UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2015-00749
`
`Patent 7,300,194
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,300,194
`
`
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`
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`Page 1 of 66
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`TOYOTA EXHIBIT 1008
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ............................................................................................. iii
`
`PETITIONER'S EXHIBIT LIST ...................................................................................... iv
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES ...................................................................................... 2
`
`III. PAYMENT OF FEES ............................................................................................... 3
`
`IV.
`
`V.
`
`STANDING................................................................................................................ 4
`
`REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 2-6, 10-12,
`14-18, 22-24, 26-28, and 31 OF THE '194 PATENT ........................................... 4
`
`A.
`
`B.
`
`Technology Background ............................................................................... 4
`
`The Alleged Invention Of The '194 Patent ................................................ 6
`
`VI. CLAIM CONSTRUCTION ..................................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`Standards For Claim Construction .............................................................. 7
`
`"deformities" (Claims 1, 16, 28, 31) ............................................................. 8
`
`"air gap" (Claims 1, 12, 24) ........................................................................... 9
`
`"well defined" (Claim 1, 16, 28, 31) ........................................................... 10
`
`VII. SUMMARY OF PRIOR ART RELIED UPON IN THIS PETITION ......... 11
`
`A.
`
`B.
`
`C.
`
`JP H06-250178 ("Matsuoka") (Ex.1005) ................................................... 11
`
`U.S. Patent No. 5,592,332 ("Nishio '332") (Ex.1008) ............................. 12
`
`U.S. Patent No. 5,005,108 ("Pristash") (Ex.1009).................................... 12
`
`D. U.S. Patent No. 5,619,351 ("Funamoto") (Ex.1010) ............................... 12
`
`U.S. Patent No. 5,598,280 ("Nishio '280") (Ex.1011) ............................. 12
`i
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`E.
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`Page 2 of 66
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`VIII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM .................... 13
`
`A. Ground 1: Claims 16-18, 22-24, 26, 27, And 31 Are Unpatentable
`Under § 102(a) As Being Anticipated By Matsuoka ................................ 13
`
`B.
`
`Ground 2: Claims 16, 22, 23, 26, 27, And 31 Are Unpatentable Under
`§ 102(e) As Being Anticipated By Nishio '332 ......................................... 20
`
`C. Ground 3: Claims 1, 4-6, 11, 12, And 28 Are Unpatentable Under
`§ 103(a) As Being Obvious Over Pristash ................................................ 27
`
`D. Ground 4: Claims 1, 10, 11, 15, 16, 22, 23, 27, And 31 Are
`Unpatentable Under § 102(e) As Being Anticipated By Funamoto ...... 34
`
`E. Ground 5: Claims 4, 5, 6, And 18 Are Unpatentable Under § 103(a) As
`Obvious Over Funamoto............................................................................ 44
`
`F.
`
`Ground 6: Claims 1, 2-6, 11, 12, 14, 15, And 28 Are Unpatentable
`Under § 102(e) As Being Anticipated By Nishio '280 ............................. 46
`
`IX. CONCLUSION ........................................................................................................ 57
`
`
`
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`ii
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`Page 3 of 66
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Arris Group, Inc. v. C-Cation Techs., LLC,
`IPR2014-00747 (P.T.A.B. Nov. 24, 2014)
`
`Page(s)
`
`In re Rambus Inc.,
`753 F.3d 1253 (Fed. Cir. 2014) ....................................................................................... 7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 7, 8, 10, 11
`
`Toro Co. v. White Consol. Indus. Inc.,
`199 F.3d 1295, 53 U.S.P.Q.2d 1065 (Fed. Cir. 1999) ................................................... 8
`
`STATUTES, RULES & OTHER AUTHORITIES
`35 U.S.C. § 102.................................................................................................................passim
`
`35 U.S.C. § 103........................................................................................................................ 1
`
`35 U.S.C. § 112........................................................................................................................ 8
`
`35 U.S.C. § 301(a)(2) .............................................................................................................. 7
`
`35 U.S.C. § 371...................................................................................................................... 12
`
`37 C.F.R. § 42.100(b) ............................................................................................................. 7
`
`
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`iii
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`Page 4 of 66
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`PETITIONER'S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,300,194
`Prosecution History of U.S. Patent No. 7,300,194
`Complaints filed in Related District Court Cases
`Declaration of Richard A. Flasck ("Flasck Decl.")
`English Translation of JP H06-250178 ("Matsuoka")
`Japanese Version of JP H06-250178
`Translation Certificate of H06-250178
`U.S. Patent No. 5,592,332 ("Nishio '332")
`U.S. Patent No. 5,005,108 ("Pristash")
`U.S. Patent No. 5,619,351 ("Funamoto")
`U.S. Patent No. 5,598,280 ("Nishio '280")
`Claim Construction Memorandum and Order, IDT v. Acer Inc. et al., Case
`No. 2:13-cv-00522, Aug. 26, 2014 [Dkt. 101]
`DDG/IDT's Initial Claim Charts to Sony served on November 21, 2014,
`Exhibit A1 – All Products Containing Nypon Display/touch Module, US
`Patent No. 7,300,194
`Decision, Patent Trial and Appeal Board, January 13, 2015,
` 2014-01097, Patent 7,300,194 (Paper 9)
`Patent Owner's Opening Claim Construction Brief, IDT v. Acer Inc. et al.,
`Case No. 2:13-cv-00522, June 16, 2014 [Dkt. 69]
`English Translation of JP H06-242731 ("Mino")
`Japanese Version of JP H06-242731
`Translation Certificate of JP H06-242731
`U.S. Patent No. 5,461,547 ("Ciupke")
`English Translation of JP H06-003526 ("Nagatani")
`Japanese Version of JP H06-003526
`Translation Certificate of JP H06-003526
`U.S. Patent No. 5,944,405 ("Takeuchi")
`U.S. Pat. No. 5,808,784 ("Ando")
`3M product brochure, 75-0500-0403-7, "Brightness Enhancement Film
`(BEF)" (1993)
`English Translation of JP H06-230378 ("Kisoo")
`Japanese Version of JP H06-230378
`Translation Certificate of JP H06-230378
`English Translation of JP H05-69732 ("Seraku")
`iv
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`
`1026
`1027
`1028
`1029
`
`
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`Page 5 of 66
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Description
`Japanese Version of JP H05-69732
`Translation Certificate of JP H05-69732
`
`Exhibit #
`1030
`1031
`
`
`
`v
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`Page 6 of 66
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 311, Petitioner hereby respectfully requests inter partes
`
`review of claims 1, 2-6, 10-12, 14-18, 22-24, 26-28, and 31 of Ex. 1001, U.S. Patent
`
`No. 7,300,194 ("the '194 Patent") ("Ex.1001"), which issued on November 27, 2007.
`
`The challenged claims are unpatentable under 35 U.S.C. §§ 102 and 103 over the prior
`
`art patents and publications identified and applied in this Petition.
`
`LG Display, Ltd. also challenged the '194 Patent in IPR2014-01097, and an
`
`inter partes review was instituted on January 13, 2015, as to claims 1, 4-6, 16, 22, 23, 27,
`
`28 and 31. (Ex.1013.) Nevertheless, the present petition serves three important
`
`purposes unique to Petitioner: (1) to re-present all but one of the instituted grounds
`
`(omitting the ground based on Kobayashi) so that those grounds may be pursued
`
`should LG Display, Ltd. reach a settlement prior to the Board issuing a final written
`
`decision (Petitioner's time window under 35 U.S.C. § 315(b) will expire on
`
`February 19, 2015); (2) to challenge eleven additional dependent claims, i.e., claims 2,
`
`3, 10-12, 14, 15, 17, 18, 24, and 26; and (3) to raise two additional grounds for claims
`
`16-18, 22-24, 26, 27, and 31 on the basis of different references, Matsuoka (Ex.1005)
`
`and Nishio '332 (Ex.1008). In that regard, Matsuoka and Nishio '332 both clearly
`
`establish anticipation of the previously challenged claims, and have particular
`
`relevance to the additional dependent claims challenged in this Petition.
`
`1
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`Page 7 of 66
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`II. MANDATORY NOTICES
`A. Real Parties-In-Interest: Sony Corporation, Sony Corporation of America,
`
`Sony Electronics Inc., Sony Mobile Communications (USA) Inc., Sony Mobile
`
`Communications Inc., and Sony Mobile Communications AB.
`
`B. Related Matters.
`Litigation: Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner submits that the
`
`'194 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex.1003), against Petitioner in the
`
`United States District Court for the District of Delaware: Delaware Display Group LLC
`
`and Innovative Display Techs. LLC v. LG Elecs. Inc., LG Elecs. U.S.A., Inc., LG Display Co.,
`
`Ltd., and LG Display America, Inc., Case No. 1:13-cv-02109. The '194 Patent is also
`
`asserted in at least the actions listed in the chart below:
`
`Description
`Innovative Display Technologies LLC ("IDT") v. Acer Inc. et al.
`IDT v. Research in Motion Limited et al.
`IDT v. Dell Inc.
`IDT v. Hewlett-Packard Corporation
`DDG and IDT v. Lenovo Group Ltd. et al.
`DDG and IDT v. Pantech Co., Ltd et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`2:13-cv-00522, EDTX
`2:13-cv-00526, EDTX
`2:13-cv-00523, EDTX
`2:13-cv-00524, EDTX
`1:13-cv-02108, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`
`2
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`Page 8 of 66
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Existing Related IPRs: IPR2014-01097, IPR2015-00360, and IPR2015-00490.
`
`Concurrently Filed Related IPRs: Petitioner is concurrently filing petitions to
`
`review U.S. Patent Nos. 7,384,177; 7,404,660; 7,434,974; 7,537,370; 7,914,196; and
`
`8,215,816. For efficiency, the Board may consider assigning these proceedings to a
`
`common panel of Administrative Patent Judges.
`
`C. Lead And Back-Up Counsel And Service Information.
`
`LEAD COUNSEL
`Gregory S. Gewirtz
`Registration No. 36,522
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel:
`908-518-6343
`Fax:
`908-654-7866
`E-mail: GGewirtz.ipr@ldlkm.com
`
`BACK-UP COUNSEL
`Jonathan A. David (Reg. No. 36,494)
`Robert B. Hander (Reg. No. 65,849)
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel:
`908-518-6331/6342
`Fax:
`908-654-7866
`E-mail: JDavid.ipr@ldlkm.com
`
`RHander.ipr@ldlkm.com
`Scott A. McKeown (Reg. No. 42,866)
`OBLON, McCLELLAND,
` MAIER & NEUSTADT LLP
`1940 Duke St.
`Alexandria, VA 22314
`Tel:
`703-412-6297
`Fax:
`703-413-2220
`E-mail: CPDocketMcKeown@oblon.com
`
`
`
`III. PAYMENT OF FEES
`Pursuant to 37 C.F.R. § 42.103(a), the Office is authorized to charge the fee set
`
`forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 121095 as well as any additional
`
`fees that might be due in connection with this Petition.
`
`3
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`Page 9 of 66
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`IV. STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the patent sought for
`
`review, the '194 Patent, is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review of the patent.
`
`V. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1,
`2-6, 10-12, 14-18, 22-24, 26-28, AND 31 OF THE '194 PATENT
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests that the Board find
`
`unpatentable claims 1, 2-6, 10-12, 14-18, 22-24, 26-28, and 31 of the '194 Patent. Such
`
`relief is justified as the alleged invention of the '194 Patent was described by others
`
`prior to the effective filing date of the '194 Patent.
`
`A. Technology Background
`Flat panel displays for TVs, computers, etc. were pioneered in the 1980s, with
`
`active matrix liquid crystal display (LCD) technology dominating the market by the
`
`early 1990s. (Flasck Decl. ¶ 39.) LCDs comprise an array of pixels that act as a large
`
`matrix of shutters that modulate light passing through the display panel. (Id. ¶ 40.)
`
`LCDs typically need a light generating structure, commonly called a backlight unit
`
`(BLU), positioned beneath the liquid crystal panel. (Id. ¶¶ 41-42.) Partially collimated
`
`light from the BLU enters the LCD panel from the bottom and exits the top to be
`
`viewed by the user. Each pixel in the LCD matrix individually modulates the light
`
`from the BLU to present text, graphic, or video images to the user. (Id. ¶ 63.)
`
`4
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Since the mid-1990s, the typical BLU found in commercially available products
`
`included a light source, a reflector to concentrate the light, a light guide with
`
`deformities on the lower surface, a set of light re-directing films, sheets or plates
`
`between the light guide and the LCD panel, and a tray, case or frame. (Id. ¶¶ 43-44.)
`
`The most common light sources used were Cold Cathode Fluorescent Lamps
`
`(CCFLs) and light emitting diodes (LEDs), with the design choice between the two
`
`being based on desired thinness profile, brightness, and power consumption. (Id.
`
`¶¶ 45-48.)
`
`The typical light guide was generally constructed from a transparent plastic
`
`plate that would transport the light from the input edge adjacent to the lamp, to the
`
`output surface, typically the top surface of the light guide plate. (Id. ¶ 49.) The light
`
`injected into the input edge would be captured in, and uniformly distributed
`
`throughout, the light guide by the principle of Total Internal Reflection (TIR). (Id.)
`
`However, when the light encountered the deformities on the bottom surface of
`
`the light guide, the light would become scattered and redirected at such angles that the
`
`TIR condition would be defeated and the scattered light would exit through the top
`
`exit surface of the light guide. (Id. ¶¶ 50-53.)
`
`It was also common to include a set of light re-directing films for changing the
`
`angle of the emitted light so that it would be more nearly perpendicular to the light
`
`emitting surface, and thus provide a brighter image and enable lower power
`
`5
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`Patent No. 7,300,194
`Petition for Inter Partes Review
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`consumption. (Id. ¶¶ 54-60.) In addition, the components of the LCD module were
`
`often physically held in place by a metal tray, which could include a reflective bottom
`
`and sides and an open top. (Id. ¶¶ 61-62.)
`
`B. The Alleged Invention Of The '194 Patent
`The '194 Patent generally relates to "light emitting panel assemblies each
`
`including a transparent panel member for efficiently conducting light, and controlling
`
`the light conducted by the panel member to be emitted from one or more light output
`
`areas along the length thereof." (Ex.1001, 1:19-23.) The purported advantage of the
`
`alleged invention described in the '194 Patent relates to several different light emitting
`
`panel assembly configurations which allegedly provide for better control of light
`
`output from the panel assembly and for more "efficient" utilization of light, thereby
`
`resulting in greater light output from the panel assembly. (Id. 1:24-29.)
`
`The '194 Patent discloses light emitting assemblies having a light source and a
`
`film, sheet, plate, or substrate with optical elements or deformities of well defined
`
`shape on at least one surface that have reflective or refractive surfaces for controlling
`
`the light output ray angle distribution of the emitted light. (Ex.1001 Abstract.) The
`
`film, sheet, plate, or substrate is either positioned over a light emitting panel member
`
`with an air gap therebetween, or over a cavity or recess in a tray in which the light
`
`source is positioned. (Id.)
`
`6
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`VI. CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`The '194 Patent expires on June 27, 2015. An unexpired claim subject to inter
`
`partes review is given its "broadest reasonable construction ["BRI"] in light of the
`
`specification of the patent in which it appears." 37 C.F.R. § 42.100(b). If a
`
`reexamination (or here inter partes review) involves claims of an expired patent, a
`
`patentee is unable to make claim amendments, and the Board applies the claim
`
`construction principles outlined in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`
`2005) that the words of a claim "are generally given their ordinary and customary
`
`meaning" as understood by a person of ordinary skill in the art in question at the time
`
`of the invention. See In re Rambus Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014); see, e.g.,
`
`Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00747, Decision (P.T.A.B. Nov. 24,
`
`2014), Paper 22, at 10. Here, as shown below, constructions under either the BRI or
`
`Phillips standard would lead to the same result.
`
`Moreover, as shown below, those constructions further comport with positions
`
`that Patent Owner has taken in its prior claim construction briefing and infringement
`
`contentions in related Federal Court litigations. In that regard, Petitioner notes that 35
`
`U.S.C. § 301(a)(2) permits citation of Patent Owners' statements regarding claim
`
`scope, to prevent patentees from arguing broad constructions in Federal Court
`
`litigation while using narrow constructions in proceedings before the Office.
`
`7
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Petitioner also notes that while
`
`it advances the following proposed
`
`constructions for the purposes of this petition, it reserves the right (not available to it
`
`in the present proceeding) to assert in any copending or future litigation that one or
`
`more of the following claim terms is indefinite or lacks written description support
`
`under 35 U.S.C. § 112.
`
`B.
`"deformities" (Claims 1, 16, 28, 31)
`The '194 Patent expressly defines the term "deformities" as follows: "As used
`
`herein, the term deformities or disruptions are used interchangeably to mean any
`
`change in the shape or geometry of the panel surface and/or coating or surface
`
`treatment that causes a portion of the light to be emitted." (Ex.1001, 4:36-40.) Where
`
`an explicit definition is provided by the applicant for a term, that definition will
`
`control interpretation of the term as it is used in the claim. Toro Co. v. White Consol.
`
`Indus. Inc., 199 F.3d 1295, 1301, 53 U.S.P.Q.2d 1065, 1069 (Fed. Cir. 1999); M.P.E.P.
`
`§ 2111.01 IV. In addition, in the 2:13-cv-00522 case, the Patent Owner agreed with,
`
`and the court adopted, this same construction. (Ex.1012, at 58.) Accordingly,
`
`Petitioner submits that the term "deformities" should at least include "any change in
`
`the shape or geometry of a surface and/or coating or surface treatment that causes a
`
`portion of the light to be emitted," regardless of whether the Phillips standard or the
`
`broader BRI standard is applied.
`
`8
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`C.
`"air gap" (Claims 1, 12, 24)
`The specification of the '194 Patent only discloses one embodiment in which
`
`an "air gap" exists. Fig. 5 shows two air gaps 30, one between the bottom surface of
`
`the panel and the back reflector 26, and the other between the top surface of the
`
`panel and film 27. (Ex.1001, 6:39-54, Fig.5.) However, while Fig. 5 shows a
`
`continuous layer of air between those surfaces with no points of contact other than
`
`those at the very edges of the panel, Patent Owner argued against limiting "air gap" to
`
`such an embodiment in its opening claim construction brief in the 2:13-cv-00522 case.
`
`(Ex.1015, at 14-16.) Indeed, Patent Owner asserted that "one of ordinary skill in the
`
`art would have understood that an air gap between a film and a panel member need
`
`not be a continuous layer of air between the two," and instead "would have
`
`understood that an intermittent air gap between two things remains an air gap." (Id.
`
`at 16.) Patent Owner also asserted that "one
`
`of ordinary skill in the art would have
`
`understood that an air gap would exist
`
`between a film and a panel member even if
`
`they touch in some parts," and relied on the
`
`following illustrative figure to make this argument. (Id.) Patent Owner also took the
`
`same position in its infringement contentions in the 1:13-cv-02111 case against
`
`Petitioner, pointing to the next figure shown below and explaining as follows: "The
`
`9
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`diffuser film/sheet has protrusions on its back surface that cause air gaps between the
`
`respective sheet/film and the front surface of the panel member. The generic
`
`graphical representation on the top illustrates the general physical arrangement that
`
`causes the air gaps as identified above." (Ex.1013,
`
`at 9.) Accordingly,
`
`given Patent Owner's
`
`positions in both cases, the term "air gap" in
`
`claims 1, 12, and 24 should at least include
`
`situations in which the two surfaces in question
`
`have points of contact, regardless of whether the Phillips standard or the broader BRI
`
`standard is applied.
`
`D.
`"well defined" (Claim 1, 16, 28, 31)
`The term "well defined" is not used anywhere within the '194 Patent's
`
`specification. Nevertheless, in the 2:13-cv-00522 case, Patent Owner argued that
`
`"[t]he specification gives one of ordinary skill in the art ample guidance to understand
`
`what was meant by 'well defined optical elements or deformities,'" pointing to the
`
`'194 Patent at col. 5 lines 43-52, and col. 5 line 66 through col. 6 line 17, as well as
`
`Figs. 4a through 4d. (Ex.1015, at 22.) In particular, Patent Owner called out dots,
`
`squares, diamonds, ellipses, stars, and prismatic surfaces as examples of "well defined"
`
`deformities, as well as "depressions or raised surfaces of various shapes using more
`
`complex shapes in a mold pattern [that are] molded, etched, stamped, thermoformed,
`
`10
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`Patent No. 7,300,194
`Petition for Inter Partes Review
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`hot stamped or the like into or on one or more areas of the panel member." (Id.)
`
`Ultimately, though the court was asked to construe the phrases "well defined optical
`
`elements or deformities" and "optical elements or deformities of well defined shape"
`
`found in claims 1, 16, 28, and 31, it simply held that "well defined" means "distinct"
`
`and that the remainder of the terms in each phrase should get their plain and ordinary
`
`meaning. (Ex.1012, at 43-47.) Accordingly, Petitioner submits that an optical element
`
`or deformity that is "well defined" or of "well defined shape" should at least include
`
`dots, squares, diamonds, ellipses, stars, prismatic surfaces, "depressions or raised
`
`surfaces of various shapes using more complex shapes in a mold pattern [that are]
`
`molded, etched, stamped, thermoformed, hot stamped or the like into or on one or
`
`more areas of the panel member," and any other deformity that is "distinct" or of
`
`"distinct shape," regardless of whether the Phillips standard or the broader BRI
`
`standard is applied.
`
`VII. SUMMARY OF PRIOR ART RELIED UPON IN THIS PETITION
`A.
`JP H06-250178 ("Matsuoka") (Ex.1005)
`Matsuoka qualifies as prior art under 35 U.S.C. § 102(a) because it was
`
`published on September 9, 1994, before the June 27, 1995 filing date of the earliest
`
`application to which the '194 Patent may potentially claim priority. Matsuoka was not
`
`cited or considered during prosecution of the application that led to the '194 Patent.
`
`11
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`B. U.S. Patent No. 5,592,332 ("Nishio '332") (Ex.1008)
`Nishio '332 qualifies as prior art under 35 U.S.C. § 102(e) because it was filed
`
`on December 27, 1993, before the June 27, 1995 filing date of the earliest application
`
`to which the '194 Patent may potentially claim priority. Nishio '332 was not cited or
`
`considered during prosecution of the application that led to the '194 Patent.
`
`C. U.S. Patent No. 5,005,108 ("Pristash") (Ex.1009)
`Pristash qualifies as prior art under 35 U.S.C. § 102(b) because it issued as a
`
`patent on April 2, 1991, more than one year before the June 27, 1995 filing date of the
`
`earliest application to which the '194 Patent may potentially claim priority. Pristash
`
`was cited as a reference in an Information Disclosure Statement during prosecution,
`
`but was not relied upon as a basis for rejecting any claim. In fact, Pristash was not
`
`discussed on the record at all during the prosecution proceedings.
`
`D. U.S. Patent No. 5,619,351 ("Funamoto") (Ex.1010)
`Funamoto qualifies as prior art under 35 U.S.C. § 102(e) because it entered
`
`national stage under 35 U.S.C. § 371 on May 10, 1994, before the June 27, 1995 filing
`
`date of the earliest application to which the '194 Patent may potentially claim priority.
`
`Funamoto was not cited or considered during prosecution of the application that led
`
`to the '194 Patent.
`
`E. U.S. Patent No. 5,598,280 ("Nishio '280") (Ex.1011)
`Nishio '280 qualifies as prior art under 35 U.S.C. § 102(e) because it was filed
`
`on March 22, 1994, before the June 27, 1995 priority date to which the '194 Patent
`
`12
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`Patent No. 7,300,194
`Petition for Inter Partes Review
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`may be entitled. Nishio '280 was not cited or considered during prosecution of the
`
`application that led to the '194 Patent.
`
`1
`2
`3
`4
`5
`6
`
`VIII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM
`Ground
`Prior Art
`Exhibit
`Claims
`§ 102(a)
`Matsuoka
`1005
`16-18, 22-24, 26, 27, 31
`§ 102(e)
`Nishio '332
`1008
`16, 22, 23, 26, 27, 31
`§ 103(a)
`Pristash
`1009
`1, 4-6, 11, 12, 28
`§ 102(e)
`Funamoto
`1010
`1, 10, 11, 15, 16, 22, 23, 27, 31
`§ 103(a)
`Funamoto
`1010
`4, 5, 6, 18
`§ 102(e)
`Nishio '280
`1011
`1, 2-6, 11, 12, 14, 15, 28
`A. Ground 1: Claims 16-18, 22-24, 26, 27, And 31 Are
`Unpatentable Under § 102(a) As Being Anticipated By Matsuoka
`Matsuoka is one of two new references asserted by Petitioner (i.e., it was not
`
`asserted in IPR2014-01097). The objective of Matsuoka is to provide a surface light
`
`source apparatus that provides uniform light with high brightness. (Ex.1005, at 1.) In
`
`describing means for achieving that objective, Matsuoka sets forth a "First
`
`Embodiment" that discloses each and every limitation of claims 16-18, 22-24, 26, 27,
`
`and 31. (Id. ¶ 9). Of these, claims 17, 18, 24, and 26 are newly challenged.
`
`Claims 16 and 31: As shown more fully in the charts
`
`below, Matsuoka's First Embodiment,
`
`shown
`
`at
`
`right,
`
`includes: (a) a housing 11 (Ex.1005 ¶ 9); (b) an "elongated light
`
`source 12 . . . that is provided inside the housing 11 (id.); (c) a
`
`prism lens film 13 that covers the opening 11A of the housing 11
`
`(id. ¶¶ 7, 9); (d) a refractive top surface on prism lens film 13 (id.
`
`13
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`Patent No. 7,300,194
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`¶ 11); and (e) well defined optical elements in the way of prisms on the refractive top
`
`surface of prism lens film 13, which operate to control the emitted light to pass
`
`through an LCD "without any substantial loss in the optical intensity" (id. ¶¶ 7, 9, 11,
`
`36). (Flasck Decl. ¶¶ 81-89.)
`
`Dependent Claims 17, 18, 22-24, 26, and 27: Additionally, with respect to
`
`dependent claims 17, 18, 22-24, 26, and 27, Matsuoka discloses: (cl.17) that the
`
`housing 11 has a mirror-surface sheet 15, with reflection surfaces 15A on the bottom
`
`and 15B on the sides (id. ¶ 10); (cl.18) that "plural linear elongated light sources may
`
`be arranged next to one another" within the reflective housing 11 (id. ¶ 34); (cl.22)
`
`that housing 11 has an "edge-raised terrace region 11B" to which the prism lens
`
`film 13 is "bonded" (id. ¶¶ 11, 13); (cl.23) that "a light-diffusing sheet 14 is provided
`
`over the upper surface of the prism lens film 13" to "apply uniform illumination light
`
`to a liquid crystal panel" (id. ¶¶ 9, 12); (cl.24) that the prisms of prism lens film 13
`
`face upwards, and thus will create an air gap between prism lens film 13 and
`
`light-diffusing sheet 14 (id. ¶¶ 11, 12, Fig. 2); (cl.26) that light-diffusing sheet 14
`
`contains optical elements in the form of "light-diffusing particles" (id. ¶ 12); and
`
`(cl.27) that the "additional film" of claim 23 is a diffuser (light-diffusing sheet 14)
`
`(id.). (Flasck Decl. ¶¶ 90-111.)
`
`Accordingly, Petitioner submits that Matsuoka discloses every limitation of
`
`claims 16-18, 22-24, 26, 27, and 31.
`
`14
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`'194 Claim Element
`16. A light emitting
`assembly comprising
`
`Matsuoka (Ex.1005)
`"A first embodiment of the present invention is illustrated
`in Figs. 1 and 2. In these drawings, the reference numeral
`10 denotes a surface light source apparatus that is
`provided behind the liquid crystal panel of a liquid crystal
`display device. The surface light source apparatus 10
`includes, as its main components, a housing 11, an
`elongated light source 12, and a prism lens film 13.
`Roughly speaking, the housing 11 has a shape of a
`rectangular parallelepiped with an opening 11A at its top.
`In the present embodiment, the elongated light source 12
`is a linear or rod-like lamp that is provided inside the
`housing 11 and has a predetermined diameter D. The
`opening 11A is covered by the prism lens film 13. If
`necessary, a light-diffusing sheet 14 is provided over the
`upper surface of the prism lens film 13." (Ex.1005 ¶ 9; see
`also Figs. 1, 2 below (Fig.__ refers to Ex.1006).)
`
`[16.a] at least a tray that
`forms a cavity or recess,
`
`
`"The surface light source apparatus 10 includes, as its
`main components, a housing 11, an elongated light source
`12, and a prism lens film 13. Roughly speaking, the
`housing 11 has a shape of a rectangular parallelepiped
`with an opening 11A at its top." (Ex.1005 ¶ 9; see also
`
`15
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`'194 Claim Element
`
`[16.b] at least one light
`source positioned
`within the cavity or
`recess,
`[16.c] at least one film,
`sheet, plate or substrate
`positioned over the
`cavity or recess through
`which light from the
`light source is emitted,
`
`[16.d] wherein at least
`one surface of the film,
`sheet, plate or substrate
`has one or more
`reflective or refractive
`surfaces, and
`
`[16.e] at least one of the
`reflective or refractive
`surfaces has well
`defined optical elements
`or deformities for
`controlling the emitted
`light such that at least
`some of the light is
`redirected to pass
`through a liquid crystal
`display with low loss.
`
`Matsuoka (Ex.1005)
`
`Figs. 1, 2.)
`"In the present embodiment, the elongated light source 12
`is a linear or rod-like lamp that is provided inside the
`housing 11 and has a predetermined diameter D."
`(Ex.1005 ¶ 9; see also Figs.1, 2.)
`"The opening 11A is covered by the prism lens film 13. If
`necessary, a light-diffusing sheet 14 is provided over the
`upper surface of the prism lens film 13." (Ex.1005 ¶ 9; see
`also Figs.1, 2.)
`"In a surface light source apparatus according to the
`present invention, when light is emitted from at least one
`light source, mainly, two elongated-light-source images are
`formed on a prism lens film. (Id. ¶ 7.)
`"The prism lens film 13 is
`bonded to the edge-raised
`terrace region 11B of the
`housing 11 by means of a
`double-sided tape or the
`like, with its prism face up
`as illustrated in Fig. 2. For
`example, a prism lens film that has a thickness t of 230
`µm, a vertex array pitch p of 31 µm, and an angle of
`