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 SCOTT BLAIR’S PRELIMINARY RESPONSE
`
`

`

`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII.
`
`TABLE OF CONTENTS
`
`INTRODUCTION
`
`BACKGROUND OF THE ‘602 PATENT
`A. The Invention
`B. The Claims
`
`CLAIM CONSTRUCTION
`A. "substantially flushed"
`B. "video signal source unit"
`C. “substantially contiguous”
`D. “transitional segment”
`E. “backlit panel”
`
`OVERVIEW OF THE PRIOR ART
`A. Namikawa
`B. Miyajima
`C. Sasao
`D. Amano
`E. Maekawa
`F. JTOA magazine
`G. Yamada
`H. Sedighzadeh
`I. Schwenkler
`
`STATEMENTS MADE BY PETITIONER'S EXPERT
`
`Page
`1
`
`1
`1
`2
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`3
`3
`3
`3
`4
`5
`
`5
`5
`6
`7
`9
`9
`10
`11
`12
`13
`
`14
`
`THE PETITION RELIES ON THE SAME OR SUBSTANTIALLY
`THE SAME ARGUMENTS MADE AND REVERSED ON APPEAL
`DURING THE EX PARTE REVIEW OF THE WITHIN PATENT
`
`19
`
`PETITIONERS HAVE NOT SHOWN A REASONABLE
`LIKELIHOOD OF PREVILING ON ANY OF THE ASSERTED
`GROUNDS
`A. Ground A. Claims 5 and 7 are patentable over Namikawa
`in view of Sasao, Amano and Maekawa
`
`B. Grounds B, C and D should be denied as being the same
`arguments as and depending from a claim which the Board has
`declined to institute proceedings on.
`
`21
`21
`
`22
`
`

`

`C. Ground E. Claims 8, 9, 12-14, 20-22 and 24-29 are
`patentable over Namikawa in view of Sasao, Amano and
`Yamada or Sedighzadeh.
`i.
`Claim 8
`ii.
`Claim 9
`iii.
`Claims 12 and 24
`iv.
`Claims 13 and 25
`v.
`Claims 14 and 26
`vi.
`Claim 20
`vii.
`Claim 21
`viii.
`Claim 22
`ix.
`Claim 27
`x.
`Claims 28-29
`xi.
`Claims 9 and 21
`
`D. Ground F is similar to Ground E, but substitutes JTOA in
`place of Sasao.
`i.
`Claims 8, 9 and 12-14
`ii.
`Claim 20
`iii.
`Claims 21-22 and 24
`iv.
`Claims 25-29
`
`E. Grounds G- Miyajima in view of Sasao, Amano and
`Yamada or Sedighzadeh
`i.
`Claim 8
`ii.
`Claims 9 and 12-14
`iii.
`Claim 20
`iv.
`Dependent Claims 21-22, and 24-29
`
`F. Grounds H- Miyajima in view of Sasao, Amano and Yamada or
`Sedighzadeh
`i.
`Claims 8, 9 and 12-14
`ii.
`Claims 20-22 and 24-29
`
`G. Grounds I, J, K, and L
`H. Grounds M
`i.
`Claim 15
`ii.
`Dependent Claims 16-18
`iii.
`Dependent Claim 19
`I. Ground N
`i.
`Claim 15
`ii.
`Dependent Claims 16-18
`iii.
`Dependent Claim 19
`
`J. Ground O: Claims 15-19 are not obvious over Miyajima in view
`
`22
`
`22
`26
`26
`27
`28
`29
`30
`30
`30
`30
`30
`
`30
`
`30
`32
`33
`33
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`33
`
`33
`37
`37
`37
`
`37
`
`38
`39
`
`39
`40
`40
`46
`46
`46
`46
`47
`47
`
`

`

`of Sasao, Amano, and Schwenkler
`i.
`Claim 15
`ii.
`Dependent Claims 16-18
`iii.
`Dependent Claim 19
`
`K. Ground P: Claims 15-19 are obvious over Miyajima in view
`of JTOA, Amano, and Schwenkler
`i.
`Claim 15
`ii.
`Dependent Claims 16-18
`iii.
`Dependent Claim 19
`
`VIII. THE CITED GROUNDS ARE REDUNDANT
`
`IX.
`
`CONCLUSION
`
`48
`48
`49
`49
`
`50
`
`50
`50
`51
`
`51
`
`54
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Cuozzo Speed Tech, LLC v. Lee, 136 S. Ct. 2131 (2016)..............................................................3
`KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727 (2007).........................................................................29
`
`In re Gal, 980 F.2d 717 (Fed. Cir. 1992)......................................................................................28
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)...................................................................................29
`In re McLaughlin, 443 F.2d 1392 (C.C.P.A. 1971) ................................................................42
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)............................................................................40
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007).........................................................3
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM-2012-00003, Paper 7
`(P.T.A.B. Oct. 25, 2012) ..........................................................................................................51-52
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436, Paper 16
`(P.T.A.B. June 19, 2014)...............................................................................................................20
`
`Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 17
`(P.T.A.B. July 7, 2014).................................................................................................................20
`
`Other Authorities
`37 C.F.R. § 42.1.......................................................................................................................21, 51
`37 C.F.R. § 42.20...........................................................................................................................52
`37 C.F.R. §42.107............................................................................................................................1
`37 C.F.R. § 42.108.........................................................................................................................51
`MPEP § 2145.................................................................................................................................42
`35 U.S.C. § 325..............................................................................................................................19
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`2001
`2002
`2003
`
`Description
`Decision on ex parte appeal
`Declaration of Jack R. Long
`Appeal Brief from ex parte appeal
`
`

`

`Pursuant to 37 C.F.R. §42.107(a), Patent Owner Scott Blair ("PO" or "Blair") files this
`
`Preliminary Response to the Petition for Inter Partes Review of U.S. Patent No. 6,700,602 ("the
`
`'602 patent") submitted by Petitioner Kawasaki Rail Car, Inc. ("Kawasaki" or "Petitioner"). For
`
`the following reasons, trial as to the challenged claims of the '602 patent should not be instituted.
`
`I.
`
`INTRODUCTION
`
`Having a priority date of May 7, 1997, the '602 patent provided an early solution to the
`
`nascent need for a subway car that has substantially flushed monitors mounted at the junction of
`
`the sidewall and the ceiling and directed obliquely downwardly toward the car seats, so that each
`
`video screen is readily visible to passengers in the subway car. This not only enhances the
`
`aesthetics of the subway car interiors, but also conserves space, boosts safety, facilitates cleaning,
`
`and prevents vandalism. The '602 patent also provides a novel source of extra revenue for a mass
`
`transit subway system through increased advertising revenue and / or through attracting additional
`
`ridership, provides monitors that are viewable by substantially all (seated and standing, hearing
`
`and non-hearing) riders in the car for transit-wide public announcements, route changes, and
`
`emergency messages, and provides riders with something to focus their attention as it is
`
`inconvenient to open newspapers, magazines, or the like under crowded circumstances.
`
`II.
`
`BACKGROUND OF THE '602 PATENT
`
`A.
`
`The Invention
`
`The '602 patent is directed to a subway car for mass transportation including
`
`longitudinal opposed sidewalls disclosed at, inter alia, FIGS. 1 A and 1B, as well as at FIG. 2,
`
`along with its accompanying disclosure of Patent Owner's specification. The subway car includes
`
`1
`
`

`

`a ceiling adjoining the sidewalls disclosed at, inter alia, FIG. 4a, along with its accompanying
`
`disclosure at Col. 5, lines 35 — 49 of PO's specification. The subway car also includes a video
`
`display system comprising a plurality of video display monitors each having a video screen
`
`disclosed at, inter alia, Col. 5, lines 35 — 49 and Col. 5, lines 4 — 7 of PO's specification. The
`
`subway car further includes a video signal source unit operatively connected to the monitors
`
`disclosed at, inter alia, Col. 5, lines 4 — 7 of PO's specification. The monitors are spaced along
`
`the length of the car on opposed sides thereof disclosed at, inter alia, Col. 1, lines 45 — 50 as well
`
`as at Col. 4, lines 57 — 59 of PO's specification. Each of the monitors are mounted at the junction
`
`of the sidewall and ceiling disclosed at, inter alia, Col. 3, line 67 — Col. 4, line 6 and Col. 4, lines
`
`64 — 67 of PO's specification. The screen of the monitor is substantially flushed with the adjacent
`
`wall surface structure of the car disclosed at, inter alia, Col. 5, lines 40 — 42 of PO's specification.
`
`The screen of the monitor is further directed obliquely downwardly toward the car seats, so that
`
`each video screen is readily visible to passengers in the subway car disclosed at, inter alia, Col. 4,
`
`line 67 — Col. 5, line 4 of PO's specification.
`
`B.
`
`The Claims
`
`The '602 patent, titled, "Subway TV Media System" issued March 2, 2004 with 7 claims.
`
`On August 16, 2011 an ex parte reexamination of the '602 patent was instituted in response to
`
`counsel for the Petitioner of the within action (Kawasaki Rail Car) presenting prior art to counsel
`
`for PO. After an appeal and thorough examination by the Patent Trial and Appeal Board, an Ex
`
`Parte Reexamination Certificate issued on January 29, 2015 confirming claim 1 and adding claims
`
`8-29 which were determined to be patentable. Claims 2-7 were not reexamined.
`
`Kawasaki presented prior art, which was the basis for the ex parte reexamination. PO
`
`successfully received confirmation of the claims. Petitioner then filed a request for Inter Partes
`
`2
`
`

`

`Review, Petitioner challenged a subset of claims 1-29 as unpatentable (claims 1-4 and 6). See
`
`IPR2017-00117, Paper 1. The PTAB declined to initiate a review of Grounds A, B, D, E, and F.
`
`The PTAB instituted an Inter Partes Review of Ground C. Petitioner now files a second request
`
`for Inter Partes Review. In the current matter, Petitioner again makes similar arguments against
`
`claims 5, 7-9, 11-29. See IPR2017-01036, Paper 2.
`
`Claim 10 is unchallenged.
`
`III.
`
`CLAIM CONSTRUCTION
`
`A.
`
`"substantially flushed"
`
`During reexamination of the '602 patent, the Board construed "substantially flush" to mean
`
`"a surface which is to a great extent even with an adjoining one. "
`
`B.
`
`"video signal source unit"
`
`The term "video signal source unit" in the '602 patent should be given its broadest
`
`reasonable construction in light of the specification. A claim interpreted during an IPR proceeding
`
`should be given its broadest reasonable construction in light of the specification of the patent.
`
`Cuozzo Speed Tech, LLC v. Lee, 136 S. Ct. 2131, 2146, 195 L. Ed. 2d 423 (2016).
`
`C.
`
`"substantially contiguous"
`
`The term "substantially contiguous" should be assigned ordinary and customary meaning,
`
`as would be understood by one of ordinary skill in the art at the time of the invention, in the context
`
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`PO submits that the term "substantially contiguous" would be understood to be a surface
`
`which is to a great extent "touching throughout in an unbroken sequence." Exhibit 2003. Petitioner
`
`3
`
`

`

`argues that
`
`the term "substantially contiguous" should be construed as synonymous with
`
`"substantially flush." PO agrees with this.
`
`D.
`
`"transitional segment"
`
`Claim 15 provides, a transitional segment "disposed at the junction of the sidewall and the
`ceiling."
`
`Ceiling
`
`Sidewall
`
`Transitional segment
`
`4
`
`

`

`E.
`
`"backlit panel"
`
`The term "backlit panel" should be construed according to its ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art at the time of the
`
`invention, in the context of the entire patent disclosure.
`
`IV.
`
`OVERVIEW OF PRIOR ART
`
`A.
`
`Namikawa
`
`Namikawa teaches externally mounted liquid crystal televisions that are on a wall face
`
`above each seat. See Namikawa p. 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. The
`
`liquid crystal television is assembled in a mounting position…"
`
`Thus Namikawa teaches a liquid crystal television mounted on the wall. 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.
`
`5
`
`

`

`Miyajima
`B.
`Miyajima teaches a monitor that protrudes away from the wall (i.e. is not substantially
`
`flush). Miyajima is also externally mounted and appears to teach curved television screens. "Fig.
`
`4 shows the mode in which the displays 01 are divided into flat displays 01a and 01b and installed
`
`in a shape conforming to the curved surface parts 03a of the inner walls in the vehicle carriage 03
`
`with mutual angles between the flat displays 01a and 01b in a shape conforming to the curved
`
`surface parts 03a of the inner walls of the carriage." Miyajima [0019].
`
`6
`
`

`

`Miyajima teaches a curved television or two flat displays that are, again, mounted on top
`
`of the wall and are not substantially flush with the wall.
`
`Figures 1, 3, and 4 depict a gap between the display 01 and the sidewall. 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……cooling air 08 flows between the vehicle
`
`carriage 03 and the backlight. "
`
`7
`
`

`

`C.
`
`Sasao
`
`Sasao teaches a rear projection television that is structured to be housed at the interior of
`
`a wall. See Sasao [0001]. The monitor of the television is altered to project forward.
`
`Sasao teaches [0010] "the screen 3 protrudes forward from the cabinet 12 so that the front
`
`face 3a of the screen and the wall surface 15a in the room 14 are substantially flush" and "a screen
`
`3 is positioned further forward than that of the rear projection television 1 shown in Fig. 1 by a
`
`distance (D1-D2) (for example, 15 mm) and therefore the electronic components and optical
`
`components service to form a clear color image on the front face 3a of this screen are disposed so
`
`as to be shifted forward by the necessary distance (for example 15 mm)."
`
`Sasao teaches modifying the monitor to jut out, so as to be positioned forward that of the
`television.
`
`8
`
`

`

`D.
`
`Amano
`
`Amano teaches screens of monitors being located quite some distance away from the
`
`surface structure of the car. The Patent Trial and Appeal Board 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 (see for example, Amano's Figure 4 reproduced below)." Ex. 2001, p. 5.
`
`E.
`
`Maekawa
`
`Maekawa teaches a monitor mounted on a sidewall of a train. Again, the monitor 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.
`
`9
`
`

`

`F.
`
`JTOA magazine
`
`JTOA magazine provides a monitor that is along a wall above the door of a subway train.
`
`The images are not of a view or clarity to provide a full disclosure. There appears to be a protrusion
`
`that surrounds the monitor and the written portion provides the only detail that can be gleaned
`
`from the JTOA reference. JTOA provides "a nine-inch liquid crystal monitor is provided above
`
`the side doors in each car; visually, they provide improved service by displaying the destination,
`
`the type of train, the stations the train will stop at, and other information. 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." Page 4, column 3, lines 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 support." Presumably, a lintel
`
`inspection cover would be a cover that allows for easy inspection of the beam that supports the
`
`10
`
`

`

`subway doors. This appears consistent with the photo which shows a section above the subway
`
`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 seats which meets the ceiling).
`
`As such, the JTOA reference teaches a monitor mounted on an inspection cover above a
`
`door frame. The description also states it protrudes from the wall at an angle of 30 degrees from
`
`vertical. As such, it would not be substantially flush.
`
`G. Yamada
`
`Yamada teaches a monitor that is in the back of a chair. Petitioner attempts to argue that a
`
`screen 5 within and inside the video display monitor, as in Yamada, teaches a transparent cover
`
`unit. It does not and this argument should be wholly rejected. Yamada does not teach a transparent
`
`cover unit that covers the video display monitors. The screen 5 inside the actual video display
`
`does not support such a teaching.
`
`11
`
`

`

`H. Sedighzadeh
`
`Sedighzadeh teaches a support structure for a television that drops from the ceiling with a
`
`shell around it. Neither the television nor the shell are flush with the ceiling. There is a plexiglass
`
`pane inside the shell that also is not flush with the adjacent surface, providing, "The opening or
`
`window 64 in the shell has permanently mounted therein a tinted plexiglass pane 70 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. " Sedighzadeh column 6,
`
`lines 2-7 (emphasis added). The cover in Sedighzadeh is not substantially flush with the adjacent
`
`surface structure of the transitional wall portion.
`
`Still further,
`
`the transparent cover of
`
`Sedighzadeh is inside the outer cover and Sedighzadeh teaches a television that drops from the
`
`ceiling with a shell around it.
`
`Sedighzadeh Fig. 2
`
`12
`
`

`

`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." Sedighzadeh column 1, lines 61-64. Sedighzadeh also teaches a “shell
`
`which surrounds and encloses the framework and television monitor…. the television monitor is
`
`merely seated on the tray on the support structure.” Id. at column 2, lines 21-30. Sedighzadeh
`
`teaches a television that swivels and is easily removed from a support structure that hangs from
`
`the ceiling.
`
`I. Schwenkler
`
`Schwenkler teaches a light that is mounted at and on top of the ceiling and the sidewall.
`
`Schwenkler teaches a light with a plastic display section 36 that is translucent and is adapted to
`
`receive against the outer surface thereof a display card 52 for observance by passengers in the
`
`vehicle. The section 36 is of arcuate configuration to permit the ready retention of a card 52 there
`
`against. Schwenkler column 5, lines 43-47.
`
`13
`
`

`

`V.
`
`STATEMENTS MADE BY PETITIONER'S EXPERT
`As an initial matter, it is submitted that the Expert's testimony is not independent and is in
`
`fact biased. PO is currently suing Alstom Transportation, Inc. and Kawasaki Rail Car, Inc. for
`
`infringement of the '602 patent. The expert, Lowell Malo, states in paragraph 12 that he worked
`
`for Alstom for 7 years. Based on this objective fact alone, PO submits that it is very unlikely that
`
`Petitioner's Expert could have opined on the '602 patent from an entirely independent point of
`
`view. His testimony should be disqualified or at least given very little value as being biased.
`
`Still further, the Expert Declaration appears to be a prime example of impermissible
`
`hindsight. The expert for Petitioner states flush mounting of monitors would have been obvious
`
`to one of ordinary skill in the art by May 1997. See Petition for Inter Partes Review ("Petition"),
`
`14
`
`

`

`Ex. 1015 at ¶ 36. This ignores that it was not, in fact, well known, and represented a significant
`
`advancement in the art, to provide a plurality of video display monitors each having a video
`
`screen… each of said monitor being mounted at the junction of the sidewall and ceiling, with the
`
`screen of the monitor substantially flushed with the adjacent wall surface structure of the car, and
`
`directed obliquely downwardly toward the car seats. Exhibit 2002, Declaration of Jack R. Long,
`
`¶ 32.
`
`Paragraphs 32 of the Expert Declaration mentions "fan speed control," "fluorescent light,"
`
`"PA equipment," "destination signs," and the like, to assert that these devices or equipment were
`
`amenable to flush-mounting. Appendices A and B in the Expert Declaration show two such
`
`devices, but without any evidence of their actual placement in a rail car. Based on the examples
`
`of such unrelated devices, the Expert Declaration attempts to subtly convince the reader that the
`
`mounting of the video display monitors substantially flush with the adjacent surface structure of
`
`the transitional wall portion —as required in claim 8 of the '602 patent—would have been obvious
`
`in early 1990's. The Expert Declaration uses highly-general terms like "devices" and "equipment,"
`
`but fails to provide a single example of a flush-mounted video screen at the junction of the ceiling
`
`and sidewall of a rail car (the transitional wall portion).
`
`In the first sentence of paragraph 31, the Expert Declaration broadly asserts that, "Flush or
`
`substantially flush mounting was at that time and still is considered to be the norm in the rail
`
`industry." (Emphasis added). This conclusion carefully omits mentioning the flush-mounting of a
`
`video screen because, as discussed later below, none of the cited references show, teach, or suggest
`
`the claimed flush-mounting of the screen of a video monitor and the FRA rule-related discussion
`
`in the Expert Declaration fails to support this proposition as well. If it had been a "norm in the rail
`
`15
`
`

`

`industry," there would have been at least one reference showing or remotely mentioning this kind
`
`of placement.
`
`The highly-selective evidence proffered by the Expert is understandable because the
`
`"norm" (in the first sentence of paragraph 31 of his Declaration) or trend—as exemplified by the
`
`FRA rule-making discussed in paragraph 31—was to have "interior fittings" recessed or flush-
`
`mounted. The examples given in paragraphs 27-30 (and mentioned above) are examples of such
`
`"interior fittings," and, hence, one skilled in the art would have surely known to install such fittings
`
`in a recessed or flush-mounted manner. However, the screen of a television or video monitor is
`
`not a "fitting" (as explained below) and, hence, prior to 1997 (the filing year of the '602 patent), it
`
`would not have been obvious to flush-mount it at the junction of the ceiling and a sidewall of a rail
`
`car. Exhibit 2002, Declaration of Jack R. Long, ¶ 35.
`
`PO asserts that the Expert's views in paragraphs 31 and 33 render the Expert Declaration
`
`internally inconsistent. In paragraph 31, the Declaration mentions that starting in 1995 the FRA
`
`began working on a rule that required interior fittings of railcars to be "recessed or flush-mounted."
`
`Although the rule was finalized in 1999, this requirement remained unchanged. See Petition, Ex.
`
`1015, ¶ 31. In paragraph 31, the Declaration mentions TVs as examples of such "interior fittings,"
`
`without providing any citation to the FRA rule(s) where a "fitting" is defined to include televisions
`
`or video monitors. This is a blatant cognitive leap, of course driven by hindsight in view of the
`
`disclosure in the '602 patent. However, ignoring this defect for the time-being, the PO submits
`
`that this position by the Expert clearly contradicts the assertions in paragraph 33 of the Declaration,
`
`as explained below.
`
`A rail car is a specialized and expensive product; its manufacturer and its purchaser are
`
`savvy business entities. Assuming, arguendo, that a TV is indeed a "fitting," then a rail car
`
`16
`
`

`

`manufacturer and a rail car purchaser both would be aware of this aspect and also would be aware
`
`of the FRA rule-making process. Thus, it is reasonable to observe that, as a sound business
`
`practice, even if a manufacturer builds a rail car prior to the finalization of the FRA rule in 1999,
`
`the manufacturer would still make the car compliant with the requirements of the upcoming rule
`
`because doing otherwise may make the cars non-compliant with the eventual rule or may require
`
`the car-buyer to re-model the car to make it compliant with the rule. The savvy buyer would insist
`
`the same to avoid any potential liability of non-compliance with the upcoming FRA rules. Thus,
`
`if a TV is considered a "fitting" (as inaccurately asserted by the Expert) and if the FRA rule is
`
`eventually going to require the fitting to be "recessed or flush-mounted," then it is inconceivable
`
`that a prudent rail car manufacturer would give Amtrak "the choice of flush-mounted or stand-
`
`alone mounted video monitors." Petition, Ex. 1015, ¶ 32 (Emphasis added). There would be no
`
`such "choice" if the FRA rule indeed required (or was going to require) flush-mounting of TVs or
`
`video monitors. Because of this "choice," the television screen shown in Appendix C in the Expert
`
`Declaration is not flush-mounted, but just placed as a protruding swivel mounted monitor.
`
`Furthermore, the location of the placement is not at the junction of the ceiling and a sidewall of
`
`the rail car.
`
`The inconsistency between paragraphs 31 and 33 can only be reconciled when the Expert's
`
`cognitive leap of interpreting the term "fitting" to include a TV is rejected. Once the Expert's
`
`definition of a "fitting" is rejected, all of the discussion in paragraphs 26-34 in the Expert
`
`Declaration would make sense because the term "interior fitting" in the FRA rule must have been
`
`referring to the "fan speed control," "fluorescent light," "PA equipment," "destination signs," and
`
`the like, which are mentioned in paragraphs 27-30 of the Expert Declaration. Furthermore, such
`
`an interpretation would be consistent with the ordinary and customary meaning of the term
`
`17
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`

`

`"fitting," as understood by one skilled in the art. The following dictionary definitions are two
`
`examples:
`
`(1)
`
`www.vocabulary.com (accessed on Nov. 3, 2016). [Note: This is the website used
`
`by the Board to interpret the claim term "flush" in its opinion in the earlier ex parte reexamination.]
`
`On this website, the term "fitting" is described as "a small and often standardized accessory
`
`to a larger system." The website gives the following examples of a "fitting," none of which
`
`mention a television or a video monitor as a "fitting."
`
`gas fitting: the fitting (pipes or valves or meters) that convey gas from the gas
`(i)
`main to the gas fixtures of a building
`(ii)
`pipe fitting, pipefitting: fitting consisting of threaded pieces of pipe for joining
`pipes together
`(iii)
`receptacle: an electrical (or electronic) fitting that is connected to a source of
`power and equipped to receive an insert
`(iv)
`outlet box (electricity): receptacle consisting of the metal box designed for
`connections to a wiring system
`(v)
`reducer: pipefitting that joins two pipes of different diameter
`(vi)
`expansion slot, slot (computer): a socket in a microcomputer that will accept a
`plug-in circuit board
`(vii)
`socket: a receptacle into which an electric device can be inserted
`(viii) electric outlet, electric receptacle, electrical outlet, outlet, wall plug, wall socket:
`receptacle providing a place in a wiring system where current can be taken to run
`electrical devices
`(2)
`www.merriam-webster.com (accessed on Nov. 3, 2016).
`On this website, the term "fitting" is described as "a small often standardized part" (like an
`
`"electrical fitting") or "a small part that goes with something larger" (like a "pipe fitting").
`
`These definitions clearly establish that the Expert's interpretation of the term "fitting" is
`
`inaccurate and not supported by the dictionaries or traditional understanding of that term.
`
`18
`
`

`

`Thus, from the discussion in paragraphs 26-34 in the Expert Declaration, it is reasonable
`
`to conclude that, prior to 1997, one skilled in the art would have been aware of installing "interior
`
`fittings" (which would not include TVs or video screens) in a rail car in a "recessed or flush-
`
`mounted" manner, but the installation of a video screen in this manner—especially at the junction
`
`of the ceiling and a sidewall of a rail car—would not have been obvious, as inaccurately concluded
`
`in paragraph 34 in the Expert Declaration without citation to any supporting evidence. Exhibit
`
`2002, ¶ 36.
`
`The rest of the Expert Declaration analyzes the challenged claims in view of the cited
`
`references. The discussion below rebuts each ground of the patentability challenge in the Petition
`
`and, hence, a separate rebuttal to this portion of Expert Declaration is not provided.
`
`VI.
`
`THE PETITION RELIES ON THE SAME OR SUBSTANTIALLY THE SAME
`ARGUMENTS MADE DURING THE EX PARTE REVIEW OF THE WITHIN
`PATENT
`
`The Board has discretion under 35 U.S.C. § 325(d) to reject a petition when the same or
`
`substantially the same prior art or arguments were presented previously in another proceeding
`
`before the Office. The relevant portions of that statute are reproduced below: In determining
`
`whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director
`
`may take into account whether, and reject the petition or request because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).
`
`Petitioner presented prior art to PO which prompted PO to file an ex parte review of the
`
`'602 patent. PO successfully overcame novelty and non-obviousness arguments with respect to
`
`the prior art presented by Petitioner. Petitioner filed a first IPR and now files another IPR which
`
`19
`
`

`

`attempts to repackage substantially the same prior art and teachings as those it presented prompting
`
`the ex parte review of the within patent (Ex Parte Reexam Control 90/011,861) and the first IPR
`
`(IPR2017-00117) in yet another attempt to get another bite at the apple. The within petition should
`
`be rejected as consisting of the same or substantially the same as the arguments previously
`
`presented to the Office. See Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 17
`
`(P.T.A.B. July 7, 2014). See also Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-
`
`00436, Paper 16 (P.T.A.B. June 19, 2014).
`
`PO has already argued in prior IPR2017-00117 that much of the same prior art has been
`
`analyzed and rejected. See IPR2017-00117, paper 6, pages 14-23. Petitioner is now again
`
`attempting to repackage the same arguments. Given the multiple redundant grounds advanced
`
`and the limited space to reply, PO will abbreviate the arguments.
`
`Amano has been rejected by the Board as failing to teach the limitation of "the screen of
`
`the monitor substantially flushed with the adjacent wall surface structure of the car." Miyajima
`
`is substantially the same as the previously considered Minesaki
`
`teaching. Namikawa is
`
`substantially the same as the previously considered Minesaki and Amano teachings.
`
`JTOA
`
`magazine and Sasao are substantially the same as the previously considered Moore, Maekawa,
`
`and Shinagawa references. Yamada discloses the same teachings as Tagawa cited during the
`
`initial prosecution of the within patent.
`
`Petitioner attempts to offer the same, or even less persuasive, teachings of previously
`
`considered references in the within action with the hope for a different outcome. This is a bold
`
`attempt to waste the Board’s time and resources. The JTOA magazine reference and the Sasao
`
`reference provide monitors mounted on an inspection cover (as in the JTOA reference) or in a
`
`surrounding wall (as in the Sasao reference), the same as the already analyzed Moore, Maekawa
`
`20
`
`

`

`and Shinagawa references1. The Board has already analyzed this prior art and found the claims
`
`patentable in view of such teachings. The currently advanced prior art adds nothing new to the
`
`analysis and the board should decline to institute proceedings.
`
`VII.
`
`PETITIONERS HAVE NOT SHOWN A REASONABLE LIKELIHOOD OF
`PREVAILING ON ANY OF THE ASSERTED GROUNDS
`
`A.
`
`Ground A. Claims 5 and 7 are patentable over Namikawa in view of Sasao,
`Amano and Maekawa
`Claims 5 and 7 depend from claim 1. Claim 1 is currently the subject of inter partes review
`
`in a related proceeding IPR2017-00117. Claim 5 provides, "The subway car of claim 1 wherein
`
`the video signal source unit comprises a video tape player, a video disk player or computer-based
`
`digital video recorder." And Claim 7 provides, "The subway car of any of claim 1 including a self-
`
`contained wiring-cabling system connecting the v