Takeaway: The Board declined to make a determination about the weight to provide a declaration, as a whole, and instead considered relevant portions and determined the appropriate weight to accord that particular testimony.

In its Final Written Decision, the Board concluded that Petitioner has shown, by a preponderance of the evidence, that each of the challenged claims 1, 2, 5-7, and 10-12 of the ’969 patent are unpatentable. Petitioner had asserted that the following grounds were applicable: (1) obviousness of claims 1, 2, 5, 6, and 12 under 35 U.S.C. § 103(a) over Tetsuo and Kim; (2) obviousness of claims 10 and 11 under 35 U.S.C. § 103(a) over Tetsuo, Kim, and Yamaguchi; (3) obviousness of claims 1, 2, 5-7, and 12 under 35 U.S.C. § 103(a) over Tetsuo and Blieske; and (4) obviousness of claims 10 and 11 under 35 U.S.C. § 103(a) over Tetsuo, Blieske, and Yamaguchi. The ‘969 patent relates to “a display apparatus including a surface light source apparatus having a light emitting apparatus.”

The Board first considered some evidentiary matters. Patent Owner contended that Dr. Sasian’s declarations in a number of IPR proceedings, including this one, should be given little or no weight. Specifically, Patent Owner alleges that in a number of portions of the declarations “Sasian’s testimony demonstrates disturbing evidence that rather than offering his own testimony, Sasian is offering testimony written for him by counsel for Petitioners, and adopting practices and procedures that would not be honored by those of skill in the art.” Patent Owner further contended that, based on Dr. Sasian’s signature being merely an electronic image and that he had never seen the cover page, as well as alleged errors in the testimony provided in IPR2014-00605 and IPR2014-00879, “[Dr.] Sasian’s testimony is neither trustworthy nor credible and should be afforded little if any weight.” The Board concluded that “[i]t is generally understood that some attorney involvement in the preparation of an expert report or declaration is permissible as long as the expert substantially participated in the preparation thereof, such that it cannot be considered to be ‘ghost written’ by an attorney,” which Patent had not demonstrated persuasively according to the Board. Accordingly, the Board declined to make a determination about Dr. Sasian’s declaration, as a whole, and instead considered relevant portions of the testimony and determined the appropriate weight to accord that particular testimony.

Petitioner contended that the Drabik Declaration provided by Patent Owner should be given little weight, because “Dr. Drabik identifies no relevant experience or education and [d]espite the vast scope of his alleged expertise, Dr. Drabik’s declaration identifies no relevant experience in non-imaging optics, illumincation optics, or even lenses in general.” The Board also declined to make a determination as to Dr. Drabik’s declaration, as a whole, and instead considered relevant portions and determined the appropriate weight to accord that particular testimony.

The Board construed only a single term, “a light control/emission surface.” The Board noted that Patent Owner contended that the term was not a term of art and instead was coined in the description. Specifically, Patent Owner contended that the “light control/emission surface” recited in the claims requires “a three-part surface having elements 11a, 11b, and 11c with the shape attributed to each” shown in Figure 7A and described at column 7, lines 20-42 of the ’969 patent. The Board agreed with Petitioner that the ’969 patent does not provide a lexicographical definition of the term and that the term should be given the construction stated in the Board’s Decision to Institute, which was “as only requiring a ‘surface that controls a traveling direction of light emitted from the light emitting element.’” Specifically, the Board found that “[r]ather than limiting the scope of the patent to the specific embodiments described therein, the ’969 patent explicitly states that ‘[t]he above explanation is an illustration of preferable embodiments of the present invention, and the scope of the present invention is not limited to these.’”

Regarding the proposed grounds of unpatentability, the Board was not persuaded by Patent Owner’s arguments that Tetsuo does not disclose the claimed “light control/emission surface,” because the argument was based on the overly narrow proposed construction that the Board declined to adopt. The Board also was not persuaded by Patent Owner’s general allegations of “teaching away” and “impermissible hindsight,” because the Board did not believe Patent Owner persuasively explained why one skilled in the art would have been discouraged from the proposed modification or why it was based solely on the disclosure of the ’969 patent. In contrast, the Board was persuaded by the arguments presented by Petitioner.

The Board further dismissed Patent Owner’s motion to exclude Sasian’s Declaration, because the objections were untimely in view of the rule that any objections must be served within ten business days of the institution of trial. Patent Owner argued that the objections did not arise until Dr. Sasian’s cross-examination and that “an objection cannot be raised until the evidence that supports it becomes evident. Stanton v. Dahlen, 2005 WL 596769[, at] *2 (BPAI [2005]).” The Board stated that Stanton v. Dahlen did “not stand for the proposition that an objection cannot be raised until the evidence that supports it becomes apparent; the decision merely paraphrased an argument from counsel.”

Seoul Semiconductor Co., Ltd and North America Seoul Semiconductor, Inc. v. Enplas Corporation, IPR2014-00878
Paper 34: Final Written Decision
Dated: October 15, 2015
Patent: 8,227,969 B2
Before: William A. Capp, James B. Arpin, and Jeremy M. Plenzler
Written by: Plenzler