UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`BMW OF NORTH AMERICA, LLC and
`BMW MANUFACTURING CO., LLC,
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`
`Petitioners,
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`
`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`
`
`Patent Owner.
`
`
`
`Inter Partes Review of U.S. Patent No. 6,886,956
`Case No.: To Be Assigned
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1, 4, 5, 6, 9, AND 31 OF U.S. PATENT NO. 6,886,956
`
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`
`
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`
`
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`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
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`
`
`March 24, 2015
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`
`
`

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`IPR Petition of U.S. Patent No. 6,886,956
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`
`TABLE OF CONTENTS
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`Page
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`PETITIONERS’ EXHIBIT LIST .................................................................... ii
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`I.
`
`II.
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`GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a)................... 1
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`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ........ 1
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`A. The ʼ956 Patent ................................................................................... 1
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`1. Overview of the ʼ956 Patent .............................................................2
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`2. The ʼ956 Patent’s Claims .................................................................3
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`3. The ʼ956 Patent’s Prosecution History ...............................................4
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`B. Level of Skill in the Art of the ʼ956 Patent .............................................. 5
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`C. Claim Construction of the Challenged Claims.......................................... 6
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`1. “light extracting deformities” (claim 1) ..............................................6
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`D. Statement of Precise Relief Requested for Each Challenged Claim ............. 7
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`E. State of the Art Prior to the ʼ956 Patent’s Earliest Priority Date ................. 8
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`1. Using an Edge-lit Light Guide with Light Extracting Deformities
`for External Vehicle Illumination Was Well Known in the Art ..............8
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`III. DETAILED EXPLANATION OF THE CHALLENGE .......................... 11
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`A. Ground 1: Claims 1, 4, 5, 6, 9, and 31 Are Anticipated by Decker ............ 11
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`B. Ground 2: Claims 1, 4, 5, 6, and 31 Are Anticipated by Wu and Claim
`9 is Obvious over Wu ......................................................................... 25
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`C. Ground 3: Claims 1, 4, 5, 6, 9, and 31 Are Anticipated by Katase ............ 43
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`IV. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ............................. 57
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`A. Real Parties-in-Interest ....................................................................... 57
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`B. Related Matters ................................................................................. 57
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`1. District Court Proceedings.............................................................. 57
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`2. Inter Partes Review Proceedings..................................................... 57
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`C. Lead and Back-up Counsel and Service Information ............................... 59
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`V.
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`PAYMENT OF FEES ........................................................................ 59
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`VI. CONCLUSION ................................................................................. 60
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`CERTIFICATE OF SERVICE ..................................................................... 61
`
`i
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`
`
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`PETITIONERS’ EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,886,956
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`File History of U.S. Patent No. 6,886,956
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`Declaration of Dr. Michael Lebby
`
`Unexamined German Patent Specification DE 41 29 094 to Decker
`(with certified translation)
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`U.S. Patent No. 5,165,772 to Wu
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`Japanese Utility Model Application Publication No. JP H5-25602 to
`Katase (with certified translation)
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`
`
`Exhibit #
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`1001
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`1002
`
`1003
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`1004
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`1005
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`1006
`
`ii
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Petitioners BMW of North America, LLC and BMW Manufacturing Co.,
`
`LLC (the “Petitioners”) hereby respectfully petition for inter partes review (“IPR”)
`
`of claims 1, 4, 5, 6, 9, and 31 (collectively, “Challenged Claims”) of U.S. Patent
`
`No. 6,886,956 (“the ʼ956 patent”) (Exhibit (“Ex.”) 1001), pursuant to 35 U.S.C.
`
`§§311-19 and 37 C.F.R. §42.
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`I.
`
`GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a)
`
`Petitioners certify that the ʼ956 patent is available for inter partes review
`
`and that Petitioners are not barred or estopped from requesting an inter partes
`
`review of the patent.
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`II.
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`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`
`A. The ʼ956 Patent
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`The ʼ956 patent, entitled “Light Emitting Panel Assemblies for Use in
`
`Automotive Applications and the Like,” issued on May 3, 2005, from U.S. Patent
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`Application No. 10/298,367 (“the ʼ367 application”), which was filed November
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`18, 2002. The ʼ367 application is a continuation of Application No. 10/005,090
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`(filed December 5, 2001), now U.S. Patent No. 6,508,563, which is a continuation
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`of Application No. 09/703,088 (filed October 31, 2000), now U.S. Patent No.
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`6,367,940, which is itself a continuation of Application No. 09/167,949 (filed
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`October 7, 1998), now U.S. Patent No. 6,158,867, which is a division of
`
`Application No. 08/585,062 (filed January 16, 1996), now U.S. Patent No.
`
`1
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`5,895,115. Accordingly, January 16, 1996 is the earliest priority date to which the
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`ʼ956 patent may be entitled.
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`1. Overview of the ʼ956 Patent
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`The ʼ956 patent relates to light emitting panel assemblies for use in
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`automotive applications. See ’956 patent (Ex. 1001) at 1:19-21. The ʼ956 patent
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`acknowledges that “[l]ight emitting panel assemblies are generally known,” and
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`purports to provide improvements over such known assemblies. Id. at 1:24-27.
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`The ʼ956 patent describes examples of “light emitting panel assemblies 24
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`[that] are mounted in body panels 25 along the rear, front, and/or sides of a vehicle
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`[23] to provide vehicle running lights or accent lights or to light a logo, step,
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`running board, or other surface area of a vehicle,” as illustrated in Figure 3
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`(reproduced below). Id. at 8:33-41. The ʼ956 patent describes “light extracting
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`deformities,” which appear on one or more sides of a light emitting panel member,
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`and which may be customized to a particular application. Id. at 6:23-25 (“The
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`deformities may also be used to control the output ray angle distribution of the
`
`emitted light to suit a particular application.”).
`
`According to the patent, “light sources” (9) [highlighted below in red] may
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`be 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 8:63-67. The
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`light sources may be “embedded, potted or bonded in the light transition regions of
`
`2
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`the panels,” “mechanically held in place by a holder…in a slot in an edge of the
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`panel member,” or “a fiber optic light pipe 64 [may be used] for transmitting light
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`to the panel member from a remote light source 65.” Id. at 9:12-21.
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`Fig. 4 (annotated)
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`
`
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`The ’956 patent states that the panel members 29 are “shaped to fit the
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`particular application” and “may form the exterior surface of the body panel 25 as
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`shown at the left hand side of FIG. 4 or a lens or film 34 [highlighted above in
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`green] may cover the panel members as shown at the right hand side of FIG. 4.”
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`Id. at 8:45-47; 9:8-12. The ’956 patent also describes that “[a]n additional array of
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`light sources 31 such as LEDs or incandescent or halogen lamps…may be
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`strategically mounted inwardly (i.e., behind) the inner surface of the light emitting
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`panel members 29 and/or 30 to cause a more intense light to shine through the
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`panel members…” Id. at 9:23-28.
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`2.
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`The ʼ956 Patent’s Claims
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`Independent claim 1 is directed to [1a] a light emitting assembly for vehicle
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`illumination comprising: [1b] a light guide having opposite sides and at least one
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`light input surface along at least one edge of said light guide, [1b] one or more
`
`3
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`light emitting diodes along said light input surface for receiving light from said
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`light emitting diodes, [1c] conducting the light from said edge for emission of the
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`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
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`[1e] a transparent substrate overlying at least one of said sides, said substrate
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`providing an exterior portion of a vehicle for vehicle illumination at said exterior
`
`portion.
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`Dependent claims 4, 5, 6, 9, and 31 (each depending from claim 1) recite
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`the following additional features, including that the “substrate is positioned against
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`said light guide” (claim 4); or that the “substrate covers at least one of said sides”
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`(claim 5); or that the “deformities are at least one of depressions and raised
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`surfaces on at least one of said sides” (claim 6); or that the “light emitting diodes
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`are attached to a circuit” (claim 9); or, finally, that the “substrate provides
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`protection for the light guide” (claim 31).
`
`3.
`
`The ʼ956 Patent’s Prosecution History
`
`The ’367 application, which issued as the ʼ956 patent, was initially filed on
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`November 18, 2002 with 52 claims. Following a restriction requirement, the
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`applicant elected to prosecute claims 1-25. See ’956 patent file history (Ex. 1002)
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`at 244-45.
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`4
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`

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`IPR Petition of U.S. Patent No. 6,886,956
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`In response to the examiner’s initial rejection of the elected claims based on
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`the applicant’s earlier U.S. Patent No. 5,613,751 (filed June 27, 1995), a terminal
`
`disclaimer was filed to overcome the rejection. See id. at 163-64.
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`In response to two subsequent office actions, the applicant (1) amended
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`independent claim 1 to recite “light emitting diodes” instead of “a plurality of
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`closely spaced light sources,” (2) added that “said substrate provid[es] an exterior
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`portion of a vehicle for vehicle illumination at said exterior portion,” (3) added that
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`the light guide has “opposite sides” and a light input surface “along at least one
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`edge of [the] light guide,” and also (4) added that the light emitting diodes are
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`along the light input surface “for receiving light from said light emitting diodes and
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`conducting the light from said edge for emission of the light from at least one of
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`said sides.” Id. at 117-26; 30-40. After those amendments, the examiner allowed
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`the claims, issuing a Notice of Allowance on January 5, 2005, finding the pending
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`claims allowable “in view of the Amendment to claims filed 10/25/2004 and
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`further in view of Applicant[ʼs] remarks,” without further explanation. Id. at 9-11.
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`B. Level of Skill in the Art of the ʼ956 Patent
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`The field of art with which the ʼ956 patent is concerned, and the level of
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`skill in that art, are apparent from the ʼ956 patent and the cited art. Specifically, a
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`person of ordinary skill in the art (“POSITA”) would have at least an
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`undergraduate degree in a science or engineering discipline and a few years of
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`5
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`

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`IPR Petition of U.S. Patent No. 6,886,956
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`work experience in a field related to optical technology, a graduate degree in a
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`field related to optical technology, or a few years of continuing education toward a
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`graduate degree in a field related to optical technology. See Declaration of Michael
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`Lebby (“Lebby Decl.”) (Ex. 1003) at ¶19.
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`C. Claim Construction of the Challenged Claims
`
`The ʼ956 patent claims the benefit of the January 16, 1996 filing date of U.S.
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`Patent No. 5,895,115, and therefore will expire on January 16, 2016, before a final
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`written decision will issue. Accordingly, the claims of the ʼ956 patent should be
`
`construed pursuant to the Federal Circuit’s Phillips standard; i.e., the claim terms
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`should generally be “given their ordinary and customary meaning, as understood
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`by a person of ordinary skill in the art, at the time of the invention, taking into
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`consideration the language of the claims, the specification, and the prosecution
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`history of record because the expired claims are not subject to amendment.” See
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`Panel Claw Inc. v. Sunpower Corp., Paper 7 at 7, IPR2014-00386 (June 30, 2014)
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`(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc)).
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`1.
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`“light extracting deformities” (claim 1)
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`Claim 1 of the ʼ956 patent requires at least one side of the claimed panel
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`member to include “light extracting deformities” having shapes for controlling an
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`“output ray angle distribution of emitted light to suit a particular application.”
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`6
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`

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`IPR Petition of U.S. Patent No. 6,886,956
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`Referring to FIG. 2A, the specification describes a pattern of light extracting
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`deformities or disruptions 12 provided on one or both sides 13, 14 of the panel
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`members along the entire length thereof or at one or more selected areas. See ’956
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`patent (Ex. 1001) at 5:38-41. The ’956 patent expressly teaches that these
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`deformities mean “any change in the shape or geometry of the panel surface
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`and/or coating or surface treatment that causes a portion of the light to be emitted.”
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`Id. at 5:42-52 (emphasis added). Consistent with this teaching, “light extracting
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`deformities” should be construed to mean “any change in the shape or geometry of
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`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.” See Lebby Decl. (Ex.
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`1003) at ¶¶41-42.
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`D.
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`Statement of Precise Relief Requested for Each Challenged Claim
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`Petitioners request review under 35 U.S.C. §§311-19 and 37 C.F.R. §42 of
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`claims 1, 4, 5, 6, 9, and 31 of the ʼ956 patent, and request cancellation of those
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`claims under 35 U.S.C. §§102 and 103 on the ground set forth below.
`
`Ground Claim(s)
`Ground 1 Claims 1, 4, 5,
`6, 9, and 31
`Ground 2 Claims 1, 4, 5,
`6, and 31
`Claim 9
`
`Ground 3 Claims 1, 4, 5,
`6, 9, and 31
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`Basis for Rejection
`Anticipated by Decker under 35 U.S.C. §102(b)
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`Anticipated by Wu under 35 U.S.C. §102(b)
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`Obvious over Wu under 35 U.S.C. §103(a)
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`Anticipated by Katase under 35 U.S.C. §102(b)
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`7
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`

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`IPR Petition of U.S. Patent No. 6,886,956
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`
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`None of the relied-upon references were cited by applicant, or otherwise
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`considered by the examiner, during prosecution of the ’956 patent.
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`E.
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`State of the Art Prior to the ʼ956 Patent’s Earliest Priority Date
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`1.
`
`Using an Edge-lit Light Guide with Light Extracting
`Deformities for External Vehicle Illumination Was
`Well Known in the Art
`
`Well before the priority date of the ʼ956 patent, automotive designers had
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`been using edge-lit light guides that employed light extracting deformities for
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`external vehicle illumination. See Lebby Decl. (Ex. 1003) at ¶43.
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`a.
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`Decker (1993)
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`Unexamined German Patent Specification DE 41 29 094 to Decker (Ex.
`
`1004) (“Decker”) discloses light guide elements formed into a light emitting
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`assembly for use in vehicles as a signal lamp, with light extracting deformities on
`
`one surface of the panel. Decker was published on March 4, 1993, and is therefore
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`§102(b) prior art to the ʼ956 patent. Each of Decker’s vehicle signal lamps
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`included LEDs and light guide elements L. Each light guide element L is an
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`elongated element with an LED at one end, as shown by annotated Fig. 3 below,
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`where the LED emits light into light guide element L, having light extracting
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`deformities in the form of prisms P along one side of the light guide element L.
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`See Decker (Ex. 1004) at 8:12-27. If the light hits one of these deformities, it is
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`reflected in such a way that it exits the light guide element on the opposite side. Id.
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`8
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`(describing “path of the rays in the light guide (L)”). The amount of light emitted
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`along the length of the light guide element L can be controlled by “changing the
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`prism angles and/or the prism division and/or the prism depth.” Id.
`
`
`Fig. 3 (annotated) Fig. 9 (annotated)
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`b. Wu (1992)
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`U.S. Patent No. 5,165,772 issued to Wu (“Wu”) describes a visual display
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`device 10 as a center-high-mounted stop-light, for use as a brake light in a rear
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`window of an automobile. See Wu (Ex. 1005) at 1:13-17. Wu was published on
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`November 24, 1992, and is therefore §102(b) prior art to the ʼ956 patent. As
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`shown in reproduced Figure 6 below, the display device 30 includes display panel
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`34 (highlighted in yellow, below) and light source 32 (in red), which may include
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`an LED, mounted underneath a window substrate 36’ (in green). See id. at 5:48-
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`52; 2:45-50, 55-61; 3:38-42; 6:40-43. Light receiving edge 34a of the display
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`panel is located adjacent to first and second opposing surfaces (referred to as “first
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`surface 34b” and “second surface 34c,” respectively) and receives the light from
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`the light source 12. See id. at 2:19-30; 5:52-57. Wu further discloses that the
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`“second surface 34c” includes “light extracting deformities” in the form of “steps
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`9
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
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`34d,” which are “formed with laterally spaced depressions for lateral dispersion of
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`light.” See id. at 2:41-42; 5:27-36. The ’956 patent expressly describes
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`“depressions” as examples of what it refers to as “light extracting deformities.”
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`See, e.g., Ex. 1001 at 7:1-9.
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`Fig. 6 (annotated)
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`
`
`
`
`c. Katase (1993)
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`Fig. 2 (annotated)
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`
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`Japanese Patent Application No. H5-25602 to Katase (“Katase”) discloses a
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`light emitting assembly in the form of a curved vehicle lamp for use in vehicles as
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`a stop lamp, tail lamp, or a turn signal lamp, as shown in reproduced Figure 1
`
`below. See Katase (Ex. 1006) at [0008]. Katase was published on April 2, 1993,
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`and is therefore §102(b) prior art to the ’956. As shown in the annotated figures,
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`below, the vehicle lamp of Katase utilizes a light guide in the form of an assembly
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`of optical fibers 31, arranged in a planar shape and configured to receive light from
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`LEDs arranged along a light input surface on their edge. See id. at [0007]. Light
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`from the LEDs is guided through the light guide and is emitted from the front
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`surface by reflection steps along the back surface. See id. at [0008]. The light
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`guide is covered by a substrate in the form of an outer lens. See id. at [0007].
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`10
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`Fig. 1 (annotated)
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`
`
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`
`
`
`
`Fig. 5 (annotated)
`
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`III. DETAILED EXPLANATION OF THE CHALLENGE
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`A. Ground 1: Claims 1, 4, 5, 6, 9, and 31 Are Anticipated by Decker
`
`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
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`motor vehicle body.” Decker (Ex. 1004) at Abstract. Decker’s signaling lamp,
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`which is disclosed as being a brake light in one example, is thus a “light emitting
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`assembly for vehicle illumination” (element [1a]). See Lebby Decl. (Ex. 1003) at
`
`¶44.
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`The vehicle lamp of Decker has a series of light-emitting diodes (“LEDs”),
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`“each light-emitting diode has an associated elongated light guide element [L],”
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`and “at least two light guide elements are arranged in parallel side by side behind
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`[an] end plate.” See Decker (Ex. 1004) at Abstract. According to Decker, these
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`light guide elements are “connected in one piece . . . to guarantee an especially
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`simple and economical producibility.” Id. at 9:46-10:2. Annotated Figures 3, 9,
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`and 5 (left-to-right, below) illustrate a single light guide element (L); a cross
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`11
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`section of such light guide elements connected in one piece; and light guide
`
`elements behind a substrate (end plate A), respectively:
`
`
`
`As the figures of Decker demonstrate, the light-guide elements, whether
`
`individually or as connected into a single piece, have opposite sides (element [1b]).
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`Lebby Decl. (Ex. 1003) at ¶¶45-46; see also Decker (Ex. 1004) 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 8 below, each light guide has
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`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
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`7:37-49; 9:40-44.
`
`Annotated Figs. 3 (top) and 8 (bottom)
`
`
`
`12
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`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; Lebby Decl. (Ex. 1003) at ¶47. 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 “changing the prism angles and/or
`
`the prism division and/or the prism depth” (element [1d]). See Decker (Ex. 1004)
`
`at 8:16-21; 9:11-39; Fig. 6; Lebby Decl. (Ex. 1003) at ¶47.
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`
`
`Specifically, Decker discloses that the prism angles, division, and/or depth
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`may be changed “[d]epending on the desired light scattering and the light
`
`distribution to be generated,” including the scattering angle. See Decker (Ex.
`
`1004) at 3:17-35; 8:16-21; 9:27-39. The dispersion angle of the radiated light
`
`described by Decker (i.e., the claimed output ray angle distribution of emitted
`
`light) is therefore controlled to suit a particular application, e.g., the brake lights,
`
`turn signals, and backup lights. See Lebby Decl. (Ex. 1003) at ¶48.
`
`13
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
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`Decker further discloses a transparent substrate overlying the light emitting
`
`side of the light guides for exterior vehicle illumination (element [1e]). See Lebby
`
`Decl. (Ex. 1003) at ¶49. Specifically, Decker describes the light guide elements as
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`“arranged in parallel vertically behind the transparent end plate [A],” as illustrated
`
`in Figures 1 and 5 (below). See Decker (Ex. 1004) at 8:48-9:2; 6:45-7:2.
`
`
`
`
`Fig. 1
`
`
`Fig. 5 (annotated)
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`
`
`Though Decker does not expressly depict the substrate in its figures as
`
`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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`underlying signaling lamp to serve its intended function as a blinker, brake light
`
`and/or backup light. See Lebby Decl. (Ex. 1003) at ¶50.
`
`Figures 1 and 5 of Decker further illustrate that the substrate is positioned
`
`against the light guide (claim 4) and covers at least one of the light guide’s sides
`
`14
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`

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`IPR Petition of U.S. Patent No. 6,886,956
`
`
`(claim 5). See Decker (Ex. 1004) at 8:48-9:2; 6:45-7:2; Figs. 1, 5; see also Lebby
`
`Decl. (Ex. 1003) at ¶51.
`
`As to claim 6, the light emitting deformities of Decker’s light guides consist
`
`of both depressions and raised surfaces, in the form of prisms P, as illustrated in
`
`Figure 3. See id. at ¶52; see also Decker (Ex. 1004) at 8:12-27; Fig. 6.
`
`Fig. 3 (annotated)
`
`
`
`Specifically, the saw-tooth pattern of prisms P consists of alternating peaks
`
`and valleys. The valley between each adjacent pair of peaks would be considered
`
`by a POSITA as being a “depression” relative to the top-most surface of the peaks,
`
`while the peak between each adjacent pair of valleys would be considered a “raised
`
`surface” relative to the bottom-most surface of the valleys. See Lebby Decl. (Ex.
`
`1003) at ¶¶52-53. Accordingly, Decker teaches that said “deformities are at least
`
`one of depressions and raised surfaces on at least one of said sides.”
`
`With respect to claim 9, Decker describes the LEDs as being attached to a
`
`circuit. See Lebby Decl. (Ex. 1003) at ¶54; see also Decker (Ex. 1004) at 4:37-41;
`
`7:8-11 (“light emitting diodes (LED) are arranged in rows and attached on a
`
`15
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`IPR Petition of U.S. Patent No. 6,886,956
`
`
`common printed circuit board (LP) with electrical contact.”), as shown in Fig. 2
`
`below (“LP”).
`
`
`
`Dependent claim 31 describes that “said substrate provides protection for
`
`the light guide.” First, the language of claim 31 describes only the intended use of
`
`the substrate, without further defining its structure. Thus, Decker need not
`
`expressly describe that the “transparent cover lens A” provide protection for the
`
`light guide to constitute a teaching of this limitation of claim 31. See, e.g., In re
`
`Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (“It is well settled that the
`
`recitation of a new intended use for an old product does not make a claim to that
`
`old product patentable.”).
`
`Nonetheless, Decker describes a “transparent end plate A” covering the
`
`signal lamp, which would inherently provide protection for the elements beneath.
`
`See Lebby Decl. (Ex. 1003) at ¶56. Moreover, it was well known at the time the
`
`alleged invention of claim 31 was made that a cover provides protection for a light
`
`guide on the exterior portion of a vehicle, as evidenced, for example by Wu, which
`
`describes “a transparent cover or housing made of plastic or the like may be
`
`16
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`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`provided over the display device 10 for protection against accumulated dust,
`
`scratches, etc.” See Wu (Ex. 1005) at 4:16-24. Therefore, even though this
`
`limitation merely corresponds to an intended use of the recited “substrate,” a
`
`POSITA would have understood the “transparent end plate A” is there to provide
`
`“protection for the light guide,” and would inherently do so. See Lebby Decl. (Ex.
`
`1003) at ¶56.
`
`As demonstrated above and as further detailed in the chart below, each of
`
`the limitations of claims 1, 4, 5, 6, 9, and 31 are expressly or inherently disclosed
`
`by Decker, and therefore claims 1, 4, 5, 6, 9, and 31 are anticipated by Decker.
`
`Exemplary Disclosure of Prior Art
`“Signal lamp for motor vehicles.” (Title).
`
`“[A] signal lamp for motor vehicles…attached to or
`installed into a motor vehicle body…” (Abstract).
`
`
`Claim 1
`light emitting
`[1a] A
`for vehicle
`assembly
`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,
`
`
`
`Fig. 3 (annotated) Fig. 9 (annotated)
`
`
`
`The signal lamp “has at least one transparent end plate
`and a number of light sources that are developed as
`light-emitting diodes; each light-emitting diode has an
`associated elongated light guide element; at least one
`face of each light guide element is developed as a light-
`coupling surface for the light-emitting diode; the side of
`each light guide element facing away from light-
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`17
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Claim 1
`
`Exemplary Disclosure of Prior Art
`emitting surface has light-deflecting means, and at least
`two light guide elements are arranged in parallel side by
`side behind the end plate.” (Abstract).
`
`The light guide elements may be “connected in one
`piece…to guarantee
`an especially
`simple and
`economical producibility.” (9:46-10:2).
`
`As shown in Figures 3 and 8 (top-to-bottom, annotated
`below) each light guide has a “light coupling surface
`(LK)…adapted to the form of the light emitting surface
`and the light radiating characteristic of the light-emitting
`diode (LED).” (7:37-49; 9:40-44; Figs 2, 6).
`
`
`
`“[T]he light is coupled in at one side via the light-
`coupling surfaces (LK).” (9:40-44).
`
`“[T]he light emitting surface of each light-emitting
`diode protrudes into the light guide element, and…the
`form of the light coupling surface of each light guide
`element is adapted to the form of the light emitting
`surface…” (3:36-42; 7:39-43).
`As shown in Figures 3 and 8 (top-to-bottom, annotated
`below) each light guide has a “light coupling surface
`(LK)…adapted to the form of the light emitting surface
`and the light radiating characteristic of the light-emitting
`diode (LED).” (7:37-49; 9:40-44; Figs 2, 6).
`
`“[T]he light is coupled in at one side via the light-
`coupling surfaces (LK).” (9:40-44).
`
`
`18
`
`[1c] one or more light
`emitting diodes along
`said 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
`
`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Claim 1
`sides,
`
`Exemplary Disclosure of Prior Art
`“[T]he light emitting surface of each light-emitting
`diode protrudes into the light guide element, and…the
`form of the light coupling surface of each light guide
`element is adapted to the form of the light emitting
`surface…” (3:36-42; 7:39-43).
`
`“The light guide elements (L) are arranged in parallel
`side by side with the light being fed in on one side in
`such a way that with adjacent light guide elements (L)
`arranged in parallel, the light is fed in from different
`sides. In other embodiments, the light-emitting diodes
`(LED) can all be arranged on one side or at both sides.”
`(7:14-22).
`
`“[T]he side of each light guide element facing away
`from the light-emitting-surface has light deflecting
`means.” (Abstract).
`
`“[E]ach light guide element (L) has prisms (P) at the
`side facing away from the light emitting surface…”
`(8:12-15).
`
`“The reflection of the light that hits the prisms (P) is
`determined by the form and the arrangement of the
`prisms (P) and leaves—as is shown—the light guide
`element (L) in the direction of light emission.” (9:17-
`22).
`
`“Fig. 9 shows, with a section through the light guide
`arrangement according to Fig. 8, that because of the
`magnifying effect, viewed from direction (R), the
`surfaces having the prisms (P) only need to take up a
`small portion of the rear side of the light guide elements
`(L), depending on the desired light distribution and the
`selected radius of the cylindrical light guide elements
`(L), to obtain a high even distribution of the radiated
`light.” (10:3-13).
`
`The arrows in Figure 3 further demonstrate that light
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`19
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`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Claim 1
`
`Exemplary Disclosure of Prior Art
`from the LED, which is located along the light input
`surface, enters through the light guide through the light
`input surface and is directed through the light guide for
`emission through the front side of the light guide. (See
`also Figs. 5, 6, 7, 9).
`
`[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
`
`
`
`Fig. 3 (annotated)
`“[T]he side of each light guide element facing away
`from the light-emitting-surface has light deflecting
`means.” (Abstract).
`
`“[E]ach light guide element (L) has prisms (P) at the
`side facing away from the light emitting surface…”
`(8:12-15).
`
`“Depending on the desired light scattering and the light
`distribution to be generated, the scattering angle of the
`radiated light can be changed by changing the prism
`angles and/or the prism division and/or the prism
`depth.” (8:16-21).
`
`“The fact that the side of each light guide element facing
`away from the light-emitting surface has light-deflecting
`means results in the advantage that the light of the light-
`emitting diode coupled into the light guide element can
`be deflected into a specific light radiating direction.”
`(2:27-33).
`
`“The reflection of the light that hits the prisms (P) is
`determined by the form and the arrangement of the
`prisms (P) and leaves—as is shown—the light guide
`element (L) in the direction of light emission.” (9:17-
`22).
`
`
`20
`
`

`

`IPR Petition of U.S. Patent No. 6,886,956
`
`
`Claim 1
`
`Exemplary Disclosure of Prior Art
`
`
`
`“It is advantageous that the light-deflecting means…are
`prisms because on the one hand, this leads to a simple
`and economic producibility…and on the other hand, the
`scattering angle and/or the deflection of light emitted by
`the light guide can b