UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`v.
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 7,300,194
`Issue Date: November 27, 2007
`Patent Title: Light Emitting Panel Assemblies
`IPR Case No.: To Be Assigned
`
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1, 4-6, 16, 22, 23, 27, 28,
`AND 31 OF U.S. PATENT NO. 7,300,194
`
`
`
`
`
`Scott T. Weingaertner
`Registration No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`Tel.: (212) 556-2227
`Fax: (212) 556-2222
`Email: sweingaertner@kslaw.com
`
`Natasha H. Moffitt
`Registration No. 53,340
`King & Spalding LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2783
`Fax: (404) 572-5134
` Email: nmoffitt@kslaw.com
`
`
`
`
`
`
`
`Page 1 of 63
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`TOYOTA EXHIBIT 1009
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES ...................................................................................... 1
`
`PAYMENT OF FEES ............................................................................................... 4
`
`III.
`
`STANDING................................................................................................................ 4
`
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4-6, 16, 22, 23,
`27, 28, AND 31 OF THE ’194 PATENT ............................................................. 4
`
`A.
`
`B.
`
`Technology Background ............................................................................... 5
`
`The Alleged Invention Of The ’194 Patent ................................................ 6
`
`V.
`
`CLAIM CONSTRUCTION ..................................................................................... 7
`
`A.
`
`Standards For Claim Construction .............................................................. 7
`
`1.
`
`Broadest Reasonable Construction .................................................... 7
`
`B.
`
`“deformities” (claims 1, 16, 28, 31) .............................................................. 8
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’194 PATENT FORMING THE
`BASIS FOR THIS PETITION ................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Admitted Prior Art ......................................................................................... 9
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006) .................................... 9
`
`U.S. Patent No. 5,619,351 (“Funamoto”) (Ex. 1007) ................................ 9
`
`JP H06-273756 (“Gyoko”) (Ex. 1008) ...................................................... 10
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1011) ............................. 10
`
`U.S. Patent No. 5,598,280 (“Nishio”) (Ex. 1012) .................................... 11
`
`VII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM .................... 11
`
`A. Ground 1: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Pristash ................................................. 11
`
`
`
`i
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`Page 2 of 63
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`B. Ground 2: Claims 1, 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §102(e) As Being Anticipated By Funamoto ................................ 19
`
`C. Ground 3: Claims 4, 5, And 6 Are Unpatentable Under 35 U.S.C. §103
`As Obvious Over Funamoto ...................................................................... 29
`
`D. Ground 4: Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §102(a) As Being Anticipated By Gyoko ...................................... 30
`
`E. Ground 5: Claim 28 Is Unpatentable Under 35 U.S.C. §102(b) As Being
`Anticipated By Kobayashi ........................................................................... 37
`
`F.
`
`Ground 6: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§102(e) As Being Anticipated By Nishio ................................................... 41
`
`G. Ground 7: Claims 16, 22, 23, 27, And 31 Are Unpatentable Under 35
`U.S.C. §103 As Obvious Over Nishio, Alone, Or In The Alternative, In
`View Of Funamoto ...................................................................................... 48
`
`VIII. CONCLUSION ........................................................................................................ 56
`
`
`
`
`ii
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`Page 3 of 63
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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 Michael J. Escuti, Ph.D. (“Escuti Decl.”)
`U.S. Patent No. 5,461,547 (“Ciupke”)
`U.S. Patent No. 5,005,108 (“Pristash”)
`U.S. Patent No. 5,619,351 (“Funamoto”)
`JP H06-273756 (“Gyoko”) (English)
`JP H06-273756 (“Gyoko”) (Japanese)
`JP H06-273756 (“Gyoko”) (Certification)
`U.S. Patent No. 5,408,388 (“Kobayashi”)
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 6,108,060 (“the ’060 Patent”) and corresponding file
`history
`U.S. Patent No. 5,160,195 (“Miller”)
`J. A. Castellano, Handbook of Display Technology, Academic Press Inc., San
`Diego, 1992, at pp. 9-13 and Ch. 8
`U.S. Patent No. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`EP500960 (“Ohe”)
`U.S. Patent No. 5,828,488 (“Ouderkirk”)
`3M product brochure 75-0500-0403-7, “Brightness Enhancement Film
`(BEF)”, 2 pages (1993)
`U.S. Patent No. 5,706,134 (“Konno”)
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`U.S. Patent No. 5,381,309 (“Borchardt”)
`
`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
`
`iii
`
`
`
`Page 4 of 63
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Pursuant to 35 U.S.C. §311, Petitioner hereby respectfully requests inter partes
`
`review of Claims 1, 4-6, 16, 22, 23, 27, 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
`
`publications identified and applied in this Petition.
`
`I. MANDATORY NOTICES
`Pursuant to 37 C.F.R. §42.8, Petitioner provides the following mandatory
`
`disclosures:
`
`A. Real Parties-In-Interest. Mercedes-Benz USA, LLC, a Delaware limited
`
`liability company with its principal place of business at 1 Mercedes Drive, Montvale,
`
`New Jersey 07465, and Mercedes-Benz U.S. International, Inc., an Alabama
`
`corporation with its principal place of business at 1 Mercedes Drive, Vance, Alabama
`
`35490, are real parties-in-interest.
`
`B. Related Matters. 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 Eastern District of Texas: Innovative Display
`
`Technologies LLC v. Mercedes-Benz U.S. International, Inc. and Mercedes-Benz USA, LLC
`
`Case No. 2:14-cv-535. In addition, the ‘194 Patent is the subject of another IPR,
`
`IPR2014-01097. The ‘194 Patent is also asserted in at least the actions listed in the
`
`1
`
`Page 5 of 63
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`chart below.
`
`Description
`Innovative Display Technologies LLC (“IDT”) v. Acer Inc.
`et al.
`IDT v. Apple Inc.
`IDT v. Volkswagen Ag
`IDT v. Apple Inc.
`IDT v. Google Inc.
`IDT v. Research in Motion Limited et al.
`IDT v. Dell Inc.
`IDT v. Hewlett-Packard Corporation
`IDT v. Huawei Investment et al.
`IDT v. Microsoft Corporation
`IDT v. Nokia Corporation and Nokia Inc.
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`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.
`IDT v. Ford Motor Company
`IDT v. General Motors LLC
`IDT v. AT&T Inc.
`
`Docket Number
`2:13-cv-522, EDTX
`
`2:14-cv-00030, EDTX
`2:14-cv-00300, EDTX
`2:14-cv-00301, EDTX
`2:13-cv-00302, EDTX
`2:13-cv-00526, EDTX
`2:13-cv-00523, EDTX
`2:13-cv-00524, EDTX
`2:13-cv-00525, EDTX
`2:13-cv-00783, EDTX
`2:13-cv-00784, EDTX
`2:13-cv-00527, EDTX
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`1:13-cv-02108, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`1:14-cv-849, D. Del.
`1:14-cv-850, D. Del.
`2:14-cv-720, EDTX
`
`2
`
`Page 6 of 63
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`Description
`IDT v. Sprint
`IDT v. Verizon Communications, Inc.
`IDT v. T-Mobile US, Inc.
`IDT v. Mazda Motor Company
`IDT v. Best Buy Co., Inc.
`IDT v. American Honda Motor Co., Inc.
`IDT v. Toyota Motor Corporation et al.
`IDT v. Hyundai Motor Group
`IDT v. Nissan Motor Co., Ltd.
`IDT v. Nikon Inc.
`IDT v. Tomtom North America Inc.
`IDT v. Canon U.S.A. Inc.
`IDT v. Garmin International, INc.
`IDT v. Mitac Digital Corporation
`IDT v. BMW of North America, LLC
`
`Petitioner is concurrently filing petitions to review U.S. Patent Nos. 7,434,974,
`
`Docket Number
`2:14-cv-721, EDTX
`2:14-cv-722, EDTX
`2:14-cv-723, EDTX
`2:14-cv-624, EDTX
`2:14-cv-532, EDTX
`2:14-cv-200, EDTX
`2:14-cv-200, EDTX
`2:14-cv-201, EDTX
`2:14-cv-202, EDTX
`2:14-cv-145, EDTX
`2:14-cv-146, EDTX
`2:14-cv-142, EDTX
`2:14-cv-143, EDTX
`2:14-cv-144, EDTX
`2:14-cv-106, EDTX
`
`7,404,660, 6,755,547, 7,384,177, and 8,215,816, which are in the same family as the
`
`‘194 Patent. The ‘194 Patent is a divisional of U.S. Patent No. 7,160,015.
`
`C. Lead and Back-up Counsel.
`
`Petitioner provides the following designation of counsel:
`
`
`
`
`
`3
`
`Page 7 of 63
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`
`
`LEAD COUNSEL
`Scott T. Weingaertner
`Reg. No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`Tel.: (212) 556-2227
`Fax: (212) 556-2222
`sweingaertner@kslaw.com
`
`BACK-UP COUNSEL
`Natasha H. Moffitt
`Reg. No. 53,340
`King & Spalding LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2783
`Fax: (404) 572-5134
`nmoffitt@kslaw.com
`
`D. Service Information. Pursuant to 37 C.F.R. §42.8(b)(4), Petitioner identifies
`
`the following service information: Please direct all correspondence regarding this
`
`proceeding to lead counsel at the address identified above. Petitioner consents to
`
`electronic service by email: sweingaertner@kslaw.com and nmoffitt@kslaw.com.
`
`II.
`
`PAYMENT OF FEES
`The U.S. Patent Office is authorized to charge the filing fee for this Petition, as
`
`well as any other fees that may be required in connection with this Petition or these
`
`proceedings on behalf of Petitioner, to the deposit account of King & Spalding LLP,
`
`Deposit Account No. 11-0980.
`
`III. 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.
`
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4-6, 16, 22,
`
`4
`
`Page 8 of 63
`
`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`23, 27, 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, 4-6, 16, 22, 23, 27, 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
`Generally, light emitting panel assemblies are used in conjunction with liquid
`
`crystal displays (“LCDs”) and various applications thereof, as a backlight module to
`
`provide light to the display. Ex. 1004, Declaration of Michael J. Escuti, Ph.D.
`
`(“Escuti Decl.”), ¶38. The light emitting panel assembly is composed of all the
`
`elements of the LCD other than the liquid crystals themselves. Id. For example, the
`
`light emitting panel assembly is all but element 12 (in yellow) in the annotated figure
`
`below from Ex. 1005, U.S. Patent No. 5,461,547 (“Ciupke”).
`
`
`
`
`
`In order to produce surface illumination with the target brightness and
`
`uniformity at the lowest possible electrical power, the light emitting panel assembly
`
`can include features to spatially homogenize and control the angular distribution of
`
`emitted light. Escuti Decl., ¶39. Examples of these features include light pipes,
`
`transition area, reflectors, and various types of microstructured deformities (e.g.,
`5
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`Page 9 of 63
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`microprisms, diffusers, and microlenses). Id. at ¶42. The light pipe, also sometimes
`
`called a light guide or wave guide, accepts light injected from the side and distributes it
`
`across the emission area. The ’194 Patent calls the light pipe a “transparent panel
`
`member” (e.g., 1:20-21), “light emitting panel member” (e.g., 1:34-35), and “transparent
`
`light emitting panel” (e.g., 2:67). See Escuti Decl., ¶43. The transition area, which is
`
`usually between the light source and the light pipe, is used to securely position the
`
`light source relative to the light pipe, and to spread and transmit light to produce a
`
`more uniform input illumination. Id. ¶44. Deformities, such as microprisms, diffusers,
`
`and microlenses, are employed to control the direction and spatial uniformity of light
`
`within light emitting panel assemblies. Id. ¶45.
`
`B. The Alleged Invention Of The ’194 Patent
`The ’194 Patent 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 ’194 Patent discloses an edge-lit
`
`light emitting panel assembly, which can also be referred to as a backlight. Escuti
`
`Decl., ¶40. Edge-lit light emitting panel assemblies are often preferred because they
`
`can be physically thinner and lower weight. Id. As the ’194 Patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Ex. 1001, 1:24. The
`
`purported advantage of the alleged invention described in the ’194 patent relates to
`
`6
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`Page 10 of 63
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`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.
`
`Ex. 1001, 1:25-30. Yet, as shown further below, prior art such as U.S. Patent No.
`
`5,005,108 (“Pristash”) already disclosed such advantages. See, e.g., Ex. 1006, 1:10-16.
`
`The ’194 Patent discloses light emitting assemblies including at least one light
`
`source and at least one film, sheet, plate, or substrate having 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 may be positioned near
`
`the light emitting surface of a light emitting panel member with an air gap
`
`therebetween or over a cavity or recess in a tray through which light from a light
`
`source in the cavity or recess is emitted. Id.
`
`V.
`
`CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`1.
`Broadest Reasonable Construction
`
`A claim subject to inter partes review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§42.100(b). This means that the words of the claim are given their plain meaning
`
`from the perspective of one of ordinary skill in the art unless that meaning is
`
`7
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`Page 11 of 63
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`Petitioner submits, for the purposes of inter partes review only, that the claim terms are
`
`presumed to take on their broadest reasonable interpretation in light of the
`
`specification of the ’194 Patent.
`
`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, 4:44-48. Thus,
`
`based on the express definition of deformities in the specification, “deformities”
`
`(Claims 1, 16, 28, and 31) should be construed to mean “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.” Escuti Decl., ¶62.
`
`VI. SUMMARY OF PRIOR ART TO THE ’194 PATENT FORMING THE
`BASIS FOR THIS PETITION
`The following documents serve as a basis to show that Petitioner has a
`
`reasonable likelihood of prevailing with respect to at least one of the Claims 1, 4-6, 16,
`
`22, 23, 27, 28, and 31 of the ’194 Patent. Petitioner provides a detailed explanation of
`
`the pertinence and manner of applying the cited prior art to Claims 1, 4-6, 16, 22, 23,
`
`27, 28, and 31 of the ’194 Patent in Section VII, infra. In light of the prior art
`
`references, the light emitting assembly in the ’194 Patent is a function of prior art and
`
`8
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`Page 12 of 63
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`obvious design decisions, not innovation or invention.
`
`A.
`Admitted Prior Art
`The ’194 Patent discusses the following functionality and structure of prior art
`
`light emitting assemblies: (1) a “transparent light emitting panel 2,” (2) “one or more
`
`light sources 3 which emit light in a predetermined pattern,” and (3) “a light transition
`
`member or area 4 used to make the transition from the light source 3 to the light
`
`emitting panel.” Ex. 1001, 2:64-3:4 (describing these elements and their functionalities
`
`as being “well known in the art”).
`
`B. U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1006)
`Pristash discloses a thin panel illuminator for more efficient light transmission
`
`from the light source to the light emitting panel. Ex. 1006, 1:14-17. Pristash qualifies
`
`as prior art under 35 U.S.C. §102(b) because Pristash issued as a patent on April 2,
`
`1991, more than one year before the June 27, 1995 priority date to which the ’194
`
`Patent may be entitled. Pristash was cited as a reference in an Information Disclosure
`
`Statement during prosecution, but was not relied upon as the basis to reject any claim.
`
`In fact, Pristash was not discussed on the record at all during the prosecution
`
`proceedings.
`
`C. U.S. Patent No. 5,619,351 (“Funamoto”) (Ex. 1007)
`Funamoto discloses a surface-type illumination device suitable for providing a
`
`backlight in a liquid crystal display (“LCD”). Ex. 1007, Abstract. Funamoto qualifies
`
`as prior art under 35 U.S.C. §102(e) because Funamoto entered national stage under
`9
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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`35 U.S.C. §371 on May 10, 1994 before the June 27, 1995 priority date to which the
`
`’194 Patent may be entitled. Funamoto was not cited or considered during
`
`prosecution of the application that led to the ’194 Patent.
`
`D.
`JP H06-273756 (“Gyoko”) (Ex. 1008)1
`Gyoko discloses an illuminating device and liquid crystal display device whose
`
`purpose is to increase brightness and efficiency by reducing or preventing leakage of
`
`light from a light guide body. Ex. 1008, Title, Abstract. Gyoko qualifies as prior art
`
`under 35 U.S.C. §102(a) because Gyoko was published on September 30, 1994, before
`
`the June 27, 1995 priority date to which the ’194 Patent may be entitled. Gyoko was
`
`not cited or considered during prosecution of the application that led to the ’194
`
`Patent.
`
`E. U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1011)
`Kobayashi discloses a planar illuminating device having “increased luminance”
`
`and an “increased uniformity in surface lumination.” Ex. 1011, 2:14-16, 2:59-61.
`
`Kobayashi qualifies as prior art under 35 U.S.C. §102(a) because Kobayashi was issued
`
`as a patent on April 18, 1995, before the June 27, 1995 priority date to which the ’370
`
`Patent may be entitled. Kobayashi was not cited or considered during prosecution of
`
`the application that led to the ’194 Patent.
`
`1 The Japanese version of Gyoko is attached as Ex. 1009 and the translation
`
`certification is attached as Ex. 1010.
`
`
`
`10
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`Page 14 of 63
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`

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`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`F. U.S. Patent No. 5,598,280 (“Nishio”) (Ex. 1012)
`Nishio discloses a film lens and a surface light source adopted for backlighting
`
`a display unit, such as a liquid crystal display. Ex. 1012, 1:7-10. Nishio qualifies as
`
`prior art under 35 U.S.C. §102(e) because Nishio was filed on March 22, 1994, before
`
`the June 27, 1995 priority date to which the ’194 Patent may be entitled. Nishio was
`
`not cited or considered during prosecution of the application that led to the ’194
`
`Patent.
`
`VII. GROUNDS FOR UNPATENTABILITY FOR EACH CLAIM
`In light of the disclosures detailed below, the ’194 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Ground # Ground
`1
`103(a)
`2
`102(e)
`
`Prior art
`Pristash
`Funamoto
`
`Exhibit(s) #
`1006
`1007
`
`Claims
`1, 4-6, 28
`1, 16, 22, 23, 27,
`31
`4, 5, 6
`1007
`16, 22, 23, 27, 31
`1008
`28
`1011
`1, 4-6, 28
`1012
`1012 and 1007 16, 22, 23, 27, 31
`
`3
`4
`5
`6
`7
`
`103(a)
`102(a)
`102(a)
`102(e)
`103(a)
`
`Funamoto
`Gyoko
`Kobayashi
`Nishio
`Nishio in view of
`Funamoto
`A. Ground 1: Claims 1, 4-6, And 28 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Pristash
`The alleged invention set forth in the ’194 Patent “Background of the
`
`
`
`Invention” is substantially similar to that in Pristash:
`
`’194 Background of the Invention
`Pristash Background of the Invention
`Light emitting panel assemblies are
`Light panel
`illuminators are generally
`generally known. However, the present
`known. However, the present invention
`11
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`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`several different panel
`to
`relates
`illuminator configurations which are less
`expensive to make and/or provide for
`better control over the light output from
`the panel. Also, the present invention
`provides more efficient transmission of
`light from a light source to the light
`emitting panel.
`
`invention relates to several different light
`emitting panel assembly configurations
`which provide for better control of the
`light output from the panel assemblies
`and for more efficient utilization of light,
`which results in greater light output from
`the panel assemblies.
`
`
`
`The similarities between the Pristash and ’194 Patent do not end in their
`
`recognition of the prior art and the objectives of the purported inventions. The two
`
`patents have a common inventor, Jeffrey Parker, who is a co-inventor of Pristash and
`
`the sole inventor for the ’194 Patent. Further, Fig. 10 of Pristash and Fig. 6 of the
`
`’194 Patent appear strikingly similar in shape and in common elements such as the
`
`“light output” regions/areas (green), “light sources” (orange), and “reflective”
`
`coatings/surfaces (purple).
`
`Pristash
`
`’194 Patent
`
`
`
`12
`
`
`
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`
`Pristash teaches each and every element of Claims 1, 4-6, and 28 of the ’194
`
`Patent and therefore, renders those claims unpatentable under 35 U.S.C. §103.
`
`Pristash teaches several different embodiments of the
`
`light emitting panel
`
`illuminators. A person of ordinary skill in the art would have been motivated to
`
`combine elements of a particular embodiment with other elements of other
`
`embodiments disclosed in Pristash for several reasons. First, all of the configurations
`
`taught by Pristash are aimed to be less expensive and provide for “better control over
`
`the light output from the panel,” and “more efficient transmission of light from a
`
`light source to the light emitting panel.” Ex. 1006, 1:11-16. Second, Pristash
`
`specifically acknowledges that “it
`
`is obvious that equivalent alterations and
`
`modifications will occur to others skilled in the art upon reading and understanding of
`
`the specification.” Id. 9:3-5. Therefore, it would be obvious to a person of skill in the
`
`art to alter one embodiment with a feature taught in the same patent but from a
`
`different embodiment. Finally, Pristash does not limit the combination of any of the
`
`elements for the embodiments. Specifically, Pristash does not teach away from any
`
`combinations of embodiments presented
`
`herein.
`
`
`
`The elements of independent Claims 1
`
`and 28 of the ’194 Patent are shown in the
`
`annotated figure at right, composed of Figures
`
`13
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`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
` and 7 of Pristash that are labeled as claim elements.
`
` 1
`
`
`
`With respect to Claim 1, Pristash teaches a light emitting assembly including a
`
`solid transparent prismatic film 51, light source 3, a second prismatic film 60 which
`
`can be replaced by a diffuser or lenticular lens, and an air gap 61. Ex. 1006, 2:68, 5:6-
`
`9, 5:22-33. Here, the solid transparent prismatic film 51 functions as a panel member,
`
`as required by the claim language. See Escuti Decl., ¶69. Additionally, as previously
`
`mentioned, the object of Pristash, much like the object of the ’194 Patent, is to
`
`provide a panel assembly with more efficient use of light, i.e., low loss. See id. ¶64.
`
`
`
`With respect to Claim 28, the solid transparent prismatic film 51 functions as
`
`the transparent film, sheet, plate, or substrate having top and bottom surfaces, a
`
`plurality of optical elements or deformities of well-defined shape on or in the top and
`
`bottom surfaces. See id. ¶¶91-92. Indeed, Pristash discloses that the solid transparent
`
`prismatic film 51 with a prismatic surface 52 on one side and a back reflector 53 on
`
`the other side. Ex. 1006, 5:6-11. Additionally, the transparent prismatic film can have
`
`deformities cut, molded or otherwise formed on both the top and bottom surfaces
`
`along the prism edges. Id. 4:46-49, 4:66-5:5. The deformities can vary in depth and
`
`shape along the length of the prism edges “to produce a desired light output
`
`distribution.” Id. 4:52-54. See Escuti Decl., ¶¶91-92.
`
`
`
` As for dependent Claims 4, 5, and 6, Pristash teaches each and every limitation
`
`of independent Claim 1. Further, Pristash teaches multiple light sources which may be
`
`14
`
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`used with a single panel when the rays enter the panel from opposite edges (“Light rays
`
`may be caused to enter the panel 50 perpendicular to the wave guide prism edges 54 from one or both
`
`end edges 55, 56 of the panel,” Id. 5:11-14 (emphasis added), Fig. 7 below), allowing the
`
`light to mix in the panel member or in the air gap (“internally reflected until they strike a
`
`deformity,” Id. 5:14-15). See Escuti Decl., ¶¶80-88.
`
`The claim chart below shows a detailed analysis of how each element of Claims
`
`1, 4-6, and 28 of the ’194 Patent are rendered obvious by the teachings of Pristash.
`
`For all these reasons, Claims 1, 4-6, and 28 are unpatentable in view of Pristash and
`
`Petitioner has a reasonable likelihood of prevailing with respect to at least one claim.
`
`’194 Claim Element
`1. A
`light
`emitting
`assembly comprising
`
`Pristash (Ex. 1006)
`“FIG. 7 schematically shows another form of light
`emitting panel 50 in accordance with this invention which
`also comprises a solid transparent prismatic film 51 having
`a prismatic surface 52 on one side and a back reflector 53
`on the other side, similar to the light emitting panel 2
`shown in FIG. 1.” Ex. 1006, 5:6-11; see also Figs. 1, 7
`below.
`
`light
`least a
`[1.a] at
`emitting panel member
`having a light emitting
`surface,
`
`
`
`See Escuti Decl., ¶68.
`“FIG. 7 schematically shows another form of light
`emitting panel 50 in accordance with this invention which
`also comprises a solid transparent prismatic film 51 having
`a prismatic surface 52 on one side and a back reflector 53
`on the other side, similar to the light emitting panel 2
`shown in FIG. 1.” Ex. 1006, 5:6-11.
`
`15
`
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`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`’194 Claim Element
`
`[1.b] at least one light
`source,
`
`[1.c] at least one film,
`sheet, plate or substrate
`positioned near the light
`emitting surface through
`which
`light from the
`panel
`member
`is
`emitted, and
`[1.d] an air gap between
`the film, sheet, plate or
`substrate and the panel
`member,
`[1.e] wherein at least one
`surface of
`the
`film,
`sheet, plate or substrate
`has
`one
`or more
`reflective or refractive
`surfaces, and
`[1.f] 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
`
`Pristash (Ex. 1006)
`“The second prismatic film 60 may be separated from the
`first prismatic film or wave guide 51 by air or an epoxy
`filled gap 61.” Id. 5:25-27.
`See Escuti Decl., ¶69.
`“Referring now in detail to the drawings, and initially to
`FIG. 1, there is schematically shown one form of thin
`panel
`illuminator
`in accordance with this
`invention
`including a solid transparent light emitting panel 2 and a
`light source 3 which generates and focuses light….” Ex.
`1006, 2:64-68.
`See Escuti Decl., ¶70.
`“In addition, the panel 50 includes a second prismatic film
`60 disposed in close proximity to the panel prismatic
`surface 52 to shift the angular emission of light toward a
`particular application.” Ex. 1006, 5:22-25.
`See Escuti Decl., ¶71.
`
`“The second prismatic film 60 may be separated from the
`first prismatic film or wave guide 51 by air or an epoxy
`filled gap 61.” Ex. 1006, 5:25-27.
`See Escuti Decl., ¶72.
`“In addition, the panel 50 includes a second prismatic film
`60 disposed in close proximity to the panel prismatic
`surface 52 to shift the angular emission of light toward a
`particular application.” Ex. 1006, 5:22-25.
`See Escuti Decl., ¶73.
`“In addition, the panel 50 includes a second prismatic film
`60 disposed in close proximity to the panel prismatic
`surface 52 to shift the angular emission of light toward a
`particular application . . . Also, multiple prismatic films
`may be used in place of
`the single prismatic film
`60, or the prismatic film
`60 may be replaced by a
`
`16
`
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`

`

`Patent No. 7,300,194
`Petition for Inter Partes Review
`
`
`’194 Claim Element
`redirected
`to
`pass
`through a liquid crystal
`display with low loss.
`
`4. The assembly of
`claim 1 wherein
`light
`from at least two light
`sources partially mixes
`in at least a portion of
`the
`light
`emitting
`assembly.
`
`5. The assembly of
`claim 4 wherein
`the
`portion of
`the
`light
`emitting
`assembly
`in
`which the light partially
`mixes
`is
`the panel
`member.
`
`6. The assembly of
`claim 4 wherein
`the
`
`Pristash (Ex. 1006)
`diffuser or lenticular lens or the like.” Ex. 1006, 5:22-33;
`see also Fig. 7 below.
`“Typical general lighting applications include back lighting
`of liquid crystal displays….” Id. 8:17-20.
`“[T]he present invention relates to several different panel
`illuminator configurations which are less expensive to
`make and/or provide for better control over the light
`output from the panel. Also, the present invention
`provides for more efficient transmission of light from a
`light source to the light emitting panel.” Id. 1:12-16.
`See Escuti Decl., ¶¶74-76.
`“Moreover, multiple light sources may be used with a
`single panel or multiple panels used with a single light
`source by providing the transition device with multiple
`input connectors leading to a single output connector or a
`single
`input connector
`leading
`to multiple output
`connectors as schematically shown in FIG. 18.” Ex. 1006,
`7:64-8:1.
`“Light rays may be caused to enter the panel 50
`perpendicu