IPR Petition of U.S. Patent No. 6,886,956
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC
`
`Petitioner
`
`
`
`Case No.: IPR2015-00994
`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
`
`
`
`
`
`
`

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`IPR Petition of U.S. Patent No. 6,886,956
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`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 ................................................. 5
`
`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.
`
`E. Overview of the Cited Art .............................................................................. 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`Decker (1993) ..................................................................................... 11
`
`Tsuboi (1982) ...................................................................................... 14
`
`Asai (1986) .......................................................................................... 16
`
`Additional References Containing Relevant Teachings ................. 17
`
`IV. Detailed Explanation of the Challenge ................................................................... 18
`
`A.
`
`B.
`
`Ground 1: Decker anticipates claims 1, 4-6, 9, and 31 under 35
`U.S.C. § 102(b). .............................................................................................. 18
`
`1.
`
`Chart comparing Decker to claims 1, 4-6, 9, and 31 ...................... 23
`
`Ground 2: Claims 1, 4-6, 9, and 31 are unpatentable under 35 U.S.C. §
`103 as obvious over Tsuboi in view of Asai, further in view of Gage
`and Lister. ....................................................................................................... 28
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`IPR Petition of U.S. Patent No. 6,886,956
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`1.
`
`Tsuboi in view of Asai provides every feature of the
`Challenged Claims .............................................................................. 29
`
`2. Motivation to combine Asai’s light guide features with
`Tsuboi’s light guide ............................................................................ 37
`
`3.
`
`4.
`
`Additional motivation to use an LED light source – Gage and
`Lister .................................................................................................... 39
`
`Chart comparing Tsuboi in combination with Asai, in view of
`Gage and Lister, to claims 1, 4-6, 9 and 31 ..................................... 41
`
`C.
`
`Ground 3: Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious over
`Decker in view of Arima. .............................................................................. 45
`
`1. Motivation to combine Decker with Arima to position the
`substrate “against” the light guide .................................................... 46
`
`2.
`
`Chart comparing Decker in view of Arima to claim 4 ................... 48
`
`D. Ground 4: Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious over
`Decker in view of Tsuboi. ............................................................................ 49
`
`1. Motivation to combine Decker with Tsuboi to position the
`substrate “against” the light guide .................................................... 49
`
`2.
`
`Chart comparing Decker in view of Tsuboi to claim 4 ................. 51
`
`V. Mandatory Notices .................................................................................................... 52
`
`A.
`
`B.
`
`C.
`
`Real Party in Interest ..................................................................................... 52
`
`Related Matters .............................................................................................. 52
`
`Lead and Backup Counsel, and Service Information ................................ 55
`
`VI. Payment of Fees ........................................................................................................ 56
`
`VII. Conclusion ................................................................................................................. 56
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`IPR Petition of U.S. Patent No. 6,886,956
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`In re Johnston,
`435 F.3d 1381 (Fed. Cir. 2006) .................................................................................... 39
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 40, 48, 50
`
`Ex parte Masham,
`2 U.S.P.Q.2d 1647 (BPAI 1987) ............................................................................ 23, 37
`
`Research Corp. Techs., Inc. v. Gensia Laboratories, Inc.,
`10 Fed. Appx. 856 (Fed. Cir. 2001) ....................................................................... 23, 37
`Federal Statutes
`35 U.S.C. § 102 .................................................................................................... 7, 11, 18, 54
`
`35 U.S.C. § 103 .................................................................................................... 7, 28, 45, 49
`
`35 U.S.C. § 311 ...................................................................................................................... 7
`
`35 U.S.C. § 315 ...................................................................................................................... 1
`Regulations
`37 C.F.R. § 42.8 ................................................................................................................... 55
`
`37 C.F.R. § 42.15 ................................................................................................................. 56
`Board Authority
`Panel Claw Inc. v. Sunpower Corp.,
`Paper 7, IPR2014-00386 (June 30, 2014) ...................................................................... 6
`
`
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`iii
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`IPR Petition of U.S. Patent No. 6,886,956
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`Manual of Patent Examining Procedure
`MPEP § 2111.04 ............................................................................................................ 23, 37
`
`MPEP § 2114(II) ........................................................................................................... 23, 37
`
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`IPR Petition of U.S. Patent No. 6,886,956
`
`Exhibit List
`Description
`Exhibit
`1001 U.S. Patent No. 6,886,956 (“the ’956 patent”)
`
`1002 Excerpts from File History for U.S. Application No. 10/298,367
`
`1003 Declaration of John L. West, Ph.D. (“West Declaration”)
`
`1004 German Unexamined Patent Specification No. DE 41 29 094 A1, published
`March 4, 1993 (with certified translation) (“Decker”)
`
`1005
`
`1006
`
`Japanese Laid Open Utility Model No. JPS57-60171, published December 22,
`1982 (with certified translation) (“Tsuboi”)
`
`Japanese Laid Open Utility Model No. JPS61-153201, published September
`22, 1986 (with certified translation) (“Asai”)
`
`1007 U.S. Patent No. 5,005,108, filed Feb. 10, 1989, issued Apr. 2, 1991
`(“Pristash”)
`
`1008 PCT Application Pub. No. 10 94/01716 (published Jul. 10, 1992)
`(“Parker-716”)
`
`1009 Exhibit C2 to IDT’s Preliminary Infringement Contentions vs. Toyota,
`Innovative Display Technologies LLC [“IDT”] v. Toyota Motor Corporation, et al.,
`C.A. (2:14- cv-200) (E.D. Tex.) (served Nov. 18, 2014) (“Toyota
`Infringement Contentions”)
`
`1010
`
`S. Gage et al., Optoelectronics/Fiber-Optics Applications Manual (2d ed.
`1981) (excerpts) (“Gage”)
`
`1011 M. Lister, LEDs for exterior lighting, Automotive Engineer v. 17 no. 5 (Oct./Nov.
`1992) (“Lister”)
`
`1012
`
`Japanese Laid Open Unexamined Utility Model No. JPS62-201407, published
`December 22, 1987 (with certified translation) (“Arima”)
`
`
`
`v
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`IPR Petition of U.S. Patent No. 6,886,956
`
`Description
`Exhibit
`1013 H. Satsukawa, Optical System for Illuminating the Lateral Section of
`Wraparound Lamps, SAE Technical Paper Series No. 920812, Int’l
`Congress and Exposition (Detroit, Mich., Feb. 24-28, 1992)
`(“Satsukawa”)
`
`
`
`
`
`
`vi
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`IPR Petition of U.S. Patent No. 6,886,956
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`I.
`
`Introduction
`Petitioner Mercedes-Benz USA, LLC (“Petitioner”) requests Inter Partes Review
`
`(“IPR”) of claims 1, 4, 5, 6, 9, and 31 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 6,886,956 (“the ’956 patent”) (Ex. 1001).
`
`II. Grounds for Standing
`Petitioner certifies that the ’956 patent is available for IPR and that Petitioner is
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`not barred or estopped from requesting IPR of the Challenged Claims on the grounds
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`identified herein. Specifically: (1) Petitioner is not the owner of the ’956 patent; (2)
`
`Petitioner has not filed a civil action challenging the validity of a claim of the ’956
`
`patent; (3) this petition is filed less than one year after the date on which Petitioner,
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`Petitioner’s real party in interest, or a privy of Petitioner was served with a complaint
`
`alleging infringement of the ’956 patent; (4) the estoppel provisions of 35 U.S.C. §
`
`315(e)(1) do not prohibit this IPR; and (5) this petition is filed after the later of (a) the
`
`date that is nine months after the date of the grant of the ’956 patent or (b) the date of
`
`termination of any post-grant review of the ’956 patent.
`
`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
`
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`1
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`

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`IPR Petition of U.S. Patent No. 6,886,956
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`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), 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 Specification
`The ’956 patent relates to light emitting panel assemblies for use in automotive
`
`applications. Ex. 1001, ’956 patent at 1:18-20. The ’956 patent acknowledges that
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`“[l]ight emitting panel assemblies are generally known,” and purports to provide
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`improvements over such known assemblies. Id. at 1:24-27.
`
`The ’956 patent describes examples of “light emitting panel assemblies 24 [that]
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`are mounted in body panels 25 along the rear, front and/or sides of a vehicle to
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`provide vehicle running lights or accent lights or to light a logo, step, running board,
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`or other surface area of a vehicle,” as illustrated in Figure 4 (reproduced below), which
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`is a cross-sectional view of Figure 3. Id. at 8:33-41. The ’956 patent states that “these
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`panel members 29 may form the exterior surface of the body panel 25 as shown at
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`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
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`positioned “along the back edges of the panel members 29 [highlighted below in yellow]
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`2
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`IPR Petition of U.S. Patent No. 6,886,956
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`used to provide running taillights for a vehicle.” Id. at 8:60-67. The light sources may
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`be “embedded, potted or bonded in the light transition regions of the panels,”
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`“mechanically held in place by a holder . . . in a slot in an edge of the panel member,”
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`or “a fiber optic light pipe 64 [may be used] for transmitting light to the panel member
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`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
`
`
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`light is “emitted along the entire length of the panel members or from one or more
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`light output surface areas along their length . . . to produce a desired light output
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`distribution to fit a particular application.” Ex. 1001 at 4:59–65.
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`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–
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`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
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`member. Id. at 5:45-52.
`
`2.
`
`The ’956 Patent Claims
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`
`
`3
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`IPR Petition of U.S. Patent No. 6,886,956
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`Exemplary claim 1 recites a light emitting assembly for vehicle illumination
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`comprising: [1.a] a light guide having opposite sides and at least one light input
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`surface along at least one edge of said light guide, [1.b] one or more light emitting
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`diodes along said light input surface for receiving light from said light emitting diodes,
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`[1.c] conducting the light from said edge for emission of the light from at least one of
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`said sides, [1.d] a plurality of light extracting deformities on at least one of said sides,
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`said deformities having shapes for controlling an output ray angle distribution of
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`emitted light to suit a particular application, and [1.e] a transparent substrate overlying
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`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
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`least one of said sides” (claim 5), or “provides protection for the light guide” (claim
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`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
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`9).
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`
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`4
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`IPR Petition of U.S. Patent No. 6,886,956
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`3.
`The ’956 Patent Prosecution History
`Mr. Parker filed U.S. Patent Application No. 10/298,367 for the eventual ’956
`
`patent on November 18, 2002, with fifty-two claims. Following a restriction
`
`requirement, Mr. Parker elected to prosecute claims 1-25. Ex. 1002 at 101.
`
`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 106-108, 110.
`
`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
`
`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
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`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 164,
`
`183, 205. After the amendments, the Examiner allowed the claims. Id. at 218.
`
`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
`
`
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`IPR Petition of U.S. Patent No. 6,886,956
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`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 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.
`
`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
`
`
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`IPR Petition of U.S. Patent No. 6,886,956
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`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. 1003, West Decl. ¶ 13.
`
`D.
`
`Statement of Precise Relief Requested for Each Claim Challenged
`1.
`Claims for Which Review Is Requested
`Petitioner requests IPR under 35 U.S.C. § 311 of claims 1, 4, 5, 6, 9, and 31 of
`
`the ’956 patent and cancellation of these claims as unpatentable.
`
`2.
`Statutory Grounds of Challenge
`Petitioner requests that claims 1, 4-6, 9, and 31 be canceled as unpatentable
`
`under 35 U.S.C. §§ 102 and/or 103 for the following reasons:
`
`Ground 1.
`
`Claims 1, 4-6, 9, and 31 are anticipated under § 102(b) over
`
`Decker.
`
`Ground 2.
`
`Claims 1, 4-6, 9, and 31 are invalid under 35 U.S.C. § 103 as
`
`obvious over Tsuboi in view of Asai, further in view of Gage and Lister.
`
`Ground 3.
`
`Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious over Decker
`
`in view of Arima.
`
`Ground 4.
`
`Claim 4 is invalid under 35 U.S.C. § 103(a) as obvious over Decker
`
`in view of Tsuboi.
`
`Petitioner details the reasons for unpatentability and specific evidence
`
`supporting this petition below.
`
`
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`7
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`IPR Petition of U.S. Patent No. 6,886,956
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`E. Overview of the Cited Art
`Before the priority date for the ’956 patent, the automotive and lighting
`
`industries were incorporating light emitting diodes (“LEDs”) and edge-lit panels into
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`vehicle lighting technology. The preceding decades ushered in major technological
`
`advances in lighting technology, with LEDs entering the market in 1968 and
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`experiencing significant progress thereafter. M. Lister, LEDs for exterior lighting,
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`Automotive Engineer v. 17 no. 5, at 2, col. 1 (Oct./Nov. 1992) (Ex. 1011, “Lister”).
`
`By the early 1990s, it was understood that LEDs offered “overwhelming advantage[s]”
`
`over conventional light sources. See id. at 2, col. 2. LEDs outperformed the reliability
`
`of incandescent lamps, offering “over 50,000 hours of operating life compared to a
`
`few thousand hours at best for incandescent lamps.” Id. LEDs turn on faster than
`
`incandescent lamps. Id. at 2, col. 3. LEDs offered high-brightness and different
`
`colors, making them fit for exterior lighting. Id. at 2, col. 1. LEDs offered “greater
`
`freedom in styling,” opening the possibility of lighting for vehicles in “areas subject to
`
`shock and vibration where traditionally incandescent lights would not be appropriate.”
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`Id. at 2, col. 3. LEDs’ reliability enabled vehicle designers to incorporate them into
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`sealed-for-life designs, enabling “smoother, more aesthetically-pleasing designs.” Id. at
`
`2, col. 3. And LEDs were cost effective, because even though they cost more per-unit,
`
`their use reduced costs of design complexity, “sheet metal, additional parts, labour, and
`
`other costs.” Id.
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`IPR Petition of U.S. Patent No. 6,886,956
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`LEDs also were understood to increase the efficiency of light transmission
`
`between a light source and an illuminated panel, by allowing the light source to be
`
`attached directly to the panel. Gaps between a light source and panel input were
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`known to create certain inefficiencies in light transmission, including “insertion loss”
`
`or “Fresnel loss”—i.e., the reflection of light back from a panel input surface. Ex.
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`1003, West Decl. ¶ 68. A 1981 manual published by engineers at the Hewlett-Packard
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`company describes these Fresnel losses. Optoelectronics/ Fiber-Optics Applications
`
`Manual (2d ed. 1981), by S. Gage et al. (Ex. 1010, “Gage”). Gage’s teachings of
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`optoelectronic principles—including LED and lighted-panel design—are applicable to
`
`automotive lighting applications, and would have been understood by a POSITA. Ex.
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`1003, West Decl. ¶ 69.
`
`As described in Gage, the phenomenon of Fresnel reflection loss may arise
`
`when a void is present between a light source and the panel. Ex. 1010, Gage at 39-41
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`[12.13-12.15] § 12.6. To avoid that problem, Gage teaches to use an LED Light Bar
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`Module “directly coupled into the [panel] base plastic” and “epoxied in place,
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`eliminating any Fresnel loss between the Module and the base plastic.” Id. at 41
`
`[12.15], Fig. 12.6-4 (below); see also id. at 33 [12.7] § 12.2.3 (“If a void is allowed to
`
`occur between the [panel] and the face of the LED device package, light loss through
`
`the void will cause uneven illumination of the [panel].”); Fig. 12.2.3-2.
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`
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`IPR Petition of U.S. Patent No. 6,886,956
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`
`Ex. 1010, Gage at 41 [12.15], Fig. 12.6-4
`As noted in Gage, the ability to attach the light source to the panel (and thereby
`
`reduce Fresnel losses) required using an LED light source, because an incandescent
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`lamp generates significant heat, which renders direct attachment to an edge-lighted
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`panel impractical. See id. at 41 [12.15] § 12.6 (“incandescent lamp could be epoxied in
`
`place [to] eliminate the Fresnel losses but would provide an undesirable thermal path
`
`between the lamp and the base plastic as well as make periodic lamp replacement
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`rather difficult”).
`
`Designers began to use LEDs not only for their unique features, but also for
`
`their ability to replace traditional light sources. In fact, the named inventor of the ’956
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`patent, Mr. Parker, recognized this interchangeability between traditional light sources
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`and LEDs in his prior patent directed to a “Thin Panel Illuminator.” U.S. Pat. No.
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`5,005,108, issued on April 2, 1991, to Mr. Parker and David Pristash (Ex. 1007,
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`
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`10
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`IPR Petition of U.S. Patent No. 6,886,956
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`“Pristash”). In the light emitting panel described in Pristash, Mr. Parker treats
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`conventional light sources and LEDs interchangeably. For example, Mr. Parker
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`explains that “[a] light source 3 of any suitable type may be used . . . . Light source 3
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`includes a radiation source 8 such as an arc lamp, an incandescent bulb, a lens end
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`bulb, an LED or a fluorescent tube or the like . . . .” Id. at 3:9-17. The remainder of
`
`the specification refers generally to a “light source 3,” treating incandescent lights and
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`LEDs interchangeably.
`
`Moreover, Mr. Parker understood LEDs to be interchangeable in many
`
`contexts, including automotive applications. Mr. Parker taught in Pristash that the
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`invention (which contemplated using LEDs) may be used in “a great many different
`
`applications, including . . . safety lighting for both commercial and industrial as well as
`
`automotive applications . . . .” Id. at 8:14-23 (emphasis added). Thus, Pristash’s
`
`explanation of LEDs and automotive panel applications presaged the disclosures of
`
`the ’956 patent on those very topics. Id. at 8:13-22. The additional features of the ’956
`
`patent also were known, as is evident from the following references.
`
`1.
`Decker (1993)
`On September 2, 1991, Detlef Decker applied for a European patent on his new
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`signal lamp for motor vehicles. German Unexamined Patent Specification No. DE 41
`
`29 094 A1 (Ex. 1004, “Decker”). The application published on March 4, 1993, making
`
`it prior art against the ’956 patent under § 102(b). As detailed in the discussion and
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`claim charts below, Decker anticipates claims 1, 4-6, 9, and 31.
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`IPR Petition of U.S. Patent No. 6,886,956
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`Decker disclosed a vehicle signal lamp that simply and economically provided
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`“even illumination at a low current consumption.” Ex. 1004, Decker at 2, col. 1. To
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`do so, Decker invented a system that used “only a small number of [LEDs].” Id. at 2,
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`col. 2. Prior embodiments had used many LEDs “arranged in a short distance to one
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`another to obtain an even illumination,” but the large number of LEDs increased
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`production cost and current consumption. Id. at 2, col. 1. Decker reduced the
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`number of LEDs by incorporating light guide elements that transmit light across larger
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`surface areas, thereby dispersing the light and ensuring even and economical
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`illumination. Id. at 2, col. 2.
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`Each of Decker’s signal lamps included LEDs and light guide elements L. Each
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`light guide L is an elongated element with an LED at one end, as shown by annotated
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`Fig. 3 below. As shown in Fig. 3, the LED emits light into light guide element L,
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`which has deformities in the form of prisms P on one side. Id. at 5, col. 2. If the light
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`hits one of these deformities, it is reflected in such a way that it exits the light guide on
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`the opposite side. Id. (describing “path of the rays in the light guide (L)”). The
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`amount of light emitted along the length of the light guide element L can be controlled
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`by “changing the prism angles and/or the prism division and/or the prism depth.” Id.
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`IPR Petition of U.S. Patent No. 6,886,956
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`Ex. 1004,
`Decker, Fig. 3 (annotated)
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`Ex. 1004,
`Decker, Fig. 9 (annotated)
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`Decker discloses groups (GP), formed by a number of LEDs associated with
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`
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`light guides L, arranged parallel to one other, and placed behind an end plate A, as
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`illustrated in Figure 1 (below). In one embodiment, the “light guide elements (L) of a
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`group (GP) can also be developed in one piece.” Id. at 5, col. 1. The group GP
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`illuminates the transparent end plate A, which acts as a transparent substrate overlying
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`and covering (and thus necessarily protecting) the groups GP. Id. at 4, col. 2. Figure 1,
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`below, shows a housing G holding four end plates A, each having a group GP for
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`illumination. See also Fig. 4 and accompanying description at 5, col. 2 (“end plate (A)
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`can be part of a housing (G) and/or a fastening means (B).”).
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`IPR Petition of U.S. Patent No. 6,886,956
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`
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`Ex. 1004, Decker, Fig. 1
`The transparent substrate of Decker’s lamp assembly forms an exterior portion
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`of the vehicle because, as Decker explains, the “lamp can be installed into a motor
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`vehicle body or attached to a motor vehicle body.” Id. at 4, col. 1; accord id. at 2, col. 1
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`(invention relates to a “signal lamp for motor vehicles . . . to be installed into or
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`attached to a motor vehicle body”).
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`2.
`Tsuboi (1982)
`Well over a decade before Mr. Parker filed for his patent, Toshitsuke Tsuboi of
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`the Japan-based Koito Manufacturing Company (“Koito”) submitted a Japanese
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`application for his own vehicle light fixture using a light guide. Japanese Laid Open
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`Utility Model No. JPS57-60171 (published Dec. 22, 1982) (Ex. 1005, “Tsuboi”).
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`Tsuboi described known illuminated panels used to direct light to the lateral portions
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`of the vehicle lamp. Ex. 1005, Tsuboi at 2 (“[l]ight from the bulb 4 is conveyed by the
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`light guide plate 5 to the ends of lateral space 3b so as to form uniform illumination
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`over the entire surface of the front lens 2”). The known vehicle lamps depicted in
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`IPR Petition of U.S. Patent No. 6,886,956
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`Tsuboi—illustrated, e.g., in Figure 1 (below, left)— included a light bulb (shown in
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`red) transmitting light rays (8) into a light guide plate 5 (yellow) via input 6. Id. at 2.
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`Serrated deformities on the back of the light guide plate, called “reflecting member 7,”
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`reflected light through the light guide plate (ray 8b) and caused it to exit the plate and
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`the vehicle light fixture (ray 8c). Id. Rays emitted from the light guide plate 5 (8a, 8c)
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`illuminated a front lens 2 (green). Id.
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`Ex. 1005, Tsuboi, Fig. 1 (annotated)
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`Ex. 1005, Tsuboi, Fig. 4 (annotated)
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`
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`Tsuboi recognized inefficiencies in the known design, and provided
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`
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`improvements by placing a plurality of prisms (121,2) on the side of the light guide
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`plate, as illustrated, e.g., in Figure 4 (above, right). Id. at 3. These prisms increased the
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`area of the light-entrance surface of the light guide, thereby increasing the amount of
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`light that enters and subsequently exits the light guide. Id. at 4. Like the known
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`vehicle lamp illustrated in Figure 1, Tsuboi’s improved design propagated light
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`through the illuminated panel around the vehicle corner, as illustrated in annotated
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`Figure 4. See also Ex. 1003, West Decl. ¶ 31.
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`IPR Petition of U.S. Patent No. 6,886,956
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`Tsuboi further taught that the illuminated panel (highlighted below in yellow)
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`could either be covered by a lens (green, below at left) or could be left uncovered on
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`the vehicle exterior (below at right). Accord ’956 patent, at 9:8-12 (“panel members 29
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`may form the exterior surface . . . or a lens or film may cover the panel members”).
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`
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`Tsuboi, Fig. 4 (annotated)
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`Tsuboi, Fig. 6 (annotated)
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`
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`3.
`Asai (1986)
`Another Koito engineer, Tomoyuki Asai, also solved the problem of uneven
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`illumination when lighting a vehicle lamp around a corner. Japanese Laid Open Utility
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`Model No. S61-153201 (laid open Sept. 22, 1986) (Ex. 1006, “Asai”). Asai used an
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`LED to edge-light a lens plate that served as a light guide to conduct light throughout
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`the lens and prevent dark portions along the length of the vehicle lamp. Id. at 3. As is
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`shown in annotated Fig. 3 below, Asai placed an LED 20 (shown in red) at the end of
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`wraparound lens 31, which conducts light from the LED.
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`IPR Petition of U.S. Patent No. 6,886,956
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`
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`Ex. 1006, Asai, Fig. 3 (annotated)
`The wraparound lens 31 includes indentations and protrusions 32 formed along its
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`rear face that reflect the light from LED 20 and cause it to be emitted out of
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`wraparound portion 31. Id. at 5.
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`Asai explains that its configuration allows the vehicle to use the many
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`advantages of LEDs without light loss. For example, Asai teaches that its
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`configuration provides even lighting with “a considerably low amount of heat
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`generation, unlike a general light source,” and that it eliminates the need for a
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`retroreflector, ensuring a minimum plate-thickness. Id. at 6. Further, Asai explains
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`that the long life of LEDs eliminates the worry of conventional-light-source burnout.
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`Id.
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`4.
`Additional References Containing Relevant Teachings
`As detailed in this petition, independent Challenged Claim 1 is unpatentable as
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`anticipated by one or more of the foregoing references. The foregoing references also
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`IPR Petition of U.S. Patent No. 6,886,95