UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner
`
`Patent No. 7,404,660
`
`Issue Date: July 29, 2008
`
`Title: LIGHT EMITTING PANEL ASSEMBLIES
`
`PETITION FOR INTERPARTESREVIEW
`OF U.S. PATENT NO. 7,404,660
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`Case No. IPR2015-01113
`
`

`

`I.
`
`TABLE OF CONTENTS
`
`IV.
`V.
`
`MANDATORY NOTICES .............................................................................1
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ..................................1
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ..............................................1
`C.
`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))..............4
`PAYMENT OF FEES (37 C.F.R. § 42.103)....................................................4
`II.
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §42.104) ......4
`A.
`Grounds for Standing (37 C.F.R. § 42.104(a))......................................4
`B.
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .....................................................5
`SUMMARY OF THE ’660 PATENT .............................................................6
`CLAIM CONSTRUCTION ............................................................................8
`A.
`“deformities” (claims 1, 33)..................................................................9
`B.
`“a plurality of light sources configured to generate light having an
`output distribution defined by a greater width component than height
`component” (claim 1)............................................................................9
`“focused light sources” (claims 16, 17) ..............................................15
`C.
`VI. GROUNDS FOR UNPATENTABILITYOF ’660 PATENT CLAIMS.......15
`A.
`Ground 1: Claims 1, 3, 10, 16, 17 Are Anticipated under § 102(b) by
`Pristash ................................................................................................15
`1.
`Overview of Pristash.................................................................15
`2.
`Pristash anticipates claim 1.......................................................17
`3.
`Pristash anticipates claims 3, 10, 16 and 17 .............................25
`Ground 2: Claims 1, 3, 10, 16, 17 Are Anticipated Under § 102(e) by
`Ciupke..................................................................................................28
`1.
`Overview of Ciupke..................................................................28
`2.
`Ciupke anticipates claim 1 ........................................................29
`3.
`Ciupke anticipates claims 3, 10, 16 and 17...............................36
`
`B.
`
`i
`
`

`

`C.
`
`Ground 3: Claims 1, 3, 10, 16, 17, 25, 33, and 34 Are Obvious under
`§ 103 over Pristash in view of Kisoo ..................................................38
`1.
`Claims 1, 3, 10, 16, 17, 25 are obvious over Pristash in view of
`Kisoo .........................................................................................41
`Claims 33 and 34 are obvious in view of Pristash over Kisoo.44
`2.
`Ground 4: Claims 1, 3, 10, 16, 17, 25, 33, and 34 Are Obvious under
`§ 103 over Ciupke in view of Seraku..................................................45
`1.
`Claims 1, 3, 10, 16, 17, 25 are obvious over Ciupke in view of
`Seraku........................................................................................48
`Claims 33 and 34 are obvious over Ciupke in view of Seraku.52
`2.
`VII. CONCLUSION..............................................................................................54
`
`D.
`
`ii
`
`

`

`LISTING OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 7,404,660 to Parker
`
`Exhibit 1002
`
`U.S. Patent No. 5,005,108 to Pristash et al. (“Pristash”)
`
`Exhibit 1003
`
`U.S. Patent No. 5,461,547 to Ciupke et al. (“Ciupke”)
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Japanese Unexamined Patent Application Publication
`No. 06-230378 to Kisoo (“Kisoo”) (Japanese original
`and English translation)
`
`Japanese Unexamined Patent Application Publication
`No. 05-69732 to Seraku (“Seraku”) (Japanese original
`and English translation)
`
`File History of U.S. App. No. 11/454,822 to Applicant
`Parker (issued as ’660 patent)
`
`Declaration of Thomas L. Credelle
`(“Credelle Decl.”)
`
`Exhibit 1008
`
`IDT Infringement Contentions against Petitioner
`
`Exhibit 1009
`
`Decision, Patent Trial and Appeal Board, April 9, 2015,
`IPR2014-01094 , Patent 7,404,660 (Paper 10)
`
`iii
`
`

`

`Pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. Part 42, Mercedes-Benz USA,
`
`LLC (“Petitioner”) respectfully requests inter partes review of claims 1, 3, 10, 16, 17, 25,
`
`33, and 34 of U.S. Patent No. 7,404,660 (“the ’660 patent”). According to U.S. Patent
`
`and Trademark Office records, the ’660 patent is currently assigned to Innovative
`
`Display Technologies LLC (“IDT” or the “Patent Owner”).
`
`I.
`
`MANDATORY NOTICES
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner provides notice that real parties-
`
`in-interest include Petitioner, Mercedes-Benz U.S. International, Inc. (“MBUSI”),
`
`Daimler North America Corp. (“DNAC”), and Daimler AG (“DAG”).
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`B.
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner provides notice that the
`
`’660 patent is the subject of a patent infringement lawsuit brought by Patent Owner
`
`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 (“-535 Litigation”), presently consolidated in
`
`Lead Case No. 2:14-cv-201. Petitioner and MBUSI were named as defendants in the -
`
`535 Litigation and were served with a Summons and Complaint in that action on
`
`April 28, 2014 and April 30, 2014, respectively. Neither DNAC nor DAG has been
`
`named as a party in litigation concerning the ’563 patent.
`
`The ‘660 patent is also asserted in at least the actions listed in the chart below.
`
`1
`
`

`

`Case
`
`IDT v. Acer Inc. et al.
`
`IDT v. Dell Inc.
`
`IDT v. Hewlett-Packard Corporation
`
`IDT v. Huawei Investment & Holding Co.
`
`IDT v. Blackberry Ltd.
`
`IDT v. ZTE Corp.
`
`IDT v. Microsoft Corp.
`
`IDT v. Nokia Corp.
`
`Delaware Display Group LLC (“DDG”) and IDT v.
`Amazon.com
`
`DDG and IDT v. HTC Corp.
`
`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.
`
`IDT v. Apple, Inc.
`
`IDT v. BMW of North America, LLC, et. al.
`
`IDT v. Canon USA, Inc.
`
`IDT v. Garmin Int’l, Inc.
`
`IDT v. MiTAC Digital Corp.
`
`IDT v. Nikon, Inc.
`
`2
`
`Docket Number
`2:13-cv-00522, E.D. Tex.
`
`2:13-cv-00523, E.D. Tex.
`
`2:13-cv-00524, E.D. Tex.
`
`2:13-cv-00525, E.D. Tex.
`
`2:13-cv-00526, E.D. Tex.
`
`2:13-cv-00527, E.D. Tex.
`
`2:13-cv-00783, E.D. Tex.
`
`2:13-cv-00784, E.D. Tex.
`
`1:13-cv-02106, 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.
`
`2:14-cv-00030, E.D. Tex.
`
`2:14-cv-00106, E.D. Tex.
`
`2:14-cv-00142, E.D. Tex.
`
`2:14-cv-00143, E.D. Tex.
`
`2:14-cv-00144, E.D. Tex.
`
`2:14-cv-00145, E.D. Tex.
`
`

`

`Case
`IDT v. TomTom North America Inc.
`
`IDT v. Toyota Motor Corporation, et. al.
`
`IDT v. Hyundai Motor Group, et. al.
`
`IDT v. Nissan Motor, Co., Ltd., et. al.
`
`IDT v. Volkswagen AG
`
`IDT v. Apple, Inc.
`
`IDT v. Google Inc.
`
`IDT v. Best Buy Co.
`
`IDT v. Mazda Motor Corporation, et. al.
`
`IDT v. AT&T Inc., et. al.
`
`IDT v. Sprint Corporation, et. al.
`
`IDT v. Verizon Communications Inc.
`
`IDT v. T-Mobile U.S., Inc.
`
`IDT v. Ford Motor Co.
`
`IDT v. General Motors LLC
`
`Docket Number
`2:14-cv-00146, E.D. Tex.
`
`2:14-cv-00200, E.D. Tex.
`
`2:14-cv-00201, E.D. Tex.
`
`2:14-cv-00202, E.D. Tex.
`
`2:14-cv-00300, E.D. Tex.
`
`2:14-cv-00301, E.D. Tex.
`
`2:14-cv-00302, E.D. Tex.
`
`2:14-cv-00532, E.D. Tex.
`
`2:14-cv-00624, E.D. Tex.
`
`2:14-cv-00720, E.D. Tex.
`
`2:14-cv-00721, E.D. Tex.
`
`2:14-cv-00722, E.D. Tex.
`
`2:14-cv-00723, E.D. Tex.
`
`1:14-cv-00849, D. Del.
`
`1:14-cv-00850, D. Del.
`
`In addition, the ’660 patent is the subject of the following IPR Cases Nos.:
`
`IPR2014-01094; IPR2015-00363; IPR2015-00487; IPR2015-0495; IPR2015-00745;
`
`IPR2015-00855; and IPR2015-00897.
`
`3
`
`

`

`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`C.
`Lead Counsel
`Back-Up Counsel
`Jonathan R. DeFosse (pro hac vice to be
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver & Jacobson
`requested) 1
`LLP
`Fried, Frank, Harris, Shriver & Jacobson
`801 17th Street, N.W.
`LLP
`Washington, DC 20006
`801 17th Street, N.W.
`(202) 639-7326 (telephone)
`Washington, DC 20006
`(202) 639-7003 (facsimile)
`(202) 639-7277 (telephone)
`scott.doyle@friedfrank.com
`(202) 639-7003 (facsimile)
`jonathan.defosse@friedfrank.com
`PAYMENT OF FEES (37 C.F.R. § 42.103)
`
`II.
`
`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
`
`proceedings on behalf of Petitioner, to the deposit account of Fried, Frank, Harris,
`
`Shriver & Jacobson LLP, Deposit Account No. 060920.
`
`III. REQUIREMENTS FORINTERPARTESREVIEW (37 C.F.R. §42.104)
`A.
`Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’660 patent
`
`(Ex. 1001) is available for inter partes review and that Petitioner is not barred or
`
`1 Petitioner requests authorization to file a motion for Mr. 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.
`
`4
`
`

`

`estopped from requesting an inter partes review challenging the claims on the grounds
`
`identified in this petition.
`
`B.
`
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b), Petitioner respectfully
`
`requests that inter partes review be instituted and claims 1, 3, 10, 16, 17, 25, 33, and 34
`
`of the ’660 patent be cancelled on the following grounds of unpatentability:
`
`Ground
`1
`
`2
`
`3
`
`4
`
`Claims
`1, 3, 10,
`16, 17
`
`1, 3, 10,
`16, 17
`
`1, 3, 10,
`16, 17, 25,
`33, 34
`
`1, 3, 10,
`16, 17, 25,
`33, 34
`
`Basis for Challenge
`Anticipated under 35 U.S.C. § 102(b) by U.S. Patent
`No. 5,005,108 to Pristash et al. (“Pristash”)
`
`Anticipated under 35 U.S.C. § 102(e) by U.S. Patent
`No. 5,461,547 to Ciupke et al. (“Ciupke”)
`
`Obvious under 35 U.S.C. § 103 over Pristash in view of
`Japanese Unexamined Patent Application Publication No. 06-
`230378 to Kisoo (“Kisoo”)
`
`Obvious under 35 U.S.C. § 103 over Ciupke in view of
`Japanese Unexamined Patent Application Publication No. 05-
`69732 to Seraku (“Seraku”)
`
`The above-listed grounds of unpatentability are explained in detail in
`
`Section VI, below. As is also explained below, the invalidity arguments set forth in
`
`this petition are unique and not duplicative of prior IPR petitions against the ’660
`
`patent (including those citing on Pristash and Ciupke). This Petition is supported by
`
`the Declaration of Thomas L. Credelle (“Credelle Decl.”) (Ex. 1007).
`
`5
`
`

`

`IV.
`
`SUMMARY OF THE ’660 PATENT
`The ’660 patent, entitled “Light Emitting Panel Assemblies,” issued on July 29,
`
`2008 from an application filed on June 16, 2006. The ’660 patent claims priority to an
`
`application filed on June 27, 1995. According to the specification, the ’660 patent is
`
`directed 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. 1001at 1:19-23.) In particular, the ’660 patent teaches “several
`
`different light emitting panel assembly configurations which provide for better control
`
`of the light output from the panel assemblies and for more efficient utilization of
`
`light, which results in greater light output from the panel assemblies.” (Id. at 1:25-29.)
`
`Generally speaking, the light emitting panel assembly is designed to generate
`
`and direct rays of light in a manner to best illuminate a display, e.g., a liquid crystal
`
`display (“LCD”). (Credelle Decl. at ¶ 25.) Typical design considerations include
`
`producing light with sufficient uniformity and brightness, while minimizing the
`
`assembly’s profile thickness and electrical power consumption. (Id.) The assembly
`
`first generates and then transmits light (from a light source) into a transparent panel
`
`generally referred to as a “light pipe,” “light guide,” or “light emitting panel.” Inside
`
`the light emitting panel, the light is reflected and refracted by various internal features
`
`that spatially homogenize and control the angular distribution of the
`
`reflected/refracted light. (Id. at ¶ 26.) The reflected/refracted light is ultimately
`
`6
`
`

`

`emitted out of the light emitting surface of the panel in a direction that illuminates a
`
`display surface, e.g., an LCD. (Id. at ¶ 28.) Examples of the internal features used in
`
`such assemblies include a transition area, reflectors, and various types of micro-
`
`structured deformities (e.g., micro-prisms, diffusers, and micro-lenses). (Id. at ¶ 29.)
`
`The challenged claims of the ’660 patent refer to the light emitting panel as an
`
`“optical conductor”; but the ’660 patent specification makes no reference to an
`
`“optical conductor.” Rather, the specification uses several alternative labels for the
`
`light emitting panel, e.g., “transparent panel member” (Ex. 1001 at 1:20-21), “light
`
`emitting panel member” (Id. at 1:34-35), and “transparent light emitting panel” (Id.
`
`at 2:67). The ’660 patent positions the light source in a light transition area that
`
`transmits light from the light source to the output region of the light emitting panel.
`
`The specification states that such transition areas are “well known in the art.”
`
`(Ex. 1001 at 2:64-66.) Spatial homogenization and manipulation of the light output
`
`distribution is achieved in the light emitting panel through the use of internal
`
`reflective surfaces and surface deformities. These surfaces reflect and refract the light
`
`rays in a manner to optimize the direction of travel and ultimately cause the light rays
`
`to be emitted from the light emitting surface of the light emitting panel. (Credelle
`
`Decl. at ¶ 26.)
`
`The ’660 patent has two independent claims (1 and 33). Claim 1, as recited
`
`below, is representative of the core elements of the challenged claims:
`
`1[a] A light emitting panel assembly comprising:
`
`7
`
`

`

`1[b] a generally planar optical conductor having at least one input edge
`with a greater cross-sectional width than thickness; and
`1[c] a plurality of light sources configured to generate light having an output
`distribution defined by a greater width component than height component,
`1[d] the light sources positioned adjacent to the input edge, thereby
`directing light into the optical conductor;
`1[e] the optical conductor having at least one output region and a
`predetermined pattern of deformities configured to cause light to be
`emitted from the output region,
`1[f] the optical conductor having a transition region disposed between
`the light source and the output region.
`CLAIM CONSTRUCTION
`The ’660 Patent expires on June 27, 2015. Ordinarily, in an inter partes review
`
`V.
`
`proceeding, “[a] claim in an unexpired patent shall be given its broadest reasonable
`
`construction [‘BRI’] in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b). Here, where the patent will expire before the issuance of a final
`
`written decision, the claims are given their ordinary and customary meaning as
`
`understood by one of ordinary skill in the art at the time of the invention, consistent
`
`with the standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
`
`Cir. 2005) (en banc). Square v. Cooper, IPR2014-00157, Paper 17 at 2 (citing In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)). Petitioner seeks construction of two
`
`terms from claim 1 (see italicized terms, supra.), and one term from dependent claim 16
`
`(“focused light sources”).
`
`8
`
`

`

`“deformities” (claims 1, 33)
`A.
`Petitioner proposes that “deformities” be construed to mean “change[s] 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,” which is how the term is defined in the
`
`specification of the ’660 patent. (Ex. 1001 at 4:36-40; Credelle Decl. at ¶ 37.)
`
`B.
`
`“a plurality of light sources configured to generate light having an
`output distribution defined by a greater width component than
`height component” (claim 1)
`As noted above, claim 1 of the ’660 patent requires “a plurality of light sources
`
`configured to generate light having an output distribution defined by a greater width
`
`component than height component” (the “Configured Limitation” or “element 1[c]”).
`
`Petitioner contends that the ordinary and customary meaning of the Configured
`
`Limitation would be “a plurality of light sources configured, either individually or in
`
`combination with other elements, to generate light having an output distribution defined by
`
`a greater width component than height component.” 2 This construction would
`
`encompass at least the following arrangements: (1) two or more light sources,
`
`arranged with reflective surfaces that, together, generate a light output distribution
`
`2 As part of the -535 Litigation, Petitioner has asserted that the Configured Limitation
`
`is indefinite under 35 U.S.C. § 112, paragraph 2. Because Petitioner cannot raise
`
`indefiniteness challenges as part of an inter partes review proceeding, Petitioner has
`
`instead proposed the above construction.
`
`9
`
`

`

`defined by a greater width component than height component (Grounds 1 & 2);
`
`(2) two or more light sources arranged in a row so as to collectively generate a light
`
`output distribution defined by a greater width component than height component
`
`(Grounds 3 & 4); and (3) two or more light sources, each being physically greater in
`
`width than height so as to individually generate an output distribution defined by a
`
`greater width component than height component (Grounds 3 & 4). As explained
`
`below, this construction is supported by the intrinsic evidence and the Patent Owner’s
`
`statements regarding claim scope in its infringement contentions against Petitioner.
`
`Looking first to the ’660 patent specification, it explains that “the light sources
`
`3 may be an arc lamp, an incandescent bulb [], a lens end bulb, a line light, a halogen
`
`lamp, a light emitting diode (LED), a chip from an LED, a neon bulb, a fluorescent
`
`tube, a fiber optic light pipe transmitting from a remote source, a laser or laser diode,
`
`or any other suitable light source.” (Ex. 1001 at 4:12-22.) These varying light sources
`
`can have very different light output distributions, including output in a 360° pattern.
`
`(Ex. 1001 at 3:47-50.) As depicted in the ’660 patent figures, when multiple light
`
`sources are used they are generally placed side-by-side, and, in every case, the light
`
`sources are “embedded, potted or bonded to the light transition area to eliminate any
`
`air gaps, decrease surface reflections and/or eliminate any lens effect between the
`
`light source and light transition area.” (Ex. 1001 at 1:38-43.) Thus, to the extent the
`
`specification contains any discussion of configuring light sources to obtain a defined
`
`10
`
`

`

`“light output distribution,” it does so only in the context of combining the light
`
`sources with other elements, such as the light reflecting surfaces of a light transition
`
`area, to achieve the desired output. (Credelle Decl. at ¶ 30.)
`
`For example, the ’660 patent specification discusses various ways to use
`
`reflectors to control the cross-sectional shape of the light output distribution. In
`
`Fig. 2 (partially depicted at left), the
`
`specification describes using a “light
`
`transition area 6 at one end of the light
`
`emitting panel 7 with sides 8, 9 around
`
`and behind the light source 3 shaped to
`
`more efficiently reflect and/or refract and focus the light emitted from the light
`
`source 3.” (Ex. 1001 at 3:17-24.) Notably, the light transition area 6 is not a part of
`
`the light source 3; it is either “integral” with the light emitting panel 7 or it is “a
`
`separate piece suitably attached to the light input surface 13 of the [light emitting]
`
`panel member if desired.” (Ex. 1001 at 3:5-13.) The ’660 patent specification also
`
`explains that “a suitable reflective material or coating 10 may be provided on the
`
`portions of the sides of the light transition areas of the panel assemblies of FIGS. 1
`
`and 2 on which a portion of the light impinges for maximizing the amount of light or
`
`otherwise changing the light that is reflected back through the light transition areas
`
`and into the light emitting panels.” (Ex. 1001 at 3:25-31.)
`
`11
`
`

`

`In Fig. 3 (partially depicted at right below), the specification describes a “light
`
`transition area 12 at one end of the light emitting panel 14 having reflective and/or
`
`refractive surfaces 15 around and behind each light source 3. These surfaces 15 may
`
`be appropriately shaped . . . to more
`
`efficiently reflect and/or refract and
`
`focus a portion of the light emitted
`
`for example from an incandescent
`
`light source which emits light in a
`
`360° pattern through the light
`
`transition areas 12 into the light input surface 19 of the light emitting panel 14.”
`
`(Ex. 1001 at 3:39-50.) The ’660 patent specification does not describe any other
`
`manner of controlling the light output distribution other than using the reflective
`
`surfaces of one of its light transition areas.
`
`Based on these disclosures, the Configured Limitation should be broad enough
`
`to include two or more light sources that are configured either individually or in
`
`combination with other elements to generate a light output distribution defined by a
`
`greater width component than height component.
`
`The Petitioner’s proposed construction is also informed by a comparison of the
`
`language of claims 1 and 33. Claim 1’s Configured Limitation requires:
`
`12
`
`

`

`a plurality of light sources configured to generate light
`having an output distribution defined by a greater width
`component than height component;
`
`While in claim 33 (element 33[d]) requires a plurality of LED light sources:
`
`each light source being configured to generate light having
`an output distribution defined by a greater width
`component than height component;
`
`Unlike claim 1, claim 33 thus requires “each light source” be configured to
`
`individually generate a light output distribution defined by a greater width component
`
`than height component.
`
`Both independent claims 1 and 33 were initially rejected by the examiner
`
`(during prosecution of the ’660 patent application) based on the disclosures of
`
`Pristash. (Ex. 1006 at 51, 52, 55 (5/16/2007 Office Action).) In response to the
`
`rejection, the applicant made no effort to traverse the examiner’s rejection and instead
`
`amended both claims 1 and 33 to “include all of the limitations of [previously]
`
`allow[ed]” dependent claims 19 and 40 (which claims had originally depended from
`
`independent claims 1 and 33, respectively). (Ex. 1006 at 75 (8/14/2007 Reply to
`
`Office Action).) The amendment changed both claims 1 and 33 from requiring “at
`
`least one [LED] light source” to requiring “a plurality of [LED] light sources.” (Id. at 68,
`
`72.)
`
`Both of the previously allowed dependent claims 19 and 40 (that the applicant
`
`stated were fully incorporated into claims 1 and 33, respectively) further required that
`
`13
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`“eachlightsource”beconfiguredto generate light having an output distribution
`
`defined by a greater width component than height component.” (Ex. 1006 at 20, 23
`
`(6/16/2006 Specification).) While the applicant included the “each light source”
`
`language from claim 40 in the amended claim element 33[d], the applicant did not
`
`include the same “each light source” language from claim 19 in the amended claim
`
`element 1[c]. (Ex. 1006 at 68, 72 (8/14/2007 Reply to Office Action).) Thus,
`
`claims 1 and 33 are distinct in that claim 1 requires the “plurality of light sources” to
`
`be configured; while claim 33 requires that “each light source” be configured. In its
`
`“Reasons for Allowance” of claims 1 and 33, the examiner reiterated this notable
`
`distinction between claims 1 and 33. (Ex. 1006 at 120, ¶¶ 1-2 (11/30/2007 Notice of
`
`Allowance).)
`
`Thus, to differentiate claim 33 from claim 1, the Configured Limitation 1[c]
`
`should encompass two or more light sources configured either individually or in
`
`combination with other elements to generate light having an output distribution
`
`defined by a greater width component than height component.
`
`In its infringement contentions against Petitioner (Ex. 1008), Patent Owner
`
`defined the claim 1 Configured Limitation 1[c] as requiring that the physical shape of
`
`each individual light be greater in width than height.
`
`The assembly includes a plurality of light sources (LEDs) –
`each with a greater width than height. BecauseLEDs
`haveagreaterwidththanheight,theyareconfigured
`
`14
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`

`

`togeneratelighthavinganoutputdistributiondefined
`byagreaterwidthcomponentthanheightcomponent.
`
`(Ex. 1008 at 7, emphasis added.) Thus, based on the Patent Owner’s statements, the
`
`Configured Limitation of claim 1 should also encompass two or more light sources,
`
`each being physically greater in width than height.
`
`C.
`
`“focused light sources” (claims 16, 17)
`
`Dependent claims 16 and 17 require “focused light sources.” The ’660 patent
`
`specification makes no reference to a “focused light source.” Claim 17, however,
`
`indicates that an LED is a type of focused light source. As such, “focused light
`
`sources” should be construed to encompass at least LED light sources.
`
`VI. GROUNDS FOR UNPATENTABILITYOF ’660 PATENT CLAIMS
`A.
`Ground 1: Claims 1, 3, 10, 16, 17 Are Anticipated under § 102(b) by
`Pristash
`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 ’660 patent may be entitled. Pristash was relied upon by the Examiner as
`
`a basis to reject claims under 35 U.S.C. § 102(b). As set forth below, Pristash
`
`discloses each and every element of claims 1, 3, 10, 16, and 17.
`
`Overview of Pristash
`1.
`Pristash generally discloses “a thin panel illuminator” that is directed to
`
`improving control over the light output of light emitting panel assemblies. (Ex. 1002
`
`at 11:1-16.) The light emitting panel assembly of Pristash is appropriate for use in
`
`15
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`

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`backlighting liquid crystal displays and a number of other general light applications.
`
`(Id. at 8:17-27.)
`
`Pristash has been presented to the Board in connection with two IPR petitions
`
`challenging claims of the ’660 patent: IPR2014-010943 and IPR2015-00855. In
`
`IPR2014-01094, the Board declined to institute inter partes review based on Pristash,
`
`finding that (i) the petitioner there improperly attempted to incorporate expert
`
`analysis (from the declaration) into the petition, and (ii) the expert analysis “d[id] not
`
`adequately explain” why Pristash discloses the Configured Limitation of claim 1
`
`because there was no discussion of “how the shape of the input end of the transition
`
`device relates to the output distribution of the plurality of light sources.” (Ex. 1009
`
`at 10.) In the -855 case, Patent Owner has yet to respond.
`
`Petitioner here takes a distinct approach to the challenged claims that is not
`
`reflected in the prior petitions for inter partes review. In particular, unlike the previous
`
`petitions, Petitioner here specifically addresses and seeks construction of the
`
`Configured Limitation. In so doing, Petitioner demonstrates and explains why
`
`Pristash discloses the Configured Limitation. In addition, as explained in Ground 3,
`
`Petitioner presents Pristash in combination with a secondary reference not previously
`
`considered by the Board (Kisoo) to create a new and alternative basis to find the
`
`3 Petitioner attempted to join -1094 by submitting IPR2015-00363, but had no control
`
`over, or involvement in the -1094 case.
`
`16
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`

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`challenged claims invalid as obvious. Thus, as explained in detail below, Petitioner
`
`has demonstrated a reasonable likelihood of prevailing with respect to at least one
`
`claim based on Pristash despite the Board’s prior decision declining to institute inter
`
`partes review based on the -1094 case.
`
`Pristash anticipates claim 1
`2.
`As set forth above, claim 1 of the ’660 patent is an apparatus claim that has six
`
`elements. Pristash discloses each of those elements.
`
`The first element of claim 1 requires a “light emitting panel assembly” (element
`
`1[a]). Pristash satisfies this element, disclosing a “thin panel illuminator including a
`
`solid transparent member [2] for
`
`conducting light,” as depicted in
`
`Fig. 1. (Ex. 1002 at 1:5-10; Credelle
`
`Decl. at ¶ 47.) The thin panel
`
`illuminator is used for “general
`
`lighting applications includ[ing]
`
`back lighting of [LCDs].” (Ex. 1002 at 8:18-20.)
`
`The second element of claim 1 requires that the assembly include a “planar
`
`optical conductor” having an “input edge with greater cross-sectional width than
`
`thickness” (element 1[b]). Pristash discloses this element. Fig. 1 (above) depicts a
`
`planar panel member with an input edge 4, which receives light from light source 3
`
`and has a greater cross-sectional width than thickness. (Ex. 1002 at 2:70-3:4.)
`
`17
`
`

`

`Pristash discloses various other light input edges that have a greater cross-sectional
`
`width than thickness, such as light input edge 35 disclosed in Fig. 4 (Ex. 1002 at 4:23-
`
`34.), and input surface (end edge) 66 disclosed in Figs. 8-9. (Ex. 1002 at 5:36-40;
`
`Credelle Decl. at ¶ 48.)
`
`The third element of claim 1 requires a “plurality of light sources configured to
`
`generate light having an output distribution defined by a greater width component
`
`than height component” (element 1[c]). Pristash discloses this element. First,
`
`Pristash discloses a plurality of light sources – “multiple light sources 82, 83” as
`
`shown in Fig. 10. (Ex. 1002 at 6:1-3; Credelle Decl. at ¶ 50.) Second, Pristash
`
`discloses that the multiple light sources are configured with various “transition
`
`devices” in order to generate a light output distribution defined by a greater width
`
`component than height component. (Credelle Decl. at ¶51.)
`
`For example, Fig. 1 (reproduced above) discloses a light source 3 arranged with
`
`collector 9 (external reflector) and transition device 5 (internal reflector). The shape
`
`of the light output distribution of Fig. 1 is defined by panel input edge 4, which has a
`
`greater width than height (as shown in Fig. 1).
`
`Similarly, Fig. 16 (at right) discloses a light
`
`source arranged with transition device 125,
`
`such that the light enters at input surface 126
`
`and is then internally reflected and ultimately distributed out of rectangular output
`
`surface 127 (and into the light emitting panel). (Ex. 1002 at 7:42-45.) Pristash
`
`18
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`

`

`explains that the “output surface of “the transition device” has “the shape of the
`
`panel input surface” and is therefore “a substantially rectangular output surface 127.”
`
`(Ex. 1002 at 7:36-46.) Thus, a light source configured with transition device 125 will
`
`generate light having an output distribution defined by output surface 127, which has
`
`a greater width than height. (Credelle Decl. at ¶ 51.) As noted above, the Configured
`
`Limitation of claim 1 should be construed broadly enough to encompass light sources
`
`configured with other elements of a panel assembly (e.g., a transition device) to
`
`generate an output distribution with a greater width component than height
`
`component.
`
`The fourth element of claim 1 requires the light sources of element 1[c] be
`
`“light sources[that are] positioned adjacent to the input edge” (element 1[d]). Pristash
`
`also discloses this element. Pristash explains, for example, the “transition devices may
`
`be formed as an integral part of the [light emitting] panels . . . [or], in certain
`
`applications the transition devices may be eliminated and the light focused directly on
`
`the panel input surfaces to cut down on system losses.” (Ex. 1002 at 8:6-12.) In
`
`either case, the light source is positioned directly adjacent to the input edge of the
`
`light emitting panel. (Credelle Decl. at ¶ 52.)
`
`The fifth element of claim 1 require