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

Patent Trial and Appeal Board

Jan 13, 2015

11378080 (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 CO, LTD.,
Petitioner,

v.

INNOVATIVE DISPLAY TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-01092
Patent 7,434,974
____________

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

GIANNETTI, 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, 3–5,
7–11, 13, and 17 of U.S. Patent No. 7,434,974 (“the ’974 patent”). Paper 2
(“Pet.”). Innovative Display Technologies LLC (“Patent Owner”) filed a
Preliminary Response. 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, 3–5, 7–11, 13, and 17.

I. BACKGROUND
A. The ʼ974 patent (Ex. 1001)
The ʼ974 patent is entitled “Light Emitting Panel Assemblies.” The
Abstract describes the subject matter as follows:

Light emitting panel assembly includes a light emitting
panel member received in a cavity or recess in a tray or
housing. The panel member has a pattern of light extracting
deformities on or in at least one surface of the panel member to
cause light received from at least one LED light source
positioned near or against the light entrance surface of the panel
member to be emitted from a light emitting surface of the panel
member. The tray or housing acts as an end edge and/or side
edge reflector for the panel member to reflect light that would
otherwise exit the panel member through the end edge and/or
side edge back into the panel member for causing additional
light to be emitted from the panel member.

Ex. 1001, Abstract.

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B. Illustrative Claim
Claim 1 is illustrative of the claims at issue:
1. A light emitting panel assembly comprising
at least a light emitting panel member having a light
entrance surface and a light emitting surface,
at least one LED light source positioned near or against
the light entrance surface, and
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, and the tray or housing includes end walls and side
walls that act as end edge reflectors and side edge reflectors for
the panel member to reflect light that would otherwise exit the
panel member through an end edge and/or side edge back into
the panel member and toward the pattern of light extracting
deformities for causing additional light to be emitted from the
light emitting surface of the panel member,
wherein the tray or housing provides structural support to
the panel member and has posts, tabs, or other structural
features that provide a mount for mounting of the assembly into
a larger assembly or device.

C. Related Proceedings
Patent Owner states that it has asserted infringement by Petitioner of
the ʼ974 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 4.
Patent Owner identifies numerous other proceedings in which it has
alleged infringement of the ʼ974 patent. See Paper 4 for a listing.
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In addition, there are four other pending requests for inter partes
review by Petitioner for patents related to the ’974 patent. Those are as
follows:
1. IPR2014-01094 (U.S. Patent No. 7,404,660);
2. IPR2014-01095 (U.S. Patent No. 8,215,816);
3. IPR2014-01096 (U.S. Patent No. 7,537,370); and
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).
The only claim term for which Petitioner proposes a construction is
the term “deformities,” appearing in all challenged claims. Petitioner asserts
that the ʼ974 patent “expressly defines” the term to mean “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. 8 (citing ʼ974 patent, Ex. 1001,
col. 4, ll. 36–40). Patent Owner takes no position on claim construction.
Prelim. Resp. 7. Patent Owner points out, however, that the construction of
“deformities” proffered by Petitioner was agreed to and adopted by the
district court. Id.
We have considered Petitioner’s construction of “deformities” and
determined that at this stage it should be adopted here.
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We have further determined that, except as may be indicated in the
discussion below, the remaining terms should be given their plain and
ordinary meaning.

E. References
Petitioner relies on the following references
1
:
Funamoto US 5,619,351 May 10, 1994 Ex. 1007
Tsuchiyama US 5,548,271 Jun. 24, 1994 Ex. 1008
Nakayama US 5,654,779 Dec. 29, 1994 Ex. 1009

Petitioner also states that it is relying on Admitted Prior Art (“APA”)
from the ʼ974 patent specification. Pet. 9; Ex. 1001, col. 2, ll. 58-65.
Petitioner also relies on a Declaration from Michael J. Escuti, Ph.D. (“Escuti
Decl.”). Ex. 1004.
F. Grounds Asserted
Petitioner challenges claims 1, 3–5, 7–11, 13, and 17 of ’974 patent on
the following grounds.
References Basis Claims Challenged
Funamoto § 103(a) 1, 3–5, 7–11, and 13
Tsuchiyama and Funamoto § 103(a) 1, 3–5, 7–8, 10–11,
and 13
Funamoto and Nakayama § 103(a) 13 and 17

II. ANALYSIS
A. Asserted Grounds Based On Funamoto Alone
(Claims 1, 3–5, 7–11, and 13)

1
The references are ordered by exhibit number with effective dates asserted
by Petitioner.
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Petitioner contends that these claims are obvious over Funamoto
under 35 U.S.C. § 103(a). Pet. 11–25. For the reasons that follow, we are
not persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on this ground.
1. Funamoto Overview
This patent describes a surface-type illumination device for providing
backlight in a liquid crystal display. Ex. 1007, Abstract. As disclosed, the
device makes use of a fluorescent tube and polarizer. This is illustrated in
Figure 4 of Funamoto, reproduced here:

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In the above Figure 4, polarizer 21 and fluorescent light 22 are shown.
Ex. 1001, col. 6, ll. 32–48. Funamoto’s objectives include providing a
surface-type illumination device that displays a brightness higher than
conventional illumination devices without increasing the number of driver
circuits, and restricting heat radiation. Id. col. 2, ll. 10–14.
2. Discussion
Petitioner’s discussion of Funamoto acknowledges that Funamoto
does not “explicitly” disclose use of an LED light source, a requirement of
claim 1 and all other challenged claims. Pet. 13. Petitioner contends,
instead, that a person of ordinary skill “would easily substitute an LED for
the fluorescent light source disclosed.” Id. (citing Escuti Decl. ¶¶76–78).
Patent Owner disagrees, pointing out that “Funamoto explicitly states
that a fluorescent light source is required.” Prelim Resp. 13. Patent Owner
cites to a discussion in Funamoto of the requirement of a “high output
fluorescent light in the illumination device” to achieve sufficient brightness
for the intended application. Id. (citing Ex. 1007, col. 1, ll. 41–42).
Patent Owner contends that Petitioner fails to consider Funamoto “as
[a] whole.” Id. at 13–14. Specifically, Patent Owner points out that to
reduce temperature variations without increasing the number of driver
circuits, Funamoto teaches using a single L or U-shaped fluorescent light
source instead of a straight fluorescent light source. Id. Patent Owner
contends that Petitioner has not shown how the “generic” substitution of
LEDs for the fluorescent tube would meet the objectives of Funamoto
discussed supra. Id. at 14.
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We agree with Patent Owner that Petitioner has not demonstrated a
reasonable likelihood of prevailing in showing obviousness of the
challenged claims over Funamoto. In KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007), the Supreme Court warned that “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.” Id. at 418.
Rather, the Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418–419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
Moreover, when evaluating claims for obviousness, “the prior art as a
whole must be considered. The teachings are to be viewed as they would
have been viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038,
1041 (Fed. Cir. 1986). Accordingly, “‘[i]t is impermissible within the
framework of section 103 to pick and choose from any one reference only so
much of it as will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art.’” Id. (quoting In re Wesslau, 353 F.2d 238,
241 (CCPA 1965)).
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We are, therefore, not persuaded by Petitioner’s argument that a
person of ordinary skill “would easily substitute an LED” for the fluorescent
light tube in Funamoto. Petitioner does not provide a convincing rationale
for making the substitution. See KSR, 550 U.S. at 417 (Obviousness
showing requires “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Furthermore, the argument
ignores Funamoto’s stated requirement of a high output fluorescent light in
the disclosed device. See discussion supra.
Patent Owner presents two additional reasons why the challenged
claims are not obvious over Funamoto. First is that Funamoto’s polarizer is
not a “light emitting panel member” as recited in the claims. Prelim. Resp.
10–12. Second is the argument that the recitation in the claim 1 of “posts,
tabs, or other structural features” is not met by Funamoto. According to
Patent Owner, the structural features identified by Petitioner as meeting this
limitation do not result in mounting the tray assembly into a larger assembly,
as is called for in the claim. Id. at 15.
Because of our determination that Petitioner has failed to show that
the use of LEDs in Funamoto would have been obvious, we do not reach
those additional arguments.
B. Asserted Grounds Based On Tsuchiyama and Funamoto
(Claims 1, 3–5, 7–8, 10–11, and 13)
Petitioner contends that these claims are obvious over Tsuchiyama
and Funamoto under 35 U.S.C. § 103(a). Pet. 26–40. For the reasons that
follow, we are not persuaded that Petitioner has demonstrated a reasonable
likelihood of prevailing on this ground.
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1. Tsuchiyama Overview
This patent describes a miniature data display radio pager having a
liquid crystal display (LCD). Ex. 1008, col. 1, ll. 4–7. The display is
provided with a backlight for illuminating the LCD. Id. The structure
includes a backlight, backlight LEDs, alert LEDs, and a light conducting
plate. Id. col. 2, ll. 29–40. This is illustrated by Figure 2 of Tsuchiyama,
reproduced here:

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In Figure 2 above, backlight 32, backlight LEDs 12a, alert LEDs 12b,
and light conducting plate 32a are shown. Tsuchiyama describes a structure
that addresses a problem arising when the alert LEDs are placed next to the
LCD display. Id. col. 1, ll. 39–50. This arrangement requires increasing the
dimensions of the pager and prevents miniaturization. Id. Tsuchiyama
avoids this problem by positioning the alert LEDs in the LCD display
instead of next to the display. Id. col. 3, ll. 21–30.
2. Discussion
Petitioner acknowledges that Tsuchiyama does not “explicitly disclose
the panel member having a pattern of light extracting deformities.” Pet. 29.
To meet this claim element, Petitioner contends that “[a] person of ordinary
skill in the art would have been motivated to combine the teachings of
Tsuchiyama with the teachings of Funamoto because they are both directed
to a thinner and smaller device, including thinner and smaller LCD devices.”
Pet. 28. Petitioner further contends that “[a] person of ordinary skill in the
art would have been motivated to combine the assembly of Tsuchiyama with
the deformities of Funamoto because the deformities are used to control
characteristics of the light, including output, uniformity, etc.” Id. at 29.
Patent Owner responds that Petitioner’s statement as to why
Tsuchiyaman and Funaamoto should be combined “is conclusory and
unsupported by sufficient evidence and analysis.” Prelim. Resp. 21. Patent
Owner asserts that the problem solved by Tsuchiyama (locating the alert
LED in the backlight of a pager) is unrelated to the technical problems
addressed by Funamoto (see discussion supra).
As discussed above, in determining obviousness, the prior art as a
whole must be considered. Furthermore, a sufficient rationale for combining
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the references must be articulated. Petitioner’s argument, that the teachings
of Tsuchiyama and Funamoto can be combined because they are both
directed to thinner, smaller devices, is not convincing. The deformities
missing from Tsuchiyama but present in Funamoto are used to effect control
of characteristics of the light, not miniaturization of the device. Thus, we
are not convinced by Petitioner’s rationale for making the combination.
Alternatively, Patent Owner contends that the Tsuchiyama/Funamoto
combination is lacking the “posts, tabs, or other structural features” recited
in the claims. Prelim. Resp. 23. We agree with Patent Owner that
Petitioner’s argument is unavailing because Patent Owner has not identified
sufficiently the “larger assembly or device” called for in the claims.
C. Asserted Grounds Based on Funamoto and Nakayama
(Claims 13 and 17)
Petitioner contends that these independent claims are obvious over
Funamoto and Nakayama under 35 U.S.C. § 103(a). Pet. 40–51. For the
reasons that follow, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood of prevailing on this ground.
1. Nakayama Overview
This patent describes a liquid crystal display device that includes a
light emitting panel assembly. Figure 1a of Nakayama follows:
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In Figure 1a above, frame 1a and 1b, display panel 2, light panel 4,
lamps 5a and 5b, and lamp holders 10a and 10b are shown.
2. Discussion
Petitioner contends that Funamoto and Nakayama, together, disclose
all elements of claims 13 and 17 of the ʼ974 patent. Pet. 40. Petitioner
further contends that “[a] person of ordinary skill in the art would have been
motivated to combine the teachings of Funamoto and Nakayama because the
patents were directed to the same goals.” Id.
Patent Owner disputes this rationale. Prelim. Resp. 27-28. According
to Patent Owner, Petitioner’s allegations are “contradictory,” and the
Petition describes “two different and unrelated technical problems and
objectives for Funamoto and Nakayama.” Id. at 28. We are persuaded by
Patent Owner’s argument that Petitioner has not provided a sufficient
rationale for combining the two references. As noted above, Funamoto is
directed to providing a surface-type illumination device that displays a
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brightness higher than conventional illumination devices without increasing
the number of driver circuits, and restricting heat radiation. Id. col. 2, ll. 10–
14. As described by Petitioner, “Nakayama is directed to an LCD device
where part of the light guiding board can be removed without varying the
outer dimensions and thickness of the device.” Pet. 40. We agree with
Patent Owner that these are two very different goals, and that Petitioner has
failed to provide a sufficient rationale for combining Funamoto and
Nakayama.
Claims 13 and 17 each recite “at least one LED light source.” As
noted above, Funamoto does not disclose an LED light source. Furthermore,
we concluded above that Petitioner has not made a sufficient showing that it
would have been obvious to substitute an LED light source for Funamoto’s
fluorescent tubes. We agree with Patent Owner that for this additional
reason, Petitioner’s obviousness argument directed to claims 13 and 17 is
not persuasive. Prelim. Resp. 28–30, 33–34.

III. SUMMARY
The information presented does not show that there is a reasonable
likelihood that Petitioner will prevail on any of the following challenges to
patentability of the ʼ974 patent:
A. Obviousness of claims 1, 3–5, 7 and 13 over Funamoto;
B. Obviousness of claims 1, 3–5, 7–8, 10–11, and 13 over
Tsuchiyama and Funamoto; and
C. Obviousness of claims 13 and 17 over Nakayama.

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IV. ORDER
It is, therefore,
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.

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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