UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2015-00506
`
`Patent 7,434,973
`_______________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,973
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2015-00506
`
`Patent 7,434,973
`_______________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,434,973
`
`
`
`IPR2015-00506: Patent No. 7,434,973
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`B.
`
`PATENT OWNER’S ARGUMENTS REGARDING CLAIM
`CONSTRUCTION ARE INCORRECT.........................................................1
`A.
`The ’973 Patent Has Not Expired ........................................................1
`B.
`The Phillips Standard Does Not Alter the Construed Terms...............2
`C.
`Patent Owner’s Proposed Construction of “length and width
`substantially smaller” Ignores Basic Claim Construction
`Principles and Precedent ......................................................................3
`THE ’973 PATENT IS NOT ENTITLED TO A JUNE 27, 1995
`EFFECTIVE FILING DATE .........................................................................4
`A. Mr. Werner’s Declaration Should Be Given No Weight
`Because He Was Not Informed of, Nor Does He Have an
`Understanding Of the Law Regarding Filing Date or Written
`Description ...........................................................................................6
`The Limitation “wherein the density, size, depth and/or height
`of the deformities in close proximity to the input edge is
`greatest at approximate midpoints between adjacent pairs of
`light sources,” is Not Supported by The ’176 Application..................7
`The Limitation “a pattern of individual light extracting
`deformities associated with respective light sources,” is Not
`Supported by The ’176 Application...................................................12
`The Limitation “each of the deformities has a length and width
`substantially smaller than the length and width of the panel
`surface,” is Not Supported by The ’176 Application.........................13
`SHINOHARA ANTICIPATES CLAIMS 1-5 OF THE ’973 PATENT......14
`A.
`Shinohara Discloses “the density, size, depth and/or height of
`the deformities in close proximity to the input edge is greatest
`at approximate midpoints between adjacent pairs of light
`sources.” .............................................................................................14
`
`C.
`
`D.
`
`i
`
`
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`IPR2015-00506: Patent No. 7,434,973
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`
`Shinohara Discloses “each of the deformities has a length and
`width substantially smaller than the length and width of the
`panel surface.”....................................................................................22
`IV. DR. ESCUTI’S DECLARATION SHOULD BE GIVEN FULL
`WEIGHT.......................................................................................................23
`STATEMENT OF MATERIAL FACTS IN DISPUTE ..............................24
`V.
`VI. CONCLUSION.............................................................................................25
`
`ii
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`IPR2015-00506: Patent No. 7,434,973
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Comark Commc’ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998) ............................................................................3
`
`In re Huston,
`308 F.3d 1267 (Fed. Cir. 2002) ............................................................................5
`
`Lockwood v. Am. Airlines Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................6
`
`Net MoneyIN, Inc. v. VeriSign, Inc.
`545 F.3d 1359 (Fed. Cir. 2008) ..........................................................................15
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
`298 F.3d 1290 (Fed. Cir. 2002) ............................................................................5
`
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) ............................................................................2
`
`Nystrom v. TREX Co., Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) ..........................................................................23
`
`Polaris Wireless, Inc. v. TruePosition, Inc.,
`Case IPR2013-00323, slip op. (Nov. 15, 2013)....................................................5
`
`Tech. Lic. Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ............................................................................5
`
`Wagoner v. Barger,
`463 F.2d 1377 (C.C.P.A. 1972)............................................................................6
`
`Statutes
`
`35 U.S.C. § 102........................................................................................................25
`
`35 U.S.C. § 112......................................................................................................5, 7
`
`35 U.S.C. § 120......................................................................................................1, 2
`
`iii
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`IPR2015-00506: Patent No. 7,434,973
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`Other Authorities
`
`Decision, Paper 8 ...................................................................................................1, 2
`
`MPEP § 2701 .............................................................................................................1
`
`iv
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`IPR2015-00506: Patent No. 7,434,973
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`PETITIONER’S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,434,973
`Prosecution History of U.S. Patent No. 7,434,973
`Complaints filed in Related District Court Cases
`Declaration of Michael J. Escuti, Ph.D. (“Escuti Decl.”)
`U.S. Patent No. 5,461,547 (“Ciupke”)
`U.S. Patent No. 5,613,751 (“the ’751 Patent”)
`U.S. Patent No. 7,195,389 (“the ’389 Patent”)
`U.S. Patent No. 6,712,481 (“the ’481 Patent”)
`U.S. Patent No. 6,473,554 (“Pelka”)
`U.S. Patent No. 6,167,182 (“Shinohara”)
`U.S. Patent No. 5,775,791 (“Yoshikawa”)
`EP 0 878 720 (“Funamoto”)
`U.S. Patent No. 5,477,422 (“Hooker”)
`U.S. Patent No. 5,057,974 (“Mizobe”)
`U.S. Patent No. 3,241,256 (“Viret”)
`U.S. Patent No. 5,896,119 (“Evanicky”)
`U.S. Patent No. 5,584,556 (“Yokoyama”)
`U.S. Patent No. 5,667,289 (“Akahane”)
`U.S. Patent No. 5,160,195 (“Miller”)
`J. A. Castellano, Handbook of Display Technology, Academic Press
`Inc., San Diego, 1992, at pp. 9-13 and Ch. 8
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`European Patent Application Publication No. EP500960 (“Ohe”)
`U.S. Patent No. 5,921,651 (“Ishikawa”)
`U.S. Patent No. 5,931,555 (“Akahane”)
`U.S. Patent No. 5,828,488 (“Ouderkirk”)
`3M product brochure 75-0500-0403-7, “Brightness Enhancement Film
`(BEF).” 2 pages (1993)
`U.S. Patent No. 5,919,551 (“Cobb”)
`U.S. Patent No. 5,706,134 (“Konno”)
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`U.S. Patent No. 5,381,309 (“Borchardt”)
`U.S. Patent No. 5,600,462 (“Suzuki”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`1031
`1032
`1033
`1034
`
`v
`
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`IPR2015-00506: Patent No. 7,434,973
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`U.S. Patent No. 5,890,791 (“Saito”)
`U.S. Patent No. 6,505,959 (“Masaki”)
`U.S. Patent No. 5,961,198 (“Hira”)
`U.S. Patent No. 5,396,350 (“Beeson”)
`U.S. Patent No. 5,779,338 (“Ishikawa 2”)
`12/09/2015 Deposition of Mr. Kenneth Werner (“Werner Dep.”)
`
`1035
`1036
`1037
`1038
`1039
`1040
`
`vi
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`IPR2015-00506: Patent No. 7,434,973
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`In its July 6, 2015 Institution Decision on the ’973 Patent, the Board
`
`correctly found that claims 1-5 of the ’973 Patent are not entitled to the benefit of
`
`the filing date of the ’176 grandparent application. See Decision, Paper 8, at 9.
`
`Further, the Board correctly found that Petitioner LG Display is likely to prevail in
`
`showing that claims 1-5 are anticipated by Shinohara. Id. at 12-14. Patent Owner
`
`Delaware Display Group LLC’s Response does not rebut the Petition, Dr. Escuti’s
`
`opinions, which should be given full weight, or the Board’s Institution Decision.
`
`See generally Response, Paper 17.
`
`I.
`
`ARGUMENTS
`PATENT OWNER’S
`CONSTRUCTION ARE INCORRECT
`
`REGARDING CLAIM
`
`Patent Owner puts forth several arguments that are blatantly incorrect and
`
`should be rejected. First, the ’973 Patent has not expired. Second, regardless of the
`
`claim construction standard that is applied, the constructions put forth by Petitioner
`
`should not change. Third, Patent Owner’s proposed construction is too narrow and
`
`should be rejected.
`
`A.
`
`The ’973 Patent Has Not Expired
`
`Patent Owner seems to make the argument that because the ’973 Patent
`
`contains a specific reference to the ’176 Application, and because during the
`
`prosecution of the ’973 Patent, the inventors explicitly claimed priority under 35
`
`U.S.C. § 120 to the ’176 Application, that the ’973 Patent is expired. See Resp., at
`
`22 (citing to MPEP § 2701). However, simply citing to an earlier application and
`
`1
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`
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`IPR2015-00506: Patent No. 7,434,973
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`claiming priority under § 120 does not impart the claimed priority date. See In re
`
`NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011) (“[A] patent’s claims are not
`
`entitled to an earlier priority date merely because the patentee claims priority. . . .
`
`Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee
`
`must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.”).
`
`Here, the Board found that claims 1-5 of the ’973 Patent are not entitled to the
`
`effective filing date of June 27, 1995. As will be explained fully in Section II,
`
`Patent Owner has not satisfied its burden to show that it can properly claim the
`
`benefit of priority of a prior application under § 120. The effective filing date of
`
`the ’973 Patent is after June 27, 1995, thus the ’973 Patent has not expired and its
`
`claim terms should be interpreted under the BRI standard.
`
`The Phillips Standard Does Not Alter the Construed Terms
`B.
`Even if the Phillips standard applies to the claim terms, Patent Owner has
`
`not presented any reason why the current construction would change. In fact, the
`
`construction for “deformities” proposed by Petitioner and adopted by the Board is
`
`an agreed upon construction entered by the district court in a related proceeding.
`
`See Petition, Paper 2, at 6; Decision, Paper 8, at 4. Patent Owner did not challenge
`
`Petitioner’s construction, nor did Patent Owner put forth any limitations or
`
`constructions of its own, and acknowledges that the “deformities” construction was
`
`agreed to and adopted by the district court. Resp., at 24.
`
`2
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`IPR2015-00506: Patent No. 7,434,973
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`C.
`
`Patent Owner’s Proposed Construction of “length and width
`substantially
`smaller”
`Ignores Basic Claim Construction
`Principles and Precedent
`
`The limitation “each of the deformities has a length and width substantially
`
`smaller than the length and width of the panel surface,” does not require
`
`construction. Even if the Board would entertain construction of this term, it should
`
`certainly not be limited to Patent Owner’s construction, which tracks language
`
`from only one narrow example in the specification.
`
`“Although the specification may aid the court in interpreting the meaning of
`
`disputed claim language, particular embodiments and examples appearing in the
`
`specification will not generally be read into the claims.” Comark Commc’ns, Inc. v.
`
`Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). Here, Patent Owner is trying
`
`to limit the claimed “deformities [that] are projections or depressions” to one
`
`specific alternative example of deformities in the specification, the exact error
`
`against which the Federal Circuit warned.
`
`Next, the claim language actually weighs against Patent Owner’s proposed
`
`construction because it imports into a claim directed to “deformities [that] are
`
`projections or depressions” a limitation associated with deformities formed by
`
`“printing methods.” Ex. 1001, ’973 Patent, at 7:4-12. The claimed deformities are
`
`projections or depressions formed by “using more complex shapes in a molded
`
`pattern [that] may be molded, etched, stamped, thermoformed, hot stamped or the
`
`3
`
`
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`IPR2015-00506: Patent No. 7,434,973
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`like into or on one or more areas of the panel member.” Id. at 7:27-33. In contrast,
`
`the “print patterns of deformities with 0.006 square inch per deformity/element or
`
`less, or a print pattern of deformities with 60 lines per inch or finer,” imported by
`
`Patent Owner are made by printing methods outlined in the ’973 Patent, including
`
`“pad printing, silk screening, ink jet, heat transfer film process or the like.” Id. at
`
`6:22-24. As explained by Mr. Werner, these printing methods cannot be used to
`
`form depressions. Ex. 1040, 12/09/2015 Deposition of Mr. Kenneth Werner,
`
`(“Werner Dep.”), at 50:10-17. Nor does the ’973 Patent disclose how to make
`
`depressions or projections with 0.006 square inch per deformity or 60 lines per
`
`inch or finer purported to be achieved by the print pattern techniques. Mr. Werner
`
`also testified that printing can form a protrusion “[i]f you are including in the
`
`definition of protrusion a very, very thin mostly flat coating.” Id. at 53:20-25.
`
`Finally, Mr. Werner admitted that prismatic surfaces, depressions, or raised
`
`surfaces cannot be formed by the printing method that is used to make print
`
`patterns in the ’973 Patent. Id. at 56:24-57:7. Therefore, the claim language itself
`
`prevents the construction put forth by Patent Owner because the construction only
`
`applies to print patterns, and cannot form the required projections or depressions.
`
`For at least the foregoing reasons, Patent Owner’s arguments regarding claim
`
`construction should be rejected.
`
`II.
`
`THE ’973 PATENT IS NOT ENTITLED TO A JUNE 27, 1995
`EFFECTIVE FILING DATE
`
`4
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`IPR2015-00506: Patent No. 7,434,973
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`The Board correctly found that the claims of the ’973 Patent cannot claim
`
`benefit to the effective filing date of the ’176 grandparent application which led to
`
`the ’751 Patent. In its Response, Patent Owner merely rehashes the same
`
`arguments it submitted in its Preliminary Response. See Resp., at 25-43. When, as
`
`here, Petitioner identifies differences between the ancestral application, Patent
`
`Owner bears the burden of putting forward evidence showing its entitlement to the
`
`earlier filing date. Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-
`
`00323, slip op. at 29 (Nov. 15, 2013) (Paper 9). This requires Patent Owner “to
`
`show not only the existence of the earlier applications, but why the written
`
`description in the earlier application supports the claim.” Tech. Lic. Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, at 1327 (Fed. Cir. 2008). Patent Owner has not
`
`satisfied its burden.
`
`A claim in a later-filed patent application is entitled to the benefit of the
`
`filing date of an earlier-filed provisional application only if the provisional
`
`application, and all applications in the chain leading back to the provisional
`
`application, satisfy the written description requirement of 35 U.S.C. § 112 for the
`
`invention claimed in the later-filed application. New Railhead Mfg., L.L.C. v.
`
`Vermeer Mfg. Co., 298 F.3d 1290, 1294–97 (Fed. Cir. 2002). “Entitlement to a
`
`filing date does not extend to subject matter which is not disclosed, but would be
`
`obvious over what is expressly disclosed.” In re Huston, 308 F.3d 1267, 1277
`
`5
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`IPR2015-00506: Patent No. 7,434,973
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`(Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72
`
`(Fed. Cir. 1997)). Patent Owner has not met its burden of showing that claims 1-5
`
`of the ’973 Patent are either expressly or necessarily disclosed in an earlier filed
`
`application. See Wagoner v. Barger, 463 F.2d 1377, 1380 (C.C.P.A. 1972) (“The
`
`question in cases in which the parent application does not contain language
`
`contained in the claims of the later application is whether the language which is
`
`contained in the parent application is the legal equivalent of the claim language, in
`
`the sense that the ‘necessary and only reasonable construction to be given the
`
`disclosure [in the parent application] by one skilled in the art, . . . is the same as the
`
`construction which such person would give the language in the claims of the later
`
`application.’” (emphasis in original)). All Patent Owner attempts to show is that
`
`the challenged limitations would have been obvious over the disclosure, not that
`
`the challenged limitations are expressly disclosed or necessarily present.
`
`Moreover, Patent Owner never explained to its expert, Mr. Werner, the law
`
`regarding filing date issues or the written description requirement and he never
`
`applied any understanding of the law when drafting his declaration. Werner Dep.,
`
`at 86:2-87:22. Therefore, Mr. Werner’s opinions on whether the ’973 Patent can
`
`claim benefit to the filing date of the ’176 Application should be given no weight.
`
`A. Mr. Werner’s Declaration Should Be Given No Weight Because
`He Was Not Informed of, Nor Does He Have an Understanding Of
`the Law Regarding Filing Date or Written Description
`
`6
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`IPR2015-00506: Patent No. 7,434,973
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`A cursory read through Mr. Werner’s declaration reveals that the only legal
`
`standards he specifically enumerates are related to anticipation and obviousness.
`
`Ex. 2010, Werner Decl., at ¶¶14-19. When asked about how he specifically was
`
`able to undergo an analysis of the priority date to which the ’973 Patent is entitled,
`
`Mr. Werner explained that he “did not undergo the analysis,” and he “relied upon
`
`the instruction of the attorneys.” Werner Dep., at 84:22-85:3. When probed further,
`
`he said he based his analysis on “identical language in the – in the entire chain of
`
`these patents.” Id. at 86:2-7. For his analysis, he admitted that he did not need to
`
`have an understanding of the law regarding priority date issues because “I rely on
`
`the attorneys for legal opinion,” and “[t]hey explained to me that the repetition of
`
`the language throughout this entire chain should entitle[] the ’973 patent to the
`
`priority date of the ’751 patent.” Id. at 86:8-19. Mr. Werner admitted that he did
`
`not include any of the legal principles regarding priority date issues or any of the
`
`legal principles that counsel had explained to him in his declaration (id. at 87:4-
`
`10), nor does he have any knowledge or understanding of the written description
`
`requirement of 35 U.S.C. § 112. Id. at 87:13-22.
`
`B.
`
`The Limitation “wherein the density, size, depth and/or height of
`the deformities in close proximity to the input edge is greatest at
`approximate midpoints between adjacent pairs of light sources,”
`is Not Supported by The ’176 Application.
`
`Patent Owner argues that “one of ordinary skill in the art would have known
`
`that the ’176 grandparent application necessarily taught the limitation ‘wherein the
`
`7
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`IPR2015-00506: Patent No. 7,434,973
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`density, size, depth and/or height of the deformities in close proximity to the input
`
`edge is greatest at approximate midpoints between adjacent pairs of
`
`light
`
`sources.’” Resp., at 27-28. However, Patent Owner does not meet its burden of
`
`showing its entitlement to the June 27, 1995 filing date. Specifically, Patent Owner
`
`fails to demonstrate that the ’176 Application explicitly or inherently shows that
`
`the density, size, depth and/or height of the deformities in close proximity to the
`
`input edge is greatest at approximate midpoints between adjacent pairs of light
`
`sources. First, Patent Owner refers to the citation in the ’751 Patent that light
`
`traveling through the panels will ordinarily be greater in areas closer to the light
`
`source than in other areas further removed from the light source, and that the
`
`deformities may be used to adjust for light variances within the panel members, for
`
`example, by providing a denser concentration of deformities with increased
`
`distance from the light source. Resp., at 31 (citing ’751 Patent, at 5:1-12). Then,
`
`Patent Owner and Mr. Werner make the unfounded logical
`
`leap that “[t]hat
`
`disclosure includes the area of the input edge between two light sources.” Id. at
`
`32 (citing Werner Decl. at ¶78) (emphasis added). Mr. Werner justifies his
`
`conclusion with the following argument that “[o]ne of ordinary skill in the art
`
`would have understood ‘areas further removed from the light source’ broadly to
`
`encompass all directions relative to the panel, and would encompass the area along
`
`the input edge between the light sources.” Werner Decl., at ¶78.
`
`8
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`IPR2015-00506: Patent No. 7,434,973
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`Patent Owner alleges that the ’176 grandparent application discloses five
`
`elements that support the greatest density limitation: “(1) deformities that can
`
`differ/vary as claimed; (2) a pattern of deformities placed in areas as desired
`
`including at an input edge; (3) several light sources used for the same panel
`
`assembly on the same input edge; (4) less and/or smaller size deformities placed on
`
`panel areas where less light output is wanted and greater percentage of and/or
`
`larger deformities placed on areas of the panels where greater light output is
`
`desired; (5) manipulating the deformities as the distance from the light source
`
`increases in order to create a more uniform light output distribution from the light
`
`emitting panels.” Resp., at 27-28. However, Patent Owner failed to explain why
`
`deformities that satisfy any or all of the five elements listed above necessarily vary
`
`or differ such that the density, size, depth and/or height of the deformities in close
`
`proximity to the input edge is greatest at approximate midpoints between adjacent
`
`pairs of light sources. In fact, the ’751 Patent discloses that “the deformities may
`
`vary in shape and/or size along the length and/or width of the panel members.” Ex.
`
`1006, at 5:39-41. However, such deformities may vary only in the length direction
`
`(alternatively in the width direction). However, placing multiple light sources
`
`along an edge of a light guide with deformities varying only in the length direction
`
`(alternatively in the width direction) will not lead to an arrangement in which the
`
`density, size, depth and/or height of the deformities in close proximity to the input
`
`9
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`IPR2015-00506: Patent No. 7,434,973
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`edge is greatest at approximate midpoints between adjacent pairs of light sources.
`
`Indeed, though the ’751 Patent drawings do not show an example of the
`
`disclosed and claimed embodiment of deformities varying only in the length
`
`direction (see, e.g., claims 4 and 72 of the ’751 Patent), an example can be seen in
`
`Fig. 38 of the ’973 Patent. See Ex. 1001, Fig. 38 and 12:4-16. As confirmed by Mr.
`
`Werner, placing multiple light sources at the input edge of the light guide shown in
`
`Fig. 38 will not provide an arrangement in which the density, size, depth and/or
`
`height of the deformities in close proximity to the input edge is greatest at
`
`approximate midpoints between adjacent pairs of light sources. Werner Dep., at
`
`62:2-63:2, 65:7-24, 66:6-68:13, 71:7-21.
`
`Moreover, even if the deformities were to vary both in the width and length
`
`directions, that does not necessarily lead to an arrangement that satisfies the
`
`claimed limitation. Indeed, though the ’751 Patent drawings do not show an
`
`example of the disclosed and claimed embodiment of deformities varying both in
`
`the length and width directions (see, e.g., claims 6, 72, and 73 of the ’751 Patent),
`
`an example can be seen in Figs. 39-40 of the ’973 Patent, See Ex. 1001, Figs. 39-
`
`40 and 12:17-19, 12:24-41. Placing multiple light sources at the input edge of the
`
`light guide shown in any of Figs. 39-40 will not provide an arrangement in which
`
`the density, size, depth and/or height of the deformities in close proximity to the
`
`input edge is greatest at approximate midpoints between adjacent pairs of light
`
`10
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`IPR2015-00506: Patent No. 7,434,973
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`sources.
`
`Furthermore, as argued in the Petition, the only embodiment in the ’973
`
`Patent that provides sufficient support for this limitation is Figure 39B. Petition at
`
`11. Mr. Werner specifically explained the differences in the embodiment of Fig.
`
`39B compared to other embodiments in the specification of the ’973 Patent.
`
`Werner Dep., at 65:16-24. Thus, none of the embodiments from the ’973 Patent
`
`that could have found support in the ’751 Patent provide an arrangement in which
`
`the density, size, depth and/or height of the deformities in close proximity to the
`
`input edge is greatest at approximate midpoints between adjacent pairs of light
`
`sources.
`
`Thus, Patent Owner fails to demonstrate that the density, size, depth and/or
`
`height of the deformities in close proximity to the input edge is greatest at
`
`approximate midpoints between adjacent pairs of light sources is necessarily
`
`present
`
`in the ’751 Patent. Mr. Werner admitted that for placing a denser
`
`concentration of the light extracting deformities with increased distance from the
`
`light source, the increased distance from the light source is not limited to a distance
`
`along the length of the panel member, along the width of the panel member, or
`
`along any direction at all. Werner Dep., at 115:2-116:25. Therefore, the disclosure
`
`in the ’751 Patent does not show that the density, size, depth and/or height of the
`
`deformities in close proximity to the input edge is greatest at approximate
`
`11
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`
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`IPR2015-00506: Patent No. 7,434,973
`
`midpoints between adjacent pairs of light sources is necessarily present. In fact,
`
`the ’751 Patent never provides such a specific disclosure.
`
`For at least these reasons, Patent Owner has failed to demonstrate that the
`
`’176 Application provides written description support for the claim limitation
`
`“wherein the density, size, depth and/or height of the deformities in close
`
`proximity to the input edge is greatest at approximate midpoints between adjacent
`
`pairs of light sources.”
`
`C.
`
`extracting
`light
`individual
`The Limitation “a pattern of
`deformities associated with respective light sources,” is Not
`Supported by The ’176 Application.
`
`For the next limitation, Patent Owner contends that “a pattern of individual
`
`light extracting deformities associated with respective light sources,” is entitled to
`
`the June 27, 1995 priority date. Resp., at 35. However, Mr. Werner admits that Fig.
`
`39B of the ’973 Patent is the best disclosure of this limitation because “there is a
`
`pattern of deformities that are clearly oriented toward the position of each of the
`
`two light sources in 39B.” Werner Dep., at 65:16-24. He repeats that for this
`
`limitation, “it is clear that when Parker is talking about association, he is – he is
`
`most concerned with patterns such as 39B where the association is geometrically
`
`obvious.” Id. at 68:9-13. Finally, Mr. Werner admitted that for “associated” in
`
`claim 1 of the ’973 Patent, a person of ordinary skill in the art would “certainly
`
`think first of a geometric association as – as illustrated in 39B, I believe.” Id. at
`
`12
`
`
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`IPR2015-00506: Patent No. 7,434,973
`
`71:15-21. This is notable because Fig. 39B of the ’973 Patent, upon which Mr.
`
`Werner’s understanding of the claim limitation is based, appears nowhere in the
`
`’176 Application. In fact, Fig. 39B and its accompanying disclosure does not
`
`appear until November 28, 2007 in a reply to an office action in the prosecution
`
`history of the ’973 Patent. Pet., at 8 (citing to Ex. 1002, at LGD_000186-187).
`
`Therefore, the best and only example of the limitation “a pattern of individual light
`
`extracting deformities associated with respective light sources,” cannot be
`
`necessarily present in the ’176 Application if it was not even introduced until after
`
`the application leading to the ’973 Patent itself was filed.
`
`For at least these reasons, Patent Owner has failed to demonstrate that the
`
`’176 Application provides written description support for the claim limitation “a
`
`pattern of individual light extracting deformities associated with respective light
`
`sources.”
`
`D.
`
`The Limitation “each of the deformities has a length and width
`substantially smaller than the length and width of the panel
`surface,” is Not Supported by The ’176 Application.
`Patent Owner’s position relies on a disclosure related to the size of printed
`
`patterns of deformities. See Resp., at 39 (citing ’751 Patent, at 5:31-40). However,
`
`as explained above in Section I.C., the claim language calls for deformities being
`
`projections and depressions, which cannot be formed from the print patterns of
`
`deformities. Therefore, the citation regarding the size of “print patterns” cannot
`
`13
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`
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`IPR2015-00506: Patent No. 7,434,973
`
`provide support for the size of deformities that are projections or depressions.
`
`For at least these reasons, the ’176 Application itself does not disclose,
`
`expressly or inherently, the limitation “each of the deformities has a length and
`
`width substantially smaller than the length and width of the panel surface.” As
`
`such, claims 1-5 of the ’973 Patent cannot claim benefit to the June 27, 1995
`
`priority date.
`
`III.
`
`SHINOHARA ANTICIPATES CLAIMS 1-5 OF THE ’973 PATENT.
`
`The Board has correctly found that Petitioner has established a reasonable
`
`likelihood that
`
`it would prevail
`
`in showing claims 1-5 are anticipated 1 by
`
`Shinohara. Dec., at 12-14. Patent Owner’s arguments do not change anything
`
`A.
`
`Shinohara Discloses “the density, size, depth and/or height of the
`deformities in close proximity to the input edge is greatest at
`approximate midpoints between adjacent pairs of light sources.”
`
`Patent Owner’s first argument is that the concentric arrangement of the small
`
`1 It is unclear that Mr. Werner has the correct understanding of the law of
`
`anticipation, which calls into question his entire testimony regarding Shinohara.
`
`See Werner Dep., at 197:10-25 (“Parker says ‘wherein the light sources are light
`
`emitting diodes,” and Shinohara says ‘by a light-emitting device chip, for example,
`
`a light emitting diode.’ So Parker requires it. Shinohara says – says it’s a possible
`
`choice, so I guess I would have to say that Shinohara does not anticipate Parker in
`
`that because he is not requiring the LED.”); see also id. at 198:18-199:3.
`
`14
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`IPR2015-00506: Patent No. 7,434,973
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`diffuse pattern elements 24 only describe the embodiment of Fig. 9, and not the
`
`embodiment of Fig. 27. Resp., at 44. Patent Owner ignores a point that the Board
`
`had already made in the Institution Decision: “Although Figures 9 and 27 of
`
`Shinohara describe different embodiments as a whole, Petitioner relies on Figure 9
`
`for illustrating a particular aspect of the diffuse pattern elements 24a, which is
`
`present
`
`in both embodiments.” Dec., at 13-14 (citing Net MoneyIN, Inc. v.
`
`VeriSign, Inc. 545 F.3d 1359, 1370 (Fed. Cir. 2008)).
`
`Fig. 9 specifically refers to “the diffuse pattern elements 24a [] arranged
`
`concentrically around the point light source 30 in correspondence with the light
`
`propagating while being radially spread.” Ex. 1010, Shinohara, at 13:41-44. Mr.
`
`Werner admits that Fig. 9 of Shinohara shows that the arrangement of diffuse
`
`pattern elements 24a is concentric around point light source 30 because “[i]f you
`
`view these – these patterns as being parts of circles drawn with the light source as
`
`the center, all of these circles would have a common center and therefore be
`
`concentric.” Werner Dep., at 140:14-23. Mr. Werner also admits that Shinohara
`
`discloses that light is propagating while being radially spread, and the diffuse
`
`elements are arranged to correspond with the radial spread of the propagating light.
`
`Id. at 142:21-143:2. Further, Mr. Werner admits that the variation in density of the
`
`diffuse pattern elements increases concentrically around the light source. Id. at
`
`144:2-15.
`
`15
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`IPR2015-00506: Patent No. 7,434,973
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`The variation in density of the diffuse pattern elements illustrated in Fig. 9 is
`
`represented in Shinohara by an equation (2) that describes how the output rate
`
`varies as a function of the distance “r” from the light source. The “density of the
`
`diffuse pattern elements in the diffuse pattern 24 shown in Fig. 9 almost satisfies
`
`the equation (2).” Shinohara, at 18:32-36 (emphases added); see also Werner
`
`Dep., at 156:15-23. A person of ordinary skill in the art would interpret “r” as the
`
`radial distance from the light source, as Mr. Werner confirms. Werner Dep., at
`
`151:14-15 (“[r] is – suggests a radial distance. So it could be in any direction.”).
`
`The distance “r” from the light source is not limited to a particular direction and
`
`can be any radial direction. Id. at 142:20-143:13.
`
`Equation (2) also corresponds to the graph of Fig. 18d which shows how
`
`light output varies as a function of distance from the light source in any radial
`
`direction. Werner Dep., at 155:2-20. The connection between density and output is
`
`discussed in relation to Fig. 19. See Shinohara, at 18:17-55. Shinohara indi
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