`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1-3,5-7, 9-10, 13-15, 19,
`21, and 23-27 OF U.S. PATENT NO. 7,384,177
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`v.
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 7,384,177
`Issue Date: June 10, 2008
`Patent Title: Light Emitting Panel Assemblies
`IPR Case No.: To Be Assigned
`
`Scott T. Weingaertner
`Registration No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`Tel.: (212) 556-2227
`Fax: (212) 556-2222
`Email: sweingaertner@kslaw.com
`
`Natasha H. Moffitt
`Registration No. 53,340
`King & Spalding LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2783
`Fax: (404) 572-5134
`Email: nmoffitt@kslaw.com
`
`
`
`
`
`Page 1 of 65
`
`Mercedes-Benz USA, LLC, Petitioner - Ex. 1009
`
`

`

`VI.
`
`TABLE OF CONTENTS
`I. MANDATORY NOTICES ......................................................................... 1
`II.
`PAYMENT OF FEES ................................................................................ 4
`III. STANDING ................................................................................................ 4
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1-3, 5-7, 9-10,
`13-15, 19, 21, and 23-27 OF THE ’177 PATENT ........................................ 4
`A.
`Technology Background ............................................................................... 5
`B.
`The Alleged Invention Of The ’177 Patent ................................................ 6
`C.
`The Prosecution History Of The ’177 Patent ............................................ 7
`D.
`The Independent Claims Of The ’177 Patent ............................................ 7
`CLAIM CONSTRUCTION ....................................................................... 8
`A.
`Standards For Claim Construction .............................................................. 8
`B.
`“deformities” (Claim 14, 23-27) ................................................................... 9
`SUMMARY OF PRIOR ART TO THE ’177 PATENT FORMING THE
`BASIS FOR THIS PETITION .................................................................. 9
`A.
`Admitted Prior Art ......................................................................................... 9
`A.
`U.S. Patent No. 5,054,885 (“Melby”) (Ex. 1006) ..................................... 10
`B.
`U.S. Patent No. 5,453,855 (“Nakamura”) (Ex. 1007) .............................. 10
`C.
`U.S. Patent No. 4,142,781 (“Baur”) (Ex. 1008) ....................................... 10
`D. U.S. Patent No. 5,432,626 (“Sasuga”) (Ex. 1009) .................................... 11
`E.
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1010) .................................. 11
`F.
`U.S. Patent No. 5,567,042 (“Farchmin”) (Ex. 1011) ............................... 11
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM............... 12
`A. Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19, 21, And 23-25, 27 Are
`Unpatentable Under 35 U.S.C. §103(a) As Being Obvious Over Melby12
`B. Ground 2: Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19, 21, 23-24, And 26 Are
`Unpatentable Under 35 U.S.C. §102 As Being Anticipated By
`Nakamura ...................................................................................................... 22
`C. Ground 3: Claims 1, 2, 13, And 14 Are Unpatentable Under 35 U.S.C.
`§103(a) As Being Obvious Over Baur ....................................................... 32
`D. Ground 4: Claims 6, 9, 10, 15, 19, 21, And 23 Are Unpatentable Under
`35 U.S.C. §103 As Being Obvious Over Baur In View Of Nakamura . 37
`E. Ground 5: Claims 1, 2, 6, 7, 9, 10, 13, 15, And 21 Are Unpatentable
`Under 35 U.S.C. §103(a) As Obvious Over Sasuga In View Of
`Farchmin ....................................................................................................... 43
`Ground 6: Claims 14 And 19 Are Unpatentable Under 35 U.S.C.
`§103(a) As Obvious Over Sasuga In View Of Farchmin In View Of
`Nakamura ...................................................................................................... 53
`G. Ground 7: Claims 23, 25, And 26 Are Unpatentable Under 35 U.S.C.
`§103(a) As Obvious Over Sasuga In View Of Farchmin In View Of
`
`V.
`
`F.
`
`Page 2 of 65
`
`

`

`Pristash .......................................................................................................... 55
`VIII. CONCLUSION ......................................................................................... 58
`
`
`
`
`
`
`Page 3 of 65
`
`

`

`PETITIONER’S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,384,177
`Prosecution History of U.S. Patent No. 7,384,177
`Complaints filed in Related District Court Cases
`Declaration of Michael J. Escuti, Ph.D. (“Escuti Decl.”)
`U.S. Patent No. 5,461,547 (“Ciupke”)
`U.S. Patent No. 5,054,885 (“Melby”)
`U.S. Patent No. 5,453,855 (“Nakamura”)
`U.S. Patent No. 4,142,781 (“Baur”)
`U.S. Patent No. 5,432,626 (“Sasuga”)
`U.S. Patent No. 5,005,108 (“Pristash”)
`U.S. Patent No. 5,567,042 (“Farchmin”)
`U.S. Patent No. 5,160,195 (“Miller”)
`J. A. Castellano, Handbook of Display Technology, Academic Press Inc., San
`Diego, 1992, at pp. 9-13 and Ch. 8
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`European Patent Application Publication No. EP500960 (“Ohe”)
`U.S. Patent No. 5,828,488 (“Ouderkirk”)
`3M product brochure 75-0500-0403-7, “Brightness Enhancement Film
`(BEF).” 2 pages (1993)
`U.S. Patent No. 5,706,134 (“Konno”)
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`U.S. Patent No. 5,381,309 (“Borchardt”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`
`1021
`1022
`1023
`
`Page 4 of 65
`
`

`

`Pursuant to 35 U.S.C. §311, Petitioner hereby respectfully requests inter partes
`
`review of Claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of Ex. 1001, U.S. Patent No.
`
`7,384,177 (“the ’177 Patent”) which issued on June 10, 2008. The challenged claims
`
`are unpatentable under 35 U.S.C. §§102 and 103 over the prior art publications
`
`identified and applied in this Petition.
`
`I. MANDATORY NOTICES
`Pursuant to 37 C.F.R. §42.8, Petitioner provides the following mandatory
`
`disclosures:
`
`A. Real Parties-In-Interest. Mercedes-Benz USA, LLC, a Delaware limited
`
`liability company with its principal place of business at 1 Mercedes Drive, Montvale,
`
`New Jersey 07465, and Mercedes-Benz U.S. International, Inc., an Alabama
`
`corporation with its principal place of business at 1 Mercedes Drive, Vance, Alabama
`
`35490, are real parties-in-interest.
`
`B. Related Matters. Pursuant to 37 C.F.R. §42.8(b)(2), Petitioner submits that
`
`the ’177 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex. 1003), against Petitioner in the
`
`United States District Court for the Eastern District of Texas: Innovative Display
`
`Technologies LLC v. Mercedes-Benz U.S. International, Inc. and Mercedes-Benz USA, LLC
`
`Case No. 2:14-cv-535. In addition, the ‘177 Patent is the subject of another IPR,
`
`Page 5 of 65
`
`

`

`IPR2014-01362. The ’177 Patent is also asserted in at least the actions listed in the
`
`chart below.
`
`Description
`Innovative Display Technologies LLC (“IDT”) v. Acer Inc.
`et al.
`IDT v. Apple Inc.
`IDT v. American Honda Motor Co., et al.
`IDT v. Apple Inc.
`IDT v. AT&T Inc., et. al.
`IDT v. Best Buy Co., Inc., et al.
`IDT v. BMW of North America, LLC, et. al.
`IDT v. Canon U.S.A. Inc., et. al.
`IDT v. Dell Inc.
`IDT v. Ford Motor Company
`IDT v. Garmin International, Inc., et al.
`IDT v. General Motor Company
`IDT v. Google Inc., et. al.
`IDT v. Hewlett-Packard Corporation
`IDT v. Huawei Investment et al.
`IDT v. Hyundai Motor Group, et al.
`IDT v. Mazda Motor Corporation, et al.
`IDT v. LG Electronics, Inc., et al.
`IDT v. Microsoft Corporation
`IDT v. Mitac Digital Corporation, et. al.
`IDT v. Nikon Inc., et. al.
`IDT v. Nissan Motor, Co., Ltd., et. al.
`IDT v. Nokia Corporation and Nokia Inc.
`IDT v. Research in Motion Limited et al.
`
`Docket Number
`2:13-cv-522, EDTX
`
`2:14-cv-00030, EDTX
`2:14-cv-00222, EDTX
`2:14-cv-00301, EDTX
`2:14-cv-00720, EDTX
`2:14-cv-00532, EDTX
`2:14-cv-00106, EDTX
`2:14-cv-00142, EDTX
`2:13-cv-00523, EDTX
`1:14-cv-00849, D. Del.
`2:14-cv-00143, EDTX.
`1:14-cv-00850, D. Del.
`2:14-cv-00302, EDTX
`2:13-cv-00524, EDTX
`2:13-cv-00525, EDTX
`2:14-cv-00201, EDTX
`2:14-cv-00624, EDTX
`1:13-cv-02109, D. Del
`2:13-cv-00783, EDTX
`2:14-cv-00144, EDTX
`2:14-cv-00145, EDTX
`2:14-cv-00202, EDTX
`2:13-cv-00784, EDTX
`2:13-cv-00526, EDTX
`
`Page 6 of 65
`
`

`

`Description
`IDT v. Sprint Corporation, et. al.
`IDT v. T-Mobile U.S., Inc., et al.
`IDT v. Tomtom North America Inc., et. al.
`IDT v. Toyota Motor Corporation, et al.
`IDT v. Verizon Communications, Inc., et al.
`IDT v. Volkswagen Ag, et al.
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`DDG and IDT v. Lenovo Group Ltd., et al.
`DDG and IDT v. LG Electronics Inc., et al.
`DDG and IDT v. Pantech Co.,Ltd, et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`2:14-cv-00721, EDTX
`2:14-cv-00723, EDTX
`2:14-cv-00146, EDTX
`2:14-cv-00200, EDTX
`2:14-cv-00722, EDTX
`2:14-cv-00300, EDTX
`2:13-cv-00527, EDTX
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`1:13-cv-02108, D.Del.
`1:13-cv-02109, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`
`Petitioner is concurrently filing petitions to review U.S. Patent Nos. 7,300,194,
`
`7,404,660, 6,755,547, 7,434,974, and 8,215,816, which are in the same family as the
`
`‘177 Patent. The ‘177 Patent is a divisional of U.S. Patent No. 7,160,015.
`
`C. Lead and Back-up Counsel.
`
`Petitioner provides the following designation of counsel:
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Page 7 of 65
`
`

`

`LEAD COUNSEL
`Scott T. Weingaertner
`Reg. No. 37,756
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, NY 10036-2601
`Tel.: (212) 556-2227
`Fax: (212) 556-2222
`sweingaertner@kslaw.com
`
`BACK-UP COUNSEL
`Natasha H. Moffitt
`Reg. No. 53,340
`King & Spalding LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2783
`Fax: (404) 572-5134
`nmoffitt@kslaw.com
`
`D. Service Information. Pursuant to 37 C.F.R. §42.8(b)(4), Petitioner identifies
`
`the following service information: Please direct all correspondence regarding this
`
`proceeding to lead counsel at the address identified above. Petitioner consents to
`
`electronic service by email: sweingaertner@kslaw.com and nmoffitt@kslaw.com.
`
`II.
`
`PAYMENT OF FEES
`The U.S. Patent Office is authorized to charge the filing fee for this Petition, as
`
`well as any other fees that may be required in connection with this Petition or these
`
`proceedings on behalf of Petitioner, to the deposit account of King & Spalding LLP,
`
`Deposit Account No. 11-0980.
`
`III. STANDING
`Pursuant to 37 C.F.R. §42.104(a), Petitioner certifies that the patent sought for
`
`review, the ’177 Patent, is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review of the patent.
`
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1-3, 5-7, 9-10,
`13-15, 19, 21, and 23-27 OF THE ’177 PATENT
`Pursuant to 37 C.F.R. §42.104(b), Petitioner requests that the Board find
`
`Page 8 of 65
`
`

`

`unpatentable claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 Patent. Such
`
`relief is justified as the alleged invention of the '177 Patent was described by others
`
`prior to the effective filing date of the ‘177 Patent.
`
`A. Technology Background
`Generally, light emitting panel assemblies are used in conjunction with liquid
`
`crystal displays (“LCDs”) and various applications thereof, as a backlight module to
`
`provide light to the display. Ex. 1004, Declaration of Michael J. Escuti, Ph.D.
`
`(“Escuti Decl.”), ¶38. The light emitting panel assembly is composed of all the
`
`elements of the LCD other than the liquid crystals themselves. Id. For example, the
`
`light emitting panel assembly is all but element 12 (in yellow) in the annotated figure
`
`below from Ex. 1005, U.S. Patent No. 5,461,547 (“Ciupke”).
`
`
`
`
`
`In order to produce surface illumination with the target brightness and
`
`uniformity at the lowest possible electrical power, the light emitting panel assembly
`
`can include features to spatially homogenize and control the angular distribution of
`
`emitted light. Escuti Decl., ¶42. Examples of these features include light pipes, a
`
`transition area, reflectors, and various types of microstructured deformities (e.g.,
`
`microprisms, diffusers, and microlenses). Id. The light pipe, also sometimes called a
`
`light guide or wave guide, accepts light injected from the side and distributes it across
`
`Page 9 of 65
`
`

`

`the emission area. The ’177 Patent calls the light pipe a “transparent panel member”
`
`(e.g., Ex. 1001, 1:19-20), “light emitting panel member” (e.g., id. 1:32-33), and
`
`“transparent light emitting panel” (e.g., id. 2:61). See Escuti Decl., ¶43. The transition
`
`area, which is usually between the light source and the light pipe, is used to securely
`
`position the light source relative to the light pipe, and to spread and transmit light to
`
`produce a more uniform input illumination. Id. ¶44. The ’177 Patent refers to a “light
`
`transition area or member” that enables emitted light “to make the transition from the
`
`light source to the light emitting panel 2” and was “well known in the art.” See Ex.
`
`1001, 2:58-3:3. Deformities, such as microprisms, diffusers, and microlenses, are
`
`employed to control the direction and spatial uniformity of light within light emitting
`
`panel assemblies. Escuti Decl., ¶¶45-49.
`
`B. The Alleged Invention Of The ’177 Patent
`The ’177 Patent relates “to light emitting panel assemblies each including a
`
`transparent panel member for efficiently conducting light, and controlling the light
`
`conducted by the panel member to be emitted from one or more light output areas
`
`along the length thereof.” Ex. 1001, 1:19-23. As the ’177 Patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Id. 1:24. The purported
`
`advantage of the alleged invention described in the ’177 Patent relates to several
`
`different light emitting assembly configurations which allegedly provide for better
`
`control of light output from the panel assembly and for more “efficient” utilization of
`
`Page 10 of 65
`
`

`

`light, thereby resulting in greater light output from the panel assembly. Id. 1:25-29.
`
`Yet, as shown further below, prior art already disclosed such advantages.
`
`The ’177 Patent discloses light emitting assemblies having a tray that forms a
`
`cavity or recess. Ex. 1001, Abstract. The tray acts as a back, side or edge reflector
`
`having one or more secondary reflective or refractive surfaces. Id.
`
`C. The Prosecution History Of The ’177 Patent
`During prosecution, the examiner rejected claims 1-28 under 35 U.S.C. § 112,
`
`first paragraph, in the first office action for failing to comply with the written
`
`description requirement. Specifically, the examiner did not believe that the tray having
`
`“at least one sheet, film or substrate positioned over the cavity or recess of the tray,”
`
`was supported in the specification. In response, the applicant amended Claim 1 to
`
`require that the sheet, film or substrate be “overlying the assembly” rather than
`
`“positioned over the cavity or recess.” Ex. 1002, Reply to October 3, 2007 Office
`
`Action, at 2. For alleged support, the applicant pointed to col. 6, ll. 29-33 stating
`
`“Moreover, a transparent film, sheet or plate 27 may be attached or positioned against
`
`the side or sides of the panel member from which light is emitted using a suitable
`
`adhesive 28 or other method in order to produce a desired effect.” Id. at 7.
`
`D. The Independent Claims Of The ’177 Patent
`The ’177 Patent relates to a light emitting assembly having a tray that forms a
`
`cavity or recess containing one or more light sources and “[a] sheet, film or substrate
`
`is positioned over the cavity or recess for controlling the light emitted from the
`
`Page 11 of 65
`
`

`

`assembly.” Ex. 1001, Abstract (emphasis added). This is inconsistent, however, with
`
`the independent claims as amended during prosecution. Claim 1 recites:
`
`A light emitting assembly comprising
`[1] a tray having a back wall and continuous side walls that
`form a hollow cavity or recess completely surrounded by
`the side wall,
`[2] at least one light source located, mounted or positioned
`in the cavity or recess, and
`[3] at least one sheet, film or substrate overlying the
`assembly for controlling the
`light emitted from the
`assembly to fit a particular application . . . .
`A plain reading of Claim 1 (and Claim 15) illustrates a light emitting assembly
`
`comprising three elements, one of which is the film, sheet, or substrate. But, as
`
`written and amended, the film, sheet, or substrate of both independent claims must
`
`also overly the assembly of which it is part. The film, sheet, or substrate, however,
`
`cannot both be part of the assembly and at the same time overly the assembly.
`
`Because the independent claims recite a physical impossibility, for the purposes
`
`of this inter partes review only, Petitioner will interpret the claims as the Patent Owner
`
`is apparently interpreting them in at least one of the Related Matters.
`
`V.
`
`CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`A claim subject to inter partes review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`Page 12 of 65
`
`

`

`§42.100(b). This means that the words of the claim are given their plain meaning
`
`from the perspective of one of ordinary skill in the art unless that meaning is
`
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`Petitioner submits, for the purposes of inter partes review only, that the claim terms are
`
`presumed to take on their broadest reasonable interpretation in light of the
`
`specification of the ’177 Patent.
`
`B.
`“deformities” (Claim 14, 23-27)
`The ’177 Patent expressly defines the term “deformities” as follows: “As used
`
`herein, the term deformities or disruptions are used interchangeably 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, 4:44-48. Thus,
`
`based on the express definition of deformities in the specification, “deformities”
`
`(Claim 14, 23-27) should be construed to mean “any change in the shape or geometry
`
`of a surface and/or coating or surface treatment that causes a portion of the light to
`
`be emitted.” Escuti Decl., ¶63.
`
`VI. SUMMARY OF PRIOR ART TO THE ’177 PATENT FORMING THE
`BASIS FOR THIS PETITION
`A.
`Admitted Prior Art
`The ’177 Patent discusses the following functionality and structure of prior art
`
`
`
`light emitting assemblies: (1) a “transparent light emitting panel 2,” (2) “one or more
`
`light sources 3 which emit light in a predetermined pattern,” and (3) “a light transition
`
`Page 13 of 65
`
`

`

`member or area 4 used to make the transition from the light source 3 to the light
`
`emitting panel.” Ex. 1001, 2:64-3:4 (describing these elements and their functionalities
`
`as being “well known in the art”).
`
`A. U.S. Patent No. 5,054,885 (“Melby”) (Ex. 1006)
`Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14-16.
`
`Melby qualifies as prior art under 35 U.S.C. § 102(b) because Melby issued as a patent
`
`on October 8, 1991, more than one year before the June 27, 1995 priority date to
`
`which the ’177 Patent may be entitled. Melby was not cited or considered during
`
`prosecution of the application that led to the ’177 Patent.
`
`B. U.S. Patent No. 5,453,855 (“Nakamura”) (Ex. 1007)
`Nakamura discloses a liquid crystal display device that is back illuminated by
`
`LEDs. Ex. 1007, 1:9-10. Nakamura qualifies as prior art under 35 U.S.C. § 102(e)
`
`because Sasuga was filed on December 9, 1993, before the June 27, 1995 priority date
`
`to which the ’177 Patent may be entitled. Nakamura was not cited or considered
`
`during prosecution of the application that led to the ’177 Patent.
`
`C. U.S. Patent No. 4,142,781 (“Baur”) (Ex. 1008)
`Baur discloses an electro-optical display device which includes fluorescent
`
`plates having mirrored edge surfaces. Ex. 1008, Abstract. Baur qualifies as prior art
`
`under 35 U.S.C. §102(b) because Baur issued as a patent on March 6, 1979, more than
`
`one year before the June 27, 1995 priority date to which the ’177 Patent may be
`
`entitled. Baur was not cited or considered during prosecution of the application that
`
`Page 14 of 65
`
`

`

`led to the ’177 Patent.
`
`D. U.S. Patent No. 5,432,626 (“Sasuga”) (Ex. 1009)
`Sasuga discloses a liquid crystal display device having a metal casing. Ex. 1009,
`
`1:9-10. Sasuga qualifies as prior art under 35 U.S.C. § 102(e) because Sasuga was filed
`
`on March 11, 1993, before the June 27, 1995 priority date to which the ’177 Patent
`
`may be entitled. Sasuga was not cited or considered during prosecution of the
`
`application that led to the ’177 Patent.
`
`E. U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1010)
`Pristash discloses a thin panel illuminator for more efficient light transmission
`
`from the light source to the light emitting panel. Ex. 1010, Abstract. Pristash
`
`qualifies as prior art under 35 U.S.C. §102(b) because Pristash issued as a patent on
`
`April 2, 1991, more than one year before the June 27, 1995 priority date to which the
`
`’177 Patent may be entitled. Pristash was cited as a reference in an Information
`
`Disclosure Statement during prosecution, but was not relied upon as the basis to
`
`reject any claim. In fact, Pristash was not discussed on the record at all during the
`
`prosecution proceedings.
`
`F. U.S. Patent No. 5,567,042 (“Farchmin”) (Ex. 1011)
`Farchmin discloses backlighting for an LCD display including reflector surfaces
`
`which maximize the emitted light transmitted to the display. Ex. 1011, Abstract.
`
`Farchmin qualifies as prior art under 35 U.S.C. § 102(e) because Farchmin was filed
`
`on May 27, 1994, before the June 27, 1995 priority date to which the ’177 Patent may
`
`Page 15 of 65
`
`

`

`be entitled. Farchmin was not cited or considered during prosecution of the
`
`application that led to the ’177 Patent.
`
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`
`In light of the disclosures detailed below, the ’177 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Ground # Ground
`1
`103(a)
`
`Prior art
`Melby
`
`Exhibit(s) #
`Ex. 1006
`
`2
`
`102(e)
`
`Nakamura
`
`Ex. 1007
`
`Claims
`1-3, 5-7, 9-10, 13-
`15, 19, 21, 23-25, 27
`1, 2, 6, 7, 9, 10, 13-
`15, 19, 21, 23-24, 26
`1, 2, 13, 14
`6, 9, 10, 15, 19, 21,
`23
`1, 2, 6, 7, 9, 10, 13,
`15, 21
`14 and 19
`
`23, 25, and 26
`
`3
`4
`
`5
`
`6
`
`7
`
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Baur
`Ex. 1008
`Baur and
`Ex. 1008 and Ex.
`Nakamura
`1007
`Sasuga and
`Ex. 1009 and Ex.
`Farchmin
`1011
`Sasuga, Farchmin,
`Exs. 1009, 1011
`and Nakamura
`and 1007
`Sasuga, Farchmin,
`Exs. 1009, 1011,
`and Pristash
`and 1010
`A. Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19, 21, And 23-25, 27 Are
`Unpatentable Under 35 U.S.C. §103(a) As Being Obvious Over
`Melby
`Melby discloses a light fixture for use in flat panel displays. Ex. 1006, 1:14-16.
`
`The “light fixture has a source of partially collimated light for emitting light having an
`
`axis of collimation.” Id. Abstract. Melby also discloses “a housing 30 including walls
`
`32, 34, 36 and 38 defin[ing] an optical cavity having an optical window” as well as a
`
`rear wall. Id. 2:44-45 (emphasis added); 2:63-65.
`
`Mebly discloses all of the limitations of claims 1-3, 5-7, 9-10, 13-15, 19, 21, 23-
`
`Page 16 of 65
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`

`

`25, and 27, but within both the first and third embodiments. A person of ordinary
`
`skill in the art would be motivated to pick and choose features of the different
`
`embodiments to combine because they are taught within the same patent and there is
`
`no disclosure suggesting that they should not or cannot be combined. See Escuti
`
`Decl., ¶¶67-68; see also Ex. 1006, at 3:1-6.
`
`The
`
`elements
`
`of
`
`independent claims 1 and 15 of
`
`the ’177 Patent are shown in the
`
`annotated
`
`figure
`
`at
`
`right,
`
`composed of Figure 1 and 3 of
`
`Melby that are labeled as claim
`
`elements.
`
`Regarding claims 1 and 15, Melby discloses a housing 30 with continuous side
`
`walls 32, 34, 36, and back wall 38, which form a cavity completely surrounded by the
`
`side walls. See Ex. 1006, at 2:63-65; see also Escuti Decl., ¶71. The housing includes
`
`mounted light sources 42 and 44 (claims 1, 6, 15). The housing is also reflective,
`
`having reflective side walls, and contains secondary surfaces, structured surface 46
`
`made of prisms, which facilitate better mixing of light from the light sources (claims 9
`
`and 15), which may be LEDs (claim 19). See Ex. 1006, at 1:57-60, 2:15-17, 2:20-33,
`
`2:67-3:1; see also Escuti Decl., ¶¶75-80. Sheet 40 also overlies the assembly, as required
`
`Page 17 of 65
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`

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`by claims 1 and 15. The sheet may contain pillows optics or Fresnel prisms as taught
`
`by Fig. 1, which are a form of raised or depressed prismatic deformities (claims 14,
`
`23-25) and which reflect light, which provides additional light mixing (claim 10, 13,
`
`21). See Ex. 1006, at 2:11-14, 2:30-33; see also Escuti Decl., ¶¶111-147.
`
`Regarding claims 2, 3, 5, 7, the secondary reflective surfaces referred to as
`
`structured surface 46 in Melby, may be planar or curved as taught by Fig. 1, they may
`
`be prismatic, and they are in close proximity to the light sources, as can be seen in Fig.
`
`3. See Ex. 1006, at 3:1-14, 4:5-8, 2:15-20; see also Escuti Decl., ¶¶84, 88, 92-94, 102-
`
`103.
`
`The claim chart below shows a detailed analysis of how each element of claims
`
`1-3, 5-7, 9-10, 13-15, 19, 21, 23-25, and 27 of the ’177 Patent are obvious over Melby.
`
`For all these reasons, claims 1-3, 5-7, 9-10, 13-15, 19, 21, 23-25, and 27 are
`
`unpatentable in view of Melby and thus, Petitioner has a reasonable likelihood of
`
`prevailing with respect to at least one claim.
`
`’177 Claim Element
`1. A
`light
`emitting
`assembly comprising
`
`Melby (Ex. 1006)
`“A light fixture has a source of partially collimated light
`for emitting light having an axis of collimation. A
`structured surface has a plurality of prisms that are
`rendered reflective for reflecting light from the light
`source out of the cavity. The peaks of the prisms define a
`surface at least a portion of which makes an acute angle
`with the axis of collimation .” Ex. 1006, Abstract
`See Escuti Decl., ¶70.
`
`Page 18 of 65
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`

`

`’177 Claim Element
`[1.a] a tray having a back
`wall and continuous side
`walls that form a hollow
`cavity
`or
`recess
`completely
`surrounded
`by the side walls,
`
`Melby (Ex. 1006)
`“According to the invention a housing defines an optical
`cavity having an optical window.” Ex. 1006, 1:54-55.
`“Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window.” Ex. 1006, 2:63-
`65.
`
`
`
`See Escuti Decl., ¶¶71-72.
`“A source of partially collimated light 16 is positioned
`inside the optical cavity and adjacent side 10 of the
`housing.” Ex. 1006, 2:15-17.
`“Light from two partially collimated light sources is
`directed from light sources 42 and 44 to structured surface
`46.” Id. 2:67-3:1.
`See Escuti Decl., ¶73.
`“Light transmitting member 14 may be a transparent or
`translucent material. If desired, light transmitting member
`14 could include structures such as pillow optics or
`Fresnel prisms.” Id. 2:11-14; see also Fig. 1.
`“A transparent or translucent cover 40 lies in the optical
`window.” Id. 2: 65-55; see also Fig. 3.
`See Escuti Decl., ¶74.
`“A structured surface having a plurality of prisms thereon
`is positioned within the optical cavity such that the prisms
`reflect light through the optical window.” Ex. 1006, 1:57-
`60.
`
`[1.b] at least one light
`source located, mounted
`or positioned
`in
`the
`cavity or recess,
`
`[1.c] and at least one
`sheet, film or substrate
`overlying the assembly
`for controlling the light
`emitted
`from
`the
`fit
`assembly
`to
`a
`particular application,
`
`[1.d] wherein the tray
`acts as at least one of a
`back, side edge, and end
`edge reflector and has
`one or more secondary
`
`Page 19 of 65
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`

`

`’177 Claim Element
`flat, angled, faceted or
`curved
`reflective
`or
`refractive
`surfaces
`to
`redirect at least a portion
`of the light emitted by
`the
`light source
`in a
`predetermined manner
`within
`the cavity or
`recess.
`
`Melby (Ex. 1006)
`“Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window. A transparent or
`translucent cover 40 lies in the optical window. Light from
`two partially collimated light sources is directed from light
`sources 42 and 44 to structured surface 46.” Ex. 1006,
`2:63-3:1; see Fig. 3.
`invention may be
`the present
`“The structure of
`advantageously formed directly on the rear wall of the
`light fixture. Such a structure could be formed by
`injection molding. Alternatively a separate film having the
`structure surface described above could be placed in the
`light fixture.” Id. 2:44-49.
`“Side 22 of wall 12 is a structured surface having a
`plurality of, preferably triangular, prisms, 24, thereon. In a
`preferred embodiment, prisms 24 are linear prisms.
`Prisms 24 are rendered specularly reflective, typically by
`aluminum vapor coating. It is only necessary that prisms
`24 be specularly reflective on the side adjacent light source
`16, but is typically easier to vapor coat both sides. Such
`prisms
`reflect
`light
`from
`light source 16
`in a
`predetermined direction. Typically the predetermined
`direction will be perpendicular
`to
`transparent or
`translucent material 14.” Id. 2:23-33.
`“The peaks of the prisms of structured surface 46 may
`define a planar surface lying at an angle to the axis of
`collimation of the light sources, similar to the embodiment
`of FIG. 1 or may define a curved surface cutting through
`the beams of light as in the embodiment of FIG. 2.” Id.
`3:1-6.
`“FIG. 4 illustrates another embodiment of the invention
`wherein light source 14’ includes a light emitter 50 and a
`structured surface 52. Structured surface 52 acts in a
`manner similar to structured surface 22 to take light from
`a compact source 50 and provide a linear beam. The
`embodiment of FIG. 4 then acts similarly to the
`embodiment of FIG. 1 with surface 52 acting as a light
`
`Page 20 of 65
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`

`

`’177 Claim Element
`
`2. The assembly of claim
`1 wherein the refractive
`or reflective surfaces are
`flat, planar or curved.
`
`3. The assembly of claim
`1 wherein the refractive
`or reflective surfaces are
`prismatic or
`lenticular
`surfaces.
`
`5. The assembly of claim
`1 wherein the refractive
`or reflective surfaces are
`in close proximity to and
`around and behind the
`light source.
`
`Melby (Ex. 1006)
`source for structured surface 54.” Id. at 3:7-14; see also Fig.
`4 below.
`See Escuti Decl., ¶¶75-81.
`“The peaks of the prisms of structured surface 46 may
`define a planar surface lying at an angle to the axis of
`collimation of the light sources, similar to the embodiment
`of FIG. 1 or may define a curved surface cutting through
`the beams of light as in the embodiment of FIG. 2.” Ex.
`1006, 3:1-6.
`“[T]he peaks of said prisms defining a surface, at least a
`portion of said surface being smoothly curving and
`forming an acute angle with said axis of collimation . . . .”
`Id. at 4:5-8.
`See Escuti Decl., ¶¶83-85.
`“The peaks of the prisms of structured surface 46 may
`define a planar surface lying at an angle to the axis of
`collimation of the light sources, similar to the embodiment
`of FIG. 1 or may define a curved surface cutting through
`the beams of light as in the embodiment of FIG. 2.” Ex.
`1006, 3:1-6.
`See Escuti Decl., ¶¶87-89.
`“A source of partially collimated light 16 is positioned
`inside the optical cavity and adjacent side 10 of the
`housing. Light source 16 may be any sourc