UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 6,886,956
`Issue Date: May 3, 2005
`Title: LIGHT EMITTING PANEL ASSEMBLIES FOR USE IN AUTOMOTIVE
`APPLICATIONS AND THE LIKE
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,886,956
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2015-00798
`__________________________________________________________________
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`V.
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`
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`TABLE OF CONTENTS
`I.
`Mandatory Notices (37 C.F.R. § 42.8) ..................................................................... 1
`II. Grounds for Standing (37 C.F.R. § 42.104(a)) ....................................................... 2
`III.
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) ......................................................................... 3
`A.
`The ’956 Patent ............................................................................................... 3
`B.
`Prosecution History of the ’956 Patent ....................................................... 5
`C.
`Patents and Printed Publications Relied On ............................................... 8
`D.
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) .............. 8
`E.
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ........................................... 9
`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5)) ...... 10
`A.
`Claims 1, 4, 5, 6, 9, and 31 are Obvious in View of Decker ................... 10
`B.
`Claims 1, 4, 5, 6, and 31 are Obvious in View of Wu .............................. 24
`C.
`Claim 9 is Obvious in View of the Combination of Wu and
`Klinke ............................................................................................................. 37
`The Proposed Grounds of Unpatentability are not Redundant ............. 40
`1.
`The Claimed Light Guide ................................................................ 41
`2.
`The Claimed Substrate ..................................................................... 42
`3.
`The Claimed Depressions ................................................................ 43
`4.
`The Claimed Substrate Providing Protection ................................ 43
`Conclusion ................................................................................................................ 44
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`D.
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`-i-
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`TABLE OF AUTHORITIES
`
`Cases
`In re Rambus, Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ............................................................................................. 9
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) ....................................................................................... 18
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003 (Paper No. 7) (PTAB Oct. 25, 2012) .............................................. 40
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................................... 9, 10
`Square, Inc. v. J. Carl Cooper,
`IPR2014-00157 (Paper No. 17) (PTAB Jun. 23, 2014) ................................................. 9
`Statutes
`35 U.S.C. § 102(b) ................................................................................................................... 8
`35 U.S.C. § 103........................................................................................................................ 3
`35 U.S.C. § 103(a) .......................................................................................................... passim
`35 U.S.C. § 314(a) ..................................................................................................... 24, 37, 39
`35 U.S.C. §§ 102(a) and (e) .................................................................................................... 8
`Rules
`37 C.F.R. § 42.100(b) ............................................................................................................. 9
`37 C.F.R. § 42.104(a) .............................................................................................................. 2
`37 C.F.R. § 42.104(b)(1)-(2) ................................................................................................... 8
`37 C.F.R. § 42.104(b)(1)-(3) ................................................................................................... 3
`37 C.F.R. § 42.104(b)(3) ......................................................................................................... 9
`37 C.F.R. § 42.104(b)(4)-(5) ................................................................................................. 10
`37 C.F.R. § 42.22(a)(1) ........................................................................................................... 3
`37 C.F.R. § 42.8....................................................................................................................... 1
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`-ii-
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`
`Exhibit 1006
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`Exhibit 1007
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`Exhibit 1008
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`Exhibit 1009
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`
`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 1013
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`Exhibit 1014
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`Exhibit 1015
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`LISTING OF EXHIBITS
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`U.S. Patent No. 6,886,956 to Parker et al.
`
`Declaration of Dr. Roland Winston
`
`Non-Final Office Action, dated Sept. 8, 2003, in U.S.
`Patent Application Serial No. 10/298,367
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`U.S. Patent No. 5,613,751 to Parker et al.
`
`Reply to Office Action, dated Nov. 14, 2003, in U.S. Patent
`Application Serial No. 10/298,367
`
`Final Office Action, dated Feb. 12, 2004, in U.S. Patent
`Application Serial No. 10/298,367
`U.S. Patent No. 5,467,417 to Nakamura et al.
`
`Reply to Office Action, dated June 14, 2004, in U.S. Patent
`Application Serial No. 10/298,367
`
`Non-Final Office Action, dated June 29, 2004, in U.S.
`Patent Application Serial No. 10/298,367
`
`U.S. Patent No. 4,733,335 to Serizawa et al.
`
`Reply to Office Action, dated Sept. 29,2 2004, in U.S.
`Patent Application Serial No. 10/298,367
`
`Notice of Allowance, dated Jan. 5, 2005, in U.S. Patent
`Application Serial No. 10/298,367
`
`German Patent Application Publication No. DE 41 29 094
`to Decker, and its certified English translation
`
`U.S. Patent No. 5,165,772 to Wu
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`U.S. Patent No. 5,404,282 to Klinke et al.
`-iii-
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`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`Real Party-in-Interest:
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`Volkswagen Group of America, Inc. (VWGoA”), which is a subsidiary of
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`Volkswagen AG.
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`Related Matters:
`
`The following judicial matters may affect, or may be affected by, a decision in this
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`inter partes review: Innovative Display Technologies LLC v. Volkswagen Group of America, Inc.
`
`et al., No. 2:14-cv-300-JRG-RSP (E.D. Tex.), naming as defendants VWGoA and
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`Volkswagen Group of America Chattanooga Operations, LLC, which is a subsidiary
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`of VWGoA; Innovative Display Technologies LLC v. BMW of North America, LLC, et al.,
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`No. 2:14-cv-106 (E.D. Tex.), Innovative Display Technologies LLC v. Toyota Motor Corp. et
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`al., No. 2:14-cv-200 (E.D. Tex.), Innovative Display Technologies LLC v. Hyundai Motor
`
`Group et al., No. 2:14-cv-201 (E.D. Tex.), Innovative Display Technologies LLC v. Nissan
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`Motor Co., Ltd. et al., No. 2:14-cv-202 (E.D. Tex.), Innovative Display Technologies LLC v.
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`American Honda Motor Co., Inc. et al., No. 2:14-cv-222 (E.D. Tex.), Innovative Display
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`Technologies LLC v. Mercedes-Benz U.S. Int’l, Inc. et al., No. 2:14-cv-535 (E.D. Tex.),
`
`Innovative Display Technologies LLC v. Mazda Motor Corp. et al., No. 2:14-cv-624 (E.D.
`
`Tex.), Innovative Display Technologies LLC v. AT&T Inc. et al., No. 2:14-cv-720 (E.D.
`
`Tex.), Innovative Display Technologies LLC v. Sprint Corp. et al., No. 2:14-cv-721 (E.D.
`
`Tex.), Innovative Display Technologies LLC v. Ford Motor Co., No. 1:14-cv-849 (D. Del.),
`
`Innovative Display Technologies LLC v. General Motors LLC, No. 1:14-cv-850 (D. Del.),
`1
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`Innovative Display Technologies LLC v. Verizon Communications Inc., et al., No. 2:14-cv-722
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`(E.D. Tex.), and Innovative Display Technologies LLC v. ZTE Corp., et al., No. 2:13-cv-527
`
`(E.D. Tex.).
`
`The following administrative matters may affect, or may be affected by, a decision
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`in this inter partes review: Koito Manufacturing Co., Ltd. et al. v. Innovative display Technologies
`
`LLC, Trial No. IPR2015-00575; U.S. Patent No. 5,895,115; U.S. Patent No.
`
`6,158,867; U.S. Patent No. 6,367,940; U.S. Patent No. 6,508,563; and U.S. Patent No.
`
`6,796,668.
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`Counsel:
`
`Lead Counsel:
`
` Michael J. Lennon, Reg. No. 26,562
`
`Backup Counsel: Clifford A. Ulrich, Reg. No. 42,194;
`Michelle Carniaux, Reg. No. 36,098
`
`Electronic Service: ptab@kenyon.com
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`Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York NY 10004.
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`Telephone: 212-425-7200 Facsimile: 212-425-5288
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that U.S. Patent No. 6,886,956 (“the ’956 patent”) for which
`
`review is sought is available for inter partes review and that Petitioner is not barred or
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`estopped from requesting an inter partes review challenging the patent claims on the
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`grounds identified in this petition.
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`2
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`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`
` Petitioner challenges claims 1, 4, 5, 6, 9, and 31 of the ’956 patent under 35 U.S.C.
`
`§ 103, and cancelation of those claims is requested.
`
`A. The ’956 Patent
`
`The ’956 patent issued on May 3, 2005 from U.S. Patent Application No.
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`10/298,367 (“the ’367 application”), filed November 18, 2002. The ’956 patent
`
`includes 33 claims, of which only claim 1 is independent. Independent claim 1 is
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`reproduced below.
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`1. A light emitting assembly for vehicle illumination 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 diodes and conducting the light form 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.
`The ’956 patent describes a light emitting panel assembly for automotive
`
`applications, including “brake or turn signal lights and/or turning or backup
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`illumination for a vehicle.” Col. 1, ll. 24-32; col. 2, ll. 15-20. Referring to Figs. 3 and 4
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`(reproduced below), such automotive exterior lighting applications include light
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`3
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`assemblies mounted to a vehicle to light an exterior surface of the vehicle. Col. 8, ll.
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`33-45 (“FIGS. 3 and 4 show several automotive exterior lighting applications
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`including one in which a light emitting panel assembly 21 is mounted in a back end or
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`bumper 22 of a vehicle 23 … to light a logo, step, running board, or other surface
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`area of a vehicle.”). The ’956 patent describes “light extracting deformities,” which
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`appear on one or more sides of a light emitting panel member, and which may be
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`customized to a particular need or application. Col. 6, ll. 23-25 (“The deformities may
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`also be used to control the output ray angle distribution of the emitted light to suit a
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`particular application.”); Ex. 1002, ¶ 7.
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`
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`Figs. 3 and 4 illustrate several automotive exterior lighting applications, including
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`light emitting panel assembly 21 mounted on a vehicle bumper 22, light emitting panel
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`assembly 24 mounted on the rear, front, or sides of a vehicle, and light emitting panel
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`assembly 26 mounted on a vehicle trunk lid 27. Col. 8, ll. 33-50. Light sources 9 may
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`be provided along light input surfaces of the light emitting panel members. Col. 8, ll.
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`4
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`59-63 (“FIGS. 3 and 4 may require a plurality of closely spaced light sources 9 and
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`associated light transition regions 10 along one or more light input surfaces of the
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`panel members.”); Ex. 1002, ¶ 7.
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`B. Prosecution History of the ’956 Patent
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`The ’367 application (which issued as the ’956 patent) was filed with application
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`claims 1-52, of which claims 1, 17, 24, 25, 26, and 34 were independent. In response
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`to a restriction requirement, Applicants elected to pursue claims 1-25, characterized
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`both by the Examiner and the Applicants as a “light assembly for a vehicle having a
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`plurality of light extracting deformities.” Claim 1, as filed, is reproduced below. See Ex.
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`1002, ¶ 8.
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`1. A light emitting panel assembly for vehicle illumination comprising
`a light guide having at least one light input surface, a plurality of closely
`spaced light sources along said light input surface for supplying light to
`said light guide, a plurality of light extracting deformities on at least one
`surface of said light guide, 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 surface of
`said light guide.
`In an Office Action issued September 8, 2003 (Ex. 1003), claims 1 to 25 were
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`rejected for obviousness-type double patenting, in view of U.S. Patent No. 5,613,751
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`(“the ’751 patent,” Ex. 1004). The Applicants responded on November 14, 2003 (Ex.
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`1005), by filing a terminal disclaimer over the ’751 patent.
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`In an Office Action dated February 12, 2004 (Ex. 1006), claims 1-6, 8, 10, 14-17,
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`19, 20, 22, 23, and 25 were rejected as anticipated by U.S. Patent No. 5,467,417
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`(“Nakamura et al.,” Ex. 1007), while claims 7, 9, 11-13, 18, 21, and 24 were rejected as
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`obvious in view of Nakamura et al. The Applicants responded with a Request for
`
`Continued Examination, amending claims 1, 10, 11, 17, and 26, canceling claims 9, 24,
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`and 25, and adding new claims 53-55, leaving application claim 1 as the only
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`independent claim (see Ex. 1008). Amended claim 1 is reproduced below. See Ex. 1002,
`
`¶ 9.
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`1. A light emitting panel assembly for vehicle illumination comprising
`a light guide having at least one light input surface, one or more light
`emitting diodes a plurality of closely spaced light sources along said light
`input surface for supplying light to said light guide, a plurality of light
`extracting deformities on at least one surface of said light guide, 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 surface of said light guide,
`said substrate providing an exterior portion of a vehicle for vehicle
`illumination at said exterior portion.
` The Applicants argued that Nakamura et al. fails to disclose the added limitation of
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`claim 1 (“said substrate providing an exterior portion of a vehicle for vehicle
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`illumination at said exterior portion”) because it relates to personal computers, and
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`not vehicles.
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`The Examiner then issued another Office Action on June 29, 2004 (Ex. 1009),
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`rejecting claims 1-6, 8, 10, 11, 14-17, 19-23, 53, and 54 as anticipated by U.S. Patent
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`No. 4,733,335 (“Serizawa et al.,” Ex. 1010), and claims 7, 12, 13, 18, and 55 as
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`obvious in view of Serizawa et al. In response, on September 29, 2004, the Applicants
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`again amended claims 1, 5-7, 12, 13, 17, 23, 29, 32, and 33 (Ex. 1011). Amended claim
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`1 is reproduced below. See Ex. 1002, ¶ 10.
`
`1. A light emitting panel assembly for vehicle illumination 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 supplying light to said light
`guide 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, a plurality of light extracting deformities on at least one surface of
`said light guide 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
`surface of said light guide of said sides, said substrate providing an
`exterior portion of a vehicle for vehicle illumination at said exterior
`portion.
`A Notice of Allowance issued on January 5, 2005 (Ex. 1012). The Notice of
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`Allowance only provided a general statement of the Examiner’s reasons for allowance:
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`“Claims 1-8, 10-23, 26-33 and 53-55 are allowable in view of the Amendment to
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`claims filed 10/25/2004 and further in view of Applicant remarks.” Ex. 1012, p. 3.
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`The ’956 patent issued on May 3, 2005. Thus, the prosecution history identifies the
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`7
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`following limitations of claim 1 as the basis for allowance of the ’956 patent: “one or
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`more light emitting diodes along at least one edge of the light guide, the light guide
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`conducting light from the light emitting diodes from said edge for emission of the
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`light from at least one of said sides [of the light guide].” See, Ex. 1002, ¶ 11.
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`C. Patents and Printed Publications Relied On
`
`German Patent Publication No. 41 29 094, assigned on its face to Hella HG
`
`Hueck & Co. (“Decker,” with a certified English translation, Ex. 1013), published on
`
`March 4, 1993, constitutes prior art against the ’956 patent under 35 U.S.C. § 102(b).
`
`U.S. Patent No. 5,165,772, assigned on its face to Hughes Aircraft Company
`
`(“Wu,” Ex. 1014), issued on November 24, 1992, constitutes prior art against the ’956
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`patent under 35 U.S.C. § 102(b).
`
`U.S. Patent No. 5,404,282, assigned on its face to Hewlett-Packard Company
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`(“Klinke,” Ex. 1015), issued April 4, 1995, from U.S. Patent Application No.
`
`08/293,110, filed August 19, 1994, constitutes prior art against the ’956 patent at least
`
`under 35 U.S.C. §§ 102(a) and (e).
`
`D. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
`
` Cancelation of claims 1, 4, 5, 6, 9, and 31 is requested on the following grounds,
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`each of which demonstrates that the challenged claims are unpatentable, and that
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`there is a reasonable likelihood that Petitioner will prevail with respect to at least one
`
`of the challenged claims. The proposed grounds of unpatentability are not redundant,
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`8
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`
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`and inter partes review of the ’956 patent should be instituted based on each of the
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`following:
`
`A. Claims 1, 4, 5, 6, 9, and 31 are obvious under 35 U.S.C. § 103(a) in view of
`
`Decker
`
`B. Claims 1, 4, 5, 6, and 31 are obvious under 35 U.S.C. § 103(a) in view of Wu
`
`C. Claim 9 is obvious under 35 U.S.C. § 103(a) in view of the combination of Wu
`
`and Klinke
`
`E. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`Generally, the claim terms in an unexpired patent should be given their broadest
`
`reasonable construction in view of the specification. 37 C.F.R. § 42.100(b). Claim
`
`terms in an expired patent are construed according to the principles of Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). See, e.g., Square, Inc. v. J. Carl
`
`Cooper, IPR2014-00157 (Paper No. 17) (PTAB Jun. 23, 2014) (citing In re Rambus, Inc.,
`
`694 F.3d 42, 46 (Fed. Cir. 2012)).1 Under the Phillips standard, the claim terms are
`
`generally presumed to take on their ordinary and customary meaning, as would be
`
`understood by a person of ordinary skill in the art, at the time of the invention,
`
`considering the claim language, the specification, and the prosecution history. The
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`
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`1 As noted by the Board in Square, the claims will not be construed to preserve the
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`validity of the claims. Id. at n. 1.
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`9
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`specification of the ’956 patent does not present any special definition for any claim
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`term, and the prosecution history of the ’956 patent does not include any claim
`
`construction arguments.
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`The ’956 patent, on its face, claims the benefit of the January 16, 1996 filing date
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`of U.S. Patent No. 5,895,115, and therefore will expire on January 16, 2016,2 possibly
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`before a final written decision on this Petition. As the ’956 patent and its prosecution
`
`history do not present any special definitions or claim construction arguments,
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`whether the claims of the ’956 patent are reviewed under the “broadest reasonable
`
`interpretation” standard or the Phillips standard should not affect the interpretation of
`
`the claims of the ’956 patent.
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`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5))
`
`A. Claims 1, 4, 5, 6, 9, and 31 are Obvious in View of Decker
`Claims 1, 4, 5, 6, 9, and 31 are obvious under 35 U.S.C. § 103(a) in view of Decker.
`
`Decker was not cited by the Examiner or the Applicants during prosecution of the
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`’956 patent, despite being cited in a related European patent application, i.e.,
`
`European Patent Application No. 04007904.8 (granted as European Patent No. 1 443
`
`
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`2 As noted above, the ’956 patent is terminally disclaimed over the ’751 patent, filed
`
`on June 27, 1995, and will therefore become unenforceable on June 27, 2015, or at
`
`any time that the ’956 and ’751 patents are not commonly owned.
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`10
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`432) in a Search Report issued by the European Patent Office on June 17, 2004,
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`nearly one year before the May 3, 2005 issue date of the ’956 patent.
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`Decker teaches a signal lamp for a vehicle, used as a taillight, brake light, turn
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`signal, or backup light. Col. 3, ll. 51-56; col. 4, ll. 18-22.3 The signal lamp includes a
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`housing and/or a mounting device for installation in or attachment to a motor vehicle
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`chassis. Abstract, ll. 1-3; col. 1, ll. 2-8. The signal lamp also includes optical waveguide
`
`elements L having prisms P on one side of each of the optical waveguide elements L.
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`An LED is positioned at one end of the optical waveguide element L, and projects
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`light to the light incoupling surface LK of the optical waveguide element L. Col. 5, ll.
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`8-29; see also, Fig. 3, reproduced below; Ex. 1002, ¶¶ 12–13.
`
` The optical waveguide element L constitutes the claimed “light guide,” its top and
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`bottom surfaces constitute “opposite sides,” and its light incoupling surface LK
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`constitutes a “light input surface along at least one edge of said light guide.” Decker
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`
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`
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`3 Citations to Decker refer to the certified English translation.
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`11
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`
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`therefore teaches “a light guide having opposite sides and at least one light input
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`surface along at least one edge of said light guide.” Ex. 1002, ¶ 12.
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`Light from the LED “impinging upon the prisms (P) is reflected by the shape and
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`the placement of the prisms (P) and … exits the optical waveguide element (L) in the
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`light emission direction.” Col. 6, ll. 14-18. The LED is positioned adjacent the light
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`incoupling surface LK and along the edge of the light guide L. Therefore, Decker
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`teaches “one or more light emitting diodes along at least one edge of the light guide.”
`
`Ex. 1002, ¶ 12.
`
`As illustrated in Fig. 3, above, light emitted from the LED enters the light guide L
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`through the light incoupling surface LK, i.e., the light incoupling surface LK receives
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`light from the LED, is conducted through the light guide L, is reflected by the prisms
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`P, and is emitted through the bottom side of the light guide, i.e., light is conducted
`
`from the edge for emission from at least one of the sides of the light guide L.
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`Therefore, Decker teaches “said light input surface for receiving light from said light
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`emitting diodes and conducting the light from said edge for emission of the light from
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`at least one of said sides,” which, as stated above, was added by amendment to claim
`
`1 to secure its allowance. Ex. 1002, ¶ 13.
`
`The prisms P produce particular light radiation characteristics, desired light
`
`diffusion, or desired light patterns. Col. 2, ll. 29-45; col. 5, ll. 38-47 (“Depending on
`
`the desired light diffusion and the light pattern to be produced, the dispersion angle of
`
`the radiated light is able to be varied by varying the prism angle and/or the prism
`12
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`partitioning.”); Fig. 3 (reproduced above). The ’956 patent expressly describes
`
`“prismatic surfaces” as examples of what are referred to in the ’956 patent as “light
`
`extracting deformities.” See, e.g., Ex. 1001, col. 7, ll. 1-9 (“In addition to or in lieu of
`
`these light extracting deformities, other light extracting deformities including prismatic
`
`surfaces, depressions or raised surfaces of various shapes using more complex shapes in
`
`a mold pattern may be molded, etched, stamped, thermoformed, hot stamped or the
`
`like into or on one or more surface areas of the panel members. The prismatic surfaces,
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`depressions or raised surfaces will cause a portion of the light rays contacted thereby
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`to be emitted from the panel members.” (emphasis added)). As illustrated in Fig. 3,
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`the prisms P are provided on the top side of the light guide L. Thus, the prisms P of
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`Decker constitute the claimed “plurality of light extracting deformities on at least one
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`of said sides.” Ex. 1002, ¶¶ 14-15.
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`As for the recitation in claim 1 that the light extracting deformities have “shapes
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`for controlling an output ray angle distribution of emitted light to suit a particular
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`application,” as noted above, the ’956 patent describes, for example, automotive
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`exterior lighting applications that light a surface area of the vehicle, and describes
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`lighting functions such as brake or turn signal lights. Ex. 1001, col. 2, ll. 15-20; col. 8,
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`ll. 33-45. Further, to fit a particular application, the ’956 patent describes using “a
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`desired light output distribution.” Id., col. 4, ll. 59-65. As stated above, Decker teaches
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`use of its signal lamp in automotive exterior lighting applications, including taillights,
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`brake lights, turn signals, and backup lights, and that “the dispersion angle of the
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`radiated light is able to be varied by varying the prism angle and/or the prism
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`partitioning,” “[d]epending on the desired light diffusion and the light pattern to be
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`produced.” Col. 2, ll. 29-45; col. 4, ll. 18-22; col. 5, ll. 38-47. The dispersion angle of
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`the radiated light described by Decker (i.e., the claimed output ray angle distribution of
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`emitted light) is therefore controlled to suit a particular application, e.g., the brake
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`lights, turn signals, and backups lights. Ex. 1002, ¶ 14. Moreover, certain fundamental
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`principles of optics, including the law of reflection and Snell’s law, show that the
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`geometry of an optical element will determine the output ray angle distribution of
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`light emitted from that optic. For example, according to Snell’s law:
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`
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`sin
`sin
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`θθ
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`12
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`=
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`21
`nn
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`in which n1 and n2 represent the refractive index of each medium, and θ1 and θ2
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`represent the angle between the normal and the incident ray and the angle between
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`the normal and refracted ray, the ratio between the index of refraction of a first
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`medium and the index of refraction of a second medium equals the ratio between the
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`sine of the angle between the normal and refracted ray and the sine of the angle
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`between the normal and incident ray. Thus, varying the prism angle or prism
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`partitioning, as described by Decker, would result in a desired output ray angle
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`distribution. Ex. 1002, ¶¶ 3-6, 16.
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`Regarding the claimed transparent substrate, Decker describes a transparent cover
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`lens A placed over the optical waveguide elements L, so that Decker teaches “a
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`14
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`transparent substrate overlying at least one of said sides.” Col. 5, ll. 62-68; see also, Figs.
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`1 and 5, reproduced below.
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`
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`Decker describes that “the signal lamp is used as taillight and/or brake light
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`and/or turn signal and/or backup light in motor vehicles” (col. 3, ll. 51-53) and that
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`the signal light provides “an especially uniform illumination and thus has a great
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`signaling and warning effect” (col. 3, ll. 35-39), so that the emitted light is intended to
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`be seen from the exterior of the vehicle in which it is installed. Ex. 1002, ¶ 17.
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`Further, optical waveguide elements L are disposed “behind a transparent cover lens
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`(A).” Col. 5, ll. 62–68. Decker describes known vehicle warning lamps that achieve “a
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`uniform illumination of the transparent cover lens” by providing a large number of
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`LEDs, which is expensive to manufacture and requires significant current. Col. 1, ll.
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`24-35. Decker’s improvement avoids these costs by replacing the large number of
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`LEDs with a smaller number of LEDs combined with optical waveguide elements,
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`while still achieving the “high signaling and warning effect” and “uniform
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`illumination.” Col. 1, ll. 36-65. Thus, Decker teaches illuminating the transparent
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`cover lens A. Ex. 1002, ¶ 17. A person of ordinary skill in the art, at the time the
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`alleged invention of claim 1 was made, would have found it obvious to provide the
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`transparent cover lens A itself as an exterior portion of a vehicle, e.g., as the
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`transparent lens of a taillight, brake light, turn signal, or backup light, or to provide an
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`additional transparent lens, downstream of the transparent cover lens A, as an exterior
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`portion of a vehicle, e.g., as the transparent lens of a taillight, brake light, turn signal,
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`or backup light, to achieve the “large signaling and warning effect.”. Ex. 1002, ¶ 17.
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`Regarding dependent claim 4, which describes that “said substrate is positioned
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`against said light guide,” Fig. 5 of Decker, for example, illustrates transparent cover
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`lens A (the claimed substrate) positioned against the optical waveguide elements L
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`(the claimed light guides) (see Ex. 1002, ¶ 18):
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`
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`Regarding dependent claim 5, which describes that “said substrate covers said at
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`least one of said sides,” Figs. 1 and 5 of Decker, for example, illustrate transparent
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`cover lens A (the claimed substrate) covering at least one of the sides of the optical
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`waveguide elements L (the claimed light guides) (see Ex. 1002, ¶ 18):
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`Regarding dependent claim 6, which describes that “said deformities are at least
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`one of depressions and raised surfaces on at least one of said sides,” Decker describes
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`prisms P on a side of optical waveguide element L, the prisms including depressions
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`and raised surfaces, as illustrated in Fig. 3. Col. 5, ll. 38-47 (“each optical waveguide
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`element (L) includes prisms (P) on the side facing away from the light emission
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`surface, a few of these prisms being shown here by way of example.”) (see Ex. 1002, ¶
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`18):
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`
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`Specifically, the saw-tooth pattern of prisms P consists of alternating peaks and
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`valleys. The valley between each adjacent pair of peaks can be considered a
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`“depression” relative to the top-most surface of the peaks. Correspondingly, the peak
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`between each adjacent pair of valleys can be considered a “raised surface” relative to
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`17
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`the bottom-most surface of the valleys. Accordingly, Decker teaches that said
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`“deformities are at least one of depressions and raised surfaces on at least one of said
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`sides.”
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`Regarding dependent claim 9, which describes that “said light emitting diodes are
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`attached to a circuit,” Decker describes LEDs fixed to a shared circuit board LP. Col.
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`4, ll. 56-59 (“The light diodes (LED) are disposed in rows, fixed in place on a shared
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`circuit board (LP) and electrically contacted.”); Fig. 2; see Ex. 1002, ¶ 18.
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`Dependent claim 31 describes that “said substrate provides protection for the light
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`guide.” First, the language of claim 31 describes only the function of the substrate,
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`without further describing its structure. Thus, Decker need not expressly describe that
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`the transparent cover lens A provide protection for the light guide to constitute a
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`teaching of this limitation of claim 31. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78
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`(Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old
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`product does not make a claim to that old product patentable.”). Nonetheless, Decker
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`describes a “transparent cover lens A,” and also “transparent