Trials@uspto.gov
`571-272-7822
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`Paper No. 10
`Entered: March 9, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`K.J. PRETECH CO., LTD.,
`Petitioner,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
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`
`
`Case IPR2015-018671
`Patent 7,537,370
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
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`GIANNETTI, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`1 This proceeding is joined with IPR2016-00914.
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`571-272-7822
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`Paper No. 10
`Entered: March 9, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`K.J. PRETECH CO., LTD.,
`Petitioner,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
`Patent Owner.
`
`
`
`Case IPR2015-018671
`Patent 7,537,370
`
`
`
`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. § 318(a) and 37 C.F.R. § 42.73
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`1 This proceeding is joined with IPR2016-00914.
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`Case IPR2015-01867
`Patent 7,537,370
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`K.J. Pretech Co., Ltd. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 4, 5, 9,
`13, 29, and 47 of U.S. Patent No. 7,537,370 (“the ’370 patent”). Paper 2
`(“Pet.”). Innovative Display Technologies LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 11 (“Prelim. Resp.”). The Board instituted
`inter partes review of claims 29 and 47, and denied the Petition as to the
`remaining challenged claims. Paper 15 (“Institution Decision”)
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 20 (“PO Resp.”). Petitioner filed a Reply. Paper 23 (“Pet.
`Reply”).
`An oral hearing concerning this case was held on January 10, 2017.2
`The record contains a transcript of the hearing. Paper 39 (“Tr.”).
`This proceeding has been joined with IPR2016-00194. Paper 24.
`This Final Written Decision applies to both proceedings.
`The Board has jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not shown, by a
`preponderance of the evidence, that claims 29 and 47 of the ’370 patent are
`unpatentable.
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`I. BACKGROUND
`A. The ʼ370 patent (Ex. 1001)
`The ʼ370 patent is titled “Light Emitting Panel Assemblies.” The
`Abstract describes the subject matter as follows:
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`2 The hearing also included cases IPR2015-01866 and IPR2015-01688,
`involving the same parties.
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`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.
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`Ex. 1001, Abstract.
`The patent describes varying the light extracting deformities to control
`the light:
`By varying the density, opaqueness or translucence, shape,
`depth, color, area, index of refraction, or type of deformities 21
`on an area or areas of the panels, the light output of the panels
`can be controlled. The deformities or disruptions may be used
`to control the percent of light emitted from any area of the
`panels. For example, less and/or smaller size deformities 21
`may be placed on panel areas where less light output is wanted.
`Conversely, a greater percentage of and/or larger deformities
`may be placed on areas of the panels where greater light output
`is desired.
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`Id. at col. 4, ll. 62–col. 5, l. 4. The patent also describes “[v]arying the
`percentages and/or size of deformities in different areas of the panel . . . in
`order to provide a uniform light output distribution.” Id. col 5, ll. 5–7.
`Figure 4a of the patent follows:
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`Figure 4a shows a portion of a light emitting panel assembly 20 having one
`form of pattern of light extracting deformities 21 on one side of the panel.
`Id. col. 2. ll. 18–20. The pattern of light extracting deformities in Figure 4a
`includes a variable pattern. Id. col. 4, ll. 40–42. The ’370 patent also
`discloses that a pattern of light extracting deformities or disruptions may be
`provided on one or both sides of the panel members or on one or more
`selected areas on one or both sides of the panel members, as desired. Id. col.
`4, ll. 31–34.
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`B. Challenged Claims
`
`Claims 29 and 47 follow:
`29. 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, both the front and back sides
`having a pattern of light extracting deformities that are
`projections or depressions on or in the sides 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
`at least one of the sides varies along at least one of the length
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`and width of the panel member and at least some of the light
`extracting deformities on or in one of the sides vary in a different
`way or manner than the light extracting deformities on or in the
`other side of the panel member, 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.
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`47. 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, both the front and back sides
`having a pattern of light extracting deformities that are
`projections or depressions on or in the sides 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
`at least one of the sides varies along at least one of the length
`and width of the panel member and at least some of the light
`extracting deformities on or in one of the sides vary in a different
`way or manner than the light extracting deformities on or in the
`other side 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 identifies numerous proceedings in which it has alleged
`infringement of the ʼ370 patent. See Paper 5 for a listing. In addition,
`Patent Owner identifies several other petitions requesting inter partes review
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`of the ’370 patent and related patents. Id. In IPR2014-01096 (“IPR-1096”),
`a petition was granted as to claims 15 and 27 of the ʼ370 patent, and an inter
`partes review was instituted by the Board as to those claims on January 13,
`2015. Ex. 1027. A second petition, in IPR2015-00493, relied on the same
`prior art as the petition in IPR-1096, and was granted by the Board. The
`Board also granted the petitioner’s motion for joinder of that proceeding
`with IPR2014-01096. A Final Written Decision determining that claims 15
`and 27 are unpatentable was entered by the Board on December 18, 2015.
`IPR-1096, Paper 40.
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`D. References
`The Board instituted inter partes review of claims 29 and 47 based on
`the following references:
`Ex. 1007
`Apr. 2, 1991
`Pristash
`US 5,005,108
`Ex. 10083
`Aug. 19, 1991
`Suzuki
`JP H03-189679
`Petitioner also relies on a Declaration from Dr. Thomas L. Credelle
`(“Credelle Decl.”). Ex. 1004. With its response, Patent Owner submitted a
`Declaration of Kenneth Werner (“Werner Decl.”). Ex. 2006. Transcripts of
`the depositions of Dr. Credelle (“Credelle Dep.”) and Mr. Werner (“Werner
`Dep.”) are entered in the record as Exhibits 2007 and 1032, respectively.
`E. Grounds Asserted
`The Board instituted inter partes review of claims 29, and 47 of the
`ʼ370 patent under 35 U.S.C. § 103(a) on the following grounds:
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`3 Exhibit 1008 is the English translation of the Suzuki Japanese publication
`(Ex. 1009).
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`Reference(s)
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`Suzuki
`Suzuki and Pristash
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`Claim(s) Challenged
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`29
`29 and 47
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`II. ANALYSIS
`A. Level of Ordinary Skill
`There is no discussion of the level of ordinary skill in the Petition or
`in Patent Owner’s responses, but the subject is addressed in the expert
`declarations. Petitioner’s expert, Dr. Credelle, testifies:
`It is my opinion that a person of ordinary skill in the art relevant
`to the ’370 patent would have at least an undergraduate degree
`in physics, optics, electrical
`engineering, or applied
`mathematics AND 3 years of work experience (or a graduate
`degree) in a field related to optical technology.
`Credelle Decl. ¶ 25. Patent Owner’s expert, Mr. Werner, generally accepts
`this framework, but according to his formulation,
`a person of ordinary skill in the art of the ’370 patent 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.
`Werner Decl. ¶ 44.
`Our decision does not turn on the minor differences between these
`definitions. However, for the purpose of our analysis, we accept Mr.
`Werner’s more inclusive formulation, with the addition of Dr. Credelle’s
`identification of optics as a permissible undergraduate degree.
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`B. Claim Construction
`The ʼ370 patent expired on June 27, 2015. Pet. 6. For expired
`patents, we apply the claim construction standard set forth in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). See In re Rambus, Inc., 694
`F.3d 42, 46 (Fed. Cir. 2012).
`1. “deformities”
`The term “deformities” appears in all challenged claims. In our
`Institution Decision (at p. 4), we adopted Petitioner’s proposed construction
`based on the specification, which was “any change in the shape or geometry
`of a 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). The same
`construction was used in IPR-1096. Patent Owner does not contest this
`construction in its Patent Owner Response. See Paper 16, 3 (“The patent
`owner is cautioned that any arguments for patentability not raised in the
`response will be deemed waived.”). Having considered the construction in
`light of the evidence submitted during trial, we determine that the
`construction should be maintained. Other aspects of the claimed deformities
`will be discussed infra.
`2. “transition region”
`This term appears in challenged claim 47 but not claim 29. Petitioner
`submits that the term “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” should at least include any “region
`configured to transmit light [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].” Pet. 8. We do not need to resolve this
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`construction issue in light of our disposition of the challenge to claim 47, as
`discussed infra. Only terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`3. “at least some of the light extracting deformities on or in one of the
`sides vary in a different way or manner than the light extracting
`deformities on or in the other side of the panel member”
`Both challenged claims include this limitation. In its claim charts,
`Petitioner identifies this limitation as element [29.e] in claim 29, and
`element [47.e] in claim 47. Pet. 49, 51. Petitioner contends that this
`limitation is met by Suzuki’s disclosure of a light emitting panel with
`embossed patterns having different pitches on the front and back surfaces.
`Pet. 49; Pet. Reply 4. Patent Owner contends that this limitation should be
`construed as requiring a different varying pattern on both sides of the panel.
`Prelim. Resp. 19–20; PO Resp. 7–8; Werner Decl. ¶ 56. This theory of two-
`way variations was addressed also at oral argument. Tr. 56:11–16. During
`oral argument, the following exchange took place between Patent Owner’s
`counsel and the panel regarding this claim term:
`[THE BOARD]: Counsel, let me interrupt you. Do you
`agree that there's a difference in the interpretation of this claim
`between you and the petitioner?
`I do. So what
`[COUNSEL FOR PATENT OWNER]:
`we understand is the claim language requires is that the
`deformities have to vary on both sides in a different manner.
`And having a different pitch on one side on the other isn't a
`variance on either side much less a variance in a different manner
`from one another.
`Tr. 56:9–18.
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`We are persuaded by Patent Owner’s argument that the language of
`the claims supports Patent Owner’s proposed construction. Claims 29 and
`47, by their express terms, require the pattern of light deformities to vary
`“along at least one of the length and width of the panel member . . . on or in
`at least one of the sides” of the panel. The additional claim language—“vary
`in a different way or manner”—suggests a comparison between two sides of
`the panel, each of which contains deformities that vary along the length of
`the panel a different way or manner. “Quite apart from the written
`description and the prosecution history, the claims themselves provide
`substantial guidance as to the meaning of particular claim terms.” Phillips,
`415 F.3d at 1314 (citations omitted).
`Moreover, Figure 4a of the ’370 patent, reproduced supra, is cited by
`Patent Owner. Werner Decl. ¶ 29; Hearing Tr. 57:12–18. Figure 4a
`illustrates a varying pattern of light extracting deformities on one side of the
`panel and, together with the claim language discussed supra, supports Patent
`Owner’s interpretation requiring a different varying pattern on each side.
`We, therefore, agree with Patent Owner that this term should be construed to
`require a pattern of deformities that varies along at least one of the length
`and width of the panel member on each side of the panel, and that varies in a
`different way from the pattern on the other side.
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`C. Claim 29 – Suzuki (Ex. 1008)
`1. Overview of Suzuki
`Suzuki describes a surface light source device that includes an
`extremely thin transparent light guide layer. Suzuki’s stated objective for
`this device is to emit light with a brightness that is equivalent to or higher
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`than that of light emitted by a structure of the related art, which can be
`reduced in size and weight, and which has a simple structure that can be
`easily manufactured. Ex. 1008, 5. Several different embodiments are
`disclosed. Figures 1 and 2 of Suzuki are reproduced here:
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`Ex. 1008, 7. Figure 1 of Suzuki shows light diffusion layer 1 arranged to
`extend over the entire area between tubular light sources 4. Figure 1 also
`shows that transparent light guide layer 2 and reflective layer 3 are
`successively stacked below the light diffusion layer 1. In one embodiment,
`the transparent light guide layer 2 is produced by forming an embossed
`pattern 21 on both sides of acrylic resin plates over the entire area thereof.
`Id. at 8. Other embodiments show an embossed pattern on one side of the
`transparent light guide. Id. at 16.
`In Suzuki’s Figure 2(A), the embossed pattern 21 is shown as a pattern
`of quadrangular-pyramid-shaped recesses formed at a pitch of 0.5 mm and
`having oblique surfaces at an angle of 45°. Id. at 8. Suzuki presents a series
`of “studies” based on the embossed pattern shown in Figure 2(A) supra. Id.
`at 8. The results appear in Table 1. Id. at 9. Alternative patterns are
`described in the disclosure, including triangular pyramids, conical shapes,
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`and mountain and valley shapes. Id. at 13. As described, the pyramids may
`be either projections or depressions. Id.
`Suzuki also describes varying the oblique surface angle and the pitch
`of the embossed pattern. Id. at 13–14. For example, Suzuki’s Figure 5
`shows an example where the pitch is gradually changed:
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`Figure 5 of Suzuki shows an example of embossed patterns formed on a
`transparent light guide layer. Id. at 13–14. Suzuki also states: “Embossed
`patterns having different pitches may be formed on the front and back
`surfaces of the transparent light layer 2.” Id. at 14.
`Figure 10 of Suzuki is an example of a light guide layer where the
`projection area of the embossed pattern increases with distance from the
`light source to obtain a uniform brightness distribution over the effective
`light emitting area:
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`Figure 10 shows a light guide layer in which the embossed pattern changes
`with distance from the light source 4. Id. at 14–15. Suzuki’s Table 2
`presents the results of a study in which the embossed pattern changes with
`distance from the light source in accordance with a logarithmic equation. Id.
`at 16–18. Other embossed patterns that vary with distance from the light
`source are shown in Suzuki’s Figures 11–20. Exemplary Figures 13, 15, and
`19 follow:
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`Figures 13, 15, and 19 show light guides with varying embossed patterns.
`Suzuki states: “All or some of these examples may also be employed in
`combination. Id. at 20.
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`2. Analysis
`Petitioner’s obviousness analysis of claim 29 in relation to Suzuki
`appears at pages 48–50 of the Petition. Petitioner supports its analysis with
`testimony from Dr. Credelle. Credelle Decl. ¶¶ 150–154.
`Patent Owner’s rebuttal focuses on the claim element [29.e] in the
`Petition, discussed supra in connection with claim construction. Pet. 49; PO
`Resp. 4. The same element appears in claim 47, identified as element [47.e].
`This analysis, therefore, applies to both claims.
`According to that element, “at least some of the light extracting
`deformities on or in one of the sides vary in a different way or manner than
`the light extracting deformities on or in the other side of the panel member.”
`Patent Owner does not dispute that Suzuki teaches using projections having
`different pitches on opposite sides of the panel. PO Resp. 7. Nor does
`Patent Owner contest that Suzuki has projections that vary on one side of the
`panel. At oral argument, counsel for Patent Owner identified at least Figures
`14, 15, and 20 from Suzuki as having variations in the deformities of the
`type called for in the challenged claims. Tr. 60:5–19.
`Patent Owner contends that, nevertheless, Suzuki does not meet the
`language of claim element [29.e]. With reference to Suzuki’s description of
`having deformities with different pitches on front and back sides of the
`panel, Patent Owner states: “This does not disclose a panel in which the
`pitch on both sides may vary; instead they [sic] pitches on each side remains
`the same.” PO Resp. 7. Thus, according to Patent Owner, such an
`arrangement does not satisfy the requirement of the claims for a different
`varying pattern on opposite sides of the panel. Id.
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`We agree with Patent Owner, and, therefore, find that Suzuki fails to
`teach the claimed relationship between the deformities on opposite sides of
`the panel. The discussion of using different pitches on opposite sides of the
`panel in Suzuki does not mention varying the pitches on both the front
`surface of the transparent light guide layer and the back surface of the
`transparent light guide layer. Ex. 1008, 14. As Patent Owner points out, the
`tests described in Suzuki in which the pitch was varied involved embossed
`patterns on one side of the panel only. PO Resp. 7–8 (citing Ex. 1008, Table
`2). As we recognized in our Institution Decision, in Suzuki’s study of panels
`with an embossed pattern on both sides, the pattern is of the same type.
`Institution Decision 14 (citing Ex. 1008, Table 1). There, we stated: “In
`Table 1, the samples tested either had no pattern, the embossed pattern was
`on a single side, or the same pattern (quadrangular pyramid or hairline) was
`on both sides.” Id.
`Patent Owner argues with regard to element [29.e], “Petitioners
`concede that there is not one embodiment of Suzuki having that requirement,
`and thus attempt to combine different teachings of Suzuki.” PO Resp. 4.
`Thus, in addition to the disclosure in Suzuki of using different pitches on the
`front panel surface and back panel surface, Petitioner’s analysis of this claim
`element relies also on Suzuki’s Figures 10, 15, and 19, reproduced above,
`and on Suzuki’s statement that “all or some of these examples may also be
`employed in combination.” See Pet. 49–50 (element [29.e]; 51 (element
`[47.e]). Thus, according to Petitioner, “Suzuki discloses applying one of the
`patterns disclosed in Figs. 2-20 to a first surface of the light guide and
`applying a different pattern to the second surface of the light guide.” Pet.
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`35–36. Petitioner cites supporting testimony from Dr. Credelle. Credelle
`Decl. ¶¶ 134–135.
`Patent Owner responds that this statement by Suzuki “only applies to
`the examples described by Table 2 and Figs. 10-20.” PO Resp. 10. Further,
`the logarithmic equation of Table 2 “could not be used with the examples of
`Table 1” and “a person of ordinary skill would not attempt to do so.” Id.
`Petitioner replies by repeating its argument that Suzuki meets element
`[29.e] “by disclosing that embossed patterns having different pitches may be
`formed on the front and back surfaces of light guide layer 2.” Pet. Reply 4.
`This argument is unavailing in light of our determination, discussed supra,
`that the pattern must also vary on opposite sides of the panel. Suzuki’s
`reference to “different pitches” does not meet this requirement of a varying
`pattern, because it does not disclose that the pattern on the front and back
`surfaces would vary. Further, Petitioner cites testimony from Mr. Werner’s
`deposition. Id. (citing Werner Dep. 255:8–13). There, Mr. Werner testifies
`that Suzuki’s statement is referring to “a different pitch on the front and back
`that was fixed.” Werner Dep. 255:–10. We find that this testimony
`referring to the pitch as “fixed” is not helpful to Petitioner’s argument for the
`same reason.
`We are not persuaded by Petitioner’s arguments because they do not
`convincingly address the lack of a disclosure in Suzuki of a panel with
`patterns on opposite sides where each side varies in a different way. We do
`not understand Suzuki’s generalized statement regarding using different
`pitches on the front and back of the panel to refer to the panels of Table 2 or
`other panels in which the pitch is varied. In that respect, we credit Mr.
`Werner’s testimony. Werner Decl. ¶¶ 52–56.
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`As we stated in our Institution Decision, we are not persuaded by
`Petitioner’s argument that it would have been obvious to alter the light
`panels described in Suzuki to combine “exemplary embossed patterns” from
`the figures to provide different varying embossed patterns on each of the
`front and back surfaces of the light panel. Pet. 36. The Petition does not set
`forth a sufficient rationale for making this modification. The fact that
`Suzuki states that various patterns can be “used in combination” (Ex. 1008,
`20) does not, by itself, suggest using patterns that vary in different ways on
`each of the front and back surfaces of the panel. In fact, Suzuki even states
`that “it is not necessary” to form the embossed pattern on both sides of the
`panel. Id. at 13. The Petition provides no persuasive rationale for making
`such an alteration to the panels described in Suzuki. Petitioner has failed to
`identify adequately a reason why a person of ordinary skill would have
`combined the various features of Suzuki. See In re Nuvasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (conclusory statements “insufficient
`articulations of motivation to combine” references)
`Moreover, we do not find Dr. Credelle’s declaration testimony
`credible on this issue. The declaration, like the Petition, states conclusions
`without appropriate factual support. Credelle Decl. ¶¶ 134–140. For
`example, Dr. Credelle testifies that one varying pattern (e.g., Fig. 14) “may
`be used” on one side of the transparent light guide in Suzuki, while a
`different varying pattern (e.g., Fig. 18) “may be used” on the other side. Id.
`at ¶ 139. This testimony, however, does not explain why a person of
`ordinary skill would do so. 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). In
`contrast, Mr. Werner explains that Suzuki does not suggest putting different
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`varying patterns on both sides of the panel because the tests described in
`Suzuki show that the best results were achieved by panels having a single-
`sided variable pattern. Werner Decl. ¶ 57.
`We find this testimony from Mr. Werner to be persuasive, and the
`proof by Petitioner of a motivation to combine the examples discussed in
`Table 1 of Suzuki having embossed elements on both sides with the
`examples in Table 2, all of which have embossed elements on one side only,
`insufficient. Moreover, we find that Petitioner’s reliance in its reply on Mr.
`Werner’s cross-examination testimony to be misplaced. Pet. Reply 6–7. For
`example, in response to a question whether it is “at all possible” that
`Suzuki’s statement refers to Tables 1 and 2, Mr. Werner responded as
`follows:
`
`[MR. WERNER:] Is it at all possible he’s talking about
`the example of Tables 1 and 2? It’s possible, but given the
`context, it’s —it’s less likely.
`Werner Dep. 136:2–5 (emphasis added). Petitioner relies on this
`testimony—or at least the statement that “[i]t’s possible.” Pet. Reply 6.
`When the whole answer is considered, however, it does not support
`Petitioner’s statement that Suzuki’s statement refers to Tables 1 and 2.
`Similarly, we find credible Mr. Werner’s testimony that, based on its
`context, the statement in Suzuki refers to Figures 14–20:
`
`[MR. WERNER:] But he [Suzuki] is talking about a
`particular set of examples in this context . . . . The more and
`more I read this, the more and more clear it becomes that he is
`talking about these –– these illustrative examples in these
`figures [referring to Figures 14–20 of Suzuki].
`***
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`Case IPR2015-01867
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`[COUNSEL FOR PETITIONER:] So it is your opinion
`that that sentence, all or some of these examples are not
`referring to the tables but they're referring to figures 14, 15, 16,
`17, 18, 19, 20?
`[MR. WERNER:] Yes. As I have testified.
`Werner Dep. 264:22–25; 268:10–14.
`We conclude from the foregoing evidence and arguments of record,
`including the testimony of Mr. Werner, that Petitioner has not demonstrated
`by a preponderance of the evidence that claim 29 would have been obvious
`over Suzuki.
`
`D. Claim 47 – Suzuki and Pristash (Ex. 1007)
`As noted, the above analysis of claim element [29.e] applies also to
`element [47.e]. Pristash is relied on only to meet the additional requirement
`in claim 47 of a transition region. Pet. 56.
`Patent Owner responds that Pristash does not disclose the claimed
`transition region and a person of ordinary skill would not have combined
`Suzuki and Pristash. PO Resp. 11. We do not reach this issue, however, in
`view of our conclusion above regarding Suzuki and claim 29, which applies
`also to claim 47. Therefore, for the reasons stated above for claim 29, we
`conclude that Petitioner has not demonstrated by a preponderance of the
`evidence that claim 47 would have been obvious over Suzuki and Pristash.
`
`E. Statutory Time Bar - 35 U.S.C. § 315(b)
`Patent Owner contends that the Petition is time-barred under 35
`U.S.C. § 315(b). PO Resp. 18–19. Patent Owner asserts, in the Preliminary
`Response, that the Petition fails to name a real party-in-interest, LG, who
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`was served with a complaint charging infringement of the ʼ370 patent more
`than a year before this Petition was filed and therefore is barred from filing a
`petition under § 315(b). Prelim. Resp. 10. According to Patent Owner, the
`Petition was filed by Petitioner “at the behest of LG,” thus making LG a real
`party-in-interest. Id. at 11. Patent Owner asserts:
`Petitioner is a supplier to LG (who indisputably is time-barred)
`and is represented by the same counsel that represents LG both
`before the PTAB and in the District of Delaware regarding the
`same patents, and LG and its counsel used this and two other
`IPR petitions by Petitioner as the basis for their motion to stay
`the district court proceedings (which was denied).
`PO Resp. 18. The Board previously determined that this showing was
`insufficient. Institution Decision 18–19. Pointing to “recent events,” Patent
`Owner requests reconsideration of that decision. PO Resp. 18.
`In view of our decision on the merits of Petitioner’s challenge, we do
`not decide Patent Owner’s argument the proceeding is time-barred under
`§ 315(b).
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`III. SUMMARY
`We conclude that Petitioner has failed to demonstrate by a
`preponderance of the evidence that, under 35 U.S.C. § 103, claim 29 of the
`’370 patent is unpatentable over Suzuki and claim 47 is unpatentable over
`Suzuki and Pristash.
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`IV. ORDER
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`It is, therefore,
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`ORDERED that Petitioner has failed to prove by a preponderance of
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`Patent 7,537,370
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`FURTHER ORDERED that this is a final written decision of the
`Board under 35 U.S.C. § 318(a); parties to the proceeding seeking judicial
`review of the decision must comply with the notice and service requirements
`of 37 C.F.R. § 90.2.
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`PETITIONER:
`Robert G. Pluta
`Amanda K. Streff
`Baldine B. Paul
`Anita Y. Lam
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`bpaul@mayerbrown.com
`alam@mayerbrown.com
`
`PATENT OWNER:
`Justin B. Kimble
`BRAGALONE CONROY P.C.
`jkimble@bcpc-law.com
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