`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.
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`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
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`Fax: 214.786.6680
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`
`
`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
`
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`1
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
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`
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`Case IPR2015-00493
`Patent 7,537,370
`I.
`INTRODUCTION
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`Patent Owner Innovative Display Technologies, LLC, (“IDT” or “Patent
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`Owner”) hereby files this response (“Preliminary Response”) to the Petition (Paper
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`2) (the “Petition”) for Inter Partes Review of U.S. Patent No. 7,537,370 (the “’370
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`patent”) in IPR2015-00493 filed by LG Electronics, Inc. (“LGE” or “Petitioner”).
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`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, as it is filed within three months of the February 5, 2015, date of the Notice
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`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response. Paper No. 6.
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`Petitioner’s IPR request is substantively identical to IPR2014-01096 (the
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`“LGD Petition” or “Copied Petition”) filed on July 1, 2014, against the ’370 patent
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`by LG Display Co. Ltd. (“LGD”). Petitioner’s Motion for Joinder, Paper No. 3 at 1
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`(“Indeed, the invalidity grounds raised in this IPR are identical to the invalidity
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`grounds raised in the LGD IPR.”); see also Id. at 5 (“Petitioner’s arguments
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`regarding the asserted references are identical to the arguments LGD raised in the
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`LGD IPR.”). The PTAB refused to institute the Copied Petition on Grounds 2 and 3
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`in their entirety, and refused to institute Grounds 1 and 4 for claims 1, 4, 8, 13, 29,
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`and 47. (See IPR2014-01096, Paper No. 11, Institution Decision at 17-18 (Ex. 2001).
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`For the same reasons, the PTAB should not institute this IPR for those grounds and
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`claims.
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`The PTAB instituted the Copied IPR on only two grounds of alleged invalidity
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`and for limited claims, specifically, a 103(a) obviousness ground based solely on
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`Pristash for claims 15 and 27, and a 103(a) obviousness ground based on the
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`combination of Kobayashi and Pristash for the same claims. But those Grounds
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`should be denied here because, as explained in the sections below, the prior art lacks
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`several material claim limitations. Even if one of skill in the art would have
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`combined the references as Petitioner suggests – the combination would not yield
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`the claimed invention.
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`Additionally, as explained below, the PTAB should deny the Petition’s
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`request to institute IPR2015-00493 because it is cumulative of the Copied IPR.
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`Furthermore, the PTAB should also deny the Petition’s request to institute IPR
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`because the Petitioner has failed to comply with 35 U.S.C. 312(a)(2) by not
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`identifying all Real Parties in Interest.
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`Patent Owner limits its identification of the deficiencies in Petitioner’s
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`argument in this Preliminary Response; Patent Owner does not intend to waive any
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`arguments by not addressing them in this Preliminary Response.
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`A. Grounds Instituted in IPR2014-01096
`Inter partes review was only instituted in IPR2014-01096 on two grounds of
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`alleged invalidity– a 103(a) obviousness ground based solely on Pristash for claims
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`15 and 27, and a 103(a) obviousness ground based on the combination of Kobayashi
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`Patent 7,537,370
`and Pristash. However, even if it were proper to combine Kobayashi and Pristash,
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`neither reference, either separately or in combination arrive at the claimed invention
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`as discussed below. Thus, these grounds do not demonstrate by a preponderance of
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`the evidence that claims 15 or 27 of the ’370 patent are invalid.
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`B. The ’370 Patent
`The ’370 patent relates generally, to “light emitting panel assemblies”
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`including a transparent panel member for efficiently conducting light, and
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`controlling the light conducted by the panel member to be emitted from one or more
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`light output areas along its length. Ex. 1001 (“’370 patent”), Col. 1, ll. 19-29.
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`The ’370 patent relates to different light emitting panel assembly
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`configurations that provide for better control of the light output from the panel
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`assemblies and for more efficient utilization of light, which results in greater light
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`output from the panel assemblies. ’370 patent, col. 1, ll. 19-29.
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`The Petition attempts to characterize the ’370 patent as merely describing
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`“several different light emitting panel assembly configurations which allegedly
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`provide for better control of light output from the panel assembly and for more
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`‘efficient’ utilization of light, thereby resulting in greater light output from the panel
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`assembly.” Petition, Paper 2 at 6. The Petition alleges that the claimed light emitting
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`panel assemblies would have been obvious under 35 U.S.C. § 103 over Pristash (U.S.
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`Patent No. 5,005,108 (“Pristash”), Ex. 1006) and obvious under 35 U.S.C. § 103
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`over Kobayashi (U.S. Pat. No. 5,408,388 (“Kobayashi”), Ex. 1008) in view of
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`Pristash. Petition, Paper 2 at 9.
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`However, the Petition fails to demonstrate (1) that the combination of these
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`references would have been obvious to a person of ordinary skill in the art at the
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`time of invention and (2) that the modifications and combinations suggested would
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`result in the light emitting panel assemblies disclosed by the ’370 patent. Moreover,
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`the Petition improperly relies on impermissible hindsight in an effort to re-create the
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`novel light emitting panel assemblies disclosed by the ’370 patent.
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`Furthermore, the Petition relies on the Pristash reference that was both
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`disclosed to the Examiner and that the Examiner expressly considered during the
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`prosecution of the ’370 patent. See List of References Cited by Applicant and
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`Considered by Examiner 03-23-2009, ’370 File History, Ex. 1002 at LGE_000094-
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`LGE_000096. After having considered this reference, the Examiner chose to allow
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`the claims of the ’370 patent.
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`C. The Prior Art Alleged in the Petition
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`Pristash
`Pristash describes a thin panel illuminator that includes a solid transparent
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`panel member having one or more deformed output regions. Pristash, Ex. 1006,
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`Abstract. The arrangement causes light entering the panel to be emitted along its
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`length. Id.
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`.
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`Pristash Figure 1 above shows an exemplary panel. Petitioner analogized
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`Pristash’s “transition device” (reference number 5) as the claimed “transition
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`region.” Petition at 13, 21.
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` Kobayashi
`U.S. Patent No. 5,408,388 to Kobayashi (Exhibit 1008) titled “Planar
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`illuminating device” describes a planar illuminating device that uses “two sources
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`of light each arranged adjacent to one of the side edges of the plate, a reflector
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`arranged behind the plate rear face and reflecting rays of light from the plate to the
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`front face of the plate, a light diffuser arranged in front of the plate and diffusing
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`rays of light from the plate. The device comprises a reflecting finish applied directly
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`to the rear face of the plate.” Kobayashi, Abstract.
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`Petitioner states that it relies on admitted prior art as a basis to form its
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`Alleged Admitted Prior Art
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`petition. Petition at 7-8. But the petition’s validity analysis makes no reference to
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`admitted prior art. Patent Owner therefore declines to respond to the assertion except
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`to state that Patent Owner disagrees with Petitioner’s analysis of what it claims is
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`admitted prior art.
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`D. Claim Construction
`For inter partes reviews, claim terms are given their broadest reasonable
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`construction in light of the specification as it would be interpreted by one of ordinary
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`skill in the art. Additionally, the words of the claim must be given their plain
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`meaning that is consistent with the specification. The plain meaning of a term means
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`the ordinary and customary meaning given to the term by those of ordinary skill in
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`the art at the time of the invention. The ordinary and customary meaning of a term
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`may be evidenced by a variety of sources, including the words of the claims
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`themselves, the specification, drawings, and prior art.
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` “Deformities”
`Petitioner only offers the Board a construction of the term “deformities” in
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`support of its Petition. Petition at 7. Patent Owner does not take a position on claim
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`construction at this point in this Preliminary Response. The positions in this
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`Preliminary Response, however, stand despite Petitioner’s proposed construction
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`and despite the broadest reasonable construction of the terms. Patent Owner also
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`reserves the right to propose its own construction of any and all claim terms for
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`which an issue arises in this IPR.
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`Patent Owner notifies the Board that the district court in Innovative Display
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`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
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`(“Claim Construction Order”) (Ex. 2002) has ruled on constructions of terms in this
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`patent, including entering an agreed construction of “deformities” that Petitioner
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`adopts in its Petition. Petition at 7; Ex. 2002 at 58.
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`II. ARGUMENT
`A. The Instant Petition should be Denied Because It Is Cumulative of a
`Prior Office Proceeding
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`The Instant Petition relies on substantially the same arguments that LGD
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`presented to the Board in IPR2014-1096. Under Section 325(d), the Board should
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`deny petitions that challenge a patent based on previously-rejected grounds and
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`cumulative and duplicative art, otherwise petitioners will be given an unwarranted
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`and unfair procedural advantage in pending infringement litigation. See 35 U.S.C. §
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`325(d).
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`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.
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`35 U.S.C. § 325(d) (emphasis added). Under Section 325(d), the Board should deny
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`petitions that challenge a patent based on previously presented grounds and
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`cumulative and duplicative art, otherwise petitioners may be given an unwarranted
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`and unfair procedural advantage in pending infringement litigation. See 35 U.S.C. §
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`325(d); See also, Unified Patents, IPR2014-00702, Paper 13 at 2, 7-8 (denying a
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`petition and motion for joinder in view of previous IPR petitions filed by third parties
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`citing the same prior art references). The legislative history of Section 325(d)
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`confirms that this is also what Congress intended: Section 325(d) “allows the Patent
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`Office to reject any request for a proceeding, including a request for ex parte
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`reexamination, if the same or substantially the same prior art or arguments
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`previously were presented to the Office with respect to that patent.” 157 Cong. Rec.
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`S1042 (daily ed. Mar. 1, 2011) (Statement of Sen. Kyl).
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`B. Argument Found Solely in the Expert Declaration is Improper and
`Should Not be Considered
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`Repeatedly the Petition itself fails to identify or argue certain claim elements
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`and relies on the identification and argument presented solely in the Escuti Expert
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`Declaration. This does not meet the statutory requirements of IPRs, which requires
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`that the petition must contain a “full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence.” 37 C.F.R. §
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`42.22(a)(2).
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`This however is improper and the Board should decline to review arguments
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`not expressly included in the Instant Petition. See, e.g., Conopco, Inc. v. The Procter
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`& Gamble Co., No. IPR2013-00510, Paper No. 9, Decision Denying Inter Partes
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`Review at 8-9 (PTAB Feb. 12, 2014). The Board found that considering such
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`information “would encourage the use of declarations to circumvent the page limits
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`that apply to petitions.” Id. at 8. Further, the Board held that the PTAB’s rules
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`prohibit arguments made in supporting declarations from being incorporated by
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`reference into a petition. Id. at 8-9 (citing 37 C.F.R. § 42.6(a)(3)); accord Blackberry
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`Corp. v. Mobilemedia Ideas LLC, No IPR2013-00016, Paper No. 32 at 21 (PTAB
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`Feb. 25, 2014).
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`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
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`and every limitation of the Asserted Claims of the ’370 Patent. Specifically, the
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`Petition does not show that Pristash discloses “the panel member has a transition
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`region between the at least one input edge and the patterns of light extracting
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`deformities to allow the light from the at least one light source to mix and spread,”
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`and “at least one side of the transition region contains optical elements for reflecting
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`or refracting light from the at least one light source.” These limitations are required
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`by independent claim 27 of the ’370 Patent.
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`For this element, the Petition merely refers to the analysis of claim element
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`[13.f] and references Paragraph 131 of Escuti’s Declaration. Petition at 24-25. The
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`Petition alleges that Pristash teaches “a transition device … for converting light and
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`is positioned between input edge 10 and deformities on panel 2…” and provides no
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`explanation of how Pristash teaches the claimed mixing. Petition at 13. The claim
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`chart identifies transition device 5 as allegedly meeting this limitation. Id. at 21. Both
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`the argument in the Petition and in its chart miss a crucial point of this limitation:
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`“the panel member has a transition region . . . to allow the light from the at least one
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`light source to mix and spread.”
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`Here, Petitioner completely fails to show or explain how the alleged Pristash
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`transition device would mix the light. Petition at 21. Further, the Petition does not
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`show that the analogized transition region has “optical elements for reflecting or
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`refracting light from the at least one light source.” Thus the Petition does not show
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`that Pristash discloses optical elements for reflecting or refracting light in its
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`“transition device.”
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`Petitioner’s Expert, Dr. Escuti, focuses on language in Pristash that claims
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`that its lens may “spread the light evenly across such surfaces” and adds the
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`conclusory statement that the “transition device also allows the light to mix and
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`spread.” But he fails to explain and completely ignores the claim requirement that
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`the transition region “mix and spread” as required in claim 27. Escuti Decl. at ¶¶
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`109-111.
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`Additionally, the Petition does not show that Pristash discloses that its
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`“transition region” “contains optical elements for reflecting or refracting light from
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`the at least one light source.” Instead the petition improperly relies on the
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`incorporation of Dr. Escuti’s argument into the Petition. Petition at 21. Dr. Escuti
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`cites Pristash Fig. 19 reproduced below “with a lens 141 at the input surface 142
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`shaped to spread the light evenly across its output surface 143.” Id. at ¶ 112.
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`But claim 27 recites “at least one side of the transition region contains optical
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`elements for reflecting or refracting light from the at least one light source.” The
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`Petition alleges that Pristash teaches “a transition device … which can have lens 141
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`at input surface 143 …” Petition at 13. But this allegation is deficient as the Petition
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`entirely disregards the plain claim language of having “optical elements” – in the
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`plural.
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`Further, the Petition does not show that Pristash discloses the “pattern of light
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`extracting deformities on or in the at least one side has at least two different types of
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`light extracting deformities and at least one of the types of deformities on or in the
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`at least one side varies along at least one of the length and width of the panel
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`member” that is required in both claims 15 and 27.
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`Neither the Petition nor Dr. Escuti provide evidence that these limitations are
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`met by Pristash other than citing the statement above: “both of the light emitting
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`panels 40 and 49 shown in FIGS. 5 and 6 may have prismatic surfaces on both the
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`top and bottom surfaces rather than on just one surface as shown.” Pristash, 4:66-
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`5:5. From that lone statement, Dr. Escuti concludes that “[t]he disruptions of Pristash
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`are a pattern of light extracting deformities that may be formed on both the front and
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`back sides of the light emitting panels” and that “[t]hese deformities cause light to
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`be emitted from the panel member in a predetermined output distribution.” Escuti
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`Decl. at ¶¶ 77-78. Those are simply conclusory statements.
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`As the Board recognized in its institution decision denying claims 1 and 13 in
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`IPR2014-01096, Pristash is “insufficient to establish a disclosure or suggestion” “of
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`having different deformities on both sides of the panel.” Decision, Paper No. 11, at
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`7 (Ex. 2001). Likewise, Petitioner has not shown that Pristash is sufficient to
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`establish different deformities on or in the at least one side of the panel. Petitioner
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`argues that the “roughened surfaces” are the different “type” of deformity that varies.
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`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.,
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`¶¶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.)
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`Dr. Escuti states that “Pristash discloses ‘where the pattern of light extracting
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`deformities on or in the at least one side has at least two different types of light
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`extracting deformities and at least one of the types of deformities on or in the at least
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`one side varies along at least one of the length and width of the panel member.’”
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`Escuti Decl. at ¶ 121. Pristash discloses that the deformities may generally be of any
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`desired shape. Pristash, 4:49-54. The Petition does not explain why that statement
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`can be read to mean that different types of deformities could be used on or in the at
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`least one side. Indeed claim 15 dictates that the different types of deformities need
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`to be shown to be used on one side at the same time (“where the pattern of light
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`extracting deformities on or in the at least one side has at least two different types of
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`light extracting deformities”).
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`The Petition also does not show that Pristash discloses that “the panel member
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`has a transition region between the at least one input edge and the patterns of light
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`extracting deformities to allow the light from the at least one light source to mix and
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`spread,” as recited by Claim 27. Because the light emitting panel 2 disclosed by
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`Pristash does not have a transition region between the input edge (4) of the panel
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`member and the patterns of light extracting deformities, the Petition does not show
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`how this limitation is disclosed.
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`Pristash discloses a “transition device 5 which is used to make the transition
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`from the light source 3 target shape to the light emitting panel input edge 4 shape as
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`shown.” Pristash, 2:65-3:4. Thus, element 5 cannot be the claimed transition region
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`because it is not “between the at least one input edge and the patterns of light
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`extracting deformities.” Instead, the alleged transition region 5 comes first, then
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`followed by light emitting panel input edge 4, then followed by the alleged
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`deformities (see Pristash, Fig. 1 below).
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`Dr. Escuti makes no analysis of the transition regions of Pristash against this
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`positional requirement of the claims. And, accordingly, Dr. Escuti’s conclusory
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`arguments fail.
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`Claims 15 and 27 over Kobayashi in View of Pristash
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`The Petition fails to show that Kobayashi teaches and/or renders obvious each
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`and every limitation of the instituted claims of the ’370 Patent that are likewise
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`absent in Pristash as shown above. Specifically, the Petition never argues that
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`Kobayashi discloses the following limitation: “where the pattern of light extracting
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`deformities on or in the at least one side has at least two different types of light
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`extracting deformities and at least one of the types of deformities on or in the at least
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`one side varies along at least one of the length and width of the panel member” as
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`required by claims 15 and 27. Instead, Petitioner relies on Pristash to show this
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`limitation with identical arguments as above. See Petition at 53-56. For the reasons
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`explained above, the Petition does not show that Pristash discloses, teaches, or
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`suggests this limitation, and therefore does not show that the combination of Pristash
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`and Kobayashi discloses this limitation.
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`Additionally, like for Pristash, the Petition does not show that Kobayashi
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`teaches or suggests “the panel member has a transition region between the at least
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`one input edge and the patterns of light extracting deformities to allow the light from
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`the at least one light source to mix and spread,” as recited by Claim 27. The Petition
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`does not discuss Kobayashi as showing any portion of light transmitting plate 2 that
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`is between the at least one input edge and the pattern of light extracting deformities.
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`Notably the Petition does not cite to any support from Kobayashi to establish
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`disclosure of a transition region. See Petition at 47 (“A transition region is not
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`explicitly disclosed in Kobayashi.”). Instead, Petitioner relies on Pristash. Id. And
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`thus, neither Kobayashi alone nor the combination of Kobayashi with Pristash are
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`described in the Petition as disclosing a transition region as recited by Claim 27.
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`D. Validity over Grounds Previously Denied
`As discussed above, the Board has already denied institution over most of
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`the claims and grounds identically asserted in IPR2014-01096. Specifically, the
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`Board found that there was not a reasonable likelihood of prevailing and denied
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`institution of:
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`Obviousness of claims 1, 4, 8, 13, 29, and 47 over Pristash;
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`Anticipation of claims 1, 4, 8, 15, and 29 by Ohe;
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`Anticipation of claims 1, 4, and 29 by Kobayashi; and
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`Obviousness of claims 13 and 47 over Kobayashi and Pristash.
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`IPR2014-01096, Paper No. 11 (Ex. 2001) Institution Decision at 17-18.
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`The corresponding Grounds in the Instant Petition are identical to the ones
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`denied above. See Paper 3, Motion for Joinder Pursuant to 35 U.S.C. § 315 (c) and
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`37 C.F.R. § 42.122(b) (“Joinder Motion”) at 1 (“[T]he invalidity grounds raised in
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`this IPR are identical to the invalidity grounds raised in the LGD IPR.”).
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`Accordingly these Grounds should be denied.
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`For convenience, Patent Owner includes below substantially the same
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`arguments it made in its preliminary response to the Copied IPR with respect to
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`non-instituted claims, with the necessary changes made to reflect the change in
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`petitioner and filing numbers and with non-substantive correctional changes.
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` 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”
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`Independent Claim 1 of the ’370 patent recites the following limitation: “the
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`pattern of light extracting deformities on or in at least one of the sides varies along
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`at least one of the length and width of the panel member and at least some of the
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`light extracting deformities on or in one of the sides are of a different type than the
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`light extracting deformities on or in the other side of the panel member….” That
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`limitation is referenced as “[1.e]” in the Petition. See, e.g., Petition at p. 17.
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`The Petition does not even discuss this claim element except in its claim
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`chart, which refers to the embodiments shown in Figures 5 and 6 of Pristash.
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`Petition at 17-18. The claim chart also refers to the Escuti Decl. at ¶¶83-85. Id. The
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`Escuti Decl., however, provides only conclusory allegations that are deficient for
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`establishing a prima facie case of obviousness.
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`To establish prima facie obviousness, there must be some articulated
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`reasoning for the modifications proposed by the Petition. “[R]ejections on
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`obviousness grounds cannot be sustained by mere conclusory statements; instead,
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`there must be some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006). An allegation that all aspects of the claimed invention were individually
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`known in the art is not sufficient to establish a prima facie case of obviousness
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`without some objective reason to combine the teachings of the references. Ex parte
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`Levengood, 28 USPQ2d 1300 (BPAI 1993).
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`The Escuti Declaration makes the allegations that Pristash teaches different
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`types of deformities and deformities on both sides of the panel. The Escuti jumps
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`to the conclusion that “[g]iven these disclosures, one of ordinary skill in the art
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`would understand Pristash to disclose that deformities on one side may be of a
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`different type than deformities disclosed on the other side.” Escuti Decl. at ¶¶83-
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`85. Here, Escuti merely alleges that Pristash disclosed aspects that may be
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`combined to arrive at the claim element, but Escuti fails to articulate any objective
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`reason to combine the alleged disclosures of Pristash and thus fails to establish a
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`prima case of obviousness.
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`For at least the above discussed reasons, the Petition fails to establish that
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`Pristash teaches the claim element [1.e]. Accordingly, Ground 1 of the Petition
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`fails for Claim 1 and each of its dependent claims.
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`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”
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`Independent Claim 13 of the ’370 patent recites the following limitation:
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`“the pattern of light extracting deformities on or in at least one of the sides varies
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`along at least one of the length and width of the panel member and at least some
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`of the light extracting deformities on or in one of the sides are of a different type
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`than the light extracting deformities on or in the other side of the panel member….”
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`That limitation is referenced as “[13.e]” in the Petition. See, e.g., Petition at p. 20-
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`21.
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`For the same reasons provided above with respect to claim element [1.e] in
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`Section II.D.1.a, Pristash does not disclose this claim element or render it obvious.
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`The Petition again merely alleges that Pristash discloses aspects that may be
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`combined to arrive at the claim element, but the Petition fails to articulate any
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`objective reason to combine the alleged disclosures of Pristash and thus fails to
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`establish a prima case of obviousness. See Escuti Decl. at ¶¶108.
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`For at least the above discussed reasons, the Petition fails to establish that
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`Pristash teaches or renders obvious this claim element. Accordingly, Ground 1 of
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`the Petition fails for Claim 13 and each of its dependent claims.
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`c. No Disclosure of Element [13.f] - “the panel member
`has a transition region…”
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`Independent Claim 13 of the ’370 patent recites the following limitation:
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`“the panel member has a transition region between the at least one input edge and
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`the patterns of light extracting deformities to all the light from the at least one light
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`source to mix and spread.” That limitation is referenced as “[13.f]” in the Petition.
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`See, e.g., Petition at p. 21.
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`The Petition alleges that Pristash teaches “a transition device … for
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`converting light and is positioned between input edge 10 and deformities on panel
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`2…” Petition at 13. The claim chart identifies transition device 5 as meeting this
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`limitation. Id. at 21. Both the argument in the Petition and in its chart miss a crucial
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`point of this limitation: “the panel member has a transition region”. That means
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`that the transition region must be part of the panel member. Here, the transition
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`device 5 is a separate part from the panel member identified in the Petition, i.e., the
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`transition device 5 is separate from light emitting panel 2 / waveguide 15. Figure
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`1 and Figure 7 below (as annotated by the Petitioner, which Patent Owner does not
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`adopt) illustrate that the transition device 5 is separate from light emitting panel 2
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`/ waveguide 15.
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`Petition at 12 (showing Figs. 1 and 7 from Pristash, annotated by Petitioner). The
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`Petitioner’s own annotations show that the identified transition region is outside
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`the of the optical panel member. Pristash’s explicit teaching also shows that the
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`transition device 5 is separate from the light emitting panel 2: “the light source 3,
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`transition device 5 and light emitting panel 2 must be designed to fit each other as
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`well as the particular application. However, it should be understood that the light
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`source 3, transition device 5 and light emitting panel 2 may also be used separately
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`if desired.” Pristash at 3:23-29.
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`For at least the above discussed reasons, the Petition has not established that
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`the claimed element of “the panel member has a transition region” is disclosed in
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`Pristash. Accordingly, Ground 1 fails for Claim 13 and each of its dependent
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`claims.
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`d. No Disclosure of Element [13.g] - “at least one side of
`the transition region contains optical elements”
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`Independent Claim 13 of the ’370 patent recites the following limitation: “at
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`least one side of the transition region contains optical elements for reflecting or
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`refracting light from the at least one light source.” That limitation is referenced as
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`“[13.g]” in the Petition. See, e.g., Petition at p. 21.
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`The Petition alleges that Pristash teaches “a transition device … which can
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`have lens 141 at input surface 142 …” Petition at 13 (emphasis added). But this
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`allegation is deficient as the Petition entirely disregards the plain claim language
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`of “optical elements” – in the plural.
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`For at least the above discussed reasons, the Petition fails to establish that
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`Pristash teaches the claimed “optical elements.” Accordingly, Ground 1 of the
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`Petition fails for Claim 13 and each of its dependent claims.
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`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”
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`Independent Claim 29 of the ’370 patent recites the following limitation:
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`“the pattern of light extracting deformities on or in at least one of the sides varies
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`along at least one of the length and width of the panel member and at least some
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`of the light extracting deformities on or in one of the sides vary in a different way
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`or manner than the light extracting deformities on or in the other side of the panel
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`member….” That limitation is referenced as “[29.e]” in the Petition. See, e.g.,
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`Petition at 26.
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`The Petition does not even discuss this claim element except in its cla