Trials@uspto.gov
`571-272-7822
`
` Paper No.11
`Entered: December 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG DISPLAY CO., LTD., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01096
`Patent 7,537,370 B2
`____________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
` Paper No.11
`Entered: December 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG DISPLAY CO., LTD., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01096
`Patent 7,537,370 B2
`____________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-01096
`Patent 7,537,370 B2
`
`
`LG Display Co., Ltd. filed a Corrected Petition1 pursuant to 35 U.S.C.
`
`§§ 311–319 seeking to institute an inter partes review of claims 1, 4, 8, 13,
`
`15, 27, 29, and 47 of U.S. Patent No. 7,537,370 (“the ’370 patent”). Paper 4
`
`(“Pet.”). Innovative Display Technologies LLC (“Patent Owner”) filed a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying the standard set
`
`forth in 35 U.S.C. § 314(a), the Board instituted an inter partes review of
`
`claims 15 and 27 and denied the request as to the other challenged claims.
`
`Paper 11 (“Institution Decision”). LG Display Co. Ltd.’s request for
`
`rehearing as to certain claims was denied. Papers 15, 21. Following
`
`institution, the proceeding was joined with IPR2015-00493, filed by LG
`
`Electronics, Inc., challenging the same claims of the ʼ370 patent on the same
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`grounds as in this proceeding. For the purpose of this Decision, we will
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`refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as
`
`“Petitioner.”
`
`During the trial, Patent Owner filed a Patent Owner Response
`
`(Paper 24, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner
`
`Response (Paper 30, “Reply”). An oral hearing was held on September 21,
`
`2015, and a copy of the transcript has been made part of the record. Paper
`
`39 (“Hearing Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
`
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`
`claims on which we instituted trial. Based on the record before us, Petitioner
`
`has shown, by a preponderance of the evidence, that claims 15 and 27 of the
`
`ʼ370 patent are unpatentable under 35 U.S.C. § 103(a).
`
`
`1 In this proceeding we will refer to the Corrected Petition as “the Petition.”
`
`
`
`2
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`IPR2014-01096
`Patent 7,537,370 B2
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`I. BACKGROUND
`
`A. The ʼ370 patent (Ex. 1001)
`
`The ʼ370 patent is entitled “Light Emitting Panel Assemblies.” The
`
`Abstract describes the subject matter as follows:
`
`Light emitting panel assemblies include an optical panel
`member having a pattern of light extracting deformities on or in
`one or both sides to cause light to be emitted in a predetermined
`output distribution. The pattern of light extracting deformities
`on or in one side may have two or more different types or
`shapes of deformities and at least one of the types or shapes
`may vary along the length or width of the panel member. Where
`the light extracting deformities are on or in both sides, at least
`some of the deformities on or in one side may be of a different
`type or shape or vary in a different way or manner than the
`deformities on or in the other side.
`
`Ex. 1001, Abstract.
`
`B. Challenged Claims
`
`Claims 15 and 27 of the ʼ370 patent are at issue in this trial. They are
`
`reproduced here with emphasis added to certain elements that will be
`
`discussed infra.
`
`15. A light emitting panel assembly comprising at least
`one light source, an optical panel member having at least one
`input edge for receiving light from the at least one light source,
`the panel member having front and back sides and a greater
`cross sectional width than thickness, at least one of the sides
`having a pattern of light extracting deformities that are
`projections or depressions on or in the at least one side to cause
`light to be emitted from the panel member in a predetermined
`output distribution, where the pattern of light extracting
`deformities on or in the at least one side has at least two
`different types of light extracting deformities and at least one of
`the types of deformities on or in the at least one side varies
`along at least one of the length and width of the panel member,
`
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`3
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`IPR2014-01096
`Patent 7,537,370 B2
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`and at least one film, sheet or substrate overlying at least a
`portion of one of the sides of the panel member to change the
`output distribution of the emitted light such that the light will
`pass through a liquid crystal display with low loss.
`
`27. A light emitting panel assembly comprising at least
`one light source, an optical panel member having at least one
`input edge for receiving light from the at least one light source,
`the panel member having front and back sides and a greater
`cross sectional width than thickness, at least one of the sides
`having a pattern of light extracting deformities that are
`projections or depressions on or in the at least one side to cause
`light to be emitted from the panel member in a predetermined
`output distribution, where the pattern of light extracting
`deformities on or in the at least one side has at least two
`different types of light extracting deformities and at least one of
`the types of deformities on or in the at least one side varies
`alone at least one of the length and width of the panel member,
`wherein the panel member has a transition region between the
`at least one input edge and the patterns of light extracting
`deformities to allow the light from the at least one light source
`to mix and spread, and at least one side of the transition region
`contains optical elements for reflecting or refracting light from
`the at least one light source.
`
`
`C. Related Proceedings
`
`Patent Owner states that it has asserted infringement by Petitioner of
`
`the ʼ370 patent in the following proceeding: Delaware Display Group LLC
`
`et al. v. LG Electronics, Inc. et al., No. 1:13-cv-02109 (D. Del., filed Dec.
`
`31, 2013). Paper 7.
`
`Patent Owner identifies numerous other proceedings in which it has
`
`alleged infringement of the ʼ370 patent. See Paper 7 for a listing.
`
`There is one other pending petition for inter partes review of the ’370
`
`patent: IPR2015-01867, filed September 11, 2015. Another such petition
`
`
`
`4
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`IPR2014-01096
`Patent 7,537,370 B2
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`(IPR2015-00753) was filed February 17, 2015. That case was terminated by
`
`a settlement before the Board reached a decision on institution.
`
`D. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Because the ʼ370
`
`patent expired during the trial, however, we must consider whether this has
`
`an effect on our determination. Patent Owner contends that in view of the
`
`expiration, the Board must follow the Phillips standard. Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Patent Owner did not
`
`bring the expiration of the patent to the attention of the Board until the final
`
`hearing, even though the ʼ370 patent expired in June 2015, after Patent
`
`Owner filed its Response but before Petitioner’s Reply was filed. Hearing
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`Tr. 44:17–45:19.
`
`Putting aside the untimeliness of its argument, Patent Owner has not
`
`persuaded us that applying the Phillips standard would affect our
`
`determination of this case. In fact, throughout this proceeding, Patent
`
`Owner has taken no position on claim construction. Prelim. Resp. 4; PO
`
`Resp. 6. The only claim term the Board construed in its Institution Decision
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`is the term “deformities,” appearing in both challenged claims. Paper 11, 4.
`
`It was Petitioner who asserted that the ʼ370 patent “expressly defines” the
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`term to mean “any change in the shape or geometry of the panel surface
`
`and/or coating or surface treatment that causes a portion of light to be
`
`emitted.” Pet. 7 (citing Ex. 1001, col. 4, ll. 36–40). Patent Owner did not
`
`oppose that construction. Hearing Tr. 45:20–25. In fact, Patent Owner
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`5
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`IPR2014-01096
`Patent 7,537,370 B2
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`pointed out that the construction of “deformities” proffered by Petitioner
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`was agreed to and adopted by the district court. PO Resp. 7; Hearing Tr.
`
`47:7–15. Patent Owner’s counsel agreed at the oral hearing that the
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`expiration of the ʼ370 patent has no impact on that construction. Id. at 47:1–
`
`18. Nor does Patent Owner seek any other particular constructions in light
`
`of the ʼ370 patent’s expiration. Id. at 46:9–19. In short, Patent Owner
`
`points to nothing that would change if the Phillips standard were applied.
`
`In light of the foregoing, we see no reason to modify our previous
`
`construction of “deformities” based either on the expiration of the ʼ370
`
`patent or positions of the parties as developed during the trial, and adopt that
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`construction for this Final Written Decision. Nor do we see the need to
`
`make any further constructions of the claims for the purposes of this
`
`decision that would be affected by the expiration of the ʼ370 patent or the
`
`Phillips standard.
`
`Petitioner relies on the following two references:2
`
`E. References
`
`Pristash
`Kobayashi
`
`
`US 5,005,108
`US 5,408,388
`
`Apr. 2, 1991
`Apr. 18, 1995
`
`Ex. 1006
`Ex. 1008
`
`Petitioner relies also on a Declaration of Michael J. Escuti, Ph.D. (“Escuti
`
`Decl.”). Ex. 1004. Likewise, Patent Owner’s Response (Paper 24) is
`
`accompanied by a Declaration of Mr. Kenneth Werner (Werner Decl.”). Ex.
`
`2005. Deposition transcripts for those witnesses have been entered in the
`
`record as Exhibits 1020 (“Werner Dep.”) and 1021 (“Escuti Dep.”).
`
`
`2 The references are ordered by exhibit number with effective dates
`asserted by Petitioner.
`
`
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`6
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`IPR2014-01096
`Patent 7,537,370 B2
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`
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`We instituted trial on the following grounds:
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`F. Grounds Asserted
`
`References
`
`Pristash
`Kobayashi and Pristash
`
`Basis
`§ 103(a)3
`§ 103(a)
`
`
`
`Claims Challenged
`15 and 27
`15 and 27
`
`II. ANALYSIS
`
`A. Overview — Obviousness
`
`
`
`Under 35 U.S.C. § 103(a), an invention is not patentable if the
`
`differences between the claimed subject matter 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
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`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) where in evidence, so-called
`
`secondary considerations, including commercial success, long-felt but
`
`unsolved needs, failure of others, and unexpected results. Graham v. John
`
`Deere Co., 383 U.S. 1, 1718 (1966).
`
`B. Asserted Obviousness Based On Pristash
`
`1. Background
`
`Petitioner contends that claims 15 and 27 would have been obvious
`
`over the teachings of Pristash. Pet. 10–14. In support of this contention,
`
`
`3 The Summary and Order appearing in our Institution Decision incorrectly
`identify this ground as anticipation. As is clear from the analysis provided
`and the responses of the parties, however, the basis for instituting trial was
`obviousness.
`
`
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`7
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`IPR2014-01096
`Patent 7,537,370 B2
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`Petitioner provides detailed claim charts and expert testimony through the
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`Escuti Declaration. Pet. 22–25; Escuti Decl. ¶¶ 67–70, 114–33. Through
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`the claim charts and expert testimony, Petitioner asserts that Pristash
`
`discloses the challenged claims. Moreover, Petitioner contends that a person
`
`of ordinary skill “would have been motivated to combine elements of a
`
`particular embodiment [of Pristash] with other elements of other
`
`embodiments disclosed in Pristash for several reasons.” Pet. 11. Those
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`reasons are set forth in the Petition. Id. at 11–12.
`
`In response, Patent Owner challenges the sufficiency of Petitioner’s
`
`proofs in several respects that we will discuss infra. We note, however, that
`
`most of the claim elements are undisputed. Patent Owner challenges
`
`Petitioner’s assertions only as to certain claim elements, and does not
`
`challenge Petitioner’s presentation of the rationale to combine various
`
`embodiments of Pristash. We have considered Petitioner’s proffered
`
`rationale in light of Pristash’s description of various disclosed embodiments
`
`as alternatives. See infra. We are persuaded, therefore, that Petitioner has
`
`set forth a convincing rationale for why a person of ordinary skill would
`
`have combined features from various embodiments of Pristash as discussed
`
`infra.
`
`Patent Owner has not presented any evidence of secondary
`
`considerations. We, therefore, have not been given evidence of commercial
`
`success, long-felt but unsolved needs, failure of others, or unexpected results
`
`to consider.
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`The relatively high level of skill in the art is another consideration we
`
`have taken into account. In this determination, we were aided by expert
`
`testimony. According to Dr. Escuti, “a person of ordinary skill in the art
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`
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`8
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`IPR2014-01096
`Patent 7,537,370 B2
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`relevant to the ’370 patent would have at least an undergraduate degree in
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`physics, optics, electrical engineering, or applied mathematics AND 3 years
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`of work experience (or a graduate degree) in a field related to optical
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`technology.” Escuti Decl. ¶ 23. Mr. Werner does not take issue with this
`
`testimony, and in fact proposes a similar standard:
`
`In this declaration, I rely on the following definition of a person
`of ordinary skill in the art: “a person of ordinary skill in the art
`of the patents would hold an undergraduate degree in physics,
`material science, electrical engineering, or mathematics and
`have one or both of the following: (1) three or more years of
`work experience in a field related to optical technology; or (2) a
`graduate degree in a field related to optical technology.”
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`Werner Decl. ¶ 36. We find that Mr. Werner’s definition is too limited, in
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`that it does not include a person with an undergraduate degree in optics.
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`We, therefore, do not accept his standard and adopt instead Dr. Escuti’s
`
`more complete definition.
`
`2. Pristash Overview
`
`Pristash describes a thin panel illuminator that includes a solid
`
`transparent panel member having one or more deformed output regions. Ex.
`
`1006, Abstract. The arrangement causes light entering the panel along an
`
`input edge to be emitted along the length of the panel. Id.
`
`This is illustrated in Figure 1 of Pristash, reproduced here:
`
`
`
`
`
`9
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`IPR2014-01096
`Patent 7,537,370 B2
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`In Figure 1, light emitting panel 2 and disruptions 16 in the exterior surface
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`18 of the panel are shown. Ex. 1006, col. 3, ll. 9–48. As described by
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`Pristash, “such disruptions 16 may vary in depth and shape along the length
`
`of the panel 2 to produce a desired light output distribution.” Id. at col. 3, ll.
`
`
`
`46–48.
`
`Figure 1 of Pristash also depicts transition device 5, which is used to
`
`make the transition from light source 3 to light emitting panel input edge 4.
`
`Id. at col. 3, ll. 1–3. Pristash describes a number of different embodiments
`
`of the transition device. See id. at Figs. 15–19, col. 7, ll. 9–12. In one such
`
`embodiment, the transition region comprises optical fibers having a round
`
`connector at one end, as shown in Figure 1 above and in Figure 15
`
`following:
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`
`
`
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`10
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`IPR2014-01096
`Patent 7,537,370 B2
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`
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`Figure 15 of Pristash shows a transition device 120 that comprises a plurality
`
`of optical fibers 121, having a round or other shaped connector 122 at one
`
`end on which a source of light is easily focused and a rectangular or other
`
`shaped connector 123 at the other end substantially corresponding in shape
`
`to the panel input surface. The optic fibers 121 may be made of glass or a
`
`suitable transparent plastic material. Ex. 1006, col. 7, ll. 17–24.
`
`
`
`Alternatively, Pristash describes a transition device made of a solid
`
`transparent material such as glass or plastic, having an input surface at one
`
`end of a cross-sectional shape on which a light source is easily focused such
`
`as round or square and having an output surface at the other end in the shape
`
`of the panel input surface. Id. at col. 7, ll. 36–42. This configuration is
`
`illustrated in Figures 18 and 19 of Pristash following:
`
`
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`11
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`IPR2014-01096
`Patent 7,537,370 B2
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`Figure 18 from Pristash shows a solid transparent transition device 135
`
`including multiple input surfaces 136 at one end and a single output surface
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`137 at the other end. Figure 19 shows another solid transparent transition
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`device 140 with a lens 141 at the input surface 142 shaped to spread the light
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`evenly across its output surface 143. Id. at col. 7, ll. 49–55.
`
`
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`Pristash also describes alternative arrangements in which the solid
`
`transition device is separate from and integral with the light emitting panel:
`
`Although the various solid transparent transition devices are
`shown separate from the light emitting panels, it will be
`appreciated that such transition devices may be formed as an
`integral part of the panels. Also, in certain applications the
`transition devices may be eliminated and the light focused
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`12
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`IPR2014-01096
`Patent 7,537,370 B2
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`directly on the panel input surfaces to cut down on system
`losses.
`
`Ex. 1006, col. 8, ll. 6–12.
`
`
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`Likewise, Pristash discloses several different embodiments for the
`
`light emitting panel. Figures 5 and 6 from Pristash, showing two examples,
`
`follow:
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`
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`
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`
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`Figures 5 and 6 from Pristash show alternative configurations for the light
`
`emitting panel. Ex. 1006, col. 4, l. 45–col. 5, l. 5. Figure 5 shows a form of
`
`light emitting panel 40 comprising a solid transparent prismatic film 41
`
`having deformities 42 cut, molded, or otherwise formed along the top of the
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`prism edges 43. Id. at col. 4, ll. 45–49. Although Pristash shows
`
`deformities 42 as being of a generally triangular shape, Pristash says they
`
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`13
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`IPR2014-01096
`Patent 7,537,370 B2
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`may be of any desired shape that causes light to be emitted, and may vary in
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`depth and shape along the length of the prism edges 43 to produce a desired
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`light output distribution. Id. at col. 4, ll. 49–54.
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`
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`Alternatively, as shown in Figure 6, Pristash states that diffuser
`
`surfaces 46 may be formed along the top edges 47 of the prismatic surfaces
`
`48 of a prismatic film light emitting panel 49. These diffuser surfaces 46
`
`may vary in depth and/or width along the length of the panel 49, and may
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`comprise “a roughened surface, a lenticular surface, or a prismatic surface or
`
`the like that consists of multiple surface deformities.” Id. at col. 4, ll. 57–64.
`
`We turn now to the individual claims being challenged.
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`
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`
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`3. Claim 15
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`Petitioner’s analysis of claim 15 in relation to Pristash appears at
`
`pages 22–24 of the Petition and in paragraphs 114–123 of the Escuti
`
`Declaration. As the Declaration states, “[c]laim 15 is similar to claim 1
`
`except that claim 15 further requires that the pattern of light extracting
`
`deformities on or in the at least one side has at least two different types of
`
`light extracting deformities with one type varying along the length of the
`
`panel member.” Escuti Decl. ¶ 115. That is, where claims 1 and 13 of the
`
`ʼ370 patent require opposite sides of the panel to have different types of
`
`deformities, claim 15 requires the same side of the panel to have different
`
`types of deformities. Petitioner relies on Figures 5 and 6 of Pristash
`
`(reproduced supra) and the accompanying description in the specification to
`
`meet this limitation. Pet. 22–23.
`
`
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`Patent Owner contends that the Petition fails to show that Pristash
`
`discloses at least two different types of light extracting deformities on one
`
`side of the panel. PO Resp. 10–11. According to Patent Owner, Pristash
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`14
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`“merely discloses that the deformities may generally be of any desired
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`shape.” Id. at 12. Patent Owner also points to the Board’s decision not to
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`institute a review of claims 1 and 13 as evidence that Pristash is lacking
`
`different deformities on the same side of the panel. Id. at 11.
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`
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`Petitioner responds that Patent Owner “completely ignores” citations
`
`to the record that demonstrate its contention regarding Pristash is incorrect.
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`Reply 8. Specifically, Petitioner relies on the description of Figure 5 in
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`Pristash’s specification stating that the deformities 42 “may vary in depth
`
`and shape along the length of the prism edges 43.” Id. at 9 (citing Ex. 1006,
`
`col. 4, ll. 49–54 (emphasis omitted)). Petitioner also cites the Escuti
`
`Declaration (¶¶ 83–85) and the description of Figure 6 in Pristash, stating
`
`that the diffuser surface 46 “may vary in depth and/or width along the length
`
`of the panel 49, and may comprise a roughened surface, a lenticular surface,
`
`or a prismatic surface or the like that consists of multiple surface
`
`deformities.” Id. (citing Ex. 1006, col. 4, ll. 57–66) (emphasis omitted).
`
`Finally, Petitioner challenges Patent Owner’s argument based on claims 1
`
`and 13, which do not contain the limitation requiring different type
`
`deformities on the same side of the panel. Id. at 8. See discussion supra.
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`As Petitioner states, “[c]laims 1 and 13 are not at issue here.” Id.
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`
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`We are not persuaded by Patent Owner’s arguments attempting to
`
`distinguish Pristash. Instead, we are convinced by Petitioner’s arguments,
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`citations to the Pristash disclosure, and the testimony of its expert, Dr.
`
`Escuti, that Pristash describes a panel that meets this limitation.
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`Specifically, Pristash, taken as a whole, discloses in Figures 5 and 6 the
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`combination of prismatic deformities with other deformity types (e.g.,
`
`lenticular) on the same side of the light emitting panel as this claim requires.
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`15
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`IPR2014-01096
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`We are supported also in this conclusion by the testimony of Mr. Werner,
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`who agreed that a lens is a different type of deformity than a prism. Werner
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`Dep. 111:12–17.
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`
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`At oral argument, Patent Owner’s counsel asserted that Pristash does
`
`not meet this limitation because prismatic surface 48 in Figure 6 is not a
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`“deformity” as the claims require, but is itself the surface of the panel.
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`Hearing Tr. 49:7–10. We are not persuaded by this argument. There is no
`
`requirement in the claims that the deformities be on separate surfaces, only
`
`that they be on the same side of the panel. Moreover, the ʼ370 patent
`
`specifically refers to “prismatic surfaces, depressions or raised surfaces of
`
`various shapes” as examples of light extracting deformities. Ex. 1001, col.
`
`5, ll. 57–60.
`
`
`
`We credit also Petitioner’s evidence, summarized supra (which Patent
`
`Owner does not challenge), that the other elements of claim 15 are found in
`
`Pristash. We conclude, therefore, that Petitioner has demonstrated, by a
`
`preponderance of the evidence that claim 15 would have been obvious over
`
`Pristash.
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`4. Claim 27
`
`Petitioner’s analysis of claim 27 in relation to Pristash appears at
`
`pages 24–25 of the Petition and at paragraphs 124–133 of the Escuti
`
`Declaration. Claim 27 contains the following language similar to that in
`
`claim 15: “the pattern of light extracting deformities on or in the at least one
`
`side has at least two different types of light extracting deformities.”
`
`Petitioner’s arguments as to this aspect of the claim are those for claim 15.
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`PO Resp. 10. We determine, for the reasons stated above for claim 15, that
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`Petitioner has demonstrated that Pristash meets this element of the claim.
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`16
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`IPR2014-01096
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`As stated in the Escuti Declaration, claim 27 (unlike claims 1 and 15)
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`also requires a “transition region” between the input edge of the panel and
`
`the pattern of deformities. Escuti Decl. ¶ 125. Petitioner identifies item 5 in
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`Figure 1 of Pristash as such a “transition device” meeting the transition
`
`region recitation in the claims. Pet. 25, claim element 27.e (citing claim
`
`element 13.f [Pet. 21]; Escuti Decl. ¶ 131). As Dr. Escuti testifies:
`
`The transition device also allows the light to mix and spread.
`According to Pristash, “a transition device is provided for
`converting easily focused light received from a light source to
`the shape of the panel input surface.” Id. at 1:59-62 (emphasis
`added). Pristash further recites that “the transition device [may
`be] made from a solid transparent material, and is provided with
`single or multiple input and output ends of a desired shape.
`Also, the input and/or output ends of the transition device may
`be lens shaped to spread the light evenly across such
`surfaces,” Id. at 2:1-8 (emphasis added). One of ordinary skill
`in the art would understand that the transition device of
`Pristash is the same as the transition region of the ’370 Patent.
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`Escuti Decl. ¶ 110.
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`
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`Patent Owner responds that transition device 5 in Pristash is not a
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`“transition region” as claimed in the ʼ370 patent. PO Resp. 8–9. First,
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`Patent Owner contends that the transition region identified in the Petition
`
`does not allow the light to “mix and spread,” as called for in the claim. Id. at
`
`8. According to Patent Owner, “the transition region must be part of the
`
`panel member such that the light can mix and spread.” Id. at 9. Petitioner
`
`responds that this is a “refashioning” of an argument that the Board rejected
`
`in its Institution Decision, namely, that in the ʼ370 patent the transition
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`device and the light emitting panel must be integral. Reply 4.
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`17
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`IPR2014-01096
`Patent 7,537,370 B2
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`We agree with Petitioner that this argument was previously raised,
`
`and that the Board found it unpersuasive as described in our Institution
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`Decision. Paper 11, 9. For the reasons stated there, we are not persuaded by
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`Patent Owner’s argument. Specifically, Patent Owner points to nothing in
`
`the ʼ370 patent specification that persuades us that the transition region has
`
`to be integral with the panel. In any event, whether the panel must be
`
`integral or not is not determinative, as Pristash describes the transition
`
`device as being both integral with the panel and separate. See supra. We,
`
`therefore, do not consider the phrase “the panel member has a transition
`
`region” as requiring an integral structure, but even if we did, we find that
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`Pristash would meet it.
`
`
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`We note also that Petitioner’s claim chart analysis refers specifically
`
`to the embodiment of the “solid” transition device shown in Figures 18 and
`
`19 of Pristash: “[T]he transition device [may be] made from a solid
`
`transparent material, and is provided with single or multiple input and output
`
`ends of a desired shape” Pet. 21, claim element 13.f (cited by claim element
`
`27.e [Pet. 25])(quoting Pristash, Ex. 1006 col. 2, ll.1–8).
`
`
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`As to the “mix and spread” limitation, we agree with the testimony of
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`Petitioner’s expert, Dr. Escuti, that in Pristash, the light will mix and spread
`
`within the transition region “and that’s why it’s there.” Escuti Dep. 108:15–
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`21. The description of the transition device in Pristash, quoted supra, makes
`
`it clear that the light is mixed and spread, confirming Dr. Escuti’s testimony.
`
`We agree also with the argument that the claim language requires the
`
`transition region to “allow . . . the light to mix and spread” and does not
`
`require mixing and spreading of the light to take place in the transition
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`
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`18
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`region, although the evidence supports our finding that it does. Hearing Tr.
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`17:1–5.
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`
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`Patent Owner asserts that Dr. Escuti “completely ignores” this claim
`
`requirement. PO Resp. 9. Patent Owner relies, instead, on paragraph 39 of
`
`the Werner Declaration to support its argument. Id. According to Mr.
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`Werner, the Petition and claim chart “miss a crucial point of this limitation.”
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`Werner Decl. ¶ 39.
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`
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`On this issue, however, we credit Dr. Escuti’s testimony over Mr.
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`Werner’s. Dr. Escuti testified that he has over 16 years of experience in the
`
`fields of liquid crystal display technologies, backlight design, optical
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`physics, and electronic materials. Escuti Decl. ¶ 5. In comparison, Mr.
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`Werner testified that since 1971, he has not been involved in the design or
`
`engineering of liquid crystal displays or backlighting units. Werner Dep.
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`16:5–17. Mr. Werner was unable to say whether two light rays crossing
`
`paths in a light guide plate would be an example of mixing. Werner Dep.
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`80:17–81:8. Furthermore, at his deposition he would not provide an opinion
`
`as to whether Pristash discloses the transition region called for in the claims.
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`Id. at 116:19–117:8. Instead of discussing what is disclosed in Pristash, Mr.
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`Werner’s declaration focuses on alleged deficiencies in the Petition. Werner
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`Decl. 39. Under our rules, expert testimony that does have a proper basis is
`
`entitled to little or no weight. 37 C.F.R. § 42.65(a). Dr. Escuti, on the other
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`hand, does provide such an opinion, both in his declaration and at his
`
`deposition. Escuti Decl. ¶¶ 109–13; 131–33; Escuti Dep. 103:11–104:9.
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`We find that Dr. Escuti’s qualifications and experience are superior to those
`
`of Mr. Werner, and that his testimony on this issue is more credible and
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`helpful than Mr. Werner’s.
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`
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`19
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`
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`Patent Owner raises two other contentions as to this requirement. The
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`first relates to the claim language positioning the transition region “between
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`the at least one input edge and the patterns of light extracting deformities.”
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`Patent Owner asserts that the transition device in Pristash is not so
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`positioned. PO Resp. 13. Petitioner responds to this positional requirement
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`by referring to Dr. Escuti’s explanation at his deposition. Reply 5–6. We
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`agree with Petitioner’s argument (supported by testimony from Dr. Escuti)
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`that if the transition device in Pristash is integral with the panel, Pristash
`
`discloses a device that is arranged between input edge 10 and the pattern of
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`light disruptions 16. Id.; Escuti Dep. 105:4–14.
`
`
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`As we have stated, Pristash discloses both integral and separate
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`transition devices. If the transition device is not integral with the panel, then
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`we agree with Petitioner that the transition region meeting this claim element
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`is the portion between the input side 4 and the elements 16. Id. We have
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`reviewed the testimony of Dr. Escuti to this effect and find it credible.
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`Escuti Dep. 105:16–106:7.
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`
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`Finally, Patent Owner contends that Petitioner fails to demonstrate
`
`that the requirement that “at least one side of the transition region contains
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`optical elements” is met by Pristash. PO Resp. 9. A similar limitation
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`appears in claim 13. According to Patent Owner, the single lens disclosed in
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`Figure 19 of Pristash (Escuti Decl. ¶ 112) does not meet this requirement for
`
`plural “optical elements.” PO Resp. 9.
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`
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`We addressed this argument in our Institution Decision. Paper 11, 9–
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`10, 16. We are still not persuaded by this argument, as nothing in the ʼ370
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`patent specification suggests that “optical elements” should be restricted to
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`one lens, or that using two or more lenses instead of one would not have
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`20
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`IPR2014-01096
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`been obvious. Moreover, Figures 15 and 18 (reproduced above) of Pristash
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`show multiple “optical elements.” Ex. 1006, col. 7, ll. 18, 50–51.
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`
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`We credit also Petitioner’s evidence (which Patent Owner does not
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`challenge) that the other elements of claim 27 are found in Pristash. For the
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`foregoing reasons, we conclude that Petitioner has demonstrated that claim
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`27 would have been obvious over Pristash.
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`C. Asserted Obviousness Based on Kobayashi and Pristash
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`Petitioner contends that claims 15 and 27 would have been obvious in
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`light of Kobayashi and Pris
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