UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAWASAKI RAIL CAR, INC.
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`Petitioner
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`v.
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`SCOTT BLAIR
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`Patent Owner
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`IPR2017-01036
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`Patent No. 6,700,602
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`EX. 2009- SUPPLEMENTAL EXPERT DECLARATION OF JOSEPH B.
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`ZICHERMAN, Ph.D., SFPE
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`I, Joseph B. Zicherman, hereby declare the following:
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`I. BACKGROUND AND QUALIFICATIONS
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`1.
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`I am over 21 years of age and otherwise competent to make this Declaration. I
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`make this Declaration based on facts and matters within my own knowledge and on information
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`provided to me by others.
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`2.
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`I have been retained as an expert in this matter by Counsel for Patent Owner Scott
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`Blair to provide my independent opinions on certain issues requested by Counsel for Patent
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`Owner relating to the accompanying petition for Inter Partes Review of U.S. Patent No.
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`6,700,602 ("the '602 Patent"). My compensation in this matter is not based on the substance of
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`the opinions rendered here.
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`3.
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`I have previously summarized in my original declaration submitted herein (Ex.
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`2007) my educational background, career history, and other relevant qualifications.
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`4.
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`I have been working actively in the rail design engineering industry for more than
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`35 years.
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`5.
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`As part of my work in connection with this proceeding, I have reviewed the
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`following materials:
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`• Patent 6,700,602 (the '602 Patent) including the claims thereof;
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`• Petition for Inter Partes Review of U.S. Patent No. 6,700,602, No. IPR2017-
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`01036 including Exhibits;
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`• Translation of Japan Train Operation Association Magazine, Vol. 37, Issue No. 3
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`(March 1, 1995) (Ex. 1003, "JTOA Magazine");
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`• The translation of Japanese Publication No. 04-085379 (Ex. 1005, "Namikawa");
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`• The translation of Japanese Publication No. 07-181900 (Ex. 1007, "Miyajima");
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`• The translation of Japanese Publication No. 04-322579 (Ex. 1011, "Sasao");
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`• The translation of Japanese Publication No. 04-160991 (Ex. 1009, "Maekawa");
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`• U.S. Patent No. 5,293,244 to Kawaguchi (Ex. 1022, "Kawaguchi");
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`• The translation of Japanese Publication No. 02-23985 (Ex. 1021, "Amano");
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`• U.S. Patent 5,148,282 to Sedighzadeh (Ex. 1025, "Sedighzadeh")
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`• U.S. Patent 3,211,904 to Schwenkler (Ex. 1026, "Schwenkler")
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`• The translation of Japanese Publication No. 05-042853 (Ex. 1028, "Yamada")
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`• The file history of the '602 patent provided in Exhibit 1012;
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`• The reexamination file history of the '602 patent provided in Exhibit 1013; and
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`• Decision Instituting Inter Partes Review (Paper 10) ("Decision").
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`• A complete copy of the Proposed FRA rules (Ex. 2004)
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`• Consumer Product Safety Division Guidelines for Television Receiver Safety (Ex.
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`2005)
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`II. OVERVIEW OF THE '602 PATENT AND THE PRIOR ART
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`The '602 Patent
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`6. (cid:9)
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`The '602 Patent is directed to a video display monitor system that is mounted at
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`fixed intervals at the junction of the sidewall and the ceiling of a subway car. According to
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`certain embodiments, the video monitor system includes an enclosure for the video monitor that
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`is designed to be mounted at the junction of the sidewall and the ceiling in such a manner that
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`the screen of the video display monitor (or an enclosure or a transparent cover unit for the video
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`display monitor) is substantially flush (or substantially contiguous or flush) with the adjacent
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`surface structure of the wall and oriented obliquely downward towards the subway car's seats.
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`See Ex. 1001, p. 12 at 1:23-44, 1:63-67-2:17, 2:33-46. According to other embodiments, the
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`video display monitors are each enclosed within an enclosure which may be secured to a
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`structural member between an inner wall and an outer structural shell of the subway car. See Ex.
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`1001, p. 12 at 1:55-1:59, 2:56-60. According to still other embodiments, there may be a back lit
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`panel disposed on the adjacent wall surface structure of the car. See Ex. 1001, p. 12 at 1:51-54,
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`2:29-31 and 2:53-55. The system also comprises a "video signal source unit" connected to the
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`monitors. The "video signal source unit" consists of pre-recorded material for broadcasting on
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`the screens such as news, advertisements, etc. It can be in the form of video disk players, CD-
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`ROM players, and video tape players (Ex. 1001 at 2:15-42).
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`III. UNDERLYING FINDINGS
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`Level of Skill of a Person Having Ordinary Skill In The Art
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`7. (cid:9)
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`Based on my education, training, and professional experience in the field of the
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`claimed invention, I am familiar with the level and abilities of a person of ordinary skill in the
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`art at the time of the claimed invention. I do not disagree with the qualifications recited by
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`Petitioner's expert that a person of ordinary skill in the art of the '602 Patent at the time of the
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`claimed invention ("POSITA") would have been a person having the equivalent of a bachelor's
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`degree (e.g., a bachelor's in Aerospace, Industrial or Mechanical Engineering) or a practical
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`experience equivalent to these degrees with at least two years of experience in design of rail cars
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`in order to be capable of understanding the '602 Patent and the prior art references discussed
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`herein. Additionally, I meet at least these minimum qualifications to be a person having ordinary
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`skill in the art as of the time of the claimed invention of the '602 Patent.
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`Background Information on Subway Cars
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`8.
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`9.
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`DELETED.
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`DELETED.
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`10.
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`Subway cars may have a rounded portion at the junction of the sidewall and the
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`ceiling to accommodate travel through subway tunnels which are bored by a machine in a round
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`shape and made to be as small as possible to reduce costs.
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`11.
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`It would be clear to one of ordinary skill in the art that the "junction of the sidewall
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`and the ceiling" in a subway car is not a single point, but an area between the ceiling and a sidewall
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`that is typically curved.
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`12.
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`Buses and above-ground trains would not have the same need to be rounded at
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`the junction of the sidewall and the ceiling, as they do not go through underground tunnels in the
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`same manner as subway cars.
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`13.
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`Square junctures at the junction of the ceiling and the sidewall in subway cars are
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`also avoided to reduce fatigue stresses and formation of fatigue cracks.
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`14.
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`Prior to the current invention, the problem was how to achieve a television in a
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`subway car that was smooth and aesthetically pleasing, similar to a television in a wall, but also
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`directed obliquely downwards for ease of viewing and located at the junction of the sidewall and
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`the ceiling so as not to take up car space or injure passengers. The problem, posed to the inventor
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`at the time of the invention, was particularly challenging as subway cars have challenges that do
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`not exist in residential environments or even buses or Amtrak trains.
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`15.
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`A POSITA, in the 1995-1997 timeframe, would not have been motivated to mount
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`a monitor substantially flush with an adjacent wall surface structure of a subway car because of
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`heightened safety requirements, an extreme aversion to any potential fire hazards, and knowledge
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`that a television should never be put in a "built-in" enclosure, as in Exhibit 2005.
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`16. Namikawa clearly teaches a rounded back television that is mounted on the
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`sidewall and is not substantially flush with the adjacent wall and ceiling panels. Namikawa
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`depicts and clearly states the monitors are disposed ON a wall face. Namikawa teaches monitors
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`that are mounted ON TOP of a wall face; they are an appreciable distance from the wall, and the
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`screen of the monitor is NOT substantially flushed with the adjacent wall surface structure of the
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`car. Nothing within the teachings of Namikawa teaches or suggests the availability of space
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`beyond the wall, let alone the availability of space beyond the wall at the junction of the sidewall
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`and the ceiling to allow for the screen of the monitor to be substantially flushed with the adjacent
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`wall surface structure of the car. None of the cited prior art teaches or suggest the availability of
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`space beyond the wall at the junction of the sidewall and the ceiling of a subway car to allow for
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`the screen of the monitor to be substantially flushed.
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`17. Namikawa is mounted on top of a wall, so Petitioner's statement "It would have
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`been an obvious design choice for a POSITA in 1997 to make the enclosure and video display
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`monitor removable as a unit because such a modification would have facilitated faster assembly
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`or disassembly of the display monitor for maintenance purposes and easier handling of the
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`equipment by maintenance employees." is improper and incorrect. Adding an additional
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`enclosure to a television would make assembly or disassembly for maintenance purposes more
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`difficult.
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`18.
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`Sasao teaches the use of a fire-resistant floor mounted cabinet to address fire
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`safety, but the cabinet would frustrate the purpose of Namikawa being mounted at the junction
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`of the sidewall and the ceiling and being substantially flush. Sasao teaches away from mounting
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`at the junction of the sidewall and the ceiling in a subway environment. Sasao teaches a floor
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`mounted television in a wall with a floor supported cabinet that may be made of fire-resistant
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`material. To alter Sasao to do away with the fire-resistant cabinet would not be within the
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`teachings of the references, particularly in the heightened fire adverse environment of a subway
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`car. The Sasao reference must be considered in its entirety, including the teaching that to avoid
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`a fire when placing a television in the wall, you should include the floor supported cabinet made
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`of fire-resistant material.
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`19. Amano teaches a monitor that is mounted on the ceiling and/or to the luggage
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`rack. More particularly, the invention teaches a system of installed screens which are externally
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`mounted at locations away from any adjacent wall surface structure of the car. Thus, Amano
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`also does not teach a system wherein the screens are "substantially flushed" with the wall
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`adjacent surface. Also, Amano does not teach or suggest each monitor being mounted at the
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`junction of the sidewall and ceiling, with the screen of the monitor substantially flushed with the
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`adjacent wall surface structure of the car.
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`20. Maekawa's system does not disclose televisions installed at the junction of the
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`sidewall and the ceiling of a subway car with their screens substantially flushed with the adjacent
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`wall surface and their screens directed obliquely downwards to the subway car's seats. Maekawa
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`teaches monitors installed on top of a sidewall and not substantially flushed.
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`21.
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`Sedighzadeh also teaches directly away from being modified to be "disposed
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`within the transitional wall portion such that the transparent cover units covering respective ones
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`of the video display monitors are substantially flush with the adjacent surface structure of the
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`transitional wall portion." Sedighzadeh teaches a swivel mounted television for easy viewing
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`by many individuals. Sedighzadeh specifically discredits the Dahlstrom patent, which "would
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`appear to be designed to rest on a supporting surface such as a table or counter top and would
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`also appear to be oriented for viewing by one or a small number of individuals." Sedighzadeh
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`Exhibit 1025, p. 5. Sedighzadeh expressly provides a swivel mounted television can be viewed
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`by a greater number of individual and discredits a stationary mounted television. Sedighzadeh
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`must be rejected as teaching away from combination with Namikawa as suggested. Mounting
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`within a transitional wall portion would also be much more complicated than mounting on top of
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`the wall (as in Namikawa) or mounted on a tray (as in Sedighzadeh).
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`22.
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`The prior art would not teach or suggest to a POSITA any availability of space at
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`the junction of the sidewall and the ceiling, Sasao is directed to a residential wall and is irrelevant
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`to the question, and the remaining Amano and Maekawa references both show there is no space
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`behind the junction of the sidewall and the ceiling.
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`23.
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`Because Schwenkler teaches away from panels that are not end-to-end and
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`placing back-lit panels next to the video screens would result in the diverse levels of lighting as
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`was specifically discredited by Schwenkler, a POSITA would not modify Namikawa to
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`incorporate certain features of Schwenkler in an effort to arrive at the claimed invention.
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`24.
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`It would be required that the number of card displays would be reduced to make
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`room for the monitors which would provide improper illumination (as taught by Schwenkler
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`end-to end lighting provides proper illumination) and minimize the effective advertising area,
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`accordingly the rationale for combining references lacks a rational underpinning. The monitors
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`of Namikawa also would not be maximized by modifying Namikawa according to Schwenkler.
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`25.
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`A POSITA, in the 1995-1997 timeframe, reading Schwenkler would not be
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`motivated to place back lit panels next to the video screen, as Schwenkler teaches the need for
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`lighting fixtures arranged end-to-end to avoid diverse levels of light intensity which leads to
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`passenger eye discomfort. A POSITA would not be motivated to place lighting fixtures next to
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`a monitor which is mounted within the transitional wall portion for fire safety reasons, as lighting
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`fixtures in close proximity to a monitor would contribute more heat to a monitor that requires
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`ventilation and requires that heat build-up be avoided.
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`26.
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`The FRA would not require an "interior fitting" if it would pose a fire hazard.
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`27.
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`A POSITA, in the 1995-1997 timeframe, would not have been motivated to
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`mount a monitor substantially flush with an adjacent wall surface structure of a subway car
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`because of heightened safety requirements, an extreme aversion to any potential fire hazards and
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`knowledge a television should never be put in a "built-in" enclosure and the ventilation slots
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`should never be blocked.
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`28.
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`A POSITA, in the 1995-1997 timeframe, would not have been motivated to
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`mount a monitor substantially contiguous with an exterior surface of said transitional segment of
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`a subway car because of heightened safety requirements, an extreme aversion to any potential
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`fire hazards, and knowledge a television should never be put in a "built-in" enclosure and the
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`ventilation slots should never be blocked.
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`29.
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`A POSITA, in the 1995-1997 timeframe would not expect a cavity at the junction
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`of the sidewall and the ceiling (or the transitional segment) sufficient to retain a display monitor
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`such that it would be substantially flush with the adjacent wall surface. If we are to accept that
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`a cavity would be expected at the junction of the sidewall and the ceiling in the time period of
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`1995-1997, there would be no expectation that it would be available as it could be filled with
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`thermal insulation, sound deadening material, wiring and cable and an array of structural
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`members.
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`30.
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`The statements made by Lowell Malo in Ex. 1015 ¶ 41 that "one of ordinary skill
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`in the art reading this disclosure of Namikawa and viewing its figure for the subway embodiment
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`would understand that televisions 12 are placed at the junction of the sidewall and the ceiling,
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`with at least some portions of the televisions extending into the space between the inner and outer
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`walls of the railcar" are disingenuous.
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`31.
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`Petitioner offers broad statements, such as "Namikawa discloses the claimed
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`VSSU, which would have to be connected to the televisions 12 for the system to function as
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`intended." This is untrue; the VSSU could, for example, be connected to the television through
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`a previously installed track, tunnel or control system and would not be a "self-contained wiring-
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`cabling system."
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`32.
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`The system described by Petitioner's expert in Exhibit 1015 at p. 103 is one that
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`is not self-contained.
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`33. A POSITA, in the 1995-1997 timeframe, would have no knowledge of a
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`structural member disposed between an inner wall and an outer structural shell for securing the
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`enclosure. It would not have been obvious for a POSITA in 1997 to have a video display monitor
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`enclosed within an enclosure such that the enclosure is secured to a structural member disposed
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`between an inner wall and an outer structural shell of the subway car.
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`34.
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`A POSITA, in the 1995-1997 timeframe, would not be motivated to provide
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`transparent cover units covering respective ones of the video display monitors to be substantially
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`flush with the adjacent surface structure of the transitional wall portion, as they would expect
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`that a transparent cover unit would further prevent ventilation of the display monitor, cause heat
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`build-up and create a fire hazard.
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`35.
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`Sedighzadeh teaches a shell that is not transparent, with a transparent window
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`that is covered by a non-transparent sliding wall when not in use. See Ex. 1025, p. 5, 2:21-39.
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`Sedighzadeh provides, "a sliding wall on the shell can be selectively moved into a position
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`overlying and therefore blocking the transparent window primarily for aesthetic reasons." See
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`Ex. 1025, p. 5, 2:35-38. Still further, the transparent window of Sedighzadeh is substantially
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`perpendicular to the adjacent surface structure of the wall. Sedighzadeh also teaches directly
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`away from being modified to be "being mounted at the junction of the sidewall and ceiling and
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`further being covered with a transparent cover unit, with the transparent cover unit flushed with
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`the adjacent wall surface structure of the car."
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`36.
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`Yamada does not teach a transparent cover unit that covers the video display
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`monitors. The screen that is a part of and inside the actual video display does not support such a
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`teaching. Still further, the screen of Yamada is not substantially flush with the adjacent surface
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`structure or directed obliquely downward. Yamada teaches a monitor (without a transparent
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`cover) that is directed obliquely upward.
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`37.
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`The combination of Namikawa in view of Sasao, Amano and Yamado or
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`Sedighzadeh does not teach or suggest, inter alia, "a plurality of transparent cover units that
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`cover respective ones of the video display monitors....the monitors being disposed within the
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`transitional wall portion such that the transparent cover units covering respective ones of the
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`video display monitors are substantially flush with the adjacent surface structure of the
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`transitional wall portion" as in claim 8. An enclosure enclosing the monitor and disposed within
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`the transitional wall portion would not make the television more aesthetically pleasing.
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`38.
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`I declare that all statements made herein of my knowledge are true, and that all
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`statements made on information and belief are believed to be true, and that these statements were
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`made with the knowledge that willful false statements and the like so made are punishable by
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`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
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`Date: 6:4:// zi z 6) 8/
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`Wig . Z ---
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`r
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`Joseph B. Zicherman
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`-----
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