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 IPR2015-00361
`U.S. Patent No. 6,755,547
`
`

`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: February 26, 2015
`
`
`
`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 IPR2014-01357
`Patent No. 6,755,547
`____________
`
`
`
`Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IDT_00001
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`LG Display Co., Ltd. (“Petitioner”) filed a Petition pursuant to 35
`
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1–4, 16, and
`
`26 of U.S. Patent No. 6,755,547, issued on June 29, 2004 (“the ’547
`
`patent”). Paper 1 (“Pet.”). Innovative Display Technologies LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying
`
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`
`a reasonable likelihood that Petitioner would prevail with respect to at least
`
`one challenged claim, we grant the Petition and institute an inter partes
`
`review of all challenged claims.
`
`
`
`
`
`A. The ʼ547 patent (Ex. 1001)
`
`I. BACKGROUND
`
`The ʼ547 patent is entitled “Light Emitting Panel Assemblies.” The
`
`Abstract describes the subject matter as follows:
`
`Light emitting panel assemblies include a sheet, film or
`plate overlying a light emitting member. The sheet, film or
`plate has a pattern of deformities on one or both sides that may
`vary or be random in size, shape or geometry, placement, index
`of refraction, density, angle, depth, height and type for
`controlling the light output distribution to suit a particular
`application. Also the sheet, film or plate may have a coating or
`surface treatment for causing the light to pass through a liquid
`crystal display with low loss.
`
`
`Ex. 1001, Abstract.
`
`
`
`
`
`B. Illustrative Claim
`
`Claim 1 is illustrative of the claims at issue:
`
`1. A backlight assembly comprising a light emitting
`member having
`
`2
`
`IDT_00002
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`at least one light emitting area that emits light that is
`internally reflected within the light emitting member,
`
`a separate transparent sheet or film overlying the light
`emitting area with an air gap therebetween,
`
`a pattern of deformities on one side of the sheet or film
`having a width and length that is quite small in relation to the
`width and length of the sheet or film,
`
`the deformities varying at different locations on the sheet
`or film to direct the light that is emitted by the, light emitting
`member in different directions to produce a desired light output
`distribution such that the light will pass through a liquid crystal
`display with low loss.
`
`
`C. Related Proceedings
`
`
`
`Patent Owner states that it has asserted infringement by Petitioner of
`
`the ʼ547 patent in the following proceeding: Delaware Display Group LLC
`
`et al. v. LG Electronics, Inc. et al., No. 1:13-cv-02109 (D. Del., filed Dec.
`
`31, 2013). Paper 5.
`
`Patent Owner identifies numerous other proceedings in which it has
`
`alleged infringement of the ʼ547 patent. See Paper 5 for a listing.
`
`In addition, there are two other pending requests for inter partes
`
`review by Petitioner for patents related to the ’547 patent. Id. Those are as
`
`follows:
`
`1. IPR2014-01359 (U.S. Patent No. 7,914,196);
`
`2. IPR2014-01362 (U.S. Patent No. 7,384,177).
`
`
`
`
`
`D. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`
`
`3
`
`IDT_00003
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`The only claim term for which Petitioner proposes a construction is
`
`the term “deformities,” appearing in all challenged claims. Petitioner asserts
`
`that the ʼ547 patent “expressly defines” the term to mean “any change in the
`
`shape or geometry of the panel surface and/or coating or surface treatment
`
`that causes a portion of light to be emitted.” Pet. 7 (citing ʼ547 patent, Ex.
`
`1001, col. 4, ll. 42–46). Patent Owner does not address claim construction
`
`or any other substantive issue raised by Petitioner. Prelim. Resp. 2.
`
`We have considered Petitioner’s construction of “deformities” and
`
`based on the present record, determine that at this stage it should be adopted
`
`here.
`
`We have further determined that, except as may be indicated in the
`
`discussion below, the remaining terms should be given their plain and
`
`ordinary meaning.
`
`
`
`E. References
`
`Petitioner relies on the following references1:
`
`Pristash
`Ohe
`Nishio
`Kobayashi
`Matsumoto
`
`
`US 5,005,108
`US 4,729,068
`US 5,598,280
`US 5,408,388
`US 5,386,347
`
`Apr. 2, 1991
`Mar. 1, 1988
`Mar. 22, 1994
`Apr. 18, 1995
`Jan. 31, 1995
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Petitioner also states that it is relying on Admitted Prior Art (“APA”)
`
`from the ʼ547 patent specification. Pet. 8; Ex. 1001, col. 2, l. 62–col. 3, l .2.
`
`
`1 The references are ordered by exhibit number with effective dates asserted
`by Petitioner.
`
`
`
`4
`
`IDT_00004
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`Petitioner also relies on a Declaration of Michael J. Escuti, Ph.D. (“Escuti
`
`Decl.”). Ex. 1004.
`
`
`
`F. Grounds Asserted
`
`Petitioner challenges claims 1–4, 16, and 26 of the ʼ547 patent on the
`
`following grounds.
`
`
`Claims Challenged
`1–4 and 26
`1, 3, 4 and 16
`1–4, 16 and 26
`1–4, 16 and 26
`1–4 and 26
`
`Basis
`§ 102(b)
`§ 102(e)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`
`
`References
`
`Ohe
`Nishio
`Pristash
`Kobayashi and Ohe
`Pristash and Matsumoto
`
`II. ANALYSIS
`
`
`
`A. Statutory Bar Under 35 U.S.C. § 315(b)
`
`Patent Owner’s Preliminary Response does not identify any
`
`deficiencies in Petitioner’s arguments for obviousness or anticipation of the
`
`challenged claims. Prelim. Resp. 2. Instead, Patent Owner asserts that the
`
`Petition is barred under 35 U.S.C § 315(b). Id. at 2–3. We therefore address
`
`this challenge to the Petition before turning to the merits.
`
`In its Preliminary Response, Patent Owner makes the argument that
`
`Petitioner is barred from filing the Petition because Petitioner is in privity
`
`with HP and Dell. Prelim Resp. 7. According to Patent Owner, both HP
`
`and Dell were served with complaints by Patent Owner charging
`
`infringement of the ʼ547 patent on July 3, 2013, more than one year before
`
`the Petition was filed. Id. at 3. Therefore, Dell, HP, and their privies, are
`
`barred from filing this Petition under the provisions of 35 U.S.C. § 315(b).
`
`Id. at 4.
`
`
`
`5
`
`IDT_00005
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`Patent Owner further contends that since the filing of the Petition,
`
`Petitioner has “acted to control” the cases against HP and Dell, “to protect
`
`its interests and fulfill its obligations as a supplier of LCM Modules . . . ” to
`
`those companies. Id. at 6. Patent Owner seeks authorization to conduct
`
`additional discovery on this issue. Id. at 2.
`
`Patent Owner does not provide sufficient evidence to demonstrate that
`
`Petitioner exercised control or could have exercised control over HP’s and
`
`Dell’s participation in the respective district court proceedings. Accordingly,
`
`we determine that based on the evidence presented at this stage of the
`
`proceeding, 35 U.S.C. § 315(b) does not bar institution of inter partes
`
`review.
`
`
`
`B. Asserted Grounds Based On Ohe (Claims 1–4, 26)
`
`Petitioner contends that these claims are anticipated by Ohe under
`
`35 U.S.C. § 102(b). Pet. 11. For the reasons that follow, we are persuaded
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing on this
`
`challenge as to claims 1, 2, and 4. We are not persuaded as to claims 3 and
`
`26.
`
`
`
`1. Ohe Overview
`
`Ohe describes a light diffusing device for illuminating a relatively
`
`large area at a significantly reduced optical loss. Ex. 1007, col. 1, ll. 6–10.
`
`The device includes a light reflecting film and light reflecting spots formed
`
`on the transparent film substrate. Id. col. 6, ll. 10–14. This is illustrated by
`
`Figure 4 of Ohe reproduced here:
`
`
`
`6
`
`IDT_00006
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`
`
`
`
`In Figure 4 above, transparent film substrate 7a and light reflecting
`
`spots 7a formed on the transparent film substrate are shown. Ex. 1007,
`
`col. 6, ll. 10–14. The transparent film is interposed between an ordinary
`
`light diffusing plate and a light diffusing layer. Id. col. 3, ll. 45–47. The
`
`film consists of a transparent substrate and a number of light reflecting small
`
`spots or places formed on the substrate film in a pattern effective for evenly
`
`distributing the quantity of light transmitted from a base plate to the light
`
`diffusing plate. Id. ll. 47–53.
`
`
`
`
`
`
`
`2. Discussion
`
`Petitioner’s analysis of claims 1–4 and 26 of the ʼ547 patent in
`
`relation to Ohe appears at pages 11–18 of the Petition. Petitioner contends
`
`that “each limitation of claims 1–4 and 26 of the ʼ547 Patent is disclosed by
`
`Ohe.” Pet. 12. For example, Petitioner identifies the “separate transparent
`
`sheet or film overlying the light emitting area . . . ” in claim 1 with the light
`
`reflecting film 7 in Ohe. Pet. 13. Claim 1 further recites: “a pattern of
`
`deformities on one side of the sheet or film having a width or length that is
`
`quite small in relation to the width and length of the sheet or film . . . .” To
`
`
`
`7
`
`IDT_00007
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`meet this limitation, Petitioner identifies the light reflecting small spots or
`
`small places in Ohe. Id. at 14. Claim 1 further recites “the deformities
`
`varying at different locations on the sheet or film to direct the light that is
`
`emitted by the light emitting member in different directions . . . .” For this
`
`limitation, Petitioner relies on the decrease in the size and density of the
`
`spots in Ohe with an increase in distance from the light source shown in
`
`Figure 4. Id. at 15. As noted, Patent Owner’s Response does not address
`
`Ohe or any of the other references cited.
`
`
`
`We have reviewed Petitioner’s analysis of claim 1 in relation to Ohe,
`
`and find it sufficient to demonstrate that Petitioner has a reasonable
`
`likelihood of prevailing on this challenge to claim 1 based on anticipation.
`
`Pet. 12–16. Similarly, we have reviewed Petitioner’s analysis of claims 2
`
`and 4, and find it sufficient to demonstrate that Petitioner has a reasonable
`
`likelihood of prevailing on this challenge to those claims based on
`
`obviousness over Ohe. Claim 2 requires that “the deformities vary in size at
`
`different locations on the sheet . . . .” Claim 4 requires that “the deformities
`
`vary in placement at different locations on the sheet . . . .” We agree with
`
`Petitioner’s analysis showing that both requirements are met by Ohe. Pet.
`
`16–17.
`
`
`
`We reach a different conclusion for claims 3 and 26. Claim 3 requires
`
`that “the deformities vary in shape at different locations on the sheet or film
`
`to direct the light in different directions.” Petitioner’s argument that the
`
`disclosure of Ohe meets this limitation is not persuasive. Ohe describes
`
`spots that vary in location and size, but not in shape. Ohe states that “[t]he
`
`size, configuration, and distribution of the light reflecting spots are designed
`
`so they cause the distribution of light transmitted through the light reflecting
`
`
`
`8
`
`IDT_00008
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`film to be uniform.” Ex. 1007, col. 6, ll. 3–9. We do not interpret this as
`
`describing a change in shape. We interpret the term “configuration” in Ohe
`
`as referring to the arrangement of the spots, which is shown as changing.
`
`This is consistent with the dictionary definition of “configuration” as “[t]he
`
`arrangement of the parts or elements of something.” The American Heritage
`
`Dictionary (1975) 279.
`
`
`
`Claim 26 includes a similar limitation, stating that “at least some of
`
`the deformities have random or varying changes in shape or geometry . . . .”
`
`We are not persuaded by Petitioner’s assertion that Ohe’s spots change in
`
`shape or geometry. We interpret “geometry” in accordance with its
`
`dictionary definition as “[c]onfiguration; arrangement.” Id. at 551. For
`
`these reasons we determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenge to claims 3 and 26 over Ohe.
`
`
`
`Accordingly, on the record before us, the information presented in the
`
`Petition demonstrates a reasonable likelihood that Petitioner would prevail
`
`with respect to its contention that claims 1, 2, 4, and 16 are anticipated by
`
`Ohe, but not claims 3 or 26.
`
`
`
`B. Asserted Grounds Based On Nishio (Claims 1, 3, 4, and 16)
`
`Petitioner’s analysis of claims 1, 3, 4, and 16 of the ʼ547 patent in
`
`relation to Nishio appears at pages 18–25 of the Petition. Petitioner
`
`contends that these claims are anticipated by Nishio under 35 U.S.C.
`
`§ 102(e). Pet. 18. For the reasons that follow, we are not persuaded that
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`
`ground.
`
`
`
`1. Nishio Overview
`
`This patent describes a film lens and surface light source for
`
`
`
`9
`
`IDT_00009
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`back-lighting a liquid crystal display. Ex. 1012, col. 1, ll. 7–10. Figure 6
`
`of Nishio is reproduced here:
`
`
`
`In Figure 6, light guide plate 1, reflecting layer 2, light source 3, lens sheet
`
`4, gap 9, projections 41, and lens units 42 are shown.
`
`
`
`
`
`
`
`2. Discussion
`
`Petitioner contends that Nishio discloses all elements of claims 1, 3, 4,
`
`and 16. Pet. 20. For example, Petitioner identifies the “light emitting
`
`member” in the claims as light guide plate 1. Id. at 20–21. Petitioner
`
`identifies the “transparent sheet or film overlying the light emitting area” in
`
`the claims as lens sheet 4. Id. at 21–22.
`
`
`
`The claims also call for “a pattern of deformities on one side of the
`
`sheet or film having a width and length that is quite small in relation to the
`
`width or length of the sheet or film.” (Emphasis added.) For this
`
`requirement, Petitioner identifies both projections 41 and lens units 42. Id.
`
`at 22–23; Escuti Decl. ¶¶ 114–116. Deformities 41 are described as having
`
`
`
`10
`
`IDT_00010
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`“any rugged contour” (Ex. 1007, col. 6, ll. 39–40). Examples given are
`
`“sand-grain patterns, pear-skin patterns, etc.” Id. at ll. 41–42. Petitioner
`
`contends that such deformities would “vary randomly” on the surface of the
`
`sheet or film. Escuti Decl. ¶117. The dictionary defines the term “pattern”
`
`as “[a] design of natural or accidental origin.” The American Heritage
`
`Dictionary (1975) 962. In accordance with this definition, as described by
`
`Nishio, the deformities 41 do not form a pattern as they “vary randomly”
`
`and do not follow a design. The claim also calls for a pattern that is “quite
`
`small” relative to the width or length of the film. Petitioner has not
`
`demonstrated that the pattern of deformities 42 in Nishio referred to by
`
`Petitioner (Pet. 22, citing Ex. 1001, Figs. 7, 13, 14) meets this requirement.
`
`
`
`We have reviewed the other information provided by Petitioner,
`
`including the claim chart analysis (Pet. 20–25), and are persuaded that,
`
`based on this record, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing on this challenge to claims 1, 4, and 16 for the following
`
`additional reasons. These claims call for deformities “[v]arying at different
`
`location on the sheet or film to direct the light that is emitted by the light
`
`emitting member in different directions to produce the desired light output
`
`distribution.” Pet. 22. We are not persuaded by Petitioner’s argument that
`
`this limitation is met either by projections 41 or lens units 42. While the
`
`projections 41 are described as having “any rugged contour” (Ex. 1007,
`
`col. 6, ll. 39–40), there is no indication that the projections are varied at
`
`different locations to direct the emitted light in different directions.
`
`
`
`Similarly, there is no description in Nishio of varying the lens units 42
`
`to direct the light that is emitted by the light emitting member in different
`
`directions to produce the desired light output distribution. For these reasons,
`
`
`
`11
`
`IDT_00011
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`we determine that Petitioner has not demonstrated a reasonable likelihood of
`
`prevailing on its challenge to claims 1, 4, and 16 over Nishio.
`
`
`
`Claim 3 calls for varying the shape of the deformities at different
`
`locations. While Nishio does mention that the lens units 42 may have
`
`different shapes (Ex. 1001, col. 4, ll. 50–58), there is no description of
`
`varying the shape at different locations.
`
`
`
`Petitioner’s analysis of claim 4 refers to an alternative “mesh pattern”
`
`arrangement in Nishio for projections 41 which are distributed through the
`
`plate. Pet. 24; Ex. 1001, col. 6, l. 66–col. 7, l. 4. Such a pattern fails to meet
`
`the “quite small” pattern limitation discussed supra. Moreover, Petitioner
`
`does not show how the pattern is varied at different locations to direct the
`
`emitted light in different directions as the claim requires. Finally, Petitioner
`
`identifies no description in Nishio of deformities 41 being prisms, prismatic,
`
`or lenticular, as claim 16 requires. The cited discussion of different shapes
`
`refers to lens units 42.
`
`
`
`For these reasons we determine that Petitioner has not demonstrated a
`
`reasonable likelihood of prevailing on its challenge to claims 1, 3, 4, and 16
`
`over Nishio.
`
`
`
`C. Asserted Grounds Based On Pristash (Claims 1–4, 16, and 26)
`
`Petitioner contends that these claims are obvious over Pristash under
`
`35 U.S.C. § 103(a). Pet. 11–25. For the reasons that follow, we are
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on this ground as to claims 1–3, 16, and 26. We are not
`
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing as to claim 4.
`
`
`
`12
`
`IDT_00012
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`
`
`1. Pristash Overview
`
`Pristash describes a “[t]hin panel illuminator [that] includes a solid
`
`transparent panel member having one or more deformed output regions.”
`
`Ex. 1006, Abstract. The arrangement causes light entering the panel along
`
`an input edge to be emitted along the length of the panel. Id.
`
`This is illustrated in Figure 1 of Pristash, reproduced here:
`
`
`
`
`
`In the above Figure 1, light emitting panel 2 and disruptions 16 in the
`
`exterior surface 18 of the panel are shown. Ex. 1006, col. 3, ll. 9–48.
`
`Figure 7 of Pristash shows another embodiment of the light panel and
`
`is reproduced here:
`
`
`
`13
`
`IDT_00013
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`In the above Figure 7, light emitting panel 50, transparent prismatic
`
`film 51, prismatic surface 52, back reflector 53, second prismatic film 60,
`
`
`
`and air gap 61 are shown.
`
`
`
`2. Discussion
`
`Petitioner’s analysis of claims 1–4, 16, and 26 of the ʼ547 patent in
`
`relation to Pristash appears at pages 17–34 of the Petition and paragraphs
`
`132–167 of the Escuti Declaration. Petitioner asserts that Pristash “teaches
`
`each and every element of claims 1–4, 16, and 26.” Pet. 26. For example,
`
`Petitioner identifies the claimed “light emitting member” with Pristash’s
`
`transparent prismatic film 51. Pet. 29. Petitioner identifies the claimed
`
`“separate sheet or film overlying the light emitting area” with Pristash’s
`
`second prismatic film 60. Id. Petitioner identifies the “pattern of
`
`deformities on one side of the sheet or film” with deformities 42 in Figure 5
`
`of Pristash. Id. at 29–30. Further, Petitioner contends that a person of
`
`ordinary skill would have been motivated to combine the various
`
`embodiments of Pristash: “[t]herefore, it would be obvious to a person of
`
`skill in the art to alter one embodiment with a feature taught in the same
`
`patent but from different embodiment.” Pet. 27; Escuti Decl. ¶ 130–31. At
`
`this stage, Patent Owner does not challenge these assertions.
`
`
`
`14
`
`IDT_00014
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`We have reviewed the information provided by Petitioner, including
`
`the claim chart analysis (Pet. 28–34), and are persuaded that, based on this
`
`record, Petitioner has set forth sufficient information to demonstrate that a
`
`person of ordinary skill would have modified Pristash’s Figure 7
`
`embodiment as stated by Petitioner. We are persuaded that based on this
`
`record, Petitioner has demonstrated a reasonable likelihood of prevailing on
`
`this challenge to claims 1–3, 16, and 26 as obvious over Pristash.
`
`Claim 4 calls for deformities that “vary in placement at different
`
`locations on the sheet . . . .” We are not convinced that this limitation is met
`
`by Pristash. The deformities in Pristash are described as varying in depth
`
`and shape, but not location. Ex. 1006, col. 4, ll. 49–54. We are not
`
`persuaded either by Petitioner’s reference to certain alternative embodiments
`
`in Figures 5 and 6 of Pristash (Pet. 33) or by the Escuti Declaration (¶¶ 156–
`
`58) that this limitation is met. The cited disclosure in Pristash refers to
`
`changes in shape of the deformities and not their location.
`
`
`
`
`
`
`
`For these reasons we determine that Petitioner demonstrates a
`
`reasonable likelihood of prevailing on its challenge to claims 1–3, 16, and 26
`
`over Pristash, but not claim 4.
`
`
`
`E. Asserted Grounds Based on Kobayashi and Ohe (Claims 1–4, 16,
`
`and 26)
`
`Petitioner contends that these claims are obvious over Kobayashi and
`
`Ohe under 35 U.S.C. § 103(a). Pet. 34–45. For the reasons that follow, we
`
`are not persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on this ground.
`
`
`
`15
`
`IDT_00015
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`
`
`1. Kobayashi Overview
`
`This patent describes “planar illuminating device used as a back light
`
`for liquid crystal displays.” Ex. 1011, col.1, ll. 6–9. The device has a
`
`rectangular light transmitting plate of a transparent material. Id. at col. 4,
`
`ll. 10–11. One side of the plate has prismatic cuts. Id. l. 27. The other side
`
`has a reflecting finish, e.g., an array of spot-shaped light reflecting layers.
`
`Id. ll. 28–29. This is illustrated by Figure 2 of Kobayashi, reproduced here:
`
`
`
`
`
`In Figure 2 above, light plate 2, fluorescent lamps 3, and array of
`
`spot-shaped reflective layers 22 (e.g., of white paint or aluminum vapor
`
`deposition) are shown. Id. ll. 45–47.
`
`
`
`2. Discussion
`
`Petitioner contends that Kobayashi and Ohe disclose “each and every
`
`element” of these claims. Pet. 34. Petitioner’s rationale for combining the
`
`teachings of Kobayashi and Ohe is as follows: “It would have been obvious
`
`to combine Ohe and Kobayashi because both relate to backlight assemblies,
`
`both have the same objective of uniform light emission, and both disclose
`
`
`
`16
`
`IDT_00016
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`using the claimed invention with LCDs.” Pet. 37 (internal citations
`
`omitted). We are not persuaded that this rationale is sufficient. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (Obviousness showing
`
`requires “some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006)).
`
`
`
`Furthermore, as set forth above in our analysis of Ohe under
`
`35 U.S.C. §102, Ohe fails to teach certain elements of claims 3 and 26 that
`
`are missing also in Kobayashi, namely, deformities that “vary in shape at
`
`different locations” (claim 3) and deformities that “have random or varying
`
`changes in shape or geometry on the sheet film” (claim 26). On this record,
`
`we are not persuaded that Petitioner’s citations support Petitioner’s
`
`contentions.
`
`
`
`For these reasons we determine that Petitioner does not demonstrate a
`
`reasonable likelihood of prevailing on its challenge to claims 1–4, 16, and 26
`
`over Kobayashi and Ohe.
`
`
`
`F. Asserted Grounds Based on Pristash and Matsumoto (Claims 1–4
`
`and 26)
`
`Petitioner contends that these claims are obvious over Pristash and
`
`Matsumoto under 35 U.S.C. § 103(a). Pet. 45–56. For the reasons that
`
`follow, we are not persuaded that Petitioner has a reasonable likelihood of
`
`prevailing on this ground.
`
`
`
`1. Matsumoto Overview
`
`This patent describes an illuminating apparatus including an edge
`
`light conductor. Ex. 1010, col. 1, ll. 11–13. In one embodiment, the device
`
`includes reflector regions formed of dot patterns. Id. at col. 7, ll. 25–25. A
`
`
`
`17
`
`IDT_00017
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`diffusing plane includes irregular reflector regions formed of a plurality of
`
`dots having different sizes. Id. ll. 25–27. The dots are smaller toward the
`
`end surfaces and larger away from those surfaces. Id. ll. 27–29. This is
`
`illustrated in Figure 4 of Matsumoto, reproduced here:
`
`
`
`In Figure 4 above, fluorescent tubes L, end regions 2, diffusing plane
`
`8 having a plurality of dots having different sizes, irregular reflector regions
`
`9, and modified irregular reflector regions 10 are shown. Ex. 1010, col. 7,
`
`
`
`ll. 24–35.
`
`
`
`2. Discussion
`
`Petitioner contends that Pristash and Matsumoto “together” disclose
`
`the limitations of these claims. Pet. 46. According to Petitioner, it would
`
`have been obvious to apply the “prismatic styles” of Figures 4 and 5 of
`
`
`
`18
`
`IDT_00018
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`Kobayashi to the second prismatic film 60 of Pristash. See Figure 7 of
`
`Pristash, reproduced supra, and related discussion. According to Petitioner,
`
`this modification of Pristash would have been obvious for a number of
`
`reasons, including that “like Pristash, Matsumoto also discloses an
`
`illumination apparatus and both disclose the same objectives of uniform
`
`illumination and more efficient transmission of light.” Pet. 47. We are not
`
`convinced that Petitioner has presented a sufficient rationale for combining
`
`the references. See KSR Int’l Co. v. Teleflex Inc., supra.
`
`
`
`We have reviewed the other information provided by Petitioner,
`
`including the claim chart analysis (Pet. 39–41) and are not persuaded that,
`
`based on this record, Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on this challenge to claims 1–4, 16, and 26 over Pristash and
`
`Matsumoto.
`
`
`
`
`
`III. SUMMARY
`
`The information presented shows there is a reasonable likelihood that
`
`Petitioner will prevail on the following challenges to patentability of the
`
`ʼ547 patent:
`
`A. Anticipation of claims 1, 2, and 4 by Ohe; and
`
`B. Obviousness of claims 1–3, 16, and 26 over Pristash;
`
`The information presented does not show there is a reasonable
`
`likelihood that Petitioner will prevail on any of the following challenges to
`
`patentability of the ʼ547 patent:
`
`C. Anticipation of claims 3 and 26 by Ohe;
`
`D. Anticipation of claims 1, 3, 4, and 16 by Nishio;
`
`E. Obviousness of claim 4 over Pristash;
`
`
`
`19
`
`IDT_00019
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`
`F. Obviousness of claims 1–4, 16, and 26 over Kobayashi and Ohe;
`
`and
`
`G. Obviousness of claims 1–4 and 26 over Pristash and Matsumoto.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim or the
`
`construction of any claim term.
`
`
`
`IV. ORDER
`
`It is, therefore,
`
`ORDERED that the Petition is granted as to all challenged claims;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`
`partes review is hereby instituted on the following grounds:
`
`A. Anticipation of claims 1, 2, and 4 by Ohe; and
`
`B. Obviousness of claims 1–3, 16, and 26 over Pristash
`
`FURTHER ORDERED that no other proposed grounds of
`
`unpatentability are authorized; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this decision.
`
`
`
`
`
`20
`
`IDT_00020
`
`

`
`Case IPR2014-01357
`Patent 6,755,547
`
`PETITIONER:
`
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
`
`
`
`
`21
`
`IDT_00021