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
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE PURSUANT TO 37 C.F.R. § 42.23
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`TABLE OF CONTENTS
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`TABLE OF EXHIBITS ........................................................................................... ii
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`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
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`PO MISCHARACTERIZES THE ’602 PATENT ......................................... 3
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`III.
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`PO’S MISSTATEMENTS ABOUT THE PRIOR ART ................................ 4
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`A. Namikawa ............................................................................................. 4
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`B.
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`C.
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`Sasao ..................................................................................................... 7
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`Amano .................................................................................................. 7
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`D. Maekawa............................................................................................... 8
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`IV. CLAIM CONSTRUCTION ........................................................................... 8
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`A.
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`B.
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`C.
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`“substantially flushed” ......................................................................... 8
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`“video signal source unit” .................................................................... 8
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`“mounted” ............................................................................................ 9
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`V.
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`PO’S CRITICISMS OF PETITIONER’S EXPERT DECLARATION
`ARE UNWARRANTED ................................................................................ 9
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`VI. CLAIMS 1-4 AND 6 ARE UNPATENTABLE ON THE GROUNDS
`STATED IN THE DECISION ON INSTITUTION .................................... 11
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`A.
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`B.
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`C.
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`Scope and Content of the Prior Art .................................................... 12
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`Differences Between the Prior Art and the Claims at Issue ............... 15
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`Level of Ordinary Skill in the Art ...................................................... 17
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`D. Motivation to Combine ...................................................................... 19
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`E.
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`F.
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`Articulated Reasoning ........................................................................ 22
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`Reasonable Expectation of Success ................................................... 24
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`VII. CONCLUSION ............................................................................................. 25
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`CERTIFICATE OF WORD COUNT ..................................................................... 27
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`CERTIFICATE OF SERVICE ............................................................................... 28
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`i
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`TABLE OF EXHIBITS
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`Exhibit
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`U.S. Patent No. 6,700,602 (Issued March 2, 2004), Subway TV
`Media System (“’602 Patent”)
`
`Japan Train Operation Association Magazine, Vol. 37, issue
`no. 3 (March 1, 1995)
`
`Translation of Ex.-1002
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`Japanese Publication No. 04-085379
`
`Translation of Ex.-1004
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`Japanese Publication No. 07-181900
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`Translation of Ex.-1006
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`Japanese Publication No. 04-160991
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`Translation of Ex.-1008
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`Japanese Publication No. 04-322579
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`Translation of Ex.-1010
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`File history of ’602 Patent (“File History”)
`
`Reexamination file history of ’602 Patent (“Reexam File
`History”)
`
`Expert Declaration of Lowell Malo (“Malo Decl.”)
`
`Curriculum Vitae of Lowell Malo
`
`Declaration of Shuichi Matsuda
`
`Translation of Ex.-1016
`
`Certification from Japan National Diet Library Explaining
`Workflow Procedure in the Library
`
`ii
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`

`

`
`
`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`
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`Translation of Ex.-1018
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`Japanese Publication No. 02-223985
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`Translation of Ex.-1020
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`U.S. Patent No. 5,293,244
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`Certification from Japan National Diet Library Indicating
`Receipt Date of Japan Train Operation Association Magazine
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`Translation of Ex.-1023
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`Supplemental Expert Declaration of Lowell Malo (“Supp.
`Malo Decl.”)
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`Deposition Transcript of Jack Long
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`Long Deposition Exhibit 9
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`Long Deposition Exhibit 10
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`iii
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`I.
`
`INTRODUCTION
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`Patent Owner (“PO”) attempts to distinguish claims 1-4 and 6 of U.S. Patent
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`No. 6,700,602 (“’602 Patent”) over the prior art by arguing that they do not teach
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`or suggest: (1) monitors “mounted at the junction of the sidewall and ceiling”; (2)
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`screens “substantially flushed with the adjacent wall surface structure of the car”;
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`and (3) screens “directed obliquely downwardly towards seats.” (PO Scott Blair’s
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`Response (“Response”), 2, 42). PO mischaracterizes the cited references, because
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`they clearly disclose at least (1) and (3), and Petitioner has provided ample
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`evidence showing why a person of ordinary skill in the art (“POSITA”) would
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`have been motivated to place screens “substantially flushed” with the adjacent
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`surfaces of a railcar to arrive at the claimed combinations. Contrary to PO’s
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`assertions, doing so would not have been difficult, but well within the knowledge
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`and ability of a POSITA prior to the filing date of the ’602 Patent.
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`The central theme in PO’s argument appears to be that Sasao and Namikawa
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`cannot be physically combined with a reasonable expectation of success, because
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`Sasao allegedly pertains to different types of televisions and physical environments
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`than Namikawa, and a POSITA could not use the teachings of Sasao to modify
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`Namikawa to arrive at the claimed inventions. But this is the same argument that
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`the Board already rejected in its Decision on Institution. (Paper No. 11, 23-24
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`(“Patent Owner’s arguments… are based on the notion that a person of ordinary
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`
`
`1
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`

`

`
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`skill in the art would have attempted to install rear projection televisions in railcars
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`rather than simply apply Sasao’s teaching of flush-mounting television screens to
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`liquid crystal panels in railcars. The test for obviousness, however, is not whether
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`the features of a secondary reference may be bodily incorporated into the structure
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`of the primary reference. Rather, the test is what the combined teachings of the
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`references would have suggested to those of ordinary skill in the art. In re Keller,
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`642 F.2d 413, 425 (CCPA 1981).”)).
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`PO’s argument that screens in railcars were somehow an exception to the
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`proposed FRA rule requiring “interior fittings” to be “recessed or flush-mounted”
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`is wholly without merit, and ignores the actual definition for “interior fitting” in
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`the proposed rule. PO’s argument that a POSITA would have been at a loss to
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`figure out how to flush mount a flat screen with a curved portion of a railcar is
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`similarly meritless, and belied by the fact that ’602 Patent itself nowhere provides
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`any “practical suggestion” on how to do this that PO alleges is missing from the
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`prior art.
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`As set forth in the Petition and below, the combined teachings of Namikawa,
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`Sasao, Amano and Maekawa, along with the knowledge of a POSITA, render the
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`challenged claims unpatentable.
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`
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`2
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`II.
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`PO MISCHARACTERIZES THE ’602 PATENT
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`PO improperly attributes to the ’602 Patent the motivations that were
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`identified by Petitioner for flush-mounting screens in railcars prior to the filing of
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`the ’602 Patent. Specifically, PO asserts that the claimed invention “enhances the
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`aesthetics of the subway car interiors, but also conserves space, boosts safety,
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`facilitates cleaning, and prevents vandalism.” (Response, 1). But the ’602 Patent
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`nowhere mentions the benefits of boosting safety, facilitating cleaning, or
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`preventing vandalism. Moreover, as described by Petitioner’s expert, Mr. Malo,
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`all of these motivations were known in the art prior to the filing of the ’602 Patent,
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`and thus PO in effect is admitting that they qualify as motivations to combine the
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`cited references.
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`Throughout its Response, PO also argues that a POSITA would not know
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`how to flush mount a flat screen with a curved surface at the claimed “junction.”
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`(Response at 30). But claims 1-4 and 6 do not specify or require that the
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`“junction” be limited to any particular shape. Moreover, PO sets forth no specifics
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`on how to “flush” mount or “substantially flush” mount a flat screen with a curved
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`surface in the ’602 Patent itself, presumably because such details did not need to be
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`spelled out for a POSITA at the time of filing.
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`PO also mischaracterizes the ’602 Patent when he states that “[t]he screen of
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`the monitor is substantially flushed with the adjacent wall surface structure of the
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`
`
`3
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`

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`car disclosed at, inter alia, Col. 5, lines 40–42 of the Patent Owner’s
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`specification.” (Response, 3). The specification does not state that the screen of
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`the monitor is substantially flushed with the adjacent wall surface structure of the
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`car; instead, it states that the screen is substantially flushed with the curved light
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`panel 40:
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`An alternative embodiment is illustrated in FIG. 4A, a
`view similar to that of FIG. 4. In this alternative
`embodiment, CRT video monitor 22 is replaced with an
`LCD-based video monitor 22A which is of thin,
`rectangular cross-section, and occupies less space in the
`ceiling structure of the car. Accordingly, it can be moved
`towards the ceiling so that its viewing screen is
`substantially flush with or even behind the light panel 40.
`
`
`(Ex.-1001, 5:35-42, Fig. 4A) (emphasis added). As explained above, the patent
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`offers no suggestions on how to substantially flush mount a flat surface with a
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`curved one. Accordingly, all of PO’s arguments pertaining to the supposed
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`inability to flush a flat surface with a curved surface should be rejected.
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`III. PO’S MISSTATEMENTS ABOUT THE PRIOR ART
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`A. Namikawa
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`Relying on an embodiment showing a bus (instead of the Figure 1 railcar
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`embodiment relied upon by Petitioner), PO argues that Namikawa does not teach
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`screens at the “junction,” but instead teaches screens on a “wall.” This is
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`unsupported attorney argument that ignores Namikawa’s actual disclosure in
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`4
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`Figure 1. Tellingly, PO’s expert, Mr. Long, never opines that Namikawa does not
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`disclose screens at the junction.
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`PO also erroneously states that the Board “already recognized in its Decision
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`. . .[that] Namikawa does not disclose installing a substantially flushed screen at
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`the junction of the sidewall and ceiling of a subway car, but rather specifically
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`teaches externally mounted liquid crystal televisions.” (Response, 5). The Board
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`made no such finding. Instead, the Board merely stated that “Figure 1 does not
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`have sufficient information or detail to determine that the screens of the monitors
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`are substantially flushed with the adjacent wall surface.” (Paper No. 11, 15).
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`There is no basis for saying Namikawa’s screens are “externally mounted,” given
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`that the mounting structure and cables are not shown and a POSITA would have
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`understood the screens in Namikawa’s Figure 1 to be at the very least partially in
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`the cavity between the interior surface and the external shell of the railcar. (Ex.-
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`1025, ¶13).
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`PO argues that “[n]othing within the teachings of Namikawa teaches or
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`suggests the availability of space … at the junction of the sidewall and the ceiling
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`to allow for the screen of the monitor to be substantially flushed with the adjacent
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`wall surface structure of the car.” (Response, 6). This argument should be rejected
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`because in the 1995-1997 timeframe, a subway car was normally constructed such
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`that it had a cavity in between its interior wall and its exterior shell. (Ex.-1025,
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`5
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`¶10; Ex.-1026, 39:3-7). Such a cavity was important to allow space for the
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`inclusion of (a) thermal insulation, (b) sound deadening material, (c) wiring and
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`cabling, and (d) an array of structural members which could be used for the
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`mounting of interior equipment. (Id.). All of this was within the knowledge of the
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`POSITA in 1995-1997. Indeed, the ’602 Patent itself confirms this by stating that
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`“A subway car is normally constructed so that it has a cavity wall, defined between
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`its outer structural shell and its inner lining wall, the cavity providing for wiring
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`and cables and other mechanical functions, and, at places, containing insulation.”
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`(Ex.-1001, 55:59) (emphasis added). The last time the state of the art included
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`railcars that did not have a cavity in between the interior wall and exterior shell
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`was well before 1950. (Ex.-1025, ¶10).
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`Namikawa was published on July 24, 1992. (Ex.-1005, 1). Accordingly, a
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`POSITA in the 1995-1997 timeframe would have understood Figure 1 of
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`Namikawa to disclose a subway car having a cavity in between the interior wall
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`and the exterior shell. (Ex.-1025, ¶11). Contrary to the statements made by PO
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`and Mr. Long, a POSITA would have understood Figure 1 of Namikawa to
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`disclose a subway car having space beyond the wall, including the availability of
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`space beyond the wall at the junction of the sidewall and the ceiling to allow for
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`the screen of the monitor to be substantially flushed with the adjacent interior wall
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`surface structure of the car. (Id.).
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`
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`6
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`B.
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`Sasao
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`PO states that Sasao narrowly teaches a “modified rear projection television
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`. . . that is structured to be supported on the floor of an interior of a wall of a
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`room.” However, Sasao is more broadly directed to “a display device such as a
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`rear projection television, and in particular relates to a display device that is
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`structured so as to be housed at the interior of a wall.” (Ex.-1011, 2) (emphasis
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`added).
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`PO argues that Sasao does not disclose a “mounting system for a subway car
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`for flush mounting monitors at the normally curved junction between the subway
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`car’s side wall and a ceiling.” (Response, 7). This argument is irrelevant because
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`Ground C does not rely on Sasao for meeting the “mounted” limitations in the
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`claims. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
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`obviousness cannot be established by attacking references individually where the
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`rejection is based upon the teachings of a combination of references.”).
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`C. Amano
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`PO appears to argue that Amano does not teach or suggest monitors “being
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`mounted at the junction of sidewall and ceiling.” (Response, 9). But Figures 4-6
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`show embodiments in which the display devices 8 are in fact mounted at the
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`junction location (Ex.-1021, Fig. 4-6), and PO never argued during ex parte
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`
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`7
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`

`

`
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`reexamination that Amano does not meet this limitation. PO only argued that
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`Amano does not show screen “substantially flushed” with adjacent surfaces.
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`PO’s argument that Amano does not disclose the “substantially flushed”
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`limitations in the claims, (Response, 9), is irrelevant because Ground C does not
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`rely on Amano for meeting these limitations.
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`D. Maekawa
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`PO argues that Maekawa does not disclose the “junction,” “substantially
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`flushed,” or “obliquely downwardly” limitations in the claims. (Response, 9-10).
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`These arguments are irrelevant because Ground C does not rely on Maekawa for
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`meeting these limitations.
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`IV. CLAIM CONSTRUCTION
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`A.
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`“substantially flushed”
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`
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`For the purposes of this proceeding, both parties are applying the
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`construction used by the Board during ex parte reexamination.
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`B.
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`“video signal source unit”
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`As set forth in the Petition, the term “video signal source unit” is expressly
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`defined in the specification, and should be construed accordingly. (Ex.-1001, 2:15-
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`22, 26-34). PO states that the term “video signal source unit” should be given its
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`broadest reasonable construction in light of the specification (Response, 11), but
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`never states what that construction would be.
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`
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`8
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`C.
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`“mounted”
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`Petitioner does not believe that this term requires construction.
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`V.
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`PO’S CRITICISMS OF PETITIONER’S EXPERT DECLARATION
`ARE UNWARRANTED
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`PO argues that because Mr. Malo was employed by Alstom for seven years
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`that his testimony should be disqualified or given little weight because he cannot
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`opine from an “entirely independent point of view.” (Response, 12). But that is no
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`basis for doubting the credibility of Mr. Malo’s opinions. Mr. Malo was employed
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`by Alstom for only seven years during a 42-year career designing railcars. He was
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`last an employee at Alstom over 12 years ago. There is simply no basis for
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`doubting the veracity of his testimony.
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`PO also criticizes Mr. Malo for engaging in “impermissible hindsight.”
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`(Response, 12). This criticism is unfounded because Mr. Malo’s conclusions are
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`well-supported by the prior art and evidence about information known to a
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`POSITA prior to the filing of the ’602 Patent. Even if it were the case that the
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`cited prior art did not disclose a particular claim element (which is not the case
`
`here), such disclosure is not necessary to support a finding of obviousness. Nike,
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`Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (“A claimed invention
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`may be obvious even when the prior art does not teach each claim limitation, so
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`long as the record contains some reason why one of skill in the art would modify
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`the prior art to obtain the claimed invention.”).
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`
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`9
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`

`

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`PO disputes that flush-mounting was the norm in the rail industry by arguing
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`that Mr. Malo did not provide evidence as to the actual placement of the fan speed
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`control (Ex.-1014, Appx. A) in a railcar. (Response, 12). But, Mr. Malo both
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`describes and shows the placement of this fan speed control as flush-mounted
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`below the television screen. (Ex.-1014, ¶32, Appx. C). PO also argues that a
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`POSITA would not have been aware of “recessed or flush-mounted” video screens
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`in railcars. (Response, 16). But, Mr. Malo describes having offered the choice of
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`a flush-mounted screen to Amtrak back in the early 1990s, and further identifies
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`the JTOA reference as one example of flush-mounted screens in railcars. (Ex.-
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`1014 at ¶33).
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`PO then criticizes Mr. Malo for stating that a television is an “interior
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`fitting” under the FRA rules. (Response, 13). However, it is PO that is
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`deliberately ignoring the actual definition of “interior fitting” provided in the
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`proposed rules, and its expert could not confirm that he had even read that
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`definition prior to signing his declaration. (Ex.-1026, 31:3-13). In the September
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`23, 1997 proposed rule, “interior fitting” was defined as “any auxiliary component
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`in the passenger compartment which is mounted to the floor, ceiling, sidewalls, or
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`end walls and projects into the passenger compartment from the surface or surfaces
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`to which it is mounted.” (Ex.-1025, ¶18; Ex.-1028, 117). “[S]ide and end walls,
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`floors, door pockets, or ceiling lining materials” – but not televisions – were
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`
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`10
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`

`

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`expressly excluded from this definition. (Id.). Mr. Long even admits that a
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`television could be an “auxiliary component.” (Ex.-1026, 37:19-23). A POSITA
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`would have understood the term “interior fitting” as used in the FRA rules to
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`encompass a television mounted inside the railcar at any location. (Id.). PO’s
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`plethora of dictionary definitions for “fitting,” (Response, 15-16), should be
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`rejected as not sufficiently linked to the railcar industry, and as ignoring the actual
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`definition provided in the proposed FRA rule. There is simply no basis for PO’s
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`argument that a television in a railcar subject to the FRA jurisdiction would
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`somehow be excluded from the requirement of being “recessed or flush-mounted.”
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`PO also makes a variety of unsupported assertions about what a “savvy
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`buyer” would do when purchasing railcars. These should be rejected as mere
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`attorney argument. PO’s argument that Amtrak would effectively have no
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`“choice” between flush-mounted or stand-alone TVs if the proposed rules applied
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`to TV screens is nonsensical because the relevant proposed rule was proposed in
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`June 1996, which was long after Amtrak issued the final purchasing specification
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`for the Viewliner cars in 1992 and after those purchased railcars were already in
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`production. (Ex.-1014, ¶¶31-32).
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`VI. CLAIMS 1-4 AND 6 ARE UNPATENTABLE ON THE GROUNDS
`STATED IN THE DECISION ON INSTITUTION
`
`As demonstrated in the Petition, the combination of Namikawa, Sasao,
`
`Amano and Maekawa teaches the limitations of claims 1-4 and 6.
`
`
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`11
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`

`

`
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`A.
`
`Scope and Content of the Prior Art
`
`1.
`
`Namikawa
`
`PO argues that Namikawa discloses that its televisions are mounted on a
`
`“wall face” and therefore not mounted at the claimed “junction.” (Response, 18-
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`20). This argument should be rejected because prior art references need not use the
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`same terminology as the claim in order to render the claim unpatentable. In re
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`Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“These elements must be arranged as in
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`the claim under review, but this is not an ipsissimis verbis test.”). The fact that
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`Namikawa refers to the curved portion where the televisions are mounted as the
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`“wall face” does not somehow mean that it is not the claimed “junction.” (Ex.-
`
`1025, ¶13).
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`The conclusion that Namikawa discloses televisions mounted at the
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`“junction” of the sidewall and ceiling is immediately apparent to a POSITA from
`
`looking at Figure 1 of Namikawa, reproduced below:
`
`
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`12
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`

`

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`
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`(Ex.-1025, ¶13). Indeed, PO’s own expert Mr. Long testifies that “[i]t would be
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`clear to one of ordinary skill in the art that the ‘junction of the sidewall and the
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`ceiling’ in a subway car is not a single point, but an area between the ceiling and a
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`sidewall that is curved.” (Ex.-2004, ¶24; Ex.-1027). PO cannot explain how,
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`under the definition of “junction” provided by its own expert, the televisions of
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`Namikawa are not mounted at the junction. Tellingly, nowhere in Mr. Long’s
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`declaration does he actually opine that Namikawa’s televisions are not mounted at
`
`the claimed “junction” of the sidewall and ceiling. (Ex.-2004). Accordingly, a
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`POSITA would understand Figure 1 of Namikawa to be disclosing televisions
`
`mounted at the “junction” of the sidewall and ceiling. (Ex.-1025, ¶14).
`
`
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`PO also argues that Figure 1 of Namikawa “lacks the detail to disclose the
`
`placement of the monitor, let alone the mounting.” (Response, 20). This argument
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`should be rejected because prior art references are not viewed in a vacuum and
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`13
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`

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`need not spell out every detail; rather, a disclosure must be viewed for what it
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`teaches or suggests to a POSITA. Amgen Inc. v Hoechst Marion Roussel, 314 F.3d
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`1313, 1357 (Fed. Cir. 2003) (Under § 103, however, a reference need not be
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`enabled; it qualifies as prior art, regardless, for whatever is disclosed therein.”)
`
`PO argues that Namikawa does not disclose the “substantially flushed”
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`limitation of the claims. (Response, 20). This argument is irrelevant because
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`Ground C relies on Sasao, and the knowledge of a POSITA, for the disclosure of
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`these limitations. See In re Merck, 800 F.2d at 1097. PO repeats the argument
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`concerning “space beyond the wall,” which as discussed above in Section III.A,
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`should be rejected. (Response, 20).
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`2.
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`Sasao
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`
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`PO cannot dispute that Sasao teaches a screen that protrudes forward “so
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`that the front face 3a of the screen and the wall surface 15a in the room 14 are
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`substantially flush.” (Ex.-1011, ¶10).
`
`
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`PO argues that Sasao’s disclosure is limited to a rear projection television.
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`(Response, 21). However, Sasao discloses that “an ordinary television having a
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`CRT may serve as the image formation part.” (Ex.-1004, 3; Ex.-1025, ¶12).
`
`Indeed, Sasao is directed towards “display devices” more generally as Sasao states
`
`that “[t]he present invention relates to a display device such as a rear projection
`
`television, and in particular relates to a display device that is structured so as to be
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`
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`14
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`

`

`
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`housed at the interior of a wall.” (Ex.-1004, 2; Ex.-1025, ¶12). Accordingly,
`
`Sasao is not limited to only rear projection televisions. (Ex.-10125, ¶12); EWP
`
`Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference
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`must be considered for everything it teaches by way of technology and is not
`
`limited to the particular invention it is describing and attempting to protect. On the
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`issue of obviousness, the combined teachings of the prior art as a whole must be
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`considered.”). Moreover, there is nothing in Sasao that would preclude its
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`teachings from applying to display devices housed at the interior of non-vertical or
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`angled surfaces.
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`3.
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`Amano and/or Maekawa
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`
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`PO’s arguments regarding “substantially flushed,” “mounted at the
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`junction,” and “directed obliquely downwardly” limitations are irrelevant because
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`Ground C does not rely on Amano or Maekawa for those claim limitations. See In
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`re Merck, 800 F.2d at 1097.
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`B. Differences Between the Prior Art and the Claims at Issue
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`1.
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`Claim 1
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`PO argues that each of Namikawa, Sasao, Amano, and Maekawa differs
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`from the claims at issue because they are missing claim limitations. These
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`arguments should be rejected because non-obviousness cannot be established by
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`attacking these references individually when Ground C is based on a combination
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`of their teachings. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
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`1986) (“Non-obviousness cannot be established by attacking references
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`individually where the rejection is based upon the teachings of a combination of
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`references.”).
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`2.
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`Claims 2-4 and 6
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`
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`With respect to claims 2, 3, and 6, PO makes no arguments for patentability
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`over the prior art other than those applicable to claim 1. (Response, 28).
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`
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`With respect to claim 4, PO argues that none of the prior art references
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`disclose a video system that is sound free. (Response, 28). This is incorrect.
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`Maekawa is directed to “a teletext broadcast receiving system for a mobile body …
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`such as [an] electric train[].” (Ex.-1009, 1). Teletext is sound free. Indeed,
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`Maekawa discloses that “the data for the prescribed teletext broadcast program
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`stored in the memory (47) in this manner is sequentially read out to the teletext
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`broadcast decoder (46) and formed into a video signal that displays the text,
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`graphics and the like as images.” (Ex.-1009, 4).
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`
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`Furthermore, as described in the Petition, video display systems that were
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`sound free or that otherwise could be operated in “mute” mode were widely
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`available, and known to POSITA. (Ex.-1014, ¶60). A POSITA would have had
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`good reason to design a video display system for a subway car which is sound free
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`because the lack of sound could enhance the travel experience, comfort, and
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`satisfaction of the subway system’s customers. (Id.).
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`C. Level of Ordinary Skill in the Art
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`PO argues that a POSITA would be unable to combine the teachings of
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`Namikawa and Sasao because they operate in different locations, environments and
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`orientations. (Response, 29). But these arguments misapply the law of
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`obviousness and have already been rejected by the Board in its Decision on
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`Institution (Paper No. 11, 23-24). See, e.g., In re Keller, 642 F.2d 13 at 425 (“[I]t
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`is not necessary that the inventions of the references by physically combinable to
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`render obvious the invention under review.”). Indeed, Mr. Long admits that he
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`believes Sasao and Namikawa would have to be capable of being physically
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`combined to render ’602 Patent obvious. (Ex.-1026, 24:3-19). This
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`misunderstanding of the law fundamentally undermines Mr. Long’s opinion of
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`non-obviousness.
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`PO’s statement that the “level of skill in the art, at the time of the invention,
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`was to floor support a television in a wall portion to achieve a substantially flush
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`mount (as in Sasao) or externally mount a television on top of a wall (as in
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`Namikawa, Amano, and Maekawa)” mischaracterizes the references and
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`unreasonably assumes that a POSITA would have been ignorant of anything other
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`than explicit statements in the references themselves. But “[a]n obviousness
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`determination is not the result of a rigid formula disassociated from the
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`consideration of the facts of a case. Indeed, the common sense of those skilled in
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`the art demonstrates why some combinations would have been obvious where
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`others would not.” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 05-1631
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`(Fed. Cir. 2007) (citation omitted).
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`As described in the declaration of Mr. Malo, a POSITA would have been
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`aware not only of the cited references (and their broader teachings), but also of the
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`myriad components that were being flush-mounted in railcars and other
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`environments (including but not limited to fan speed controls in Amtrak
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`Viewliners and display devices in the JTOA reference) and the proposed FRA
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`rules and other motivations for flush-mounting display devices in railcars. (Ex.-
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`1014, ¶¶28, 31, 32). A POSITA also would have known that railcars such as those
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`shown in Namikawa have a cavity between the interior wall and external shell for,
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`among other things, structural members to support interior equipment. (Ex.-1025,
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`¶¶10, 11).
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`PO argues that a POSITA “would not take the teachings of a monitor with a
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`screen that is adjusted forward to accomplish a flush mount in a flat sidewall (as in
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`Sasao) and expect to similarly mount the television at the curved junction of the
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`sidewall and the ceiling,” and that it would be “less expensive and technically
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`challenging” to externally mount a television on a wall than to remove a portion of
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`the junction to incorporate a substantially flushed and angled television screen.
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`(Response, 30, 32). However, Mr. Long admits that he made no attempt to
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`estimate the costs or specify what technical challenges would be required to
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`modify Namikawa to arrive at ’602 patent. (Ex.-1026, 41:21-43:24). PO merely
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`asserts in a conclusory fashion that it would somehow be difficult for a POSITA to
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`modify the curved surface in Namikawa to have a flat surface instead. To the
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`contrary, such a modification would have been well within the knowledge and
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`ability of a POSITA in the 1995-1997 timeframe. (Ex.-1025, ¶15; see also KSR,
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`550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary creativity,
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`not an automaton.”)). A POSITA could easily interchange curved structural pieces
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`with flat structural pieces in a railcar such as that shown in Namikawa. (Id.).
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`Furthermore, the widespread use of fiberglass at the junction of a sidewall and
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`ceiling in subway cars in 1995-1997 would have allowed a POSITA great
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`flexibility in modifying the shape of the junction to whatever suited his intended
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`purpose, such as the modification of a curved surface into a flat surface in order to
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`align surfaces to be substantially flushed. (Id.).
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`D. Motivation to Combine
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`PO argues that “[a] POSITA would not be motivated by the teachings of
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`Sasao to modify Namikawa to arrive at the claimed invention.” (Response, 31-33).
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`This argument should be rejected for two reasons.
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`First, Sasao teaches substantially flushing a television screen with a wall
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`surface to conserve space and to reduce the visual “noise factor” near the display
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`screen. (Ex.-1004, 2). Namikawa also describes the motivation to conserve space
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`inside a subway car, and teaches the use of televisions in a “flat panel shape” so
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`that “no space inside the car is lost.” (Ex.-1005, 6). Indeed, the conservation of
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`space, even inches worth, was a major motivation in the railcar industry in 1997.
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`(Ex.-1014, ¶42). A POSITA therefore would have been motivated in 1997 to
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`modify the placement of the monitor screens of Namikawa to be “substantially
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`flushed” with adjacent walls, as disclosed in Sasao, so that additional space inside
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`the car could be conserved. (Id.). PO’s argument that “Sasao is directed to
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`addressing a completely different problem that the ’602 patent” is irrelevant
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`because the problems addressed by Sasao and the ’602 Patent need not be the
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`same. Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012)
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`(“We have r