`Patent 7,537,370
`Filed on behalf of Innovative Display Technologies LLC.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`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 No. 7,537,370
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,537,370
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`
`1
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`I.
`INTRODUCTION
`
`
`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
`
`Owner”) hereby files this preliminary response (“Preliminary Response”) to the
`
`Petition (the “Petition”) for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`7,537,370 (the “’370 patent”) in IPR2015-00753 filed by Sony Corporation (“Sony”
`
`or “Petitioner”).
`
`
`
`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 27, 2015, date of the Notice of Filing
`
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response.
`
`(Paper No. 4.) Patent Owner reserves identification of deficiencies in Petitioner’s
`
`argument in this Preliminary Response for Patent Owner’s Response in the event
`
`this IPR is instituted. Patent Owner does not intend to waive any arguments by not
`
`addressing them in this Preliminary Response.
`
`
`
`The Petitioner’s challenge to the ʼ370 patent claims should be rejected
`
`because the prior art lacks several material claim limitations.
`
`A. Related Petition Decisions
`
`The Patent Owner notifies the Board that the instant Petition is the third IPRs
`
`filed concerning the ʼ370 patent. Those are IPR2014-01096 (the first IPR, filed by
`
`LG Display Co., Ltd.); IPR2015-00493 (filed by LG Electronics, Inc.); IPR2015-
`
`00753 (the present IPR, filed by Sony Corporation).
`
`
`
`2
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`The Board instituted the first IPR on certain grounds:
`
`
`
`
`
`A. Anticipation of claims 15 and 27 by Pristash; and
`
`B. Obviousness of claims 15 and 27 over Kobayashi and Pristash;
`
`No other proposed grounds of unpatentability were authorized. IPR2014-01096,
`
`Paper 11 at 18.
`
`Petitioner, however, waited to file the instant petition after seeing the results
`
`of the early filed petition in IPR2014-01096. Petitioner used that order as a template
`
`to file a new petition to allegedly cure the defects in IPR2014-01096. Pet. at 1. In
`
`particular, Petitioner seeks to tailor claim construction to read-on the new references
`
`cited.
`
`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.
`
`Id. This is indicative of impermissible hindsight analysis. However as shown below,
`
`Petitioner still fails to show a reasonable likelihood that any of the claims of the ’370
`
`Patent are invalid.
`
`Petitioner has not shown why its art is not cumulative to that used in IPR2014-
`
`01096. For example, here the Petitioner largely relies on the already-considered
`
`Pristash reference. Under Section 325(d), the Board should deny petitions that
`
`
`
`3
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`challenge a patent based on previously-rejected grounds and cumulative and
`
`duplicative art, otherwise petitioners will be given an unwarranted and unfair
`
`procedural advantage in pending infringement litigation. See 35 U.S.C. § 325(d).
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`35 U.S.C. § 325(d) (emphasis added). The legislative history of Section 325(d)
`
`confirms that this is also what Congress intended: Section 325(d) “allows the Patent
`
`Office to reject any request for a proceeding, including a request for ex parte
`
`reexamination, if the same or substantially the same prior art or arguments
`
`previously were presented to the Office with respect to that patent.” 157 Cong. Rec.
`
`S1042 (daily ed. Mar. 1, 2011) (Statement of Sen. Kyl).
`
`B. Claim Construction
`The arguments in this Response stand despite Petitioner’s 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 propose its own construction of any and all claim
`
`terms for which an issue arises in the event the PTAB institutes this IPR.
`
`
`
`4
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“First Claim Construction Order”) (Ex. 2001) and Innovative Display Technologies
`
`LLC, et al., v. Hyundai Motor Co., et al., No. 2:14-cv-201 (E.D. Tex. 2014) (Dkt.
`
`No. 244) (“Second Claim Construction Order”) (Ex. 2002) has ruled on
`
`constructions of terms in this patent, including entering an agreed construction of
`
`“deformities” that Petitioner adopts in its Petition. Petition at 7; Ex. 2001 at 58; Ex.
`
`2002 at 9.
`
`II. Validity over prior art
`A. Suzuki ’679 – Anticipation of Claims 1, 4-6, 9, 11-13, 15, 27, 29, and 47
`1. No Showing of Element [1.e], [13.e]
`Elements [1.e] and [13.e] require “at least some of the light extracting
`
`deformities on or in one of the sides are of a different type than the light extracting
`
`deformities on or in the other side of the panel member.” (emphasis added). The
`
`Petition does not show that Suzuki ’679 discloses that the deformities on one side of
`
`the panel are of different type than the deformities on the other side of the panel. For
`
`example, the Petition cites to Figs. 14-20, none of which supports Petitioner’s
`
`argument. (Petition at 28.) To start, Figs. 17-20, only show a top view of a panel,
`
`and, from that view alone, the other side of the panel member cannot be seen. (Id.)
`
`Figs. 14-16, appear to show side views that reveal their respective bottom surfaces,
`
`but the bottom surfaces do not show any deformities. (Id.).
`
`
`
`5
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`The remainder of the Petition’s allegations that Suzuki ’679 meets this
`
`limitation are simple hypotheticals that Petitioner created, and which do not rise to
`
`the level of evidence required to prove anticipation. First, Petitioner alleges a
`
`hypothetical situation in which pattern 21 as shown in Fig. 20 is used on both the
`
`front a back surfaces of light guide layer 2. The Petition does not cite to an actual
`
`disclosure in Suzuki ’679 of the pattern in Fig. 20 being used on both sides. Instead,
`
`the part of Suzuki ’679 cited in the Petition only describes an example light guide
`
`layer 2 that was produced using the embossed pattern 21 from Fig. 2a. (Suzuki ’679
`
`at 8, (“Examples of the transparent light guide layer 2 were produced by forming an
`
`embossed pattern 21 on both sides of acrylic resin plates … Referring to Fig. 2A, the
`
`embossed pattern 21 was a pattern of quadrangular-pyramid-shaped recesses formed
`
`at a pitch of 0.5 mm and having oblique surfaces at an angle of 45°”).) The
`
`hypothetical scenario of using Fig. 20 on both sides of the panel as envisioned in the
`
`Petitioner is not enough to support the anticipation allegations for this claim.
`
`The Petition continues with another hypothetical that does not rise to the level
`
`of anticipation: “if the pattern of Fig. 16 were used on both the front and back
`
`surfaces of the panel member.” (Petition at 18). Again, the Petition does not cite to
`
`any specific part of Suzuki ’679 that discloses the pattern of Fig. 16 on both sides of
`
`the panel member.
`
`
`
`6
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`The Petition offers one last insufficient hypothetical limitation. The Petition
`
`alleges that “Suzuki ’679’s disclosure that the pitches may be different on the front
`
`and back surfaces makes it possible to set the minimum length of the elements on
`
`one side to be greater than the maximum length of those on the other side …” Again,
`
`that hypothetical is not enough to show anticipation.
`
`Because the Petition makes no showing that the deformities on one side of the
`
`panel are of different type than the deformities on the other side of the panel, Ground
`
`1 fails for claims 1 and 13, and their dependent claims.
`
`2. No Showing of Element [13.f], [27.e], and [47.f]
`Elements [13.f], [27.e], and [47.f] require “a transition region…to allow the
`
`light from the at least one light source to mix and spread.” Petitioner makes no
`
`showing that its purported transition region allows “light to mix and spread.” The
`
`words “mix” and “spread” appear nowhere in the text of Petition related to this
`
`ground. (Petition at 19-21; 32-33.). Thus Ground 1 fails for claims 13, 27, and 47
`
`and their dependent claims.
`
`B. Suzuki ’679 in view of Pristash – Obviousness of Claims 3, 8, 13, 27,
`And 47
`
`Petitioner next attempts to combine Suzuki ’679 in view of Pristash, using
`
`Pristash primarily to allegedly meet the “transition region” limitation of those
`
`claims. (Petition at 38). This combination should be rejected for several reasons.
`
`First, the Petition fails to articulate a sufficient reason why these two references
`
`
`
`7
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`should be combined. The Supreme Court and Federal Circuit have long held the
`
`principle that mere assertions and conclusory statements cannot support an
`
`obviousness determination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`But obviousness must be articulated by reasoning with rational underpinning to
`
`support the legal conclusion of obviousness. Id.; In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006) (“Rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.”). Petitioner
`
`makes the conclusory argument that “It would thus have been obvious to eliminate
`
`the air interface between Suzuki ’679’s fluorescent tube lights 4 and transparent light
`
`guide layer 2 (see, e.g., Ex.1005 Fig.1) in favor of a transition device that would
`
`shape and evenly spread the light from the light source across the input edge of the
`
`panel member.” (Petition at 39). Petitioner does not explain why it makes that
`
`conclusion. Petitioner jumps from seemingly unrelated citations to that conclusory
`
`statement.
`
`Second, Petitioner fails to consider the disclosures of Pristash and Suzuki ’679
`
`as a whole when it concludes that they could be combined. For obviousness
`
`inquiries, the scope and content of the prior art must be considered as a whole,
`
`including disclosures in the references that diverge from and teach away from the
`
`invention at hand. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed.
`
`
`
`8
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`Cir. 1983. Considering Suzuki ’679 as a whole reveals that “an object of the present
`
`invention is to provide an inexpensive surface light source device which includes an
`
`extremely thin transparent light guide layer but emits light with a brightness that is
`
`equivalent to or higher than that of light emitted by a structure of the related art,
`
`which can be reduced in size and weight.” Ex.1005 at 5. Ignoring that Suzuki ’679
`
`seeks to reduce the size and weight of structure, the Petition concludes that it would
`
`have been obvious to combine Suzuki ’679 with Pristash, even though Pristash
`
`discloses this relatively large transition device 5:
`
`
`
`(Ex. 1014 at Fig. 1).
`
`Third, this combination is redundant with Ground 1. Petitioner never
`
`“articulated a meaningful distinction in terms of relative strengths and weaknesses
`
`with respect to application” of Suzuki ’679 to the claim limitations as opposed to the
`
`
`
`9
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`application of Suzuki ’679 with Pristash to the claim limitations. IPR2013-00082,
`
`Paper 33 at 4. Without that discussion, Ground 2 is redundant and should be rejected.
`
`C. Suzuki ’922 – Anticipation of Claims 29 and 47
`1. Petitioner does not meet its burden to show that this is not a
`redundant ground.
`
`This ground is redundant with Ground 1. Petitioner never “articulated a
`
`meaningful distinction in terms of relative strengths and weaknesses with respect to
`
`application” of Suzuki ’679 to the claim limitations as opposed to the application of
`
`Suzuki ’922 to the claim limitations. (IPR2013-00082, Paper 33 at 4.) Instead, the
`
`Petitioner
`
`simply
`
`argues
`
`that
`
`Suzuki
`
`’922
`
`discloses
`
`“further examples” of varying deformities. (Petition at 43.) That is not an
`
`articulation of a meaningful distinction of the relative strengths and weaknesses of
`
`applying Suzuki ’922 to these claims instead of Suzuki ’679. Without that
`
`discussion, Ground 3 is redundant.
`
`2. No Showing of Element [47.f]
`Element [47.f] requires “a transition region…to allow the light from the at
`
`least one light source to mix and spread.” Petitioner makes no showing that its
`
`purported transition region allows “light to mix and spread.” The words “mix” and
`
`“spread” appear nowhere in the text of Petition related to this ground. (Petition at
`
`44-45; 47-48.). Thus Ground 1 fails for claim 47 and its dependent claims.
`
`
`
`
`
`10
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`D. Suzuki ’922 in view of Pristash – Obviousness of Claims 47
`Petitioner next attempts to combine Suzuki ’922 in view of Pristash, using
`
`Pristash primarily to allegedly meet the “transition region” limitation of those
`
`claims. (Petition at 48-49). This combination should be rejected for several reasons.
`
`First, the Petition fails to articulate a sufficient reason why these two references
`
`should be combined. The Supreme Court and Federal Circuit have long held the
`
`principle that mere assertions and conclusory statements cannot support an
`
`obviousness determination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`But obviousness must be articulated by reasoning with rational underpinning to
`
`support the legal conclusion of obviousness. Id.; In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006) (“Rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.”). Petitioner
`
`relies on the same conclusory reasoning as it does for Ground 2 (Petition at 48-49),
`
`and for the reasons discussed above for Ground 2, Petitioner has not articulated
`
`sufficient reasoning to combine these references.
`
`Second, Petitioner fails to consider the disclosures of Pristash and Suzuki ’922
`
`as a whole when it concludes that they could be combined. For obviousness
`
`inquiries, the scope and content of the prior art must be considered as a whole,
`
`including disclosures in the references that diverge from and teach away from the
`
`
`
`11
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`invention at hand. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed.
`
`Cir. 1983. Considering Suzuki ’922 as a whole reveals that “display apparatuses are
`
`desired to be reduced in thickness and weight.” Ex.1008 at 4. Ignoring that Suzuki
`
`’679 seeks to reduce the weight of structure, the Petition concludes that it would
`
`have been obvious to combine Suzuki ’922 with Pristash, even though Pristash
`
`discloses this relatively large transition device 5:
`
`
`
`(Ex. 1014 at Fig. 1).
`
`Third, the combination is redundant with Grounds 1, 2, and 3. Petitioner never
`
`“articulated a meaningful distinction in terms of relative strengths and weaknesses
`
`with respect to application” of Suzuki ’922 to the claim limitations as opposed to the
`
`application of the other three grounds to the limitations of claim 47. (IPR2013-
`
`00082, Paper 33 at 4). Without that discussion, Ground 1 is redundant.
`
`
`
`12
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`E. Nagatani – Anticipation of Claims 1, 4, 9, 11, and 12
`1. Petitioner does not meet its burden to show that this is not a
`redundant ground.
`
`This allegation is redundant with Ground 1. Petitioner never “articulated a
`
`meaningful distinction in terms of relative strengths and weaknesses with respect to
`
`application” of Suzuki ’679 to the claim limitations as opposed to the application of
`
`Suzuki ’922 to the claim limitations. (IPR2013-00082, Paper 33 at 4.) Instead, the
`
`Petitioner simply argues that Nagatani discloses “another way in which the types of
`
`deformities may differ between the top and bottom surfaces of the panel member.”
`
`(Petition at 50.) That is not an articulation of a meaningful distinction of the relative
`
`strengths and weaknesses of applying Nagatani to these claims instead of Suzuki
`
`’679. Without that discussion, Ground 5 is redundant and should be rejected.
`
`2. No Showing of Element [1.c]
`Element [1.c] requires “both the front and back sides having a pattern of light
`
`extracting deformities that are projections or depressions on or in the sides to cause
`
`light to be emitted from the panel member in a predetermined output distribution.”
`
`Petitioner relies on Fig. 5 (the “fourth embodiment”) to allegedly meet the first part
`
`of this limitation. (Petition at 50 (“Petitioner relies solely on the "fourth
`
`embodiment.”).) But, the Petition does not explain how the fourth embodiment
`
`meets the claim’s requirement that its deformities “cause light to be emitted from
`
`the panel member in a predetermined output distribution.” The fourth embodiment
`
`
`
`13
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`states that “present embodiment produces a combination of the effects of the first
`
`embodiment and the effects of the third embodiment.” (Ex. 1011 at 23.) The Petition
`
`never addresses that the combination of the effects of the first embodiments and the
`
`effects of the third embodiment would result in deformities that “cause light to be
`
`emitted from the panel member in a predetermined output distribution.” The Petition
`
`simply cites the alleged effects of embodiments 1 and 3, without discussing what the
`
`combination of their effects would be. (Petition at 54, citing Ex. 1011 at ¶¶20, 21,
`
`26). Without ever making an allegation of the output distribution in embodiment 4,
`
`the Petition fails to sufficiently show invalidity, and this Ground fails for claim 1
`
`and all of its dependent claims.
`
`F. Nagatani in view of Pristash – Obviousness of Claims 3, 8, and 13
`Petitioner next attempts to combine Nagatani in view of Pristash, using
`
`Pristash primarily meet the “transition region” limitation of those claims. (Petition
`
`at 48-49). This combination should be rejected for several reasons. First, the Petition
`
`fails to articulate a sufficient reason why these two references should be combined.
`
`The Supreme Court and Federal Circuit have long held the principle that mere
`
`assertions and conclusory statements cannot support an obviousness determination.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). But obviousness must be
`
`articulated by reasoning with rational underpinning to support the legal conclusion
`
`of obviousness. Id.; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on
`
`
`
`14
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`obviousness grounds cannot be sustained by mere conclusory statements; instead,
`
`there must be some articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness.”). Petitioner relies on the same conclusory
`
`reasoning as it does for Grounds 2 and 4 (Petition at 57-58), and for the reasons
`
`discussed above for Ground 2, Petitioner has not sufficiently articulated sufficient
`
`reasoning to combine these references.
`
`Second, Petitioner fails to consider the disclosures of Pristash and Nagatani
`
`as a whole when it concludes that they could be combined. For obviousness
`
`inquiries, the scope and content of the prior art must be considered as a whole,
`
`including disclosures in the references that diverge from and teach away from the
`
`invention at hand. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed.
`
`Cir. 1983. Considering Nagatini as a whole reveals that “The illustrated application
`
`example realizes high brightness, a thin and lightweight body, and power savings.”
`
`(Ex.1011 at 25 (emphasis added).) Ignoring that Nagatani seeks to reduce the weight
`
`of structure, the Petition concludes that it would have been obvious to combine
`
`Suzuki ’922 with Pristash, even though Pristash discloses this relatively large
`
`transition device 5:
`
`
`
`15
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`
`
`
`(Ex. 1014 at Fig. 1).
`
`Third, the combination is redundant with Ground 2. Petitioner never
`
`“articulated a meaningful distinction in terms of relative strengths and weaknesses
`
`with respect to application” of Nagatani in view of Pristash to the claim limitations
`
`as opposed to the application of Suzuki '679 in view of Pristash to the limitations of
`
`claims 3, 8, and 13.
`
`III. Conclusion
`The PTAB should deny institution for each of the above grounds for the
`
`reasons set forth herein.
`
`16
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00753
`Patent 7,537,370
`Dated: May 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`__________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that document has been served via electronic
`
`mail on May 27, 2015, to Petitioners at following email addresses pursuant to its
`
`consent in its Petition at p. 3: GGewirtz.ipr@ldlkm.com; JDavid.ipr@ldlkm.com;
`
`RHander.ipr@ldlkm.com; and CPDocketMcKeown@oblon.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`
`
`__________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201