Trials@uspto.gov
`571-272-7822
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`Paper No. 54
`Entered: September 10, 2018
`
`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 B1
`____________
`
`Before JAMESON LEE, SCOTT A. DANIELS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 54
`Entered: September 10, 2018
`
`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 B1
`____________
`
`Before JAMESON LEE, SCOTT A. DANIELS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`IPR2017-01036
`Patent 6,700,602 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`Kawasaki Rail Car, Inc., (“Petitioner”) filed a request for an inter
`partes review of claims 5, 7–9, and 11–29 (the “challenged claims”) of U.S.
`Patent No. 6,700,602 B1 (Ex. 1001, “the ’602 patent”). Paper 2 (“Pet.”).
`Scott Blair (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). We instituted an inter partes review of claims 5,
`7–9, and 11–29 of the ’602 patent on some but not all of the grounds
`asserted by Petitioner. Paper 10 (“Dec. Inst.”). Patent Owner filed a Patent
`Owner Response (Paper 15, “PO Resp.”) and Petitioner filed a Petitioner
`Reply (Paper 34, “Pet. Reply”). Patent Owner filed observations on
`Petitioner’s declarant, Lowell Malo’s cross-examination testimony (Paper
`37), and Petitioner filed a response to the observations (Paper 39).
`During the pendency of this proceeding, on April 24, 2018, the
`Supreme Court held that a decision on institution under 35 U.S.C. § 314 may
`not institute on less than all claims challenged in the petition. SAS Inst., Inc.
`v. Iancu, 138 S. Ct. 1348 (2018). We modified our Institution Decision to
`institute trial on all of the grounds presented in the Petition. Paper 38 (“SAS
`Order”). We invited the parties to request modifications to the schedule and
`additional briefing regarding the newly added grounds. Papers 38, 39. We
`authorized Patent Owner to file a Supplemental Response limited to the
`newly instituted grounds, and Petitioner to file a Supplemental Reply. Paper
`40. Patent Owner filed a Supplemental Patent Owner Response, and
`Petitioner filed a Supplemental Reply to Patent Owner’s Supplemental
`Response. Papers 45, 47.
`Oral argument was held on July 9, 2018 in Alexandria, Virginia.
`Paper 43. Due to an equipment malfunction, no transcript of the oral
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`argument could be made. Patent Owner requested authorization to have the
`parties’ oral argument demonstrative exhibits filed. We granted that request.
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
`arguments of the parties and the supporting evidence, we find that Petitioner
`has demonstrated by a preponderance of the evidence that each of
`challenged claims, 5, 7–9, and 11–29 of the ’602 patent, is unpatentable.
`B. Related Proceedings
`The parties identify Blair v. Alstom SA, Civ. No. 1:16-cv-03391
`(S.D.N.Y.) as a proceeding relating to the ’602 patent. Pet. 1; Paper 5.
`Also, Petitioner previously filed IPR2017-00117, relating to claims 1–4 and
`6 in the ’602 patent. Pet. 1. In our Final Written Decision in IPR2017-
`00117 we found that Petitioner had demonstrated by a preponderance of the
`evidence that each of challenged claims, 1–4 and 6 of the ’602 patent, are
`unpatentable. See Case IPR2017-00117, slip op. at 2 (PTAB May 2, 2018).
`C. The ’602 Patent
`The ’602 patent (Ex. 1001), titled “Subway TV Media System,”
`relates generally to a “message display, entertainment and advertising
`system for subway cars, in which television monitors are provided at spaced
`intervals in subway cars, to display short duration televisual entertainment
`and advertising features to subway riders.” Ex. 1001, 1:45–50. The ’602
`patent explains that the “invention provides properly positioned television
`monitors displaying moving images of news items, advertising material and
`the like, viewable by substantially all riders in the car, and filling their need
`for visual entertainment during the brief duration of their subway ride.” Id.
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`at 1:61–65. One embodiment of the ’602 patent is shown, with highlighted
`annotation added by the Board, in Figure 4a reproduced below.
`
`
`Figure 4a of the ’602 patent above illustrates a cross-section view of LCD
`video monitor 22A positioned within enclosure 42A and behind screen 44A
`(highlighted in yellow). Id. at 5:35–49.
`The ’602 patent explains for the embodiment shown in Figure 4A,
`
`that:
`
`CRT video monitor 22 is replaced with an LCD-based video
`monitor 22A which is of thin, rectangular cross-section, and
`occupies less space in the ceiling structure of the car.
`Accordingly, it can be moved towards the ceiling so that its
`viewing screen is substantially flush with or even behind the light
`panel 40.
`Id. at 5:35–42.
`D. Illustrative Claims
`In the ’602 patent, claims 1, 8, 15, and 20 are independent. Each of
`dependent claims 5, 7, 9, 11–14, 16–19, and 21–29, depend directly or
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`Patent 6,700,602 B1
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`indirectly from respective independent claims 1, 8, 15, and 20.1 Claim 1
`illustrates the claimed subject matter and is reproduced below, along with
`illustrative dependent claims 5 and 7:
`including
`transportation
`A subway car
`for mass
`1.
`longitudinal opposed sidewalls, a ceiling adjoining the sidewalls,
`a video display system comprising a plurality of video display
`monitors each having a video screen, and a video signal source
`unit operatively connected to said monitors,
`said monitors being spaced along the length of the car on
`opposed sides thereof, 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, so that each video screen is readily visible to
`passengers in the subway car.
`5.
`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.
`7.
`The subway car of any of claim 1 including a self-
`contained wiring-cabling system connecting the video monitors
`to the video signal source unit.
`Ex. 1001, 6:31–43, 53–55, 58–60 (emphasis added in claim 1).
`E. Evidence Relied Upon
`Petitioner relies upon the following references:2
`
`1 Claims 1–7 issued originally in the ’602 patent, and claims 8–29 were
`added during Ex parte Reexamination No. 6,700,602 C1 (Jan. 29, 2015).
`See Ex. 1001; Ex. 1013.
`2 The citation to each Japanese publication, above, is a citation to the
`original Japanese language version. We refer in the remainder of this
`Decision to the exhibit numbers of the English translation for each Japanese
`publication. For each reference, the translation is the immediately following
`exhibit number to those cited above. For example, the Japanese version of
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`
`(1) Japanese Publication No. 04-085379 (published July 24, 1992)
`(“Namikawa”), Ex. 1004;
`(2) Japanese Publication No. 07-181900 (published July 21, 1995)
`(“Miyajima”), Ex. 1006;
`(3) Japan Train Operation Association Magazine, Vol. 37, issue no. 3,
`March 1995 (“JTOA Magazine”), Ex. 1002;
`(4) Japanese Publication No. 04-322579 (“Sasao”), Ex. 1010;
`(5) Japanese Publication No. 04-160991 (“Maekawa”), Ex. 1008;
`(6) Japanese Publication No. 02-223985 (“Amano”), Ex. 1020;
`(7) Japanese Publication No. 03-200250 (“Yamada”), Ex. 1027;
`(8) U.S. Patent No. 5,148,282 (Sep. 15, 2002) (“Sedighzadeh”), Ex.
`1025; and
`(9) U.S. Patent No. 3,211,904 (Oct. 12, 1965) (“Schwenkler”), Ex.
`
`1026.
`
`Petitioner also relies upon the declaration and supplemental
`declarations of Lowell Malo (Exs. 1015, 1034), and Patent Owner relies on
`the declarations of Joseph B. Zicherman, Ph.D (Exs. 2007, 2009). We point
`out that, in its Patent Owner Response, Patent Owner relied upon the
`declaration of Mr. Jack Long (Exhibit 2006), and Dr. Zicherman (Exhibit
`2007). After filing its Response, Patent Owner requested, and Petitioner did
`not object to, replacing Mr. Long’s declaration with an identical substitute
`declaration by Dr. Zicherman. The Board authorized the replacement of Mr.
`Jack Long’s declaration (Ex. 2006) with Dr. Zicherman’s essentially
`identical substitute declaration, the difference in the substitute declaration,
`
`
`Japanese Publication No. 04-085379 (“Namikawa”) is Exhibit 1004, the
`English translation is Exhibit 1005.
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`(Ex. 2009), being reference to Dr. Zicherman and his relevant background
`and qualifications. Paper 32.
`F. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following sixteen (16) grounds.
`Ground References
`
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`I
`
`J
`
`K
`
`L
`
`Namikawa, Sasao, Amano,
`Maekawa
`Namikawa, JTOA Magazine,
`Amano, Maekawa
`Miyajima, Sasao, Amano,
`Maekawa
`Miyajima, JTOA Magazine,
`Amano, Maekawa
`Namikawa, Sasao, Amano, and
`Yamada or Sedighzadeh
`Namikawa, JTOA Magazine,
`Amano, and Yamada or
`Sedighzadeh
`Miyajima, Sasao, Amano, and
`Yamada or Sedighzadeh
`Miyajima, JTOA Magazine,
`Amano, and Yamada or
`Sedighzadeh
`Namikawa, Sasao, Amano,
`Schwenkler, and Yamada or
`Sedighzadeh
`Namikawa, JTOA Magazine,
`Amano, Schwenkler, and
`Yamada or Sedighzadeh
`Miyajima, Sasao, Amano,
`Schwenkler, and Yamada or
`Sedighzadeh
`Miyajima, JTOA Magazine,
`
`7
`
`Basis Claims
`Challenged
`§ 103 5 and 7
`
`§ 103 5 and 7
`
`§ 103 5 and 7
`
`§ 103 5 and 7
`
`§ 103 8, 9, 12–14, 20–22,
`and 24–29
`§ 103 8, 9, 12–14, 20–22,
`and 24–29
`
`§ 103 8, 9, 12–14, 20–22,
`and 24–29
`§ 103 8, 9, 12–14, 20–22,
`and 24–29
`
`§ 103 11 and 23
`
`§ 103 11 and 23
`
`§ 103 11 and 23
`
`§ 103 11 and 23
`
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`IPR2017-01036
`Patent 6,700,602 B1
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`
`Ground References
`
`Amano, Schwenkler, and
`Yamada or Sedighzadeh
`Namikawa, Sasao, Amano, and
`Schwenkler
`Namikawa, JTOA Magazine,
`Amano, and Schwenkler
`Miyajima, Sasao, Amano, and
`Schwenkler
`Miyajima, JTOA Magazine,
`Amano, and Schwenkler
`
`M
`
`N
`
`O
`
`P
`
`
`
`Basis Claims
`Challenged
`
`§ 103 15–19
`
`§ 103 15–19
`
`§ 103 15–19
`
`§ 103 15–19
`
`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Claim terms are given their ordinary and customary meaning as would
`be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the specification
`“reveal[s] a special definition given to a claim term by the patentee that
`differs from the meaning it would otherwise possess[,] . . . the inventor’s
`lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002)). We apply this standard to the claims of the
`’602 patent.
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`
`1. Substantially flushed
`During ex parte reexamination of the ’602 patent, the recited
`limitation “substantially flush[ed]” (claims 1 and 8) was construed to mean
`“a surface which is to a great extent even with an adjoining one.” Ex. 1013,
`478–79. In IPR2017-00117 we construed this language the same as in the
`reexamination determination. See Case IPR2017-00117, slip op. at 5 (PTAB
`May 2, 2018), see also NTP Inc., v. Research in Motion, Ltd., 418 F.3d
`1282, 1293 (Fed. Cir. 2005) (When construing common claim terms, “we
`must interpret the claims consistently across all asserted patents.”).
`Moreover, Petitioner and Patent Owner agree on this construction for
`purposes of this proceeding. Compare Pet. 11, with PO Resp. 6. We adopt
`the parties’ agreed upon construction for purposes of this Decision.
`2. Substantially contiguous
`Instead of “substantially flush[ed],” the term “substantially
`contiguous” is recited in independent claim 15. Ex. 1001, p. 12, 1:40–2:42.
`Petitioner argues that this term should be construed as synonymous with
`“substantially flushed.” Pet. 11. Patent Owner asserts that “substantially
`contiguous” should be given its ordinary and customary meaning which is “a
`surface which is to a great extent ‘touching throughout in an unbroken
`sequence.’” PO Resp. 6 (citing Ex. 2003).
`Our review of the specification of the ’602 patent reveals no express
`or implicit definition of this term. And neither parties’ definition appears to
`be based on any particular definition or evidence from any aspect of the ’602
`patent prosecution history or specification. See Ex. 2003 (Patent Owner
`cites generally to Ex. 2003 (Appeal Brief in reexamination proceeding)
`without a pinpoint cite.). Petitioner’s contention that in claim 15
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`“contiguous” is used instead of “flushed” does not persuade us that the
`words are synonymous, mainly because it is reasonably understood that the
`ordinary meaning of these different words have expressly different
`definitions. An ordinary meaning of “contiguous includes, “being in actual
`contact: touching along a boundary or at a point,” and “touching or
`connected throughout in an unbroken sequence.” MERRIAM WEBSTER
`ONLINE DICTIONARY, https://www.merriamwebster.com/dictionary/
`contiguous, last visited Aug. 2, 2018. This definition is substantially similar
`to the meaning advanced by Patent Owner. We find Patent Owner’s
`meaning persuasive and determine that “substantially contiguous” means “a
`surface which is to a great extent ‘touching throughout in an unbroken
`sequence.’”
`
`3. Video signal source unit
`Consistent with our determination in IPR2017-00117, we understand
`“video signal source unit” to mean “devices recognized by one with ordinary
`skill in the art as a source of video signals.” Case IPR2017-00117, slip op. at
`6 (PTAB May 2, 2018).
`4. Self-contained wiring-cabling system
`Patent Owner contends that “self-contained wiring system,” as recited
`in dependent claim 7, should be understood as “described in the
`specification as being independent of any previously installed track, tunnel
`or control systems.” PO Resp. 8 (citing Ex. 1001, 2:65–67, 3:1–4).
`Petitioner asserts that such a construction misreads the ’602 patent
`specification because a plain reading of the specification expresses that
`“self-contained” means “self-contained within the subway car.” Pet. Reply
`18–19.
`
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`IPR2017-01036
`Patent 6,700,602 B1
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`
`The paragraph at issue in the ’602 patent specification states:
`A preferred system according to the invention is a subway car or
`plurality of subway cars equipped with a plurality of television
`monitors, especially LCD-based television monitors, and a video
`signal source comprising a video tape player, video disk player
`or computer-based digital video recorder, 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.
`We determine, from a plain reading of this paragraph, that the parties’
`constructions are both plausible, and not necessarily in conflict. Petitioner is
`correct that “self-contained” is describing that a component, i.e., the
`“electrical cabling system” is physically located within the subway car, i.e.,
`“the video signal source and the monitors being interconnected by suitable
`electrical cable systems.” Pet. 18. Patent Owner’s construction is
`reasonable because the phrase “[i]n this way” in the subsequent sentence
`transitions the reader to understand that the “self-contained” electrical cable
`systems components on the subway car operate “independent of any
`previously installed track, tunnel or control systems.” Ex. 1001, 2:66–67.
`Therefore, a reasonable interpretation of the phrase “a self-contained wiring-
`cable system,” as recited in claim 7, is “a wiring-cabling system, that is
`physically located within a subway car and operates independent of any
`previously installed track, tunnel or control systems.”
`B. Other Constructions
`Petitioner offers a construction for “back lit panel” (claims 11, 19,
`23), and Patent Owner asserts this term should be given its ordinary and
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`IPR2017-01036
`Patent 6,700,602 B1
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`customary meaning. Pet. 12; PO Resp. 7. Patent Owner proffers a visual
`construct showing the “transitional segment” (claim 15) by red lines
`demarcating a region between the sidewall and ceiling of the railcar. PO
`Resp. 6–7. We do not provide explicit constructions for these claim terms
`because doing so is not necessary for our determination of unpatentability.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those terms which are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy).
`III. ANALYSIS
`A. The Law of Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic,
`504 F.3d at 1262. A prima facie case of obviousness is established when the
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`prior art itself would appear to have suggested the claimed subject matter to
`a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051
`(CCPA 1976).
`B. Level of Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-
`Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner argues a person of ordinary skill in the art in the field of the
`’602 patent is a person who has (1) a Bachelor’s Degree in Mechanical,
`Industrial, or Aerospace Engineering (or the practical experience equivalent
`to those degrees), and (2) an additional 2–3 years of experience in the design
`of railcars. Pet. 10 (citing Ex. 1015 ¶ 23).
`In the Patent Owner Response, Patent Owner does not provide or
`argue a particular level of education, field of study, relevant industry, or
`years of experience a person of ordinary skill in the art would have had at
`the time of the ’602 patent. See generally PO Resp. 2 (citing Exs. 2007,
`2009). We note Patent Owner’s declarant, Dr. Zicherman, states that, he
`“do[es] not disagree with the qualifications recited by Petitioner’s expert” as
`to person of ordinary skill in the art at the time of the ’602 patent. Ex. 2009
`¶ 7. Having reviewed the subject and content of the prior art references
`asserted in this proceeding, and consistent with our determination in
`IPR2017-00177, we find that a person of ordinary skill in the art in the field
`of the ’602 patent is a person who has (1) a Bachelor’s Degree in
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`Mechanical, Industrial, or Aerospace Engineering (or the practical
`experience equivalent to those degrees), and (2) 2–3 years of experience in
`the design of railcars.
`C. Claims 5 and 7 as unpatentable over Namikawa, Sasao, Amano,
`and Maekawa
`Petitioner alleges that claims 5 and 7, which depend from independent
`claim 1, would have been obvious over Namikawa, Sasao, Amano, and
`Maekawa.
`
`1. Namikawa (Exs. 1004, 1005)3
`Namikawa is directed to a subway car where “a plurality of liquid
`crystal televisions 12 are disposed along the direction of travel on a wall face
`above each seat 11 inside a car 10.” Ex. 1005, 6. Figure 1 of Namikawa is
`reproduced below.
`
`
`3 The cited prior art references, Namikawa, Sasao, Amano, and Maekawa,
`are foreign language references, each accompanied by a certified English
`language translation. See, e.g., Exs. 1004, 1005 (Namikawa); Exs. 1010,
`1011 (Sasao); Exs. 1020, 1021 (Amano); and Exs. 1008, 1009 (Maekawa).
`In each instance, the even exhibit number refers to the foreign language
`document and the odd exhibit number refers to the English language
`translation. For convenience, we cite to the English language translations of
`these references.
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`Ex. 1005, Fig. 1. Namikawa’s Figure 1, above, illustrates the inside of a
`railcar.
`Namikawa discloses that “[e]ach liquid crystal television 12
`broadcasts content taken from broadcasting media, such as cable television
`for example, in other words, programming such as various types of
`commercials, dramas, and news.” Ex. 1005, 6. Namikawa explains that the
`televisions are arranged in a position so that “a passenger sitting in one
`facing seat can watch the liquid crystal television 12 above another seat and
`a passenger in the other seat can watch the liquid crystal television 12 above
`the seat of the one facing seat.” Id.
`2. Sasao (Exs. 1010, 1011)
`Sasao is directed generally to a “display device that is structured so as
`to be housed at the interior of a wall.” Ex. 1011, 2. Sasao discloses,
`specifically, arranging a television behind wall 15, as shown in Figures 3
`and 4 of the reference set out below.
`
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`Id. at Figs. 3, 4. Figures 3 and 4 show a cross section and a front view
`of a mounted television frame, respectively.
`Sasao describes that “[t]he cabinet 12 itself is disposed behind the
`wall 15 and cannot be seen from within the room 14,” and “furthermore, as
`described above, 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.” Id. at 2.
`3. Amano (Exs. 1020, 1021)
`Amano is directed to a system for “making use of time in
`transportation equipment, by installing a display device, which provides
`nonstandard information to a large indefinite number of people who are
`using a limited space such as an airplane, train, or bus.” Ex. 1021, 1.
`Amano discloses also located on a train or a bus, “a display information
`signal transmitter . . . which primarily plays back motion pictures stored on a
`video disk or a videotape.” Id. at 2–3.
`4. Maekawa (Exs. 1008, 1009)
`Maekawa is directed to “a teletext broadcast receiving system for a
`mobile body, preferably used in installations in mobile bodies such as
`electric trains.” Ex. 1009, 1. Maekawa further discloses that each of “the
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`Patent 6,700,602 B1
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`television receivers (101), (102), (103) . . . (124) are thin” and can be “liquid
`crystal panels or the like.” Id. at 2.
`5. Claim 1
`Because each of claim 5 and claim 7 depend directly from claim 1, we
`address initially claim 1.
`In IPR2017-00117, the Board previously determined that claim 1 of
`the ’602 patent is unpatentable as obvious over the same combination of
`prior art asserted in this proceeding: Namikawa, Sasao, Amano, and
`Maekawa. See Case IPR2017-00117, slip op. at 13–31, 39 (PTAB May 2,
`2018). Petitioner does not specifically challenge claim 1 in this proceeding.
`Although Patent Owner does not specifically contest our conclusion for
`motivation to combine these references in our prior decision, Patent Owner
`does contest in this case what the teachings of the combination would be.
`PO Resp. 3 (Patent Owner argues here, mainly that, “[t]he combined
`teachings of the prior art do not suggest the modifications advanced by
`petitioner to a person of ordinary skill in the art at the time of the
`invention.”). The evidence of obviousness for claim 1 in this case is the
`same as the previous proceeding. We adopt the same analysis, reasoning
`and findings from IPR2017-00117 with regard to how each limitation
`contained in claim 1 is adequately accounted for by the combined teachings
`of Namikawa, Sasao, Amano, and Maekawa. Case IPR2017-00117, slip op.
`at 13–31, 39 (PTAB May 2, 2018).
`In this proceeding, Patent Owner advances mainly two new arguments
`with respect to claim 1, first, that the prior art does not teach “the availability
`of space” at the junction of the sidewall and the ceiling to flush mount a
`monitor, and second, that a person of ordinary skill in the art would not be
`
`17
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`IPR2017-01036
`Patent 6,700,602 B1
`
`motivated, due to fire safety requirements and concerns, to flush mount a
`television monitor in a railcar. PO Resp. 17–34. Despite our determination
`that claim 1 is unpatentable in our previous proceeding, we address the
`merits of Patent Owner’s new arguments, on the same prior art, below.
`Whether the prior art teaches or suggests the availability of space
`behind the wall at the junction of the sidewall and the ceiling.
`Patent Owner contends that a person of ordinary skill in the art would
`not have considered mounting a monitor “IN a wall face,” i.e., in the wall
`cavity at the junction of the sidewall and ceiling because “it could be filled
`with thermal insulation, sound deadening material, wiring and cable and an
`array of structural members.” PO Resp. 21–22 (citing Ex. 2009 ¶ 29).
`Patent Owner’s declarant, Dr. Zicherman, testifies that a person of ordinary
`skill in the art would not have known that there was room at the junction
`“sufficient to retain a display monitor such that it would be substantially
`flush with the adjacent wall surface.” Ex. 2009 ¶ 29. Assuming there was a
`cavity in the wall, Dr. Zicherman states that “in the time period of 1995-
`1997, there would be no expectation that it would be available as it could be
`filled with thermal insulation, sound deadening material, wiring and cable
`and an array of structural members.” Ex. 2009 ¶ 29 (emphasis added).
`By way of background, the ’602 patent establishes 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, 3:55–57. Lowell
`Malo, Petitioner’s declarant, confirms consistently with the ’602 patent
`specification and Mr. Zicherman’s testimony, that this cavity between an
`interior wall and an outer shell of the railcar was used for thermal insulation,
`sound deadening material, wires and cabling, and “an array of structural
`members which could be used for the mounting of interior equipment.” Ex.
`
`18
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`
`
`IPR2017-01036
`Patent 6,700,602 B1
`
`1034 ¶ 29. Mr. Malo, however, disagrees with Dr. Zicherman’s conclusion
`that due to the thermal insulation, deadening material, and wires in the
`cavity, there was insufficient space available in the wall to flush mount a
`monitor. Mr. Malo testifies that
`[d]espite these materials and structures in the cavity, there still
`would have been sufficient space to place the televisions
`substantially flush with adjacent wall surfaces. In particular, not
`much space would have been needed to flush-mount the LCD
`televisions because the televisions would have been relatively
`thin.
`Ex. 1034 ¶ 31. Mr. Malo explains further that
`a POSITA would have known that, if necessary to create more
`space, many of the components or materials included in the
`cavity could have been moved around. For example, thermal
`insulation, sound deadening material, wires and cables could be
`moved to make room for other components.
`Id. ¶ 32.
`We are persuaded by the evidence and testimony, above, that it was
`known to have a cavity between an inner and outer wall of a railcar. See,
`e.g., Ex. 1001, 3:55–57; see also Ex. 1038, 16:5–13 (Patent Owner’s
`declarant, Dr. Zicherman, provided deposition testimony confirming that it
`was known to have a cavity between an inner wall and outer shell of a railcar
`in the 1995-97 time frame.). The harder question results from the
`declarants’ competing testimony, i.e., whether or not a person of skill in the
`art would have known there was sufficient space available to accommodate
`a monitor. Compare Ex. 2009 ¶ 29, with Ex. 1034 ¶ 31.
`Although the declarants agree that there would be insulation, wires,
`and structural components in the cavity, Mr. Malo explains that a person of
`ordinary skill in the art “would have known that, if necessary to create more
`
`19
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`IPR2017-01036
`Patent 6,700,602 B1
`
`space, many of the components or materials included in the cavity could
`have been moved around.” Ex. 1034 ¶ 32. Neither Patent Owner nor
`Dr. Zicherman expressly contests this testimony or explains why moving
`and arranging such materials and components in a wall to accommodate a
`monitor would have been particularly difficult or beyond the skill of a
`person of ordinary skill in the art. See Ex. 2009 ¶ 29; see also KSR, 550
`U.S. at 417 (“[I]f a technique has been used to improve one device, and a
`person of ordinary skill in the art would recognize that it would improve
`similar devices in the same way, using the technique is obvious unless its
`actual application is beyond his or her skill.”).
`Also, Patent Owner’s argument states that the asserted references
`would not “teach or suggest” to a person of ordinary skill in the art the
`availability of space at the junction of the sidewall and the ceiling. PO Resp.
`17, 21. Based on well-settled case law, it is not necessary to find in the prior
`art a specific teaching or suggestion. See KSR, 550 U.S. at 419 (2007) (“The
`obviousness analysis cannot be confined by a formalistic conception of the
`words teaching, suggestion, and motivation, or by overemphasis on the
`importance of published articles and the explicit content of issued patents.”).
`“[A]n analysis of obviousness . . . may include recourse to logic, judgment,
`and common sense available to the person of ordinary skill in the art that do
`not necessarily require explication in any reference or expert opinion.”
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
`2009). Without persuasive evidence to the contrary, we determine that it
`would have been within the level of ordinary skill in the art to arrange
`materials and components in a wall so as to accommodate other components,
`such as a monitor. One of ordinary skill can use his or her ordinary skill and
`
`20
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`IPR2017-01036
`Patent 6,700,602 B1
`
`creativity to make the necessary adjustments and further modifications to
`result in a properly functioning device. See KSR, 550 U.S. at 418 (2007)
`(“the [obviousness] analysis need not seek out precise teachings directed to
`the specific subject matter of the challenged claim, for a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ.”).
`We find Mr. Malo’s testimony and reasoning credible, namely that a
`person of ordinary skill in the art would have known that within a cavity in
`the wall of a railcar “thermal insulatio
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