UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`
`Patent Owner
`
`______________
`
`Case No.: IPR2015-00896
`Patent No. 6,886,956
`Title: Light Emitting Panel Assemblies for
`Use in Automotive Applications and the Like
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,886,956
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`

`
`Table of Contents
`Introduction .................................................................................................................... 1 
`
`I. 
`
`II.  Grounds for Standing ................................................................................................... 1 
`
`III. 
`
`Identification of Challenge ........................................................................................... 1 
`
`A.  Overview of the ’956 patent ............................................................................. 1 
`
`1. 
`
`2. 
`
`3. 
`
`The ’956 patent specification ............................................................... 2 
`
`The ’956 patent claims ........................................................................... 3 
`
`The ’956 patent prosecution history ................................................... 4 
`
`Claim construction of the challenged claims ................................................. 5 
`
`Level of skill in the art ....................................................................................... 6 
`
`Statement of precise relief requested for each claim challenged ................ 7 
`
`1. 
`
`2. 
`
`Claims for which review is requested .................................................. 7 
`
`Statutory grounds of challenge ............................................................. 7 
`
`B. 
`
`C. 
`
`D. 
`
`IV.  Detailed Explanation of the Challenge ...................................................................... 8 
`
`A.  Ground 1: Claims 1, 5, 6, 9 and 31 are unpatentable as anticipated
`under 35 U.S.C. § 102(b) by JP ’602 ............................................................... 8 
`
`1. 
`
`2. 
`
`Brief overview of JP ’602 ...................................................................... 8 
`
`Claims 1, 5, 6, 9 and 31 are anticipated by JP ’602 ........................... 8 
`
`B. 
`
`Ground 2: Claim 4 is unpatentable as obvious under 35 U.S.C.
`§ 103(a) over JP ’602 (Ex. 1004) in view of Pristash (Ex. 1007) .............. 17 
`
`1. 
`
`2. 
`
`Brief overview of Pristash ................................................................... 17 
`
`Claim 4 would have been obvious over JP ’602 in view of
`Pristash ................................................................................................... 20 
`
`C. 
`
`Ground 3: Claims 1, 5, 6, 9 and 31 are unpatentable as obvious
`under § 103(a) over JP ’004 in view of JP ’602 ........................................... 23 
`
`i
`
`

`
`1. 
`
`2. 
`
`Brief overview of JP ’004 .................................................................... 23 
`
`Claims 1, 5, 6, 9 and 31 of the ’956 patent are invalid as
`obvious over JP ’004 in view of JP ’602 ........................................... 25 
`
`D.  Ground 4: Claim 4 would have been obvious under 35 U.S.C. §
`103(a) over JP ’004 and JP ’602 in view of Pristash ................................... 32 
`
`V.  Mandatory Notices ...................................................................................................... 33 
`
`A. 
`
`B. 
`
`C. 
`
`Real party in interest ........................................................................................ 33 
`
`Related matters ................................................................................................. 33 
`
`Lead and backup counsel, and service information ................................... 34 
`
`VI. 
`
`Payment of Fees ........................................................................................................... 35 
`
`VII.  Conclusion .................................................................................................................... 35 
`
`ii
`
`

`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................................... 22, 33
`
`Federal Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 7, 8, 17, 23
`
`35 U.S.C. § 103 ................................................................................................................... passim
`
`35 U.S.C. § 112 ........................................................................................................................... 6
`
`35 U.S.C. § 311 .................................................................................................................... 7, 35
`
`Regulations
`
`37 C.F.R. § 42.8(b)(3) .............................................................................................................. 34
`
`37 C.F.R. § 42.8(b)(4) .............................................................................................................. 34
`
`37 C.F.R. § 42.15 ..................................................................................................................... 35
`
`Board Authority
`
`Panel Claw Inc. v. Sunpower Corp.,
`Paper 7 at 7, IPR2014-00386 (June 30, 2014) ................................................................. 5
`
`
`
`
`
`iii
`
`

`
`
`
`Exhibit List
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 6,886,956 (“the ’956 patent”)
`
`File History of U.S. Patent No. 6,886,956
`
`JP H5-25602U
`
`Certified Translation of JP ’602 (“Katase” or “JP ’602”)1
`
`JP H1-92004U
`
`Certified Translation of JP ’004 (“Shinkai” or “JP ’004”)2
`
`U.S. Patent No. 5,005,108 to Pristash et al. (“US ’108” or “Pristash”)
`
`Reserved
`
`Reserved
`
`Declaration of Dr. John West
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`
`1 Petitioner’s citations to “JP ’602” throughout this petition refer to Exhibit 1004, the
`
`certified translation.
`
`2 Petitioner’s citations to “JP ’004” throughout this petition refer to Exhibit 1006, the
`
`certified translation.
`
`iv
`
`

`
`I.
`
`Introduction
`
`Petitioner Toyota Motor Corporation (“Petitioner”) requests Inter Partes Review
`
`(“IPR”) of claims 1, 4-6, 9, and 31 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 6,886,956 (“the ’956 patent”) (Ex. 1001). The applied references and
`
`asserted grounds in this petition are substantially identical to those presented in the
`
`petition for IPR in co-pending case no. IPR2015-00575, filed by Koito Manufacturing
`
`Co., Ltd., and Stanley Electric Co., Ltd., on January 15, 2015. However, additional
`
`evidence, including the declaration of Dr. West, is presented.
`
`II. Grounds for Standing
`Petitioner certifies that the ’956 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting IPR of the Challenged Claims on the grounds
`
`identified herein.
`
`III.
`
`Identification of Challenge
`A. Overview of the ’956 patent
`
`The ’956 patent, titled “Light Emitting Panel Assemblies for Use in
`
`Automotive Applications and the Like,” was filed on November 18, 2002, as U.S.
`
`Application No. 10/298,367, a continuation of Application No. 10/005,090 (filed
`
`Dec. 5, 2001), now Pat. No. 6,508,563, which is a continuation of Application No.
`
`09/703,088 (filed Oct. 31, 2000), now U.S. Patent No. 6,367,940, which is a
`
`continuation of Application No. 09/167,949 (filed Oct. 7, 1998), now U.S. Patent
`
`No. 6,158,867, which is a division of Application No. 08/585,062 (filed Jan. 16, 1996),
`
`1
`
`

`
`now U.S. Patent No. 5,895,115. The earliest priority date to which the ’956 patent may
`
`be entitled is January 16, 1996.
`
`1.
`The ’956 patent relates to light emitting panel assemblies for use in automotive
`
`The ’956 patent specification
`
`applications. Ex. 1001, ’956 patent at 1:18-20. The ’956 patent acknowledges that
`
`“[l]ight emitting panel assemblies are generally known,” and purports to provide
`
`improvements over such known assemblies. Id. at 1:24-27.
`
`The ’956 patent describes examples of “light emitting panel assemblies 24 [that]
`
`are mounted in body panels 25 along the rear, front and/or sides of a vehicle to
`
`provide vehicle running lights or accent lights or to light a logo, step, running board,
`
`or other surface area of a vehicle,” as illustrated in Figure 4 (reproduced below),
`
`which is a cross-sectional view of Figure 3. Id. at 8:33-41. The ’956 patent states that
`
`“these panel members 29 may form the exterior surface of the body panel 25 as
`
`shown at the left hand side of FIG. 4 or a lens or film 34 [highlighted below in
`
`green] may cover the panel members as shown at the right hand side of FIG. 4.”
`
`Id. at 9:8-12 (emphases added).
`
`According to the patent, “light sources” (9) [highlighted below in red] may be
`
`positioned “along the back edges of the panel members 29 [highlighted below in yellow]
`
`used to provide running taillights for a vehicle.” Id. at 8:60-67. The light sources may
`
`be “embedded, potted or bonded in the light transition regions of the panels,”
`
`“mechanically held in place by a holder . . . in a slot in an edge of the panel member,”
`
`2
`
`

`
`or “a fiber optic light pipe 64 [may be used] for transmitting light to the panel
`
`member from a remote light source 65.” Id. at 9:13-22.
`
`’956 Patent, Fig. 4 (annotated)
`
`
`
`Light enters the panel members 28, 29 from the light transition regions 10, and the
`
`light is “emitted along the entire length of the panel members or from one or more
`
`light output surface areas along their length . . . to produce a desired light output
`
`distribution to fit a particular application.” Ex. 1001 at 4:59-65.
`
`Further, according to the ’956 patent, deformities or disruptions are formed on
`
`at least one surface of the panel member to cause the light to be emitted. Id. at 5:38-
`
`41. The deformities are angled in such a way that when the light strikes one or more
`
`deformities, it is reflected with an angle great enough that the light exits the panel
`
`member. Id. at 5:45-52.
`
`2.
`Exemplary claim 1 recites [1(a)] a light emitting assembly for vehicle
`
`The ’956 patent claims
`
`illumination comprising: [1(b)] a light guide having opposite sides [1(c)] and at least
`
`one light input surface along at least one edge of said light guide, one or more light
`
`emitting diodes along said light input surface for receiving light from said light
`
`3
`
`

`
`emitting diodes and [1(d)] conducting the light from said edge for emission of the
`
`light from at least one of said sides, [1(e)] a plurality of light extracting deformities on
`
`at least one of said sides, said deformities having shapes for controlling an output ray
`
`angle distribution of emitted light to suit a particular application, and [1(f)] a
`
`transparent substrate overlying at least one of said sides, said substrate providing an
`
`exterior portion of a vehicle for vehicle illumination at said exterior portion.
`
`Dependent claims 4-6, 9, and 31 recite additional features, including requiring
`
`that: the substrate “is positioned against said light guide” (claim 4), “covers said at
`
`least one of said sides” (claim 5), or “provides protection for the light guide” (claim
`
`31); the “deformities are at least one of depressions and raised surfaces on at least one
`
`of said sides” (claim 6); and the “light emitting diodes are attached to a circuit”
`
`(claim 9).
`
`3.
`Mr. Parker filed U.S. Patent Application No. 10/298,367 for the eventual ’956
`
`The ’956 patent prosecution history
`
`patent on November 18, 2002, with fifty-two claims. Following a restriction
`
`requirement, Mr. Parker elected to prosecute claims 1-25. Ex. 1002 at 245.
`
`The examiner initially rejected claims based on Mr. Parker’s earlier U.S. Patent
`
`No. 5,613,751 (filed June 27, 1995), and Mr. Parker filed a terminal disclaimer to
`
`overcome the rejection. Id. at 165, 237-238.
`
`In response to two subsequent office actions, Mr. Parker (1) amended
`
`independent claim 1 to recite “light emitting diodes” instead of “a plurality of closely
`
`4
`
`

`
`spaced light sources,” (2) added that “said substrate provid[es] an exterior portion of a
`
`vehicle for vehicle illumination at said exterior portion,” (3) added that the light guide
`
`has “opposite sides” and a light input surface “along at least one edge of [the] light
`
`guide,” and also (4) added that the light emitting diodes are along the light input
`
`surface “for receiving light from said light emitting diodes and conducting the light
`
`from said edge for emission of the light from at least one of said sides.” Id. at 20, 31,
`
`118. After the amendments, the Examiner allowed the claims. Id. at 10.
`
`B.
`
`Claim construction of the challenged claims
`
`Any final written decision in IPR will occur after the ’956 patent expires on
`
`June 27, 2015, in view of the terminal disclaimer filed during prosecution. Id. at 110.
`
`Accordingly, the claims of the ’956 patent “generally [should be] given their ordinary
`
`and customary meaning, as understood by a person of ordinary skill in the art, at the
`
`time of the invention, taking into consideration the language of the claims, the
`
`specification, and the prosecution history of record because the expired claims are not
`
`subject to amendment.” See Panel Claw Inc. v. Sunpower Corp., Paper 7 at 7, IPR2014-
`
`00386 (June 30, 2014).
`
`Claim 1 of the ’956 patent requires the panel members to include “light
`
`extracting deformities” having shapes for controlling an output ray angle distribution
`
`of emitted light to suit a particular application. The ’956 patent expressly defines the
`
`term “deformities” 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
`
`5
`
`

`
`emitted.” Ex. 1001 at 5:42-45. Consistent with this definition, “light extracting
`
`deformities” should be construed to mean any change in the shape or geometry of the
`
`light guide surface and/or a coating or surface treatment on the light guide surface
`
`that causes a portion of the light to be emitted.
`
`For purposes of IPR only, Petitioner accepts that the remaining claim terms of
`
`the ’956 patent assume the ordinary and customary meaning, consistent with the
`
`specification, that they would have to one of ordinary skill in the art at the time of the
`
`alleged invention, and Petitioner does not contend that any remaining claim term
`
`requires specific construction.3
`
`C.
`
`Level of skill in the art
`
`The level of skill in the art is apparent from the cited art. Further, a person of
`
`ordinary skill in the art (“POSITA”) 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. Ex. 1010, West Decl. ¶ 13. Based on the filing date of the ’956 patent, the
`
`relevant timeframe is prior to January 16, 1996, which is the earliest priority filing date
`
`
`3 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
`
`Petitioner will present any indefiniteness arguments in other proceedings.
`
`6
`
`

`
`for the ’956 patent, and the analysis herein pertains to that timeframe unless otherwise
`
`stated.
`
`D.
`
`Statement of precise relief requested for each claim challenged
`1.
`Petitioner requests IPR under 35 U.S.C. § 311 of claims 1, 4-6, 9, and 31 of the
`
`Claims for which review is requested
`
`’956 patent and cancellation of these claims as unpatentable.
`
`2.
`Petitioner requests that claims 1, 4-6, 9, and 31 be canceled as unpatentable
`
`Statutory grounds of challenge
`
`under 35 U.S.C. §§ 102 and/or 103 for the following reasons:
`
`Ground 1. Claims 1, 5, 6, 9 and 31 are anticipated under § 102(b) by JP ’602
`
`(Ex. 1004).
`
`Ground 2. Claim 4 is invalid under 35 U.S.C. § 103 as obvious over JP ’602
`
`(Ex. 1004) in view of Pristash (Ex. 1007).
`
`Ground 3. Claims 1, 5, 6, 9 and 31 are invalid under 35 U.S.C. § 103(a) as
`
`obvious over JP ’004 (Ex. 1006) in view of JP ’602 (Ex. 1004).
`
`Ground 4. Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious over
`
`JP ’004 (Ex. 1006) and JP ’602 (Ex. 1004) and further in view of Pristash (Ex. 1007).
`
`Petitioner details the reasons for unpatentability and specific evidence
`
`supporting this petition below.
`
`7
`
`

`
`IV. Detailed Explanation of the Challenge
`A. Ground 1: Claims 1, 5, 6, 9 and 31 are unpatentable as anticipated
`under 35 U.S.C. § 102(b) by JP ’602
`1.
`Japanese Laid-Open Utility Model Application No. JP H5-25602U (Ex. 1004,
`
`Brief overview of JP ’602
`
`“Katase” or “JP ‘602”) published on April 2, 1993, and is prior art under 35 U.S.C.
`
`§ 102(b).
`
`As shown in FIGS. 1 and 5 (reproduced below), JP ’602 discloses a vehicle
`
`lamp using several optical fibers 31 arranged in a planar shape. The optical fibers 31
`
`include reflection steps 35 on a rear surface of the optical fibers 31 to reflect light
`
`from light emitting diodes 33 to a front of the optical fibers 31. See Ex. 1004, JP ’602
`
`¶ [0009].
`
`JP ’602, Figs. 1 (left) and 5 (right) (annotated)
`2.
`As detailed in the discussion and claim charts below, JP ’602 discloses all the
`
`Claims 1, 5, 6, 9 and 31 are anticipated by JP ’602
`
`
`
`limitations of claims 1, 5, 6, 9 and 31. JP ’602 discloses a vehicle lamp assembly
`
`8
`
`

`
`including a plurality of optical fibers 31 corresponding to the claimed “light guide.”
`
`Referring to annotated FIG. 4 (reproduced below), each optical fiber 31 includes at
`
`least two surfaces, a first surface including reflection steps 35 and a second surface
`
`opposing the first surface through which light from light emitting diodes 33 exits the
`
`optical fiber 31. The two above-described surfaces correspond to the claimed
`
`“opposite sides” of the light guide.
`
`JP ’602, Fig. 4 (annotated)
`
`
`
`Referring to annotated FIGS. 3 and 5, below, JP ’602 discloses an unnumbered
`
`surface (corresponding “a light input surface” in the annotated FIG. 4 above),
`
`provided between a transparent short column 34 and a corresponding optical fiber 31
`
`along at least one edge of the optical fiber 31. See Ex. 1004, JP ’602 ¶ [0007]; FIG. 4.
`
`The light from light emitting diodes 33 enters the corresponding optical fiber 31
`
`through the “light input surface” provided between the transparent short column 34
`
`and the corresponding optical fiber 31. Light emitting diodes (LEDs) 33 are provided
`
`9
`
`

`
`along the unnumbered surface (“light input surface”). The “light input surface”
`
`receives light from these LEDs and conducts the light from the edge of the optical
`
`fiber for emission of the light from the second surface described above as the surface
`
`opposing the surface with reflection steps 35, and as shown below in FIG. 5 with the
`
`arrows being emitted therefrom . As shown in FIG. 3 below, the light emitting diodes
`
`33 are connected to a printed board 32. See Ex. 1004, JP ’602 ¶ [0007]. A person
`
`having ordinary skill would understand that a printed board 32 is a printed circuit
`
`board (claim 9). See Ex. 1010, West Decl. ¶ 30.
`
`JP ’602, Figs. 5 (left) and 3 (right) (annotated)
`
`
`
`The reflecting steps 35 are “deformities” in the form of notches “depressions”
`
`(claim 6) formed in the optical fibers 31, as shown in FIG. 5. See Ex. 1019, West Decl.
`
`¶ 32. Each reflecting step 35 includes an inclined surface thereby forming a prismatic
`
`device for controlling an output ray angle distribution of emitted light to suit a
`
`particular application. See Ex. 1004, JP ’602 ¶ [0008]. JP ’602 also discloses a lens 2
`
`(shown above in FIG. 5) corresponding to the claimed “transparent substrate,” which
`
`10
`
`

`
`overlies and covers the second surface of the optical fiber 31 (claims 1, 2 and 5). See
`
`Ex. 1019, West Decl. ¶ 33. The lens 2 is an outer lens of an automobile rear lamp and
`
`therefore provides an exterior portion of the vehicle for vehicle illumination. See
`
`Ex. 1004, JP ’602 ¶ [0006].
`
`Referring to FIGS. 1 and 2 reproduced below, FIG. 1 is a partially exploded
`
`perspective view of a rear lamp of an automobile, and FIG. 2 is a perspective view in
`
`an assembled state. Optical fibers 31 are provided between lamp body 1 and outer
`
`lens 2. Outer lens 2 covers and therefore protects light source unit 3 and is the outer
`
`lens of a vehicle stop/tail/turn light device (claim 31). See Ex. 1004, JP ’602 at FIG. 1;
`
`¶ [0006]; Ex. 1019, West Decl. ¶ 33.
`
`JP ’602, Figs. 1-2
`
`
`
`The tables below identify exemplary disclosures in the prior art of each
`
`limitation of claims 1, 5, 6, 9 and 31.
`
`Claim Element
`[1(a)] A light emitting assembly
`for vehicle illumination
`
`Exemplary Prior Disclosure
`“The invention relates to a vehicle lamp device
`and, in particular, to a vehicle lamp device,
`thinning of which is realized.” See Ex. 1004,
`
`11
`
`

`
`Claim Element
`comprising
`
`[1(b)] a light guide having
`opposite sides
`
`Exemplary Prior Disclosure
`JP ’602 ¶ [0001] (emphasis added).
`
`“As partially shown in an enlarged state in Fig. 3,
`the light source unit 3 has an optical fiber
`structure in which a number of optical
`conductors, each of which is formed of a
`transparent resin and has a circular cross section,
`that is, a number of relatively thick optical fibers
`31 of 2 to 6 φ, each of which is formed of an
`acrylic resin or the like, for example, are vertically
`superimposed and integrated by an adhesive or
`the like, so as to have a front shape corresponding
`to the lamp body 1 and the outer lens 2. In this
`embodiment, as shown in Fig. 4, a transparent
`short column 34 in which the LED device 33 is
`integrally embedded is adhered to the end of the
`each optical fiber 31 by a transparent adhesive.”
`See Ex. 1004, JP ’602 ¶ [0007] (emphasis added);
`Ex. 1010, West Decl. ¶ 29.
`
`JP ’602, Fig. 3
`
`
`
`[1(c)] and at least one light input
`
`“An end of the each optical fiber 31 for
`
`JP ’602, Fig. 4 (annotated)
`
`
`
`12
`
`

`
`Claim Element
`surface along at least one edge of
`said light guide, one or more light
`emitting diodes along said light
`input surface for receiving light
`from said light emitting diodes
`and
`
`Exemplary Prior Disclosure
`constituting the optical fiber structure is disposed
`to face a vertically extended printed board 32, and
`a number of light emitting devices (LED devices)
`33 mounted in the printed board 32 are each
`embedded in an end of the each optical fiber 31.”
`See Ex. 1004, JP ’602 ¶ [0007]; Ex. 1010, West
`Decl. ¶ 30.
`
`JP ’602, Fig. 4 (annotated)
`
`JP ’602, Fig. 5 (annotated)
`
`
`
`
`
`[1(d)] conducting the light from
`said edge for emission of the
`light from at least one of said
`sides,
`
` “…and can reflect the portion of the light to a
`front surface side of the optical fiber, that is, to a
`front surface side of the optical fiber structure.”
`See Ex. 1004, JP ’602 ¶ [0008] (emphasis added);
`see id., Figs. 4-5 (reproduced below).
`
`JP ’602, Fig. 4
`
`
`
`13
`
`

`
`Claim Element
`
`Exemplary Prior Disclosure
`
`[1(e)] a plurality of light
`extracting deformities on at least
`one of said sides, said deformities
`having shapes for controlling an
`output ray angle distribution of
`emitted light to suit a particular
`application, and
`
`[1(f)] a transparent substrate
`overlying at least one of said
`sides, said substrate providing an
`exterior portion of a vehicle for
`vehicle illumination at said
`exterior portion.
`
`JP ’602, Fig. 5
`
`
`
`“…on a rear surface of the each optical fiber 31,
`wedge-shaped total reflection steps 35, each
`having an inclined surface inclined at 45 degrees
`with respect to an optical axis, are formed to be
`aligned in a longitudinal direction of the optical
`fiber 31. The total reflection step 35 can totally
`reflect a portion of the light transmitted through
`the inside of the optical fiber 31 by the inclined
`surface, and can reflect the portion of the light to
`a front surface side of the optical fiber, that is, to
`a front surface side of the optical fiber structure.”
`See Ex. 1004, JP ’602 ¶ [0008] (emphasis added);
`Ex. 1010, West Decl. ¶ 32.
`
`“…2 denotes an outer lens that is mounted on a
`front edge of the lamp body 1, and defines a thin
`space in a front-rear direction between the lamp
`body 1 and the outer lens 2. A required diffusion
`step is formed on an inner surface of the outer
`lens 2, and is configured in this embodiment such
`that a number of vertically directed columnar
`steps 21 (see Fig. 5) are disposed in a lateral
`direction, for example.” See Ex. 1004, JP ’602
`¶ [0006] (emphasis added).
`
`“In this embodiment, as shown in Fig. 1 [below],
`the light source unit 3 is configured by two light
`source units 3A, 3B, and the light source unit 3A
`is configured as a stop & tail lamp while the light
`
`14
`
`

`
`Claim Element
`
`Exemplary Prior Disclosure
`source unit 3B is configured as a turn signal lamp.
`Accordingly, the LED device 33 corresponding to
`the stop & tail lamp is configured by a red LED
`while the LED device 33 corresponding to the
`turn signal lamp is configured by a yellow LED.”
`See Ex. 1004, JP ’602 ¶ [0008].
`
`JP ’602, Fig. 1
`
`
`
`“In these drawings, 1 denotes a lamp body that is
`formed by molding a resin or the like in a partially
`curved shallow disc shape and that is configured
`to be attachable and removable along with a
`lateral surface of an automobile body.” See
`Ex. 1004, JP ’602 ¶ [0006] (emphasis added).
`
`See Ex. 1010, West Decl. ¶ 33.
`
`[5(a)] The assembly of claim 1
`
`See [1(a)]-[1(f)]
`
`[5(b)] wherein said substrate
`covers said at least one of said
`sides.
`
`See the outer cover 2 and optical fibers 31 as
`shown in FIG. 1, below.
`
`15
`
`

`
`Claim Element
`
`Exemplary Prior Disclosure
`
`[6(a)] The assembly of claim 1
`
`See [1(a)]-[1(f)]
`
`JP ’602, Fig. 1
`
`
`
`[6(b)]wherein said deformities are
`at least one of depressions and
`raised surfaces on at least one of
`said sides.
`
`“…on a rear surface of the each optical fiber 31,
`wedge-shaped total reflection steps 35, each
`having an inclined surface inclined at 45 degrees
`with respect to an optical axis, are formed to be
`aligned in a longitudinal direction of the optical
`fiber 31. The total reflection step 35 can totally
`reflect a portion of the light transmitted through
`the inside of the optical fiber 31 by the inclined
`surface, and can reflect the portion of the light to
`a front surface side of the optical fiber, that is, to
`a front surface side of the optical fiber structure.”
`See Ex. 1004, JP ’602 ¶ [0008] (emphasis added);
`Ex. 1010, West Decl. ¶ 32.
`
`[9(a)] The assembly of claim 1
`
`See [1(a)]-[1(f)]
`
`[9(b)] wherein said light emitting
`diodes are attached to a circuit.
`
`“An end of the each optical fiber 31 for
`constituting the optical fiber structure is disposed
`to face a vertically extended printed board 32, and
`a number of light emitting devices (LED devices)
`33 mounted in the printed board 32 are each
`embedded in an end of the each optical fiber 31.”
`See Ex. 1004, JP ’602 ¶ [0007] (emphasis added);
`Ex. 1010, West Decl. ¶ 32 (printed circuit board).
`
`[31(a)] The assembly of claim 1
`
`See [1(a)]-[1(f)]
`
`16
`
`

`
`Claim Element
`[31(b)] wherein said substrate
`provides protection for the light
`guide.
`
`Exemplary Prior Disclosure
`See [5(b)]; FIG. 1. See also Ex. 1010, West Decl.
`¶ 33 (POSITA’s understanding of “protection”).
`
`
`
`B. Ground 2: Claim 4 is unpatentable as obvious under 35 U.S.C.
`§ 103(a) over JP ’602 (Ex. 1004) in view of Pristash (Ex. 1007)
`
`Claim 4 is unpatentable under 35 U.S.C. 103(a) as being obvious to a POSITA
`
`over the teachings of JP ’602 in view of the teachings of Pristash.
`
`Ground 2 is non-cumulative to Ground 1 at least because it addresses a
`
`different claim from the claims addressed in Ground 1.
`
`1.
`U.S. Patent No. 5,005,108 (Ex. 1007, “Pristash” or “US ’108”) issued on
`
`Brief overview of Pristash
`
`April 2, 1991, and is prior art under 35 U.S.C. § 102(b).
`
`The first named inventor of the ’956 patent, Jeffery R. Parker, is one of the
`
`named inventors of Pristash. It is therefore not surprising that many of the concepts
`
`in the ’956 patent were previously disclosed by Pristash. For example, Pristash
`
`describes a thin panel illuminator including a solid transparent panel member for
`
`conducting light and an extractor means (i.e., coating, lens or film) for causing light
`
`conducted by the panel member to be emitted along the length thereof. See Ex. 1007,
`
`Pristash at 1: 6-10. The panel member (e.g., film 52 or waveguide 67) directs light in a
`
`direction determined by its boundaries, whereas the extractor means (e.g., prismatic
`
`film 60 or extractor 68) causes the light to be emitted from the wave guide. See
`
`17
`
`

`
`Ex. 1007, Pristash at 6: 64-7:8. These are the same features that the ’956 patent shows
`
`at the right hand side of FIG. 4. Ex. 1007, Pristash at FIG. 4 (i.e., light guide 29 and
`
`substrate 34).
`
`Pristash discloses several different embodiments of a panel illuminator
`
`including a panel member combined with an extractor. The various different panel
`
`illuminators are disclosed as being “less expensive to make and and/or provide for
`
`better control over light output from the panel” than generally known light emitting
`
`panels. See Ex. 1007, Pristash at 1:10-14. The panel illuminators may be used for
`
`“safety lighting for both commercial and industrial, as well as automotive
`
`applications.” See Ex. 1007, Pristash at 8:20-22. Two embodiments of Pristash’s panel
`
`illuminators are discussed below.
`
`Pristash, Fig. 7
`
`
`
`In a first embodiment, Pristash at FIG. 7 (reproduced above) illustrates a light
`
`emitting panel 50 including a solid transparent prismatic film 51 (corresponding to the
`
`recited “light guide”) having a prismatic surface 52 on an upper side and a back
`
`reflector 53 on a lower side. Ex. 1007, Pristash at 5:6-11. Light rays (shown with
`
`arrows) enter the transparent prismatic film 51 from one or both end edges 55, 56,
`
`18
`
`

`
`and are internally reflected until the light rays strike an edge 54 (which Pristash
`
`describes as a “deformity”) of the panel prismatic surfaces 52, causing the light rays to
`
`be emitted. Ex. 1007, Pristash at 5:11-16. A second prismatic film 60 (corresponding
`
`to the recited “substrate”) is disposed in close proximity to the panel prismatic surface
`
`52 to “shift the angular emission of light toward a particular application.” Ex. 1007,
`
`Pristash at 5:22-25 (see claim 4 of the ’956 patent). A gap between the second
`
`prismatic film 60 and the first prismatic film or wave guide 51 can be filled with an
`
`epoxy. See Ex. 1007, Pristash at 5:25-27.
`
`Pristash, Fig. 8
`
`
`
`In a second embodiment, Pristash at FIG. 8 (reproduced above) discloses a
`
`thin panel illuminator 61 including “a light emitting panel 62 and a transition device
`
`63 for transmitting light from a light source 64 . . . to [a] panel input surface (end
`
`edge) 66.” Ex. 1007, Pristash at 5:36-40. The light emitting panel 62 includes a
`
`laminated structure with a solid transparent wave guide 67 and extractor 68 joined
`
`together by an adhesive layer 69. See Ex. 1007, Pristash at 5:40-44 (see claim 4 of the
`
`’956 patent). The extractor 68 may be joined to the wave guide 67 by various other
`
`19
`
`

`
`methods including clamping, fastening, heat sealing and solvent gluing. See Ex. 1007,
`
`Pristash at 5:51-56.
`
`Light (shown with an arrow in FIG. 8 above) that enters the wave guide 67
`
`from the transition device 63 is internally reflected until the light strikes the wave
`
`guide-extractor interface 70 and is emitted from the thin panel illuminator 61. See
`
`Ex. 1007, Pristash at 5:44-48. The extractor 68 may consist of one or more coatings
`
`applied directly to selected areas of the top or bottom surfaces of the wave guide 67.
`
`Ex. 1007, Pristash at 5:51-56. Consistent with the previous embodiment, Pristash
`
`teaches the extractor 68 may vary in frequency, index of refraction, color, and/or
`
`shape along the length of the panel 62. See Ex. 1007, Pristash at 5:57-59.
`
`2.
`
`Claim 4 would have been obvious over JP ’602 in view
`of Pristash
`
`As shown in the charts and discussion below, dependent claim 4 of the ’956
`
`patent would have been obvious to a POSITA under 35 U.S.C. § 103(a) over the
`
`teachings of JP ’602 in view of the t