for controlling the light output ray angle distribution
`to fit a particular application.” (claim 14)
`
`
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`Patent Owner makes the exact same arguments for the similar limitation in
`
`claim 1. As discussed above, the Petition and Dr. Escuti illustrate clearly how
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`Melby discloses
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`these
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`limitations. As such, Petitioner has shown by a
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`preponderance of the evidence that Melby discloses all of the limitations of claim
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`14, including the limitation “at least one sheet, film or substrate overlying the
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`assembly for controlling the light emitted from the assembly to fit a particular
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`application,” of claim 1.
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`E. Melby Discloses “hollow cavity or recess completely surrounded
`by the side walls” (claim 15)
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`Patent Owner makes the exact same arguments for the similar limitation in
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`claim 1. As discussed above, the Petition and Dr. Escuti illustrate clearly how
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`Melby discloses
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`these
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`limitations. As such, Petitioner has shown by a
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`preponderance of the evidence that Melby discloses all of the limitations of claim
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`11
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`IPR2014-01362: Patent No. 7,384,177
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`15, including the limitation “a hollow cavity or recess completely surrounded by
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`the side wall,” of claim 1.
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`F. Melby Discloses “at least one sheet, film or substrate overlying
`the assembly for controlling the light emitted from the assembly
`to fit a particular application” (claim 15)
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`Patent Owner makes the exact same arguments for the similar limitation in
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`claim 1. As discussed above, the Petition and Dr. Escuti illustrate clearly how
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`Melby discloses
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`these
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`limitations. As such, Petitioner has shown by a
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`preponderance of the evidence that Melby discloses all of the limitations of claim
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`15, including the limitation “at least one sheet, film or substrate overlying the
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`assembly for controlling the light emitted from the assembly to fit a particular
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`application,” of claim 1.
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`G. Melby Discloses “wherein there is at least one sheet, film or
`substrate that has deformities on at least one surface to control
`the light output ray angle distribution to fit a particular
`application” (claim 23)
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`Patent Owner makes the exact same arguments for the similar limitation in
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`claim 14. As discussed above, the Petition and Dr. Escuti illustrate clearly how
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`Melby discloses
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`these
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`limitations. As such, Petitioner has shown by a
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`preponderance of the evidence that Melby discloses all of the limitations of claim
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`23, including the limitation “the at least one sheet, film or substrate has deformities
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`for controlling the light output ray angle distribution to fit a particular application,”
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`of claim 14.
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`12
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`IPR2014-01362: Patent No. 7,384,177
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`III. CLAIMS 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, AND 26 ARE
`ANTICIPATED BY NAKAMURA
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`Patent Owner contends that Nakamura does not anticipate claims 1, 2, 6, 7,
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`9, 10, 13–15, 19, 21, 23, 24, and 26 for at least three reasons. First, Patent Owner
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`asserts that the Petition does not show that Nakamura discloses “a tray having …
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`continuous side walls.” Response, at 17. Second, Patent Owner asserts that the
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`Petition does not show that Nakamura discloses “a tray having a back wall …”
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`Response, at 18. Third, Patent Owner asserts that the Petition does not show that
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`Nakamura discloses “the at least one sheet, film or substrate has deformities for
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`controlling the light output ray angle distribution to fit a particular application.”
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`Response, at 18.
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`Each of these attacks on the Petition is unavailing. First, Patent Owner’s
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`Response is nearly identical to its preliminary response. Thus, the Board has
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`already rejected these arguments, and Patent Owner has provided no new
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`arguments or evidence for the Board to reconsider the arguments. Second, Patent
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`Owner still does not challenge the disclosure in the prior art but rather the
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`disclosure in the Petition. Finally, as discussed above, Patent Owner’s arguments
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`are merely attorney argument because they are not supported by expert technical
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`opinions. Therefore, Patent Owner’s arguments fail because Nakamura discloses
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`each and every limitation of claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26
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`of the ’177 Patent. As such, and as further set forth in the evidence of record,
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`13
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`IPR2014-01362: Patent No. 7,384,177
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`claims 1, 2, 6, 7, 9, 10, 13–15, 19, 21, 23, 24, and 26 are anticipated by Nakamura.
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`A. Nakamura Discloses “a tray having … continuous side walls”
`(claim 1)
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`As discussed in the Petition and in the Escuti Declaration, Nakamura
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`discloses shallow box-form holder 24, which has continuous side walls as shown in
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`Fig. 2. Indeed, the Decision notes that “Nakamura describes a ‘shallow box form
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`holder’” and “that a person of ordinary skill would understand such a holder to
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`have a back wall and continuous side walls.” Decision, at 11.
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`The Petition explains that Nakamura discloses shallowbox-form holder 24
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`with its front surface open, including side walls 24a and 24b. Pet. at 23. Notably,
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`the holder is described as a “shallow box-form” and with an opening on the front
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`surface. And, as depicted in Fig. 2 below, the holder has a shallowbox-form with
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`continuous side walls2 and only has an opening on the front surface.
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`2 Indeed, even though Mr. Werner argued that he was not providing any technical
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`opinions on what is disclosed in Nakamura, he defined “continuous” to mean “the
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`walls are connected together without a break,” which supports Petitioner’s
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`argument that the side walls of Nakamura’s holder are continuous. Ex. 1026, at
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`139:13-17.
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`14
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`IPR201
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`4-01362: PPatent No. 7,384,1777
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`hough Mr. AAdditionally, even th
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`Werner teestified thaat he was nnot offerinng an
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`opinionn on what
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`Nakamuraa discloses, he admmitted that
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`he only cconsideredd the
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`portionss of Nakaamura thatt he believved were
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`necessary
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`for him tto counterr the
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`Petitionn. Ex. 10266, at 135:66-15., 1388:24-139:7,, 141:1-166, 143:6-9.
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` For the ssame
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`reasons
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`discussedd above, hhis opinionns regardiing the diisclosure iin the Pet
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`should
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`be reject
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`unrebuttted.
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`ed and thhus, Dr. EEscuti’s teestimony
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`should bee acceptedd as
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`TTherefore,
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`Petitioner
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`has showwn by a prreponderannce of the
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`evidence
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`that
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`Nakamuura disclosses all of
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`the limitattions of cllaim 1, inccluding thee limitatio
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`n “a
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`tray havving a backk wall and continuou
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`s side wallls”.
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`B. Nakaamura Disscloses “a
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`tray havinng a back
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`wall …” ((claim 1)
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`As discusseed in the PPetition andd in the Esscuti Declaaration, thee shallow bbox-
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`B A
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`15
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`IPR2014-01362: Patent No. 7,384,177
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`form holder 24 of Nakamura also has a back wall. This can be seen in Figs. 1 and 2
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`above. The holder 24 includes a back wall highlighted in red, which is the bottom
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`surface of the holder. Additionally, Nakamura only notes that the front surface is
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`open.
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`Additionally, Mr. Werner agreed that a u-shaped trough can be seen on the
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`right side of Fig. 2 where a bottom surface connects to sides 24. Ex. 1026, at
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`147:22-150:10. This is significant because this is the back wall of holder 24. Thus,
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`Mr. Werner acknowledged that at least part of back wall of holder 24 is shown in
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`Fig. 2.
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`Therefore, Petitioner has shown by a preponderance of the evidence that
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`Nakamura discloses all of the limitations of claim 1, including the limitation “a
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`tray having a back wall and continuous side walls”.
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`C. Nakamura Discloses “the at least one sheet, film or substrate has
`deformities for controlling the light output ray angle distribution
`to fit a particular application.” (claim 14)
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`For claim 14, contrary to Patent Owner’s contention, the Petition discloses
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`the particular application disclosed in Nakamura. The Petition states, and the
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`Patent Owner Response also notes, that Nakamura discloses a liquid crystal display
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`device that is backlit with LEDs. Pet. at 22; Response, at 6. As discussed above, in
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`the related district court proceedings, Patent Owner has argued that “‘[o]n balance,
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`the claim language adequately explains that the recited apparatus must be tailored
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`16
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`IPR2014-01362: Patent No. 7,384,177
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`for an application, regardless of what that application may be.’” Ex. 1027, at 13.
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`Thus, Nakamura discloses “a particular application.”
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`The film/plate/substrate of Nakamura is also disclosed as having deformities
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`for controlling the light output to fit the application of Nakamura. The Petition
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`explains that “[a] light-diffusing plate 25 is installed in the opening 13 of the
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`holder 24.” Pet. at 24. The Petition further explains that:
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`the light-diffusing plate 25 is made of two diffusing films 25A and
`25B which are installed one in front (or top) of the other with an
`appropriate empty space in between and installed in the opening 13 of
`the holder 24. The empty space between the two films 25A and 25B
`is in fact an air layer 37 which is for increasing the diffusing effect.
`Pet. at 26 (quoting Ex. 1007, 6:43-49). Thus, the Petition disclosed that Nakamura
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`discloses a film with a diffusing effect for controlling the emitted light.
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`Dr. Escuti also testified that the film in Nakamura is for controlling the light:
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`The sheet, film, or substrate of Nakamura is also for controlling the
`light emitted from the assembly to fit a particular application.
`Specifically, Nakamura discloses that “[t]hese two types of light 4a
`and 4b are diffused when they pass through the light-diffusing plate
`25 and air layer 37; and as a result, the entire display part 3a of the
`liquid crystal display panel 3 is back-illuminated or illuminated from
`behind. Thus, the illuminating device 16 makes a plane light source.”
`Id. at 7:26-31 (emphasis added).
`Escuti Decl., at ¶160.
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`17
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`IPR2