throbber
Case IPR2015-00493
`Patent 7,537,370
`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
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`
`Case IPR2015-00493
`U.S. Patent No. 7,537,370
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,537,370
`
`
`
`1
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`I.
`INTRODUCTION
`
`Patent Owner Innovative Display Technologies, LLC, (“IDT” or “Patent
`
`Owner”) hereby files this response (“Preliminary Response”) to the Petition (Paper
`
`2) (the “Petition”) for Inter Partes Review of U.S. Patent No. 7,537,370 (the “’370
`
`patent”) in IPR2015-00493 filed by LG Electronics, Inc. (“LGE” or “Petitioner”).
`
`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107, as it is filed within three months of the February 5, 2015, date of the Notice
`
`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response. Paper No. 6.
`
`Petitioner’s IPR request is substantively identical to IPR2014-01096 (the
`
`“LGD Petition” or “Copied Petition”) filed on July 1, 2014, against the ’370 patent
`
`by LG Display Co. Ltd. (“LGD”). Petitioner’s Motion for Joinder, Paper No. 3 at 1
`
`(“Indeed, the invalidity grounds raised in this IPR are identical to the invalidity
`
`grounds raised in the LGD IPR.”); see also Id. at 5 (“Petitioner’s arguments
`
`regarding the asserted references are identical to the arguments LGD raised in the
`
`LGD IPR.”). The PTAB refused to institute the Copied Petition on Grounds 2 and 3
`
`in their entirety, and refused to institute Grounds 1 and 4 for claims 1, 4, 8, 13, 29,
`
`and 47. (See IPR2014-01096, Paper No. 11, Institution Decision at 17-18 (Ex. 2001).
`
`For the same reasons, the PTAB should not institute this IPR for those grounds and
`
`claims.
`
`
`
`2
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`The PTAB instituted the Copied IPR on only two grounds of alleged invalidity
`
`and for limited claims, specifically, a 103(a) obviousness ground based solely on
`
`Pristash for claims 15 and 27, and a 103(a) obviousness ground based on the
`
`combination of Kobayashi and Pristash for the same claims. But those Grounds
`
`should be denied here because, as explained in the sections below, the prior art lacks
`
`several material claim limitations. Even if one of skill in the art would have
`
`combined the references as Petitioner suggests – the combination would not yield
`
`the claimed invention.
`
`Additionally, as explained below, the PTAB should deny the Petition’s
`
`request to institute IPR2015-00493 because it is cumulative of the Copied IPR.
`
`Furthermore, the PTAB should also deny the Petition’s request to institute IPR
`
`because the Petitioner has failed to comply with 35 U.S.C. 312(a)(2) by not
`
`identifying all Real Parties in Interest.
`
`Patent Owner limits its identification of the deficiencies in Petitioner’s
`
`argument in this Preliminary Response; Patent Owner does not intend to waive any
`
`arguments by not addressing them in this Preliminary Response.
`
`A. Grounds Instituted in IPR2014-01096
`Inter partes review was only instituted in IPR2014-01096 on two grounds of
`
`alleged invalidity– a 103(a) obviousness ground based solely on Pristash for claims
`
`15 and 27, and a 103(a) obviousness ground based on the combination of Kobayashi
`
`
`
`3
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`and Pristash. However, even if it were proper to combine Kobayashi and Pristash,
`
`neither reference, either separately or in combination arrive at the claimed invention
`
`as discussed below. Thus, these grounds do not demonstrate by a preponderance of
`
`the evidence that claims 15 or 27 of the ’370 patent are invalid.
`
`B. The ’370 Patent
`The ’370 patent relates generally, to “light emitting panel assemblies”
`
`including a transparent panel member for efficiently conducting light, and
`
`controlling the light conducted by the panel member to be emitted from one or more
`
`light output areas along its length. Ex. 1001 (“’370 patent”), Col. 1, ll. 19-29.
`
`The ’370 patent relates to different light emitting panel assembly
`
`configurations that provide for better control of the light output from the panel
`
`assemblies and for more efficient utilization of light, which results in greater light
`
`output from the panel assemblies. ’370 patent, col. 1, ll. 19-29.
`
`The Petition attempts to characterize the ’370 patent as merely describing
`
`“several different light emitting panel assembly configurations which allegedly
`
`provide for better control of light output from the panel assembly and for more
`
`‘efficient’ utilization of light, thereby resulting in greater light output from the panel
`
`assembly.” Petition, Paper 2 at 6. The Petition alleges that the claimed light emitting
`
`panel assemblies would have been obvious under 35 U.S.C. § 103 over Pristash (U.S.
`
`Patent No. 5,005,108 (“Pristash”), Ex. 1006) and obvious under 35 U.S.C. § 103
`
`
`
`4
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`over Kobayashi (U.S. Pat. No. 5,408,388 (“Kobayashi”), Ex. 1008) in view of
`
`Pristash. Petition, Paper 2 at 9.
`
`However, the Petition fails to demonstrate (1) that the combination of these
`
`references would have been obvious to a person of ordinary skill in the art at the
`
`time of invention and (2) that the modifications and combinations suggested would
`
`result in the light emitting panel assemblies disclosed by the ’370 patent. Moreover,
`
`the Petition improperly relies on impermissible hindsight in an effort to re-create the
`
`novel light emitting panel assemblies disclosed by the ’370 patent.
`
`Furthermore, the Petition relies on the Pristash reference that was both
`
`disclosed to the Examiner and that the Examiner expressly considered during the
`
`prosecution of the ’370 patent. See List of References Cited by Applicant and
`
`Considered by Examiner 03-23-2009, ’370 File History, Ex. 1002 at LGE_000094-
`
`LGE_000096. After having considered this reference, the Examiner chose to allow
`
`the claims of the ’370 patent.
`
`C. The Prior Art Alleged in the Petition
`
`Pristash
`Pristash describes a thin panel illuminator that includes a solid transparent
`
`panel member having one or more deformed output regions. Pristash, Ex. 1006,
`
`Abstract. The arrangement causes light entering the panel to be emitted along its
`
`length. Id.
`
`
`
`5
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`
`.
`
`
`
`Pristash Figure 1 above shows an exemplary panel. Petitioner analogized
`
`Pristash’s “transition device” (reference number 5) as the claimed “transition
`
`region.” Petition at 13, 21.
`
` Kobayashi
`U.S. Patent No. 5,408,388 to Kobayashi (Exhibit 1008) titled “Planar
`
`illuminating device” describes a planar illuminating device that uses “two sources
`
`of light each arranged adjacent to one of the side edges of the plate, a reflector
`
`arranged behind the plate rear face and reflecting rays of light from the plate to the
`
`front face of the plate, a light diffuser arranged in front of the plate and diffusing
`
`rays of light from the plate. The device comprises a reflecting finish applied directly
`
`to the rear face of the plate.” Kobayashi, Abstract.
`
`
`
`6
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`
`Petitioner states that it relies on admitted prior art as a basis to form its
`
`Alleged Admitted Prior Art
`
`petition. Petition at 7-8. But the petition’s validity analysis makes no reference to
`
`admitted prior art. Patent Owner therefore declines to respond to the assertion except
`
`to state that Patent Owner disagrees with Petitioner’s analysis of what it claims is
`
`admitted prior art.
`
`D. Claim Construction
`For inter partes reviews, claim terms are given their broadest reasonable
`
`construction in light of the specification as it would be interpreted by one of ordinary
`
`skill in the art. Additionally, the words of the claim must be given their plain
`
`meaning that is consistent with the specification. The plain meaning of a term means
`
`the ordinary and customary meaning given to the term by those of ordinary skill in
`
`the art at the time of the invention. The ordinary and customary meaning of a term
`
`may be evidenced by a variety of sources, including the words of the claims
`
`themselves, the specification, drawings, and prior art.
`
` “Deformities”
`Petitioner only offers the Board a construction of the term “deformities” in
`
`support of its Petition. Petition at 7. Patent Owner does not take a position on claim
`
`construction at this point in this Preliminary Response. The positions in this
`
`Preliminary Response, however, stand despite Petitioner’s proposed construction
`
`and despite the broadest reasonable construction of the terms. Patent Owner also
`
`
`
`7
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`reserves the right to propose its own construction of any and all claim terms for
`
`which an issue arises in 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 7; Ex. 2002 at 58.
`
`II. ARGUMENT
`A. The Instant Petition should be Denied Because It Is Cumulative of a
`Prior Office Proceeding
`
`The Instant Petition relies on substantially the same arguments that LGD
`
`presented to the Board in IPR2014-1096. Under Section 325(d), the Board should
`
`deny petitions that challenge a patent based on previously-rejected grounds and
`
`cumulative and duplicative art, otherwise petitioners will be given an unwarranted
`
`and unfair procedural advantage in pending infringement litigation. See 35 U.S.C. §
`
`325(d).
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`
`
`8
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`35 U.S.C. § 325(d) (emphasis added). Under Section 325(d), the Board should deny
`
`petitions that challenge a patent based on previously presented grounds and
`
`cumulative and duplicative art, otherwise petitioners may be given an unwarranted
`
`and unfair procedural advantage in pending infringement litigation. See 35 U.S.C. §
`
`325(d); See also, Unified Patents, IPR2014-00702, Paper 13 at 2, 7-8 (denying a
`
`petition and motion for joinder in view of previous IPR petitions filed by third parties
`
`citing the same prior art references). The legislative history of Section 325(d)
`
`confirms that this is also what Congress intended: Section 325(d) “allows the Patent
`
`Office to reject any request for a proceeding, including a request for ex parte
`
`reexamination, if the same or substantially the same prior art or arguments
`
`previously were presented to the Office with respect to that patent.” 157 Cong. Rec.
`
`S1042 (daily ed. Mar. 1, 2011) (Statement of Sen. Kyl).
`
`B. Argument Found Solely in the Expert Declaration is Improper and
`Should Not be Considered
`
`Repeatedly the Petition itself fails to identify or argue certain claim elements
`
`and relies on the identification and argument presented solely in the Escuti Expert
`
`Declaration. This does not meet the statutory requirements of IPRs, which requires
`
`that the petition must contain a “full statement of the reasons for the relief requested,
`
`including a detailed explanation of the significance of the evidence.” 37 C.F.R. §
`
`42.22(a)(2).
`
`
`
`9
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`This however is improper and the Board should decline to review arguments
`
`not expressly included in the Instant Petition. See, e.g., Conopco, Inc. v. The Procter
`
`& Gamble Co., No. IPR2013-00510, Paper No. 9, Decision Denying Inter Partes
`
`Review at 8-9 (PTAB Feb. 12, 2014). The Board found that considering such
`
`information “would encourage the use of declarations to circumvent the page limits
`
`that apply to petitions.” Id. at 8. Further, the Board held that the PTAB’s rules
`
`prohibit arguments made in supporting declarations from being incorporated by
`
`reference into a petition. Id. at 8-9 (citing 37 C.F.R. § 42.6(a)(3)); accord Blackberry
`
`Corp. v. Mobilemedia Ideas LLC, No IPR2013-00016, Paper No. 32 at 21 (PTAB
`
`Feb. 25, 2014).
`
`C. Validity of Claims 15 and 27
` Validity of Claims 15 and 27 over Pristash
`The Petition fails to show that Pristash teaches and/or renders obvious each
`
`and every limitation of the Asserted Claims of the ’370 Patent. Specifically, the
`
`Petition does not show that Pristash discloses “the panel member has a transition
`
`region between the at least one input edge and the patterns of light extracting
`
`deformities to allow the light from the at least one light source to mix and spread,”
`
`and “at least one side of the transition region contains optical elements for reflecting
`
`or refracting light from the at least one light source.” These limitations are required
`
`by independent claim 27 of the ’370 Patent.
`
`
`
`10
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`For this element, the Petition merely refers to the analysis of claim element
`
`[13.f] and references Paragraph 131 of Escuti’s Declaration. Petition at 24-25. The
`
`Petition alleges that Pristash teaches “a transition device … for converting light and
`
`is positioned between input edge 10 and deformities on panel 2…” and provides no
`
`explanation of how Pristash teaches the claimed mixing. Petition at 13. The claim
`
`chart identifies transition device 5 as allegedly meeting this limitation. Id. at 21. Both
`
`the argument in the Petition and in its chart miss a crucial point of this limitation:
`
`“the panel member has a transition region . . . to allow the light from the at least one
`
`light source to mix and spread.”
`
`Here, Petitioner completely fails to show or explain how the alleged Pristash
`
`transition device would mix the light. Petition at 21. Further, the Petition does not
`
`show that the analogized transition region has “optical elements for reflecting or
`
`refracting light from the at least one light source.” Thus the Petition does not show
`
`that Pristash discloses optical elements for reflecting or refracting light in its
`
`“transition device.”
`
`Petitioner’s Expert, Dr. Escuti, focuses on language in Pristash that claims
`
`that its lens may “spread the light evenly across such surfaces” and adds the
`
`conclusory statement that the “transition device also allows the light to mix and
`
`spread.” But he fails to explain and completely ignores the claim requirement that
`
`
`
`11
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`the transition region “mix and spread” as required in claim 27. Escuti Decl. at ¶¶
`
`109-111.
`
`Additionally, the Petition does not show that Pristash discloses that its
`
`“transition region” “contains optical elements for reflecting or refracting light from
`
`the at least one light source.” Instead the petition improperly relies on the
`
`incorporation of Dr. Escuti’s argument into the Petition. Petition at 21. Dr. Escuti
`
`cites Pristash Fig. 19 reproduced below “with a lens 141 at the input surface 142
`
`shaped to spread the light evenly across its output surface 143.” Id. at ¶ 112.
`
`
`But claim 27 recites “at least one side of the transition region contains optical
`
`elements for reflecting or refracting light from the at least one light source.” The
`
`Petition alleges that Pristash teaches “a transition device … which can have lens 141
`
`at input surface 143 …” Petition at 13. But this allegation is deficient as the Petition
`
`entirely disregards the plain claim language of having “optical elements” – in the
`
`plural.
`
`Further, the Petition does not show that Pristash discloses the “pattern of light
`
`extracting deformities on or in the at least one side has at least two different types of
`
`
`
`12
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`light extracting deformities and at least one of the types of deformities on or in the
`
`at least one side varies along at least one of the length and width of the panel
`
`member” that is required in both claims 15 and 27.
`
`Neither the Petition nor Dr. Escuti provide evidence that these limitations are
`
`met by Pristash other than citing the statement above: “both of the light emitting
`
`panels 40 and 49 shown in FIGS. 5 and 6 may have prismatic surfaces on both the
`
`top and bottom surfaces rather than on just one surface as shown.” Pristash, 4:66-
`
`5:5. From that lone statement, Dr. Escuti concludes that “[t]he disruptions of Pristash
`
`are a pattern of light extracting deformities that may be formed on both the front and
`
`back sides of the light emitting panels” and that “[t]hese deformities cause light to
`
`be emitted from the panel member in a predetermined output distribution.” Escuti
`
`Decl. at ¶¶ 77-78. Those are simply conclusory statements.
`
`As the Board recognized in its institution decision denying claims 1 and 13 in
`
`IPR2014-01096, Pristash is “insufficient to establish a disclosure or suggestion” “of
`
`having different deformities on both sides of the panel.” Decision, Paper No. 11, at
`
`7 (Ex. 2001). Likewise, Petitioner has not shown that Pristash is sufficient to
`
`establish different deformities on or in the at least one side of the panel. Petitioner
`
`argues that the “roughened surfaces” are the different “type” of deformity that varies.
`
`For independent Claim 15, the additional limitations, Pristash discloses
`one side having prismatic cuts and roughened surfaces with the
`roughened surfaces varying. Ex. 1006, Fig. 6; see also Escuti Decl.,
`
`
`
`13
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`¶¶115-123. For independent Claim 27, the additional limitations,
`deformities on one side are disclosed as discussed for claim 1, different
`types of deformities are discussed for claim 15, and the transition region
`limitations are disclosed as discussed for Claim 13. See Escuti Decl.,
`¶¶125-133. (Petition at 13.)
`
`
`Dr. Escuti states that “Pristash discloses ‘where the pattern of light extracting
`
`deformities on or in the at least one side has at least two different types of light
`
`extracting deformities and at least one of the types of deformities on or in the at least
`
`one side varies along at least one of the length and width of the panel member.’”
`
`Escuti Decl. at ¶ 121. Pristash discloses that the deformities may generally be of any
`
`desired shape. Pristash, 4:49-54. The Petition does not explain why that statement
`
`can be read to mean that different types of deformities could be used on or in the at
`
`least one side. Indeed claim 15 dictates that the different types of deformities need
`
`to be shown to be used on one side at the same time (“where the pattern of light
`
`extracting deformities on or in the at least one side has at least two different types of
`
`light extracting deformities”).
`
`
`
`14
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`The Petition also does not show that Pristash discloses that “the panel member
`
`has a transition region between the at least one input edge and the patterns of light
`
`extracting deformities to allow the light from the at least one light source to mix and
`
`spread,” as recited by Claim 27. Because the light emitting panel 2 disclosed by
`
`Pristash does not have a transition region between the input edge (4) of the panel
`
`member and the patterns of light extracting deformities, the Petition does not show
`
`how this limitation is disclosed.
`
`Pristash discloses a “transition device 5 which is used to make the transition
`
`from the light source 3 target shape to the light emitting panel input edge 4 shape as
`
`shown.” Pristash, 2:65-3:4. Thus, element 5 cannot be the claimed transition region
`
`because it is not “between the at least one input edge and the patterns of light
`
`extracting deformities.” Instead, the alleged transition region 5 comes first, then
`
`followed by light emitting panel input edge 4, then followed by the alleged
`
`deformities (see Pristash, Fig. 1 below).
`
`
`
`15
`
`
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`Dr. Escuti makes no analysis of the transition regions of Pristash against this
`
`positional requirement of the claims. And, accordingly, Dr. Escuti’s conclusory
`
`arguments fail.
`
`Claims 15 and 27 over Kobayashi in View of Pristash
`
`
`The Petition fails to show that Kobayashi teaches and/or renders obvious each
`
`and every limitation of the instituted claims of the ’370 Patent that are likewise
`
`absent in Pristash as shown above. Specifically, the Petition never argues that
`
`Kobayashi discloses the following limitation: “where the pattern of light extracting
`
`deformities on or in the at least one side has at least two different types of light
`
`extracting deformities and at least one of the types of deformities on or in the at least
`
`one side varies along at least one of the length and width of the panel member” as
`
`required by claims 15 and 27. Instead, Petitioner relies on Pristash to show this
`
`limitation with identical arguments as above. See Petition at 53-56. For the reasons
`
`explained above, the Petition does not show that Pristash discloses, teaches, or
`
`suggests this limitation, and therefore does not show that the combination of Pristash
`
`and Kobayashi discloses this limitation.
`
`Additionally, like for Pristash, the Petition does not show that Kobayashi
`
`teaches or suggests “the panel member has a transition region between the at least
`
`one input edge and the patterns of light extracting deformities to allow the light from
`
`the at least one light source to mix and spread,” as recited by Claim 27. The Petition
`
`
`
`16
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`does not discuss Kobayashi as showing any portion of light transmitting plate 2 that
`
`is between the at least one input edge and the pattern of light extracting deformities.
`
`Notably the Petition does not cite to any support from Kobayashi to establish
`
`disclosure of a transition region. See Petition at 47 (“A transition region is not
`
`explicitly disclosed in Kobayashi.”). Instead, Petitioner relies on Pristash. Id. And
`
`thus, neither Kobayashi alone nor the combination of Kobayashi with Pristash are
`
`described in the Petition as disclosing a transition region as recited by Claim 27.
`
`D. Validity over Grounds Previously Denied
`As discussed above, the Board has already denied institution over most of
`
`the claims and grounds identically asserted in IPR2014-01096. Specifically, the
`
`Board found that there was not a reasonable likelihood of prevailing and denied
`
`institution of:
`
`Obviousness of claims 1, 4, 8, 13, 29, and 47 over Pristash;
`
`Anticipation of claims 1, 4, 8, 15, and 29 by Ohe;
`
`Anticipation of claims 1, 4, and 29 by Kobayashi; and
`
`Obviousness of claims 13 and 47 over Kobayashi and Pristash.
`
`IPR2014-01096, Paper No. 11 (Ex. 2001) Institution Decision at 17-18.
`
`The corresponding Grounds in the Instant Petition are identical to the ones
`
`denied above. 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 (“[T]he invalidity grounds raised in
`
`
`
`17
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`this IPR are identical to the invalidity grounds raised in the LGD IPR.”).
`
`Accordingly these Grounds should be denied.
`
`For convenience, Patent Owner includes below substantially the same
`
`arguments it made in its preliminary response to the Copied IPR with respect to
`
`non-instituted claims, with the necessary changes made to reflect the change in
`
`petitioner and filing numbers and with non-substantive correctional changes.
`
` GROUND 1 - PRISTASH (Claims 1, 4, 8, 13, 29, and 47)
`a. No Disclosure of Element [1.e] - “light extracting
`deformities on or in one of the sides are of a different
`type than the light extracting deformities on or in the
`other side of the panel member”
`
`Independent Claim 1 of the ’370 patent recites the following limitation: “the
`
`pattern of light extracting deformities on or in at least one of the sides varies along
`
`at least one of the length and width of the panel member and at least some of the
`
`light extracting deformities on or in one of the sides are of a different type than the
`
`light extracting deformities on or in the other side of the panel member….” That
`
`limitation is referenced as “[1.e]” in the Petition. See, e.g., Petition at p. 17.
`
`The Petition does not even discuss this claim element except in its claim
`
`chart, which refers to the embodiments shown in Figures 5 and 6 of Pristash.
`
`Petition at 17-18. The claim chart also refers to the Escuti Decl. at ¶¶83-85. Id. The
`
`Escuti Decl., however, provides only conclusory allegations that are deficient for
`
`establishing a prima facie case of obviousness.
`
`
`
`18
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`To establish prima facie obviousness, there must be some articulated
`
`reasoning for the modifications proposed by the Petition. “[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006). An allegation that all aspects of the claimed invention were individually
`
`known in the art is not sufficient to establish a prima facie case of obviousness
`
`without some objective reason to combine the teachings of the references. Ex parte
`
`Levengood, 28 USPQ2d 1300 (BPAI 1993).
`
`The Escuti Declaration makes the allegations that Pristash teaches different
`
`types of deformities and deformities on both sides of the panel. The Escuti jumps
`
`to the conclusion that “[g]iven these disclosures, one of ordinary skill in the art
`
`would understand Pristash to disclose that deformities on one side may be of a
`
`different type than deformities disclosed on the other side.” Escuti Decl. at ¶¶83-
`
`85. Here, Escuti merely alleges that Pristash disclosed aspects that may be
`
`combined to arrive at the claim element, but Escuti fails to articulate any objective
`
`reason to combine the alleged disclosures of Pristash and thus fails to establish a
`
`prima case of obviousness.
`
`
`
`19
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches the claim element [1.e]. Accordingly, Ground 1 of the Petition
`
`fails for Claim 1 and each of its dependent claims.
`
`b. No Disclosure of Element [13.e] - “light extracting
`deformities on or in one of the sides are of a different
`type than the light extracting deformities on or in the
`other side of the panel member”
`
`Independent Claim 13 of the ’370 patent recites the following limitation:
`
`“the pattern of light extracting deformities on or in at least one of the sides varies
`
`along at least one of the length and width of the panel member and at least some
`
`of the light extracting deformities on or in one of the sides are of a different type
`
`than the light extracting deformities on or in the other side of the panel member….”
`
`That limitation is referenced as “[13.e]” in the Petition. See, e.g., Petition at p. 20-
`
`21.
`
`For the same reasons provided above with respect to claim element [1.e] in
`
`Section II.D.1.a, Pristash does not disclose this claim element or render it obvious.
`
`The Petition again merely alleges that Pristash discloses aspects that may be
`
`combined to arrive at the claim element, but the Petition fails to articulate any
`
`objective reason to combine the alleged disclosures of Pristash and thus fails to
`
`establish a prima case of obviousness. See Escuti Decl. at ¶¶108.
`
`
`
`20
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches or renders obvious this claim element. Accordingly, Ground 1 of
`
`the Petition fails for Claim 13 and each of its dependent claims.
`
`c. No Disclosure of Element [13.f] - “the panel member
`has a transition region…”
`
`Independent Claim 13 of the ’370 patent recites the following limitation:
`
`“the panel member has a transition region between the at least one input edge and
`
`the patterns of light extracting deformities to all the light from the at least one light
`
`source to mix and spread.” That limitation is referenced as “[13.f]” in the Petition.
`
`See, e.g., Petition at p. 21.
`
`The Petition alleges that Pristash teaches “a transition device … for
`
`converting light and is positioned between input edge 10 and deformities on panel
`
`2…” Petition at 13. The claim chart identifies transition device 5 as meeting this
`
`limitation. Id. at 21. Both the argument in the Petition and in its chart miss a crucial
`
`point of this limitation: “the panel member has a transition region”. That means
`
`that the transition region must be part of the panel member. Here, the transition
`
`device 5 is a separate part from the panel member identified in the Petition, i.e., the
`
`transition device 5 is separate from light emitting panel 2 / waveguide 15. Figure
`
`1 and Figure 7 below (as annotated by the Petitioner, which Patent Owner does not
`
`adopt) illustrate that the transition device 5 is separate from light emitting panel 2
`
`/ waveguide 15.
`
`
`
`21
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`
`
`Petition at 12 (showing Figs. 1 and 7 from Pristash, annotated by Petitioner). The
`
`Petitioner’s own annotations show that the identified transition region is outside
`
`the of the optical panel member. Pristash’s explicit teaching also shows that the
`
`transition device 5 is separate from the light emitting panel 2: “the light source 3,
`
`transition device 5 and light emitting panel 2 must be designed to fit each other as
`
`well as the particular application. However, it should be understood that the light
`
`source 3, transition device 5 and light emitting panel 2 may also be used separately
`
`if desired.” Pristash at 3:23-29.
`
`For at least the above discussed reasons, the Petition has not established that
`
`the claimed element of “the panel member has a transition region” is disclosed in
`
`
`
`22
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`Pristash. Accordingly, Ground 1 fails for Claim 13 and each of its dependent
`
`claims.
`
`d. No Disclosure of Element [13.g] - “at least one side of
`the transition region contains optical elements”
`
`Independent Claim 13 of the ’370 patent recites the following limitation: “at
`
`least one side of the transition region contains optical elements for reflecting or
`
`refracting light from the at least one light source.” That limitation is referenced as
`
`“[13.g]” in the Petition. See, e.g., Petition at p. 21.
`
`The Petition alleges that Pristash teaches “a transition device … which can
`
`have lens 141 at input surface 142 …” Petition at 13 (emphasis added). But this
`
`allegation is deficient as the Petition entirely disregards the plain claim language
`
`of “optical elements” – in the plural.
`
`For at least the above discussed reasons, the Petition fails to establish that
`
`Pristash teaches the claimed “optical elements.” Accordingly, Ground 1 of the
`
`Petition fails for Claim 13 and each of its dependent claims.
`
`e. No Disclosure of Element [29.e] - “light extracting
`deformities on or in one of the sides vary in a different
`way or manner than the light extracting deformities on
`or in the other side of the panel member”
`
`Independent Claim 29 of the ’370 patent recites the following limitation:
`
`“the pattern of light extracting deformities on or in at least one of the sides varies
`
`along at least one of the length and width of the panel member and at least some
`
`
`
`23
`
`

`
`Case IPR2015-00493
`Patent 7,537,370
`of the light extracting deformities on or in one of the sides vary in a different way
`
`or manner than the light extracting deformities on or in the other side of the panel
`
`member….” That limitation is referenced as “[29.e]” in the Petition. See, e.g.,
`
`Petition at 26.
`
`The Petition does not even discuss this claim element except in its cla

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket