UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`KAWASAKI RAIL CAR, INC.,
`Petitioner,
`v.
`SCOTT BLAIR,
`Patent Owner
`__________
`
`Case IPR2017-00117
`Patent 6,700,602
`
`PATENT OWNER SCOTT BLAIR’S CORRECTED
`OBSERVATIONS ON LOWELL MALO’S NOVEMBER 28, 2017
`DEPOSITION
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`KAWASAKI RAIL CAR, INC.,
`Petitioner,
`v.
`SCOTT BLAIR,
`Patent Owner
`__________
`
`Case IPR2017-00117
`Patent 6,700,602
`
`PATENT OWNER SCOTT BLAIR’S CORRECTED
`OBSERVATIONS ON LOWELL MALO’S NOVEMBER 28, 2017
`DEPOSITION
`
`
`
`Malo confirms that a person of ordinary skill in the art (POSITA) would
`1.
`not have expected space beyond the wall at the junction of the sidewall and the
`ceiling to be available.
`In Ex. 2006, p. 36 at 32:7-16, the witness testified there would be conduits,
`
`piping and such at the junction of the sidewall and the ceiling.
`
`A. Sure. If you look at the construction here [indicating]? … and that forms
`a cavity back behind this area as well [indicating]. Great place for conduits, piping
`and such.
`This testimony is relevant to the testimony of Malo, Ex. 1025 ¶ 11, in that
`
`“conduits, piping and such” at the junction of the sidewall and the ceiling is contrary
`
`to Ex. 1025 ¶ 11 that a POSITA would have understood Fig. 1 of Namikawa to be
`
`disclosing a subway car having space beyond the wall, including the availability of
`
`space beyond the wall at the junction of the sidewall and the ceiling.1
`
`Malo testifies that none of the references, other than Maekawa, had any
`2.
`verbal indication of a cavity between the interior wall and the exterior wall and
`Maekawa provides only for a door pocket cavity, which is not at the junction of the
`sidewall and the ceiling.
`In Ex. 2006, on p. 40 at 36:2, the witness testified, “I saw nothing in the
`
`wording” of Namikawa to indicate a cavity in between the interior wall and the
`
`exterior wall. In Ex. 2006, p. 41 at 36:16 to 38:3, Malo testified that “there is nothing
`
`in the writing . . . where it indicates, suggests, describes that there is a cavity between
`
`1 Mr. Malo also testified that the cavity between a subway car’s interior wall and exterior shell was important to
`allow space for the inclusion of (a) thermal insulation, (b) sound deadening material, (c) wiring and cabling, and (d)
`an array of structural members which could be used for the mounting of interior equipment, Ex. 1025 ¶ 10.
`
`1
`
`
`
`the interior wall and its exterior shell of the rail car.” In Ex. 2006, p. 50 at 44:17-
`
`21, the witness testified that Maekawa does not disclose a cavity at the junction of
`
`the sidewall and the ceiling. In Ex. 2006, p. 51 at 45:19 to 47:20, the witness testified
`
`that none of the references, other than Maekawa, had any verbal indication of a
`
`cavity between the interior wall and the exterior wall and Maekawa provides only
`
`for a door pocket cavity, at the door level, which is not at the junction of the sidewall
`
`and the ceiling.
`
`This testimony is relevant to the testimony of Malo on Ex. 1025 ¶ 11, that
`
`Namikawa discloses a subway car having a cavity between its interior wall and its
`
`exterior shell and a POSITA would have understood Namikawa to disclose a subway
`
`car having space beyond the wall, including the availability of space beyond the wall
`
`at the junction of the sidewall and the ceiling, which is not supported by the
`
`references.
`
`Malo confirms that the proposed FRA rules provide that the intent of
`3.
`the guidelines is to prevent fire ignition, and a review of accident data indicates that
`fire was the second leading cause of fatalities on passenger trains for the period of
`1972 to 1973.
`In Ex. 2006, on p. 84 at 75:3 to 76:20, the witness testified fires are to be
`
`avoided and are a big problem because there is no place to go in a subway.
`
`Q. Further down it says: "A review of the accident/incident data, related to
`fatalities and injuries on passenger trains for the period of 1972 to 1973, indicates
`
`2
`
`
`
`that collapse of equipment structure and loss of sufficient space for the passengers
`to ride out the collision is a principal cause of fatality in train accidents." And then
`the next sentence it goes on and talks about, it says: "Fire and post-collision
`conditions result in 30 percent of the fatalities and 16 percent of the serious injuries."
`Do you think that's reasonable, those numbers?
`A.
`In the '72 to '73 timeframe?
`Q. Yes.
`A.
`It could well be…..
`"In 1984, FRA published guidelines
`Q. The first
`sentence says:
`recommending testing methods and performance criteria for the flammability,
`smoke emission, and fire endurance characteristics for categories and functions of
`materials to be used in the construction of new or rebuilt + rail passenger
`equipment." And it goes on and then it says: "The intent of the guidelines is to
`prevent fire ignition and to maximize the time available for passenger evacuation if
`fire does occur."
`A. Yes.
`Q. This is kind of consistent with what you just said?
`A. Um hum.
`This testimony is relevant to Ex. 1025 ¶ 18 in that Malo, in forming his expert
`
`testimony, relies upon the proposed FRA rules as a motivation to modify the
`
`references as requiring flush mounting2, when in fact the proposed FRA rules
`
`provide that fire safety is important, an intent is to avoid fires, and fires are the
`
`second leading cause of fatalities.3
`
`2 See also Ex. 1014 ¶ 44
`3 See Ex. 2006, pp. 244-45.
`
`3
`
`
`
`Expert for Petitioner confirms concerns of overheating of monitors and
`4.
`that proper ventilation is a concern.
`In Ex. 2006, p. 89 at 79:13 to p. 90 at 80:8, the witness testified that there
`
`would be a concern of overheating when designing a monitor for a rail car interior
`
`and proper ventilation is a concern.
`
`Q. How do the concerns about heating of these monitors, ventilation of these
`monitors play, for safety reasons, play into the disposition of the monitoring in the
`rail car?
`A. We would have to take a look at how much heat the monitor itself
`generates and then see how we would dissipate. If it was a number large enough we
`would have to be able to dissipate the heat.
`Q. How would you dissipate that?
`A.
`Sometimes just venting directly into the car, you know, that would be
`one way of doing it. Some things, not necessarily monitors, but lights, for example,
`have a little tunnel behind it, if you will, for air to pass through, and it's just to bring
`cool air in to cool it off.
`This testimony is relevant to Malo’s declaration on Ex. 1025 ¶ 15, because it
`
`contradicts the position advanced that, “to flush mount a flat TV screen in the flat
`
`junction one would only have to cut a hole and run power to the hole.” This
`
`testimony contradicts Malo’s testimony on Ex. 1025 ¶ 15 which provides, “in 1995-
`
`1997, many rail car manufacturers used fiberglass panels at the junction of a sidewall
`
`and ceiling because fiberglass panels are light in weight, last for a long time, require
`
`low maintenance, and are good insulators.”
`
`emphasis added. The testimony
`
`4
`
`
`
`confirms that a POSITA would not be motivated to insulate the television in the wall,
`
`as you must dissipate heat and insulating a television in a wall would pose a fire
`
`hazard. The proposed modification to utilize fiberglass panels which would insulate
`
`the television in the wall is contradicted by Malo’s testimony and must fail. The
`
`proposed tunnel to cool off the monitor would also require additional space, which
`
`is relevant to Ex. 1014 ¶ 42; Malo provides that the conservation of space was a
`
`major motivation to modify Namikawa to be substantially flushed with adjacent
`
`surfaces.
`
`Expert for Petitioner testifies it is important that TV monitors in a rail
`5.
`car be designed to dissipate heat.
`In Ex. 2006, p. 92 at 82:5 to p. 94 at 83:15, the witness testified it is important
`
`that TV monitors in a rail car be designed to dissipate heat and that an additional
`
`enclosure or ventilation openings would accomplish this.
`
`Q. Did the TVs in the 1990s have, to your knowledge, have openings for
`ventilation?
`A.
`I'm not positive at the moment.
`Q. Are you familiar with any federal regulations or guidelines related to
`safety in terms of heating of TV monitors, the kind of regulations we are talking
`about here?
`A.
`I'm not aware of one, there could well be, but I'm not aware of it.
`Q. Do you think that might be relevant to the understanding about how and
`where to place TV monitors in a rail car that goes underground with passengers in
`it?
`
`5
`
`
`
`I think it's more important that TV monitors be designed to dissipate the
`A.
`heat so you don't have special conditions; in other words, you dissipate the heat
`through a particular case or something like that.
`Q. And how would it do that? How would a TV monitor dissipate heat
`generally?
`A. Okay. Do it through an enclosure case, basically an aluminum heat
`sink….
`This testimony contradicts Malo’s testimony, Ex. 1025 ¶ 15, which provides,
`
`“to flush mount a flat screen TV in the flat junction one would only have to cut a
`
`hole and run power to the hole.” Malo testifies that you would have to ensure that
`
`the TV monitors be designed to dissipate heat, which is contrary to and was not
`
`discussed or accounted for in any of his prior testimony. This testimony is also
`
`relevant to Malo’s declaration on Ex. 1014 ¶ 38, in that it contradicts the position
`
`that it would have been obvious to a POSITA in 1997 to place Namikawa’s display
`
`screens within the subway car’s wall such that they would be substantially flushed
`
`with adjacent surfaces, as placing Namikawa’s display screens within the subway
`
`car wall to be substantially flush would likely cause overheating and prohibit
`
`ventilation. Additionally, the proposed enclosure case to cool off the monitor would
`
`require additional space, which is relevant to Ex. 1014 ¶ 42, which provides that the
`
`conservation of space was a major motivation to modify Namikawa to be
`
`substantially flushed with adjacent surfaces.
`
`6
`
`
`
`See also Ex. 2006, p. 140 at 125:4-24, the witness testifies that you need to
`
`give the monitor an area to behind the wall to dissipate the heat.
`
`Q. Looking at the drawing, Figure 1 in Namikawa, if you assume that the
`television disclosed here required ventilation, how could you completely flush-
`mount the TVs with the side walls and provide for ventilation for the TVs?....
`A. You could ventilate the televisions back behind the wall. In other words
`it can be set in -- actually I would have taken the side wall, come straight down,
`ventilate back into that area behind the wall. Understand in ventilation you just have
`to give an area for the heat to dissipate. You don't actually have to send the heat
`outside. It just has to dissipate.
`This testimony is relevant to Malo, Ex. 1025 ¶ 11, that a POSITA would have
`
`understood Namikawa to disclose a subway car having space beyond the wall,
`
`including the availability of space beyond the wall at the junction of the sidewall and
`
`the ceiling. Malo’s current testimony provides that a POSITA would have had to
`
`not only expect there was available space beyond the wall at the junction of the
`
`sidewall and the ceiling—and it was not occupied by conduits, piping, structural
`
`members, or insulation—but also there would have to be additional room for
`
`ventilation to dissipate the heat.4
`
`the Consumer Product Safety
`Expert for Petitioner testifies that
`6.
`Commission (CPSC) looks out for the safety and wellbeing of the consumer and the
`public and confirms that the CPSC provides that you should never block the bottom
`
`4 This is also relevant to Malo’s declaration, Ex. 1014 ¶ 42, which provides that the conservation of space
`was a major motivation to modify Namikawa to be substantially flushed with adjacent surfaces.
`
`7
`
`
`
`ventilation slots of a television and never place a television set in a “built-in”
`enclosure unless proper ventilation is provided. Petitioner’s expert also admits
`ventilation and fire concerns should be considered in connection with mounting a
`monitor in the structure of a rail car.
`In Ex. 2006, p. 95 at 84:14 to p. 100 at 89:8 the witness testifies the CPSC
`
`looks out for the safety and wellbeing of the consumer and the public and provides
`
`you should never block the bottom ventilation slots of a television and should never
`
`place a television set in a “built-in” enclosure unless proper ventilation is provided.
`
`Malo also testifies that ventilation would have been a concern in modifying
`
`Namikawa and should have been considered.
`
`Q. Are you familiar with the Consumer Product Safety Commission?
`A. Yes.
`Q. Can you tell us what that is?
`A.
`It's a commission that just looks out for the safety and wellbeing of the
`consumer and public. ….
`Q.
`It says, "TV sets are provided with ventilation openings in the cabinet to
`allow heat generated during the operation to be released." You've testified to that.
`"If these openings are blocked, heat build-up within the TV can cause failures which
`may result in a fire hazard." Would you agree with that statement?
`A. Not only televisions but anything with enough heat can be a fire hazard.
`Q. And therefore the commission says -- states the following: “Never cover
`the openings with cloth or other material. Never block the bottom ventilation slots
`of a portable TV by placing it on a bed, sofa, rug, etc. Never place the set near or
`over a radiator or heat register. Never place a set in a 'built-in' enclosure unless
`
`8
`
`
`
`proper ventilation is provided. If you put a TV screen or monitor into the wall of a
`rail car” --
`A. Um hum…
`MR. KEYHANI: Could you please read the question. (The requested portion of the
`record was read.) [Do you think that this would have been a consideration in some
`of the designs of the -- in placement of TV monitors in some of the prior art that we
`looked at earlier today like Namikawa and other references, the concern about
`allowing for ventilation of TV monitors and not covering or baring the entire monitor
`in the structure of the rail car?] …
`A. Right. So is it a fact that it should be considered; is that the question?
`Q. Yes.
`A. Yes, it should be considered.
`This testimony contradicts Malo’s testimony in Ex. 1025 ¶ 15 which provides,
`
`“to flush mount a flat screen TV in the flat junction one would only have to cut a
`
`hole and run power to the hole.” Malo has testified that you would have to ensure
`
`that the TV monitors be designed to dissipate heat, which is contrary to and was not
`
`discussed or accounted for in his prior testimony. This testimony further contradicts
`
`Malo’s testimony on Ex. 1025 ¶ 15 which provides, “in 1995-1997, many rail car
`
`manufacturers used fiberglass panels at the junction of a sidewall and ceiling because
`
`fiberglass panels are light in weight, last for a long time, require low maintenance,
`
`and are good insulators.” emphasis added. Malo confirms that a POSITA would
`
`not be motivated to insulate the television in the wall, as you must dissipate heat and
`
`insulating a television in a wall would pose a fire hazard. The proposed modification
`
`9
`
`
`
`advanced in Ex. 1025 ¶ 15 to utilize fiberglass panels which would insulate the
`
`television in the wall is contradicted by this testimony and must fail. See also above,
`
`the availability of space beyond the wall at the junction of the sidewall and the
`
`ceiling is not supported by the references and requiring additional space to provide
`
`proper ventilation a POSITA would have no expectation of enough space to be
`
`substantially flushed with adjacent surfaces. The above testimony is also relevant
`
`in that Petitioner’s expert has testified ventilation should be considered, yet he did
`
`not consider ventilation or heat dissipation in forming his expert testimony in
`
`Exhibits 1014 and 1025.5
`
`Petitioner’s expert admits that mounting a TV monitor on the outside
`7.
`of the interior wall of the rail car reduces heating associated with fire ignition risk.
`
`In Ex. 2006, p. 117 at 104:17-23, the witness testified that externally mounted
`
`monitors would be cooler and you would have less concerns about overheating.
`
`Q. So because it is externally mounted you don’t have to worry about any
`heating in this case [Miyajima]?
`A. It helps.
`Q. Lessens the heating? Lessens the overheating. I’m sorry?
`A. It increases the cooling.
`This testimony is relevant to Ex. 1025 ¶¶ 10-17 and Ex. 1014 ¶ 44 in that it
`contradicts the purported motivations to modify Namikawa. As stated above, the
`
`5 See also the proposed FRA rules—upon which he relies for the motivation to modify the
`references—stating the intent is to avoid fires and that fires are the second leading cause of
`fatalities. See Ex. 2006, pp. 244-45.
`
`10
`
`
`
`proposed FRA rules provide that the intent is to avoid fires and that fires are the
`second leading cause of fatalities. The testimony confirms a POSITA would be
`motivated to avoid overheating and would not be motivated to modify Namikawa
`by placing a screen substantially flushed with the adjacent wall surface as this would
`result in increased heat and fire hazard concerns.
`8.
`Expert for Petitioner confirms that the Guidelines of Fire Safety for rail
`passenger equipment impact the design of TV monitors, and testing would be
`performed to avoid a television monitor melting, dripping and starting fires.
`In Ex. 2006, on p. 86 at 76:24 to p. 87 at 78:3, the witness testified the
`
`Guidelines of Fire Safety for rail passenger equipment impact the design of TV
`
`monitors, and testing would be performed to avoid a television monitor melting,
`
`dripping and starting fires.
`
`Q. Considering these guidelines on safety and fire safety, how do design of
`TV monitors may be impacted by these regulations and considerations that these
`regulations are directed to in your mind?
`A. Okay...There are three testing procedures they have to follow, and the
`idea is that the video screen itself wouldn’t melt and drip and start setting fires below
`it, okay? As far as, you know, does that answer the question?... Okay. I mean that’s
`just basically what it does. It makes sure that it cannot catch on fire and if it does it
`does not have an open flame and spread, and that’s one of the drip criteria where you
`have hot flame and stuff coming down to the carpets, going down to the seats,
`coming down on people’s heads.
`This testimony is relevant to Ex. 1025 ¶¶ 10-17 and Ex. 1014 ¶ 38, because it
`
`contradicts the position that it would have been obvious to a POSITA in 1997 to
`
`place Namikawa’s display screens within the subway car’s wall such that they would
`
`11
`
`
`
`be substantially flushed with adjacent surfaces. There would be a significant
`
`concern that placing Namikawa’s display screens within the subway car wall, such
`
`that
`
`they would be substantially flush with adjacent surfaces, would cause
`
`overheating, prohibit ventilation, catch fire and have “stuff coming down to the
`
`carpets, going down to the seats, coming down on people’s heads.”
`
`Expert for Petitioner testifies that fires are to be avoided and are a big
`9.
`problem because there is no place to go in a subway.
`In Ex. 2006, on p. 82 at 73:19 to p. 83 at 74:11, the witness testified fires are
`
`to be avoided and are a big problem because there is no place to go in a subway.
`
`Q. What are you trying to avoid going wrong? You have two categories,
`things going wrong and if they go wrong do something with it.
`A. You want to make sure that people cannot get their arms into things that
`are dangerous. You want to make sure they don't bump their heads or bump their
`shoulders just as best you can walking through the car. You do pay attention to fire
`hazards, which is extremely important in order for people to be safe.
`Q.
`Is that one of the big problems in an underground subway, fire?
`A. Yes, it is, because there is no place to go in a subway.
`
`This testimony is relevant to Ex. 1025 ¶¶ 10-17 and Ex. 1014 ¶ 38, because it
`
`supports that a POSITA, in the 1995-1997 timeframe, would not have been
`
`motivated to mount a monitor substantially flush with an adjacent wall surface
`
`structure of a subway car because of a heighted aversion to any potential fire hazards
`
`12
`
`
`
`in the subway car environment and knowledge that a television should never be put
`
`in a “built-in” enclosure and the ventilation slots should never be blocked.
`
`Expert for Petitioner confirms that Miyajima teaches a liquid crystal
`10.
`display television spaced away from the interior wall of a subway car with a cooling
`air going between the display and the inner wall.
`In Ex. 2006, on p. 135at 120:7 to p. 136 at 121:15, the witness testified:
`
`Q. Well, I'm not -- we're not trying to dance around here. I just want to
`know if this specification -- we are looking at a very specific document – is there
`any disclosure or teaching or description of cooling air going between an inner wall
`and an exterior wall. We know -- we know that there is explicitly a description of
`cooling air going between the display and the inner wall, there is no question about
`that; correct? Right?....
`MR. KEYHANI: Could you read my question that's pending again, please.
`… [There is no question that this specification discloses cooling air going between
`a display and an inner wall; is that correct?]
`A.
`In that paragraph, yes.
`This testimony is relevant to Ex. 1025 ¶¶ 10-17 and to the state of the art.
`
`Miyajima is the only reference that discusses ventilation for a LCD monitor in a
`
`subway car and provides a display device (the backlight is part of the display device)
`
`mounted away from the wall with a cooling air gap behind it and a means to
`
`discharge the cooled air to the exterior of the vehicle. The testimony also supports
`
`the position that a POSITA, in the 1995-1997 timeframe, would not have been
`
`motivated to mount a monitor substantially flush with an adjacent wall surface
`
`structure of a subway car because of a heighted aversion to any potential fire hazards
`
`13
`
`
`
`in the subway car environment, knowledge that a television should never be put in a
`
`“built-in” enclosure and the ventilation slots should never be blocked.
`
`Expert for Petitioner testifies that Namikawa does not disclose any
`11.
`mounting structure.
`In Ex. 2006, p. 54 at 48:11-20, the witness testified Namikawa does not
`
`disclose a mounting structure.
`
`Q. Can you tell me whether in this disclosure in this patent there is any
`indication as to any mounting structure in the -- of the -- for the TV monitors in the
`rail car, any structure that would mount TV panels or the monitors in the rail car…
`
`A.
`
`I don't see a reference to a mounting structure.
`
`This testimony is relevant to the testimony on Ex. 1025 ¶ 13 because it
`
`contradicts Malo’s statement that Namikawa discloses televisions mounted at the
`
`junction of the sidewall and the ceiling which is immediately apparent to one of
`
`ordinary skill in the art from looking at Figure 1 of Namikawa.
`
`Expert for Petitioner admits that it is not clear whether Namikawa
`12.
`teaches a monitor inside the wall of the rail car or on the outside of the interior wall
`and therefore Petitioner cannot rely on Namikawa for the proposition that it discloses
`a monitor substantially flush with the side wall structure.
`In Ex. 2006, on p. 68 at 61:7-11, the witness testified it is not clear whether
`
`Namikawa teaches a monitor inside the wall of the rail car or on the outside of the
`
`interior wall.
`
`14
`
`
`
`Q. So are you saying that it’s not clear to you whether it’s inside the wall or
`outside of the wall, on that issue?
`A. Yeah.
`This testimony is relevant to Ex. 1025 ¶ 13 and directly contradicts Malo’s
`
`testimony that “one of ordinary skill in the art reading the disclosure of Namikawa
`
`would have understood the screen in Namikawa’s Figure 1 to be at the very least
`
`partially in the cavity between the interior surface and the external shell of the
`
`railcar.”
`
`Expert for Petitioner is a biased witness who works for both Petitioner
`13.
`and Alstom Transport, Inc., the other interested party, a defendant in Patent Owner’s
`related infringement action pending in the SDNY.
`In Ex. 2006, on p. 18 at 16:2-146, the witness testified that Petitioner Kawasaki
`
`is one of the biggest customers of the company that employs him:
`
`Q. Who are your biggest customers right now you are working with? You
`mentioned a couple, a number of them….
`A. Alstom is a customer. We do work with Kawasaki.
`This testimony is relevant to the testimony offered by Malo in Exhibits 1014
`
`and 1025 because it goes to the weight to be accorded the testimony of Mr. Malo.
`
`Respectfully submitted,
`/Jennifer Meredith/
`Jennifer Meredith
`Reg. No. 47,790
`Attorney for Patent Owner
`Dated: January 8, 2018
`
`15
`
`6 See also Ex. 2006, p. 21, line 13 to p. 22, lines 1-20.
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on January 8, 2018, a complete and entire copy of the
`
`within Motion for Observations was served on Petitioner by emailing a copy to:
`
`sheilamortazavi@andrewskurthkenyon.com
`
`zaedbillah@andrewskurthkenyon.com
`
`arminghiam@andrewskurthkenyon.com
`
`Respectfully submitted,
`
`/s/ Jennifer Meredith
`Jennifer Meredith
`Meredith & Keyhani, PLLC
`205 Main Street
`East Aurora, NY 14052
`Telephone: (646) 546-5253
`Facsimile: (212) 202-3819
`
`16
`
`
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