throbber
Case IPR2014-01362
`Patent 7,384,177
`
`Filed on behalf of Innovative Display Technologies LLC
`By:
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
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`Bragalone Conroy P.C.
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`Tel: 214.785.6670
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`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG DISPLAY CO., LTD.
`Petitioner
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
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`
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`Case IPR2014-01362
`U.S. Patent No. 7,384,177
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,384,177
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`1
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
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`

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`Case IPR2014-01362
`Patent 7,384,177
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`I.
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`INTRODUCTION
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`
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`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
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`Owner”) hereby files this preliminary response (“Response”) to the Petition for Inter
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`Partes Review of U.S. Patent No. 7,384,177 (the “Petition”) in IPR2014-01362 filed
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`by LG Display Co., LTD (“LGD” or “Petitioner”).
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`
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`The PTAB should deny the Petition’s request to institute an inter partes
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`review (“IPR”) of U.S. Patent No. 7,384,177 (the “’177 patent”) because the grounds
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`in the Petition do not demonstrate a reasonable likelihood of any claims being
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`invalid.
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`
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`Moreover, the PTAB should deny this Petition or at least revoke its filing date
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`because the Petitioner has failed to comply with 35 U.S.C. 312(a)(2) by failing to
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`name clear real parties-in-interest.
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`And as further explained at the end of this Response, Patent Owner needs to
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`seek discovery that shows that Petitioner is barred from filing this IPR under 35
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`U.S.C. 315(b) because its privies were served with a complaint alleging infringement
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`of the ’177 patent more than one year prior to the filing date of the Petition. Patent
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`Owner has outlined its current publicly available evidence on this issue, and if the
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`Board finds that evidence alone sufficient, Patent Owner requests that the Board
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`refuse to institute this IPR due to the Section 315(b) bar.
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`Case IPR2014-01362
`Patent 7,384,177
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`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
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`is filed within three months of the September 4, 2014, date of the Notice of Filing
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`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response.
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`(Paper No. 3.).
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`
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`Patent Owner does not intend to waive any arguments by not addressing them
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`in this Preliminary Response, and Patent Owner intends to raise additional
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`arguments in the event this IPR is instituted.
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`
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`To introduce its discussion of why the grounds in the Petition are insufficient,
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`the Preliminary Response first provides an outline of the (1) the Grounds themselves;
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`and (2) the claim construction issues.
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`A. Grounds in Petition
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`
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`The Petition includes seven grounds of alleged invalidity – all 103(a)
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`obviousness combinations with the exception of one 102(e) ground – for claims 1-
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`3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 patent.
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`Ground 1: 103(a) - Melby (Claims 1-3, 5-7, 9-10, 13- 15, 19, 21, 23-25, 27)
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`Ground 2: 102(e) - Nakamura (Claims 1, 2, 6, 7, 9, 10, 13-15, 19, 21, 23-24,
`26)
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`Ground 3: 103(a) - Baur (Claims 1, 2, 13, 14)
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`Ground 4: 103(a) - Baur and Nakamura (Claims 6, 9, 10, 15, 19, 21, 23)
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`Ground 5: 103(a) - Sasuga and Farchmin (Claims 1, 2, 6, 7, 9, 10, 13,
`15, 21)
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`Patent 7,384,177
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`Ground 6: 103(a) Sasuga, Farchmin, and Nakamura (Claims 14 and 19)
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`Ground 7: 103(a) Sasuga, Farchmin, and Pristash Claims 23, 25, and 26)
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`For the reasons discussed in Section II below, none of the grounds
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`demonstrate a reasonable likelihood of any claims being invalid.
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`B.
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`Claim Construction
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`The arguments in this Response stand despite Petitioner’s proposed
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`construction and despite the broadest reasonable construction of the terms. This
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`Preliminary Response does not take a position on claim construction at this point.
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`Patent Owner reserves the right to propose its own construction of any and all claim
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`terms for which an issue arises in the event the PTAB institutes this IPR.
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`Patent Owner notifies the Board that the district court in Innovative Display
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`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
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`(“Claim Construction Order”) (Ex. 2003) has ruled on constructions of terms in this
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`patent, including entering an agreed construction of “deformities” that Petitioner
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`adopts in its Petition. (Petition at 8) (Ex. 2003 at 58).
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`II. GROUND 1 - 103(a) - Melby (Claims 1-3, 5-7, 9-10, 13- 15, 19, 21, 23-25,
`27)
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`Claim 1, limitation [1.a] – “hollow cavity or recess completely
`A.
`surrounded by the side walls”
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`The Petition alleges that “Melby discloses a housing 30 with continuous side
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`walls 32, 34, 36, and back wall 38, which form a cavity completely surrounded by
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`the side walls.” Petition at 14; see also id. at 15 (claim chart identifying the same
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`elements). But the alleged side walls, 32, 34, and 36 cannot form a cavity completely
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`surrounded by the side walls, because a side wall is missing on one side as shown in
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`the excerpt of Figure 3 below.
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`
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`Ex. 1006 at Fig. 3. As seen above, there is no fourth side wall – only side walls 32,
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`34, and 36 as identified by Petitioner. Moreover, there is no indication that Fig. 3 is
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`a “cross-sectional view” that would otherwise include a “fourth wall” as argued in
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`the Escuti Declaration. Ex. 2004 at 30, ¶ 71. In contrast, the description of Fig. 3
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`states, “FIG. 3 is a view of a third embodiment of a light fixture according to the
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`invention” (Ex. 1006 at col. 2, ll. 1-2 (emphasis added)) – not a cross-sectional view.
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`Furthermore, the “translucent cover 40” at the top of Fig. 3 is not shown in cross-
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`section, and it would fit in structure below it. Also, the arrowed lines shown in Fig.
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`3 are not indications of a cross-section, but are instead light rays, as can be deduced
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`by the facts that each arrow originates from a light source and that there are three
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`arrows that would span multiple planes instead of the single plane required to show
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`a cross-section cut. Last, Melby never mentions the word “cross-section” in its entire
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`disclosure and never mentions that a fourth wall is otherwise present in the
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`embodiment shown in Fig. 3.
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`Even if Escuti’s declaration were correct on the “cross-section” issue, it
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`cannot be considered by the Board because it is not part of the argument made in the
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`Petition. Under 37 C.F.R. § 42.22(a)(2), the petition must contain a “full statement
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`of the reasons for the relief requested, including a detailed explanation of the
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`significance of the evidence.” The rules prohibit arguments made in a supporting
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`document from being incorporated by reference into a petition. See 37 C.F.R. §
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`42.6(a)(3). Here, the Petition itself never makes the “cross-section” argument; the
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`Petition only states that “Melby discloses a housing 30 with continuous side walls
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`32, 34, 36, and back wall 38.” Petition at 14 (emphasis added). Thus, the Petition
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`itself never makes an argument about a fourth wall in Melby that would be present
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`but for the cross-sectional view of Fig 3. Without that argument in the Petition itself,
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`Petitioner cannot rely on the “cross-section” argument from the Escuti Declaration.
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`The Petition only identifies three side walls – elements 32, 34, and 36, and as
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`shown at Fig. 3 above, those side wall do not form a “hollow cavity or recess
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`completely surrounded by the side walls” as claimed. Furthermore, the Petition
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`never argues that the “completely surrounded” limitation and the missing fourth wall
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`would have been obvious in light of Melby. Accordingly, the Petition cannot show
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`that Melby renders claim 1 obvious because the Petition has not made a sufficient
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`showing for the limitation that recites a “hollow cavity or recess completely
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`surrounded by the side walls.”
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`Claim 1, limitation [1.c] – “and at least one sheet, film or substrate
`B.
`overlying the assembly for controlling the light emitted from the assembly
`to fit a particular application”
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`The Petition makes no showing that the alleged film/sheet/substrate in Melby
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`controls “the light emitted from the assembly to fit a particular application.” Petition
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`at 16. Furthermore, the Escuti Declaration also fails to apply Melby to any
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`“particular application” as recited by this limitation. Ex. 1004 at 31-32, ¶ 74. And
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`the Petition never argues that the “controlling the light emitted from the assembly to
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`fit a particular application” would have been obvious in light of Melby. Accordingly,
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`the Petition cannot show that Melby renders claim 1 obvious because the Petition
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`has not made a sufficient showing for the “and at least one sheet, film or substrate
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`overlying the assembly for controlling the light emitted from the assembly to fit a
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`particular application” limitation.
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`Claim 9 – “a portion of the light emitted from the light sources mixes
`C.
`in the cavity or recess”
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`The Petition does not show that any light emitted from the light sources mixes
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`in the cavity or recess. Instead, the Petition cites to a portion of the specification that
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`states that the light source 16 emits collimated light (Petition at 19) and that the
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`prisms reflect light in a perpendicular direction (Id.). But the Petition never explains
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`how those elements result in light mixing. See id. at 13-15. Indeed, Figs. 1 and 3, as
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`specifically cited in the Petitioner’s chart for this limitation show the light rays
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`staying separate instead of mixing.
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`Ex. 1006 at Figs. 1 and 3, as cited in the Petition at 19. The Escuti Declaration cites
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`to the same Figures and states, “as can be seen in Figs. 1 and 3 below, the light rays
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`from the light sources are reflected and mixed in the cavity of the housing.” Ex. 1004
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`at 39, ¶ 108. That statement is plainly incorrect as the light rays in Figs. 1 and 3 are
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`not shown mixing.
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`The Petition does not show that Melby discloses the light mixing required by
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`this limitation, and the Petition never argues that the light mixing limitation would
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`have been obvious in light of Melby. Accordingly, the Petition cannot show that
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`Melby renders claim 9 obvious because the Petition has not made a sufficient
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`showing for the limitation that recites “a portion of the light emitted from the light
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`sources mixes in the cavity or recess.”
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`Claim 10 – “the sheet, film or substrate provides additional light
`D.
`mixing”
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`The Petition makes no showing that Melby discloses the limitation that “the
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`sheet, film or substrate provides additional light mixing.” For this limitation, the
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`Petition argues that the “sheet may contain pillows optics or Fresnel prisms as taught
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`by Fig. 1, which are a form of raised or depressed prismatic deformities (claims 14,
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`23-25) and which reflect light, which provides additional light mixing (claim 10, 13,
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`21).” Petition at 14. But the Petition does not explain why the “pillow optics or
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`Fresnel prisms” “which reflect light” would necessarily provide light mixing.
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`Petition at 14. Instead the Petition relies on 37 paragraphs from the Escuti
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`Declaration to make that argument. See Petition at 14 (citing Escuti Declaration at
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`¶¶ 111-147). As discussed above, the Petition cannot rely on arguments found solely
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`in its expert declaration. 37 C.F.R. § 42.6(a)(3).
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`The Petition does not show that Melby discloses the light mixing required by
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`this limitation, and the Petition never argues that the light mixing limitation would
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`have been obvious in light of Melby. Accordingly, the Petition cannot show that
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`Melby renders claim 10 obvious because the Petition has not made a sufficient
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`showing for the limitation that recites “a portion of the light emitted from the light
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`sources mixes in the cavity or recess”
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`Claim 13 – “at least one sheet, film or substrate that is a diffuser,
`E.
`colored film or filter, label or display, reflector, polarizer or reflective
`polarizer”
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`The Petition makes no showing that Melby discloses the limitation that recites
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`“at least one sheet, film or substrate that is a diffuser, colored film or filter, label or
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`display, reflector, polarizer or reflective polarizer.” The Petition ostensibly identifies
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`sheet 40 (Petition at 14) and “light emitting member 14” in its efforts to show this
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`limitation. But the Petition never describes if or whether sheet 40 or light emitting
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`member 14 is a “diffuser, colored film or filter, label or display, reflector, polarizer
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`or reflective polarizer.” Id. Instead, the Petition again relies on the Escuti Declaration
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`to import arguments that are otherwise not found in the Petition. Specifically, the
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`Escuti Declaration identifies “light transmitting member 14” and states that a “light
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`transmitting member with optics or prisms is a diffuser or reflector because light
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`would be reflected by the structures provided on the substrate.” Ex. 1004 at 41, ¶
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`116. But the Petition itself never makes any argument that light transmitting member
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`14 is a “diffuser or reflector” as recited by this claim limitation. And, the Petition
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`cannot incorporate the arguments from the Escuti Declaration by reference. 37
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`C.F.R. § 42.6(a)(3).
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`The Petition does not show that Melby discloses the specific kinds of
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`films/sheets/substrates required by this limitation, and the Petition never argues that
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`those limitations would have been obvious in light of Melby. Accordingly, the
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`Petition cannot show that Melby renders claim 13 obvious because the Petition has
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`not made a sufficient showing for the limitation that recites “at least one sheet, film
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`or substrate that is a diffuser, colored film or filter, label or display, reflector,
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`polarizer or reflective polarizer.”
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`Claim 14 – “the at least one sheet, film or substrate has deformities
`F.
`for controlling the light output ray angle distribution to fit a particular
`application.”
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`The Petition makes no showing that Melby discloses that a “sheet, film or
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`substrate has deformities for controlling the light output ray angle distribution to fit
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`a particular application.” (emphasis added). There is no “particular application”
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`mentioned in the Petition as applied to the limitation “at least one sheet, film or
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`substrate has deformities for controlling the light output ray angle distribution to fit
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`a particular application.” Petition at 20. And the Escuti Declaration also fails to
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`mention any “particular application” as recited by this limitation. Ex. 1004 at 42, ¶¶
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`118-121.
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`The Petition does not show that Melby discloses a particular application such
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`that the deformities on the films/sheets/substrates control the light output ray angle
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`distribution to fit that application. And the Petition never argues that those
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`limitations would have been obvious in light of Melby. Accordingly, the Petition
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`cannot show that Melby renders claim 14 obvious because the Petition has not made
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`a sufficient showing for the “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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`limitation.
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`Claim 15 – “hollow cavity or recess completely surrounded by the side
`G.
`walls”
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`For this limitation in claim 15, the Petition cites to its alleged support for
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`limitation [1.a] in claim 1. Petition at 20. For the same reasons described in Section
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`II.A discussing limitation [1.a], Ground 1 fails for claim 15.
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`H. Claim 15 – “and at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application”
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`For this limitation in claim 15, the Petition cites to its alleged support for
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`limitation [1.c] in claim 1. Petition at 20-21. For the same reasons described in
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`Section II.B discussing limitation [1.c], Ground 1 fails for claim 15.
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`I.
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`Claim 15 – “…to produce a desired light output color or uniformity”
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`The Petition makes no showing that Melby discloses the following limitation
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`from claim 15: “wherein the tray acts as at least one of a back, side edge and end
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`edge reflector and has at least one secondary flat, angled, faceted or curved reflective
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`or refractive surface to facilitate better mixing of light rays within the cavity or recess
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`to produce a desired light output color or uniformity.” Specifically, the Petition
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`makes no argument that Melby discloses a “desired light output color or uniformity”
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`associated with the reflectors/surfaces in this limitation. The Escuti Declaration is
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`likewise insufficient; it only makes passing arguments relating to a “desired light
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`output color or uniformity,” but never identifies any particular “desired light output
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`color or uniformity.” Ex. 1004 at 43-44, ¶¶ 126-128. Even so, the Petition cannot
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`incorporate the arguments from the Escuti Declaration by reference when the
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`Petition itself never even discusses this limitation with respect to “desired light
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`output color or uniformity.” 37 C.F.R. § 42.6(a)(3).
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`The Petition does not show that Melby discloses “a desired light output color
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`or uniformity” as it appears in this limitation from claim 15: “wherein the tray acts
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`as at least one of a back, side edge and end edge reflector and has at least one
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`secondary flat, angled, faceted or curved reflective or refractive surface to facilitate
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`better mixing of light rays within the cavity or recess to produce a desired light
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`output color or uniformity.” And the Petition never argues that “a desired light output
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`color or uniformity” of that limitation would have been obvious in light of Melby.
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`Accordingly, the Petition cannot show that Melby renders claim 15 obvious because
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`the Petition has not made a sufficient showing for this limitation.
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`Claim 21 – “wherein there is at least one sheet, film or substrate that
`J.
`is a diffuser, colored film or filter, label, transparent or semi-transparent
`overlay, reflector, polarizer or reflective polarizer”
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`For claim 21, the same argument applies as stated in Section II.E discussing
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`limitation claim 13 and the Petitioner’s failure to identify any of the specific
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`film/sheet/substrates, e.g., “a diffuser, colored film or filter…” as claimed.
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`Accordingly, Ground 1 fails for claim 21.
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`Claim 23 – “wherein there is at least one sheet, film or substrate that
`K.
`has deformities on at least one surface to control the light output ray angle
`distribution to fit a particular application”
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`For claim 23, the same argument applies as stated in Section II.F discussing
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`claim 14 and the Petitioner’s failure to identify any “particular application” as
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`claimed. Accordingly, Ground 1 fails for claim 23.
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`III. GROUND 2 - 102(e) - Nakamura (Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19,
`21, 23-24, and 26)
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`A.
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`Claim 1, limitation [1.a] – “a tray having … continuous side walls”
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`The Petition never makes any allegations that the identified side walls are
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`“continuous” as claimed. The only part of the Petition that identifies any side walls
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`with any particularity is this: “Nakamura discloses a shallow box-form holder 24
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`with its front surface open including side walls 24a and 24b …” Petition at 23. But
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`the Petition never alleges that side walls 24a and 24b are “continuous” as claimed.
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`The corresponding part of the Escuti Declaration also makes no mention of whether
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`side walls 24a and 24b are “continuous” as claimed. Petition at 26, citing to Ex. 2004
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`at ¶ 157. Without making any argument that “continuous” side walls exist in
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`Nakamura, the Petition fails to show that Nakamura anticipates claim 1 or any of its
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`dependent claims.
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`B.
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`Claim 1, limitation [1.a] – “a tray having a back wall …”
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`The Petition never makes any identification of the tray’s claimed “back wall.”
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`The Petition briefly mentions “side wall 24a and 24b,” but it never identifies a
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`corresponding back wall. See Petition at 23 (stating, “Nakamura discloses a shallow
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`box-form holder 24 with its front surface open including side walls 24a and 24b …”
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`but not identifying a corresponding back wall). The corresponding part of the Escuti
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`Declaration also makes no mention of what specific part of Nakamura discloses the
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`claimed back wall. Petition at 26, citing to Ex. 2004 at ¶ 157. Without making any
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`identification of a specific “back wall” in Nakamura, the Petition fails to show that
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`Nakamura anticipates claim 1 or any of its dependent claims.
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`C.
`Claim 14 – “the at least one sheet, film or substrate has deformities
`for controlling the light output ray angle distribution to fit a particular
`application.”
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`The Petition makes no showing that Nakamura discloses that a “sheet, film or
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`substrate has deformities for controlling the light output ray angle distribution to fit
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`a particular application.” (emphasis added). There is no “particular application”
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`mentioned in the Petition for Nakamura as applied to the limitation “at least one
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`sheet, film or substrate has deformities for controlling the light output ray angle
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`distribution to fit a particular application.” Petition at 29. The Petition generally
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`alleges that Nakamura has a film with deformities “for controlling the output of light
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`(claims 14, 23),” (Petition at 24), but the Petition never identifies the particular
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`application for which the deformities allegedly control the light output ray angle
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`distribution as claimed. Without making any identification of a specific “particular
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`application” in Nakamura, the Petition fails to show that Nakamura anticipates claim
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`14 or any of its dependent claims.
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`D. Claim 15 – “a tray having … continuous side walls”
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`For the limitation “a tray having … continuous side walls” in claim 15, the
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`Petition cites to its alleged support for limitation [1.a] in claim 1. Petition at 30. For
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`the same reasons described in Section III.A discussing limitation [1.a], Ground 1
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`fails for claim 15 and its dependent claims.
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`E.
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`Claim 15 – “a tray having a back wall …”
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`For the limitation “a tray having a back wall” in claim 15, the Petition cites to
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`its alleged support for limitation [1.a] in claim 1. Petition at 30. For the same reasons
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`described in Section III.B discussing limitation [1.a], Ground 1 fails for claim 15
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`and its dependent claims.
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`F.
`Claim 23 – “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”
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`For claim 23, the same argument applies as stated in Section III.C discussing
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`claim 14 and the Petitioner’s failure to identify any “particular application” as
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`claimed. Accordingly, Ground 1 fails for claim 23.
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`IV. GROUND 3 - 103(a) - Baur (Claims 1, 2, 13, and 14)
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`A. Claim 1, limitation [1.c] – “at least one sheet, film or substrate
`overlying the assembly for controlling the light emitted from the
`assembly to fit a particular application”
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`The Petition makes no showing that the alleged film/sheet/substrate in Baur
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`controls “the light emitted from the assembly to fit a particular application.” Petition
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`at 32-33 and 35. Furthermore, the Escuti Declaration also fails to apply Baur to any
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`“particular application” as recited by this limitation. Ex. 1004 at 70, ¶¶ 234-235. And
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`the Petition never argues that the “controlling the light emitted from the assembly to
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`fit a particular application” would have been obvious in light of Baur. Accordingly,
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`the Petition cannot show that Baur renders claim 1 obvious because the Petition has
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`not made a sufficient showing for the limitation that recites “at least one sheet, film
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`or substrate overlying the assembly for controlling the light emitted from the
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`assembly to fit a particular application.”
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`B. Claim 1, limitation [1.c] – “at least one sheet, film or substrate
`overlying the assembly …”
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`The Petition never makes any particular allegations that the alleged films in
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`Baur are “overlying the assembly” as claimed. The Petition appears to identify films
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`10 and/or 11 as allegedly disclosed by Baur. Petition at 35. But neither the Petition
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`nor the Escuti Declaration ever meaningfully address the requirement that the films
`
`overlie the assembly. The Petition simply makes the conclusory statement that
`
`“Regarding claim 13, it would have been obvious to one of skill in the art to overly
`
`the film 10, which may be a light diffusing layer (diffuser) over the assembly as
`
`suggested by Baur. Id. 7:30-39; see also Escuti Decl., ¶246.”). Petition at 33-34. But
`
`the Petition nor never explains what particular positioning of film 10 that would have
`
`resulted in a showing “overlying the assembly” as claimed is obvious. Accordingly,
`
`the Petition cannot show that claim 1 or any of its independent claims are invalid as
`
`obvious in light of Baur.
`
`V. GROUND 4 - 103(a) – Baur in view of Nakamura (Claims 6, 9, 10, 15,
`19, 21, and 23)
`
`A.
`Claim 15 – “and at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.c] in claim 1. Petition at 41. Thus Ground 4 relies on the sole disclosure
`
`of Baur to meet this limitation, and for the same reasons described in Section IV.A
`
`discussing limitation [1.c], Baur does not disclose this limitation from claim 15. The
`
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`18
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`Case IPR2014-01362
`Patent 7,384,177
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`Petition never puts forth any evidence that the combination of Baur and Nakamura
`
`meets this limitation outside of the sole disclosure of Baur. Thus, Petitioner has not
`
`shown that this combination can render obvious claims 15 or any of its dependent
`
`claims.
`
`B.
`Claim 15 – “at least one sheet, film or substrate overlying the
`assembly …”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.c] in claim 1. Petition at 41. Thus Ground 4 relies on the sole disclosure
`
`of Baur to meet this limitation, and for the same reasons described in Section IV.A
`
`discussing limitation [1.c], Baur does not disclose this limitation from claim 15. The
`
`Petition never puts forth any evidence that the combination of Baur and Nakamura
`
`meets this limitation outside of the sole disclosure of Baur. Thus, Petitioner has not
`
`shown that this combination can render obvious claims 15 or any of its dependent
`
`claims.
`
`VI. GROUND 5 - 103(a) – Sasuga in view of Farchmin (Claims 1, 2, 6, 7, 9,
`10, 13, 15, And 21)
`
`A.
`Claim 1, limitation [1.a] – Sasuga teaches away from a combination
`with Farchmin to meet the limitation “a tray having a back wall and
`continuous side walls”
`
`The combination of Sasuga and Farchmin as suggested for this limitation fails
`
`to meet the Graham factors and thus Ground 5 fails for claim 1. As confirmed by
`
`the Supreme Court in KSR, an obviousness analysis begins with a consideration of
`
`the Graham factors. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406-407
`
`
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`19
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`Case IPR2014-01362
`Patent 7,384,177
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`(2007) (citing Graham v. John Deere Co., 383 U.S. 1 (1966)). The Graham factors
`
`are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed invention
`
`and the prior art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`
`Graham at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
`
`obvious. Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983). But that is exactly
`
`what Petitioner has done when it argues that it “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.” Petition at 45. That argument is focused narrowly on the
`
`Petitioner’s interpretation of the difference between the claimed tray with
`
`“continuous side walls” and the tray disclosed in Sasuga.
`
`
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`20
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`Case IPR2014-01362
`Patent 7,384,177
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`The Petition argues that 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.” Petition at 46. But in
`
`making that statement, the Petition fails to consider Sasuga as whole and account for
`
`the potential negative impacts to Sasuga’s device if the proposed substitution were
`
`implemented. Sasuga’s “Summary of the Invention” section describes an object of
`
`the invention that is essential to consider here:
`
`An object of the present invention is to provide a liquid crystal display
`
`device which can be easily repaired or repaired in its back lights.
`
`***
`
`The liquid crystal display device can be easily repaired and replaced in
`
`its back lights because the fixing pawls and hooks of the shield casing
`
`can be easily removed and because the shield casing, the middle frame
`
`for holding the liquid crystal display and the lower casing for packaging
`
`the back lights are easily assembled and disassembled.
`
`Ex. 1009 at col. 1, ll. 58-60 and col. 2, ll. 3-9 (emphasis added). As described above,
`
`an object of Sasuga is an LCD device that can be easily repaired and replaced
`
`including having the lower casing for packaging the backlights being easily
`
`assembled and disassembled. That same lower casing of Sasuga (the “LCA”) is what
`
`
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`21
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`Case IPR2014-01362
`Patent 7,384,177
`
`the Petitioner suggests could be replaced by the reflector 26 of Farchmin. But there
`
`is nothing in Farchmin that demonstrates that its reflector 26 could be designed to
`
`match the other components of Sasuga and meet Sasuga’s goal of being easily
`
`repaired, replaced, assembled, and disassembled. Instead of teaching a device that
`
`meets those goals, Farchmin’s goal is maintaining sufficient light when the lights in
`
`reflector 26 fail until the time when the entire backlight unit can be replaced.
`
`Specifically, Farchmin states that “when one lamp burns out, light from the adjacent
`
`lamps will be reflected into the area of the burned out lamp to fill in for it and largely
`
`preserve the visibility of the display until the backlight unit can be replaced.” Ex.
`
`2011 at col. 1, ll. 43-47. Thus the goal of Farchmin is to lessen the need for
`
`replacement or repair, which is at direct odds with the teachings of Sasuga for having
`
`a lower casing that can be easily repaired, replaced, assembled, and disassembled.
`
`The complexity of Farchmin’s reflector 26, and its difficulty in being substituted
`
`with the LCA of Sasuga is apparent from Figures 1 and 3 of Farchmin reproduced
`
`below:
`
`
`
`22
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`

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`Case IPR2014-01362
`
`Patent 7,384,177
`
`
`
`235
`
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`3, M ‘
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`
`
`Farchmin, Ex- 1011 at Figs. 1 and 3.
`
`The Petition has not considered the teaching of Sasuga away from
`
`combination with Farchmin to meet the limitation of “a tray having a back wall and
`
`continuous side walls.” Because Sasuga teaches away from that combination,
`
`because Farchmin’s Reflector 26 would not be easily repairable, replaceable,
`
`assembled, or disassembled, Ground 5 fails for claim 1 and all of its dependent
`
`claims.
`
`23
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`

`
`Case IPR2014-0136

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