LG Display Co., Ltd.v.Innovative Display Technologies LLC

Patent Trial and Appeal Board

Jan 13, 2015

13315412 (P.T.A.B. Jan. 13, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Entered: January 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG DISPLAY, LTD.,
Petitioner,

v.

INNOVATIVE DISPLAY TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-01095
Patent 8,215,816 B2
____________

Before THOMAS L. GIANNETTI, NEIL T. POWELL, and BEVERLY M.
BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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LG Display Co, Ltd. (“Petitioner”) filed a Petition pursuant to 35
U.S.C. §§ 311–319 to institute an inter partes review of claims 1–4 of U.S.
Patent No. 8,215,816 B2 (Ex. 1001, “the ’816 patent”). Paper 2 (“Pet.”).
Innovative Display Technologies LLC (“Patent Owner”) filed a Preliminary
Response on October 16, 2014. See Paper 7 (“Prelim. Resp.”). Applying
the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
a reasonable likelihood that Petitioner would prevail with respect to at least
one challenged claim, we deny the Petition and decline to institute an inter
partes review of claims 1–4 of the ’816 patent based on any of the asserted
grounds.

I. BACKGROUND
A. The ʼ816 Patent (Ex. 1001)
The ʼ816 patent is directed to a light emitting panel assembly having a
light emitting panel member with “an input edge that receives light from the
light source, and end edge and side edge reflectors” (Ex. 1001, Abstract) as
illustrated below in Figure 6.

Fig. 6 is a schematic perspective view of a light emitting panel assembly.
The light emitting panel assembly 32 includes a panel member 33, one or
more light sources 3, and one or more light output areas 34. Id. at 6:60–63.
The panel member has a greater width than height, and the input edge of the
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panel member receives light from the light source more in the width
direction as the light enters the panel member. Id. at 10:6–9. A secondary
reflective or refractive surface 38 may be formed on the panel member. Id.
Light extracting deformities “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.” Id. at 4:40–43. The panel assembly is received within a
recessed portion 36 of a tray 35. Id. at 6:63–67.

B. Illustrative Claim
Claim 1 is illustrative of the claims at issue:
1. A light emitting assembly comprising at least one
light source, a light emitting panel member having
at least one input edge for receiving light from the
light source and a light emitting surface, a tray or
housing having a cavity or recess in which the
panel member is entirely received, wherein the
panel member has a pattern of light extracting
deformities on or in at least one surface to cause
light to be emitted from the light emitting surface
of the panel member, end edge reflectors and side
edge reflectors, and an additional component
overlying the panel member, wherein the panel
member has a greater width than height, and the
light input edge has a refractive surface that
redirects the light output distribution of the light
source more in the width direction as the light
enters the panel member.

C. Related Proceedings
Patent Owner states that it has asserted infringement by Petitioner of
the ’816 patent in Delaware Display Group LLC et al. v. LG Electronics Inc.
et al., No. 1:13-cv-02109 (D. Del., filed Dec. 31, 2013). Paper 5, 2. In
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addition, Patent Owner identifies other proceedings in which it has alleged
infringement of the ʼ816 patent. Id. at 2–5. Petitioner concurrently filed
additional petitions challenging the patentability of the following related
patents:
1. IPR2014-01092 (U.S. Patent No. 7,434,974)
2. IPR2014-01094 (U.S. Patent No. 7,404,660)
3. IPR2014-01096 (U.S. Patent No. 7,537,370)
4. IPR2014-01097 (U.S. Patent No. 7,300,194)

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). Petitioner proposes a
construction for the term “deformities” appearing in claim 1. Pet. 7– 8.
Patent Owner takes no position on claim construction, other than pointing
out that the parties agreed to the construction of “deformities” proffered by
Petitioner in the district court proceeding. Prelim. Resp. 4; citing Ex. 2002,
7–11.
1

For purposes of this decision, having considered the evidence
presented, we see no need to construe expressly “deformities” or any of the
other terms in the challenged claims at this time.

1
The district court construed the phrase “pattern of deformities” and
similarly “pattern of light extracting deformities” to mean “random
placement patterns and variable patterns.” Ex. 2002, 11.
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E. References
Petitioner relies on the following references (Pet. 8–11), the Admitted
Prior Art (“APA”) discussed in the ’816 patent (Id. at 8–9) and the
Declaration of Dr. Michael J. Escuti (Ex. 1004):
References Patents/Printed
Publications
Date Exhibit
Pristash US 5,005,108 April 2, 1991 1006
Funamoto US 5,619,351 April 8, 1997
2
1007
Gyoko JP H6-273756 Sept. 30, 1994
3
1008
Murase US 5,178,447 Jan. 12, 1993 1011
Tsunoda JP H6-051130 Feb. 25, 1994
4
1012
Imai US 5,253,089 Oct. 12, 1993 1015

F. Grounds Asserted
Petitioner challenges claims 1–4 of the ’816 patent on the following
grounds. Pet. 10.
References Basis Claims Challenged
Pristash, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4
Funamoto, Tsunoda, or
in the alternative Imai
§ 103(a) 1–4
Gyoko, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4
Murase, Tsunoda, or in
the alternative Imai
§ 103(a) 1–4

2
Petitioner relies on Funamoto’s 35 U.S.C. § 371 date of May 10, 1994.
Pet. 9.
3
Gyoko is a Japanese unexamined patent application, and Petitioner relies
on the September 30, 1994 application publication date. Id. at 10.
4
Tsunoda is a Japanese unexamined patent application, and Petitioner relies
on the February 25, 1994 publication date. Id.
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II. ANALYSIS
We now turn to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in its preliminary response. In the analysis that
follows, we may discuss facts as they have been presented thus far in this
proceeding. Any inferences or conclusions drawn from those facts are
neither final nor dispositive of any issue on which we institute trial.

A. Obviousness Ground Based on Pristash
Petitioner challenges claims 1–4 as unpatentable under 35 U.S.C. §
103(a) based on Pristash and Tsunoda, or in the alternative, Imai. Pet. 12–
22.
5
In support thereof, Petitioner provides claim charts that identify the
disclosure in each of Pristash, Tsunoda, and Imai alleged to describe the
subject matter in claims 1–4. Petitioner further cites the Declaration of Dr.
Escuti in support of the analysis advocated in the Petition. Ex. 1004. Patent
Owner counters that Petitioner’s reasoning for modifying Pristash using the
refractive surface of Tsunoda or Imai are conclusory and devoid of analysis.
Prelim. Resp. 5–12.
We have reviewed the parties’ contentions and supporting evidence.
Given the evidence of record, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing on its assertion that
challenged claims 1–4 are obvious over the combination of Pristash and
Tsunoda or Imai. A detailed analysis of our determination follows after a
brief overview of Pristash, Tsunoda, and Imai.

5
We note that this one ground actually represents two separate grounds,
Pristash and Tsunoda, and Pristash and Imai.
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1. Overview of Pristash (Ex.1006)
Pristash describes a panel illuminator having “a solid transparent light
emitting panel 2 and light source 3 which generates and focuses light, in a
predetermined pattern, either directly on a panel input edge 4 or on a
transition device 5 which is used to make the transition from the light source
3 target shape to the light emitting panel input edge 4 shape.” Ex. 1006
2:67–3:4, Fig. 1. Disruptions or deformities 16 may be located on the
exterior surface of the light emitting panel. Id. at 3:29–35. In the
embodiment illustrated in Figs. 8–10, light sources 64, 64’ are positioned on
each end of the panel. Id. at 5:36–40. Pristash discloses different forms of
transition devices, and teaches that the transition devices may be separate
from the light emitting panel, or “formed as an integral part of the panels.”
Id. at 8:6–10. While the input and output surfaces of the various transition
devices shown are square, round, or rectangular, “they may be elliptical or
any shape necessary to fit a particular application.” Id. at 7:60–63.
2. Overview of Tsunoda (Ex. 1012)
Tsunoda discloses an optical waveguide having a transparent panel
“with a plurality of point light source recesses (1) on one surface, [and]
substantially triangular cutouts (2) between the recesses (1) on the side
surface” ( Ex. 1012, Abstract) as illustrated below in Figure 1.

Fig. 1 is a diagram illustrating the optical waveguide.
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Light emitted by the point light source enters the optical waveguide through
the recesses and is diffused radially. Id. ¶ 15. Tsunoda also discloses that
the optical waveguide may be placed in a holder 9 as shown in Fig. 10. Id.
¶ 27.
3. Overview of Imai (Ex. 1015)
Imai discloses a liquid crystal display unit having an edge-type
backlight, and light from the lamp 17 is conducted through the light-
conducting plate 30 to the display surface. Ex. 1015, 2:32–38. The light
conducting plate has a light receiving end face that is in contact with the
light conducting plate 32 in two places 33 (Id. at 3:32–39) as shown in
Figure 2 below.

Fig. 2 is a cross-sectional view of the liquid crystal display unit.
4. Discussion of Pristash and Tsunoda
We initially address Petitioner’s argument that “Pristash, in view of
Tsunoda, teaches the elements of Claims 1–4 of the ’816 patent.” Pet. 13,
citing Ex. 1004 ¶¶ 68–83. To demonstrate how Pristash meets the
limitations of claim 1 of the ’816 patent, Petitioner presents annotated
Figures 1 and 7 of Pristash. Id. at 13–14, citing Ex. 1006, 2:68, 5:6–9, 5:22–
33, Figs. 1 and 7. Petitioner asserts that Pristash inherently discloses the tray
based on its intended use in applications such as “backlighting of LCDs, task
lighting, safety lighting, automotive applications, display lighting, and
infrared heating. Id. citing Ex. 1004 ¶¶ 74–75. Alternatively, Petitioner
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argues that Tsunoda discloses a holder 9 in which the light guide is installed,
and that “[i]t would have been obvious to enclose the wave guide 15 of
Pristash in the holder 9 of Tsunoda because both disclose the same objective
as the ’816 Patent.” Id. at 14, citing Ex. 1004 ¶¶ 75–76.
Claim 1 of the ’816 patent recites the limitation of “the light input
edge has a refractive surface that redirects the light output distribution of the
light source more in the width direction as the light enters the panel
member.” Petitioner identifies quotations in Tsunoda that correspond with
this claim element in the claim chart (Pet. 19–20) and asserts “[i]t would
also have been obvious to include the input edge or Tsunoda with its
refractive surface redirecting light more in the width direction as the input
edge in Pristash.” Id. at 14, citing Ex. 1012 ¶ 15; Ex. 1004 ¶93.
In the Preliminary Response, Patent Owner counters that Tsunoda
does not disclose the claim element of “a refractive surface that redirects the
light output distribution of the light source more in the width direction.”
Prelim. Resp. 7–10. Specifically, Patent Owner asserts “[t]he cited Figure of
Tsunoda does not show the height dimension and therefore a comparison of
whether light is redirected ‘more in the width direction’ cannot be made”.
Id. at 8. Notwithstanding this position, Patent Owner also asserts that the
cited portion of the Escuti Declaration likewise “offers no rationale for
modifying Pristash to include the alleged refractive surface of Tsunoda.” Id.
at 6.
We agree that Petitioner’s annotations of Figure 1 and cited passages
of Pristash in the claim chart demonstrate adequately that Pristash describes
the claim element of “the panel member has a greater width than height.”
We agree, also, that Petitioner demonstrates sufficiently that Tsunoda
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discloses the claim element of the panel member having a light input edge
with “a refractive surface that redirects the light output distribution of the
light source more in the width direction as the light enters the panel
member.” However, we are also persuaded by Patent Owner’s argument
that Petitioner does not provide satisfactorily a fact-based rationale to
support replacing the input edge of the light emitting assembly of Pristash
with the light input edge of Tsunoda. Other than asserting “it would also
have been obvious,” Petitioner does not provide a sufficient rationale for
combining these references. Pet. 14. We note that Petitioner refers to the
declaration of Dr. Escuti in support of its position.
6
Id. However, while Dr.
Escuti summarizes his view of the Tsunoda, he fails to proffer any
explanation or persuasive evidence demonstrating that it would have been
obvious to combine Pristash and Tsunoda. Ex. 1004 ¶ 93, see 37 C.F.R. §
42.65(a).
It is not sufficient to demonstrate that each of the components is
known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), 550
U.S. at 418 (“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art”). Petitioner must also explain how a person of

6
Petitioner’s extensive reliance throughout the Petition on information not
provided expressly, but instead incorporated by reference to the cited
paragraphs in the Escuti Declaration, is not in accordance with our rules, and
therefore the Declaration is given consideration only to the extent that it
provides specifically identified facts or opinions that support arguments that
are properly presented in the Petition. See 37 C.F.R. § § 42.6(a)(3); see also
Rules of Practice for Trials Before The Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77
Fed. Reg. 48,612, 48,617 (Aug. 14, 2012) (prohibition against incorporation
by reference is to eliminate abuses that arise from incorporation).
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ordinary skill in the art would combine those embodiments and why such a
person would be motivated to do so. In re Chaganti, 2014, WL 274514, *4
(Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been
obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–
more is needed to sustain an obviousness rejection.").
Here, Pristash discloses a transition member 5 that already refracts
light from the light source more in the width direction before the light
reaches the panel input edge 4. Neither Petitioner nor Dr. Escuti explain
why a person of ordinary skill in the art would have replaced the panel input
edge of Pristash with the panel input edge of Tsunoda in order to refract
light more in the width direction or why such a person would be motivated
to do so when the transition member already refracts light more in the width
direction. Accordingly, on the record before us, we are not persuaded that
Petitioner has provided an adequately articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. See
KSR, 550 U.S. 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
5. Discussion of Pristash and Imai
Alternatively, Petitioner argues “[t]o the extent the width direction is
construed as being the opposite direction, this limitation is still obvious in
view of Imai, which discloses a refractive surface for directing light in the
direction opposite to that in Tsunoda.” Id. at 14–15, citing Ex. 1015
¶ 2:32–39, Fig. 2; Ex. 1004 ¶ 136. Petitioner’s arguments fail for the same
reasons given with respect to the proposed combination of Pristash and
Tsunoda. Other than stating “it is still obvious” Petitioner does explain why
a person of ordinary skill in the art would have replaced the panel input edge
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of Pristash with the panel input edge of Imai in order to refract light more in
the width direction, or why such a person would be motivated to do so given
that the transition member already refracts light more in the width direction.
6. Dependent claims 2–4
Petitioner argues that “[t]he tray of Tsunoda also has end and side
edge reflectors (Claim 3)” and that “[i]t would have been obvious to include
these in place of the end and side edge reflectors on the panel member of
Pristash (Claim 2)” Pet. 14, citing Ex. 1012 ¶ 27; Ex. 1004 ¶ 228. By virtue
of their dependency, claims 2–4 incorporate the same limitations as their
underlying base claim. For the same reasons discussed above, our
determination concerning the insufficiency of Petitioner’s evidence with
respect to “the light input edge has a refractive surface that redirects the light
output distribution of the light source more in the width direction as the light
enters the panel member” limitation of independent claim 1, also applies to
the claims that depend from claim 1.
7. Summary
Accordingly, on the record before us, the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail with respect to its contention that claims 1–4 are unpatentable under
35 U.S.C. § 103(a) based on Pristash and Tsunoda, or in the alternative,
Pristash and Imai.

B. Obviousness Ground Based On Funamoto
Next, Petitioner contends that claims 1–4 are unpatentable under 35
U.S.C. § 103(a) based on Funamoto and Tsunoda, or in the alternative,
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Imai.
7
Pet. 22–33. In support thereof, Petitioner provides claim charts that
identify the disclosure in each of Funamoto, Tsunoda, and Imai alleged to
describe the subject matter in claims 1–4. Id. at 26–33. Petitioner further
cites to the Declaration of Dr. Escuti in support of the analysis advocated in
the Petition. Ex. 1004. Patent Owner responds that Funamoto does not
disclose a light emitting panel member and asserts that Petitioner’s
reasoning for modifying Funamoto using the refractive surface of either
Tsunoda or Imai is conclusory and devoid of analysis. Prelim. Resp. 12–24.
We have reviewed the parties’ contentions and supporting evidence.
Given the evidence of record, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing on its assertion that
challenged claims 1–4 are obvious over the combination of Funamoto and
Tsunoda, or Funamoto and Imai. A detailed analysis of our determination
follows after a brief overview of Funamoto.
1. Funamoto Overview (Ex. 1007)
Funamoto discloses an illumination device 60 for providing backlight
in a liquid crystal display. Ex. 1007, Abstract. Referring to Figures 13–15,
Funamoto discloses a U-shaped light fluorescent light source 62 positioned
next to edges 41a, 41c and 41d of a polarizer 61 having a diffusion pattern
52. Id. at 13:39–51, 14:27–41, Fig. 15. According to Funamoto, the
polarizer is a transparent material having a critical angle of 45º or less. Id. at
6:49–58, Fig. 17. Funamoto also discloses that the illumination device is
installed in a lower case 3, and that the lower case may be utilized as a

7
We note that this one ground actually represents two separate grounds,
Funamoto and Tsunoda, and Funamoto and Imai.
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reflector. Id. at 5:47–51, 5:51–67, 7:11–15. Diffusion sheet 26 and prism
sheet 27 are positioned over the polarizer. Id. at 13:47–65, Fig. 14.
2. Discussion of Funamoto and Tsunoda
Petitioner annotated Figures 2, 14, and 15 of Funamoto to show how
the panel member, light source, deformities, end and side edge reflectors,
tray, and “at least one other part” claim elements of the ’816 patent are met
by Funamoto. Id. at 23–24. Acknowledging that “it is not immediately
clear that the polarizer is a light emitting panel member,” Petitioner refers to
a divisional patent claiming priority to Funamoto, U.S. Patent No. 6,108,060
(“the ’060 patent) to establish that the polarizer of Funamoto is a panel
member. Id. at 23–24, citing Ex. 1016, 6:31–33; Ex. 1004 ¶ 120. Relying
on the testimony of its Declarant, Dr. Escuti, Petitioner points to similar
sentences in Funamoto and the ’060 patent, with the term “polarizer”
replaced by “light guide plate” and concludes “the ‘polarizer’ of Funamoto
is the same as the light emitting panel member of the ’816 patent because the
light polarizer has a light entrance surface and a light emitting surface, as is
clear from the assembly structure and the function of the polarizer.” Id. at
23, citing Ex. 1004 ¶ 120.
Patent Owner counters that Petitioner has not demonstrated
sufficiently that the polarizer of Funamoto is a light emitting panel member
because Petitioner “does not allege the teachings of Funamoto would lead
one of ordinary skill in the art to understand term ‘polarizer’ differently from
its ordinary meaning”; “importing of the language from the ’060 patent
disregards the plain language in Funamoto”; and as a term of art, “[i]t is
unlikely that the meanings of the term ‘polarizer’ and phrase ‘light guide
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plate’ would be confused or used in error by one of ordinary skill in the art.”
Prelim. Resp. 14–15.
We are not persuaded that Petitioner has provided a sufficient
rationale for the Board to consider the “child patent,” which issued in
August 2000, long after the effective filing date of the ʼ816 patent. We note
further that the change in language from “polarizer” to “light guide plate” is
not clear proof that they are the same thing, for it could have resulted from a
desire to broaden the description in the disclosure. We are, however, more
convinced by the description of the light panel in the Specification of the
ʼ816 patent: “[a] transparent light emitting material of any suitable type . . .
may be used for the light emitting panels.” Ex. 1001, 4:10–12. This
description, which would encompass a polarizer, persuades us that Petitioner
has demonstrated sufficiently that the polarizer in Funamoto meets the light
emitting panel limitation in the claims.
As to the combination of Funamoto with Tsunoda, Petitioner argues
“it would also have been obvious to include the input edge of Tsunoda with
its refractive surface redirecting light more in the width direction as the input
edge in Funamoto.” Pet. 25, citing Ex. 1004 ¶ 130.
8
Nonetheless, we are
persuaded by Patent Owner’s argument that Petitioner does not provide
satisfactorily a persuasive fact-based analysis to support modifying the input
edge of Funamoto using the input edge of Tsunoda. Prelim. Resp. 12.
Further, we agree with Patent Owner that “[t]he Petition and Escuti fail to
explain why the technical solution for point light sources in Tsunoda would
be helpful in the fluorescent-based device of Funamoto, and fail to explain
that the two references are even compatible to combine.” Id. at 13.

8
The cited paragraph to the Escuti Declaration appears to be in error.
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Accordingly, on the record before us, we are not persuaded that Petitioner
has provided an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
3. Discussion of Funamoto and Imai
Petitioner also argues in the alternative, “[t]o the extent the width
direction is construed as being the opposite direction, this limitation is still
obvious in view of Imai, which discloses a refractive surface for directing
light in the direction opposite to that in Tsunoda.” Id. at 25, citing Ex. 1012
¶ 2:32–39, Fig. 2; Ex. 1004 ¶ 96. Having considered Petitioner’s arguments
concerning the combination of Funamoto and Imai, we are not persuaded
that Petitioner has demonstrated a reasonable likelihood that it would prevail
in demonstrating obviousness of the challenged claim. Other than stating
“this limitation is still obvious,” Petitioner does explain sufficiently why a
person of ordinary skill in the art would have modified the input edge of
Funamoto using the input edge of Imai in order to refract light more in the
width direction or why such a person would be motivated to do.
4. Dependent claims 2–4
Having considered Petitioner’s arguments concerning dependent
claims 2–4, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail in demonstrating obviousness of
these claims. By virtue of their dependency, claims 2–4 incorporate the
same limitations as their underlying base claim. For the same reasons
provided with respect to independent claim 1, our determination concerning
the insufficiency of Petitioner’s articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness concerning the
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input edge limitation also applies to claims 2–4. As such, we exercise our
discretion and do not address Petitioner’s argument that the substitution of
one or more LEDs as required by claim 4, would have been an obvious
based on the disclosure in Funamoto or Tsunoda. Pet. 25, citing Ex. 1004
¶¶ 154-155.
5. Summary
Accordingly, on the record before us, the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail with respect to its contention that claims 1–4 are unpatentable under
35 U.S.C. § 103(a) based on Funamoto and Tsunoda, or in the alternative,
Funamoto and Imai.

C. Obviousness Ground Based on Gyoko
Petitioner contends that claims 1–4 are unpatentable under 35 U.S.C.
§ 103(a) based on Gyoko and Tsunoda, or in the alternative, Imai.
9
Pet.
33–42. In support thereof, Petitioner provides claim charts that identify the
disclosure in each of Gyoko, Tsunoda, and Imai alleged to describe the
subject matter in claims 1–4. Id. Petitioner further cites the Declaration of
Dr. Escuti in support of the analysis advocated in the Petition. Ex. 1004.
Patent Owner contends that Petitioner’s reasoning for modifying Gyoko
using the refractive surface of either Tsunoda or Imai is conclusory and
devoid of analysis. Prelim. Resp. 24–27.
We have reviewed the parties’ contentions and supporting evidence.
Given the evidence of record, we are not persuaded that Petitioner has

9
We note that this one ground actually represents two separate grounds,
Gyoko and Tsunoda, and Gyoko and Imai.
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demonstrated a reasonable likelihood of prevailing on its assertion that
challenged claims 1–4 are obvious over the combination of Gyoko and
Tsunoda or Gyoko and Imai. A detailed analysis of our determination
follows after a brief overview of Gyoko.
1. Gyoko Overview (Ex. 1008)
Gyoko discloses an illuminating device 11 having a rectangular light
guide body 13 with a light emitting surface 13a in a lamp case 12, a pair of
fluorescent lamps 4a, 4b (Ex. 1008 ¶ 17) as shown below in Figure 1.

Figure 1 is cross-sectional view of the illuminating device.
An inner surface of the lamp case is formed as a reflecting surface, the top
surface includes an opening 12b, and a lower reflecting sheet 15 is disposed
on an inner bottom surface. Id. ¶ 18. A plurality of rough surface reflecting
portions 17 having a dot shape are formed on an outer bottom surface of the
light guide body. Id. ¶ 19.
2. Discussion of Gyoko and Tsunoda
Petitioner annotated Figure 1 of Gyoko to illustrate how Gyoko meets
the limitations of claims 1–4 of the ’816 patent. Pet. 34. Relying on
Tsunoda, Petitioner asserts it would also have been obvious to include the
input edge with refractive surface redirecting light more in the width
direction as the input edge in Gyoko. Id. at 34-35, citing Ex. 1012 ¶ 15; Ex.
1004 ¶ 215.
We agree with Patent Owner that Petitioner does not provide
satisfactorily a persuasive fact-based analysis to support modifying the input
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edge of Gyoko using the input edge of Tsunoda. Prelim. Resp. 24–26.
Patent Owner’s argument that “[t]he Petition and Escuti fail to explain why
the technical solution for point light sources would be helpful in a
fluorescent-based device or that it’s even compatible to combine the two
references” is convincing. Id. at 26. Accordingly, on the record before us,
we are not persuaded that Petitioner has provided an articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. See KSR, 550 U.S. 418 (2007) (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
3. Discussion of Gyoko and Imai
Petitioner again argues in the alternative, “[t]o the extent the width
direction is construed as being the opposite direction, this limitation is still
obvious in view of Imai, which discloses a refractive surface for directing
light in the direction opposite to that in Tsunoda.” Id. at 35, citing Ex. 1015
¶ 2:32–39, Fig. 2; Ex. 1004 ¶ 136. Having considered Petitioner’s
arguments concerning the combination of Gyoko and Imai, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood that it
would prevail in demonstrating obviousness of the challenged claim. Other
than stating “this limitation is still obvious,” Petitioner does explain
adequately why a person of ordinary skill in the art would have modified the
input edge of Gyoko using the input edge of Imai in order to refract light
more in the width direction or why such a person would be motivated to do.
4. Dependent Claims 2–4
Petitioner’s arguments concerning dependent claims 2–4 do not
persuade us sufficiently that Petitioner has demonstrated a reasonable
likelihood that it would prevail in demonstrating obviousness of the
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Patent 8,215,816 B2

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challenged claims. By virtue of their dependency, claims 2–4 incorporate
the same limitations as their underlying base claim. For the same reasons
provided with respect to independent claim 1, our determination concerning
the insufficiency of Petitioner’s articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness concerning
input edge limitation of claim 1, also applies to claims 2–4. As such, we
exercise our discretion and do not address Petitioner’s argument that “it
would have been obvious to include the LEDs of Tsunoda in Gyoko given
Gyoko’s objective of higher efficiency and reducing output loss.” Pet. 35,
citing Ex. 1012 ¶¶ 25, 33, 40; Ex. 1004 ¶¶ 153–159.
5. Summary
Accordingly, on the record before us, the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail with respect to its contention that claims 1–4 are unpatentable under
35 U.S.C. § 103(a) based on Gyoko and Tsunoda, or in the alternative,
Gyoko and Imai.

D. Obvious Ground Based on Murase
Petitioner contends that claims 1–4 are unpatentable under 35 U.S.C.
§ 103(a) based on Murase and Tsunoda, or in the alternative, Imai.
10
Pet.
42–50. In support thereof, Petitioner provides claim charts that identify the
disclosure in each of Murase, Tsunoda and Imai alleged to describe the
subject matter in claims 1–4. Id. Petitioner further cites the Declaration of
Dr. Escuti in support of the analysis advocated in the Petition. Ex. 1004.

10
We note that this one ground actually represents two separate grounds,
Murase and Tsunoda, and Murase and Imai.
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21
Patent Owner contends that Petitioner’s reasoning for modifying Murase
using the refractive surface of either Tsunoda or Imai is conclusory and
devoid of analysis. Prelim. Resp. 31–37.
We have reviewed the parties’ contentions and supporting evidence.
Given the evidence of record, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing on its assertion that
challenged claims 1–4 are obvious over the combination of Murase and
Tsunoda or Murase and Imai. A detailed analysis of our determination
follows after a brief overview of Murase.
1. Murase Overview (Ex. 1011)
Murase discloses an edge light panel 9 having a transparent resin
substrate 10 having an irregular reflection surface 11 with a mesh pattern
formed thereon (Ex. 1011, Abstract) as illustrated in Figure 3 below.

Figure 3 is a front view of an edge lit panel.
A primary light source 17 positioned adjacent the panel is a “slender and
durable 12 V cold cathode ray tube.” Id. at 4:44–47.
2. Discussion of Murase and Tsunoda
Petitioner presents annotated Figures 1 and 3 of Murase to illustrate
how Murase meets the limitations of claims 1–4 of the ’816 patent. Pet. 43.
Relying on Tsunoda, Petitioner asserts “[i]t would have been obvious to
include the input edge or Tsunoda with its refractive surface redirecting light
Case IPR2014-01095
Patent 8,215,816 B2

22
more in the width direction as the input edge in Pristash (emphasis added).”
Id. at 44, citing Ex. 1012 ¶ 15; Ex. 1004 ¶ 93. We agree with Patent Owner
that Petitioner does not provide satisfactorily a persuasive fact-based
analysis to support modifying the input edge of Murase using the input edge
of Tsunoda. Prelim. Resp. 31–33. Patent Owner’s argument that “[t]he
Petition and Escuti fail to explain why the technical solution for point light
sources would be helpful in a fluorescent-based device or that it’s even
compatible to combine the two references” is convincing. Id. at 32.
Accordingly, on the record before us, we are not persuaded that Petitioner
has provided an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
3. Discussion of Murase and Imai
Petitioner again argues in the alternative, “[t]o the extent the width
direction is construed as being the opposite direction, this limitation is still
obvious in view of Imai, which discloses a refractive surface for directing
light in the direction opposite to that in Tsunoda.” Pet. 44, citing Ex. 1015
¶ 2:32–39, Fig. 2; Ex. 1004 ¶ 136. Having considered Petitioner’s
arguments concerning the combination of Murase and Imai, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood that it
would prevail in demonstrating obviousness of the challenged claim. Other
than stating “this limitation is still obvious,” Petitioner does explain
adequately why a person of ordinary skill in the art would have modified the
input edge of Murase using the input edge of Imai in order to refract light
more in the width direction or why such a person would be motivated to do.
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Patent 8,215,816 B2

23
4. Dependent Claims 2–4
Petitioner’s arguments concerning dependent claims 2–4 do not
persuade us sufficiently that Petitioner has demonstrated a reasonable
likelihood that it would prevail in demonstrating obviousness of the
challenged claims. By virtue of their dependency, claims 2–4 incorporate the
same limitations as their underlying base claim. For the same reasons
provided with respect to independent claim 1, our determination concerning
the insufficiency of Petitioner’s articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness concerning
input edge limitation of claim 1, also applies to claims 2–4. As such, we
exercise our discretion and do not consider Petitioner’s argument that it
would have been obvious to combine the Tsunoda’s LED light source with
Murase, “given Murase’s [objective sic] similar objective of uniformity of
brightness.” Pet. 44, citing Ex. 1012 ¶¶ 25, 33, 40; Ex. 1004 ¶¶ 231–235.
5. Summary
Accordingly, on the record before us, the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail with respect to its contention that claims 1–4 are unpatentable under
35 U.S.C. § 103(a) based on Murase and Tsunoda, or in the alternative,
Murase and Imai.

E. 35 U.S.C. § 312(a)(2) and 35 U.S.C. § 315(b)
Patent Owner proffers arguments asserting that the Petition is time-
barred under 35 U.S.C. § 315(b) because the Petitioner failed to name two
other parties as real parties-in-interest, i.e. LG Electronics Inc., and LG
Electronics U.S.A., Inc. Prelim. Resp. 37–39.
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Because we determine that the information presented in the Petition
does not demonstrate a reasonable likelihood that Petitioner would prevail
with respect to at least one of the challenged claims, we exercise our
discretion and do not address Patent Owner’s assertions that the Petition is
time-barred under 35 U.S.C. § 315(b) based on real party-in-interest.

III. SUMMARY
For the foregoing reasons, we conclude that Petitioner has not
demonstrated a reasonable likelihood that at least one challenged claim is
unpatentable based on the asserted grounds. We, therefore, do not institute
an inter partes review on any of the asserted grounds as to any of the
challenged claims.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review as to claims 1–4 of the ’816
patent is DENIED.

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Patent 8,215,816 B2

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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