UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`KAWASAKI RAIL CAR, INC.
`Petitioner,
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`v.
`
`SCOTT BLAIR,
`Patent Owner.
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`
`
`
`Case No. IPR2017-01036
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`SECOND SUPPLEMENTAL EXPERT
`DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`1
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`KAWASAKI-1034
`
`
`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
`
`
`
`SECOND SUPPLEMENTAL EXPERT
`DECLARATION OF LOWELL MALO
`
`
`
`
`
`
`1
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`KAWASAKI-1034
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`
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
`
`
`I.
`
`1.
`
`INTRODUCTION
`
`I submit this supplemental declaration in support of Petitioner’s Reply in
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`response to Patent Owner Scott Blair’s Response (Paper No. 15) and the
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`declarations of Patent Owner’s expert Joseph Zicherman (Exs. 2007, 2009).
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`II. QUALIFICATIONS
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`2.
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`I have previously summarized in my original declaration (Ex. 1015) my
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`background, education, and professional experience. As I explained in my
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`original declaration, I have decades of experience designing railcars. Over
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`the course of my career, I have worked or consulted for many companies in
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`the railcar industry, including Alaska Railroad, Alstom, Amtrak, CAF,
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`Caltrans, Caltrain, Colorado Railcar, CRRC, CSX, Kawasaki, Long Island
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`Railroad, Louisville and Nashville Railroad, Metra, Metro North, Missouri
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`Pacific Railroad, New Jersey Transit, New York City Transit, Rader Railcar,
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`Railplan International, San Francisco Municipal Transit Authority, Sentech,
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`South Florida Regional Transit Authority, Stadler, Talgo, and TriRail.
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`III. MATERIALS CONSIDERED
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`3.
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`I have reviewed the following:
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`a. U.S. Patent No. 6,700,602 (Ex. 1001, “the ’602 Patent”);
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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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”) and the
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`photographs in the original Japanese reference (Ex. 1002);
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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. 04-160991 (Ex. 1009,
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`“Maekawa”);
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`f. The translation of Japanese Publication No. 04-322579 (Ex. 1011,
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`“Sasao”);
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`g. The translation of Japanese Publication No. 02-223985 (Ex. 1021,
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`“Amano”);
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`h. U.S. Patent No. 5,148,282 (Ex. 1025, “Sedighzadeh”);
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`i. U.S. Patent No. 3,211,904 (Ex. 1026, “Schwenkler”);
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`j. The translation of Japanese Publication No. 05-42853 (Ex. 1028,
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`“Yamada”);
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`k. Patent Owner Scott Blair’s Response (Paper No. 15, “Response”);
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`l. Expert Declaration of Jack Long (Ex. 2002);
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`m. The 1997 Proposed FRA Rules (Ex. 2004);
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`3
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`n. The 1974 Consumer Product Safety Commission Guidelines for
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`Television Receiver Safety (Ex. 2005);
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`o. Supplemental Declaration of Jack Long (Ex. 2006);
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`p. Declaration of Joseph B. Zicherman (Ex. 2007);
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`q. Supplemental Declaration of Joseph B. Zicherman (Ex. 2009);
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`r. First Deposition Transcript of Joseph Zicherman (Ex. 1035); and
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`s. Second Deposition Transcript of Joseph Zicherman (Ex. 1038).
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`IV. OPINIONS
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`A.
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`Patent Owner’s Fire Safety Arguments
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`4.
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`Patent Owner and his expert Dr. Zicherman argue in the Response and
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`declarations that a person of ordinary skill in the art (“POSITA”) would not
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`have been motivated to place Namikawa’s LCD televisions substantially
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`flush with the adjacent wall surface because the televisions would overheat
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`and create a fire hazard. (See, e.g., Response 25-32). Patent Owner and his
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`expert make substantially the same fire safety argument for all the claims
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`and all the instituted grounds, with slight adjustments to account for the
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`specific language of the various claim limitations. (See Response 25-32, 37-
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`38, 43-44, 50-52; Ex. 2009, ¶¶ 15, 25, 27, 28, 34, 37; Ex. 2007, ¶¶ 15, 18,
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`25, 27-34.) In particular, they make substantially the same fire safety
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`argument for the limitations that require: (a) the “screen of the monitor” to
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`be “substantially flushed with the adjacent wall surface” in claims 5-7
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`(Response 25-32); (b) the “transparent cover units covering” the “video
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`display monitors” to be “substantially flush with the adjacent surface
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`structure of the transitional wall portion” in claims 8, 9, and 11-14
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`(Response 37-38, 50); (c) the “video screen of each video display monitor”
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`to be “substantially contiguous with an exterior surface of said transitional
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`segment” in claims 15-19 (Response 51-52); (d) the “transparent cover unit”
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`to be “flushed with the adjacent wall surface structure” in claims 20-29
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`(Response 43-44, 50); and (e) “back lit panels” with the monitors in claims
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`11, 15-19 and 23 (Response 50, 52).
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`5.
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`I disagree with Patent Owner’s fire safety argument for all the claims and
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`grounds because, as I explain below, the fire safety concerns raised by
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`Patent Owner are unfounded.
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`6.
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`In particular, a POSITA in 1997 would not have been discouraged by fire
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`safety concerns from placing: (a) the screens of the LCD televisions in
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`Namikawa substantially flushed with the adjacent wall surface as required
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`by claims 5-7; (b) transparent cover units covering the LCD televisions in
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`Namikawa substantially flush with the adjacent surface structure of the
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`transitional wall portion as required by claims 8, 9 and 11-14; (c) the screens
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`of the LCD televisions in Namikawa substantially contiguous with the
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`5
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`No. IPR2017-01036
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`exterior surface of the transitional segment as required by claims 15-19; (d)
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`transparent cover units covering the LCD televisions in Namikawa flushed
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`with the adjacent wall surface structure as required by claims 20-29; and (e)
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`back lit panels with the monitors as required by claims 11, 15-19 and 23.
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`7.
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`A POSITA would not have been discouraged by fire safety concerns from
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`making any of the foregoing modifications to Namikawa because the
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`televisions in Namikawa are liquid crystal display (LCD) televisions (Ex.
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`1005, 6), which would not have generated sufficient heat to create any fire
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`hazard.
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`8.
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`LCD televisions available in 1997 typically did not generate much heat and
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`would not have created a fire hazard. In contrast, cathode ray tube (CRT)
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`televisions typically generated more heat and potentially could create a fire
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`hazard if not properly ventilated or cooled.
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`9.
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`As a result, the LCD televisions of Namikawa would not have generated
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`enough heat to create a fire hazard, even if their screens were placed
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`substantially flush (as required by claims 5-7) or substantially contiguous (as
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`required by claims 15-19) with the adjacent wall surface.
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`10. For example, in the mid-1990s, I worked on a railcar design project for
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`Colorado Railcar. As part of this project, I was asked to design the interior
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`of several railcars which had at least one flush-mounted LCD television in
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`6
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`No. IPR2017-01036
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`each railcar. To ensure the safety of the passengers and the equipment
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`installed in the railcars, I built a mock-up including a representative LCD
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`television which was flush-mounted, and measured the temperature of the
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`television during operation to determine whether it would pose a fire hazard.
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`The measured temperature was less than 125 degrees Fahrenheit, which
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`meant that the device was not hot-to-the-touch. This temperature was also
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`well below the specified operating temperature range of the television, the
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`upper limit of which was 140 degrees Fahrenheit. My measurement
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`indicated that the heat generated by the representative LCD television was
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`not enough to pose a fire hazard. As a result, it was not necessary to propose
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`a cooling system for the LCD televisions of the railcars.
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`11. Even if the screens of the LCD televisions in Namikawa were covered with
`
`transparent cover units and those cover units were placed substantially flush
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`(as required by claims 8, 9 and 11-14) or flush (as required by claims 20-29)
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`with the adjacent wall surface, the televisions would not have generated
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`enough heat to create a fire hazard. As discussed above, in 1997, LCD
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`televisions typically did not generate much heat, and they would not have
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`generated enough heat to create a fire hazard, even if their screens were
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`covered by flush-mounted cover units.
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`7
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`No. IPR2017-01036
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`12. The Consumer Product Safety Commission (“CPSC”) Guidelines for
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`Television Receiver Safety (Ex. 2005) do not support Patent Owner’s fire
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`safety argument because the guidelines do not address LCD televisions in
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`1997. The CPSC guidelines were published in 1974 and address only the
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`televisions that were available to consumers at that time, namely, CRT home
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`and portable televisions. In 1974, some CRT televisions generated
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`substantial heat and could create a fire hazard if not properly ventilated or
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`cooled. The CPSC guidelines address the fire hazard posed by these CRT
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`televisions available in 1974. At that time, LCD televisions were not
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`available to consumers. The CPSC guidelines published in 1974 do not
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`address LCD televisions in 1997.
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`13. As discussed above, in 1997 an LCD television would not have generated
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`enough heat to create a fire hazard, even if the televisions (or their cover
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`units) were flush-mounted. However, even if one were to assume for the
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`sake of argument that an LCD television would have generated enough heat
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`to create a fire safety risk, a POSITA in 1997 would have identified and
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`appreciated this risk and would have known how to address that risk, as
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`explained below.
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`14. A POSITA in 1997 would have been well aware of the need to avoid any
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`fire hazard in designing the passenger compartment in a rail or subway car.
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`8
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`No. IPR2017-01036
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`Therefore, a POSITA would have appreciated that a device such as a
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`television that generates heat may need to be evaluated to determine whether
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`it would need to be cooled as flush-mounted in the car. In particular, a
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`POSITA would have known how to determine whether a flush-mounted
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`television would have generated enough heat to exceed its specified
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`operating temperature range. Indeed, this is the procedure that I followed
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`when I evaluated the heat generated by the LCD televisions that were to be
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`flush-mounted in the railcar design project for Colorado Railcar in the mid-
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`1990s, discussed above.
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`15.
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`If a POSITA determined that a flush-mounted television would generate
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`excess heat, he or she also would have known how to safely dissipate that
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`heat. In particular, a POSITA would have known how to dissipate excess
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`heat into space behind the televisions in the cavity behind the interior wall
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`surface of the car, such that the television would operate within its specified
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`operating temperature range.
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`16. A POSITA would have known how to determine how much space would be
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`needed to dissipate the excess heat of the specific LCD television being
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`installed, based on his or her evaluation of the heat generated by that
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`television, also taking into account any related components, including, if
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`applicable, a cover unit. This would have been a straightforward
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`engineering project that a POSITA would have known how to evaluate and
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`address. Although the amount of space required would have varied
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`depending on the particular case, I estimate that for a typical LCD television
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`in 1997, the amount of space behind the television required to dissipate the
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`excess heat would have been relatively small, likely about 2 to 5 cm.
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`17.
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`If a POSITA determined that more cooling was necessary, he or she also
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`would have known how to use forced air ventilation to remove even more
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`heat. For example, a POSITA would have known how to remove warm air
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`in the space behind the television using a fan and a duct to another location,
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`such as outside the car or into a plenum space in the ceiling or wall of the
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`car. A POSITA would have known how to determine how much ventilation
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`would be needed, once again based on his or her evaluation of the heat
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`generated by that television, also taking into account any related
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`components, including, if applicable, a cover unit. This too would have
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`been a straightforward engineering project that a POSITA would have
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`known how to evaluate and address.
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`18.
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`If the LCD televisions were covered with a cover unit, a POSITA would also
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`know that some heat from the television screen could be dissipated into the
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`passenger compartment of the subway car using ventilation slots above and
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`below the screen.
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`10
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`19. Claims 11, 15-19 and 23 require a “back lit panel” “disposed on” the
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`“transitional wall portion” (claim 11), the “transitional segment” (claims 15-
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`19) or the “adjacent wall surface” (claim 23). Patent Owner argues that a
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`back lit panel in close proximity to a monitor mounted in the transitional
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`wall portion or segment would contribute more heat to the monitor and
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`create a fire hazard. (Response 50, 52, 55). I disagree with this position, as
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`explained below.
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`20. As an initial matter, only claims 11 and 19 require the back lit panel to be
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`“disposed adjacent” the monitor. Claims 15-18 and 23 require a back lit
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`panel but do not require it to be adjacent the monitor. Therefore, Patent
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`Owner’s fire safety argument based on the proximity of the back lit panel
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`and monitor does not apply to claims 15-18 and 23 because those claims
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`permit the back lit panel and monitor to be spaced apart, in which case the
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`heat generated by the back lit panel would not materially affect the monitor.
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`21. Even if a POSITA placed a back lit panel adjacent an LCD television of
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`Namikawa (as required by claims 11 and 19), the television and panel would
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`not have generated enough heat to create a fire hazard. In the mid-1990s,
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`back lit panels typically included a cooling mechanism that dissipated any
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`excess heat into the surrounding environment. For example, some back lit
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`panels included a space behind the lights so that excess heat could dissipate
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`and ambient air could circulate around the back lit panel. As a result, back
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`lit panels, particularly those that used fluorescent lights, would not have
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`contributed much heat to an adjacent LCD television. Therefore, a flush-
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`mounted LCD television would not have created a fire hazard, even if it was
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`next to a back lit panel.
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`22.
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`In any event, even if one were to assume for the sake of argument that the
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`panel could have contributed enough heat to an adjacent LCD television to
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`create a fire safety risk, a POSITA in 1997 would have identified and
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`appreciated this risk and would have known how to address that risk, in the
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`same manner as explained above. In particular, a POSITA would have
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`known how to determine how much space would be needed to dissipate the
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`excess heat of the LCD television and back lit panel and whether and how
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`much ventilation would also be needed.
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`23.
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`I disagree with Patent Owner’s argument that the 1997 FRA Proposed Rules
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`(Ex. 2004) prohibited a television to be flush-mounted in a rail car because
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`this would have created a fire hazard. (Response 3, 28; Ex. 2007, ¶11).
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`There is no statement in the FRA proposed rules that supports Patent
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`Owner’s argument. In fact, by the mid-1990s, there were interior fittings
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`that generated heat but that were flush-mounted in railcars in compliance
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`with the FRA rules. For example, Appendix B of my original declaration
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`displays a lighting fixture which was flush mounted in the Viewliner
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`railcars. (Ex. 1015, Appx. B.) These lighting fixtures generated heat and
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`were flush-mounted in compliance with the FRA rules. Moreover, as
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`discussed above, a POSITA would have identified any fire safety risk and
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`addressed it using the techniques for dissipating heat discussed above.
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`24. Patent Owner’s expert Dr. Zicherman states in his declaration that “[g]reat
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`care is taken when designing RRT cars to be used in underground operating
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`environments to avoid potential fires and fire hazards.” (Ex. 2007, ¶ 9
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`(emphasis added).) I agree that those who design railcars take great care to
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`avoid potential fires and fire hazards. That is precisely why a POSITA in
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`1997 would have understood the need to avoid potential fire hazards, and
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`why he or she would have carefully identified and addressed any such risks
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`using the techniques for dissipating excess heat discussed above.
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`25. This is also consistent with the fire safety requirements in sections 238.105
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`and 238.115 of the FRA Proposed Rules. Those requirements obligated
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`designers of new equipment for rail cars to identify fire safety risks and, if
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`needed, to implement overheat protection. (Ex. 2004 33, 73 (§
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`238.105(b)(8)), 76 (§ 238.115(c)).)
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`26. Patent Owner relies on the fact that Miyajima discloses some embodiments
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`in which ventilation may be used to cool a backlight for an LCD display.
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`13
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`(Ex. 1007, 3 [0012], 4 [0017], Fig. 2.) Miyajima’s disclosure does not
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`support Patent Owner’s argument. There is no indication in Namikawa that
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`its LCD televisions have backlights. Nevertheless, even if a given LCD
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`television in 1997 had a backlight, and the television (and/or its backlight)
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`generated too much heat, a POSITA would have identified this risk and
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`addressed it by using the techniques for dissipating excess heat discussed
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`above.
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`27. The 1995 Japan Train Operation Association (“JTOA”) Magazine reference
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`(Exs. 1002, 1003) demonstrates that in the mid-1990s, fire safety concerns
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`would not have discouraged a POSITA from placing LCD monitors
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`substantially flush with the adjacent wall surfaces in a rail car. The JTOA
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`describes an actual rail car in 1995 with LCD monitors embedded in a
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`plastic enclosure. In particular, the JTOA Magazine describes a Tobu
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`Railway 9050 Series Railroad Car, which was introduced in December 1994
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`in Japan. (Ex. 1003, 5.) According to the JTOA Magazine, “a nine-inch
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`liquid crystal monitor [was] provided above the side doors in each car.” (Ex.
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`1003, 4.) The LCD monitor was made “easy to see from the seats, by
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`mounting on the lintel inspection cover, which [was] formed from fiber-
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`reinforced plastic (FRP), and tilting it an angle of 30 degrees from the
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`vertical.” (Ex. 1003, 4.) The photographs of the interior of the car on front
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`page of the JTOA Magazine (shown below) show that these LCD monitors
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`were mounted so that they were partially embedded in the plastic lintel cover
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`such that the monitors appear to be substantially flush with the adjacent
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`surfaces:
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`15
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`(Ex. 1002, 1; see also Ex. 1015 ¶56.) Thus, the JTOA Magazine
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`demonstrates that those skilled in the art in the mid-1990s could safely
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`embed an LCD monitor in a plastic enclosure in a railcar without creating a
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`fire hazard. In other words, it is real-world evidence that shows that
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`enclosed LCD monitors would not have posed any fire risk or that those
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`skilled in the art were able to safely address that risk.
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`B.
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`Patent Owner’s Namikawa Arguments
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`28.
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`I disagree with Patent Owner’s assertion that “[n]othing within the teachings
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`of Namikawa teaches or suggests the availability of space beyond the wall,
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`let alone the availability of space beyond the wall at the junction of the
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`sidewall and the ceiling to allow for the screen of the monitor to be
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`substantially flushed with the adjacent wall surface structure of the car.”
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`(Response 9, 21-25, 42). In 1997, a subway car was normally constructed to
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`have a cavity in between its interior wall and its exterior shell. The ’602
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`patent confirms this by stating that “[a] subway car is normally constructed
`
`so that it has a cavity wall, defined between its outer structural shell and its
`
`inner lining wall, the cavity providing for wiring and cables and other
`
`mechanical functions, and, at places, containing insulation.” (Ex. 1001,
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`3:55-59) (emphasis added).
`
`29. Such a cavity served several important purposes. For example, as passenger
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`comfort became an important factor in designing railcars, railcar
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`manufacturers decided to add thermal insulation in the cavity. These
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`materials ensured that the interior of the railcar remained fairly insulated
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`from the temperature fluctuations outside of the railcar and made heating or
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`cooling the cabin easier and cheaper. Moreover, railcar manufacturers
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`decided to add sound deadening materials to the cavity because these
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`materials ensured a quiet and comfortable travelling experience for the
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`passengers. In addition, railcar manufacturers decided to run the wires and
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`cables in the cavity because it was safer and more aesthetically pleasing to
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`keep the wires and cables invisible to passengers. In sum, by 1997, a
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`normally constructed subway car had a cavity space which could have
`
`included space for a variety of materials, including but not limited to (a)
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`thermal insulation, (b) sound deadening material, (c) wiring and cabling, and
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`(d) an array of structural members which could be used for the mounting of
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`interior equipment. All of this would have been known by a POSITA in
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`1997.
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`30.
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`In view of the foregoing, a POSITA in 1997 would have understood Figure
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`1 of Namikawa to depict a “normally constructed” subway car that had a
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`cavity between the interior wall and the exterior shell. In particular, a
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`POSITA would have understood Figure 1 to disclose a subway car that had
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`space behind the wall at the junction of the sidewall and the ceiling
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`sufficient to permit the screen (or cover unit) of the LCD televisions to be
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`placed substantially flush (or substantially contiguous or flush) with the
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`adjacent wall surface. The existence of this cavity in Namikawa is further
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`evidenced by the fact that no wires or cables are shown running to the LCD
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`televisions in Figure 1, which means they are in the cavity behind the wall.
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`All of this is consistent with the common practice of subway car design in
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`mid-1990s.
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`31.
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`I disagree with Patent Owner’s assertion that because the cavity of
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`Namikawa would include thermal insulation, sound deadening material,
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`wiring and cabling, structural members, etc., there would be no room left to
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`place the screens (or cover units) of Namikawa’s televisions substantially
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`flush (or substantially contiguous or flush) with the adjacent wall surface.
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`(Response 22, 24.) Despite these materials and structures in the cavity, there
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`still would have been sufficient space to place the televisions substantially
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`flush with adjacent wall surfaces. In particular, not much space would have
`
`been needed to flush-mount the LCD televisions because the televisions
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`would have been relatively thin. Moreover, even if a POSITA would have
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`needed to use some space behind the television to dissipate excess heat,
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`there still would have been enough space in the cavity to flush-mount the
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`television. Further, the foregoing also would have been true if the LCD
`
`television had a cover unit or if there was a back lit panel next to the
`
`television. In all cases, there would have been enough space in the cavity at
`
`the junction to flush-mount the television or cover unit and safely dissipate
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`any excess heat.
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`19
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`32.
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`In addition, a POSITA would have known that, if necessary to create more
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`space, many of the components or materials included in the cavity could
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`have been moved around. For example, thermal insulation, sound deadening
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`material, wires and cables could be moved to make room for other
`
`components. Therefore, to any extent additional space was needed, a
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`POSITA would have known how to make the necessary space by moving
`
`other components in the cavity.
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`33.
`
`I disagree with Patent Owner’s assertion that the televisions of Namikawa
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`are “externally mounted.” (Response, 9). There is no basis for saying
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`Namikawa’s televisions are “externally mounted” because Namikawa does
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`not describe or show the mounting structure. At best, it is unclear whether
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`the mounting structure is on the wall or behind the wall in the cavity.
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`However, typically the mounting structure would be behind the wall in the
`
`cavity behind the inner wall. In any event, whether or not the televisions of
`
`Namikawa are “externally mounted” does not matter. Either way, a
`
`POSITA would have been motivated to place the screens (or cover units) of
`
`the televisions substantially flush (or substantially contiguous or flush) with
`
`the adjacent wall surface, for all the reasons I set forth in my original
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`declaration. (Ex. 1015 ¶¶31, 49-54, 70, 94-95, 107-108). In particular, as I
`
`explained in paragraphs 49-54 of my original declaration, a POSITA would
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`20
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`have had several reasons to make the necessary modifications. (Ex. 1015
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`¶¶49-54.)1
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`34. Moreover, regardless of whether the televisions in Namikawa are “externally
`
`mounted,” a POSITA in 1997 would have known how to make the necessary
`
`modifications. For example, a POSITA would have known how to and
`
`could have easily modified the curved panels next to the televisions (or
`
`cover units) to be substantially flush by replacing the curved panels with flat
`
`panels. The widespread use of fiberglass panels at the junction of a sidewall
`
`and ceiling in subway cars in the mid-1990s would have allowed a POSITA
`
`great flexibility in modifying the shape of the panels adjacent the televisions
`
`to align the surfaces to be substantially flushed.
`
`35.
`
`I disagree with Patent Owner’s assertion that “a POSITA, in the 1995-1997
`
`timeframe, would have no knowledge of a structural member disposed
`
`between an inner wall and an outer structural shell for securing the
`
`enclosure.” (Response 42). In 1997, a typical subway car would have
`
`included pillars (or side posts) and structural members between the interior
`
`wall and exterior shell of the car. In fact, rail and subway cars have typically
`
`
`
`1 See also paragraphs 69-70, 90, 93-95, 106-108, and 110 (Ex. 1015).
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`21
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`included these pillars and structural members since at least the 1950s. These
`
`components held together the structure and frame of the railcar, and
`
`facilitated the mounting of interior fittings in the cavity between the inner
`
`wall and the outer shell. Moreover, this design created cavity space between
`
`the inner wall and the outer shell of the railcar to permit insulation, wiring,
`
`conduits, and air ducts to be included in the cavity, as discussed above.
`
`36. The specification of the ’602 patent confirms that a “typical subway car” in
`
`1997 included structural members for securing the enclosure. (Ex. 1001,
`
`4:57-59, 5:8-9.) Figures 1A, 1B, and 3 of the ’602 patent display a “typical
`
`subway car 10” or “an existing subway car as used on the Toronto Transit
`
`System.” (Id., 4:36-40, 4:43-45 (describing “an existing subway car”), 4:57-
`
`59, 5:8-9, 6:11-28.) For this “typical subway car,” the patent describes and
`
`depicts “structural pillars 30 mounted at intervals and secured to the vertical
`
`structural member 32.” (Id., 5:9-12, Fig. 3.)
`
`37.
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`In view of the foregoing, a POSITA would understand the subway car
`
`depicted in Figure 1 of Namikawa to be a typical subway car with a
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`structural member beyond the wall to which an enclosure could be secured.
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`C.
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`Patent Owner’s Maekawa Arguments
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`38.
`
`I disagree with Patent Owner’s argument that Maekawa does not disclose a
`
`“self-contained” wiring cabling system as required by claim 7 because
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`22
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`Maekawa “is entirely silent as to whether it is self-contained independent of
`
`any previously installed track, tunnel or control systems.” (Response 34-
`
`37.)
`
`39. Patent Owner’s argument is based on the premise that the phrase “self-
`
`contained wiring cabling system” in claim 7 requires a system that is
`
`“independent of any previously installed track, tunnel or control systems.”
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`(Response 8, 34-37.) However, the specification of the ’602 patent merely
`
`states that when a self-contained wiring cabling system is used, “the
`
`operation of the video system is independent of any previously installed
`
`track, tunnel or control systems.” (Ex. 1001, 3:2-4) (emphasis added). The
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`specification does not state that the self-contained wiring cabling system
`
`itself is independent of any previously installed track, tunnel or control
`
`systems. Instead, the specification describes a self-contained wiring cabling
`
`system as one in which the “video signal source and the monitors [are]
`
`interconnected by suitable electrical cable systems which are self-contained
`
`within the subway car.” (Ex. 1001, 2:64-66.) Therefore, based on the
`
`specification, a “self-contained wiring cabling system” is simply a wiring
`
`cabling system that is “self-contained within the subway car.” (Id.)
`
`40. Using this correct interpretation, Maekawa discloses a self-contained wiring
`
`cabling system because it discloses a wiring cabling system that is self-
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`23
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`contained within the railcar. Specifically, Maekawa discloses a self-
`
`contained wiring cabling system because each car includes antennas 30a-d
`
`on the roof of the car, which are connected via coaxial cables 35 to under-
`
`floor unit 40, which outputs the video signal via another coaxial cable to a
`
`three-way distributor 61, which is in turn connected via two-way distributors
`
`to the various televisions in the car. (Ex. 1015 ¶65; Ex. 1009, 3, 4, 5, Figs.
`
`1-3). This wiring cabling system is contained entirely within the car.
`
`Therefore, Maekawa discloses a “self-contained wiring cabling system” as
`
`required by claim 7.
`
`41. Maekawa also discloses a “self-contained wiring cabling system” even under
`
`Patent Owner’s incorrect interpretation discussed above, which would
`
`require the wiring cabling system to be “independent of any previously
`
`installed track, tunnel or control systems.” (Response 8, 34-37.) Maekawa
`
`discloses such a wiring cabling system because the signal displayed on the
`
`television receivers in each railcar is received by antennas on the roof of that
`
`railcar and transmitted via cables in the car to the televisions in the same car.
`
`This cabling system is contained within the railcar and is independent of any
`
`previously installed track, tunnel or control systems. Therefore, it is a “self-
`
`contained wiring cabling system.”
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`24
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`No. IPR2017-01036
`Second Supp. Expert Decl. of Lowell Malo
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`V. COMPENSATION
`
`42. Although I am compensated for the time I work on this proceeding, this
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`compensation is not dependent on the outcome of this proceeding.
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`
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`Dated: April 20, 2018
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`Lowell Malo
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`25
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