Case IPR2015-00575
`Pat. 6,886,956
`Filed on behalf of Innovative Display Technologies LLC
`By: David E. Warden (dwarden@azalaw.com)
`
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`
`1221 McKinney, Suite 3460
`
`Houston, TX 77010
`
`Tel: (713) 655-1101
`
`Facsimile: (713) 655-0062
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`KOITO MANUFACTURING CO. LTD. and STANLEY ELECTRIC CO. LTD.
`Petitioners,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`______________
`
`Case IPR2015-00575
`Patent 6,886,956
`______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`

`

`Case IPR2015-00575
`Pat. 6,886,956
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`
`I.
`
`II. THE PETITION FAILS TO IDENTIFY A REAL PARTY-IN-INTEREST .. 2
`
`III. THE PETITION FAILS TO MAKE A PRIMA FACIE CASE OF
`INVALIDITY .................................................................................................. 5
`
`A. Overview of the ’956 Patent ............................................................................. 5
`
`B. Overview of the Petition ................................................................................... 6
`
`C. Claim Construction ........................................................................................... 8
`
`D. Brief Overview of Petitioners’ References .................................................... 10
`
`1. JP ’602 ......................................................................................................... 10
`
`2. Pristash ........................................................................................................ 11
`
`3. JP ’004 ........................................................................................................11
`
`IV. GROUND 2: JP ’602 IN VIEW OF PRISTASH .......................................... 12
`
`A. Claim 4 ........................................................................................................... 12
`
`B. Claim 16 ......................................................................................................... 14
`
`C. Claim 21 ......................................................................................................... 17
`
`V. GROUND 3: JP ’004 IN VIEW OF JP ’602 ................................................. 19
`
`A. Claim 1 ........................................................................................................... 19
`
`B. Claims 5, 6, 9, 16, 21 and 31 .......................................................................... 21
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`VI. CONCLUSION .............................................................................................. 21
`
`
`
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`Case IPR2015-00575
`Pat. 6,886,956
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Askeladden LLC v. McGhie et al.,
` Case IPR2015-00122 (PTAB Feb. 17, 2015) ......................................................... 2
` 
`Atlanta Gas Light Co. v. Bennett Regulator Guards Inc.,
` Case IPR2013-00453 (PTAB Jan. 6, 2015) ............................................................ 2
` 
`Innovative Display Technologies LLC v. Hyundai Motor Co. et al.,
` No. 2:14-cv-201 (E.D. Tex.) ................................................................................... 9
` 
`Zoll Lifecor Corp. v. Phillips Elec. N. America Corp.,
` Case IPR2013-00609, Paper 15 at p.11 (PTAB -----) ............................................ 4
` 
`Other Authorities
`
`Office Trial Practice Guide ........................................................................................ 2
`
`Regulations
`
`77 Fed. Reg. 48756 .................................................................................................... 2
`
`77 Fed. Reg. 48759 .................................................................................................... 2
`
`
`ii
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`Case IPR2015-00575
`Pat. 6,886,956
`
`
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`PATENT OWNER’S EXHIBITS
`
`
`Description
`Nissan Motor Co., Ltd and Nissan North America, Inc.’s Third
`Party Complaint, Innovative Display Technologies LLC v.
`Hyundai Motor Co. et al., No. 2:14-cv-201 (E.D. Tex.)
`Stanley Electric U.S. Co. Inc.’s Corporate Disclosure
`Statement, Innovative Display Technologies LLC v. Hyundai
`Motor Co. et al., No. 2:14-cv-201 (E.D. Tex.)
`Stanley Electric Sales of America Inc.’s Corporate Disclosure
`Statement, Innovative Display Technologies LLC v. Hyundai
`Motor Co. et al., No. 2:14-cv-201 (E.D. Tex.)
`Stanley Electric Co. Ltd.’s Corporate Disclosure Statement,
`Innovative Display Technologies LLC v. Hyundai Motor Co. et
`al., No. 2:14-cv-201 (E.D. Tex.)
`Claim Construction Order, Innovative Display Technologies
`LLC v. Hyundai Motor Co. et al., No. 2:14-cv-201 (E.D. Tex.)
`(Dkt. 244)
`Certified Translation of French Patent No. 1,474.,359 – Erwin
`Hitzelberger
`
`iii
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`Case IPR2015-00575
`Pat. 6,886,956
`I.
`INTRODUCTION
`
`
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner
`
`Innovative Display Technologies LLC (“Patent Owner” or “IDT”) hereby files this
`
`preliminary response to the petition for Inter Partes Review of U.S. Patent No.
`
`6,886,956 (“the Petition”) in IPR2015-00575 filed by Koito Manufacturing Co.
`
`Ltd. and Stanley Electric Co. Ltd. (“Petitioners”).
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 6,886,956 (“the ’956 patent”) because it fails to
`
`identify all real parties-in-interest. In addition, while Patent Owner believes that
`
`the Petition does not demonstrate a reasonable likelihood of the challenged claims
`
`being invalid, Patent Owner raises specific arguments with respect to at least with
`
`respect to Claims 4, 16 and 21 of the patent to address issues that may not be
`
`readily apparent from the Petition itself.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is filed within three months of the February 6, 2015 date of the Notice of Filing
`
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response
`
`(Paper No. 5). In this Preliminary Response, Patent Owner has limited its
`
`identification of the deficiencies in Petitioners’ arguments. Patent Owner does not
`
`intend to waive any arguments by not addressing them in this Preliminary
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`Case IPR2015-00575
`Pat. 6,886,956
`Response, and Patent Owner intends to raise additional arguments in the event this
`
`IPR is instituted.
`
`
`
`II. THE PETITION FAILS TO IDENTIFY A REAL PARTY-IN-INTEREST
`
`The Petitioners of this Request are Koito and Stanley Electric. Petition at 1.
`
`The Petition also lists North American Lighting Inc., Stanley Electric U.S. Co. Inc.
`
`(“Stanley U.S.”), I I Stanley Co. Inc. (“I I Stanley”) and Stanley Electric Holding
`
`of America Inc. (“Stanley Holding”) as real parties-in-interest. Id. The
`
`Petitioners, however, omit at least one other real party-in-interest: Stanley Electric
`
`Sales of America Inc. (“Stanley SA”).
`
`
`
`The question of whether a party is an RPI is a highly fact-dependent
`
`question. Askeladden LLC v. McGhie et al., Case IPR2015-00122, Paper 16 at 2
`
`(PTAB Feb. 17, 2015). One important guidepost is that, “at a general level, the
`
`‘real party-in-interest’ is the party that desires review of the patent. Thus, the ‘real
`
`party-in-interest’ may . . . be the party or parties at whose behest the petition has
`
`been filed.” Atlanta Gas Light Co. v. Bennett Regulator Guards Inc., Case
`
`IPR2013-00453, Paper 88 at 7 (PTAB Jan. 6, 2015) (quoting Office Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012)). The PTAB has recognized
`
`that the “petitioner is more likely to be in possession of, or have access to,
`
`evidence that is relevant to the issue than is a patent owner.” Askeladden at 2.
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`2
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`Case IPR2015-00575
`Pat. 6,886,956
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`Here it is undeniable that Stanley SA is a party that desires review of the
`
`patents. In one of the related cases identified by Petitioners, defendants Nissan
`
`Motor Co. Ltd. and Nissan North America Inc. (collectively “Nissan”) filed a third
`
`party complaint against various part suppliers, including Stanley SA, seeking
`
`indemnification for patent infringement claims related to the ’563 patent. See
`
`Exhibit 2001 (Nissan’s Third-Party Complaint). There can be no doubt that
`
`Stanley SA, as a party against whom a customer is seeking indemnity,1 is a party
`
`who desires review of the patent.
`
`
`
`Stanley SA is no mere unrelated entity; it stands in the same corporate
`
`footing as other RPI’s identified by Stanley Electric as relevant to this proceeding.
`
`In the Petition, Stanley Electric lists its subsidiary Stanley Holding and Stanley
`
`U.S. as RPIs. See Petition at 1. In court filings, the Stanley entities have identified
`
`Stanley Holding as the 100% owner of both Stanley U.S and the unnamed RPI,
`
`Stanley SA. See Exhibits 2002 and 2003 (Corporate Disclosure Statements).
`
`Moreover, the same attorneys represent Petitioner Stanley Electric, Stanley U.S.,
`
`                                                            
`1 In its answer to the third-party complaint, Stanley SA has denied that it is a party
`to the indemnity contract with Nissan. Whether it prevails on that point in the
`lawsuit is of no import as it currently faces the prospect of litigation against Nissan
`that can be resolved by invalidating the underlying patent. As such, it is a party
`that would benefit from invalidating the patent in an IPR making it a party that
`desires review of the patent.
`
`3
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`Case IPR2015-00575
`Pat. 6,886,956
`and the unnamed RPI Stanley SA in that underlying lawsuit. See Exhibits 2002,
`
`2003 and 2004 (Corporate Disclosure Statements).
`
`
`
`These facts show that Stanley SA is in sufficient control of these
`
`proceedings to be considered a real-party-in-interest.2 As an actual co-party to
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`Stanley Electric in an underlying patent suit that led to this IPR, with shared
`
`counsel, and a unity of corporate ownership, Stanley SA has the “actual measure of
`
`control or opportunity to control that might reasonably be expected between two
`
`formal coparties.” Zoll Lifecor Corp. v. Phillips Elec. N. America Corp., Case
`
`IPR2013-00609, Paper 15 at p.11 (PTAB March 20, 2014). Moreover, treating
`
`Stanley SA as if it were not an RPI would lead to the very type of successive IPR
`
`filings that the inclusion of the privy and real party-in-interest provisions of the
`
`statute were intended to foreclose.
`
`                                                            
`2 To the extent that the Petitioners seek to amend their filings to add Stanley SA,
`patent owner respectfully requests briefing on the question of whether Petitioners
`are in privy with underlying defendants in the related cases such that the filing date
`of a correct petition would fall outside of the one-year deadline to file an IPR. The
`underlying defendants are Petitioners’ customers and are indemnified by
`Petitioners. While patent owner does not have the full details of the control that
`Petitioners have over the defense of the underlying cases, it appears to be more
`than merely providing for litigation costs as settlement talks with the underlying
`defendants have been turned over to Stanley Electric. Given that indicia of control,
`an analysis of the indemnity provisions as well of as the interaction between
`Petitioners and the defendants is relevant to determining whether or not the
`defendants are privies of Petitioners.
`
`4
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`Case IPR2015-00575
`Pat. 6,886,956
`III. THE PETITION FAILS TO MAKE A PRIMA FACIE CASE OF
`INVALIDITY
`
`To introduce its discussion of why the grounds in the Petition are
`
`insufficient, the Preliminary Response first provides a brief overview of the ’956
`
`patent, the Grounds alleged in the petition, claim construction matters, and the
`
`references cited in the Petition.
`
`A. Overview of the ’956 Patent
`
`
`
`U.S. Patent No. 6,508,956 (“the ’956 patent”) (Exhibit 1001) is directed to
`
`light emitting panel assemblies for automobile exterior lighting, and in particular to
`
`assemblies having particular properties including a light guide with an LED light
`
`source. The inventors are Jeffery R. Parker, Mark D. Miller and Thomas A.
`
`Hough. The patent matured from U.S. Application No. 10/298,367, filed on
`
`November 18, 2002, which claims priority to parent Application No. 08/585,062,
`
`filed on January 16, 1996 (now U.S. Patent No. 5,895,115).
`
`The ’956 patent was issued with 33 claims, of which claim 1 is an
`
`independent claims. While other claims will be addressed, the claims which this
`
`Preliminary Response will focus on are claims 1, 4, 16 and 21. These particular
`
`claims recite as follows:
`
`1. A
`illumination
`light emitting assembly for vehicle
`comprising a light guide having opposite sides 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
`
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`Case IPR2015-00575
`Pat. 6,886,956
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`diodes and conducting the light from said edge for
`emission of the light from at least one of said sides, 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 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.
`4. The assembly of claim 1 wherein said substrate is
`positioned against said light guide.
`16. The assembly of claim 1 wherein said substrate has
`deformities on at least one surface of said substrate, said
`deformities on said substrate having shapes for controlling
`an output ray angle distribution of emitted light to suit a
`particular application, at least some of the deformities on
`at least one of said light guide and said substrate varying
`relative to one another in at least one of the following
`characteristics: size, shape, placement, index of refraction,
`density, angle, depth, height and type.
`21. The assembly of claim 16 wherein more than one said
`substrate overlies said light guide.
`
`B. Overview of the Petition
`
`
`
`The Petition challenges claims 1, 4, 5, 6, 9, 16, 21 and 31 of the ’956 patent,
`
`and cites the following references as alleged prior art:
`
`Reference
`Japanese Patent JP H5-25602U
`
`Short name
`JP ’602
`
`Japanese Patent JP H1-92004U
`U.S. Patent No. 5,005,108 to
`Pristash et al.
`
`JP ’004
`
`Pristash
`
`Petition Exhibit No.
`1003 (Japanese document)
`1004 (English translation)
`1005 (Japanese document)
`1006 (English translation)
`1007
`
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`Case IPR2015-00575
`Pat. 6,886,956
`Specifically, the Petition alleges three grounds for review of the ’956 patent claims
`
`based on various combinations of the cited references. These allegations can be
`
`tabulated as follows:
`
`Challenged
`claim of the
`’956 patent
`1
`4
`5
`6
`9
`16
`21
`31
`
`Petitioners’
`Ground 1
`JP ’602
`
`JP ’602
`JP ’602
`JP ’602
`
`
`JP ’602
`
`Petitioners’
`Ground 2
`
`JP ’602 + Pristash
`
`
`
`JP ’602 + Pristash
`JP ’602 + Pristash
`
`
`Petitioners’
`Ground 3
`JP ’004 + JP ’602
`
`JP ’004 + JP ’602
`JP ’004 + JP ’602
`JP ’004 + JP ’602
`JP ’004 + JP ’602
`JP ’004 + JP ’602
`JP ’004 + JP ’602
`
`
`
`For the following reasons, which are discussed in more detail in the sections
`
`below, none of the grounds demonstrate a reasonable likelihood of claim 4, 16 or
`
`21 being invalid:
`
`Re Ground 1 (allegedly unpatentable under 35 U.S.C. § 102(b) as
`anticipated by JP ’602):
` No disclosure of element 31(b): “wherein said substrate provides
`protection for the light guide”
`
`Re Ground 2 (allegedly unpatentable under 35 U.S.C. § 103(a) as obvious
`over JP ’602 in view of Pristash):
` The Petition fails to establish that the combination of JP ’602 in
`view of Pristash would have been obvious
` No disclosure of element 4(b): “wherein said substrate is
`positioned against said light guide”
` No disclosure of element 16(c): “at least some of the deformities
`on at least one of said light guide and said substrate varying
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`Case IPR2015-00575
`Pat. 6,886,956
`
`the following
`least one of
`in at
`to one another
`relative
`characteristics: size, shape, placement, index of refraction, density,
`angle, depth, height and type”
` No disclosure of element 21(b): “wherein more than one said
`substrate overlies said light guide”
`
`Re Ground 3 (allegedly unpatentable under 35 U.S.C. § 103(a) as obvious
`over JP ’004 in view of JP ’602):
` The Petition fails to establish that the combination of JP ’004 in
`view of JP ’602 would have been obvious
` No disclosure of element 1(c): “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…”
` Therefore no disclosure of all the elements of dependent claims 5,
`6, 9, 16, 21 or 31
`
`C. Claim Construction
`
`For inter partes review, claim terms are given their broadest reasonable
`
`construction in light of the specification as it would be interpreted by one of
`
`ordinary skill in the art. Additionally, the words of the claim must be given their
`
`plain meaning that is consistent with the specification. The plain meaning of a
`
`term means the ordinary and customary meaning given to the term by those of
`
`ordinary skill in the art at the time of the invention. The ordinary and customary
`
`meaning of a term may be evidenced by a variety of sources, including the words
`
`of the claims themselves, the specification, drawings, and prior art.
`
`The Petition proposes construction of the term “light extracting deformities.”
`
`Petition at 9-10. The arguments in this Preliminary Response stand despite
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`Case IPR2015-00575
`Pat. 6,886,956
`Petitioners’ proposed construction and despite the broadest reasonable construction
`
`of the terms. This Preliminary Response does not take a position on claim
`
`construction at this point. Patent Owner reserves the right to challenge the claim
`
`construction asserted by the Petitioner and to propose its own construction of any
`
`and all claim terms for which an issue arises in the event the PTAB institutes this
`
`IPR.
`
`Patent Owner notifies the Board that the District Court in Innovative Display
`
`Technologies LLC v. Hyundai Motor Co. et al., No. 2:14-cv-201 (E.D. Tex.) (Dkt.
`
`244) has recently ruled on construction of one term in claim 1 of this patent. The
`
`Court has construed
`
`one or more light emitting diodes 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
`
`to mean:
`
`one or more light emitting diodes along said light input surface,
`wherein said light input surface receives light from said light
`emitting diodes and said light guide conducts the light from
`said edge for emission of the light from at least one of said
`sides.
`
`Dkt. 244 (Exhibit 2005) at 55.
`
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`Case IPR2015-00575
`Pat. 6,886,956
`D. Brief Overview of Petitioners’ References
`
`1.
`
`JP ’602
`
`The JP ’602 patent (Exhibit 1004) discloses a vehicle lamp in which
`
`illumination is provided by a stack of parallel optical fibers, as illustrated in Fig. 1.
`
`
`
`Each optical fiber receives light from an LED located at one end of the fiber, as
`
`illustrated in Fig. 3. Notably, the only type of light guiding elements contemplated
`
`in JP ’602 are optical fibers, which are depicted as uniformly cylindrical in shape.
`
`Figs. 4-5 are illustrative:
`
`
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`Case IPR2015-00575
`Pat. 6,886,956
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`2.
`
`Pristash
`
`The Pristash patent (Exhibit 1007) discloses flat illuminator panels that are
`
`rectangular in cross-section and substantially wider than they are thick. The
`
`following figures from Pristash are indicative:
`
`
`
`
`
`3.
`
`JP ’004
`
`
`
`
`
`Japanese patent JP ’004 (Exhibit 1006) discloses a corner head lamp
`
`assembly that includes a curved light guide 12, as shown in Fig. 1:
`
`
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`Case IPR2015-00575
`Pat. 6,886,956
`JP ’004 at Fig. 1 and 3:22 – 4:1. In each embodiment of JP ’004, the light source
`
`for the light guide is a conventional bulb.
`
`
`
`IV. GROUND 2: JP ’602 IN VIEW OF PRISTASH
`
`A. Claim 4
`
`Claim 4 requires that the “substrate is positioned against said light guide.”
`
`The Petition does not allege that JP ’602 disclosed this limitation. Fig. 7 of
`
`Pristash discloses an arrangement in which a prismatic film 60 is placed on top of a
`
`flat panel illuminator 51:
`
`5
`
`
`
`Pristash at Fig. 7 and 5:22-33. Petitioners suggest that a person of ordinary skill in
`
`the art would have replaced the vehicle lamp cover of JP ’602 with the type of film
`
`disclosed in Pristash. Petition at 24-25.
`
`Petitioners’ obviousness argument is flawed for multiple reasons. First, the
`
`two references deal with fundamentally different structures. JP ’602 is directed to
`
`a stack of optical fibers, “each of which has a circular cross section” and “each of
`
`which is formed of an acrylic resin or the like.” JP ’602 at 8:8-12. In contrast,
`
`Pristash describes a single flat-panel wave guide to which an overlying film is
`
`adhered. The Petition offers no evidence to suggest that such a film could be
`
`12
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`Case IPR2015-00575
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`equally made to reliably adhere in a optically effective way to a stack of multiple
`
`discrete fibers, particularly given the moisture, dust, oil, vibration and other
`
`conditions to which automobile parts are subjected.
`
`Second, the two references are directed to vastly different environments.
`
`The outer lens 2 in JP ’602 forms the exterior surface of an automobile lamp. As
`
`such, the lens must be impact resistant, weather resistant, and extremely durable
`
`under vibration, sun exposure, temperature extremes and other road conditions. In
`
`contrast, the overlay in Pristash is described as a “film”, and the only specific
`
`application shown in Pristash is a phototherapy blanket for babies. See Pristash at
`
`Fig. 20 and 8:32-49. The Petition provides no evidence that a person or ordinary
`
`skill would have any reasonable expectation that the wave guide “film” disclosed
`
`in Pristash would be even remotely suitable for the automobile lamp cover of JP
`
`’602 and of the ’956 patent. Far from having “predictable” results as the Petition
`
`alleges (Petition at 25), replacing the automobile lens cover in JP ’602 with the
`
`adhesive film of Pristash would be a hopeful experiment at best.
`
`Third, the Petition fails to show any plausible motivation to combine the two
`
`references. The only stated purpose of the film overlay in Pristash is “to shift the
`
`angular emission of light toward a particular application.” Pristash at 5:22-25. But
`
`in JP ’602 this purpose is already fully met by the design of outer lens cover 2. See
`
`JP ‘602 at 10:11-13 (“since the columnar steps 21 are arranged in the lateral
`
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`Case IPR2015-00575
`Pat. 6,886,956
`direction in the outer lens 2, the light from the light source unit 3 can be diffused to
`
`a right and left direction in the outer lens 2”). There is simply no suggestion in JP
`
`’602, and no evidence in the Petition, that any other manipulation of the light from
`
`the optical fibers is needed or desired. The additional assertion by Petitioners
`
`expert that the Pristash film provides “increased mechanical stability” (Carome
`
`Decl. ¶42, cited in Petition at 25) is a conclusory statement wholly unsupported by
`
`reasoning or evidence. Petitioners have failed to show that an artisan working on
`
`an automobile lamp cover would have any plausible reason to look to a “film” used
`
`in baby blankets as relevant art.
`
`B. Claim 16
`
`Claim 16 requires that “at least some of the deformities on at least one of
`
`said light guide and said substrate varying relative to one another in at least one of
`
`the following characteristics: size, shape, placement, index of refraction, density,
`
`angle, depth, height and type.” This limitation is denoted as element 16(c) in the
`
`Petition. The Petition does not allege that JP ’602 disclosed this limitation.
`
`Pristash mentions in passing and without illustration 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.” Pristash at 5:17–19.
`
`Petitioners argue that it would have been obvious to modify the stacked optical
`
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`Case IPR2015-00575
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`fibers in JP ’602 to incorporate the variations alluded to for the flat wave guide
`
`panel in Pristash. Petition at 26.
`
`Again, Petitioners obviousness argument fails for multiple reasons. First,
`
`the two references deal with fundamentally different structures. Pristash describes
`
`a single flat-panel wave guide. Although the disclosure in Pristash regarding the
`
`details of such variations is minimal, it may be assumed for argument that a surface
`
`of such an illuminating panel could be cast or machined to include deformities that
`
`vary in a desired way. However, JP ’602 presents a much different structure: a
`
`stack of multiple, undifferentiated optical fibers, “each of which has a circular
`
`cross section” and “each of which is formed of an acrylic resin or the like.” JP
`
`’602 at 8:8-12. Given this physical description, it can be expected that the optical
`
`fiber is made by a continuous process (e.g. extrusion) and then cut to form
`
`segments of the proper length; it is certainly unlikely that each individual fiber
`
`component in the stack is separately cast or machined. But neither Pristash nor
`
`the Petition offers any suggestion of how intentional variations in the deformities
`
`could be reliably incorporated into the multiple optical fibers of this type.
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`Second, the Petition fails to concretely establish why a person of ordinary
`
`skill would attempt such a modification. The Pristash disclosure on which
`
`Petitioners rely consists of the one vague sentence quoted above. This minimal
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`comment provides no indication of how the varying deformities could be made or
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`Case IPR2015-00575
`Pat. 6,886,956
`how particular variations would correlate to a particular “desired” output
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`distribution. Such a cursory disclosure does not rise to the level of a “known
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`element” or “predictable result” that Petitioners allege. See Petition at 26.
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`Moreover, Petitioners’ assertion
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`that
`
`the Pristash excerpt
`
`teaches “better
`
`controlling” of the light output distribution is simply false, as the patent’s brief
`
`discussion of varying deformities never mentions “better control.” See Pristash at
`
`5:17-19. The minimal disclosure in Pristash and unsupported assertion in the
`
`Petition are not enough to establish a plausible reason to incorporate the variations
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`alluded to by Pristash with the vastly different structure of JP ’062.
`
`Third, JP ’602 teaches against such a modification. An explicit object of the
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`Japanese patent is to achieve “uniform illumination”. JP ’602 at 7:1-2. The
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`structure described in the specification achieves exactly that:
`
`…the light emitted by the LED device 33 is transmitted through
`the inside of the optical fiber 31, is sequentially reflected to a
`front direction of the optical fiber 31 by the total reflection
`steps 35, and is emitted from the front surface of the optical
`fiber structure. The total reflection is carried out at a number of
`positions in the each optical fiber in the longitudinal direction
`thereof, and is carried out in the each optical fiber.
`… since the light source unit uses the reflection light of the
`total reflection step, which is provided in the optical fiber, the
`uniform illumination can be realized.
`
`JP ’602 at 10:1-10 (emphasis added). Similarly, under “Advantage of the
`Invention”, JP ’602 explains:
`… the rear surface of the each optical fiber is provided with the
`total reflection step, which reflects the light transmitted through
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`Case IPR2015-00575
`Pat. 6,886,956
`
`the inside of the optical fiber to the front, thereby configuring
`the light source unit. …Therefore, the invention has an effect of
`realizing thinning of the lamp and the uniform illumination.
`
`Id. at 11:13-21 (emphasis added). On the other hand, the only stated purpose of
`
`the varying deformities briefly mentioned in Pristash is the vague ability “to
`
`produce a desired light output distribution.” Pristash at 5:17-19 (emphasis added).
`
`But neither Pristash nor the Petition provides any suggestion that varying the
`
`deformities would tend to produce a more uniform distribution, which is the
`
`explicit objective of JP ’602. To the extent that such variations in the light guide
`
`would tend to cause variations in the light output, JP ’602 teaches away from the
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`Pristash modification. Given JP ’602’s stated purpose and effect of providing
`
`uniform illumination and the lack of evidence for such a result in Pristash, the
`
`Petition fails to show why a person of ordinary skill would be motivated to replace
`
`the regular deformities in JP ’602 with Pristash’s vague variations.
`
`C. Claim 21
`
`Claim 21 requires that “more than one said substrate overlies said light
`
`guide.” The Petition does not allege that JP ’602 disclosed this limitation. Pristash
`
`mentions without illustration that “multiple prismatic films may be used in place of
`
`the single prismatic film 60” in Fig. 7. Pristash at 5:30–33. Petitioners argue that
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`it would have been obvious to replace the vehicle lamp cover of JP ’602 with the
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`“multiple prismatic films” briefly mentioned in Pristash. Petition at 26-27.
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`Case IPR2015-00575
`Pat. 6,886,956
`Petitioners’ obviousness argument with respect to claim 21 fails for the same
`
`reasons as their argument regarding claim 4. First, the two references deal with
`
`fundamentally different structures, and the Petition offers no evidence to suggest
`
`that the “multiple films” disclosed in Pristash would actually work with the stack
`
`of optical fibers in JP ’602. Second, the Petition provides no evidence that a
`
`person or ordinary skill would have a reasonable expectation that the “multiple
`
`films” disclosed in Pristash would be even remotely suitable for the rigorous
`
`environment of the automobile lamp cover of JP ’602. Far from having a
`
`“predictable” result as the Petition alleges, the proposed modification would be at
`
`best a hopeful experiment. Third, given that the only stated purpose of the overlay
`
`in Pristash is “to shift the angular emission of light toward a particular application”
`
`(Pristash at 5:22-25) and that the outer lens cover in JP already meets this purpose,
`
`the Petition fails to show any plausible motivation to look to Pristash in order to
`
`modify JP ’602. Finally, Petitioners’ assertion that this disclosure in Pristash
`
`teaches “better controlling” of the light output (Petition at 27) as a motivation to
`
`combine is simply false, as the patent’s discussion of overlays never mentions
`
`“better control.” See Pristash at 5:17-19.
`
`Accordingly, for at least the reasons discussed above, the Petition fails to
`
`allege a prima facie case of obviousness based on JP ’602 in view of Pristash.
`
`Ground 2 of the Petition fails for at least Claims 4, 16 and 21.
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`Case IPR2015-00575
`Pat. 6,886,956
`V. GROUND 3: JP ’004 IN VIEW OF JP ’602
`
`A. Claim 1
`
`Claim 1 requires “one or more light emitting diodes along said light input
`
`surface” of the light guide. Although JP ’004 does not disclose light emitting
`
`diodes, Petitioners argue that “It would have been obvious for one of ordinary skill
`
`in the art to use the one or more LEDs of JP ’602, and related structures, in JP
`
`’004.” Petition at 33. Specifically, Petitioners’ expert opines (and Petitioners
`
`repeat in their Petition) that:
`
`It was well known to persons of ordinary skill at the time of the
`invention that LED light sources operate at a substantially
`lower temperature than incandescent and other light sources,
`and have a substantially longer lifetime. Moreover, LEDs are
`advantageous because they can be designed to emit only visible
`light wavelengths unlike incandescents, which may emit some
`visible wavelengths but ma