IPR Petition of U.S. Patent No. 6,886,956
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`
`Patent Owner
`
`______________
`
`Case No.: IPR2015-00829
`Patent No. 6,886,956
`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
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Table of Contents
`Introduction ...................................................................................................... 1 
`
`Grounds for Standing ....................................................................................... 1 
`
`I. 
`
`II. 
`
`III. 
`
`Identification of Challenge .............................................................................. 1 
`
`A.  Overview of the ’956 Patent .................................................................. 1 
`
`B. 
`
`C. 
`
`D. 
`
`1. 
`
`2. 
`
`3. 
`
`The ’956 Patent Specification ..................................................... 2 
`
`The ’956 Patent Claims ............................................................... 4 
`
`The ’956 Patent Prosecution History .......................................... 5 
`
`Claim Construction of the Challenged Claims ..................................... 5 
`
`Level of Skill in the Art ......................................................................... 7 
`
`Statement of Precise Relief Requested for Each Claim
`Challenged ............................................................................................. 7 
`
`1. 
`
`2. 
`
`Claims for Which Review Is Requested ..................................... 7 
`
`Statutory Grounds of Challenge ................................................. 7 
`
`E. 
`
`Overview of the Cited Art ..................................................................... 8 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Decker (1993) ........................................................................... 12 
`
`Tsuboi (1982) ............................................................................ 14 
`
`Asai (1986) ................................................................................ 16 
`
`Additional References Containing Relevant Teachings ........... 18 
`
`IV.  Detailed Explanation of the Challenge .......................................................... 18 
`
`A.  Ground 1: Decker anticipates claims 1, 4-6, 9, and 31 under
`35 U.S.C. § 102(b)............................................................................... 18 
`
`1. 
`
`Chart comparing Decker to claims 1, 4-6, 9, and 31 ................ 24 
`
`i
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`

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`IPR Petition of U.S. Patent No. 6,886,956
`
`
`B. 
`
`Ground 2: Claims 1, 4-6, 9, and 31 are unpatentable under 35
`U.S.C. § 103 as obvious over Tsuboi in view of Asai, further in
`view of Gage and Lister. ..................................................................... 29 
`
`1. 
`
`Tsuboi in view of Asai provides every feature of the
`Challenged Claims .................................................................... 30 
`
`2.  Motivation to combine Asai’s light guide features with
`Tsuboi’s light guide .................................................................. 38 
`
`3. 
`
`4. 
`
`Additional motivation to use an LED light source – Gage
`and Lister ................................................................................... 41 
`
`Chart comparing Tsuboi in combination with Asai, in
`view of Gage and Lister, to claims 1, 4-6, 9 and 31 ................. 42 
`
`C. 
`
`Ground 3: Claim 4 is invalid under 35 U.S.C. § 103(a) as
`obvious over Decker in view of Arima. .............................................. 47 
`
`1.  Motivation to combine Decker with Arima to position the
`substrate “against” the light guide ............................................ 48 
`
`2. 
`
`Chart comparing Decker in view of Arima to claim 4 ............. 50 
`
`D.  Ground 4: Claim 4 is invalid under 35 U.S.C. § 103(a) as
`obvious over Decker in view of Tsuboi. ............................................. 51 
`
`1.  Motivation to combine Decker with Tsuboi to position
`the substrate “against” the light guide ...................................... 51 
`
`2. 
`
`Chart comparing Decker in view of Tsuboi to claim 4 ............ 53 
`
`V.  Mandatory Notices ......................................................................................... 54 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party in Interest ........................................................................... 54 
`
`Related Matters .................................................................................... 54 
`
`Lead and Backup Counsel, and Service Information .......................... 58 
`
`VI.  Payment of Fees ............................................................................................. 58 
`
`VII.  Conclusion ..................................................................................................... 59 
`
`ii
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`IPR Petition of U.S. Patent No. 6,886,956
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`In re Johnston,
`435 F.3d 1381 (Fed. Cir. 2006) .......................................................................... 41
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 42, 50, 53
`
`Ex parte Masham,
`2 U.S.P.Q.2d 1647 (BPAI 1987) ........................................................................ 38
`
`Research Corp. Techs., Inc. v. Gensia Laboratories, Inc.,
`10 Fed. Appx. 856 (Fed. Cir. 2001) .............................................................. 23, 38
`
`Federal Statutes
`
`35 U.S.C. § 102 ........................................................................................ 7, 12, 18, 56
`
`35 U.S.C. § 103 .......................................................................................... 7, 8, 47, 51
`
`35 U.S.C. § 103 ........................................................................................................ 29
`
`35 U.S.C. § 311 .................................................................................................... 7, 59
`
`35 U.S.C. § 315 .................................................................................................... 1, 57
`
`Regulations
`
`37 C.F.R. § 42.8 ....................................................................................................... 58
`
`37 C.F.R. § 42.15 ..................................................................................................... 58
`
`Board Authority
`Panel Claw Inc. v. Sunpower Corp.,
`Paper 7, IPR2014-00386 (June 30, 2014) ............................................................. 6
`
`iii
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`IPR Petition of U.S. Patent No. 6,886,956
`
`Manual of Patent Examining Procedure
`
`MPEP § 2111.04 ................................................................................................ 23, 38
`
`MPEP § 2114(II) .......................................................................................... 23, 24, 38
`
`iv
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`IPR Petition of U.S. Patent No. 6,886,956
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`
`
`Exhibit List
`
`Description
`Exhibit
`1001 U.S. Patent No. 6,886,956 (“the ’956 patent”)
`
`1002 Excerpts from File History for U.S. Application No. 10/298,367
`
`1003 Declaration of John L. West, Ph.D. (“West Declaration”)
`
`1004 German Unexamined Patent Specification No. DE 41 29 094 A1,
`published March 4, 1993 (with certified translation) (“Decker”)
`
`1005
`
`1006
`
`Japanese Laid Open Utility Model No. JPS57-60171, published
`December 22, 1982 (with certified translation) (“Tsuboi”)
`
`Japanese Laid Open Utility Model No. JPS61-153201, published
`September 22, 1986 (with certified translation) (“Asai”)
`
`1007 U.S. Patent No. 5,005,108, filed Feb. 10, 1989, issued Apr. 2, 1991
`(“Pristash”)
`
`1008 PCT Application Pub. No. 10 94/01716 (published Jul. 10, 1992)
`(“Parker-716”)
`
`1009 Exhibit C2 to IDT’s Preliminary Infringement Contentions vs. Toyota,
`Innovative Display Technologies LLC [“IDT”] v. Toyota Motor
`Corporation, et al., C.A. (2:14- cv-200) (E.D. Tex.) (served Nov. 18,
`2014) (“Infringement Contentions”)
`
`1010 S. Gage et al., Optoelectronics/Fiber-Optics Applications Manual (2d ed.
`1981) (excerpts) (“Gage”)
`
`1011 M. Lister, LEDs for exterior lighting, Automotive Engineer v. 17 no. 5
`(Oct./Nov. 1992) (“Lister”)
`
`1012
`
`Japanese Laid Open Unexamined Utility Model No. JPS62-201407,
`published December 22, 1987 (with certified translation) (“Arima”)
`
`v
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`Description
`Exhibit
`1013 H. Satsukawa, Optical System for Illuminating the Lateral Section of
`Wraparound Lamps, SAE Technical Paper Series No. 920812, Int’l
`Congress and Exposition (Detroit, Mich., Feb. 24-28, 1992)
`(“Satsukawa”)
`
`
`
`vi
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`I.
`
`Introduction
`Petitioner Toyota Motor Corporation (“Petitioner”) requests Inter Partes
`
`Review (“IPR”) of claims 1, 4, 5, 6, 9, and 31 (collectively, the “Challenged
`
`Claims”) of U.S. Patent No. 6,886,956 (“the ’956 patent”) (Ex. 1001).
`
`II. Grounds for Standing
`Petitioner certifies that the ’956 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR of the Challenged Claims
`
`on the grounds identified herein. Specifically: (1) Petitioner is not the owner of the
`
`’956 patent; (2) Petitioner has not filed a civil action challenging the validity of a
`
`claim of the ’956 patent; (3) this petition is filed less than one year after the date on
`
`which Petitioner, Petitioner’s real party in interest, or a privy of Petitioner was
`
`served with a complaint alleging infringement of the ’956 patent; (4) the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR; and (5) this petition is
`
`filed after the later of (a) the date that is nine months after the date of the grant of
`
`the ’956 patent or (b) the date of termination of any post-grant review of the ’956
`
`patent.
`
`III.
`
`Identification of Challenge
`A. Overview of the ’956 Patent
`The ’956 patent, titled “Light Emitting Panel Assemblies for Use in
`
`Automotive Applications and the Like,” was filed on November 18, 2002, as U.S.
`
`Application No. 10/298,367, a continuation of Application No. 10/005,090 (filed
`
`1
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`Dec. 5, 2001), now Pat. No. 6,508,563, which is a continuation of Application No.
`
`09/703,088 (filed Oct. 31, 2000), now U.S. Patent No. 6,367,940, which is a
`
`continuation of Application No. 09/167,949 (filed Oct. 7, 1998), now U.S. Patent
`
`No. 6,158,867, which is a division of Application No. 08/585,062 (filed Jan. 16,
`
`1996), now U.S. Patent No. 5,895,115. The earliest priority date to which the ’956
`
`patent may be entitled is January 16, 1996.
`
`1.
`The ’956 patent relates to light emitting panel assemblies for use in
`
`The ’956 Patent Specification
`
`automotive applications. Ex. 1001, ’956 patent at 1:18-20. The ’956 patent
`
`acknowledges that “[l]ight emitting panel assemblies are generally known,” and
`
`purports to provide improvements over such known assemblies. Id. at 1:24-27.
`
`The ’956 patent describes examples of “light emitting panel assemblies 24
`
`[that] are mounted in body panels 25 along the rear, front and/or sides of a vehicle
`
`to provide vehicle running lights or accent lights or to light a logo, step, running
`
`board, or other surface area of a vehicle,” as illustrated in Figure 4 (reproduced
`
`below), which is a cross-sectional view of Figure 3. Id. at 8:33-41. The ’956 patent
`
`states that “these panel members 29 may form the exterior surface of the body
`
`panel 25 as shown at the left hand side of FIG. 4 or a lens or film 34 [highlighted
`
`below in green] may cover the panel members as shown at the right hand side of
`
`FIG. 4.” Id. at 9:8-12 (emphases added).
`
`2
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`
`According to the patent, “light sources” (9) [highlighted below in red] may
`
`be positioned “along the back edges of the panel members 29 [highlighted below in
`
`yellow] used to provide running taillights for a vehicle.” Id. at 8:60-67. The light
`
`sources may be “embedded, potted or bonded in the light transition regions of the
`
`panels,” “mechanically held in place by a holder . . . in a slot in an edge of the
`
`panel member,” or “a fiber optic light pipe 64 [may be used] for transmitting light
`
`to the panel member from a remote light source 65.” Id. at 9:13-22.
`
`’956 Patent, Fig. 4 (annotated)
`
`
`
`Light enters the panel members 28, 29 from the light transition regions 10, and the
`
`light is “emitted along the entire length of the panel members or from one or more
`
`light output surface areas along their length . . . to produce a desired light output
`
`distribution to fit a particular application.” Ex. 1001 at 4:59–65.
`
`Further, according to the ’956 patent, deformities or disruptions are formed
`
`on at least one surface of the panel member to cause the light to be emitted. Id. at
`
`5:38–41. The deformities are angled in such a way that when the light strikes one
`
`or more deformities, it is reflected with an angle great enough that the light exits
`
`the panel member. Id. at 5:45-52.
`
`3
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`2.
`Exemplary claim 1 recites a light emitting assembly for vehicle illumination
`
`The ’956 Patent Claims
`
`comprising: [1.a] a light guide having opposite sides and at least one light input
`
`surface along at least one edge of said light guide, [1.b] one or more light emitting
`
`diodes along said light input surface for receiving light from said light emitting
`
`diodes, [1.c] conducting the light from said edge for emission of the light from at
`
`least one of said sides, [1.d] a plurality of light extracting deformities on at least
`
`one of said sides, said deformities having shapes for controlling an output ray
`
`angle distribution of emitted light to suit a particular application, and [1.e] 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.
`
`Dependent claims 4-6, 9, and 31 recite additional features, including
`
`requiring that: the substrate “is positioned against said light guide” (claim 4),
`
`“covers said at least one of said sides” (claim 5), or “provides protection for the
`
`light guide” (claim 31); the “deformities are at least one of depressions and raised
`
`surfaces on at least one of said sides” (claim 6); and the “light emitting diodes are
`
`attached to a circuit” (claim 9).
`
`4
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`3.
`Mr. Parker filed U.S. Patent Application No. 10/298,367 for the eventual
`
`The ’956 Patent Prosecution History
`
`’956 patent on November 18, 2002, with fifty-two claims. Following a restriction
`
`requirement, Mr. Parker elected to prosecute claims 1-25. Ex. 1002 at 101.
`
`The examiner initially rejected claims based on Mr. Parker’s earlier U.S.
`
`Patent No. 5,613,751 (filed June 27, 1995), and Mr. Parker filed a terminal
`
`disclaimer to overcome the rejection. Id. at 106-108, 110.
`
`In response to two subsequent office actions, Mr. Parker (1) amended
`
`independent claim 1 to recite “light emitting diodes” instead of “a plurality of
`
`closely spaced light sources,” (2) added that “said substrate provid[es] an exterior
`
`portion of a vehicle for vehicle illumination at said exterior portion,” (3) added that
`
`the light guide has “opposite sides” and a light input surface “along at least one
`
`edge of [the] light guide,” and also (4) added that the light emitting diodes are
`
`along the light input surface “for receiving light from said light emitting diodes
`
`and conducting the light from said edge for emission of the light from at least one
`
`of said sides.” Id. at 164, 183, 205. After the amendments, the Examiner allowed
`
`the claims. Id. at 218.
`
`B. Claim Construction of the Challenged Claims
`Any final written decision in IPR will occur after the ’956 patent expires on
`
`June 27, 2015, in view of the terminal disclaimer filed during prosecution. Id. at
`
`5
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`110. Accordingly, the claims of the ’956 patent “generally [should be] given their
`
`ordinary and customary meaning, as understood by a person of ordinary skill in the
`
`art, at the time of the invention, taking into consideration the language of the
`
`claims, the specification, and the prosecution history of record because the expired
`
`claims are not subject to amendment.” See Panel Claw Inc. v. Sunpower Corp.,
`
`Paper 7 at 7, IPR2014-00386 (June 30, 2014).
`
`Claim 1 of the ’956 patent requires the panel members to include “light
`
`extracting deformities” having shapes for controlling an output ray angle
`
`distribution of emitted light to suit a particular application. The ’956 patent
`
`expressly defines the term “deformities” 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 at 5:42–45. Consistent with this
`
`definition, “light extracting deformities” should be construed to mean any change
`
`in the shape or geometry of the light guide surface and/or a coating or surface
`
`treatment on the light guide surface that causes a portion of the light to be emitted.
`
`For purposes of IPR only, Petitioner accepts that the remaining claim terms
`
`of the ’956 patent assume the ordinary and customary meaning, consistent with the
`
`specification, that they would have to one of ordinary skill in the art at the time of
`
`the alleged invention, and Petitioner does not contend that any remaining claim
`
`term requires specific construction.
`
`6
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`C. Level of Skill in the Art
`The level of skill in the art is apparent from the cited art. Further, a person of
`
`ordinary skill in the art (“POSITA”) would have at least an undergraduate degree
`
`in a science or engineering discipline, and a few years of work experience in a field
`
`related to optical technology, a graduate degree in a field related to optical
`
`technology, or a few years of continuing education toward a graduate degree in a
`
`field related to optical technology. Ex. 1003, West Decl. ¶ 13.
`
`D.
`
`Statement of Precise Relief Requested for Each Claim Challenged
`1.
`Petitioner requests IPR under 35 U.S.C. § 311 of claims 1, 4, 5, 6, 9, and 31
`
`Claims for Which Review Is Requested
`
`of the ’956 patent and cancellation of these claims as unpatentable.
`
`2.
`Petitioner requests that claims 1, 4-6, 9, and 31 be canceled as unpatentable
`
`Statutory Grounds of Challenge
`
`under 35 U.S.C. §§ 102 and/or 103 for the following reasons:
`
`Ground 1.
`
`Claims 1, 4-6, 9, and 31 are anticipated under § 102(b)
`
`over Decker.
`
`Ground 2.
`
`Claims 1, 4-6, 9, and 31 are invalid under 35 U.S.C. §
`
`103 as obvious over Tsuboi in view of Asai, further in view of Gage and Lister.
`
`Ground 3.
`
`Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious
`
`over Decker in view of Arima.
`
`7
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Ground 4.
`
`Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious
`
`over Decker in view of Tsuboi.
`
`Petitioner details the reasons for unpatentability and specific evidence
`
`supporting this petition below.
`
`E. Overview of the Cited Art
`Before the priority date for the ’956 patent, the automotive and lighting
`
`industries were incorporating light emitting diodes (“LEDs”) and edge-lit panels
`
`into vehicle lighting technology. The preceding decades ushered in major
`
`technological advances in lighting technology, with LEDs entering the market in
`
`1968 and experiencing significant progress thereafter. M. Lister, LEDs for exterior
`
`lighting, Automotive Engineer v. 17 no. 5, at 2, col. 1 (Oct./Nov. 1992) (Ex. 1011,
`
`“Lister”). By the early 1990s, it was understood that LEDs offered “overwhelming
`
`advantage[s]” over conventional light sources. See id. at 2, col. 2. LEDs
`
`outperformed the reliability of incandescent lamps, offering “over 50,000 hours of
`
`operating life compared to a few thousand hours at best for incandescent lamps.”
`
`Id. LEDs turn on faster than incandescent lamps. Id. at 2, col. 3. LEDs offered
`
`high-brightness and different colors, making them fit for exterior lighting. Id. at 2,
`
`col. 1. LEDs offered “greater freedom in styling,” opening the possibility of
`
`lighting for vehicles in “areas subject to shock and vibration where traditionally
`
`incandescent lights would not be appropriate.” Id. at 2, col. 3. LEDs’ reliability
`
`8
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`enabled vehicle designers to incorporate them into sealed-for-life designs, enabling
`
`“smoother, more aesthetically-pleasing designs.” Id.at 2, col. 3. And LEDs were
`
`cost effective, because even though they cost more per-unit, their use reduced costs
`
`of design complexity, “sheet metal, additional parts, labour, and other costs.” Id.
`
`LEDs also were understood to increase the efficiency of light transmission
`
`between a light source and an illuminated panel, by allowing the light source to be
`
`attached directly to the panel. Gaps between a light source and panel input were
`
`known to create certain inefficiencies in light transmission, including “insertion
`
`loss” or “Fresnel loss”—i.e., the reflection of light back from a panel input surface.
`
`Ex. 1003, West Decl. ¶ 68. A 1981 manual published by engineers at the Hewlett-
`
`Packard company describes these Fresnel losses. Optoelectronics/ Fiber-Optics
`
`Applications Manual (2d ed. 1981), by S. Gage et al. (Ex. 1010, “Gage”). Gage’s
`
`teachings of optoelectronic principles—including LED and lighted-panel design—
`
`are applicable to automotive lighting applications, and would have been
`
`understood by a POSITA. Ex. 1003, West Decl. ¶ 69.
`
`As described in Gage, the phenomenon of Fresnel reflection loss may arise
`
`when a void is present between a light source and the panel. Ex. 1010, Gage at 39-
`
`41 [12.13-12.15] § 12.6. To avoid that problem, Gage teaches to use an LED Light
`
`Bar Module “directly coupled into the [panel] base plastic” and “epoxied in place,
`
`eliminating any Fresnel loss between the Module and the base plastic.” Id. at 41
`
`9
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`[12.15], Fig. 12.6-4 (below); see also id. at 33 [12.7] § 12.2.3 (“If a void is allowed
`
`to occur between the [panel] and the face of the LED device package, light loss
`
`through the void will cause uneven illumination of the [panel].”); Fig. 12.2.3-2.
`
`
`Ex. 1010, Gage at 41 [12.15], Fig. 12.6-4
`
`As noted in Gage, the ability to attach the light source to the panel (and
`
`thereby reduce Fresnel losses) required using an LED light source, because an
`
`incandescent lamp generates significant heat, which renders direct attachment to an
`
`edge-lighted panel impractical. See id. at 41 [12.15] § 12.6 (“incandescent lamp
`
`could be epoxied in place [to] eliminate the Fresnel losses but would provide an
`
`undesirable thermal path between the lamp and the base plastic as well as make
`
`periodic lamp replacement rather difficult”).
`
`Designers began to use LEDs not only for their unique features, but also for
`
`their ability to replace traditional light sources. In fact, the named inventor of the
`
`10
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`’956 patent, Mr. Parker, recognized this interchangeability between traditional
`
`light sources and LEDs in his prior patent directed to a “Thin Panel Illuminator.”
`
`U.S. Pat. No. 5,005,108, issued on April 2, 1991, to Mr. Parker and David Pristash
`
`(Ex. 1007, “Pristash”). In the light emitting panel described in Pristash, Mr. Parker
`
`treats conventional light sources and LEDs interchangeably. For example, Mr.
`
`Parker explains that “[a] light source 3 of any suitable type may be used . . . . Light
`
`source 3 includes a radiation source 8 such as an arc lamp, an incandescent bulb, a
`
`lens end bulb, an LED or a fluorescent tube or the like . . . .” Id. at 3:9-17. The
`
`remainder of the specification refers generally to a “light source 3,” treating
`
`incandescent lights and LEDs interchangeably.
`
`Moreover, Mr. Parker understood LEDs to be interchangeable in many
`
`contexts, including automotive applications. Mr. Parker taught in Pristash that the
`
`invention (which contemplated using LEDs) may be used in “a great many
`
`different applications, including . . . safety lighting for both commercial and
`
`industrial as well as automotive applications . . . .” Id. at 8:14-23 (emphasis
`
`added). Thus, Pristash’s explanation of LEDs and automotive panel applications
`
`presaged the disclosures of the ’956 patent on those very topics. Id. at 8:13-22. The
`
`additional features of the ’956 patent also were known, as is evident from the
`
`following references.
`
`11
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Decker (1993)
`
`1.
`On September 2, 1991, Detlef Decker applied for a European patent on his
`
`new signal lamp for motor vehicles. German Unexamined Patent Specification No.
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`DE 41 29 094 A1 (Ex. 1004, “Decker”). The application published on March 4,
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`1993, making it prior art against the ’956 patent under § 102(b). As detailed in the
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`discussion and claim charts below, Decker anticipates claims 1, 4-6, 9, and 31.
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`Decker disclosed a vehicle signal lamp that simply and economically
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`provided “even illumination at a low current consumption.” Ex. 1004, Decker at 2,
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`col. 1. To do so, Decker invented a system that used “only a small number of
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`[LEDs]” Id. at 2, col. 2. Prior embodiments had used many LEDs “arranged in a
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`short distance to one another to obtain an even illumination,” but the large number
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`of LEDs increased production cost and current consumption. Id. at 2, col. 1.
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`Decker reduced the number of LEDs by incorporating light guide elements that
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`transmit light across larger surface areas, thereby dispersing the light and ensuring
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`even and economical illumination. Id. at 2, col. 2.
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`Each of Decker’s signal lamps included LEDs and light guide elements L.
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`Each light guide L is an elongated element with an LED at one end, as shown by
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`annotated Fig. 3 below. As shown in Fig. 3, the LED emits light into light guide
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`element L, which has deformities in the form of prisms P on one side. Id. at 5,
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`col. 2. If the light hits one of these deformities, it is reflected in such a way that it
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`IPR Petition of U.S. Patent No. 6,886,956
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`exits the light guide on the opposite side. Id. (describing “path of the rays in the
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`light guide (L)”). The amount of light emitted along the length of the light guide
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`element L can be controlled by “changing the prism angles and/or the prism
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`division and/or the prism depth.” Id.
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`Ex. 1004,
`Decker, Fig. 3 (annotated)
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`Ex. 1004,
`Decker, Fig. 9 (annotated)
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`Decker discloses groups (GP), formed by a number of LEDs associated with
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`light guides L, arranged parallel to one other, and placed behind an end plate A, as
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`illustrated in Figure 1 (below). In one embodiment, the “light guide elements (L) of
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`a group (GP) can also be developed in one piece.” Id. at 5, col. 1. The group GP
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`illuminates the transparent end plate A, which acts as a transparent substrate
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`overlying and covering (and thus necessarily protecting) the groups GP. Id. at 4,
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`col. 2. Figure 1, below, shows a housing G holding four end plates A, each having
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`a group GP for illumination. See also Fig. 4 and accompanying description at 5,
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`col. 2 (“end plate (A) can be part of a housing (G) and/or a fastening means (B).”).
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`IPR Petition of U.S. Patent No. 6,886,956
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`Ex. 1004, Decker, Fig. 1
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`
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`The transparent substrate of Decker’s lamp assembly forms an exterior
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`portion of the vehicle because, as Decker explains, the “lamp can be installed into
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`a motor vehicle body or attached to a motor vehicle body.” Id. at 4, col. 1; accord
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`id. at 2, col. 1 (invention relates to a “signal lamp for motor vehicles . . . to be
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`installed into or attached to a motor vehicle body”).
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`2.
`Well over a decade before Mr. Parker filed for his patent, Toshitsuke Tsuboi
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`Tsuboi (1982)
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`of the Japan-based Koito Manufacturing Company (“Koito”) submitted a Japanese
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`application for his own vehicle light fixture using a light guide. Japanese Laid
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`Open Utility Model No. JPS57-60171 (published Dec. 22, 1982) (Ex. 1005,
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`“Tsuboi”). Tsuboi described known illuminated panels used to direct light to the
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`lateral portions of the vehicle lamp. Ex. 1005, Tsuboi at 2 (“[l]ight from the bulb 4
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`is conveyed by the light guide plate 5 to the ends of lateral space 3b so as to form
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`uniform illumination over the entire surface of the front lens 2”). The known
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`IPR Petition of U.S. Patent No. 6,886,956
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`vehicle lamps depicted in Tsuboi—illustrated, e.g., in Figure 1 (below, left)—
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`included a light bulb (shown in red) transmitting light rays (8) into a light guide
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`plate 5 (yellow) via input 6. Id. at 2. Serrated deformities on the back of the light
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`guide plate, called “reflecting member 7,” reflected light through the light guide
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`plate (ray 8b) and caused it to exit the plate and the vehicle light fixture (ray 8c).
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`Id. Rays emitted from the light guide plate 5 (8a, 8c) illuminated a front lens 2
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`(green). Id.
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`Ex. 1005, Tsuboi, Fig. 1 (annotated)
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`Ex. 1005, Tsuboi, Fig. 4 (annotated)
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`Tsuboi recognized inefficiencies in the known design, and provided
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`improvements by placing a plurality of prisms (121,2) on the side of the light guide
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`plate, as illustrated, e.g., in Figure 4 (above, right). Id. at 3. These prisms increased
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`the area of the light-entrance surface of the light guide, thereby increasing the
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`amount of light that enters and subsequently exits the light guide. Id. at 4. Like the
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`known vehicle lamp illustrated in Figure 1, Tsuboi’s improved design propagated
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`IPR Petition of U.S. Patent No. 6,886,956
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`light through the illuminated panel around the vehicle corner, as illustrated in
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`annotated Figure 4. See also Ex. 1003, West Decl. ¶ 31.
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`Tsuboi further taught that the illuminated panel (highlighted below in
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`yellow) could either be covered by a lens (green, below at left) or could be left
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`uncovered on the vehicle exterior (below at right). Accord ’956 patent, at 9:8-12
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`(“panel members 29 may form the exterior surface . . . or a lens or film may cover
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`the panel members”).
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`Tsuboi, Fig. 4 (annotated)
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`Tsuboi, Fig. 6 (annotated)
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`3.
`Another Koito engineer, Tomoyuki Asai, also solved the problem of uneven
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`Asai (1986)
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`illumination when lighting a vehicle lamp around a corner. Japanese Laid Open
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`Utility Model No. S61-153201 (laid open Sept. 22, 1986) (Ex. 1006, “Asai”). Asai
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`used an LED to edge-light a lens plate that served as a light guide to conduct light
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`throughout the lens and prevent dark portions along the length of the vehicle lamp.
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`IPR Petition of U.S. Patent No. 6,886,956
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`Id. at 3. As is shown in annotated Fig. 3 below, Asai placed an LED 20 (shown in
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`red) at the end of wraparound lens 31, which conducts light from the LED.
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`Ex. 1006, Asai, Fig. 3 (annotated)
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`The wraparound lens 31 includes indentations and protrusions 32 formed along its
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`rear face that reflect the light from LED 20 and cause it to be emitted out of
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`wraparound portion 31. Id. at 5.
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`Asai explains that its configuration allows the vehicle to use the many
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`advantages of LEDs without light loss. For example, Asai teaches that its
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`configuration provides even lighting with “a considerably low amount of heat
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`generation, unlike a general light source,” and that it eliminates the need for a
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`retroreflector, ensuring a minimum plate-thickness. Id. at 6. Further, Asai explains
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`that the long life of LEDs eliminates the worry of conventional-light-source
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`burnout. Id.
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`IPR Petition of U.S. Patent No. 6,886,956
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`4.
`As detailed in this petition, independent Challenged Claim 1 is unpatentable
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`Additional References Containing Relevant Teachings
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`as anticipated by one or more of the foregoing references. The foregoing references
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`also anticipate and, together with one or more secondary references discussed
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`below, also render obvious each dependent Challenged Claim (claims 4, 5, 6, 9,
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`and 31).
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`IV. Detailed Explanation of the Challenge
`A. Ground 1: Decker anticipates claims 1, 4-6, 9, and 31 under
`35 U.S.C. § 102(b).
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`Claims 1, 4-6, 9, and 31 of the ’956 patent are unpatentable as anticipated by