Filed on behalf of: Toyota Motor Corp.
`
`
`
`
`By: Thomas W. Winland
`
`P. Andrew Riley
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: andrew.riley@finnegan.com
`
`tom.winland@finnegan.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Toyota Motor Corp.,
`Petitioner
`
`v.
`
`Innovative Display Technologies LLC,
`Patent Owner
`
`
`Patent No. 7,300,194
`
`
`
`
`DECLARATION OF DR. ZANE COLEMAN
`
`TOYOTA EXHIBIT 1004
`
`Page 1 of 98
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`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... 1
`
`
`I.
`
`II. GUIDING LEGAL PRINCIPLES ........................................................................... 1
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art ............................................................................. 1
`
`Anticipation Invalidity .................................................................................................. 2
`
`C. Obviousness Invalidity .................................................................................................. 3
`
`III. BACKGROUND AND EXPERIENCE ................................................................. 4
`
`IV. MATERIALS REVIEWED ........................................................................................ 6
`
`V.
`
`TECHNOLOGY BACKGROUND ......................................................................... 7
`
`A.
`
`B.
`
`Light Emitting Panel Assemblies .................................................................... 7
`
`Common Light Control Structures and Films ............................................ 10
`
`II.
`
`THE ’194 PATENT ................................................................................................... 18
`
`A.
`
`B.
`
`C.
`
`D.
`
`Background of The ’194 Patent ..................................................................... 18
`
`Prosecution History (Ex. 1002) ..................................................................... 21
`
`Asserted Claims ................................................................................................ 22
`
`Claim Construction .......................................................................................... 22
`
`III. PRIOR ART ANALYSIS .......................................................................................... 23
`
`A.
`
`U.S. Patent No. 5,005,108 (“Pristash”) ........................................................ 23
`
`1.
`
`Claims 1, 4-6 and 28 are Obvious in view of Pristash .................... 25
`
`B.
`
`U.S. Patent No. 5,619,351 (“Funamoto”) .................................................... 36
`
`1.
`
`2.
`
`Claims 1, 16, 22, 23, 27, and 31 are Anticipated by
`Funamoto .............................................................................................. 37
`
`Claims 4-6 Are Obvious Over Funamoto ........................................ 53
`
`C.
`
`U.S. Patent No. 5,598,280 (“Nishio ’280”) .................................................. 59
`
`i
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`1.
`
`Claims 1, 4-6, and 28 are Anticipated by Nishio ’280 .................... 60
`
`D. U.S. Patent No. 5,592,332 (“Nishio ’332”) .................................................. 71
`
`1.
`
`Claims 16, 22, 23, 27, and 31 are Anticipated by Nishio
`’332 ......................................................................................................... 72
`
`E.
`
`JP H06-250178 (“Matsuoka”) ........................................................................ 75
`
`1.
`
`Claims 16, 22, 23, 27, and 31 are Anticipated by Matsuoka .......... 76
`
`F.
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) .................................................... 80
`
`1.
`
`Claim 28 Is Anticipated By Kobayashi ............................................. 82
`
`VI.
`
`SECONDARY CONSIDERATIONS OF OBVIOUSNESS ............................ 87
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`IV. CONCLUSION........................................................................................................... 87
`
`
`
`
`ii
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`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Toyota Motor Corp. (“Toyota” or “Petitioner”)
`
`as an independent expert consultant in this proceeding before the United States
`
`Patent and Trademark Office. Although I am being compensated at my usual rate of
`
`$400.00 per hour for the time I spend on this matter, no part of my compensation
`
`depends on the outcome of this proceeding, and I have no other interest in this
`
`proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 7,300,194
`
`(“the ’194 patent”) (attached as Ex. 1001 to the petition). I understand that the ’194
`
`patent was filed on October 6, 2005. I also understand that the ’194 patent is part of a
`
`large family and one of several continuations, continuation-in-part, and/or divisions
`
`stemming from U.S. Patent No. 5,613,751, which was filed on June 27, 1995.
`
`3.
`
`I have been asked to render certain opinion regarding the ’194 patent
`
`and whether certain references disclose or suggest certain features in the claims of the
`
`’194 patent.
`
`II. GUIDING LEGAL PRINCIPLES
`A.
`
`Person of Ordinary Skill in the Art
`
`4.
`
`I am informed that a “person of ordinary skill in the art” (“POSITA”)
`
`refers to a hypothetical person who is presumed to have known the relevant art at the
`
`time of the invention. Many factors may determine the level of ordinary skill in the
`
`art, including: (1) the type of problems encountered in the art, (2) prior art solutions
`
`1
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`to those problems, (3) the rapidity with which innovations are made, (4) the
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`sophistication of the technology, and (5) the educational level of active workers in the
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`field. I understand that a POSITA is a person of ordinary creativity, not an
`
`automaton, meaning that a POSITA may employ inferences and creative steps in their
`
`work. I am informed that the relevant timeframe is prior to June 27, 1995, which is
`
`the earliest priority filing date for the ’194 patent, and the opinions below pertain to
`
`that timeframe.
`
`5.
`
`A POSITA in the art for this patent 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. Accordingly, I have used this definition in my
`
`analysis below.
`
`B.
`
`6.
`
`Anticipation Invalidity
`
`I understand that a patent claim is “anticipated,” and, therefore, invalid,
`
`if a single prior art reference discloses (expressly or inherently) each and every element
`
`of the claimed invention in a manner sufficient to enable a POSITA to practice the
`
`invention, thus placing the invention in possession of the public.
`
`7.
`
`I also understand that under certain circumstances, multiple references
`
`may be used to prove anticipation, specifically to: (a) prove that the primary reference
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`2
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`contains an enabled disclosure, (b) explain the meaning of a term used in the primary
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`reference, or (c) show that a characteristic not disclosed in the reference is inherent.
`
`C. Obviousness Invalidity
`
`8.
`
`I understand that even if a prior art reference fails to anticipate a patent
`
`claim, the claim may nonetheless be invalid as “obvious,” if the differences between
`
`the subject matter claimed and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a POSITA. I
`
`understand that several factual inquiries underlie a determination of obviousness.
`
`These inquiries include the scope and content of the prior art, the level of ordinary
`
`skill in the art, the differences between the claimed invention and the prior art, and
`
`any objective “secondary considerations”, discussed below. I understand that a
`
`combination of familiar elements according to known methods may be obvious when
`
`it does no more than yield predictable results. I also understand that common sense
`
`and ordinary creativity of one skilled in the art can be relevant to obviousness.
`
`9.
`
`I have been informed that certain objective secondary considerations
`
`may be relevant to a determination of whether an invention was obvious. Such
`
`secondary considerations may include, e.g., (a) whether there was a long-felt and long-
`
`unmet need for the invention, (b) whether the invention achieved unexpected results,
`
`(c) the commercial success of the invention, and (d) whether the invention was copied
`
`or praised within the industry.
`
`10. My opinions are set forth below.
`
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`III. BACKGROUND AND EXPERIENCE
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`11. My curriculum vitae, which includes a more detailed summary of my
`
`background, experience, and publications, is attached as Appendix A.
`
`12.
`
`In 1992, I received a Bachelor of Science degree in Applied Physics,
`
`including a Certificate in Optics from the Georgia Institute of Technology. I received
`
`my doctorate in Physics at the Loughborough University in the United Kingdom in
`
`1997, focusing on applied rigorous coupled wave diffraction theory to model and
`
`analyze recorded edge-lit holograms. My completed thesis was entitled: Modern
`
`Holographic Recording and Analysis Techniques Applied to Edge-Lit Holograms and their
`
`Applications.
`
`13.
`
`From 1993-1997, I worked as an Optical Engineer at ImEdge
`
`Technology Inc. While at ImEdge Technology I conducted research for a start-up
`
`company developing holographic illumination technology. During this time I also
`
`invented new methods directed to recording edge-lit holograms and edge-lit devices
`
`for display and biometric applications; responsible for seven issued patents.
`
`14.
`
`From 1997 to 2002, I worked as a Senior Physicist for Motorola Labs. I
`
`helped optically design & construct the world’s first personal micro-projector (US
`
`Patent 6,637,896). I also designed reflection and transmission micro-structured optical
`
`films for LCDs as well as 3 new optical film products with suppliers, including an
`
`optical film with 3M, which was shipped in over 100 million cellular phones. During
`
`4
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`my time at Motorola, I was also responsible for four issued patents and 26 patent
`
`disclosures.
`
`15.
`
`From 2003-2005, I served as the President of Phostech, where my roles
`
`included the optical design & analysis of diffusing films, refractive-TIR films,
`
`projection screens & systems, LCD backlights, lightguides, signs, head-up displays and
`
`light fixtures. I also invented new optical films, projection screens, backlights and
`
`displays, including drafting eight patent applications.
`
`16.
`
`From 2005-2006, I was the Manager of Optical Engineering at Fusion
`
`Optix Inc. where I helped to develop and prototype micro-replicated, multi-functional
`
`optical films for displays and light fixtures through optical modeling prototyping,
`
`analysis, ,and specification. I also analyzed the optical properties of 100 plus polymers,
`
`and the effects of film extrusion; in addition to designing, installing, and managing the
`
`optical film, LED backlight, and light fixture characterization lab. I also led polymer
`
`based optical film research including production and optical characterization.
`
`17.
`
`From 2006-2009, I was the VP of Technology & Director of
`
`Technology at Fusion Optix Inc. In this role, I lead the research strategy and transfer
`
`of technology to product engineering in a fast paced small company providing
`
`innovation in the display and LED lighting industries. I also developed technology
`
`roadmaps, intellectual property strategy, & competitive benchmarking; inventing more
`
`than 35 unique, patentable products in addition to drafting and prosecuting over 60
`
`patent applications. I also oversaw the research and development of optical films,
`
`5
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`LED backlights, and LED light fixture projects. I also co-developed the optical
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`system of a Lightfair 2009 Innovation Award-winning light fixture.
`
`18.
`
`In 2009, I rejoined Phostech as President and am presently responsible
`
`for optical consulting and patent strategy & drafting services.
`
`19. Overall, my experience spans more than 25 years embracing relevant
`
`academia and interdisciplinary team innovation which culminated in bringing the
`
`absolute best products to the highly competitive lighting technology display market.
`
`As a result, I am able to pinpoint optimal design and technology directions based on
`
`complex customer needs and dynamic market factors in concert with overall business
`
`needs, marketing collaborates, and the broader product design and engineering
`
`groups. As noted above, I am a named inventor and/or applicant on a substantial
`
`number of patents and patent applications related to the areas of edge-lit holograms,
`
`edge-lit devices for display and biometric applications, optical film for LCD’s,
`
`personal micro-projector, projection screens, backlights and displays, a LED
`
`backlights, and other light fixture devices. I am also a registered patent agent at the
`
`U.S. Patent and Trademark Office (Reg. No. 65,754). My curriculum vitae also include
`
`a more detailed summary of my background and experience.
`
`IV. MATERIALS REVIEWED
`
`20.
`
`In addition to my general knowledge gained as a result of my education
`
`and experience in this field, I have reviewed and considered, among other things, the
`
`’194 Patent, the prosecution history of the ’194 Patent, the prior art of record, the
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`6
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`papers submitted by LG Display, Ltd. and LG Display America, Inc. (“LGD”) in
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`connection with its IPR2014-01097 including the references cited, and the papers
`
`submitted by Sony Corporation (“Sony”) in connection with its IPR2015-00749
`
`including the references cited.
`
`V. TECHNOLOGY BACKGROUND
`A.
`Light Emitting Panel Assemblies
`21. The ’194 Patent discloses a light emitting panel assembly, also called a
`
`light emitting assembly, which according to the ’194 Patent, is a device configured to
`
`produce a uniform illumination from a surface. This is a type of light box or
`
`luminaire, producing surface illumination. See, e.g., Ex. 1025, U.S. Patent No.
`
`5,160,195 (“Miller”). While these panel assemblies are used in many application
`
`contexts, e.g., architectural lighting, signage illumination, and x-ray film viewing, the
`
`primary application is in LCDs and the various applications thereof. In the LCD
`
`context, a light emitting panel assembly is usually called the “backlight” module,
`
`which is important since it generates the light needed by the display, and is primarily
`
`responsible for the brightness and power-efficiency of the whole system. The other
`
`major module of an LCD is the “LC panel,” which is non-light emitting and instead
`
`modulates light passing through it to form an image, where each individual pixel acts
`
`as a shutter controlling how much light can pass through it. See Ex. 1026, J. A.
`
`Castellano, Handbook of Display Technology, Academic Press Inc., San Diego, 1992, at
`
`pp. 9-13 and Ch. 8. A typical cross-section of a light emitting panel assembly by the
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`time of the ’194 Patent is illustrated in Fig. 2 from Ciupke, where the light emitting
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`panel assembly includes everything below element 12, and where element 12 is the
`
`LCD. (Fig. 2 from Ex. 1015, U.S. Patent No. 5,461,547 (“Ciupke”)).
`
`
`
`22. The principle aim of a light emitting panel assembly is to provide a
`
`surface of illumination that is as smooth as possible across its area, i.e., to emit light
`
`uniformly from its entire spatial extent and into a desired angle distribution. In the
`
`1990s, most sources for illuminating LCDs were point- or line-shaped light sources.
`
`Thus, without an inexpensive, bright, and efficient light source that emits inherently
`
`from a surface area commensurate with the size of most LCDs, point- and line-
`
`shaped light sources are used instead. For example, light-emitting-diodes (LEDs)
`
`have small emission areas typically on the order of a few mm2, and fluorescent lamps,
`
`with either cold- (CCFL) or hot- (HCL) cathodes, can be many cm long but only a
`
`few mm wide. The most critical engineering challenge for backlights, therefore, is to
`
`produce the surface illumination with the target brightness and uniformity at the
`
`lowest possible electrical power.
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`23. Light emitting panel assemblies are classified into two well-known1
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`categories: “edge-lit” and “directly back-lit.” See, e.g., Fig. 9 from Ex. 1019 U.S. Patent
`
`No. 5,598,280 (“Nishio ’280”), versus Fig. 4 from Ex. 1027, U.S. Patent No.
`
`5,384,658 (“Ohtake”). These two categories are illustrated in Fig. A below, with the
`
`light sources highlighted in each case. In the edge-lit category, the light source is at
`
`the edge, sending light substantially horizontally (in this illustration), which must then
`
`be turned upward to emit upward (in this illustration) through the emitting surface
`
`(and toward the display element in this illustration). In the direct back-lit category, the
`
`light sources are arranged instead directly below the emitting surface, usually with a
`
`plate and films in between. Confusingly, the word “backlight” is commonly applied
`
`to both. The ’194 Patent discloses an edge-lit light emitting panel assembly. Edge-lit
`
`light emitting panel assemblies are often preferred because they can be physically
`
`thinner and lower weight.
`
`
`
`
`
`
`1 To be clear, when I refer to an element or concept as “well-known” or “known in
`
`the prior art,” I particularly mean to say that the element or concept was well-known
`
`as of June 27, 1995.
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`Figure A (annotated Fig. 9 of Ex. 1019, Nishio ’280 and Fig. 2 of Ex. 1027,
`Ohtake)
`
`24.
`
`It was known by June 27, 1995 that one or more light sources may be
`
`employed. As representative examples, see Ex. 1015, Ciupke, at Fig. 4 below.
`
`
`
`B.
`Common Light Control Structures and Films
`25. Many standard optical elements and surfaces within LCDs are used to
`
`spatially homogenize and control the angular distribution of emitted light. These
`
`include light pipes, transition areas, reflectors, and various types of microstructured
`
`deformities (e.g., microprisms, diffusers, and microlenses). See, e.g., Ex. 1028, U.S.
`
`Patent No. 5,303,322 (“Winston”). I now discuss each of these.
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`26. The light pipe, also sometimes called a light guide or wave guide or
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`optical conductor, accepts light injected from the side and distributes it across the
`
`emission area. See, e.g., Ex. 1029, U.S. Patent No. 5,050,946 (“Hathaway”), at Abstract
`
`and 1:56-59. The light pipe is typically a transparent planar slab that confines the light
`
`within it using the principle of total-internal-reflection, in order to support the
`
`persistent goals in LCDs of thinner and lighter displays. Id. at 5:66-6:2. In some
`
`designs the light pipe has parallel surfaces and in other designs it has a wedge shape.
`
`Id. at Figs. 1 and 5. Light will generally only escape from the light pipe into the
`
`emission direction when disturbed by a structure – for example, a pattern of diffusing
`
`spots on the back surface, or microstructures on one or both surfaces. Id. at 7:15-22.
`
`For example, in the annotated Fig. B of Ex. 1015, Ciupke below, the ray 24 is shown
`
`first emitting from the light source 18, entering the light pipe 11, bouncing off the top
`
`and bottom surfaces of the light pipe several times, reflecting on the right hand side
`
`by the edge reflector 29, hitting one of the groove 17 deformities, and only then
`
`emitting from the light pipe toward the LCD. Light pipes were generally known in
`
`the prior art. It is important to note that the ’194 Patent employs several terms for
`
`the light pipe, including “transparent panel member” (e.g., Ex. 1001, the ’194 Patent, at
`
`1:20), “light emitting panel member” (e.g., id. at 1:34-35), and “transparent light
`
`emitting panel” (e.g., id. at 2:67).
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`Figure B (annotated Fig. 2 of Ex. 1015, Ciupke)
`27. A transition area (or region) is commonly employed between the light
`
`source and the light pipe, and is known in the art. Ex. 1001, the ’194 Patent, at 2:64.
`
`This is a structure that usually has at least two functions: to securely position the light
`
`source relative to the light pipe, and to spread and transmit light to produce a more
`
`uniform input illumination. See, e.g., Ex. 1029, Hathaway, at 6:3-24. The transition
`
`area may take many shapes, and is usually formed using a transparent material with a
`
`refractive index similar to the light guide. For example, in the annotated Figure C of
`
`Ex. 1015, Ciupke below, the transition area 25 couples the light from the light sources
`
`18 into the light pipe 11. Cf. Ex. 1029, Hathaway, at Fig. 11.
`
`Figure C (annotated Fig. 4 of Ex. 1015, Ciupke)
`28. Various types of deformities are employed to control the direction and
`
`spatial uniformity of light within light emitting panel assemblies. The methods by
`
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`which they control the light are through refraction and/or reflection. Two major
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`categories are those that are essentially microstructured grooves or protrusions
`
`on/into a surface, or those that involve a highly scattering material painted on a
`
`surface or formed into a sheet. It was known to a person of ordinary skill in the art at
`
`the time of the ’194 Patent that these deformities may be random or regularly
`
`arranged, and may have features which vary spatially across the emitting area (e.g., size,
`
`density, type, shape, etc.). For example, several types of spatial variation in deformities
`
`are shown in Fig. 5 of Ex. 1030, European Patent Application Publication No.
`
`EP500960 (“Ohe”) below, where the light source is positioned at side 7.
`
`
`29. One of the most common deformities is a microprism, which is a small
`
`groove or protrusion with two or more facets. These are shown in Figs. B and C
`
`above in paragraphs 43 and 44, respectively, as elements 17, on either side of the light
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`pipe. When a light ray hits one of these microprisms, its direction can be substantially
`
`changed via refraction and/or reflection, nearly without loss. An illustration of both
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`behaviors can be seen in Fig. D below, where I have highlighted the rays refracting
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`(red) and the rays reflecting (blue) because of the microprisms sheet (green) (Fig. 6
`
`from Ex. 1019, Nishio ’280). In fact, the blue ray on the right side is first reflected
`
`and then refracted. In some cases, an entire surface is formed into an array of prisms,
`
`either as a surface of the light pipe or as a separate sheet, but this is not required. In
`
`this configuration, the slanted surfaces are useful to turn light toward useful viewing
`
`directions, e.g., from very oblique angles to on-axis angles, and visa versa. Because a
`
`large portion of the light emitted from a typical light pipe system is initially sent along
`
`oblique directions, the addition of a microprism sheet typically increases/enhances the
`
`brightness of the light emitting panel as seen by a viewer directly observing on-axis.
`
`By the early 1990s, the company 3M commercialized many films based on this effect,
`
`and the terminology of “brightness enhancement/enhancing film,” or BEF, became
`
`essentially synonymous with microprism sheets. See, e.g., the extended explanation in
`
`Ex. 1031, U.S. Patent No. 5,828,488 (“Ouderkirk”), at 6:63-8:8; and Ex. 1032, 3M
`
`product brochure 75-0500-0403-7, “Brightness Enhancement Film (BEF),” (1993).
`
`Microprism deformities and sheets were generally known in the prior art.
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`
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`Figure D (annotated Fig. 6 of Ex. 1019, Nishio ’280)
`30. A second common deformity is one that causes a diffusing effect, which
`
`at least partially randomizes the direction of light, increasing its divergence angle and
`
`reducing on-axis brightness if the light incident on the diffuser is already centered on-
`
`axis, or increasing the on-axis brightness if the light incident on the diffuser is
`
`centered off-axis. This will tend to blur shadows or brightness variations, making
`
`light more uniform.
`
`31. Diffusing deformities may be embodied as nearly any interruption on the
`
`surface of a planar optical sheet, including bumps or indentations of nearly any shape,
`
`microspheres, or white paint. For example: (i) irregular beads partially embedded on a
`
`surface, shown in Fig. E(i); (ii) micro-joints and cracks in the surface (e.g., of a light
`
`pipe), shown in Fig. E(ii); (iii) roughened surface with random projections, shown in
`
`Fig. E(iii); and (iv) fully embedded particles within the bulk of a polymer binder,
`
`shown in Fig. E(iv).
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`Figure E(i) (Fig. 4A of Ex. 1033,
`U.S. Patent No. 5,706,134 (“Konno”))
`
`
`
`Figure E(ii) (Figs. 1, 2, and 3 of Ex. 1027, Ohtake)
`
`
`
`
`
`Figure E(iii) (Figs. 13 and 26 of Ex. 1034,
`U.S. Patent No. 5,944,405 (“Takeuchi”))
`
`Figure E(iv) (cropped Fig. 5 of Ex. 1024,
`U.S. Patent No. 5,381,309 (“Borchardt”))
`
`
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`32. Diffusing deformities may be arranged directly on either side of a light
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`pipe, as in Figs. B and C, or they may be formed as a separate sheet, as in Fig. B as a
`
`transmissive diffuser 31 and Fig. C as a reflector 27 with a diffusing surface 28.
`
`Diffusing deformities and sheets were generally known in the prior art.
`
`33. A third common deformity is a microlens, which are small cylindrical or
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`spherical lenslets on a surface, in either a one- or two-dimensional arrangement.
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`These are sometimes called lenticular surfaces. See, e.g., Ex. 1019, Nishio ’280, at 4:1-3
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`and Fig. 13. They may have a wide range of engineered shapes, including but not
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`limited to convex (i.e., ridges) and/or concave (i.e., valleys) cross-sections. It is
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`common, but not required, to arrange the lenslets into an array with little or no space
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`between them. For example, a 1D array of cylindrical lenslets 42 and a 2D array of
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`spherical lenslets 42 are illustrated in Figs. 13 and 15 below, respectively. Ex. 1019,
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`Nishio ’280. Also shown is a diffusing surface 41 on the opposite side. These may be
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`arranged directly on one or both sides of a light pipe, or they may be formed into a
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`separate sheet. Microlens deformities and sheets were generally known in the prior
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`art.
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`II. THE ’194 PATENT
`A.
`Background of The ’194 Patent
`34. The ’194 Patent relates generally to light emitting panel assemblies, also
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`called light emitting assemblies in the claims. Ex. 1001, the ’194 Patent, at Abstract.
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`Further, the ’194 Patent relates to “light emitting panel assemblies each including a
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`transparent panel member for efficiently conducting light, and controlling the light
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`conducted by the panel member to be emitted from one or more light output areas
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`along the length thereof.” Ex. 1001, the ’194 Patent, at 1:19-23. As I previously
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`stated and as the ’194 Patent admits, “[l]ight emitting panel assemblies are generally
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`known.” Id. at 1:24. The ’194 Patent purportedly relates to several different light
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`emitting panel assembly configurations which allegedly provide for better control of
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`light output from the panel assembly and for more “efficient” utilization of light,
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`thereby resulting in greater light output from the panel assembly. Ex. 1001, the ’194
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`Patent, at 1:25-30.
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`35.
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`Specifically, the ’194 Patent discloses light emitting assemblies including
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`at least one light source and at least one film, sheet, plate or substrate having optical
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`elements or deformities of “well defined” shape on at least one surface that have
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`reflective or refractive surfaces for controlling the light output ray angle distribution
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`of the emitted light. Id. An example of the “deformities” is shown in Figs. 4a-d of
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`the ’194 Patent.
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`36. According to the ’194 Patent, the deformities or disruptions define “any
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`change in the shape or geometry of the panel surface and/or coating or surface
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`treatment that causes a portion of the light to be emitted.” Ex. 1001, the ’194 Patent,
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`at 4:46-48. The pattern of light extracting deformities can include a variable pattern
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`which breaks up the light rays such that the internal angle of reflection of a portion of
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`the light rays will be great enough to cause the light rays either to be emitted out of
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`the panel through the side or sides on which the light extracting deformities are
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`provided or reflected back through the panel and emitted out the other side. Id. at
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`4:48-55. The deformities may also be used to control the light output from the
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`panels, provide uniform light output distribution, control the output ray angle
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`distribution of emitted light, or adjust for light output variances attributed to light
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`extraction of the panel members. Id. at 5:3-35.
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`37.
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`Further, the ’194 Patent discloses that the film, sheet, plate or substrate
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`may be positioned near the light emitting surface of a light emitting panel member
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`with an air gap therebetween or over a cavity or recess in a tray through which light
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`from a light source in the cavity or recess is emitted. Ex. 1001, the ’194 Patent, at
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`Abstract. An example of the film, sheet, plate or substrate (27) and its relation to the
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`light emitting surface of a light emitting panel member (14) is shown in annotated Fig.
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`5 of the ’194 Patent with the air gaps highlighted in green.
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`Figure F (annotated Fig. 5 of the Ex. 1001, the ’194 Patent)
`38. An example of a cavity or recess (36, in light blue) in a tray (35, in red)
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`through which light from a light source (3, in yellow) in the cavity or recess is emitted
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`is shown in annotated Fig. 6 of the ’194 patent.
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`
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`Figure G (annotated Fig. 6 of the Ex. 1001, the ’194 Patent)
`39. According to the ’194 Patent, the transparent film, sheet or plate 27 may
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`be used to further improve the uniformity of the light output distribution. Ex. 1001,
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`the ’194 Patent, at 6:34-35. Further, according to the ’194 Patent, air gaps allow for
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`use of longer panel members. Id. at 6:50-51.
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`B.
`Prosecution History (Ex. 1002)
`40. According to the face of the ’194 Patent, U.S. Patent Application No.
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`10/784,527 (“the ’527 application”), the application which issued as the ’194 Patent,
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`was filed on October 6, 2005. The ’194 Patent claims priority to U.S. Patent No.
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`5,613,751, whose corresponding application was filed on June 27, 1995. Ex. 1001, the
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`’194 Patent, at face of patent. The ’527 application was originally filed with 32 claims,
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`5 of which were independent claims.
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`41. The U.S. Patent and Trademark Office (“USPTO”) mailed its first
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`Office Action for the ’527 application on April 10, 2007. The Examiner provisionally
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`rejected Claims 1, 8, 16, 20, 28 and 32 on the ground of non-statutory obviousness-
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`type double patenting as being obvious in view of U.S. Patent Application Publication
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`No. 2006/0274555. Ex. 1002, Office Action, Apr. 10, 2007, at 2. The Examiner also
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`rejected claim 31 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No.
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`5,779,338 to Ishikawa et al. Id. 3. The Examiner also allowed Claims 2-7, 9-15, 17-19,
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`21-27, 29 and 30. Id. 4.
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`42.
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`In response, Applicants cancelled Claim 31 to overcome the rejection
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`under 35 U.S.C. § 102(b). Ex. 1002, Resp. to Office Action, Jul. 9, 2007, at 7.
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`Additionally, Applicants filed a provisional terminal disclaimer to overcome the
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`rejection of Claims 1, 8, 16, 20, 28 and 32 on the ground of non-statutory
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`obviousness-type double patenting. Id. at 7.
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`43. The Notice of Allowance was mailed on August 7, 2007, allowing Claims
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`1-30 and 32.
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`C.
`Asserted Claims
`44. My analysis will focus on Claims 1, 4-6, 16, 22, 23, 27, 28, and 31 of the
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`’194 Patent. The claims themselves will be discussed in detail within the Prior Art
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`Analysis section.
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`D. Claim Construction
`45.
`I have been informed that in my analysis, I should interpret
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`“deformities,” as the term exists in Claims 1, 16, 28 and 31 of the ’194 Patent, as “any
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`change in the shape or geometry of a surface and/or coating or surface treatment that
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`causes a portion of the light to be emitted.” This term was specifically defi