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
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT 6,700,602 UNDER
`35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS ...........................................................................................iv
`
`CLAIMS LISTING ..................................................................................................vi
`
`I.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8) .............................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Parties in Interest (37 C.F.R. § 42.8(b)(1)) .................................. 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 1
`
`Counsel (37 C.F.R. § 42.8(b)(3); 37 C.F.R. § 42.10(a)) ...................... 1
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 1
`
`II.
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................ 2
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 2
`
`IV. FACTUAL BACKGROUND......................................................................... 5
`
`A.
`
`B.
`
`C.
`
`Brief Description of the ’602 Patent .................................................... 5
`
`Prosecution History of the ’602 Patent ................................................ 7
`
`Reexamination History of the ’602 Patent ........................................... 8
`
`V.
`
`RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ....................................................................................................... 10
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art .................................................... 10
`
`Claim Construction Under 37 C.F.R. §§ 42.100(b),
`42.104(b)(3) ........................................................................................ 10
`
`1.
`
`2.
`
`3.
`
`“substantially flushed”(claims 5 and 7); “substantially
`flush” (claims 8-14); “substantially contiguous” (claims
`15-19); “flushed” (claims 20-29) ............................................. 11
`
`“video signal source unit” (all claims) ..................................... 11
`
`“back lit panel” (claims 11, 15-19, 23) ................................... 12
`
`VI. PRIOR ART TO THE ’602 PATENT .......................................................... 12
`
`1.
`
`Namikawa ................................................................................ 15
`
`2. Miyajima .................................................................................. 15
`
`3.
`
`4.
`
`JTOA Magazine ....................................................................... 16
`
`Sasao ........................................................................................ 17
`
`i
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`Patent No. 6,700,602
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`
`
`
`Petition Requesting Inter Partes Review
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`5.
`
`Amano ...................................................................................... 18
`
`6. Maekawa .................................................................................. 18
`
`7.
`
`8.
`
`9.
`
`Yamada .................................................................................... 19
`
`Sedighzadeh ............................................................................. 19
`
`Schwenkler ............................................................................... 20
`
`VII. SPECIFIC GROUNDS FOR PETITION ..................................................... 21
`
`A. Grounds A and B ................................................................................ 21
`
`1.
`
`2.
`
`Ground A: Claims 5 and 7 Are Obvious Over Namikawa
`in View of Sasao, Amano and Maekawa. ................................ 22
`
`Ground B: Claims 5 and 7 Are Obvious Over Namikawa
`in View of JTOA, Amano and Maekawa. ............................... 31
`
`B.
`
`Grounds C and D ................................................................................ 34
`
`1.
`
`2.
`
`Ground C: Claims 5 and 7 Are Obvious Over Miyajima
`in View of Sasao, Amano and Maekawa. ................................ 34
`
`Ground D: Claims 5 and 7 Are Obvious Over Miyajima
`in View of JTOA, Amano and Maekawa. ............................... 40
`
`C.
`
`Grounds E and F ................................................................................. 40
`
`1.
`
`2.
`
`Ground E: Claims 8, 9, 12-14, 20-22 and 24-29 Are
`Obvious Over Namikawa in View of Sasao, Amano, and
`Yamada or Sedighzadeh. ......................................................... 41
`
`Ground F: Claims 8, 9, 12-14, 20-22 and 24-29 Are
`Obvious Over Namikawa in View of JTOA, Amano, and
`Yamada or Sedighzadeh. ......................................................... 54
`
`D. Grounds G and H ................................................................................ 56
`
`1.
`
`2.
`
`Ground G: Claims 8, 9, 12-14, 20-22 and 24-29 Are
`Obvious Over Miyajima in View of Sasao, Amano, and
`Yamada or Sedighzadeh. ......................................................... 57
`
`Ground H: Claims 8, 9, 12-14, 20-22 and 24-29 Are
`Obvious Over Miyajima in View of JTOA, Amano, and
`Yamada or Sedighzadeh. ......................................................... 65
`
`E.
`
`Grounds I, J, K, and L ........................................................................ 66
`
`ii
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
`
`1.
`
`2.
`
`3.
`
`4.
`
`Ground I: Claims 11 and 23 Are Obvious Over
`Namikawa in View of Sasao, Amano, Schwenkler, and
`Yamada or Sedighzadeh .......................................................... 67
`
`Ground J: Claims 11 and 23 Are Obvious Over
`Namikawa in View of JTOA, Amano, Schwenkler, and
`Yamada or Sedighzadeh .......................................................... 67
`
`Ground K: Claims 11 and 23 Are Obvious Over
`Miyajima in View of Sasao, Amano, Schwenkler, and
`Yamada or Sedighzadeh .......................................................... 69
`
`Ground L: Claims 11 and 23 Are Obvious Over
`Miyajima in View of JTOA, Amano, Schwenkler, and
`Yamada or Sedighzadeh. ......................................................... 70
`
`F.
`
`Grounds M and N ............................................................................... 71
`
`1.
`
`2.
`
`Ground M: Claims 15-19 Are Obvious Over Namikawa
`in View of Sasao, Amano and Schwenkler.............................. 71
`
`Ground N: Claims 15-19 Are Obvious Over Namikawa
`in view of JTOA, Amano and Schwenkler. ............................. 76
`
`G. Grounds O and P ................................................................................ 77
`
`1.
`
`2.
`
`Ground O: Claims 15-19 Are Obvious Over Miyajima in
`View of Sasao, Amano and Schwenkler. ................................. 77
`
`Ground P: Claims 15-19 Are Obvious Over Miyajima in
`View of JTOA, Amano and Schwenkler. ................................ 81
`
`VIII. REDUNDANCY .......................................................................................... 82
`
`IX. CONCLUSION ............................................................................................. 83
`
`CERTIFICATE OF WORD COUNT ..................................................................... 84
`
`CERTIFICATE OF SERVICE ............................................................................... 85
`
`
`
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`iii
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`Patent No. 6,700,602
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`
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`Petition Requesting Inter Partes Review
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`TABLE OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`U.S. Patent No. 6,700,602 (Issued March 2, 2004), Subway TV
`Media System (“the ’602 Patent”)
`
`Japan Train Operation Association Magazine, Vol. 37, issue
`no. 3 (March 1, 1995)
`
`Translation of Ex. 1002
`
`Japanese Publication No. 04-085379
`
`Translation of Ex. 1004
`
`Japanese Publication No. 07-181900
`
`Translation of Ex. 1006
`
`Japanese Publication No. 04-160991
`
`Translation of Ex. 1008
`
`Japanese Publication No. 04-322579
`
`Translation of Ex. 1010
`
`File history of the ’602 Patent (“File History”)
`
`Reexamination file history of the ’602 Patent (“Reexam File
`History”)
`
`Curriculum Vitae of Lowell Malo
`
`Expert Declaration of Lowell Malo (“Malo Decl.”)
`
`Declaration of Shuichi Matsuda
`
`Translation of Ex. 1016
`
`Certification from Japan National Diet Library Explaining
`Workflow Procedure in the Library
`
`iv
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
`
`Exhibit
`
`Description
`
`Translation of Ex. 1018
`
`Japanese Publication No. 02-223985
`
`Translation of Ex. 1020
`
`U.S. Patent No. 5,293,244
`
`Certification from Japan National Diet Library Indicating
`Receipt Date of Japan Train Operation Association Magazine
`
`Translation of Ex. 1023
`
`U.S. Pat. No. 5,148,282
`
`U.S. Pat. No. 3,211,904
`
`Japanese Publication No. 05-42853
`
`Translation of Ex. 1027
`
`
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`v
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`

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`Patent No. 6,700,602
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`
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`Petition Requesting Inter Partes Review
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`1.
`
`[1a] A subway car for mass transportation including
`
`CLAIMS LISTING
`
`[1b] longitudinal opposed sidewalls,
`
`[1c] a ceiling adjoining the sidewalls,
`
`[1d] a video display system comprising a plurality of video display monitors
`
`each having a video screen, and a video signal source unit operatively connected to
`
`said monitors,
`
`[1e] said monitors being spaced along the length of the car on opposed sides
`
`thereof,
`
`[1f] each of said monitor being mounted at the junction of the sidewall and
`
`ceiling,
`
`[1g] with the screen of the monitor substantially flushed with the adjacent
`
`wall surface structure of the car,
`
`[1h] and directed obliquely downwardly toward the car seats, so that each
`
`video screen is readily visible to passengers in the subway car.
`
`2.
`
`[2] The subway car of claim 1 wherein the video signal source system
`
`includes a pre-recorded video transmission program for feeding to display on the
`
`monitors of duration about 5-15 minutes.
`
`3.
`
`[3] The subway car of claim 1 wherein the program is repeatable, and
`
`includes a series of commercial messages of 30 second-1 minute duration.
`
`vi
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
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`4.
`
`5.
`
`[4] The video system subway car of claim 1 which is sound free.
`
`[5] The subway car of claim 1 wherein the video signal source unit
`
`comprises a video tape player, a video disk player or computer-based digital video
`
`recorder.
`
`6.
`
`[6] The subway car of claim 1 wherein the video monitors include LCD
`
`screens.
`
`7.
`
`[7] The subway car of any of claim 1 including a self-contained wiring-
`
`cabling system connecting the video monitors to the video signal source unit.
`
`8.
`
`[8a] A subway car for mass transportation, comprising:
`
`[8b] a video display system comprising a plurality of video display monitors
`
`each having a video screen, and a video signal source unit operatively connected to
`
`said video display monitors;
`
`[8c] a plurality of transparent cover units that cover respective ones of the
`
`video display monitors;
`
`[8d] a pair of longitudinal opposed sidewalls,
`
`[8e] each of the sidewalls comprising a transitional wall portion at the
`
`junction of the sidewall and ceiling that is directed obliquely downwardly; and
`
`[8f] a ceiling adjoining the sidewalls;
`
`[8g] wherein the monitors are spaced along the length of the car on opposed
`
`sides thereof,
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`vii
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
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`[8h] the monitors being disposed within the transitional wall portion such
`
`that the transparent cover units covering respective ones of the video display
`
`monitors are substantially flush with the adjacent surface structure of the
`
`transitional wall portion,
`
`[8i] wherein the monitors are also directed obliquely downwardly toward the
`
`car seats so that each video screen is readily visible to passengers in the subway
`
`car.
`
`9.
`
`[9] The subway car of claim 8, wherein the plurality of transparent cover
`
`units are rigid and are further configured to protect the video display monitor.
`
`10.
`
`[10] The subway car of claim 9, wherein the video display monitor is
`
`disposed within the transitional wall portion such that it contains no visible edges
`
`or protuberances.
`
`11.
`
`[11] The subway car of claim 8, further comprising a back lit panel disposed
`
`on the transitional wall portion, the back lit panel disposed adjacent the video
`
`screen of the video display monitor.
`
`12.
`
`[12] The subway car of claim 8, wherein the video display monitors are each
`
`enclosed within an enclosure.
`
`13.
`
`[13] The subway car of claim 12, wherein the enclosure is secured to a
`
`structural member disposed between an inner wall and an outer structural shell of
`
`the subway car.
`
`viii
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`Petition Requesting Inter Partes Review
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`14.
`
`[14] The subway car of claim 13, wherein the enclosure and a respective
`
`video display monitor is removable from the subway car as a unit.
`
`15.
`
`[15a] A subway car for mass transportation including
`
`[15b] longitudinal opposed sidewalls that further comprise a transitional
`
`segment
`
`[15c] and a ceiling adjoining the sidewalls
`
`[15d] with the transitional segment disposed at the junction of the sidewall
`
`and the ceiling,
`
`[15e] the subway car further comprising: a video display system comprising:
`
`a plurality of video display monitors each having a video screen; and a video signal
`
`source unit operatively connected to said video display monitors;
`
`[15f] wherein said video display monitors are spaced along the length of the
`
`car on opposing sides of the subway,
`
`[15g] each of the video display monitors being mounted within the
`
`transitional segment, with the video screen of each video display monitor being
`
`substantially contiguous with an exterior surface of said transitional segment,
`
`[15h] said video screen being directed obliquely downwardly toward the car
`
`seats so that each video screen is readily visible to passengers in the subway car;
`
`and
`
`[15i] a back lit panel disposed on the transitional segment disposed adjacent
`
`ix
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`Patent No. 6,700,602
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`the ceiling and a respective sidewall.
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`
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`Petition Requesting Inter Partes Review
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`16.
`
`[16] The subway car of claim 15, wherein an external surface of the
`
`longitudinal opposed sidewall, the exterior surface of said transitional segment and
`
`an external surface of the ceiling comprise a blended contour.
`
`17.
`
`[17] The subway car of claim 15, wherein the video signal source unit is
`
`configured to display a series of short messages in sequence on said plurality of
`
`video display monitors.
`
`18.
`
`[18] The subway car of claim 17, wherein the series of short messages
`
`comprise advertising content, said advertising content providing an additional
`
`source of revenue for the operator of the subway car.
`
`19.
`
`[19] The subway car of claim 15, wherein the back lit panel is disposed
`
`adjacent the video screen of the video display monitor.
`
`20.
`
`[20a.i] A subway car for mass transportation including
`
`[20a.ii] longitudinal opposed sidewalls,
`
`[20a.iii] a ceiling adjoining the sidewalls,
`
`[20a.iv] a video display system comprising a plurality of video display
`
`monitors each having a video screen, and a video signal source unit operatively
`
`connected to said monitors,
`
`[20a.v] said monitors being spaced along the length of the car on opposed
`
`sides thereof,
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`x
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`Petition Requesting Inter Partes Review
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`[20a.vi] each of said monitors being mounted at the junction of the sidewall
`
`and ceiling
`
`[20b] and further being covered with a transparent cover unit,
`
`[20c] with the transparent cover unit flushed with the adjacent wall surface
`
`structure of the car,
`
`[20d] and with the monitors directed obliquely downwardly toward the car
`
`seats, so that each video screen is readily visible to passengers in the subway car.
`
`21.
`
`[21] The subway car of claim 20, wherein the transparent cover unit for a
`
`respective video display monitor is rigid and is further configured to protect the
`
`video display monitor.
`
`22.
`
`[22] The subway car of claim 20, wherein the transparent cover unit is
`
`flushed within the adjacent wall structure such that it contains no protuberances.
`
`23.
`
`[23] The subway car of claim 20, further comprising a back lit panel
`
`disposed on the adjacent wall surface structure of the car.
`
`24.
`
`[24] The subway car of claim 20, wherein the video display monitors are
`
`each enclosed within an enclosure.
`
`25.
`
`[25] The subway car of claim 24, wherein the enclosure is secured to a
`
`structural member disposed between an inner wall and an outer structural shell of
`
`the subway car.
`
`25.
`
`[26] The subway car of claim 25, wherein the enclosure and a respective
`
`xi
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
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`video display monitor is removable from the subway car as a unit.
`
`27.
`
`[27] The subway car of claim 20, wherein an external surface of the
`
`longitudinal opposed sidewalls, the adjacent wall surface structure and an external
`
`surface of the ceiling comprise a blended contour.
`
`28.
`
`[28] The subway car of claim 20, wherein the video signal source unit is
`
`configured to display a series of short messages in sequence on said plurality of
`
`video display monitors.
`
`29.
`
`[29] The subway car of claim 28, wherein the series of short messages
`
`comprise advertising content, said advertising content providing an additional
`
`source of revenue for the operator of the subway car.
`
`xii
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`

`
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A. Real Parties in Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner Kawasaki Rail Car, Inc. (“KRC”) and its parent company,
`
`Kawasaki Heavy Industries, Ltd. (“KHI”), are the real parties-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`U.S. Patent No. 6,700,602 (“the ’602 Patent”) was asserted against KHI in
`
`Blair v. Alstom SA et al., Civ. No. 1:16-cv-03391 (S.D.N.Y.). On October 25,
`
`2016, Petitioner filed a petition for inter partes review (IPR2017-00117) of claims
`
`1-4 and 6 of the ’602 Patent, which were the claims that were then being asserted
`
`against KHI in the litigation. On November 14, 2016, Patent Owner asserted
`
`additional claims against KHI in the litigation, and those newly asserted claims are
`
`the subject of the instant Petition. On February 14, 2017, Patent Owner amended
`
`its complaint to substitute defendants, including replacing KHI with KRC.
`
`Petitioner plans to seek joinder of the two IPR proceedings at the appropriate time.
`
`C. Counsel (37 C.F.R. § 42.8(b)(3); 37 C.F.R. § 42.10(a))
`
`Lead Counsel:
`
`Sheila Mortazavi (Reg. No. 43,343).
`
`Backup Counsel: Zaed M. Billah (Reg. No. 71,418) and Armin Ghiam
`
`(Reg. No. 72,717).
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Petitioner agrees to electronic service at the following email addresses:
`
`SheilaMortazavi@andrewskurthkenyon.com
`
`1
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`Patent No. 6,700,602
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`
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`Petition Requesting Inter Partes Review
`
`ZaedBillah@andrewskurthkenyon.com
`
`ArminGhiam@andrewskurthkenyon.com
`
`Service may be made on lead and backup counsel at the following address:
`
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
`Telephone: (212) 425-7200
`Fax: (212) 425-5288
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the ’602 Patent is available for inter partes review
`
`and Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified in this petition.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests cancellation of claims 5, 7-9, and 11-29 of the ’602
`
`Patent in view of the following prior art references: (1) Japanese Publication No.
`
`04-085379 (“Namikawa,” Exs. 1004-1005); (2) Japanese Publication No. 07-
`
`181900 (“Miyajima,” Exs. 1006-1007); (3) Japan Train Operation Association
`
`Magazine Vol. 37, issue no. 3 (“JTOA,” Exs. 1002-1003); (4) Japanese Publication
`
`No. 04-322579 (“Sasao,” Exs. 1010-1011); (5) Japanese Publication No. 04-
`
`160991 (“Maekawa,” Exs. 1008-1009); (6) Japanese Publication No. 02-223985
`
`(“Amano,” Exs. 1020-1021); (7) Japanese Publication No. 05-42853 (“Yamada,”
`
`Exs. 1027-1028); (8) U.S. Pat. No. 5,148,282 (“Sedighzadeh,” Ex. 1025); and (9)
`
`2
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`Patent No. 6,700,602
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`
`
`Petition Requesting Inter Partes Review
`
`U.S. Pat. No. 3,211,904 (“Schwenkler,” Ex. 1026). Each reference constitutes
`
`prior art under § 102 (pre-AIA).1 Petitioner presents the following grounds for trial
`
`under § 103:
`
`Ground A: Claims 5 and 7 would have been obvious over Namikawa in view of
`
`Sasao, Amano and Maekawa.
`
`Ground B: Claims 5 and 7 would have been obvious over Namikawa in view of
`
`JTOA, Amano and Maekawa.
`
`Ground C: Claims 5 and 7 would have been obvious over Miyajima in view of
`
`Sasao, Amano and Maekawa.
`
`Ground D: Claims 5 and 7 would have been obvious over Miyajima in view of
`
`JTOA, Amano and Maekawa.
`
`Ground E: Claims 8, 9, 12-14, 20-22 and 24-29 would have been obvious over
`
`Namikawa in view of Sasao, Amano, and Yamada or Sedighzadeh.
`
`Ground F: Claims 8, 9, 12-14, 20-22 and 24-29 would have been obvious over
`
`Namikawa in view of JTOA, Amano, and Yamada or Sedighzadeh.
`
`Ground G: Claims 8, 9, 12-14, 20-22 and 24-29 would have been obvious over
`
`Miyajima in view of Sasao, Amano, and Yamada or Sedighzadeh.
`
`
`1 Statutory citations are to Title 35 of the United States Code unless otherwise
`
`noted.
`
`3
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`Patent No. 6,700,602
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`Petition Requesting Inter Partes Review
`
`Ground H: Claims 8, 9, 12-14, 20-22 and 24-29 would have been over Miyajima
`
`in view of JTOA, Amano, and Yamada or Sedighzadeh.
`
`Ground I: Claims 11 and 23 would have been obvious over Namikawa in view
`
`of Sasao, Amano, Schwenkler, and Yamada or Sedighzadeh.
`
`Ground J: Claims 11 and 23 would have been obvious over Namikawa in view
`
`of JTOA, Amano, Schwenkler, and Yamada or Sedighzadeh.
`
`Ground K: Claims 11 and 23 would have been obvious over Miyajima in view of
`
`Sasao, Amano, Schwenkler, and Yamada or Sedighzadeh.
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`Ground L: Claims 11 and 23 would have been obvious over Miyajima in view of
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`JTOA, Amano, Schwenkler, and Yamada or Sedighzadeh.
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`Ground M: Claims 15-19 would have been obvious over Namikawa in view of
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`Sasao, Amano and Schwenkler.
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`Ground N: Claims 15-19 would have been obvious over Namikawa in view of
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`JTOA, Amano and Schwenkler.
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`Ground O: Claims 15-19 would have been obvious over Miyajima in view of
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`Sasao, Amano and Schwenkler.
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`Ground P: Claims 15-19 would have been obvious over Miyajima in view of
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`JTOA, Amano and Schwenkler.
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`Patent No. 6,700,602
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`IV. FACTUAL BACKGROUND
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`A. Brief Description of the ’602 Patent
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`The ’602 Patent is directed to a television system for subway cars with
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`monitors at the junction of the sidewall and the ceiling. (Ex. 1001, abstract, Fig.
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`1A, Fig. 1B). The monitors are either CRT-type or LCD-type. (Id. at 4:14-32,
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`5:35-48). A video signal source unit (“VSSU”) connected to the monitors is
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`broadly described as encompassing video disk players, television receivers, and the
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`like. (Id. at 2:15-42).
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`The specification states that at the “junction of the wall and ceiling of the
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`subway car, [] there is commonly provided a concavely curved segment of internal
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`wall.” (Id. at 4:1-3). Placing screens at this location results in screens “disposed
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`opposite to sets of inward facing seats 16, and angled downwardly for ease of
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`viewing of passengers 24 seated in such inward facing seats 16”:
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`(Id. at 4:64-5:4, Fig. 2).
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`According to the specification, “a subway car is normally constructed so that
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`it has a cavity wall, defined between its outer structural shell and its inner lining
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`wall” and “video display monitors in the system of the invention are suitably
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`mounted in the cavity wall.” (Id. at 3:55-61). LCDs “occup[y] less space in the
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`ceiling structure of the car” and “give[] a better aesthetic appearance to the inside
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`of the subway car as a whole.” (Id. at 5:36-43).
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`With reference to Figure 3, the specification states that “[t]he space between
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`the ceiling housing 38 and the top of the [structural] pillars 30 is normally
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`occupied by back lit advertising panels 40. Removal of appropriate portions of
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`these panels 40 provides space for location of video monitors 22, according to the
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`Patent No. 6,700,602
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`preferred embodiment of the invention”:
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`(Id. at 5:5-20, Fig.3).
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`In one embodiment, monitors are covered with a rigid transparent cover unit
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`shaped to coincide with the shape of the internal wall of the car at the mounting
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`location. (Id. at 3:64-67, 5:27-30, 5:57-59, 6:24-29). The monitor, “including the
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`cover unit if used, is suitably housed in a stainless steel or strong plastic casement,
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`designed to appear integral with the subway car, without visible edges or
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`protuberances, and matching the materials and colours of the subway car interior.”
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`(Id. at 4:8-13).
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`B.
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`Prosecution History of the ’602 Patent
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`The application that resulted in the ’602 Patent originally contained 16
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`claims. (Ex. 1012, 119-21). Application claim 13 was objected to as being
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`dependent upon a rejected base claim, but deemed allowable if rewritten in
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`independent form. (Id. at 187). As rewritten, application claim 13 contained all of
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`the limitations that now appear in claim 1 of the ’602 Patent. (Id. at 235-36). The
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`patent originally issued with claims 1-7. (Id. at 307).
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`C. Reexamination History of the ’602 Patent
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`On August 16, 2011, Patent Owner filed an ex parte Request for
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`Reexamination of claim 1 of the ’602 Patent. (Ex. 1013, 29-34). Patent Owner
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`argued, inter alia, that the combination of four references collectively disclosed
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`every limitation of claim 1 except “with the screen of the monitor substantially
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`flushed with the adjacent wall surface structure of the car.” (Id.). The examiner
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`agreed and instituted the proceeding. (Id. at 107-13). In the first office action, the
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`examiner found that the references (including various combinations thereof)
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`disclosed every limitation of the claims, including the “substantially flushed”
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`limitation, and rejected claim 1 as unpatentable. (Id. at 120-46).
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`Patent Owner traversed these rejections and added claims 8-30. (Id. at 159-
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`77). In the final office action, the examiner maintained the rejection of claim 1,
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`and rejected newly added claims 8-18 and 21-30. (Id. at 181-301). Claims 19-20
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`were objected to as being dependent upon a rejected base claim, but deemed
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`allowable if rewritten in independent form. (Id. at 287). Patent Owner conducted
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`an examiner interview pursuant to which an agreement was reached, (id. at 305-
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`06), and amended claims 8, 9, 15, and 20-23 and canceled claim 19, (id. at 313-
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`35). Subsequently, an advisory action issued in which claims 8-18 and 20-30
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`(which correspond to claims 19-29 in the certificate of reexamination) were
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`confirmed. (Id. at 347-71). For independent claims 8 and 21 (which corresponds
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`to claim 20), the examiner found that the prior art of record did not disclose “a
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`plurality of transparent cover units” with “each of the transparent cover units being
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`either flush or substantially flushed with the adjacent transitional wall portion.”
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`(Id. at 367-68). For independent claim 15, the examiner found that the prior art of
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`record did not disclose the claimed “back lit panel disposed on the transitional
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`segment disposed adjacent the ceiling and a respective wall.” (Id.). Claim 1
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`remained rejected. (Id.).
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`Patent Owner appealed the rejection of claim 1 to the Patent Trial and
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`Appeal Board (“the Board”), which reversed the examiner’s rejection. (Id. at 383-
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`97, 474-81). The Board construed the term “substantially flushed” as “a surface
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`which is to a great extent even with an adjoining one,” and concluded that the
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`specific combinations of references before the Board did not disclose the limitation
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`of “the screen of the monitor substantially flushed with the adjacent wall surface
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`structure of the car.” (Id. at 479). A reexamination certificate issued on January
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`29, 2015. (Id. at 501).
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`V. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT
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`A.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art (“POSITA”) in the field of the ’602
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`Patent is a person who has (1) a Bachelor’s Degree in Mechanical, Industrial, or
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`Aerospace Engineering (or the practical experience equivalent to those degrees),
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`and (2) an additional 2-3 years of experience in the design of railcars. (Ex. 1015,
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`¶23).
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`B. Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3)
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`Pursuant to 37 C.F.R. § 42.100(b), the claims in inter partes review are
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`given the “broadest reasonable construction in light of the specification.”2 Terms
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`2 Claims may be held obvious under § 103(a) even where the scope of a claim is
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`not reasonably certain as required by Nautilus, Inc. v. Biosig Instruments, Inc., 134
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`S.Ct. 2120, 2124 (2014). In evaluating obviousness, what matters is whether a
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`claim’s scope encompasses that which is obvious—not whether the full reach of
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`the claim is reasonably certain, the latter requirement being one of definiteness. “If
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`[a] claim extends to what is obvious, it is invalid under § 103” and thus a showing
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`that a claim extends at least as far as to cover “an obvious solution” to a recognized
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`problem in the art may prove that claim obvious. KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 419-20 (2007).
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`Patent No. 6,700,602
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`other than those identified below should be given their plain meaning.
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`1.
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`“substantially flushed”(claims 5 and 7); “substantially
`flush” (claims 8-14); “substantially contiguous” (claims 15-
`19); “flushed” (claims 20-29)
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`During reexamination of the ’602 Patent, the Board construed
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`“substantially” to mean “to a great extent or degree” and “flush” to mean “a
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`surface exactly even with an adjoining one.” (Ex. 1013, 378-79). The Board
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`construed “substantially flush” as “a surface which is to a great extent even with an
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`adjoining one.” (Id.). For the purposes of this petition, Petitioner applies the
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`Board’s constructions.
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`The specification does not use the term “substantially contiguous,” but claim
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`15 uses “contiguous” the same way that other independent claims use “flush.” (Ex.
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`1001, claims 1, 8, 15, 20). Accordingly, “substantially contiguous” should be
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`construed as synonymous with “substantially flush.”
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`2.
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`“video signal source unit” (all claims)
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`The term “video signal source unit” is broadly defined in the specification as
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`“player units for playing pre-recorded video material, such as computer-based
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`digital video recorders (including CD-ROM players), video tape players and video
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`disk players, and television receivers for receiving live or pre-recorded broadcast
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`television signals from a remote transmitter and supplying these to the video
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`display monitors mounted in the subway cars.” (Ex. 1001, 2:15-22). The term
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`encompasses video signal source units “located either within the mass transits’
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`premises or on a remote broadcasting site,” as well as within the subway cars
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`themselves. (Id. at 2:26-34).
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`3.
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`“back lit panel” (claims 11, 15-19, 23)
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`The specification’s only reference to a “back lit panel” is advertising panel
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`40, which is partially removed to provide “space for location of video monitors
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`22.” (Id. at 5:5-20, Fig. 3). Consistent with the specification and prosecution
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`history, “back lit panel” should be construed as “a non-electronic panel illuminated
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`by a light source behind it.”
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`VI. PRIOR ART TO T