throbber
Filed on behalf of Innovative Display Technologies LLC
`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
`
`
`
`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
`
`institution of the Petition filed by VIZIO, Inc. (“Petitioner”) challenging U.S. Patent
`
`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
`
`of the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
`
`Preliminary Response (Paper No. 4). Patent Owner does not intend to waive any
`
`arguments by not addressing them in this Preliminary Response.
`
`The Board should deny this petition because of VIZIO’s extreme delay in
`
`filing it. VIZIO was served with a lawsuit asserting this patent on January 2, 2014.
`
`See Proof of Service (Ex. 2001); see also Complaint in Delaware Display Group
`
`LLC, et al. v. VIZIO, Inc., No. 1:13-cv-02112 (filed Dec. 31, 2013) (asserting ’370
`
`patent) (Ex. 2002). VIZIO waited over two years and three months to file this
`
`petition, and as VIZIO admits that the same art and grounds are being considered in
`
`the proceeding that VIZIO seeks to join. Thus, Patent Owner requests that the Board
`
`deny this petition using the Director’s discretion under 35 U.S.C. § 325(d). In the
`
`alternative, Patent Owner requests that the Board deny VIZIO’s motion for joinder
`
`(Paper 3) for the same reasons, and as a result reject this petition under 35 U.S.C. §
`
`325(a)(1).
`
`1
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`
`
`The Board should deny this Petition because the grounds of invalidity
`
`proposed by Petitioner are insufficient. For example, the alleged deformities
`
`identified by Petitioner in Suzuki do not meet the limitation that requires that “at
`
`least some of the light extracting deformities on or in one of the sides vary in a
`
`different way or manner than the light extracting deformities on or in the other side
`
`of the panel member.” Petitioner identifies a passage from Suzuki for purportedly
`
`teaching that embossed patterns having different pitches may be formed on the front
`
`and back of a panel, but this does not show varying in a different way or manner
`
`between the front and back side of the panel member.
`
`Suzuki and Pristash together fail, for example, because two references are not
`
`combinable in manner suggested by Petitioner. The combination suggested by
`
`Petitioner fails because the use of the converging lens in Pristash’s transition device
`
`would decrease optical coupling in that proposed combination, causing light loss,
`
`which runs against the goals of the ’370 patent.
`
`Moreover Suzuki and Pristash together fail because the transition region
`
`identified in Pristash is not between the input edge and the pattern of light extracting
`
`2
`
`deformities as claimed.
`
`
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`A. Grounds in the Petition
`The Petition includes two Grounds:
`
`Ground 3: Under § 103(a) over Suzuki (claim 29)
`
`Ground 4: Under § 103(a) over Suzuki and Pristash (claim 47)
`
`B. The ’370 patent
`The ’370 patent claims priority back to June 15, 1995. The patent generally
`
`discloses “light emitting panel assemblies” made from a specific arrangement of
`
`components that, when combined, create “very efficient panel assemblies that may
`
`be used to produce increased uniformity and higher light output from the panel
`
`members with lower power requirements, and allow the panel members to be made
`
`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 ’370 patent, the claimed inventions
`
`introduced novel components and a novel arrangement of those components. For
`
`example, the claims of the ’370 patent include such things as (1) a panel member
`
`with both its front and back sides having a pattern of light extracting deformities that
`
`are projections or depressions on or in the sides to cause light to be emitted from the
`
`panel member in a predetermined output distribution; (2) the pattern of light
`
`extracting deformities varies along at least one of the length and width of the panel
`
`member; (3) the light extracting deformities on or in one of the sides are of a different
`
`type than the light extracting deformities on or in the other side of the panel member;
`
`3
`
`

`
`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
`
`of the panel member to change the output distribution of the emitted light such that
`
`the light will pass through a liquid crystal display with low loss; (5) the panel
`
`member has a transition region between the at least one input edge and the patterns
`
`of light extracting deformities to allow the light from the at least one light source to
`
`mix and spread; and (6) the transition region contains optical elements for reflecting
`
`or refracting light from the at least one light source.
`
`The written description of the ’370 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-
`
`40.
`
`The ’370 patent further explains that “a pattern of light extracting deformities
`
`or disruptions 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, as desired.” Id. at
`
`4:31-34 (emphasis added). The ’370 also describes the deformities on both sides of
`
`the panel by stating that “a pattern of light extracting deformities 21, 23, 24 and/or
`
`25 may be provided on one or both sides of the panel member in order to change the
`
`path of the light so that the internal critical angle is exceeded and a portion of the
`
`light is emitted from one or both sides of the panel.” Id. at 6:15-20. The deformities
`
`21, 23, 24, and 25 discussed in that passage are depicted in Figs. 4a-4d:
`
`4
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`
`
`
`
`
`
`
`
`
`The ’370 patent describes the functionality of the deformities with reference
`
`to Fig. 4a above: “[t]he pattern of light extracting deformities 21 shown in FIG. 4a
`
`includes a variable pattern which breaks up the light rays such that the internal angle
`
`of reflection of a portion of the light rays will be great enough to cause the light rays
`
`either to be emitted out of the panel through the side or sides on which the light
`
`extracting deformities 21 are provided or reflected back through the panel and
`
`emitted out the other side.” Ex. 1001 at 4:40-47.
`
`
`
`The ’370 patent also describes varying the deformities to achieve a uniform
`
`light output distribution: “[v]arying the percentages and/or size of deformities in
`
`different areas of the panel is necessary in order to provide a uniform light output
`
`5
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`distribution. For example, the amount of light traveling through the panels will
`
`ordinarily be greater in areas closer to the light source than in other areas further
`
`removed from the light source. A pattern of light extracting deformities 21 may be
`
`used to adjust for the light variances within the panel members, for example, by
`
`providing a denser concentration of light extracting deformities with increased
`
`distance from the light source 3 thereby resulting in a more uniform light output
`
`distribution from the light emitting panels.” Id. at 5:5-16.
`
`
`
`The ’370 patent also notes that the deformities can control the output
`
`distribution of emitted light to fit a particular application, such as backlighting a
`
`liquid crystal display: “[t]he deformities 21 may also be used to control the output
`
`ray angle distribution of the emitted light to suit a particular application. For
`
`example, if the panel assemblies are used to provide a liquid crystal display
`
`backlight, the light output will be more efficient if the deformities 21 cause the light
`
`rays to emit from the panels at predetermined ray angles such that they will pass
`
`through the liquid crystal display with low loss.” Id. at 5:17-23. As described in that
`
`passage, the deformities can cause light rays to emit at predetermined angles such
`
`that those light rays can pass through an LCD with low loss.
`
`
`
`
`
`The written description of the ’370 patent goes into great detail about the
`
`various ways that the deformities can vary. The ’370 patent describes how the
`
`deformities may vary in shape: “Print patterns of light extracting deformities 21 may
`
`6
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`vary in shapes such as dots, squares, diamonds, ellipses, stars, random shapes, and
`
`the like, and are desirably 0.006 square inch per deformity/element or less.” Ex. 1001
`
`at 5:34-37. The ’370 patent continues, stating that “the deformities may vary in shape
`
`and/or size along the length and/or width of the panel members.” Id. at 5:43-44.
`
`
`
`The ’370 patent also describes that a random placement pattern may be used
`
`throughout the length and/or width of the panel, and it gives examples of how to
`
`create those random placement patterns: “a random placement pattern of the
`
`deformities may be utilized throughout the length and/or width of the panel
`
`members. The deformities may have shapes or a pattern with no specific angles to
`
`reduce moire or other interference effects. Examples of methods to create these
`
`random patterns are printing a pattern of shapes using stochastic print pattern
`
`techniques, frequency modulated half tone patterns, or random dot half tones.” Id. at
`
`5:44-52.
`
`
`
`The ’370 patent further describes additional kinds of deformities, using the
`
`deformities in Figs. 4b-d (reproduced above) as examples: “other light extracting
`
`deformities including prismatic surfaces, depressions or raised surfaces of various
`
`shapes using more complex shapes in a mold pattern may be molded, etched,
`
`stamped, thermoformed, hot stamped or the like into or on one or more areas of the
`
`panel member. Figures 4b and 4c show panel areas 22 on which prismatic surfaces
`
`23 or depressions 24 are formed in the panel areas, whereas Figure 4d shows
`
`7
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`prismatic or other reflective or refractive surfaces 25 formed on the exterior of the
`
`panel area. The prismatic surfaces, depressions or raised surfaces will cause a portion
`
`of the light rays contacted thereby to be emitted from the panel member.” Id. at 5:58
`
`through 6:2. The written description also provides examples of how those
`
`deformities can vary: “the angles of the prisms, depressions or other surfaces may
`
`be varied to direct the light in different directions to produce a desired light output
`
`distribution or effect. Moreover, the reflective or refractive surfaces may have
`
`shapes or a pattern with no specific angles to reduce moire or other interference
`
`effects.” Id. at 6:2-7.
`
`
`
`The ’370 patent discusses a sheet or film used in the panel assemblies: “[t]his
`
`sheet or film may become a permanent part of the light panel assembly for example
`
`by attaching or otherwise positioning the sheet or film against one or both sides of
`
`the panel member similar to the sheet or film 27 shown in FIGS. 3 and 5 in order to
`
`produce a desired effect.” Id. at 4:56-61.
`
`The ’370 patents provides an example of a sheet or film in its description of
`
`Fig. 5: “[m]oreover, a transparent film, sheet or plate 27 may be attached or
`
`positioned against the side or sides of the panel member from which light is emitted
`
`using a suitable adhesive 28 or other method in order to produce a desired effect.
`
`The member 27 may be used to further improve the uniformity of the light output
`
`distribution. For example, the member 27 may be a colored film, a diffuser, or a label
`
`8
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`or display, a portion of which may be a transparent overlay that may be colored
`
`and/or have text or an image thereon.” Ex. 1001 at 6:20-29.
`
`
`
`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 none of the grounds in the
`
`Petition presents a reasonably likelihood of Petitioner prevailing.
`
`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
`
`extracting deformities on or in one of the sides vary in a different way or manner
`
`than the light extracting deformities on or in the other side of the panel member.”
`
`None of Petitioner’s citations support the argument that Suzuki discloses this
`
`limitation. For example, Petitioner’s purported support from Suzuki for this
`
`9
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`limitation includes the following: “Embossed patterns having different pitches may
`
`be formed on the front and back surfaces of the transparent light guide layer.”
`
`Petition at 18. But differing only in “pitch” would not allow for varying in a different
`
`way or manner between the front and back side. And none of the other citations in
`
`the Petition even address the front and back sides of the light guide of Suzuki. Id. at
`
`18-19. Accordingly, Suzuki does not teach or suggest that a pattern from one side
`
`varies differently than a pattern from the other side of the light guide.
`
`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
`
`required transition region. Claim 47 requires that “the panel member has a transition
`
`region between the at least one input edge and the patterns of light extracting
`
`deformities to allow the light from the at least one light source to mix and spread,”
`
`which is identified as element [47.f] by the Petitioner.
`
`Petitioner argues that “Pristash [] discloses a transition device 5 between the
`
`input edge 10 and disruptions 16,” but Pristash’s transition device does not meet the
`
`claim limitations. Petition at 20. The “transition device 5” is not a “transition region
`
`between the at least one input edge and the patterns of light extracting deformities”
`
`as required by the claim. Instead, transition device 5 “is used to make the transition
`
`from the light source 3 target shape to the light emitting panel input edge 4.” Ex.
`
`1007 at 3:2-4 (emphasis added). The stretch that Petitioner makes is shown in
`
`10
`
`

`
`Case IPR2016-00914
`
`Patent 7,537,370
`
`annotated Fig.
`
`1 from Pristash below- The immediately preceding citation from
`
`Pristash describes that the transition device is between the elements 10 and 4, as
`
`shown by the red arrow. Petitioner adds the area shown by the green arrow (ending
`
`where disruptions 16 begin) to the purported transition region of Pristash even
`
`though it is outside the bounds of transition device 5.
`
`
`
`Moreover, Petitioner incorrectly identifies Pristash’s “input end 10” as the
`
`“input edge” on the panel member in its Petition. See Petition at 20- But Pristash
`
`shows this as the “input end 10 of the transition device 5.” Ex. 1007 at 3:19-20
`
`(emphasis added). In contrast, claim 47 requires that the “input edge” must be a part
`
`of the “optical panel member,” not the “transition region.” See, e.g., ’370 patent at
`
`claim 13 (stating, “an optical panel member having at least one input edge .
`
`.
`
`.
`
`wherein the panel member has a transition region between the input edge and the
`
`patterns of light extracting deformities”). Even Petitioner’s expert’s annotated
`
`11
`
`

`
`Case IPR2016-00914
`
`Patent 7,537,370
`
`Figure 1 demonstrates that the “transition device” of Pristash is not between the
`
`“input edge of the light emitting panel” and the “pattem of deformities.” Mr.
`
`Credelle calls element 4 the “input edge of the light emitting panel,” not element 10.
`
`
`
`‘V
`4
`Input edge of light
`emitting panel
`
`Ex.1004 at1] 116.
`
`Accordingly, Suzuki in View of Pristash does not teach or suggest element
`
`[47_f], and the Board should deny institution of Ground 4.
`
`3. Ground 4 — Suzuki and Pristash are not combinable.
`
`Combining Suzuki and Pristash in the manner suggested by Petitioner ignores
`
`the Graham factors. As confirmed by the Supreme Court in KSR, an obviousness
`
`analysis begins with a consideration of the Graham factors. 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:
`
`12
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`(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 merely
`
`identifying a difference from the prior art and then contending that that difference
`
`alone would have been obvious. See Schenck v. Nortron Corp., 713 F.2d 782 (Fed.
`
`Cir. 1983); Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1348 (Fed. Cir. 2008) (“in
`
`addressing 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 Suzuki and Pristash as a whole, otherwise
`
`Petitioner would have found that the combination of the two would have led to
`
`system with increased light loss – a result that is opposed to the goals of the ’370
`
`13
`
`

`
`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
`
`Suzuki were modified to have a point-source light, one having skill in the art would
`
`have been motivated to use Pristash’s transition device. See Petition at 21. But one
`
`of ordinary skill would not have wanted to use the suggested transition device
`
`because the converging lens of Pristash would decrease optical coupling in that
`
`proposed combination, causing more loss. Because Petitioner failed to address the
`
`negative ramifications of making that suggested modification, Petitioner has not
`
`shown Suzuki and Pristash are properly combinable.
`
`4. CONCLUSION
`Because Petitioner fails to show that all elements of the ’370 patent claims are
`
`disclosed in the cited prior art and provides no credible motivation for combining
`
`the teachings of the cited prior art in the proposed manner, Petitioner fails to establish
`
`that there is a reasonable likelihood that they would prevail with respect to any claim
`
`of the ’370 patent. As such, Petitioner’s request for inter partes review should be
`
`denied.
`
`
`
`14
`
`

`
`Case IPR2016-00914
`Patent 7,537,370
`Dated: July 20, 2016
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`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`_________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this document has been served via
`
`electronic mail on July 20, 2016, to Petitioner at the following email addresses
`
`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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`15
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`

`
`Case IPR2016-00914
`Patent 7,537,370
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`As required by 37 C.F.R. §42.24(a), the undersigned hereby certifies that the
`
`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
`
`16

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