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`REQUEST FOR INTER PARTES REVIEW
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` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of
`
`Docket No: PR00024
`
`Jeffery R. Parker, et al.
`
`Issued: May 3, 2005
`
`U.S. Patent No. 6,886,956
`
`Application No. 10/298,367
`
`Filing Date: November 18, 2002
`
`
`
`For: LIGHT EMITTING PANEL ASSEMBLIES FOR USE IN
`AUTOMOTIVE APPLICATIONS AND THE LIKE
`
`
`
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,886,956 UNDER 35 U.S.C. §§311-319, 37 C.F.R. § 42
`
`Mail Patent Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42, Petitioners Koito
`
`Manufacturing Co., Ltd. and Stanley Electric Co., Ltd. (“Petitioners”) respectfully
`
`petition for Inter Partes Review (“Petition” or “IPR”) of claims 1, 4, 5, 6, 9, 16, 21
`
`and 31 (“challenged claims”) of U.S. Patent No. 6,886,956 (Ex. 1001, “the ’956
`
`patent”), which is currently assigned to Innovative Display Technologies, LLC
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`(“Patent Owner”) according to the US Patent and Trademark Office assignment
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`records. There is a reasonable likelihood that Petitioners will prevail with respect
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`to at least one of the claims challenged in this Petition.
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`

`

`TABLE OF CONTENTS
`
`
`
`I. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) ........................................... 1
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1
`
`B.
`
`C.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ...................................... 1
`
`Lead and Back-Up Counsel 37 C.F.R. § 42.8(b)(3) .............................. 2
`
`D.
`
`Service Information 37 C.F.R. § 42.8 (b)(4) ......................................... 2
`
`II.
`
`Payment of Fees — 37 C.F.R. § 42.103 .......................................................... 2
`
`III. Requirements For IPR Under 37 C.F.R. §§ 42.104 ......................................... 3
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`
`B.
`
`Effective Filing Dates and Prior Art Patents and Printed Publications . 3
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .............................................................................................. 4
`
`IV.
`
`Summary of The '956 Patent ........................................................................... 5
`
`A.
`
`Brief Description ................................................................................... 5
`
`B.
`
`Summary of the Prosecution History of the '956 patent ....................... 7
`
`V.
`
`Claim Construction .........................................................................................................8
`
`A.
`
`"light extracting deformities" (claim 1) ............................................... 9
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '956 PATENT IS UNPATENTABLE ................................ 10
`
`A. Ground 1: Claims 1, 5, 6, 9 and 31 are Anticipated Under 35 U.S.C. §
`102(b) by JP ‘602 ................................................................................ 10
`
`1.
`
`2.
`
`Brief Overview Of JP ‘602 ....................................................... 10
`
`Claims 1, 5, 6, 9 and 31 are Anticipated by JP ‘602 ................ 11
`
`i
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`

`

`B. Ground 2: Claims 4, 16 and 21 are Obvious under 35 U.S.C. § 103(a)
`by JP ‘602 in view of Pristash (Ex. 1003 and Ex. 1007) .................... 20
`
`1.
`
`Brief Overview of Pristash ........................................................ 20
`
`2.
`
`Claims 4, 16 and 21 are Obvious under 35 U.S.C. § 103(a) by
`JP ‘602 in view of Pristash (Ex. 1004 and Ex. 1007) ............... 24
`
`C. Ground 3: Claims 1, 5, 6, 9, 16, 21 and 31 are unpatentable as obvious
`by JP '004 in view of JP '602 ............................................................... 29
`
`1.
`
`2.
`
`Brief Overview Of JP ‘004 ....................................................... 30
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`Claims 1, 5, 6, 9, 16, 21 and 31 of the '956 patent are invalid as
`obvious over JP '004 in view of JP '602 .................................... 32
`
`VII. Conclusion ..................................................................................................... 42
`
`
`
`
`
`ii
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`

`

`EXHIBITS
`
`Description
`U.S. Patent No. 6,886,956
`File History of U.S. Patent No. 6,886,956
`JP H5-25602U (“JP ’602”)
`Certified Translation of JP ’602
`JP H1-92004U (“JP ’004”)
`Certified Translation of JP ’004
`U.S. Patent No. 5,005,108 to Pristash et al. (“US ’108” or
`“Pristash”)
`Declaration of Dr. Edward F. Carome in Support of Petitioners’
`Request for Inter Partes Review
`Power of Attorney
`
`
`
`
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`
`
`
`
`
`
`
`
`
`
`iii
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`

`

`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner Koito Manufacturing Co., Ltd.; its subsidiary North American
`
`Lighting, Inc.; Petitioner Stanley Electric Co., Ltd.; and its subsidiaries Stanley
`
`Electric U.S. Co., Inc., I I Stanley Co., Inc. and Stanley Electric Holding of
`
`America, Inc. are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’956 patent is
`
`the subject of at least the following patent infringement lawsuits brought by the
`
`assignee, Innovative Display Technologies, LLC (“IDT”), which may affect, or be
`
`affected by, a decision in this proceeding: Innovative Display Technologies LLC v.
`
`Toyota Motor Corporation,, et al., C.A. (2:14- cv-200) (E.D. Texas) filed March
`
`10, 2014,; Innovative Display Technologies LLC v. Nissan Motor Co., Ltd et al.
`
`C.A. (2:14-cv-202) (E.D. Texas) filed March 10, 2014; Innovative Display
`
`Technologies, LLC v. American Honda Motor Co., Inc. et al. (2:14-cv-222) (E. D.
`
`Texas) filed March 13, 2014, and Innovative Display Technologies LLC v General
`
`Motors Company et al. (1:14-cv-00850) (D. Del.), filed June 30, 2014,
`
`respectively.
`
`1
`
`

`

`C. Lead and Back-Up Counsel 37 C.F.R. § 42.8(b)(3)
`
`Petitioners provide the following designation of counsel.
`
`
`
`
`
`LEAD COUNSEL
`William H. Mandir (Reg. No 32,156)
`(wmandir@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`
`BACK-UP COUNSEL
`Steven M. Gruskin (Reg. No 36,818)
`(sgruskin@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`T: 202-293-7060, F: 202-293-7068
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney from each Petitioner
`
`accompanies this Petition.
`
`
`
`D.
`
`Service Information 37 C.F.R. § 42.8 (b)(4)
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via
`
`hand-delivery may be made at the postal mailing addresses listed above.
`
`Petitioners also consent to electronic service by email at koito@sughrue.com.
`
`II.
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103
`
`Petitioners authorize the Patent and Trademark Office to charge Deposit
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`Account No. 19-4880 for the fees set in 37 C.F.R. § 42.15(a) for this Petition for
`
`Inter Partes Review, and further authorizes payment for any additional fees to be
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`charged to this Deposit Account.
`
`2
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`

`

`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`Petitioners certify that the ’956 patent (Ex. 1001) is available for Inter
`
`Partes Review and that Petitioners are not barred or estopped from requesting an
`
`Inter Partes Review challenging the patent claims on the grounds identified in this
`
`Petition.
`
`B.
`
`Effective Filing Dates and Prior Art Patents and Printed
`Publications
`
`The claims of the ’956 patent (Ex. 1001) have an effective filing date no
`
`earlier than January 16, 1996, the filing date of the parent U.S. Application No.
`
`08/585,062. Petitioners rely upon the following patents and printed publications,
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`each of which is prior art to the ’956 patent, under 35 U.S.C. §102(b):
`
`Ex. 1003 – JP H5-25602U to Katase (hereinafter “JP ’602”) published on
`
`April 2, 1993 (Ex. 1004 - certified translation of JP ’602);
`
`Ex. 1005 - JP H1-92004U to Shinkai(hereinafter “JP ’004”) published on
`
`June 16, 1989 (Ex. 1006 - certified translation of JP ’004); and
`
`Ex. 1007 - U.S. Patent No. 5, 005, 108 to Pristash et al. (“US ’108” or
`
`“Pristash”), published on April 2, 1991.
`
`3
`
`

`

`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`
`
`Petitioners request Inter Partes Review of claims 1, 4, 5, 6, 9, 16, 21 and 31
`
`of the ’956 patent (Ex. 1001) on the grounds set forth in the table and claim charts
`
`below and request that each of the claims be found unpatentable. Additional
`
`explanation and support for each grounds of rejection is set forth in the Declaration
`
`of Dr. Edward F. Carome. See Ex. 1008. Verification of the translation of JP ’602
`
`(Ex. 1003) and JP ’004 (Ex. 1005) are provided (Ex. 1004 and Ex. 1006,
`
`respectively).
`
`Ground
`
`Claim(s)
`
`Basis for Rejection
`
`Ground 1
`
`1, 5, 6, 9 and 31 Anticipated under 35 U.S.C. § 102(b) by JP
`
`’602 (Ex. 1003)
`
`Ground 2
`
`4, 16 and 21
`
`Obvious under 35 U.S.C. § 103(a) by JP ’602
`
`in view of Pristash (Ex 1003 and Ex. 1007)
`
`Ground 3 1, 5, 6, 9, 16, 21 and
`
`Obvious under 35 U.S.C. § 103(a) by JP ’004
`
`Ground 4
`
`31
`
`4
`
`in view of JP ’602 (Ex. 1005 and Ex. 1003 )
`
`Obvious under 35 U.S.C. § 103(a) by JP ’004
`
`and JP ’602 and further in view of Pristash
`
`4
`
`

`

`
`IV. SUMMARY OF THE ’956 PATENT
`
`A. Brief Description
`
`As shown in FIGs. 3 & 4 below, the ’956 patent is directed to a light
`
`emitting panel assembly 21 including transparent light emitting panel members
`
`28–30 and one or more light sources 9 mounted within one or more light transition
`
`areas or regions 10 at one or both ends of the panel member 28–30. See Ex 1001 at
`
`FIGS. 3 & 4; 8:30–63.
`
`
`
`
`
`In the ’956 patent , light enters the transparent light emitting panel members
`
`28–30 from the light transition regions 10, and the light is "emitted along the entire
`
`length of the panel members or from one or more light output surface areas along
`
`5
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`

`

`their length . . . to produce a desired light output distribution to fit a particular
`
`application." Ex 1001 at 4:59–65.
`
`
`
`A pattern of light extracting deformities or disruptions 12 (see FIG. 2A
`
`above) may be provided on one or both sides 13, 14 (as shown in FIG. 2) of the
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`panel members 28–30 along the entire length or at one or more selected areas of
`
`the panel members as desired. Ex 1001 at 5:38–41. The pattern may include a
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`variable pattern which breaks up the light rays such that the internal angle of
`
`reflection of a portion of the light rays will be great enough to cause the light rays
`
`either to be emitted out of the panel members through the side or sides on which
`
`the light extraction deformities are provided, or reflected back through the panel
`
`members and emitted out the other side. See Ex 1001 at 5:45–52. By varying the
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`density, opaqueness or translucence, shape, depth, color, area, index of refraction,
`
`or type of deformities on an area or areas of the panel members, the light output of
`
`the panel members can be controlled. See Ex. 1001, 6: 1–4.
`
`6
`
`

`

`B.
`
`Summary of the Prosecution History of the ’956 patent
`
`The ’956 patent was issued on May 3, 2005 from U.S. Patent Application
`
`No. 10/298,367, filed November 18, 2002, which contained 22 drawing figures and
`
`52 claims, with claims 1, 17, 24–26 and 34 being independent claims. In an Office
`
`Action mailed February 12, 2004, the Examiner rejected claims 1–6, 8, 10, 14–17,
`
`19, 20, 22, 23 and 25 under 35 U.S.C. § 102(e) as being anticipated by Nakamura
`
`(US 5,467,417) and rejected claims 7, 9, 11–13, 18, 21 and 24 under 35 U.S.C. §
`
`103(a) as being unpatentable over Nakamura. See Ex. 1002 at pages 132–135.
`
`In an Amendment dated June 16, 2004, the patentee amended independent
`
`claim 1 to recite “light emitting diodes” instead of “a plurality of closely spaced
`
`light sources” and to recite “said substrate providing an exterior portion of a
`
`vehicle for vehicle illumination at said exterior portion.” See Ex. 1002 at page 118.
`
`The patentee also argued that Nakamura relates to a prism plate that is used with
`
`information processors such as personal computers, word processors and is “not a
`
`light emitting assembly for vehicle illumination.” Ex 1002 at page 124.
`
`In a subsequent Office Action mailed June 29, 2004, the Examiner rejected
`
`claims 1–6, 8, 10, 11, 14–17, 19–23, 53 and 54 under 35 U.S.C. § 102(b) as being
`
`anticipated by Serizawa et al. (US 4,733,335) and rejected claims 7, 12–13, 18 and
`
`55 under 35 U.S.C. § 103(a) as being unpatentable over Serizawa et al. See Ex.
`
`1002 at pages 107–110. In an Amendment filed October 1, 2004, the patentee
`
`7
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`

`

`amended the claims to highlight that the “one or more light emitting diodes [are]
`
`along said light input surface for receiving light from said light emitting diodes and
`
`conducting the light from said edge for emission of the light from at least one of
`
`said sides.” (emphasis added) See Ex. 1002 at pages 31–36. The patentee also
`
`argued that Serizawa’s lamp “does not provide an exterior portion of a vehicle”
`
`and that Serizawa’s light emitting diodes are “positioned adjacent one side of the
`
`lens assembly 104 for shining light through the lens assembly from one side to the
`
`other.” (emphasis added) Ex 1002 at pages 8 and 9. The Examiner then allowed
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`the application, which issued as the subject patent.
`
`V. CLAIM CONSTRUCTION
`
`In an Inter Partes Review of an expired patent, the claims are construed
`
`using the Phillips standard. The ’956 patent is subject to a terminal disclaimer,
`
`disclaiming any term of the patent after June 27, 2015, the expiration date of US
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`Patent No. 5,613,751. Thus, if Inter Partes Review is instiituted, a final written
`
`decision would occur after the expiration of the ’956 patent. The claims of
`
`the ’956 patent should be construed under the Phillips standard in which claim
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`terms “generally are given their ordinary and customary meaning, as understood by
`
`a person of ordinary skill in the art, at the time of the invention, taking into
`
`consideration the language of the claims, the specification, and the prosecution
`
`history of record because the expired claims are not subject to amendment.” See
`
`8
`
`

`

`PTAB Decision, Panel Claw Inc. v. Sunpower Corp. (IPR2014-00386, Paper No. 7,
`
`p.7, June 30, 2014).
`
`Petitioners submit that a person of ordinary skill in the art of automotive
`
`light emitting panel technologies at the time of the alleged invention would have
`
`had either a Bachelor’s degree in Mechanical Engineering or Physics or equivalent
`
`coursework and at least two years of experience in the lighting field. See Ex. 1008
`
`at paras.#8. Petitioners provide constructions for the following terms in connection
`
`with this IPR:
`
`A.
`
`“light extracting deformities” (claim 1)
`
`
`
`Claim 1 of the ’956 patent requires the panel members 28–30 to include
`
`“deformities having shapes for controlling an output ray angle distribution of
`
`emitted light to suit a particular application.” Referring to FIG. 2A reproduced
`
`above, a pattern of light extracting deformities or disruptions 12 is provided on one
`
`or both sides 13, 14 of the panel members along the entire length thereof or at one
`
`or more selected areas of the panel members as desired. See Ex 1001 at 5:38–41.
`
`9
`
`

`

`The ’956 patent expressly teaches that these deformities mean “any change in the
`
`shape or geometry of the panel surface and/or coating or surface treatment that
`
`causes a portion of the light to be emitted.” Ex 1001 at 5:42–52. Consistent with
`
`this teaching, “light extracting deformities” is any change in the shape or geometry
`
`of the light guide surface and/or a coating or surface treatment on the light guide
`
`surface that causes a portion of the light to be emitted.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’956 PATENT IS UNPATENTABLE
`
`A. Ground 1: Claims 1, 5, 6, 9 and 31 are Anticipated Under 35
`U.S.C. § 102(b) by JP ’602
`
`1. Brief Overview Of JP ’602
`
`As shown in FIGS. 1 and 5 (reproduced below), JP ’602 discloses a vehicle
`
`lamp using several optical fibers 31 arranged in a planar shape. The optical fibers
`
`31 include reflection steps 35 on a rear surface of the optical fibers 31 to reflect
`
`light from light emitting diodes 33 to a front of the optical fibers 31. See Ex. 1003
`
`at paragraph [0009].
`
`10
`
`

`

`
`
`
`
`2. Claims 1, 5, 6, 9 and 31 are Anticipated by JP ’602
`
`As detailed in the discussion and claim charts below and the Declaration of
`
`Dr. Carome (Ex. 1008), JP ’602 discloses all the limitations of claims 1, 5, 6, 9 and
`
`31. JP ’602 discloses a vehicle lamp assembly including a plurality of optical
`
`fibers 31 corresponding to the claimed "light guide." Referring to annotated FIG. 4
`
`(reproduced below), each optical fiber 31 includes at least two surfaces, a first
`
`surface including reflection steps 35 and a second surface opposing the first
`
`surface through which light from light emitting diodes 33 exits the optical fiber 31.
`
`The two above-described surfaces correspond to the claimed “opposite sides” of
`
`the light guide.
`
`11
`
`

`

`
`
`Referring to annotated FIGS. 3 and 5 reproduced below, JP ’602 discloses
`
`an unnumbered surface (corresponding “a light input surface” in the annotated
`
`FIG. 4 above), provided between a transparent short column 34 and a
`
`corresponding optical fiber 31 along at least one edge of the optical fiber 31. See
`
`Ex. 1003 at paragraph [0007]; FIG. 4. The light from light emitting diodes 33
`
`enters the corresponding optical fiber 31 through the “light input surface” provided
`
`between the transparent short column 34 and the corresponding optical fiber 31.
`
`Light emitting diodes (LEDs) 33 are provided along the unnumbered surface
`
`("light input surface"). The “light input surface” receives light from these LEDs
`
`and conducts the light from the edge of the optical fiber for emission of the light
`
`from the second surface described above as the surface opposing the surface with
`
`reflection steps 35, and as shown below in FIG. 5 with the arrows being emitted
`
`therefrom . As shown in FIG. 3 below, the light emitting diodes 33 are connected
`
`to a printed board 32. See Ex. 1003 at paragraph [0007]. A person having
`
`12
`
`

`

`ordinary skill would understand that a printed board 32 is a circuit board for
`
`controlling the LEDs (claim 9). See Ex 1008 at para. #31.
`
`
`
`The reflecting steps 35 are notches or “depressions” (claim 6) formed in the
`
`optical fibers 31, as shown in FIG. 5. Each reflecting step 35 includes an inclined
`
`surface thereby forming a prismatic device for controlling an output ray angle
`
`distribution of emitted light to suit a particular application. See Ex. 1003 at
`
`paragraph [0008]. JP ’602 also discloses a lens 2 (shown above in FIG. 5)
`
`corresponding to the claimed “transparent substrate,” which overlies and covers
`
`the second surface of the optical fiber 31 (claims 1, 2 and 5). The lens 2 is an outer
`
`lens of an automobile rear lamp and therefore provides an exterior portion of the
`
`vehicle for vehicle illumination. See Ex. 1003 at paragraph [0006].
`
`Referring to FIGS. 1 and 2 reproduced below, FIG. 1 is a partially exploded
`
`perspective view of a rear lamp of an automobile, and FIG. 2 is a perspective view
`
`13
`
`

`

`in an assembled state. Optical fibers 31 are provided between lamp body 1 and
`
`outer lens 2. Outer lens 2 covers and therefore protects light source unit 3 and is
`
`the outer lens of a vehicle stop/tail/turn light device (claim 31). See Ex. 1003 at
`
`FIG. 1; paragraph [0006].
`
`The tables below show how each limitation of claims 1, 5, 6, 9 and 31 is
`
`
`
`taught by JP ’602.
`
`CLAIM 1
`[1(a)] A light emitting assembly
`for vehicle illumination
`comprising
`
`[1(b)] a light guide having
`opposite sides
`
`JP ’602
`“The invention relates to a vehicle lamp device
`and, in particular, to a vehicle lamp device,
`thinning of which is realized.” See Ex. 1003 at
`para. [0001] (emphasis added).
`
`“As partially shown in an enlarged state in Fig.
`3, the light source unit 3 has an optical fiber
`structure in which a number of optical
`conductors, each of which is formed of a
`transparent resin and has a circular cross
`section, that is, a number of relatively thick
`optical fibers 31 of 2 to 6 φ, each of which is
`formed of an acrylic resin or the like, for
`example, are vertically superimposed and
`14
`
`

`

`integrated by an adhesive or the like, so as to
`have a front shape corresponding to the lamp
`body 1 and the outer lens 2. In this embodiment,
`as shown in Fig. 4, a transparent short column
`34 in which the LED device 33 is integrally
`embedded is adhered to the end of the each
`optical fiber 31 by a transparent adhesive.” See
`Ex. 1003 at para. [0007] (emphasis added).
`
`
`
`[1(c)] and at least one light
`input surface along at least one
`edge of said light guide, one or
`more light emitting diodes
`along said light input surface for
`receiving light from said light
`emitting diodes and
`
`“An end of the each optical fiber 31 for
`constituting the optical fiber structure is
`disposed to face a vertically extended printed
`board 32, and a number of light emitting devices
`(LED devices) 33 mounted in the printed board
`32 are each embedded in an end of the each
`optical fiber 31.” See Ex. 1003 at para. [0007].
`
`
`
`15
`
`

`

`
`
`
`
`[1(d)] conducting the light from
`said edge for emission of the
`light from at least one of said
`sides,
`
` “…and can reflect the portion of the light to a
`front surface side of the optical fiber, that is, to
`a front surface side of the optical fiber
`structure.” See Ex. 1003 at para. [0008]
`(emphasis added).
`
`
`
`16
`
`

`

`[1(e)] a plurality of light
`extracting deformities on at
`least one of said sides, said
`deformities having shapes for
`controlling an output ray angle
`distribution of emitted light to
`suit a particular application, and
`
`[1(f)] a transparent substrate
`overlying at least one of said
`sides, said substrate providing
`an exterior portion of a vehicle
`for vehicle illumination at said
`exterior portion.
`
`
`
`“…on a rear surface of the each optical fiber 31,
`wedge-shaped total reflection steps 35, each
`having an inclined surface inclined at 45
`degrees with respect to an optical axis, are
`formed to be aligned in a longitudinal direction
`of the optical fiber 31. The total reflection step
`35 can totally reflect a portion of the light
`transmitted through the inside of the optical
`fiber 31 by the inclined surface, and can reflect
`the portion of the light to a front surface side of
`the optical fiber, that is, to a front surface side
`of the optical fiber structure.” See Ex. 1003 at
`para. [0008] (emphasis added).
`
`“…2 denotes an outer lens that is mounted on a
`front edge of the lamp body 1, and defines a thin
`space in a front-rear direction between the lamp
`body 1 and the outer lens 2. A required
`diffusion step is formed on an inner surface of
`the outer lens 2, and is configured in this
`embodiment such that a number of vertically
`directed columnar steps 21 (see Fig. 5) are
`disposed in a lateral direction, for example.”
`See Ex. 1003 at para. [0006] (emphasis added).
`
`
`
`“In this embodiment, as shown in Fig. 1, the
`light source unit 3 is configured by two light
`
`17
`
`

`

`source units 3A, 3B, and the light source unit
`3A is configured as a stop & tail lamp while the
`light source unit 3B is configured as a turn
`signal lamp. Accordingly, the LED device 33
`corresponding to the stop & tail lamp is
`configured by a red LED while the LED device
`33 corresponding to the turn signal lamp is
`configured by a yellow LED.” See Ex. 1003 at
`para. [0008].
`
`
`“In these drawings, 1 denotes a lamp body that
`is formed by molding a resin or the like in a
`partially curved shallow disc shape and that is
`configured to be attachable and removable
`along with a lateral surface of an automobile
`body.” See Ex. 1003 at para. [0006] (emphasis
`added).
`
`CLAIM 5
`
`JP ’602
`
`[5(a)] The assembly of claim 1
`
`See [1(a)]–[1(f)]
`
`[5(b)] wherein said substrate
`covers said at least one of said
`sides.
`
`See the outer cover 2 and optical fibers 31 as
`shown in FIG. 1.
`
`
`
`
`
`
`
`
`
`18
`
`

`

`
`
`CLAIM 6
`
`[6(a)] The assembly of claim 1
`
`See [1(a)]–[1(f)]
`
`
`
`JP ’602
`
`[6(b)]wherein said deformities
`are at least one of depressions
`and raised surfaces on at least
`one of said sides.
`
`“…on a rear surface of the each optical fiber 31,
`wedge-shaped total reflection steps 35, each
`having an inclined surface inclined at 45
`degrees with respect to an optical axis, are
`formed to be aligned in a longitudinal direction
`of the optical fiber 31. The total reflection step
`35 can totally reflect a portion of the light
`transmitted through the inside of the optical
`fiber 31 by the inclined surface, and can reflect
`the portion of the light to a front surface side of
`the optical fiber, that is, to a front surface side
`of the optical fiber structure.” See Ex. 1003 at
`para. [0008] (emphasis added).
`
`CLAIM 9
`
`JP ’602
`
`[9(a)] The assembly of claim 1 See [1(a)]–[1(f)]
`
`[9(b)] wherein said light
`emitting diodes are attached to a
`circuit.
`
`“An end of the each optical fiber 31 for
`constituting the optical fiber structure is
`disposed to face a vertically extended printed
`board 32, and a number of light emitting devices
`(LED devices) 33 mounted in the printed board
`32 are each embedded in an end of the each
`
`19
`
`

`

`optical fiber 31.” See Ex. 1003 at para. [0007]
`(emphasis added).
`
`CLAIM 31
`
`JP ’602
`
`[31(a)] The assembly of claim 1 See [1(a)]–[1(f)]
`
`[31(b)] wherein said substrate
`provides protection for the light
`guide.
`
`See [5(b)]; FIG. 1.
`
`B. Ground 2: Claims 4, 16 and 21 are Obvious under 35 U.S.C. §
`103(a) by JP ’602 in view of Pristash (Ex. 1003 and Ex. 1007)
`
`Claims 4, 16 and 21 are unpatentable under 35 U.S.C. 103(a) as being
`
`obvious by JP ’602 in view of Pristash.
`
`Ground 2 is non-cumulative to Ground 1 at least because it addresses
`
`different claims from the claims addressed in Ground 1.
`
`1. Brief Overview of Pristash
`
`
`
`The first named inventor of the ’956 patent, Jeffery R. Parker, is one of the
`
`named inventors of Pristash. It is therefore not surprising that many of the
`
`concepts in the ’956 patent were previously disclosed by Pristash. For example,
`
`Pristash describes a thin panel illuminator including a solid transparent panel
`
`member for conducting light and an extractor means (i.e., coating, lens or film) for
`
`causing light conducted by the panel member to be emitted along the length
`
`thereof. See Ex. 1007 at 1: 6–10. The panel member (e.g., film 52 or waveguide
`
`67) directs light in a direction determined by its boundaries, whereas the extractor
`
`20
`
`

`

`means (e.g., prismatic film 60 or extractor 68) causes the light to be emitted from
`
`the wave guide. See Ex. 1007 at 6: 64–7:8. These are the same features that the
`
`’956 patent shows at the right hand side of FIG. 4. Ex 1007 at FIG. 4 (i.e., light
`
`guide 29 and substrate 34).
`
`
`
`Pristash discloses several different embodiments of a panel illuminator
`
`including a panel member combined with an extractor. The various different panel
`
`illuminators are disclosed as being “less expensive to make and and/or provide for
`
`better control over light output from the panel” than generally known light emitting
`
`panels. See Ex. 1007 at 1:10–14. The panel illuminators may be used for “safety
`
`lighting for both commercial and industrial, as well as automotive applications.”
`
`See Ex. 1007 at 8:20–22. Two embodiments of Pristash’s panel illuminators are
`
`discussed below.
`
`In a first embodiment, Pristash at FIG. 7 (reproduced above) illustrates a
`
`light emitting panel 50 including a solid transparent prismatic film 51
`
`
`
`21
`
`

`

`(corresponding to the recited “light guide”) having a prismatic surface 52 on an
`
`upper side and a back reflector 53 on a lower side. Ex 1007 at 5:6–11. Light rays
`
`(shown with arrows) enter the transparent prismatic film 51 from one or both end
`
`edges 55, 56, and are internally reflected until the light rays strike an edge 54
`
`(which Pristash describes as a “deformity”) of the panel prismatic surfaces 52,
`
`causing the light rays to be emitted. Ex 1007 at 5:11–16. A second prismatic film
`
`60 (corresponding to the recited “substrate”) is disposed in close proximity to the
`
`panel prismatic surface 52 to “shift the angular emission of light toward a
`
`particular application.” Ex 1007 at 5:22–25 (see claim 4 of the ’956 patent). A gap
`
`between the second prismatic film 60 and the first prismatic film or wave guide 51
`
`can be filled with an epoxy. See Ex 1007 at 5:25–27. Multiple prismatic films 60
`
`may be used in place of the single prismatic film 60. See Ex 1007 at 5:30–33 (see
`
`claim 21 of the ’956 patent). Pristash expressly teaches that “the size, shape and
`
`depth of the wave guide deformities 52 may be varied along the length of the panel
`
`to produce a desired light output distribution.” Ex 1007 at 5:17–19 (see claim 16 of
`
`the ’956 patent).
`
`22
`
`
`
`

`

`In a second embodiment, Pristash at FIG. 8 (reproduced above) discloses a
`
`thin panel illuminator 61 including “a light emitting panel 62 and a transition
`
`device 63 for transmitting light from a light source 64 . . . to [a] panel input surface
`
`(end edge) 66.” Ex 1007 at 5:36–40. The light emitting panel 62 includes a
`
`laminated structure with a solid transparent wave guide 67 and extractor 68 joined
`
`together by an adhesive layer 69. See Ex 1007 at 5:40–44 (see claim 4 of the ’956
`
`patent). The extractor 68 may be joined to the wave guide 67 by various other
`
`methods including clamping, fastening, heat sealing and solvent gluing. See Ex
`
`1007 at 5:51–56.
`
`Light (shown with an arrow in FIG. 8 above) that enters the wave guide 67
`
`from the transition device 63 is internally reflected until the light strikes the wave
`
`guide-extractor interface 70 and is emitted from the thin panel illuminator 61. See
`
`Ex 1007 at 5:44–48. The extractor 68 may consist of one or more coatings applied
`
`directly to selected areas of the top or bottom surfaces of the wave guide 67. (Ex
`
`1007 at 5:51–56. Consistent with the previous embodiment, Pristash teaches the
`
`extractor 68 may vary in frequency, index of refraction, color, and/or shape along
`
`the length of the panel 62. See Ex 1007 at 5:57–59.
`
`
`
`23
`
`

`

`2. Claims 4, 16 and 21 are Obvious under 35 U.S.C. § 103(a) by
`JP ’602 in view of Pristash (Ex. 1004 and Ex. 1007)
`
`As shown in the charts and discussion below, dependent claims 4, 16 and 21
`
`of the ’956 patent are obvious under 35 U.S.C. § 103(a) by JP ’602 in view of
`
`Pristash. Each of the elements in claims 4, 16 and 21 is found in either JP ’602 or
`
`Pristash, and for the following reasons it would have been obvious to combine
`
`these references in order to arrive at the features defined in claims 4, 16 and 21.
`
`As discussed in detail in Ground 1, JP ’602 discloses optical fibers 31
`
`(corresponding to the recited “light guide”) and an outer lens 2 (corresponding to
`
`the recited “substrate”) required by independent claim 1 of the ’956 patent. Claim
`
`4 recites that “said substrate is positioned against said light guide.”
`
`Pristash at FIG. 7 discloses a light emitting panel 50 made up of a second
`
`prismatic film 60 (“substrate”) that is directly connected with a panel prismatic
`
`surface 52 (“light guide”) via an epoxy 61. Likewise, FIG. 8 of Pristash discloses
`
`a light emitting panel 62 including a laminated structure with a solid transparent
`
`wave guide 67 (“light guide”) and extractor 68 (“substrate”) joined together by an
`
`adhesive layer 69. As discussed above, Pristash discloses that these panel
`
`illuminators are “less expensive to make and and/or provide for better control over
`
`light output from the panel” than generally known light emitting panels. See Ex.
`
`1007 at 1:10–14.
`
`24
`
`

`

`As discussed in the Declaration of Dr. Carome (Ex. 1008 at para. #42), it
`
`would have been obvious from the teachings in Pristash (as well as from the level
`
`of ordinary skill in the art) to physically combine the optical fibers 31 (“light
`
`guide”) and outer lens 2 (“substrate”) of JP ’602, which are already arranged
`
`togeth