Filed on behalf of: Toyota Motor Corp.
`
`
`By: P. Andrew Riley
`
`Thomas W. Winland
`
`David C. Reese
`
`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
`
`david.reese@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. 7,384,177
`
`
`
`
`DECLARATION OF DR. ZANE COLEMAN
`
`
`
`
`TOYOTA EXHIBIT 1004
`
`Page 1 of 66
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`

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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................... 1
`
`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 ...................................................................... 7
`
`V.
`
`TECHNOLOGY BACKGROUND .......................................................... 7
`
`A.
`
`B.
`
`Light Emitting Assemblies ............................................................................... 7
`
`Common Light Control Structures and Films ............................................. 10
`
`VI. THE ’177 PATENT ................................................................................. 18
`
`A.
`
`B.
`
`C.
`
`D.
`
`Background Of The ’177 Patent .................................................................... 18
`
`Prosecution History (Ex. 1002) ..................................................................... 19
`
`Challenged Claims ............................................................................................ 21
`
`Claim Construction .......................................................................................... 21
`
`VII. PRIOR ART ANALYSIS ......................................................................... 22
`
`A.
`
`U.S. Patent No. 5,054,885 (“Melby”) ............................................................ 22
`
`1.
`
`Claims 1, 6-7, 9-10, 13-15, and 19 are Obvious Over
`Melby ................................................................................... 24
`
`B.
`
`U.S. Patent No. 4,453,855 (“Nakamura”) .................................................... 38
`
`1.
`
`Claims 1, 6-7, 9-10, 13-15, 19, and 22 are Anticipated by
`
`ii
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`Page 2 of 66
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`

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`Nakamura ............................................................................ 39
`
`VIII. SECONDARY CONSIDERATIONS .................................................... 54
`
`IX. CONCLUSION ...................................................................................... 54
`
`
`
`
`
`iii
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`Page 3 of 66
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`I, Dr. Zane Coleman, declare as follows:
`
`INTRODUCTION
`
`I have been retained by Toyota Motor Corp. (“Toyota” or “Petitioner”) as an
`
`I.
`
`
`1.
`
`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. 7,384,177 (“the
`
`’177 patent”) (attached as Ex. 1001 to the petition). I understand that the ’177
`
`patent was filed on October 6, 2005. I also understand that the ’177 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 ’177 patent and
`
`whether certain references disclose or suggest certain features in the claims of the
`
`’177 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
`
`1
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`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 to
`
`those problems, (3) the rapidity with which innovations are made, (4) the
`
`sophistication of the technology, and (5) the educational level of active workers in
`
`the 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 ’177 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.
`
`Anticipation Invalidity
`
`
`6.
`
`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.
`
`2
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`7.
`
`
`
`I also understand that under certain circumstances, multiple references may
`
`be used to prove anticipation, specifically to: (a) prove that the primary reference
`
`contains an enabled disclosure, (b) explain the meaning of a term used in the
`
`primary 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)
`
`3
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`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.
`
`III. BACKGROUND AND EXPERIENCE
`
`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
`
`4
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`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 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
`5
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`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, LED backlights, and LED light fixture projects. I also co-developed the
`
`optical 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.
`
`6
`
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`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
`
`’177 Patent, the prosecution history of the ’177 Patent, the prior art of record, and
`
`the papers submitted by LG Display, Ltd. and LG Display America, Inc. (“LGD”)
`
`in connection with its IPR2014-01362 including the references cited.
`
`V. TECHNOLOGY BACKGROUND
`A.
`
`Light Emitting Assemblies
`
`21.
`
` The ’177 Patent discloses a light emitting assembly, also called a light
`
`emitting panel assembly, which according to the ’177 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. 1012, 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. 1013,
`
`7
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`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 time of the ’177 Patent is illustrated in Fig. 2 from Ciupke, where
`
`the light emitting panel assembly includes everything below element 12, and where
`
`element 12 is the LCD. (Fig. 2 from Ex. 1005, U.S. Patent No. 5,461,177
`
`(“Ciupke”)).
`
`
` The principle aim of a light emitting panel assembly is to provide a surface
`
`22.
`
`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 an LCD, 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
`
`8
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`produce the surface illumination with the target brightness and uniformity at the
`
`lowest possible electrical power.
`
`23.
`
` Light emitting panel assemblies are classified into two well-known1
`
`categories: “edge-lit” and “directly back-lit.” See, e.g., Fig. 9 from Ex. 1014,
`
`U.S. Patent No. 5,598,280 (“Nishio”), versus Fig. 4 from Ex. 1015, 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 several films in between. Confusingly, the word “backlight”
`
`is commonly applied to both. The ’177 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.
`
`9
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`Figure A (annotated Fig. 9 of Ex. 1014, Nishio and Fig. 4 of Ex. 1015, Ohtake)
`
`24.
`
`
`
`It was known by June 27, 1995 that one or more light sources may be
`
`employed. As representative examples, see Ex. 1005, 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. 1016, U.S. Patent No. 5,303,322 (“Winston”). I now discuss each of
`
`these.
`
`26.
`
` The light pipe, also sometimes called a light guide or wave guide or optical
`
`conductor, accepts light injected from the side and distributes it across the
`
`10
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`emission area. See, e.g., Ex. 1017, 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. 1005,
`
`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
`
`’177 Patent employs several terms for the light pipe, including “transparent panel
`
`member” (e.g., Ex. 1001, the ’177 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).
`
`
`
`11
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`Figure B (annotated Fig. 2 of Ex. 1005, 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 ’177 Patent, at
`
`2:64-3:4. 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. 1017, 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. 1005, Ciupke below, the transition area
`
`25 couples the light from the light sources 18 into the light pipe 11. Cf. Ex. 1017,
`
`Hathaway, at Fig. 11.
`
`Figure C (annotated Fig. 4 of Ex. 1005, Ciupke)
`
`
`
`28.
`
` Various types of deformities are employed to control the direction and
`
`spatial uniformity of light within light emitting panel assemblies. Two major
`
`categories are those that are essentially microstructured grooves or protrusions
`
`on 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
`
`12
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`art at the time of the ’177 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. 1018, European Patent
`
`Application Publication No. EP500960 (“Ohe”) below, where the light source is
`
`positioned at side 7.
`
`
` One of the most common deformities is a microprism, which is a small
`
`29.
`
`groove or protrusion with two or more facets. These are shown in Figs. B and C
`
`above in paragraphs 26 and 27, respectively, as elements 17, on either side of the
`
`light 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 behaviors can be seen in Fig. D below, where I have highlighted
`
`the rays refracting (red) and the rays reflecting (blue) because of the microprisms
`
`sheet (green) (Fig. 6 from Ex. 1014, Nishio). In fact, the blue ray on the right
`
`13
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`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. 1019,
`
`U.S. Patent No. 5,828,488 (“Ouderkirk”), at 6:63-8:8; and Ex. 1020, 3M product
`
`brochure 75-0500-0403-7, “Brightness Enhancement Film (BEF).” 2 pages (1993).
`
`Microprism deformities and sheets were generally known in the prior art.
`
`Figure D (annotated Fig. 6 of Ex. 1014, Nishio)
`
`
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`14
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`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. 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).
`
`Figure E(i) (Fig. 4A of Ex. 1021,
`U.S. Patent No. 5,706,134 (“Konno”))
`
`
`
`15
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`Figure E(ii) (Figs. 1, 2, and 3 of Ex. 1015, Ohtake)
`
`
`
`
`
`Figure E(iii) (Figs. 13 and 26 of Ex. 1022,
`U.S. Patent No. 5,944,405 (“Takeuchi”))
`
`
`
`Figure E(iv) (cropped Fig. 5 of Ex. 1023,
`U.S. Patent No. 5,381,309 (“Borchardt”))
`
`
`
`31.
`
` Diffusing deformities may be arranged directly on either side of a light pipe,
`
`as in Figs. B and C, or they may be formed as a separate sheet, as in Fig. B as a
`
`16
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`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.
`
`32.
`
` A third common deformity is a microlens, which are small cylindrical or
`
`spherical lenslets on a surface, in either a one- or two-dimensional arrangement.
`
`These are sometimes called lenticular surfaces. See, e.g., Ex. 1014, Nishio, at 4:1-3
`
`and Fig. 13. They may have a wide range of engineered shapes, including but not
`
`limited to convex (i.e., ridges) and/or concave (i.e., valleys) cross-sections. It is
`
`common, but not required, to arrange the lenslets into an array with little or no
`
`space between them. For example, a 1D array of cylindrical lenslets 42 and a 2D
`
`array of spherical lenslets 42 are illustrated in Figs. 13 and 15 below, respectively.
`
`Ex. 1014, Nishio. Also shown is a diffusing surface 41 on the opposite side. These
`
`may be arranged directly on one or both of sides of a light pipe, or they may be
`
`formed into a separate sheet. Microlens deformities and sheets were generally
`
`known in the prior art.
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`
`
`17
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`33.
`
`
`
`It is also common for panel assemblies to include reflective or refractive
`
`surfaces for changing the path or a portion of light to increase the efficiency of
`
`the panel members. For example, the Fig. 2 above from Ex. 1005, Ciupke shows
`
`reflectors 27 and 29 to reflect any light which escapes from the surface back into
`
`the light pipe and towards surface 13. See also Ex. 1005, Ciupke, at 3:10-19.
`
`VI. THE ’177 PATENT
`A.
`
`Background Of The ’177 Patent
`
`34.
`
` The ’177 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, the ’177 Patent, at 1:19-23.
`
`35.
`
` The ’177 Patent discloses light emitting assemblies having a tray that forms
`
`a cavity or recess. Ex. 1001, the ’177 Patent, at Abstract. The tray acts as a back,
`
`side or edge reflector having one or more secondary reflective or refractive
`
`surfaces. Id. This can be seen below in Fig. 6 of the ’177 Patent. Element 35 is
`
`the tray and element 38 is a secondary reflective of refractive surface.
`
`18
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`
`
`
`36.
`
` According to the ’177 Patent, “one or more secondary reflective or
`
`refractive surfaces 38 may be provided on the panel member 33 and/or tray 35 to
`
`reflect a portion of the light around one or more corners or curves in a non-
`
`rectangular shaped panel member 33. These secondary reflective/refractive surfaces
`
`38 may be flat, angled, faceted or curved, and may be used to extract a portion of
`
`the light away from the panel member in a predetermined pattern.” Ex. 1001, the
`
`’177 Patent, at 7:3-10.
`
`B.
`
`Prosecution History (Ex. 1002)
`
`37.
`
` U.S. Patent Application No. 11/244,544 (“the ’544 application”), which led
`
`to the ’177 Patent, was filed on October 6, 2005 and had 28 claims.
`
`38.
`
`
`
`In the first office action, the examiner rejected claims 1-28 under 35
`
`U.S.C. §112, first paragraph, for failing to comply with the written description
`
`requirement. Specifically, the examiner did not believe that the tray having “at least
`
`one sheet, film or substrate positioned over the cavity or recess of the tray,” was
`
`supported in the specification.
`
`19
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`39.
`
` The examiner also rejected claims 1-7, 14-19, and 22-28 under 35 U.S.C.
`
`§ 102(b) as being anticipated by U.S. Patent No. 5,070,431 to Kitazawa et al.
`
`(“Kitazawa ’431”). Claims 8-13 and 20-21 were rejected under 35 U.S.C. § 103(a) as
`
`being obvious over Kitazawa ’431 in view of U.S. Patent No. 4,851,824 to Murata
`
`et al. (“Murata ’824”).
`
`40.
`
`
`
`In its response to the first office action, the applicant amended claims 1 and
`
`16 to include the phrase “overlying the assembly” in its description of the sheet,
`
`film, or substrate used to control the light emitted from the assembly. The applicant
`
`also pointed to support in the specification. Response at 7.
`
`41.
`
`
`
`In order to overcome the anticipation rejection, the applicant amended claims
`
`1 and 16 to describe the tray as “having a back wall and continuous side walls that
`
`form a hollow cavity or recess completely surrounded by the side walls.” The
`
`applicant then argued that:
`
`the so-called tray 12 of Kitazawa does not have a back wall
`and continuous side walls that form a hollow cavity or
`recess completely surrounded by the side walls in which at
`least one light source is located, mounted or positioned as
`recited in claims 1 and 16 as amended. Nor do the so-called
`secondary flat, angled, faceted or curved reflective or
`refractive surfaces 12g of Kitazawa redirect at least a
`portion of the light emitted by the light source in a
`predetermined manner within the cavity or recess in the
`tray as further recited in claims 1 and 16 as amended.
`Response at 8.
`
`20
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`42.
`
` The applicant also referred to a response to an office action filed on
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`November 28, 2007, for the related co-pending application, U.S. Patent Application
`
`No. 11/378,080. Response at 8-9. This application led to U.S. Patent No. 7,434,974.
`
`43.
`
`
`
`In response to the obviousness rejection, the applicant argued that these
`
`dependent claims depended from the amended independent claims and therefore
`
`should be allowable based on the same argument as presented above. Response at 9.
`
`44.
`
` Claims 1-8 and 10-28 were allowed in the Notice of Allowance mailed on
`
`February 20, 2008.
`
`C.
`
`Challenged Claims
`
`45.
`
` My analysis will focus on claims 1, 6-7, 9-10, 13-15, 19, and 22 of the ’177
`
`Patent. The claims themselves will be discussed in detail within the Prior Art
`
`Analysis section.
`
`D. Claim Construction
`
`46.
`
`
`
`I have been informed that in my analysis, I should interpret “deformities,”
`
`as the term exists in claim 14 of the ’177 Patent, as “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.” This term was specifically defined in the specification of
`
`the ’177 Patent, as previously discussed. Ex. 1001, the ’177 Patent, at 4:44-48.
`
`21
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`VII. PRIOR ART ANALYSIS
`
`47.
`
`
`
`I now turn to the references applied in the grounds for rejections discussed
`
`in Petition for inter partes review. In my analysis, I will specifically address the
`
`following references:
`
`No. Reference
`1006 U.S. Patent No. 5,054,885
`1007 U.S. Patent No. 5,453,855
`
`
`
`Referred To As
`Melby
`Nakamura
`
`A. U.S. Patent No. 5,054,885 (“Melby”)
`
`48.
`
` Melby is directed to a light fixture with a light source of partially
`
`collimated light in a housing with a cavity having a structured surface with a
`
`plurality of prisms for reflecting light from the light source out of the cavity. Ex.
`
`1006, Melby, at Abstract.
`
`49.
`
` Challenged claims of the ’177 Patent are directed at elements disclosed
`
`within Melby in the first and third embodiments. The first embodiment can be seen
`
`in Fig. 1 below and the third embodiment can be seen in Fig. 3 below.
`
`
`
`22
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`50.
`
` A person of ordinary skill in the art would be motivated to pick and
`
`choose features of the different embodiments to combine because they are taught
`
`within the same patent and there is no disclosure suggesting that they should not or
`
`cannot be combined. In fact, Melby discloses that the structured surfaces may be
`
`interchanged. See, e.g., Ex. 1006, Melby, at 3:1-6.
`
`51.
`
`
`
`First, in the third embodiment shown in Fig. 3, Melby discloses a housing
`
`with two light sources, with planar or curved structured prismatic surfaces for
`
`collimating light out of the light emitting assembly. Melby also discloses overlying
`
`transparent or translucent cover 40. Second, Melby explains that, with respect to the
`
`first embodiment depicted in Fig. 1, the light transmitting member 14 may be
`
`transparent or translucent and overlies the cavity. This light transmitting member
`
`14 may also have structures such as pillow optics and Fresnel prisms. Third, it
`
`would have been obvious to one of skill in the art to combine the overlying