UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`KAWASAKI RAIL CAR, INC.,
`
`Petitioner,

`
`v.

`
`SCOTT BLAIR,

`
`Patent Owner
`__________
`
`Case IPR2017-01036
`
`Patent 6,700,602
`
`PATENT OWNER’S SUPPLEMENTAL RESPONSE
`
`

`

`TABLE OF CONTENTS
`TABLE OF CONTENTS.......................................................................................... ii
`
`TABLE OF AUTHORITIES ....................................................................................iv
`
`LIST OF EXHIBITS..................................................................................................v
`
`CLAIM CONSTRUCTION ............................................................................1
`A.
`“junction of the sidewall and the ceiling” / “transitional wall
`portion” and “transitional segment”......................................................1
`“a self-contained wiring cabling system” .............................................2
`
`B.
`
`PRIOR ART.....................................................................................................3
`A.
`Namikawa..............................................................................................3
`B. Miyajima ...............................................................................................8
`C.
`Sasao....................................................................................................10
`D.
`Amano .................................................................................................12
`E. Maekawa..............................................................................................13
`F.
`JTOA ...................................................................................................14
`G.
`Yamada................................................................................................17
`H.
`Sedighzadeh.........................................................................................19
`I.
`Schwenkler ..........................................................................................22
`
`I.
`
`II.
`
`III.
`
`SPECIFIC GROUNDS..................................................................................23
`A.
`Ground B .............................................................................................23
`(1) Namikawa teaches a monitor mounted on the ceiling..............25
`(2)
`Petitioner relies on a “proposed” and aspirational FRA rule as
`providing the “evidence” that flush mounting was the norm in
`the rail industry .........................................................................27
`Petitioner relies on a “proposed” and aspirational FRA rule as
`providing the “evidence” that flush mounting was the norm in
`the rail industry .........................................................................31
`Petitioner relies on a “proposed” and aspirational FRA rule as
`providing the “evidence” that flush mounting was the norm in
`the rail industry .........................................................................32
`The purported reasons to modify Namikawa lack a rational
`underpinning or are gleaned from applicant’s disclosure.........39
`The purported reasons to modify Namikawa lack a rational
`underpinning or are gleaned from applicant’s disclosure.........43
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`ii
`
`

`

`B.
`C.
`D.
`
`E.
`F.
`G.
`H.
`
`Ground C .............................................................................................47
`Ground D.............................................................................................52
`Ground F..............................................................................................53
`(1)
`Claim 8................................................................................53
`(2)
`Claim 9................................................................................62
`(3)
`Claims 12 and 24.......................................................................62
`(4)
`Claims 13 and 25.......................................................................64
`(5)
`Claims 14 and 26.......................................................................65
`(6)
`Claim 20....................................................................................67
`(7)
`Claim 21....................................................................................68
`(8)
`Claim 22....................................................................................68
`(9)
`Claims 9, 21, 27, 28-29.............................................................75
`Ground G ......................................................................................75
`Ground H ......................................................................................75
`Grounds J, K, and L ............................................................................75
`Grounds N, O, and P ...........................................................................78
`
`IV. CONCLUSION..............................................................................................80
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Application of Vogel, 422 F.2d 438, 441 (CCPA 1970) .............................. 36
`In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)................................................ 37
`In re Gal, 980 F.2d 717 (Fed. Cir. 1992).................................................................66
`In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)...........................................41
`In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333, 119 U.S.P.Q.2d 1716 (Fed.
`Cir. 2016).......................................................................................................39
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1368, 119
`U.S.P.Q.2d 1171 (Fed. Cir. 2016) .................................................................39
`Graham v. John Deere Co., 383 U.S. 1, 36 (1966) .................................................37
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 421 (2007) ................................37
`Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412
`(C.A.6 1964) ..................................................................................................37
`Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087 (Fed.
`Cir. 1995).......................................................................................................36
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) .................................2
`Square, Inc. v. Carl Cooper, IPR 2014-00157, Paper 17 (P.T.A.B. 2014)............2
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir.
`1983) .......................................................................................................36, 77
`
`Other Authorities
`
`MPEP § 2142 ...........................................................................................................41
`MPEP § 2143 ...........................................................................................................64
`MPEP § 2145(X)(A)................................................................................................41
`
`iv
`
`

`

`UPDATED LIST OF EXHIBITS
`Exhibit No. Description
`2001
`EX PARTE SCOTT BLAIR, DECISION ON APPEAL
`2002
`EXPERT DECLARATION OF JACK LONG
`2004
`PROPOSED FRA RULES
`2005
`CONSUMER PRODUCT SAFETY DIVISION
`GUIDELINES FOR TELEVISION RECEIVER SAFETY
`DECLARATION OF JOSEPH ZICHERMAN, PH.D.
`DEPOSITION TRANSCRIPT OF LOWELL MALO
`SUPPLEMENTAL EXPERT DECLARATION OF JOSEPH
`ZICHERMAN, PH.D.
`TRANSCRIPT OF LOWELL MALO
`
`2007
`2008
`2009
`
`2010
`
`v
`
`

`

`Patent Owner (hereinafter “PO”) submits this supplemental response.
`
`I.
`
`CLAIM CONSTRUCTION
`
`A.
`
`“junction of the sidewall and the ceiling” / “transitional wall
`portion” and “transitional segment”
`
`Ceiling
`
`Sidewall
`
`Transitional segment/ junction of the sidewall and
`
`the ceiling/ transitional wall portion
`
`1
`
`

`

`The various claims positively recite “a junction of the sidewall and the
`
`ceiling” (Claims 1, 5 and 7), “a transitional wall portion” (Claim 8 and dependents)
`
`and “a transitional segment” (Claim 15 and dependents).
`
`Each of these terms refer to the same portion of the wall where the ceiling and
`
`the sidewall meet. Arguments made with respect to one particular claim language
`
`would similarly apply to the others. PO generally refers to this as “the junction of
`
`the sidewall and the ceiling.”
`
`B.
`
`“a self-contained wiring cabling system”
`
`The patent at issue is an expired patent. Accordingly, claim terms are given
`
`their ordinary and customary meaning as understood by a person of ordinary skill
`
`in the art (POSITA). Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005);
`
`see also Square, Inc. v. Carl Cooper, IPR 2014-00157, Paper 17 (P.T.A.B. 2014).
`
`The specification provides,
`
`A preferred system according to the invention is a subway car or
`plurality of subway cars equipped with a plurality of television
`monitors,
`.
`.
`.
`the video signal source and the monitors being
`interconnected by suitable electrical cable systems which are self-
`contained within the subway car. In this way, new subway cars can be
`built with the video system or parts thereof installed, and usable on
`substantially any transit system, since the operation of the video system
`is independent of any previously installed track, tunnel or control
`systems.
`
`Ex. 1001, 2:59-3:4.
`
`2
`
`

`

`The proper claim construction of a “self-contained wiring system” is “a wiring
`
`cabling system that is (1) self-contained within the subway car and (2) independent
`
`of any previously installed track, tunnel or control systems,” as would be the
`
`ordinary and customary meaning as evidenced by the specification.
`
`II.
`
`PRIOR ART
`
`A.
`
`Namikawa
`
`According to a first embodiment of Namikawa, depicted in Figure 1, the
`
`monitor is located on the ceiling, away from and above the junction of the sidewall
`
`and the ceiling. Expert for Petitioner (“Malo”) in fact confirmed the location of the
`
`ceiling as marked. See Ex. 2010, 20:17-21:3, 21:14-16 (“[Question:] If we follow
`
`[the top dotted line of Fig. 1] to the end of the television, is the curved line the
`
`ceiling? [Answer:] You mean down at the end of the car, yes.”). This contradicts
`
`Petitioner’s offered “ceiling” and “junction” locations which were unsupported and
`
`arbitrary. Malo testified that the curved line below item 10 of Namikawa (Figure
`
`reproduced here for ease of reference) is the ceiling. The location of the sidewall
`
`and the junction of the sidewall and the ceiling, as below, are consistent with this.
`
`3
`
`

`

`4
`
`

`

`In Namikawa, the monitor is mounted on the ceiling.
`
`It is noted that the
`
`specification of Namikawa provides that Figure 1 is “on a wall face.” Ex. 1005, p.
`
`6. This is referring to the ceiling as a “wall face” and describes that the monitor is
`
`on top of the ceiling wall. Notably, Namikawa never discusses a “junction” or that
`
`the television is mounted between ceiling and the sidewall or at the junction of the
`
`two.
`
`5
`
`

`

`Namikawa also teaches a second embodiment of Namikawa with externally
`
`mounted liquid crystal televisions on a wall face above each seat. See id. at 6
`
`(describing Fig. 1, “a plurality of liquid crystal televisions 12 are disposed along the
`
`direction of travel on a wall face above each seat 11 inside car 10”). Petitioner
`
`generally does not rely on this embodiment.
`
`Namikawa teaches a curved back liquid crystal television that has a thicker
`
`mid-section and is mounted on top of the wall. Id. at 11-12 (Figs. 1-2). As will be
`
`explained in detail below, the Board has found that a monitor on top of the surface
`
`of the car is not substantially flushed against the car surface.
`
`6
`
`

`

`Namikawa is directed to a curved roof subway car (as is Maekawa), as
`
`opposed to other references (such as Miyajima, Amano) that teach a flat roof. This
`
`is relevant because Malo testified that there would be vertical members in the
`
`sidewalls, a longitudinal member that runs from the front of the car to the back of
`
`the car and curved structural members in the roof. Ex. 2010, 23:18-26:7. Malo
`
`confirmed “you would have a longitudinal member that runs from the front of the
`
`car to the back of the car where the side wall and the ceiling meet.” Id. at 26:3-7.
`
`Malo further confirmed that the longitudinal member that runs from the front of the
`
`car to the back of the car at the top of the sidewall allows for the curved roof to be
`
`attached to the flat sidewall. Id. at 26:3-18. This confirms the above location of the
`
`junction of the sidewall and the ceiling and contradicts Petitioner’s arbitrarily and
`
`incorrectly identified “junction.” Paper 2, p. 25.
`
`Petitioner arbitrarily and incorrectly labels a portion of the ceiling of
`
`Namikawa as the junction in an effort to meet the claim limitations, as below.
`
`Petitioner’s incorrect and arbitrary marking of the “junction” is clearly above where
`
`the curved ceiling structural members would meet and be attached to the sidewall
`
`structural members.
`
`7
`
`

`

`Malo also testified that the junction of the sidewall and the ceiling of
`
`Namikawa would have a longitudinal member that would occupy the space “within”
`
`the wall at that location. Ex. 2010, 26:3-10.
`
`B. Miyajima
`
`Miyajima teaches an LCD television that is mounted away from the wall,
`
`leaving a cooling air gap between the wall and the monitor to prevent overheating.
`
`Figures 1, 3, and 4 depict a gap between the display 01 and the sidewall. Ex. 1007,
`
`pp. 5-7. Miyajima discloses in [0017], “the structure is such that cooling air 08
`
`passes by the backlight 01P, in order to limit the temperature-rise of the backlight
`
`01P . . . . [C]ooling air 08 flows between the vehicle carriage 03 and the backlight.”
`
`Id. at 4; see also Ex. 1015, ¶ 47. Miyajima provides unbiased and incontrovertible
`
`8
`
`

`

`proof that LCD televisions at the time of the invention did produce heat, that this
`
`was a concern and that a POSITA would not have been motivated to place a
`
`television within the wall at the junction of the sidewall and the ceiling.
`
`Petitioner has attempted to argue that the television of Miyajima includes a
`
`backlight and Namikawa has no indication of a backlight. Paper 34, p. 9. This was
`
`refuted by Petitioner’s own expert, who testified most LCD televisions have a
`
`backlight and that is in fact how LCD televisions produce images. Ex. 2010, 29:9-
`
`30:12. Miyajima provides the only “real-world evidence” of an LCD television
`
`mounted at the junction of the sidewall and the ceiling and discusses the need to
`
`address temperature-rise of the LCD television and provides the solution of
`
`mounting the television away from the wall with a cooling air gap to address heat/
`
`fire concerns.
`
`9
`
`

`

`Miyajima also clearly confirms that there would be no expectation of available
`
`space. As can be seen, the LCD television is thicker than the surrounding wall, and
`
`there is no appreciable space between an inner and outer wall.
`
`C.
`
`Sasao
`
`Sasao teaches a floor supported rear projection television that is structured to
`
`be housed at the interior of a residential wall. See Sasao [0001]. The monitor of the
`
`television is altered to project forward. Id. at [0010].
`
`10
`
`

`

`Sasao also teaches a frame (22) that protrudes to be more aesthetically
`
`pleasing.
`
`Sasao should be ignored as being irrelevant and “off point.” Sasao is directed
`
`to a floor supported cabinet-type monitor (not an LCD monitor). It is also directed
`
`to a residential environment, not a subway environment. Petitioner has boldly
`
`argued that the PO evidence entitled “Consumer Product Safety Commission
`
`Guidelines” is “off point” and should be disregarded because it is directed to “home
`
`and portable CRT televisions” which do not address “LCD televisions at all, much
`
`less LCD televisions in 1997.” Paper 34, p. 5. Yet, at the same time, Petitioner asks
`
`the Board to find Sasao (which also is not directed to an LCD television and is
`
`directed to a residential environment) to be entirely on point and provide the basis
`
`11
`
`

`

`for modifying the monitor of Namikawa or Miyajima to be substantially flush.
`
`Petitioner wants one set of rules to apply to it and another to PO. Alternatively, if
`
`Sasao is “on point” then the CPSC Guidelines are also “on point” and provide that
`
`the bottom ventilation slots of a television should never be blocked and you should
`
`never place a television set in a “built-in” enclosure. See Ex. 2005, p. 2.
`
`D.
`
`Amano
`
`Amano teaches screens of monitors being located quite some distance away
`
`from the surface structure of the car. The PTAB has found,
`
`Amano’s Figures 4-6 cited by the Examiner, especially looking at the
`side views of the drawings show the screens of the monitors being
`located at quite some distance away from the surface structure of the
`car, and thus, not being reasonably “substantially” or to a great extent
`flushed against the surface.
`
`Ex. 2001, p. 5.
`
`12
`
`

`

`Amano is directed to a flat ceiling train and confirms that there would be no
`
`expectation of available space between an inner and outer wall.
`
`E. Maekawa
`
`Maekawa teaches a monitor mounted on a sidewall of a train; it is not mounted
`
`at the junction of the sidewall and ceiling, is not substantially flushed with the
`
`adjacent wall surface structure of the car, and is not directed obliquely downwardly
`
`toward the car seats.
`
`13
`
`

`

`Maekawa also clearly confirms that there would be no expectation of available
`
`space between an inner and outer wall.
`
`F.
`
`JTOA
`
`The JTOA reference provides, “a nine-inch liquid crystal monitor is provided
`
`above the side doors in each car . . . . Consideration has been given to making this
`
`monitor easy to see from the seats as well, by mounting on the lintel inspection cover,
`
`which is formed from fiber-reinforced plastic and tilting it at an angle of 30 agrees
`
`from the vertical.” Ex. 1003, p. 4, 3:3-17. According to vocabulary.com, a lintel is
`
`“the beam or other support at the top of a door or window. Most lintels are decorative
`
`as well as providing structural support1.” A lintel inspection cover would be a cover
`
`that allows for easy inspection of the beam that supports the subway doors. This is
`
`1 https://www.vocabulary.com/dictionary/lintel, Accessed May 22, 2018
`14
`
`

`

`consistent with the photos which show a section above the door having a monitor
`
`and the section does not appear flush with the subway walls (i.e., it appears to
`
`protrude out from the wall area above the door). The images are not clear enough
`
`to provide a full disclosure and the written portion provides the only detail that can
`
`be gleaned from the JTOA reference.
`
`Petitioner incorrectly argues that the JTOA reference shows an LCD monitor
`
`partially embedded in the plastic lintel cover such that
`
`the monitors appear
`
`substantially flush with the adjacent surface. Paper 34, p. 9. The cited portion of
`
`JTOA provides the monitor is mounted ON the lintel inspection cover and it tilts at
`
`an angle 30 degrees from the vertical (i.e., it is not substantially flush with the
`
`adjacent surface). Ex. 1003, p. 4, 3:3-17. Malo testified “the ‘flushed’ limitation . .
`
`. necessarily would mean there would be no protuberances” (Paper 2, p. 56; Ex.
`
`1015, ¶ 110), and the plastic lintel cover itself is a protuberance. There is also no
`
`basis or support for the position advanced by Petitioner that JTOA teaches an LCD
`
`monitor “embedded” in the plastic lintel cover or that it is substantially flush with
`
`the adjacent surface. JTOA in fact directly refutes this position. Still further, a lintel
`
`inspection cover is not a portion of the wall, the ceiling or the junction between the
`
`two; instead, it is a cover that is on top of and protrudes from a section of the wall.
`
`Accordingly, even if JTOA (which discloses it tilts at an angle) is substantially flush
`
`with the inspection cover (which PO submits it is not), it is clearly not flush with the
`
`15
`
`

`

`adjacent wall surface instead being on a cover on top of and protruding from the
`
`sidewall surface. Ex. 1003, p. 4, 3:3-17 and p. 1.
`
`Petitioner also boldly argues that JTOA Magazine provides real-world
`
`evidence that an LCD monitor 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. Paper 34, pp. 10-11. Central to all of Petitioner’s arguments is
`
`that we should ignore Miyajima, the only reference that actually provides a monitor
`
`at the proper location (junction of the sidewall and the ceiling/ transitional wall
`
`portion/ transitional segment), specifically provides it is an LCD monitor and
`
`expressly teaches that the monitor should not only be on top of the wall, but should
`
`be placed an appreciable distance from the wall to provide a cooling air gap to limit
`
`temperature rise. See above Section II.B. Instead, Petitioner argues that a television
`
`that is mounted in a portion of a lintel inspection cover (which is away from /
`
`protrudes from the wall), is lower in the subway car (less heat concerns), has the
`
`benefit of ventilation from the door which opens and closes and which extends from
`
`the wall at a 30 degree tilt should provide the Board with “real-world evidence.”
`
`Any fair reading of the record would conclude that Miyajima provides the “real-
`
`world evidence” of a television and heat/ fire concerns at the correct location, not
`
`the JTOA reference.
`
`16
`
`

`

`G.
`
`Yamada
`
`Yamada teaches a monitor that is in the back of a chair that swivels to provide
`
`a television that protrudes upward. Malo testified that the outside frame of the
`
`television of Yamada is flush mounted and does not pivot and the screen pivots. Ex.
`
`2010, 46:3-20. Malo additionally testified that the monitor is not flush stating, “It
`
`moves, it’s not flush.” Id. at 47:10; see also Ex. 1015, ¶ 110 (Malo testified “the
`
`‘flushed’ limitation . . . necessarily would mean there would be no protuberances”).
`
`Yamada teaches a frame (2) around a monitor (21) that is mounted in a chair
`
`with the monitor (21) and screen (5) contained in the frame and protruding (not
`
`substantially flush) from the chair. Still further, the screen of Yamada does not teach
`
`17
`
`

`

`a transparent cover unit that is substantially flush with the adjacent surface structure
`
`of the transitional wall portion (because it is in a chair, not a wall and the screen is
`
`not flush with the chair). As can be seen below, the screen of Yamada 5, even in a
`
`closed or vertical position, is not substantially flush with the chair. A red line has
`
`been added to depict the substantial distance between screen 5 (which is relied upon
`
`for the transparent cover) and the surrounding surface structure of the chair in
`
`Yamada.
`
`18
`
`

`

`Yamada teaches a gap is maintained relative to the screen 5 to solve a “second
`
`problem” that forces get transmitted to the screen and problems occur in the image,
`
`with vertical lines and the like being produced on the screen. Ex. 1028, [0009];
`
`[0015]. Yamada teaches a transparent cover that is explicitly not substantially flush
`
`with the adjacent surface structure and provides,
`
`[T]he liquid crystal television unit 21 is fastened in the back cover 20,
`which is made from metal, by the television unit fastening screws 23,
`and fastened such that a gap (S2 in FIG. 2) is maintained between the
`liquid crystal surface and the back face of the front panel 4…..When
`pushing at this time, the gap is maintained between the front panel 4
`and the front face of the liquid television unit 21, and therefore force
`is [not] transmitted to the liquid crystal surface 21a of the liquid crystal
`television unit 21.
`
`Id. at [0026]. In summary, Yamada teaches only the frame is substantially flush.
`
`The monitor and the screen of Yamada are not substantially flush with the
`
`surrounding chair surface and the screen is positioned forward from the monitor to
`
`maintain a gap. Still further, the monitor and the screen pivot.
`
`H.
`
`Sedighzadeh
`
`Sedighzadeh teaches a swiveling support structure for a television that drops
`
`from the ceiling with a shell around it. Neither the television nor the shell are
`
`substantially flush with the ceiling. There is a plexiglass pane inside the shell that
`
`also is not substantially flush with the adjacent surface, providing, “The opening or
`
`window 64 in the shell has permanently mounted therein a tinted plexiglass pane 70
`
`19
`
`

`

`which is disposed inwardly of the flexible wall 68 so that when the flexible wall is
`
`moved into its closed position of Fig. 7, the flexible wall overlies and obstructs the
`
`window.” Ex. 1025, 6:2-7 (emphasis added). The cover is not substantially flush
`
`with the adjacent surface structure of the transitional wall portion. Still further, the
`
`transparent cover is inside the outer cover, and Sedighzadeh teaches a television
`
`that drops from the ceiling with a shell around it.
`
`Sedighzadeh Fig. 2
`
`Sedighzadeh teaches a television support structure that drops from the ceiling and
`
`allows for swiveling such that “the monitor can be positioned for easy viewing by
`
`large numbers of individuals in a room.” Ex. 1025, 1:61-64. Sedighzadeh also
`
`teaches a “shell which surrounds and encloses the framework and television monitor
`
`20
`
`

`

`. . . . the television monitor is merely seated on the tray on the support structure.”
`
`Ex. 1025, 2:21-30. Sedighzadeh teaches a television that swivels and is easily
`
`removed from a support structure that hangs from the ceiling to allow for the
`
`television to be removed for repairs. Ex. 1025, 6:62-7:3.
`
`21
`
`

`

`I.
`
`Schwenkler
`
`Schwenkler teaches a set of lights that are mounted end-to-end on top of the
`
`ceiling and the sidewall from the front of the car to the back of the car with a gap
`
`between the top of the wall and the back of the lighting fixture.
`
`GAP
`
`22
`
`

`

`Schwenkler is directed to lighting fixtures that run the entire length of the
`
`subway car. Schwenkler expressly teaches away from individual lights as would be
`
`required to place back lit panels next to the video screens (as advanced by Petitioner),
`
`stating, “Individual or spot reading lamps are not only objectionable from the
`
`standpoint of excessive cost, but if used alone also serve to create areas of diverse
`
`levels of light intensity which oftentimes contributes to passenger eye discomfort.”
`
`Ex. 1026, 2:19-23, 8:43-52. Schwenkler provides, “It is contemplated that a fixture
`
`arrangement such as that illustrated will extend the entire length of the car.” Id. at
`
`8:18-20. Schwenkler also provides further proof that a POSITA would have had no
`
`expectation of available space beyond the wall at the junction of the sidewall and the
`
`ceiling, and they would mount an interior fitting with a gap between the fitting and
`
`the top of the wall. Id. at Fig. 1 (reproduced herein).
`
`III.
`
`SPECIFIC GROUNDS
`
`A.
`
`Ground B
`
`Claims 5 and 7 depend from Claim 1 which is the subject of IPR2017-00117.
`
`Claim 7 provides, “The subway car of any of claim 1 including a self-contained
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`wiring-cabling system connecting the video monitors to the video signal source
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`unit.”
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`The combined teachings of Namikawa in view of JTOA, Amano and
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`Maekawa do not suggest the modifications advanced by petitioner to a POSITA at
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`the time of the invention for the following reasons, as will be discussed in detail
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`below: (1) Namikawa teaches a monitor mounted on the ceiling. (2) Petitioner relies
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`on a “proposed” and aspirational FRA rule as providing the “evidence” that flush
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`mounting was the norm in in the rail industry. (3) JTOA does not teach a screen that
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`is “substantially flush” and is not in the sidewall, the ceiling or the junction. (4) A
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`POSITA would have no expectation of available space beyond the wall at the
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`junction of the sidewall and the ceiling. (5) According to the proposed FRA rules
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`provided by Petitioner, fire and post-collision conditions result in 30 percent of the
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`fatalities and 16 percent of the serious injuries. (6) The FRA believed the proposed
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`requirements would aid in reducing the number of fatalities and injuries by reducing
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`the likelihood of fire.
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`(7) The enacted FRA rule provides to the extent possible
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`interior fitting shall be recessed or flush mounted.
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`(8) The proposed FRA rules
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`provide, “The intent of the guidelines is to prevent fire ignition.” (9) The Consumer
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`Product Safety Commission issued guidelines for Television Receiver Safety
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`providing that the bottom ventilation slots of a TV should never be blocked and you
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`should never place a television set in a “built-in” enclosure. (10) The FRA would
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`not require an “interior fitting” if it would pose a fire hazard. Ex. 2007, ¶ 26. (11)
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`Petitioner’s own expert testifies that safety is the first recited consideration with
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`respect to designing rail car interiors. Ex. 1015, ¶¶ 32-33, 79, 105. (12) A POSITA,
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`in the 1995-1997 timeframe, would not have been motivated to mount a monitor
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`substantially flush with an adjacent wall surface structure of a subway car because
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`of heightened safety requirements, an extreme aversion to any potential fire hazards
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`and knowledge a television should never be put in a “built-in” enclosure and the
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`ventilation slots should never be blocked. Ex. 2007, ¶¶ 27-28. (13) The purported
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`reasons to modify the references lack a rational underpinning or are gleaned from
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`applicant’s disclosure.
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`(14) The references combined with the knowledge of a
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`POSITA would not teach or suggest “a self-contained wiring-cabling system
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`connecting the video monitors to the video signal source unit” as in claim 7.
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`Ground B should be rejected.
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`(1) Namikawa teaches a monitor mounted on the ceiling
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`The monitor of Namikawa is located on the ceiling, away from and above the
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`junction of the sidewall and the ceiling. See above section II.A. Malo in fact
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`confirmed the location of the ceiling as marked. Ex. 2010, 20:17-21:3, 21:14-16
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`(“[Question:] If we follow it [the top dotted line of Fig. 1] to the end of the television,
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`is the curved line the ceiling? [Answer:] You mean down at the end of the car,
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`yes.”). This contradicts Petitioner’s prior “ceiling” and “junction” locations which
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`were unsupported and arbitrary. Malo testified that the curved line below item 10
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`of Namikawa (Figure reproduced here for ease of reference) is the ceiling.
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`25
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`CEILING
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`SIDEWALL
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`NmmNUJ
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`11 33
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`)mdnammmcmm
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`
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`26
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`26
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`Malo also testified there would be vertical members and horizontal members
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`in the sidewall and a longitudinal member that runs from the front of the car to the
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`back of the car where the sidewall and the ceiling meet (the junction of the sidewall
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`and the ceiling) to allow the ceiling to be attached to the sidewalls. Ex. 2010, 25:4-
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`26:10. Malo also testified that the structural members keep the rail car from
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`collapsing or bending inward. Id. at 33:14-20. Malo’s testimony is that the vertical,
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`horizontal and ceiling structural members could be moved around, but wherever the
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`longitudinal member that runs from the front of the car to the back and joins the
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`ceiling with the sidewall is located would be the “junction of the sidewall and the
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`ceiling.” Id. at 26:3-7. Malo’s testimony is important for two reasons. First, it
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`contradicts Petitioner’s previously offered and arbitrarily picked location of the
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`“ceiling” and the “junction.” Second, it confirms that the curved roof of Namikawa
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`would require a longitudinal member that runs the entire length of the subway car
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`from the front of the car to the back of the car at the junction of the sidewall and the
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`ceiling. Accordingly, a POSITA would have no expectation of available space at
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`the junction of the sidewall and the ceiling as will be discussed in further detail
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`below.
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`(2)
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`Petitioner relies on a “proposed” and aspirational FRA rule as providing
`the “evidence” that flush mounting was the norm in the rail industry
`Despite the myriad of references in the 1995-1997 references and none of
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`them providing a flush mounted television in a rail car, Petitioner (and Petitioner’s
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`expert) boldly offers, “flush mounting was the norm in the rail industry by 1997, as
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`evidenced by the proposed FRA rule requiring recessed or flush-mounted interior
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`fittings, which a POSITA would have understood to include televisions.” Paper 2,
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`p. 29; Ex. 1015 ¶ 54. This statement is incorrect for a number of reasons. First, the
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`FRA rule was an aspirational, proposed rule in 1997. It was only in May of 1999,
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`well after the invention of the ‘602 patent, that the FRA issued the “recessed or flush-
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`mounted” requirement. See Paper 2, p. 14. The evidence offered by Petitioner to
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`support the notion that flush mounting was the “norm” is an aspirational, forward
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`thinking set of proposed rules that was not in fact enacted until well after t