UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHONOLOGIES LLC
`Patent Owner
`
`
`
`____________
`
`Case No. TBD
`U.S. Patent No. 6,886,956
` ____________
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,886,956
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,886,956
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`
`
`TABLE OF CONTENTS
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`TABLE OF CONTENTS ....................................................................................... 1
`I. INTRODUCTION ............................................................................................. 1
`II. SUMMARY OF THE ‘956 PATENT ............................................................. 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘956 PATENT ..................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ‘956 PATENT ..................... 3
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .................................................................................................................... 4
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................. 4
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ............................................................................................................ 5
`1. The Grounds For Challenge ......................................................................... 5
`2. Claim Construction Under 37 C.F.R. § 42.104(b)(3) .................................. 6
`(a) “light extracting deformities” means “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” ................................................................ 7
`(b) “overlying at least one of said sides” means “attached to or positioned
`against one or more of the sides” ................................................................... 8
`(c) “attached to a circuit” means “electrically coupled to a network of
`circuit elements such as resistors, inductors, capacitors, and semiconductors”
`
`11
`3. Level of Skill of a Person Having Ordinary Skill in the Art ..................... 12
`IV. THERE IS A REASONABLE LIKELIHOOD THE CHALLENGED
`CLAIMS OF THE ‘956 PATENT ARE UNPATENTABLE ........................... 12
`A. KATASE ANTICIPATES CLAIMS 1, 5-6, 9, AND 31 UNDER 35 U.S.C. § 102(B) .. 15
`B. ISHIHARADA ANTICIPATES CLAIMS 1, 4-6, 9, AND 31 UNDER 35 U.S.C. § 102(E)
`
`25
`C. KATASE IN VIEW OF ISHIHARADA RENDERS CLAIMS 1, 4-6, 9, AND 31 OBVIOUS
`UNDER 35 U.S.C. § 103(A) ................................................................................... 42
`D. ISHIHARADA IN VIEW OF THE KNOWLEDGE OF ONE OF ORDINARY SKILL IN THE
`ART RENDERS CLAIMS 1, 4-6, 9, AND 31 OBVIOUS UNDER 35 U.S.C. § 103(A) .... 50
`V. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................... 53
`A. REAL PARTY-IN-INTEREST AND RELATED MATTERS ..................................... 54
`B. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ...................... 55
`C. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ............................................... 56
`
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`

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`VI. CONCLUSION .............................................................................................. 56
`
`VI. CONCLUSION............................................................................................ .. 56
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`2
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`I.
`
`INTRODUCTION
`
`Petitioner Ford Motor Company (“Petitioner”) requests an Inter Partes
`
`Review (“IPR”) of claims 1, 4-6, 9, and 31 (collectively, the “Challenged Claims”)
`
`of U.S. Patent No. 6,886,956 (“the ‘956 Patent”) issued on May 3, 2005 to Jeffrey
`
`R. Parker, et al. (“Applicants”). Exhibit 1001, ‘956 Patent. As demonstrated by
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`Petitioner below, the purportedly patentable feature of the ‘956 Patent of a light
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`emitting assembly for vehicle illumination with a light guide, light emitting diodes
`
`(LEDs), and a substrate providing an exterior portion of a vehicle was present in
`
`the prior art. This concept was also not new when considered in light of the state
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`of the art of vehicle illumination assemblies at the time. See, Ex. 1005, York
`
`Declaration at ¶ 41.
`
`II.
`
`SUMMARY OF THE ‘956 PATENT
`A. Description of the Alleged Invention of the ‘956 Patent
`
`The ‘956 Patent is generally directed to a light emitting panel assembly
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`including a light guide for use in automobile applications. See Ex. 1001 at 1:35-
`
`46. For example, as shown in Figs. 3 and 4 below, the alleged invention described
`
`in the ‘956 Patent includes transparent light emitting panel members 28-30 with
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`one or more light transition areas 10 at one or both ends. See Ex. 1001 at Figs. 3,
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`4; 8:30-63. Light sources 9 are mounted within the light transition areas 10. See
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`Ex. 1001 at Figs. 3, 4; 8:30-63. The light from the light sources 9 enters the
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`transparent light emitting panel members 28-30 from the light transition areas 10
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`1
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`and is “emitted along the entire length of the panel members or from one or more
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`light output surface areas along their length… to produce a desired light output
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`distribution to fit a particular application.” Ex. 1001 at 4:59-65.
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`
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`The panel members 28-30 may also have a pattern of light extracting
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`deformities or disruptions 12 (see Fig. 2A below) on one or both sides 13, 14 (as
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`show in Fig. 2). Ex. 1001 at 5:38-41.
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`The pattern of deformities may include a variable pattern which breaks up
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`the light rays such that the internal angle of reflection of a portion of the light rays
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`2
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`will be great enough to cause the light rays either to be emitted out of the panel
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`members through the side or sides on which the light extraction deformities are
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`provided, or reflected back through the panel members and emitted out the other
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`side. See Ex. 1001 at 5:45-52. By varying the density, opaqueness or
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`translucency, shape, depth, color, area, index of refraction, or type of deformities
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`on an area or areas of the panel members, the light output of the panel members
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`can be controlled. See Ex. 1001 at 6:1-4.
`
`B.
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`Summary of the Prosecution History of the ‘956 Patent
`
`U.S. Patent Application No. 10/298,367, which subsequently issued as the
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`‘956 Patent, was filed on November 18, 2002 as a continuation of U.S. Patent No.
`
`6,508,563, which was filed on December 5, 2001 as a continuation of U.S. Patent
`
`No. 6,367,940, which was filed on October 31, 2000 as a continuation of U.S.
`
`Patent No. 6,158,867, which was filed on October. 7, 1998 as a division of U.S.
`
`Patent No. 5,895,115, which was filed on Jan. 16, 1996. See Ex. 1001. During
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`prosecution, in an Office Action mailed February 12, 2004, the Examiner rejected
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`all Challenged Claims except 31 (which was not added yet) as anticipated by U.S.
`
`Patent 5,467,417 (“Nakamura”). See Ex. 1002, ‘956 Patent File History at 140-
`
`142.
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`In a response dated June 14, 2004, the patentee amended the claims to recite
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`“light emitting diodes” instead of “a plurality of closely spaced light sources” and
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`3
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`to recite “said substrate providing an exterior portion of a vehicle for vehicle
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`illumination at said exterior portion.” Ex. 1002 at 126. Additionally, claim 31 was
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`added. Ex. 1002 at 131.
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`In a subsequent Office Action, mailed June 29, 2004, the Examiner rejected
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`all Challenged Claims as anticipated by U.S. Patent No. 4,733,335 (“Serizawa”).
`
`See Ex. 1002 at 115-117. In the response dated September 29, 2004, the patentee
`
`amended the claims, placing them in their final form by inserting the following
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`underlined phrase: “one or more light emitting diodes along said light input surface
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`for receiving light from said light emitting diodes and conducting the light from
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`said edge for emission of the light from at least one of said sides.” See Ex. 1002 at
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`39. Following this response, the Examiner issued a Notice of Allowance. Ex. 1002
`
`at 13.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`Each requirement for IPR of the ‘956 Patent is satisfied under §42.104.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner certifies that the ‘956 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ‘956 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`‘956 Patent; (2) Petitioner has not filed a civil action challenging the validity of
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`any claim of the ‘956 Patent; and (3) this Petition is not filed more than one year
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`4
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`
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`after Petitioner was served with a complaint alleging infringement of the ‘956
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`Patent.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, claims 1, 4-6, 9, and 31
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`of the ‘956 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
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`1.
`
`The Grounds For Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Table 1: Proposed Statutory Rejections
`
`Proposed Statutory Rejections for the ‘956 Patent
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`Claims 1, 5-6, 9, and 31 are anticipated under § 102(b) by
`Japanese Patent Application H5-25602 to Katase (“Katase”).
`
`Claims 1, 4-6, 9, and 31 are obvious under § 103(a) over Katase.
`
`Reference
`Exhibit No.
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`1003
`
`1003
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`Claims 1, 4-6, 9, and 31 are obvious under § 103(a) over Katase in
`view of Japanese Laid Open Utility Model JPS57-60171 to Tsuboi
`(“Tsuboi”).
`
`1003, 1014
`
`Claims 1, 4-6, 9, and 31 are anticipated under § 102(e) by U.S.
`Patent No. 6,030,108 to Ishiharada (“Ishiharada”).
`
`1004
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`Claims 1, 4-6, 9, and 31 are obvious under § 103(a) over Katase in
`view Ishiharada.
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`1003, 1004
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`Claims 1, 4-6, 9, and 31 are obvious under § 103(a) over
`Ishiharada.
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`1004
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`5
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`Section IV identifies where each element of the Challenged Claims is found in the
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`prior art references. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
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`supporting evidence relied upon to support the challenges are provided above and
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`the relevance of the evidence to the challenges raised are provided in Section IV.
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`37 C.F.R. § 42.104(b)(5). Exhibits 1001 – 1011 are also attached.
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`2.
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`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`
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`The ‘956 Patent is subject to a terminal disclaimer, disclaiming any term of
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`the ‘956 Patent after the expiration date of U.S. Patent No. 5,613,751, which
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`expired on June 27, 2015 (based on its filing date of June 27, 1995). Ex. 1002 at p.
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`173. The ‘956 Patent, therefore, is expired. Thus, the claims of the expired ‘956
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`Patent are to be construed in this proceeding using the Phillips standard and
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`“generally are given their ordinary and customary meaning, as understood by a
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`person of ordinary skill in the art, at the time of the invention, taking into
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`consideration the language of the claims, the specification, and the prosecution
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`history of record because the expired claims are not subject to amendment.” See
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`Panel Claw Inc. v. Sunpower Corp., IPR2014-00386, Paper No. 7, p. 7, June 30,
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`2014.
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`The claim construction analysis is not, and should not be viewed as, a
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`concession by Petitioner as to the proper scope of any claim term in any litigation.
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`6
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`This analysis is also not a waiver of any argument in any litigation that claim terms
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`in the ‘956 Patent are indefinite or otherwise invalid.
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`(a) “light extracting deformities” means “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”
`
`Claim 1 of the ‘956 Patent requires “a plurality of light extracting
`
`deformities” on at least one of said sides of a light guide. Ex. 1001 at Claim 1.
`
`Referring to Fig. 2A below, a pattern of light extracting deformities or disruptions
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`12 is provided on one or both sides 13, 14 of light emitting panel members along
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`their entire length or at one or more selected areas of the panel members as desired.
`
`See Ex. 1001 at 5:38-41.
`
`
`
` The inventors of the ‘956 Patent, acting as their own lexicographers,
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`expressly define “light extracting deformities” to mean “any change in the shape or
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`geometry of the panel surface and/or coating or surface treatment that causes a
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`portion of the light to be emitted.” Ex. 1001 at 5:42-52.
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`7
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`
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`(b) “overlying at least one of said sides” means “attached to or
`positioned against one or more of the sides”
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`Claim 1 of the ‘956 Patent recites “a transparent substrate overlying at least
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`one of said sides” of the light guide. Ex. 1001 at Claim 1. Throughout the ‘956
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`Patent, the transparent substrate is consistently referred to as a transparent film,
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`sheet, plate, or lens. Ex. 1001 at 7:37-50 (“a transparent film, sheet, or plate”);
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`9:8-12 (“a lens or film”). For example, referring to Fig. 4, reproduced below, the
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`patent discloses that the light emitting panel members 29 “may form the exterior
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`surface of the body panel 25 as shown at the left hand side of FIG. 4 or a lens or
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`film 34 may cover the panel members as shown at the right hand side of FIG. 4.”
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`Ex. 1001 at 9:8-12.
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`
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`As shown in Fig. 4 above, the light panel member (i.e., light guide) is in contact
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`with the lens or film 34, which is said to “cover” the panel member, as described
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`by the specification, and this embodiment depicts the claimed “transparent
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`substrate” (i.e., the lens or film 34) that “provid[es] an exterior portion of a vehicle
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`for vehicle illumination at said exterior portion.”
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`8
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`The transparent film or substrate is always described or depicted in the ‘956
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`Patent as attached to or positioned against the light panels from which light is
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`emitted: “a transparent film, sheet or plate may be attached to or positioned
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`against the side or sides of the panel members from which light is emitted using a
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`suitable adhesive or other method in order to produce a desired effect.” Ex. 1001
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`at 7:37-42 (emphasis added). The substrate is also described as “a transparent
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`overlay.” Id. at 7:45-48. Further, in embodiments where the deformities are
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`provided via the film, the film is made a permanent part of the panel member:
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`“This sheet or film may become a permanent part of the light panel assemblies for
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`example by attaching or otherwise positioning the sheet or film against one or both
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`sides of the panel members in order to produce a desired effect.” Id. at 5:63-67
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`(emphasis added). The specification, including its figures, therefore, consistently
`
`describe and depict the transparent substrate as being in contact with at least one
`
`side of the light guide by being either positioned against or attached to at least one
`
`side of the light guide.
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`Importantly, the plain claim language recites a transparent substrate
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`“overlying” at least one of said sides of said light guide and not merely a substrate
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`“over” at least one of said sides, indicating contact between the substrate and the at
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`least one side. This construction is supported by the plain language of the
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`dependent claims as well. Claim 3 (not challenged herein) recites, “wherein said
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`9
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`substrate is attached to said light guide,” and Claim 4 recites, “wherein said
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`substrate is positioned against said light guide.” Each claim represents a narrowing
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`of the broader Claim 1, which allows for the substrate being either attached to or
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`positioned against the light guide.
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`Finally, based on the specification of the ‘956 Patent, one of ordinary skill in
`
`the art at the time would have understood the claimed transparent substrate
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`“overlying” at least one of the sides of the light guide of Claim 1 to be attached to
`
`or positioned against at least one of the sides of the light guide. See Ex. 1005,
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`York Declaration at ¶ 62. Thus, in light of the intrinsic and extrinsic evidence,
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`“overlying at least one of said sides” means “attached to or positioned against one
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`or more of the sides.”
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`Petitioner notes that Patent Owner appears to contend in its co-pending
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`litigation against Petitioner that “overlying at least one of said sides” is broader
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`than Petitioner’s construction and does not require contact between the claimed
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`substrate and light guide. See Ex. 1012, Joint Claim Construction Chart, at 5.
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`Presumably, Patent Owner contends that “overlying at least one of said sides” of
`
`the light guide merely requires that the substrate be placed “over” at least one of
`
`said sides of the light guide. If Patent Owner’s broader construction is adopted
`
`such that contact is not required, then Katase anticipates claims 1, 5-6, 9, and 31 as
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`set forth in Sec. IV.A below. Even if Petitioner’s narrower construction is adopted,
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`10
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`such that contact is required, and it is found by the Board that such contact is not
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`fairly taught by Katase, then, nonetheless, Katase alone renders all Challenged
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`Claims obvious (Sec. IV.B), Katase in view of Tsuboi renders all Challenged
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`Claims obvious (Sec. IV.C), Ishiharada both anticipates and renders obvious all
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`Challenged Claims (Secs. IV.D & IV.F), and Katase in view of Ishiharada renders
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`obvious all Challenged Claims (Sec. IV.E).
`
`(c) “attached to a circuit” means “electrically coupled to a network of
`circuit elements such as resistors, inductors, capacitors, and
`semiconductors”
`
`Claim 9 of the ‘956 Patent requires the LEDs to be “attached to a circuit.”
`
`Ex. 1001 at Claim 9. A circuit is a term of art in the field of electrical engineering
`
`meaning:
`
`The physical connection (or path) of channels, conductors and
`equipment between two given points through which an electric current
`may be established . . . . A circuit can also be a network of circuit
`elements such as resistors, inductors, capacitors, semiconductors, etc.,
`that performs a specific function. A circuit can also be a closed path
`through which current can flow.
`
`Ex. 1006, Harry Newton, Newton’s Telecom Dictionary 129 (11th ed. 1996); See
`
`also Ex. 1005, York Declaration at ¶ 63. The ‘956 Patent utilizes the term
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`“circuit” consistent with this definition. For example:
`
`Preferably the light emitting panel members 8 are made of a
`transparent resiliently deformable material such as a thermoplastic
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`11
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`
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`elastomer or silicone rubber which allows areas of the panel members
`in line with the control buttons to be flexed into engagement with a
`printed circuit 19 located beneath the panel members when the
`respective control buttons are depressed to complete an associated
`control circuit.
`
`Ex. 1001 at 8:8-15. Additionally, during prosecution of the ‘956 Patent, Claim 9
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`was amended from the original language “attached to a printed circuit board” to its
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`allowed form of “attached to a circuit,” which is presumably broader than being
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`“attached to a printed circuit board.” Ex. 1002 at 165. This amendment was not
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`made in order to gain allowance over prior art. Ex. 1002 at 171-172. Thus,
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`“attached to a circuit” means “electrically coupled to a network of circuit elements
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`such as resistors, inductors, capacitors, and semiconductors.”
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`3.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
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`A person of ordinary skill in the art at the time of the ‘956 Patent would
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`have been a person having a bachelor’s degree in Mechanical Engineering or
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`Physics or equivalent coursework and at least two years of experience in the
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`lighting systems field. Experience and technical training may substitute for
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`educational requirements, while advanced degrees may substitute for experience.
`
`See Ex. 1005, York Declaration at ¶ 26.
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`IV. THE CHALLENGED CLAIMS OF THE ‘956 PATENT ARE
`UNPATENTABLE
`
`Systems and methods for providing a light emitting assembly for vehicle
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`12
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`
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`illumination with a light guide, light emitting diodes, and a substrate providing an
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`exterior portion of a vehicle for vehicle illumination were prevalent well before
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`January 16, 1996. The following prior art references disclose each limitation of the
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`Challenged Claims either alone or in combination with another reference.1 As
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`such, the Challenged Claims are unpatentable. Included in the claim charts below
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`are exemplary citations to the prior art references.
`
`The ‘956 Patent has been the subject of six other IPR petitions.2 Of these
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`six, only the first one filed (the “Koito Petition”) has had a Patent Owner
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`Preliminary Response filed and none have reached an institution decision yet.3
`
`The Katase reference relied on herein was also utilized in other petitions, including
`
`the Koito Petition.4 The Patent Owner, in its Preliminary Response, did not
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`traverse the fact that Katase anticipates Claims 1, 5-6, and 9. See, Ex. 1010 at 6-8.
`
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`1 The claim construction and prior art analysis applying the prior art to the
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`challenged claims herein is not, and should not be viewed as, a concession by
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`Petitioners as to the proper scope of any claim term in any litigation. These
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`assumptions are not a waiver of any argument in any litigation that claim terms in
`
`the ‘956 Patent are indefinite or otherwise invalid.
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`2 See § VI.A.
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`3 The Preliminary Response filed in IPR2015-00575 is attached hereto as Ex. 1010.
`4 IPR Nos.2015-00575, 2015-00896, and 2015-00934.
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`13
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`The Koito Petition did not allege Claim 4 was anticipated by Katase. In its
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`overview section of its Preliminary Response, Patent Owner purported to contend
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`that Katase had “[n]o disclosure of element 31(b): ‘wherein said substrate provides
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`protection for the light guide.’” Ex. 1010 at 7. However, in its actual argument
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`section, Patent Owner made no such argument that element 31(b) was lacking from
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`Katase. Ex. 1010 at 12-21. And Patent Owner indicated it was only raising
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`specific arguments as to claims 4, 16, and 21. Ex. 1010 at 1. Nonetheless,
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`Petitioner addresses this issue with respect to claim 31 specifically in § IV.A
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`below. Additionally, the Ishiharada reference relied on herein is not the subject of
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`any of the other IPR petitions.
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`Additionally, the declaration of Mr. Brent York, submitted herewith as
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`Exhibit 1005, constitutes evidence not present in any of the previous petitions
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`related to the ‘956 Patent. Thus, this petition present grounds that are not
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`duplicative of those set forth in previous IPR petitions related to the ‘956 Patent
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`and separate consideration of the grounds in the instant petition is warranted.5
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`5 Furthermore, it appears that motions requesting termination have been filed in
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`many of the other pending IPR petitions and district court litigation records
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`indicate that Patent Owner has reached resolutions in principle with the petitioners
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`in most, if not all, of the other pending IPR petitions.
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`14
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`
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`A. Katase Anticipates Claims 1, 5-6, 9, and 31 Under 35 U.S.C. §
`102(b)
`
`Japanese Patent Application H5-25602 to Katase (“Katase”) was published
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`on April 2, 1993 and therefore qualifies as prior art with regard to the ‘956 Patent
`
`at least under 35 U.S.C. § 102(b). In the event that the Board does not adopt
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`Petitioner’s construction of the requirement of a transparent substrate “overlying at
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`least one of said sides” of the light guide and holds that contact is not required
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`between the claimed substrate and light guide, then Katase anticipates claims 1, 5-
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`6, 9, and 31 under such a construction as set forth below. However, in the event
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`that the Board adopts Petitioner’s construction of “overlying at least one of said
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`sides” and finds that Katase does not fairly teach contact between the light guide
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`and transparent substrate, then Katase does not anticipate these claims and
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`Petitioner instead directs the Board to its other grounds of unpatentability with
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`regard to Katase, i.e., claims 1, 4-6, 9, and 31 are rendered obvious by Katase (see
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`Sec. IV.B, infra), by Katase in view of Tsuboi (see Sec. IV.C, infra), and by
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`Katase in view of Ishiharada (see Sec. IV.E, infra).
`
`Katase discloses an exterior vehicle illumination device that conducts light
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`from LED light sources through an input region on the edge of a light guide (i.e.,
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`“optical fiber 31”) for emission from at least one side of the light guide. Ex. 1003
`
`at ¶¶ [0001], [0005], and [0007] - [0008]; see also Figs. 3, 4, and 5; Ex. 1005, York
`
`Declaration at ¶¶ 65-66. In Figs. 4 & 5, reproduced below, LED 33 is embedded
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`
`
`
`15
`
`
`

`
`
`
`in an input region 34 that is the edge of a light guide 31. Ex. 1003 at Figs. 4 & 5.
`
`Thus, Katase discloses at least one “light input surface” for receiving light from
`
`one or more LEDs and conducting it through the light guide. Ex. 1005 at ¶¶ 63-64.
`
`Katase teaches that the light guide includes a series of “wedge-shaped total
`
`reflection steps 35,” which “can totally reflect a portion of the light transmitted
`
`through the inside of the optical fiber 31 by the inclined surface, and can reflect the
`
`portion of the light to a front surface side of the optical fiber structure.” Ex. 1003
`
`at ¶ [0008]. The surface that includes the wedge-shaped reflection steps and the
`
`front surface through which light from the LEDs is emitted after reflection by the
`
`steps correspond to the claimed “opposite sides” of the light guide.
`
`
`Figs. 4 & 5: light guide with light extracting deformities 35.
`
`The reflection steps 35 are wedge-shaped depressions and/or raised surfaces
`
`
`
`that constitute light extracting deformities that cause a portion of the light
`
`transmitted through the optical fiber to be emitted from the front side of the fiber.
`
`
`
`
`16
`
`
`

`
`
`
`Ex. 1005, York Declaration at ¶¶ 67 & 71. These light extracting deformities
`
`control the output ray angle distribution of emitted light as required by Claim 1 of
`
`the ‘956 Patent by reflecting light transmitted down the length of Katase’s light
`
`guide out the front side of the light guide, such as is depicted by the dashed lines in
`
`Figs. 4-5 above. See, e.g., Ex. 1003 at Figs. 4 and 5, ¶¶ [0008]-[0009]; see also
`
`Ex. 1005, York Declaration at ¶¶ 67 & 71. Katase teaches that its configuration
`
`suits the particular application of achieving a thinner and more uniformly
`
`illuminated vehicle lamp and specifically teaches that it can be used as a “stop &
`
`tail lamp” and “turn signal lamp.” Ex. 1005, York Declaration at ¶ 67; see, e.g.,
`
`Ex. 1003 at ¶¶ [0005], [0008], [0009], & [00013].
`
`Further, the vehicle illumination device described by Katase includes an
`
`“outer lens mounted on the front edge of the lamp body” (see element 2 in Fig. 1
`
`reproduced below), serving to provide a transparent substrate that provides an
`
`exterior portion of the vehicle for vehicle illumination. Ex. 1003 at ¶¶ [0006] &
`
`[0008]; Figs. 1 and 2; Ex. 1005 at ¶ 68.
`
`
`
`
`
`
`17
`
`
`

`
`
`
`Fig. 1: light guide assembly forming exterior of vehicle.
`
`Katase teaches that the device “defines a thin space in a front-rear direction
`
`between the lamp body 1 and the outer lens 2,” and the light source unit 3
`
`containing the optical fibers is inserted between the lam body 1 and outer lens 2, as
`
`shown in Figs. 1 (exploded) and 2 (assembled). Ex. 1003 at ¶¶ [0006]-[0007].
`
`Katase further discloses that “a dimension of the lamp in the front-rear direction is
`
`sufficient if it corresponds to a radial dimension of the optical fiber.” Ex. 1003 at ¶
`
`[0010]. If the spacing between the lamp body and outer lens corresponds to the
`
`radial dimension of the optical fiber, then the optical fibers would be in physical
`
`contact with and positioned against the outer lens, satisfying Petitioner’s
`
`construction of the “overlying” claim term, and all Challenged Claims would be
`
`anticipated by Katase even under Petitioner’s construction. If this teaching is not
`
`found to disclose physical contact, then Katase would not anticipate the
`
`Challenged Claims under Petitioner’s construction. Further, if this teaching is not
`
`found to disclose physical contact and Patent Owner’s likely proposed construction
`
`is adopted, where “a transparent substrate overlying at least one of said sides” does
`
`not require the substrate to be “attached to or positioned against one or more of the
`
`sides,” then Katase anticipates claims 1, 5-6, 9, and 31 under this ground.
`
`
`
`Further, as shown in Fig. 1, the outer lens substrate disclosed by Katase
`
`covers (claim 5) the entire light guide and wraps around the side of the light guide.
`
`
`
`
`18
`
`
`

`
`
`
`See Ex. 1003 at Fig. 1. Additionally, Katase teaches that the LEDs of the device
`
`are disposed on a “printed board 32,” constituting the claimed “circuit” of the ’956
`
`patent (claim 9). Ex. 1003 at ¶ [0007]; see also, Ex. 1005, York Declaration at ¶
`
`70.
`
`
`
`Finally, the substrate, which forms the exterior of a vehicle, would
`
`necessarily provide protection for the light guide (claim 31). Ex. 1005, York
`
`Declaration at ¶¶ 68-69. However, claim 31’s requirement that the substrate
`
`“provides protection for the light guide” is non-limiting, in any event, because it
`
`“provides no distinguishing structure to the claim.” See Research Corp. Techs.,
`
`Inc. v. Gensia Laboratories, Inc., 10 Fed. Appx. 856, 861 (Fed. Cir. 2001)
`
`(construing the expression “protected from light” as non-limiting); accord MPEP §
`
`2111.04. The limitation is merely a recitation with respect to the manner in which
`
`the claimed apparatus is intended to be employed. See MPEP § 2114(II).
`
`Accordingly, that limitation cannot distinguish the claim over the prior art, which
`
`teaches the structural limitations of the claim. Id. (citing Ex parte Masham, 2
`
`U.S.P.Q.2d 1647 (BPAI 1987) (“the apparatus disclosed [in the prior art] does not
`
`undergo a metamorphosis to a new apparatus merely by affixing instructions
`
`thereto indicating” how it is to be used)).
`
`Table 2: Anticipation by Katase
`
`‘956 Patent
`
`Anticipated by Katase (Ex. 1003)
`
`
`
`
`19
`
`
`

`
`
`
`light
`
`1. A
`emitting
`assembly for
`vehicle
`illumination
`comprising
`
`[1(a)] a light
`guide having
`opposite sides
`and at
`least
`one
`light
`input surface
`along at least
`one edge of
`said
`light
`guide,
`
`“The invention relates to a vehicle lamp device and, in particular, to
`a vehicle lamp device, thinning of which is realized.” Ex. 1003 at ¶
`[0001].
`
`“An object of the invention is to provide a vehicle lamp that is
`thinned, whose structure is simplified, and that is further capable of
`uniform illumination.” Ex. 1003 at ¶ [0003].
`“As partially shown in an enlarged state in Fig. 3, the light source
`unit 3 has an optical fiber structure in which a number of optical
`conductors, each of which is formed of a transparent resin and has a
`circular cross section, that is, a number of relatively thick optical
`fibers 31 of 2 to 6 φ, each of which is formed of an acrylic resin or
`the like, for example, are vertically superimposed and 15 integrated
`by an adhesive or the like, so as to have a front shape
`corresponding to the lamp body 1 and the outer lens 2. In this
`embodiment, as shown in Fig. 4, a transparent short column 34 in
`which the LED device 33 is integrally embedded is adhered to the
`end of the each optical fiber 31 by a transparent adhesive.” Ex.
`1003 at ¶ [0007].
`
`Ex. 1003 at Fig. 3.
`
`
`Ex. 1003 at Fig. 4.
`
`
`
`
`20
`
`
`
`
`
`
`

`
`
`
`See also, Ex. 1003 at [Abstract] [Structure], Fig. 5, & ¶ [0008]-
`[0009].
` “An end of the each optical fiber 31 for constituting the optical
`fiber structure is disposed to face a vertically extended printed
`board 32, and a number of light emitting devices (LED devices) 33
`mounted in the printed board 32 are each embedded in an end of
`each optical fiber 31. In this embodiment, as shown in Fig. 4, a
`transparent short column 34 in which the LED device 33 is
`integrally embedded is adhered to the end of the each optical fiber
`31 by a transparent adhesive.” Ex. 1003 at ¶ [0007].
`
`[1(b)] one or
`more
`light
`emitting
`diodes along
`said
`light
`input surface
`for receiving
`light
`from
`said
`light
`emitting
`diodes and
`
`
`
`
`
`Ex. 1003 at Figs. 4 and 5.
`
`“According to the invention, a light source unit configured by
`plural optical fibers reflects light from a light source, which enters
`from one end and is transmitted through the inside of each of the
`o