Takeaway: It is not sufficient to merely demonstrate that each of the components is known in the prior art; a Petitioner must also explain how a person of ordinary skill in the art would combine those components and why such a person would be motivated to do so.
In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 1-4 of the ’816 Patent. The ’816 patent relates 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.
The Board first addressed the question of claim construction, noting that unexpired patent claims are given their “broadest reasonable construction in light of the specification of the patent.” Petitioner offered a claim construction for the term “deformities” that Patent Owner did not dispute. However, the Board determined that there was no need to expressly construe any terms in the ’816 Patent.
The Board then turned to the asserted grounds of unpatentability. Petitioner asserted four different obviousness grounds based on four different primary references, each in view of Tsunoda or Imai. For the first ground, Petitioner presented annotated figures from the primary reference and asserted that the reference 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. Alternatively, Petitioner argued that Tsunoda discloses a holder 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.” In the Preliminary Response, Patent Owner argued 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.” Patent Owner further asserted that the cited portion of the declaration of Petitioner’s expert “offers no rationale for modifying Pristash to include the alleged refractive surface of Tsunoda.” The Board agreed with Petitioner that Tsunoda discloses a refractive surface, but agreed with Patent Owner that Petitioner did 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. Specifically, the Board found that Petitioner did not provide any rationale beyond asserting that it would have been obvious. It is not sufficient to merely demonstrate that each of the components is known, a Petitioner must also explain how a person of ordinary skill in the art would combine those embodiments and why such a person would be motivated to do so.
As each of the other three obviousness grounds included the same secondary references for the same purpose, the Board found that each of the other grounds failed for at least the same reason as the first ground discussed above.
LG Display, Ltd. v. Innovative Display Technologies, IPR2014-01095
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: January 13, 2015
Patent: 8,215,816 B2
Before: Thomas L. Giannetti, Neil T. Powell, and Beverly M. Bunting
Written by: Bunting
Related Proceedings: Delaware Display Group LLC et al. v. LG Electronics Inc. et al., 1:13-cv-02109 (D. Del.); IPR2014-01092 (USP 7,434,974); IPR2014-01094 (USP 7,404,660); IPR2014-01096 (USP 7,537,370); IPR2014-01097 (USP 7,300,194)