`Patent 7,434,974
`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
`
`
`
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`
`
`Case IPR2015-00368
`U.S. Patent No. 7,434,974
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,974
`
`
`
`
`
`1
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`
`
`Case IPR2015-00368
`Patent 7,434,974
`
`
`I.
`
`IDENTICAL IPR ALREADY DENIED INSTITUTION
`
`Petitioner admits that this IPR petition is identical to a previous IPR petition
`
`filed by LG Display Co., Ltd., namely IPR2014-01092 (the “Copied IPR”). See
`
`Paper 3, Motion for Joinder Pursuant to 35 U.S.C. § 315 (c) and 37 C.F.R. §
`
`42.122(b) (“Joinder Motion”) at 1 (“the invalidity grounds raised in this IPR are
`
`identical to the invalidity grounds raised in the LGD IPR.”); see also id. at 6
`
`(“Petitioner’s arguments regarding the asserted references are identical to the
`
`arguments LGD raised in the LGD IPR”).
`
`
`
`The PTAB denied institution of the Copied IPR on January 13, 2015. See
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`IPR2014-01092, Paper 9, Decision Denying Institution (attached as Ex. 2001).
`
`Because the Copied IPR and this IPR petition include identical grounds and
`
`arguments, this IPR petition should also be denied.
`
`
`
`For convenience, Patent Owner reproduces below the same arguments it made
`
`in its preliminary response to the Copied IPR, with the necessary changes made to
`
`reflect the change in petitioner and filing numbers and with non-substantive
`
`correctional changes. Patent Owner also deleted the real party-in-interest argument,
`
`given that it is unnecessary in light of the PTAB’s decision not to institute the Copied
`
`
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`2
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`IPR.
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`Case IPR2015-00368
`Patent 7,434,974
`II.
`INTRODUCTION
`
`
`
`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary Response”) to the
`
`Petition for Inter Partes Review of U.S. Patent No. 7,434,974 (the “Petition”) in
`
`IPR2015-00368 filed by Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
`
`International, Inc. (“Mercedes-Benz” or “Petitioner”).
`
`
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 7,434,974 (the “’974 patent”) because the grounds
`
`in the Petition do not demonstrate a reasonable likelihood of any claims being
`
`invalid.
`
`
`
`To explain the insufficiencies of the grounds in the Petition, the Preliminary
`
`Response first provides an introduction that outlines (1) the Grounds themselves, (2)
`
`the ’974 patent and its technology, (3) the prior art references relied upon in the
`
`Grounds, and (4) claim construction issues.
`
`
`
`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107, as it is filed within deadline set by Paper 16 (New Filing Date accorded to
`
`Petition and the Extended Due Date for filing Patent Owner’s Preliminary Response
`
`in accordance with the Conduct of the Proceeding Order, March 16, 2015). Patent
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`Owner has limited its identification of deficiencies in Petitioner’s argument in this
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`Case IPR2015-00368
`Patent 7,434,974
`Preliminary Response; Patent Owner does not intend to waive any arguments by not
`
`addressing them in this Preliminary Response.
`
`A. Grounds in Petition
`The Petition includes three grounds of alleged invalidity – all 103(a)
`
`
`
`obviousness combinations – claims 1, 3-5, 7-11, 13 and 17 of the ’974 patent. For
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`the following reasons, which are discussed in more detail below, none of the grounds
`
`demonstrate a reasonable likelihood of any claims being invalid:
`
`Ground 1: Unpatentable under 103(a) as obvious over Funamoto (Claims 1,
`3-5, 7-11, and 13)
`
`A. The Petition Fails to Establish a Prima Facie Case of Obviousness
`Based on Funamoto;
`
`B. No Disclosure of Element [1.a] - “at least a light emitting panel
`member. . .”;
`
`C. No Disclosure of Element [1.b] - “at least one LED light source…”;
`
`D. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a
`larger assembly or device”;
`
`E. No Disclosure of Element [7.a] - “at least a light emitting panel
`member. . .”;
`
`F. No Disclosure of Element [7.b] - “at least one LED light source…”;
`
`G. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”;
`
`H. No Disclosure of Element [13.b] - “at least one LED light
`source…”;
`
`Ground 2: Unpatentable under 103(a) as obvious over Tsuchiyama in view of
`Funamoto (Claims 1, 3-5, 7-8, 10-11, and 13)
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`Case IPR2015-00368
`Patent 7,434,974
`
`
`A. The Petition Fails
`the Combination of
`to Establish That
`Tsuchiyama with Funamoto Would Have Been Obvious;
`
`B. No Disclosure of Element [1.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”;
`
`C. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a
`larger assembly or device”.
`
`D. No Disclosure of Element [7.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”;
`
`E. No Disclosure of Element [13.d] - “the panel member has a pattern
`of light extracting deformities on or in at least one surface”;
`
`F. No Disclosure of Element [13.g] - “tab, hole, cavity, or protrusion
`that positions the tray or housing relative to the panel member”
`
`Ground 3: Unpatentable under 103(a) as obvious over Funamoto in view
`Nakayama (Claims 13 and 17)
`
`
`A. The Petition Fails to Establish That the Combination of Funamoto
`and Nakayama Would Have Been Obvious;
`
`B. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”
`
`C. No Disclosure of Element [13.b] - “at least one LED light source .
`. .”
`
`D. No Disclosure of Element [13.g] - “tab, hole, cavity, or protrusion
`that positions the tray or housing relative to the panel member”
`
`E. No Disclosure of Element [17.a] - “at least a light emitting panel
`member. . .”
`
`F. No Disclosure of Element [17.b] - “at least one LED light source .
`
`G. No Disclosure of Element [17.h] - “tab, hole, cavity, or protrusion
`holds the additional component away from the panel member to
`
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`Patent 7,434,974
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`create an air gap between the panel member and the additional
`component”
`B. The Prior Art in the Petition
`1. Funamoto - Exhibit 1007 – Primary and Secondary Reference,
`Grounds 1 - 3
`
`
`
`United States Patent No. 5,619,351 to Funamoto et al. (“Funamoto”), was a
`
`National phase application entering into the US national stage on May 10, 1994, and
`
`issued on April 8, 1997, and it is the primary reference for Grounds 1 and 3 in the
`
`Petition and the secondary reference for Ground 2. Two applications claim priority
`
`to Funamoto and are discussed in the Petition and later in this Preliminary Response:
`
`U.S. Patent No. 6,108,060 (‘the ’060 patent”), filed May 28, 1999, and published on
`
`Aug 22, 2000, is a divisional of U.S. Patent No. 5,949,505 (“the ’505 patent”), filed
`
`Aug 9, 1996 and issued on Sep 7, 1999.
`
`Funamoto teaches that “to allow for use in color displays, a sufficient brightness
`
`is necessary to clearly show the colors displayed in the liquid crystal. This requires the
`
`use of a high output fluorescent light in the illumination device.” (Funamoto at 1:41-
`
`42.) A high output fluorescent light radiates a significant amount of heat from one
`
`side of the LCD display, which may result in large temperature distribution slope
`
`leading to color and brightness irregularities. (Funamoto at 1:34-50; 8:17-27.)
`
`Funamoto further teaches that multiple fluorescent tubes may be used, but the
`
`variations in the illumination of the fluorescent tubes requires individual adjustments
`
`and slows down the manufacturing processes. (Id. at 1:51-64.) The use of multiple
`
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`fluorescent tubes is undesirable also because it causes an increased number of driver
`
`circuits. (Id. at 1:65-2:2.) To maintain the requisite brightness, while reducing
`
`temperature variation, all without increasing driver circuits, Funamoto teaches the
`
`solution of using a single L-shaped or U-shaped fluorescent light source 22, 62 to
`
`replace a straight fluorescent light source 92. (Funamoto at 8:17-62), Funamoto does
`
`not discuss the use of LEDs as light sources.
`
`2. Tsuchiyama - Exhibit 1008, Primary Reference, Ground 2
`United States Patent No. 5,548,271 to Tsuchiyama et al. (“Tsuchiyama”) is
`
`particularly directed to pagers with an LED alert light located in the backlight and
`
`not next to the LCD when it is mounted in the front casing of the pager. (Tsuchiyama
`
`at 3:44-53.) Locating the alert LEDs next to the LCD is undesirable because this
`
`location would take up space on the front casing and limit miniaturization.
`
`(Tsuchiyama at 1:39-50.) Tsuchiyama teaches a structure of a backlight 32
`
`accommodating the backlight LED 12a and alert LEDs 12b, a light conducting plate
`
`32a is received in the reflection frame 30, and a diffusion sheet 32b provided on the
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`light conducting plate 32a.
`
`3. Nakayama- Exhibit 1009, Secondary Reference
`U.S. Patent No. 5,654,779 to Nakayama et al. (“Nakayama”) was filed on
`
`December 29, 1994, and issued on August 5, 1997. The Petition uses Nakayama as
`
`a secondary reference for Ground 3 only. Nakayama is titled “Liquid Crystal Display
`
`device having a removable holding member for the light source.” One of its
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`Patent 7,434,974
`objectives is to provide a liquid crystal display device in which a part of the light
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`guiding board can be removed from the lighting unit section without removing the
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`frames. (Nakayama at 2:12-18.) The process of removing the frame involves
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`cumbersome operations in disassembly and assembly. (Id. at 1:38-46) Nakayama is
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`entirely silent on improving the temperature uniformity or minimizing the number
`
`of driver circuits.
`
`C. Claim Construction
`The arguments in this Response stand despite Petitioner’s proposed
`
`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.
`
`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.
`
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2002) has ruled on constructions of terms in this
`
`patent, including entering an agreed construction of “deformities” that Petitioner
`
`adopts in its Petition. (Petition at 8) (Ex. 2002 at 58).
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`Patent 7,434,974
`III. GROUND 1 - Funamoto (Claims 1, 3-5, 7-11, and 13)
`A. The Petition Fails to Establish a Prima Facie Case of Obviousness
`Based on Funamoto.
`
`The Petition alleges that claims 1, 3-5, 7-11, and 13 are rendered obvious by
`
`Funamoto but fails to establish the prerequisites for demonstrating prima facie
`
`obviousness.
`
`As confirmed by the Supreme Court in KSR, an obviousness analysis begins
`
`with a consideration of the Graham factors. KSR International Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406-407 (2007) (citing Graham v. John Deere Co., 383 U.S. 1 (1966)).
`
`The Graham factors are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed invention
`
`and the prior art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`
`Graham at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
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`obvious. Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983). But this improper
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`element-by-element analysis is exactly the approach used in the Petition.
`
`The Petition refers to a claim chart for Ground 1 and the Escuti Declaration
`
`for an element-by-element comparison of the claimed elements to the alleged
`
`teachings of Funamoto. (See Petition at pp. 15-26; Escuti Declaration at pp. 30-41).
`
`For example, the Petition and the accompanying Escuti Declaration argue that “a
`
`person of ordinary skill in the art would easily substitute an LED for the fluorescent
`
`light source disclosed.” (Petition at p 13.) But this allegation is focused narrowly on
`
`the difference of between the claimed LED light source and the fluorescent light
`
`source of Funamoto.
`
`The Petition fails to consider Funamoto as whole and account for the potential
`
`negative impacts to Funamoto’s device if the proposed substitution were
`
`implemented. The Preliminary Response will explain below how the negative
`
`impacts of the proposed substitution would indeed diverge from and teach away
`
`from the proposed substitution, but as a matter of law, the Petition’s obviousness
`
`inquiry is improperly limited to a difference from the prior art and a showing that
`
`the difference alone would have been obvious. Such an improper obviousness
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`inquiry is deficient and cannot be the basis for establishing a prima facie case of
`
`obviousness.
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`Because the Petition fails to demonstrate a prima facie case that Funamoto as
`
`a whole would render the claimed subject matter obvious, Ground 1 fails for all
`
`claims.
`
`B. No Disclosure of Element [1.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 1 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`emitting surface….” That limitation is referenced as “[1.a]” in the Petition. See, e.g.,
`
`Petition at p. 15.
`
`The Petitioner alleges that the polarizer 21 of Funamoto is the panel member
`
`recited in claim 1 but admits that “it is not immediately clear that the polarizer is a
`
`light emitting panel member.” (Petition at p. 12.) Indeed, a polarizer operates to
`
`filter out a portion of incident unpolarized light so as to provide polarized light. One
`
`of ordinary skill in the art would appreciate that the polarizer 21 of Funamoto would
`
`result in a significant light loss as the portion of incident light not having the desired
`
`polarization would be filtered out. With this understanding, one of ordinary skill in
`
`the art would have no reason to consider the polarizer 21 of Funamoto as a light
`
`emitting panel member as recited in claim 1 of the ’974 patent.
`
`Despite the Petitioner’s admission as discussed above, the Petitioner refers to
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`U.S. Patent No. 6,108,060 (‘the ’060 patent”) in an attempt to substitute Funamoto’s
`
`teaching of a polarizer 21 with language in the ’060 patent. The ’060 patent is a
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`divisional grandchild of Funamoto. The Petition alleges that the ’060 Patent replaced
`
`the term “polarizer” with the phrase “light guide plate.” (Petition at p. 12) The
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`Petition goes on to import the phrase “light guide plate” into Funamoto in place of
`
`the term “polarizer” relying merely on a conclusory statement that the term
`
`“polarizer” as used in Funamoto “must be a translation error.” (Escuti Declaration
`
`at pp. 34-35)
`
`The Petition does not allege the teachings of Funamoto would lead one of
`
`ordinary skill in the art to understand term “polarizer” differently from its ordinary
`
`meaning. The Petition’s importing of the language from the ’060 patent disregards
`
`the plain language in Funamoto. The term “polarizer” is a term of art. It is unlikely
`
`that the meanings of the term “polarizer” and phrase “light guide plate” would be
`
`confused or used in error by one of ordinary skill in the art.
`
`Moreover, as admitted in the Petition, the ’060 patent resulted from an
`
`intervening patent, the U.S. Patent No. 5,949,505 (“the ’505 patent”), but Petition
`
`ignores the language used in the ’505 patent without explanation and focuses only
`
`on the ’060 patent. (Escuti Declaration at pp. 34-35.) But the term “polarizer” is
`
`consistently used in both Funamoto and the ’505 patent during the lengthy
`
`prosecution of Funamoto and the ’505 patent, spanning more than 5 years from 1994
`
`to 1999.
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`Even assuming arguendo that the term “polarizer” was a translation error,
`
`Funamoto would have been a non-enabling disclosure at the time of the present
`
`invention. The ’060 patent was published on August 22, 2000 – more than 5 years
`
`after the effective filing date of the ’974 patent. Although Funamoto was alleged to
`
`have a §102(e) date of May 10, 1994, the alleged corrected translation was not
`
`available to one of ordinary skill in the art until more than 6 years later – well after
`
`the effective filing date of the ’974 patent. The Petition has failed to explain how
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`one of ordinary skill in the art would be enabled to arrive at the claimed subject
`
`matter without undue experimentation despite the alleged translation error for one
`
`of the key components of Funamoto.
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`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the Petition
`
`fails for Claim 1 and each of its dependent claims.
`
`C. No Disclosure of Element [1.b] - “at least one LED light source .
`. .”
`
`Independent Claim 1 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[1.b]” in the Petition. See, e.g., Petition at p. 15-16.
`
`The Petition admits that Funamoto does not teach an LED light source as
`
`recited in claim 1. (Petition at p. 12) The Petition attempts to cure the deficiencies
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`of Funamoto by arguing that it would be obvious to “substitute an LED for the
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`fluorescent light source disclosed.” (Petition at p 12.) Patent Owner disagrees.
`
`Funamoto explicitly states that a fluorescent light source is required, and therefore
`
`it would have not been obvious to “substitute an LED” as Petitioner argues. (See
`
`Funamoto at 1:41-42 (“to allow for use in color displays, a sufficient brightness is
`
`necessary to clearly show the colors displayed in the liquid crystal. This requires the
`
`use of a high output fluorescent light in the illumination device.”) (emphasis added)).
`
`Furthermore, the Petition’s substitution argument does not consider Funamoto
`
`as whole. A proper Graham inquiry must include the consideration of the potential
`
`negative impacts to Funamoto’s device if the proposed substitution were
`
`implemented. Funamoto teaches that a high output fluorescent light radiates a
`
`significant amount of heat from one side of the LCD display, which may result in
`
`large temperature distribution slope leading to color and brightness irregularities.
`
`(Funamoto at 1:34-50; 8:17-27.) Funamoto further teaches that multiple fluorescent
`
`tubes may be used but the variations in the illumination of the fluorescent tubes
`
`requires individual adjustments and slows down the manufacturing processes. (Id. at
`
`1:51-64.) The use of multiple fluorescent tubes is undesirable also because the need
`
`for increased number of driver circuits. (Id. at 1:65-2:2.) To reduce temperature
`
`variation without increasing driver circuits, Funamoto teaches the solution of using
`
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`of a single L-shaped or U-shaped fluorescent light source 22, 62 to replace a straight
`
`fluorescent light source 92. (Funamoto at 8:17-62)
`
`The Petition alleges that “an LED would have been an obvious design choice
`
`at the time of the Funamoto, selected for its efficiency and low power consumption,
`
`among other things.” (Petition at 13.) If it were such an obvious design choice, why
`
`was Funamoto entirely silent on the use of an LED light source?
`
`The Petition does not describe the kind of LED or the arrangement of LEDs
`
`that “would have been an obvious design choice” to replace the L-shaped or U-
`
`shaped fluorescent light source. (Petition at 13). The Petition does not allege its
`
`generic substitution of an LED will achieve the brightness required by Funamoto
`
`and otherwise achieved by its Funamoto’s fluorescent light source. The Petition does
`
`not allege that the generic substitution of LEDs can maintain the reduced number of
`
`driver circuits required by Funamoto or the temperature uniformity required by
`
`Funamoto. These are crucial pieces of information that are missing in the Petition’s
`
`obviousness analysis. The single U-shaped or L-shaped fluorescent light of
`
`Funamoto is not simply a swappable part with a single generic LED. Accordingly,
`
`for at least the above discussed reasons, the Petition fails to allege a prima facie case
`
`of obviousness based on Funamoto. Ground 1 of the Petition fails for Claim 1 and
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`each of its dependent claims.
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`D. No Disclosure of Element [1.g] - “posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into a larger
`assembly or device”
`
`Independent Claim 1 of the ’974 patent recites the following limitation:
`
`“wherein the tray or housing…has posts, tabs, or other structural features that
`
`provide a mount for mounting of the assembly into a larger assembly or device.”
`
`That limitation is referenced as “[1.g]” in the Petition. See, e.g., Petition at p. 19.
`
`The Petition alleges that “[t]he structural feature represented by element 4 [of
`
`Funamoto] allows for the bottom tray with all of the components within, to be
`
`mounted into the top case.” (Petition at p. 13) The Escuti declaration cited in the
`
`Petition further argues that the illumination device 20 of Funamoto is installed in
`
`lower case 3 and “this assembly can be mounted into a larger assembly or device,
`
`for example, the mounting of the upper case with the tooth.” (Escuti Declaration at
`
`p. 40). But, the Petition already defines the upper case (2) as part of the tray. (Petition
`
`at 16, element [1.c] (“an illumination device to be described later sandwiched
`
`between upper case 2 and lower case 3”) (emphasis in Petition).). Thus, mounting
`
`upper case 2 to lower case 3, if it exists, to form the alleged tray does not result in a
`
`“mounting of the assembly into a larger assembly or device.” (emphasis added).
`
`Instead, it is simply putting together the parts of the alleged tray, i.e., upper case 2
`
`and lower case 3 are already the tray.
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`The Petition’s only other allegation made its claim chart for this limitation is
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`devoid of analysis. The Petition’s claim chart for Ground 1 includes a citation to a
`
`passage in Funamoto referring the frames 30, 31, 38, and 39, but the Petition does
`
`not otherwise specifically allege or provide any analysis to support an allegation that
`
`the frames 30, 31, 38, and 39 are “posts, tabs, or other structural features that provide
`
`a mount for mounting….”
`
`The Petition’s citation to the Escuti Declaration in the claim chart cannot cure
`
`the Petition’s lack of analysis. Under 37 C.F.R. § 42.22(a)(2), the petition must
`
`contain a “full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence.” The rules also prohibit arguments
`
`made in a supporting document from being incorporated by reference into a petition.
`
`See 37 C.F.R. § 42.6(a)(3). For that reason, information presented in the Escuti
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`Declaration in relation to claim 1 that is not sufficiently included in the Petition itself
`
`should not be considered.
`
`For at least the above discussed reasons, the Petition has not established that
`
`the claimed feature of “posts, tabs, or other structural features that provide a mount
`
`for mounting of the assembly into a larger assembly or device” is disclosed or
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`rendered obvious by Funamoto. Thus, Ground 1 fails for Claim 1 and each of its
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`dependent claims because Petitioner has not made a prima facie case of obviousness.
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`E. No Disclosure of Element [7.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 7 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`emitting surface….” That limitation is referenced as “[7.a]” in the Petition. See, e.g.,
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`Petition at p. 20.
`
`For the same reasons provided above, Funamoto does not disclose this claim
`
`element or render it obvious. The Petition again attempts to import language from
`
`the ’060 patent based solely on a conclusory allegation of a translation error, which
`
`disregards Funamoto’s consistent teaching of a polarizer for over 5 years. Moreover,
`
`even assuming arguendo that the term “polarizer” was a translation error, the
`
`Petition fails to explain how one of ordinary skill in the art would be enabled to
`
`arrive at the claimed subject matter without undue experimentation despite the
`
`alleged translation error for one of the key components of Funamoto.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the Petition
`
`fails for Claim 7 and each of its dependent claims.
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`Patent 7,434,974
`F. No Disclosure of Element [7.b] - “at least one LED light source .
`. .”
`
`Independent Claim 7 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[7.b]” in the Petition. See, e.g., Petition at p. 20.
`
`For the same reasons provided above, Funamoto does not disclose this claim
`
`element or render it obvious. The Petition admits that Funamoto does not teach an
`
`LED light source. (Petition at p. 12.) The Petition attempts to cure the deficiencies
`
`of Funamoto by arguing that it would be obvious to “substitute an LED for the
`
`fluorescent light source disclosed.” (Petition at p 13.). But as discussed above, this
`
`allegation does not consider Funamoto as whole. It does not show that the
`
`substitution of a generic LED would achieve the brightness required by Funamoto,
`
`and it does not show that it would achieve the explicit objectives of Funamoto to
`
`minimize driver circuits and temperature variations.
`
`Accordingly, for at least the above discussed reasons, the Petition fails to
`
`allege a prima facie case of obviousness based on Funamoto. Ground 1 of the
`
`Petition fails for Claim 7 and each of its dependent claims.
`
`G. No Disclosure of Element [13.a] - “at least a light emitting panel
`member. . .”
`
`Independent Claim 13 of the ’974 patent recites the following limitation: “at
`
`least a light emitting panel member having a light entrance surface and a light
`
`
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`19
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`Patent 7,434,974
`emitting surface….” That limitation is referenced as “[13.a]” in the Petition. See,
`
`e.g., Petition at p. 24.
`
`For the same reasons provided above, Funamoto does not disclose this claim
`
`element or render it obvious. The Petition again attempts to import language from
`
`the ’060 patent based solely on a conclusory allegation of a translation error and
`
`disregards Funamoto’s consistent teaching of a polarizer for over 5 years. Moreover,
`
`even assuming arguendo that the term “polarizer” was a translation error, the
`
`Petition fails to explain how one of ordinary skill in the art would be enabled to
`
`arrive at the claimed subject matter without undue experimentation despite the
`
`alleged translation error for one of the key components of Funamoto.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Funamoto teaches the claimed light emitting panel member or was an enabling
`
`disclosure at the time of the present invention. Accordingly, Ground 1 of the Petition
`
`fails for Claim 13 and each of its dependent claims.
`
`H. No Disclosure of Element [13.b] - “at least one LED light source .
`. .”
`
`Independent Claim 13 of the ’974 patent recites the following limitation: “at
`
`least one LED light source positioned near or against the light entrance surface….”
`
`That limitation is referenced as “[13.b]” in the Petition. See, e.g., Petition at p. 24.
`
`For the same reasons provided above, Funamoto does not disclose this claim
`
`element or render it obvious. The Petition admits that Funamoto does not teach an
`
`
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`Patent 7,434,974
`LED light source. (Petition at p. 12.) The Petition attempts to cure the deficiencies
`
`of Funamoto by arguing that it would be obvious to “substitute an LED for the
`
`fluorescent light source disclosed.” (Petition at p 13.). But as discussed above, this
`
`allegation does not consider Funamoto as whole. It does not show that the
`
`substitution of a generic LED would achieve the brightness required by Funamoto,
`
`and it does not show that it would achieve the explicit objectives of Funamoto to
`
`minimize driver circuits and temperature variations.
`
`Accordingly, for at least the above discussed reasons, the Petition fails to
`
`allege a prima facie case of obviousness based on Funamoto. Ground 1 of the
`
`Petition fails for Claim 13 and each of its dependent claims.
`
`IV. GROUND 2 - TSUCHIYAMA IN VIEW OF FUNAMOTO (CLAIMS 1,
`3-5, 7-8, 10-11, and 13)
`A. The Petition Fails to Establish That the Combination of
`Tsuchiyama with Funamoto Would Have Been Obvious
`
`This Preliminary Response has already demonstrated that the Petition has
`
`failed to conduct the requisite Graham inquiry and consider Funamoto’s teaching as
`
`a whole. (See e.g., Section III.A supra.) For its alleged combination of Tsuchiyama
`
`and Funamoto, the Petition continues to fail to make the requisite inquiry and justify
`
`the alleged combination with articulated reasoning with some rational underpinning
`
`instead of unsupported conclusory statements. “[R]ejections on obviousness grounds
`
`cannot be sustained by mere conclusory statements; instead, there must be some
`
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`Patent 7,434,974
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`
`Over-generalizing the teachings of Tsuchiyama and Funamoto, the Petition
`
`alleges that “[a] person of ordinary skill in the art would have been motivated to
`
`combine the teaching of Tsuchiyama with the teachings of Funamoto because they
`
`are both directed to a thinner and smaller device.” (Petition at p. 28, emphasis
`
`added.) The Petition’s statement is conclusory and unsupported by sufficient
`
`evidence or analysis. While Tsuchiyama is directed to a miniaturized design for a
`
`pager, the technical solution disclosed by Tsuchiyama is more particularly directed
`
`to locating an LED alert light in the backlight of a pager. (Tsuchiyama at 3:44-53)
`
`Funamoto, on the other hand, is directed to technical problems unrelated to
`
`Tsuchiyama. As discussed above in Sections III.A and C, Funamoto discloses
`
`technical solutions for minimizing the number of driver circuits and temperature
`
`variations. These objectives of Funamoto are recognized in the Petition for Grounds
`
`1 and 3, yet the Petition ignores them here for the convenience of aligning
`
`Tsuchiyama