INNOVATIVE DISPLAY TECHNOLOGIES LLC’s
`EXHIBIT 2001
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioners,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Case IPR2015-00359
`U.S. Patent No. 7,384,177
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2014-01362
`
`Patent 7,384,177
`_______________
`
`PETITION FOR INTERPARTESREVIEW
`OF U.S. PATENT NO. 7,384,177
`
`IDT_00001
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`V.
`
`VI.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES.........................................................................1
`I.
`PAYMENT OF FEES ................................................................................4
`II.
`STANDING ................................................................................................4
`III.
`IV. REQUEST FOR INTERPARTESREVIEW OF CLAIMS 1-3, 5-7, 9-10,
`13-15, 19, 21, and 23-27 OF THE ’177 PATENT ........................................5
`A.
`Technology Background ............................................................................... 5
`B.
`The Alleged Invention Of The ’177 Patent................................................ 6
`C.
`The Prosecution History Of The ’177 Patent ............................................ 7
`D.
`The Independent Claims Of The ’177 Patent............................................ 8
`CLAIM CONSTRUCTION .......................................................................9
`A.
`Standards For Claim Construction .............................................................. 9
`B.
`“deformities” (Claim 14, 23-27)................................................................... 9
`SUMMARY OF PRIOR ART TO THE ’177 PATENT FORMING THE
`BASIS FOR THIS PETITION ................................................................ 10
`A.
`Admitted Prior Art....................................................................................... 10
`A.
`U.S. Patent No. 5,054,885 (“Melby”) (Ex. 1006)..................................... 10
`B.
`U.S. Patent No. 5,453,855 (“Nakamura”) (Ex. 1007).............................. 10
`C.
`U.S. Patent No. 4,142,781 (“Baur”) (Ex. 1008) ....................................... 11
`D.
`U.S. Patent No. 5,432,626 (“Sasuga”) (Ex. 1009).................................... 11
`E.
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1010).................................. 11
`F.
`U.S. Patent No. 5,567,042 (“Farchmin”) (Ex. 1011)............................... 12
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM............... 12
`A.
`Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19, 21, And 23-25, 27 Are
`Unpatentable Under 35 U.S.C. §103(a) As Being Obvious Over Melby13
`Ground 2: Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19, 21, 23-24, And 26 Are
`Unpatentable Under 35 U.S.C. §102 As Being Anticipated By
`Nakamura...................................................................................................... 22
`Ground 3: Claims 1, 2, 13, And 14 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Baur....................................................... 32
`Ground 4: Claims 6, 9, 10, 15, 19, 21, And 23 Are Unpatentable Under
`35 U.S.C. §103 As Being Obvious Over Baur In View Of Nakamura . 38
`Ground 5: Claims 1, 2, 6, 7, 9, 10, 13, 15, And 21 Are Unpatentable
`Under 35 U.S.C. §103(a) As Obvious Over Sasuga In View Of
`Farchmin ....................................................................................................... 44
`Ground 6: Claims 14 And 19 Are Unpatentable Under 35 U.S.C.
`§103(a) As Obvious Over Sasuga In View Of Farchmin In View Of
`Nakamura...................................................................................................... 54
`Ground 7: Claims 23, 25, And 26 Are Unpatentable Under 35 U.S.C.
`§103(a) As Obvious Over Sasuga In View Of Farchmin In View Of
`ii
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`IDT_00002
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Pristash .......................................................................................................... 56
`VIII. CONCLUSION.........................................................................................59
`
`iii
`
`IDT_00003
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`PETITIONER’S 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”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`
`1021
`1022
`1023
`
`iv
`
`IDT_00004
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Pursuant to 35 U.S.C. §311, Petitioner hereby respectfully requests inter partes
`
`review of Claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of Ex. 1001, U.S. Patent No.
`
`7,384,177 (“the ’177 Patent”) which issued on June 10, 2008. The challenged claims
`
`are unpatentable under 35 U.S.C. §§102 and 103 over the prior art publications
`
`identified and applied in this Petition.
`
`I.
`
`MANDATORY NOTICES
`Pursuant to 37 C.F.R. §42.8, Petitioner provides the following mandatory
`
`disclosures:
`
`A. Real Parties-In-Interest. LG Display America, Inc. is a real party-in-interest
`
`with Petitioner, LG Display Co., Ltd.
`
`B. Related Matters. Pursuant to 37 C.F.R. §42.8(b)(2), Petitioner submits that
`
`the ’177 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex. 1003), against Petitioner in the
`
`United States District Court for the District of Delaware: Delaware Display Group LLC
`
`and Innovative Display Technologies LLC v. LG Electronics, Inc., LG Electronics U.S.A., Inc.,
`
`LG Display Co., Ltd., and LG Display America, Inc., Case No. 1:13-cv-02109. The ’177
`
`Patent is also asserted in at least the actions listed in the chart below.
`
`Description
`Innovative Display Technologies LLC (“IDT”) v. Acer Inc.
`et al.
`IDT v. Apple Inc.
`IDT v. American Honda Motor Co., et al.
`
`Docket Number
`2:13-cv-522, EDTX
`
`2:14-cv-00030, EDTX
`2:14-cv-00222, EDTX
`
`1
`
`IDT_00005
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Description
`IDT v. Apple Inc.
`IDT v. AT&T Inc., et. al.
`IDT v. Best Buy Co., Inc., et al.
`IDT v. BMW of North America, LLC, et. al.
`IDT v. Canon U.S.A. Inc., et. al.
`IDT v. Dell Inc.
`IDT v. Ford Motor Company
`IDT v. Garmin International, Inc., et al.
`IDT v. General Motor Company
`IDT v. Google Inc., et. al.
`IDT v. Hewlett-Packard Corporation
`IDT v. Huawei Investment et al.
`IDT v. Hyundai Motor Group, et al.
`IDT v. Mazda Motor Corporation, et al.
`IDT v. Mercedes-Benz U.S. International, Inc., et al.
`IDT v. Microsoft Corporation
`IDT v. Mitac Digital Corporation, et. al.
`IDT v. Nikon Inc., et. al.
`IDT v. Nissan Motor, Co., Ltd., et. al.
`IDT v. Nokia Corporation and Nokia Inc.
`IDT v. Research in Motion Limited et al.
`IDT v. Sprint Corporation, et. al.
`IDT v. T-Mobile U.S., Inc., et al.
`IDT v. Tomtom North America Inc., et. al.
`IDT v. Toyota Motor Corporation, et al.
`IDT v. Verizon Communications, Inc., et al.
`IDT v. Volkswagen Ag, et al.
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`
`2
`
`Docket Number
`2:14-cv-00301, EDTX
`2:14-cv-00720, EDTX
`2:14-cv-00532, EDTX
`2:14-cv-00106, EDTX
`2:14-cv-00142, EDTX
`2:13-cv-00523, EDTX
`1:14-cv-00849, D. Del.
`2:14-cv-00143, EDTX.
`1:14-cv-00850, D. Del.
`2:14-cv-00302, EDTX
`2:13-cv-00524, EDTX
`2:13-cv-00525, EDTX
`2:14-cv-00201, EDTX
`2:14-cv-00624, EDTX
`2:14-cv-00535, EDTX
`2:13-cv-00783, EDTX
`2:14-cv-00144, EDTX
`2:14-cv-00145, EDTX
`2:14-cv-00202, EDTX
`2:13-cv-00784, EDTX
`2:13-cv-00526, EDTX
`2:14-cv-00721, EDTX
`2:14-cv-00723, EDTX
`2:14-cv-00146, EDTX
`2:14-cv-00200, EDTX
`2:14-cv-00722, EDTX
`2:14-cv-00300, EDTX
`2:13-cv-00527, EDTX
`
`IDT_00006
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Description
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`DDG and IDT v. Lenovo Group Ltd., et al.
`DDG and IDT v. LG Electronics Inc., et al.
`DDG and IDT v. Pantech Co.,Ltd, et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`1:13-cv-02108, D.Del.
`1:13-cv-02109, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`
`Petitioner is previously filed petitions to review U.S. Patent Nos. 7,300,194
`
`(IPR2014-01097), 7,434,974 (IPR2014-01092), 7,404,660 (IPR2014-01094), 7,537,370
`
`(IPR2014-01096), and 8,215,816 (IPR2014-01095), which are in the same family as the
`
`’177 Patent. The ’177 Patent is a divisional of U.S. Patent No. 7,160,015. Petitioner
`
`is concurrently filing a petition to review U.S. Patent No. 6,755,547 (IPR2014-01357),
`
`also in the same family.
`
`C. Lead and Back-up Counsel.
`
`Petitioner provides the following designation of counsel:
`
`LEAD COUNSEL
`Robert G. Pluta
`Registration No. 50,970
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile:
`312-701-7711
`rpluta@mayerbrown.com
`
`BACK-UP COUNSEL
`Amanda K. Streff
`Registration No. 65,224
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8645
`Facsimile:
`312-701-7711
`astreff@mayerbrown.com
`
`3
`
`IDT_00007
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`MAYER BROWN LLP
`1999 K Street, N.W.
`Washington, DC 20006
`Telephone: 202-263-3000
`Facsimile:
`202-263-3300
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`D. Service Information. Pursuant to 37 C.F.R. §42.8(b)(4), Petitioner identifies
`
`the following service information: Please direct all correspondence regarding this
`
`proceeding to lead counsel at the address identified above. Petitioner consents to
`
`electronic service by email:
`
`rpluta@mayerbrown.com, bpaul@mayerbrown.com,
`
`astreff@mayerbrown.com, and alam@mayerbrown.com, with a courtesy copy to
`
`DDGIPR@mayerbrown.com.
`
`II.
`
`PAYMENT OF FEES
`Pursuant to 37 C.F.R. §42.103, $24,200 is being paid at the time of filing this
`
`petition, charged to Deposit Account 130019. Should any further fees be required by
`
`the present Petition, the Patent Trial and Appeal Board (“the Board”) is hereby
`
`authorized to charge the above referenced Deposit Account.
`
`III.
`
`STANDING
`Pursuant to 37 C.F.R. §42.104(a), Petitioner certifies that the patent sought for
`
`review, the ’177 Patent, is available for inter partes review and that Petitioner is not
`
`4
`
`IDT_00008
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`barred or estopped from requesting an inter partes review of the patent.
`
`IV. REQUEST FOR INTERPARTESREVIEW OF CLAIMS 1-3, 5-7, 9-10,
`13-15, 19, 21, and 23-27 OF THE ’177 PATENT
`Pursuant to 37 C.F.R. §42.104(b), Petitioner requests that the Board find
`
`unpatentable claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 Patent. Such
`
`relief is justified as the alleged invention of the ’177 Patent was described by others
`
`prior to the effective filing date of the ’177 Patent.
`
`Technology Background
`A.
`Generally, light emitting panel assemblies are used in conjunction with liquid
`
`crystal displays (“LCDs”) and various applications thereof, as a backlight module to
`
`provide light to the display. Ex. 1004, Declaration of Michael J. Escuti, Ph.D.
`
`(“Escuti Decl.”), ¶38. The light emitting panel assembly is composed of all the
`
`elements of the LCD other than the liquid crystals themselves. Id. For example, the
`
`light emitting panel assembly is all but element 12 (in yellow) in the annotated figure
`
`below from Ex. 1005, U.S. Patent No. 5,461,547 (“Ciupke”).
`
`In order to produce surface illumination with the target brightness and
`
`uniformity at the lowest possible electrical power, the light emitting panel assembly
`
`can include features to spatially homogenize and control the angular distribution of
`
`5
`
`IDT_00009
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`emitted light. Escuti Decl., ¶42. Examples of these features include light pipes, a
`
`transition area, reflectors, and various types of microstructured deformities (e.g.,
`
`microprisms, diffusers, and microlenses). Id. The light pipe, also sometimes called a
`
`light guide or wave guide, accepts light injected from the side and distributes it across
`
`the emission area. The ’177 Patent calls the light pipe a “transparent panel member”
`
`(e.g., Ex. 1001, 1:19-20), “light emitting panel member” (e.g.,
`
`id. 1:32-33), and
`
`“transparent light emitting panel” (e.g., id. 2:61). See Escuti Decl., ¶43. The transition
`
`area, which is usually between the light source and the light pipe, is used to securely
`
`position the light source relative to the light pipe, and to spread and transmit light to
`
`produce a more uniform input illumination. Id. ¶44. The ’177 Patent refers to a “light
`
`transition area or member” that enables emitted light “to make the transition from the
`
`light source to the light emitting panel 2” and was “well known in the art.” See Ex.
`
`1001, 2:58-3:3. Deformities, such as microprisms, diffusers, and microlenses, are
`
`employed to control the direction and spatial uniformity of light within light emitting
`
`panel assemblies. Escuti Decl., ¶¶45-49.
`
`The Alleged Invention Of The ’177 Patent
`B.
`The ’177 Patent relates “to light emitting panel assemblies each including a
`
`transparent panel member for efficiently conducting light, and controlling the light
`
`conducted by the panel member to be emitted from one or more light output areas
`
`along the length thereof.” Ex. 1001, 1:19-23. As the ’177 Patent acknowledges,
`
`6
`
`IDT_00010
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`“[l]ight emitting panel assemblies are generally known.” Id. 1:24. The purported
`
`advantage of the alleged invention described in the ’177 Patent relates to several
`
`different light emitting assembly configurations which allegedly provide for better
`
`control of light output from the panel assembly and for more “efficient” utilization of
`
`light, thereby resulting in greater light output from the panel assembly. Id. 1:25-29.
`
`Yet, as shown further below, prior art already disclosed such advantages.
`
`The ’177 Patent discloses light emitting assemblies having a tray that forms a
`
`cavity or recess. Ex. 1001, Abstract. The tray acts as a back, side or edge reflector
`
`having one or more secondary reflective or refractive surfaces. Id.
`
`The Prosecution History Of The ’177 Patent
`C.
`During prosecution, the examiner rejected claims 1-28 under 35 U.S.C. § 112,
`
`first paragraph,
`
`in the first office action for failing to comply with the written
`
`description requirement. Specifically, the examiner did not believe that the tray having
`
`“at least one sheet, film or substrate positioned over the cavity or recess of the tray,”
`
`was supported in the specification.
`
`In response, the applicant amended Claim 1 to
`
`require that the sheet, film or substrate be “overlying the assembly” rather than
`
`“positioned over the cavity or recess.” Ex. 1002, Reply to October 3, 2007 Office
`
`Action, at 2. For alleged support, the applicant pointed to col. 6, ll. 29-33 stating
`
`“Moreover, a transparent film, sheet or plate 27 may be attached or positioned against
`
`the side or sides of the panel member from which light is emitted using a suitable
`
`7
`
`IDT_00011
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`adhesive 28 or other method in order to produce a desired effect.” Id. at 7.
`
`The Independent Claims Of The ’177 Patent
`D.
`The ’177 Patent relates to a light emitting assembly having a tray that forms a
`
`cavity or recess containing one or more light sources and “[a] sheet, film or substrate
`
`is positioned over the cavity or recess for controlling the light emitted from the
`
`assembly.” Ex. 1001, Abstract (emphasis added). This is inconsistent, however, with
`
`the independent claims as amended during prosecution. Claim 1 recites:
`
`A light emitting assembly comprising
`[1] a tray having a back wall and continuous side walls that
`form a hollow cavity or recess completely surrounded by
`the side wall,
`[2] at least one light source located, mounted or positioned
`in the cavity or recess, and
`[3] at
`least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the
`assembly to fit a particular application . . . .
`A plain reading of Claim 1 (and Claim 15) illustrates a light emitting assembly
`
`comprising three elements, one of which is the film, sheet, or substrate. But, as
`
`written and amended, the film, sheet, or substrate of both independent claims must
`
`also overly the assembly of which it is part. The film, sheet, or substrate, however,
`
`cannot both be part of the assembly and at the same time overly the assembly.
`
`Because the independent claims recite a physical impossibility, for the purposes
`
`of this inter partes review only, Petitioner will interpret the claims as the Patent Owner
`8
`
`IDT_00012
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`is apparently interpreting them in at least one of the Related Matters.
`
`V.
`
`CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`to inter partes review is given its “broadest reasonable
`A claim subject
`
`construction in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§42.100(b). This means that the words of the claim are given their plain meaning
`
`from the perspective of one of ordinary skill
`
`in the art unless that meaning is
`
`inconsistent with the specification.
`
`In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`Petitioner submits, for the purposes of inter partes review only, that the claim terms are
`
`presumed to take on their broadest reasonable interpretation in light of
`
`the
`
`specification of the ’177 Patent.
`
`“deformities” (Claim 14, 23-27)
`B.
`The ’177 Patent expressly defines the term “deformities” as follows: “As used
`
`herein, the term deformities or disruptions are used interchangeably to mean any
`
`change in the shape or geometry of the panel surface and/or coating or surface
`
`treatment that causes a portion of the light to be emitted.” Ex. 1001, 4:44-48. Thus,
`
`based on the express definition of deformities in the specification, “deformities”
`
`(Claim 14, 23-27) should be construed to mean “any change in the shape or geometry
`
`of a surface and/or coating or surface treatment that causes a portion of the light to
`
`be emitted.” Escuti Decl., ¶63.
`
`9
`
`IDT_00013
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’177 PATENT FORMING THE
`BASIS FOR THIS PETITION
`A.
`Admitted Prior Art
`The ’177 Patent discusses the following functionality and structure of prior art
`
`light emitting assemblies:
`
`(1) a “transparent light emitting panel 2,” (2) “one or more
`
`light sources 3 which emit light in a predetermined pattern,” and (3) “a light transition
`
`member or area 4 used to make the transition from the light source 3 to the light
`
`emitting panel.” Ex. 1001, 2:64-3:4 (describing these elements and their functionalities
`
`as being “well known in the art”).
`
`U.S. Patent No. 5,054,885 (“Melby”) (Ex. 1006)
`A.
`Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14-16.
`
`Melby qualifies as prior art under 35 U.S.C. § 102(b) because Melby issued as a patent
`
`on October 8, 1991, more than one year before the June 27, 1995 priority date to
`
`which the ’177 Patent may be entitled. Melby was not cited or considered during
`
`prosecution of the application that led to the ’177 Patent.
`
`U.S. Patent No. 5,453,855 (“Nakamura”) (Ex. 1007)
`B.
`Nakamura discloses a liquid crystal display device that is back illuminated by
`
`LEDs. Ex. 1007, 1:9-10. Nakamura qualifies as prior art under 35 U.S.C. § 102(e)
`
`because Sasuga was filed on December 9, 1993, before the June 27, 1995 priority date
`
`to which the ’177 Patent may be entitled. Nakamura was not cited or considered
`
`during prosecution of the application that led to the ’177 Patent.
`
`10
`
`IDT_00014
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`U.S. Patent No. 4,142,781 (“Baur”) (Ex. 1008)
`C.
`Baur discloses an electro-optical display device which includes fluorescent
`
`plates having mirrored edge surfaces. Ex. 1008, Abstract. Baur qualifies as prior art
`
`under 35 U.S.C. §102(b) because Baur issued as a patent on March 6, 1979, more than
`
`one year before the June 27, 1995 priority date to which the ’177 Patent may be
`
`entitled. Baur was not cited or considered during prosecution of the application that
`
`led to the ’177 Patent.
`
`D.
`
`U.S. Patent No. 5,432,626 (“Sasuga”) (Ex. 1009)
`
`Sasuga discloses a liquid crystal display device having a metal casing. Ex. 1009,
`
`1:9-10. Sasuga qualifies as prior art under 35 U.S.C. § 102(e) because Sasuga was filed
`
`on March 11, 1993, before the June 27, 1995 priority date to which the ’177 Patent
`
`may be entitled. Sasuga was not cited or considered during prosecution of the
`
`application that led to the ’177 Patent.
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1010)
`E.
`Pristash discloses a thin panel illuminator for more efficient light transmission
`
`from the light source to the light emitting panel. Ex. 1010, Abstract. Pristash
`
`qualifies as prior art under 35 U.S.C. §102(b) because Pristash issued as a patent on
`
`April 2, 1991, more than one year before the June 27, 1995 priority date to which the
`
`’177 Patent may be entitled. Pristash was cited as a reference in an Information
`
`Disclosure Statement during prosecution, but was not relied upon as the basis to
`
`reject any claim. In fact, Pristash was not discussed on the record at all during the
`11
`
`IDT_00015
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`prosecution proceedings.
`
`U.S. Patent No. 5,567,042 (“Farchmin”) (Ex. 1011)
`F.
`Farchmin discloses backlighting for an LCD display including reflector surfaces
`
`which maximize the emitted light transmitted to the display. Ex. 1011, Abstract.
`
`Farchmin qualifies as prior art under 35 U.S.C. § 102(e) because Farchmin was filed
`
`on May 27, 1994, before the June 27, 1995 priority date to which the ’177 Patent may
`
`be entitled. Farchmin was not cited or considered during prosecution of the
`
`application that led to the ’177 Patent.
`
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`
`In light of the disclosures detailed below, the ’177 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Ground # Ground
`1
`103(a)
`
`2
`
`3
`4
`
`5
`
`6
`
`7
`
`102(e)
`
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Prior art
`Melby
`
`Nakamura
`
`Exhibit(s) #
`Ex. 1006
`
`Ex. 1007
`
`Baur
`Baur and
`Nakamura
`Sasuga and
`Farchmin
`Sasuga, Farchmin,
`and Nakamura
`Sasuga, Farchmin,
`and Pristash
`
`Ex. 1008
`Ex. 1008 and Ex.
`1007
`Ex. 1009 and Ex.
`1011
`Exs. 1009, 1011
`and 1007
`Exs. 1009, 1011,
`and 1010
`
`Claims
`1-3, 5-7, 9-10, 13-
`15, 19, 21, 23-25, 27
`1, 2, 6, 7, 9, 10, 13-
`15, 19, 21, 23-24, 26
`1, 2, 13, 14
`6, 9, 10, 15, 19, 21,
`23
`1, 2, 6, 7, 9, 10, 13,
`15, 21
`14 and 19
`
`23, 25, and 26
`
`12
`
`IDT_00016
`
`

`

`Patent No. 7,384,177
`
`
`Petition for Inter Partes ReviewReview
`
`A.
`
`
`
`Ground 1: Claims 1Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19, 21, And 2315, 19, 21, And 23-25, 27 Are
`
`
`Unpatentable UnderUnpatentable Under 35 U.S.C. §103(a) As Being Obvious Over35 U.S.C. §103(a) As Being Obvious Over
`Melby
`
`
`Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14-16.
`
`
`
`
`
`The “light fixture has a source of partially collimated light for emitting light having anlight fixture has a source of partially collimated light for emitting light having anlight fixture has a source of partially collimated light for emitting light having an
`
`
`
`
`
`axis of collimation.” Id. Abstract. Melby also discloses “a housing 30 including wallsAbstract. Melby also discloses “a housing 30 including wallsAbstract. Melby also discloses “a housing 30 including walls
`
`
`
`32, 34, 36 and 38 defin[ing] an optical32, 34, 36 and 38 defin[ing] an optical cavity having an optical window” ashaving an optical window” as well as a
`
`
`
`
`
`rear wall. Id. 2:44-45 (emphasis added); 2:6345 (emphasis added); 2:63-65.
`
`
`
`Mebly discloses all of the limitations of claims 1Mebly discloses all of the limitations of claims 1-3, 5-7, 9-10, 1310, 13-15, 19, 21, 23-
`
`
`
`
`
`
`
`25, and 27, but within both the first and third embodiments. A person of ordinarywithin both the first and third embodiments. A person of ordinarywithin both the first and third embodiments. A person of ordinary
`
`
`
`skillskill
`
`
`
`
`
`in the art would be moin the art would be motivated to pick and choose features of the differenttivated to pick and choose features of the different
`
`
`
`
`
`embodiments to combine because they are taught within the same patent and there isembodiments to combine because they are taught within the same patent and there isembodiments to combine because they are taught within the same patent and there is
`
`
`
`
`
`no disclosure suggesting that they should not or cannot be combined.no disclosure suggesting that they should not or cannot be combined.no disclosure suggesting that they should not or cannot be combined. See Escuti
`
`
`
`Decl., ¶¶67-68; see also Ex. 1006, at 3:1Ex. 1006, at 3:1-6.
`
`
`
`TheThe
`
`
`
`elementselements
`
`
`
`ofof
`
`
`
`independent claims 1 and 15 ofindependent claims 1 and 15 of
`
`
`
`the ’177 Patent are shown in the’177 Patent are shown in the
`
`
`
`annotatedannotated
`
`
`
`figurefigure
`
`
`
`atat
`
`
`
`right,right,
`
`composed of Figure 1 and
`
`3 of
`
`
`
`Melby that are labeled as claimMelby that are labeled as claim
`
`elements.
`
`13
`
`IDT_00017
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`Regarding claims 1 and 15, Melby discloses a housing 30 with continuous side
`
`walls 32, 34, 36, and back wall 38, which form a cavity completely surrounded by the
`
`side walls. See Ex. 1006, at 2:63-65; see also Escuti Decl., ¶71. The housing includes
`
`mounted light sources 42 and 44 (claims 1, 6, 15). The housing is also reflective,
`
`having reflective side walls, and contains secondary surfaces, structured surface 46
`
`made of prisms, which facilitate better mixing of light from the light sources (claims 9
`
`and 15), which may be LEDs (claim 19). See Ex. 1006, at 1:57-60, 2:15-17, 2:20-33,
`
`2:67-3:1; see also Escuti Decl., ¶¶75-80. Sheet 40 also overlies the assembly, as required
`
`by claims 1 and 15. The sheet may contain pillows optics or Fresnel prisms as taught
`
`by Fig. 1, which are a form of raised or depressed prismatic deformities (claims 14,
`
`23-25) and which reflect light, which provides additional light mixing (claim 10, 13,
`
`21). See Ex. 1006, at 2:11-14, 2:30-33; see also Escuti Decl., ¶¶111-147.
`
`Regarding claims 2, 3, 5, 7, the secondary reflective surfaces referred to as
`
`structured surface 46 in Melby, may be planar or curved as taught by Fig. 1, they may
`
`be prismatic, and they are in close proximity to the light sources, as can be seen in Fig.
`
`3. See Ex. 1006, at 3:1-14, 4:5-8, 2:15-20; see also Escuti Decl., ¶¶84, 88, 92-94, 102-
`
`103.
`
`The claim chart below shows a detailed analysis of how each element of claims
`
`1-3, 5-7, 9-10, 13-15, 19, 21, 23-25, and 27 of the ’177 Patent are obvious over Melby.
`
`For all these reasons, claims 1-3, 5-7, 9-10, 13-15, 19, 21, 23-25, and 27 are
`
`14
`
`IDT_00018
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`unpatentable in view of Melby and thus, Petitioner has a reasonable likelihood of
`
`prevailing with respect to at least one claim.
`
`’177 Claim Element
`1. A light
`emitting
`assembly comprising
`
`[1.a] a tray having a back
`wall and continuous side
`walls that form a hollow
`cavity
`or
`recess
`completely
`surrounded
`by the side walls,
`
`Melby (Ex. 1006)
`“A light fixture has a source of partially collimated light
`for emitting light having an axis of collimation. A
`structured surface has a plurality of prisms that are
`rendered reflective for reflecting light from the light
`source out of the cavity. The peaks of the prisms define a
`surface at least a portion of which makes an acute angle
`with the axis of collimation .” Ex. 1006, Abstract
`See Escuti Decl., ¶70.
`“According to the invention a housing defines an optical
`cavity having an optical window.” Ex. 1006, 1:54-55.
`“Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window.” Ex. 1006, 2:63-
`65.
`
`least one light
`[1.b] at
`source located, mounted
`or positioned
`in the
`cavity or recess,
`
`See Escuti Decl., ¶¶71-72.
`“A source of partially collimated light 16 is positioned
`inside the optical cavity and adjacent side 10 of the
`housing.” Ex. 1006, 2:15-17.
`“Light
`from two partially collimated light sources is
`directed from light sources 42 and 44 to structured surface
`46.” Id. 2:67-3:1.
`See Escuti Decl., ¶73.
`
`15
`
`IDT_00019
`
`

`

`Patent No. 7,384,177
`Petition for Inter Partes Review
`
`’177 Claim Element
`[1.c] and at
`least one
`sheet, film or substrate
`overlying the assembly
`for controlling the light
`emitted
`from
`the
`fit
`assembly
`to
`a
`particular application,
`
`[1.d] wherein the tray
`acts as at least one of a
`back, side edge, and end
`edge reflector and has
`one or more secondary
`flat, angled,
`faceted or
`curved
`reflective
`or
`refractive
`surfaces
`to
`redirect at least a portion
`of the light emitted by
`the light
`source in a
`predetermined manner
`within
`the
`cavity
`or
`recess.
`
`Melby (Ex. 1006)
`“Light transmitting member 14 may be a transparent or
`translucent material. If desired, light transmitting member
`14 could include structures such as pillow optics or
`Fresnel prisms.” Id. 2:11-14; see also Fig. 1.
`“A transparent or translucent cover 40 lies in the optical
`window.” Id. 2: 65-55; see also Fig. 3.
`See Escuti Decl., ¶74.
`“A structured surface having a plurality of prisms thereon
`is positioned within the optical cavity such that the prisms
`reflect light through the optical window.” Ex. 1006, 1:57-
`60.
`“Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window. A transparent or
`translucent cover 40 lies in the optical window. Light from
`two partially collimated light sources is directed from light
`sources 42 and 44 to structured surface 46.” Ex. 1006,
`2:63-3:1; see Fig. 3.
`invention may be
`the present
`“The
`structure of
`advantageously formed directly on the rear wall of the
`light fixture.
`Such a structure could be formed by
`injection molding. Alternatively a separate film having the
`structure surface described above could be placed in the
`light fixture.” Id. 2:44-49.
`“Side 22 of wall 12 is a structured surface having a
`plurality of, preferably triangular, prisms, 24, thereon. In a
`preferred embodiment, prisms 24 are linear prisms.
`Prisms 24 are rendered specularly reflective, typically by
`aluminum vapor coating. It is only necessar