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. IPR2017-01036
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`
`
`
`
`EXPERT DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`
`
`KAWASAKI-1015
`
`1
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-01036
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`
`
`
`
`EXPERT DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`
`
`KAWASAKI-1015
`
`1
`
`
`
`No. IPR2017-01036
`Expert Decl. of Lowell Malo
`
`
`I.
`
`1.
`
`2.
`
`INTRODUCTION
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`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. IPR2017-01036.
`
`II. QUALIFICATIONS
`
`3.
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`4.
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`5.
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`6.
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`7.
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`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 railcars, including 20
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`years of experience in the design of subway cars.
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`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.
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`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
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`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
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`finished in ABB’s shop in Elmira, NY.
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`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 railcars 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 railcars, 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 railcar 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 railcars 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. 1014).
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`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;
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`b. The translation of Japan Train Operation Association Magazine, Vol.
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`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,
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`“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,
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`“Amano”);
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`i. U.S. Patent No. 5,148,282 to Sedighzadeh (Ex. 1025, “Sedighzadeh”);
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`j. U.S. Patent No. 3,211,904 to Schwenkler (Ex. 1026, “Schwenkler”);
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`k. The translation of Japanese Publication No. 5-42853 (Ex. 1028,
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`“Yamada”);
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`l. The file history of the ’602 Patent provided in Ex. 1012; and
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`m. The reexamination file history of the ’602 Patent provided in Ex.
`
`1013.
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`18.
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`I understand the following references are prior art to all of the claims of the
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`’602 Patent:
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`a. JTOA Magazine;
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`b. Namikawa;
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`c. Miyajima;
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`d. Sasao;
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`e. Kawaguchi;
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`f. Maekawa;
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`g. Amano;
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`h. Sedighzadeh;
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`i. Schwenkler;
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`j. Yamada.
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`19.
`
`20.
`
`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,
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`No. IPR2017-01036.
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`I understand that a claim is invalid for obviousness if the differences
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`between the subject matter sought to be patented and the prior art are so
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`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
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`to which that subject matter pertains.
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`21. To the best of my understanding, my opinions regarding obviousness of the
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`’602 Patent follow the legal principles contained in Graham v. John Deere,
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`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
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`22. Generally, the ’602 Patent is in the field of interior design of railcars, or
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`more specifically, video display systems mounted and operated in mass
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`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,
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`Industrial, or Aerospace Engineering (or the practical experience equivalent
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`to those degrees), and (2) an additional 2-3 years of experience in the design
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`of railcars.
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`24.
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`In forming the opinions that I express herein, I have adopted the perspective
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`of a person of ordinary skill in the art, as described in paragraph 23 above.
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`V. OPINIONS
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`A.
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`STATE OF THE ART
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`25.
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`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
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`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 railcars 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, 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, 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, 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, 1, Figs. 1-2).
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`26. American railcar specifications of the early 1990s required that the car
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`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 railcar. 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 railcars 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 railcars 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 railcars. The light itself
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`30.
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`was placed in a housing, and there was a transparent cover unit in front of
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`the bulb facing the interior of the railcar.
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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, public address (“PA”) equipment,
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`etc. (See also above at ¶¶ 28-29). Such equipment was often placed within
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`an enclosure to protect the equipment from damage, facilitate flush-
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`mounting, and improve maintenance, replacement and repair. Protective
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`covers were also common.
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`31. Flush or substantially flush mounting of interior equipment was at that time
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`and still is considered to be the norm in the rail industry. In fact, in 1995
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`and prior to the filing of the ’602 Patent, the FRA had begun working with
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`industry representatives and others to develop passenger equipment safety
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`standards, which ultimately led to a proposed rule in June 1996 that required
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`interior fittings of railcars (e.g., TVs) to be “recessed or flush-mounted.”
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`(Passenger Equip. Safety Standards, 61 Fed. Reg. 30672-01, 30672, 30707
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`(proposed June 17, 1996) (attached as Appendix I)). Specifically, on June
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`17, 1996, the FRA issued a notice which announced the initiation of
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`rulemaking on rail passenger equipment safety standards for railcars under
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`the FRA’s jurisdiction. (Id.). In this notice, the FRA offered a set of sample
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`design standards regarding various aspects of railcars. (Id., 30704-12).
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`Concerning the structural design requirements, and specifically, regarding
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`the strength of attachment of interior fittings, the agency proposed that “[t]o
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`the extent possible, interior fittings shall be recessed or flush-mounted.”
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`(Id.). On September 23, 1997, the agency proposed a rule establishing
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`comprehensive safety standards for certain railcars. (See 62 Fed. Reg.
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`49728-01 (proposed Sept. 23, 1997) (to be codified at 49 C.F.R. § 238.233)
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`(attached as Appendix J)). Paragraph (d) of proposed § 238.233, Interior
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`Fittings and Surfaces, provided that “[t]o the extent possible, all interior
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`fittings in a passenger car, except seats, shall be recessed or flush-mounted.”
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`(Id., 49745). Regarding this paragraph, the agency explained that occupants
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`of a railcar “may [] be injured by protruding objects, especially if the
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`occupants fall or are thrown against such objects during a train collision or
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`derailment.” (Id., 49770). The agency further explained that by recess or
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`flush-mounting of interior fittings, “[s]uch fittings [would] not protrude
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`above interior surfaces and thereby help to minimize occupant injuries.”
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`(Id.). Under § 238.5 of the proposed rule, an interior fitting was defined as
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`“any auxiliary component in the passenger compartment which is mounted
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`to the floor, ceiling, sidewalls, or end walls and projects into the passenger
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`compartment from the surface or surfaces to which it is mounted.” (Id.,
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`49793). “[S]ide and end walls, floors, door pockets, or ceiling lining
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`materials” were excluded from this definition. (Id., 49793-4). In 1997, one
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`of ordinary skill in the art would have understood that, according to this
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`definition, a television or display mounted inside the railcar at any location
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`would be an interior fitting. On May 12, 1999, the FRA issued its final rule
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`with the “recessed or flush-mounted” requirement. (64 Fed. Reg. 25540-01,
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`25677 (May 12, 1999) (to be codified at 49 C.F.R. § 238.233) (attached as
`
`Appendix K) (“[t]o the extent possible, all interior fittings in a passenger car,
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`except seats, shall be recessed or flush-mounted.”)).
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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 railcars
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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
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`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. Design considerations included the following
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`stated goals: safety, reliability, maintainability, availability, and
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`interchangeability. (See Appx. E, ¶ 3.0). During the development of this
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`video system, Amtrak was given the choice of flush mounted or stand-alone
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`mounted video monitors, and Amtrak had chosen the stand-alone monitors
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`by 1993. Due to a substantial theft problem, the audio-visual system was
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`subsequently removed.
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`33. The Viewliner also included a PA system. The PA unit was an enclosed
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`module that slid into a PA unit enclosure for mounting, and the PA unit was
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`readily removable for repair, maintenance or replacement. Attached as
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`Appendix F is Amtrak Specification 315 describing the PA system, which
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`was released on February 7, 1991. The design consideration goals were the
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`same as the audio-visual system: safety, reliability, maintainability,
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`availability, and interchangeability. (See Appx. F, ¶ 3.0). Paragraphs 2.1.1
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`and 2.1.2 on page 7 of the specification describes the PA unit and PA unit
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`enclosure. (See id., ¶¶ 2.1.1 and 2.1.2). The PA unit is a “self-contained
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`electronics assembly comprised of handset or panel-mounted microphone,
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`control switches, preamplifiers, 25 watt power and amplifier, DC-DC
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`converter, test oscillator, indicators and enclosure. The unit is an enclosed
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`module, which slides into the PA unit enclosure for mounting.” (Id., ¶
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`2.1.1). The PA unit could “be equipped with a handset or panel-mount
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`microphone.” (Id.). Appendix G shows design drawings for a PA unit
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`prepared in accordance with the design requirements provided in the
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`specification. The design drawings show various panels or cover units
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`which enclosed the PA unit, including a front panel, depicted in pink, which
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`covered the equipment in the PA unit, e.g., the DC-DC power converter.
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`The specification required that the PA unit be packaged in a manner “such
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`that it [could] be handled and shipped without damage within Amtrak
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`without an additional-shipping container.” (Id., ¶ 2.1.1; see also id., ¶ 4.1.1
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`(“The housing, chassis and protective cover shall be designed so that
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`together they form a unit which can be shipped without damage within
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`Amtrak without an additional shipping container.”) .
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`34. The PA unit enclosure, in this application, was an “enclosure, mounted
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`permanently in the car, [that] accommodates the PA unit. It provides
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`mounting points as well as an interface to car wiring.” (Id., ¶ 2.1.2).
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`Appendix H shows design drawings for a PA unit enclosure according to the
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`design requirements provided in the specification. The PA unit shown in
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`Appendix G would fit into the PA unit enclosure depicted in Appendix H.
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`According to the Amtrak specification, once the enclosed PA unit was
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`mounted in the PA unit enclosure, it was flush with the railcar’s interior.
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`(Id., ¶ 3.5.1 (“The PA unit in its enclosure is flush wall mounted in the car
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`interior.”)). In other words, the front panel shown in Appendix G was
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`flushed with the railcar’s interior once it was placed in the PA unit
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`enclosure, with the PA Unit equipment being placed inside or behind the
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`inner wall of the railcar.
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`35. Another example of providing an enclosure for interior fittings is Yamada,
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`which shows an LCD unit 21 which could be mounted on a wall or a seat of
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`a railcar. (Ex. 1028, 2). The LCD unit 21 is enclosed to protect it from
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`damage. (Id., 3 [0026], 5 [0046], Figs. 2, 4). Sedighzadeh describes
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`aesthetic reasons for an enclosure, providing an encasing that has a
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`“transparent window” with a “plexiglass pane 70” where “the screen of the
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`television monitor 16 positioned interiorly of the shell can be viewed
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`through the window.” (Ex. 1025, 2:32, 6:2-11). Sedighzadeh explains that
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`this arrangement was aesthetically pleasing and also made it easier for a
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`large number of individuals to view the television where there was limited
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`space. (Id., 1: 57-64, 2:4-9).
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`36.
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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 railcar that was tied to a central
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`player for the purpose of showing movies, short commercials, or other
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`information to the riding public existed prior to 1993, and would have been
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`obvious to one of ordinary skill in the art at least as early as that date, and
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`certainly by the May 1997 filing date of the application that led to the ’602
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`Patent. The use of back lit panels, and the placement of monitors (with
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`protective enclosures and cover units) flushed with surrounding surfaces at
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`the upper corners of a railcar is a predictable combination of features
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`according to their known functionalities as would have been understood by a
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`person of ordinary skill in the art in 1997.
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`B. CLAIMS 1 AND 5
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`37. Claim 5 depends from claim 1. Claim 1 of the ’602 Patent recites the phrase
`
`“video signal source unit operatively connected to said monitors.” One of
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`ordinary skill in the art would have understood in 1997 that Namikawa and
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`Miyajima each inherently discloses display screens operatively connected to
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`a video signal source unit. Namikawa, for example, describes LCD screens
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`that can display programming taken from cable television (Ex. 1005, 6), and
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`Miyajima describes a “drive device” that provides content to the display
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`monitors (Ex. 1007, 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
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`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
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`ordinary skill in the art in 1997.
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`38. Both Namikawa and Amano identify in their description of the prior art that
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`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, 3, 4; Ex. 1021, 1). Maekawa describes that it was
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`known to provide display content to passengers by providing televisions on
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`electric trains. (Ex. 1009, 1). In view of their common goal for displaying
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`electronic and dynamic content to passengers, it would have been obvious to
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`one of ordinary skill in the art in 1997 to combine the video disk player of
`
`Amano with the video display system of Namikawa, or to combine the
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`television receivers of Maekawa with the video display system of
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`18
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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, 8-9). The inclusion of a video signal source unit such as
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`a video disk player (as expressly disclosed in Amano) or a television
`
`receiver/antenna (as expressly disclosed in Maekawa) to the system
`
`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
`
`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
`
`Maekawa to Miyajima in order to achieve Miyajima’s goal of broadcasting
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`information to passengers.
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`39. Claim 5 further recites “wherein the video signal source unit comprises a
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`video tape player, a video disk player or computer-based digital video
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`recorder.” Amano discloses a device with a video playback function for
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`playing content stored on a video disk or videotape. For the reasons
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`described in paragraphs 37-38, the combination of either Namikawa or
`
`Miyajima with Amano and the knowledge of one of ordinary skill in the art
`
`would render this limitation obvious.
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`19
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`40. Claim 1 of the ’602 Patent also recites the phrase “each of said monitor [sic]
`
`being mounted at the junction of the sidewall and ceiling.” The specification
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`of the ’602 Patent does not define “the junction,” but it appears that the term
`
`encompasses an upper corner of the railcar where the sidewall meets the
`
`ceiling. Accordingly, one of ordinary skill in the art would have understood
`
`in 1997 that both Namikawa and Miyajima disclose display screens mounted
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`at the junction of the sidewall and the ceiling of their respective subway
`
`cars.
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`41. Miyajima, for example, has figures showing screens 01 at the junction of the
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`sidewall and ceiling. (Ex. 1007, Figs. 1, 3-6, 8, 10, 12, 14, 16, 22, 23).
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`Namikawa too depicts screens 12 at the junction of the sidewall and ceiling,
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`and further states that its televisions are placed “in a mounting position for
`
`an advertising media using conventional paper.” (Ex. 1005, 6, Fig. 1). One
`
`of ordinary skill in the art reading this disclosure of Namikawa and viewing
`
`its figure for the subway embodiment would understand that televisions 12
`
`are placed at the junction of the sidewall and the ceiling, with at least some
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`portions of the televisions extending into the space between the inner and
`
`outer walls of the railcar. To the extent not expressly disclosed, it is my
`
`opinion that Namikawa and Miyajima each render this limitation obvious in
`
`view of the knowledge of one of ordinary skill in the art.
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`42. One of ordinary skill in the art would have understood in 1997 that the
`
`junction of the sidewall and ceiling was the most logical place for
`
`Namikawa’s televisions and Miyajima’s displays. This would have
`
`increased the visibility of the screens of the devices to a larger number of
`
`passengers in what was known to be limited space. Similarly, one of
`
`ordinary skill in the art would have understood that mounting the screens at
`
`an obliquely downward angle would have enhanced their visibility to the
`
`passengers. Because flush-mounting was the norm in the industry as
`
`explained in ¶¶ 26-36, one of skill in the art would have been motivated to
`
`place Namikawa’s televisions 12, or Miyajima’s displays 01, as close to the
`
`interior surfaces of the railcar as possible, while at the same time
`
`maintaining the obliquely downward angle of the screens. One of ordinary
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`skill in the art thus would have been motivated to move the devices into the
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`space between the inner and outer walls of the railcar to the extent possible,
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`until the obliquely downward screen surface of the devices reach a sidewall
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`on the one side (i.e., at the bottom edge) and the ceiling on the other side
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`(i.e., at the top edge). Similarly, for railcars which have a defined panel (or
`
`section) connecting a sidewall to the ceiling, one of ordinary skill in the art
`
`would have been motivated to move the devices into that panel (or section)
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`21
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`so that the screen of the devices would be even with or on the same plane as
`
`that panel (or section).
`
`43. 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.”
`
`44. As an initial matter, the ’602 Patent does not define or describe the terms
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`“substantially flushed” and “the adjacent wall surface structure.” One of
`
`ordinary skill in the art would understand the term “substantially flushed” to
`
`include “flushed.” However, the ’602 Patent does not provide any
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`measurement parameters for the term so that one of ordinary skill in the art
`
`would be able to ascertain the outer limits of the term in this context.
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`Similarly, the phrase “the adjacent wall surface structure” in claim 1 has no
`
`antecedent basis, and thus, the specific wall structure to which it refers is not
`
`clear.
`
`45. Assuming that these terms are somehow capable of construction, it is my
`
`opinion that one of ordinary skill in the art would understand Namikawa and
`
`Miyajima each to disclose monitor screens “substantially flushed” with
`
`adjacent surfaces in their respective railcars. The “substantially flushed”
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`term is referenced in the specification only with respect to Figure 4A, when
`
`describing the relative placement of rectangular monitor 22A or “transport
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`22
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`screen 44A” (both of which have a flat surface) with the curved
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`light/advertising panel 40, stating that “CRT video monitor 22 is replaced
`
`with an LCD-based video monitor 22A which is of thin, rectangular cross-
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`section, and occupies less space in the ceiling structure of the car.
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`Accordingly, it can be moved towards the ceiling so that its viewing screen
`
`is substantially flush or even behind the light panel 40”:
`
`
`
` (Ex. 1001, 5:37-42, Fig. 4A). The ’602 Patent does not provide any
`
`guidance as to whether the claimed “the adjacent wall surface structure”
`
`which must be “substantially flush” with monitor 22A (or transport screen
`
`44A), refers to the entirety of the curved surface of panel 40 that faces the
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`23
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`46.
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`interior of the car, the part of panel 40 that is by the ceiling, the part of panel
`
`40 that is by the vertical sidewall, or some combination of these surfaces.
`
`If “substantially flushed” is defined to encompass the arrangement
`
`mentioned in the specification of the ’602 Patent but not actually shown in
`
`any of its figures, i.e., a planar surface that meets an adjacent curved surface
`
`at some point, Namikawa’s liquid crystal televisions 12 would be
`
`“substantially flushed” with Namikawa’s dashed printed advertising area.
`
`(Ex. 1005, Fig. 1).
`
`47. As another example, Miyajima discloses displays mounted at the junction of
`
`the sidewall and ceiling of a railway car, with the displays mounted at least
`
`partially in a cavity or gap formed by two walls of the railway car (see what
`
`have been marked as surfaces 1 and 2 below). Each display has an
`
`associated backlight behind it located in that cavity. (Id., 5, Figs. 22-23). In
`
`these embodiments, Miyajima provides for cooling, via air flow, of the
`
`backlights of the displays. (Ex. 1007, 5, Figs. 22-23). Air can flow into the
`
`cavity, pass through the cavity, and be expelled outside the railcar through
`
`an exhaust fan 09. (Id., 5, Fig. 23). The displays, including the one shown
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`at the junction, closely track surface 1 of the railway car. (Id., 1 (The
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`“displays hav[e] shapes conforming to the shape of a region where the
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`display is to be installed within the vehicle.”), Figs. 22-23). Given the
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`24
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`arrangement disclosed by the specification of the ’602 Patent, one of
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`ordinary skill in the art reading Miyajima would understand that Miyajima’s
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`displays are “substantially flushed” with adjacent surfaces
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