GZJKDKV 3115
`EXHIBIT 2004
`
`
`EXHIBIT 2004
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAWASAKI RAIL CAR, INC.
`
`Petitioner
`
`V.
`
`SCOTT BLAIR
`
`Patent Owner
`
`IPR2017—001 17
`
`Patent No. 6,700,602
`
`SUPPLEMENTAL EXPERT DECLARATION OF JACK R. LONG
`
`
`
`I, Jack R. Long, hereby declare the following:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`l.
`
`I am over 21 years of age and otherwise competent to make this Declaration. I
`
`make this Declaration based on facts and matters Within my own knowledge and on information
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`provided to me by others.
`
`2.
`
`I have been retained as an expert in this matter by Counsel for Patent Owner Scott
`
`Blair to provide my independent opinions on certain issues requested by Counsel for Patent
`
`Owner relating to the accompanying petition for Inter Partes Review of 1.3.8. Patent No.
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`6,700,602 ("the‘602 Patent“). My compensation in this matter is not based on the substance of
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`the opinions rendered here.
`
`3.
`
`I have previously summarized in my original declaration submitted herein (Ex.
`
`2002) my educational background, career history, and other relevant qualifications. I have also
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`attached a current version of my curriculum vitae as Appendix A hereto.
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`4.
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`I have been working actively in the design engineering industry for more than 35
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`years.
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`5.
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`As part of my work in connection with this proceeding, I have reviewed the
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`following materials:
`
`I? Patent 6,700,602 (the '602 Patent) including the claims thereof;
`
`0 Petition for Inter Par-res Review of US. Patent No. 6,700,602, No. IPR2017-
`
`001 17 including Exhibits;
`
`0 Translation of Japan Train Operation Association Magazine, Vol. 37, Issue No. 3
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`(March 1, 1995) (Ex. 1003, "JTOA Magazine");
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`
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`0 The translation of Japanese Publication No. 04-085379 (Ex. 1005, "Narnikawa");
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`O The translation of Japanese Publication No. 07-181900 (Ex. 1007, "Miyajima");
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`0 The translation of Japanese Publication No. 04-322579 (Ex. 1011, "Sasao");
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`0 The translation of Japanese Publication No. 04-160991 (Ex. 1009, "Maekawa");
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`0 US. Patent No. 5,293,244 to Kawaguchi (EX. 1022, "Kawaguchi");
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`0 The translation of Japanese Publication No. 02—23985 (Ex. 1021, "Amano");
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`O The file history of the '602 patent provided in Exhibit 1012;
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`0 The reexamination file history of the '602 patent provided in Exhibit 1013; and
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`0 Decision Instituting Inter Partes Review (Paper 1 1) ("Decision").
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`II.
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`OVERVIEW OF THE ‘602 PATENT AND THE PRIOR ART
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`A. The '602 Patent
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`6.
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`The '602 patent is directed to a video disPIay monitor system that is mounted at
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`fixed intervals at the junction of the sidewall and the ceiling of a subway car. More particularly,
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`the video monitor system includes an enclosure for the video monitor that is designed to be
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`mounted at the junction in such a manner that the screen of the enclosed video monitor is located
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`substantially flush with the adjacent interior wall structure and oriented obliquely towards the
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`subway car’s seats. More particularly, at the junction of the sidewall and ceiling of the subway
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`car is a curved exterior wall segment to which the enclosure is mounted with suitable brackets
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`attached to the back ofthe enclosure. Between this curved wall and a corresponding interior wall
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`is a cavity within which the enclosure is located.
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`(Ex. 1001 at 3:46—4:14, 4:64-5:20; Figs. 1A,
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`113, 4A).
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`7.
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`The system also comprises a "video signal source uni ” connected to the monitors.
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`The "video signal source unit" consists of pre-recorded material for broadcasting on the screens
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`such as news, advertisements etc. It can be in the form of video disk players, (JD-ROM players,
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`and video tape players (BX. 100] at 2:15-42).
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`8.
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`The combination of references fails to teach or suggest monitors that are not only
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`mounted at the junction of the sidewall and ceiling of the subway car but are also substantially
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`flushed with the adjacent wall surface structure of the car and directed obliquely downwards.
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`Before the invention of the '602 patent, it was not known to substantially flush the video screen of
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`a video monitor to the adjacent wall surfaces of the mass transit cars whereby the video monitor
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`was mounted at the junction of the ceiling and sidewall of the subway car and directed obliquely
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`downward towards the car seats so that a person sitting in the seat iocated on the Opposite side of
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`the railroad car has a direct iine of sight with the monitor screen. All the prior art taught other
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`systems entirely.
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`B. Namikawa
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`9.
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`I have reviewed the Namikawa reference in detail. As the Board had already
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`recognized in its Decision (Paper 11 at 15), Namikawa does not disclose installing a substantially
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`flushed screen at the junction of the sidewall and the ceiling of a subway car, but rather
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`specifically teaches externally mounted liquid crystal televisions. Fig. 2 of Narnikawa clearly
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`shows the monitors are externally mounted and do not have screens substantially flushed against
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`the wall surface.
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`10.
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`Nothing within the teachings of Narnikawa teaches or suggests the availability of
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`space beyond the wall, iet aione the availabiiity of space beyond the wall at the junction of the
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`sidewall and the ceiling to allow for the screen of the monitor to be substantially flushed with the
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`3
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`
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`adjacent wall surface structure of the car.
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`C. Sasao
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`1 1.
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`Sasao is directed to housing a rear projection television within an opening in the
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`wall of a room in a building so that image generation hardware is not visible and the screen has
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`a frame around its periphery to cover a gap between the display and the wall opening. (Ex. 1011
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`at 57) [Abstract].
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`12.
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`As stated in Sasao, the problem to be solved is that "rear projection televisions
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`and ordinary televisions alone take up their own space when setup in rooms, and the perceived
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`presence of the main television unit is strongly felt." Id. at [003].
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`13.
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`The solution provided by Sasao is to place a floor supported television behind a
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`wall in an ordinary room so that the screen of the television extends through the wall thickness
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`to be located substantially flush with the room wall with a frame of sufficient width placed around
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`its periphery to cover the wall opening.
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`Id. at [0010].
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`It nowhere teaches or suggests any
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`mounting system for a monitor, let alone a mounting system for a subway car for flush mounting
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`video monitors at the normally curved junction between the subway car’s side wall and a ceiling.
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`D.
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`Amano
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`14.
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`A POSITA would understand that Amano teaches a system of installed screens
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`which are externally mounted at locations away from any adjacent wall surface structure of the
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`car. Thus, Amano also does not teach a system wherein the screens are "substantially flushed"
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`with the wall adjacent surface.
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`15.
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`Amano does not teach or suggest each monitor being mounted at the junction of
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`the sidewall and ceiling, with the screen of the monitor substantially flushed with the adjacent
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`wall surface structure of the car.
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`
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`16.
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`An airplane, train and/or a bus typically accommodates luggage and luggage racks
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`at the junction of the sidewall and the ceiling, whereas a subway car does not.
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`E.
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`Maekawa
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`17.
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`Similar to Namikawa’s system, Maekawa implements a teletext broadcast
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`receiving system for a mobile body such as trains (Ex. 1009 at 1). It also discloses that the
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`televisions that are installed are thin LCD paneled screens (Ex. 1009 at 2).
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`18.
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`A POSITA would also understand that Maekawa’s system does not disclose
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`televisions installed at the junction of the sidewall and the ceiling of a subway car with their
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`screens substantially flushed with the adjacent wall surface and their screens directed obliquely
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`downwards to the subway car’s seats.
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`19. Maekawa teaches monitors installed on top of a sidewall and not substantially
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`flushed.
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`III. UNDERLYING FINDINGS
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`Level of Skill of a Person Having Ordinagy Skill In The Art
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`20.
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`Based on my education, training, and professional experience in the field of the
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`claimed invention, I am familiar with the level and abilities of a person of ordinary skill in the
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`art at the time of the claimed invention. I do not disagree with the qualifications recited by
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`Petitioner’s expert that a person of ordinary skill in the art of the '602 patent at the time of the
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`claimed invention (“POSITA”) would have been a person having the equivalent of a bachelor’s
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`degree (e.g., a bachelor’s in Aerospace, Industrial or Mechanical Engineering) or a practical
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`experience equivalent to these degrees with at least two years of experience in design of rail cars
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`in order to be capable of understanding the '602 patent and the prior art references discussed
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`5
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`
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`herein. Additionally, I meet at least these minimum qualifications to be a person having ordinary
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`skill in the art as of the time of the claimed invention of the '602 patent.
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`Background Information on Subway Cars
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`21.
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`Subway tunnels are mostly commonly constructed by tunnel boring, which
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`creates a substantially circular tunnel by a large tunnel boring machine that has a boring head at
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`the front of the machine and cuts through the ground with material removed being moved to the
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`rear and out of the tunnel on small rail cars that operate on track which has been laid for the
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`boring machine. As the boring progresses, the machine moves forward on new track.
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`In this
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`case, the smaller the diameter of the tunnel the lesser the cost and time involved.
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`22.
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`With the tunnel diameter being kept at a minimum for train operation, the cross —
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`section of the cars must be carefully designed in relationship to the tunnel walls. To envision
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`this, one can draw a circle, then draw a square inside the circle, with the corners just touching the
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`inside of the circle. This represents a basic "space envelope." However, the relationship between
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`tunnel walls and car structure requires adequate space between them for the car to be able to
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`move vertically and laterally on its suspension system. So now out the four corners off of the
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`square to provide this clearance and you have a rough definition of a space envelope in which
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`the car must be built. The inboard two of the top may now be connected with a curved section
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`which stays within the clearance and somewhat defines the shape of the roof.
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`23.
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`in summary, subway cars have a rounded portion at the junction of the sidewall
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`and the ceiling to accommodate travel through subway way tunnels which are bored by a machine
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`in a round shape and made to be as small as possible to reduce costs.
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`24.
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`It would be clear to one of ordinary skill in the art that the "junction of the
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`sidewall and the ceiling" in a subway car is not a single point, but an area between the ceiling
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`6
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`
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`and a sidewall that is curved.
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`25.
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`Buses and above ground trains would not have the same need to be rounded at the
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`junction of the sidewall and the ceiling as they do not go through underground tunnels in the
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`manner as subway cars.
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`26.
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`Square junctures at the junction of the ceiling and the sidewall in subway cars are
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`also avoided to reduce fatigue stresses and feimation of fatigue cracks.
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`27.
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`The claim term "substantially flushed" is included in independent claim 1 of the
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`‘602 patent and was construed by the Board to broadly mean "a surface which is to a great extent
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`even with an adjoining one." Bx. 1013 at p. 479. Thus, this construction is broadly consistent
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`with the plain meaning of the claim language in light of the specification.
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`28.
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`The claim term "mounted" is included in independent claim 1 of the ‘602 patent.
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`The construction “attached to a support" is consistent with the plain meaning of the claim
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`language in light of the specification.
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`29.
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`I do not find the combination asserted by Petitioner in Ground C to render obvious
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`any claims of the '602 because the asserted combination does not teach all of the elements of any
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`claim nor would a POSITA be motived by Sasao’s teachings to modify Namikawa’s system to
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`anive at the claimed invention.
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`30.
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`Petitioner does not show any suggestion within Namikawa to flush its screens, or
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`how to redesign its system for such mounting, because there is none.
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`In order to arrive at a
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`system meeting all the requirements of the claimed invention, Namikawa’s entire mounting
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`system or enclosure must be redesigned so as to provide not only the proper mounting position
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`at the junction of the sidewall and the ceiling but to also provide the proper screen spacing and
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`orientation from that position.
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`31.
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`Based on the above facts, a POSITA would not conclude that Namikawa’s screen
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`monitors are "substantially flushed" with the adjacent wall surface.
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`32.
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`Petitioner asserts Sasao fills the gap in the art left by Namikawa. As discussed
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`above, Sasao teaches a rear projection television wherein the back ofthe rear projection television
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`is located behind a wall in an adjacent room with the screen of the rear projection television
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`substantially flush with room’s wall so that it is oriented perpendicularly to the room’s floor.
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`Sasao’s system is supported by the floor of an adjacent room. There is no teaching in Sasao
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`whatsoever of a video display system mounted at the junction of the wall or the ceiling of a
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`subway car (or a room) with its screen substantially flush with the adjacent (and normally curved)
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`wall structure oriented with its screen directed obliquely towards a subway chair.
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`33.
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`I disagree with Petitioner’s assertion that a POSITA would be motivated by the
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`teachings of Sasao to modify Namikawa to arrive at the claimed invention. Sasao is directed
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`to addressing a completely different problem than the '602 patent. Sasao does not suggest the
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`claimed invention to one of ordinary skill the art, not only because it is a rear projection system,
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`but also because it is not directed to systems for subway cars and, because ofthe vast differences
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`in environments in which the two systems operate, Sasao offers no practical suggestions to one
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`of ordinary skill in the art in the railway car industry. A person of ordinary skill in the art would
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`not be motivated to add Sasao’s "substantially flushed" projection system to Namikawa nor
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`would Sasao’s television hiding system suggest the claimed invention to one of ordinary skill
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`in the art.
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`34. Underlying the Petitioner’s argument is the notion that all one must do to redesign
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`Namikawa to arrive at the claimed invention is merely " [place] the screens substantially flushed
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`with the adjacent wall surface." (Decision, Paper 1 1, at 22) and Pet. 33-34; Ex. 1014 ‘H 44. This
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`8
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`is not shown to be the case and is incorrect.
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`35. Namikawa teaches monitors mounted on the side wall face and does not disciose
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`any structural details as to how the flat panel monitors 12, 22 are mounted, other than the
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`appearance of being externally mounted with a round back. There is no suggestion within
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`Namikawa that there is any space behind the walls. There are certainly no details suggesting
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`that there is any adjacent wall surface with which the monitor screen is substantially flushed.
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`Therefore, in order to arrive at a system meeting all the requirements of the claimed invention
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`Namikawa’s entire mounting system or enclosure must be redesigned so as to provide not only
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`the proper mounting position at the junction of the sidewall and the ceiling but to aiso provide
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`the proper screen spacing and orientation from that position.
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`36. Namikawa’s system offers insufficient details to understand how much of a
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`redesign would be necessary to meet all the claim requirements. However it is safe to say that
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`the mounting system would have to be significantly redesigned from its present form in a
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`manner not suggested by Sasao.
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`37.
`
`The combined teachings of these references simply do not suggest such
`
`modifications to a person of ordinary skill in the art. Therefore, Namikawa in view of Sasao,
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`in further View of Amano, or Maekawa still would not meet all the claim limitations of Claim
`
`1.
`
`38.
`
`Sasao’s teaches a floor supported flushed rear projection screen which is not
`
`located at the junction of a wall and ceiling of the room. Sasao is not mounted, but sits
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`perpendiculariy to the floor (rather than obliquely mounted relative thereto) and does not supply
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`the missing teachings of Namikawa. In the first place, the technical challenges of installing the
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`back of a rear projection system behind the wall of a room, resting on a flat floor, with its screen
`
`9
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`
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`facing perpendicularly to the floor is considerably different, and much simpler, than the system
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`taught and claimed in the '602 patent.
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`In the second place, nowhere does Sasao mention how
`
`or why to mount its television at the junction of a sidewall and ceiling.
`
`39.
`
`Perhaps in recognition that neither Namikawa nor Sasao provide motivation to
`
`modify the Namikawa design in a manner suggested by neither reference, Petitioner asserts that
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`a person of ordinary skill in the art would have been motivated to modify Namikawa to arrive
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`at the claimed invention in order to make the system more aesthetically pleasing, occupy less
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`space, reduce the potential for vandalism, and make it easier to clean the screens and the
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`adjacent walls. These benefits are not suggested by Namikawa, or by Sasao, but rather are
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`borrowed from the teachings of '602 patent, which provide the design that protects the monitor
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`from vandalism, is aesthetically pleasing, and makes it easier to clean. (See Ex. 1001 at 5:35-
`
`49) ( "An alternative embodiment is illustrated in FIG. 4A, a view similar to that of FIG. 4. In
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`this alternative embodiment, CRT video monitor 22 is replaced with an LCD—based video
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`monitor 22A which is of thin, rectangular crossusection, and occupies less space in the ceiling
`
`structure of the car. Accordingly, it can be moved towards the ceiling so that its viewing screen
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`is substantially flush with or even behind the light panel 40. This use of an LCD~based monitor
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`gives a better aesthetic appearance to the inside of the subway car as a whole, as well as
`
`improving the display performance by minimizing the interference effects, as previously
`
`discussed. An appropriately shaped enctosure 42A for the LCD-based monitor, with transport
`
`screen 44A, replaces enclosure 42 for the CRT video monitor, and is similarly mounted in
`
`place”).
`
`40. Having read both Namikawa and the '602 patent, a person of ordinary skill in the
`
`art may or may not choose to practice the '602 patent over Namikawa in order to achieve the
`
`10
`
`
`
`enumerated advantages. However, I disagree that such a person would have modified
`
`Namikawa to arrive at the claimed system in the absence of the teachings of the '602 patent not
`
`in the least because there are both cost and technical challenges in implementing the ‘602
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`system.
`
`41.
`
`It would be less expensive and less technically challenging to externally mount a
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`television on a wall than to remove a portion of the junction of the sidewall and the ceiling and
`
`incorporate a television such that is substantially flushed and directed obliquely downwards.
`
`As such, a POSITA, at the time of the invention, would not have been motivated to modify
`
`Namikawa in View of Sasao, Amano, and Maekawa to arrive at the claims of the '602 patent.
`
`42.
`
`I also disagree with the Petitioner’s conclusion that a person of the ordinary skill
`
`in the art would have been motivated to modify Namikawa to arrive at the claimed system
`
`because of FRA regulations. First, there were no existing TV systems at the time of the '602
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`patent that practiced the claimed system so there was no ”norm" in the industry for system for
`
`such systems. Secondly, there was no FRA requirement to flush mount TV systems. Thirdly,
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`the examples of "fittings” that the FRA contemplated regulating are things such as seats,
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`luggage stowage, seat belts and other surface fittings and not things such as the claimed TV
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`system. The FRA Standard nowhere mentions that the interior fitting is a television. The
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`claimed system of the '602 patent is simply not a "fitting" in the meaning of the contemplated
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`FRA regulations.
`
`43.
`
`From the discussion in paragraphs 26-34 of Mr. Malo’s Declaration,
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`it
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`is
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`reasonable to conclude that, prior to 1997, one skilled in the art would have been aware of
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`installing "interior fittings" (which would n_o_t include TVs or video monitors) in a rail car in a
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`"recessed or flush—mounted" manner, but the installation of a video screen in this manner~—
`
`ll
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`
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`especially at the junction of the ceiling and a sidewall of a rail car—would np_t have been
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`obvious.
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`44. The combination of Namikawa, Sasao, Amano, and Maekawa does not render
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`claim 2 obvious. Claim 2 is dependent of claim 1 and adds the further requirement that the
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`"video signal source system includes a pre-recorded video transmission program for feeding to
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`display on the monitors of duration about 5-15 minutes."
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`45. Namikawa in view of Sasao does not raise a prima facie case that claim 2 is
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`obvious for the same reason the asserted combination does not raise a prima facie case for claim
`
`1, as explained above. Moreover, as previously discussed, neither Amano nor Maekawa
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`mention or suggest a video display monitor system that is mounted at the junction of the ceiling
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`and sidewall of the subway car that meets the claim requirements for the position and
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`orientation of the screen. These references are completely irrelevant to the scope here and are
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`just cited to meet other claim limitations here.
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`46. The combination of Namikawa, Sasao, Amano, and Maekawa does not render
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`claim 3 obvious. Claim 3 is dependent of claim 1 and adds the further requirement that the
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`“program is repeatable, and includes a series of commercial messages of 30 second—1 minute
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`duration."
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`47. Namikawa in view of Sasao does not raise a prima facie case that claim 3 is
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`obvious for the same reason the asserted combination does not raise a prima facie case for claim
`
`1, as explained above. The petitioner once again relies on Amano and Maekawa to meet the
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`Claim 3 limitation. These references are completely irrelevant to the scope as mentioned above
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`and are just cited to meet the claim limitations here.
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`12
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`
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`48.
`
`The combination of Namilcawa, Sasao, Amano, and Maekawa does not render
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`claim 4 obvious. Claim 4 is dependent of claim I and adds the further requirement that the
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`"The video system is sound free."
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`49. Namikawa in view of Sasao does not raise a prima facie case that claim 4 is
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`obvious for the same reason the asserted combination does not raise a prima facie case for claim
`
`1, as explained above. Moreover, neither Namikawa nor Sasao disclose the video system of
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`claim I to be sound free. Amano and Maekawa are completely irrelevant to the scope as
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`mentioned above. The petitioner asserts that in 1997, the video in the rail car were sound-free.
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`This is entirely untrue. If it would have been widely available, then any of the prior arts should
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`have at least mentioned this. Therefore, Narnikawa also does not render claim 4 obvious in
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`view of Sasao, Amano, or Maekawa.
`
`50.
`
`The combination of Namikawa, Sasao, Amano, or Maekawa fails to render Claim
`
`1 of the ‘602 patent obvious under 35 U.S.C. § 103. Therefore, Namikawa also does not render
`
`claims 2—4 and 6 obvious in View of Sasao, Amano, or Maekawa.
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`IV.
`
`Summary of Conclusion Regarding Ground C
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`51. Namikawa in view of Sasao or any of the other references asserted in Ground C
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`does not render claims 1-4 and 6 as obvious because, Namikawa, the baseline reference, does
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`not disclose all the requirements of Claim 1 entirely and none of the references disclose the
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`missing requirements.
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`Specifically, Namikawa alone or in combination with the other
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`references fails to disclose each of at least two claim limitations: (1) "each of said monitor being
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`mounted at the junction of the sidewall and ceiling"; (2) "with the screen of the monitor
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`substantially flushed with the adjacent wall surface structure of the car"; and (3) "directed
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`obliquely downwardly towards the car seats."
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`13
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`52.
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`I declare that all statements made herein of my knowledge are true, and that all
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`statements made on information and belief are believed to be true, and that these statements
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`were made with the knowledge that willful false statements and the like so made are punishable
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`by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
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`Date:
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`éufig AL 205/
`
`Jack R. Long
`
`14
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