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 RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION
`
`BACKGROUND OF THE ‘602 PATENT
`A. The Invention
`B. The Claims
`
`OVERVIEW OF THE PRIOR ART
`A. Namikawa
`B. Sasao
`C. Amano
`D. Maekawa
`
`CLAIM CONSTRUCTION
`A. "substantially flushed"
`B. "video signal source unit"
`C. “mounted”
`
`V.
`
`STATEMENTS MADE BY PETITIONER'S EXPERT
`
`VI.
`
`PETITIONERS HAVE NOT SHOWN A REASONABLE
`LIKELIHOOD OF PREVILING ON ANY OF THE ASSERTED
`GROUNDS
`
`A.
`
`Ground C. Claims 1-4 and 6 are patentable over
`Namikawa in view of Sasao, Amano and Maekawa
`
`1. The scope and content of the prior art
`i.
`Namikawa
`ii.
`Sasao
`iii.
`Amano and/or Maekawa
`
`2. The differences between the prior art and the claims at issue
`i.
`Claim 1
`ii.
`Claims 2-4 and 6
`
`3. Resolving the level of ordinary skill in the pertinent art
`
`4. A POSITA would not have been motivated to combine
`Namikawa and Sasao to arrive at the claimed invention
`
`Page
`1
`
`2
`2
`3
`
`4
`4
`6
`8
`9
`
`11
`11
`11
`11
`
`11
`
`17
`
`17
`
`17
`17
`21
`22
`
`25
`25
`27
`
`29
`
`31
`
`

`

`5. The articulated reasoning to combine references
`lacks a rational underpinning
`
`6. There would not have been a reasonable expectation of
`success in combining the teachings of Namikawa and Sasao
`or any of the cited references in Ground C
`
`VII.
`
`INTER PARTES REVIEW PROCEEDINGS VIOLATE PATENT
`OWNER’SCONSTITUTIONAL RIGHTS
`
`VIII. CONCLUSION
`
`34
`
`39
`
`40
`
`42
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apotex Inc. v. Wyeth LLC, IPR 2014-00115, Paper 94, slip op. at 11 (Apr. 20, 2015) ……..…..31
`Cuozzo Speed Tech, LLC v. Lee, 136 S. Ct. 2131 (2016)..............................................................11
`Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992)………………………..28
`Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)………………………...………17
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)............................................................................20
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)……………………………………30, 38
`Oil States vs. Greene’s Energy Group, et al. Dkt. 16-712 (U.S. June 12, 2017)………………..41
`Plantronics, Inc. v. Aliph, Inc., 72A F. 3d 1343, 1354 (Fed. Cir. 2013)……………………...…40
`Proctor & Gamble Co. v. Teva Pharms. USA, Inc., 566 F. 3d 989, 994 (Fed. Cir. 2009)………31
`Redline Detection, LLC v. star Envirotech, Inc., IPR2013-00106, Paper No. 66
`(PTAB June 30, 2014)…………………………………………………………………………..38
`Shopkick, Inc. v. Novitaz, Inc., IPR2015-00279, Paper 7, slip op. at 26-30 (May 29, 2015)…....39
`Volkswagen Grp. Of Am., Inc. v. Velocity Patent LLC, IPR2015-00276, Paper 8
`(PTAB Jun. 1, 2015)…………………………………………………………………………..…30
`
`Other Authorities
`35 U.S.C. §261…………………………………………………………………………………..40
`37 C.F.R. §42.120………………………………………………..………………………………..1
`37 C.F.R. §42.20(c)………………………………………………………………………………40
`37 C.F.R. §42.1(d)……………………………………………………………………………….40
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`2004
`
`Description
`Supp. Declaration of Jack R. Long
`
`

`

`Pursuant to 37 C.F.R. § 42.120, Patent Owner Scott Blair submits this Response to the
`
`above-captioned Petition for Inter Partes Review of U.S. Patent No. 6,700,602 (the "'602
`
`patent") filed by Kawasaki Rail Car, Inc. (“Petitioner”).
`
`I.
`
`Introduction
`
`The Board should confirm the patentability of claims 1-4, and 6 of the '602 patent.
`
`Kawasaki Rail Car, Inc. ("Petitioner") has failed to demonstrate that any of claims 1-4, and 6 are
`
`obvious over Japanese Publication No. 04-085379 (Namikawa) in view of Japanese Publication
`
`No. 04-322579 (Sasao) in further view of Japanese Publication No. 04-160991 (Maekawa) and
`
`Japanese Publication No. 02-23985 (Amano). The petitioner has failed to show the combination
`
`of the prior art to disclose or suggest a video monitor system having each and every limitation
`
`of the Challenged Claims.1
`
`The claimed invention, having a priority date of May 7, 1997, provided an early solution
`
`to the nascent need for a subway car that has substantially flushed monitors mounted at the
`
`junction of the sidewall and the ceiling and directed obliquely downwardly toward the car seats,
`
`so that each video screen is readily visible to passengers in the subway car. This not only
`
`enhances the aesthetics of the subway car interiors, but also conserves space, boosts safety,
`
`facilitates cleaning, and prevents vandalism. The '602 patent also provides a novel source of
`
`extra revenue for a mass transit subway system, provides monitors that are viewable by
`
`substantially all riders in the car, and provides riders with something to focus their attention as
`
`it is inconvenient to open newspapers, magazines, or the like under crowded circumstances.
`
`The combination of prior art fails to teach or suggest, at least, a subway car video display
`
`1 Claims 1-4, and 6.
`
`1
`
`

`

`system wherein a plurality of video display monitors connected to a video source are spaced
`
`along opposite sides of a subway car (1) with the monitors being mounted at the junction of
`
`sidewall and the ceiling of the subway car; (2) with the screen of the monitor substantially
`
`flushed with the adjacent wall surface structure of the car; and (3) directed obliquely downward
`
`towards the car seats so that a person sitting in the seat located on the opposite side of the subway
`
`car has a direct line of sight with the monitor screen.
`
`The combination of references fails to teach or suggest monitors that are not only mounted
`
`at the junction of the sidewall and ceiling of the subway car but are also substantially flushed
`
`with the adjacent wall surface structure of the car and directed obliquely downwards. Before the
`
`invention of the '602 patent, it was not known to substantially flush the video screen of a video
`
`monitor to the adjacent wall surfaces of the mass transit cars whereby the video monitor was
`
`mounted at the junction of the ceiling and sidewall of the subway car and directed obliquely
`
`downward towards the car seats so that a person sitting in the seat located on the opposite side
`
`of the railroad car has a direct line of sight with the monitor screen. All the prior art taught other
`
`systems entirely. See also Supplemental Declaration of Jack R. Long in Support of Patent
`
`Owner’s Response (“Long Suppl. Decl.”) at ¶ 8.
`
`II.
`
`Background of The '602 Patent
`
`A. The Invention
`
`The '602 patent is directed to a subway car for mass transportation including
`
`longitudinal opposed sidewalls disclosed at, inter alia, FIGS. 1 A and 1B, as well as at FIG. 2,
`
`along with its accompanying disclosure of Patent Owner’s specification. The subway car includes
`
`a ceiling adjoining the sidewalls disclosed at, inter alia, FIG. 4a, along with its accompanying
`
`2
`
`

`

`disclosure at Col. 5, lines 35 — 49 of Patent Owner’s specification. The subway car also includes
`
`a video display system comprising a plurality of video display monitors each having a video
`
`screen disclosed at, inter alia, Col. 5, lines 35 — 49 and Col. 5, lines 4 — 7 of Patent Owner’s
`
`specification. The subway car further includes a video signal source unit operatively connected
`
`to the monitors disclosed at, inter alia, Col. 5, lines 4 — 7 of Patent Owner’s specification. The
`
`monitors are spaced along the length of the car on opposed sides thereof disclosed at, inter alia,
`
`Col. 1, lines 45 — 50 as well as at Col. 4, lines 57 — 59 of Patent Owner’s specification. Each of
`
`the monitors are mounted at the junction of the sidewall and ceiling disclosed at, inter alia, Col.
`
`3, line 67 — Col. 4, line 6 and Col. 4, lines 64 — 67 of Patent Owner’s specification. The screen
`
`of the monitor is substantially flushed with the adjacent wall surface structure of the car disclosed
`
`at, inter alia, Col. 5, lines 40 — 42 of Patent Owner’s specification. The screen of the monitor is
`
`further directed obliquely downwardly toward the car seats, so that each video screen is readily
`
`visible to passengers in the subway car disclosed at, inter alia, Col. 4, line 67 — Col. 5, line 4 of
`
`Patent Owner’s specification.
`
`The system also comprises a "video signal source unit" connected to the monitors. The
`
`"video signal source unit" consists of pre-recorded material for broadcasting on the screens such
`
`as news, advertisements, etc. It can be in the form of video disk players, CD-ROM players, and
`
`video tape players (Ex. 1001 at 2:15-42). See also Long Suppl. Decl. at ¶ 7.
`
`B.
`
`The Claims
`
`The '602 patent, titled, "Subway TV Media System" issued March 2, 2004 with 7 claims.
`
`On August 16, 2011 an ex parte reexamination of the '602 patent was instituted in response to
`
`counsel for the Petitioner of the within action presenting prior art to the Patent Owner and the
`
`3
`
`

`

`Patent Owner submitting a request for a Reexamination to the USPTO. After an appeal to the
`
`Patent Trial and Appeal Board, an Ex Parte Reexamination Certificate issued on January 29, 2015
`
`confirming claim 1 and adding claims 8-29 which were determined to be patentable. Claims 2-7
`
`were not reexamined.
`
`Petitioner Kawasaki presented prior art, which was the basis for the ex parte reexamination.
`
`Patent Owner successfully received confirmation of the claims and now Petitioner is attempting to
`
`present substantially similar prior art in an attempt to get a second bite at the apple before the
`
`Patent Trial and Appeal Board. In the within matter, Petitioner challenged only a subset of claims
`
`1-29 as unpatentable. Specifically, Ground A asserted claims 1 and 6 are unpatentable, Ground B
`
`asserted Claims 1 and 6 are unpatentable, Ground C asserted claims 1-4 and 6 are obvious, Ground
`
`D asserted claims 1-4 and 6 are obvious, Ground E asserted claims 1-4 and 6 are obvious and
`
`Ground F asserted claims 1-4 and 6 are obvious. The Board decided to institute Ground C alone.
`
`III. Overview of the Prior Art
`Ground C of Kawasaki Rail Car’s petition relies on a ground of invalidity based on
`
`various combinations of four primary references, Japanese Publication No. 04-085379
`
`(Namikawa), Japanese Publication No. 04-322579 (Sasao), Japanese Publication No. 04-
`
`160991 (Maekawa), and Japanese Publication No. 02-23985 (Amano).
`
`A. Namikawa
`Namikawa teaches externally mounted liquid crystal televisions that are located on a
`
`wall face above each seat. See Namikawa p. 6 describing Fig. 1, "a plurality of liquid crystal
`
`televisions 12 are disposed along the direction of travel on a wall face above each seat 11
`
`inside car 10. The liquid crystal television is assembled in a mounting position…”
`
`4
`
`

`

`Thus Namikawa teaches a liquid crystal television mounted on the wall. As will be
`
`explained in detailed below, the Board has found that a monitor on top of the surface of the
`
`car is not substantially flushed against the car surface. Patent Owner’s Preliminary Response
`
`(“Paper 6.”) at pp. 3 and 4.
`
`However, as the Board had already recognized in its Decision (Paper 11 at p. 15),
`
`Namikawa does not disclose installing a substantially flushed screen at the junction of the
`
`sidewall and the ceiling of a subway car, but rather specifically teaches externally mounted
`
`liquid crystal televisions. Fig. 2 of Namikawa clearly shows the monitors are externally
`
`mounted and do not have screens substantially flushed against the wall surface. See also Long
`
`Suppl. Decl. at ¶ 9.
`
`5
`
`

`

`Nothing within the teachings of Namikawa teaches or suggests the availability of space
`
`beyond the wall, let alone the availability of space beyond the wall at the junction of the sidewall
`
`and the ceiling to allow for the screen of the monitor to be substantially flushed with the adjacent
`
`wall surface structure of the car. See also Long Suppl. Decl. at ¶ 10.
`
`B.
`
`Sasao
`
`Sasao teaches a modified rear projection television in an ordinary residential or
`
`commercial building (See Sasao [0010]) that is structured to be supported on the floor of an
`
`interior of a wall of a room. See Sasao Figs. 1, 2, 3 and 4.
`
`More particularly, Sasao teaches [0010] "the screen 3 protrudes forward from the
`
`cabinet 12 so that the front face 3a of the screen and the wall surface 15a in the room 14 are
`
`substantially flush" and "a screen 3 is positioned further forward than that of the rear
`
`projection television 1 shown in Fig. 1 by a distance (D1-D2) (for example, 15 mm) and
`
`therefore the electronic components and optical components service to form a clear color
`
`image on the front face 3a of this screen are disposed so as to be shifted forward by the
`
`necessary distance (for example 15 mm)."
`
`6
`
`

`

`Sasao teaches modifying the monitor to jut out, so as to be positioned forward that of
`
`the television. Sasao also teaches a frame member 22 and 24 which constitutes as effective
`
`part of the interior design of the room. See Sasao [0016]. The frame member is not
`
`substantially flush with the adjacent wall surface and covers a gap between the main display
`
`unit and the edge of the opening. See Sasao Figure 6 and abstract. See also Long Suppl.
`
`Decl. at ¶ 11.
`
`The solution provided by Sasao is to place a floor supported television behind a wall
`
`in an ordinary room so that the screen of the television extends through the wall thickness to
`
`be located substantially flush with the room wall with a frame of sufficient width placed
`
`around its periphery to cover the wall opening. Id. at [0010]. It nowhere teaches or suggests
`
`any mounting system for the monitor, let alone a mounting system for a subway car for flush
`
`mounting video monitors at the normally curved junction between the subway car’s side wall
`
`and a ceiling. See also Long Suppl. Decl. at ¶ 13.
`
`7
`
`

`

`C. Amano
`
`Amano teaches screens of monitors being located quite some distance away from the
`
`surface structure of the car. The Patent Trial and Appeal Board has found, "Amano's Figures
`
`4-6 cited by the Examiner, especially looking at the side views of the drawings show the
`
`screens of the monitors being located at quite some distance away from the surface structure
`
`of the car, and thus, not being reasonably "substantially" or to a great extent flushed against
`
`the surface (see e.g., Amano's Figure 4 reproduced below)." Ex. 2001, page 5. Patent
`
`Owner’s Preliminary Response (“Paper 6.”) at Page 7.
`
`Amano Fig. 4
`
`8
`
`

`

`Amano Fig. 6
`
`Amano teaches a monitor that is mounted on the ceiling and/or to the luggage rack. More
`
`particularly, the invention teaches a system of installed screens which are externally mounted at
`
`locations away from any adjacent wall surface structure of the car. Thus, Amano also does not
`
`teach a system wherein the screens are “substantially flushed” with the wall adjacent surface. See
`
`also Long Suppl. Decl. at ¶ 14. Also, Amano does not teach or suggest each monitor being
`
`mounted at the junction of the sidewall and ceiling, with the screen of the monitor substantially
`
`flushed with the adjacent wall surface structure of the car. See also Long Suppl. Decl. at ¶ 15.
`
`D. Maekawa
`
`Maekawa teaches a monitor mounted on a sidewall of a train. Again, the monitor is not
`
`9
`
`

`

`mounted at the junction of the sidewall and ceiling, is not substantially flushed with the
`
`adjacent wall surface structure of the car, and is not directed obliquely downwardly toward
`
`the car seats. Patent Owner’s Preliminary Response (“Paper 6.”) at Pages 7 and 8.
`
`Similar to Namikawa’s system, Maekawa implements a teletext broadcast receiving
`
`system for a mobile body such as trains (Ex. 1009 at 1). It also discloses that the televisions that
`
`are installed are thin LCD paneled screens (Ex. 1009 at 2). A POSITA would also understand
`
`that Maekawa’s system does not disclose televisions installed at the junction of the sidewall and
`
`the ceiling of a subway car with their screens substantially flushed with the adjacent wall surface
`
`and their screens directed obliquely downwards to the subway car’s seats. Maekawa teaches
`
`monitors installed on top of a sidewall and not substantially flushed. See also Long Suppl. Decl.
`
`at ¶¶ 17-19.
`
`10
`
`

`

`IV. CLAIM CONSTRUCTION
`
`A.
`
`"substantially flushed"
`
`During reexamination of the '602 patent, the Board construed "substantially flush" to mean
`
`"a surface which is to a great extent even with an adjoining one. " Ex. 1013, p. 479. See also Long
`
`Suppl. Decl. at ¶ 27.
`
`B.
`
`"video signal source unit"
`
`The term "video signal source unit" in the '602 patent should be given its broadest
`
`reasonable construction in light of the specification. A claim interpreted during an IPR proceeding
`
`should be given its broadest reasonable construction in light of the specification of the patent.
`
`Cuozzo Speed Tech, LLC v. Lee, 136 S. Ct. 2131, 2146, 195 L. Ed. 2d 423 (2016).
`
`C.
`
`“mounted”
`
`The term “mounted” should be construed to mean “attached to a support.”2 See also
`
`Long Suppl. Decl. at ¶ 28.
`
`V.
`
`STATEMENTS MADE BY PETITIONER'S EXPERT
`
`As previously contended, it is submitted that the Expert's testimony is not independent and
`
`is in fact biased. Patent Owner is currently suing Alstom Transportation, Inc. and Kawasaki Rail
`
`Car, Inc. for infringement of the '602 patent. The expert, Lowell Malo, states in paragraph 12
`
`that he worked for Alstom for 7 years. Based on this objective fact alone, Patent Owner submits
`
`that it is very unlikely that Petitioner's Expert could have opined on the '602 patent from an
`
`2 https://www.merriam-webster.com/dictionary/mounted Accessed July 23, 2017.
`11
`
`

`

`entirely independent point of view. His testimony should be disqualified or at least given very
`
`little value as being biased.
`
`Still further, the Malo Declaration appears to be a prime example of impermissible
`
`hindsight. Mr. Malo states therein that flush mounting of monitors was well known by May
`
`1997. See Petition for Inter Partes Review ("Petition"), Ex. 1015 at ¶ 26. This ignores that none
`
`of the prior art shows a plurality of video display monitors each having a video screen… each of
`
`said monitor being mounted at the junction of the sidewall and ceiling, with the screen of the
`
`monitor substantially flushed with the adjacent wall surface structure of the car, and directed
`
`obliquely downwardly toward the car seats. Exhibit 2002, Declaration of Jack R. Long, ¶ 32.
`
`Paragraphs 27-30 of the Malo Declaration mention "fan speed control," "fluorescent light,"
`
`"PA equipment," "destination signs," and the like, to assert that these devices or equipment were
`
`amenable to flush-mounting. Appendices A and B in the Malo Declaration show two such
`
`devices, but without any evidence of their actual placement in a rail car. Based on the examples
`
`of such unrelated devices, Mr. Malo attempts to subtly convince the reader that the flush-
`
`mounting of the screen of a video display monitor—as required in claim 1 of the '602 patent—
`
`would have been obvious in the early 1990's. The Malo Declaration uses the highly-general
`
`terms like "devices" and "equipment" in paragraphs 27-30, but fails to provide a single example
`
`of any reference that refers to a video monitor as a fitting or teaches locating a flush-mounted
`
`video screen at the junction of the ceiling and sidewall of a rail car or how to do it.
`
`In the first sentence of paragraph 31, the Malo Declaration broadly asserts that, "Flush or
`
`substantially flush mounting was at that time and still is considered to be the norm in the rail
`
`industry." (Emphasis added). This conclusion carefully omits mentioning the flush-mounting of
`12
`
`

`

`a video screen at the junction between the sidewall and ceiling of a subway car because, as
`
`discussed herein, none of the cited references show, teaches, or suggests the claimed flush-
`
`mounted video monitor system. Indeed, the FRA rule-related discussion in the Malo Declaration
`
`fails to support this proposition as well. If it had been a "norm in the rail industry," there would
`
`have been at least one reference showing or remotely mentioning this kind of placement.
`
`The highly-selective evidence proffered by Mr. Malo is understandable because the
`
`"norm" (in the first sentence of paragraph 31 of his Declaration) or trend—as exemplified by the
`
`FRA rule-making discussed in paragraph 31—was to have "interior fittings" recessed or flush-
`
`mounted. The examples given in paragraphs 27-30 (and mentioned above) are examples of such
`
`"interior fittings," and, hence, one skilled in the art would have surely known to install such
`
`fittings in a recessed or flush-mounted manner. However, the screen of a television or video
`
`monitor is not a "fitting" (as explained below) and, hence, prior to 1997 (the filing year of the
`
`'602 patent), it would not have been obvious to flush-mount it at the junction of the ceiling and
`
`a sidewall of a rail car. Exhibit 2002, ¶ 33.
`
`Patent Owner asserts that Mr. Malo's views in paragraphs 31 and 33 render the Malo
`
`Declaration internally inconsistent. In paragraph 31, the Declaration mentions that starting in
`
`1995 the FRA began working on a rule that required interior fittings of railcars to be "recessed
`
`or flush-mounted." Although the rule was finalized in 1999,
`
`this requirement remained
`
`unchanged. See Petition, Ex. 1015, ¶ 31. In paragraph 31, the Declaration mentions TVs as
`
`examples of such "interior fittings," without providing any citation to the FRA rule(s) where a
`
`"fitting" is defined to include televisions or video monitors. This is a blatant cognitive leap, of
`
`course driven by hindsight in view of the disclosure in the '602 patent. However, ignoring this
`
`13
`
`

`

`defect for the time being, the Patent Owner submits that this position by the Expert clearly
`
`contradicts the assertions in paragraph 33 of the Declaration, as explained below.
`
`A rail car is a specialized and expensive product; its manufacturer and its purchaser are
`
`savvy business entities. Assuming, arguendo, that a TV was indeed considered by a POSITA to
`
`be a fitting for the purposes of FRA rules (and it is not), then a rail car manufacturer and a rail
`
`car purchaser both would be aware of this aspect and also would be aware of the FRA rule-
`
`making process. Thus, it is reasonable to observe that, as a sound business practice, even if a
`
`manufacturer builds a rail car prior to the finalization of the FRA rule in 1999, the manufacturer
`
`would still make the car compliant with the requirements of the upcoming rule because doing
`
`otherwise may make the cars non-compliant with the eventual rule or may require the car-buyer
`
`to re-model the car to make it compliant with the rule. The savvy buyer would insist the same to
`
`avoid any potential liability of non-compliance with the upcoming FRA rules. Thus, if a TV is
`
`considered a "fitting" (as inaccurately asserted by the Expert) and if the FRA rule is eventually
`
`going to require the fitting to be "recessed or flush-mounted," then it is inconceivable that a
`
`prudent rail car manufacturer would give Amtrak "the choice of flush-mounted or stand-alone
`
`mounted video monitors." Petition, Ex. 1015, ¶ 33 (Emphasis added). There would be no such
`
`"choice" if the FRA rule indeed required (or was going to require) flush-mounting of TVs or
`
`video monitors. Because of this "choice," the television screen shown in Appendix C of Mr.
`
`Malo’s Declaration is not flush-mounted, but just placed as a protruding swivel mounted
`
`monitor. Furthermore, the location of the placement is not at the junction of the ceiling and a
`
`sidewall of the rail car.
`
`The inconsistency between paragraphs 31 and 33 can only be reconciled when the Expert's
`
`14
`
`

`

`cognitive leap of interpreting the term "fitting" to include a TV is rejected. Once the Expert's
`
`definition of a "fitting" is rejected, all of the discussion in paragraphs 26-34 of Mr. Malo’s
`
`Declaration would make sense because the term "interior fitting" in the FRA rule must have been
`
`referring to the "fan speed control," "fluorescent light," "PA equipment," "destination signs,"
`
`and the like, which are mentioned in paragraphs 27-30 of Mr. Malo’s Declaration. Furthermore,
`
`such an interpretation would be consistent with the ordinary and customary meaning of the term
`
`"fitting," as understood by one skilled in the art. The following dictionary definitions are two
`
`examples:
`
`(1)
`
`www.vocabulary.com (accessed on Nov. 3, 2016). [Note: This is the website used
`
`by the Board to interpret
`
`the claim term "flush" in its opinion in the earlier ex parte
`
`reexamination.]
`
`On this website, the term "fitting" is described as "a small and often standardized accessory
`
`to a larger system." The website gives the following examples of a "fitting," none of which
`
`mentions a television or a video monitor as a "fitting."
`
`(i)
`
`gas fitting: the fitting (pipes or valves or meters) that convey gas from the gas
`
`main to the gas fixtures of a building
`
`(ii)
`
`pipe fitting, pipefitting: fitting consisting of threaded pieces of pipe for joining
`
`pipes together
`
`(iii)
`
`receptacle: an electrical (or electronic) fitting that is connected to a source of
`
`power and equipped to receive an insert
`
`15
`
`

`

`(iv)
`
`outlet box (electricity): receptacle consisting of the metal box designed for
`
`connections to a wiring system
`
`(v)
`
`reducer: pipefitting that joins two pipes of different diameter
`
`(vi)
`
`expansion slot, slot (computer): a socket in a microcomputer that will accept a
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`plug-in circuit board
`
`(vii)
`
`socket: a receptacle into which an electric device can be inserted
`
`(viii) electric outlet, electric receptacle, electrical outlet, outlet, wall plug, wall socket:
`
`receptacle providing a place in a wiring system where current can be taken to run electrical
`
`devices
`
`(2)
`
`www.merriam-webster.com (accessed on Nov. 3, 2016).
`
`On this website, the term "fitting" is described as "a small often standardized part" (like
`
`an "electrical fitting") or "a small part that goes with something larger" (like a "pipe fitting").
`
`These definitions clearly establish that the Expert's interpretation of the term "fitting" is
`
`inaccurate and not supported by the dictionaries or traditional understanding of that term.
`
`Thus, from the discussion in paragraphs 26-34 of Mr. Malo’s Declaration, it is reasonable
`
`to conclude that, prior to 1997, one skilled in the art would have been aware of installing "interior
`
`fittings" (which would not include TVs or video monitors) in a rail car in a "recessed or flush-
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`mounted" manner, but the installation of a video screen in this manner—especially at the
`
`junction of the ceiling and a sidewall of a rail car—would not have been obvious. Long Suppl.
`
`Decl. at ¶ 43.
`
`16
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`

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`As discussed further below, the Board should deny Petitioner’s petition because Kawasaki
`
`Rail Car and its expert cannot conduct a proper obviousness analysis of the challenged claims.
`
`VI.
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`PETITIONERS HAVE NOT SHOWN A REASONABLE LIKELIHOOD OF
`PREVAILING ON ANY OF THE ASSERTED GROUNDS
`
`A.
`
`Ground C. Claims 1-4 and 6 are patentable over Namikawa in view of Sasao,
`Amano and Maekawa
`
`The combined teachings of Namikawa in view of Sasao, Amano and Maekawa do not
`
`suggest the modifications advanced by petitioner to a person of ordinary skill in the art.
`
`Therefore, Namikawa in view of Sasao, in further view of Amano or Maekawa still would not
`
`meet all the claim limitations of Claims 1-4 and 6. Long Suppl. Decl. at ¶50.
`
`As reiterated by the Supreme Court in KSR, the framework for the objective analysis for
`
`determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S.
`
`1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries.
`
`The factual inquiries enunciated by the Court are as follows: (1) Determining the scope and
`
`content of the prior art; (2) Ascertaining the differences between the claimed invention and the
`
`prior art; and (3) Resolving the level of ordinary skill in the pertinent art.
`
`(1)
`
`The scope and content of the prior art
`i.
`Namikawa
`
`The teachings of the Namikawa reference provide an externally mounted television on a
`
`wall. Namikawa does not teach or suggest "each of said monitor being mounted at the junction
`
`of the sidewall and ceiling; with the screen of the monitor substantially flushed with the adjacent
`
`wall surface structure of the car. "
`
`17
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`

`

`It is noted that the Board declined to comment as to Namikawa with respect to the claim
`
`limitation, "a plurality of video display monitors mounted at the junction of the sidewall and ceiling
`
`of a subway car." Petitioner relies on Namikawa for this teaching. Patent Owner submits that the
`
`only proper reading of Namikawa is a television mounted on a sidewall. It does not teach "a
`
`plurality of video display monitors mounted at the junction of the sidewall and ceiling of a subway
`
`car." Namikawa expressly, clearly and repeatedly provides throughout the disclosure that the
`
`monitor is externally mounted to a wall face inside a car of a transit bus, train or the like. See Page
`
`2 of the Namikawa translation lines 4-9. Namikawa provides, "Means for solving the Problems. In
`
`order to achieve the objective described above, the present device allows broadcasting of
`
`commercials or broadcast programming taken from broadcasting media by disposing a plurality of
`
`televisions on a wall face inside a car of a transit bus, electric train or the like. The plurality of
`
`televisions are disposed above the seats in the car." See Page 4 of the Namikawa translation lines
`
`18
`
`

`

`3-7. Namikawa also states, "A public transport vehicle characterized in that commercials or
`
`broadcast programming taken from broadcast media can be broadcast by disposing a plurality of
`
`televisions on a wall face inside a car of a transit bus, electric train, or the like.” Emphasis added.
`
`See Namikawa translation page 2, lines 4-6. Namikawa further states, "a plurality of liquid crystal
`
`televisions 12 are disposed along the direction of travel on a wall face above each seat 11 inside
`
`car 10. " Emphasis added. Namikawa translation page 6, lines 2-3. Namikawa further states, "A
`
`liquid crystal televisions 22 are disposed on a wall face above the window side of seats 21 in a car
`
`20 of a transit bus." Emphasis added. See Namikawa translation page 8, lines 3-4.
`
`Petitioner relies on Figure 1 of Namikawa to show that the liquid crystal televisions are
`
`mounted at the junction of the sidewall and the ceiling. Figure 1 is entirely silent as to where the
`
`monitor is mounted and the specification of Namikawa expressly provides throughout that it is
`
`19
`
`

`

`mounted on the sidewall. Still further, Figure 1 lacks the required detail to disclose the placement
`
`of the monitor, let alone the mounting. Figure 2 of Namikawa clearly shows the monitor on a
`
`sidewall and again lacks any detail as to where it is mounted. As stated by the Board, "The mere
`
`fact that a certain thing may result from a given set of circumstances is not sufficient" under
`
`anticipation principles. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added)
`
`(citations and internal quotation marks omitted). See Exhibit 2001, p. 4.
`
`The Board also agreed that Namikawa does not disclose the monitor screens substantially
`
`flushed with the adjacent wall surface structure of the car. (Paper 11 at p. 15-16) (“We are not
`
`persuaded that Namikawa sufficiently discloses the limitation "with the screen of the monitor
`
`substantially flushed with the adjacent wall surface structure of the car." Patent Owner asserts that
`
`the televisions shown in Namikawa's Figure 1 are externally mounted with the screens protruding
`
`from the mounting surface. Prelim. Resp. 25. Figure 1 does not have sufficient information or
`
`detail to determine that the screens of the monitors are substantially flushed with the adjacent wall
`
`surface. Petitioner, therefore, has not shown sufficiently that Namikawa discloses the limitation
`
`"with the screen of the monitor substantially flushed with the adjacent wall surface structure of
`
`the car." Accordingly, Petitioner has not made a sufficient showing that Namikawa discloses all
`
`the limitations of independent claim 1. The same would be true, therefore, with respect to claims
`
`2, 3, 4, and 6, which depends from claim 1. Thus, based on this record, we determine that
`
`Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that
`
`claims 1-4, and 6 are rendered obvious by Namikawa.”). See also Long Suppl. Decl. at ¶ 31.
`
`Still further, nothing within the teachings of Namikawa teaches or suggests the availability
`
`of space beyond the wall, let alone the availability of space beyond the wall at the junction of the
`
`20
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`

`

`sidewall and the ceiling to allow for the screen of the monitor to be substantially flushed with the
`
`adjacent wall surface structure of the car. Long Suppl. Decl. ¶ 10.
`
`ii.
`
`Sasao
`
`Sasao teache