UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner.
`
`U.S. Patent No. 7,384,177
`
`Issue Date: June 10, 2008
`
`Title: LIGHT EMITTING PANEL ASSEMBLIES
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 7,384,177
`
`Case No. IPR2015-01044
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`PRELIMINARY STATEMENT ................................................................ 1
`
`II. MANDATORY NOTICES ......................................................................... 3
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest .................................................................................... 4
`
`Related Matters ................................................................................................ 4
`
`Lead and Back-Up Counsel, and Service Information ............................... 8
`
`D.
`
`Payment of Fees (37 C.F.R. § 42.103)........................................................... 8
`
`III. THE ’177 PATENT .................................................................................... 9
`
`A. Overview of the Disclosure ........................................................................... 9
`
`IV. GROUNDS FOR STANDING ................................................................ 13
`
`V.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .......................................................................... 13
`
`A.
`
`B.
`
`C.
`
`Claims for Which Review is Requested ...................................................... 13
`
`Statutory Grounds of Challenge .................................................................. 13
`
`Claim Construction ....................................................................................... 14
`
`VI. CLAIMS 1, 6-7, 9-10, 13-15, 19, and 22 OF THE ’177 PATENT ARE
`UNPATENTABLE ................................................................................... 15
`
`A. Ground 1: Endo anticipates claims 1, 6-7, 9-10, 13-15, 19, and 22 ........ 15
`
`B. Ground 2: Musaka anticipates claims 1 and 13-14 ................................... 34
`
`C. Ground 3: Musaka renders claims 6-7, 9-10, 15, and 22 obvious .......... 44
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 6 ................................................................................................ 44
`
`Claim 7 ................................................................................................ 47
`
`Claim 9 ................................................................................................ 48
`
`Claim 10 .............................................................................................. 49
`
`
`
`ii
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`

`

`5.
`
`6.
`
`Independent Claim 15 ....................................................................... 51
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`Claim 22 .............................................................................................. 53
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`D. Ground 4: Musaka in combination with Tsunoda and Pristash
`renders claim 19 obvious .............................................................................. 54
`
`VII. CONCLUSION ......................................................................................... 58
`
`
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`
`iii
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`

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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
`2010 WL 1003878, at *3-4 (BPAI Mar. 15, 2010) ...................................................... 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 46, 55, 56
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................................... 14
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................ 13, 15, 34, 55, 57
`
`35 U.S.C § 103 ...................................................................................................................... 13
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`35 U.S.C. § 112 ..................................................................................................................... 14
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`35 U.S.C. § 311 ..................................................................................................................... 13
`
`
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`
`
`
`
`
`
`iv
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`

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`Exhibit 1001:
`
`Exhibit 1002:
`
`Exhibit 1003:
`
`Exhibit 1004:
`
`Exhibit 1005:
`
`Exhibit 1006:
`
`Exhibit 1007:
`
`Exhibit 1008:
`
`Exhibit 1009:
`
`Exhibit 1010:
`
`LIST OF EXHIBITS*
`
`U.S. Patent No. 7,384,177 to Parker.
`
`U.S. Patent No. 5,064,276 to Endo et al. (“Endo”).
`
`JP 03H-5725 to Musaka with certified translation.
`
`Declaration of Dr Zane Coleman.
`
`JP 06-051130 to Tsunoda with certified translation.
`
`U.S. Patent No. 5,005,108 to Pristash et al.
`(“Pristash”).
`
`IPR2014-01362, Paper No. 7, “Patent Owner’s
`Preliminary response to Petition for Inter Partes Review
`of U.S. Patent No. 7,384,177.”
`
`IPR2015-00489, Paper No. 1, “Petition for Inter Partes
`Review of U.S. Patent No. 7,384,177.”
`
`IPR2015-00359, Paper No. 1, “Petition for Inter Partes
`Review of U.S. Patent No. 7,384,177.”
`
`Case No. 2:13-CV-00522-JRG: “Plaintiff’s Notice of
`Compliance Regarding Submission of Response to
`
`
`* All of the following exhibits, with the exception of Exhibit 1004, are found in Case
`
`No. IPR2015-00835, the proceeding Petitioner seeks to join. While not all exhibits
`
`are referenced in the following petition, Petitioner has included all exhibits and kept
`
`their original numbering for purposes of consistency and accurate internal cross-
`
`citations. Petitioner’s Exhibit 1004, the Declaration of Dr. Zane Coleman, is virtually
`
`identical to the expert declaration submitted in IPR2015-00835, with only minor
`
`changes made to reflect Petitioner’s engagement of the same expert.
`
`
`
`v
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`

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`Exhibit 1011:
`
`Exhibit 1012:
`
`Exhibit 1013:
`
`Exhibit 1014:
`
`Exhibit 1015:
`
`Exhibit 1016:
`
`Exhibit 1017:
`
`
`
`
`
`
`Letter Brief, Dkt. No. 174-1.”
`
`IPR2014-01362, Paper No. 1, “Petition for Inter Partes
`Review of U.S. Patent No. 7,384,177.”
`
`IPR2015-00756, Paper No. 2, “Petition for Inter Partes
`Review of U.S. Patent No. 7,384,177.”
`
`Complaint filed in Innovative Display Technologies LLC v.
`Toyota Motor Corp., Case No. 2:14-cv-00200-JRG.
`
`Wavier of the Service of Summons filed in Innovative
`Display Technologies LLC v. Toyota Motor Corp., Case
`No. 2:14-cv-00200-JRG.
`
`Certified Prosecution History for U.S. Patent
`No. 7,384,177 (U.S. Application No. 11/244,544).
`
`IDT’s preliminary infringement contentions vs.
`Toyota: Exhibit B2: Exemplary claim chart for U.S.
`Pat. No. 7,384,177.
`
`IPR2014-01362, Paper No. 12, “Decision Institution
`of Inter Partes Review.”
`
`vi
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`

`

`
`
`Mercedes-Benz USA, LLC ( “Petitioner”) requests inter partes review of
`
`claims 1, 6-7, 9-10, 13-15, 19, and 22 of U.S. Patent No. 7,384,177 (“the ’177 patent”)
`
`(Ex. 1001), now assigned to Innovative Display Technologies LLC (“Innovative
`
`Display” or “Patent Owner”), in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§ 42.100 et seq.
`
`I.
`
`PRELIMINARY STATEMENT
`
`Claims 1, 6-7, 9-10, 13-15, 19, and 22 are directed to a light emitting assembly.
`
`Ex. 1001 at 9:21-32, 43-48, 51-54; 10:4-23, 32-36. The patent specification
`
`acknowledges that light emitting panel assemblies, including a transparent light
`
`emitting panel, one or more light sources, and a light transition member or area were
`
`well known in the art. Id. at 1:24, 2:64-7:4, and Fig. 1. The only purported
`
`improvement claimed is a light emitting assembly comprising “a tray having a back
`
`wall and continuous side walls that form a hollow cavity or recess completely
`
`surrounded by the side walls” in which at least one light source is positioned, wherein
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`the tray “acts as at least one of a back, side edge, and end edge reflector and has . . . .
`
`surfaces” to: “redirect at least a portion of the light emitted by the light source in a
`
`predetermined manner within the cavity or recess” (claim 1) or “facilitate better
`
`mixing of light rays within the cavity or recess to produce a desired light output color
`
`or uniformity” (claim 15).
`
`In fact, after the Examiner rejected the original claims of the application,
`
`Applicant amended the claims to add the above-identified features to independent
`
`
`
`1
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`

`

`
`
`claims 1 and 15. See Ex. 1015 at 43-48, First Office Action (October 3, 2007) and at
`
`55-61, 65-68 Response to Office Action (January 22, 2008). Following these
`
`amendments, the Examiner allowed all pending claims without further substantive
`
`comments. Id. at 75-77, Notice of Allowability (February 20, 2008).
`
`As this Petition demonstrates, prior art references not considered by the PTO
`
`including Endo (Ex. 1002) and Musaka (Ex. 1003) taught the distinguishing features
`
`argued by the Applicant and anticipate the claimed light emitting assembly.
`
`For example, Endo discloses a liquid crystal display device including a
`
`transparent plate 4A, a lower side frame 1, an upper side frame 2, a reflecting plate 4C,
`
`and a reflecting plate 4D. Ex. 1002 at 2:49-66; 3:46-59; 4:50-55; 5:41-51, 59-64,
`
`Figs. 1-3, 9. The frames 1, 2 form a hollow cavity completely surrounded by
`
`continuous side walls and the frames 1, 2, and together with the aluminum reflecting
`
`plates 4C and 4D function collectively as a tray to securely hold and support the light
`
`source 4B and the transparent plate 4A further within the cavity. Id.
`
`Additionally, Endo discloses that at least the interior side surfaces of the frame
`
`2 and the reflecting plate 4D act as exemplary side edge and back reflectors,
`
`respectively, and that the interior surfaces of the overhangs of the frame 2 and the
`
`reflecting plate’s 4C act as exemplary secondary reflective or refractive surfaces to
`
`redirect at least a portion of the light emitted by the light source 4B in a
`
`predetermined manner within the cavity as well as facilitate better mixing of light rays
`
`within the cavity to produce a desired light uniformity within the cavity. Id. at
`
`
`
`2
`
`

`

`
`
`2:58-66 (disclosing that the frame 2 is made, for example, of a metallic material such
`
`as aluminum alloy; and the reflecting plates 4C and 4D are formed, for example, by an
`
`aluminum plate coated with white paint (acrylic resin paint)), Figs. 1-3.
`
`Similarly, Musaka discloses a back light for a liquid crystal display
`
`(LCD) including a housing 5 having a back wall and continuous side walls that form a
`
`hollow cavity completely surrounded by the side walls. Ex. 1003 at 3-5, Fig. 1.
`
`Musaka also discloses that the housing 5 acts to redirect at least a portion of the light
`
`emitted by a light source 2 in a predetermined manner within the cavity or recess of
`
`the housing 5 that facilitates better mixing of light rays within the cavity or recess to
`
`produce a desired light output color or uniformity. Id. Musaka explains, “[t]he
`
`transparent substrate 1 described by the aforementioned light reflecting layer 3, the
`
`light source 2 and the light diffusion sheet 4 are enclosed by the housing 5, excluding
`
`the front surface. The housing 5 has the function of returning light that had leaked
`
`from the transparent substrate 1 or the light source 2 to the transparent substrate 1,
`
`the function of blocking the leakage of light from the unit other than from the front,
`
`and the heat dissipation function involving the external diffusion of heat generated
`
`from the light source. Consequently, it is made of plastic or metal whose inner
`
`surface had been subjected to treatment to provide high reflectance.” Id.
`
`As discussed below, the disclosures of Endo and Musaka as well as those of
`
`other references, warrant the cancellation of claims 1, 6-7, 9-10, 13-15, 19, and 22.
`
`II. MANDATORY NOTICES
`
`
`
`3
`
`

`

`
`
`A. Real Parties-in-Interest
`
`The real parties-in-interest for this petition are Petitioner, Mercedes-Benz U.S.
`
`International, Inc., Daimler North America Corporation, and Daimler AG.
`
`B. Related Matters
`
`Innovative Display has asserted five patents—U.S. Patent Nos. 8,215,816,
`
`7,300,194; 7,384,177; 7,404,660; and 7,434,9741 against at least 35 different companies.
`
`The lawsuit against Petitioner is captioned: Innovative Display Technologies LLC v.
`
`Mercedes-Benz U.S. International, Inc., et al., Case No. 2:14-cv-535 (ED TX.) (the “535
`
`Litigation”). Innovative Display also asserted the ’177 patent in at least the actions
`
`listed in the below chart:
`
`Description
`
`Docket Number
`
`Innovative Display Technologies LLC (“IDT”) v. Acer Inc. et al.
`
`2:13-cv-00522, EDTX
`
`IDT v. American Honda Motor Co., Inc., et al.
`
`2:14-cv-00222, EDTX
`
`IDT v. Apple Inc.
`
`IDT v. Apple Inc.
`
`IDT v. AT&T Inc., et. al.
`
`IDT v. Best Buy Co., Inc., et. al.
`
`2:14-cv-00030, EDTX
`
`2:14-cv-00301, EDTX
`
`2:14-cv-00720, EDTX
`
`2:14-cv-00532, EDTX
`
`
`1 In addition to this petition, Petitioner and Mercedes-Benz U.S. International, Inc. are
`
`concurrently requesting inter partes review of the following other asserted Innovative
`
`Display patents, which are in the same family as the ’177 patent: 7,300,194; 6,755,547;
`
`7,404,660; 8,215,816; and 7,434,974.
`
`
`
`4
`
`

`

`
`
`Description
`
`Docket Number
`
`IDT v. BMW of North America, LLC, et. al.
`
`2:14-cv-00106, EDTX
`
`IDT v. Canon U.S.A. Inc., et. al.
`
`2:14-cv-00142, EDTX
`
`IDT v. Research in Motion Limited et al.
`
`2:13-cv-00526, EDTX
`
`IDT v. Dell Inc.
`
`IDT v. Ford Motor Company
`
`2:13-cv-00523, EDTX
`
`1:14-cv-00849, D. Del.
`
`IDT v. Garmin International, Inc., et. al.
`
`2:14-cv-00143, EDTX
`
`IDT v. General Motor Company
`
`IDT v. Google Inc., et. al.
`
`1:14-cv-00850, D. Del.
`
`2:14-cv-00302, EDTX
`
`IDT v. Hewlett-Packard Corporation
`
`2:13-cv-00524, EDTX
`
`IDT v. Huawei Investment et al.
`
`2:13-cv-00525, EDTX
`
`IDT v. Hyundai Motor Group, et. al.
`
`2:14-cv-00201, EDTX
`
`IDT v. Mazda Motor Corporation, et. al.
`
`2:14-cv-00624, EDTX
`
`IDT v. Microsoft Corporation
`
`2:13-cv-00783, EDTX
`
`IDT v. Mitac Digital Corporation, et. al.
`
`2:14-cv-00144, EDTX
`
`IDT v. Nikon Inc., et. al.
`
`2:14-cv-00145, EDTX
`
`IDT v. Nissan Motor, Co., Ltd., et. al.
`
`2:14-cv-00202, EDTX
`
`IDT v. Nokia Corporation and Nokia Inc.
`
`2:13-cv-00784, EDTX
`
`IDT v. Sprint Corporation, et. al.
`
`IDT v. T-Mobile US, Inc., et. al.
`
`2:14-cv-00721, EDTX
`
`2:14-cv-00723, EDTX
`
`IDT v. Tomtom North America Inc., et. al.
`
`2:14-cv-00146, EDTX
`
`IDT v. Toyota Motor Corporation, et. al.
`
`2:14-cv-00200, EDTX
`
`
`
`5
`
`

`

`
`
`Description
`
`Docket Number
`
`IDT v. Verizon Communications, Inc., et. al.
`
`2:14-cv-00722, EDTX
`
`IDT v. Volkswagen AG, et. al.
`
`2:14-cv-00300, EDTX
`
`IDT v. ZTE Corporation and ZTE (USA) Inc.
`
`2:13-cv-00527, EDTX
`
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com, Inc.
`DDG and IDT v. HTC Corporation et al.
`
`1:13-cv-2106, D.Del.
`
`1:13-cv-02107, D.Del.
`
`DDG and IDT v. Lenovo Group Ltd., et al.
`
`1:13-cv-02108, D.Del.
`
`DDG and IDT v. LG Electronics Inc., et al.
`
`1:13-cv-02109, D.Del.
`
`DDG and IDT v. Pantech Co., Ltd, et al.
`
`1:13-cv-02110, D.Del.
`
`DDG and IDT v. Sony Corporation et al.
`
`1:13-cv-02111, D.Del.
`
`DDG and IDT v. Vizio, Inc.
`
`1:13-cv-02112, D.Del.
`
`
`
`Six prior inter partes review petitions challenge the patentability of the
`
`’177 patent. LG Display Co., Ltd. and LG Display America, Inc. (“LGD”),
`
`challenged claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 patent in
`
`IPR2014-01362, filed August 22, 2014, Ex. 1011; Petitioner and Mercedes-Benz U.S.
`
`International, Inc. challenged claims 1-5, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the
`
`’177 patent in IPR2015-00359, filed December 4, 2014, Ex. 1009; LG Electronics
`
`(“LGE”), challenged claims 1-5, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 patent
`
`in IPR2015-00489, filed December 29, 2014, Ex. 1008; Sony Corp. challenged
`
`claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the ’177 patent in IPR2015-00756,
`
`filed February 18, 2015, Ex. 1012; Toyota Motor Corp. (“Toyota”) challenged claims
`
`
`
`6
`
`

`

`
`
`1, 6-7, 9-10, 13-15, 19, and 22 of the ’177 patent in IPR2015-00835, filed March 5,
`
`2015; and Toyota challenged claims 1, 6-7, 9-10, 13-15, 19, and 22 of the ’177 patent
`
`in IPR2015-00857, filed March 9, 2015.
`
`On March 2, 2015, the Board granted institution of IPR2014-01362. Ex. 1017.
`
`As of the filing date of this petition, the Board has not rendered institution decisions
`
`in IPR2015-00359, IPR2015-00489, IPR2015-00756, IPR2015-00835, or IPR2015-
`
`00857. Notwithstanding the Board’s decision instituting trial in IPR2014-01362, and
`
`regardless of whether the Board institutes trial on any grounds in IPR2015-00359,
`
`IPR2015-00489, IPR2015-00756, or IPR2015-00857, the Board should grant this
`
`petition and institute trial on all grounds because the primary and secondary
`
`references relied on here disclose features of the claims Patent Owner argued the
`
`references in IPR2014-01362 lacked.2 As explained below in Section VI, the primary
`
`references relied on here disclose these features and more clearly show how the
`
`references disclose or suggest these features.
`
`And although the present petition asserts in part the same Pristash reference
`
`asserted in the above-identified petitions, the grounds presented in this petition are
`
`distinct and substantially different from the grounds presented in the above-identified
`
`
`2 Specifically, Patent Owner argued in its preliminary response that the references did
`
`not disclose or suggest “a hollow cavity or recess completely surrounded by the side
`
`walls.” Ex. 1007 at 4-7.
`
`
`
`7
`
`

`

`
`
`petitions. Furthermore, the present petition serves the important purpose to preserve
`
`the grounds of invalidity based in part on Pristash so that they may be pursued should
`
`any one of the above parties (e.g., LGD, LGE, Sony, and/or Toyota) reach a
`
`settlement, or should the case otherwise be terminated, prior to the Board issuing a
`
`final written determination.
`
`C.
`
`Lead and Back-Up Counsel, and Service Information
`
`Lead Counsel
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver & Jacobson
`LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`
`Back-Up Counsel
`Jonathan R. DeFosse (pro hac vice to be
`requested)3
`Fried, Frank, Harris, Shriver & Jacobson
`LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7277 (telephone)
`(202) 639-7003 (facsimile)
`jonathan.defosse@friedfrank.com
`
`D.
`
`Payment of Fees (37 C.F.R. § 42.103)
`
`The USPTO 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
`
`
`3 Petitioner requests authorization to file a motion for Jonathan R. DeFosse to appear
`
`pro hac vice as backup counsel. Mr. DeFosse is an experienced litigation attorney in
`
`patent cases. He is admitted to practice in Virginia and Washington, D.C., as well as
`
`before several United States District Courts and Courts of Appeal. Mr. DeFosse is
`
`familiar with the issues raised in this petition because he represents Petitioner in the
`
`535 Litigation.
`
`
`
`8
`
`

`

`
`
`proceedings on behalf of Petitioner, to the deposit account of Fried, Frank, Harris,
`
`Shriver & Jacobson LLP, Deposit Account No. 060920.
`
`III. THE ’177 PATENT
`
`A. Overview of the Disclosure
`
`Part of a large family, the ’177 patent is one of several continuations,
`
`continuation-in-part, and/or divisions stemming from U.S. Patent No. 5,613,751.
`
`Ex. 1001 at 1:6-15. These patents, including the ’177 patent, are directed to light
`
`emitting assemblies. Id. at title.
`
`The background of the ’177 disclosure acknowledges that light emitting panel
`
`assemblies are generally known. Id. at 1:24. In particular, the disclosure recognizes
`
`the following functionality and structure of prior art light emitting panel assemblies: a
`
`transparent light emitting panel 2 and one or more light sources 3 which emit light in
`
`a predetermined pattern and a light transition member or area 4 used to make the
`
`transition from the light source 3 to the light emitting panel 2, “as well known in the
`
`art.” Id. at 2:64-3:4 and Fig. 1 (describing these elements and their functionalities as
`
`being “well known in the art”). The ’177 disclosure further describes that the light is
`
`emitted along the entire length of the light emitting panel 2 or from one or more light
`
`output areas along the length of the panel 2 as desired to produce a desired light
`
`output distribution to fit a particular application. Id. at 3:4-9 and Fig. 1.
`
`Figure 1 below shows the well-known light emitting panel assembly 1, light
`
`emitting panel 2, light source 3, and light transition member or area 4:
`
`
`
`9
`
`

`

`
`
`
`
`Purportedly to improve control and utilization of light output from such
`
`assemblies, the ’177 patent discloses a light emitting panel assembly 32 including a
`
`panel member 33, one or more light sources 3, one or more light output areas 34, and
`
`a tray 35 having a cavity or recess 36 in which the panel assembly 32 is received.
`
`Id. At 6:62-7:-3 and Fig. 6 (copied below – the only figure of the patent showing a
`
`tray). The ’177 disclosure describes the tray 35 as a back reflector, as well as end edge
`
`and/or side edge reflectors for the panel 33 and side and/or back reflectors 37 for the
`
`light sources 3. Id. The ’177 patent also discloses that one or more secondary
`
`reflective or refractive surfaces 38 may be provided on the panel member 33 and/or
`
`tray 35 to reflect a portion of the light around one or more corners or curves in a
`
`non- rectangular shaped panel member 33. Id. at 7:3-7. The ’177 patent further
`
`discloses that the secondary reflective/refractive surfaces 38 may be flat, angled,
`
`faceted or curved, and may be used to extract a portion of the light away from the
`
`panel member in a predetermined pattern. Id. at 7:7-10.
`
`Figure 6 shows the light emitting panel assembly 32, panel member 33,
`
`“secondary” reflective or refractive surfaces 38, and tray 35:
`
`
`
`10
`
`

`

`
`
`
`
`The ’177 patent discloses in another embodiment (without any tray), a light
`
`emitting panel assembly 11 (Fig. 3 – shown below) including a light transition area
`
`12 at one end of a light emitting panel 14 having reflective and/or refractive surfaces
`
`15 around and behind two light sources 3. Id. at 3:45-56 and Fig. 3. The ’177 patent
`
`discloses providing reflective materials or coatings on portions of the reflective
`
`and/or refractive surfaces 15 to focus a portion of light emitted from the light sources
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`3 through the light transition areas 12 into a light input surface 19 of the light emitting
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`panel 14. Id. A back reflector 26 is attached or positioned against one side of the
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`panel member 14 using a suitable adhesive 28. Id. at 6:18-24 and Figs. 3 and 5. A
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`transparent film, sheet or plate 27 is attached or positioned against the side of sides of
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`the panel member 14 (from which light is emitted) using a suitable adhesive 28. Id. at
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`6:29-38. The ’177 disclosure describes that the member 27 may be used to further
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`improve the uniformity of the light output distribution and indicates that the member
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`27 may be a colored film, a diffuser, or a label or display, a portion of which may be a
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`transparent overlay that may be colored and/or have text or an image thereon. Id.
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`
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`11
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`Figure 3 below shows the light emitting panel assembly 11, light emitting panel
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`14, reflective and/or refractive surfaces 15, back reflector 26, and transparent film 27:
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`Figure 5 below shows the light emitting panel assembly 11, light emitting panel
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`
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`14, back reflector 26, transparent film 27, and adhesive 28:
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`
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`The ’177 specification discloses that each light source 3 may be of any suitable
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`type including, for example, an arc lamp, an incandescent bulb, a lens end bulb, a line
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`light, a halogen lamp, a light emitting diode (LED), a chop from an LED, a neon
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`bulb, a florescent tube, a fiber optic light pipe, a laser or laser diode, or any other
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`suitable light source. Id. at 4:24-30.
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`
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`12
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`IV. GROUNDS FOR STANDING
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`Petitioner certifies the ’177 patent is available for inter partes review and that
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`Petitioner is not barred or estopped from requesting inter partes review of the
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`’177 patent challenging the patent claims on the grounds identified in this petition.
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`Additionally, the primary references relied on here disclose, for example,
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`features of the claims Patent Owner argued the references in IPR2014-01362 lacked,
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`and more clearly show how the references disclose or suggest these features.
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`Furthermore, the primary references are non-duplicative of those cited in recently
`
`instituted IPR2014-01362. See Ex. 1017.
`
`V.
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`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
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`Claims for Which Review is Requested
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`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1, 6-7,
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`9-10, 13-15, 19, and 22 of the ’177 patent, and the cancellation of these claims as
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`unpatentable.
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`B.
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`Statutory Grounds of Challenge
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`Claims 1, 6-7, 9-10, 13-15, 19, and 22 are unpatentable under 35 U.S.C.
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`§§ 102 and 103. The claim construction, reasons for unpatentability, and specific
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`evidence supporting this request are detailed below.
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`
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`13
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`C.
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`Claim Construction
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`Claim terms in an expired patent are given their ordinary and accustomed
`
`meaning as understood by one of ordinary skill in the art,4 consistent with the
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`standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
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`2005) (en banc); Ex Parte Ronald A. Katz Tech. Licensing L.P., No. 2008-005127,
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`2010 WL 1003878, at *3-4 (BPAI Mar. 15, 2010). The ’177 patent will expire on
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`April 4, 2016, before a final decision is expected in this IPR, and should thus be
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`construed under these principles.
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`The following term from the claims of the ’177 patent requires construction for
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`this proceeding.5 All other terms should be given their ordinary and accustomed
`
`meanings.
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`4 Petitioner submits that a person of ordinary skill in the art (“POSITA”) would have
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`at least an undergraduate degree in a science or engineering discipline and a few years
`
`of work experience in a field related to optical technology, a graduate degree in a field
`
`related to optical technology, or a few years of continuing education toward a
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`graduate degree in a field related to optical technology. Petitioner applies this level of
`
`ordinary skill in this petition.
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`5 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
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`Petitioner has not included any indefiniteness arguments herein. Petitioner will,
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`however, raise such arguments in other proceedings.
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`
`
`14
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`
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`“deformities” (Claim 14)
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`The specification of the ’177 patent expressly defines the term “deformities,” as
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`follows: “As used herein, the term deformities or disruptions are used
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`interchangeably to 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 4:44-48. Accordingly, in light of the express definition provided by the
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`’177 patent, “deformities,” should be construed to mean “any change in the shape or
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`geometry of a surface and/or coating or surface treatment that causes a portion of the
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`light to be emitted.” See also Ex. 1004 at ¶31.
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`VI. CLAIMS 1, 6-7, 9-10, 13-15, 19, and 22 OF THE ’177 PATENT ARE
`UNPATENTABLE
`
`A. Ground 1: Endo anticipates claims 1, 6-7, 9-10, 13-15, 19, and 22
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`U.S. Patent No. 5,064,276 to Endo issued on November 12, 1991. Ex. 1002.
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`Endo is prior art under 35 U.S.C. § 102(b), because the earliest effective priority date
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`of claims 1, 6-7, 9-10, 13-15, 19, and 22 is June 27, 1995.
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`As shown below in annotated Figures 1 and 2, Endo discloses a liquid crystal
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`display device including a transparent plate 4A (in light purple), a lower side frame
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`1 (in yellow), an upper side frame 2 (in orange), a reflecting plate 4C (in blue), a
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`reflecting plate 4D (in teal), and a diffusing plate (not labeled, in red). Ex. 1002 at
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`2:49-66; 3:46-59; 4:50-55; 5:41-51, 59-64; 6:1-5, Figs. 1-3, 9.
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`
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`15
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`
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`The frames 1, 2 collectively form a hollow cavity completely surrounded by
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`continuous side walls. Id. For example, the frame 1 has a back wall and the frames
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`1 and 2 each have continuous side walls. Id. Endo further discloses that the reflecting
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`plate 4C (which covers the light source 4B) and the reflecting plate 4D (located
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`underneath the transparent substrate 4A) effectively reflect the light of light source 4B
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`toward the transparent plate 4A. Id. Accordingly, the frames 1, 2, together with the
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`aluminum reflecting plates 4C and 4D function collectively as a tray to securely hold
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`and support the light source 4B and the transparent plate 4A further within the cavity.
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`See id.; see also Ex. 1004 at ¶34 (citing 2:49-66; 3:46-59; 4:50-55; 5:41-51, 59-64; 6:1-5,
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`Figs. 1-3, 9.).
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`Furthermore, Endo discloses that at least the frame 2, reflecting plate 4C, and
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`reflecting plate 4D act as at least one of a back, side edge, and end edge reflector and
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`have one or more secondary flat, angled, or curved reflective or refractive surfaces to
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`redirect at least a portion of the light emitted by the light source 4B (in green) in a
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`predetermined manner within the cavity and further facilitate better mixing of light
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`
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`16
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`
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`rays within the cavity to produce a desired light output uniformity within the cavity.
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`Id. at 2:49-66; 3:46-59; 4:50-55; 5:41-51, 59-64; 6:1-5, Figs. 1-3, 9; see also Ex. 1004 at
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`¶35 (citing id.).
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`
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`For example, as shown in annotated Figure 2, above, Endo discloses that each
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`end face (see exemplary light purple surface) of transparent plate 4A is positioned
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`adjacent interior side surfaces of the frames 1, 2. To help keep the light within the
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`device and from escaping through the interior side surfaces of the frames 1, 2 (and
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`thus preventing an inadvertent decrease in the overall brightness, uniformity, and
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`luminance of the device), Ex. 1004 at ¶36 (citing 2:58-66; 5:45-51, 59-64), one having
`
`ordinary skill in the art would recognize that the interior side surfaces of the frames 1,
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`2 would have reflective or refractive properties so as to help deter light from escaping
`
`to the outside of the display device from the side walls of the transparent
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`substrate 4A. Id. In fact, Endo discloses that the frame 2 is made, e.g., of a metallic
`
`material such as aluminum alloy (see id. at 2:58-66). Moreover, one of ordinary skill in
`
`
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`17
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`
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`the art would further recognize that the frame 1, disclosed as being formed, e.g., out
`
`of a resin material, (see id. at 2:58-59) also has reflective and/or refractive properties so
`
`as to further assist with preventing light escaping from the side walls of the
`
`transparent substrate 4A to the outside of the display device. Ex. 1004 at ¶36 (citing
`
`2:59-66; 5:45-51, 59-64). Endo also discloses that the reflecting plates 4C and 4D are
`
`made, e.g., by an aluminum plate coated with white paint (acrylic resin paint) (see id. at
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`5:45-51, 59-64).
`
`Accordingly, at least the interior side surfaces of the frame 2 and the reflecting
`
`plate 4D of the tray act as exemplary side edge and back reflectors, respectively, and
`
`the interior surfaces of the overhangs of the frame 2 and the reflecting plates 4C of
`
`the tray act as exemplary secondary flat reflective or refractive surfaces to redirect at
`
`least a portion of the light emitted by the light source 4B in a predetermined manner
`
`within the cavity as well as facilitate better mixing of light rays within the cavity to
`
`produce a desired light uniformity within the cavity. See id. at 2:49-66; 3:46-59;
`
`4:50-55; 5:41-51, 59-64 Figs. 1-3, 9 see also Ex. 1004 at ¶37 (citing id.).
`
`Exemplary “at least one of a back, side edge, and end edge reflector” and
`
`“one or more secondary flat, angled, faceted or curved reflective or refractive
`
`surfaces” are identified below in annotated Figures 1 and 2. See also Ex. 1004 at
`
`¶38 (citing id.).
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`
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`18
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`
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`Additionally, as shown in the annotated Figures, Endo discloses that the liquid
`
`crystal display device also includes at least two light sources 4B (in green) located in
`
`the cavity and that are positioned in close proximit