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
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE PURSUANT TO 37 C.F.R. § 42.23
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`
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`
`
`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
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................... ii
`
`TABLE OF PETITIONER’S EXHIBITS ................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S RESPONSE DOES NOT REBUT
`PETITIONER’S UNPATENTABILITY EVIDENCE AND
`ARGUMENTS ................................................................................................ 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`Patent Owner’s Fire Safety Arguments ................................................. 2
`
`Patent Owner’s Namikawa Arguments ............................................... 12
`
`Patent Owner’s Sasao Arguments ....................................................... 16
`
`Patent Owner’s Maekawa Arguments ................................................. 18
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`Patent Owner’s Sedighzadeh and Yamada Arguments ....................... 19
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`Patent Owner’s Schwenkler Arguments ............................................. 23
`
`Patent Owner’s Irrelevant Prior Art Distinctions ................................ 24
`
`Patent Owner’s Attempt to Discredit Petitioner’s Expert ................... 25
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`Patent Owner’s Expert’s Opinions ...................................................... 26
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`III. CONCLUSION .............................................................................................. 27
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`CERTIFICATE OF WORD COUNT ...................................................................... 29
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`CERTIFICATE OF SERVICE ................................................................................ 30
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`Cases
`
`In re Ethicon, Inc.,
`844 F.3d 1344 (Fed. Cir. 2017) ............................................................................26
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .............................................................................. 8
`
`Meiresonne v. Google, Inc.,
`849 F.3d 1379 (Fed. Cir. 2017) ..................................................................... 17, 24
`
`Pharmacosmos A/S v. Luitpold Parm., Inc.,
`IPR2015-01493, Paper 54 (P.T.A.B. Dec. 28, 2016) ...........................................26
`
`
`
`
`
`
`
`ii
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`
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`TABLE OF PETITIONER’S EXHIBITS
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`Exhibit
`
`Description
`
`
`
`1001
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`1002
`
`1003
`
`1004
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`1005
`
`1006
`
`1007
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`1008
`
`1009
`
`1010
`
`1011
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`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`U.S. Patent No. 6,700,602
`
`Japan Train Operation Association Magazine, Vol. 37, issue
`no. 3 (March 1, 1995)
`
`Translation of Ex. 1002
`
`Japanese Publication No. 04-085379 [Namikawa]
`
`Translation of Ex. 1004
`
`Japanese Publication No. 07-181900 [Miyajima]
`
`Translation of Ex. 1006
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`Japanese Publication No. 04-160991 [Maekawa]
`
`Translation of Ex. 1008
`
`Japanese Publication No. 04-322579 [Sasao]
`
`Translation of Ex. 1010
`
`File history of the ’602 Patent
`
`Reexamination file history of the ’602 Patent
`
`Curriculum Vitae of Lowell Malo
`
`Expert Declaration of Lowell Malo
`
`Declaration of Shuichi Matsuda
`
`Translation of Ex. 1016
`
`Certification from Japan National Diet Library Explaining
`Workflow Procedure in the Library
`
`1019
`
`Translation of Ex. 1018
`
`iii
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`
`
`Exhibit
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`Description
`
`
`
`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`
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`Japanese Publication No. 02-223985 [Amano]
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`Translation of Ex. 1020
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`U.S. Patent No. 5,293,244 [Kawaguchi]
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`Certification from Japan National Diet Library Indicating
`Receipt Date of Japan Train Operation Association Magazine
`
`Translation of Ex. 1023
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`U.S. Pat. No. 5,148,282 [Sedighzadeh]
`
`U.S. Pat. No. 3,211,904 [Schwenkler]
`
`Japanese Publication No. 05-42853 [Yamada]
`
`Translation of Ex. 1027
`
`[Not filed] Supplemental Expert Declaration of Lowell Malo
`
`[Not filed] Morrison-Knudsen Design Drawing E02-841
`
`[Not filed] Luminator Design Drawing ICD-108393
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`[Not filed] Morrison-Knudsen Design Drawing E2877C01
`
`Declaration of Mark A. Chapman
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`Second Supplemental Expert Declaration of Lowell Malo
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`First Deposition Transcript of Joseph B. Zicherman
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`First Zicherman Deposition Exhibit No. 6
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`First Zicherman Deposition Exhibit No. 8
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`Second Deposition Transcript of Joseph B. Zicherman
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`Second Zicherman Deposition Exhibit No. 1
`
`iv
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`I.
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`INTRODUCTION
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`Patent Owner’s (“PO”) primary argument in the Response is that a person of
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`ordinary skill in the art (“POSITA”) would not have been motivated to place the
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`screens (or transparent cover units) of the televisions of Namikawa substantially
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`flush (or substantially contiguous or flush) with the adjacent wall surface because
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`the televisions would overheat and create a fire hazard.
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`As explained below, PO’s fire safety argument should be rejected for several
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`reasons, including the fact that PO’s expert admitted at his deposition that he did
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`not know whether the televisions of Namikawa would create a fire hazard—
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`thereby negating the key premise underlying PO’s argument. Indeed, as
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`Petitioner’s expert explains, the televisions of Namikawa are LCD televisions that
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`would not have generated enough heat to create a fire hazard. Moreover, even
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`assuming that they would have, a POSITA would have identified any fire safety
`
`risk and known how to safely address the risk by dissipating excess heat.
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`Therefore, contrary to PO’s argument, fire safety concerns would not have
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`discouraged a POSITA from flush-mounting Namikawa’s televisions.
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`As explained below, PO’s other arguments distort the disclosures of the
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`prior art or are off point because they are not directed to the proposed
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`combinations.
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`
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`1
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`II.
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`PATENT OWNER’S RESPONSE DOES NOT REBUT
`PETITIONER’S UNPATENTABILITY EVIDENCE AND
`ARGUMENTS
`
`
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`The arguments and evidence in the Response do not rebut Petitioner’s
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`arguments and evidence, which demonstrate that all the challenged claims (claims
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`5, 7-9 and 11-29) are unpatentable as obvious in view of the prior art references in
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`the instituted grounds (Grounds A, E, I and M).
`
`A.
`
`Patent Owner’s Fire Safety Arguments
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`As explained in the Petition, it would have been obvious to place
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`Namikawa’s televisions so that the screens (or cover units) were substantially flush
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`(or substantially contiguous or flush) with the adjacent wall surface, based on
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`Sasao’s teaching. (Petition 13-15, 26-29, 45-48, 73; Ex. 1015 ¶¶49-52, 70, 94-95,
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`107-108.) In particular, as explained, a POSITA would have been motivated to do
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`this for several reasons. (Petition 13-15, 28-29, 45-47, 73; Ex. 1015 ¶¶31, 52-54.)
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`In the Response, PO does not dispute these motivations identified by
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`Petitioner. Instead, PO’s primary response is to make a new argument not made in
`
`the Preliminary Response: PO now argues that a POSITA would not have been
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`motivated to place Namikawa’s televisions substantially flush because the
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`televisions would overheat and create a fire hazard. (See, e.g., Response 25-32.)
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`PO makes substantially the same fire safety argument for all the claims and
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`instituted grounds, adjusting the argument superficially to account for the specific
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`
`
`2
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`
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`
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`language of the various limitations. (See id. 25-32, 37-38, 43-44, 50-52; Ex. 2007,
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`¶¶15, 18, 25, 27-34; Ex. 2009, ¶¶15, 25, 27, 28, 34, 37.) Specifically, PO makes
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`substantially the same fire safety argument for the limitations that require: (a) the
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`“screen of the monitor” to be “substantially flushed with the adjacent wall surface”
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`in claims 5-7 (Response 25-32); (b) the “transparent cover units covering” the
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`“video 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 (id. 37-38, 50);
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`(c) the “video screen of each video display monitor” to be “substantially
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`contiguous with an exterior surface of said transitional segment” in claims 15-19
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`(id. 51-52); (d) the “transparent cover unit” to be “flushed with the adjacent wall
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`surface structure” in claims 20-29 (id. 43-44, 50); and (e) “back lit panels” with the
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`monitors in claims 11, 15-19 and 23 (id. 50, 52).
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`PO’s fire safety argument should be rejected for all the grounds and claims,
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`for the following reasons.
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`First, at his deposition, PO’s expert Joseph Zicherman would not defend the
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`key premise underlying PO’s fire safety argument. This premise is that if the
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`television screens (or cover units) of Namikawa were placed substantially flush (or
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`substantially contiguous or flush) with the adjacent wall surfaces, the televisions
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`would overheat and create a fire hazard. But Dr. Zicherman admitted that he did
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`
`
`3
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`
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`not know whether the heat produced by the televisions of Namikawa would create
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`a fire hazard if they were flush-mounted:
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`Q. Do you know if the heat produced by the televisions of
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`
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`Namikawa pose a fire hazard?
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`Mr. Keyhani: Objection.
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`A. No, I don’t know.
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`Q. So you don’t know if by flush mounting the televisions of
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`Namikawa, they would pose a fire hazard?
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`Mr. Keyhani: Objection. Asked and answered.
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`A.
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`I don’t know until I have the technical parameters of these TVs.
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`You’re pulling all this hypothetical stuff out of the air.
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`Q.
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`It is your testimony today that you do not have enough
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`information about the televisions of Namikawa to know that if
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`they would pose a fire hazard?
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`A. That’s correct.
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`(Ex. 1035, 150:21-151:13.) This failure to defend the premise underlying PO’s
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`argument completely undermines the argument: Unless the televisions of
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`Namikawa would have overheated and created a fire hazard, a POSITA plainly
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`would not have been discouraged by fire safety concerns from flush-mounting
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`them. Therefore, this admission is a sufficient reason to reject PO’s argument.
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`
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`Second, PO’s fire safety argument should be rejected because the televisions
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`in Namikawa are liquid crystal display (LCD) televisions (Ex. 1005, 6), which
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`would not have generated enough heat to create a fire hazard. As Petitioner’s
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`
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`4
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`
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`expert Lowell Malo explains in his supplemental declaration (Ex. 1034), LCD
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`televisions available in the mid-1990s did not generate much heat, in contrast to
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`cathode ray tube (CRT) televisions, which could get much warmer and potentially
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`create a fire hazard if not properly ventilated. (Id. ¶8; Ex. 2008 28:18-30:2.)1
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`Therefore, Namikawa’s LCD televisions would not have generated enough heat to
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`create a fire hazard, even if the screens (or cover units) were placed substantially
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`flush (or substantially contiguous or flush) with the adjacent wall surface. (Ex.
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`1034 ¶¶8-11, 20-21.)
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`Third, the Consumer Product Safety Commission Guidelines (Ex. 2005)
`
`(“CPSC guidelines”) on which PO relies (e.g., Response 30) are off point. (Ex.
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`1034 ¶12.) The CPSC guidelines were published in 1974 and address the then-
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`available home and portable CRT televisions. (Id.; Ex. 2005.) As Dr. Zicherman
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`acknowledged, LCD televisions were not available to consumers until years after
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`1974. (Ex. 1035, 112:22-113:4.) Therefore, the CPSC guidelines published in
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`1974 did not address LCD televisions at all, much less LCD televisions in 1997.
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`(Ex. 1034 ¶12.) As a result, the guidelines do not show that LCD televisions in
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`1997 mounted with their screens (or cover units) substantially flush (or
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`1 Dr. Zicherman agreed that LCD televisions generate less heat than CRT
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`televisions. (Ex. 1035, 25:24-26:2.)
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`
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`5
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`
`
`
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`substantially contiguous or flush) with the adjacent wall surface would have
`
`created a fire hazard.
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`Fourth, even if one assumes that the LCD televisions in Namikawa would
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`have overheated, a POSITA would have appreciated any fire safety risk and known
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`how to address that risk by dissipating excess heat into space behind the
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`televisions. (Ex. 1034 ¶¶13-22.) As Mr. Malo explains, a POSITA would have
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`known how to place the screens (or cover units) of Namikawa’s televisions
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`substantially flush (or substantially contiguous or flush) with the adjacent wall
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`surface while ensuring there was enough space behind each television to dissipate
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`excess heat. (Id. ¶¶15-16.) Similarly, a POSITA would have known how to
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`dissipate excess heat in this manner even if back lit panels were placed next to the
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`televisions. (Id. ¶22.)2 In all cases, a POSITA would have known how to dissipate
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`sufficient heat to ensure that the television (and back lit panel) operated within the
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`specified operating temperature range. (Id. ¶¶15-16, 22.) Moreover, if a POSITA
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`determined that more cooling was necessary, he or she would have known how to
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`use forced air ventilation to remove more heat, by, for example, using a fan and a
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`2 PO’s argument that placing back lit panels next to monitors would cause them to
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`overheat can apply only to claims 11 and 19, which recite an “adjacent” panel and
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`monitor, not claims 15-18 and 23, which do not require them to be adjacent. (Id.
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`¶20.)
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`
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`6
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`
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`duct to another location, such as outside the car or into a plenum space in the
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`ceiling or wall. (Id. ¶¶17, 22.)
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`Indeed, Dr. Zicherman confirmed that a POSITA would have known how to
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`safely dissipate excess heat generated by a flush-mounted LCD television using
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`space inside the wall and a duct to move hot air away. (Ex. 1035, 54:8-55:3,
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`57:12-58:21, 64:9-65:22, 90:11-92:10.) As he explained, televisions “don’t present
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`a fire hazard if they’re . . . installed properly.” (Id., 102:9-10.)3
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`Fifth, PO’s argument that the Federal Railroad Administration 1997
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`Proposed Rules (Ex. 2004) prohibited televisions from being flush-mounted
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`because this would have created a fire hazard (Response 3, 28; Ex. 2007 ¶11) is
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`unsupported. (Ex. 1034 ¶23.) PO does not point to any statement in the rules that
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`says this, and there is none. Instead, PO relies on the clause “to the extent
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`possible” in the requirement that “to the extent possible, all interior fittings in a
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`passenger car, except seats, shall be recessed or flush mounted.” (Response 26;
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`Ex. 2007 ¶11.) This requirement is in section 238.233, which addresses interior
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`fittings and surfaces (Ex. 2004, 42, 79); fire safety requirements are separately set
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`forth in sections 238.105 and 238.115 (id. 33-34, 36, 73-74, 76), and state nothing
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`that supports PO’s argument. In fact, as Mr. Malo explains, by the mid-1990s,
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`3 He colorfully added that “only an idiot would install [monitor 22 of the ’602
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`patent] without ventilation.” (Id., 117:20-119:3.)
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`
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`7
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`
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`fixtures that generated heat had been flush-mounted in rail cars in compliance with
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`FRA requirements. (Ex. 1034 ¶23.)4
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`Sixth, PO’s assertion that “[g]reat care is taken when designing RRT cars to
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`be used in underground operating environments to avoid potential fires and fire
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`hazards” (Response 3, 27; Ex. 2007 ¶ 9) demonstrates that a POSITA would have
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`appreciated the need avoid fire risks, and would have identified and addressed any
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`such risks by dissipating excess heat, as discussed above. (Ex. 1034 ¶24.)
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`Similarly, the FRA fire safety requirements required designers of new equipment
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`to identify fire safety risks and, if needed, to implement overheat protection. (Ex.
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`2004, 33, 73 (§ 238.105(b)(8)), 76 (§ 238.115(c)).)5 This further demonstrates that
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`a POSITA would have identified and addressed any fire safety risks. (Ex. 1034
`
`¶25.)
`
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`4 In the Response, PO has abandoned the argument in the Preliminary Response
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`that a television is not an “interior fitting” subject to the FRA flush-mounting
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`requirement. (Preliminary Response 15-19.) Therefore, PO has waived this
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`argument, as well as any other arguments not repeated in the Response. See In re
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`NuVasive, Inc., 842 F.3d 1376, 1380-81 (Fed. Cir. 2016) (arguments made in
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`Preliminary Response but not made in Response are waived).
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`5 PO’s expert testified that these FRA overheat protection requirements are “part of
`
`the mitigation fire safety kit that [he] would consider.” (Ex. 1035, 102:16-21.)
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`
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`8
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`
`
`
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`Seventh, PO’s reliance on Miyajima’s embodiments in which ventilation
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`may be used to cool a backlight for an LCD display (Response 30-31; Ex. 1007, 3
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`[1012], 4 [0017], Fig. 2) is misplaced. There is no indication in Namikawa that its
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`LCD televisions have backlights. (Ex. 1034 ¶26.) In any event, regardless of
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`whether a given LCD television in 1997 had a backlight, to the extent that the
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`television (and/or backlight) generated excess heat, a POSITA would have
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`identified and addressed any fire safety risk, as discussed above. (Id.)
`
`
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`Eighth, the 1995 Japan Train Operation Association (“JTOA”) Magazine
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`(Exs. 1002, 1003) demonstrates that in the mid-1990s, fire safety concerns would
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`not have discouraged a POSITA from placing LCD monitors substantially flush
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`with the adjacent wall surface in a rail car. (Ex. 1034 ¶27.) The JTOA Magazine
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`describes an actual rail car in 1995 with LCD monitors embedded in a plastic
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`enclosure. (Ex. 1003, 1, 4.) Specifically, it describes a Tobu Railway 9050 Series
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`Railroad Car, in which a “liquid crystal monitor [was] provided above the side
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`doors” and “mount[ed] on the lintel inspection cover, which [was] formed from
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`fiber-reinforced plastic (FRP).” (Id. 1, 4.) These photos from the JTOA Magazine
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`show that the LCD monitors were partially embedded in the plastic lintel cover
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`such that the monitors appear to be substantially flush with the adjacent surface:
`
`
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`9
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`
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`
`
`
`
`
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`10
`10
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`
`
`
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`(Ex. 1002, 1; Ex. 1015 ¶56; Ex. 1034 ¶27.) Thus, the JTOA Magazine is real-
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`world evidence that an LCD monitor embedded in a plastic enclosure in a rail car
`
`in the mid-1990s would not have posed any fire risk, or that those skilled in the art
`
`were able to safely address that risk. (Ex. 1034 ¶27.)
`
`
`
`Finally, PO’s fire safety argument is not supported by anything in the ’602
`
`patent specification. The specification does not state that there was a problem
`
`flush-mounting monitors in subway cars because of fire safety concerns, much less
`
`that the inventor solved any such problem. Indeed, the specification never
`
`mentions overheating of monitors or fire safety concerns, including when it
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`explains that a CRT or LCD monitor can be enclosed in an enclosure of “stainless
`
`steel, rigid plastic or the like” and that the enclosed LCD monitor “can be moved
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`towards the ceiling so that its viewing screen is substantially flush with or even
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`behind the light panel 40.” (Ex. 1001, 5:21-23, 5:35-49.)6
`
`
`
`In sum, contrary to PO’s argument, a POSITA would not have been
`
`discouraged by fire safety concerns from placing the screens (or cover units) of
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`Namikawa’s LCD televisions substantially flush (or substantially contiguous or
`
`
`6 The absence of any mention of fire safety problems is consistent with Dr.
`
`Zicherman’s testimony that he is not aware of any LCD television in a railcar
`
`having overheated and caused a fire. (Ex. 1035, 37:13-16.)
`
`
`
`11
`
`
`
`
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`flush) with the adjacent wall surface (even if next to back lit panels), and would
`
`have known how to do this safely.
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`B.
`
`Patent Owner’s Namikawa Arguments
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`PO’s arguments about Namikawa should be rejected because they distort its
`
`disclosure and ignore features of typical subway cars described in the ’602 patent.
`
`PO incorrectly argues that Namikawa’s televisions are not “substantially
`
`flush” with the adjacent wall surface because they are “externally mounted.”
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`(Response 9, 18-20; Ex. 2009, ¶16.) This assertion is unsupported because the
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`mounting structure is not described or shown in Namikawa. (Ex. 1034 ¶33.) At
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`best, it is unclear whether the mounting structure is on the wall or behind the wall
`
`in the cavity, but, as Mr. Malo explains, typically the mounting structure would be
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`behind the wall in the cavity. (Ex. 1015, ¶¶41-42; Ex. 1034 ¶33.)
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`In any event, it does not matter whether Namikawa’s televisions are
`
`externally mounted. Petitioner contends that, even if the screens (or cover units) of
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`Namikawa’s televisions are deemed not to be substantially flush (or substantially
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`contiguous or flush), it would have been obvious to place them this way. (Petition
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`13-15, 26-29, 45-48, 73.) Therefore, regardless of whether the televisions are
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`externally mounted, the required modifications would have been obvious because a
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`POSITA would have been motivated to, and known how to, place the screens (or
`
`cover units) substantially flush (or substantially contiguous or flush) with the
`
`
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`12
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`
`
`
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`adjacent wall surface. (Ex. 1015 ¶¶31, 49-54, 70, 94-95, 107-108.) For example, a
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`POSITA would have known how to modify the curved surfaces next to the
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`televisions to be substantially flush by replacing the curved panels with flat panels.
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`(Ex. 1034 ¶34.) The widespread use of fiberglass panels at the junction of a
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`sidewall and ceiling in subway cars in the mid-1990s would have allowed a
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`POSITA great flexibility in modifying the shape of the panels to align the surfaces
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`to be substantially flush. (Id.)
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`PO also incorrectly argues that Namikawa does not teach the availability of
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`space beyond the wall, including space beyond the wall at the junction of the
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`sidewall and the ceiling. (Response 9, 21-25, 42; Ex. 2009, ¶¶16, 22, 29.)
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`However, as Mr. Malo explains, in 1997, a subway car was normally constructed
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`to have a cavity between its interior wall and exterior shell. (Ex. 1034 ¶28.) This
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`cavity allowed space for a variety of materials, including (a) thermal insulation, (b)
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`sound deadening material, (c) wiring and cabling, and (d) an array of structural
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`members which could be used for the mounting of interior equipment. (Id. ¶29.)
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`All of this was known to a POSITA in 1997. (Id.)
`
`Indeed, the ’602 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,
`
`
`
`13
`
`
`
`
`
`3:55-59 (emphasis added).) And PO’s expert admitted that in 1997, “a subway car
`
`was normally constructed such that it had a cavity in between its interior wall and
`
`its exterior shell.” (Ex. 1038, 16:5-9.)
`
`Therefore, a POSITA in 1997 would have understood Figure 1 of Namikawa
`
`to depict a “normally constructed” subway car with a cavity between the interior
`
`wall and the exterior shell. (Ex. 1034 ¶30.) In particular, a POSITA would have
`
`understood Figure 1 to disclose a car with sufficient space behind the wall at the
`
`junction of the sidewall and the ceiling to allow the screens (or cover units) of the
`
`televisions to be placed substantially flush (or substantially contiguous or flush)
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`with the adjacent wall surface. (Id.)
`
`PO also argues that even if there is a cavity in Namikawa, there would be no
`
`space to flush-mount Namikawa’s televisions because the cavity would be filled by
`
`thermal insulation, sound deadening material, wiring and cabling, structural
`
`members, etc. (Response 22, 24; Ex. 2009 ¶29.) But as Mr. Malo explains,
`
`despite these materials and structures, there still would be sufficient space to place
`
`the screens (or cover units) of the televisions substantially flush (or substantially
`
`contiguous or flush) with the adjacent wall surface. (Ex. 1034 ¶31.) Not much
`
`space would be needed because the LCD televisions would have been relatively
`
`thin, and any additional space needed to dissipate heat would have been small.
`
`
`
`14
`
`
`
`
`
`(Id.) Moreover, a POSITA would have known how to move materials within the
`
`cavity to make space as needed. (Id. ¶32.)7
`
`Finally, for claims 13 and 25, PO argues that Namikawa does not disclose “a
`
`structural member beyond the wall to which an enclosure could be secured.”
`
`(Response 42, 44-45; Ex. 2009, ¶33.) PO ignores the ’602 patent specification,
`
`which describes a “typical subway car” as having structural members for securing
`
`the enclosure. (Ex. 1001, 4:57-59, 5:8-9.) Figures 1A, 1B and 3 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, 4:57-59, 5:8-9, 6:11-28.) This typical subway car
`
`has “structural pillars 30 mounted at intervals and secured to the vertical structural
`
`member 32.” (Id. 5:9-12, Fig. 3.)8 Therefore, PO’s assertion that a POSITA in
`
`1997 “would have no knowledge of a structural member disposed between an inner
`
`wall and an outer structural shell for securing the enclosure” (Response 42) is
`
`
`7 PO’s expert testified that ventilation behind televisions would be possible in the
`
`cavity of the “typical subway car” shown in the ’602 patent despite the “insulation,
`
`wiring, ducting,” etc. (Ex. 1035, 120:3-122:4, 130:2-20.) He also testified that as
`
`little as 2 cm of space behind a television would be sufficient to ventilate any
`
`excess heat. (Id. 57:12-58:21.)
`
`8 PO’s expert agreed that in 1997 subway cars typically included these structures.
`
`(Ex. 1038, 20:24-21:18.)
`
`
`
`15
`
`
`
`
`
`contradicted by his own specification’s description of a “typical subway car.” (Ex.
`
`1034 ¶36.)
`
`Mr. Malo confirms that in 1997, a typical subway car had pillars and
`
`structural members between the inner wall and outer shell, which held together the
`
`structure and frame of the car, and facilitated mounting of interior fittings in the
`
`cavity between the inner wall and outer shell. (Id. ¶35.) Therefore, a POSITA
`
`would have understood Figure 1 of Namikawa to depict a “typical subway car”
`
`with a structural member beyond the wall to which an enclosure could be secured.
`
`(Id. ¶37.)
`
`C.
`
`Patent Owner’s Sasao Arguments
`
`PO argues that Sasao narrowly teaches a “modified rear projection television
`
`. . . [that] is structured to be supported on the floor in a cabinet in an interior of a
`
`wall of an ordinary residence.” (Response 9.) However, Sasao is more broadly
`
`directed to “a display device that is structured so as to be housed at the interior of a
`
`wall.” (Ex. 1011, 2.) Therefore, Sasao more generally teaches placing the screen
`
`of a television or other “display device” substantially flush with the adjacent wall
`
`surface. (Petition 27; Ex. 1015 ¶¶49-50.)
`
`PO also argues that flush-mounting Namikawa’s televisions would frustrate
`
`its “principle of operation” because a POSITA would need to include Sasao’s
`
`cabinet, which “would not allow for mounting at the junction of the sidewall and
`
`
`
`16
`
`
`
`
`
`ceiling.” (Response 33-34; Ex. 2009 ¶18.) This argument should be rejected
`
`because Petitioner does not contend that a POSITA would replace Namikawa’s
`
`LCD televisions with Sasao’s rear-projection television, much less include Sasao’s
`
`cabinet; Petitioner contends that a POSITA would flush-mount Namikawa’s LCD
`
`televisions based on Sasao’s teaching. (Petition 27-29.)
`
`PO also argues that Sasao teaches away from mounting a television at the
`
`junction of the ceiling and sidewall in a subway car because Sasao discloses a
`
`floor-mounted television in a cabinet behind a wall. (Response 33-34; Ex. 2009,
`
`¶18.) PO’s teaching away argument should be rejected because Sasao “does not
`
`criticize, discredit, or otherwise discourage investigation into” mounting a
`
`television without a cabinet at the junction in a subway car, as would be required
`
`for it to teach away. See Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed.
`
`Cir. 2017).9
`
`
`9 PO’s expert’s testimony that Sasao (and other references, see infra) teach away
`
`(Ex. 2009, ¶¶ 18, 21, 23, 35) should be rejected because he did not apply the above
`
`standard. Instead, he incorrectly believes that a reference teaches away as long as
`
`it “discloses an embodiment that’s different than the proposed obviousness
`
`combination.” (Ex. 1038, 38:5-16.)
`
`
`
`17
`
`
`
`
`
`D.
`
`Patent Owner’s Maekawa Arguments
`
`PO argues that Maekawa does not disclose a “self-contained wiring-cabling
`
`system connecting the video monitors to the video signal source unit” as recited in
`
`claim 7 because Maekawa is “silent as to whether [the system] is self-contained
`
`independent of any previously installed track, tunnel or control systems.”
`
`(Response 34-37.)
`
`PO’s argument is based on a new and incorrect claim construction. PO
`
`incorrectly asserts that the ’602 patent describes a “self-contained wiring cabling
`
`system” as “independent of any previously installed track, tunnel or control
`
`systems.” (Id. 8, 34-37.) In fact, the specification 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.) The specification does not state that the self-contained wiring
`
`cabling system itself is independent of any previously installed track, tunnel or
`
`control systems. Instead, it 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.” (Id.
`
`2:64-66.) Thus, a “self-contained wiring cabling system” is simply a wiring
`
`cabling system that is “self-contained within the subway car.” (Id.; Petition 30;
`
`Ex. 1034, ¶39.)
`
`
`
`18
`
`
`
`
`
`Maekawa discloses a wiring cabling system that is self-contained within the
`
`car. Specifically, as the Board correctly noted in its Institution Decision (Paper
`
`No. 10 at 19), Maekawa discloses a self-contained wiring cabling system because
`
`each car includes antennas 30a-d on the roof, 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 connected via two-way distributors to
`
`the televisions in the car. (Ex. 1015 ¶65; Ex. 1009, 3, 4, 5, Figs. 1-3.) Because this
`
`wiring cabling system is contained within the car, it is a “self-contained wiring
`
`cabling system.” (Ex. 1034 ¶40.)
`
`In any event, Maekawa also discloses a “self-contained wiring cabling
`
`system” even under PO’s incorrect construction. The wiring cabling system is
`
`independent of any previously installed track, tunnel or control systems because
`
`the television receivers in the car display the signal received by the antennas on the
`
`roof. (Id. ¶41.)
`
`E.
`
`Patent Owner’s Sedighzadeh and Yamada Arguments
`
`Petitioner relies on Sedighzadeh or Yamada in combination with Namikawa
`
`for the “transparent cover unit” limitations of claims 8-9 and 20-22 and the
`
`“enclosure” limitations of claims 12-14 and 24-26. (Petition 41-44, 46, 50-53.)
`
`PO’s arguments about these combinations should be rejected.
`
`
`
`19
`
`
`
`
`
`First, PO argues that screen 5 of Yamada does not disclose a “transparent
`
`cover unit” because screen 5 is “within and inside the video display monitor.”
`
`(Response 13-14, 38; Ex. 2009, ¶36.) PO confuses screen 5 with the “liquid
`
`crystal surface” of the “liquid crystal television unit 21.” (Ex. 1028, Fig. 2, 4
`
`[0026].) As shown in Figure 2, screen 5 of panel 4 covers and protects the screen
`
`of television 21, with gap S2 “between the liquid crystal surface and the back face
`
`of the front panel 4” ensuring that “force is not transmitted to the liquid crystal
`
`television unit 21”:
`
`
`
`
`
`20
`
`
`
`
`
`(Ex. 1028, Fig. 2, ¶26, ¶46; Ex. 1015, ¶66, ¶73.) Therefore, screen 5 of Yamada
`
`discloses a “transparent cover unit.”10
`
`Second, for claims 12-14 and 24-26, PO disputes Petitioner’s motivation to
`
`combine by asserting that
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