REQUEST FOR INTER PARTES REVIEW
`
` 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
`
`
`
` DECLARATION OF EDWARD F. CAROME, PHD. IN SUPPORT OF
`KOITO MANUFACTURING CO., LTD. AND STANLEY ELECTRIC CO.,
`LTD.
`
`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
`
`
`
`
`Petitioners Koito et al. - Exhibit 1008 - Page 1
`
`

`
`Declaration of Edward F. Carome.
`U.S. Patent No. 6,886,956
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`INTRODUCTION AND BACKGROUND ............................................................................ 1
`
`SUMMARY OF MY OPINIONS ............................................................................................ 2
`
`A.
`
`B.
`
`Instructions ...............................................................................................................2
`
`Effective Filing Dates and Prior Art Patents and Printed
`Publications ..............................................................................................................7
`
`I.
`
`SUMMARY OF THE '956 PATENT ...................................................................................... 8
`
`A.
`
`B.
`
`Brief Description ......................................................................................................8
`
`Summary of the Prosecution History of the '956 patent ........................................11
`
`II.
`
`CLAIM CONSTRUCTION ................................................................................................... 12
`
`A.
`
`“light extracting deformities" (claim 1) ................................................................14
`
`III.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '956 PATENT IS UNPATENTABLE ...................................................... 15
`
`A.
`
`Ground 1: Claims 1, 5, 6, 9 and 31 are Anticipated Under 35
`U.S.C. § 102(b) by JP ‘602 ....................................................................................15
`
`1.
`
`2.
`
`Brief Overview Of JP ‘602 ........................................................................15
`
`Claims 1, 5, 6, 9 and 31 are Anticipated by JP ‘602 ..................................15
`
`B.
`
`Ground 2: Claims 4, 16 and 21 are Obvious under 35 U.S.C. §
`103(a) by JP ‘602 in view of Pristash ....................................................................25
`
`1.
`
`2.
`
`Brief Overview of Pristash.........................................................................25
`
`Claims 4, 16 and 21 are Obvious under 35 U.S.C. § 103(a)
`by JP ‘602 in view of Pristash....................................................................29
`
`C.
`
`Ground 3: Claims 1, 5, 6, 9, 16, 21 and 31 are unpatentable as
`obvious by JP '004 in view of JP '602 ....................................................................34
`
`1.
`
`2.
`
`Brief Overview Of JP ‘004 ........................................................................34
`
`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 ....................................37
`
`D.
`
`Ground 4: Claim 4 is Obvious under 35 U.S.C. § 103(a) over JP
`‘004 and JP '602 in view of Pristash) .....................................................................46
`
`IV.
`
`CONCLUSION....................................................................................................................... 48
`
`ii
`
`Petitioners Koito et al. - Exhibit 1008 - Page 2
`
`

`
`Declaration of Edward F. Carome.
`U.S. Patent No. 6,886,956
`
`
`EXHIBITS AND ATTACHMENTS
`
` I
`
` may refer to the following Exhibits that I understand were submitted by
`Petitioners in connection with this IPR.
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`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”)
`
`
`
`ATTACHMENT A: CV of Edward F. Carome, Ph.D.
`
`
`
`iii
`
`Petitioners Koito et al. - Exhibit 1008 - Page 3
`
`

`
`
`Request for Inter Partes Reexamination
`of U.S. Patent No. 6,886,956
`
`
`I. INTRODUCTION AND BACKGROUND
`
`
`
`
`
`1. I have been retained by counsel for Petitioners Koito Manufacturing Co., Ltd.
`
`and Stanley Electric Co., Ltd. ("Petitioners"), and asked to review and opine on
`
`the patentability/patentability of claims 1, 4, 5, 6, 9, 16, 21 and 31 of U.S.
`
`Patent No. 6,886,956 (Ex. 1001, “the ‘956 Patent”). I am being reimbursed for
`
`my time at my normal consulting rate of $350 per hour. My pay is in no way
`
`contingent on the outcome of this proceeding.
`
`2. I am Emeritus Professor of Physics at John Carroll University and was a
`
`member of the University's Lighting Innovations Institute throughout its
`
`existence from 1996 through August 2014. I am also working as a Senior
`
`Scientist at Light Innovations, LLC. I have been involved in advanced optical
`
`research since the mid -1960's and I have held various positions for my
`
`research and development work on advanced optical systems, especially
`
`lighting systems using light emitting diodes (LEDs).
`
`3. A more complete summary of my experience and expertise is set forth in my
`
`CV, which is attached as Attachment A to this Declaration.
`
`
`
`1
`
`Petitioners Koito et al. - Exhibit 1008 - Page 4
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`II. SUMMARY OF MY OPINIONS
`
`
`
`
`
`4. It is my opinion that claims 1, 4, 5, 6, 9, 16, 21 and 31 of the '956 Patent are
`
`unpatentable. My opinions are based on my expertise in the technology of the
`
`'956 Patent, as well as my review of the '956 Patent, its file history, and the
`
`prior art asserted by the Petitioners. If the patent owner is allowed to submit
`
`additional evidence pertaining to the patentability of the '956 Patent, I intend to
`
`review that as well and update my analysis and conclusions as appropriate and
`
`allowed under the rules of this proceeding.
`
`A. Instructions
`
`5. I am not an attorney. My analysis and opinions are based on my expertise in
`
`this technical field, as well as the instructions I have been given by counsel for
`
`the legal standards relating to patent patentability.
`
`6. The materials I have reviewed in connection with my analysis include the
`
`'956 Patent, its file history, and the cited references and exhibits.
`
`7. I understand that patents are presumed to be valid. I understand that
`
`unpatentability in this proceeding must be proven by a preponderance of
`
`evidence, and that is the standard I have used throughout my report. Further, I
`
`2
`
`Petitioners Koito et al. - Exhibit 1008 - Page 5
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`understand that each patent claim is considered separately for purposes of
`
`unpatentability.
`
`8. My analysis hereinbelow assumes 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 / Electrical
`
`engineering or Applied Physics or equivalent coursework and at least two years
`
`of experience in the lighting field.
`
`9. I am informed that a patent claim is unpatentable as “anticipated” if each and
`
`every feature of the claim is found, expressly or inherently, in a single prior art
`
`reference or product. Claim limitations that are not expressly found in a prior
`
`art reference are inherent if the prior art necessarily functions in accordance
`
`with, or includes, the claim limitations.
`
`10. I understand that a patent claim is unpatentable as “obvious” if, in view of
`
`a prior art reference or a combination of prior art references, it would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention,
`
`taking into account:
`
`• the scope and content of the prior art;
`
`• the differences between the prior art and the claim under consideration
`
`3
`
`Petitioners Koito et al. - Exhibit 1008 - Page 6
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`• the level of ordinary skill in the art.
`
`
`
`
`
`11. I am informed that legal principles regarding unpatentability of a claim due
`
`to obviousness were addressed by the U.S. Supreme Court. I am informed that
`
`the principles relating to a “motivation,” “suggestion,” or “teaching” in the prior
`
`art to combine references to produce the claimed alleged invention remain an
`
`appropriate approach in a patentability analysis. I am informed that the
`
`suggestion or motivation may be either explicit or implicit, may come from
`
`knowledge generally available to one of ordinary skill in the art, and may come
`
`from the nature of the problem to be solved. The test for an implicit motivation,
`
`suggestion, or teaching is what the combined teachings, knowledge of one of
`
`ordinary skill in the art, and the nature of the problem to be solved as a whole
`
`would have suggested to those of ordinary skill in the art. The problem
`
`examined is not the specific problem solved by the invention, but the general
`
`problem that confronted the inventor before the invention was made.
`
`12. I am informed, however, that the U.S. Supreme Court clarified that
`
`additional principles may also be applied in such an analysis. I set forth some
`
`such additional principles below.
`
`4
`
`Petitioners Koito et al. - Exhibit 1008 - Page 7
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`13. As I understand it, it is no longer always required to present evidence of a
`
`
`
`
`
`teaching, suggestion, or motivation to combine prior art references for purposes
`
`of determining whether an invention is obvious. Prior art can be combined
`
`based on either a teaching, suggestion, or motivation from the prior art itself, or
`
`from a reasoned explanation of an expert or other witness.
`
`14. A patent claim composed of several elements, however, is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art. In order to prove obviousness, it must be shown that the
`
`improvement is not more than the predictable use of prior-art elements
`
`according to their established functions. To determine whether there was an
`
`apparent reason to combine the known elements in the way a patent claims, it
`
`will often be necessary to look to interrelated teachings of multiple pieces of
`
`prior art, to the effects of demands known to the design community or present
`
`in the marketplace, and to the background knowledge possessed by a person
`
`having ordinary skill in the art. Also, in determining obviousness, one must be
`
`aware of the distortion caused by hindsight bias and be cautious of arguments
`
`reliant upon hindsight reasoning. An obviousness argument cannot be sustained
`
`5
`
`Petitioners Koito et al. - Exhibit 1008 - Page 8
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`by mere conclusory statements. Instead, it must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.
`
`15. In an obviousness analysis, it is my understanding that there are “secondary
`
`considerations” that should be analyzed if they apply. I am told that these
`
`considerations include (1) whether the prior art teaches away from the claimed
`
`invention, (2) whether there was a long felt but unresolved need for the claimed
`
`invention, (3) whether others tried but failed to make the claimed invention, (4)
`
`skepticism of experts, (5) whether the claimed invention was commercially
`
`successful, (6) whether the claimed invention was praised by others, and (7)
`
`whether the claimed invention was copied by others.
`
`16. I have also been instructed that in the instant Inter Partes Review, claims
`
`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 construed in light of how one of ordinary skill in the art would
`
`understand the claims. Therefore, it is my understanding that what is to be
`
`considered includes the claims, the patent specification and drawings, and the
`
`prosecution history, including any art listed by the Examiner or the applicant. It
`
`6
`
`Petitioners Koito et al. - Exhibit 1008 - Page 9
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`is my understanding that information external to the patent, including expert
`
`and inventor testimony and unlisted prior art, are to be considered in construing
`
`the claims only if ambiguities remain. However, expert testimony may be
`
`useful in helping to explain the technology. I further understand technical
`
`dictionaries, encyclopedias, and treatises may also be used in claim
`
`construction, as long as these definitions do not contradict any definition found
`
`in or ascertained by a reading of the patent documents. In my analysis, I have
`
`considered and applied the proposed claim constructions of the Petitioners,
`
`unless otherwise indicated.
`
`B. Effective Filing Dates and Prior Art Patents and Printed
`Publications
`
`17. I am informed that 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, 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);
`
`7
`
`Petitioners Koito et al. - Exhibit 1008 - Page 10
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`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.
`
`18. The chart below summarizes my conclusions of unpatentability.
`
`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
`
`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
`
`Ground 4
`
`
`
`I. SUMMARY OF THE '956 PATENT
`
`A. Brief Description
`
`19. 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
`
`8
`
`Petitioners Koito et al. - Exhibit 1008 - Page 11
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`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.
`
`
`
`
`
`20. 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 their length . . . to produce a desired light output distribution
`
`to fit a particular application." Ex 1001 at 4:59–65.
`
`9
`
`Petitioners Koito et al. - Exhibit 1008 - Page 12
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`21. 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
`
`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
`
`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 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.
`
`10
`
`Petitioners Koito et al. - Exhibit 1008 - Page 13
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`B.
`
`Summary of the Prosecution History of the '956 patent
`
`
`
`
`
`22. 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.
`
`23. 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.
`
`11
`
`Petitioners Koito et al. - Exhibit 1008 - Page 14
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`24. 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 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 the application, which issued as the
`
`subject patent.
`
`II. CLAIM CONSTRUCTION
`
`25. I am informed that an Inter Partes Review of an expired patent, the claims
`
`are construed using the Phillips standard, as in Federal District Court. The '956
`
`12
`
`Petitioners Koito et al. - Exhibit 1008 - Page 15
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`patent is subject to a terminal disclaimer, disclaiming any term of the patent
`
`after June 27, 2015, the expiration date of US Patent No. 5,613,751. Thus, if
`
`Inter Partes Review is instituted, 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 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.”
`
`26. As stated earlier in paragraph #8, 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 / Electrical
`
`engineering or Applied Physics or equivalent coursework and at least two years
`
`of experience in automotive the lighting field.
`
`27. I am informed that the Petitioners submit that the following terms may
`
`need to be construed in connection with this IPR:
`
`13
`
`Petitioners Koito et al. - Exhibit 1008 - Page 16
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`A.
`
`“light extracting deformities" (claim 1)
`
`
`
`
`
`28. 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. Ex 1001 at 5:38-
`
`41. 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." See 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.
`
`
`
`14
`
`Petitioners Koito et al. - Exhibit 1008 - Page 17
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`III. 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
`
`29. 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 optical fibers 31. See Ex.
`
`1003 at paragraph [0009].
`
`
`
`
`
`2. Claims 1, 5, 6, 9 and 31 are Anticipated by JP ‘602
`
`30. It is my opinion that 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
`
`15
`
`Petitioners Koito et al. - Exhibit 1008 - Page 18
`
`

`
`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
`
`
`
`
`
`
`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.
`
`31. Referring to annotated FIGS. 3 and 5 reproduced below, JP ‘602 discloses
`
`
`
`an unnumbered surface (corresponding to “a light input surface” in the
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`annotated FIG. 4 above), provided between a transparent short column 34 and a
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`corresponding optical fiber 31 along at least one edge of the optical fiber 31.
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`See Ex. 1003 at paragraph [0007]; FIG. 4. The light from light emitting diodes
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`33 enters the corresponding optical fiber 31 through the “light input surface”
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`16
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`provided between the transparent short column 34 and the corresponding
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`optical fiber 31. Light emitting diodes (LEDs) 33 are provided along the
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`unnumbered surface ("light input surface"). The “light input surface” receives
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`light from these LEDs and conducts the light from the edge of the optical fiber
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`for emission of the light from the second surface described above as the surface
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`opposing the surface with reflection steps 35, and as shown below in FIG. 5
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`with the arrows being emitted therefrom . As shown in FIG. 3 below, the light
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`emitting diodes 33 are connected to a printed board 32. See Ex. 1003 at
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`paragraph [0007]. A person having ordinary skill would understand that a
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`printed board 32 is a circuit board for controlling the LEDs (claim 9).
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`32. The reflecting steps 35 are notches or “depressions” (claim 6) formed in the
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`optical fibers 31, as shown in FIG. 5. Each reflecting step 35 includes an
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`inclined surface thereby forming a prismatic device for controlling an output
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`ray angle distribution of emitted light to suit a particular application. See Ex.
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`1003 at paragraph [0008]. JP ‘602 also discloses a lens 2 (shown above in FIG.
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`5) corresponding to the claimed “transparent substrate”, which overlies and
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`covers the second surface of the optical fiber 31 (claims 1, 2 and 5). The lens 2
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`is an outer lens of an automobile rear lamp and therefore provides an exterior
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`portion of the vehicle for vehicle illumination. See Ex. 1003 at paragraph
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`[0006].
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`33. Referring to FIGS. 1 and 2 reproduced below, FIG. 1 is a partially
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`exploded perspective view of a rear lamp of an automobile, and FIG. 2 is a
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`perspective view in an assembled state. Optical fibers 31 are provided between
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`lamp body 1 and outer lens 2. Outer lens 2 covers and therefore protects light
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`source unit 3 and is the outer lens of a vehicle stop/tail/turn light device (claim
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`31). See Ex. 1003 at FIG. 1; paragraph [0006].
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`34. The tables below show how each limitation of claims 1, 5, 6, 9 and 31 is
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`taught by JP ‘602.
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`CLAIM 1
`[1(a)] A light emitting assembly
`for vehicle illumination
`comprising
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`[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
`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
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`embedded is adhered to the end of the each
`optical fiber 31 by a transparent adhesive.” See
`Ex. 1003 at para. [0007] (emphasis added).
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`
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`[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].
`
`
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`[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).
`
`
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`[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
`22
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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`light source unit 3 is configured by two light
`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).
`
`JP ’602
`
`See [1(a)]–[1(f)]
`See the outer cover 2 and optical fibers 31 as
`shown in FIG. 1.
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`23
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`
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`CLAIM 5
`[5(a)] The assembly of claim 1
`[5(b)] wherein said substrate
`covers said at least one of said
`sides.
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`Petitioners Koito et al. - Exhibit 1008 - Page 26
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`

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`Declaration of Edward F. Carome, PhD
`Re U.S. Patent No. 6,886,956
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`CLAIM 6
`[6(a)] The assembly of claim 1
`[6(b)]wherein said deformities
`are at least one of depressions
`and raised surfaces on at least
`one of said sides.
`
`
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`JP ’602
`
`See [1(a)]–[1(f)]
`“…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