UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC and
`BMW MANUFACTURING CO., LLC,
`Petitioners,
`
`v.
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 6,886,956
`Case No.: To Be Assigned
`
`DECLARATION OF MICHAEL LEBBY, Ph.D.
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
`
`March 24, 2015
`
`BMW Exhibit 1003
`
`Page 1 of 70
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`

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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`TABLE OF CONTENTS
`
`V.
`
`Page
`Introduction......................................................................................................2
`I.
`Background and Experience............................................................................3
`II.
`III. Materials Reviewed .........................................................................................4
`IV. Guiding Legal Principles.................................................................................6
`A. Person of Ordinary Skill in the Art..................................................................6
`B. Anticipation Invalidity.....................................................................................7
`C. Obviousness Invalidity ....................................................................................8
`D. Claim Construction..........................................................................................9
`Overview of the ʼ956 Patent .......................................................................... 10
`A. The ʼ956 Patent’s Claims .............................................................................. 12
`B. The ʼ956 Patent’s Prosecution History .......................................................... 13
`VI. Claim Construction........................................................................................14
`A. “light extracting deformities” (claim 1) ........................................................14
`VII. The Prior Art’s Disclosure of Each Claimed Element of the ʼ956
`Patent .............................................................................................................15
`A. Decker............................................................................................................15
`B. Wu..................................................................................................................23
`C. Katase.............................................................................................................33
`VIII. Secondary Considerations of Obviousness ...................................................41
`IX. Conclusion .....................................................................................................41
`
`i
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`I, Dr. Michael Lebby, declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I have been retained by BMW North America, LLC and BMW
`
`Manufacturing Co., LLC (collectively, “BMW” or “Petitioners”) as an independent
`
`expert consultant in this proceeding before the United States Patent and Trademark
`
`Office.
`
`2.
`
`I am being compensated at my standard hourly rate of $325 per hour
`
`for the time I spend on this matter. My compensation is not related in any way to
`
`the outcome of this proceeding, and I have no other interest in this proceeding.
`
`3.
`
`I understand that this proceeding involves a petition for inter partes
`
`review of U.S. Patent No. 6,886,956 (“the ʼ956 patent”) (attached as Exhibit 1001
`
`to BMW’s petition).
`
`4.
`
`I have been retained to opine
`
`as
`
`to the patentability (or
`
`unpatentability) of claims 1, 4, 5, 6, 9, and 31 of the ʼ956 patent, including as to
`
`whether certain references would disclose or suggest certain features in those
`
`claims to a person of ordinary skill in the art.
`
`5.
`
`It is my opinion that claims 1, 4, 5, 6, 9, and 31 of the ʼ956 patent are
`
`unpatentable. The substance and bases of my opinions appear below.
`
`2
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`II.
`
`Background and Experience
`
`6.
`
`I am presently the Chief Executive Officer and Chief Technology
`
`Officer of Oculi LLC, which provides international Board level advisory,
`
`consulting,
`
`technological, and business based services in the optoelectronics,
`
`semiconductor, and telecommunications industries.
`
`7.
`
`Since 2013, I have also served as the President and CEO of OneChip
`
`Photonics Corporation, where I focus on both technical and business operations
`
`strategy for
`
`communications-based InP Photonic
`
`Integrated Circuit
`
`and
`
`optoelectronic Integrated Circuit platforms. Prior to becoming President and CEO,
`
`I was an elected independent board member of One Chip since 2008, with a similar
`
`focus.
`
`8.
`
`I am also currently a part-time Professor of Optoelectronics, as well as
`
`the Chair of Optoelectronics, at Glyndŵr University in Wales, United Kingdom.
`
`9.
`
`From 2005 through early 2010, I was the President, CEO, and a Board
`
`Member of the Optoelectronic Industry Development Association, a non-profit
`
`industry trade association for optoelectronics/photonics and a national resource in
`
`the field of optoelectronics.
`
`10.
`
`I received a bachelor’s degree in engineering, with honors, from the
`
`University of Bradford, United Kingdom, in 1984. I went on to obtain an M.B.A.
`
`3
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`from the same university in 1985 and, two years later, earned my Ph.D. there. In
`
`2004, I received a doctor of engineering degree, also from the University of
`
`Bradford.
`
`11.
`
`I have authored numerous publications, and have obtained 200 United
`
`States utility patents, in the field of optoelectronics.
`
`12. A more complete summary of my education and professional
`
`experience can be found in my curriculum vitae, attached as Exhibit A to this
`
`declaration.
`
`III. Materials Reviewed
`
`13.
`
`The opinions set forth in this declaration are based on my education,
`
`my experience, and the following documents, which I reviewed in forming my
`
`opinions.
`
`a.
`
`b.
`
`The ʼ956 patent (attached as Exhibit 1001 to BMW’s petition);
`
`The ʼ956 patent’s prosecution history (attached as Exhibit 1002
`
`to BMW’s petition), including the prior art cited by the examiner during
`
`prosecution;
`
`c.
`
`Unexamined German Patent Specification DE 41 29 094
`
`(“Decker”), published on March 4, 1993 (attached as Ex. 1004 to BMW’s
`
`petition) (with certified translation);
`
`4
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`d.
`
`United States Patent No. 5,165,772 (“Wu”), issued November
`
`4, 1992 (attached as Ex. 1005 to BMW’s petition); and
`
`e.
`
`Japanese Utility Model Application Publication No. JP H5-
`
`25602 (“Katase”), published on April 2, 1993 (with certified translation)
`
`(Ex. 1006 to BMW’s petition).
`
`14.
`
`I am informed that each of Decker, Wu, and Katase is prior art to the
`
`ʼ956 patent.
`
`15.
`
`I have also reviewed various light-emitting diode (“LED”) and optics
`
`books detailing LED and optical design:
`
`a.
`
`Kressel, H. and Butler, J.K., Semiconductor Lasers and
`
`Heterojunction LEDs (Academic Press 1977), ISBN-10#0124125190 (a
`
`classic text book on LED device design and applications from the 1970s);
`
`b.
`
`Hecht, E., Schaum’s Outline of Optics (McGraw-Hill 1974),
`
`ISBN#0-07-027730-3 (a classic text book on optics and optical design also
`
`from the 1970s);
`
`c.
`
`O’Shea, D.C., Elements of Modern Optical Design (Wiley
`
`1985), ISBN-10#0-471-07796-8 (a classic text book on optical design
`
`elements from the 1980s);
`
`5
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`d.
`
`Bergh, A. and Dean, P., Light-emitting Diodes
`
`(Oxford
`
`University Press 1976), ISBN#0198593171 (a classic text book on LEDs
`
`from the 1970s);
`
`e.
`
`Sze, S.M., Physics of Semiconductor Devices (Wiley 1969),
`
`ISBN#471842907 (a classic text book on semiconductor devices including
`
`LEDs from the 1960s); and
`
`f.
`
`Howe, R.L., The Handbook of Plastic Optics (U.S. Precision
`
`Lens 1973) (a text book on plastic optics from the 1970s).
`
`16.
`
`I have also reviewed certain standards documents relating to vehicular
`
`lighting, including various SAE standards.
`
`17.
`
`If the patent owner is allowed to submit additional evidence pertaining
`
`to the patentability of the ʼ956 patent, I intend to review that as well and update my
`
`analysis and conclusions as appropriate and allowed under the rules of this
`
`proceeding.
`
`IV. Guiding Legal Principles
`
`A.
`
`18.
`
`Person of Ordinary Skill in the Art
`
`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 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
`6
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`solutions to these 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
`
`his or her work. I am informed that the relevant timeframe is prior to January 16,
`
`1996, which is the earliest priority filing date for the ‘956 patent, and the opinions
`
`below pertain to that timeframe.
`
`19. A POSITA for the ʼ956 patent would have had 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.
`
`B.
`
`20.
`
`Anticipation Invalidity
`
`I understand that a patent claim is “anticipated,” and therefore invalid,
`
`if a single prior art reference discloses, either 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.
`
`21.
`
`I also understand that under certain circumstances, multiple references
`
`may be used to prove anticipation, specifically to: (a) prove that the primary
`
`7
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`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.
`
`22.
`
`Obviousness Invalidity
`
`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.
`
`23.
`
`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, and the differences between the claimed invention
`
`and the prior art
`
`24.
`
`I understand that a combination of familiar elements according to
`
`known methods may be obvious when it does no more than yield predictable
`
`results.
`
`25.
`
`I also have been advised that common sense and ordinary creativity of
`
`one skilled in the art can be relevant to obviousness.
`
`8
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`26.
`
`I
`
`have
`
`been
`
`additionally
`
`informed
`
`that
`
`certain
`
`secondary
`
`considerations may be relevant to a determination of whether an invention was
`
`obvious. Such secondary considerations may include: (a) whether there was a
`
`long-felt and long-unmet need for the invention; (b) whether the invention
`
`achieved unexpected results; (c) the commercial success of the invention; and (d)
`
`whether the invention was copied or praised within the industry.
`
`D.
`
`27.
`
`Claim Construction
`I understand that in the instant inter partes review, claims are given
`
`their ordinary and customary meaning, as understood by a person of ordinary skill
`
`in the art, at the time of the alleged invention, taking into consideration the
`
`language of the claims, the specification, and the prosecution history of record.
`
`Thus, it is my understanding that what is to be considered includes the claims, the
`
`patent specification and drawings, and the prosecution history, including any art
`
`listed by the examiner or the applicant.
`
`28.
`
`It
`
`is my understanding that
`
`information external
`
`to the patent,
`
`including expert and inventor testimony and unlisted prior art, are to be considered
`
`in construing the claims only if ambiguities remain. However, expert testimony
`
`may be useful in helping to explain the technology.
`
`9
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`29.
`
`I further understand that technical dictionaries, encyclopedias, and
`
`treatises may also be used in claim construction, as long as these definitions do not
`
`contradict any definition found in or ascertained by a reading of the patent
`
`documents.
`
`V.
`
`Overview of the ʼ956 Patent
`
`30.
`
`I understand that the ʼ956 patent, entitled “Light Emitting Panel
`
`Assemblies for Use in Automotive Applications and the Like,” issued on May 3,
`
`2005, and that the earliest priority filing date to which the ʼ956 patent may be
`
`entitled is January 16, 1996.
`
`31.
`
`The ʼ956 patent relates to light emitting panel assemblies for use in
`
`automotive applications. Ex. 1001 at 1:19-21. As the ʼ956 patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Id. at 1:24-27.
`
`32.
`
`The ʼ956 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 [23] 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 3 (reproduced below).
`
`Id. at 8:33-41. The ʼ956 patent describes “light
`
`extracting deformities,” which appear on one or more sides of a light emitting
`
`panel member, and which may be customized to a particular application.
`
`Id. at
`
`10
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`6:23-25 (“The deformities may also be used to control the output ray angle
`
`distribution of the emitted light to suit a particular application.”).
`
`33. 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 8:63-67.
`
`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,” 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 9:12-
`
`21.
`
`Fig. 4 (annotated)
`
`34.
`
`The ’956 patent states that the panel members 29 are “shaped to fit the
`
`particular application” and “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 above in
`
`green] may cover the panel members as shown at the right hand side of FIG. 4.”
`
`Id. at 8:45-47; 9:8-12. The ’956 patent also describes that “[a]n additional array of
`11
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`light sources 31 such as LEDs or incandescent or halogen lamps…may be
`
`strategically mounted inwardly (i.e., behind) the inner surface of the light emitting
`
`panel members 29 and/or 30 to cause a more intense light to shine through the
`
`panel members…” Id. at 9:23-28.
`
`A.
`
`35.
`
`The ʼ956 Patent’s Claims
`Independent claim 1 is directed to [1a] a light emitting assembly for
`
`vehicle illumination comprising: [1b] a light guide having opposite sides and at
`
`least one light input surface along at least one edge of said light guide, [1b] one or
`
`more light emitting diodes along said light input surface for receiving light from
`
`said light emitting diodes, [1c] conducting the light from said edge for emission of
`
`the light from at least one of said sides, [1d] 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 [1e] 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.
`
`36. Dependent claims 4, 5, 6, 9, and 31 (each depending from claim 1)
`
`recite the following additional features, including that the “substrate is positioned
`
`against said light guide” (claim 4); or that the “substrate covers at least one of said
`
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`sides” (claim 5); or that the “deformities are at least one of depressions and raised
`
`surfaces on at least one of said sides” (claim 6); or that the “light emitting diodes
`
`are attached to a circuit”; or, finally, that the “substrate provides protection for the
`
`light guide” (claim 31).
`
`37.
`
`It is my opinion that there was nothing novel about any of these
`
`elements, alone or in combination, at the time of the ʼ956 patent’s earliest priority
`
`date.
`
`B.
`
`38.
`
`The ʼ956 Patent’s Prosecution History
`
`It is my understanding that U.S. Patent Application No. 10/298,367,
`
`which issued as the ʼ956 patent, was initially filed on November 18, 2002 with 52
`
`claims. Following a restriction requirement, the applicant elected to prosecute
`
`claims 1-25. Ex. 1002 at 244-45.
`
`39.
`
`It is my further understanding that, in response to the examiner’s
`
`initial rejection of the elected claims based on the applicant’s earlier U.S. Patent
`
`No. 5,613,751 (filed June 27, 1995), a terminal disclaimer was filed to overcome
`
`the rejection. Id. at 163-64.
`
`40.
`
`I further understand that, in response to two subsequent office actions,
`
`the applicant (1) amended independent claim 1 to recite “light emitting diodes”
`
`instead of “a plurality of closely spaced light sources,” (2) added that “said
`
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`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 117-26; 30-40. After those
`
`amendments, the examiner allowed the claims, issuing a Notice of Allowance on
`
`January 5, 2005, finding the pending claims allowable “in view of the Amendment
`
`to claims filed 10/25/2004 and further in view of Applicant[ʼs] remarks,” without
`
`further explanation. Id. at 9-11.
`
`VI. Claim Construction
`
`A.
`
`“light extracting deformities” (claim 1)
`
`41. Claim 1 of the ʼ956 patent requires at least one side of the claimed
`
`panel member
`
`to include “light extracting deformities” having shapes for
`
`controlling an “output ray angle distribution of emitted light to suit a particular
`
`application.”
`
`42. Referring to FIG. 2A, the specification describes a pattern of light
`
`extracting deformities or disruptions 12 provided on one or both sides 13, 14 of the
`
`panel members along the entire length thereof or at one or more selected areas.
`
`See Ex 1001 at 5:38-41. The ’956 patent expressly teaches that these deformities
`14
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`mean “any change in the shape or geometry of the panel surface and/or coating or
`
`surface treatment that causes a portion of the light to be emitted.” Id. at 5:42-52.
`
`Consistent with this teaching, “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.”
`
`VII. The Prior Art’s Disclosure of Each Claimed Element of the ʼ956 Patent
`
`43. Well before the priority date of the ʼ956 patent, automotive designers
`
`had been using edge-lit light guides that employed extracting deformities for
`
`external vehicle illumination.
`
`A.
`
`Decker
`
`44. Decker is entitled “Signal lamp for motor vehicles” and describes its
`
`invention as “a signal lamp for motor vehicles . . . attached to or installed into a
`
`motor vehicle body.” Decker at Abstract. Decker’s signaling lamp, which is
`
`disclosed as being a brake light in one example, is thus a “light emitting assembly
`
`for vehicle illumination” (element [1a]).
`
`45.
`
`The vehicle lamp of Decker has a series of light-emitting diodes
`
`(“LEDs”), “each light-emitting diode has an associated elongated light guide
`
`element [L],” and “at least two light guide elements are arranged in parallel side by
`
`side behind [an] end plate.” See Decker at Abstract. According to Decker, these
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`light guide elements are “connected in one piece . . . to guarantee an especially
`
`simple and economical producibility.” Id. at 9:46-10:2. Annotated Figures 3, 9,
`
`and 5 (left-to-right, below) illustrate a single light guide element (L); a cross
`
`section of such light guide elements connected in one piece; and light guide
`
`elements behind a substrate (end plate A), respectively:
`
`46. As the figures of Decker demonstrate,
`
`the light-guide elements,
`
`whether individually or as connected into a single piece, have opposite sides
`
`(element [1b]). From the cross-section in figures 9 and 5 above, it can be clearly
`
`seen that two opposite sides exist in the case of Decker as light will internally
`
`reflect from one side to the other with the assistance of grating P (an optical grating
`
`is a term for an optical component with a periodic structure which splits and
`
`diffracts light into several beams traveling in different directions). See also Decker
`
`at Abstract (“the side of each light guide element facing away from the light-
`
`emitting-surface has light-deflecting means”). As shown in Figures 3 and 9, each
`
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`light guide has a light input surface along one edge (element [1b]) called a “light
`
`coupling surface (LK)…adapted to the form of the light emitting surface…of the
`
`light-emitting diode (LED),” with an LED positioned along that surface (element
`
`[1c]). Id. at 7:37-49; 9:40-44.
`
`Annotated Figs. 3 (top) and 8 (bottom)
`
`47.
`
`The arrows in annotated Figures 3 and 8 above demonstrate that light
`
`from the LED enters through the light coupling surface (LK) and is directed
`
`through the light guide (L) for emission through one of the sides of the light guide
`
`(element [1c]). See id. at 7:37-8:34; Fig. 6. As light is emitting in a Lambertian
`
`(omni-directional) manner from the LED, the coupling of the LED to the light-
`
`guide allows for the light to travel from the LED to the various elements of the
`
`light-guide. Deformities on one side of the light guide that are in the form of
`
`prisms P cause light to be emitted, with the amount of light emitted controlled by
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`“changing the prism angles and/or the prism division and/or the prism depth”
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`(element [1d]). See id. at 8:16-21; 9:11-39; Fig. 6.
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`48.
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`Specifically, Decker discloses that the prism angles, division, and/or
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`depth may be changed “[d]epending on the desired light scattering and the light
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`distribution to be generated,” including the scattering angle. See id. at 3:17-35;
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`8:16-21; 9:27-39. The dispersion angle of the radiated light described by Decker
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`(i.e.,
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`the claimed output ray angle distribution of emitted light) is therefore
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`controlled to suit a particular application, e.g., the brake lights, turn signals, and
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`backup lights. The nature and type of deformity or grating can be controlled easily
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`through standard manufacturing techniques, meaning that the direction of the LED
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`light can be also easily controlled depending on the variety of functions required
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`by the vehicular unit. For example, if a saw-tooth pattern is required to generate
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`vehicular signals, then the depth and periodicity of the saw-tooth grating will have
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`an effect on the level of light that is internally reflected out of the structure. The
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`intensity of the light reflected out of the light guide can be engineered for a number
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`of applications including in vehicular lighting systems.
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`49. Decker further discloses a transparent substrate overlying the light
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`emitting side of the light guides for exterior vehicle illumination (element [1e]).
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`The transparent substrate is useful for environmental and physical protection as
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`well as providing for higher intensity lighting that needs to penetrate the
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`transparent substrate lens depending on application. Specifically, Decker describes
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`the light guide elements as “arranged in parallel vertically behind the transparent
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`end plate [A],” as illustrated in Figures 1 and 5 (below). Id. at 8:48-9:2; 6:45-7:2.
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`Fig. 1
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`Fig. 5 (annotated)
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`50.
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`Though Decker does not expressly depict the substrate in its figures as
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`forming the exterior portion of a vehicle, Decker expressly discloses its signal
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`lamp as comprising a brake light, blinker and a backup light, which are covered by
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`the transparent substrate (end plates A). See id. at 1:11-34; 5:18-24; 6:15-22; claim
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`15. A POSITA would further understand that the end plates A (the recited
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`“substrate”) would have to provide an exterior portion of a vehicle in order for the
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`underlying signaling lamp to serve its intended function as a blinker, brake light
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`and/or backup light.
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`51.
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`Figures 1 and 5 of Decker further illustrate that the substrate is
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`positioned against the light guide (claim 4) and covers at least one of the light
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`guide’s sides (claim 5). See id. at 8:48-9:2; 6:45-7:2; Figs. 1, 5.
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`52. As to claim 6, the light emitting deformities of Decker’s light guides
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`consist of both depressions and raised surfaces, in the form of prisms P, as
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`illustrated in Figure 3. See also id. at 8:12-27; Fig. 6. The nature of this type of
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`surface will internally reflect the LED light to exit the light-guide on the opposite
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`face to the deformities.
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`Fig. 3 (annotated)
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`53.
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`Specifically, the saw-tooth pattern of prisms P consists of alternating
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`peaks and valleys. The valley between each adjacent pair of peaks would be
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`considered by a POSITA as being a “depression” relative to the top-most surface
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`of the peaks, while the peak between each adjacent pair of valleys would be
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`considered a “raised surface” relative to the bottom-most surface of the valleys. In
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`other words, Decker demonstrates interspersed depressions and raised surfaces
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`with the depicted saw-tooth pattern. Accordingly, Decker teaches that said
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`“deformities are at least one of depressions and raised surfaces on at least one of
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`said sides.”
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`54. With respect to claim 9, Decker describes the LEDs as being attached
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`to a circuit, as shown in Fig. 2 below (“LP”). Id. at 4:37-41; see also id. at 7:8-11
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`(“light emitting diodes (LED) are arranged in rows and attached on a common
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`printed circuit board (LP) with electrical contact.”). A POSITA would understand
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`that a printed circuit board is a circuit through which power could be provided to
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`LEDs.
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`55. Dependent claim 31 describes that “said substrate provides protection
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`for the light guide.” First, the language of claim 31 describes only the intended use
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`of the substrate, without further defining its structure. Thus, I am informed that
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`Decker need not expressly describe that the “transparent cover lens A” provide
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`protection for the light guide to constitute a teaching of this limitation of claim 31.
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`56. Nonetheless, Decker describes a “transparent end plate A” covering
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`the signal lamp, which would inherently provide protection for the elements
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`beneath. Any type of transparent protection structure is normally necessary for
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`illumination assemblies being utilized in exposed environments. Moreover, it was
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`well known at the time the alleged invention of claim 31 was made that a cover
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`provides protection for a light guide on the exterior portion of a vehicle, as
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`evidenced, for example by Wu, which describes “a transparent cover or housing
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`made of plastic or the like may be provided over the display device 10 for
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`protection against accumulated dust, scratches, etc.” Wu at 4:20-24. Therefore,
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`even though this limitation merely corresponds to an intended use of the recited
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`“substrate,” a POSITA would have understood the “transparent end plate A” is
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`there to provide “protection for the light guide,” and would inherently do so.
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`Illumination assemblies that are utilized in exposed environments, such as traffic
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`lights, are typically subject
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`to protection from transparent panels or other
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`transparent structures.
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`57.
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`It is therefore my opinion that each of claims 1, 4, 5, 6, 9, and 31 is
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`unpatentable as anticipated by Decker.
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
`
`B. Wu
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`58. Wu discloses various mounting arrangements for its center-high-
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`mounted stop-light (“CHMSL”), including being mounted to either an interior or
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`exterior of a vehicle’s straight back window (e.g., FIG. 2) and being mounted to an
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`interior or exterior of a vehicle’s curved rear window (FIG. 6). Regardless of
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`mounting arrangement, however, Wu’s center-high-mounted stop-lights share
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`many common features, including, for example, a light source (12 or 32), a light
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`receiving edge (14a or 34a), a first surface/side (14b or 34b), a second surface/side
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`(14c or 34c), etc. Since Wu’s teachings with respect to such common features
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`would be understood by a POSITA to apply across the variously-disclosed
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`mounting arrangements, the discussion below corresponds to each of Wu’s various
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`mounting arrangements, unless indicated otherwise.
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`59. With respect to element [1a], Wu describes a light emitting assembly
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`for vehicle illumination in the form of a center-high-mounted stop-light (“visual
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`display device 10”) for use as a brake light in a rear window of an automobile. See
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`Wu at 1:13-17. The display device 10 includes display panel 14 and light source
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`12, which may include an LED. Wu at 2:45-50, 55-61; 3:38-42; 6:40-43.
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`60. With respect to element [1b], Wu discloses a “light guide” in the form
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`of panel 14 having a light receiving edge 14a located adjacent to first and second
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`IPR Petition of U.S. Patent No. 6,886,956
`Declaration of Michael Lebby, Ph.D.
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`opposing surfaces, which receives light from a light source 12.
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`Id. at 2:19-30;
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`4:25-27. Light source 12 may be an LED that emits light in a Lambertian manner
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`(omni-directional). This light is reflected towards the x-plane as noted in Fig 1.
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`According to Wu, “the second surface 14c opposes and slants or tapers toward the
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`first surface 14b.” Wu at 3:54-56. The display panel 14 constitutes the claimed
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`light guide, its first surface 14b and its second surface 14c constitute the claimed
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`opposite sides, and its light receiving edge 14a constitutes the claimed light input
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`surface along at least one edge. Wu therefore teaches “a light guide having
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`opposite sides and at least one light input surface along at least one edge of said
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`light guide.” Wu, in fact, demonstrates a typical lig