Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 10
` Entered: March 15, 2017
`
`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 IPR2015-018681
`Patent 7,434,974
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`
`
`BUNTING, Administrative Patent Judge.
`
`
`DECISION
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2016-00910 has been joined with this proceeding.
`
`

`

`IPR2015-01868
`Patent 7,434,974
`
`
`I. INTRODUCTION
`
`K.J. Pretech Co., Ltd. (“Petitioner”), filed a Petition pursuant to 35
`U.S.C. §§ 311–319 requesting inter partes review of claims 1, 3–5, 7, 8, 10,
`and 11 of U.S. Patent No. 7,434,974 (Ex. 1001, “the ’974 patent”). Paper 2
`(“Pet.”). Patent Owner, Innovative Display Technologies LLC (“Patent
`Owner”), timely filed a Preliminary Response to the Petition. Paper 11
`(“Prelim. Resp.”). Taking into account the arguments presented in the
`Preliminary Response, we determined that the information presented in the
`Petition establishes a reasonable likelihood that Petitioner would prevail on
`its challenge of claims 1, 3–5, 7, 8, 10, and 11 (“the challenged claims”) of
`the ’974 patent. Pursuant to 35 U.S.C. § 314, we instituted this trial on
`March 17, 2016, based on the grounds identified in the Order section of the
`Decision on Institution. Paper 15, 25. (“Dec. on Inst.”).
`During the course of trial, Patent Owner timely filed a Patent Owner
`Response (Paper 20 (“PO Resp.”)), and Petitioner timely filed a Reply
`thereto (Paper 22 (“Pet. Reply”)). An oral hearing was conducted on
`January 10, 2017, and a transcript of the hearing is entered in the record.
`Paper 39 (“Tr.”). IPR2016-00910 was joined with this proceeding. Paper
`24.
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as
`to the patentability of the challenged claims of the ’974 patent. For the
`reasons that follow, we determine that Petitioner has demonstrated, by a
`preponderance of the evidence, that claims 1, 3–5, 7, 8, 10, and 11 of the
`’974 patent are unpatentable.
`
`
`
`
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`IPR2015-01868
`Patent 7,434,974
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`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify numerous proceedings in which infringement of
`the ʼ974 patent has been alleged. Pet. 1–2; Paper 5, 2−6. Patent Owner
`additionally identifies other petitions requesting inter partes review of the
`’974 patent, as well as related patents. Paper 5, 6. For example, in
`IPR2014-01092, one such petition was denied as to claims 1, 3–5, 7–11, 13
`and 17 of the ʼ974 patent. See LG Elecs., Inc. v. Innovative Display Techs.
`LLC, Case IPR2014-01092 (PTAB January 13, 2015) (Paper 9).
`
`
`B. The ʼ974 Patent (Ex. 1001)
`The ʼ974 patent, titled “Light Emitting Panel Assemblies,” was issued
`on October 14, 2008, from U.S. Patent Application No. 11/378,080 filed on
`March 17, 2006. Ex. 1001, at [54], [45], [21], and [22]. The ʼ974 patent is
`directed to a light emitting panel assembly having a light emitting panel
`member received in a cavity or recess in a tray or housing (id. at [57]) as
`illustrated below in Figure 6.
`
`
`Fig. 6 is a schematic view of a light emitting panel assembly.
`The light emitting panel assembly 32 includes panel member 33, one
`or more light sources 3, and one or more light output areas 34. Id. at 6:53–
`56. Panel assembly 32 is received within a cavity or recess 36 in tray 35.
`
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`Id. at 6:56–58. Tray 35 serves as back, end or edge reflectors for panel 33
`and side and/or back reflectors for the light sources. Id. at 6:58–60. One or
`more secondary reflective or refractive surfaces 38 may be formed on the
`panel member to reflect a portion of the light around corners or curves in the
`panel member. Id. at 6:61–65. As shown in Figure 4a, light extracting
`deformities “may be provided on one or both sides of the panel members or
`on one or more selected areas on one or both sides of the panel members.”
`Id. at 4:31–34.
`
`
`C. Illustrative Claim
`Challenged claims 1 and 7 are independent. Claim 1 is illustrative of
`the challenged claims and is reproduced below:
`1. A light emitting panel assembly comprising
`at least a light emitting panel member having a light
`entrance surface and a light emitting surface,
`at least one LED light source positioned near or against
`the light entrance surface, and
`a tray or housing having a cavity or recess in which the
`panel member is entirely received,
`wherein the panel member has a pattern of light
`extracting deformities on or in at least one surface to cause light
`to be emitted from the light emitting surface of the panel
`member, and the tray or housing includes end walls and side
`walls that act as end edge reflectors and side edge reflectors for
`the panel member to reflect light that would otherwise exit the
`panel member through an end edge and/or side edge back into
`the panel member and toward the pattern of light extracting
`deformities for causing additional light to be emitted from the
`light emitting surface of the panel member,
`wherein the tray or housing provides structural support to
`the panel member and has posts, tabs, or other structural
`features that provide a mount for mounting of the assembly into
`a larger assembly or device.
`
`
`
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`IPR2015-01868
`Patent 7,434,974
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`Ex. 1001, 9:9–27.
`
`
`D. References
`The Board instituted inter partes review based on the following
`references:
`References
`
`Exhibit
`
`1006
`1007
`1008
`1009
`
`Kisou
`Niizuma
`Yagi
`Furuya
`
`Date
`
`Patents/Printed
`Publications
`JP H7-64078A March 10, 1995
`JP H5-45651
`June 18, 1993
`US 4,017,155
`April 12, 1977
`JP 6-214230
`August 5, 1994
`
`Petitioner also relies on a Declaration from Mr. Thomas L. Credelle.
`Ex. 1004. With its response, Patent Owner submitted the Declaration of Mr.
`Kenneth Werner. Ex. 2006.2 Transcripts of the depositions of Mr. Credelle
`and Mr. Werner are entered in the record as Exhibits 2007 and 1026,
`respectively.
`
`
`E. Instituted Grounds
`As explained in the Introduction section above, we instituted trial
`based on the following asserted grounds of unpatentability (Dec. on Inst.
`25):
`
`Basis
`§ 102(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1, 5, 7, 8, 10, and 11
`5, 10, and 11
`3 and 4
`1, 3–5, 7, 8, 10, and 11
`
`Reference(s)
`Kisou
`Kisou
`Kisou, Yagi
`Furuya, Niizumz
`
`2 Petitioner’s general argument that Mr. Werner’s testimony be accorded
`“little or no weight” (Pet. Reply 16–17) is unpersuasive. We review the
`testimony of each party’s expert and allocate the appropriate weight to such
`testimony, as supported by the evidence.
`
`
`
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`
`III. ANALYSIS
`A. Claim Construction
`Petitioner asserts, and Patent Owner does not challenge, that the ’974
`patent expired on June 27, 2015. Pet. 6. The Board interprets claims of an
`expired patent using the claim construction standard set forth in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. §
`42.5(b); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)
`(“While claims are generally given their broadest possible scope during
`prosecution, the Board’s review of the claims of an expired patent is similar
`to that of a district court’s review.”) (internal citation omitted).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a
`claim generally are given their ordinary and customary meaning, which is
`the meaning the term would have to a person of ordinary skill at the time of
`the invention, in the context of the entire patent including the specification.
`See Phillips, 415 F.3d at 1312–13. Although it is improper to read a
`limitation from the specification into the claims, the claims still must be read
`in view of the specification of which they are a part. See Microsoft Corp. v.
`Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). In certain
`circumstances, however, a claim term may not be given its ordinary and
`customary meaning. “[A] claim term will not receive its ordinary meaning if
`the patentee acted as his own lexicographer and clearly set forth a definition
`of the disputed claim term in either the specification or prosecution history.”
`
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`A claim term also will not receive its ordinary meaning where the intrinsic
`record contains “an intentional disclaimer, or disavowal, of claim scope by
`the inventor.” Phillips, 415 F.3d at 1316.
`In our Decision on Institution, we adopted Petitioner’s proposed
`construction for the term “deformities” appearing in claims 1 and 7. Dec. on
`Inst. 7. Namely, we construed “deformity” as “any change in the shape or
`geometry of the panel surface and/or coating or surface treatment that causes
`a portion of light to be emitted.” Id. at 7 (citing Ex. 1001, 4:36–40)
`(“deformities limitation”). Patent Owner takes no position on claim
`construction in its Patent Owner Response. See Paper 16, 3 (“The patent
`owner is cautioned that any arguments for patentability not raised in the
`response will be deemed waived.”). Given the parties’ acceptance of our
`construction of deformities in the Decision on Institution, we discern no
`reason to address or alter this construction for the purpose of this Final
`Written Decision.
`
`B. Anticipation by Kisou
`Petitioner first challenges claims 1, 5, 7, 8, 10, and 11 as anticipated
`under 35 U.S.C. § 102(a) by Kisou. Pet. 10–24. In support thereof,
`Petitioner provides a claim chart identifying the disclosure in Kisou alleged
`to describe the subject matter in the challenged claims. Petitioner further
`cites the Declaration of Mr. Credelle in support of the analysis advocated in
`the Petition. Ex. 1004. Patent Owner counters that Kisou does not disclose
`certain limitations. PO Resp. 4–15.
`We have reviewed the parties’ contentions and supporting evidence.
`Given the evidence of record, we conclude that Petitioner has demonstrated
`
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`IPR2015-01868
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`by a preponderance of the evidence that challenged claims 1, 7, and 8 are
`anticipated by Kisou, but not as to claims 5, 10, and 11. We begin our
`analysis with the principles of law that generally apply to a ground based on
`anticipation, followed by a brief summary of Kisou, and then address the
`parties’ contentions in turn.
`
`1. Principles of Law
`A claim is anticipated if each limitation of the claim is disclosed in a
`single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated
`by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes]
`not expressly spell out’ all the limitations arranged or combined as in the
`claim, if a person of skill in the art, reading the reference, would ‘at once
`envisage’ the claimed arrangement or combination.” Kennametal, Inc. v.
`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In
`re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground
`based on anticipation in accordance with the above-stated principles.
`2. Overview of Kisou (Ex. 1006)
`The Kisou reference is an Unexamined Japanese Patent Application
`Publication, JP H07-64078 A, titled “LCD Backlight Device,” published on
`March 10, 1995. Ex. 1006 at [12], [11], [54], and [43].
`Kisou relates generally to “an LCD backlight device that allows for a
`light-emitting surface free of brightness irregularities, a stable supply of
`light, prevention of degradation in properties, a slimmer profile, and modular
`design.” Id. at [57]. The backlight device includes light conductor 30,
`reflector 40 disposed behind the light conductor, and a light source
`positioned at both ends of the light conductor. Id. A plurality of recessed
`
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`light paths 31, having a triangular cross-section, are formed on a rear surface
`of the light conductor, and extend between the light sources. Id. at ¶ 26.
`3. Claims 1, 7, and 8
`Petitioner relies on Kisou to describe each of the limitations recited in
`challenged claims 1, 7, and 8. Pet. 10–25. Patent Owner challenges the
`sufficiency of Petitioner’s proofs in several respects that we discuss infra.
`PO. Resp. 4–15. We note, however, that most of the claim elements are
`undisputed. On this record, with respect to the undisputed limitations, we
`find that, based on the evidence cited in the Petition, Petitioner has presented
`sufficient evidence to support a finding that those limitations are disclosed
`by Kisou. We address the disputed limitations below. See In re Nuvasive,
`Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (Although the Board did not
`make findings as to whether any of the other claim limitations (such as
`fusion apertures or anti-migration teeth) are disclosed in the prior art, it did
`not have to: NuVasive did not present arguments about those limitations to
`the Board.).
`a. Deformities Limitation
`Independent claims 1 and 7 include the deformities limitation,
`“wherein the panel member has a pattern of light extracting deformities on
`or in at least one surface to cause light to be emitted from the light emitting
`surface of the panel member.” Ex. 1001, 9:14–17; 48–51. Petitioner argues
`that this limitation is satisfied by the disclosure in Kisou of “recessed light
`paths 31 having a triangular cross-section on a rear surface of the light
`conductor 20” (Pet. 12 (citing Ex. 1006 ¶ 26)), and that the triangular cross-
`section forms a “corrugated shape” on the rear surface of the light conductor
`(id. (citing Ex. 1004 ¶ 85)). Additionally, Petitioner argues that these
`
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`recessed light paths extract light toward the light-emitting surface of the
`light conductor, and that one of skill in the art “would understand that the
`recessed light paths 31 apply equally to the light conductor 30 in Figs.
`10−12 as to light conductor 30 in Figs. 1−9.” Id. at 13 (citing Ex. 1006
`¶ 29).
`Patent Owner interprets the language of independent claims 1 and 7 as
`requiring that the pattern of light extracting deformities cause the light to be
`emitted from the light emitting surface of the panel member. PO Resp. 5
`(citing Ex. 1001, 9:14–17, 9:48–51, Ex. 2006 ¶ 80). According to Patent
`Owner, the light paths 31 disclosed by Kisou do not extract light because
`they are “the spaces between the light conductor 30 and reflector, not the
`surface of the light conductor.” Id. (citing Ex. 1006 ¶¶ 26, 27, Fig. 9; Ex.
`2006 ¶¶ 81–83). Relying on Figures 4 and 8 of Kisou, reproduced below,
`Patent Owner argues that light paths 31 are an alternative to the use of light
`extracting deformities because lamp units L “divide the light into light
`progressing obliquely downward and forward, so that the light will tunnel
`under the light conductor 30 into the light pathways 31.” Id. at 6 (citing
`1006 ¶¶ 13, 23, 27, Fig. 4, Fig. 8; Ex. 2006 ¶ 84).
`
`
`Figure 4 is a cross-sectional view of the lamp unit.
`
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`
`Figure 8 is a cross-sectional view of operation of the backlight device.
`Relying on this interpretation of Kisou, Patent Owner argues that after the
`light is split and diffused, reflector 40 and scatterer 32 “cause[] light to be
`emitted from the light emitting surface of the panel.” PO Resp. 7 (citing Ex.
`1006 ¶ 27).
`As discussed in Section III.A. supra, we construe the term deformities
`as “any change in the shape or geometry of a surface and/or coating or
`surface treatment that causes a portion of light to be emitted.” We agree
`with Petitioner that the light paths, in forming a corrugated shape on the rear
`surface of light conductor 30, represent changes to the shape of the light
`conductor surface. Pet. Reply 2–3. As noted by Petitioner, Mr. Werner
`agreed during cross-examination that the corrugated shape represents a
`change in shape to the rear surface of light conductor 30. Id. at 3 (citing Ex.
`1026, 58:9–59:1, 63:9–20).
`As to the remainder of Patent Owner’s contention, i.e., the reflector
`and scatterer of Kisou cause light to be emitted from the panel, we are more
`persuaded by Petitioner’s observation that the triangular light paths cause the
`emission of at least some light. Pet. Reply 3. Petitioner directs us to the
`passage in Kisou describing how “light progressing into the light
`conductor 30 is scattered in all directions as it progresses inward.” Id. at
`
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`IPR2015-01868
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`4 (citing Ex. 1006 ¶ 27). With respect to Figures 8 and 9, Petitioner explains
`persuasively how triangular light paths 31 function as light extracting
`deformities, to direct some light towards the light emitting surface of the
`light conductor. Id. at 4–5. Petitioner further supports its position by
`annotating Figures 8 and 9, reproduced below, to provide context to the
`passage from Kisou describing how “some of the light from the lamp units L
`reaches all parts of the entire effective light-emitting surface thanks to
`the recessed light paths 31.” Id. at 5 (citing Ex. 1006 ¶ 28).
`
`
`
`Id. Indeed, Petitioner’s annotations highlight light rays (i.e., shown by
`arrows) progressing into the light conductor, and at least some of the light
`rays scattering in an upward direction towards the diffuser after contacting a
`change in shape in the rear surface of the conductor and being emitted from
`the light emitting surface of the display panel.
`Thus, we are persuaded by Petitioner’s argument that the recessed
`light paths 31 disclosed by Kisou satisfy the deformities limitation because
`they “distribute the light to the light emitting surface of the light conductor
`30 and cause at least a portion of the light to be emitted from the light
`emitting surface.” Id. (emphasis added).
`b. End or Side Edge Reflector Limitation
`Independent claims 1 and 7 recite, in relevant part, that
`
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`the tray or housing includes end walls and side walls that act as
`end edge reflectors and side edge reflectors for the panel
`member to reflect light that would otherwise exit the panel
`member through an end edge and/or side edge back into the
`panel member and toward the pattern of light extracting
`deformities for causing additional light to be emitted from the
`light emitting surface of the panel member.
`
`Ex. 1001, 9:17–24, 9:51–58. (“end or side edge reflector limitation”).
`Petitioner contends that reflector 60 satisfies this limitation because it “has a
`‘light reflecting function’ that ‘yield[s] comparable light-reflecting effects’
`to an alternative arrangement where reflectors are directly attached to light
`conductor 30 and lamp units L.” Pet. 13, citing Ex. 1006 ¶ 30. Petitioner
`also points to the disclosure in Kisou regarding reflecting rear and side
`surfaces of lamp units L, and asserts that these surfaces direct light towards
`light conductor 30. Id. (citing Ex. 1004 ¶ 88; Ex. 1006 ¶ 23). Patent Owner
`disputes Petitioner’s contention that the end walls or side walls of reflector
`60 or rear and side surfaces of lamp units L “reflect light towards the light
`paths 31.” PO Resp. 8 (citing Ex. 2007 ¶ 90). Patent Owner characterizes
`Petitioner’s argument that the reflective surfaces disclosed by Kisou reflect
`light towards the light paths, as “legally insufficient.” Id. at 9.
`We find no evidence supporting Patent Owner’s contention that the
`reflective surfaces disclosed by Kisou would not be capable of reflecting
`light towards the light paths. Instead, we are persuaded by Petitioner’s
`argument and evidence that the side and end edge of reflector 60 are capable
`of reflecting light, such that “the light progressing in the light conductor 30
`toward the internal surfaces of the light paths 31 includes light reflected by
`the light-reflecting plates such as rear plate 11 and plates 14, 15 and/or
`reflector 60.” Pet. Reply 6–7 (citing Pet. 13; Ex. 1026, 75:22–76:1).
`
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`Thus, on this record, we are persuaded by Petitioner’s argument that
`the end or side edge limitation is satisfied because Kisou discloses “end and
`side edge reflectors for reflecting light towards the deformities for causing
`additional light to be emitted.” Id. at 7. (See Ex. 1006 ¶ 23 (“. . . the lamp
`case 10 of this lamp unit L is constituted by a light-reflecting rear plate 11,
`upper plate 12, lower plate 13, and side plates 14, 15 . . . ”)).
`
`c. Tray or Housing Limitation
`Independent claim 1 recites, in relevant part, “a tray or housing”
`having “posts, tabs, or other structural features that provide a mount for
`mounting of the assembly into a larger assembly or device.” Ex. 1001,
`9:24–27 (“tray or housing limitation”). Claim 7 recites a similar limitation
`(Id. at 9:58–61) and the parties address claims 1 and 7 together. As to the
`“larger assembly or device” element, Petitioner asserts that backlight device
`1 of Kisou is incorporated into a larger device, which is an LCD device. Pet.
`14 (citing Ex. 1006 ¶ 29). Petitioner annotated Figure 10 of Kisou to
`demonstrate how “LCD 3 mounted onto the driver board 2 is one of the
`‘main parts’ of the larger LCD device or assembly which also includes the
`rubber joint connectors 4.” Id. (citing Ex. 1006 ¶ 17). Patent Owner does
`not dispute this assertion. See PO Resp. 9–13.
`Next, Petitioner explains how Kisou satisfies the “other structural
`features claim element.” Id. at 15. Specifically, because reflector 60 has
`“mounting holes” that, in conjunction with lead wires 22/23 and solder,
`mount the backlight device to the LCD, and “represent ‘other structural
`features’ for mounting the light emitting panel assembly (e.g., backlight
`device 1) of Kisou to the larger assembly or larger LCD device (including
`the driver board 2).” Id. (citing Ex. 1004 ¶ 91).
`
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`Patent Owner contends that the reflector itself does not contain the
`requisite structural features because the rubber joint connectors disclosed by
`Kisou are part of driver board 2 and not the reflector. PO Resp. 10–11
`(citing Ex. 1006 ¶ 17, Figures 1, 2, 10; Ex. 2006 ¶ 94). Patent Owner argues
`that because the LCD backlight device is indirectly mounted to backlight
`device 1, it is not “mounted.” Id. at 11 (citing Ex. 1006 ¶ 17; Ex. 2006 ¶
`94). Additionally, Patent Owner asserts that the lead wires and solder
`disclosed by Kisou are electrical elements, not structural, because they are
`part of Lamp unit L and not reflector 60. Id. at 11–12 (citing Ex. 1006 ¶¶ 9,
`10, 14, 15, and 30; Ex. 2006 ¶ 96).3
`We agree with Petitioner that the claimed structural features serve as a
`mount or provide structural support, and that the disclosure of a mounting
`feature in Kisou would satisfy both claims 1 and 7. Pet. Reply 7. Petitioner
`explains persuasively how the mounting holes in reflector 60 together with
`lead wires and solder represent “other structural features” as recited in the
`claims. Id. at 7–8. Similarly, Petitioner argues persuasively that reflector 60
`disclosed by Kisou provides structural support to the panel member. Id. at 8.
`Patent Owner’s assertion that the structural feature “must be part of the
`reflector 60” (PO Resp. 10 (citing Ex. 2007 ¶ 94)) is unavailing because the
`claims only require that the structural features “provide a mount” (Ex. 1001,
`9:26, 59). Petitioner also argues persuasively that the mounting holes
`located in reflector 60 are a “structural feature for mounting” (Pet. Reply 8)
`and the lead wires and solder are structural elements, e.g., the solder is a
`
`3 Patent Owner’s argument challenging the credibility of Mr. Credelle’s
`opinion with respect to this claim limitation is not persuasive. PO Resp. 12
`(citing Ex. 2008). We have reviewed the cited testimony and allocated the
`appropriate weight to such testimony, as supported by the evidence.
`
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`structural feature for mounting another device to the reflector through the
`mounting holes (id. at 9). As to Patent Owner’s argument that driver board
`2 is not part of the backlight device, we are more persuaded by Petitioner’s
`argument and evidence that “because the driver board 2 is not part of the
`backlight device, it is also another part or component mounted to the
`reflector 60 via the mounting holes 62, in accordance with dependent claim
`9 of the ’974 Patent, which states that ‘the other part or component is a
`printed circuit.’” Id. (citing Pet. 16–17; Ex. 1004 at ¶ 96).
`Thus, based on the record presented by the parties, we are persuaded
`by Petitioner’s argument and evidence that the tray or housing limitation is
`satisfied by the disclosure in Kisou of backlight device 1 incorporated into
`the larger device that includes driver board 2, LCD 3 and rubber joint
`connectors 4, as well as the mounting holes of reflector 60 used in
`conjunction with lead wires 22/23 and solder to mount backlight device 1 to
`a larger assembly. Pet. 14–15.
`4. Claims 5, 10, and 11
`Claims 5 and 11 recite, in relevant part, “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.” Ex. 1001,
`9:36–39, 10:1–5 (“film limitation”). Similarly, Claim 10 recites that “the
`film is at least one of a diffuser and a brightness enhancing film.” Id. at
`9:66–67. Patent Owner disputes that Kisou discloses “a separate film
`positioned near the light emitting surface of the panel member. PO Resp. 13
`(citing Ex. 2007 ¶ 99). Instead, Patent Owner maintains that light conductor
`30 has a surface that serves as a diffusing layer. Id. at 13–14. Recognizing
`that Kisou discusses the use of a diffuser layer on the “inside of the light-
`
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`emitting surface, or a translucent diffuser sheet applied to the outside of the
`light-emitting surface” (id. at 14 (citing Ex. 1006 ¶ 3)), Patent Owner
`considers this disclosure “part of Kisou’s discussion of prior art, not the
`invention.” (Id. (citing Ex. 2006 ¶ 100)).
`This particular ground is based on anticipation. We agree that
`Petitioner does not explain sufficiently how one of skill in the art would
`envision the proposed combination based on the discussion in Kisou of how
`it was known in the art to place a diffuser layer on the inside of the light-
`emitting surface or translucent diffuser sheet on the outside, and subsequent
`disclosure of a specific embodiment that included an external diffuser film
`rather than a built-in scatterer. PO Resp. 14. Based on the arguments and
`evidence presented at trial, we are persuaded by Patent Owner’s argument
`that Kisou does not disclose a separate film positioned near the light
`emitting surface of the panel member.
`5. Summary
`Based on further review of the record and for the reasons discussed
`above, Petitioner has demonstrated, by a preponderance of the evidence, that
`claims 1, 7, and 8 are anticipated under 35 U.S.C. § 102(b) by Kisou, but not
`as to claims 5, 10, and 11.
`
`C. Obviousness Based on Kisou
`Petitioner also challenges the patentability of dependent claims 5, 10,
`and 11 of the ’974 patent under 35 U.S.C. § 103(a) as obvious based on
`Kisou. Pet. 25–26. In support thereof, Petitioner provides a claim chart
`identifying the disclosure in Kisou alleged to describe the subject matter in
`the challenged claims. Id. at 22, 24–25. Petitioner again cites the
`Declaration of Mr. Credelle in support of the analysis advocated in the
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`Petition. Ex. 1004. Patent Owner disagrees, arguing that Kisou does not
`disclose an external film, and further that one of skill in the art would not
`have replaced the light diffusing layer (scatterer) with a separate film. PO.
`Resp. 15–17.
`For the reasons given below, after consideration of the Petition, the
`arguments in the Patent Owner Response, Petitioner’s Reply, and the
`evidence of record, we conclude that Petitioner has demonstrated, by a
`preponderance of the evidence that challenged claims 5, 10, and 11 are
`obvious based on Kisou. We begin our analysis with the principles of law
`that generally apply to a ground based on obviousness, and then address the
`parties’ contentions in turn.
`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
`ground based on obviousness in accordance with the above-stated principles.
`
`2. Level of Skill in the Art
`There is no discussion of the level of ordinary skill in the Petition or
`in Patent Owner’s responses, but the subject is addressed in the expert
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`declarations. Petitioner’s expert, Mr. Thomas L. Credelle, opines that “a
`person of ordinary skill in the art relevant to the ’974 patent would have at
`least an undergraduate degree in physics, optics, electrical engineering, or
`applied mathematics AND 3 years of work experience (or a graduate degree)
`in a field related to optical technology.” Ex. 1004 ¶ 25. Patent Owner’s
`expert, Mr. Kenneth Werner, generally accepts this framework, but
`according to his formulation:
`a person of ordinary skill in the art would hold an
`undergraduate degree in physics, material science, electrical
`engineering, or mathematics and have one or both of the
`following: (1) three or more years of work experience in a field
`related to optical technology; or (2) a graduate degree in a field
`related to optical technology.
`
`Ex. 2006 ¶ 73. Our determination does not turn on the minor differences
`between these definitions. However, for the purpose of our analysis, we
`accept Mr. Werner’s more inclusive formulation, with the addition of Mr.
`Credelle’s identification of optics as a permissible undergraduate degree.
`Additionally, we note that the prior art of record in this proceeding—
`namely, Kisou, Yagi, Furuya, and Niizuma—is indicative of the level of
`ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`3. Discussion
`Referring to its contention that claims 5, 10, and 11 are anticipated by Kisou,
`Petitioner argues that these claims are likewise obvious based on Kisou. Pet.
`25. Petitioner again directs us to the discussion in the background of Kisou
`regarding application of a translucent diffuser sheet to the outside of the
`light-emitting surface, and further to the discussion in Kisou regarding an
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`embodiment in which the light diffusing layer (e.g., scatterer) is “a separate
`translucent diffuser sheet applied to the outside of the light-emitting
`surface.” Pet. 25–26 (citing Ex. 1006 ¶ 3). Relying on the testimony of Mr.
`Credelle, Petit