UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAWASAKI RAIL CAR, INC.
`Petitioner,
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`v.
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`SCOTT BLAIR,
`Patent Owner.
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`Case No. IPR2017-01036
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`Patent No. 6,700,602
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`Issue Date: March 2, 2004
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`Title: Subway TV Media System
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`FOURTH SUPPLEMENTAL EXPERT
`DECLARATION OF LOWELL MALO
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`1
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`KAWASAKI-1041
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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
`
`
`
`FOURTH SUPPLEMENTAL EXPERT
`DECLARATION OF LOWELL MALO
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`1
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`KAWASAKI-1041
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`1.
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`I submit this supplemental declaration in support of Petitioner’s
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`Supplemental Reply in response to Patent Owner’s Supplemental Response
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`(Paper No. 45).
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`2.
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`In addition to the materials listed in paragraph 3 of my Second Supplemental
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`Declaration (Ex. 1034), I have reviewed Patent Owner’s Supplemental
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`Response (Paper No. 45) and the transcript of my deposition on April 24,
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`2018 (Ex. 2010).
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`A. Patent Owner’s Fire Safety Arguments
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`3.
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`In my Second Supplemental Declaration (Ex. 1034), I responded to Patent
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`Owner and its expert’s “fire safety” arguments. Patent Owner and its expert
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`argued that one of ordinary skill in the art (“POSITA”) would not have been
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`motivated to place the screens (or cover units) of Namikawa’s LCD
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`televisions substantially flush (or substantially contiguous or flush) with the
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`adjacent wall surface because the LCD televisions (and back lit panels if
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`included) would overheat and create a fire hazard. I explained in my
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`declaration that these LCD televisions would not have overheated and that,
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`even if they would have, a POSITA would have identified any fire safety
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`risk and known how to safely address it by dissipating and ventilating any
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`excess heat. (Ex. 1034, ¶¶ 4-27.)
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`2
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`4.
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`In the Supplemental Response, Patent Owner applies his previous “fire
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`safety” arguments to the LCD displays of Miyajima. In particular, Patent
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`Owner argues that a POSITA would not have been motivated to place the
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`screens (or cover units) of Miyajima’s LCD displays substantially flush (or
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`substantially contiguous or flush) with the adjacent wall surface because the
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`LCD displays (and back lit panels if included) would overheat and create a
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`fire hazard. (Supp. Resp. 24-25, 37-38, 50-51, 79.)
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`5.
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`I have reviewed and considered Patent Owner’s “fire safety” arguments as
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`he now applies them to Miyajima. I have also reviewed my previous
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`testimony in my Second Supplemental Declaration (Ex. 1034). My previous
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`testimony in paragraphs 14 to 27 of my earlier declaration applies to
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`Miyajima. In particular, a POSITA flush-mounting Miyajima’s LCD
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`displays would have identified any fire safety risk and known how to safely
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`address it by dissipating and ventilating any excess heat. (Ex. 1034, ¶¶ 14-
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`27.)
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`6.
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`The embodiment in Figure 23 of Miyajima (shown below) already includes a
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`standard cooling ventilation system to dissipate heat from the backlights of
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`the LCD displays, i.e., cooling air passage gap 3c and fan 9.
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`3
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`(Ex. 1007, 5, Fig. 23.) Fan 9 draws air through passage 3c (as shown by the
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`arrows). As this air passes by backlight 01r, it draws heat away, which cools
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`the backlight. The fact that Miyajima discloses this cooling mechanism for
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`its LCD display backlights shows that those skilled in the art knew how to
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`identify and address heat issues.
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`7.
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`If a POSITA placed the screens (or cover units) of the LCD displays in
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`Miyajima substantially flush (or substantially contiguous or flush) with the
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`adjacent wall surface, he or she would have known how to safely address
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`any fire safety risk by ensuring that the cooling provided by the cooling air
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`passage and fan would remain adequate. Any required modifications would
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`4
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`have been straightforward and well within the knowledge of a POSITA in
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`1997, just like the techniques I discuss in paragraphs 14 to 27 of my earlier
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`declaration. (Ex. 1034, ¶¶ 14-27.) For example, if necessary, a POSITA
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`would have known how to implement a more powerful fan to ventilate more
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`air and heat generated by the LCD display backlights in Miyajima.
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`8.
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`Therefore, for the reasons discussed above and in paragraphs 14 to 27 of my
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`earlier declaration (Ex. 1034), a POSITA in 1997 would not have been
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`discouraged by fire safety concerns from placing: (a) the screens of the LCD
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`displays in Miyajima substantially flushed with the adjacent wall surface as
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`required by claims 5-7; (b) transparent cover units covering the LCD
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`displays in Miyajima substantially flush with the adjacent surface structure
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`of the transitional wall portion as required by claims 8, 9 and 11-14; (c) the
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`screens of the LCD displays in Miyajima substantially contiguous with the
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`exterior surface of the transitional segment as required by claims 15-19; (d)
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`transparent cover units covering the LCD displays in Miyajima flushed with
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`the adjacent wall surface structure as required by claims 20-29; and (e) back
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`lit panels with the monitors as required by claims 11, 15-19 and 23.
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`B. Patent Owner’s “Junction” Arguments
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`9.
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`Patent Owner argues that the televisions in Figure 1 of Namikawa are
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`mounted on the ceiling, not “at the junction of the sidewall and ceiling.”
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`5
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`(Supp. Resp. 5, 25-27.) I disagree. In my opinion, a POSITA would
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`understand the televisions in Figure 1 to be at the junction of the sidewall
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`and ceiling.
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`10. The specification of the ’602 patent does not precisely define “the junction
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`of the sidewall and ceiling,” but the patent does describe “a concavely
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`curved segment of internal wall” at this junction. (Ex. 1001, 3:67–4:3, 4:64–
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`67, Fig. 2.) Therefore, a POSITA would understand the “junction” to be the
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`curved area in the upper corner of the passenger compartment where the
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`sidewall meets the ceiling. In particular, a POSITA would understand the
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`“junction” of the sidewall and ceiling in Figure 1 of Namikawa to be the
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`curved region between the two dotted lines, as shown below.
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`(Petition, 25.)
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`6
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`11. Since well before 1997, a typical railcar or subway car has included a
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`structural frame of interconnected vertical and horizontal structural members
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`between the inner and outer shell of the car. Typically the ceiling structural
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`members and the sidewall structural members are connected together by one
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`or more longitudinal members. These longitudinal members are located
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`between the inner and outer shell, typically at approximately the same height
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`as a portion of the curved area in the upper corner of the passenger
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`compartment where the ceiling and sidewall meet, i.e., somewhere between
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`approximately the top of this curved area (near the ceiling) and
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`approximately the bottom of this curved area (near the sidewall). The
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`designer of the car typically has flexibility with respect to where to locate
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`these members. Furthermore, each member does not occupy all of the cavity
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`space at its location and can be moved to create space if needed.
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`C. Patent Owner’s “Substantially Flush” Arguments
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`12. As I explained in paragraph 31 of my original Declaration (Ex. 1015)
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`submitted with the Petition, flush-mounting was the norm in the railcar
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`industry by 1997. Patent Owner disputes this by arguing that the 1997
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`proposed rule that required all “interior fittings” to be flush-mounted (Ex.
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`2004) was not implemented until 1999. (Supp. Resp. 28, 40, 50.) However,
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`this proposed rule merely adopted and formalized an already well-
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`7
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`established practice in the industry, and was proposed after extensive
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`consultation with those working in the railcar industry. (Ex. 2004, 1-2.)
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`13. As I explained in paragraphs 26 to 36 of my original Declaration (Ex. 1015),
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`by 1997, to achieve the “smooth” or “clean” surfaces for interior of railcars,
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`many interior fittings were flush or recess mounted. Therefore, as I
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`explained, by 1997 there was a well-established practice in the industry to
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`flush mount interior fittings.
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`14. The 1997 FRA proposed rules were developed by the FRA after consultation
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`with members of the railcar industry. (Ex. 2004 at 2) Congress authorized
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`the Secretary of Transportation to “prescribe regulations establishing
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`minimum standards for the safety of cars used by railroad carriers to
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`transport passengers.” (Id., 1.) Congress further authorized the Secretary of
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`Transportation to “consult with Amtrak, public authorities operating railroad
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`passenger service, other railroad carriers transporting passengers,
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`organizations of passengers, and organizations of employees.” (Id.) The
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`Secretary of Transportation delegated these rulemaking responsibilities to
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`the Federal Railroad Administration, which “invited various organizations to
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`participate in a working group to focus on the issues related to railroad
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`passenger equipment safety and assist FRA in developing Federal safety
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`standards.” (Id., 1-2) These organizations included members of the railroad
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`8
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`industry such as Association of American Railroads, Amtrak, National
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`Association of Railroad Passengers and others. (Id., 2.) The FRA’s
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`consultations with these organizations and members of the railcar industry
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`demonstrates that the proposed rules reflected the practices used at the time.
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`15. Patent Owner argues that Petitioner has not explained “how or why” a
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`POSITA would have installed a transparent cover unit “on top of the
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`television of Namikawa or Miyajima to make it substantially flush with the
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`adjacent surface structure.” (Supp. Resp. 62.) As I explained in paragraph
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`34 of my Second Supplemental Declaration (Ex. 1034), a POSITA would
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`have known how to and could have easily flush-mounted the screens of an
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`LCD display. It would have been just as straightforward for a POSITA to
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`add a transparent cover unit to an LCD display and place the display so that
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`the cover unit is substantially flush (or substantially contiguous or flush)
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`with the adjacent wall surface. For example, it would have been
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`straightforward to move the cover unit and display further into the cavity
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`until the cover unit was substantially flush with the adjacent surface.
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`9
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`No. IPR2017-01036
`Fourth Supp. Expert Decl. of Lowell Malo
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
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`Dated: June 22, 2018
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`Lowell Malo
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`10
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