IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Inter Partes Review of:
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`U.S. Patent No. 6,886,956
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`Filed: Nov. 18, 2002
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`Issued: May 3, 2005
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`
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`Trial No.: IPR2015-00896
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`Attorney Docket: 04305.9001-01
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`Inventors: PARKER, Jeffery R., et al.
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`Panel: Not Yet Assigned
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`Assignee: Innovative Display Technologies,
`LLC
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`Title: LIGHT EMITTING PANEL
`ASSEMBLIES FOR USE IN AUTOMOTIVE
`APPLICATIONS AND THE LIKE
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`DECLARATION OF JOHN L. WEST, Ph.D.
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`I, John Lawton West, Ph.D., declare as follows:
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`I have been retained by Toyota Motor Corporation (“Petitioner”) to provide
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`expert opinions in connection with the above-captioned inter partes review being
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`requested by Petitioner. A summary of my opinions appears below.
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`
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`TOYOTA EXHIBIT 1010
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`PAGE 1 OF 42
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`Table of Contents
`Introduction ...................................................................................................... 1
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`Background and Experience ............................................................................. 1
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`I.
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`II.
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`III. Materials Reviewed ........................................................................................... 3
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`IV. Guiding Legal Principles ................................................................................... 3
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`A.
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`B.
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`Person of Ordinary Skill in the Art ......................................................... 3
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`Anticipation Invalidity ............................................................................ 4
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`C. Obviousness Invalidity ........................................................................... 5
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`V. Overview of the ’956 Patent ............................................................................. 6
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`VI. Explanation of the References .......................................................................... 9
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`A.
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`B.
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`C.
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`Katase, Japanese Laid-Open Utility Model Application No. JP
`H5-25602U ............................................................................................. 9
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`Pristash, U.S. Patent No. 5,005,108 ......................................................12
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`Shinkai, Japanese Utility Model Publication No. JP H1-92004U ...........14
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`VII. Obviousness Combinations ............................................................................16
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`A. Obviousness of combining the teachings of Katase and Pristash
`to position a lens “against” a light guide ...............................................16
`
`B. Obviousness of combining the teachings of Shinkai and Katase to
`use an LED light source .......................................................................18
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`C. Obviousness of combining the teachings of Shinkai, Katase, and
`Pristash to position a lens “against” a light guide ..................................18
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`VIII. Secondary Considerations of Obviousness......................................................20
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`PAGE 2 OF 42
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`I.
`1.
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`Introduction
`I have been retained by Toyota Motor Corporation (“Toyota” or “Petitioner”)
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`as an independent expert consultant in this proceeding before the United States
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`Patent and Trademark Office. Although I am being compensated at my standard rate
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`of $400.00 per hour for the time I spend on this matter, no part of my compensation
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`depends on the outcome of this proceeding, and I have no other interest in this
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`proceeding.
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`2.
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`I understand that this proceeding involves U.S. Patent No. 6,886,956 (“the ’956
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`patent”) (attached as Ex. 1001).
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`3.
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`I have been asked to render certain opinions regarding the ’956 patent and
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`whether certain references would disclose or suggest certain features in the claims of
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`the ’956 patent to a person of ordinary skill in the art. The substance and bases of my
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`opinions appear below.
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`II. Background and Experience
`4. My curriculum vitae, which includes a more detailed summary of my
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`background, experience, and publications, is attached as Attachment A.
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`5.
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`I was awarded a B.S. in chemistry from the College of William and Mary in
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`1976, and an M.S. and Ph.D. in Chemistry from Carnegie Mellon-University in 1979
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`and 1980. I am a University Trustee Professor at Kent State University, where I teach
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`and conduct research in the fields of liquid crystal materials and devices.
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`6. My teaching includes a graduate-level course titled “Chemical Physics of
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`Electro-Optic Polymers,” which covers subjects ranging from the basics of
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`polymerization to the optics of polymer films, including edge-illuminated panels and
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`light-emitting diodes (LEDs). I also teach an honors-level course titled “Be Smarter
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`than Your Phone,” which surveys the technologies that make the smart phone
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`possible and assesses the impact on business and communications.
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`7. My research includes developing a novel means of producing transparent
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`conducting electrodes on plastic substrates required for displays and touch screens,
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`developing responsive fibers used to integrate displays and electronics in clothing and
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`medical sensors, and exploring the mechanism of chiral induction in liquid crystals.
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`8.
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`I am named as an inventor on 19 separate patents and patent applications,
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`which cover various technologies relating primarily to liquid crystal applications.
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`9.
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`Since 1984, I have served as a Senior Research Fellow at the Liquid Crystal
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`Institute (“LCI”) at Kent State University, also serving as Associate Director from
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`1990-1996, and as Director from 1997-2003. The LCI is recognized as the world’s
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`leading research center in the field of liquid crystals. The LCI includes over 50 faculty
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`members from departments across Kent State University, including chemistry,
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`physics, biology, mathematics, and computer science. I concurrently served as
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`Director of the Chemical Physics Interdisciplinary Program (“CPIP”) at Kent State
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`from 1997-2003, and of the NSF Science and Technology Center for Advanced
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`Liquid Crystalline Optical Materials (“ALCOM”) from 1997 to 2002. During my
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`tenure as Director of the LCI, CPIP, and ALCOM, I established and oversaw an
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`industrial partnership that engaged over 60 companies from across the nation and
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`around the world, fostered the transfer of technology from lab to market, supervised
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`the design of a 65,000 square-foot research and education facility and received an
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`NSF Pioneer Award in 2003 for my leadership of ALCOM.
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`10. My work with the LCI covered a broad range of subjects, including subjects
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`relating to automotive applications. For example, I collaborated with scientists from
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`General Motors on research from June 1986 to May 1989 in a significant sponsored
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`program. The research studied certain optics issues generally related to sun roofs for
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`vehicles, and resulted in at least three papers coauthored by me and General Motors
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`scientists.
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`III. Materials Reviewed
`11. The opinions set forth in this declaration are based on my education, my
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`experience and the documents listed in Attachment B, which I reviewed in forming
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`my opinions.
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`IV. Guiding Legal Principles
`A.
`Person of Ordinary Skill in the Art
`I am informed that a “person of ordinary skill in the art” (“POSITA”) refers to
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`12.
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`a hypothetical person who is presumed to have known the relevant art at the time of
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`the invention. Many factors may determine the level of ordinary skill in the art,
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`including: (1) the type of problems encountered in the art, (2) prior art solutions to
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`PAGE 5 OF 42
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`those problems, (3) the rapidity with which innovations are made, (4) the
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`sophistication of the technology, and (5) the educational level of active workers in the
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`field. I understand that a POSITA is a person of ordinary creativity, not an
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`automaton, meaning that a POSITA may employ inferences and creative steps in their
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`work. I am informed that the relevant timeframe is prior to January 16, 1996, which is
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`the earliest priority filing date for the ’956 patent, and the opinions below pertain to
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`that timeframe.
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`13. A POSITA for this patent would have had at least an undergraduate degree in a
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`science or engineering discipline, and a few years of work experience in a field related
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`to optical technology, a graduate degree in a field related to optical technology, or a
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`few years of continuing education toward a graduate degree in a field related to optical
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`technology.
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`B.
`Anticipation Invalidity
`I understand that a patent claim is “anticipated,” and, therefore, invalid, if a
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`14.
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`single prior art reference discloses (expressly or inherently) each and every element of
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`the claimed invention in a manner sufficient to enable a POSITA to practice the
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`invention, thus placing the invention in possession of the public.
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`15.
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`I also understand that under certain circumstances, multiple references may be
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`used to prove anticipation, specifically to: (a) prove that the primary reference
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`contains an enabled disclosure, (b) explain the meaning of a term used in the primary
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`reference, or (c) show that a characteristic not disclosed in the reference is inherent.
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`PAGE 6 OF 42
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`C. Obviousness Invalidity
`I understand that even if a prior art reference fails to anticipate a patent claim,
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`16.
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`the claim may nonetheless be invalid as “obvious,” if the differences between the
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`subject matter claimed and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a POSITA. I
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`understand that several factual inquires underlie a determination of obviousness.
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`These inquiries include the scope and content of the prior art, the level of ordinary
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`skill in the art, the differences between the claimed invention and the prior art, and
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`any objective “secondary consideration,” discussed below. I understand that a
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`combination of familiar elements according to known methods may be obvious when
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`it does no more than yield predictable results. I also have been advised that common
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`sense and ordinary creativity of one skilled in the art can be relevant to obviousness.
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`17.
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`I have been informed that certain objective secondary considerations may be
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`relevant to a determination of whether an invention was obvious. Such secondary
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`considerations may include, e.g., (a) whether there was a long-felt and long-unmet
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`need for the invention, (b) whether the invention achieved unexpected results, (c) the
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`commercial success of the invention, and (d) whether the invention was copied or
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`praised within the industry.
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`PAGE 7 OF 42
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`V. Overview of the ’956 Patent
`18. The ’956 patent, is titled “Light Emitting Panel Assemblies for Use in
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`Automotive Applications and the Like.” I understand that the earliest priority filing
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`date to which the ’956 patent may be entitled is January 16, 1996.
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`19. The ’956 patent relates to light emitting panel assemblies for use in automotive
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`applications. Ex. 1001, ’956 patent at 1:18-20. The ’956 patent acknowledges, and I
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`agree, that “[l]ight emitting panel assemblies are generally known.” Id. at 1:24-27.
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`20. The ’956 patent describes a broad range of light emitting panel applications
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`using similar optics principles, including steering wheels, LCD displays, control
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`switches and keypads, dome lighting, and instrument panels. Id. at 1:35-3:20. The ’956
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`patent also describes examples of “light emitting panel assemblies 24 [that] are
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`mounted in body panels 25 along the rear, front and/or sides of a vehicle to provide
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`vehicle running lights or accent lights or to light a logo, step, running board, or other
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`surface area of a vehicle,” as illustrated in Figure 4 (reproduced below). Id. at 8:38-41.
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`According to the patent, “light sources” (9) [highlighted below in red] may be
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`positioned “along the back edges of the panel members 29 [highlighted below in
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`yellow] used to provide running taillights for a vehicle.” Id. at 8:64-66. According to
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`the patent, the light sources may be “embedded, potted or bonded in the light
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`transition regions of the panels,” “mechanically held in place by a holder . . . in a slot
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`in an edge of the panel member,” or “a fiber optic light pipe 64 [may be used] for
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`transmitting light to the panel member from a remote light source 65.” Id. at 9:12-20.
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`PAGE 8 OF 42
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`Ex. 1001, ’956 Patent, Fig. 4 (annotated)
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`21. The ’956 patent states that “these panel members 29 may form the exterior
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`surface of the body panel 25 as shown at the left hand side of FIG. 4 or a lens or
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`film 34 may cover the panel members as shown at the right hand side of FIG. 4.” Id.
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`at 9:7-11.
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`22. The ’956 patent also discloses that light enters the panel members 28, 29 from
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`the light transition regions 10, and the light is “emitted along the entire length of the
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`panel members or from one or more light output surface areas along their length . . .
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`to produce a desired light output distribution to fit a particular application.” Id. at
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`4:59-65.
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`23.
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`Further, according to the ’956 patent, deformities or disruptions are formed on
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`at least one surface of the panel member to cause the light to be emitted. Ex 1001 at
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`5:38-41. The deformities are angled in such a way that when the light strikes one or
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`more deformities, it is reflected with an angle great enough that the light exits the
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`panel member. Id. at 5:45-52.
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`PAGE 9 OF 42
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`24. Claim 1 of the ’956 patent recites [1(a)] a light emitting assembly for vehicle
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`illumination comprising: [1(b)] a light guide having opposite sides [1(c)] and at least
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`one light input surface along at least one edge of said light guide, one or more light
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`emitting diodes along said light input surface for receiving light from said light
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`emitting diodes and [1(d)] conducting the light from said edge for emission of the
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`light from at least one of said sides, [1(e)] a plurality of light extracting deformities on
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`at least one of said sides, said deformities having shapes for controlling an output ray
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`angle distribution of emitted light to suit a particular application, and [1(f)] a
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`transparent substrate overlying at least one of said sides, said substrate providing an
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`exterior portion of a vehicle for vehicle illumination at said exterior portion.
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`25. Dependent claims 4-6, 9, and 31 recite additional features, including requiring
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`that: the substrate “is positioned against said light guide” (claim 4), “covers” at least
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`one side of the light guide (claim 5), or “provides protection for the light guide”
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`(claim 31); the “deformities are at least one of depressions and raised surfaces on at
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`least one of said sides” (claim 6); and the “light emitting diodes are attached to a
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`circuit” (claim 9).
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`PAGE 10 OF 42
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`VI. Explanation of the References
`A.
`Katase, Japanese Laid-Open Utility Model Application No. JP H5-
`25602U
`I understand that Katase is a Japanese utility model application published on
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`26.
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`April 2, 1993. My opinions are based on my review of a certified English-language
`
`translation of Katase, which has been marked as Exhibit 1004.
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`27. Katase is titled “Vehicle lamp,” and describes a “vehicle lamp wherein plural
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`optical fibers, each of which is integrally provided with a light source at one end, are
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`arranged in a planar shape, a total reflection step for reflecting light transmitted
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`through the inside of the optical fiber to the front is provided in a rear surface of each
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`of the optical fibers to constitute a light source unit, the light source unit is mounted
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`in a lamp body, and a lens is disposed at a front position.” Ex. 1004, Katase at 3:3-8.
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`28. Katase’s vehicle lamp is depicted, for example, in Figures 1 and 5, below. As
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`shown, the lamp includes optical fibers 31, which include reflection steps 35 on a rear
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`surface of the optical fibers 31 to reflect light from light emitting diodes 33 to a front
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`of optical fibers 31. See Ex. 1004, Katase at 9 § [0009]. The optical fibers 31 of Katase
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`constitute a “light guide.”
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`29. As illustrated in FIG. 4 (annotated below), each optical fiber 31 includes two
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`opposite sides—a first surface including reflection steps 35 and a second surface
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`opposing the first surface through which light from light emitting diodes 33 exits the
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`optical fiber 31.
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`30.
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`In Katase, “[a]n end of [] each optical fiber 31 for constituting the optical fiber
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`structure is disposed to face a vertically extended printed board 32, and a number of
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`light emitting devices (LED devices) 33 mounted in the printed board 32 are each
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`embedded in an end of the each optical fiber 31.” Ex. 1004, Katase at 8 § [0007]. The
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`“end” of each optical fiber is a “light input surface,” with LEDs positioned along the
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`input surface, as shown in annotated Figure 4 above and annotated Figures 3 and 5,
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`below. Further, as illustrated in Figure 3, the LEDs 33 are “mounted in [a] printed
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`board 32.” Id. at 8 § [0007]. A POSITA would understand Katase’s “printed board” to
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`be a printed circuit board.
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`31. Light from the LEDs is received through the end of the optical fiber 31, and is
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`conducted for emission of the light out of the output surface of the optical fiber and
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`out through the outer lens 2. See Fig. 5, above.
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`32. A POSITA would understand that the reflecting steps 35 are “deformities” in
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`the shape of notches or depressions, as shown in Figure 5. More specifically, each
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`reflecting step 35 includes an inclined surface, thereby forming a prismatic device for
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`controlling an output ray angle distribution of emitted light to suit a particular
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`application—specifically, the vehicle lamp application to which Katase is directed. See
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`Ex. 1004, Katase at 9-10 §§ [0009]-[0010] (light is “sequentially reflected” by steps 35,
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`and accordingly, “the vehicle lamp can be configured as a thin lamp”).
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`33. Katase’s outer lens 2 (shown above in FIG. 5) is a “transparent substrate,”
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`which overlies and covers the output surface of the optical fiber 31. Moreover,
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`because the lens 2 is an “outer lens” of an automobile rear lamp, a POSITA would
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`understand that the lens provides an exterior portion of the vehicle for vehicle
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`illumination. See Ex. 1004, Katase at 7-8 § [0006] (“invention is applied to the rear
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`lamp of an automobile” and “2 denotes an outer lens that is mounted on a front edge
`
`of the lamp body 1”). A POSITA would understand that the lens 2 of Katase would
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`provide protection to the optical fibers 31 against, for example, dust, impact,
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`scratching, or precipitation. Such protection is important because a POSITA would
`
`understand that a scratch or other damage to the optical fiber 31 may change the light
`
`output distribution of the fiber.
`
`B.
`Pristash, U.S. Patent No. 5,005,108
`I understand that U.S. Patent No. 5,005,108 (Ex. 1007, “Pristash”) issued on
`
`34.
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`April 2, 1991. Pristash is titled “Thin Panel Illuminator,” and lists Jeffery Parker (the
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`named inventor of the ’956 patent) as a co-inventor.
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`35.
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`Pristash describes a number of features later described in the ’956 patent, such
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`as a solid transparent panel member for conducting light and an extractor means (e.g.,
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`film, coating, or lens) for causing light conducted by the panel member to be emitted
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`along the length thereof. See Ex. 1007, Pristash at 1: 6-10; Fig. 7 (below). The panel
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`member directs light in a direction determined by its boundaries, whereas the
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`extractor causes the light to be emitted from the wave guide. See Ex. 1007, Pristash at
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`6: 64-7:8. These are the same features described in the ’956 patent. Compare with
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`Ex. 1001, ’956 patent at FIG. 4 (depicting a lens or film covering a panel member).
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`36. Referring to FIG. 7 (reproduced above), Pristash discloses a light emitting
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`panel 50 including a panel prismatic surface 52 (i.e., light transmitting panel member)
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`and a prismatic film 60 (i.e., lens or film) that covers the panel prismatic surface 52
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`and is attached to an upper surface of the panel prismatic surface 52 by epoxy 61. See
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`Ex. 1007, Pristash at 5:22-33. The prismatic film 60 is used to “shift the angular
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`emission of light toward a particular application.” See id. at 5:22-25.
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`Pristash, Fig. 8
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`
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`37.
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`In another embodiment, Pristash at FIG. 8 (reproduced above) discloses a thin
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`panel illuminator 61 including “a light emitting panel 62 and a transition device 63 for
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`transmitting light from a light source 64 . . . to [a] panel input surface (end edge) 66.”
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`Id. at 5:36-40. The light emitting panel 62 includes a laminated structure with a solid
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`transparent wave guide 67 and extractor 68 joined together by an adhesive layer 69.
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`See id. at 5:40-44. Alternatively, the extractor 68 may be joined to the wave guide 67
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`by various other methods including clamping, fastening, heat sealing and solvent
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`gluing. See id. at 5:51-56.
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`38. Light (shown with an arrow in FIG. 8 above) that enters the wave guide 67
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`from the transition device 63 is internally reflected until the light strikes the wave
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`guide-extractor interface 70 and is emitted from the thin panel illuminator 61. See id.
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`at 5:44-48. The extractor 68 may consist of one or more coatings applied directly to
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`selected areas of the top or bottom surfaces of the wave guide 67. Id. at 5:51-56.
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`C.
`Shinkai, Japanese Utility Model Publication No. JP H1-92004U
`I understand that Shinkai is a Japanese utility model application document
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`39.
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`published on June 16, 1989, in the Japanese language. My opinions are based on my
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`review of a certified English-language translation of Shinkai, marked as Exhibit 1006.
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`40.
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`Shinkai is titled “Vehicle lamp,” and relates specifically to “a vehicle lamp in
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`which a light guiding space of a substantially L-shaped sectional configuration . . .
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`consist[s] of a front space situated in front of a light source and a side space by the
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`side thereof is formed by a lamp body and a front surface lens, wherein a stippling
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`light guide plate is arranged in the side space.” Ex. 1006, Shinkai at 2:6-10.
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`41.
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`In FIG. 7, Shinkai depicts a known vehicle light assembly in which light from
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`bulb 6 enters light guiding plate 4—i.e., a light guide—and travels toward a distal end
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`portion 4b, and the light attenuates as the light approaches the distal end portion 4b.
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`See Ex. 1006, Shinkai at 2:21-3:15. Shinkai is designed to avoid this attenuation, in
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`order to provide sufficient light and uniform illumination to a side portion of the
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`vehicle (i.e., around the corner of the vehicle). Shinkai accomplishes this by
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`increasing the density of stipples 16 (see FIG. 3(b) below) from a front space 12a to a
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`forward end portion of the side space 12b. See id. at 5:15-6:3.
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`Shinkai, Figs. 7 and 3(b)
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`
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`42. A POSITA would recognize the stipples of Shinkai as deformities, in the form
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`of depressions, which control the output ray angle distribution of emitted light to suit
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`a particular application—i.e., the vehicle lamp application to which Shinkai is directed.
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`See, e.g., Ex. 1006, Shinkai at 4:3-16 (stippling distribution makes it “possible to
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`uniformly illuminate the entire [L-shaped-vehicle] lamp”).
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`43.
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`In Shinkai, an outer lens 10 overlies and covers the light guiding plate 14, as
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`shown in FIG. 1 (reproduced below). Further, a POSITA would recognize that the
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`lens 10 of Shinkai would provide protection to the light guiding plate 14 against, for
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`example, dust, impact, scratching, or precipitation. Such protection is important
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`because a scratch or other damage to the light-guiding plate 14 may change the light
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`output distribution of the plate.
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`Shinkai, Fig. 1
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`
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`VII. Obviousness Combinations
`A. Obviousness of combining the teachings of Katase and Pristash to
`position a lens “against” a light guide
`It would have been obvious to a POSITA to combine the teachings of Katase
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`44.
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`and Pristash to position the lens of Katase “against” the light guide (i.e., optical
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`fibers 31), as disclosed in Pristash.
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`45. Katase teaches the advantages of “thinning” a vehicle lamp. See Ex. 1004,
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`Katase at 6:5; 7:1-2 (“object of the invention is to provide a vehicle lamp that is
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`thinned”); 10:3-5 (“compared to a lamp in which a bulb is used as the light source, the
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`vehicle lamp can be configured as a thin lamp”). Accordingly, Katase suggests and
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`motivates minimizing the thickness of the combined lens and light-guide assembly. In
`
`view of those teachings, it would have been an obvious design choice to a POSITA
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`simply to position Katase’s light-guide optical fibers 31 and lens 2 “against” each
`
`other—which would result in the thinnest and most space-saving configuration.
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`46.
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`Further, as noted above in Section VI.B, Pristash at FIG. 7 discloses a light
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`emitting panel 50 made up of a second prismatic film 60 (“substrate”) that may be
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`directly connected with a panel prismatic surface 52 (“light guide”) via an epoxy 61.
`
`See also Ex. 1007, Pristash at 5:22-33. Likewise, FIG. 8 of Pristash discloses a light
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`emitting panel 62 including a laminated structure with a solid transparent wave guide
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`67 (“light guide”) and extractor 68 (“substrate”) joined together by an adhesive
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`layer 69, or by methods including clamping, fastening, heat sealing and solvent gluing.
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`Id. at 5:36-56. As discussed above, Pristash discloses that these panel illuminators are
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`“less expensive to make and and/or provide for better control over light output from
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`the panel” than generally known light emitting panels. See id. at 1:10-14.
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`47.
`
`It would have been obvious from the teachings in Pristash (as well as from the
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`level of ordinary skill in the art) to position the optical fibers 31 (“light guide”) and
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`outer lens 2 (“substrate”) of Katase “against” each other, both to maximize thinness
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`(as taught by Katase) and to achieve the light-output-control improvements and cost
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`savings touted in Pristash. The combination would have been a simple substitution of
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`one known element (i.e., separate light guide and substrate as disclosed in Katase) for
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`another (i.e., cover “against” the light guide as disclosed in Pristash) to obtain
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`predictable results of thinner design, increased mechanical stability, and control of a
`
`desired light output. See Ex 1007, Pristash at 1:10-14.
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`PAGE 19 OF 42
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`B. Obviousness of combining the teachings of Shinkai and Katase to
`use an LED light source
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`48. As discussed above in Section VI.C, Shinkai discloses a light emitting assembly
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`for vehicle illumination, including a bulb 13 and an auxiliary bulb 18. Shinkai does not
`
`specify whether either bulb 13 or 18 is a light emitting diode (LED); however, it
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`would have been obvious for a POSITA to use an LED, such as described, e.g., in
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`Katase.
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`49.
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`It was well known to a POSITA that LED light sources offered advantages
`
`over other light sources. For example, LEDs operate at a substantially lower
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`temperature than incandescent and other light sources, and have a substantially longer
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`lifetime. Moreover, a POSITA understood that LEDs advantageously can be
`
`designed to emit only visible light wavelengths, unlike incandescents, which may emit
`
`some visible wavelengths but mainly emit infrared wavelengths. Katase specifically
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`discloses that using LEDs ameliorates the “large heating value of an incandescent
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`bulb or the like.” See Ex. 1004, Katase at 6§ [0003], 10 § [0010]. A POSITA would
`
`have been motivated to achieve the advantages of LEDs in the lamp of Shinkai, and it
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`would have been obvious to a POSITA to use the LEDs of Katase in the light system
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`of Shinkai to achieve those advantages.
`
`C. Obviousness of combining the teachings of Shinkai, Katase, and
`Pristash to position a lens “against” a light guide
`It would have been obvious to a POSITA to combine the teachings of Shinkai
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`50.
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`and Katase (as combined in Section B, above) further with the teachings of Pristash to
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`position the lens of the combined Shinkai/Katase system “against” the light guide
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`(i.e., the plate of Shinkai), as disclosed in Pristash.
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`51. Katase teaches the advantages of “thinning” a vehicle lamp. See Ex. 1004,
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`Katase at 6:5; 7:1-2 (“object of the invention is to provide a vehicle lamp that is
`
`thinned”); 10:3-5 (“compared to a lamp in which a bulb is used as the light source, the
`
`vehicle lamp can be configured as a thin lamp”). Accordingly, Katase suggests and
`
`motivates minimizing the thickness of the combined lens and light-guide assembly. In
`
`view of those teachings and the knowledge of a POSITA, it would have been an
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`obvious design choice to a POSITA simply to position Shinkai’s plate and lens
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`“against” each other—which would result in the thinnest and most space-saving
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`configuration.
`
`52.
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`Further, as noted above in Section VI.B, Pristash at FIG. 7 discloses a light
`
`emitting panel 50 made up of a second prismatic film 60 (“substrate”) that may be
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`directly connected with a panel prismatic surface 52 (“light guide”) via an epoxy 61.
`
`See also Ex. 1007, Pristash at 5:22-33. Likewise, FIG. 8 of Pristash discloses a light
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`emitting panel 62 including a laminated structure with a solid transparent wave guide
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`67 (“light guide”) and extractor 68 (“substrate”) joined together by an adhesive
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`layer 69, or by methods including clamping, fastening, heat sealing and solvent gluing.
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`Id. at 5:36-56. As discussed above, Pristash discloses that these panel illuminators are
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`“less expensive to make and and/or provide for better control over light output from
`
`the panel” than generally known light emitting panels. See id. at 1:10-14.
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`PAGE 21 OF 42
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`53.
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`It would have been obvious from the teachings in Pristash (as well as from the
`
`level of ordinary skill in the art) to position the plate and lens of Shinkai (as modified
`
`by Katase to have an LED) “against” each other, both to maximize thinness (as
`
`taught by Katase) and to achieve the light-output-control improvements and cost
`
`savings touted in Pristash. The combination would have been a simple substitution of
`
`one known element (i.e., separate light guide and lens as disclosed in Shinkai) for
`
`another (i.e., cover “against” the light guide as disclosed in Pristash) to obtain
`
`predictable results of thinner design, increased mechanical stability, and control of a
`
`desired light output. See Ex 1007, Pristash at 1:10-14.
`
`VIII. Secondary Considerations of Obviousness
`54.
`I have not seen any evidence of so-called secondary considerations that would
`
`support a determination of non-obviousness of the claimed subject matter in the ’956
`
`patent.
`
`55. The invention claimed in the ’956 patent did not achieve any unexpected
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`results. Rather, the claimed invention merely recites a combination of known
`
`elements, with the combination achieving no more than predictable results.
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`PAGE 22 OF 42
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`I understand that this declaration will be filed as evidence in a contested case
`
`before the Patent Trial and Appeal Board of the United States Patent and Trademark
`
`Office. I acknowledge that I may be subject to cross-examination in the case, and that
`
`cross-examination will take place in the United States. If cross-examination is required
`
`of me, 1 will appear for cross-examination within the United States during the time
`
`allotted for cross-examination.
`
`I hereby declare that all statements made herein of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`(M 54
`lixeeuted March 19, 2015, in |city, state, ountry]
`
`
`Attachments:
`
`’itae ofjohn 1.. West, Ph.D.
`Art. A: Curriculu
`:\tt. B: Materials ,onsidcred
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`PAGE 23 OF 42
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`PAGE 23 OF 42
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`APPENDIX A
`
`APPENDIX A
`
`PAGE 24 OF 42
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`PAGE 24 OF 42
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`

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`(cid:45)(cid:82)(cid:75)(cid:81) (cid:47)(cid:68)(cid:90)(cid:87)(cid:82)(cid:81) (cid:58)(cid:72)(cid:86)(cid:87)
`
`(cid:55)(cid:85)(cid:88)(cid:86)(cid:87)(cid:72)(cid:72) (cid:51)(cid:85)(cid:82)(cid:73)(cid:72)(cid:86)(cid:86)(cid:82)(cid:85) (cid:82)(cid:73) (cid:38)(cid:75)(cid:72)(cid:80)(cid:76)(cid:86)(cid:87)(cid:85)(cid:92)
`(cid:46)(cid:72)(cid:81)(cid:87) (cid:54)(cid:87)(cid:68)(cid:87)(cid:72) (cid:56)(cid:81)(cid:76)(cid:89