UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`K.J. PRETECH CO., LTD.
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`Patent Owner
`_______________
`
`Case: IPR2015-01867
`
`Patent 7,537,370
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,537,370
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`V.
`
`VI.
`
`B.
`
`Page
`MANDATORY NOTICES ..........................................................................1
`I.
`PAYMENT OF FEES ..................................................................................3
`II.
`STANDING ...................................................................................................3
`III.
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4-6, 9, 13,
`29, and 47 OF THE ’370 PATENT .............................................................3
`A.
`Technology Background.............................................................................. 3
`B.
`The Alleged Invention Of The ’370 Patent ................................................ 5
`CLAIM CONSTRUCTION.........................................................................6
`A.
`Standards For Claim Construction............................................................. 6
`B.
`“deformities” (claims 1, 4-6, 13, 29, 47) .................................................. 7
`C.
`“transition region” (claims 13, 47)............................................................. 7
`SUMMARY OF PRIOR ART TO THE ’370 PATENT FORMING
`THE BASIS FOR THIS PETITION...........................................................8
`A.
`Admitted Prior Art ........................................................................................ 9
`B.
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1006)............................ 9
`C.
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1007)............................... 10
`D.
`JP H03-189679 ("Suzuki") (Ex. 1008, 1009, 1010) ............................. 10
`E.
`U.S. Patent No. 4,929,866 (“Murata”) (Ex. 1011)................................ 10
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM...............11
`A.
`Ground 1: Claims 1, 4, and 29 Are Unpatentable Under 35
`U.S.C. § 103(a) As Being Obvious Over Kobayashi ........................... 11
`Ground 2: Claims 13 and 47 Are Unpatentable Under 35 U.S.C.
`§ 103(a) As Being Obvious Over Kobayashi In View Of
`Pristash .......................................................................................................... 25
`Ground 3: Claims 1, 4-5, 9, 13, 29, and 47 Are Unpatentable
`Under 35 U.S.C. § 103(a) As Being Obvious Over Suzuki ................ 33
`Ground 4: Claims 13 and 47 Are Unpatentable Under 35 U.S.C.
`§ 103(a) As Being Obvious Over Suzuki In View Of Pristash .......... 52
`Ground 5: Claims 1, 4-5, 9, and 13 Are Unpatentable Under 35
`U.S.C. § 103(a) As Being Obvious Over Suzuki in view of
`Murata ........................................................................................................... 55
`VIII. CONCLUSION ...........................................................................................58
`
`C.
`
`D.
`
`E.
`
`ii
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
`CASES
`Arris Group, Inc. v. C-Cation Techs., LLC,
`IPR2014-00747, Decision (P.T.A.B. Nov. 24, 2014) ..........................................6
`
`Page(s)
`
`In re Cuozzo Speed Techs., LLC,
`No. 2014-1301, 2015 U.S. App. LEXIS 1699
`(Fed. Cir. Feb. 4, 2015).........................................................................................6
`
`In re Rambus Inc.,
`753 F.3d 1253 (Fed. Cir. 2014) ............................................................................6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................6
`
`STATUTES
`
`35 U.S.C. § 102....................................................................................................9, 10
`
`35 U.S.C. § 103......................................................................................12, 25, 26, 52
`
`35 U.S.C. § 112..........................................................................................................7
`
`35 U.S.C. § 301..........................................................................................................7
`
`35 U.S.C. § 311..........................................................................................................1
`
`RULES
`
`37 C.F.R. § 42.8 .....................................................................................................1, 2
`
`37 C.F.R. § 42.103 .....................................................................................................3
`
`37 C.F.R. § 42.104 .....................................................................................................3
`
`iii
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`PETITIONERS’ EXHIBIT LIST
`Description
`U.S. Patent No. 7,537,370
`Prosecution History of U.S. Patent No. 7,537,370
`Complaints filed in Related District Court Cases
`Declaration of Credelle (“Credelle Decl.”)
`U.S. Patent No. 5,461,547 (“Ciupke”)
`U.S. Patent No. 5,408,388 (“Kobayashi”)
`U.S. Patent No. 5,005,108 (“Pristash”)
`English translation of JP H03-189679 (“Suzuki”)
`JP H03-189679 (“Suzuki JP”)
`Translation Certificate for JP H03-189679 (“Suzuki Cert. ”)
`U.S. Patent No. 4,929,866 (“Murata”)
`Claim Construction Order, Innovative Display Technologies LLC v.
`Acer, Inc., et al., No. 2:13-cv-00522 (E.D. Tex. Aug. 26, 2014), ECF
`No. 101
`Plaintiff's Opening Claim Construction Brief, Innovative Display
`Technologies LLC v. Acer, Inc., et al., No. 2:13-cv-00522 (E.D. Tex.
`June 16, 2014), ECF No. 69
`U.S. Patent No. 5,160,195 (“Miller”)
`J. A. Castellano, Handbook of Display Technology, Academic Press
`Inc., San Diego (1992)
`U.S. Patent No. 5,598,280 (“Nishio”)
`U.S. Patent No. 5,384,658 (“Ohtake”)
`U.S. Patent No. 5,303,322 (“Winston”)
`U.S. Patent No. 5,050,946 (“Hathaway”)
`European Patent Application Publication No. EP500960 (“Ohe”)
`U.S. Patent No. 5,828,488 (“Ouderkirk”)
`3M Product Brochure 75-0500-0403-7, “Brightness Enhancement Film
`(BEF)” (1993)
`U.S. Patent No. 5,706,134 (“Konno”)
`U.S. Patent No. 5,944,405 (“Takeuchi”)
`U.S. Patent No. 5,381,309 (“Borchardt”)
`Excerpt from Werner Deposition
`IPR2014-01096, Paper No. 11
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`1023
`1024
`1025
`1026
`1027
`
`iv
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`Pursuant to 35 U.S.C. § 311, Petitioner hereby respectfully requests inter
`
`partes review of claims 1, 4-6, 9, 13, 29, and 47 of Ex. 1001, U.S. Patent No.
`
`7,537,370 (“the ’370 Patent”) (“Ex. 1001”) which issued on May 26, 2009. The
`
`challenged claims are unpatentable under 35 U.S.C. § 103 over the prior art
`
`publications identified and applied in this Petition.
`
`I.
`
`MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner provides the following mandatory
`
`disclosures:
`
`A. Real Parties-In-Interest. There are no real parties-in-interest with
`
`Petitioner K.J. Pretech Co., Ltd.
`
`B. Related Matters. Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner submits
`
`that the ’370 Patent is the subject of patent infringement lawsuits brought by the
`
`Patent Owner, Innovative Display Technologies LLC (see Ex. 1003), and an IPR
`
`brought by LG Display Co. Ltd., which are listed in the chart below.
`
`Description
`
`DDG and IDT v. Lenovo Group Ltd., et al.
`DDG and IDT v. LG Electronics Inc., et al.
`DDG and IDT v. Vizio, Inc.
`LG Display Co. Ltd, v. Innovative Display
`Technologies, Ltd.
`
`Docket Number
`
`1:13-cv-02108, D.Del.
`1:13-cv-02109, D.Del.
`1:13-cv-02112, D.Del.
`IPR2014-01096
`
`Petitioner is concurrently filing petitions to review U.S. Patent Nos.
`1
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`7,434,974 and 8,215,816, which are in the same family as the ’370 Patent.
`
`C. Lead and Back-up Counsel.
`
`Petitioners provide the following designation of counsel:
`
`LEAD COUNSEL
`Robert G. Pluta
`Registration No. 50,970
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8641
`Facsimile: 312-701-7711
`rpluta@mayerbrown.com
`
`BACK-UP COUNSEL
`Amanda K. Streff
`Registration No. 65,224
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Telephone: 312-701-8645
`Facsimile: 312-701-7711
`astreff@mayerbrown.com
`
`Baldine B. Paul
`Registration No. 54,369
`Anita Y. Lam
`Registration No. 67,394
`Saqib J. Siddiqui
`Registration No. 68,626
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: 202.263.3000
`Facsimile: 202.263.3300
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`D. Service Information. Pursuant to 37 C.F.R. § 42.8(b)(4), Petitioners
`
`identify the following service information: Please direct all correspondence
`
`regarding this proceeding to lead counsel at
`
`the address identified above.
`
`Petitioner consents to electronic service by email: rpluta@mayerbrown.com,
`
`2
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`bpaul@mayerbrown.com,
`
`astreff@mayerbrown.com,
`
`alam@mayerbrown.com,
`
`and
`
`ssiddiqui@mayerbrown.com
`
`with
`
`a
`
`courtesy
`
`copy
`
`to
`
`PretechIPR@mayerbrown.com.
`
`II.
`
`PAYMENT OF FEES
`
`Pursuant to 37 C.F.R. § 42.103, $23,000 is being paid at the time of filing
`
`this petition, charged to Deposit Account 130019. Should any further fees be
`
`required by the present Petition, the Patent Trial and Appeal Board (“the Board”) is
`
`hereby authorized to charge the above referenced Deposit Account.
`
`III.
`
`STANDING
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the patent sought
`
`for review, the ’370 Patent, is available for inter partes review and that Petitioner
`
`is not barred or estopped from requesting an inter partes review of the patent.
`
`IV. REQUEST FOR INTER PARTES REVIEW OF CLAIMS 1, 4-5, 9, 13,
`29, AND 47 OF THE ’370 PATENT
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests that the Board find
`
`unpatentable claims 1, 4-5, 9, 13, 29, and 47 of the ’370 Patent. Such relief is
`
`justified as the alleged invention of the ’370 Patent was described by others prior
`
`to the effective filing date of the ’370 Patent.
`
`A.
`
`Technology Background
`
`Generally, light emitting panel assemblies are used in conjunction with
`
`liquid crystal displays (“LCDs”) and various applications thereof, as a backlight
`
`3
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`module to provide light
`
`to the display. Ex. 1004, Declaration of Credelle
`
`(“Credelle Decl.”), ¶40. The light emitting panel assembly is composed of all the
`
`elements of the LCD other than the liquid crystals themselves. Id. For example, the
`
`light emitting panel assembly is all but element 12 (in yellow) in the annotated
`
`figure below from Ex. 1005, U.S. Patent No. 5,461,547 (“Ciupke”). Ex. 1004,
`
`¶¶40-41, 49.
`
`In order to produce surface illumination with the target brightness and
`
`uniformity at
`
`the lowest possible electrical power,
`
`the light emitting panel
`
`assembly can include features to spatially homogenize and control the angular
`
`distribution of emitted light. See id. at ¶50. Examples of these features include
`
`light pipes, a transition area, reflectors, and various types of microstructured
`
`deformities (e.g., microprisms, diffusers, and microlenses). Id. The light pipe, also
`
`sometimes called a light guide or wave guide, accepts light injected from the side
`
`and distributes it across the emission area. The ’370 Patent calls the light pipe a
`
`“transparent panel member” (e.g., Ex. 1001, 1:19-20), “light emitting panel
`
`member” (e.g., id. at 1:32-33), and “transparent light emitting panel” (e.g., id. at
`
`2:61). See Ex. 1004, ¶46. The transition area, which is usually between the light
`
`4
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`source and the light pipe, is used to securely position the light source relative to the
`
`light pipe, and to spread and transmit light to produce a more uniform input
`
`illumination. Id. at ¶45. The ’370 Patent refers to a “light transition area or
`
`member” that enables emitted light “to make the transition from the light source to
`
`the light emitting panel 2” and was “well known in the art.” See Ex. 1001, 2:58-
`
`3:3. See also Ex. 1004, ¶56. Deformities, such as microprisms, diffusers, and
`
`microlenses, are employed to control the direction and spatial uniformity of light
`
`within light emitting panel assemblies. Ex. 1004, ¶¶46-51.
`
`The Alleged Invention Of The ’370 Patent
`B.
`The ’370 Patent relates “to light emitting panel assemblies each including a
`
`transparent panel member for efficiently conducting light, and controlling the light
`
`conducted by the panel member to be emitted from one or more light output areas
`
`along the length thereof.” Ex. 1001, 1:18-22. As the ’370 Patent acknowledges,
`
`“[l]ight emitting panel assemblies are generally known.” Id. at 1:23. The purported
`
`advantage of the alleged invention described in the ’370 Patent relates to several
`
`different light emitting panel assembly configurations which allegedly provide for
`
`better control of light output from the panel assembly and for more “efficient”
`
`utilization of light,
`
`thereby resulting in greater light output from the panel
`
`assembly. Id. at 1:24-28. Yet, as shown further below, prior art such as Ex. 1007,
`
`U.S. Patent No. 5,005,108 (“Pristash”) already disclosed such advantages. See,
`
`5
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`e.g., Ex. 1007, 1:10-16. See also Ex. 1004, ¶¶63-73.
`
`The ’370 Patent discloses light emitting assemblies having a pattern of light
`
`extracting deformities on or
`
`in one or both sides for emitting light
`
`in a
`
`predetermined output distribution. Ex. 1001, Abstract. The pattern of light
`
`extracting deformities may have one or more different
`
`types or shapes of
`
`deformities. Id. See also Ex. 1004, ¶65.
`
`V.
`
`CLAIM CONSTRUCTION
`
`Standards For Claim Construction
`A.
`The ’370 Patent expired on June 27, 2015. If an inter partes review involves
`
`claims of an expired patent, a patentee is unable to make claim amendments, and
`
`the Board applies the claim construction principles outlined in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) that the words of a claim "are generally
`
`given their ordinary and customary meaning" as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. In re Cuozzo Speed
`
`Techs., LLC, No. 2014-1301, 2015 U.S. App. LEXIS 1699, at *16 n.6 (Fed. Cir.
`
`Feb. 4, 2015) (citing In re Rambus Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014));
`
`see, e.g., Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00747, Decision
`
`(P.T.A.B. Nov. 24, 2014) (Paper 22, at 10).
`
`Moreover, as shown below,
`
`those constructions further comport with
`
`positions that Patent Owner has taken in its prior claim construction briefing in
`
`6
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`related Federal Court litigations. In that regard, Petitioner notes that 35 U.S.C. §
`
`301(a)(2) permits citation of Patent Owners’ statements regarding claim scope, to
`
`prevent patentees from arguing broad constructions in Federal Court litigation
`
`while using narrow constructions in proceedings before the Office.
`
`Petitioner also notes that while it advances the following proposed
`
`constructions for the purposes of this petition, it reserves the right (not available to
`
`it in the present proceeding) to assert in any future litigation that one or more of the
`
`following claim terms is indefinite or lacks written description support under 35
`
`U.S.C. § 112.
`
`B.
`
`“deformities” (claims 1, 4-5, 13, 29, 47)
`
`The ’370 Patent expressly defines the term “deformities” as follows: “As
`
`used herein, the term [sic] deformities or disruptions are used interchangeably to
`
`mean any change in the shape or geometry of the panel surface and/or coating or
`
`surface treatment that causes a portion of the light to be emitted.” Ex. 1001, 6:6-10.
`
`Thus, based on the express definition of deformities in the specification,
`
`“deformities” (claims 1, 3, and 4) should be construed to mean “any change in the
`
`shape or geometry of a surface and/or coating or surface treatment that causes a
`
`portion of the light to be emitted.” Ex. 1004, ¶75.
`
`C.
`
`“transition region” (claims 13, 47)
`
`Claims 13 and 47 each contain an identical
`
`limitation directed to “a
`
`7
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`transition region between the at least one input edge and the patterns of light
`
`extracting deformities to allow the light from the at least one light source to mix
`
`and spread.” In the ’370 Patent, a light “transition area” 4 (see Ex. 1001, Fig.1, at
`
`right) is shown and discussed as an area between the light sources and light
`
`emitting panel “used to make the transition from the light source 3 to the light
`
`emitting panel 2, as well known in the art.” Id. at 2:63-66. Based in part on this
`
`teaching,
`
`the Eastern District of Texas in the 2:13-cv-00522 case held that
`
`“transition region” means simply “a region configured to transmit light.” Ex. 1012,
`
`at 18-22. Accordingly, for purposes of this proceeding, Petitioner submits that the
`
`term “a transition region between the at least one input edge and the patterns of
`
`light extracting deformities to allow the light from the at least one light source to
`
`mix and spread” should at least include any “region configured to transmit light
`
`[between the at least one input edge and the patterns of light extracting deformities
`
`to allow the light from the at least one light source to mix and spread].” Ex. 1004,
`
`¶¶76-78.
`
`VI.
`
`SUMMARY OF PRIOR ART TO THE ’370 PATENT FORMING THE
`BASIS FOR THIS PETITION
`
`The following documents serve as a basis to show that Petitioner has a
`
`reasonable likelihood of prevailing with respect to at least one of the claims 1, 4-6,
`
`9, 13, 29, and 47 of the ’370 Patent. Petitioner provides a detailed explanation of
`
`8
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`the pertinence and manner of applying the cited prior art to claims 1, 4-6, 9, 13, 29,
`
`and 47 of the ’370 Patent in Section VII, infra. In light of the prior art references,
`
`the light emitting panel assembly in the ’370 Patent is a function of prior art and
`
`obvious design decisions, not innovation or invention.
`
`A.
`
`Admitted Prior Art
`
`The ’370 Patent discusses the following functionality and structure of prior
`
`art light emitting assemblies: (1) a “transparent light emitting panel 2,” (2) “one or
`
`more light sources 3 which emit light in a predetermined pattern,” and (3) “a light
`
`transition member or area 4 used to make the transition from the light source 3 to
`
`the light emitting panel.” Ex. 1001, 2:58-65 (describing these elements and their
`
`functionalities as being “well known in the art”). Ex. 1004, ¶¶42-44, 46, 48-50, 53-
`
`57, 64.
`
`B.
`
`U.S. Patent No. 5,408,388 (“Kobayashi”) (Ex. 1006)
`
`Kobayashi discloses a planar
`
`illuminating device having “increased
`
`luminance” and an “increased uniformity in surface lumination.” Ex. 1006, 2:14-
`
`16, 2:59-61. Kobayashi qualifies as prior art under 35 U.S.C. § 102(a) because
`
`Kobayashi was issued as a patent on April 18, 1995, before the June 27, 1995
`
`priority date to which the ’370 Patent may be entitled. Kobayashi was not cited or
`
`considered during prosecution of the application that led to the ’370 Patent. Ex.
`
`1004, ¶¶82-84.
`
`9
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`C.
`
`U.S. Patent No. 5,005,108 (“Pristash”) (Ex. 1007)
`
`Pristash discloses a thin panel
`
`illuminator
`
`for more efficient
`
`light
`
`transmission from the light source to the light emitting panel. Ex. 1007, Abstract.
`
`Pristash qualifies as prior art under 35 U.S.C. § 102(b) because Pristash issued as a
`
`patent on April 2, 1991, more than one year before the June 27, 1995 priority date
`
`to which the ’370 Patent may be entitled. Pristash was cited as a reference in an
`
`Information Disclosure Statement during prosecution, but was not relied upon as
`
`the basis to reject any claim. In fact, Pristash was not discussed on the record at all
`
`during the prosecution proceedings. Ex. 1004, ¶¶111-114.
`
`D.
`
`JP H03-189679 (“Suzuki”) (Ex. 1008, 1009, 1010)
`
`Suzuki qualifies as prior art under 35 U.S.C. § 102(b) because it was
`
`published on August 19, 1991, more than one year before the June 27, 1995 filing
`
`date of the earliest application to which the ’370 Patent may potentially claim
`
`priority. Suzuki was not cited or considered during prosecution of the application
`
`that led to the ’370 Patent. Ex. 1008 refers to the certified English translation of
`
`Suzuki. Copies of the Japanese document and the translation certification are
`
`attached as Ex. 1009 and Ex. 1010, respectively. Ex. 1004, ¶¶126, 131.
`
`E.
`
`U.S. Patent No. 4,929,866 (“Murata”) (Ex. 1011)
`
`Murata qualifies as prior art under 35 U.S.C. § 102(b) because it was issued
`
`as a patent on May 29, 1990, more than one year before the June 27, 1995 filing
`
`10
`
`

`
`Patent No. 7,537,370
`Petition for Inter Partes Review
`
`date of the earliest application to which the ’370 Patent may potentially claim
`
`priority. Murata was not cited or considered during prosecution of the application
`
`that led to the ’370 Patent. Ex. 1004, ¶175.
`
`VII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`
`In light of the disclosures detailed below, the ’370 Patent is unpatentable for
`
`at least the reasons summarized in the chart below and discussed in more detail
`
`herein.
`
`Ground #
`1
`2
`
`Ground
`103(a)
`103(a)
`
`3
`
`4
`
`5
`
`103(a)
`
`103(a)
`
`103(a)
`
`Prior art
`Kobayashi
`Kobayashi in view
`of Pristash
`Suzuki
`
`Suzuki in view of
`Pristash
`Suzuki and
`Murata
`
`Exhibit(s) #
`1006
`1006 and 1007
`
`Claims
`1, 4, 29
`13, 47
`
`1008
`
`1008 and 1007
`
`1, 4-5, 9, 13, 29,
`47
`13, 47
`
`1008 and 1011
`
`1, 4-5, 9, 13
`
`A.
`
`Ground 1: Claims 1, 4, and 29 Are Unpatentable Under 35 U.S.C.
`§ 103(a) As Being Obvious Over Kobayashi
`
`Claims 1, 4, and 29 of the ’370 Patent are rendered obvious in view of
`
`Kobayashi that discloses and/or suggests each and every element of these claims.
`
`Ex. 1004, ¶79.
`
`Kobayashi has been presented to the Board in connection with the following
`
`petitions for inter partes review of the ’370 Patent: IPR2014-01096 and IPR2015-
`
`00493.
`
`In IPR2014-01096, the Board declined to institute inter partes review
`
`11
`
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`stating that “Petitioner does not explain how the spot-shaped reflecting layers,
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`produced by white paint or aluminum vapor deposition, qualify as ‘projections or
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`depressions.’” See Ex. 1027, IPR2014-01096, Paper No. 11, at 14.
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`The presentation of Kobayashi in this petition differs from the Kobayashi-
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`based arguments presented in the aforementioned petitions for inter partes review.
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`The previous petitions relied primarily on the embodiment depicted in Figs. 1-2 of
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`Kobayashi. Here, Petitioner is presenting an obviousness ground in view of a fifth
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`embodiment shown in Fig. 6 which also incorporates features from the first to
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`fourth embodiments, for example in Figs. 5, 5a, and 5b. See Ex. 1006, 7:1-12; see
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`also Fig. 6 below. In particular, for the claimed “deformities that are projections or
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`depressions,” Petitioner relies on “a satin finish 24 which comprises minute
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`depressions having multiple shapes such as concavity or hemisphere” from
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`Fig. 5 of Kobayashi, rather that the “array of spot-shaped reflecting layers 22”
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`from Fig. 2. Id. at 6:30-33 (emphasis added). As such, Petitioner respectfully
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`requests that the Board institute inter partes review under § 103 in view of
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`Kobayashi. Ex. 1004, ¶83.
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`Kobayashi is directed to a planar illuminating device that has “increased
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`luminance” and an “increased uniformity in surface lamination.” Ex. 1006, 2:14-
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`16, 2:59-61.
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`In particular, Kobayashi discloses in Fig. 6 a planar illumination
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`device that includes all of the features of the claimed light emitting assembly of
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`claim 1. Id. at 3:64-66. See Ex. 1004, ¶¶79-80.
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`Regarding claim element [1.a], Kobayashi discloses in Fig. 6 a pair of
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`fluorescent lamps 3. Ex. 1006, 4:8-21. The lamps 3 are light sources. Ex. 1004,
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`¶87.
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`Regarding claim element [1.b], Kobayashi discloses as an optical panel
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`member “a light transmitting plate 7.” Ex. 1006, 7:7-12. Kobayashi discloses that
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`the light sources 3 are arranged along opposite side edge surfaces of the light
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`transmitting plate. Id. at 4:8-21; see also Fig. 6. In addition, the light transmitting
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`plate 7 has a greater cross sectional width than thickness as can be ascertained
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`from the comparative sizes of the light
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`transmitting plate 7 and the tubular
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`fluorescent lamps 3 in Fig. 6. Moreover, a person of ordinary skill in the art would
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`understand that a light transmitting “plate” as the name implies, will have a greater
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`cross sectional width than thickness. Thus, Kobayashi discloses claim element
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`[1.b]. Ex. 1004, ¶¶88-90.
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`Regarding claim element [1.c], Kobayashi discloses that “[t]he front portion
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`of the light transmitting plate 7 has the prismatic cuts 21.” Ex. 1006, 7:12-14
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`(emphasis added). Kobayashi discloses that “each of the prismatic cuts 21 on the
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`front portion of the light transmitting plate 2 has a triangular cross section” Id. at
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`4:33-44. Moreover, Kobayashi discloses that the prismatic cuts 21 on the front of
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`the light transmitting plate 7 change the travel direction of light rays propagating
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`through the light transmitting plate 7. Id. at 5:19-29. See Ex. 1004, ¶¶81-83, 92-93.
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`Still regarding claim element [1.c], Kobayashi discloses that “[t]he rear
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`portion of the light transmitting plate 7 has a reflecting finish of . . . a combination
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`of the satin finish 24 and the assembly of spot-shaped layers 25.” Ex. 1006, 7:14-
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`17; see also Fig. 5. Moreover, Kobayashi discloses that the “satin finish 24 [which]
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`comprises minute depressions having suitable shapes such as a concavity or a
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`hemisphere.” Id. at 6:30-33; see also Fig. 5. Part of the rear surface of the light
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`guide is left devoid of spot-shaped layer 25 by varying the occupation ratio
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`between satin finish 24 and spot-shaped layer 25. Id. at 6:62-68. Moreover, the
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`satin finish 24/spot-shaped layer combination increases reflectance toward the light
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`emitting surface of the light guide. Id. at 7:24-36. Thus, the minute depressions
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`from the satin finish 24 are deformities that are depressions on or in the rear side to
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`cause light to be emitted from the panel member in a predetermined output
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`distribution. Ex. 1004, ¶93.
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`Kobayashi discloses an embodiment of Fig. 6 in which the front portion of
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`the light transmitting plate 7 has the prismatic cuts 21 disclosed in Fig. 1 and the
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`rear portion of the transmitting plate 7 has the combination of the satin finish 24
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`and the assembly of spot-shaped layers 25 disclosed in Fig. 5. See Ex. 1006, 7:12-
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`17. Indeed, such embodiment is expressly claimed in claim 2 of Kobayashi (“said
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`rear surface of said light transmitting plate having a plurality of tapering portions”)
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`Patent No. 7,537,370
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`Petition for Inter Partes ReviewReview
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`of Kobayashi incorporating the limitatioof Kobayashi incorporating the limitations of claim 1 (“parallel prismatic cuts,”ns of claim 1 (“parallel prismatic cuts,”
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`“reflecting finish comprising a satin finish on the rear surface of said light“reflecting finish comprising a satin finish on the rear surface of said light“reflecting finish comprising a satin finish on the rear surface of said light
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`transmitting plate “). Id. at 7:48at 7:48-8:24. Thus, Kobayashi discloses claim element8:24. Thus, Kobayashi discloses claim element
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`[1.c]. See id. at annotated Fig. 6 below; Ex. 1004, ¶at annotated Fig. 6 below; Ex. 1004, ¶¶94-96.
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`In IPR2014-01096, Patent Owner’s expert agreed that Kobayashi disclosed01096, Patent Owner’s expert agreed that Kobayashi disclosed01096, Patent Owner’s expert agreed that Kobayashi disclosed
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`“at least one of the sides having a pattern of light extracting deformities that are“at least one of the sides having a pattern of light extracting deformities that are“at least one of the sides having a pattern of light extracting deformities that are
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`projections or depressions on or in the at least on side to cause light to be emittedprojections or depressions on or in the at least on side to cause light to be emittedprojections or depressions on or in the at least on side to cause light to be emitted
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`from the panel member.” Ex. 1026, 118:23rom the panel member.” Ex. 1026, 118:23-119:4. He also agreed that Kobayashi119:4. He also agreed that Kobayashi
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`discloses a “light emitted panel assembly,” “at least one light source,” “an opticaldiscloses a “light emitted panel assembly,” “at least one light source,” “an opticaldiscloses a “light emitted panel assembly,” “at least one light source,” “an optical
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`panel member having at least one input edge for receiving light from the at leastpanel member having at least one input edge for receiving light from the at leastpanel member having at least one input edge for receiving light from the at least
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`one light source,” “the panel member having front and back sides and a greaterurce,” “the panel member having front and back sides and a greaterurce,” “the panel member having front and back sides and a greater
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`cross sectional width than thickness,” and “at least one film, sheet, or substratecross sectional width than thickness,” and “at least one film, sheet, or substratecross sectional width than thickness,” and “at least one film, sheet, or substrate
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`overlying at least a portion of one of the sides of the panel member to change theoverlying at least a portion of one of the sides of the panel member to change theoverlying at least a portion of one of the sides of the panel member to change the
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`output distribution of the emitted light.”the emitted light.” Id. at 118:6-8; 118:9-11; 118:1211; 118:12-17;
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`118:18-22; 120:6-11.
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`Patent No. 7,537,370
`Petition for Inter Partes Review
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`Regarding claim element [1.d], Kobayashi discloses that “the occupation
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`ratio between part of the satin finish 24 having no spot-shaped layer 25 and part of
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`the satin finish 24 having a spot-shaped layer 25 is as appropriately varied as these
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`parts are remote from both the sources of light 3 so that the light diffusing sheet 4
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`has a uniform surface illuminance. ” Ex. 1006, 6:62-68; see also Fig. 5a. For
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`example, “an area of part of said satin finish occupied by a spot-shaped layer
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`comprising spots whose size increase with increasing distance of each spot from at
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`least one of said sources of light.” Id. at 8:15-19. Also, “the size of each satin
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`finish is inversely proportion [sic] to the distance of each satin finish from the
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`nearest light source.” Id. at 2:56-58. The variation of occupation ratio is illustrated
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`in Fig. 5 of Kobayashi where one of the spots 25 has an area larger than the other
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`spot. Thus, Kobayashi discloses claim element [1.d]. Ex. 1004, ¶96.
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`Regarding claim element [1.e], the prismatic cuts 21 (with triangular cross-
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`section) on the front side are deformities of a different type than the hemispheric
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`minute depressions (satin finish) 24 on the rear side of the light transmitting plate
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`7. Ex. 1006, 6:31-33. Indeed, the ’370 Patent characterizes prismatic deformities
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`as a type of deformity distinct from other deformities having other shapes, such as
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`lenticular deformities. See, e.g., Ex. 1001, claims 16 (“at least one of the types of
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`deformities is prismatic”) and 17 (“at least one of the types of deformities is
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`le