UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2015-00753
`
`U.S. Patent 7,537,370
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,537,370
`
`
`
`
`
`
`
`
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ..............................................................................................iii
`
`PETITION EXHIBIT LIST ............................................................................................... iv
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES ...................................................................................... 2
`
`III. PAYMENT OF FEES ............................................................................................... 4
`
`IV.
`
`V.
`
`STANDING................................................................................................................ 4
`
`REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1,
`3-6, 8, 9, 11-13, 15, 27, 29, AND 47 OF THE '370 PATENT ............................ 4
`
`A.
`
`B.
`
`Technology Background ............................................................................... 4
`
`The Alleged Invention Of The '370 Patent ................................................ 6
`
`VI. CLAIM CONSTRUCTION ..................................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Standards For Claim Construction .............................................................. 7
`
`"deformities" (Claims 1, 3-6, 8, 11-13, 15, 27, 29, 47) ............................... 8
`
`"at least one film, sheet or substrate . . . to change the
`output distribution of the emitted light" (Claims 1, 15, 29) ..................... 9
`
`"a transition region between the at least one input edge and the
`patterns of light extracting deformities to allow the light from the
`at least one light source to mix and spread" (Claims 13, 27, 47) ............ 10
`
`"the panel member having . . . a greater cross
`sectional width than thickness" (Claims 1, 13, 15, 27, 29, 47) ................ 12
`
`VII. SUMMARY OF PRIOR ART RELIED UPON IN THIS PETITION ......... 12
`
`A.
`
`B.
`
`JP H03-189679 ("Suzuki '679") (Ex.1005) ................................................ 12
`
`JP H04-278922 ("Suzuki '922") (Ex.1008) ................................................ 13
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`C.
`
`H06-003526 ("Nagatani") (Ex.1011) ......................................................... 13
`
`D. U.S. Patent No. 5,005,108 ("Pristash") (Ex.1014).................................... 13
`
`VIII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM ....................... 14
`
`A. Ground 1: Claims 1, 4-6, 9, 11-13, 15, 27, 29, And 47 Are
`Unpatentable Under § 102(b) As Being Anticipated By Suzuki '679 ........ 14
`
`B.
`
`Ground 2: Claims 3, 8, 13, 27, And 47 Are Unpatentable Under
`§ 103(a) As Being Obvious Over Suzuki '679 In View of Pristash ....... 38
`
`C. Ground 3: Claims 29 and 47 Are Unpatentable
`Under § 102(b) As Being Anticipated By Suzuki '922 ............................. 43
`
`D. Ground 4: Claim 47 Is Unpatentable Under § 103(a)
`As Being Obvious Over Suzuki '922 In View Of Pristash ..................... 48
`
`E. Ground 5: Claims 1, 4, 9, 11, And 12 Are Unpatentable
`Under § 102(b) As Being Anticipated By Nagatani ................................. 49
`
`F.
`
`Ground 6: Claims 3, 8, and 13 Are Unpatentable Under
`§ 103(a) As Being Obvious Over Nagatani In View of Pristash ............ 57
`
`IX. CONCLUSION ........................................................................................................ 59
`
`
`
`
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
`
`CASES
`In re Cuozzo Speed Techs., LLC,
`No. 2014-1301, 2015 U.S. App. LEXIS 1699 (Fed. Cir. Feb. 4, 2015)...................... 7
`
`Page(s)
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 7, 9, 11, 12
`
`Toro Co. v. White Consol. Indus. Inc.,
`199 F.3d 1295, 53 U.S.P.Q.2d 1065 (Fed. Cir. 1999) ................................................... 8
`
`STATUTES, RULES & OTHER AUTHORITIES
`35 U.S.C. § 102.................................................................................................................passim
`
`35 U.S.C. § 103........................................................................................................................ 1
`
`35 U.S.C. § 112........................................................................................................................ 8
`
`35 U.S.C. § 301(a)(2) .............................................................................................................. 7
`
`37 C.F.R. § 42.100(b) ............................................................................................................. 7
`
`MPEP 111.01 IV .................................................................................................................... 8
`
`
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`iii
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`PETITIONER'S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,537,370
`Prosecution History of U.S. Patent No. 7,537,370
`Complaints filed in Related District Court Cases
`Declaration of Richard A. Flasck ("Flasck Decl.")
`English Translation of JP H03-189679 ("Suzuki '679")
`Japanese Version of JP H03-189679
`Translation Certificate of JP H03-189679
`English Translation of JP H04-278922 ("Suzuki '922")
`Japanese Version of JP H04-278922
`Translation Certificate of JP H04-278922
`English Translation of JP H06-003526 ("Nagatani")
`Japanese Version of JP H06-003526
`Translation Certificate of H06-003526
`U.S. Patent No. 5,005,108 ("Pristash")
`Claim Construction Memorandum and Order, IDT v. Acer Inc. et al., Case
`No. 2:13-cv-00522, Aug. 26, 2014 [Dkt.101]
`DDG/IDT's Initial Claim Charts to Sony served on November 21, 2014,
`Exhibit E1 ____ All Products Containing Nypon Display/touch Module,
`US Patent No. 7,537,370
`Decision, Patent Trial and Appeal Board, January 13, 2015, 2014-01096,
`Patent 7,537,370 (Paper 11)
`Patent Owner's Opening Claim Construction Brief, IDT v. Acer Inc. et al.,
`Case No. 2:13-cv-00522, June 16, 2014 [Dkt. 69]
`English Translation of JP H06-242731 ("Mino")
`Japanese Version of JP H06-242731
`Translation Certificate of JP H06-242731
`U.S. Patent No. 5,461,547 ("Ciupke")
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`U.S. Pat. No. 5,808,784 (“Ando”)
`3M product brochure, 75-0500-0403-7, “Brightness Enhancement Film
`(BEF)” (1993)
`English Translation of JP H06-230378 (“Kisoo”)
`Japanese Version of JP H06-230378
`Translation Certificate of JP H06-230378
`English Translation of JP H05-69732 (“Seraku”)
`Japanese Version of JP H05-69732
`Translation Certificate of JP H05-69732
`
`iv
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`
`1026
`1027
`1028
`1029
`1030
`1031
`
`

`
`
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 311, Petitioner hereby respectfully requests inter partes
`
`review of claims 1, 3-6, 8, 9, 11-13, 15, 27, 29, and 47 of Ex. 1001, U.S. Patent
`
`No. 7,537,370 ("the '370 Patent"), which issued on May 26, 2009. The challenged
`
`claims are unpatentable under 35 U.S.C. §§ 102 and 103 over the prior art patents and
`
`publications identified and applied in this Petition.
`
`LG Display, Ltd. also challenged the '370 Patent in IPR2014-01096, and an
`
`inter partes review was instituted on January 13, 2015 as to portions of two obviousness
`
`grounds directed to claims 15 and 27. (Ex.1017.) Notwithstanding the partial grant of
`
`LG Display, Ltd.'s petition, the present petition serves two important purposes: (1) to
`
`raise new grounds based on three different and stronger references, Suzuki '679
`
`(Ex.1005), Suzuki '922 (Ex.1008), and Nagatani (Ex.1011), which address those claims
`
`as to which LG Display, Ltd.'s petition was denied; and (2) to challenge six additional
`
`dependent claims, claims 3, 5, 6, 9, 11, and 12. In that regard, Petitioner's additional
`
`references address the deficiencies the Board found with the art asserted against
`
`independent claims 1, 13, 29, and 47 in IPR2014-01096, in that Suzuki '679 and
`
`Nagatani disclose panel members with projections or depressions in one side that are
`
`of a different type than those in the other side, and Suzuki '679 and Suzuki '922
`
`disclose that the deformities in one side may vary in a different way or manner than
`
`those in the other side. The present petition also adds stronger anticipation grounds
`
`against claims 15 and 27 based on Suzuki '679.
`
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`II. MANDATORY NOTICES
`A. Real Parties-In-Interest: Sony Corporation, Sony Corporation of America,
`
`Sony Electronics Inc., Sony Mobile Communications (USA) Inc., Sony Mobile
`
`Communications Inc., and Sony Mobile Communications AB.
`
`B. Related Matters. Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner submits that
`
`the '370 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex.1003), against Petitioner in the
`
`United States District Court for the District of Delaware: Delaware Display Group LLC
`
`and Innovative Display Techs. LLC v. Sony Corp., Sony Corp. of America, Sony Elecs. Inc., and
`
`Sony Mobile Commc'ns (USA) Inc., Case No. 1:13-cv-02111. The '370 Patent is also
`
`asserted in at least these actions:
`
`Docket Number
`Description
`Innovative Display Technologies LLC ("IDT") v. Acer Inc. et al. 2:13-cv-00522, EDTX
`IDT v. AT&T Inc., et. al.
`2:14-cv-00720, EDTX
`IDT v. BMW of North America, LLC et. al.
`2:14-cv-00106, EDTX
`IDT v. Research in Motion Limited et al.
`2:13-cv-00526, EDTX
`IDT v. Dell Inc.
`2:13-cv-00523, EDTX
`IDT v. Hewlett-Packard Corporation
`2:13-cv-00524, EDTX
`IDT v. Nissan Motor, Co., Ltd. et. al.
`2:14-cv-00202, EDTX
`IDT v. Sprint Corporation et. al.
`2:14-cv-00721, EDTX
`DDG and IDT v. Lenovo Group Ltd. et al.
`1:13-cv-02108, D.Del.
`DDG and IDT v. LG Electronics Inc. et al.
`1:13-cv-02109, D.Del.
`DDG and IDT v. Pantech Co.,Ltd. et al.
`1:13-cv-02110, D.Del.
`DDG and IDT v. Sony Corporation et al.
`1:13-cv-02111, D.Del.
`
`2
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`Docket Number
`Description
`DDG and IDT v. Vizio, Inc.
`1:13-cv-02112, D.Del.
`Existing Related IPRs: IPR2014-01096 and IPR2015-00493.
`
`Concurrently Filed Related IPRs: Petitioner is concurrently filing petitions to
`
`review U.S. Patent Nos. 7,300,194; 7,384,177; 7,404,660; 7,434,974; 7,914,196; and
`
`8,215,816. For efficiency, the Board may consider assigning these proceedings to a
`
`common panel of Administrative Patent Judges.
`
`C. Lead and Back-up Counsel and Service Information.
`LEAD COUNSEL
`BACK-UP COUNSEL
`Gregory S. Gewirtz
`Jonathan A. David (Reg. No. 36,494)
`Registration No. 36,522
`Robert B. Hander (Reg. No. 65,849)
`LERNER, DAVID, LITTENBERG,
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`600 South Avenue West
`Westfield, NJ 07090
`Westfield, NJ 07090
`Tel:
`908-518-6343
`Tel:
`908-518-6331/6342
`Fax:
`908-654-7866
`Fax:
`908-654-7866
`E-mail: GGewirtz.ipr@ldlkm.com
`E-mail: JDavid.ipr@ldlkm.com
`
`RHander.ipr@ldlkm.com
`Scott A. McKeown (Reg. No. 42,866)
`OBLON, McCLELLAND,
` MAIER & NEUSTADT LLP
`1940 Duke St.
`Alexandria, VA 22314
`Tel:
`703-412-6297
`Fax:
`703-413-2220
`E-mail: CPDocketMcKeown@oblon.com
`
`
`
`3
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`III. PAYMENT OF FEES
`Pursuant to 37 C.F.R. § 42.103(a), the Office is authorized to charge the fee set
`
`forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 121095 as well as any additional
`
`fees that might be due in connection with this Petition.
`
`IV. STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the patent sought for
`
`review, the '370 Patent, is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review of the patent.
`
`V. REQUEST FOR INTER PARTES REVIEW OF
`CLAIMS 1, 3-6, 8, 9, 11-13, 15, 27, 29, AND 47 OF THE '370 PATENT
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests that the Board find
`
`unpatentable claims 1, 3-6, 8, 9, 11-13, 15, 27, 29, and 47 of the '370 Patent. Such
`
`relief is justified as the alleged invention of the '370 Patent was described by others
`
`prior to the effective filing date of the '370 Patent.
`
`A. Technology Background
`Flat panel displays for TVs, computers, etc. were pioneered in the 1980s, with
`
`active matrix liquid crystal display (LCD) technology dominating the market by the
`
`early 1990s. (Flasck Decl. ¶ 39.) LCDs comprise an array of pixels that act as a large
`
`matrix of shutters that modulate light passing through the display panel. (Id. ¶ 40.)
`
`LCDs typically need a light generating structure, commonly called a backlight unit
`
`(BLU), positioned beneath the liquid crystal panel. (Id. ¶¶ 41-42.) Partially collimated
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`light from the BLU enters the LCD panel from the bottom and exits the top to be
`
`viewed by the user. Each pixel in the LCD matrix individually modulates the light
`
`from the BLU to present text, graphic, or video images to the user. (Id. ¶ 63.)
`
`Since the mid-1990s, the typical BLU found in commercially available products
`
`included a light source, a reflector to concentrate the light, a light guide with
`
`deformities on the lower surface, a set of light re-directing films, sheets or plates
`
`between the light guide and the LCD panel, and a tray, case or frame. (Id. ¶¶ 43-44.)
`
`The most common light sources used were Cold Cathode Fluorescent Lamps
`
`(CCFLs) and light emitting diodes (LEDs), with the design choice between the two
`
`being based on desired thinness profile, brightness, and power consumption. (Id.
`
`¶¶ 45-48.)
`
`The typical light guide was generally constructed from a transparent plastic
`
`plate that would transport the light from the input edge adjacent to the lamp, to the
`
`output surface, typically the top surface of the light guide plate. (Id. ¶ 49.) The light
`
`injected into the input edge would be captured in, and uniformly distributed
`
`throughout, the light guide by the principle of Total Internal Reflection (TIR). (Id.)
`
`However, when the light encountered the deformities on the bottom surface of
`
`the light guide, the light would become scattered and redirected at such angles that the
`
`TIR condition would be defeated and the scattered light would exit through the top
`
`exit surface of the light guide. (Id. ¶¶ 50-53.)
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`It was also common to include a set of light re-directing films for changing the
`
`angle of the emitted light so that it would be more nearly perpendicular to the light
`
`emitting surface, and thus provide a brighter image and enable lower power
`
`consumption. (Id. ¶¶ 54-60.) In addition, the components of the LCD module were
`
`often physically held in place by a metal tray, which could include a reflective bottom
`
`and sides and an open top. (Id. ¶¶ 61-62.)
`
`B. The Alleged Invention Of The '370 Patent
`The '370 Patent generally relates to "light emitting panel assemblies each
`
`including a transparent panel member for efficiently conducting light, and controlling
`
`the light conducted by the panel member to be emitted from one or more light output
`
`areas along the length thereof." (Ex.1001, 1:18-22.) The purported advantage of the
`
`alleged invention described in the '370 Patent relates to several different light emitting
`
`panel assembly configurations which allegedly provide for better control of light
`
`output from the panel assembly and for more "efficient" utilization of light, thereby
`
`resulting in greater light output from the panel assembly. (Id. 1:24-28.)
`
`The '370 Patent discloses light emitting assemblies having a pattern of light
`
`extracting deformities on or in one or both sides for emitting light in a predetermined
`
`output distribution. (Ex.1001 Abstract.) The pattern of light extracting deformities
`
`may have one or more different types or shapes of deformities. (Id.) The light
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`extracting deformities in one side may also be of a different type or shape or vary in a
`
`different way or manner than the deformities on or in the other side. (Id.)
`
`VI. CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`The '370 Patent expires on June 27, 2015. An unexpired claim subject to inter
`
`partes review is given its "broadest reasonable construction ["BRI"] in light of the
`
`specification of the patent in which it appears." 37 C.F.R. § 42.100(b). If an inter partes
`
`review involves claims of an expired patent, a patentee is unable to make claim
`
`amendments, and the Board applies the claim construction principles outlined in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) that the words of a claim "are
`
`generally given their ordinary and customary meaning" as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. In re Cuozzo Speed
`
`Techs., LLC, No. 2014-1301, 2015 U.S. App. LEXIS 1699, at *16 n.6 (Fed. Cir. Feb. 4,
`
`2015) (citing In re Rambus Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014)); see, e.g., Arris
`
`Group, Inc. v. C-Cation Techs., LLC, IPR2014-00747, Decision (P.T.A.B. Nov. 24, 2014)
`
`(Paper 22, at 10). Here, as shown below, constructions under either the BRI or Phillips
`
`standard would lead to the same result.
`
`Moreover, as shown below, those constructions further comport with positions
`
`that Patent Owner has taken in its prior claim construction briefing and infringement
`
`contentions in related Federal Court litigations. In that regard, Petitioner notes that 35
`
`U.S.C. § 301(a)(2) permits citation of Patent Owners' statements regarding claim
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`scope, to prevent patentees from arguing broad constructions in Federal Court
`
`litigation while using narrow constructions in proceedings before the Office.
`
`Petitioner also notes that while
`
`it advances the following proposed
`
`constructions for the purposes of this petition, it reserves the right (not available to it
`
`in the present proceeding) to assert in any copending or future litigation that one or
`
`more of the following claim terms is indefinite or lacks written description support
`
`under 35 U.S.C. § 112.
`
`B.
`"deformities" (Claims 1, 3-6, 8, 11-13, 15, 27, 29, 47)
`The '370 Patent expressly defines the term "deformities" as follows: "As used
`
`herein, the term deformities or disruptions are used interchangeably to 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, 4:36-40.) Where
`
`an explicit definition is provided by the applicant for a term, that definition will
`
`control interpretation of the term as it is used in the claim. Toro Co. v. White Consol.
`
`Indus. Inc., 199 F.3d 1295, 1301, 53 U.S.P.Q.2d 1065, 1069 (Fed. Cir. 1999);
`
`MPEP 111.01 IV. In addition, in the 2:13-cv-00522 case, the Patent Owner agreed
`
`with, and the court adopted, this same construction. (Ex.1015, at 58.) Accordingly,
`
`Petitioner submits that the term "deformities" should at least include "any change in
`
`the shape or geometry of a surface and/or coating or surface treatment that causes a
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`portion of the light to be emitted," regardless of whether the Phillips standard or the
`
`broader BRI standard is applied.
`
`C.
`
`"at least one film, sheet or substrate . . . to change the
`output distribution of the emitted light" (Claims 1, 15, 29)
`Claims 1, 15, and 29 each recite "at least one film, sheet or substrate . . . to
`
`change the output distribution of the emitted light." The '370 Patent specification
`
`only discusses using a film to change the output distribution of the emitted light in
`
`column 6, lines 20 through 30. (Ex.1001.) That section explains that "a transparent
`
`film, sheet or plate 27 may be attached or positioned against the side or sides of the
`
`panel member from which light is emitted . . . in order to produce a desired effect,"
`
`and that "[t]he member 27 may be used to further improve the uniformity of the light
`
`output distribution." (Id. 6:20-26.) The next sentence then lists several examples,
`
`stating that "the member 27 may be a colored film, a diffuser, or a label or display, a
`
`portion of which may be a transparent overlay that may be colored and/or have text
`
`or an image thereon." (Id. 6:26-29.) Accordingly, Petitioner submits that the phrase "at
`
`least one film, sheet or substrate . . . to change the output distribution of the emitted
`
`light" should at least include "a colored film, a diffuser, or a label or display, a portion
`
`of which may be a transparent overlay that may be colored and/or have text or an
`
`image thereon," regardless of whether the Phillips standard or the broader BRI
`
`standard is applied.
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`D.
`
`"a transition region between the at least one input edge and the
`patterns of light extracting deformities to allow the light from the
`at least one light source to mix and spread" (Claims 13, 27, 47)
`Claims 13, 27, and 47 each contain an identical limitation directed to "a
`
`transition region between the at least one input edge and the patterns of light
`
`extracting deformities to allow the light from the at least one light source to mix and
`
`spread." In the '370 Patent, a light "transition area" 4 (see
`
`Fig.1, at right) is shown and discussed as an area between
`
`the light sources and light emitting panel "used to make
`
`the transition from the light source 3 to the light emitting panel 2, as well known in
`
`the art." (Ex.1001, 2:63-66). Based in part on this teaching, the Eastern District of
`
`Texas in the 2:13-cv-00522 case rejected the Defendants' more narrow proposed
`
`construction (i.e., that the transition must "spread and transmit light") and held that
`
`"transition region" means simply "a region configured to transmit light." (Ex.1015,
`
`at 18-22.) However, as that construction does not answer the broader question of
`
`what types of regions may be "configured to transmit light," it is worth reviewing
`
`Patent Owner's further statements regarding the scope of this term. First, in its
`
`opening claim construction brief the in 2:13-cv-00522 case, Patent Owner stated that
`
`"[l]ight travels through the transition region until it reaches the part of the panel that
`
`is designed to allow light to escape and illuminate the LCD," and that "[t]o better
`
`allow light to travel through it, the transition region will have fewer or none of the
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`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`deformities found on the rest of the panel." (Ex.1018, at 3.) Patent Owner thus took
`
`the position that a "transition region" may simply be a part of the panel (as shown in
`
`the figures above and below), and that it
`
`may include deformities. (Id.) Patent Owner
`
`took the same position in its infringement
`
`contentions
`
`in
`
`the 1:13-cv-02111 case
`
`against Petitioner, pointing to the following
`
`exemplary drawing showing the transition region in blue and explaining that: "The
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`transition region is defined as the area of the optical conductor between the light
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`sources and the edge of the deformities on the back side." (Ex.1016, at 23.)
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`Accordingly, Petitioner submits that the term "a transition region between the at least
`
`one input edge and the patterns of light extracting deformities to allow the light from
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`the at least one light source to mix and spread" should at least include any "region
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`configured to transmit light [between the at least one input edge and the patterns of
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`light extracting deformities to allow the light from the at least one light source to mix
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`and spread]" (the Eastern District of Texas's general construction) as well as "an area
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`of the optical conductor between the light sources and the edge of the deformities on
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`one side of the light emitting panel" (Patent Owner's specific contention), regardless
`
`of whether the Phillips standard or the broader BRI standard is applied.
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`11
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`E.
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`"the panel member having . . . a greater cross
`sectional width than thickness" (Claims 1, 13, 15, 27, 29, 47)
`Claims 1, 13, 15, 27, 29, and 47 each recite "the panel member having . . . a
`
`greater cross sectional width than thickness." The question with this term is which
`
`directions constitute "width" and "thickness." The '370 Patent only provides one
`
`point of guidance, noting at column 7 lines 55-63 that Fig. 11 shows a transition area
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`that is "thicker in cross-section than the panel member." (Ex.1001.) That statement
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`suggests that "thickness" means the distance between the reflective rear surface and
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`the light-emitting front surface of the panel member. Patent Owner apparently agrees
`
`with this interpretation, as it provided the following explanatory illustration (shown
`
`below) in its infringement contentions in
`
`the 1:13-cv-02111 case. (Ex.1016, at 9.)
`
`Accordingly, Petitioner submits that the
`
`phrase "the panel member having . . . a
`
`greater cross sectional width than thickness" should at least include the manner in
`
`which "width" and "thickness" are used in the figure above, regardless of whether the
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`Phillips or BRI standard is applied.
`
`VII. SUMMARY OF PRIOR ART RELIED UPON IN THIS PETITION
`A.
`JP H03-189679 ("Suzuki '679") (Ex.1005)
`Suzuki '679 qualifies as prior art under 35 U.S.C. § 102(b) because it was
`
`published on August 19, 1991, more than one year before the June 27, 1995 filing date
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`of the earliest application to which the '370 Patent may potentially claim priority.
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`Suzuki '679 was not cited or considered during prosecution of the application that led
`
`to the '370 Patent.
`
`B.
`JP H04-278922 ("Suzuki '922") (Ex.1008)
`Suzuki '922 qualifies as prior art under 35 U.S.C. § 102(b) because it was
`
`published on October 5, 1992, more than one year before the June 27, 1995 filing date
`
`of the earliest application to which the '370 Patent may potentially claim priority.
`
`Suzuki '922 was not cited or considered during prosecution of the application that led
`
`to the '370 Patent.
`
`C. H06-003526 ("Nagatani") (Ex.1011)
`Nagatani qualifies as prior art under 35 U.S.C. § 102(b) because it was
`
`published on January 14, 1994, more than one year before the June 27, 1995 filing
`
`date of the earliest application to which the '370 Patent may potentially claim priority.
`
`Nagatani was cited during prosecution of the application that led to the '370 Patent,
`
`but was not relied upon as the basis to reject any claim. Nagatani was not discussed
`
`on the record at all during the prosecution proceedings.
`
`D. U.S. Patent No. 5,005,108 ("Pristash") (Ex.1014)
`Pristash qualifies as prior art under 35 U.S.C. § 102(b) because Pristash issued
`
`as a patent on April 2, 1991, more than one year before the June 27, 1995 filing date
`
`of the earliest application to which the '370 Patent may potentially claim priority.
`
`Pristash was cited as a reference in an Information Disclosure Statement during
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`prosecution, but was not relied upon as the basis to reject any claim. Pristash was also
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`not discussed on the record at all during the prosecution proceedings.
`
`1
`
`VIII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`Ground
`Prior Art
`Exhibit(s)
`Claims
`§ 102(b) Suzuki '679
`1005
`1, 4-6, 9, 11-13,
`15, 27, 29, 47
`§ 103(a) Suzuki '679 in view of Pristash 1005, 1014 3, 8, 13, 27, 47
`§ 102(b) Suzuki '922
`1008
`29, 47
`§ 103(a) Suzuki '922 in view of Pristash 1008, 1014 47
`§ 102(b) Nagatani
`1011
`1, 4, 9, 11, 12
`§ 103(a) Nagatani in view of Pristash
`1011, 1014 3, 8, 13
`A. Ground 1: Claims 1, 4-6, 9, 11-13, 15, 27, 29, And 47 Are
`Unpatentable Under § 102(b) As Being Anticipated By Suzuki '679
`Suzuki '679 is one of three new references asserted by Petitioner (i.e., it was not
`
`2
`3
`4
`5
`6
`
`asserted in LG Display, Ltd.'s petition for IPR2014-01096). As will be shown below,
`
`Suzuki '679 both clearly anticipates claims 1, 4, 13, 15, 27, 29, and 47 (all of which
`
`were originally challenged by LG Display, Ltd., but of which the Board only instituted
`
`review as to claims 15 and 27), and also has particular relevance to newly challenged
`
`dependent claims 5, 6, 9, 11, and 12. In that regard, should the Board be inclined to
`
`deny some portion of this Ground in light of ongoing proceedings in IPR2014-01096
`
`it is particularly important that the Board consider claims 1, 4-6, 9, 11-13, 29, and 47
`
`as challenged herein, as those claims will otherwise escape review.
`
`The objective of Suzuki '679 is to provide a surface light source device that
`
`provides brightness levels equal to or greater than prior art devices, but which
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`nevertheless has an extremely thin transparent light guide layer (i.e., optical panel
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`Patent No. 7,537,370
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`member), and which is small, light, easy to manufacture, and inexpensive. (Ex.1005,
`
`at 5.) In describing means for achieving that objective, Suzuki '679 discloses each and
`
`every limitation of claims 1, 4-6, 9, 11-13, 15, 27, 29, and 47.
`
`Common Elements "a" ____ "d" of
`
`Claims 1, 13, 15, 27, 29, and 47: Suzuki '679
`
`discloses each of the limitations common to
`
`independent claims 1, 13, 15, 27, 29, and 47, as
`
`follows:
`
`(a) two
`
`tubular
`
`light
`
`sources 4
`
`(Ex.1005, at 7); (b) a transparent light guide
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`layer 2 with a greater cross-sectional width (260
`
`mm) than thickness (4-5 mm), that has front and back surfaces and light input edges
`
`(id. at 7-8); (c) a pattern of embossed elements that are projections and/or
`
`depressions (id. at 13-14) and may be on one or both sides of the panel member (id.
`
`at 5-6, 14); and (d) that the deformities may vary along the length of the panel in that
`
`"the projection area of the embossed elements [may be] gradually increase[d] along
`
`with the distance from each light source, as illustrated in Fig. 10" (id. at 14-15; see also
`
`Fig.10, above) or "changed in units of blocks" instead of gradually (id. at 19; see also
`
`Fig.13), and that the angle of the oblique surfaces of the embossed elements may also
`
`be increased as the distance from the light source decreases (id. at 19-20; see also
`
`Fig.15). (Flasck Decl. ¶¶ 90-94)
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`At Least Some Of The Deformities On One Side Of The Panel Member
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`Vary In A Different Way Or Manner Than Those In the Other Side ("29.e,"
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`"47.e"): Suzuki '679 also discloses that the pitch of the embossed patterns on the
`
`front side of the panel may be different than the pitch of the pattern on the back side
`
`of the panel. (Id. at 14.) Suzuki '679 uses "pitch" to refer to the size of the cells of the
`
`grid on which the deformities are spaced (see, e.g., "P" notations in Fig.2), and explains
`
`that the projection area of each deformity will not exceed the area of each cell. (Id.
`
`at 15; Flasck Decl. ¶ 139). Suzuki '679 also provides that the lengths of the embossed
`
`elements should preferably be changed between the maximum and minimum values
`
`according to the logarithmic equation Y = a + b ln X, where "X" represents distance
`
`from the light source, and "a" and "b" are coefficients determined by a collection of
`
`factors including the selected "pitch." (Ex.1005, at 15-16.) Thus, in the case where the
`
`patterns have "different pitches . . . on the front and back surfaces": (a) there will be a
`
`different number of columns of deformities on the front side of the transparent light
`
`guide layer 2 than on the back side; (b) the columns of deformities on the front side
`
`may not line up directly above the columns of deformities on the back side; and
`
`(c) the sizes of the d