`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VIZIO, Inc.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`Case IPR2016-00914
`U.S. Patent No. 7,537,370
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`Case IPR2016-00914
`Patent 7,537,370
`INTRODUCTION
`I.
`Pursuant to 37 C.F.R. § 42.107, Innovative Display Technologies (“IDT” or
`
`“Patent Owner”) files this Preliminary Response requesting that the Board deny
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`institution of the Petition filed by VIZIO, Inc. (“Petitioner”) challenging U.S. Patent
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`No. 7,537,370 (the “’370 patent”). This Response is timely under 35 U.S.C. § 313
`
`and 37 C.F.R. § 42.107, as it is filed within three months of the April 20, 2016, date
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`of the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper No. 4). Patent Owner does not intend to waive any
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`arguments by not addressing them in this Preliminary Response.
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`The Board should deny this petition because of VIZIO’s extreme delay in
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`filing it. VIZIO was served with a lawsuit asserting this patent on January 2, 2014.
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`See Proof of Service (Ex. 2001); see also Complaint in Delaware Display Group
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`LLC, et al. v. VIZIO, Inc., No. 1:13-cv-02112 (filed Dec. 31, 2013) (asserting ’370
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`patent) (Ex. 2002). VIZIO waited over two years and three months to file this
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`petition, and as VIZIO admits that the same art and grounds are being considered in
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`the proceeding that VIZIO seeks to join. Thus, Patent Owner requests that the Board
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`deny this petition using the Director’s discretion under 35 U.S.C. § 325(d). In the
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`alternative, Patent Owner requests that the Board deny VIZIO’s motion for joinder
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`(Paper 3) for the same reasons, and as a result reject this petition under 35 U.S.C. §
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`325(a)(1).
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`1
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`Case IPR2016-00914
`Patent 7,537,370
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`The Board should deny this Petition because the grounds of invalidity
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`proposed by Petitioner are insufficient. For example, the alleged deformities
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`identified by Petitioner in Suzuki do not meet the limitation that requires that “at
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`least some of the light extracting deformities on or in one of the sides vary in a
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`different way or manner than the light extracting deformities on or in the other side
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`of the panel member.” Petitioner identifies a passage from Suzuki for purportedly
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`teaching that embossed patterns having different pitches may be formed on the front
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`and back of a panel, but this does not show varying in a different way or manner
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`between the front and back side of the panel member.
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`Suzuki and Pristash together fail, for example, because two references are not
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`combinable in manner suggested by Petitioner. The combination suggested by
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`Petitioner fails because the use of the converging lens in Pristash’s transition device
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`would decrease optical coupling in that proposed combination, causing light loss,
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`which runs against the goals of the ’370 patent.
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`Moreover Suzuki and Pristash together fail because the transition region
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`identified in Pristash is not between the input edge and the pattern of light extracting
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`2
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`deformities as claimed.
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`Case IPR2016-00914
`Patent 7,537,370
`A. Grounds in the Petition
`The Petition includes two Grounds:
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`Ground 3: Under § 103(a) over Suzuki (claim 29)
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`Ground 4: Under § 103(a) over Suzuki and Pristash (claim 47)
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`B. The ’370 patent
`The ’370 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
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`2:3.
`
`At the time of the priority date of the ’370 patent, the claimed inventions
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`introduced novel components and a novel arrangement of those components. For
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`example, the claims of the ’370 patent include such things as (1) a panel member
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`with both its front and back sides having a pattern of light extracting deformities that
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`are projections or depressions on or in the sides to cause light to be emitted from the
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`panel member in a predetermined output distribution; (2) the pattern of light
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`extracting deformities varies along at least one of the length and width of the panel
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`member; (3) the light extracting deformities on or in one of the sides are of a different
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`type than the light extracting deformities on or in the other side of the panel member;
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`Case IPR2016-00914
`Patent 7,537,370
`(4) at least one film, sheet or substrate overlying at least a portion of one of the sides
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`of the panel member to change the output distribution of the emitted light such that
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`the light will pass through a liquid crystal display with low loss; (5) the panel
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`member has a transition region between the at least one input edge and the patterns
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`of light extracting deformities to allow the light from the at least one light source to
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`mix and spread; and (6) the transition region contains optical elements for reflecting
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`or refracting light from the at least one light source.
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`The written description of the ’370 patent explains that the panel’s deformities
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`are “any change in the shape or geometry of the panel surface and/or coating or
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`surface treatment that causes a portion of the light to be emitted.” Ex. 1001 at 4:38-
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`40.
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`The ’370 patent further explains that “a pattern of light extracting deformities
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`or disruptions may be provided on one or both sides of the panel members or on one
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`or more selected areas on one or both sides of the panel members, as desired.” Id. at
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`4:31-34 (emphasis added). The ’370 also describes the deformities on both sides of
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`the panel by stating that “a pattern of light extracting deformities 21, 23, 24 and/or
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`25 may be provided on one or both sides of the panel member in order to change the
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`path of the light so that the internal critical angle is exceeded and a portion of the
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`light is emitted from one or both sides of the panel.” Id. at 6:15-20. The deformities
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`21, 23, 24, and 25 discussed in that passage are depicted in Figs. 4a-4d:
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`4
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`Case IPR2016-00914
`Patent 7,537,370
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`The ’370 patent describes the functionality of the deformities with reference
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`to Fig. 4a above: “[t]he pattern of light extracting deformities 21 shown in FIG. 4a
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`includes a variable pattern which breaks up the light rays such that the internal angle
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`of reflection of a portion of the light rays will be great enough to cause the light rays
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`either to be emitted out of the panel through the side or sides on which the light
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`extracting deformities 21 are provided or reflected back through the panel and
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`emitted out the other side.” Ex. 1001 at 4:40-47.
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`
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`The ’370 patent also describes varying the deformities to achieve a uniform
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`light output distribution: “[v]arying the percentages and/or size of deformities in
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`different areas of the panel is necessary in order to provide a uniform light output
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`Case IPR2016-00914
`Patent 7,537,370
`distribution. For example, the amount of light traveling through the panels will
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`ordinarily be greater in areas closer to the light source than in other areas further
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`removed from the light source. A pattern of light extracting deformities 21 may be
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`used to adjust for the light variances within the panel members, for example, by
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`providing a denser concentration of light extracting deformities with increased
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`distance from the light source 3 thereby resulting in a more uniform light output
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`distribution from the light emitting panels.” Id. at 5:5-16.
`
`
`
`The ’370 patent also notes that the deformities can control the output
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`distribution of emitted light to fit a particular application, such as backlighting a
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`liquid crystal display: “[t]he deformities 21 may also be used to control the output
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`ray angle distribution of the emitted light to suit a particular application. For
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`example, if the panel assemblies are used to provide a liquid crystal display
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`backlight, the light output will be more efficient if the deformities 21 cause the light
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`rays to emit from the panels at predetermined ray angles such that they will pass
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`through the liquid crystal display with low loss.” Id. at 5:17-23. As described in that
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`passage, the deformities can cause light rays to emit at predetermined angles such
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`that those light rays can pass through an LCD with low loss.
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`
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`
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`The written description of the ’370 patent goes into great detail about the
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`various ways that the deformities can vary. The ’370 patent describes how the
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`deformities may vary in shape: “Print patterns of light extracting deformities 21 may
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`6
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`Case IPR2016-00914
`Patent 7,537,370
`vary in shapes such as dots, squares, diamonds, ellipses, stars, random shapes, and
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`the like, and are desirably 0.006 square inch per deformity/element or less.” Ex. 1001
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`at 5:34-37. The ’370 patent continues, stating that “the deformities may vary in shape
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`and/or size along the length and/or width of the panel members.” Id. at 5:43-44.
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`
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`The ’370 patent also describes that a random placement pattern may be used
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`throughout the length and/or width of the panel, and it gives examples of how to
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`create those random placement patterns: “a random placement pattern of the
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`deformities may be utilized throughout the length and/or width of the panel
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`members. The deformities may have shapes or a pattern with no specific angles to
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`reduce moire or other interference effects. Examples of methods to create these
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`random patterns are printing a pattern of shapes using stochastic print pattern
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`techniques, frequency modulated half tone patterns, or random dot half tones.” Id. at
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`5:44-52.
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`
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`The ’370 patent further describes additional kinds of deformities, using the
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`deformities in Figs. 4b-d (reproduced above) as examples: “other light extracting
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`deformities including prismatic surfaces, depressions or raised surfaces of various
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`shapes using more complex shapes in a mold pattern may be molded, etched,
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`stamped, thermoformed, hot stamped or the like into or on one or more areas of the
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`panel member. Figures 4b and 4c show panel areas 22 on which prismatic surfaces
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`23 or depressions 24 are formed in the panel areas, whereas Figure 4d shows
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`7
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`Case IPR2016-00914
`Patent 7,537,370
`prismatic or other reflective or refractive surfaces 25 formed on the exterior of the
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`panel area. The prismatic surfaces, depressions or raised surfaces will cause a portion
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`of the light rays contacted thereby to be emitted from the panel member.” Id. at 5:58
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`through 6:2. The written description also provides examples of how those
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`deformities can vary: “the angles of the prisms, depressions or other surfaces may
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`be varied to direct the light in different directions to produce a desired light output
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`distribution or effect. Moreover, the reflective or refractive surfaces may have
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`shapes or a pattern with no specific angles to reduce moire or other interference
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`effects.” Id. at 6:2-7.
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`
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`The ’370 patent discusses a sheet or film used in the panel assemblies: “[t]his
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`sheet or film may become a permanent part of the light panel assembly for example
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`by attaching or otherwise positioning the sheet or film against one or both sides of
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`the panel member similar to the sheet or film 27 shown in FIGS. 3 and 5 in order to
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`produce a desired effect.” Id. at 4:56-61.
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`The ’370 patents provides an example of a sheet or film in its description of
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`Fig. 5: “[m]oreover, a transparent film, sheet or plate 27 may be attached or
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`positioned against the side or sides of the panel member from which light is emitted
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`using a suitable adhesive 28 or other method in order to produce a desired effect.
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`The member 27 may be used to further improve the uniformity of the light output
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`distribution. For example, the member 27 may be a colored film, a diffuser, or a label
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`8
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`Case IPR2016-00914
`Patent 7,537,370
`or display, a portion of which may be a transparent overlay that may be colored
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`and/or have text or an image thereon.” Ex. 1001 at 6:20-29.
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`
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`II. ARGUMENT
`Petitioner must show a “reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
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`§ 314(a). Petitioner does not pass that threshold because none of the grounds in the
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`Petition presents a reasonably likelihood of Petitioner prevailing.
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`A. None of the grounds in the Petition presents a reasonable likelihood of
`Petitioner prevailing
`1. Grounds 3 and 4 -- Suzuki does not teach or suggest claim
`elements [29.e] or [47.e]
`Independent claims 29 and 47 each require “at least some of the light
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`extracting deformities on or in one of the sides vary in a different way or manner
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`than the light extracting deformities on or in the other side of the panel member.”
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`None of Petitioner’s citations support the argument that Suzuki discloses this
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`limitation. For example, Petitioner’s purported support from Suzuki for this
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`9
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`Case IPR2016-00914
`Patent 7,537,370
`limitation includes the following: “Embossed patterns having different pitches may
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`be formed on the front and back surfaces of the transparent light guide layer.”
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`Petition at 18. But differing only in “pitch” would not allow for varying in a different
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`way or manner between the front and back side. And none of the other citations in
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`the Petition even address the front and back sides of the light guide of Suzuki. Id. at
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`18-19. Accordingly, Suzuki does not teach or suggest that a pattern from one side
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`varies differently than a pattern from the other side of the light guide.
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`2. Ground 4 -- Suzuki in view of Pristash does not teach or
`suggest elements [47.f]
`For Ground 4, Petitioner relies only upon Pristash for allegedly disclosing the
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`required transition region. Claim 47 requires that “the panel member has a transition
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`region between the at least one input edge and the patterns of light extracting
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`deformities to allow the light from the at least one light source to mix and spread,”
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`which is identified as element [47.f] by the Petitioner.
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`Petitioner argues that “Pristash [] discloses a transition device 5 between the
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`input edge 10 and disruptions 16,” but Pristash’s transition device does not meet the
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`claim limitations. Petition at 20. The “transition device 5” is not a “transition region
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`between the at least one input edge and the patterns of light extracting deformities”
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`as required by the claim. Instead, transition device 5 “is used to make the transition
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`from the light source 3 target shape to the light emitting panel input edge 4.” Ex.
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`1007 at 3:2-4 (emphasis added). The stretch that Petitioner makes is shown in
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`10
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`Case IPR2016-00914
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`Patent 7,537,370
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`annotated Fig.
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`1 from Pristash below- The immediately preceding citation from
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`Pristash describes that the transition device is between the elements 10 and 4, as
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`shown by the red arrow. Petitioner adds the area shown by the green arrow (ending
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`where disruptions 16 begin) to the purported transition region of Pristash even
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`though it is outside the bounds of transition device 5.
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`
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`Moreover, Petitioner incorrectly identifies Pristash’s “input end 10” as the
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`“input edge” on the panel member in its Petition. See Petition at 20- But Pristash
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`shows this as the “input end 10 of the transition device 5.” Ex. 1007 at 3:19-20
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`(emphasis added). In contrast, claim 47 requires that the “input edge” must be a part
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`of the “optical panel member,” not the “transition region.” See, e.g., ’370 patent at
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`claim 13 (stating, “an optical panel member having at least one input edge .
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`.
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`.
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`wherein the panel member has a transition region between the input edge and the
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`patterns of light extracting deformities”). Even Petitioner’s expert’s annotated
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`11
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`Case IPR2016-00914
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`Patent 7,537,370
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`Figure 1 demonstrates that the “transition device” of Pristash is not between the
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`“input edge of the light emitting panel” and the “pattem of deformities.” Mr.
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`Credelle calls element 4 the “input edge of the light emitting panel,” not element 10.
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`
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`‘V
`4
`Input edge of light
`emitting panel
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`Ex.1004 at1] 116.
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`Accordingly, Suzuki in View of Pristash does not teach or suggest element
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`[47_f], and the Board should deny institution of Ground 4.
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`3. Ground 4 — Suzuki and Pristash are not combinable.
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`Combining Suzuki and Pristash in the manner suggested by Petitioner ignores
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`the Graham factors. As confirmed by the Supreme Court in KSR, an obviousness
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`analysis begins with a consideration of the Graham factors. KSR International Co.
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`v. Teleflex Inc., 550 U.S- 398, 406-407 (2007) (citing Graham v. John Deere Co.,
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`383 U.S. 1 (1966)). The Graham factors are as follows:
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`12
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`Case IPR2016-00914
`Patent 7,537,370
`(A) Determining the scope and content of the prior art;
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`(B) Ascertaining the differences between the claimed invention
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`and the prior art; and
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`(C) Resolving the level of ordinary skill in the pertinent art.
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`Graham, 383 U.S. at 17-18.
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`In considering the Graham factors, both the claimed invention and the scope
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`and content of the prior art must be considered as a whole, including disclosures in
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`the references that diverge from and teach away from the invention at hand. See W.L.
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`Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983), cert. denied,
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`469 U.S. 851 (1984). It is improper to limit the obviousness inquiry to merely
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`identifying a difference from the prior art and then contending that that difference
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`alone would have been obvious. See Schenck v. Nortron Corp., 713 F.2d 782 (Fed.
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`Cir. 1983); Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed. Cir. 2008) (“in
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`addressing the question of obviousness a judge must not pick and choose isolated
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`elements from the prior art and combine them so as to yield the invention in question
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`if such a combination would not have been obvious at the time of the invention.”)
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`(citing Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 810 (1986)).
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`Petitioner did not consider Suzuki and Pristash as a whole, otherwise
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`Petitioner would have found that the combination of the two would have led to
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`system with increased light loss – a result that is opposed to the goals of the ’370
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`Case IPR2016-00914
`Patent 7,537,370
`patent (See, e.g., Ex. 1001 at 1:41-42; 1:65 through 2:1). Petitioner argues that if
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`Suzuki were modified to have a point-source light, one having skill in the art would
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`have been motivated to use Pristash’s transition device. See Petition at 21. But one
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`of ordinary skill would not have wanted to use the suggested transition device
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`because the converging lens of Pristash would decrease optical coupling in that
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`proposed combination, causing more loss. Because Petitioner failed to address the
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`negative ramifications of making that suggested modification, Petitioner has not
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`shown Suzuki and Pristash are properly combinable.
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`4. CONCLUSION
`Because Petitioner fails to show that all elements of the ’370 patent claims are
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`disclosed in the cited prior art and provides no credible motivation for combining
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`the teachings of the cited prior art in the proposed manner, Petitioner fails to establish
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`that there is a reasonable likelihood that they would prevail with respect to any claim
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`of the ’370 patent. As such, Petitioner’s request for inter partes review should be
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`denied.
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`14
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`Case IPR2016-00914
`Patent 7,537,370
`Dated: July 20, 2016
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`Respectfully submitted,
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`_________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this document has been served via
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`electronic mail on July 20, 2016, to Petitioner at the following email addresses
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`pursuant to its consent in its Petition at p. 3: bburoker@gibsondunn.com and
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`bsilver@gibsondunn.com.
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`_______________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`Case IPR2016-00914
`Patent 7,537,370
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`CERTIFICATE OF COMPLIANCE
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`As required by 37 C.F.R. §42.24(a), the undersigned hereby certifies that the
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`foregoing Preliminary Response to Petition for Inter Partes Review contains 3,160
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`words, excluding those portions identified in 37 C.F.R. §42.24(a)(1)(i) and (b)(1),
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`as measured by the word-processing system used to prepare this paper.
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`_______________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`16