Case IPR2014-01362
`Patent 7,384,177
`
`Filed on behalf of Innovative Display Technologies LLC
`By:
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR2014-01362
`U.S. Patent No. 7,384,177
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,384,177
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
`
`TOYOTA EXHIBIT 1007
`
`Page 1 of 35
`
`
`Patent 7,384,177
`
`Filed on behalf of Innovative Display Technologies LLC
`By:
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG DISPLAY CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR2014-01362
`U.S. Patent No. 7,384,177
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,384,177
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`1
`
`TOYOTA EXHIBIT 1007
`
`Page 1 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`I.
`
`INTRODUCTION
`
`
`
`Patent Owner Innovative Display Technologies LLC (“IDT” or “Patent
`
`Owner”) hereby files this preliminary response (“Response”) to the Petition for Inter
`
`Partes Review of U.S. Patent No. 7,384,177 (the “Petition”) in IPR2014-01362 filed
`
`by LG Display Co., LTD (“LGD” or “Petitioner”).
`
`
`
`The PTAB should deny the Petition’s request to institute an inter partes
`
`review (“IPR”) of U.S. Patent No. 7,384,177 (the “’177 patent”) because the grounds
`
`in the Petition do not demonstrate a reasonable likelihood of any claims being
`
`invalid.
`
`
`
`Moreover, the PTAB should deny this Petition or at least revoke its filing date
`
`because the Petitioner has failed to comply with 35 U.S.C. 312(a)(2) by failing to
`
`name clear real parties-in-interest.
`
`
`
`And as further explained at the end of this Response, Patent Owner needs to
`
`seek discovery that shows that Petitioner is barred from filing this IPR under 35
`
`U.S.C. 315(b) because its privies were served with a complaint alleging infringement
`
`of the ’177 patent more than one year prior to the filing date of the Petition. Patent
`
`Owner has outlined its current publicly available evidence on this issue, and if the
`
`Board finds that evidence alone sufficient, Patent Owner requests that the Board
`
`refuse to institute this IPR due to the Section 315(b) bar.
`
`
`
`2
`
`Page 2 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is filed within three months of the September 4, 2014, date of the Notice of Filing
`
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response.
`
`(Paper No. 3.).
`
`
`
`Patent Owner does not intend to waive any arguments by not addressing them
`
`in this Preliminary Response, and Patent Owner intends to raise additional
`
`arguments in the event this IPR is instituted.
`
`
`
`To introduce its discussion of why the grounds in the Petition are insufficient,
`
`the Preliminary Response first provides an outline of the (1) the Grounds themselves;
`
`and (2) the claim construction issues.
`
`A. Grounds in Petition
`
`
`
`The Petition includes seven grounds of alleged invalidity – all 103(a)
`
`obviousness combinations with the exception of one 102(e) ground – for claims 1-
`
`3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 patent.
`
`Ground 1: 103(a) - Melby (Claims 1-3, 5-7, 9-10, 13- 15, 19, 21, 23-25, 27)
`
`Ground 2: 102(e) - Nakamura (Claims 1, 2, 6, 7, 9, 10, 13-15, 19, 21, 23-24,
`26)
`
`Ground 3: 103(a) - Baur (Claims 1, 2, 13, 14)
`
`Ground 4: 103(a) - Baur and Nakamura (Claims 6, 9, 10, 15, 19, 21, 23)
`
`Ground 5: 103(a) - Sasuga and Farchmin (Claims 1, 2, 6, 7, 9, 10, 13,
`15, 21)
`
`
`3
`
`
`
`
`
`Page 3 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`Ground 6: 103(a) Sasuga, Farchmin, and Nakamura (Claims 14 and 19)
`
`Ground 7: 103(a) Sasuga, Farchmin, and Pristash Claims 23, 25, and 26)
`
`For the reasons discussed in Section II below, none of the grounds
`
`demonstrate a reasonable likelihood of any claims being invalid.
`
`B.
`
`Claim Construction
`
`The arguments in this Response stand despite Petitioner’s proposed
`
`construction and despite the broadest reasonable construction of the terms. This
`
`Preliminary Response does not take a position on claim construction at this point.
`
`Patent Owner reserves the right to propose its own construction of any and all claim
`
`terms for which an issue arises in the event the PTAB institutes this IPR.
`
`Patent Owner notifies the Board that the district court in Innovative Display
`
`Technologies v. Acer, Inc. et al., No. 2:13-cv-522 (E.D. Tex. 2013) (Dkt. No. 101)
`
`(“Claim Construction Order”) (Ex. 2003) has ruled on constructions of terms in this
`
`patent, including entering an agreed construction of “deformities” that Petitioner
`
`adopts in its Petition. (Petition at 8) (Ex. 2003 at 58).
`
`II. GROUND 1 - 103(a) - Melby (Claims 1-3, 5-7, 9-10, 13- 15, 19, 21, 23-25,
`27)
`
`Claim 1, limitation [1.a] – “hollow cavity or recess completely
`A.
`surrounded by the side walls”
`
`The Petition alleges that “Melby discloses a housing 30 with continuous side
`
`walls 32, 34, 36, and back wall 38, which form a cavity completely surrounded by
`
`the side walls.” Petition at 14; see also id. at 15 (claim chart identifying the same
`
`
`
`4
`
`Page 4 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`elements). But the alleged side walls, 32, 34, and 36 cannot form a cavity completely
`
`surrounded by the side walls, because a side wall is missing on one side as shown in
`
`the excerpt of Figure 3 below.
`
`
`
`Ex. 1006 at Fig. 3. As seen above, there is no fourth side wall – only side walls 32,
`
`34, and 36 as identified by Petitioner. Moreover, there is no indication that Fig. 3 is
`
`a “cross-sectional view” that would otherwise include a “fourth wall” as argued in
`
`the Escuti Declaration. Ex. 2004 at 30, ¶ 71. In contrast, the description of Fig. 3
`
`states, “FIG. 3 is a view of a third embodiment of a light fixture according to the
`
`invention” (Ex. 1006 at col. 2, ll. 1-2 (emphasis added)) – not a cross-sectional view.
`
`Furthermore, the “translucent cover 40” at the top of Fig. 3 is not shown in cross-
`
`section, and it would fit in structure below it. Also, the arrowed lines shown in Fig.
`
`
`
`5
`
`Page 5 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`3 are not indications of a cross-section, but are instead light rays, as can be deduced
`
`by the facts that each arrow originates from a light source and that there are three
`
`arrows that would span multiple planes instead of the single plane required to show
`
`a cross-section cut. Last, Melby never mentions the word “cross-section” in its entire
`
`disclosure and never mentions that a fourth wall is otherwise present in the
`
`embodiment shown in Fig. 3.
`
`Even if Escuti’s declaration were correct on the “cross-section” issue, it
`
`cannot be considered by the Board because it is not part of the argument made in the
`
`Petition. Under 37 C.F.R. § 42.22(a)(2), the petition must contain a “full statement
`
`of the reasons for the relief requested, including a detailed explanation of the
`
`significance of the evidence.” The rules prohibit arguments made in a supporting
`
`document from being incorporated by reference into a petition. See 37 C.F.R. §
`
`42.6(a)(3). Here, the Petition itself never makes the “cross-section” argument; the
`
`Petition only states that “Melby discloses a housing 30 with continuous side walls
`
`32, 34, 36, and back wall 38.” Petition at 14 (emphasis added). Thus, the Petition
`
`itself never makes an argument about a fourth wall in Melby that would be present
`
`but for the cross-sectional view of Fig 3. Without that argument in the Petition itself,
`
`Petitioner cannot rely on the “cross-section” argument from the Escuti Declaration.
`
`The Petition only identifies three side walls – elements 32, 34, and 36, and as
`
`shown at Fig. 3 above, those side wall do not form a “hollow cavity or recess
`
`
`
`6
`
`Page 6 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`completely surrounded by the side walls” as claimed. Furthermore, the Petition
`
`never argues that the “completely surrounded” limitation and the missing fourth wall
`
`would have been obvious in light of Melby. Accordingly, the Petition cannot show
`
`that Melby renders claim 1 obvious because the Petition has not made a sufficient
`
`showing for the limitation that recites a “hollow cavity or recess completely
`
`surrounded by the side walls.”
`
`Claim 1, limitation [1.c] – “and at least one sheet, film or substrate
`B.
`overlying the assembly for controlling the light emitted from the assembly
`to fit a particular application”
`
`The Petition makes no showing that the alleged film/sheet/substrate in Melby
`
`controls “the light emitted from the assembly to fit a particular application.” Petition
`
`at 16. Furthermore, the Escuti Declaration also fails to apply Melby to any
`
`“particular application” as recited by this limitation. Ex. 1004 at 31-32, ¶ 74. And
`
`the Petition never argues that the “controlling the light emitted from the assembly to
`
`fit a particular application” would have been obvious in light of Melby. Accordingly,
`
`the Petition cannot show that Melby renders claim 1 obvious because the Petition
`
`has not made a sufficient showing for the “and at least one sheet, film or substrate
`
`overlying the assembly for controlling the light emitted from the assembly to fit a
`
`particular application” limitation.
`
`
`
`
`
`
`
`7
`
`Page 7 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`Claim 9 – “a portion of the light emitted from the light sources mixes
`C.
`in the cavity or recess”
`
`The Petition does not show that any light emitted from the light sources mixes
`
`in the cavity or recess. Instead, the Petition cites to a portion of the specification that
`
`states that the light source 16 emits collimated light (Petition at 19) and that the
`
`prisms reflect light in a perpendicular direction (Id.). But the Petition never explains
`
`how those elements result in light mixing. See id. at 13-15. Indeed, Figs. 1 and 3, as
`
`specifically cited in the Petitioner’s chart for this limitation show the light rays
`
`staying separate instead of mixing.
`
`Ex. 1006 at Figs. 1 and 3, as cited in the Petition at 19. The Escuti Declaration cites
`
`to the same Figures and states, “as can be seen in Figs. 1 and 3 below, the light rays
`
`from the light sources are reflected and mixed in the cavity of the housing.” Ex. 1004
`
`at 39, ¶ 108. That statement is plainly incorrect as the light rays in Figs. 1 and 3 are
`
`
`
`not shown mixing.
`
`
`
`8
`
`Page 8 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`The Petition does not show that Melby discloses the light mixing required by
`
`this limitation, and the Petition never argues that the light mixing limitation would
`
`have been obvious in light of Melby. Accordingly, the Petition cannot show that
`
`Melby renders claim 9 obvious because the Petition has not made a sufficient
`
`showing for the limitation that recites “a portion of the light emitted from the light
`
`sources mixes in the cavity or recess.”
`
`Claim 10 – “the sheet, film or substrate provides additional light
`D.
`mixing”
`
`The Petition makes no showing that Melby discloses the limitation that “the
`
`sheet, film or substrate provides additional light mixing.” For this limitation, the
`
`Petition argues that the “sheet may contain pillows optics or Fresnel prisms as taught
`
`by Fig. 1, which are a form of raised or depressed prismatic deformities (claims 14,
`
`23-25) and which reflect light, which provides additional light mixing (claim 10, 13,
`
`21).” Petition at 14. But the Petition does not explain why the “pillow optics or
`
`Fresnel prisms” “which reflect light” would necessarily provide light mixing.
`
`Petition at 14. Instead the Petition relies on 37 paragraphs from the Escuti
`
`Declaration to make that argument. See Petition at 14 (citing Escuti Declaration at
`
`¶¶ 111-147). As discussed above, the Petition cannot rely on arguments found solely
`
`in its expert declaration. 37 C.F.R. § 42.6(a)(3).
`
`The Petition does not show that Melby discloses the light mixing required by
`
`this limitation, and the Petition never argues that the light mixing limitation would
`
`
`
`9
`
`Page 9 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`have been obvious in light of Melby. Accordingly, the Petition cannot show that
`
`Melby renders claim 10 obvious because the Petition has not made a sufficient
`
`showing for the limitation that recites “a portion of the light emitted from the light
`
`sources mixes in the cavity or recess”
`
`Claim 13 – “at least one sheet, film or substrate that is a diffuser,
`E.
`colored film or filter, label or display, reflector, polarizer or reflective
`polarizer”
`
`The Petition makes no showing that Melby discloses the limitation that recites
`
`“at least one sheet, film or substrate that is a diffuser, colored film or filter, label or
`
`display, reflector, polarizer or reflective polarizer.” The Petition ostensibly identifies
`
`sheet 40 (Petition at 14) and “light emitting member 14” in its efforts to show this
`
`limitation. But the Petition never describes if or whether sheet 40 or light emitting
`
`member 14 is a “diffuser, colored film or filter, label or display, reflector, polarizer
`
`or reflective polarizer.” Id. Instead, the Petition again relies on the Escuti Declaration
`
`to import arguments that are otherwise not found in the Petition. Specifically, the
`
`Escuti Declaration identifies “light transmitting member 14” and states that a “light
`
`transmitting member with optics or prisms is a diffuser or reflector because light
`
`would be reflected by the structures provided on the substrate.” Ex. 1004 at 41, ¶
`
`116. But the Petition itself never makes any argument that light transmitting member
`
`14 is a “diffuser or reflector” as recited by this claim limitation. And, the Petition
`
`
`
`10
`
`Page 10 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`cannot incorporate the arguments from the Escuti Declaration by reference. 37
`
`C.F.R. § 42.6(a)(3).
`
`The Petition does not show that Melby discloses the specific kinds of
`
`films/sheets/substrates required by this limitation, and the Petition never argues that
`
`those limitations would have been obvious in light of Melby. Accordingly, the
`
`Petition cannot show that Melby renders claim 13 obvious because the Petition has
`
`not made a sufficient showing for the limitation that recites “at least one sheet, film
`
`or substrate that is a diffuser, colored film or filter, label or display, reflector,
`
`polarizer or reflective polarizer.”
`
`Claim 14 – “the at least one sheet, film or substrate has deformities
`F.
`for controlling the light output ray angle distribution to fit a particular
`application.”
`
`The Petition makes no showing that Melby discloses that a “sheet, film or
`
`substrate has deformities for controlling the light output ray angle distribution to fit
`
`a particular application.” (emphasis added). There is no “particular application”
`
`mentioned in the Petition as applied to the limitation “at least one sheet, film or
`
`substrate has deformities for controlling the light output ray angle distribution to fit
`
`a particular application.” Petition at 20. And the Escuti Declaration also fails to
`
`mention any “particular application” as recited by this limitation. Ex. 1004 at 42, ¶¶
`
`118-121.
`
`
`
`11
`
`Page 11 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`The Petition does not show that Melby discloses a particular application such
`
`that the deformities on the films/sheets/substrates control the light output ray angle
`
`distribution to fit that application. And the Petition never argues that those
`
`limitations would have been obvious in light of Melby. Accordingly, the Petition
`
`cannot show that Melby renders claim 14 obvious because the Petition has not made
`
`a sufficient showing for the “the at least one sheet, film or substrate has deformities
`
`for controlling the light output ray angle distribution to fit a particular application”
`
`limitation.
`
`Claim 15 – “hollow cavity or recess completely surrounded by the side
`G.
`walls”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.a] in claim 1. Petition at 20. For the same reasons described in Section
`
`II.A discussing limitation [1.a], Ground 1 fails for claim 15.
`
`H. Claim 15 – “and at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.c] in claim 1. Petition at 20-21. For the same reasons described in
`
`Section II.B discussing limitation [1.c], Ground 1 fails for claim 15.
`
`I.
`
`Claim 15 – “…to produce a desired light output color or uniformity”
`
`The Petition makes no showing that Melby discloses the following limitation
`
`from claim 15: “wherein the tray acts as at least one of a back, side edge and end
`
`
`
`12
`
`Page 12 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`edge reflector and has at least one secondary flat, angled, faceted or curved reflective
`
`or refractive surface to facilitate better mixing of light rays within the cavity or recess
`
`to produce a desired light output color or uniformity.” Specifically, the Petition
`
`makes no argument that Melby discloses a “desired light output color or uniformity”
`
`associated with the reflectors/surfaces in this limitation. The Escuti Declaration is
`
`likewise insufficient; it only makes passing arguments relating to a “desired light
`
`output color or uniformity,” but never identifies any particular “desired light output
`
`color or uniformity.” Ex. 1004 at 43-44, ¶¶ 126-128. Even so, the Petition cannot
`
`incorporate the arguments from the Escuti Declaration by reference when the
`
`Petition itself never even discusses this limitation with respect to “desired light
`
`output color or uniformity.” 37 C.F.R. § 42.6(a)(3).
`
`The Petition does not show that Melby discloses “a desired light output color
`
`or uniformity” as it appears in this limitation from claim 15: “wherein the tray acts
`
`as at least one of a back, side edge and end edge reflector and has at least one
`
`secondary flat, angled, faceted or curved reflective or refractive surface to facilitate
`
`better mixing of light rays within the cavity or recess to produce a desired light
`
`output color or uniformity.” And the Petition never argues that “a desired light output
`
`color or uniformity” of that limitation would have been obvious in light of Melby.
`
`Accordingly, the Petition cannot show that Melby renders claim 15 obvious because
`
`the Petition has not made a sufficient showing for this limitation.
`
`
`
`13
`
`Page 13 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`Claim 21 – “wherein there is at least one sheet, film or substrate that
`J.
`is a diffuser, colored film or filter, label, transparent or semi-transparent
`overlay, reflector, polarizer or reflective polarizer”
`
`For claim 21, the same argument applies as stated in Section II.E discussing
`
`limitation claim 13 and the Petitioner’s failure to identify any of the specific
`
`film/sheet/substrates, e.g., “a diffuser, colored film or filter…” as claimed.
`
`Accordingly, Ground 1 fails for claim 21.
`
`Claim 23 – “wherein there is at least one sheet, film or substrate that
`K.
`has deformities on at least one surface to control the light output ray angle
`distribution to fit a particular application”
`
`For claim 23, the same argument applies as stated in Section II.F discussing
`
`claim 14 and the Petitioner’s failure to identify any “particular application” as
`
`claimed. Accordingly, Ground 1 fails for claim 23.
`
`III. GROUND 2 - 102(e) - Nakamura (Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19,
`21, 23-24, and 26)
`
`A.
`
`Claim 1, limitation [1.a] – “a tray having … continuous side walls”
`
`The Petition never makes any allegations that the identified side walls are
`
`“continuous” as claimed. The only part of the Petition that identifies any side walls
`
`with any particularity is this: “Nakamura discloses a shallow box-form holder 24
`
`with its front surface open including side walls 24a and 24b …” Petition at 23. But
`
`the Petition never alleges that side walls 24a and 24b are “continuous” as claimed.
`
`The corresponding part of the Escuti Declaration also makes no mention of whether
`
`side walls 24a and 24b are “continuous” as claimed. Petition at 26, citing to Ex. 2004
`
`
`
`14
`
`Page 14 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`at ¶ 157. Without making any argument that “continuous” side walls exist in
`
`Nakamura, the Petition fails to show that Nakamura anticipates claim 1 or any of its
`
`dependent claims.
`
`B.
`
`Claim 1, limitation [1.a] – “a tray having a back wall …”
`
`The Petition never makes any identification of the tray’s claimed “back wall.”
`
`The Petition briefly mentions “side wall 24a and 24b,” but it never identifies a
`
`corresponding back wall. See Petition at 23 (stating, “Nakamura discloses a shallow
`
`box-form holder 24 with its front surface open including side walls 24a and 24b …”
`
`but not identifying a corresponding back wall). The corresponding part of the Escuti
`
`Declaration also makes no mention of what specific part of Nakamura discloses the
`
`claimed back wall. Petition at 26, citing to Ex. 2004 at ¶ 157. Without making any
`
`identification of a specific “back wall” in Nakamura, the Petition fails to show that
`
`Nakamura anticipates claim 1 or any of its dependent claims.
`
`C.
`Claim 14 – “the at least one sheet, film or substrate has deformities
`for controlling the light output ray angle distribution to fit a particular
`application.”
`
`The Petition makes no showing that Nakamura discloses that a “sheet, film or
`
`substrate has deformities for controlling the light output ray angle distribution to fit
`
`a particular application.” (emphasis added). There is no “particular application”
`
`mentioned in the Petition for Nakamura as applied to the limitation “at least one
`
`sheet, film or substrate has deformities for controlling the light output ray angle
`
`
`
`15
`
`Page 15 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`distribution to fit a particular application.” Petition at 29. The Petition generally
`
`alleges that Nakamura has a film with deformities “for controlling the output of light
`
`(claims 14, 23),” (Petition at 24), but the Petition never identifies the particular
`
`application for which the deformities allegedly control the light output ray angle
`
`distribution as claimed. Without making any identification of a specific “particular
`
`application” in Nakamura, the Petition fails to show that Nakamura anticipates claim
`
`14 or any of its dependent claims.
`
`D. Claim 15 – “a tray having … continuous side walls”
`
`For the limitation “a tray having … continuous side walls” in claim 15, the
`
`Petition cites to its alleged support for limitation [1.a] in claim 1. Petition at 30. For
`
`the same reasons described in Section III.A discussing limitation [1.a], Ground 1
`
`fails for claim 15 and its dependent claims.
`
`E.
`
`Claim 15 – “a tray having a back wall …”
`
`For the limitation “a tray having a back wall” in claim 15, the Petition cites to
`
`its alleged support for limitation [1.a] in claim 1. Petition at 30. For the same reasons
`
`described in Section III.B discussing limitation [1.a], Ground 1 fails for claim 15
`
`and its dependent claims.
`
`
`
`
`
`
`
`16
`
`Page 16 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`F.
`Claim 23 – “wherein there is at least one sheet, film or substrate that
`has deformities on at least one surface to control the light output ray angle
`distribution to fit a particular application”
`
`For claim 23, the same argument applies as stated in Section III.C discussing
`
`claim 14 and the Petitioner’s failure to identify any “particular application” as
`
`claimed. Accordingly, Ground 1 fails for claim 23.
`
`IV. GROUND 3 - 103(a) - Baur (Claims 1, 2, 13, and 14)
`
`A. Claim 1, limitation [1.c] – “at least one sheet, film or substrate
`overlying the assembly for controlling the light emitted from the
`assembly to fit a particular application”
`
`The Petition makes no showing that the alleged film/sheet/substrate in Baur
`
`controls “the light emitted from the assembly to fit a particular application.” Petition
`
`at 32-33 and 35. Furthermore, the Escuti Declaration also fails to apply Baur to any
`
`“particular application” as recited by this limitation. Ex. 1004 at 70, ¶¶ 234-235. And
`
`the Petition never argues that the “controlling the light emitted from the assembly to
`
`fit a particular application” would have been obvious in light of Baur. Accordingly,
`
`the Petition cannot show that Baur renders claim 1 obvious because the Petition has
`
`not made a sufficient showing for the limitation that recites “at least one sheet, film
`
`or substrate overlying the assembly for controlling the light emitted from the
`
`assembly to fit a particular application.”
`
`
`
`
`
`
`
`17
`
`Page 17 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`B. Claim 1, limitation [1.c] – “at least one sheet, film or substrate
`overlying the assembly …”
`
`The Petition never makes any particular allegations that the alleged films in
`
`Baur are “overlying the assembly” as claimed. The Petition appears to identify films
`
`10 and/or 11 as allegedly disclosed by Baur. Petition at 35. But neither the Petition
`
`nor the Escuti Declaration ever meaningfully address the requirement that the films
`
`overlie the assembly. The Petition simply makes the conclusory statement that
`
`“Regarding claim 13, it would have been obvious to one of skill in the art to overly
`
`the film 10, which may be a light diffusing layer (diffuser) over the assembly as
`
`suggested by Baur. Id. 7:30-39; see also Escuti Decl., ¶246.”). Petition at 33-34. But
`
`the Petition nor never explains what particular positioning of film 10 that would have
`
`resulted in a showing “overlying the assembly” as claimed is obvious. Accordingly,
`
`the Petition cannot show that claim 1 or any of its independent claims are invalid as
`
`obvious in light of Baur.
`
`V. GROUND 4 - 103(a) – Baur in view of Nakamura (Claims 6, 9, 10, 15,
`19, 21, and 23)
`
`A.
`Claim 15 – “and at least one sheet, film or substrate overlying the
`assembly for controlling the light emitted from the assembly to fit a
`particular application”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.c] in claim 1. Petition at 41. Thus Ground 4 relies on the sole disclosure
`
`of Baur to meet this limitation, and for the same reasons described in Section IV.A
`
`discussing limitation [1.c], Baur does not disclose this limitation from claim 15. The
`
`
`
`18
`
`Page 18 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`Petition never puts forth any evidence that the combination of Baur and Nakamura
`
`meets this limitation outside of the sole disclosure of Baur. Thus, Petitioner has not
`
`shown that this combination can render obvious claims 15 or any of its dependent
`
`claims.
`
`B.
`Claim 15 – “at least one sheet, film or substrate overlying the
`assembly …”
`
`For this limitation in claim 15, the Petition cites to its alleged support for
`
`limitation [1.c] in claim 1. Petition at 41. Thus Ground 4 relies on the sole disclosure
`
`of Baur to meet this limitation, and for the same reasons described in Section IV.A
`
`discussing limitation [1.c], Baur does not disclose this limitation from claim 15. The
`
`Petition never puts forth any evidence that the combination of Baur and Nakamura
`
`meets this limitation outside of the sole disclosure of Baur. Thus, Petitioner has not
`
`shown that this combination can render obvious claims 15 or any of its dependent
`
`claims.
`
`VI. GROUND 5 - 103(a) – Sasuga in view of Farchmin (Claims 1, 2, 6, 7, 9,
`10, 13, 15, And 21)
`
`A.
`Claim 1, limitation [1.a] – Sasuga teaches away from a combination
`with Farchmin to meet the limitation “a tray having a back wall and
`continuous side walls”
`
`The combination of Sasuga and Farchmin as suggested for this limitation fails
`
`to meet the Graham factors and thus Ground 5 fails for claim 1. As confirmed by
`
`the Supreme Court in KSR, an obviousness analysis begins with a consideration of
`
`the Graham factors. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406-407
`
`
`
`19
`
`Page 19 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`(2007) (citing Graham v. John Deere Co., 383 U.S. 1 (1966)). The Graham factors
`
`are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed invention
`
`and the prior art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`
`Graham at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
`
`obvious. Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983). But that is exactly
`
`what Petitioner has done when it argues that it “would have been obvious for a
`
`person of ordinary skill in the art to combine Farchmin with Sasuga to provide
`
`continuous side walls with a hollow cavity that completely surrounds the cavity or
`
`recess in Sasuga.” Petition at 45. That argument is focused narrowly on the
`
`Petitioner’s interpretation of the difference between the claimed tray with
`
`“continuous side walls” and the tray disclosed in Sasuga.
`
`
`
`20
`
`Page 20 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`The Petition argues that a “person of ordinary skill in the art would have been
`
`motivated to follow Sasuga’s suggestion and Farchmin’s teachings to use the
`
`reflector 26 of Farchmin in place of the LCA of Sasuga.” Petition at 46. But in
`
`making that statement, the Petition fails to consider Sasuga as whole and account for
`
`the potential negative impacts to Sasuga’s device if the proposed substitution were
`
`implemented. Sasuga’s “Summary of the Invention” section describes an object of
`
`the invention that is essential to consider here:
`
`An object of the present invention is to provide a liquid crystal display
`
`device which can be easily repaired or repaired in its back lights.
`
`***
`
`The liquid crystal display device can be easily repaired and replaced in
`
`its back lights because the fixing pawls and hooks of the shield casing
`
`can be easily removed and because the shield casing, the middle frame
`
`for holding the liquid crystal display and the lower casing for packaging
`
`the back lights are easily assembled and disassembled.
`
`Ex. 1009 at col. 1, ll. 58-60 and col. 2, ll. 3-9 (emphasis added). As described above,
`
`an object of Sasuga is an LCD device that can be easily repaired and replaced
`
`including having the lower casing for packaging the backlights being easily
`
`assembled and disassembled. That same lower casing of Sasuga (the “LCA”) is what
`
`
`
`21
`
`Page 21 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`the Petitioner suggests could be replaced by the reflector 26 of Farchmin. But there
`
`is nothing in Farchmin that demonstrates that its reflector 26 could be designed to
`
`match the other components of Sasuga and meet Sasuga’s goal of being easily
`
`repaired, replaced, assembled, and disassembled. Instead of teaching a device that
`
`meets those goals, Farchmin’s goal is maintaining sufficient light when the lights in
`
`reflector 26 fail until the time when the entire backlight unit can be replaced.
`
`Specifically, Farchmin states that “when one lamp burns out, light from the adjacent
`
`lamps will be reflected into the area of the burned out lamp to fill in for it and largely
`
`preserve the visibility of the display until the backlight unit can be replaced.” Ex.
`
`2011 at col. 1, ll. 43-47. Thus the goal of Farchmin is to lessen the need for
`
`replacement or repair, which is at direct odds with the teachings of Sasuga for having
`
`a lower casing that can be easily repaired, replaced, assembled, and disassembled.
`
`The complexity of Farchmin’s reflector 26, and its difficulty in being substituted
`
`with the LCA of Sasuga is apparent from Figures 1 and 3 of Farchmin reproduced
`
`below:
`
`
`
`22
`
`Page 22 of 35
`
`
`
`Case IPR2014-01362
`Patent 7,384,177
`
`16A
`
`53
`
`FIG. 3
`
`10
`/
`
`28E
`
`.,_ c:::)
`54E
`I -=... c:::)
`I
`II54F II
`c:::)
`~
`,tl'
`
`[
`
`--
`
`Farchmin, Ex. 1011 at Figs. 1 and 3.
`
`The Petition has not considered the teaching of Sasuga aw
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
