throbber
Filed on behalf of Innovative Display Technologies LLC
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`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 IPR2015-01868
`U.S. Patent No. 7,434,974
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`

`
`Case IPR2015-01868
`Patent 7,434,974
`I.
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.107, Innovative Display Technologies (“IDT” or
`
`“Patent Owner”) files this Preliminary Response requesting that the Board deny
`
`institution of the Petition filed by K.J. Pretech Co. Ltd. (“Petitioner”) challenging
`
`U.S. Patent No. 7,434,974 (the “’974 patent”). Patent Owner has timely filed this
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`Preliminary Response within three months of the September 22, 2015, filing
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`response date accorded to the Petition in Paper 3. 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107.
`
`The Board should deny this Petition because (1) it is time-barred; and (2) the
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`prior art does not disclose all of the claim limitations. Patent Owner discusses those
`
`points in detail in its Argument section below. Before that discussion begins, Patent
`
`Owner includes the following sections designed to provide the Board with
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`background information.
`
`A. Grounds in the Petition
`
`The Petition includes four grounds of alleged invalidity:
`
`Ground 1: § 102(a) over Kisou (claims 1, 5, 7, 8, 10, 11);
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`Ground 2: § 103(a) over Kisou (claims 5, 10, 11);
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`Ground 3: § 103(a) over Kisou and Yagi (claims 3 & 4); and
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`Ground 4: § 103(a) over Furuya and Niizuma (claims 1, 3-5, 7-8, 10, 11).
`
`
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`1
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`Case IPR2015-01868
`Patent 7,434,974
`
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`B. The ’974 patent
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`The ’974 patent claims priority back to June 15, 1995. The patent generally
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`discloses “light emitting panel assemblies” made from a specific arrangement of
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`components that, when combined, create “very efficient panel assemblies that may
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`be used to produce increased uniformity and higher light output from the panel
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`members with lower power requirements, and allow the panel members to be made
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`thinner and/or longer, and/or of various shapes and sizes.” Ex. 1001 at 1:66 through
`
`2:3.
`
`At the time of the priority date of the ’974 patent (over 20 years ago), the
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`claimed inventions included novel components and a novel arrangement of those
`
`components. For example, the claims of the ’974 patent include such things as (1) a
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`panel member with a pattern of light extracting deformities that cause light to be
`
`emitted from the light emitting surface of the panel member; (2) an LED light source
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`positioned near or against the light entrance surface of the panel; (3) a tray that
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`provides structural support to the panel member and has posts, tabs, or other
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`structural features that provide a mount for mounting of the assembly into a larger
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`assembly or device; and (4) the tray having end walls and side walls that act as end
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`edge reflectors and side edge reflectors for the panel member to reflect light that
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`would otherwise exit the panel member through an end edge and/or side edge back
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`Case IPR2015-01868
`Patent 7,434,974
`into the panel member and toward the pattern of light extracting deformities for
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`causing additional light to be emitted from the light emitting surface of the panel
`
`member.
`
`The written description of the ’974 patent explains that the panel’s deformities
`
`are “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 at 4:38-
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`40. The ’974 patent describes the functionality of the deformities with reference to
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`Fig. 4a.
`
`
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`“The pattern of light extracting deformities 21 shown in FIG. 4a includes a variable
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`pattern which breaks up the light rays such that the internal angle of reflection of a
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`portion of the light rays will be great enough to cause the light rays either to be
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`emitted out of the panel through the side or sides on which the light extracting
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`deformities 21 are provided or reflected back through the panel and emitted out the
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`other side.” Ex. 1001 at 4:41-47.
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`Patent 7,434,974
`The written description of the ’974 patent discusses a tray with reference to
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`Fig. 6.
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`
`
`Discussing Fig. 6, the ’974 patent states that “the panel assembly 32 includes a tray
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`35 having a cavity or recess 36 in which the panel assembly 32 is received.” Ex.
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`1001 at 6:56-58. The patent continues, explaining the reflective features of the tray:
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`“[t]he tray 35 may act as a back reflector as well as end edge and/or side edge
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`reflectors for the panel 33 and side and/or back reflectors 37 for the light sources 3.”
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`Id. at 6:58-60. The written description goes on to discuss the secondary reflectors on
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`the tray: “one or more secondary reflective or refractive surfaces 38 may be provided
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`on the panel member 33 and/or tray 35 to reflect a portion of the light around one or
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`more corners or curves in a non-rectangular shaped panel member 33.” Id. at
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`6:61:65. And the written description explains that the secondary surfaces of the tray
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`can serve a specialized purpose for
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`light extraction: “[t]hese secondary
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`reflective/refractive surfaces 38 may be flat, angled, faceted or curved, and may be
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`Patent 7,434,974
`used to extract a portion of the light away from the panel member in a predetermined
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`pattern.” Id. at 6:65 through 7:3.
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`
`
`
`
`II. ARGUMENT
`
`Petitioner must show a “reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). Petitioner does not pass that threshold because: (1) the Petition is time-
`
`barred; and (2) the prior art does not disclose all of the claim limitations.
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`A. The Petition is time barred
`
`The Board should deny the Petition because it is time-barred under 35 USC §
`
`315(b) (“An inter partes review may not be instituted if the petition requesting the
`
`proceeding is filed more than 1 year after the date on which the petitioner, real party
`
`in interest, or privy of the petitioner is served with a complaint alleging infringement
`
`of the patent.”) (emphasis added). Petitioner is a privy with LG Electronics, Inc.; LG
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`Electronics U.S.A., Inc. (“LGE USA”); LG Display Co., Ltd.; and LG Display
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`America, Inc. (“LGD USA”) (collectively, “LG”). Furthermore, LG is a real party-
`
`in-interest to this proceeding. Accordingly, this Petition is subject to a § 315(b) time-
`
`bar.
`
`On December 31, 2013, Patent Owner filed a lawsuit against LG alleging
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`infringement of the ’974 patent. Delaware Display Group LLC, et al. v. LG
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`5
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`Case IPR2015-01868
`Patent 7,434,974
`Electronics, Inc., et al., No. 1:13-cv-02109 (D. Del., filed Dec. 31, 2013) (the
`
`“Delaware Lawsuit”). On January 2, 2014, Patent Owner served LGE USA and LGD
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`USA with the summons in the Lawsuit. See Delaware Lawsuit, D.I. 6 and 7 (Exs.
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`2003 and 2004). That lawsuit remains pending in Delaware having progressed past
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`claim construction and with discovery almost closed.
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`On July 1, 2014, LG Display Co., Ltd. filed an IPR against the ’974 patent
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`(IPR2014-01092), naming LGD USA as its real party-in-interest. IPR2014-01092,
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`Paper 2, at *1. On January 13, 2015, the Board denied institution of that IPR.
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`On December 29, 2014 (only a few days before the one-year deadline), LG
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`Electronics, Inc. filed an IPR against the ’974 patent (IPR2015-00497), naming LGE
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`USA as its real party-in-interest. IPR2015-00497, Paper 2, at *1. On July 15, 2015,
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`the Board denied institution of that IPR.
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`On January 2, 2015, the deadline for LG to file IPRs passed. Now, almost a
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`year later, Patent Owner is faced with this IPR, brought by one of LG’s suppliers.
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`In total, LG has filed 19 IPR petitions against the patent-at-issue and its related
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`patents. See IPR2014-01092; -01094; -01095; -01096; -01097; -01357; -01359; -
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`01362; IPR2015 -00487; -00489; -00490; -00492; -00493; -00495; -00496; -00497;
`
`-00506; -01666; and -01717.
`
`But as noted above, the Board denied LG’s IPRs against the ’974 patent
`
`(IPR2014-01092 & IPR2015-00497). Moreover, the Board denied LG’s IPRs
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`Case IPR2015-01868
`Patent 7,434,974
`against another related patent asserted in the Delaware Lawsuit against LG: U.S.
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`Patent No. 8,215,816 (the “’816 patent” (IPR2014-01095 & IPR2015-00496)).
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`Finally, the Board refused to institute LG’s IPRs against U.S. Patent No. 7,537,370
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`(the “’370 patent” (IPR2014-01096 & IPR2015-00493)) for any of the asserted
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`claims in the Delaware Lawsuit.
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`While there were pending IPRs for half of the other asserted patents in the
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`Delaware Lawsuit, there were no pending IPRs for the asserted claims of the ’974,
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`’370, and ’816 patents. Without any IPRs pending for those patents, LG’s chances
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`of obtaining a stay of the Delaware Lawsuit were slim. But just a month before the
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`hearing on LG’s motion to stay, Petitioner filed three IPR petitions coinciding
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`exactly with and only for the three patents in the Delaware Lawsuit without pending
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`IPRs, which included the instant Petition. See IPR2015-01866 (’816 Patent);
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`IPR2015-01867 (’974 Patent); IPR2015-01868 (’370 Patent) (collectively the “KJ
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`Pretech IPRs”). Importantly, Petitioner admits that it supplies backlight units to LG
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`(Paper 9, at *2), and those backlight units contain some of the components that meet
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`the limitations of the asserted patents, e.g., the “panel member,” “LED light source,”
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`and “tray” of claim 1 of the ’974 patent.
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`This Petition was filed so that LG could represent to the Delaware district
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`court that all of the asserted claims in the litigation were subject to a pending IPR
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`petition. See Defendant’s Stay Hearing Presentation (“LG Stay Presentation”), Ex.
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`7
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`Patent 7,434,974
`2002, at *2. In fact, LG emphasized the KJ Pretech IPRs in its argument for stay.
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`See id., at *5. It is no coincidence that the Petitioner’s filings neatly “fill the gaps”
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`of the claims and patents asserted in the Delaware Lawsuit that were left uncovered
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`when LG’s IPR petitions were denied.
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`Those facts demonstrate that Petitioner filed this IPR at the behest of LG, and
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`thus LG is an unnamed real party-in-interest to this Petition. Trial Practice Guide at
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`48,759. The real party-in interest and privies requirement “seeks to protect patent
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`owners from harassment via successive petitions by the same or related parties, to
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`prevent parties from having a ‘second bite at the apple,’ and to protect the integrity
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`of both the USPTO and Federal Courts by assuring that all issues are promptly raised
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`and vetted.” Id. This is a case of harassment via successive petitions by related
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`parties. With LG’s virtually limitless set of suppliers, there is a potential for endless
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`serial IPRs against this patent. Indeed, during the meet and confer of LG’s stay
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`motion, LG refused to agree that it would not seek further stays based on yet-to-be
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`filed IPRs, even though at that point LG was time-barred from filing any more IPRs.
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`See Delaware Lawsuit, D.I. 41, at *7 (Ex. 2005).
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`At the very least, LG is a privy to Petitioner because it has the opportunity to
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`control Petitioner. See Trial Practice Guide at 48,759. LG is a major customer of
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`Petitioner for the components that Patent Owner has accused of infringement in the
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`Delaware Lawsuit. Moreover, Petitioner admits that a supply agreement exists
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`Patent 7,434,974
`between itself and LG. See Paper 9, at *1. Petitioner shares counsel with LG for both
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`LG’s IPRs and LG’s representation in the Delaware Lawsuit. And Petitioner filed
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`this IPR for the purpose of buttressing LG’s motion for stay in the Delaware Lawsuit.
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`Under these circumstances, allowing this Petition to proceed would be to
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`countenance LG’s clear abuse of the IPR system and continued harassment of Patent
`
`Owner.
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`B. The prior art does not disclose all of the claim limitations.
`
`1. Ground 1 – Kisou does not teach or suggest each and every
`element of independent claims 1 or 7.
`
`The Petition alleges that independent claims 1 and 7 are disclosed solely by
`
`Kisou. For at least the reasons discussed below, the Petition fails to establish that
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`Kisou’s teachings meet every element in claims 1 and 7.
`
`For background, Kisou describes the use of specific lamp units that direct light
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`only in two directions: “light progressing forward and light progressing obliquely
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`downward and forward.” Ex. 1006 at [0027]; Figs 3, 4, and 8.
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`Patent 7,434,974
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`
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`Fig. 9
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`Fig. 8
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`10
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`Case IPR2015-01868
`Patent 7,434,974
`Kisou teaches recessed light paths 31 (triangular gaps in blue on Fig. 9; shown also
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`in cross-section in Fig. 8) below the light conductor 30 that extend between opposite
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`ends of the light guide in the direction of light propagation (see red annotation on
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`Fig. 8 above). See Ex. 1006 at [0026]. Light emitted from the lamp units is sent partly
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`under the light guide 30 into the triangular-shaped, recessed paths 31 in order to
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`transmit the light along the length-wise path (in blue on Fig. 8) farther from the lamp
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`units than would otherwise be possible. See id. (“these gaps substantially
`
`constituting light paths that stably transmit the light from the lamp units L to greater
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`distances.”). In other words, Kisou aims light directly at the reflector below the light
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`guide to get the light farther down the backlight. “In this way, some of the light from
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`the lamp units L reaches all parts of the entire effective light-emitting surface thanks
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`to the recessed light paths 31.” Id. at [0028].
`
`i. Kisou does not disclose elements [1.d] and [7.d].
`Independent claim 1 of the ’974 patent includes the following limitation:
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`“wherein the panel member has a pattern of light extracting deformities on or in at
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`least one surface to cause light to be emitted from the light emitting surface of the
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`panel member.” That limitation is annotated as claim elements “[1.d]” and “[7.d]”
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`in the Petition. See Petition at 20, 23.
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`Petitioner identifies the “recessed light paths 31” of Kisou as the claimed
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`“pattern of light extracting deformities.” Petition at 20. But the parallel grooves
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`11
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`Patent 7,434,974
`(recessed light paths 31) form a “gap” between the light guide and the reflector, and
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`do not “extract” light and thus are not “light extracting deformities.” Instead, the
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`grooves of Kisou are gaps that purportedly serve as light paths to guide light from
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`the LEDs farther down the backlight. See Ex. 1006 at [0026] (“Gaps are thus formed
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`between the recessed light paths 31 and the reflector 40, these gaps substantially
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`constituting light paths that stably transmit the light from the lamp units L to
`
`greater distances.”) (emphasis added); id. at [0027].
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`The light paths themselves are “gaps … formed between the recessed light
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`paths 31 and the reflector 40.” Id. at [0026]. A gap alone cannot be a light extracting
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`deformity according to Petitioner’s own construction of deformity. In Petitioner’s
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`construction, a deformity is “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.” Petition
`
`at 7-8 (emphasis added). There is no surface or coating in light paths 31 – they are
`
`simply gaps. And Petitioner never identifies any surface or coating in gaps 31, and
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`thus the Petition does not show that Kisou meets this limitation under the
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`construction it proposed for deformities.
`
`While Petitioner alleges that these light paths “extract light toward the light
`
`emitting surface of the light conductor 30,” Kisou fails to disclose this, and Petitioner
`
`does not explain how this is so. Petition at 12. Petitioner’s only support for this
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`statement is a portion of one sentence from the Kisou translation. Id. (citing Ex.
`
`12
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`Case IPR2015-01868
`Patent 7,434,974
`1006 at [0027] (“Light progressing into the light paths 31 on the rear side of the light
`
`conductor 30 is split and diffused by the corrugated light paths 31.”)). At most, this
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`arguably shows that Kisou intends for light paths 31 to split and diffuse the light
`
`within the light paths themselves, and not out of a light-emitting surface as required
`
`by the Petitioner’s own claim construction.
`
`ii. Kisou does not disclose elements [1.g] and [7.g].
`Element [1.g] requires that the tray or housing “has posts, tabs, or other
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`structural features that provide a mount for mounting of the assembly into a larger
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`assembly or device.” Element [7.g] includes a similar limitation, requiring that the
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`tray or housing has “posts, tabs or other structural features that provide a mount or
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`structural support for at least one other part or component, and the tray or housing
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`provides structural support to the panel member.”
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`For element [1.g], Petitioner argues that “[t]he ‘mounting holes’ together with
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`the lead wires and the solder represent ‘other structural features’ for mounting the
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`light emitting panel assembly (e.g., backlight device) of Kisou to the larger assembly
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`or larger LCD device (including the driver board 2).” Petition at 15. But the lead
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`wires and solder are not part of the tray or housing identified by Petitioner, i.e., they
`
`are not part of reflector 60, and therefore they cannot meet this limitation.
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`Likewise, none of the other parts of Kisou that Petitioner identifies are part of
`
`the reflector 60 (the alleged tray), and therefore, these parts cannot meet this
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`limitation either. For example, neither bracket 5 nor rubber joint connector 4
`
`(elastomer) are part of element 60 as shown in Fig. 10 of Kisou below.
`
`Petitioner’s annotated Fig. 10 obfuscates that point by making it unclear which
`
`element is element 60. See Petition at 15 (showing Petitioner’s heavily-annotated
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`Fig. 10, reproduced below).
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`14
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`Petitioner relies on identical arguments for elements [1.g] and [7.g]. Petition
`
`at 16, 24. Accordingly, the Petition also fails to show that Kisou discloses element
`
`[7.g] for the same reasons as discussed above for element [1.g].
`
`iii. Kisou does not disclose the limitations in dependent
`claims 5, 10, and 11.
`
`Dependent claims 5 and 11 each require “a film positioned near the light
`
`emitting surface of the panel member for changing the output ray angle distribution
`
`of the emitted light to fit a particular application.” Dependent claim 10 also requires
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`that limitation by virtue of its dependence on claim 11. See ’974 patent prosecution
`
`history, Ex. 1002 at Pretech_000161 (dependent claim 10 corrected to depend from
`
`claim 11 instead of claim 7).
`
`Kisou does not disclose the use of any film in its device. Petitioner argues that
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`“Kisou discloses an embodiment in which the function of the light diffuser layer
`
`(scatterer) 32 is performed by a separate translucent diffuser sheet applied to the
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`outside of the light-emitting surface.” Petition at 18. But Kisou does not disclose
`
`such an embodiment. Instead, Kisou discloses that “the front surface of the light
`
`conductor constitutes a light diffuser layer (scatterer) 32.” See Ex. 1006 at [0027];
`
`see also Fig. 8 excerpt below.
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`
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`Petitioner points to the section of Kisou that discusses prior art embodiments
`
`using a “translucent diffuser sheet [that] may be applied to the outside of the light-
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`emitting surface.” Petition at 17-18. But that does not describe an embodiment of
`
`Kisou’s invention, which instead has a diffuser layer 32 inside the light emitting
`
`surface. In other words, Kisou discloses that its diffuser layer 32 is the front surface
`
`of the light conductor 30, as one difference between it and the prior art. Anticipation
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`is established when a single prior art reference discloses every claim element
`
`arranged in the manner required by a claim. See Karsten Mfg. Corp. v. Cleveland
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`Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). It is error to conclude a reference is
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`anticipating by combining parts of two separate examples described in the reference
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`to show all elements of a claim. See Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d
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`1370-71 (Fed. Cir. 2008); see also Printing Industries of America V. CTP
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`Innovations, LLC, IPR2013-00474, Paper 16 at *11 (“[A] prior art reference that
`
`includes multiple, distinct teachings that the artisan might somehow combine to
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`achieve the claimed invention is insufficient to show prior invention.”) (internal
`
`quotations omitted).
`
`2. Ground 2 – Claims 5, 10, and 11 are not obvious in view of
`Kisou.
`
`Recognizing the weakness of its anticipation position with regard to claims 5,
`
`10 and 11, Petitioner argues that a “person of ordinary skill in the art would be
`
`motivated to follow the teachings of Kisou to provide the diffusion sheet to the
`
`outside of the light emitting surface, for example, to improve the diffusing effect of
`
`a light guide that does not already have a diffuser layer formed on its surface.”
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`Petition at 25. But as discussed above, Kisou does not teach the use of an external
`
`film, it teaches a diffusion layer 32, which is the front surface of light conductor 30.
`
`One of ordinary skill would have understood that using an external diffusing film
`
`for diffusing light after the light has exited the light emitting surface is not
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`interchangeable with the use of a surface in the light conductor to extract and diffuse
`
`the light from the light conductor itself. An external diffusing film would increase
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`costs of production and the overall thickness of the device. Further, replacing the
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`diffusion layer 32 with a separate diffusing film would produce a different optical
`
`effect in Kisou if the remainder of Kisou remained unchanged. Petitioner does not
`
`explain what changes if any would need to be made to the other components of Kisou
`
`to correct for that potential change in optical effect. Such a combination is improper.
`
`Ex parte Seyyedy, No. 2009-1696 (BPAI 2009) (finding failure to establish
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`obviousness where the cited references were based on disparate principles of
`
`operation).
`
`Moreover, Petitioner’s expert does not explain how the use of a prior-art
`
`diffusing film would have been compatible with the embodiments described in
`
`Kisou. Instead, he offers a conclusory statement without explanation of any
`
`underlying facts or data.
`
`To the extent that the Board finds that the disclosure of a separate
`external diffuser film is not sufficient to meet the requirements of
`Section 35, 103(a), it would be obvious to a person or ordinary skill in
`the art to interpret the separate diffuser sheet described by Kisou as the
`diffuser film of claim element 10[.] [sic] Thus dependent claim 10 is
`rendered obvious in view of Kisou.
`
`Credelle declaration, Ex. 1004 at ¶ 103. Such a conclusory assertion is insufficient
`
`to establish obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on obviousness
`
`grounds cannot be sustained by mere conclusory statements; instead, there must be
`
`some articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.”)).
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`3. Ground 3 – Claims 3 and 4 are not obvious over Kisou in view
`of Yagi.
`i.
`Combining Yagi and Kisou in the manner suggested by Petitioner ignores the
`
`Yagi and Kisou are not combinable.
`
`Graham factors. As confirmed by the Supreme Court in KSR, an obviousness
`
`analysis begins with a consideration of the Graham factors. See KSR International
`
`Co. v. Teleflex Inc., 550 U.S. 398, 406-407 (2007) (citing Graham v. John Deere
`
`Co., 383 U.S. 1 (1966)). The Graham factors are as follows:
`
`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed invention and the prior
`
`art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`
`Graham, 383 U.S. at 17-18.
`
`In considering the Graham factors, both the claimed invention and the scope
`
`and content of the prior art must be considered as a whole, including disclosures in
`
`the references that diverge from and teach away from the invention at hand. See W.L.
`
`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
`
`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to a difference
`
`from the prior art and then to show that that difference alone would have been
`
`obvious. See Schenck v. Nortron Corp., 713 F.2d 782 (Fed. Cir. 1983); see also
`
`Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed. Cir. 2008) (“in addressing
`
`19
`
`

`
`Case IPR2015-01868
`Patent 7,434,974
`the question of obviousness a judge must not pick and choose isolated elements from
`
`the prior art and combine them so as to yield the invention in question if such a
`
`combination would not have been obvious at the time of the invention.”) (citing
`
`Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 810 (1986)).
`
`Petitioner did not consider Yagi and Kisou as a whole, otherwise Petitioner
`
`would have found that that the combination of the two would be antithetical to the
`
`goals of Kisou. For example, Petitioner states that “[a] person of ordinary skill in the
`
`art would have been motivated to modify the reflector 60 of Kisou to provide
`
`projections similar to projections 10a, 11a, and 12a of Yagi for the purpose of
`
`holding the diffuser sheet 32 of Kisou against the light conductor 30.” Petition at 28.
`
`But as seen in Figs. 1 and 2 and of Yagi, elements 10a, 11a, and 12a are relatively
`
`thick as compared to the entire device of Yagi. Fig. 1 of Yagi is reproduced below
`
`for reference, showing the thickness of elements 10a and 11a.
`
`
`
`20
`
`

`
`Case IPR2015-01868
`Patent 7,434,974
`Adding thick elements 10a, 11a, and 12a from Yagi into Kisou ignores the stated
`
`goals of Kisou to provide a slimmer backlight:
`
`Moreover, the thickness of a conventional backlight devices 2.5 to 6.0
`mm, and it is difficult to lower the thickness to 2 mm or less. The
`present invention was therefore conceived in view of the various
`problems described above, and has an object of providing an LCD
`backlight device that allows for a … a slimmer profile, and modular
`design.
`
`Ex. 1006 at [0006]. Accordingly, Yagi and Kisou are not combinable as suggested
`
`by Petitioner.
`
`ii.
`
`Neither Kisou nor Yagi disclose the added limitations of
`dependent claims 3 and 4.
`
`Claim 3 requires that “the tray or housing provides a support for supporting
`
`and/or positioning a film near the panel member” and claim 4 (dependent on claim
`
`3) further requires that “the film is at least one of a diffuser and a brightness
`
`enhancing film.” Petitioner argues that “Kisou discloses that the diffusion layer, for
`
`example the translucent diffusion sheet 32 applied to the outside of the light-emitting
`
`surface of the light conductor 30, is fitted and held by the reflector 60.” Petition at
`
`27. To support this assertion, Petitioner cites Kisou at paragraph [0027]. See id. But,
`
`as discussed above, Kisou never refers to the light diffuser layer (scatterer) 32 as a
`
`separate translucent diffusion sheet. Petitioner’s alleged separate “translucent
`
`diffusion sheet 32” is not found anywhere in Kisou.
`
`21
`
`

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`Case IPR2015-01868
`Patent 7,434,974
`Petitioner then cites to Yagi (filed in 1974), in a futile attempt to fill this hole.
`
`Yagi describes a display that was suitable for use in a wristwatch. See Ex. 1008 at
`
`1:32-33. The display consists of LCD material 4 sandwiched between two glass
`
`plates 1 and 2. See Ex. 1008 at 2:10-27.
`
`
`
`Below the plates is a reflecting plate 7, which is surrounded by side reflecting
`
`plates 10, 11, 12, and bottom plate 13. See id. at 2:27-55. Each side reflecting plate
`
`10, 11, 12 “has a projection 10a, 11a, 12a respectively, which is bent over as shown
`
`in the drawings so as to receive and hold a liquid crystal display panel” (Id.
`
`(emphasis added)), not a film.
`
`22
`
`

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`Case IPR2015-01868
`Patent 7,434,974
`4. Ground 4 - Claims 1, 3-5, 7-8, 10, and 11 are not obvious over
`Furuya in view of Niizuma.
`i.
`Once again, Petitioner fails to consider the prior art as whole to determine if
`
`Furuya and Niizuma are not combinable.
`
`the references are combinable. Instead, Petitioner points to the use of a v-shaped
`
`light conductor by both Furuya and Niizuma and incorrectly concludes that there is
`
`a “striking similarity between the devices.” Petition at 40. Petitioner, however, fails
`
`to consider that the devices operate under very different principles and that, in fact,
`
`Furuya teaches away from the use of devices like Niizuma. Furuya relies on lighting
`
`along the long edge to decrease light attenuation and eschews devices like Niizuma
`
`that illuminate from the short edge:
`
`In the present invention, because the LEDs 2 are arranged next to one
`another along the two longer side edges of the reflector plate 24, as
`compared with a case where they are arranged next to one another along
`each of the two shorter side edges thereof, the distance for illumination
`of the liquid crystal display board 10 is shorter, which results in less
`optical loss. Therefore, it is possible to illuminate the entire display
`portion 10A with uniform greater luminance.
`
`See Ex. 1009 at [0016]; Fig. 7.
`
`23
`
`

`
`Case IPR2015-01868
`Patent 7,434,974
`
`
`
`Niizuma is concerned with efficiently illuminating the LCD. Ex. 1007 at [0020]. In
`
`contrast to Furuya, Niizuma uses much fewer light sources. See, e.g., Ex. 1007 at
`
`Fig. 1 (showing only four light sources total in Niizuma as compared to 32 light
`
`sources in the relatively similarly sized Furuya):
`
`24
`
`

`
`Case IPR2015-01868
`Patent 7,434,974
`
`
`
`To maintain the efficiency goals of Niizuma, one of ordinary skill would not have
`
`looked to Furuya, which uses 8 times more light sources that Furuya.
`
`
`
`Considering those two references a whole reveals that they are not
`
`combinable. Niizuma explicitly teaches away from Furuya’s disclosure of lighting
`
`along the short edge. And Niizuma does not require the same efficiency as Furuya,
`
`given the vast disparity in the number of light sources used by the two references.
`
`ii.
`
`Furuya in view of Niizuma does not disclose elements
`[1.c] and [7.c].
`
`Independent claim 1 of the ’974 patent includes the following limitation: “a
`
`tray or housing having a cavity or recess in which the panel member is entirely
`
`received.” That limitation is annotated as elements “[1.c]” and “[7.c]” in the Petition.
`
`See Petition at 46, 52. Petitioner admits that “Furuya does not explicitly disclose that
`
`[sic.] placing the light guiding plate 55 in the reflector plate 24 to emit a uniform
`
`light toward the surface of the liquid crystal display board 10.” Petition at 33. In fact,
`
`25
`
`

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`Case IPR2015-01868
`Patent 7,434,974
`Furuya’s embodiment in Fig. 8 shows explicitly that the reflector plate is not needed
`
`and not used with its alternate light-guide embodiment. Ex. 1009 at [0018] (“[i]n the
`
`present embodiment, a light-guiding plate 55 is used instead of a reflector plate
`
`to guide light emitted from the LEDs 2 toward the liquid crystal display board 10.”)
`
`(emphasis added). Recognizing this, Petitioner instead argues that “it was known in
`
`the art to place a light guiding plate in a reflective tray of a flat panel light emitter.”
`
`Id. But Petitioner fails to explain why one of ordinary skill in the art would be
`
`motivated to modify Furuya the way it suggests. The absence of such an explanation
`
`is especially critical here, given that Furuya explicitly discloses that a light-guiding
`
`plate instead of a reflector plate.
`
`Petitioner simply argues that because Niizuma teaches placing its light
`
`conductor 4 into its holder 5 (shown below), that one of ordinary skill would be
`
`motivated to place Furuya’s “light-guiding plate 55” into its “reflector plate 24.”
`
`Pe

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