UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-01036
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
`TO PATENT OWNER’S SUPPLEMENTAL RESPONSE
`PURSUANT TO 37 C.F.R. § 42.23
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`
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`
`
`
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`
`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`KAWASAKI RAIL CAR, INC.
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-01036
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
`
`Title: Subway TV Media System
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
`TO PATENT OWNER’S SUPPLEMENTAL RESPONSE
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`TABLE OF PETITIONER’S EXHIBITS ................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S SUPPLEMENTAL RESPONSE DOES NOT
`REBUT PETITIONER’S EVIDENCE AND ARGUMENTS ........................ 1
`
`A.
`
`Patent Owner’s Fire Safety Arguments ................................................. 1
`
`B.
`
`C.
`
`Patent Owner’s Namikawa Arguments ................................................. 6
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`Patent Owner’s Miyajima Arguments ................................................. 16
`
`D.
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`Patent Owner’s Sasao Arguments ....................................................... 17
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Patent Owner’s JTOA Arguments ...................................................... 18
`
`Patent Owner’s “Self-Contained Wiring-Cabling System”
`Arguments ........................................................................................... 20
`
`Patent Owner’s Sedighzadeh and Yamada Arguments ....................... 25
`
`Patent Owner’s Schwenkler Arguments ............................................. 27
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`Patent Owner’s Irrelevant Prior Art Distinctions ................................ 29
`
`Patent Owner’s Experts’ Opinions ...................................................... 30
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`III. CONCLUSION .............................................................................................. 30
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`CERTIFICATE OF WORD COUNT ...................................................................... 32
`
`CERTIFICATE OF SERVICE ................................................................................ 33
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`Cases
`
`In re Ethicon, Inc.,
`844 F.3d 1344 (Fed. Cir. 2017) ............................................................................30
`
`In re Gal,
`980 F.2d 717 (Fed. Cir. 1992) ..............................................................................27
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) ............................................................................26
`
`Meiresonne v. Google, Inc.,
`849 F.3d 1379 (Fed. Cir. 2017) ............................................................................28
`
`Pharmacosmos A/S v. Luitpold Parm., Inc.,
`IPR2015-01493, Paper 54 (P.T.A.B. Dec. 28, 2016) ...........................................30
`
`
`
`
`
`
`
`ii
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`
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`TABLE OF PETITIONER’S EXHIBITS
`
`Exhibit
`
`Description
`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
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`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
`
`1016
`
`1017
`
`1018
`
`U.S. Patent No. 6,700,602
`
`Japan Train Operation Association Magazine, Vol. 37, issue
`no. 3 (March 1, 1995)
`
`Translation of Ex. 1002
`
`Japanese Publication No. 04-085379 [Namikawa]
`
`Translation of Ex. 1004
`
`Japanese Publication No. 07-181900 [Miyajima]
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`Translation of Ex. 1006
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`Japanese Publication No. 04-160991 [Maekawa]
`
`Translation of Ex. 1008
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`Japanese Publication No. 04-322579 [Sasao]
`
`Translation of Ex. 1010
`
`File history of the ’602 Patent
`
`Reexamination file history of the ’602 Patent
`
`Curriculum Vitae of Lowell Malo
`
`Expert Declaration of Lowell Malo
`
`Declaration of Shuichi Matsuda
`
`Translation of Ex. 1016
`
`Certification from Japan National Diet Library Explaining
`Workflow Procedure in the Library
`
`1019
`
`Translation of Ex. 1018
`
`iii
`
`
`
`Exhibit
`
`Description
`
`
`
`1020
`
`1021
`
`1022
`
`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
`
`1039
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`Japanese Publication No. 02-223985 [Amano]
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`Translation of Ex. 1020
`
`U.S. Patent No. 5,293,244 [Kawaguchi]
`
`Certification from Japan National Diet Library Indicating
`Receipt Date of Japan Train Operation Association Magazine
`
`Translation of Ex. 1023
`
`U.S. Pat. No. 5,148,282 [Sedighzadeh]
`
`U.S. Pat. No. 3,211,904 [Schwenkler]
`
`Japanese Publication No. 05-42853 [Yamada]
`
`Translation of Ex. 1027
`
`[Not filed] Supplemental Expert Declaration of Lowell Malo
`
`[Not filed] Morrison-Knudsen Design Drawing E02-841
`
`[Not filed] Luminator Design Drawing ICD-108393
`
`[Not filed] Morrison-Knudsen Design Drawing E2877C01
`
`Declaration of Mark A. Chapman
`
`Second Supplemental Expert Declaration of Lowell Malo
`
`First Deposition Transcript of Joseph B. Zicherman
`
`First Zicherman Deposition Exhibit No. 6
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`First Zicherman Deposition Exhibit No. 8
`
`Second Deposition Transcript of Joseph B. Zicherman
`
`Second Zicherman Deposition Exhibit No. 1
`
`iv
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`
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`
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`Exhibit
`
`Description
`
`1040
`
`1041
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`1042
`
`1043
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`
`
`[Not Filed] Third Supplemental Expert Declaration of Lowell
`Malo
`
`Fourth Supplemental Expert Declaration of Lowell Malo
`
`Final Written Decision, IPR2017-00117 (P.T.A.B. May 2, 2018)
`
`Patent Owner Response, IPR2017-00117 (Aug. 7, 2017)
`
`v
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`
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`
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`I.
`
`INTRODUCTION
`
`In its Response for the originally instituted grounds, Patent Owner’s (“PO”)
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`primary argument was its “fire safety” argument. Now, in its Supplemental
`
`Response for the newly instituted grounds, PO downplays its “fire safety”
`
`argument and presents several new arguments not presented in its Response. As
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`explained below, PO’s arguments do not rebut Petitioner’s arguments, and several
`
`of PO’s arguments are inconsistent with the Board’s findings in IPR2017-00117.
`
`II.
`
`PATENT OWNER’S SUPPLEMENTAL RESPONSE DOES NOT
`REBUT PETITIONER’S EVIDENCE AND ARGUMENTS
`
`
`
`PO’s Supplemental Response (Paper 45) does not rebut Petitioner’s
`
`arguments and evidence, which demonstrate that all the challenged claims (claims
`
`5, 7-9 and 11-29) are unpatentable as obvious in view of the references in the
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`newly instituted grounds (Grounds B-D, F-H, J-L and N-P).
`
`A.
`
`Patent Owner’s Fire Safety Arguments
`
`As explained in the Petition and in Petitioner’s expert Lowell Malo’s
`
`original declaration (Ex. 1015), it would have been obvious to place Namikawa or
`
`Miyajima’s monitors so that the screens (or cover units) were substantially flush
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`(or substantially contiguous or flush) with the adjacent wall surface, based on
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`Sasao or JTOA’s teaching; in particular, a POSITA would have been motivated to
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`do this for several reasons. (E.g., Petition 13-15, 26-29, 31-33, 36-39; Ex. 1015
`
`¶¶31, 49-61.)
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`
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`1
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`
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`In PO’s Response (Paper 15) for the original grounds (Grounds A, E, I and
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`M), PO did not dispute Petitioner’s motivations. Instead, PO’s primary argument
`
`was its “fire safety” argument that a POSITA would not have flush-mounted
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`Namikawa’s televisions because they would overheat and create a fire hazard.
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`(E.g., Response 25-32.) In Petitioner’s Reply (Paper 34), it responded by
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`presenting arguments and evidence, including a declaration from Mr. Malo (Ex.
`
`1034), that LCD televisions would not have overheated and that, even if they did, a
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`POSITA would have identified and known how to safely address any fire safety
`
`risk by dissipating excess heat. (Reply 3-12; Ex. 1034, ¶¶4-27.)
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`Now, in its Supplemental Response for the new grounds (Grounds B-D, F-
`
`H, J-L and N-P), PO downplays its “fire safety” argument and presents several new
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`arguments not previously presented, including arguments disputing the motivations
`
`that PO did not dispute in its Response (discussed below).
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`PO also repeats its “fire safety” arguments and extends them to Miyajima,
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`by incorporating them by reference. (Supp. Resp. 24-25, 30, 37-38, 47-48, 50-51,
`
`79.) Petitioner incorporates by reference its response to these arguments in its
`
`Reply and Mr. Malo’s declaration. (Reply 3-12; Ex. 1034, ¶¶4-27.)
`
`
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`In response to PO’s extension of its “fire safety” arguments to Miyajima,
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`Petitioner has also submitted a new declaration from Mr. Malo (Ex. 1041), in
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`which he explains that his previous testimony applies to Miyajima. (Id., ¶5.)
`
`
`
`2
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`
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`
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`Moreover, as Mr. Malo explains, the embodiment in Figure 231 of Miyajima
`
`already includes a cooling mechanism to dissipate heat from the backlights of the
`
`LCD displays, i.e., cooling air passage gap 3c and fan 9:
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`
`
`
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`(Id., ¶6; Ex. 1007, 5, Fig. 23.) The fact that Miyajima discloses this cooling
`
`mechanism for its LCD display backlights shows that those skilled in the art knew
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`how to identify and address heat issues. (Ex. 1041 ¶6.) Moreover, if a POSITA
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`placed the screens (or cover units) of the LCD displays in Miyajima substantially
`
`flush (or substantially contiguous or flush) with the adjacent wall surface, he or she
`
`would have known how to safely address any fire safety risk by ensuring that the
`
`
`1 Petitioner relies on Figure 23. (Petition 34; Ex. 1015, ¶47.)
`
`
`
`3
`
`
`
`
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`cooling provided by the cooling air passage and fan would remain adequate. (Id.,
`
`¶7.)
`
`
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`PO also argues that because some of Miyajima’s embodiments include
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`cooling air passages to cool the LCD display backlights, a POSITA would not have
`
`flush-mounted Namikawa’s televisions. (Supp. Resp. 30-31.) As previously
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`explained, even if Namikawa’s televisions would have overheated, a POSITA
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`would have identified and known how to safely address any fire safety risk by
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`dissipating or ventilating excess heat. (Reply 6-9; Ex. 1034, ¶¶13-25; Ex. 1041,
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`¶¶3, 5.)
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`PO also disputes that JTOA is “real-world evidence” that an LCD display
`
`embedded in a plastic enclosure in a railcar 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.
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`(Reply 9-11; Ex. 1034 ¶27.) According to PO, Miyajima is better “real-world
`
`evidence” than JTOA, and it shows that fire safety concerns would have
`
`discouraged a POSITA from flush-mounting an LCD display. (Supp. Resp. 16.)
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`Miyajima is a published patent application by inventors at Canon, which describes
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`fourteen embodiments. (Ex. 1007, 1-7.) There is no indication in Miyajima, and
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`PO has not presented any evidence, that any railcar or subway car implementing
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`any of Miyajima’s embodiments was ever built. In contrast, JTOA describes and
`
`
`
`4
`
`
`
`
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`includes photographs of an actual rail car in operation in 1995. (Ex. 1003, 1, 4.)2
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`However, even if PO were correct that Miyajima is better evidence, its cooling
`
`system shows that those skilled in the art knew how to address heat issues. (Ex.
`
`1041 ¶6.)
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`Finally, PO’s “fire safety” arguments are inconsistent with the Board’s
`
`finding in IPR2017-00117 that a POSITA would have been motivated to, and have
`
`had a reasonable expectation of success, flush-mounting LCD televisions, despite
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`PO’s arguments in that IPR about “the concerns of overheating monitors, proper
`
`ventilation, the dissipation of heat, and fire concerns.” (Ex. 1042 (Final Written
`
`Decision, IPR2017-00117 (P.T.A.B. May 2, 2018)) 28-31.) PO’s “fire safety”
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`arguments and evidence here provide no basis to disturb the Board’s finding,
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`which was correct and well supported.
`
`In sum, PO’s “fire safety” arguments, including as applied to Miyajima,
`
`should be rejected, for the reasons set forth above, in Petitioner’s Reply, and in Mr.
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`Malo’s declarations. (Reply 3-12; Ex. 1034, ¶¶4-27; Ex. 1041 ¶¶5-8.)
`
`
`2 PO’s assertions that JTOA is less relevant because its display “is lower in the
`
`subway car (less heat concerns)” and “has the benefit of ventilation from the door
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`which opens and closes” (Supp. Resp. 16) are unsupported.
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`
`
`5
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`
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`
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`B.
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`Patent Owner’s Namikawa Arguments
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`
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`1.
`
`“Junction of the Sidewall and Ceiling”
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`PO argues that the televisions in Figure 1 of Namikawa are mounted on the
`
`ceiling, not “at the junction of the sidewall and ceiling.” (Supp. Resp. 3-7, 25-27,
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`55-56.)3 PO did not argue this in its Response, and this new argument is
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`inconsistent with PO’s position in IPR2017-00117, where PO argued that
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`Namikawa’s televisions are mounted on the sidewall. (Ex. 1042, 18; Ex. 1043
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`(Patent Owner Response, IPR2017-00117 (Aug. 7, 2017)) 18 (“Patent Owner
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`submits that the only proper reading of Namikawa is a television mounted on a
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`sidewall.”).)
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`PO’s new argument is based primarily on its distortion of Mr. Malo’s
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`deposition testimony. He was asked “[i]f we follow [the top dotted line of Figure 1
`
`of Namikawa] to the end of the television, is the curved line the ceiling?” and he
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`responded “You mean down at the end of the car, yes.” (Ex. 2010, 21:14–16.)
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`Based on this answer, PO’s counsel has drawn the “ceiling” in red and the
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`“sidewall” in blue on Figure 1, and identified the “junction” as the region between
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`the ceiling and the sidewall:
`
`
`3 PO argues this for all the “junction”/“transitional wall portion”/“transitional
`
`segment” limitations, acknowledging that they “refer to the same portion of the
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`wall where the ceiling and the sidewall meet.” (Supp. Resp. 2, 3-7, 25-27, 55-56.)
`
`
`
`6
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`
`
`
`
`
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`(Supp. Resp. 5.) To be clear, Mr. Malo did not draw these lines; PO’s counsel did.
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`
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`When read in context, Mr. Malo’s testimony does not support PO’s
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`demarcation of the ceiling, sidewall, and junction. He testified that the ceiling
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`extends to the top dotted line, the sidewall extends to the bottom dotted line, and
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`that there is a “transition” (i.e., “junction”) between the ceiling and sidewall
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`between these two lines. Specifically, he testified that the top dotted line is the
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`“juncture” of the “ceiling” and “something else” (Ex. 2010, 21:10-13, 21:17-21);
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`that the bottom dotted line is the “juncture” of the “side wall” and “not the ceiling,
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`but whatever that space is between the two dotted lines” (id., 21:22-22:6); and that
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`the television is “mounted on the transition between the wall and the ceiling” (id.,
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`22:7-13), i.e., at the “junction” between the ceiling and sidewall.
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`
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`In sum, Mr. Malo’s testimony supports Petitioner’s identification of the
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`“junction,” shown in this annotated Figure 1:
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`
`
`7
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`
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`(Petition 25.) Mr. Malo has addressed this issue in his new declaration, in which
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`he confirms that a POSITA would understand the “junction” of the ceiling and the
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`sidewall in Figure 1 to be the region between the two dotted lines. (Ex. 1041, ¶10.)
`
`
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`PO also argues that its identification of the “junction” is “confirmed” by Mr.
`
`Malo’s testimony “that . . . wherever the longitudinal member that runs from the
`
`front of the car to the back and joins the ceiling with the sidewall is located would
`
`be the ‘junction of the sidewall and the ceiling.’” (Supp. Resp. 7, 27.)
`
`
`
`This argument also distorts Mr. Malo’s testimony. He never testified or
`
`“confirmed” that the “junction” is located where PO’s counsel has drawn it. In the
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`cited testimony, he merely responded “[y]es” to the question “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?” (Ex. 2010, 26:3-7.) As Mr. Malo explains in
`
`his declaration, this longitudinal member that joins ceiling members to sidewall
`
`
`
`8
`
`
`
`
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`members is located within the wall behind and at approximately the same height as
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`some portion of the curved “junction” area in the upper corner in the passenger
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`compartment. (Ex. 1041, ¶11.)
`
`
`
`PO’s identification of the “junction” in Figure 1 is also inconsistent with
`
`how PO’s expert and the ’602 patent describe the “junction.” PO’s expert testified
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`that “the ‘junction of the sidewall and the ceiling’ in a subway car is not a single
`
`point, but an area between the ceiling and a sidewall that is typically curved.” (Ex.
`
`2009, ¶11.) The ’602 patent states that “the monitor is mounted at the junction of
`
`the wall and ceiling of the subway car, where there is commonly provided a
`
`concavely curved segment of internal wall” and that “[s]uitable locations for video
`
`monitors 22 in accordance with the invention are at the junction of wall and ceiling
`
`of subway car 10.” (Ex. 1001, 3:67–4:3, 4:64–67.) Figure 2 (below left) depicts
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`monitors 22 as mounted at this “curved segment” between the sidewall and ceiling,
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`just like the televisions in Figure 1 of Namikawa (below right):
`
`
`
`9
`
`
`
`
`
`
`
`’602 patent (Ex. 1001), Fig. 2
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`Namikawa (Ex. 1005), Fig. 1
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`In both figures, the televisions are mounted at the same curved segment between
`
`the sidewall and ceiling. The only difference in the figures is that the middle
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`portion of the ceiling is straight in Figure 2 (left) and curved in Figure 1 (right).
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`But this is irrelevant because the middle of the ceiling is not part of the “junction.”
`
`
`
`PO’s narrow identification of the “junction” in Figure 1 of Namikawa
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`(below right) is also inconsistent with PO’s identification of the “junction” in
`
`Figure 4A of the ’602 patent (below left):
`
`
`
`10
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`
`
`
`
`
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`Supp. Resp. 1.
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`Supp. Resp. 5.
`
`
`
`
`
`
`
`PO also asserts that Namikawa’s description of its televisions as “on a wall
`
`face” “refer[s] to the ceiling as a ‘wall face’ and describes that the monitor is on
`
`top of the ceiling wall.” (Supp. Resp. 5.) PO’s assertion distorts the ordinary
`
`meaning of the word “wall.” It is also inconsistent with PO’s position in IPR2017-
`
`00117, where PO argued that “the specification of Namikawa expressly provides
`
`throughout that [the monitor] is mounted on the sidewall.” (Ex. 1043, 19-20.)
`
`
`
`Finally, PO’s “junction” arguments are inconsistent with the Board’s finding
`
`in IPR2017-00117 that Namikawa discloses the “mounted at the junction of the
`
`sidewall and ceiling” limitation. (Ex. 1042, 19.) The Board concluded that this
`
`limitation “cover[s] the case of having a mounting surface of concavely curved
`
`segment of internal wall such as the one shown in Namikawa Figure 1.” (Id.)
`
`
`
`11
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`
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`
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`PO’s arguments provide no basis to disturb the Board’s finding, which was correct
`
`and well supported.
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`
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`
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`2.
`
`“Substantially Flush” and Motivations
`
`PO repeats its argument that a POSITA would not have flush-mounted
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`Namikawa’s televisions because there would be insufficient space behind the inner
`
`wall. (Supp. Resp. 32-36.)
`
`
`
`PO ignores its own expert’s admission that in 1997, “a subway car was
`
`normally constructed such that it had a cavity in between its interior wall and its
`
`exterior shell.” (Ex. 1038, 16:5-9.) The ’602 patent confirms this, stating that “[a]
`
`subway car is normally constructed so that it has a cavity wall, defined between its
`
`outer structural shell and its inner lining wall.” (Ex. 1001, 3:55-59.) Therefore, a
`
`POSITA in 1997 would have understood Figure 1 of Namikawa to depict a
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`“normally constructed” car with a cavity with space for the televisions to be flush-
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`mounted. (Ex. 1034 ¶30; Reply 14.)
`
`
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`PO argues that Petitioner’s reliance on the ’602 patent specification is
`
`hindsight. (Supp. Resp. 36-37.) This specification statement does not describe the
`
`invention; it describes a “normally constructed” subway car in 1997, i.e.,
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`information known by a POSITA—as confirmed by both sides’ experts. (Ex. 1034
`
`¶30; Ex. 1038, 16:5-9.)
`
`
`
`12
`
`
`
`
`
`
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`PO also relies on Mr. Malo’s testimony about the longitudinal member
`
`discussed above, to argue there would be no space to flush-mount the televisions.
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`(Supp. Resp. 27, 32, 35 (citing Ex. 2010, 26:3-10).) Mr. Malo never testified that
`
`there would be insufficient space, he explained that it would be possible to move
`
`members, and he explained that the longitudinal member would not occupy all the
`
`space in that area. (Ex. 2010, 26:11-13; Ex. 1041, ¶11.)4
`
`
`
`PO’s “space” argument is also inconsistent with the Board’s finding in
`
`IPR2017-00117 that a POSITA “would have understood Figure 1 of Namikawa to
`
`be disclosing the availability of space beyond the wall at the junction of the
`
`sidewall and the ceiling to allow for the screen of the monitor to be substantially
`
`flushed with the adjacent wall surface structure of the car.” (Ex. 1042, 27.) PO’s
`
`arguments provide no basis to disturb this finding, which was correct and well
`
`supported.
`
`
`
`
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`For both Namikawa (and Miyajima addressed below), PO also argues that
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`the 1997 FRA proposed rule that “interior fittings” should be flush-mounted does
`
`not show that this was an industry norm at the time, because the FRA did not
`
`implement the rule until 1999. (Supp. Resp. 28, 40.) However, as Mr. Malo
`
`
`4 The cavity of the “typical subway car” of Figure 4A of the ’602 patent includes a
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`monitor and member 30. (Ex. 1001, 4:36-59, 5:8-12, 5:21-27, 6:11-28, Figs. 1A,
`
`1B, 3, 4A; Ex. 1034 ¶36.)
`
`
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`13
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`
`
`
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`explains, this rule proposed in 1997 adopted a well-established practice in the
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`industry, and was proposed after extensive consultation with those working in the
`
`industry. (Ex. 1041, ¶¶12-14.) As Mr. Malo previously explained, flush-mounting
`
`was the norm in the industry by 1997. (Ex. 1015, ¶31.)
`
`
`
`PO’s “norm” argument is also inconsistent with the Board’s finding in
`
`IPR2017-00117 that “[f]lush or substantially flush mounting was at that time and
`
`still is considered to be the norm in the rail industry.” (Ex. 1042, 28.) PO’s
`
`argument provides no basis to disturb this finding.
`
`
`
`PO argues that conserving space would not motivate a POSITA to flush-
`
`mount Namikawa’s televisions because Namikawa states that “no space inside the
`
`car is lost.” (Supp. Resp. 39-40.) PO did not dispute this motivation in its
`
`Response. Moreover, as Mr. Malo explained, conserving space—even inches—
`
`was a major motivation in the design of railcar passenger compartments in the mid-
`
`1990s. (Ex. 1015, ¶52.) PO does not dispute that if the televisions were flush-
`
`mounted, more space would be created. Therefore, conserving this additional
`
`space would have motivated a POSITA.
`
`
`
`PO argues that Petitioner improperly “gleaned” the motivation to enhance
`
`aesthetics from the ’602 patent. (Supp. Resp. 41.) PO did not dispute this
`
`motivation in its Response. PO’s argument also ignores Mr. Malo’s testimony that
`
`in the 1990s, railcar specifications required car interiors to have “smooth” or
`
`
`
`14
`
`
`
`
`
`“clean” surfaces to enhance aesthetics, conserve space, increase safety, facilitate
`
`cleaning and prevent vandalism. (Ex. 1015, ¶¶26-30.)
`
`
`
`PO argues that motivations of reducing vandalism and facilitating cleaning
`
`would have been outweighed by fire safety concerns. (Supp. Resp. 41-43.) PO did
`
`not dispute these motivations in its Response, and PO’s assertions are not
`
`supported by evidence. Further, as previously explained, the LCD televisions of
`
`Namikawa would not have overheated and, even if they did, a POSITA would have
`
`identified and known how to safely address any fire safety risk. (Reply 3-12; Ex.
`
`1034, ¶¶4-27.)5 Therefore, no fire safety concerns would outweigh these
`
`motivations.
`
`
`
`Finally, all of PO’s arguments are inconsistent with the Board’s finding in
`
`IPR2017-00117 that a POSITA would have been motivated to place Namikawa’s
`
`televisions substantially flush with the adjacent wall surface. (Ex. 1042, 28.) The
`
`Board concluded that “[w]ith the introduction of video systems into rail cars during
`
`this time period, the requirement for ‘smooth’ or ‘clean’ interior surfaces, along
`
`with the proposed FRA regulations, would have motivated those of ordinary skill
`
`in the art in the industry to flush or substantially flush mount video systems inside
`
`
`5 PO’s assertion that Namikawa’s televisions “would not be prone to vandalism”
`
`because they are near the ceiling (Supp. Resp. 41) is unsupported.
`
`
`
`15
`
`
`
`
`
`rail cars.” (Id.) PO’s arguments provide no basis to disturb the Board’s finding,
`
`which was correct and well supported.
`
`C.
`
`Patent Owner’s Miyajima Arguments
`
`PO argues that a POSITA would not have flush-mounted Miyajima’s
`
`displays because there would be insufficient space in the cavity behind the wall.
`
`(Supp. Resp. 10, 24, 35, 50.) As explained above, both sides’ experts agree and
`
`the ’602 patent confirms that in 1997 a subway car normally had a cavity space
`
`behind the inner wall. (Ex. 1038, 16:5-9; Ex. 1001, 3:55-59; Ex. 1034, ¶¶28-30.)
`
`As Mr. Malo explained, Miyajima’s car has a cavity with sufficient space at the
`
`junction to allow the display screens (or cover units) to be placed substantially
`
`flush (or substantially contiguous or flush) with the adjacent wall surface. (Ex.
`
`1015, ¶¶41, 47-48.)
`
`PO argues there would be no motivation to flush-mount Miyajima’s
`
`monitors because “Miyajima was not concerned with conserving space and
`
`specifically provided that shaped LCD televisions screens solved that problem.”
`
`(Supp. Resp. 49.) As Mr. Malo explained, conserving space—even inches—was a
`
`major motivation in the industry at the time. (Ex. 1015, ¶¶52, 60.) PO does not
`
`dispute that if Miyajima’s displays were flush-mounted, more space would be
`
`created. Therefore, conserving this additional space would have motivated a
`
`POSITA.
`
`
`
`16
`
`
`
`
`
`PO argues that Miyajima “is not directed to a television with a cabinet and
`
`would not be concerned with a noise factor.” (Supp. Resp. 50.) Sasao teaches that
`
`concealing everything except the screen reduces the distracting “noise factor.”
`
`(Ex. 1011, 2.) Therefore, this would have motivated a POSITA to flush-mount
`
`Miyajima’s displays. (Ex. 1015, ¶¶50, 54, 60.)
`
`Petitioner has responded above in the Namikawa section and in Mr. Malo’s
`
`new declaration to PO’s argument that flush-mounting was not the norm in the
`
`industry in 1997, which PO also argues for Miyajima. (Supp. Resp. 48; Section
`
`II(B)(2), supra; Ex. 1041, ¶¶12-13.)
`
`Petitioner has responded to PO’s “fire safety” arguments for Miyajima in the
`
`“Fire Safety” section above, in Petitioner’s Reply, and in Mr. Malo’s declarations.
`
`(Section I(A), supra; Ex. 1034, ¶¶4-27; Reply 3-12; Ex. 1041, ¶¶3-8.)
`
`D.
`
`Patent Owner’s Sasao Arguments
`
`PO incorrectly argues that if (as Petitioner argues) the CPSC Guidelines are
`
`off point because they address CRT televisions, Sasao is off point too because it
`
`also addresses CRT televisions. (Supp. Resp. 11-12, 38-39, 48-49, 50.)
`
`As explained in the Reply, the CPSC Guidelines are off point because they
`
`address fire hazards caused by overheating CRT televisions available in 1974. The
`
`guidelines do not address LCD televisions in 1997, so they do not support PO’s
`
`
`
`17
`
`
`
`
`
`argument that a POSITA in 1997 would not have flush-mounted LCD televisions
`
`because of fire safety concerns. (Reply 5-6; Ex. 1034, ¶12.)
`
`In contrast, Sasao is not off point, even though it discloses a rear-projection
`
`television. Sasao teaches placing the screen of a display substantially flush with an
`
`adjacent wall surface. This teaching is generic and does not depend on the type of
`
`display: Sasao is broadly directed to “a display device that is structured so as to be
`
`housed at the interior of a wall.” (Ex. 1011, 2; Petition 27; Ex. 1015 ¶¶49-50.)
`
`PO’s argument is also inconsistent with the Board’s finding in IPR2017-
`
`00117 that Sasao teaches the “substantially flushed” limitation. (Ex. 1042, 22-23.)
`
`PO’s argument provides no basis to disturb this finding, which was correct and
`
`well supported.
`
`
`
`E.
`
`Patent Owner’s JTOA Arguments
`
`PO argues that the LCD display in JTOA is not substantially flush with the
`
`adjacent wall surface because the lintel cover in which the display is installed
`
`protrudes beyond the inner wall of the car. (Supp. Resp. 15, 31-32, 52, 54, 56.)
`
`PO misses the point. JTOA teaches placing an LCD display substantially flush
`
`with an adjacent surface, i.e., the surface of the lintel cover. (Petition 33; Ex.
`
`1015, ¶56.) Whether the lintel cover is flush with the wall of the car is irrelevant.
`
`PO also argues that the LCD display is not substantially flush because the
`
`display “tilts at an angle of 30 degrees from the vertical.” (Supp. Resp. 15-16, 31-
`
`
`
`18
`
`
`
`32, 52, 54, 56.) As these photos show, the LCD display and the lintel cover are
`
`both tilted at the same angle, such that their surfaces are parallel and flush with
`
`each other:
`
`
`
`
`
`
`
`
`
`19
`
`
`
`(Ex. 1002, 1.) The following magnification of the second photo shows this clearly:
`
`
`
`
`
`(Id.)
`
`F.
`
`
`Patent Owner’s “Self-Contained Wiring-Cabling System”
`Arguments
`
`Petitioner argues that the “self-contained wiring-cabling system connecting
`
`the video monitors to the video signal source unit” limitation of claim 7 is obvious
`
`based on either Namikawa or Miyajima in view of any of: (1) the knowledge of a
`
`POSITA; (2) Maekawa; or (3) Amano. (Petition 30-31, 39; Ex. 1015 ¶¶62-65.)
`
`PO’s argument that “self-contained wiring cabling system” should be
`
`construed to require the cabling system to be “independent of any previously
`
`installed track, tunnel or control systems” (Supp. Resp. 2-3) is not supported by the
`
`ordinary meaning or the intrinsic evidence. As explained in Petitioner’s Reply, the
`
`
`
`20
`
`
`
`
`
`specification describes a “self-contained wiring cabling system” as one in which
`
`“the video signal source and the monitors [are] interconnected by suitable electrical
`
`cable systems which are self-contained within the subway car.” (Ex. 1001, 2:64-
`
`66; Reply 18-19; Ex. 1034 ¶39.) The specification does not state that a self-
`
`contained wiring cabling system is “independent of any previously installed track,
`
`tunnel or control systems”; it states that when a self-contained system is used, “the
`
`operation of the video system” is independent of any such “previously installed”
`
`systems. (Ex. 1001, 3:2-4; Reply 18; Ex. 1034 ¶39.) Therefore, the second prong
`
`of PO’s construction, and PO’s purported distinctions based on that prong, should
`
`be rejected. (Supp. Resp. 3, 43-46.)
`
`For Petitioner’s argument that either Namikawa or Miyajima renders this
`
`limitation obvious in view of a POSITA’s knowledge, PO incorrectly argues that
`
`Petitioner improperly relies on “common sense” and ignores the “self-contained”
`
`limitation. (Supp. Resp. 43-44.)
`
`Mr. Malo testified that for the video system in Namikawa or Miyajima to
`
`work, “the video signal source unit has to be connected or coupled to the video
`
`monitor,” that a POSITA “would have to choose some method of making this
`
`connection,” and that, “[b]y 1997, use of a wire or cable was a commonly used
`
`method to connect a video signal source unit to a video monitor.” (Ex. 1015 ¶63.)
`
`
`
`21
`
`
`
`
`
`This is a simple, well-known connection, and PO’s attempt to complicate this issue
`
`should be rejected.
`
`Furthermore, Mr. Malo did not ignore the “self-contained” element. He
`
`identified the “self-contained” limitation and stated that “this limitation” is
`
`obvious. (Ex. 1015 ¶62.) He also testified that a “‘self-contained wiring cabling
`
`system’ is simply a wiring cabling system that is ‘self-contained within the subway
`
`car.’” (Ex. 1034 ¶39.)
`
`For Petitioner’s argument based on Maekawa, PO argues that Maekawa’s
`
`cabling system is not “within the car” because antennas 30a-d “are on top of the
`
`roof and outside the rail car.” (Supp. Resp. 45.) Maekawa’s antennas 30a-d are
`
`not part of the “self-contained wiring cabling system.” Maekawa’s “unit 40” is the
`
`“video signal source unit” and the coaxial cable and distributors connecting unit 40
`
`to the televisions are the “self-contained wiring cabling system,” as shown below
`
`in an annotated Figure 1:
`
`
`
`22
`
`
`
`
`
`video display monitors
`
`video signal source unit
`
`(Ex. 1009, Fig. 1.)
`
`self-contained wiring
`
`cabling system
`
`For Petitioner’s argument based on Amano, PO argues that Amano’s cabling
`
`system is not “within the subway car” because Amano teaches “a transmitter and
`
`antennas that are outside of the car.” (Supp. Resp. 46.)
`
`Amano’s antennas are not part of the “self-contained wiring cabling
`
`system
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