UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-00117
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`
`
`
`
`EXPERT DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`1
`
`KAWASAKI-1014
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-00117
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`
`
`
`
`EXPERT DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`1
`
`KAWASAKI-1014
`
`
`
`No. IPR2017-00117
`Expert Decl. of Lowell Malo
`
`
`I.
`
`1.
`
`2.
`
`INTRODUCTION
`
`I, Lowell Malo, have been retained by counsel for Kawasaki Rail Car, Inc.
`
`(hereinafter “Petitioner”).
`
`I submit this declaration in support of Petitioner’s Petition for Inter Partes
`
`Review of U.S. Pat. No. 6,700,602, No. IPR2017-00117.
`
`II. QUALIFICATIONS
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`I am currently Vice President of Engineering Services for RailPlan
`
`International Inc.
`
`I hold a Bachelor of Science degree in Aerospace Engineering from St.
`
`Louis University (awarded in December of 1971). I graduated first in my
`
`class.
`
`I have over 42 years of experience in the design of rail cars, including 20
`
`years of experience in the design of subway cars.
`
`Between 1983 and 1991, I was a Site Manager for the Southeastern
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`Pennsylvania Transportation Authority (SEPTA) and Viewliner Programs at
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`Amtrak.
`
`The SEPTA Program was a contract for 26 cars to be used on the
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`Norristown High Speed Line. The contract provided for a joint project
`
`between Amtrak and ABB Group (ASEA Brown Boveri), with the first cars
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`8.
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`9.
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`built in the Amtrak facility in Beech Grove, Indiana. The project was
`
`finished in ABB’s shop in Elmira, NY.
`
`As a Site Manager for the SEPTA Program, I established a $44 million
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`production effort to design and construct rapid transit rail cars for SEPTA. I
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`also wrote all engineering and quality assurance policies and procedures, and
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`directed 70% of the engineering and all of the purchasing and manufacturing
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`efforts.
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`The Viewliner Program focused on designing and building two sleeper cars
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`and one diner car as prototypes for an upcoming contract. The program was
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`wholly implemented by Amtrak, including the manufacturing of the three
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`cars at the Amtrak facility in Beech Grove, Indiana.
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`10. As a Site Manager for the Viewliner Program, I directed 60% of the
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`engineering and all of the manufacturing efforts to construct prototypes of
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`the Viewliner sleeper and diner cars for Amtrak, which was a $15 million
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`program. Construction and testing of these prototypes resulted in the
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`purchase of 50 additional cars.
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`11. Between September 1995 and December 1997, I was a Project Manager and
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`Vice President of Engineering at Colorado Railcar Manufacturing. I
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`directed all engineering and manufacturing efforts required to deliver luxury
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`passenger rail coach cars. In doing so, I directed a group of 35 engineering
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`personnel. The luxury passenger rail coach cars included double deck
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`sleeper, diner and lounge cars, and a 22,500 kW power car. One additional
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`unique railcar included 5 hot tubs and two massage rooms.
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`12. Between June 1998 and September 2005, I was a Director for Design
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`Engineering at ALSTOM Transportation, Inc. I had technical responsibility
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`for all phases of mechanical, electrical, and systems design for all projects
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`and research and development efforts in the ALSTOM, Hornell facility.
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`13. Between September 2005 and June 2008, I was Vice President of Product
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`Development and Vice President of Engineering at Colorado Railcar
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`Manufacturing. I represented Colorado Railcar in all matters pertaining to
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`the Federal Railroad Administration (FRA) as well as various industry
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`groups. I directed a group of over 30 engineers and designers in the design,
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`construction, and testing of various unique rail cars, including dome touring
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`cars and Diesel Multiple Unit (DMU) commuter cars. In addition to
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`directing the engineering effort on other projects, I personally managed the
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`effort to transform a “working prototype” double deck DMU and trailer car
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`into a fully CFR-compliant marketable product. This included an 11,000
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`pound weight reduction, a 9 dB reduction in noise, and re-design, analysis,
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`testing, and document preparation to meet the requirements of the Code of
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`Federal Regulations (CFR).
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`14. Between June 2008 and April 2011, I was Director of Engineering at
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`RailPlan International. I worked with a major rail car component supplier to
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`develop products for the U.S. market. This effort included designing,
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`manufacturing, and testing products to meet the U.S. expectations.
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`15. At RailPlan, I also led the U.S. portion of the technical effort to aid a car
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`builder in the preparation and presentation of a proposal for the design and
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`manufacture of passenger rail cars for Amtrak. During this process, in
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`addition to making sure that the proposal was technically correct in all
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`aspects, it was my responsibility to ensure that the car builder would meet all
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`federal, American Public Transit Association (APTA), and Amtrak
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`requirements throughout the life of the contract.
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`16. My resume more fully describes my background, education, and
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`professional experience. (See Ex. 1015).
`
`III. MATERIALS CONSIDERED
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`17.
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`I have reviewed the following:
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`a. U.S. Pat. No. 6,700,602 (“the ’602 Patent”) including the claims
`
`thereof;
`
`b. The translation of Japan Train Operation Association Magazine, Vol.
`
`37, issue no. 3 (March 1, 1995) (Ex. 1003, “JTOA Magazine”);
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`c. The translation of Japanese Publication No. 04-085379 (Ex. 1005,
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`“Namikawa”);
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`d. The translation of Japanese Publication No. 07-181900 (Ex. 1007,
`
`“Miyajima”);
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`e. The translation of Japanese Publication No. 04-322579 (Ex. 1011,
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`“Sasao”);
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`f. U.S. Patent No. 5,293,244 to Kawaguchi (Ex. 1022, “Kawaguchi”);
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`g. The translation of Japanese Publication No. 04-160991 (Ex. 1009,
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`“Maekawa”);
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`h. The translation of Japanese Publication No. 02-23985 (Ex. 1021,
`
`“Amano”);
`
`i. The file history of the ’602 Patent provided in Ex. 1012; and
`
`j. The reexamination file history of the ’602 Patent provided in Ex.
`
`1013.
`
`18.
`
`I understand the following references are prior art to all of the claims of the
`
`’602 Patent:
`
`a. JTOA Magazine;
`
`b. Namikawa;
`
`c. Miyajima;
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`d. Sasao;
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`19.
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`20.
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`e. Kawaguchi;
`
`f. Maekawa; and
`
`g. Amano.
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`In making my conclusions stated herein, while reviewing the materials listed
`
`in paragraph 17, I have applied the claim construction definitions applied by
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`Petitioner in its Petition for Inter Partes Review of U.S. Pat. No. 6,700,602,
`
`No. IPR2017-00117.
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`I understand that a claim is invalid for obviousness if the differences
`
`between the subject matter sought to be patented and the prior art are so
`
`insubstantial that the subject matter as a whole would have been obvious, at
`
`the time the invention was made, to a person having ordinary skill in the art
`
`to which that subject matter pertains.
`
`21. To the best of my understanding, my opinions regarding obviousness of the
`
`’602 Patent follow the legal principles contained in Graham v. John Deere,
`
`383 U.S. 1 (1966) and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`
`22. Generally, the ’602 Patent is in the field of interior design of rail cars, or
`
`more specifically, video display systems mounted and operated in mass
`
`transit subway cars.
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`23.
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`In the 1995-1997 timeframe, a person with ordinary skill in the art in the
`
`field of the ’602 Patent would have (1) a Bachelor’s Degree in Mechanical,
`
`Industrial, or Aerospace Engineering (or the practical experience equivalent
`
`to those degrees), and (2) an additional 2-3 years of experience in the design
`
`of rail cars.
`
`24.
`
`In forming the opinions that I express herein, I have adopted the perspective
`
`of a person of ordinary skill in the art, as described in paragraph 23 above.
`
`V. OPINIONS
`
`A. STATE OF THE ART
`
`25.
`
`In the early 1990s, great strides were being made in video display
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`electronics, principally in Japan. At this time, a transition from cathode ray
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`tube (“CRT”) technology to liquid crystal display (“LCD”) technology was
`
`in progress. LCD technology allowed much thinner displays that could be
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`flush mounted within walls, ceilings, or other areas where CRT technology
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`could not fit within the available space. Several Japanese engineers and
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`companies filed patents in the early 1990s that mounted electronic video
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`displays along the upper sides of rail cars to provide entertainment or
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`advertisement to the riding public. (See, e.g., Ex. 1003; Ex. 1005; Ex. 1007;
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`Ex. 1009; Ex. 1021). Namikawa and Miyajima are two such examples, with
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`Namikawa describing a subway car with multiple LCD screens for
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`broadcasting programming and commercials taken from broadcast media
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`such as cable television (Ex. 1005 at 6, Fig. 1), and Miyajima describing
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`multiple LCD displays conforming to the shape of a railcar for displaying
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`content to passengers (Ex. 1007 at 1, 3, Fig. 4). Amano is another example,
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`and discloses a vehicle with display devices and a transmitter for providing
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`content with a video playback function for playing content stored on a video
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`disk or videotape. (Ex. 1021 at 2-3, Figs. 2, 4-6). Maekawa is yet another
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`example, and discloses display devices for trains with television receivers
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`and antennas for receiving content to be displayed. (Ex. 1009 at 1, Figs. 1-
`
`2).
`
`26. American rail car specifications of the early 1990s required that the car
`
`interiors have “smooth” or “clean” surfaces. This requirement not only
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`enhanced aesthetics of the car interiors, but also conserved space, boosted
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`safety, facilitated cleaning, and prevented vandalism.
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`27. Achieving a “smooth” or “clean” surface required equipment to be installed
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`either flushed or substantially flushed with the adjacent wall or ceiling
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`panels. To accomplish this, the equipment was designed with a flat panel as
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`its front, and the main part of the equipment was mounted into the space
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`between the inner and outer walls of the rail car. The front panel was larger
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`than the equipment behind it, so the main equipment could go through the
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`space in the inner wall until the front panel came into contact with the inner
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`wall itself. As the front panel was relatively thin, the front of the panel and
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`the interior wall formed a substantially flushed surface.
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`28. Appendices A and B provide two examples of devices which achieved a
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`“smooth” or “clean” surface. Appendix A shows a fan speed control, which
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`was installed in Amtrak Viewliner rail cars in 1995. As can be seen, the fan
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`speed control had a thin front panel which was larger than the control behind
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`it. Thus, the control could go through the space in the inner wall until the
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`front panel came into contact with the inner wall itself.
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`29. Appendix B shows design drawings for a fluorescent light, which was
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`installed in Amtrak Viewliner rail cars in 1995. The design drawings
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`provided for a thin front panel for the fluorescent light and further showed
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`mounting the front panel on the inner wall of the rail cars.
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`30.
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`In the early 1990s, there were several pieces of equipment that were flush or
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`substantially flush mounted with the adjacent wall or ceiling panels. A non-
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`exhaustive list of such equipment which were flush mounted included
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`destination signs, consist signs, lighting, PA equipment, etc. (See also above
`
`at ¶¶ 28-29).
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`31. Flush or substantially flush mounting was at that time and still is considered
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`to be the norm in the rail industry. In fact, in 1995 and prior to the filing of
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`the’602 Patent, the FRA had begun working with industry representatives
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`and others to develop passenger equipment safety standards, which
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`ultimately led to a proposed rule in June 1996 that required interior fittings
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`of railcars (e.g., TVs) to be “recessed or flush-mounted.” (Passenger Equip.
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`Safety Standards, 61 Fed. Reg. 30672-01, 30672, 30707 (proposed June 17,
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`1996)). Specifically, on June 17, 1996, the FRA issued a notice which
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`announced the initiation of rulemaking on rail passenger equipment safety
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`standards for railcars under the FRA’s jurisdiction. (Id.). In this notice, the
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`FRA offered a set of sample design standards regarding various aspects of
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`railcars. (Id. at 30704-12). Concerning the structural design requirements,
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`and specifically, regarding the strength of attachment of interior fittings, the
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`agency proposed that “[t]o the extent possible, interior fittings shall be
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`recessed or flush-mounted.” (Id.). On September 23, 1997, the agency
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`proposed a rule establishing comprehensive safety standards for certain
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`railcars. (See 62 Fed. Reg. 49728-01 (proposed Sept. 23, 1997) (to be
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`codified at 49 C.F.R. § 238.233)). Paragraph (d) of proposed § 238.233,
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`Interior Fittings and Surfaces, provided that “[t]o the extent possible, all
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`interior fittings in a passenger car, except seats, shall be recessed or flush-
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`mounted.” (Id. at 49745). On May 12, 1999, the FRA issued its final rule
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`with that same “recessed or flush-mounted” requirement. (64 Fed. Reg.
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`25540-01, 25677 (May 12, 1999) (to be codified at 49 C.F.R. § 238.233)).
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`32. Amtrak designed and later built three prototype cars in 1987-1988 that
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`would become known as the Viewliner. In December of 1992, Amtrak
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`released the final purchasing specification for the design and manufacture of
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`50 Viewliner sleeper cars. The specification included requirements for an
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`audio-visual entertainment system. Amtrak purchased these cars from
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`Morrison-Knudsen (MK) in Hornell, NY, and the cars were built in 1995-
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`1996. To provide entertainment, an audio-visual system was installed in
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`each car. The system included a plurality (17) of television screens, one in
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`each room, and was wired to a central player containing two video and four
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`audio channels. Both audio and video channels contained not only full-
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`length programs but short commercials as well. Appendix C includes photos
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`of a television screen, which was installed in the Amtrak Viewliner rail cars
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`in 1995. Note that the fan speed control of Appendix A is also shown in the
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`first photo of Appendix C. As can be seen, the fan housing (i.e., the square
`
`assembly) and the fan speed control (i.e., the rectangular assembly) were
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`substantially flush mounted just below the television screen. Appendix D is
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`a design drawing of the user interface of the video entertainment control
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`panel. The design drawing of Appendix D was made in 1994. Appendix E
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`is the Specification for the Amtrak Viewliner I Entertainment System, which
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`was issued on March 1, 1991.
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`33. During the development of this video system, Amtrak was given the choice
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`of flush mounted or stand-alone mounted video monitors, and Amtrak chose
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`the stand-alone monitors. Due to a substantial theft problem, the audio-
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`visual system was subsequently removed.
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`34.
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`In summary, the technology to flush mount or substantially flush mount a
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`plurality of video screens in a passenger rail car that was tied to a central
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`player for the purpose of showing movies or short commercials to the riding
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`public existed prior to 1993, and would have been obvious to one of
`
`ordinary skill in the art at least as early as that date, and certainly by the May
`
`1997 filing date of the application that led to the ’602 Patent.
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`B. CLAIM 1
`
`35. Claim 1 of the ’602 Patent recites the phrase “video signal source unit
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`operatively connected to said monitors.” One of ordinary skill in the art
`
`would have understood in 1997 that Namikawa and Miyajima each
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`inherently discloses display screens operatively connected to a video signal
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`source unit. Namikawa, for example, describes LCD screens that can
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`display programming taken from cable television (Ex. 1005 at 6), and
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`Miyajima describes a “drive device” that provides content to the display
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`monitors (Ex. 1007 at 2-4). To the extent not expressly disclosed, it is my
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`opinion that Namikawa and Miyajima each render this limitation obvious in
`
`view of either Amano (which teaches a video disk player) or Maekawa
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`(which teaches a television receiver/antenna) and the knowledge of one of
`
`ordinary skill in the art in 1997.
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`36. Both Namikawa and Amano identify in their description of the prior art that
`
`advertisements in subway cars were typically printed material and therefore
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`static, and that it would be beneficial to display dynamic content to
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`passengers. (Ex. 1005 at 3, 4; Ex. 1021 at 1). Maekawa describes that it
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`was known to provide display content to passengers by providing televisions
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`on electric trains. (Ex. 1009 at 1). In view of their common goal for
`
`displaying electronic and dynamic content to passengers, it would have been
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`obvious to one of ordinary skill in the art in 1997 to combine the video disk
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`player of Amano with the video display system of Namikawa, or to combine
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`the television receivers of Maekawa with the video display system of
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`Namikawa. Namikawa teaches that having a rich variety of programming
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`contributes to the enjoyment of passengers, thereby improving customer
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`service. (Ex. 1005 at 8-9). The inclusion of a video signal source unit such
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`as a video disk player (as expressly disclosed in Amano) or a television
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`receiver/antenna (as expressly disclosed in Maekawa) to the system
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`disclosed in Namikawa were known ways to display desired content to
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`passengers. One of skill in the art would thus have had good reason in 1997
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`to add the video signal source unit described in either Amano or Maekawa to
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`Namikawa. Similarly, it would have been obvious to a person of ordinary
`
`skill in 1997 to employ the video signal source unit of either Amano or
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`Maekawa to Miyajima in order to achieve Miyajima’s goal of broadcasting
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`information to passengers.
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`37. Claim 1 of the ’602 Patent also recites the phrase “with the screen of the
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`monitor substantially flushed with the adjacent wall surface structure of the
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`car.”
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`38. As described above in paragraphs 26-34, flush mounting, or substantially
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`flush mounting interior fittings in railcars was well known, and actually used
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`in the rail industry, prior to May 1997. Thus, even if the screens of
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`Namikawa are deemed not to be substantially flushed, it would have been
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`obvious to a person of ordinary skill in 1997 to place Namikawa’s display
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`screens within the subway car’s walls such that they would be substantially
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`flushed with the adjacent surfaces. Similarly, even if the screens of
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`Miyajima are deemed not to be substantially flushed, it would have been
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`obvious to a person of ordinary skill in 1997 to place Miyajima’s display
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`39.
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`screens within the subway car’s walls such that they would be substantially
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`flushed with the adjacent surfaces.
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`In addition to the motivation provided by the general knowledge of one of
`
`ordinary skill in the art in 1997, Namikawa renders the limitation of “with
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`the screen of the monitor substantially flushed with the adjacent wall surface
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`structure of the car” obvious in view of Sasao, which is directed to “a
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`display device that is structured so as to be housed at the interior of a wall”
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`such that “only the front face of the image formation part can be seen from
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`within the room.” (Ex. 1011 at 2). Figures 3-4 of Sasao show how a
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`television is placed in a room behind a wall 15 such that the front of the
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`display screen 3a is flush with the adjacent wall surface 15a:
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`(Ex. 1011 at Figs. 3, 4).
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`40. Sasao describes that “[t]he screen 3 protrudes forward from the cabinet 12 so
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`that the front face 3a of the screen and the wall surface 15a in the room 14
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`are substantially flush.” (Ex. 1011 at 2) (emphasis added). This is done to
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`conserve space and to reduce the visual “noise factor” near the display
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`screen. (Id. (“In particular, as the cabinets of the aforementioned rear
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`projection televisions were normally large, they occupied a large amount of
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`space when set up in a room . . . . The presence of such cabinets reduced the
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`concentration of the viewer on the content of the images that were displayed
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`on the screen, such that the presence of the cabinet itself had a negative
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`impact, constituting what might be termed a noise factor.”)).
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`41. Namikawa too describes the motivation to conserve space inside a subway
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`car, and teaches the use of televisions in a “flat panel shape” so that “no
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`space inside the car is lost.” (Ex. 1005 at 6).
`
`42. The conservation of space, even inches worth, was a major motivation in the
`
`railcar industry at least as early as 1995. Thus, to the extent Namikawa’s
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`monitor screens are deemed not substantially flushed, one of ordinary skill
`
`would have been motivated in 1997 to modify their placement to be
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`“substantially flushed” with adjacent surfaces, as disclosed in Sasao, so that
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`additional space inside the car could be conserved.
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`43.
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`In addition to the conservation of space, there were at least four other
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`reasons to modify Namikawa by placing the screens substantially flushed
`
`with the adjacent surfaces.
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`44. First, such a modification would have resulted in a more aesthetically
`
`pleasing system. (See, e.g., Ex. 1022 at 4:20-23 (“Accordingly, the front
`
`surface of the panel 14 lays on the same level of the wall surface 17, thus
`
`giving favorable appearance.”)). Second, such a modification would have
`
`reduced the potential for vandalism. Third, such a modification would have
`
`made it easier to clean the screens and the adjacent surfaces. Fourth, prior to
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`1997, the FRA had proposed a rule requiring that interior fittings (e.g., TVs)
`
`in railcars be “recessed or flush-mounted.” (See above at ¶ 31).
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`45. Namikawa also renders the limitation of “with the screen of the monitor
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`substantially flushed with the adjacent wall surface structure of the car”
`
`obvious in view of the JTOA Magazine. The JTOA Magazine discloses a
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`subway car having LCD displays in the car interiors, where the display
`
`screens are flush with the adjacent surfaces:
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`(Ex. 1003 at 1).
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`46. The JTOA Magazine discloses that “[a]s an in-car guidance device, a nine-
`
`inch liquid crystal monitor is provided above the side doors in each car;
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`visually, they provide improved service by displaying the destination, the
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`type of train, the stations the train will stop at, and other information.
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`Consideration has been given to making this monitor easy to see from the
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`seats as well, by mounting on the lintel inspection cover, which is formed
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`from fiber-reinforced plastic (FRP), and tilting it at an angle of 30 degrees
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`from the vertical.” (Ex. 1003 at 4).
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`47. One of ordinary skill therefore would have been motivated in 1997 to
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`modify the placement of the monitor screens of Namikawa to be
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`“substantially flushed” with adjacent surfaces, as disclosed in the JTOA
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`Magazine, so that additional space inside the car could be conserved.
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`Furthermore, in addition to the conservation of space, there were at least
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`four other motivations to modify Namikawa by placing the screens
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`substantially flushed with the adjacent surfaces. (See above at ¶ 44).
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`48. Similarly, to the extent not already disclosed in Miyajima, it would have
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`been obvious to a person of ordinary skill to place the display screens within
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`Miyajima’s subway car’s walls such that the screens are substantially
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`flushed with the adjacent surfaces. Miyajima renders the limitation of “with
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`the screen of the monitor substantially flushed with the adjacent wall surface
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`structure of the car” obvious in view of Sasao, which is directed to “a
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`display device that is structured so as to be housed at the interior of a wall”
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`such that “only the front face of the image formation part can be seen from
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`within the room.” (Ex. 1011 at 2; see also above at ¶¶ 39-40).
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`49. As described above, the conservation of space was a major motivation in the
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`railcar industry as early as 1995. One of ordinary skill in 1997 therefore
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`would have been motivated to modify the placement of the monitor screens
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`of Miyajima to be “substantially flushed” with adjacent walls, as disclosed
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`in Sasao, so that additional space inside the car could be conserved. In
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`addition, there were at least four other reasons for one of ordinary skill in the
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`art in 1997 to modify Miyajima by placing the screens substantially flushed
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`with adjacent surfaces. (See above at ¶ 44).
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`50. Miyajima also renders the limitation of “with the screen of the monitor
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`substantially flushed with the adjacent wall surface structure of the car”
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`obvious in view of the JTOA Magazine. (See above at ¶¶ 45-46). The
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`conservation of space was a major motivation in the railcar industry at the
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`time of the alleged invention. One of ordinary skill in 1997 therefore would
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`be motivated to modify the placement of the monitor screens of Miyajima to
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`be “substantially flushed” with adjacent surfaces, as disclosed in the JTOA
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`Magazine, so that additional space inside the car could be conserved. There
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`were also at least four other motivations to modify Miyajima by placing the
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`screens substantially flushed with adjacent surfaces. (See above at ¶ 44).
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`C. CLAIM 2
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`51. Claim 2 of the ’602 Patent recites “[t]he subway car of claim 1 wherein the
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`video signal source system includes a pre-recorded video transmission
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`program for feeding to display on the monitors of duration about 5–15
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`minutes.” Namikawa renders this limitation obvious in view of Maekawa
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`and Amano. Miyajima also renders this limitation obvious in view of
`
`Maekawa and Amano.
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`52. Maekawa discloses, for use in trains, teletext broadcast programs “displayed
`
`at prescribed intervals,” which can be “stored in the memory (47) [and]
`
`displayed sequentially in a cycle of several minutes to several dozen
`
`minutes.” (Ex. 1009 at 6). Maekawa further states that although the
`
`embodiment described relates to teletext broadcast receiving equipment,
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`“image playback equipment such as a VTR may be provided, and playback
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`images and the teletext broadcast programs maybe be alternatingly
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`displayed.” (Id.).
`
`53. Amano similarly discloses, for use in trains, information for display that can
`
`include “text and image information or motion pictures stored on a video
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`disk or a videotape . . . .” (Ex. 1021 at 3). This stored information is
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`described as having been provided “in advance” to the transportation
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`vehicle. (Id.).
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`54. Furthermore, at the time of the alleged invention, content such as
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`commercials and dramas were far more likely to be delivered through cable
`
`television in a “pre-recorded” format as opposed to a “live” format. One of
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`skill in the art in 1997 would thus have good reason to use “pre-recorded”
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`content, as expressly taught by Maekawa and Amano, in the display system
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`of Namikawa or Miyajima.
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`55.
`
`In addition, at that time, a duration of about 5-15 minutes was a common
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`length of time for a passenger’s subway trip. (See, e.g., Ex. 1009 at 6 (“[I]n
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`the case of an electric train traveling as a local train in the city center, it will
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`stop for a few tens of seconds to one minute at a station in every two to three
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`minutes of travel . . . .”)). One of skill in the art in 1997 would thus have
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`good reason to use a video transmission program of “several minutes to
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`several tens of minutes,” as taught by Maekawa – which includes the
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`claimed “5-15 minutes in duration” – in the display system of Namikawa or
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`Miyajima to match this common length of time for a passenger’s subway
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`trip.
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`D. CLAIM 3
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`56. Claim 3 of the ’602 Patent recites “[t]he subway car of claim 1 wherein the
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`program is repeatable, and includes a series of commercial messages of 30
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`second–1 minute duration.” (Ex. 1001 at claim 3). Namikawa renders this
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`57.
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`limitation obvious in view of the knowledge of one of skill in the art.
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`Miyajima also renders this limitation obvious in view of the knowledge of
`
`one of skill in the art.
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`In 1995 (and even still today), it was well known that a common length of
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`time for a television commercial message was 30 seconds-1 minute.
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`58. With respect to either Namikawa or Miyajima, it would have been obvious
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`to include a “repeatable” program for the pre-recorded content disclosed in
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`Maekawa and Amano. Any program stored in memory or on a video disk is
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`“repeatable” because after the program completes playing once, it can be
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`played again.
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`E. CLAIM 4
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`59. Claim 4 of the ’602 Patent recites “[t]he video system subway car of claim 1
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`which is sound free.” (Ex. 1001 at claim 4). Namikawa renders this
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`limitation obvious in view of Amano, Maekawa, and the knowledge of one
`
`of skill in the art. Miyajima also renders this limitation obvious in view of
`
`Amano, Maekawa, and the knowledge of one of skill in the art.
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`60. By 1995, video display systems that were sound free or that otherwise could
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`be operated in “mute” mode were widely available, and known to people of
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`ordinary skill in the art.
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`61. By 1995, there were many subway systems in the United States where train
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`passengers were informed of the current stop and/or next stop from an
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`audible voice message from a train operator broadcasted over the train’s
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`audio address system. If a video display system in the subway cars played
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`sound, then passengers might have found it more difficult to hear the
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`announcements of the current stop and/or next stop and end up missing their
`
`intended stop. Furthermore, some passengers may be engaging in activities
`
`where they would not wish to listen to the sound of the video display
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`system, i.e., the passengers may be talking, listening to music via
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`headphones, or reading. The lack of sound from the video display system
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`could thus enhance the travel experience, comfort, and satisfaction of the
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`subway system’s customers.
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`62. Therefore, one of skill in the art in 1997 would have had good reason to
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`design a video display system for a subway car which is sound free.
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`VI. COMPENSATION
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`63. Although I am compensated for the time I work on this litigation, this
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`compensation is not dependent on the outcome of this proceeding.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
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`
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`Lowell Malo
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`Dated October 21, 2016
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`
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`26
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`APPENDIX A
`A fan speed control, which was installed in Amtrak Viewliner rail cars
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`27
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`28
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`APPENDIX B
`rail cars
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`
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`Design drawings for a fluorescent l
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