UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`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
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON LOWELL MALO’S DEPOSITION
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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 RESPONSE TO PATENT OWNER’S
`OBSERVATIONS ON LOWELL MALO’S DEPOSITION
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`I.
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`RESPONSE TO OBSERVATION 1:
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`PO asserts in its first observation that Mr. Malo testified that the television
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`of Namikawa is “located along the ceiling.” The cited testimony discussed “the
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`intersection between the end wall and the ceiling” in Figure 1 of Namikawa. (Ex.
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`2010, 20:17-21:3 (emphasis added).) The cited testimony is not relevant because
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`the junction (or transitional wall portion or transitional segment) recited in the
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`claims is at the junction of the sidewall and the ceiling, not the junction of the end
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`wall and the ceiling.
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`At 21:10-22:13 of his deposition (Ex. 2010), Mr. Malo testified that the
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`television of Namikawa is mounted at the transition between the sidewall and the
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`ceiling:
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`Q. Would the top dotted line, would that be along the ceiling?
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`A.
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`It would be the juncture of the ceiling and something, yes.
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`Q.
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`If we follow it to the end of the television, is the curved line the
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`ceiling?
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`A. You mean down at the end of the car, yes.
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`Q. So wouldn't the top dotted line be along the ceiling?
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`A.
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`It would be along the ceiling and the juncture of something
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`else. They don't extend the dotted lines to the end.
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`Q. Below the bottom dotted line there is another line, what is that,
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`a solid line, excuse me, so the bottom dotted line and then there is a
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`solid line below that. What is that?
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`A. That appears to be the juncture of the side wall and not the
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`- 1 -
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`ceiling, but whatever that space is between the two dotted lines.
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`Q. So that solid line is the juncture, okay. Is Namikawa mounted
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`on top of the wall, the television in this figure 1?
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`A. Did you say mounted on top of the wall?
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`Q. Correct.
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`A.
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`It looks like it's mounted on the transition between the wall and
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`the ceiling.
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`This testimony is relevant because it confirms that Mr. Malo testified that
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`the television of Namikawa is not located along the ceiling but instead is located at
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`the junction/transition of the sidewall and the ceiling.1
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`II. RESPONSE TO OBSERVATIONS 2-3:
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`PO asserts in its second and third observations that because of horizontal
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`structural members in the car, there would not be any space available in the cavity
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`behind the wall at the transitional wall portion to flush-mount a television. The
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`cited testimony is not relevant because Mr. Malo did not testify that the horizontal
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`structural members would not leave enough space to flush-mount a television.
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`Moreover, at 24:4-12, Mr. Malo testified that horizontal structural members come
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`1 PO’s first observation and the cited testimony go beyond the scope of Mr. Malo’s
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`supplemental declaration and relate to an issue that Patent Owner (“PO”) did not
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`argue in the PO Response, i.e., whether Namikawa discloses the “mounted at the
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`junction” (and like) limitations.
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`- 2 -
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`in several pieces and that they are put together in between the vertical members:
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`Q. Are there horizontal members also?
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`A. Yes.
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`Q. How many members are there?
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`A. They come in pieces. They are put in pieces in between the
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`vertical members so down the length of the car, depends on how many
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`windows there are, for example, so again, it would be -- it varies
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`depending on the car, the construction, the length of the car, but there
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`are many of them, yes.
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`Further, at 26:11-13, Mr. Malo further testified that these structural members
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`could easily be moved:
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`Q. Would it be complicated to move structural members?
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`A. No.
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`This testimony is relevant because it shows that the longitudinal members
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`are made from several pieces and could easily be moved if necessary to flush
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`mount a television.
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`III. RESPONSE TO OBSERVATIONS 4-5:
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`PO asserts in the fourth observation that, because Mr. Malo has not seen the
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`specification sheets for the television of Namikawa, he could not have determined
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`how much heat its television generates and how much space would have been
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`needed to move the television into the wall. Similarly, PO asserts in the fifth
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`observation that, without the specification sheets for Namikawa, Mr. Malo could
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`- 3 -
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`not determine if a cover would cause heat build-up. In both cases, PO asserts that
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`Mr. Malo’s testimony contradicts his prior testimony that there would be enough
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`space in the cavity at the junction to flush-mount the television or cover unit and
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`safely dissipate any excess heat.
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`With respect to the fourth observation, Mr. Malo explained in his
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`supplemental declaration that LCD televisions in 1997 typically did not generate
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`much heat, and that, even if a particular LCD television did, a POSITA would have
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`known how to dissipate the heat if necessary, using several well-known techniques,
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`including using space behind the television. (Ex. 1034, ¶¶ 8, 15, 17.) He also
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`explained that “[a]lthough 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 in
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`1997, the amount of space behind the television required to dissipate the excess
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`heat would have been relatively small, likely about 2 to 5 cm.” (Id., ¶ 16.) The
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`cited deposition testimony merely explained that one would have reviewed the
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`specific television’s specification sheet in determining how much space would be
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`needed to dissipate the heat—within the predicted range of about 2 to 5 cm.
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`With respect to the fifth observation, Mr. Malo testified about the mock-up
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`that he built to test the LCD televisions installed in the Colorado Rail Car project,
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`which he discussed at paragraph 10 of his supplemental declaration. (Ex. 2010,
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`6:12-19:6; Ex. 1034, 10.). Mr. Malo explained that the LCD televisions in that
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`- 4 -
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`project had a cover that was part of the television. (Ex. 2010, 18:4-17.) He was
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`asked if there would have been more heat if there had been a cover, and he
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`responded that in that project they determined that the television was “good as is”
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`without looking at the specifications. (Ex. 2010, 18:18-19:1.) In the next question
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`and answer (not cited by PO), he explained that looking at the specification sheet
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`would merely be a starting point, after which one would need to look at the effect
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`of the cover:
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`Q. Would you have to look at spec sheets to determine whether or
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`not there would be heat build up?
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`A. Well that would be a starting point and then we would have to
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`take a look at the effect of a separate cover on top of it if it did
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`not come with it.
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`(Ex. 2010, 19:2-6.) This testimony is relevant because it is consistent with Mr.
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`Malo’s testimony in his supplemental declaration that a POSITA would know how
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`to dissipate any additional heat caused by a cover unit, “based on his or her
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`evaluation of the heat generated by that television, also taking into account any
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`related components, including, if applicable, a cover unit.” (Ex. 1034, ¶17.)
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`IV. RESPONSE TO OBSERVATIONS 6-7:
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`PO asserts in the sixth observation that the cited deposition testimony of Mr.
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`Malo that “most” LCDs “have a back light that produces images” (Ex. 2010,
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`30:10-12) contradicts his statement in his supplemental declaration that “[t]here is
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`no indication in Namikawa that its LCD televisions have backlights” (Ex. 1034,
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`- 5 -
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`¶26.) Mr. Malo’s testimony that “most” LCD televisions have backlights is
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`consistent with his testimony that the LCD televisions in Namikawa may not have
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`backlights. (Ex. 1034, ¶26.)
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`PO asserts in the sixth observation that the cited testimony of Mr. Malo
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`supports PO’s argument that “Miyajima teaches that a POSITA would be
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`concerned with an LCD television overheating and teaches mounting the television
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`a distance away from the wall to allow cooling air to pass by the backlight portion
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`of the LCD.” The cited testimony is not relevant because Mr. Malo merely
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`confirmed that the LCD television depicted in Figure 2 of Miyajima has a
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`backlight 1P. (Ex. 2010, 30:5-12.)
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`PO asserts in the sixth observation that the cited testimony by Mr. Malo
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`“contradicts Petitioner’s prior arguments that the backlight of Miyajima was
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`separate and apart from the LCD and was what necessitated the cooling air gap
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`taught by Miyajima.” The cited testimony is not relevant because Miyajima
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`discloses that the cooling air in cooling air passage 08 cools the heat generated by
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`the adjacent backlight 1P. (Ex. 1007, Fig. 2; ¶17 (“[T]he structure is such that
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`cooling air 08 passes by the backlight 01P, in order to limit the temperature-rise of
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`the backlight 01P to no greater than a certain temperature.”); ¶12 (“If the display
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`comprises a backlight, the display device may comprise a means for supplying a
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`cooling air flow that cools this backlight via a gap between the display and the
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`- 6 -
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`inner wall of the vehicle.”)
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`PO asserts in the seventh observation that the cited testimony by Mr. Malo
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`that Miyajima has “the space for the cooling air” because “it was determined by
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`the designer that they needed the cooling air” (Ex. 2010, 36:3-7) is relevant
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`because Miyajima’s designers “did not address heat issues using the techniques
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`advanced by Malo . . . (creating extra space inside the wall cavity, ventilation slots,
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`a fan, a duct).” The cited testimony is not relevant because the specific cooling
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`technique used by Miyajima says nothing about whether a POSITA would have
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`known about and used the techniques enumerated by Mr. Malo.
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`PO asserts that the cited testimony by Mr. Malo (Ex. 2010, 36:3-7)
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`contradicts his testimony that LCD televisions do not generate much heat and that
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`a POSITA would not have been discouraged from flush-mounting Namikawa’s
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`televisions. The cited testimony is not relevant because the fact that Miyajima
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`decided to cool its particular LCD display and backlight does not demonstrate that
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`the LCDs of Namikawa have a backlight, that they would need to be cooled, or that
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`they would need to be cooled in the specific manner disclosed in Miyajima.
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`V. RESPONSE TO OBSERVATIONS 8-9:
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`PO’s eighth and ninth observations assert that Maekawa does not disclose a
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`“self-contained wiring-cabling system” because in the cited testimony Mr. Malo
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`testified that in Maekawa the antennas 30a-d are on the roof of the car, not
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`“within” the car. The cited testimony is not relevant because in the proposed
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`combination these antennas would not be part of the “self-contained wiring cabling
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`system connecting the video monitors to the video signal source unit,” as recited in
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`claim 7. In his supplemental declaration, Mr. Malo explained that, in Maekawa,
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`the antennas 30a-d are connected via coaxial cables 35 to unit 40, which outputs
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`the video signal via another coaxial cable to a distributor 61, which in turn is
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`connected via distributors to the televisions in the car. (Ex. 1034, ¶40.) In his
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`original declaration, Mr. Malo explained that it would have been obvious to use
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`this coaxial cable from Maekawa to connect the video signal source unit to the
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`video monitors in Namikawa. (Ex. 1015, ¶65.)
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`VI. RESPONSE TO OBSERVATIONS 10-11:
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`PO’s tenth and eleventh observations assert that the cited testimony shows
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`that a POSITA would not have flush-mounted the televisions in Namikawa
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`because doing so “would have prevented the television from being able to be
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`adjusted for ‘better viewing’” or “‘repositioned so that people in various positions
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`can see it better.” The cited testimony is not relevant because none of the claims
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`includes a requirement that the televisions be capable of being “adjusted” or
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`“repositioned” and Namikawa’s televisions are already mounted at a downward
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`- 8 -
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`angle so that passengers can see the screens. (Ex. 1005, Fig. 1; 6.)2
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`Dated: May 7, 2018
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`Respectfully submitted,
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`/s/ Mark A. Chapman
`Sheila Mortazavi (Reg. No. 43,343)
` Lead Counsel
`Mark A. Chapman (Admitted pro hac vice)
` Backup Counsel
`Zaed M. Billah (Reg. No. 71,418)
` Backup Counsel
`Armin Ghiam (Reg. No. 72,717)
` Backup Counsel
`HUNTON ANDREWS KURTH LLP
`One Broadway
`New York, NY 10004
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`Email:
`SMortazavi@HuntonAK.com
`MChapman@HuntonAK.com
`ZBillah@HuntonAK.com
`AGhiam@HuntonAK.com
`
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`2 PO’s tenth and eleventh observations are based on PO’s examination of Mr. Malo
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`about a topic that is beyond the scope of his supplemental declaration (Ex. 1034),
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`which did not address Yamada or Sedighzadeh.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on May 7, 2018, a complete and entire copy of
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`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATIONS
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`ON LOWELL MALO’S DEPOSITION was served via e-mail on the following:
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`Jennifer Meredith
`jmeredith@meredithkeyhani.com
`205 Main Street
`East Aurora, New York 14052
`Tel: (212) 760-0098
`Fax: (212) 202-3819
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`Respectfully submitted,
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`/s/ Armin Ghiam
`Armin Ghiam
`HUNTON ANDREWS KURTH LLP
`One Broadway
`New York, NY 10004
`Telephone: (212) 425-7200
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`- 10 -
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