throbber
Case IPR2015-00359
`Patent 7,384,177
`Filed on behalf of Innovative Display Technologies LLC
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`
`Case IPR2015-00359
`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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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
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`Case IPR2015-00359
`Patent 7,384,177
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`I.
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`INTRODUCTION
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`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
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`Owner”) hereby files this Preliminary Response to the Petition (the “Petition” or
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`“Instant Petition”) for Inter Partes Review of U.S. Patent No. 7,384,177 (the “’177
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`patent”) in IPR2015-00359 filed by Mercedes-Benz USA, LLC and Mercedes-Benz
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`U.S. International, Inc. (“Mercedes-Benz” or “Petitioner”).
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`The PTAB should deny the Petition’s request to institute IPR because the
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`grounds in the Petition do not demonstrate a reasonable likelihood of any claims
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`being invalid.
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`Moreover, The PTAB should deny the Petition’s request to institute IPR2015-
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`00359 because it is 100% duplicative of IPR2014-01362 (the “LGD Petition”) (Ex.
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`2001) filed on August 22, 2014 against the ’177 patent by LG Display Co. Ltd.
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`(“LGD”).
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`Patent Owner has limited its identification of the deficiencies in Petitioner’s
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`argument in this Preliminary Response; Patent Owner does not intend to waive any
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`arguments by not addressing them in this Preliminary Response.
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`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, as it is filed within of the deadline set in the March 17, 2015, date of the
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`New Filing Date accorded to Petition and the Extended Due Date for filing Patent
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`Case IPR2015-00359
`Patent 7,384,177
`Owner’s Preliminary Response in accordance with the Conduct of the Proceeding
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`Order of March 16, 2015. Paper No. 19.
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`A. Grounds in Petition
`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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`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 below, none of the grounds demonstrate a
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`reasonable likelihood of any claims being invalid.
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`Claim Construction
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`B.
`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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`Case IPR2015-00359
`Patent 7,384,177
`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. 2002) 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.
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`II. The Board Should Decline to Institute the Instant Petition Because the
`Grounds and Their References Asserted Are Cumulative and
`Redundant
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`In the Instant Petition, Mercedes-Benz relies on arguments that the Board
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`considered and rejected in the Petition filed by LG Display in August 2014.
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`Additionally, Mercedes-Benz has provided no meaningful distinction between the
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`grounds asserted in the LGD Petition and the instant petition. The Board should
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`decline to consider the cumulative and redundant grounds.
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`The authority to manage co-pending proceedings and to deny an AIA trial
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`because of duplicative arguments in other proceedings allows the PTAB to prevent
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`the inefficiency, waste, and inequity that naturally result when patent challengers
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`file needlessly duplicative proceedings against the same patent. See 35 U.S.C. §
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`325(d).
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`Case IPR2015-00359
`Patent 7,384,177
`Duplicative USPTO proceedings thwart the goal of reducing the expense of
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`validity disputes by multiplying the time and expense that both the USPTO and the
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`parties must expend to resolve validity disputes. By filing duplicative IPRs, the
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`Petitioner merely seeks to increase the enormous burden on Patent Owners who face
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`multiple and concurrent AIA trials as well as litigation in district court, and the Board
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`should not allow it.
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`A. The Instant Petition Is Cumulative of a Current Office Proceeding
`The Instant Petition relies on the very same arguments that LGD presented to
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`the Board in its Petition in IPR2014-01362. Indeed, the arguments presented by
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`Petitioner are identical to the LGD Petition and reference identical testimony from
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`the same Expert. Under Section 325(d), the Board should deny petitions that
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`challenge a patent based on previously presented grounds and cumulative and
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`duplicative art, otherwise petitioners may be given an unwarranted and unfair
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`procedural advantage in pending infringement litigation. See 35 U.S.C. § 325(d);
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`See also, Unified Patents, IPR2014-00702, Paper 13 at 2, 7-8 (denying third party
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`IPR petition in view of previous IPR petition citing the same prior art reference).
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`“In determining whether to institute or order a proceeding under this chapter,
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`chapter 30, or chapter 31, the Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or arguments
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`previously were presented to the Office” thus utilizing judicial resources to their best
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`Case IPR2015-00359
`Patent 7,384,177
`advantage. 35 U.S.C. § 325(d). The legislative history of Section 325(d) confirms
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`that this is also what Congress intended: Section 325(d) “allows the Patent Office to
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`reject any request for a proceeding, including a request for ex parte reexamination,
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`if the same or substantially the same prior art or arguments previously were
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`presented to the Office with respect to that patent.” 157 Cong. Rec. S1042 (daily ed.
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`Mar. 1, 2011) (Statement of Sen. Kyl).
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`B. The Board has Already Declined to Institute Review Based on the
`Same Art in the Instant Petition
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`In the LGD Petition, the Petitioner raised the same arguments as the Petitioner
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`is raising in the Instant Petition with respect to all Grounds of alleged invalidity.
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`Most of the Grounds raised were denied institution. In particular, Grounds 3-7 were
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`determined to not have a reasonable likelihood of prevailing in the LGD Petition.
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`Ex. 2003 (IPR2014-1362, Paper No. 12, Institution Decision) at 19-20.
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`Here, Petitioner makes identical arguments to the arguments presented in the
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`LGD Petition. Petitioner makes no argument or explanation why the art cited or
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`arguments presented are not “the same or substantially the same” as the LGD
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`Petition. Accordingly, the Board should exercise its discretion to deny Inter Partes
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`Review.
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`Case IPR2015-00359
`Patent 7,384,177
`III. GROUND 1 - 103(a) - Melby (Claims 1-3, 5-7, 9-10, 13- 15, 19, 21, 23-25,
`27)
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`A. Claim 1, limitation [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”
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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 38 defin[ing] and an optical cavity having an optical window’
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`as well as rear wall.” Petition at 12-15 (including claim chart identifying the same
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`elements). The Petition argues that Melby’s wall 38 is the claimed “back wall” and
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`that walls 32, 34, and 36 are the claimed “continuous side walls.” Id. at 13. But these
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`three side walls do not completely surround the cavity as expressly required in the
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`claim. Indeed, none of the figures or text in Melby show a tray having a back wall
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`and continuous side walls that form a hollow cavity or recess completely
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`surrounded by the side walls.
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`Although not argued in the Petition, Petitioner’s expert makes two
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`assumptions about Melby to try to match up the claim requirements with what is not
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`shown in Melby. First, Escuti assumes that all of the figures in Melby are cross-
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`sectional views, and second, that “housing 30 includes a fourth wall adjoining walls
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`32 and 36 to form the optical cavity that opens up with the optical window covered
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`with the transparent cover 40.” Escuti Decl. at 30 ¶ 71.
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`However, there is no support in Melby that supports either of these
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`assumptions. None of the figures have cross-section markings. None of the
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`Patent 7,384,177
`descriptions of the figures suggest that they are cross-sections, and nothing in the
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`specification describes a missing fourth wall. In short, Escuti imagines that there is
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`a “fourth wall adjoining walls 32 and 36 to form the optical cavity that opens up. . .”
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`Most problematic is that Escuti provides no reasoning or analysis in support
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`of the assumptions. The Supreme Court and Federal Circuit have long held the
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`principle that mere assertions and conclusory statements cannot support an
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`obviousness determination. The assertions must be articulated by reasoning with
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`rational underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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`2006) (“Rejections on obviousness grounds cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.”).
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`Case IPR2015-00359
`Patent 7,384,177
`Even if Figure 3 is a cross-sectional view, that does not make Melby
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`inherently disclose a fourth wall which completely surrounds its cavity. If Dr. Escuti
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`is making an inherency argument, he must explain why a fourth wall is necessarily
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`present. There is no such argument in his declaration or in the Petition.
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`In contrast, the description of Fig. 3 states, “FIG. 3 is a view of a third
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`embodiment of a light fixture according to the invention.” Ex. 1006 at col. 2, ll. 1-
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`2 (emphasis added). Furthermore, the “translucent cover 40” at the top of Fig. 3 is
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`not shown in cross-section, and it would fit in structure below it.
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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); See also, e.g., Blackberry Corp. v. Mobilemedia Ideas LLC, No IPR2013-
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`00016, Paper No. 32 at 21 (PTAB Feb. 25, 2014) (disregarding arguments made only
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`in an expert declaration). Here, the Petition itself never makes the “cross-section”
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`argument; the Petition only states that “Melby discloses a housing 30 with
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`continuous side walls 32, 34, 36, and back wall 38.” Petition at 14 (emphasis added).
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`Thus, the Petition itself never makes an argument about a fourth wall in Melby that
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`Patent 7,384,177
`would be present but for the cross-sectional view of Fig 3. Without that argument in
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`the Petition itself, Petitioner cannot rely on the “cross-section” argument from the
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`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 15. 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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`Patent 7,384,177
`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 12-14. 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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`Patent 7,384,177
`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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`Case IPR2015-00359
`Patent 7,384,177
`¶¶ 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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`13
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`Case IPR2015-00359
`Patent 7,384,177
`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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`14
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`Case IPR2015-00359
`Patent 7,384,177
`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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`III.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 III.B discussing limitation [1.c], Ground 1 fails for claim 15.
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`Case IPR2015-00359
`Patent 7,384,177
`I.
`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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`Case IPR2015-00359
`Patent 7,384,177
`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 III.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 III.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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`IV. GROUND 2 - 102(e) - Nakamura (Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19,
`21, 23-24, and 26)
`A.
`The Petition never makes any allegations that the identified side walls are
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`Claim 1, limitation [1.a] – “a tray having … continuous side walls”
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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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`Case IPR2015-00359
`Patent 7,384,177
`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. 1004
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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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`Claim 1, limitation [1.a] – “a tray having a back wall …”
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`B.
`The Petition never makes any identification of the tray’s claimed “back wall.”
`
`The Petition briefly mentions “side wall 24a and 24b,” but it never identifies a
`
`corresponding back wall. See Petition at 23 (stating, “Nakamura discloses a shallow
`
`box-form holder 24 with its front surface open including side walls 24a and 24b …”
`
`but not identifying a corresponding back wall). The corresponding part of the Escuti
`
`Declaration also makes no mention of what specific part of Nakamura discloses the
`
`claimed back wall. Petition at 26, citing to Ex. 1004 at ¶ 157. Without making any
`
`identification of a specific “back wall” in Nakamura, the Petition fails to show that
`
`Nakamura anticipates claim 1 or any of its dependent claims.
`
`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.”
`
`The Petition makes no showing that Nakamura discloses that a “sheet, film or
`
`substrate has deformities for controlling the light output ray angle distribution to fit
`
`
`
`18
`
`

`

`Case IPR2015-00359
`Patent 7,384,177
`a particular application.” (emphasis added). There is no “particular application”
`
`mentioned in the Petition for Nakamura as applied to the limitation “at least one
`
`sheet, film or substrate has deformities for controlling the light output ray angle
`
`distribution to fit a particular application.” Petition at 29. The Petition generally
`
`alleges that Nakamura has a film with deformities “for controlling the output of light
`
`(claims 14, 23),” (Petition at 24), but the Petition never identifies the particular
`
`application for which the deformities allegedly control the light output ray angle
`
`distribution as claimed. Without making any identification of a specific “particular
`
`application” in Nakamura, the Petition fails to show that Nakamura anticipates claim
`
`14 or any of its dependent claims.
`
`D. Claim 15 – “a tray having … continuous side walls”
`For the limitation “a tray having … continuous side walls” in claim 15, the
`
`Petition cites to its alleged support for limitation [1.a] in claim 1. Petition at 30. For
`
`the same reasons described in Section IV.A discussing limitation [1.a], Ground 1
`
`fails for claim 15 and its dependent claims.
`
`Claim 15 – “a tray having a back wall …”
`
`E.
`For the limitation “a tray having a back wall” in claim 15, the Petition cites to
`
`its alleged support for limitation [1.a] in claim 1. Petition at 30. For the same reasons
`
`described in Section IV.B discussing limitation [1.a], Ground 1 fails for claim 15
`
`and its dependent claims.
`
`
`
`19
`
`

`

`Case IPR2015-00359
`Patent 7,384,177
`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”
`
`For claim 23, the same argument applies as stated in Section III.C discussing
`
`claim 14 and the Petitioner’s failure to identify any “particular application” as
`
`claimed. Accordingly, Ground 1 fails for claim 23.
`
`V. GROUND 3 - 103(a) - Baur (Claims 1, 2, 13, and 14)
`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”
`
`The Petition makes no showing that the alleged film/sheet/substrate in Baur
`
`controls “the light emitted from the assembly to fit a particular application.” Petition
`
`at 32-33 and 35. Furthermore, the Escuti Declaration also fails to apply Baur to any
`
`“particular application” as recited by this limitation. Ex. 1004 at 70, ¶¶ 234-235. And
`
`the Petition never argues that the “controlling the light emitted from the assembly to
`
`fit a particular application” would have been obvious in light of Baur. Accordingly,
`
`the Petition cannot show that Baur renders claim 1 obvious because the Petition has
`
`not made a sufficient showing for the limitation that recites “at least one sheet, film
`
`or substrate overlying the assembly for controlling the light emitted from the
`
`assembly to fit a particular application.”
`
`
`
`20
`
`

`

`Case IPR2015-00359
`Patent 7,384,177
`B. Claim 1, limitation [1.c] – “at least one sheet, film or substrate
`overlying the assembly …”
`
`The Petition never makes any particular allegations that the alleged films in
`
`Baur are “overlying the assembly” as claimed. The Petition appears to identify films
`
`10 and/or 11 as allegedly disclosed by Baur. Petition at 35. But neither the Petition
`
`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.
`
`VI. 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 V.B
`
`discussing limitation [1.c], Baur does not disclose this limitation from claim 15. The
`
`
`
`21
`
`

`

`Case IPR2015-00359
`Patent 7,384,177
`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 V.B
`
`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.
`
`VII. 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
`
`

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