`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`) Attorney Docket No.:
`) 04305.9004-00000
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`) FILED ELECTRONICALLY
`) PER 37 C.F.R. § 42.6(b)(1)
`)
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`
`
`
`
`Case IPR2015-00831
`
`In re Inter Partes Review of:
`
` U.S. Patent No. 7,434,974
`
`Issued: October 14, 2008
`
`
`Inventor: Jeffery R. Parker
`
`
`Application No. 11/378,080
`
`
`Filed: March 17, 2006
`
`
`For: LIGHT EMITTING PANEL
`
`ASSEMBLIES
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,434,974
`
`
`
`Toyota Motor Corp. (“Toyota” or “Petitioner”) requests inter partes review of
`
`claims 1, 3-5, 7-9, and 13 of U.S. Patent No. 7,434,974 (“the ’974 patent”) (Ex. 1001),
`
`now assigned to Innovative Display Technologies LLC (“Innovative Display” or
`
`“Patent Owner”), in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et
`
`seq.
`
`

`

`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`An electronic payment in the amount of $23,000.00 for the inter partes review
`
`fee specified by 37 C.F.R. § 42.15(b) is being paid at the time of filing this petition. If
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`there are any additional fees due in connection with the filing of this paper, please
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`charge the required fees to our Deposit Account No. 06-0916.
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`
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
`TABLE OF CONTENTS
`PRELIMINARY STATEMENT ................................................................ 1
`I.
`II. MANDATORY NOTICES ......................................................................... 2
`A.
`Real Party-in-Interest ...................................................................................... 2
`
`B.
`
`Related Matters ................................................................................................ 2
`
`C.
`Lead and Back-Up Counsel, and Service Information ............................... 6
`III. THE ’974 PATENT .................................................................................... 6
`A. Overview of the Disclosure ........................................................................... 6
`IV. GROUNDS FOR STANDING ................................................................ 10
`V.
`STATEMENT OF PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED ............................................................. 10
`A.
`Claims for Which Review is Requested ...................................................... 10
`
`B.
`
`Statutory Grounds of Challenge ................................................................. 10
`
`C.
`Claim Construction ....................................................................................... 10
`VI. CLAIMS 1, 3-5, 7-9, and 13 OF THE ’974 PATENT ARE
`UNPATENTABLE ................................................................................... 12
`A. Ground 1: Plesinger in combination with Pristash and Tsunoda
`renders obvious claims 1, 3-5, and 7-9 ....................................................... 12
`
`B. Ground 2: Plesinger in combination with Pristash, Tsunoda, and
`Noguchi renders obvious claim 13 ................................................................ 26
`
`C. Ground 3: Plesinger in combination with Pristash, Tsunoda, and
`Sakuma renders obvious claim 13 ................................................................ 32
`
`D. Ground 4: Sakuma in combination with Pristash, Tsunoda, and
`Hathaway, renders obvious claims 1, 3-5, 7, 8, and 13 .............................. 37
`
`E. Ground 5: Sakuma in combination with Pristash, Tsunoda,
`Hathaway, and Plesinger renders obvious claim 9 ........................................ 52
`
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`VIII. CONCLUSION ......................................................................................... 56
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`TABLE OF AUTHORITIES
`
`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
` Page(s)
`
`Cases
`Continental Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ............................................................................... 19, 40
`
`Ex Parte Ronald A. Katz Tech. Licensing L.P.,
`No. 2008-005127, 2010 WL 1003878 (BPAI Mar. 15, 2010) .................................... 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................passim
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................................... 11
`Statutes
`35 U.S.C. § 102.................................................................................................................passim
`
`35 U.S.C § 103....................................................................................................................... 10
`
`35 U.S.C § 112................................................................................................................. 11 n.4
`
`35 U.S.C. § 311.................................................................................................. cover page, 10
`
`35 U.S.C. § 311-319 ................................................................................................ cover page
`
`35 U.S.C. § 371...................................................................................................................... 27
`Other Authorities
`37 C.F.R. § 42.6 ....................................................................................................... cover page
`
`37 C.F.R. § 42.15 ..................................................................................................... cover page
`
`37 C.F.R. § 42.100 .................................................................................................. cover page
`
`v
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
`LIST OF EXHIBITS
`
`Petition Exhibit 1001:
`
`U.S. Patent No. 7,434,974 to Parker
`
`Petition Exhibit 1002: Declaration of Dr. Zane Coleman
`
`Petition Exhibit 1003:
`
`U.S. Patent No. 5,146,354 to Plesinger (“Plesinger”)
`
`Petition Exhibit 1004:
`
`U.S. Patent No. 5,504,605 to Sakuma et al. (“Sakuma”)
`
`Petition Exhibit 1005:
`
`U.S. Patent No. 5,050,946 to Hathaway et al. (“Hathaway”)
`
`Petition Exhibit 1006:
`
`IPR2014-01092, Paper No. 2, “Petition for Inter Partes
`Review of U.S. Patent No. 7,434,974”
`
`Petition Exhibit 1007:
`
`IPR2014-01092, Paper No. 7, “Patent Owner’s Preliminary
`Response to Petition for Inter Partes Review of U.S. Patent
`No. 7,434,974”
`
`Petition Exhibit 1008:
`
`IPR2014-01092, Paper No. 9 “Decision Denying
`Institution of Inter Partes Review”
`
`Petition Exhibit 1009:
`
`IPR2015-00368, Paper No. 1, “Petition for Inter Partes
`Review of U.S. Patent No. 7,434,974”
`
`Petition Exhibit 1010:
`
`IPR2015-00497, Paper No. 2, “Petition for Inter Partes
`Review of U.S. Patent No. 7,434,974”
`
`Petition Exhibit 1011:
`
`Japanese Patent Publication No. JP 06-051130 to Tsunoda
`et al. (“Tsunoda”), including an English-language translation
`and certificate of translation dated March 3, 2015
`
`Petition Exhibit 1012: U.S. Patent No. 5,005,108 to Pristash et al. (“Pristash”)
`
`Petition Exhibit 1013: U.S. Patent No. 5,497,293 to Noguchi et al. (“Noguchi”)
`
`Petition Exhibit 1014:
`
`File history of U.S. Application No. 11/378,080 as
`downloaded from PAIR.
`
`Petition Exhibit 1015:
`
`IPR2015-00755, Paper No. 1, “Petition for Inter Partes
`Review of U.S. Patent No. 7,434,974”
`
`vi
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`
`
`I.
`
`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
`PRELIMINARY STATEMENT
`Claims 1, 3-5, 7-9, and 13 are directed to light emitting panel assemblies. Ex.
`
`1001 at 9:9-27, 31-39, 43-65; 10:8-26. The patent specification acknowledges that light
`
`emitting panel assemblies, including a transparent light emitting panel, one or more
`
`light sources, and a light transition member or area are well known in the art. Id. at
`
`1:23; 2:58-65; Fig. 1.
`
`More than one year before the claimed priority date, a number of references,
`
`such as Plesinger (Ex. 1003) and Sakuma (Ex. 1004), in combination with various other
`
`publications, disclosed the light emitting panel assembly of claims 1, 3-5, 7-9, and 13.
`
`For example, Sakuma disclosed an LCD module 63 including, among other elements,
`
`an upper frame 1, an intermediate frame 42, and a lower frame 2, wherein the lower
`
`frame is joined to the upper frame 2 to fix an LCD panel 62 therebetween. See, e.g.,
`
`Ex. 1004 at 2:8-24; Fig. 1. Similarly, Plesinger disclosed a liquid crystal display (“LCD”)
`
`system having a plastic enclosure 126, wherein a back member 132 attaches to a front
`
`panel 128 to form the enclosure 126. See, e.g., Ex. 1003 at 4:33-40; Figs. 2 and 4.
`
`Significantly, the Examiner did not consider Plesinger and Sakuma during
`
`prosecution of U.S. Patent Application No. 11/378,080, which matured into the ’974
`
`patent. Ex. 1014. As discussed in this petition, the disclosures of Plesinger and Sakuma,
`
`as well as the disclosures of other publications, warrant the cancellation of claims 1, 3-
`
`5, 7-9, and 13.
`
`1
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
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`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`The real party-in-interest is Toyota Motor Corp., which is the sole owner of
`
`Toyota Motor Sales, U.S.A., Inc., and the ultimate corporate parent for Toyota Motor
`
`Manufacturing, Kentucky, Inc., Toyota Motor Manufacturing, Indiana, Inc., Toyota
`
`Motor Manufacturing, Texas, Inc., and Toyota Motor Manufacturing, Mississippi, Inc.
`
`B. Related Matters
`Innovative Display has asserted five patents—U.S. Patent Nos. 7,300,194;
`
`7,384,177; 7,404,660; 7,434,974; and 8,215,8161 against at least 35 different companies
`
`in the automotive and electronics industries. The lawsuit against Toyota Motor Corp.
`
`is captioned: Innovative Display Technologies LLC v. Toyota Motor Corp., Case No. 2:14-cv-
`
`200-JRG (ED TX.).
`
`Innovative Display also asserted the ’974 patent in at least the actions listed in
`
`the below chart:
`
`Description
`
`Innovative Display Technologies LLC (“IDT”) v.
`Acer Inc. et al.
`IDT v. American Honda Motor Co., Inc., et al.
`
`Docket Number
`
`2:13-cv-522, EDTX
`
`2:14-cv-00222, EDTX
`
`
`1 In addition to this petition, Petitioner is concurrently requesting inter partes review of
`
`the following other asserted Innovative Display patents, which are in the same family
`
`as the ’974 patent: 7,384,177; 7,404,660; 7,300,194; and 8,215,816.
`
`2
`
`

`

`
`
`IDT v. Apple Inc.
`
`IDT v. Apple Inc.
`
`IDT v. AT&T Inc., et. al.
`
`IDT v. Best Buy Co., Inc., et. al.
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
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`2:14-cv-00030, EDTX
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`2:14-cv-00301, EDTX
`
`2:14-cv-00720, EDTX
`
`2:14-cv-00532, EDTX
`
`IDT v. BMW of North America, LLC, et. al.
`
`2:14-cv-00106, EDTX
`
`IDT v. Canon U.S.A. Inc., et. al.
`
`2:14-cv-00142, EDTX
`
`IDT v. Research in Motion Limited et al.
`
`2:13-cv-00526, EDTX
`
`IDT v. Dell Inc.
`
`2:13-cv-00523, EDTX
`
`IDT v. Garmin International, Inc., et. al.
`
`2:14-cv-00143, EDTX
`
`IDT v. Google Inc., et. al.
`
`2:14-cv-00302, EDTX
`
`IDT v. Hewlett-Packard Corporation
`
`2:13-cv-00524, EDTX
`
`IDT v. Huawei Investment et al.
`
`2:13-cv-00525, EDTX
`
`IDT v. Hyundai Motor Group, et. al.
`
`2:14-cv-00201, EDTX
`
`IDT v. Mazda Motor Corporation, et. al.
`
`2:14-cv-00624, EDTX
`
`IDT v. Mercedes-Benz U.S. International, Inc., et.
`al.
`IDT v. Microsoft Corporation
`
`2:14-cv-00535, EDTX
`
`2:13-cv-00783, EDTX
`
`IDT v. Mitac Digital Corporation, et. al.
`
`2:14-cv-00144, EDTX
`
`IDT v. Nikon Inc., et. al.
`
`2:14-cv-00145, EDTX
`
`IDT v. Nissan Motor, Co., Ltd., et. al.
`
`2:14-cv-00202, EDTX
`
`IDT v. Nokia Corporation and Nokia Inc.
`
`2:13-cv-00784, EDTX
`
`3
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`U.S. Patent No. 7,434,974
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`IDT v. Sprint Corporation, et. al.
`
`2:14-cv-00721, EDTX
`
`IDT v. T-Mobile US, Inc., et. al.
`
`2:14-cv-00723, EDTX
`
`IDT v. Tomtom North America Inc., et. al.
`
`2:14-cv-00146, EDTX
`
`IDT v. Verizon Communications, Inc., et. al.
`
`2:14-cv-00722, EDTX
`
`IDT v. Volkswagen AG, et. al.
`
`2:14-cv-00300, EDTX
`
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`
`2:13-cv-00527, EDTX
`
`Delaware Display Group LLC (“DDG”) and
`IDT v. Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`
`DDG and IDT v. Lenovo Group Ltd., et al.
`
`1:13-cv-02108, D.Del.
`
`DDG and IDT v. LG Electronics Inc., et al.
`
`1:13-cv-02109, D.Del.
`
`DDG and IDT v. Pantech Co., Ltd, et al.
`
`1:13-cv-02110, D.Del.
`
`DDG and IDT v. Sony Corporation et al.
`
`1:13-cv-02111, D.Del.
`
`DDG and IDT v. Vizio, Inc.
`
`1:13-cv-02112, D.Del.
`
`
`Five inter partes reviews challenge the patentability of the ’974 patent. LG
`
`Display Co.., Ltd. and LG Display America, Inc. (“LGD”), challenged claims 1, 3-5, 7-
`
`11, 13, and 17 of the ’974 patent in IPR2014-01092, filed July 1, 2014, Ex. 1006
`
`(Patent Owner filed its Preliminary Response on October 16, 2014, Ex. 1007);
`
`Mercedes-Benz USA, LLC, Mercedes-Benz US International, Inc. (“Mercedes”),
`
`challenged claims 1, 3-5, 7-11, 13, and 17 of the ’974 patent in IPR2015-00368, filed
`
`December 4, 2014, Ex. 1009; LG Electronics (“LGE”), challenged claims 1, 3-5, 7-11,
`
`4
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`U.S. Patent No. 7,434,974
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`13, and 17 of the ’974 patent in IPR2015-00497, filed December 29, 2014, Ex. 1010,
`
`and IPR2015-00755, filed on February 17, 2015, by Sony Corporation challenging
`
`claims 1, 3-5, 7-11, 13, and 17 of the ’974 patent. Ex. 1015. Finally, the present
`
`Petitioner challenged claims 1, 3-5, 7-9, and 13 in IPR2015-00832, filed March 5,
`
`2015.
`
`On January 13, 2015, the Board denied institution of IPR2014-01092. Ex.
`
`1008. As of the filing date of this Petition the Board has not rendered institution
`
`decisions in IPR2015-00368, IPR2015-00497, IPR2015-00755, or IPR2015-00832.
`
`Notwithstanding the Board’s decision denying trial in IPR2014-01092, and regardless
`
`of whether the Board institutes trial on any grounds in IPR2015-00368, IPR2015-
`
`00497, IPR2015-00755, or IPR2015-00832, the Board should grant this petition and
`
`institute trial on all grounds. The combinations of references relied on here disclose
`
`claims 1, 3-5, 7-9, and 13 of the ’974 patent, are not duplicative or cumulative of the
`
`grounds asserted in the prior IPRs, and Petitioner has presented a prima facie case of
`
`obviousness for combining the references.2 As explained below in Section VI, the
`
`
`2 Notably, the Board did not find the primary references relied upon by the Petition in
`
`IPR2014-01092 as failing to disclose the claimed features of the ’974 patent, but
`
`rather that the Petition failed to provide a complete obviousness analysis. See Ex. 1008
`
`at 12 (“we are not convinced by Petitioner’s rationale for making the combination [of
`
`Tsuchiyama and Funamoto]”).
`
`5
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
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`primary references relied on here disclose these features and/or more clearly show
`
`how the references disclose or suggest these features.
`
`C.
`Lead and Back-Up Counsel, and Service Information
`Lead Counsel: P. Andrew Riley (Reg. No. 66,290), Finnegan, Henderson,
`
`Farabow, Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC
`
`20001 (202.408.4266; e-mail: andrew.riley@finnegan.com; fax: 202.408.4400).
`
`Backup Counsel: Thomas W. Winland (Reg. No. 27,605), Finnegan,
`
`Henderson, Farabow, Garrett & Dunner, LLP, 901 New York Avenue, NW,
`
`Washington, DC 20001 (202.408.4085; e-mail: tom.winland@finnegan.com; fax:
`
`202.408.4400).
`
`Backup Counsel: Justin E. Loffredo (Reg. No. 67,287), Finnegan, Henderson,
`
`Farabow, Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC
`
`20001 (202.408.4393; e-mail: justin.loffredo@finnegan.com; fax: 202.408.4400).
`
`Petitioner consents to e-mail service at Toyota-IDT-IPR@finnegan.com.
`
`III. THE ’974 PATENT
`A. Overview of the Disclosure
`Part of a large family, the ’974 patent is one of several continuations,
`
`continuation-in-part, and/or divisions stemming from U.S. Patent No. 5,613,751. Ex.
`
`1001 at 1:6-14. These patents, including the ’974 patent, are directed to light emitting
`
`panel assemblies. Id. at title.
`
`6
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`

`
`
`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
`The background section of the ’974 disclosure acknowledges that light emitting
`
`panel assemblies are generally known. Id. at 1:23. In particular, the disclosure
`
`recognizes the following functionality and structure of prior art light emitting panel
`
`assemblies 1 “as well known in the art”: a transparent light emitting panel 2 and one
`
`or more light sources 3 which emit light in a predetermined pattern and a light
`
`transition member or area 4 used to make the transition from the light source 3 to the
`
`light emitting panel 2. Id. at 2:58-65 and Fig. 1 (describing these elements and their
`
`functionalities as being “well known in the art”). The ’974 disclosure further describes
`
`that light is emitted along the entire length of the light emitting panel 2 or from one
`
`or more light output areas along the length of the panel 2 to produce a desired light
`
`output distribution to fit a particular application. Id. at 2:65-3:3 and Fig. 1.
`
`Figure 1 shows the well-known light emitting panel assembly 1, light emitting
`
`panel 2, light source 3, and light transition
`
`member or area 4. Purportedly to improve on
`
`the control and utilization of light output from
`
`such assemblies, the ’974 patent discloses a
`
`light emitting panel assembly 32 (Fig. 6) including a panel member 33, one or more
`
`light sources 3, and one or more light output areas 34. Id. at 6:53-60 and Fig. 6. The
`
`panel assembly 32 includes a tray 35 having a cavity or recess 36 in which the panel
`
`assembly 32 is received. Id. According to the ’974 disclosure, the tray 35 acts as a back
`
`reflector as well as end edge and/or side edge reflectors for the panel 33 and side
`
`7
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
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`and/or back reflectors 37 for the light sources 3. Id. The ’974 patent also discloses
`
`that one or more secondary reflective or refractive surfaces 38 may be provided on
`
`the panel member 33 and/or tray 35. Id. at 6:61-63.
`
`Figure 6 shows the light emitting panel assembly 32, panel member 33,
`
`reflective or refractive surfaces 38, and tray 35 (the only tray depicted in a figure). The
`
`’974 patent discloses in another
`
`embodiment, a light emitting panel
`
`assembly 11 (Fig. 3) including a light
`
`transition area 12 at one end of a light emitting panel 14 having reflective and/or
`
`refractive surfaces 15 around and behind two light sources 3. Id. at 3:39-50 and Fig. 3.
`
`The ’974 patent discloses providing reflective materials or coatings on portions of the
`
`reflective and/or refractive surfaces 15 to
`
`focus a portion of light emitted from the
`
`light sources 3 through the light transition
`
`areas 12 into a light input surface 19 of the
`
`light emitting panel 14. Id. A back reflector 26 is attached or positioned against one
`
`side of the panel member 14 using a suitable adhesive 28. Id. at 6:8-24 and Figs. 3 and
`
`5. A transparent film, sheet or plate 27 is attached or positioned against the side or
`
`sides of the panel member 14 (from which light is emitted) using a suitable adhesive
`
`28. Id. The film, sheet, or plate 27 “may be a colored film, a diffuser, or a label or
`
`8
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
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`display, a portion of which may be a transparent overlay that may be colored and/or
`
`have text or an image thereon.” Id. at 6:25-29.
`
`The ’974 patent also discloses a pattern
`
`of light extracting deformities 21, 23, 24,
`
`and/or 25 being provided on one or both
`
`sides of the panel member 14. Id. at 6:15-24,
`
`Fig. 4. Figures 4a-4d show light extracting deformities 21, 23, 24, and 25.
`
`The ’974 disclosure notes that each light source 3 may be of any suitable type
`
`including, for example, an arc lamp, an incandescent bulb, a lens end bulb, a line light,
`
`a halogen lamp, a light emitting diode (LED), a chip from an LED, a neon bulb, a
`
`fluorescent tube, a fiber optic light pipe, a laser or laser diode, or any other suitable
`
`light source. Id. at 4:12-22; see also id. at 4:22-30 (explaining that the light source may
`
`be a multiple colored LED or a combination of multiple colored radiation sources).
`
`Figure 9 shows “another form of light emitting panel assembly 50,” wherein
`
`panel member 51 has “multiple light output areas 52 and mounting posts and/or
`
`mounting tabs 53.” Id. at 7:30-33. By providing holes or cavities 54, 55 in the panel
`
`member 51, the panel assembly 50 acts as a structural member for supporting other
`
`parts or components. Id. at 7:33-38. The holes or cavities 54, 55 “allow for the
`
`insertion of modular components or other parts into the panel member.” Id.
`
`9
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`Case IPR2015-00831
`U.S. Patent No. 7,434,974
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies the ’974 patent is available for inter partes review and that
`
`Petitioner is not barred or estopped from requesting inter partes review of the ’974
`
`patent challenging the patent claims on the grounds identified in this petition.
`
`Additionally, the combinations of references relied on here disclose, for
`
`example, features Patent Owner argued references in IPR2014-01092 lacked, and/or
`
`more clearly show how prior art references disclose these features.
`
`V.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A.
`Claims for Which Review is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of 1, 3-5, 7-9, and
`
`13 of the ’974 patent, and the cancellation of these claims as unpatentable.
`
`B.
`Statutory Grounds of Challenge
`Claims 1, 3-5, 7-9, and 13 are unpatentable under 35 U.S.C. § 103. The claim
`
`construction, reasons for unpatentability, and specific evidence supporting this
`
`request are detailed below.
`
`C. Claim Construction
`Claim terms in an expired patent are given their ordinary and accustomed
`
`
`
`meaning as understood by one of ordinary skill in the art,3 consistent with the
`
`
`3 Petitioner submits that 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
`
`10
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`U.S. Patent No. 7,434,974
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`standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
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`(en banc). Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127, 2010 WL
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`1003878, at *3-4 (BPAI Mar. 15, 2010). The ’974 patent will expire on June 27, 2015,
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`before a final decision is expected in this IPR, and should thus be construed under
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`these principles.
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`The following term from the claims of the ’974 patent requires construction for
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`this proceeding.4 All other terms should be given their ordinary and accustomed
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`meanings.
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`“deformities” (Claims 1, 7, 13)
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`The specification of the ’974 patent expressly defines the term “deformities,” as
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`follows: “As used herein, the term deformities or disruptions are used interchangeably
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`to mean any change in the shape or geometry of the panel surface and/or coating or
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`surface treatment that causes a portion of the light to be emitted.” Id. at 4:36-40.
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`of work experience in a field related to optical technology, a graduate degree in a field
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`related to optical technology, or a few years of continuing education toward a
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`graduate degree in a field related to optical technology. Petitioner applies this level of
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`ordinary skill in this petition.
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`4 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
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`Petitioner has not included any indefiniteness arguments herein. Petitioner reserves
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`the right, however, to raise such arguments in other proceedings.
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`U.S. Patent No. 7,434,974
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`Accordingly, in light of the express definition provided by the ’974 patent,
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`“deformities,” should be construed to mean “any change in the shape or geometry of
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`a surface and/or coating or surface treatment that causes a portion of the light to be
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`emitted.” See also Ex. 1002 at ¶ 33.
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`VI. CLAIMS 1, 3-5, 7-9, and 13 OF THE ’974 PATENT ARE
`UNPATENTABLE
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`A. Ground 1: Plesinger in combination with Pristash and Tsunoda
`renders obvious claims 1, 3-5, and 7-9
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`U.S. Patent No. 5,146,354 to Plesinger issued on September 8, 1992. Because the
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`earliest effective priority date of claims 1, 3-5, and 7-9 (and 13) is June 27, 1995,
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`Plesinger is prior art under 35 U.S.C. § 102(b).
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`Plesinger discloses a backlighted liquid crystal display system including a light
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`pipe 104 having an edge surface 102 and an opposite or front surface 108. Ex. 1003 at
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`1:8-10; 3:48-56; Figs. 2-4. “A single light source 100, preferably a florescent [sic] light
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`tube, is attached to one edge surface 102 of a light pipe 104.” Id. at 3:48-50. “[L]ight
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`from the light source 100 is directed by a back surface 106 which is capable of
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`reflecting and distributing the light from the light source 100 perpendicularly over an
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`entire opposite, or front surface 108 of the light pipe 104.” Id. at 3:52-56; see also Figs.
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`2 and 3.
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`In each of independent claims 1 and 7 (and 13) of the ’974 patent, the at least
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`one light source is an LED. Ex. 1001 at 9:11, 45; 10:10. It would have been obvious
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`U.S. Patent No. 7,434,974
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`to one of ordinary skill in the art to implement the light source disclosed by Plesinger as
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`an LED. Ex. 1002 at ¶ 36.
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`The use of an LED in lighting apparatuses, in particular, LCD or other
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`displays, utilizing edge-illuminated light guides where totally internally reflected light is
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`frustrated to emit light from the light guide was well-known in the industry. For
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`example, JP 06-051130 to Tsunoda was published on February 25, 1994 Ex. 1011 at p.
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`2. Tsunoda is prior art under 35 U.S.C. § 102(b), because the earliest effective priority
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`date of claims 1, 3-5, and 7-9 (and 13) is June 27, 1995. Tsunoda (Ex. 1011) discloses a
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`surface lighting device including a light-guide plate 4 and a light source 3 comprising
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`one or more LED’s. Ex. 1011 at ¶¶ 15, 25. Indeed, Tsunoda explains the advantages of
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`using an LED for the light source, including, for example, a lower drive voltage than
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`fluorescent tubes, a simpler and smaller design, and lower power consumption. Id. at
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`¶ 8.
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`Motivation to implement at least one LED
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`One of ordinary skill in the art would have been motivated to implement the
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`LED of Tsunoda for the light source of Plesinger in order to provide a liquid crystal
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`display device with, e.g., a lower drive voltage, simpler and smaller design, and lower
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`power consumption. Ex. 1002 at ¶¶ 37, 38. Such a modification of Plesinger would
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`constitute no more than an obvious design choice – one of a “finite number of
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`identified, predictable solutions” – to one skilled in the art. Ex. 1002 at ¶ 38; see also
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-3 (2007) (“When there is a design need
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`or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill in the art has good reason to pursue
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`the known options within his or her technical grasp. If this leads to the anticipated
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`success, it is likely the product not of innovation but of ordinary skill and common
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`sense.”), 416 (“The combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results.”).
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`Indeed, such a modification would simply improve the liquid crystal display
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`system disclosed by Plesinger in the same way as it improves the apparatus in Tsunoda
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`(e.g., providing a display device with a light source deriving a lower drive voltage, a
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`simpler and smaller design, and lower power consumption) and would not have been
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`beyond the ordinary skill in the art. Ex. 1002 at ¶ 38; see KSR, 550 U.S. at 417 (quoted
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`supra). What’s more, Plesinger does not rule out the use of alternative light sources.
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`Moreover, such a modification and improvement can be achieved by
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`substituting one light source as discussed by Plesinger (e.g., a fluorescent light tube)
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`with another known light source (an LED), yielding a predictable result. Ex. 1002 at
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`¶ 39. The use of an LED as a light source for backlighting liquid crystal displays and
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`other displays was known in the industry, as acknowledged, e.g., by the ’974 patent’s
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`named inventor, Mr. Parker, in the prior art Pristash patent (Ex, 1012). Indeed, Pristash,
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`which issued on April 2, 1991, and is prior art under 35 U.S.C. § 102(b), discloses “an
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`LED” as one of several interchangeable light sources, including, for example, an
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`incandescent bulb or a fluorescent tube (notably disclosed by Plesinger) as suitable for
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`illuminating a panel. Ex. 1012 at 3:9-22 (“[a] light source 3 of any suitable type may be
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`used . . . . Light source 3 includes a radiation source 8 such as an arc lamp, an
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`incandescent bulb, a lens end bulb, an LED or a fluorescent tube or the like.”).
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`Therefore, based further on the teaching of Pristash of the interchangeably of
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`an LED with other light sources for backlighting liquid crystal displays, it would have
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`been obvious to one having ordinary skill in the art, at the time of the filing of the
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`alleged invention, to implement the light source of Plesinger as an LED, yielding the
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`advantages of, e.g., lower drive voltage, simpler and smaller design, and lower power
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`consumption, leading to a longer life, as taught by Tsunoda. Ex. 1002 at ¶ 40 (citing
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`Ex. 1003 at 3:48-56; Ex. 1011 at ¶ 8, Ex. 1012 at 3:9-22).
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`Plesinger discloses the claimed “tray or housing” and “light extracting
`deformities”
`The backlighted liquid crystal display system of Plesinger further includes a
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`“plastic enclosure 126 [that] preferably comprises . . . a pan-shaped back member 132
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`having lip members 134 . . . , wherein the tabs 130 align and snap together with the lip
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`members 134 such that the front panel 128 attaches to the back member 132 to form
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`the enclosure 126 which encompasses the entire LCD display system.” Ex. 1003 at
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`4:33-40; see also Figs. 2 and 4. The backlight structure of Plesinger “is more completely
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`described in U.S. patent application Ser. No. 589,325, filed Sep. 27, 1990, entitled
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`“Faceted Light Pipe” by Hathaway et al., which is assigned to a common assignee and
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`which is hereby incorporated by reference.” Id. at 3:57-62.
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`Hathaway, which issued on September 24, 1991, and is prior art under 35 U.S.C.
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`§ 102(b), discloses a backlight system where “[i]n the macroscopic view of FIG. 5 the
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`back surface 112 of the light pipe 100 appears to be a straight wedge or planar surface
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`but in the enlarged views shown in FIGS. 6 and 7 the stair stepped or faceted
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`structure is clearly shown.” Ex. 1005 at 4:48-52; see also Figs. 5, 10. “The back surface
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`112 consists of a series of portions
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`114 parallel with the front surface
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`110, with a series of facets 116
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`leading to the next parallel portion
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`114.” Id. at 4:53-55. According to Dr. Coleman, one of ordinary skill in the art would
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`understand that the facets 116 cause light to be emitted from the light emitting surface
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`of the front surface of the light pipe 100. Ex. 1002 at ¶ 42.
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`It would have been obvious to implement the back member 132 taught
`by Plesinger as a reflective frame
`As shown below in the annotated version of Fig. 4 of Plesinger (Ex. 1003), the
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`back member 132 of the plastic
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`enclosure 26 includes end walls and
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`side walls. Because Fig. 4 is a partial
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`view of the liquid crystal display, one
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`of the end/side walls of the back
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`member 132 is not shown. Ex. 1003
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`at 2:53-54. In each of independent claims 1 and 7 (and 13) of the ’974 patent, the end
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`walls and side walls “act as end edge reflectors and side edge reflectors for the panel
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`member to reflect light that would otherwise exit the panel member through an end
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`edge and/or side edge back into the panel member and toward the pattern of light
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`extracting deformities for causing additional light to be emitted from the light
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`emitting surface of the panel member.” Ex. 1001 at 9:18-24, 52-58